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-100, Judge
Joseph A. DiClerico, Jr.
____________________________
Decided: March 15, 2012
____________________________
BRIAN M. POISSANT, Jones Day, of New York, New
York, for plaintiff-appellee on rehearing en banc. With
him on the brief were JULIE M. BAHER, LYNDA Q. NGUYEN
and OGNIAN V. SHENTOV. Of counsel was GREGORY A.
CASTANIAS, of Washington, DC.
RAYMOND A. KURZ, Hogan Lovells US LLP, of Wash-
ington, DC, for defendant-appellant on rehearing en banc.
With him on the brief were CELINE JIMENEZ CROWSON and
KEITH B. O’DOHERTY.
MARINE POLYMER v. HEMCON 2
MICHAEL A. GOLLIN, Venable LLP, of Washington, DC,
for amicus curiae Biotechnology Industry Organization on
rehearing en banc. With him on the brief were WILLIAM
D. COSTON, MARTIN L. SAAD, MEAGHAN H. KENT and
FABIAN M. KOENIGBAUER.
EDWARD R. REINES, Weil, Gotshal & Manges, LLP, of
Redwood Shores, California, for amici curiae Hewlett-
Packard Company, et al. on rehearing en banc. With him
on the brief was NATHAN GREENBLATT.
MATTHEW C. PHILLIPS, Stoel Rives LLP, of Portland,
Oregon, for amicus curiae Intellectual Ventures Manage-
ment LLC, on rehearing en banc. With him on the brief
were NATHAN C. BRUNETTE and MATTHEW C. RAINEY,
Intellectual Ventures Management, LLC, of Bellevue,
Washington.
MITCHELL G. STOCKWELL, Kilpatrick Townsend &
Stockton LLP, of Atlanta, Georgia, for amicus curiae Jan
K. Voda, M.D., on rehearing en banc.
ROBERT G. STERNE, Sterne, Kessler, Goldstein & Fox,
P.L.L.C., of Washington, DC, for amici curiae Soverain
Software LLC, et al., on rehearing en banc. With him on
the brief was JON E. WRIGHT.
MATTHEW J. MOORE, Latham & Watkins LLP, of
Washington, DC, for amici curiae Geico Corporation, et al.
With him on the brief were JULIE M. HOLLOWAY and ADAM
M. GREENFIELD.
__________________________
3 MARINE POLYMER v. HEMCON
Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON,
GAJARSA, 1 LINN, DYK, PROST, REYNA, and WALLACH,
Circuit Judges. 2
Opinion for the court in part filed by Circuit Judge
LOURIE, in which Chief Judge RADER and Circuit Judges
NEWMAN, BRYSON, and PROST join in full, and in which
Circuit Judge LINN joins in part II.
Opinion filed by Circuit Judge DYK, dissenting in part, in
which Circuit Judges GAJARSA, REYNA, and WALLACH join
in full, and in which Circuit Judge LINN joins in parts
I–II.
LOURIE, Circuit Judge.
Defendant-Appellant HemCon, Inc. (“HemCon”) ap-
peals from a judgment of the United States District Court
for the District of New Hampshire holding that HemCon
infringed U.S. Patent 6,864,245 (“the ’245 patent”) as-
signed to Plaintiff-Appellee Marine Polymer Technologies,
Inc. (“Marine Polymer”). On September 26, 2011, a panel
of this court reversed the district court’s decision, conclud-
ing that HemCon had acquired intervening rights in the
’245 patent based on actions taken by Marine Polymer
during a parallel reexamination proceeding. Marine
Polymer Techs., Inc. v. HemCon, Inc., 659 F.3d 1084 (Fed.
Cir. 2011) (“Panel Opinion”), vacated, 2012 U.S. App.
LEXIS 1155 (Fed. Cir. Jan. 20, 2012). Upon reconsidera-
tion en banc, we affirm the judgment of the district court
by an equally divided court. Although the district court
did not have the reexamination before it or decide the
1 Circuit Judge GAJARSA assumed senior status
on July 31, 2011.
2 Circuit Judges MOORE and O’MALLEY did not
participate in the decision.
MARINE POLYMER v. HEMCON 4
effect of that issue on its decision, we also consider Hem-
Con’s arguments with respect to the reexamination and a
majority of this court concludes as an alternative ground
for affirmance that intervening rights do not apply to
claims that have not been amended and are not new.
BACKGROUND
Marine Polymer owns the ’245 patent, which discloses
and claims preparations of poly-β-1→4-N-
acetylglucosamine (“p-GlcNAc”), a naturally occurring
polysaccharide polymer produced by organisms such as
arthropods, fungi, and microalgae. Purified p-GlcNAc has
utility in various industrial, pharmaceutical, and bio-
medical applications. For example, p-GlcNAc promotes
hemostasis (i.e., stoppage of bleeding or hemorrhage) and
is therefore useful in trauma units for treating serious
wounds.
The ’245 patent places particular emphasis on “bio-
compatible” compositions of p-GlcNAc. In this context,
biocompatibility relates to a compound’s biological reactiv-
ity or tendency to elicit deleterious reactions—e.g., necro-
sis, erythema, edema, cellular degeneration—upon
exposure to living cells or tissues. E.g., ’245 patent col.42
ll.36–38, col.44 ll.15–16. The specification describes four
tests that can be used to assess the biocompatibility of a
substance: an elution test, an implantation test, an in-
tracutaneous injection test, and a systemic injection test.
Id. col.42 ll.1–3. The disclosed elution test involves expos-
ing a test substance to a solution to create an extract,
exposing cultured test cells to the extract, and then ob-
serving the cells for signs of cytotoxicity. See id. col.42
ll.6–62. The implantation test involves implanting a
sample of the test substance into an animal’s muscle
tissue and scoring the severity of any adverse local reac-
tions. See id. col.42 l.64 – col.43 l.64. The intracutaneous
5 MARINE POLYMER v. HEMCON
injection test calls for preparing an extract of the test
substance, injecting small volumes of the extract into the
skin of an animal, and monitoring the injection sites for
reactivity. See id. col.43 l.65 – col.44 l.56. Finally, in the
systemic injection test, animals are monitored for weight
changes and other overt signs of toxicity after receiving
intravenous or intraperitoneal injections of a test sub-
stance extract. See id. col.44 l.57 – col.45 l.42.
In describing these biocompatibility tests, the specifi-
cation indicates that their requirements are met if a given
test substance shows no more than mild or slight reactiv-
ity. For example, scores on the elution test range from
zero to four on a scale of biological reactivity, where zero
represents no reactivity, one represents slight reactivity,
two represents mild reactivity, and three or four repre-
sent moderate or severe reactivity, respectively, and a
substance can satisfy the elution test “if none of the
cultures treated with the test article show a greater than
mild reactivity.” Id. col.42 ll.41–62. But with regard to
the claimed p-GlcNAc compositions, the specification also
states that “the p-GlcNAc of the invention exhibits no
detectable biological reactivity, as assayed by elution
tests, intramuscular implantation in rabbits, intracutane-
ous injection in rabbits, and systemic injections in mice.”
Id. col.41 l.66 – col.42 l.3; see also col.45 l.44 – col.49 l.66
(reporting biocompatibility test results for p-GlcNAc
showing zero reactivity on each test).
The ’245 patent issued with 22 claims, all of which re-
cite “biocompatible” compositions of p-GlcNAc. A majority
of those claims recite the “biocompatible” limitation
generically. Independent claim 6 is representative:
A biocompatible poly-β-1→4-N-acetylglucosamine
comprising up to about 150,000 N-
acetylglucosamine monosaccharides covalently at-
MARINE POLYMER v. HEMCON 6
tached in a β-1→4 conformation and having a mo-
lecular weight of up to about 30 million daltons in
which at least one N-acetylglucosamine monosac-
charide has been deacetylated.
Id. col.72 ll.5–10 (emphasis added). In addition, the ’245
patent contains several dependent claims that recite
specific scores on the elution test. For example, claim 12
claims: “The biocompatible poly-β-1→4-N-
acetylglucosamine of any one of claims 6–11 which has an
elution test score of 0.” Id. col.72 ll.33–35 (emphasis
added). Claims 3 and 20 also specify zero scores on the
elution test; analogous claims 4, 5, 13, 14, 21, and 22
require elution test scores of one or two. E.g., id. col.72
ll.33–41.
Marine Polymer sued HemCon in March 2006, alleg-
ing that HemCon infringed the ’245 patent. During
subsequent Markman proceedings, Marine Polymer
argued that “biocompatible” p-GlcNAc should be con-
strued to mean “biomedically pure [p-GlcNAc] that repro-
ducibly exhibits acceptably low levels of adverse
bioreactivity, as determined by biocompatibility tests.”
Marine Polymer Techs., Inc. v. HemCon, Inc., No. 06-CV-
100, 2008 WL 1995454, at *1 (D.N.H. May 6, 2008).
HemCon countered that “biocompatible” should be read as
limiting the claims to p-GlcNAc that had been “harvested
from plant microalgae,” or, in the alternative, should be
interpreted broadly to mean “suited for biomedical appli-
cations.” Id. at *1–2. The district court considered, and
ultimately rejected, each of the parties’ proposed construc-
tions after reviewing the ’245 patent’s claim language,
written description, and prosecution history. Instead, the
district court concluded that “biocompatible” p-GlcNAc, as
claimed in the ’245 patent, means p-GlcNAc “with low
variability, high purity, and no detectable biological
7 MARINE POLYMER v. HEMCON
reactivity as determined by biocompatibility tests.” Id. at
*10.
Marine Polymer then moved for summary judgment
that HemCon literally infringed claims 6, 7, 10–12, 17,
and 20 of the ’245 patent. Applying its claim construc-
tion, the district court granted Marine Polymer’s motion
and held that HemCon had infringed all seven asserted
claims. A jury trial followed to determine validity and
damages. The jury made factual findings relating to
obviousness and determined that the ’245 patent was not
anticipated by the cited prior art. With respect to dam-
ages, the jury found that Marine Polymer was entitled to
a reasonable royalty of $29,410,246. After the jury ver-
dict, HemCon filed motions for judgment as a matter of
law (“JMOL”) on anticipation, on the jury’s factual find-
ings relating to obviousness, and challenging the damages
award as not supported by substantial evidence. The
district court denied each of the motions and made a
further legal determination that the asserted claims were
not obvious under 35 U.S.C. § 103. The district court
entered a permanent injunction on September 16, 2010,
barring HemCon from further infringement of the as-
serted claims, and issued its final judgment on September
22, 2010. HemCon appealed the decision to this court.
