United States Court of Appeals
for the Federal Circuit
__________________________
MARINE POLYMER TECHNOLOGIES, INC.,
Plaintiff-Appellee,
v.
HEMCON, INC.,
Defendant-Appellant.
__________________________
2010-1548
__________________________
Appeal from the United States District Court for the
District of New Hampshire in case no. 06-CV-0100, Judge
Joseph A. DiClerico, Jr.
__________________________
Decided: September 26, 2011
___________________________
BRIAN M. POISSANT, Jones Day, of New York, New
York, argued for the plaintiff-appellee. With him on the
brief were OGNIAN V. SHENTOV, LYNDA Q. NGUYEN and
JULIE M. BAHER.
RAYMOND A. KURZ, Hogan Lovells US, LLP, of Wash-
ington, DC, argued for the defendant-appellant. With
him on the brief were CELINE JIMENEZ CROWSON and
KEITH B. O’DOHERTY.
__________________________
MARINE POLYMER v. HEMCON 2
Before LOURIE, GAJARSA, and DYK, Circuit Judges.
Opinion for the court filed by Circuit Judge DYK. Dissent-
ing opinion filed by Circuit Judge LOURIE..
DYK, Circuit Judge.
Defendant-Appellant HemCon, Inc. (“HemCon”) ap-
peals a judgment of the United States District Court for
the District of New Hampshire that HemCon infringed
Marine Polymer Technologies, Inc.’s (“Marine Polymer”)
U.S. Patent No. 6,864,245 (the “’245 Patent”). We con-
clude that HemCon has absolute intervening rights with
respect to products manufactured before the date of
reissue. We remand for a determination of whether
HemCon has equitable intervening rights with respect to
products manufactured after the date of reissue. As a
result, we vacate the injunction and damages award. We
find that HemCon’s contention that the ’245 Patent as
originally issued was invalid is moot.
BACKGROUND
Marine Polymer owns the ’245 Patent, which origi-
nally issued in March of 2005 and claims p-GlcNAc, a
polymer extracted from another polymer called chitin.
The polymer p-GlcNAc accelerates hemostasis (the proc-
ess which causes bleeding to stop) and is useful in trauma
units for treating serious wounds. Claims 6, 7, 10, 11, 12,
17, and 20 are asserted. Independent claim 6 is represen-
tative and discloses:
A biocompatible [p-GlcNAc] comprising up to
about 150,000 N-acetylglucosamine monosaccha-
rides covalently attached in a β-1→4 conformation
and having a molecular weight of up to about 30
million daltons in which at least one N-
acetylglucosamine monosaccharide has been
deacetylated.
3 MARINE POLYMER v. HEMCON
’245 Patent, col.72 ll.5–10 (emphasis added).
The only disputed claim term on appeal is “biocom-
patible.” Like claim 6, each of the claims of the ’245
Patent requires that the p-GlcNAc be “biocompatible.”
See, e.g., id. col.72 l.11. In this context, biocompatibility
refers to the extent to which the p-GlcNAc causes a nega-
tive biological reaction (e.g., erythema, edema, or other
skin conditions and irritations) when placed in contact
with human tissue. The specification discloses four tests
that can be used to determine the biocompatibility of a
substance: an elution test, an implantation test, an in-
tracutaneous injection test, and a systemic injection test.
The elution test involves washing the substance with a
solution to create an extract which is then tested on living
cells to judge its toxicity. The implantation test involves
implanting the substance into the muscle of a test animal
and observing the reaction. The intracutaneous injection
test involves injecting the substance into the skin of a test
animal, and the systemic injection test involves multiple
injections of different types (including intravenous and
body cavity injections).
According to a chart disclosed in the specification, the
elution test yields a score of zero to four on a biological
reactivity scale, with zero representing no reactivity, one
representing slight reactivity, two representing mild
reactivity, and three or four representing moderate or
severe reactivity, respectively. The specification explains
that using the elution test, “p-GlcNAc[ ] meets the bio-
compatibility test if none of the cultures treated with [p-
GlcNAc] show[s] a greater than mild reactivity” (i.e., no
more than two on the reactivity scale). Id. col.42 ll.42–44.
