{"id":1808,"date":"2017-11-21T22:15:27","date_gmt":"2017-11-22T03:15:27","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1808"},"modified":"2017-11-24T15:21:47","modified_gmt":"2017-11-24T20:21:47","slug":"intervening-rights-apply-when-there-is-a-product-that-infringes-the-original-claim-that-does-not-infringe-the-amended-claim","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1808","title":{"rendered":"Intervening Rights Apply When There Is a Product that Infringes the Original Claim that Does Not Infringe the Amended Claim"},"content":{"rendered":"

Presidio Components, Inc. v. American Technical Ceramics Corp.<\/a>, <\/em>[2016-2607, 2016-2650] (November 21, 2017) the Federal Circuit\u00a0affirmed the district court\u2019s holdings that the claims\u00a0are not indefinite and that ATC is entitled to absolute\u00a0intervening rights because a substantive amendment was\u00a0made during reexamination, but reversed the award of lost profits and remanded for\u00a0determination of a reasonable royalty.
\nThe case involved U.S. Patent No. 6,816,356 on\u00a0a multilayer\u00a0capacitor.<\/p>\n

1. A capacitor comprising:
\na substantially monolithic dielectric body;
\na conductive first plate disposed within\u00a0the dielectric body;
\na conductive second plate disposed within the dielectric body and forming a capacitor\u00a0with the first plate;
\na conductive first contact disposed externally\u00a0on the dielectric body and electrically
\nconnected to the first plate; and
\na conductive second contact disposed externally\u00a0on the dielectric body and electrically\u00a0connected to the second plate, and
\nthe second contact being located sufficiently\u00a0close to the first contact in an edge to
\nedge relationship in such proximity as to\u00a0form a first fringe-effect capacitance with
\nthe first contact that is capable of being\u00a0determined by measurement in terms of a
\nstandard unit.<\/p>\n

Regarding indefiniteness, the claim required “first fringe-effect capacitance with
\nthe first contact that is capable of being\u00a0determined by measurement in terms of a
\nstandard unit.”\u00a0\u00a0Although industry standards for\u00a0insertion loss testing had not been published at the time\u00a0the patent was filed, Presidio\u2019s expert\u00a0testified that insertion loss testing had been well known\u00a0for many decades and that a person of ordinary skill\u00a0could use insertion loss measurements to measure capacitance\u00a0in terms of Farads, the standard unit of measurement\u00a0for capacitance.\u00a0 \u00a0Presidio’s expert further testified that a person of skill in the art would\u00a0know how to measure fringe-effect capacitance by using\u00a0insertion loss measurements.\u00a0The Federal Circuit said that a claim is not indefinite\u00a0if a person of skill in the art would know how to\u00a0utilize a standard measurement method, such as insertion\u00a0loss, to make the necessary measurement, adding that a patent need\u00a0not explicitly include information that is already well
\nknown in the art.\u00a0 The Federal Circuit noted that if a skilled person would choose an established\u00a0method of measurement, that may be sufficient to defeat\u00a0a claim of indefiniteness, even if that method is not set\u00a0forth in haec verba in the patent itself.<\/p>\n

On the issue of intervening rights, Presidio contested the application of absolute intervening rights.\u00a0 The Federal Circuit observed that the owner of a patent that survives reexamination is\u00a0not entitled to infringement damages for the time period\u00a0between the date of issuance of the original claims and\u00a0the date of issuance of the reexamined claims if the original\u00a0and amended claims are not \u201csubstantially identical.\u00a0 In other words, the Federal Circuit said, if an amendment\u00a0during reexamination makes a substantive change to an\u00a0original claim, the patentee is only entitled to infringement damages for the changed claim for the period following\u00a0issuance of the reexamination certificate.\u00a0 The Federal Circuit reviewed the\u00a0district court\u2019s assessment of\u00a0the scope of the original and reexamined claims\u00a0de novo, and agreed that the scope had changed.\u00a0 Presidio argued that the scope of the claims did not change because its stated goal in amending the claims was to adopt the district court\u2019s\u00a0construction in prior litigation.\u00a0 However, the Federal Circuit said that the patentee\u2019s intent in making the
\namendment is not determinative or controlling in determining claim scope.\u00a0 The relevant inquiry is whether the scope of\u00a0the amended claims is actually identical to the scope of
\nthe original claims based on normal claim construction\u00a0analysis, articulated in Phillips<\/em>. To determine whether an amended claim is narrower\u00a0in scope, one determines whether there is any product\u00a0or process that would infringe the original claim, but\u00a0not infringe the amended claim. The Federal Circuit found that while the construction of the prior claim required that the fringe capacitance be determined, it did not specify it be determined by testing, as the amended claim required, so the claims did in fact have different scopes.<\/p>\n

On the issue of lost profits,\u00a0Presidio claimed lost profits for its sales of the BB capacitors,\u00a0which Presidio claimed were adversely affected by the\u00a0sale of ATC\u2019s infringing 550 line of capacitors.\u00a0 To recover lost profits, the Presidio had to show a reasonable probability that, “but for” infringement, it would have made the sales that were\u00a0made by the infringer.\u00a0\u00a0\u201cBut-for\u201d causation\u00a0can be proven using the four factor test in Panduit, which\u00a0requires the patentee to show: (1) demand for the\u00a0patented product; (2) an absence of acceptable, noninfringing\u00a0substitutes; (3) manufacturing and marketing\u00a0capability to exploit the demand; and (4) the amount of\u00a0profit that would have been made.\u00a0 A\u00a0patentee can recover lost profits even if its product does not practice
\nthe claimed invention, where the product directly competes\u00a0with the infringing device.\u00a0 Although the BB capacitor does not practice the \u2019356\u00a0patent, Presidio could still recover lost profits because the\u00a0BB capacitor competes directly with the infringing 550
\ncapacitors.\u00a0 However the correct inquiry under Panduit is whether\u00a0a non-infringing alternative would be acceptable compared\u00a0to the patent owner\u2019s product, not whether it is a\u00a0substitute for the infringing product.\u00a0 Thus while defendant’s 560L product was not a an adequate substitute for the accused 550 product, it might be an adequate non-infringing substitute for\u00a0Presidio\u2019s BB.\u00a0 The Federal Circuit found that Presidio failed to prove that the 560L was not an acceptable substitute for its BB product, and reversed the award of lost profits, and remanded for a determination of a reasonable royalty.<\/em><\/p>\n

The Federal Circuit found no\u00a0abuse of discretion in the district court’s refusal to award increased damages despite the finding of willfulness.\u00a0 The Federal Circuit also vacated the injunction in view of its reversal of the lost profits award, and remanded the case for the district court to redetermine the propriety of a permanent injunction.<\/em><\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

Presidio Components, Inc. v. American Technical Ceramics Corp., [2016-2607, 2016-2650] (November 21, 2017) the Federal Circuit\u00a0affirmed the district court\u2019s holdings that the claims\u00a0are not indefinite and that ATC is entitled to absolute\u00a0intervening rights because a substantive amendment was\u00a0made during reexamination, … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[14,55,68,67],"tags":[],"class_list":["post-1808","post","type-post","status-publish","format-standard","hentry","category-indefiniteness","category-injunction","category-intervening-rights","category-lost-profits"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1808","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1808"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1808\/revisions"}],"predecessor-version":[{"id":1812,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1808\/revisions\/1812"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1808"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1808"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1808"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}