In August 2009, while the infringement litigation was
still before the district court, HemCon filed a request for
ex parte reexamination of the ’245 patent in the United
States Patent and Trademark Office (“PTO”). HemCon’s
reexamination request cited ten prior art references—all
of which, according to HemCon, raised substantial new
questions of patentability for the ’245 patent given the
construction of “biocompatible” adopted by the district
court. J.A. 40740–41. In response, the PTO granted
HemCon’s reexamination request, initiated reexamination
proceedings, and issued a non-final office action on April
MARINE POLYMER v. HEMCON 8
1, 2010. 3 In this first office action, the examiner adopted
a construction of “biocompatible” different from the dis-
trict court’s, concluding that under its broadest reason-
able interpretation, the term meant “low variability, high
purity, and little or no detectable reactivity.” J.A. 39503
(emphasis added). Noting that dependent claims 4, 5, 13,
14, 21, and 22 of the ’245 patent required elution test
scores of one or two (corresponding to slight or mild
reactivity on that test as defined in the specification), the
examiner explained that the district court’s construction
requiring “no detectable biological reactivity” conflicted
with those claims, while his interpretation avoided such
inconsistency. The examiner then rejected all of the
original 22 claims as invalid under his broader construc-
tion in light of the cited prior art. In so doing, he relied
primarily on three prior art references—a scientific article
(Sandford) and two patents (Peniston and Malette)—
finding that each reference explicitly disclosed nearly all
of the limitations of every claim. With respect to the
“biocompatible” limitation, the examiner explained that
any difference between the claimed biocompatibility and
that disclosed by Sandford, Peniston, and Malette was
“minor” and would have been obvious to a person of
ordinary skill in the art at the time of the invention. J.A.
39507; see also 39517, 39522.
In response, Marine Polymer addressed “the improper
dependency noted by the Examiner” by cancelling all six
claims that had recited elution test scores of one or two
(i.e., claims that expressly required at least some reactiv-
ity), while leaving each of the remaining claims 1–3, 6–12,
and 15–20 unaltered. Having deleted the inconsistent
claims, Marine Polymer argued that “the [district court’s]
3 Ex parte reexamination of the ’245 patent was
conducted under Reexamination Control No. 90/009,555.
9 MARINE POLYMER v. HEMCON
interpretation of the term ‘biocompatible’ should be
adopted in this reexamination” in view of various consis-
tent teachings within the specification. J.A. 37688–90.
With all conflicting claims cancelled, the examiner
“agree[d] with the [district] court’s construction of the
term biocompatible as derived from the specification of
the . . . ’245 patent.” J.A. 39481. Furthermore, the exam-
iner withdrew all rejections in view of that narrower
construction and confirmed the remaining claims as
patentable. Id.
The PTO did not provide notice of its intent to issue a
reexamination certificate for the ’245 patent until No-
vember 3, 2010, after the district court had entered final
judgment in Marine Polymer’s infringement action.
HemCon timely appealed from the district court’s judg-
ment, and on November 18, 2010, a motions panel of this
court granted a stay of the damages award and perma-
nent injunction pending appeal. On March 29, 2011, the
PTO issued the final reexamination certificate (“’245
Reexam. Cert.”), which cancelled dependent claims 4, 5,
13, 14, 21, and 22 and confirmed the patentability of
claims 1–3, 6–12, and 15–20 in accordance with the
examiner’s decision. ’245 Reexam. Cert. col.2 ll.1–6.
A panel of this court heard oral arguments in Hem-
Con’s appeal from the district court’s judgment on June 7,
2011, and issued a decision on September 26, 2011, in
which a majority reversed the district court’s judgment on
infringement and vacated the injunction and the damages
award on grounds that HemCon had acquired intervening
rights during reexamination of the ’245 patent. Panel
Opinion, 659 F.3d at 1090–95. Marine Polymer petitioned
for en banc rehearing, and on January 20, 2012, the full
court granted Marine Polymer’s petition for rehearing and
vacated the judgment of the panel. Marine Polymer
Techs., Inc. v. HemCon, Inc., No. 2010-1548, 2012 U.S.
MARINE POLYMER v. HEMCON 10
App. LEXIS 1155 (Fed. Cir. Jan. 20, 2012). For the
reasons described below, we now affirm the judgment of
the district court.
DISCUSSION
I.
The District Court’s Decision
A. Jurisdiction and Standards of Review
We have jurisdiction to entertain this appeal under 28
U.S.C. § 1295(a)(1). We address claim construction as a
matter of law, which we review without formal deference
on appeal, although we give respect to the judgments of
the district courts. Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We review
grants of summary judgment de novo, reapplying the
same standard applied by the district court under Federal
Rule of Civil Procedure 56(a). Iovate Health Scis., Inc. v.
Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d
1376, 1380 (Fed. Cir. 2009). Our review of a district
court’s denial of JMOL is governed by regional circuit law,
Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil
Co., 425 F.3d 1366, 1372 (Fed. Cir. 2005), and the First
Circuit reviews a district court’s denial of JMOL de novo,
Astro-Med, Inc. v. Nihon Kohden Am., Inc., 591 F.3d 1, 13
(1st Cir. 2009). In such situations, “a jury’s verdict must
be upheld unless the facts and inferences, viewed in the
light most favorable to the verdict, point so strongly and
overwhelmingly in favor of the movant that a reasonable
jury could not have reached the verdict.” Id. (quoting
Borges Colon v. Roman-Abreu, 438 F.3d 1, 14 (1st Cir.
2006)). In reviewing a district court’s denial of JMOL on
damages, the First Circuit reverses only where “reason-
able persons could not have reached the conclusion that
the jury embraced.” Visible Sys. Corp. v. Unisys Corp.,
11 MARINE POLYMER v. HEMCON
551 F.3d 65, 74 (1st Cir. 2008) (quoting Attrezzi, LLC v.
Maytag Corp., 436 F.3d 32, 37 (1st Cir. 2006)). Statutory
interpretation is a matter of law that we consider de novo.
Aristocrat Techs. Austl. Pty. Ltd. v. Int’l Game Tech., 543
F.3d 657, 660 (Fed. Cir. 2008).
B. Claim Construction
HemCon argues that the district court’s construction
of “biocompatible” to mean “low variability, high purity,
and no detectable biological reactivity as determined by
biocompatibility tests” was erroneous and warrants
reversal of the judgment. In supporting this assertion,
HemCon relies primarily on the presence of the six de-
pendent claims in the original ’245 patent (eventually
cancelled in reexamination) that required elution test
scores of one or two, as well as passages in the written
description characterizing certain biocompatibility tests
as being satisfied despite detectable bioreactivity. Hem-
Con therefore proposes a broader alternative construction,
“suitable for biomedical applications,” that it argues
would better align with the teachings in the specification
and render the asserted claims invalid.
We disagree. The district court’s interpretation of
“biocompatible” is supported by intrinsic evidence, and we
therefore uphold that construction. Our claim construc-
tion analysis begins with the language of the claim itself,
as it would have been understood by a person of ordinary
skill in the art at the time of the invention. Phillips v.
AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
banc) (quoting Vitrionics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996) (“we look to the words of
the claims themselves . . . to define the scope of the pat-
ented invention”)). Faced with widely varying proposed
definitions from the parties, the district court did not find
that “biocompatible” had a plain and ordinary meaning to
MARINE POLYMER v. HEMCON 12
one skilled in the art. The district court properly looked
first to the claims of the ’245 patent and determined that
they “do not define ‘biocompatible.’” Marine Polymer,
2008 WL 1995454, at *3.
Although several of the dependent claims specify that
the “biocompatible” p-GlcNAc may exhibit mild reactivity
in an elution test (i.e., “an elution test score of 1” or “an
elution test score of 2”), the majority of the claims use the
term “biocompatible” generically, without any reference to
a biocompatibility test score. Because the term “biocom-
patible” admits of no limitation based on the context of
the claims, the district court properly turned to the teach-
ings of the specification.
The specification teaches that the p-GlcNAc “of the
invention” has “a high degree of biocompatibility” and
directs the reader to a portion of the specification that
“demonstrates the high biocompatibility of the p-GlcNAc
of the invention.” ’245 patent col.10 ll.49–62. Further,
the cited material provides empirical test results showing
that the p-GlcNAc of the invention exhibited zero reactiv-
ity on each disclosed biocompatibility test, id. col.45 ll.45–
50, col.46 ll.10–11 and 66–67, col.49 ll.26–29, and summa-
rizes the results as follows: “[I]t is demonstrated that the
p-GlcNAc of the invention exhibits no detectable biological
reactivity, as assayed by elution tests, intramuscular
implantation in rabbits, intracutaneous injection in
rabbits, and systemic injections in mice.” Id. col.41 l.66 –
col.42 l.3. Thus, the specification supports the district
court’s claim construction. See, e.g., Netcraft Corp. v.
eBay, Inc., 549 F.3d 1394, 1398 (Fed. Cir. 2008) (“[T]he
common specification’s repeated use of the phrase ‘the
present invention’ describes the invention as a whole . . .
.”); Verizon Servs. Corp. v. Vonage Holdings Corp., 503
F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent thus
describes the features of the ‘present invention’ as a
13 MARINE POLYMER v. HEMCON
whole, this description limits the scope of the invention.”);
Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312,
1318 (Fed. Cir. 2006) (limiting claims to a fuel filter
where “the written description refers to the fuel filter as
‘this invention’ or ‘the present invention’”). 4
HemCon’s arguments highlighting an inconsistency
between the district court’s construction and the claims
requiring non-zero elution test scores, while not baseless,
essentially amount to a conflict between teachings in the
specification and the doctrine of claim differentiation. As
we have held, claim differentiation is “not a hard and fast
rule and will be overcome by a contrary construction
dictated by the written description or prosecution his-
tory.” Seachange Int’l, Inc. v. C-Cor, Inc., 413 F.3d 1361,
1369 (Fed. Cir. 2005); see also Laitram Corp. v. Rexnord,
Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991) (“Claim differ-
entiation is a guide, not a rigid rule.”). Such description
appears in the specification here, as indicated above.