The specification also explains that p-GlcNAc can be
biocompatible using the other three biocompatibility tests
even if the polymer exhibits some biological reactivity.
The other tests have similar scales for determining reac-
MARINE POLYMER v. HEMCON 4
tivity, and all three allow the p-GlcNAc to pass the test
even it exhibits some biological reactivity. See id. col.43
ll.54–60, col.44 ll.25–56, & col.45 ll.41–43.
As originally issued, three of the dependent claims (3,
12, and 20) specifically required an elution test score of
zero (i.e., no reactivity under that test). Six of the original
dependent claims (4, 5, 13, 14, 21, and 22) specifically
required elution test scores of one or two (i.e., slight or
mild reactivity under that test). The other claims did not
include any explicit requirement that the p-GlcNAc meet
a specific score on any of the biocompatibility tests.
Marine Polymer sued HemCon, alleging that HemCon
infringed claims 6, 7, 10, 11, 12, 17, and 20 of the ’245
Patent. During Markman proceedings, Marine Polymer
argued that “biocompatible” should be construed to mean:
“biomedically pure [p-GlcNAc] that reproducibly exhibits
acceptably low levels of adverse bioreactivity, as deter-
mined by biocompatibility tests.” Marine Polymer v.
HemCon, No. 06-CV-100, slip op. at 2–3 (May 6, 2008)
[hereinafter Claim Construction Order]. HemCon argued
that “biocompatible” should be construed to limit p-
GlcNAc to that which was “harvested” from a particular
source (plant microalgae). Id. at 3. Alternatively, Hem-
Con argued that “biocompatible” meant “suited for bio-
medical applications,” a broad construction that in its
view would render the patent clearly obvious. Id. at 15.
The district court specifically considered all three pro-
posed constructions but rejected them and adopted its
own, concluding that “biocompatible p-GlcNAc” meant p-
GlcNAc “polymers . . . with low variability, high purity,
and no detectable biological reactivity as determined by
biocompatibility tests.” Id. at 24–25 (emphasis added).
Based on its claim construction, the district court
granted summary judgment of literal infringement of all
5 MARINE POLYMER v. HEMCON
seven asserted claims, relying on expert evidence that
biocompatibility tests of HemCon’s accused products had
shown “no detectable biological reactivity.” A jury trial
was held to determine validity and damages. The jury
found that the ’245 patent was not anticipated, and also
made factual findings related to obviousness. With re-
spect to damages, the jury found that Marine Polymer
was entitled to a reasonable royalty of approximately 88%
of HemCon’s profits. After the verdict, Hemcon filed
motions for JMOL on anticipation and the jury’s fact
findings concerning obviousness. The trial court denied
this motion, and subsequently made the ultimate deter-
mination that the ’245 patent was not obvious. Hemcon
also moved for JMOL arguing that the damages award
was not supported by substantial evidence, which the
district court also denied. The district court entered final
judgment on September 22, 2010, granting reasonable
royalty damages for the past infringement in the amount
of $29,410,246. 1 On September 16, 2010, it also issued a
permanent injunction barring future infringement of the
asserted claims of the ’245 Patent. The district court
denied HemCon’s request for a stay of the final judgment,
damage award, and permanent injunction.
In August of 2009, during the pendency of the district
court proceedings, HemCon requested reexamination of
the ’245 Patent at the United States Patent and Trade-
mark Office (“PTO”). The examiner initially adopted a
different claim construction than the district court, con-
cluding that “biocompatible” meant “low variability, high
purity, and little or no detectable reactivity.” J.A. 39503
(emphasis added). In this preliminary rejection, the
1 In December 2010, the district court granted Ma-
rine Polymer’s motion to amend the judgment to include
damages for sales made up to the date of the final judg-
ment.
MARINE POLYMER v. HEMCON 6
examiner noted his disagreement with the district court’s
claim construction. He explained that the court’s con-
struction was inconsistent with the numerous dependent
claims that required a specific elution test score of zero,
one, or two. Based on that construction, he issued a
preliminary rejection of all the claims of the ’245 Patent
as invalid in light of the prior art. He relied primarily on
three pieces of prior art––an article by a doctor in the
relevant field (the Sandford reference) and two previously
issued patents disclosing p-GlcNAc (the Peniston and
Malette patents)––finding that each explicitly disclosed
nearly all of the limitations of every claim. With respect
to the “biocompatibility” limitation, he explained that
“any difference between the claimed biocompatibility and
that disclosed by [the three prior art references] is minor
and would have been obvious to [a] person of ordinary
skill in the art.” J.A. 39507, 39517, 39522.
