Patents Post-Grant: CAFC Again Considers Patent Reexamination Disclaimer

Disclaimer Results in Reversal of $56 Million Dollar Damage Award

As previously discussed, the CAFC has agreed to reconsider Marine Polymer Technologies, Inc. v. HemCon, Inc. (here) en banc. The Court will reconsider whether or not intervening rights are created for a claim that is not literally amended in a post grant proceeding by a change in verbiage, but instead, by operation of prosecution disclaimer on the part of the Patentee. (earlier post here)

Interestingly, last week the Court considered a somewhat similar circumstance of claims that were confirmed in patent reexamination without amendment in Krippelz v. Ford Motor Company (here). In Krippelz, the Court considered an automotive mirror that emitted a "conical beam of light." In patent reexamination the Patentee made statements pertaining to the shape of a light beam and it's relation to reflecting elements, thus disclaiming arrangements that did not include these critical features. Based on these statements, the Court found that the Patentee disclaimed an interpretation of this language that could have impacted the Court's claim construction, and as a result found the claims invalid.

The court's application of prosecution disclaimer in Krippelz is straightforward, but an interesting contrast to the arguably innapropriate application of disclaimer in Marine Polymer.

As a reminder amicus briefing in Marine will be completed February 10th.

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