We also find HemCon’s focus on the possibility of non-
zero “passing” scores on the disclosed biocompatibility
tests unpersuasive. In describing “Materials and Meth-
ods” for the four disclosed biocompatibility tests, the
specification indicates that, for example, test substances
4 Judge Dyk’s opinion argues the details of claim
construction based on the assertion that neither party
argued the construction arrived at by the district court.
We are not bound by the arguments of the parties, how-
ever, and neither was the district court. Exxon Chem.
Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed.
Cir. 1995). Moreover, Judge Dyk suggests that we are
deciding claim construction based only on one example, to
the exclusion of others. In fact there is only one example
of the claimed p-GlcNAc in the specification; the rest of
the cited “examples” provide various methods of purifying,
characterizing, or using the disclosed product.
MARINE POLYMER v. HEMCON 14
may “meet[] the biocompatibility test if none . . . show a
greater than mild reactivity.” ’245 patent col.42 ll.42–44.
But such language appears only in generalized descrip-
tions of these test methods; when read as a whole, the
specification makes clear that the p-GlcNAc of the inven-
tion outperforms baseline standards and shows “no de-
tectable biological reactivity as determined by
biocompatibility tests.” The district court’s construction
of “biocompatible” as meaning p-GlcNAc “with low vari-
ability, high purity, and no detectable biological reactivity
as determined by biocompatibility tests” is therefore
affirmed by an equally divided court. 5
C. Infringement
Following its decision on claim construction, the dis-
trict court ruled on summary judgment that HemCon
infringed claims 6, 7, 10–12, 17, and 20 of the ’245 patent.
On appeal, HemCon’s noninfringement challenge regard-
ing claims 6, 7, 10, 11, and 17 hinges entirely on its failed
claim construction arguments, and HemCon does not
otherwise dispute its infringement of these claims. With
regard to claims 12 and 20, HemCon raises an additional
defense, arguing that the district court lacked sufficient
evidence to establish literal infringement because Hem-
Con’s products allegedly cannot undergo elution testing as
required by those claims. However, HemCon has waived
that argument by failing to raise it in opposing summary
judgment, and we therefore need not consider it here.
Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d
1354, 1366–67 (Fed. Cir. 2003). Accordingly, we affirm
5 We also note that, while not a basis for our affir-
mance, the PTO arrived at the same conclusion upon
interpreting the term in its parallel reexamination pro-
ceeding.
15 MARINE POLYMER v. HEMCON
the district court’s judgment regarding infringement of
claims 6, 7, 10–12, 17, and 20 by an equally divided court.
D. Damages
Finally, HemCon seeks to overturn the jury’s award of
$29,410,246 in damages as unreasonable and not sup-
ported by substantial evidence. Specifically, HemCon
argues that Marine Polymer’s expert lacked a sufficient
basis for his testimony on what would constitute a rea-
sonable royalty rate and that the jury improperly relied
on the entire market value for its damages calculation.
During trial, both parties presented expert testimony on
damages. Marine Polymer’s expert testified that, based
on his evaluation of the case, a reasonable royalty would
range from about 26–34% of HemCon’s infringing sales,
and he settled on 30%, or $29,410,246, as the appropriate
award. In contrast, HemCon’s expert testified that 2–4%
of all infringing sales represented the correct range,
concluding that Marine Polymer’s reasonable royalties
would total $2,767,589.
Both experts used the total sales of the accused prod-
ucts containing the infringing biocompatible p-GlcNAc as
the royalty base. The use of the entire market value as
the royalty base is acceptable to the extent that the
patent owner proves that “the patent-related feature is
the basis for customer demand.” Lucent Techs., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1336 (Fed. Cir. 2009) (in-
ternal quotations omitted). The district court correctly
found that the record contains substantial evidence to
support a damages award based on the entire market
value of HemCon’s infringing products, including “evi-
dence pertaining to the importance of biocompatible p-
GlcNAc in HemCon’s products and its significance for
market demand.” Marine Polymer Techs., Inc. v. Hem-
MARINE POLYMER v. HEMCON 16
Con, Inc., No. 06-CV-100, 2010 WL 3070201, at *4
(D.N.H. Aug. 3, 2010).
Ultimately, the jury was entitled to evaluate this con-
flicting evidence and credit the testimony of Marine
Polymer’s expert over that of HemCon, as it did. The jury
also heard testimony from witnesses for both parties,
including HemCon’s own president, describing the
claimed p-GlcNAc as “critical” to the core hemostatic
function of the accused products. In sum, based on the
evidence of record, the jury’s damages award was sup-
ported by substantial evidence. In such cases, we may not
“substitute [our] choice for that of the jury.” Brooktree
Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555,
1580 (Fed. Cir. 1992). The damages award is therefore
affirmed by an equally divided court.
II.
Intervening Rights
In addition, HemCon argues that the asserted claims
of the ’245 patent changed in scope during reexamination,
HemCon thereby acquired intervening rights in those
claims, and the district court’s finding of infringement
should therefore be reversed. To support its intervening
rights defense, HemCon asserts that the district court’s
interpretation of “biocompatible” incorrectly narrowed the
term by requiring “no detectable biological reactivity.”
According to HemCon, the district court’s construction
conflicts not only with statements in the written descrip-
tion, but also with the presence of dependent claims
reciting elution test scores of one or two—claims that
permit slight or mild reactivity and were in the original
version of the ’245 patent that was before the district
court. HemCon contends that “biocompatible,” at least as
represented in the ’245 patent before reexamination,
therefore must have encompassed low, non-zero levels of
17 MARINE POLYMER v. HEMCON
bioreactivity, so that the proper construction at that time
was necessarily broader than the district court’s interpre-
tation.
Next, HemCon argues that, by cancelling dependent
claims 4, 5, 13, 14, 21, and 22 and persuading the exam-
iner to adopt the district court’s construction of “biocom-
patible” during reexamination, Marine Polymer effected a
substantive change in the scope of each remaining
claim—essentially, from allowing some reactivity in the
originally issued claims to permitting “no detectable
biological reactivity” after reexamination. Citing our
decision in Laitram Corp. v. NEC Corp., 163 F.3d 1342,
1346–47 (Fed. Cir. 1998), HemCon argues that the key to
intervening rights lies in determining “whether the scope
of the reexamined claims differs from the original claims.”
Corrected Br. for Defendant-Appellant at 37, 2010 WL
5650491. HemCon thus concludes that this perceived
“substantive change” to the surviving claims of the ’245
patent during reexamination triggered intervening rights
with respect to those claims. Under HemCon’s view,
substantive change applies especially to claims 6, 7, 10,
11, and 17, which, reciting no numerical result in any
biocompatibility test, are generic in that respect. Fur-
thermore, HemCon argues that even claims 12 and 20
were substantially changed in scope when the examiner
adopted the district court’s construction of “biocompatible”
during reexamination, despite the fact that those claims
have at all times required an elution test score of zero
(corresponding to “no signs of cellular reactivity” on that
test, ’245 patent col.42 ll.39–40). HemCon argues that
while claims 12 and 20 specified no reactivity on the
elution test prior to reexamination, they nevertheless
covered products exhibiting slight reactivity on other
biocompatibility tests until Marine Polymer successfully
MARINE POLYMER v. HEMCON 18
pressed the more restrictive “no detectable biological
reactivity” construction during reexamination. 6
Marine Polymer disagrees and argues that interven-
ing rights cannot apply with respect to claims that have
not been amended or newly introduced in the reexamina-
tion proceeding. 7
The doctrine of intervening rights first developed as
courts recognized that permitting substantive changes to
the scope of patent claims through post-issuance proce-
dures left “the door . . . open for gross injustice” where a
third party, having already begun to make, use, or sell a
given article, finds its previously lawful activities ren-
dered newly infringing under a modified patent. See
Sontag Chain Stores Co. v. Nat’l Nut Co., 310 U.S. 281,
293–95 (1940). In such situations, the defendant “ac-
quired at least a right to continue to use the [articles] as if
it held a license therefor under the reissued patent.” Id.
at 294–95 (quoting Ashland Fire Brick Co. v. Gen. Refrac-
tories Co., 27 F.2d 744, 746 (6th Cir. 1928)). With respect
to reissued patents, the concept of intervening rights was
codified by the Patent Act of 1952, and the statute pro-
vides for two types of intervening rights: (1) intervening
rights that abrogate liability for infringing claims added
to or modified from the original patent if the accused
products were made or used before the reissue, often
6 HemCon’s position is supported by amici curiae
Hewlett-Packard Co., Broadcom Corp., Cisco Systems,
Inc., Dell, Inc., eBay, Inc., Facebook, Inc., Google Inc., and
SAP America, Inc.; and GEICO Corp., FedEx Corp., and
Macy’s, Inc.
7 Marine Polymer’s position is supported by amici
curiae Jan K. Voda; Intellectual Ventures Management
LLC; the Biotechnology Industry Association and Phar-
maceutical Research and Manufacturers of America;
Soverain Software LLC and Tessera, Inc.; and Sealy Corp.
19 MARINE POLYMER v. HEMCON
referred to as absolute intervening rights; and
(2) intervening rights that apply as a matter of judicial
discretion to mitigate liability for infringing such claims
even as to products made or used after the reissue if the
accused infringer made substantial preparations for the
infringing activities prior to reissue, often referred to as
equitable intervening rights. See 35 U.S.C. § 252 (2006).
Intervening rights do not accrue, however, where the
accused product or activity infringes a claim that existed
in the original patent and remains “without substantive
change” after reissue. Seattle Box Co. v. Indus. Crating &
Packing, Inc., 731 F.2d 818, 827–28 (Fed. Cir. 1984).