In response, Marine Polymer argued to the PTO that
“the [district court’s] interpretation of the term ‘biocom-
patible’ should be adopted in this reexamination” (i.e.,
that “biocompatible” should be construed to mean “no
detectable biological reactivity”). J.A. 37690. Marine
Polymer also cancelled the six original dependent claims
that had specifically required an elution test score of one
or two (i.e., that explicitly required at least some reactiv-
ity). See J.A. 37683. The examiner then approved the
claims as amended, noting that “[w]ith the cancellation of
the claims which required . . . elution test scores [of] 1 or
2, [he] now agree[d] with the [district] court’s definition of
the term biocompatible.” J.A. 39481.
The PTO did not issue its notice of intent to issue the
reexamination certificate for the ’245 Patent until No-
vember 3, 2010, which was after the district court had
entered its final judgment on September 22, 2010. Hem-
Con timely appealed the district court’s judgment. On
7 MARINE POLYMER v. HEMCON
November 18, 2010, we granted a stay of the district
court’s final judgment and permanent injunction pending
appeal. On March 29, 2011, the PTO issued a reexamina-
tion certificate, cancelling dependent claims 4, 5, 13, 14,
21, and 22. We have jurisdiction pursuant to 28 U.S.C. §
1295(a)(1). We review the district court’s claim construc-
tion determination and its grant of summary judgment de
novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1456 (Fed. Cir. 1998) (en banc). We review the district
court’s denial of a JMOL motion de novo. See SEB S.A. v.
Montgomery Ward & Co., 594 F.3d 1360, 1377 (Fed. Cir.
2010).
DISCUSSION
I
HemCon argues that the district court’s finding of in-
fringement should be reversed because Marine Polymer
changed the scope of the ’245 Patent’s claims on reexami-
nation and, therefore, HemCon is entitled to intervening
rights. While this issue arose after the district court
judgment, Marine Polymer does not contend that we are
barred on this appeal from considering the issue, and we
conclude that we have the discretion on appeal to consider
events as to which judicial notice is appropriate that arise
after a judgment. 2 Under the statute, there are two types
2 See, e.g., Watts, Watts & Co. v. Unione Austriaca
Di Navigazione, 248 U.S. 9, 21 (1918) (holding that
“court[s] must consider the changes in fact and in law
which have supervened since the decree was entered
below,” particularly when reviewing questions of law de
novo, and reversing the district court’s dismissal of an
admiralty suit between belligerents in a foreign war
because the United States had since entered the war,
creating jurisdiction under admiralty law); Nonnette v.
Small, 316 F.3d 872, 877 (9th Cir. 2002) (vacating the
district court’s dismissal of plaintiff’s 42 U.S.C. § 1983
MARINE POLYMER v. HEMCON 8
of intervening rights: (1) absolute intervening rights,
which bar claims for infringement based on specific prod-
ucts that were manufactured before the reissue or reex-
amination; and (2) equitable intervening rights, which bar
claims for infringement for new products and newly
manufactured versions of prior existing products made
after the reissue or reexamination. See 35 U.S.C. §§ 252,
307. We think it appropriate to decide the question of
absolute intervening rights without remand because it is
a pure question of law. However, we conclude that the
district court should consider the question of equitable
intervening rights in the first instance since fact ques-
tions are involved. We consider first the issue of absolute
intervening rights as a defense.
