Law School Case Brief
Quantum Corp. v. Rodime, PLC - 65 F.3d 1577 (Fed. Cir. 1995)
35 U.S.C.S. § 305 states that no proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding. An amended or new claim has been enlarged if it includes within its scope any subject matter that would not have infringed the original patent. A claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects.
Plaintiff Quantum Corporation's (Quantum) sought a declaratory judgment that the reexamined patent of Defendant Rodime PLC (Rodime) was invalid, unenforceable, and not infringed. Rodime filed an answer and a counterclaim for infringement. Quantum moved for summary judgment regarding certain claims in the reexamined patent, alleging that the claims were invalid under 35 U.S.C.S. § 305, for being impermissibly broadened by Rodime during reexamination. Rodime had changed language of track density limitation from "at least 600" tpi to "at least approximately 600" tpi in the patent claim. The district court granted summary judgment to Quantum, and Rodime appealed.
Did amendments made during a prior reexamination proceeding impermissibly broaden the scope of the patent claims at issue in violation of 35 U.S.C. § 305 (1988)?
The appellate court affirmed because the addition of the word "approximately" to the track density limitation during reexamination was not a mere clarification, but a substantive change that expanded the scope of the claims at issue in violation of 35 U.S.C.S. § 305. Moreover, because the claims were impermissibly broadened, the court concluded they were invalid because a violation of 35 U.S.C.S. § 305, constituted an invalidity defense in a patent infringement action.
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