Although intervening rights originated as a defense
against patents modified through reissue procedures, the
doctrine has since been extended to the context of patent
reexamination. Pursuant to 35 U.S.C. §§ 307(b) and
316(b), respectively, both ex parte and inter partes reex-
aminations can give rise to intervening rights. For exam-
ple, § 307(b) provides as follows:
Any proposed amended or new claim determined
to be patentable and incorporated into a patent
following a reexamination proceeding will have
the same effect as that specified in section 252 of
this title for reissued patents on the right of any
person who made, purchased, or used within the
United States, or imported into the United States,
anything patented by such proposed amended or
new claim, or who made substantial preparation
for the same, prior to issuance of a certificate un-
der the provisions of subsection (a) of this section.
MARINE POLYMER v. HEMCON 20
35 U.S.C. § 307(b) (emphasis added). 8 Thus, after a
patent emerges from reexamination, the statute makes
available absolute and equitable intervening rights to the
same extent provided in the reissue statute, but only with
respect to “amended or new” claims in the reexamined
patent.
With regard to HemCon’s intervening rights argu-
ment, we must first note that the reexamination of the
’245 patent was a separate and distinct proceeding that is
not properly before us on appeal. It did not conclude until
after trial, so the district court did not consider, nor could
it have considered, the reexamination in rendering its
judgment. The panel noted that the issue of intervening
rights arose after the district court judgment, but con-
cluded that it had the discretion to consider that issue on
appeal because it was an event as to which judicial notice
is appropriate. Exercising that discretion, the panel held
that, in light of its reversal of the district court’s claim
construction, HemCon is entitled to intervening rights
and that the district court’s judgment of infringement
therefore must be reversed.
Although we reject the premise of HemCon’s argu-
ment regarding intervening rights—that the district
court’s claim construction prior to reexamination of the
’245 patent was erroneous—we conclude, as an alterna-
tive ground for decision, that even if the district court’s
claim construction was erroneous, HemCon’s intervening
rights argument must fail because it disregards the plain
and unambiguous language of § 307(b). Section 307(b)
governs intervening rights arising from ex parte reexami-
nation and specifies that only “amended or new” claims
8 Section 316(b), governing intervening rights
available after inter partes reexamination, contains
essentially identical language.
21 MARINE POLYMER v. HEMCON
incorporated into a patent during reexamination “will
have the same effect as that specified in section 252,” i.e.,
will be susceptible to intervening rights. HemCon ignores
this threshold statutory requirement and asks that we
proceed directly to the subsidiary “substantive change”
analysis, which derives from § 252. See Kaufman Co. v.
Lantech, Inc., 807 F.2d 970, 975–77 (Fed. Cir. 1986)
(explaining the relationship between §§ 252 and 307(b)
and holding that “identical,” as used in § 252, means
“without substantive change”). But under § 307(b), the
first question when assessing whether intervening rights
arose from a reexamination is whether the asserted claim
is “amended or new”; if the answer is no, that ends the
inquiry. Only if the claim at issue is new or has been
amended may the court proceed to the second step in the
analysis and assess the substantive effect of any such
change pursuant to § 252.
Such a framework is consistent with our holding in
Laitram. There, our focus rested on whether the claims
had been substantively changed precisely because the
claims had been changed—there was no question that the
claims at issue had been amended in reexamination, so
the dispute centered on the second step in the intervening
rights analysis, viz., whether those literal amendments to
the claim language had effected substantive changes in
claim scope. See Laitram, 163 F.3d at 1344 (“The parties
dispute whether the scope of the original claims was
substantively changed following several amendments
made during the reexamination of the . . . patent.”) (em-
phasis added). In contrast, the patent claims asserted
here against HemCon were neither “new” nor
“amended”—claims 6, 7, 10–12, 17, and 20 contained
identical language before and after reexamination. ’245
patent col.72 ll.5–16, 25–35, 50–54, 60–61; ’245 Reexam.
Cert. col.2 ll.1–5. Whether or not Marine Polymer’s
MARINE POLYMER v. HEMCON 22
arguments to the examiner and cancellation of claims
during reexamination may have affected the remaining
claims’ effective scope, they did not “amend” those claims
for intervening rights purposes or make them “new,”
which is what the statutory language requires. Interven-
ing rights are therefore unavailable under § 307(b) as a
matter of law.
HemCon sidesteps this issue by emphasizing the well-
recognized principle that arguments made during prose-
cution can affect the ultimate meaning of a claim term—
and thus the “scope” of a claim—and then returning to its
contention that intervening rights turn on whether claim
scope changes during reexamination. HemCon thus
posits that Marine Polymer’s actions in reexamination
rendered the asserted claims effectively “amended” by
disavowal or estoppel, even though the language of the
claims was not formally changed. We disagree.
While it is true that claims are properly interpreted to
account for arguments and concessions made during
prosecution, HemCon’s conclusion that the claims as-
serted here were “amended” for purposes of § 307(b) goes
too far. In general parlance, “amend” means “to alter . . .
formally by adding, deleting, or rephrasing.” American
Heritage College Dictionary 42–43 (3d ed. 1997). And
even if the term were ambiguous standing alone, any
doubts are resolved by its context within § 307.
Section 307(a) identifies three categories of claims in
a reexamined patent: (1) claims that existed in the origi-
nal patent but have been cancelled as unpatentable,
(2) claims that existed in the original patent and have
been confirmed as patentable, and (3) amended or new
claims that did not exist in the original patent but have
been found to be patentable and will be incorporated into
23 MARINE POLYMER v. HEMCON
the patent by the PTO. 9 In providing for intervening
rights, § 307(b) is limited to the third category of claims,
as evidenced by its corresponding reference to any
“amended or new claim” that is “incorporated into a
patent.” Any interpretation of “amended” that includes
disavowal or disclaimer by argument alone, as advocated
by HemCon, would conflict with the rest of § 307, for it is
difficult to envision how arguments about claim meaning
could be “incorporated into a patent” by the Director of
the PTO. Finally, it is clear that “amended” is a term of
art in patent prosecution, 10 including reexamination
proceedings, 11 and in that context connotes formal
changes to the actual language of a claim. We thus
9 The text of Section 307(a) reads as follows:
In a reexamination proceeding under this chapter,
when the time for appeal has expired or any ap-
peal proceeding has terminated, the Director will
issue and publish a certificate canceling any claim
of the patent finally determined to be unpat-
entable, confirming any claim of the patent de-
termined to be patentable, and incorporating in
the patent any proposed amended or new claim
determined to be patentable.
35 U.S.C. § 307(a) (2006).
10 See, e.g., 37 C.F.R. § 1.121(c) (“All claims being
currently amended [shall] be submitted with markings to
indicate the changes that have been made relative to the
immediate prior version of the claims. . . . [A]dded subject
matter must be shown by underlining the added text. . . .
[D]eleted matter must be shown by strike-through . . . .”);
id. § 1.114(c) (distinguishing between prosecution argu-
ments and amendments to the specification, claims, or
drawings).
11 See, e.g., 37 C.F.R. §1.530(d) (“A proposed
amendment in an ex parte or an inter partes reexamina-
tion proceeding is made by filing a paper directing that
proposed specified changes be made to the patent specifi-
cation, including the claims, or to the drawings.”).
MARINE POLYMER v. HEMCON 24
cannot agree that a claim can be “amended” for purposes
of § 307(b) without changing the claim language itself.
HemCon also expresses concern that excluding its
concept of amendment by argument from the ambit of
§ 307(b) would “create a significant loophole” in the inter-
vening rights defense—shrewd patentees would simply
opt to rely on arguments rather than amendments to
effectively change, and thereby preserve, otherwise inva-
lid claims during reexamination without engendering
intervening rights against those claims. Reply Br. for
Defendant-Appellant at 25, 2011 WL 287045.
We believe that is highly unlikely. If, in reexamina-
tion, an examiner determines that particular claims are
invalid and need amendment to be allowable, one would
expect an examiner to require amendment rather than
accept argument alone. Indeed, Congress may well have
expected that changes in claim scope during reexamina-
tion would ordinarily be made by amendment, which
would avoid the risk of creating a loophole in the inter-
vening rights defense. Moreover, if an argument does
suffice to overcome a rejection, it is probably because the
claims at issue are not unallowable. Thus, the fear of
gamesmanship does not persuade us to rule contrary to
the plain meaning of the statute. Various amici have in
fact pointed out that such gamesmanship concerns run
both ways, suggesting that HemCon’s interpretation of
§ 307(b), if adopted, would invite putative infringers to
initiate reexamination proceedings with marginal or non-
invalidating prior art. Under HemCon’s rule, such a
requestor could expect that, even if the reexamination
ultimately confirms all claims as patentable without
amendment, the patent owner will necessarily make
substantive arguments in defending the claims, thereby
allowing the requestor to allege intervening rights based
on those arguments. In any event, we cannot and will not
25 MARINE POLYMER v. HEMCON
speculate about possible consequences with respect to
situations not before us and which we cannot foresee.
The dissent criticizes our discussion of HemCon’s in-
tervening rights defense at length, asserting that this
important issue has been addressed only in dictum by the
en banc court. However, because the original opinion
dealt extensively with this issue, we must now decide the
case as we find it and clarify the law.
Regarding the clause in § 307(b) restricting interven-
ing rights to “amended or new” claims, the dissent relies
heavily on analogy to other fields of law. While prior
experience may at times be helpful in statutory interpre-
tation, references to scattered permissive applications of
the term “amended” to, e.g., a product safety regulation
and a private contract, are of limited utility in interpret-
ing the specific patent statute before us. Clear statutory
language and the long understanding of practitioners in a
field trump interpretations from other fields. Further-
more, the dissent selectively quotes from amicus briefs
arguing for a flexible interpretation of the intervening
rights statute, but other amici argue for giving the statu-
tory language its plain meaning. Clearly, nothing conclu-
sive can be gleaned from the amicus briefs, but we, in
addition to relying primarily on our own analysis, are
more persuaded by those arguing for a faithful reading of
the statutory text.
The dissent makes a brief attempt to call upon the
Supreme Court to support its view, but the quoted lan-
guage of the Court was that a specification “be substan-
tially changed, either by the addition of new matter or the
omission of important particulars, so as to enlarge the
scope of the invention as originally claimed.” Russell v.
