II. EVEN IF CHARACTERIZED AS “INTERVENING RIGHTS,” THE QUESTION OF RETROACTIVE REACH OF THE REEXAMINED CLAIMS CAN AND SHOULD BE DECIDED NOW As detailed above, Defendants’ motion is based on the lack of any reexamined claim that is substantially identical to an original claim, precluding pre-reexamination certificate assertion of the ’609 Patent under the first paragraph of 35 U.S.C. § 252. Waters, however, argues it as if it were an issue of intervening rights.

That provision notes that: 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 imported 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. 35 U.S.C. § 252. The doctrine “originated as a defense against patents modified through reissue procedures.”

Sproqit Has No Equitable Intervening Rights The doctrine of equitable intervening rights is a discretionary doctrine which authorizes courts to fashion a remedy to allow for the continued manufacture, use, or sale of a patented product or process in order to protect investments and business commenced before reissue or reexamination based on the theory that the infringer relied on the original claims of a patent before developing the infringing products. See 35 U.S.C. § 252, 2nd. ¶; see also Seattle Box Co.

These protections are commonly referred to as absolute intervening rights, and are an issue of law.2                                                              2 Equitable intervening rights require a showing of the “substantial preparation” that an accused infringer made before the reexamination certificate issued. 35 U.S.C. § 252. Following Nestlé USA, Inc.’s Motion for Partial Summary Judgment Based on Intervening Rights, see Steuben Foods, Inc. vs. Nestlé USA, Inc., 1:13-cv-00892 (W.D.N.Y. July 11, 2016), ECF No. 179, Defendants do not request the Court to determine equitable intervening rights at this time.

For example, simply amending a valid dependent claim in independent form (a common patent prosecution practice) would be considered a “claim change” by the PTO, yet the amendment would not affect the enforcement of that claim in this litigation because it would remain “substantially identical” to the original claim. 35 U.S.C. § 252, 316. Historically, there is only a one in eight chance that a reexamination will result in the elimination of all triable issues before the Court. Wayne O. Stacy, Reexamination Reality: How Courts Should Approach a Motion to Stay Litigation Pending the Outcome of Reexamination, 66 GEO.

There are two kinds of intervening rights: absolute and equitable. 35 U.S.C. § 252. Absolute rights apply to the “specific thing” – i.e., a tangible article – that was produced and existed prior to the reissue or reexamination of the patent.

This case is also meritless because any potential damages have been substantially limited by intervening rights. Intervening rights apply to reissued patents and protect against claims of infringement from before the patent reissued unless “the claims of the original and reissued patents are substantially identical.” 35 U.S.C. § 252. Intervening rights apply to reexamined patents with the same effect as for reissued patents. 35 U.S.C. § 307(b). A claim is considered substantially identical only if its scope did not change during reexamination.

This case is also meritless because any potential damages have been substantially limited by intervening rights. Intervening rights apply to reissued patents and protect against claims of infringement from before the patent reissued unless “the claims of the original and reissued patents are substantially identical.” 35 U.S.C. § 252.

Thus, at a minimum, Infinity has forfeited any right to recover damages prior to the date of the reexamination certificates. See 35 U.S.C. §§ 252, 307(b); Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1346, 1348 (Fed. Cir. 1998) (stating that a patentee is entitled to damages “for the period between the date of issuance of the original claims and the date of issuance of the reexamined claims” only where the reexamined claims are “identical” to the original claims, i.e., that the reexamined claims are not substantively changed, and that “it is difficult to conceive of many situations in which the scope of a rejected claim that became allowable when amended is not substantively changed by the amendment.”)

at 13-14.) Defendants had no incentive to oppose the validity of these additional Patent claims because Plaintiff is statutorily barred, under 35 U.S.C. § 252, from asserting any of the additional new claims against Defendants. (See Case 2:11-cv-03398-R-RZ Document 240 Filed 08/03/15 Page 24 of 29 Page ID #:4321 19 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 dkt.