The doctrine of absolute intervening rights protects
an accused infringer’s right to continue using, selling, or
offering to sell specific products covered by reissued or
reexamined claims when the particular accused product
claim because plaintiff was no longer incarcerated and,
therefore, a habeas proceeding was no longer a prerequi-
site to proceeding under § 1983); Korn v. Franchard Corp.,
456 F.2d 1206, 1208 (2d Cir. 1972) (reversing district
court’s refusal to certify class action based on attorney
who would not adequately represent class because a new
attorney had been substituted on appeal and “the new
situation demands one result only, and discretion could
not be exercised either way”); see also L.E.A. Dynatech
Inc. v. Allina, 49 F.3d 1527, 1531 (Fed. Cir. 1995) (ex-
plaining that an “appellate court will consider an issue
not presented below” if it, inter alia, “involves a pure
question of law and refusal to consider it would result” in
an injustice or “the appellant had no opportunity to raise
the objection at the district court level”); Borlem-S.A.-
Empreediments Industrias v. United States, 913 F.2d 933,
939 (Fed. Cir. 1990) (“[A] reviewing court is not precluded
. . . from considering events which have occurred between
the date of an agency (or trial court) decision and the date
of decision on appeal.”).
9 MARINE POLYMER v. HEMCON
had been made before the date of the reissue or reexami-
nation and the scope of the claims is substantively
changed. 35 U.S.C. § 252; see also 35 U.S.C § 307(b)
(applying the provisions of § 252 to “amended or new
claim[s] determined to be patentable and incorporated
into a patent following a reexamination”). “The specific
things made before the date of reissue, which infringe the
new reissue claims, are absolutely free of the reissued
patent and may be used or sold after the date of the
reissue without regard to the patent.” BIC Leisure Prods.,
Inc. v. Windsurfing Int’l, Inc., 1 F.3d 1214, 1220 (Fed. Cir.
1993). In other words, the statute “provides an accused
infringer with the absolute right to use or sell a [specific]
product that [it] made, used, or purchased before the
grant of the reissue[d] [or reexamined] patent.” Id.
However, intervening rights do not apply where the
accused product “infringes a valid claim of the reissued
patent which was in the original patent.” 35 U.S.C. § 252.
Therefore, intervening rights are available only if the
original claims have been “substantively changed,” and
“in determining whether substantive changes have been
made, we must discern whether the scope of the claims
[has changed], not merely whether different words are
used.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1346
(Fed. Cir. 1998). Essentially, “the making of substantive
changes in the claims [on reexamination] is treated as an
irrebuttable presumption that the original claims were
materially flawed.” Bloom Eng’g Co. v. N. Am. Mfg. Co.,
129 F.3d 1247, 1249 (Fed. Cir. 1997). Therefore, if we
conclude that the scope of asserted claims of the ’245
Patent was substantively changed on reexamination,
HemCon is entitled to absolute intervening rights, and we
must reverse the district court’s judgment of infringe-
ment.
MARINE POLYMER v. HEMCON 10
The basis for the claim of intervening rights here is
that, on reexamination, Marine Polymer urged the exam-
iner to adopt the district court’s claim construction that
required p-GlcNAc to have “no detectable biological reac-
tivity.” HemCon argues that, as correctly construed, the
original claims of the ’245 Patent did not have such a
limitation and the adoption of the district court’s errone-
ous construction substantively changed the scope of the
claims. Marine Polymer argues that HemCon is not
entitled to intervening rights for several reasons. First, it
argues that the doctrine of intervening rights cannot
apply here because the actual language of the asserted
claims of the ’245 Patent was not amended on reexamina-
tion. However, as noted above, the critical question is
“whether the scope of the claims” has been changed and
“not merely whether different words are used.” Laitram
Corp., 163 F.3d at 1346. Although we have not directly
addressed whether arguments made to the PTO during
reexamination can amend the scope of claims for purposes
of the intervening rights doctrine, we have consistently
held that arguments made to the PTO on reexamination
can create an estoppel or disavowal and thereby change
the scope of claims even when the language of the claims
did not change.
In Cole v. Kimberly-Clark Corp., 102 F.3d 524, 532
(Fed. Cir. 1996), we held that a patentee surrendered any
claim to disposable briefs for children with “ultrasonic
bonded seams” when she made statements on reexamina-
tion distinguishing her patent claiming disposable briefs
from those disclosing bonded seams. Id. The claims were
effectively narrowed after reexamination to exclude briefs
with bonded seams simply based on the arguments she
made to distinguish the prior art. See id.