Dodge, 93 U.S. 460, 463–64 (1876). Such language does
not control this case, which does not deal with the intro-
MARINE POLYMER v. HEMCON 26
duction of new matter or the omission of important par-
ticulars so as to enlarge the scope of the invention as
originally claimed. The claims remaining in the patent
are the same as originally claimed.
In sum, the plain directive of the governing statute
before us does not permit HemCon to invoke intervening
rights against claims that the PTO confirmed on reex-
amination to be patentable as originally issued. To be
sure, patent applicants’ actions and arguments during
prosecution, including prosecution in a reexamination
proceeding, can affect the proper interpretation and
effective scope of their claims. But in rejecting HemCon’s
request for intervening rights, we are not here interpret-
ing claims. Rather, we are interpreting a statute that
provides for intervening rights following reexamination
only as to “amended or new” claims. The asserted claims
of the ’245 patent are neither.
CONCLUSION
Accordingly, the final judgment of the district court is
affirmed.
AFFIRMED
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.
__________________________
DYK, Circuit Judge, dissenting in part, with whom
GAJARSA, REYNA, and WALLACH, Circuit Judges, join in
full, and with whom LINN, Circuit Judge, joins in parts I–
II.
The court took this case en banc to address when ab-
solute intervening rights arise under 35 U.S.C. § 307(b)
during reexamination. In particular, the question is
whether intervening rights accrue when the patentee
limits the claim scope by argument rather than by formal
amendment to the claim language.
Despite the importance of the issue of intervening
rights, as evidenced by the amicus briefs filed by numer-
MARINE POLYMER v. HEMCON 2
ous companies and organizations, the court did not seek
further briefing and argument by the parties. This ap-
proach to an important issue is in my view difficult to
justify. Now, remarkably, the court having affirmed the
district court’s judgment by an equally divided court, goes
on to opine in dictum as to the issue of intervening rights
even though that issue (as discussed below) has been
resolved by the affirmance and also, in the majority’s
view, “is not properly before us on appeal.” Maj. Op. at
20. This is an unusual and unfortunate approach to an
important issue. This issue is likely to become even more
important under the new Leahy-Smith America Invents
Act (“AIA”) because of the increased availability of reex-
amination. The majority’s interpretation of the statute is
both incorrect and certain to encourage improper strategic
behavior by patent applicants. I dissent.
I
The starting point for an intervening rights determi-
nation is the meaning of the original claim language. The
district court construed the key claim limitation (“biocom-
patiable”) of the original patent claims to require “poly-
mers . . . with low variability, high purity, and no
detectable biological reactivity as determined by biocom-
patibility tests.” Marine Polymer Techs., Inc. v. HemCon,
Inc., No. 06-cv-100-JD, 2008 WL 1995454, at *10 (D.N.H.
May 6, 2008) (emphasis added). Contrary to Judge
Lourie’s opinion, it seems to me that the district court’s
construction was palpably incorrect and inconsistent with
our established claim construction jurisprudence.
Some background is essential to an understanding of
the claim construction issue. Marine Polymer asserted
seven claims of U.S. Patent No. 6,864,245 (“the ’245
patent”), directed to p-GlcNAc polymers, against Hem-
Con. Independent claim 6 is representative and claims:
3 MARINE POLYMER v. HEMCON
“A biocompatible [p-GlcNAc polymer] comprising up to
about 150,000 N-acetylglucosamine monosaccharides
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.” ’245 Pat. col.72 ll.5-10 (emphasis
added). Marine Polymer acknowledges that p-GlcNAc
polymers had been disclosed in the prior art. The polymer
also exists in nature in chitin, the chief organic structural
component in the cell walls of fungi or algae and the
protective shells of insects and crustaceans, but had been
difficult to isolate with high purity and low variability.
The ’245 patent purported to disclose for the first time a
“biocompatible” polymer in a purified form, along with
methods for its purification from microalgae. With suffi-
cient purity, these polymers have a number of biomedical
applications, including, inter alia, as a means for the
rapid control of severe blood loss. A purified polymer
provides “increased effectiveness, reduced toxicity and
improved bioavailability” for its biomedical applications.
Id. col.5 ll.3-4.
There are substantial questions as to whether the
prior art disclosed the claimed invention. That depends
in significant part on the construction of the term “bio-
compatible,” a term existing in each of the asserted
claims. As noted above, the district court construed
“biocompatible” p-GlcNAc to be limited to “polymers . . .
with . . . no detectable biological reactivity as determined
by biocompatibility tests.” Marine Polymer, 2008 WL
1995454, at *10 (emphasis added).
One might at the outset be somewhat skeptical of this
construction because it was not proposed by either party
and was indeed contrary to the patentee’s own proposed
construction. In the district court, Marine Polymer con-
ceded that “biocompatible p-GlcNAc” could exhibit some
MARINE POLYMER v. HEMCON 4
biological reactivity, arguing that the term should be
interpreted to mean “biomedically pure [p-GlcNAc] that
reproducibly exhibits acceptably low levels of adverse
bioreactivity, as determined by biocompatibility tests.”
Claim Construction Order, Marine Polymer Techs., Inc. v.
HemCon, Inc., No. 06-cv-100-JD, slip. op. at 2 (D.N.H.
May 6, 2008) (emphasis added). Similarly, it argued in its
memorandum that its sample p-GlcNAc “showed accepta-
bly low adverse reactions” to each of the biocompatibility
tests and that this construction of “biocompatible p-
GlcNAc” was “fully supported” by the claims and specifi-
cation. Memorandum in Support of Plaintiff’s Claim
Construction, Marine Polymer Techs., Inc. v. HemCon,
Inc., No. 06-cv-100-JD, at 7, 10-11 (D.N.H. Aug. 17, 2007),
ECF No. 48-1.
Whether or not Marine Polymer’s own constructions
are binding, 1 the district court’s construction is in fact
contrary to the specification and to the claims themselves.
The specification and claims are clear that “biocompati-
ble” p-GlcNAc encompasses polymers that exhibit some
biological reactivity. The specification “is the single best
guide to the meaning of a disputed term,” Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc), and
may define a term explicitly or by implication, Irdeto
Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295,
1300 (Fed. Cir. 2004).
Here, the specification defines “biocompatible” in a
manner directly contrary to the district court’s construc-
tion of “no detectable biological reactivity.” The specifica-
tion first discusses the concept of biocompatibility in the
1 See Key Pharms. v. Hercon Labs. Corp., 161 F.3d
709, 715 (Fed. Cir. 1998) (“Ordinarily, doctrines of estop-
pel, waiver, invited error, or the like would prohibit a
party from asserting as ‘error’ a position that it had
advocated at the trial.”).
5 MARINE POLYMER v. HEMCON
Detailed Description of the Invention, stating that “[t]he
p-GlcNAc of the invention exhibits a high degree of bio-
compatibility.” ’245 Pat. col.10 ll.49-50. The specification
does not provide at this point what constitutes an ac-
ceptably high degree of biocompatibility, but it discloses
that “[b]iocompatability may be determined by a variety
of techniques, including, but not limited to such proce-
dures as the elution test, intramuscular implantation, or
intracutaneous or systemic injection into animal sub-
jects.” Id. col.10 ll.50-53. Each of these four “biocompati-
bility tests” is later described in detail, including the
particular materials, methods, and conditions to properly
perform each test on a p-GlcNAc sample. The specifica-
tion also discusses the results of each of the four tests,
and specifically defines what constitutes “meet[ing]” the
requirements of the particular “biocompatibility test.” See
id. col.42 ll.42-43. Judge Lourie’s opinion itself concedes
that the specification contemplates non-zero “passing”
scores on the biocompatibility tests. See Lourie Op. at 11-
12.
Notably, for each of the four tests, the specification
does not require that there be no biological reactivity but
provides that the test is satisfied where at least some
reactivity is present. For example, with respect to the
elution test, the specification states that “[t]he test article
(i.e., p-GlcNAc) meets the biocompatibility test if none of
the cultures treated with the test article show a greater
than mild reactivity.” ’245 Pat. col.42 ll.41-43 (emphasis
added). Likewise, the specification explains that the
biocompatibility test using the other methods is met even
if the polymer exhibits some biological reactivity. See id.
col.43 ll.54-60, col.44 ll.25-26, col.45 ll.41-43. Nowhere
does the specification disavow or disclaim from the scope
of the claims polymers exhibiting these levels of reactiv-
ity. If a polymer exhibiting some reactivity nonetheless
MARINE POLYMER v. HEMCON 6
meets the specification’s explicit requirements for “bio-
compatibility,” it cannot be that such polymer is not
“biocompatible” within the meaning of the claims. Thus,
the specification contemplates some level of reactivity
that is compatible with use in biomedical applications.
If this description of biocompatibility in the specifica-
tion were not enough, the presence of six independent
claims in the original patent dictate that the “biocompati-
ble” limitation allow some exhibition of reactivity. Six
dependent claims in the original patent specifically re-
quired that the “biocompatible” p-GlcNAc have an elution
test score of either one or two, which correspond to
“slight” or “mild” reactivity respectively and is directly
inconsistent with a construction requiring no reactivity.
’245 Pat. col.42 ll.50-55. If “biocompatible” requires that
there be no reactivity, but these dependent claims require
slight or mild reactivity, they are nullified and become
utterly meaningless. Marine Polymer itself concedes that
these six claims were rendered meaningless by the dis-
trict court’s construction, and that “the dependent claims
requiring non-zero elution test scores conflict with [the
district court’s] construction.” Appellee’s Br. 28.
