Patent Law Practice Center

Fenwick & West: Federal Circuit Issues En Banc Decision in Marine Polymer

Rajiv P. Patel, Partner at Fenwick & West, LLP, and Practice Center contributor, recently sent in a Fenwick & West Patent Litigation Alert entitled, Federal Circuit Issues En Banc Decision in Marine Polymer: No Reexamination Intervening Rights Absent Textual Amendment to Claim Language.  The article, co-written with Heather N. Mewes and Betsy White, discusses the en banc Federal Circuit ruling in Marine Polymer Technologies, Inc. v. Hemcon, Inc. and the impact it has on intervening rights in the reexamination process.

Here is a brief excerpt from the Fenwick & West Patent Litigation Alert:

Should intervening rights apply to claims that were not textually amended during a reexamination proceeding but were effectively narrowed by the patentee’s arguments? Following a controversial panel decision last September in Marine Polymer Technologies, Inc. v. Hemcon, Inc. that expanded intervening rights for reexamination, an en banc Federal Circuit on March 15 ruled that intervening rights only apply if claim language is substantively amended or new claims are added. In a closely divided 6-4 ruling, the court specifically rejected the original panel’s determination that intervening rights can arise as a result of the patentee’s statements to the U.S. Patent and Trademark Office (“PTO”) during reexamination that effectively limit the claim but do not result in an amendment to the claim language.

Marine Polymer sued HemCon, alleging that HemCon infringed certain claims of U.S. Patent No. 6,864,245 (the ‘245 patent), which claims a biocompatible polymer p-GlcNAc that accelerates hemostasis and is useful in trauma units for treating serious wounds. A central issue during the district court’s claim construction proceedings, which would ultimately be the focus of the appeal, was the interpretation of the term “biocompatible” in an asserted independent claim of the ‘245 patent. The district court construed the term to mean “polymers . . . with low variability, high purity, and no detectable biological reactivity as determined by biocompatibility tests” (emphasis added). Applying this construction, the district court granted summary judgment of literal infringement of all seven asserted claims, relying on expert evidence that biocompatibility tests of HemCon’s accused products had shown “no detectable biological reactivity.” At trial, the jury upheld the validity of the ‘245 patent and found that Marine Polymer was entitled to a reasonable royalty of approximately 88% of HemCon’s profits. The district court entered final judgment in September 2010, granting reasonable royalty damages for the past infringement in the amount of $29,410,246 and issuing a permanent injunction barring future infringement of the asserted claims of the ‘245 patent.

To read the Fenwick & West Patent Litigation Alert in its entirety, click here.

Robert Hulse Discusses USPTO’s Patent Processing Initiative

I’m sure many of you are still trying to weed through the detailed call for comments on the USPTO’s Three-Track Patent Processing Initiative that was published in the Federal Register last week.  It will be interesting to see the comments that come in from the Patent Community and how the PTO’s proposal will evolve based on the comments.  I had an opportunity to ask Robert Hulse, partner at Fenwick & West, LLP and Contributor on the Patent Center, some general questions that I had regarding the PTO’s initiative:

Are you in favor of or opposed to Three-Track proposal?  Do you believe it’s an improvement from the one-size-fits-all patent system?

Generally, I think this proposal will be good for patent applicants, but I would caution that it is just a general proposal with no specific rules.  Once the PTO published the proposed rules for implementing the Three-Track system, we will have a better understanding of how beneficial the system will be for applicants and how likely this system is to achieve the PTO’s stated goals of reducing pendency while maintaining quality examination. 

 For example, the rules may impose a high fee or otherwise place onerous requirements on applicants to take advantage of the prioritized track, Track 1.  In this case, most applicants simply wouldn’t take advantage of Track 1, which would reduce the effectiveness of the program.  This is the case with the current accelerated examination procedure, which requires a supporting document (the Accelerated Examination Support Document, or AESD) that places a tremendous burden on the applicant. (more…)