We recently reiterated this principle in American
Piledriving Equipment, Inc v. Geoquip, Inc., 637 F.3d
11 MARINE POLYMER v. HEMCON
1324, 1336 (Fed. Cir. 2011). There, we held that the
patentee disclaimed claim scope on reexamination by
arguing that certain claims should be allowed over the
prior art because the claimed “integral” components were
comprised of “one piece.” Id. The patentee asserted that
its argument to the PTO did not constitute a disavowal of
claim scope because “it did not amend its claims” and
because the examiner did not agree with that particular
argument. We rejected these contentions, finding that the
patentee “cannot attempt to distance itself from the
disavowal of broader claim scope” because it had “unam-
biguously argued that ‘integral’ meant ‘one-piece’ during
reexamination.” Id.; see also CIAS, Inc. v. Alliance Gam-
ing Corp., 504 F.3d 1356, 1362 (Fed. Cir. 2007) (holding
that argument to PTO on reexamination constituted
disavowal of claim scope even though “no amendments
were made”); C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 867–869 (Fed. Cir. 2004) (holding that after
initial examination the claim in suit “[did] not necessarily
require” that a surgical device be “pleated” but that
arguments made during reexamination constituted a
“clear disclaimer of scope” requiring “pleating”).
We see no reason why this rule, giving effect to dis-
claimer of claim scope during reexamination or reissue,
should not also apply in the context of intervening rights.
In fact, a contrary rule would allow patentees to abuse the
reexamination process by changing claims through argu-
ment rather than changing the language of the claims to
preserve otherwise invalid claims and, at the same time,
avoid creating intervening rights as to those claims.
Therefore, if the scope of the claims actually and substan-
tively changed because of Marine Polymer’s arguments to
the PTO, the claims have been amended by disavowal or
estoppel, and intervening rights apply. This is so even
MARINE POLYMER v. HEMCON 12
though Marine Polymer did not amend the language of its
claims on reexamination.
Second, Marine Polymer asserts that the district
court’s claim construction of “biocompatible” was correct
and that, therefore, the scope of the claims was not al-
tered on reexamination. However, the district court erred
in construing the claims to require “no detectable biologi-
cal reactivity.” Claim Construction Order, at 24–25. The
specification makes clear that p-GlcNAc “meets the bio-
compatibility test if none of the cultures treated with [the
polymer] show[s] a greater than mild reactivity.” ’245
Patent col.42 ll.42–44 (emphasis added). In other words,
the specification indicates that a polymer is “biocompati-
ble” under the elution test as long as it achieves a score of
zero to two on the elution test (i.e., has no to mild reactiv-
ity). Six dependent claims in the original patent specifi-
cally required that the “biocompatible” p-GlcNAc have an
elution test score of either one or two (i.e., slight or mild
reactivity). These dependent claims (which were can-
celled on reexamination in order to create consistency
with the district court’s claim construction) indicate that
the term “biocompatible” must include slight or mild
biological reactivity. Moreover, as explained above, the
specification indicates that p-GlcNAc satisfies the re-
quirements of all four biocompatibility tests even if it
shows a small amount of biological reactivity.
Although Marine Polymer points to a statement in the
specification noting that the “p-GlcNAc of the invention
exhibits a high degree of biocompatibility,” ’245 Patent,
col.10 ll.49–50, there is nothing in the specification indi-
cating that the claims are so limited. The claims them-
selves use only the term “biocompatib[ility],” e.g., id.,
col.72 ll.5, not “a high degree of biocompatibility.” In a
similar vein, Marine Polymer also relies on the fact the p-
GlcNAC tested in the specification’s working example
13 MARINE POLYMER v. HEMCON
“exhibit[ed] no detectable biological reactivity” under any
of the disclosed biocompatibility tests to argue that the
specification defined “biocompatible” as such by implica-
tion. Id. col.41 ll.67. However, this statement relates to a
single example, and does not suggest that the claims are
so limited. See, e.g., Silicon Graphics, Inc. v. AT1 Techs.,
lnc., 607 F.3d 784, 792-93 (Fed. Cir. 2010) (refusing to
read a single embodiment in the specification into the
claims absent clear indication that the patentee intends
them to be “strictly coextensive”); Bell Atl. Network Servs.,
lnc. v. Covad Commc'ns Grp., lnc., 262 F.3d 1258, 1271
(Fed. Cir. 2001) (refusing to use language in the specifica-
tion to define claim term “by implication” where that
language was not used consistently throughout the pat-
ent). Therefore, the district court’s claim construction
was incorrect, and the original claims permitted p-GlcNAc
that exhibited some biological reactivity.