Where a particular construction of an independent
claim would nullify claims that depend from it, the doc-
trine of claim differentiation creates a presumption that
such a construction is improper. See Liebel-Flarsheim Co.
v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). We
adopt a construction of a term which renders claims
invalid or meaningless when it is the “only claim con-
struction that is consistent with the claim’s language and
the written description.” Rhine v. Casio, Inc., 183 F.3d
1342, 1345 (Fed. Cir. 1999) (emphasis added). In other
words, this presumption can be overcome only where a
contrary construction is “dictated”—i.e., compelled—by
the written description or prosecution history. Seachange
7 MARINE POLYMER v. HEMCON
Int’l, Inc. v. C-Cor, Inc., 413 F.3d 1361, 1369, 1370-72
(Fed. Cir. 2005) (holding that the presumption established
by claim differentiation was rebutted because the written
description “consistently” referred to the claim term in a
specific manner and arguments made during prosecution
amounted to a clear and unambiguous disclaimer of claim
scope). Here, there is an alternate claim construction, one
construing “biocompatible” to mean “little or no detectable
reactivity,” which preserves the validity of these six
dependent claims. Nothing in the written description or
prosecution history overcomes the presumption by dictat-
ing or compelling the conclusion that “biocompatible” is
limited to exhibiting “no detectable reactivity.”
In supporting the district court’s claim construction
Judge Lourie’s opinion ignores or dismisses much of this
compelling evidence. The opinion suggests that the
examiner’s adoption of the district court’s construction
supports the correctness of that construction. Lourie Op.
at 12 n.5. Quite the contrary. During reexamination,
Marine Polymer asked the examiner to adopt the district
court’s construction of “biocompatible” in evaluating
whether the claims were invalid as anticipated or obvious.
The examiner, however, rejected the district court’s
construction and held that the “biocompatibility” limita-
tion was not limited to no reactivity but instead permitted
“little or no detectable reactivity.” J.A. 39503. The exam-
iner explained that this definition “avoids creating the
situation where claims 4, 5, 13, 14, 21 and 22 would be
improper for failing to further limit the claims from which
they depend.” J.A. 39504. Only after these dependent
claims were canceled to create consistency with the dis-
trict court’s construction of “biocompatible” did the exam-
iner accept the district court’s construction. The
examiner explained that “[w]ith the cancellation of the
claims which required that the elution test scores were 1
MARINE POLYMER v. HEMCON 8
or 2, the Examiner now agrees with the court’s definition
of the term biocompatible.” J.A. 39481.
Apart from its reliance on the examiner, Judge
Lourie’s opinion rests its conclusion as to the correctness
of the district court’s construction almost exclusively on
the fact that there are two instances in the entire specifi-
cation where it refers to the p-GlcNAc “of the invention.”
See Lourie Op. at 10-12. These two references, however,
do not limit the scope of the term “biocompatible.” With
respect to the first, discussed above, the specification
simply notes that the “p-GlcNAc of the invention exhibits
a high degree of biocompatibility.” ’245 Pat. col.10 ll.49-50
(emphasis added). There is no indication in the specifica-
tion that a high degree of biocompatibility is achieved
only where there is no reactivity. The passage suggests
the opposite. With respect to the second, the specifica-
tion’s description of the p-GlcNAc “of the invention” was
made in the context of a specific example—one of eighteen
in the specification. Judge Lourie’s opinion leaves out
highly pertinent language in quoting this portion of the
specification. The specification explicitly states that
[i]n this Example, . . . the p-GlcNAc of the inven-
tion exhibits no detectable biological reactivity.
Id. col.41 ll.66-67 (emphasis added). Judge Lourie’s
opinion leaves out the “in this Example” language. This
reference does not suggest that the invention always
“exhibits no detectable biological reactivity”; rather, that
it does so “in this Example.” 2 The mere fact that the p-
2 I also note that the p-GlcNAc tested in this exam-
ple was produced through the “Mechanical Force” method
described in the specification. ’245 Pat. col.42 ll.15-17.
The specification, however, also discloses other methods
for producing p-GlcNAc with different “characteristics and
advantageous features.” See id. col.13 ll.46-67. There is
no indication in the specification that p-GlcNAc produced
9 MARINE POLYMER v. HEMCON
GlcNAc tested in this example in the specification showed
no biological reactivity, without more, cannot be sufficient
to limit the claim term “biocompatible” to polymers exhib-
iting no detectable biological reactivity.
The approach in Judge Lourie’s opinion of interpret-
ing a claim limitation based solely on a single example
from the specification is an approach we have repeatedly
rejected. See, e.g., Silicon Graphics, Inc. v. ATI Techs.,
Inc., 607 F.3d 784, 792 (Fed. Cir. 2010) (“A construing
court's reliance on the specification must not go so far as
to import limitations into claims from examples or em-
bodiments appearing only in a patent’s written descrip-
tion unless the specification makes clear that the patentee
intends for the claims and the embodiments in the specifi-
cation to be strictly coextensive.” (internal quotation
marks omitted)); Howmedica Osteonics Corp. v. Wright
Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008)
(“[W]e have repeatedly held that the fact that the specifi-
cation describes only a single embodiment, standing
alone, is insufficient to limit otherwise broad claim lan-
guage.”). We have “cautioned against limiting the
claimed invention to preferred embodiments or specific
examples in the specification.” Tex. Instruments, Inc. v.
U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir.
1986). Indeed, the “[v]aried use of a disputed term in the
written description demonstrates the breadth of the term
rather than providing a limited definition.” Johnson
Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 991
(Fed. Cir. 1999). This court has never, on such scant
evidence as exists here, found that a single embodiment
disclosed in a patent limited the scope of the claims.
pursuant to a different method would similarly not ex-
hibit any biological reactivity.
MARINE POLYMER v. HEMCON 10
Judge Lourie’s new approach to claim construction
would enable patentees to eliminate questions of validity
by narrowing claims in accordance with a preferred
embodiment or single example, while also allowing al-
leged infringers to narrow claims beyond their valid scope
to avoid infringement. That approach cannot be correct.
II
Under the correct claim construction, ignoring for a
moment the issue of intervening rights, HemCon at a
minimum would be entitled to a new trial on all issues
related to the validity of the original patent claims. The
jury was specifically instructed under the incorrect claim
construction and answered questions on the jury verdict
form directly related to this construction. J.A. 111 (ask-
ing jury whether prior art discloses “having no detectable
biological reactivity as determined by biocompatibility
tests”). Moreover, after trial, the district court denied
HemCon’s motion for JMOL and/or a new trial on antici-
pation and obviousness because HemCon’s expert’s opin-
ions about the prior art “were based on the wrong
definition of biocompatibility,” Marine Polymer Techs.,
Inc. v. HemCon, Inc., No. 06-cv-100-JD, 2010 WL
2902258, at *3 (D.N.H. July 21, 2010), and because the
disputed prior art “did not disclose p-GlcNAc with no
detectable biological reactivity as determined by biocom-
patibility tests,” id. at *4. See also id. at *8 (“[B]ecause
none of the cited prior art disclosed the properties of
biocompatible p-GlcNAc, as claimed by the ’245 patent,
the evidence at trial did not support findings for obvious-
ness.”). This reliance on this incorrect claim construction
alone warrants a new trial on these issues, putting to one
side the issue of intervening rights. HemCon should at a
minimum be permitted to defend itself against claims of
infringing the original patent by attacking its validity
under a proper claim construction.
11 MARINE POLYMER v. HEMCON
III
A
I turn then to the question of intervening rights.
While the judgment of the district court is affirmed by an
equally divided court, the district court rendered no
judgment on the question of intervening rights, and
therefore there is nothing to affirm in that respect.
Nonetheless, I agree with Judge Lourie that the effect of
the equally divided affirmance is that the district court’s
claim construction is binding on the parties as if the
district court’s decision had never been reviewed. Durant
v. Essex Co., 74 U.S. 107, 113 (1868) (holding that an
affirmance by an equally divided court “is as conclusive
and binding in every respect upon the parties as if ren-
dered upon the concurrence of all the judges upon every
question involved in the case”). 3 The result is that there
can be no intervening rights. In other words, under the
district court’s incorrect claim construction, now binding
on the parties as a result of the affirmance of the district
court’s judgment, the original and reexamined claims are
identical in scope, and there is thus no issue of interven-
ing rights and no need for the majority to offer “an alter-
native ground for decision.” Remarkably, the majority
goes on to legislate an interpretation of the intervening
rights statute. This is, to say the least, an unusual ap-
proach. It is particularly odd because the majority thinks
that the issue is not properly before us (even if the district
court’s claim construction was wrong) because the inter-
vening rights issue was not addressed by the district
court.
3 The claim construction is, of course, not preceden-
tial. See, e.g., Neil v. Biggers, 409 U.S. 188, 192 (1972).
MARINE POLYMER v. HEMCON 12
In my view the issue is properly before us. Here,
while the district court entered judgment on September
22, 2010, and HemCon filed its Notice of Appeal to this
court on September 24, 2010, the examiner did not issue
the Notice of Intent to Issue an Ex Parte Reexamination
Certificate until November 3, 2010, well after the appeal
to this court. The majority offers no reasons why we
should not consider the changes to a patent effected by
reexamination. Just as we are obligated to take account
of intervening changes in law that affect an appeal, see
Bradley v. Sch. Bd. of City of Richmond, 416 U.S. 696,
714-15 (1974); Vandenbark v. Owens-Illinois Glass Co.,
311 U.S. 538, 542-43 (1941), we are obligated to take
account of changes to a patent that occur during the
pendency of a case on appeal, see 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”). Ample authority, uncontradicted by the
majority, supports the original panel’s approach of ad-
dressing the issue of intervening rights, 4 and the majority
4 See Hawkes v. Internal Revenue Serv., 467 F.2d
787, 793 (6th Cir. 1972) (“This Court is obligated to take
notice of changes in fact or law occurring during the
pendency of a case on appeal which would make a lower
court's decision, though perhaps correct at the time of its
entry, operate to deny litigants substantial justice.”); see
also L.E.A. Dynatech Inc. v. Allina, 49 F.3d 1527, 1531
(Fed. Cir. 1995) (explaining 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.–Empreedimentos Industriais 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
13 MARINE POLYMER v. HEMCON
has offered no support for its position that a court cannot
take judicial notice of changes that occur while the case is
pending on appeal.
The majority, though believing that the issue is not
properly before us and that the issue is resolved by the
district court’s claim construction, excuses its discussion
of intervening rights by the fact that the original panel
opinion “dealt extensively with this issue,” and thus this
court must “decide the case as we find it and clarify the
law.” Maj. Op. at 25. But the panel opinion has been
vacated, and, if the issue is not in fact properly before us,
and is unnecessary in any event, there is no possible
reason for addressing it. If this were not enough, the
Supreme Court has repeatedly counseled against writing
opinions where a judgment has been affirmed by an
equally divided court, 5 a practice that the majority here
disregards.
B
On the merits of the intervening rights issue, the ma-
jority is incorrect as a matter statutory interpretation.
Section 307(b) provides:
Any proposed amended or new claim determined
to be patentable and incorporated into a patent
following a reexamination proceeding will have
the same effect as that specified in section 252 of
(or trial court) decision and the date of decision on ap-
peal.”).
5 Ohio ex rel. Eaton v. Price, 364 U.S. 263, 264
(1960) (explaining that where a judgment is affirmed by
an equally divided court, “the usual practice is not to
express any opinion, for such an expression is unneces-
sary where nothing is settled”); see also Etting v. Bank of
United States, 24 U.S. 59, 77-78 (1826); The Antelope, 23
U.S. 66, 126 (1825).
MARINE POLYMER v. HEMCON 14
this title for reissued patents on the right of any
person who made, purchased, or used within the
United States, or imported into the United States,
anything patented by such proposed amended or
new claim, or who made substantial preparation
for the same, prior to issuance of a certificate un-
der the provisions of subsection (a) of this section.
35 U.S.C. § 307(b) (emphasis added). Section 307(b) thus
specifically incorporates the intervening rights provisions
of reissued patents found in section 252. Congress was
explicit that section 307(b) should be interpreted to be
identical in scope to section 252:
Subsection 307(b) provides intervening rights
similar to those provided by patent law section 252
with respect to reissued patents. Thus, a person
practicing a patented invention would not be con-
sidered an infringer for the period between issu-
ance of an invalid patent and its conversion
through reexamination to a valid patent.
H.R. Rep. No. 96-1307(I), at 8 (1980) (emphasis
added). 6 Thus, the “amended or new” language in
6 35 U.S.C. § 252 provides, in relevant part:
The surrender of the original patent shall take effect
upon the issue of the reissued patent, and every reissued
patent shall have the same effect and operation in law, on
the trial of actions for causes thereafter arising, as if the
same had been originally granted in such amended form,
but in so far as the claims of the original and reissued
patents are substantially identical, such surrender shall
not affect any action then pending nor abate any cause of
action then existing, and the reissued patent, to the
extent that its claims are substantially identical with the
original patent, shall constitute a continuation thereof
and have effect continuously from the date of the original
patent.
15 MARINE POLYMER v. HEMCON
section 307(b) was clearly intended to have the same
meaning as “substantially identical” in section 252.
The focus is on whether the old and new claims are
“substantially identical.” In another case analyzing
intervening rights related to a reexamined patent,
this court explained:
A patentee of a reexamined patent is entitled to
infringement damages, inter alia, for the period
between the date of issuance of the original claims
and the date of issuance of the reexamined claims
if the original and reexamined claims are “identi-
cal.” Reexamined claims are “identical” to their
original counterparts if they are “without substan-
tive change.” Furthermore, in determining
whether substantive changes have been made, we
must discern whether the scope of the claims are
identical, not merely whether different words are
used.
Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1346 (Fed.
Cir. 1998) (internal citations omitted) (first and third
emphases added).
Here, the original and new claims are not “substan-
tially identical.” During reexamination the patentee
A reissued patent shall not abridge or affect the right
of any person or that person's successors in business who,
prior to the grant of a reissue, made, purchased, offered to
sell, or used within the United States, or imported into
the United States, anything patented by the reissued
patent, to continue the use of, to offer to sell, or to sell to
others to be used, offered for sale, or sold, the specific
thing so made, purchased, offered for sale, used, or im-
ported unless the making, using, offering for sale, or
selling of such thing infringes a valid claim of the reissued
patent which was in the original patent.
MARINE POLYMER v. HEMCON 16
agreed, by both argument and by amending the claims to
cancel six dependent claims, that the term “biocompati-
ble” should be construed to mean “no detectable biological
reactivity.” In doing so, as discussed above, the patentee
adopted a construction that was different than the correct
construction of the original claims, namely that “biocom-
patible” meant, inter alia, “little or no detectable reactiv-
ity.” The effect was to narrow the claims and protect
them from a finding of invalidity.
As the majority recognizes, see Maj. Op. at 21-22, it is
well established that statements during prosecution or
reexamination of a patent, as well as additions or dele-
tions of claims to overcome rejections, can change the
meaning of a claim term that would ordinarily be con-
strued otherwise. See Am. Piledriving Equip., Inc. v.
Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011); CIAS,
Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1362-63
(Fed. Cir. 2007); C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858, 867–69 (Fed. Cir. 2004); Cole v. Kimberly-
Clark Corp., 102 F.3d 524, 532 (Fed. Cir. 1996). Here,
although identical in language, the claims of the patent
after reexamination were not identical in scope for pur-
poses of intervening rights because they were “substan-
tively changed” during reexamination.
The majority makes much of the difference in lan-
guage between sections 307(b) and 252, pointing out that
section 307(b) includes the language “amended or new
claims.” The majority limits an “amended” claim under
section 307(b) to a situation in which the claim language
itself is changed. This interpretation ignores the statute’s
language, its purpose, and the history of intervening
rights.
Because the statute does not define “amended,” this
term is “assumed to bear [its] ‘ordinary, contemporary,
17 MARINE POLYMER v. HEMCON
common meaning.’” Walters v. Metro. Educ. Enters., Inc.,
519 U.S. 202, 207 (1997) (quoting Pioneer Inv. Servs. Co.
v. Brunswick Assocs. Ltd. P’ship, 507 U.S. 380, 388
(1993)). While “amend” may often connote an actual
change in language, 7 that is not the only meaning of the
term “amend.”
There are a number of cases decided in similar con-
texts that make clear that a written document can be
“amended” without a language change. For example,
National Knitwear Manufacturers Ass’n v. Consumer
Product Safety Commission, 666 F.2d 81 (4th Cir. 1981),
is quite similar to this case. In National Knitwear, the
Flammable Fabrics Act required the Consumer Product
Safety Commission to comply with specific procedures, in
addition to those under the Administrative Procedure Act,
in order to issue “a new or amended flammability stan-
dard.” 15 U.S.C. § 1193 (1976) (emphasis added). The
flammability standards for children’s sleepwear included
a definition of “[c]hildren’s [s]leepwear” that specifically
excluded “underwear.” 16 C.F.R. § 1615.1(a) (1980).
Thereafter, the Commission issued a statement, without
complying with the Act, indicating that “despite a gar-
ment’s being labeled as underwear and unsuitable for
sleepwear, the Commission may bring an enforcement
action if it believes that the garment is intended to be
worn primarily for sleeping or that it has been promoted
as sleepwear.” Nat’l Knitwear, 666 F.2d at 83. The
Fourth Circuit held that the Act had been violated be-
cause, although the text of the flammability standards
had not changed, “the Commission ha[d] in effect
amended the standard despite the express exclusion of
underwear from the definition of sleepwear.” Id. at 84
7 Amend” is defined as “to change or alter in any
way esp. in phraseology.” Webster’s Third New Interna-
tional Dictionary 57 (2000).
MARINE POLYMER v. HEMCON 18
(emphasis added). Just as the standard in National
Knitwear was “amended” by an agency statement, so here
the claims have been “amended” by a disclaimer in the
reexamination.
In many other contexts the word “amend” has been
interpreted as not requiring an explicit language change.
In the context of the Administrative Procedure Act,
amending an interpretive rule can be considered “amend-
ing . . . a rule” under section 551(5), thus requiring notice
and comment, even if there is no alteration in the lan-
guage of the rule itself. United States v. Magnesium
Corp. of Am., 616 F.3d 1129, 1139 (10th Cir. 2010). As
the Tenth Circuit has held, “if an agency amends its
interpretation of a rule, it is effectively amending the rule
itself.” Id. (internal quotation marks omitted); see also
Jerri’s Ceramic Arts, Inc. v. Consumer Prod. Safety
Comm’n, 874 F.2d 205, 206 (4th Cir. 1989) (finding that
an agency “interpretation” was in fact a substantive
“amendment” to the Small Parts Rule, and thus the
agency violated the APA). Legal instruments can often be
constructively or effectively amended without changing
literal text. See, e.g., Chamberlain Group, Inc. v. Skylink
Techs., Inc., 381 F.3d 1178, 1189 (Fed. Cir. 2004) (“For the
purpose of determining Federal Circuit jurisdiction, we do
not differentiate between actual and constructive
amendments [to the complaint].”); see also, e.g., Battoni v.
IBEW Local Union No. 102 Emp. Pension Plan, 594 F.3d
230, 235 (3d Cir. 2010) (constructive amendment to
pension plan); United States v. Starr, 533 F.3d 985, 997
(8th Cir. 2008) (constructive amendment to a criminal
indictment); S. Colo. MRI, Ltd. v. Med-Alliance, Inc., 166
F.3d 1094, 1099 (10th Cir. 1999) (“By expressing an intent
to be bound on July 7, 1993, the parties implicitly . . .
amended any prior [written] agreement that an asset
purchase document was necessary to complete the con-
19 MARINE POLYMER v. HEMCON
tract.”). A statute may also be amended without a change
in language. See United States ex rel. Palmer v. Lapp, 244
F. 377 (6th Cir. 1917) (finding that an act independent
and original in form, which in effect added a provision to
an existing statute, was an “amendment” within the
meaning of a reference in another act to that statute “and
amendments thereto”). In general, an act that changes
the substance of a statute without changing its language
is commonly referred to as an “amendment by implica-
tion.” See United States v. Welden, 377 U.S. 95, 103 n.12
(1964); Agri Processor Co. v. NLRB, 514 F.3d 1, 4 (D.C.
Cir. 2008). Thus, the plain language of the term
“amended” does not require a language change.
The history of intervening rights provisions them-
selves compel an interpretation of “amended” that does
not require a change in the language of the claims. The
doctrine of intervening rights with respect to reissued
patents existed as a judicial construct since the 1800s.