Third, relying on language from the district court,
Marine Polymer contends that HemCon has waived its
argument that the proper claim construction of “biocom-
patible” in the original claims required at least some
biological reactivity because it did not raise any claim
construction argument below relating to the level of
biological reactivity. This is a situation in which the
district court adopted neither party’s proposed claim
construction, and instead adopted its own construction.
Contrary to the district court’s view, it is well established
that parties may raise specific claim construction argu-
ments for the first time on appeal that “protect the origi-
nal breadth [of the party’s proposed] claim construction by
rejecting the imposition of an additional limitation not
required or recited by [that claim construction].” Interac-
tive Gift Express v. Compuserve Inc., 256 F.3d 1323, 1346
(Fed. Cir. 2001). These arguments must simply be consis-
tent with the claim construction proffered by that party
MARINE POLYMER v. HEMCON 14
below. See Exigent Tech., Inc. v. Atrana Solutions, Inc.,
442 F.3d 1301, 1306–07 (Fed. Cir. 2006). Here, HemCon
argued below that the proper claim construction for
“biocompatible” was “suited for biomedical applications.” 3
Claim Construction Order, at 15.
The district court’s addition of the requirement that
the p-GlcNAc show “no detectable biological reactivity”
imposed an additional claim limitation that narrowed
HemCon’s proposed construction and narrowed the scope
of the claims, thus making them more likely valid. Hem-
Con’s failure to further argue the claim construction
below was no waiver of its right to argue that the addi-
tional limitation imported by the district court was incor-
rect. In other words, HemCon is entitled to “protect the
original breadth” of the proposed claim construction by
arguing that the district court improperly added the no
reactivity limitation.
Lastly, Marine Polymer argues that, even if it
changed the scope of most of the claims on reexamination,
it did not change the scope of original claims 12 and 20,
which already required “an elution test score of 0” (i.e., no
reactivity). ’245 Patent, col.72 ll. 34–35, 61. However, the
scope of claims 12 and 20 was also substantively changed.
Those two original claims specifically required an elution
test score of zero, but did not reference any other testing
method despite the fact that the specification disclosed
four distinct testing methods (and described testing
3 Marine Polymer argues that HemCon also did not
sufficiently raise this claim construction below. However,
the district court explicitly addressed and rejected this
proposed construction in its claim construction order. See
Claim Construction Order, at 15. Although HemCon also
argued that “biocompatible” should be construed to limit
p-GlcNAc to that harvested from plant microalgae, it does
not raise that proposed construction on appeal.
15 MARINE POLYMER v. HEMCON
results of p-GlcNAc under each test). Given the specifica-
tion’s reference to three other tests and the reference in
the claims to only the elution test, we conclude that
original claims 12 and 20 required a showing of no reac-
tivity on only the elution test. The claims covered p-
GlcNAc that passed one of the other biocompatibility tests
even while displaying slight reactivity. After Marine
Polymer imported the district court’s erroneous claim
construction on reexamination, the claims required that
the p-GlcNAc exhibit “no detectable biological reactivity”
under any of the specified tests. Claim Construction
Order, at 24–25. The district court’s claim construction
required “no detectable biological reactivity as determined
by biocompatibility tests” generally. Id. (emphasis added).
Just as the district court’s construction narrowed the
original claims by requiring “no detectable biological
reactivity,” it narrowed claims 12 and 20 by defining the
term “biocompatible” to require that the p-GlcNAc exhibit
no reactivity under any biocompatibility tests that were
performed. Adoption of that construction changed the
scope of claims 12 and 20 because p-GlcNAc that exhib-
ited some reactivity on one of the other biocompatibility
tests (other than the elution test) would no longer fall
within the scope of claims 12 and 20. HemCon is entitled
to absolute intervening rights as to all claims, including
claims 12 and 20.