See generally P.J. Federico, Intervening Rights in Patent
Reissues, 30 Geo. Wash. L. Rev. 603 (1961). Section 252
in the Patent Act of 1952 substantially adopted and
clarified the doctrine of intervening rights as it had been
interpreted and developed by the courts. See H.R. Rep.
No. 82-1923, at 8 (1952); see also Federico, supra, at 629-
30. Courts for years have understood that the specifica-
tion and the claims together act to define an invention.
The Supreme Court recognized that the scope of patents
could be changed by an amendment to the specification
where there is no formal amendment to the claim. See,
e.g., Russell v. Dodge, 93 U.S. 460, 463 (1876) (noting that
a specification might “be substantially changed, either by
the addition of new matter or the omission of important
particulars, so as to enlarge the scope of the invention as
originally claimed”).
MARINE POLYMER v. HEMCON 20
The Supreme Court made clear that a change in the
specification broadening the scope of the patent, just as a
change to claim language, could lead to intervening
rights. For example, in Battin v. Taggert the Court noted
that
[w]hether the defect be in the specifications or in
the claim . . . , the patentee may surrender his
patent, and, by an amended specification or claim,
cure the defect. . . . But where the specification or
claim is made so vaguely as to be inoperative and
invalid, yet an amendment may give to it validity,
and protect the rights of the patentee against all
subsequent infringements.
58 U.S. 74, 83 (1854) (emphasis added). Similarly, in a
case where a patentee had amended the specification
during reissue by, inter alia, inserting an additional
figure, one court held that “[t]he law does not permit such
an enlargement of the original specifications as will
interfere with other inventors who have acquired inter-
vening rights.” Ficklen v. Baker, 47 App. D.C. 587, 596
(D.C. Cir. 1918) (quoting Manly v. Williams, 37 App. D.C.
194, 201 (D.C. Cir. 1911)). Thus, prior to Congress enact-
ing the intervening rights provisions of section 252, courts
understood that not having a change in claim language
was not indispensible to creating intervening rights, and
that a change in the specification could also lead to inter-
vening rights. Contrary to the majority’s assertion, I do
not claim that these cases directly control this case. They
do, however, make clear that the Supreme Court, in
developing the doctrine of intervening rights, concluded
that the scope of the claims could change without formal
amendments and still require the recognition of interven-
ing rights. There is no indication in the legislative history
of section 252 that Congress intended to overrule the
courts’ understanding on this point. See H.R. Rep. No. 82-
21 MARINE POLYMER v. HEMCON
1923. As noted, section 307, added in 1980, was explicitly
designed to provide “similar” intervening rights as those
provided in section 252. Id. If a change in the language
of the specification could result in an “amended” claim, it
is difficult to see why a change in claim scope achieved by
argument cannot also result in an amended claim.8
Most important, we must interpret “amended” to ef-
fectuate the intent of Congress in enacting the interven-
ing rights provisions of the reexamination statutes. See
Reves v. Ernst & Young, 494 U.S. 56, 62-63 (1990) (“Thus,
the phrase ‘any note’ should not be interpreted to mean
literally ‘any note,’ but must be understood against the
backdrop of what Congress was attempting to accomplish
in enacting the Securities Acts.”). If “amended” only
refers to changes in the actual language of the claims, the
8 The majority is correct that section 307 contem-
plates that an amended claim will be identified as such in
the reexamination certificate, but the failure of the PTO
to identify an amended claim as such can hardly bind
absent parties who had no opportunity to object to the
PTO’s failure, especially given the “great principle of
public policy . . . which forbids that the public interests
should be prejudiced by the negligence of the officers or
agents to whose care they are confided.” Brock v. Pierce
Cnty., 476 U.S. 253, 261 (1986) (quoting United States v.
Nashville, C. & St. L. R. Co., 118 U.S. 120, 125 (1886)). It
is well established that an administrative agency’s failure
to perform a prescribed administrative act is not a ground
for ignoring the substance of the agency’s action. See
United States v. James Daniel Good Real Prop., 510 U.S.
43, 63 (1993) (“We have long recognized that many statu-
tory requisitions intended for the guide of officers in the
conduct of business devolved upon them . . . do not limit
their power or render its exercise in disregard of the
requisitions ineffectual.” (internal quotation marks omit-
ted)); Brock, 476 U.S. at 261; Timken U.S. Corp. v. United
States, 421 F.3d 1350, 1357 (Fed. Cir. 2005).
MARINE POLYMER v. HEMCON 22
purpose of intervening rights will be plainly and directly
thwarted.
It is initially important to understand that the major-
ity agrees that claim scope can be changed by arguments
made by the patentee during reexamination. 9 In other
words, the fundamental assumption of the majority is
that even where argument in the reexamination proceed-
ing changes the scope of the claim, there are no interven-
ing rights unless there is a formal amendment to the
claim. What the majority does not tell us—in large part
because it chooses to address this issue in dictum without
applying the rule to this case—is whether, when there is a
change in claim scope without formal amendment, (1) the
changed claim scope is retroactive to validate the patent
as of its original issue date, or (2) the accused infringer
can still challenge the validity of the patent during the
pre-examination period.
Neither of these alternatives makes sense, and each
directly contradicts the purpose of the statute, thus
demonstrating the error in the majority’s statutory inter-
9 See Maj. Op. at 21-22 (“Whether or not Marine
Polymer’s arguments to the examiner and cancellation of
claims during reexamination may have affected the re-
maining claims’ effective scope, they did not ‘amend’ those
claims for intervening rights purposes . . . . HemCon
sidesteps this issue by emphasizing the well-recognized
principle that arguments made during prosecution can
affect the ultimate meaning of a claim term—and thus the
‘scope’ of a claim . . . . While it is true that claims are
properly interpreted to account for arguments and conces-
sions made during prosecution, HemCon’s conclusion that
the claims asserted here were ‘amended’ for purposes of
§ 307(b) goes too far.” (emphasis added)); see also Am.
Piledriving Equip., 637 F.3d at 1336; CIAS, 504 F.3d at
1362; C.R. Bard, 388 F.3d at 867–69; Cole, 102 F.3d at
532.
23 MARINE POLYMER v. HEMCON
pretation. The first alternative—retroactively validating
the original patent by changing its scope—leads to an
unfair and absurd result. As recognized by the majority,
this is precisely the unfairness that led to the develop-
ment of the doctrine of intervening rights in the first
place. See Maj. Op. at 18 (“The doctrine of intervening
rights first developed as courts recognized that permitting
substantive changes to the scope of patent claims through
post-issuance procedures left ‘the door . . . open for gross
injustice’ where a third party, having already begun to
make, use, or sell a given article, finds its previously
lawful activities rendered newly infringing under a modi-
fied patent.” (quoting Sontag Chain Stores Co. v. Nat’l
Nut Co., 310 U.S. 281, 293-95 (1940) (emphasis added))).
The intervening rights provisions make clear that the
reexamined and changed claims are valid only for the
future after reexamination. As noted in Bloom Engineer-
ing Co. v. North American Manufacturing Co.,
Sections 307 and 252 shield those who deem an
adversely held patent to be invalid; if the patentee
later cures the infirmity by reissue or reexamina-
tion, the making of substantive changes in the
claims is treated as an irrebuttable presumption
that the original claims were materially flawed.
Thus the statute relieves those who may have in-
fringed the original claims from liability during
the period before the claims are validated.
129 F.3d 1247, 1249 (Fed. Cir. 1997) (emphasis added).
The second alternative—creating a judicial version of
intervening rights—is even more directly contrary to the
statute. Congress having considered the doctrine of
intervening rights cannot have intended that the judiciary
would develop a poor man’s version of the doctrine to
account for the statute’s inadequate coverage. This
MARINE POLYMER v. HEMCON 24
strongly suggests that the statute should cover amend-
ments by disclaimer.
Tellingly, the amici who support the court’s interpre-
tation of the statute recognize that formal amendments to
claim language during the course of reexamination are
unusual. See Amicus Br. of Soverain et al. at 10. Telling
too they admit that formal amendments are now, and will
be, avoided for the very purpose of avoiding the creation of
intervening rights. Id. at 4 (arguing that patent owners
often “follow a course of not seeking to amend their as-
serted claims, with the settled understanding that if they
could avoid claim amendments, they could also avoid
intervening rights”). In other words, applicants will
amend claims by argument rather than formal methods
for the very purpose of avoiding intervening rights.
This very problem has led numerous amici to oppose
the majority’s mechanical construction of the term
“amend” and to recognize that the majority’s interpreta-
tion of intervening rights will create the very opportuni-
ties for mischief and “foster gamesmanship” that the
statute was designed to avoid. Amicus Br. of Geico et al.
at 9-10 (“[U]nder such a rule, patentees will be reluctant
to change the words of their claims during reexamination
or reissue and, instead, badger examiners with arguments
changing the meaning of the words in the claims.”);
Amicus Br. of Hewlett-Packard Co. et al. at 11 (“Appel-
lee’s reading of the statute to exclude claims narrowed
through disclaimer would lead to absurd results and
discourage formal claim amendments in favor of prosecu-
tion history maneuvering.”). The majority’s construction
of the statute defeats the public notice function of the
patent system by encouraging patentees to define the
scope of the invention outside of the claims themselves,
thus not apprising accused infringers of what is available
to them.
25 MARINE POLYMER v. HEMCON
Allowing patent owners to avoid creating intervening
rights by amending claims by argument is an abuse of the
reexamination process and undermines the purpose of
intervening rights. Section 307(b) cannot be construed to
sanction such abuses.
To be sure, not every argument during reexamination
should give rise to intervening rights, but intervening
rights should be available where an argument during
reexamination rises to the level of a clear and unambigu-
ous disclaimer or disavowal of the original, correct claim
construction. Here, Marine Polymer clearly and unambi-
guously disclaimed the scope of its claim by effectively
becoming its own lexicographer and presenting a specific,
limiting definition of the term “biocompatible.” 10 I re-
spectfully dissent.
10 While absolute intervening rights should exist
here as a matter of law, the issue of equitable intervening
rights is a fact intensive one, involving numerous issues
to be considered by the district court. Because the district
court has not made any factual findings with respect to
equitable intervening rights, this issue should be re-
manded to the district court for its consideration in the
first instance, as the original panel ordered.