We reverse the district court’s grant of judgment of in-
fringement to Marine Polymer on the ground of absolute
intervening rights. 4 The absolute intervening rights
4 HemCon also argued that it did not literally in-
fringe claims 12 and 20 because its products cannot
undergo elution testing, as required by the claims. How-
ever, HemCon waived this argument because it did not
raise it in opposing summary judgment. The failure to
raise an affirmative defense in response to a summary
MARINE POLYMER v. HEMCON 16
defense requires reversal of not only the district court’s
damage award but also of its permanent injunction be-
cause, as it currently stands, the injunction would pro-
hibit HemCon from using, selling, or offering to sell any of
its accused products produced before the reexamination
date even if the particular item had been manufactured
before the reexamination date. As explained above, the
doctrine of absolute intervening rights protects such
activity.
II
HemCon also contends that it is entitled to equitable
intervening rights. The doctrine of equitable intervening
rights allows the court to “permit[ ] the continued manu-
facture, use, or sale of additional products covered by the
reissue[d] [or reexamined] patent when the [accused
infringer] made, purchased, or used identical products . . .
before the reissue [or reexamination] date.” BIC Leisure,
1 F.3d at 1221 (emphasis added); see also 35 U.S.C. §§
252, 307(b). In other words, it protects an accused in-
fringer’s ability to make, sell, offer to sell, or use particu-
lar items of the same type that the accused infringer had
made, purchased, or used before the reexamination even
if the particular item was produced thereafter. It also
protects a newly created product that was not of a type
produced before the reexamination if the accused in-
fringer made “substantial preparations” for manufacture
of the product before the reissue or reexamination. See
Shockley v. Arcan, Inc., 248 F.3d 1349, 1361 (Fed. Cir.
2001); see also 35 U.S.C. § 252.
judgment motion constitutes a waiver of that defense.
See, e.g., Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320
F.3d 1354, 1366–67 (Fed. Cir. 2003); Diversey Lever, Inc.
v. Ecolab, Inc., 191 F.3d 1350, 1352–53 (Fed. Cir. 1999).
17 MARINE POLYMER v. HEMCON
The inquiry as to whether equitable intervening
rights should apply is a fact intensive one, involving
consideration of numerous issues. For example, some
relevant factors include: 1) whether non-infringing goods
can be manufactured from the inventory used to manufac-
ture the infringing product; 2) whether there are “existing
orders” for the products; 3) whether the accused infringer
made “substantial preparation” to manufacture the prod-
ucts before the reexamination or reissue; and 4) whether
the accused infringer relied on the original patent scope in
making these preparations. See Seattle Box Co. v. Indus.
Crating & Packing Inc., 756 F.2d 1574, 1580–81 (Fed. Cir.
1985). The district court has made no factual findings
related to these various fact-intensive inquiries. We
therefore remand to the district court to determine in the
first instance whether HemCon is entitled to equitable
intervening rights.
III
Finally, HemCon argues that, under its proposed
claim construction of “biocompatible” as “suited for bio-
medical applications,” the original asserted claims of the
’245 Patent (i.e., the claims before the district court’s
erroneous construction was adopted on reexamination)
are invalid as obvious. 5 However, given that Marine
Polymer substantively changed the scope of these claims
on reexamination, we conclude that this dispute is moot
5 Below, HemCon asked the district court for JMOL
on both obviousness and anticipation grounds. However,
on appeal, HemCon makes no reference to anticipation
and contends that “the prior art” (as opposed to one
specific reference) discloses all the limitations of the
asserted claims. See, e.g., Appellant’s Br. 48. Therefore,
we interpret HemCon’s invalidity contentions as raising
only an obviousness challenge.
MARINE POLYMER v. HEMCON 18
and decline to reach it. 6 “The purpose of the reexamina-
tion procedure is to permit a patentee . . . to obtain review
[of the validity of the patent] and if necessary [to permit]
correction of the claims” to preserve their validity. Bloom
Eng’g, 129 F.3d at 1249. The reexamination statute itself
makes this purpose clear by providing that “the patent
owner [is] permitted to propose any amendment to his
patent and a new claim or claims thereto, in order to
distinguish the invention as claimed from the prior art”
but cannot “enlarg[e] the scope of a claim of the patent.”
35 U.S.C. § 305. As a result, “the making of substantive
changes in the claims [during reexamination] is treated as
an irrebuttable presumption that the original claims were
materially flawed.” Bloom Eng’g, 129 F.3d at 1249.
Under the reexamination scheme, Marine Polymer effec-
tively surrendered its original claims in order to preserve
the patent’s validity. Therefore, the validity of the origi-
nal claims is no longer a live issue, as future infringement
claims will either be based on the reexamined claims or
will be barred by the intervening rights doctrine.
IV
A consequence of our holding is that both the injunc-
tion and damages award must be vacated. If HemCon
does have equitable intervening rights, neither damages
nor an injunction would be appropriate. In any event,
because HemCon has absolute intervening rights, there
can be no damages award for products manufactured
before the date of reissue. With respect to products
manufactured after the date of reissue, damages and an
injunction would be appropriate if HemCon did not have
equitable intervening rights. For the foregoing reasons,
6 Notably, HemCon only asked us to reach the issue
if we found that the scope of the claims was not changed
on reexamination.
19 MARINE POLYMER v. HEMCON
we vacate the injunction and damages award and remand
for proceedings consistent with this opinion.
REVERSED IN PART, VACATED IN PART, and
REMANDED
COSTS
No costs.
United States Court of Appeals
for the Federal Circuit
__________________________
MARINE POLYMER, INC.,
Plaintiff-Appellee,
v.
HEMCON, INC.,
Defendant-Appellant.
__________________________
2010-1548
__________________________
Appeal from the United States District Court for the
District of New Hampshire in case no. 06-CV-0100, Judge
Joseph A. DiClerico, Jr.
__________________________
LOURIE, Circuit Judge, dissenting.
I respectfully dissent from the reversal of the district
court’s holding of infringement in this case. The majority
holds that intervening rights apply to claims 12 and 20
because during reexamination the patentee successfully
argued for the district court’s claim construction and
cancelled other patent claims (claims not asserted in this
litigation). It therefore finds that the holding of infringe-
ment was incorrect and reverses that holding.
First, the district court did not have before it the re-
sults of the reexamination proceeding, which was ongoing
during the district court trial. While the majority finds
MARINE POLYMER v. HEMCON 2
that it is appropriate to consider the reexamination
proceeding, I consider it unwise. We should have the
benefit of the district court’s view on the effect of the
reexamination proceeding rather than review it ourselves
in the first instance. Procedurally, the reexamination
proceeding could have been appealed here, and our taking
into consideration the results of that proceeding, which
may not have been final, could have unfairly deprived the
patentee of its right to have its infringement proceeding
decided separately from a non-final PTO proceeding.
Yet even if it were proper for us to consider the issue
in our review of the district court’s decision, I believe that
intervening rights should not apply here. Intervening
rights under 35 U.S.C. §§ 307(b) and 316(b) apply only to
“amended or new claims.” Thus only “amended or new
claims” have the effect specified in 35 U.S.C. § 252.
Claims 12 and 20 were not new or amended. They are
claims from the original patent and their language was
not in any way changed. An unchanged original claim
should not be considered to be changed for intervening
rights purposes based in part on the cancellation during a
separate reexamination proceeding of other claims in the
patent. The patentee’s arguments and cancellation of six
claims requiring an elution test score of 1 or 2 may or may
not have affected the scope of claims 12 and 20, both of
which require an elution test score of 0, but it did not
“amend” the claims or make them “new” claims, and that
is what the statutory language requires.
The majority errs by relying on the language of § 252
that claims in a reissue and reexamination patent have
the same effect as originally granted claims so as long as
they are “substantially identical.” Moving first to this
analysis, however, misses the threshold requirement in
§§ 307(b) and 316(b) that intervening rights apply only to
amended or new claims.
3 MARINE POLYMER v. HEMCON
I therefore conclude that the majority should not have
relied on the results of the reexamination proceeding and,
even if it were proper for them to do so, the majority
should have found that intervening rights did not apply to
claims 12 and 20, as they were not “amended or new
claims.” Accordingly, I dissent from the reversal of the
holding of infringement.