R l providers inc v qualcomm inc

Invention

The standard patent legislation holds that the patentee of a patent that survives reexamination is only qualified for infringement damage for the time period between the time of issuance of the initial claims and the date of issuance in the reexamined says if the unique and the reexamined claims happen to be substantially the same. On the other hand, when a substantive modify has been built to the original claims during reexamination, the patentee is entitled to infringement damage only for the timeframe following issuance of the reexamination certificate.

This notion is referred to as intervening rights, which will protect the publics reliance on the scope of an issued patent. Intervening rights will be granted to anyone who relied on the original scope of the issued patent and had previously begun to create, use, or perhaps sell a given invention that may be now newly infringing within the amended patent. In a new Federal Routine decision, R+L Carriers, Incorporation. (R+L) sued Qualcomm, Incorporation. (Qualcomm) saying infringement of U. T. Patent No . 6, 401, 078 (the 078 patent). This is the second time R+L has brought the truth to the Federal Circuit (in a prior appeal, on Summer 7, 2012, the Federal government Circuit kept that R+Ls induced violation claims made it through Qualcomms action to dismiss, In lso are Bill of Lading Tranny Processing Sys. Patent Litig., 681 F. 3d 1323, 1346″47 (Fed. Cir. 2012), and the circumstance was remanded against Qualcomm for further proceedings). While the circumstance was pending, R+L registered for a great ex-parte reexamination of the 078 patent based on prior artwork identified by a third party.

This strategy may help if R+L believed the prior art to become troublesome and likely to invalidate the obvious. Thus, R+L put the obvious back into assessment likely to improve the statements to be within a stronger situation to survive an invalidity challenge or to whitewash the obvious over newly found art. Although the obvious survived reexamination, R+L added language to all of the claims at concern. Accordingly, this situatio turns on if the original claims and the corrected reexamined promises are greatly identical in order to avoid intervening rights to be granted to Qualcomm. The check of Lading PatentR+L attained the 078 patent, that generally relates to an improved approach to consolidating shipment into trailers to optimize delivery efficiencies for the hundreds in each trailer.

According to the 078 patent, previous art shipping practices could evaluate the material of each incoming trailer simply by reviewing charges of lading for the packages after they arrived at a central port. The patent explains the freight to each trailer was then consolidated with freight going in the same direction and hauled away from the central port. The obvious explains the fact that purpose of loan consolidation was to deliver all of the shipping on time with the fewest number of trailers for this. Although insert planning application at the time may help perform this job more efficiently, the patent claims that the prior art software program could not account for unscheduled shipping that has not been entered into the pc. To solve this alleged deficiency in the prior art, the 078 obvious discloses a program for transmitting the material of a truck to the central terminal in order that load organizing can occur while the trailer can be en route.

The system contemplates the deciphering of bills of lading, transmitting all those documents once scanned, and receiving the data wherever it can be extracted for fill planning and billing purposes. The patent describes two methods for taking out the load organizing information from your transmission and preparing to insert manifests therefrom: (1) a computerized system automatically interpreting the data, and (2) an information entry attendant manually looking at the information. The U. H. Patent and Trademark Workplace (USPTO) in the beginning issued the patent upon June four, 2002, made up of only one 3rd party claim (original claim 1). During re-examination, in a first office action, the USPTO rejected original claim one particular as being anticipated by a crucial prior fine art reference. To overcome the USPTOs denial, R+L corrected original state 1 as follows (deletions proven in mounting brackets, additions shown by underlining):

1 . A method for transferring shipping paperwork data for a package coming from a moving vehicle into a remote finalizing center composed of the steps of: – placing a package for the transporting motor vehicle, using a portable document scanner to scan a picture of the documents data intended for the package, said photo including shipping and delivery details of the package, – providing a portable image processor capable of easily transferring the from the shipping vehicle, – wirelessly mailing the image to a remote control center, getting the image for said distant processing centre, and- prior to the package becoming removed from the transporting motor vehicle, utilizing stated documentation data at explained remote control center to prepare [[a]] an advance launching manifest record for another carrying vehicle consisting of said package for further travel of the package deal on one more transporting vehicle.

The USPTO in that case allowed the amended declare 1 and issued the reexamination certificate, and stated that the important prior artwork reference only discussed packing a express for the current shipping automobile and not an advance launching manifest record for another carrying vehicle. Had been Substantive Adjustments Made to Claims During Reexamination? To determine if substantive alterations have been made, and thus intervening rights can be found, the Federal government Circuit considers whether the opportunity of the [original and amended] claims will be identical, not merely whether different words are used. The two conflicting arguments offered by Qualcomm and R+L focused on how come the amendments were shown during reexamination. The Government Circuit, though, stated that under the arrêté and preceding case legislation, it is unimportant why an amended claim is narrowed during reexamination, or even perhaps the patentee designed to narrow the claim in a particular way. The key aspect to make note of, according to the Federal Circuit, is actually the opportunity of the amended claim can be not considerably identical to the scope of the original declare based on a normal claim development analysis.

When the opportunity is different, intervening rights apply. The fact which the reason for the amendment during reexamination might not have been with regards to narrowing what he claims in a particular way is not important. In identifying whether an amended claim is narrow, the Government Circuit explained that the evaluation includes determining whether there may be any item or process that would infringe the original claim, but not infringe the amended claim. The purpose of the modification is unimportant to this query. The Federal Circuit in the end agreed while using District Legal courts thorough assert construction evaluation of first claim 1 and its realization that the term loading express is extensive enough to encompass equally manual and computer generated documentation. Problem then is actually the corrected claim one particular covers a different sort of scope. The Federal Outlet noted that R+L only made amendments to first claim one particular after the USPTO rejected unique claim one particular over different pieces of preceding art. The term advance was added during reexamination in amended state 1 to get around the real key prior art, which, many other things, disclosed manual entry of the loading manifest.

To ascertain that amended claim one particular resulted in a narrowed assert scope, the Federal Circuit placed dependence on reasons behind allowance given by the examiner during reexamination. Namely, the examiner specifically stated having been allowing changed claim you because the express discussed by [the prior art] is known as a manifest for the current shipping vehicle rather than an advance loading express document another transporting motor vehicle. In other words, the examiners target in allowing for the promises was not about whether a computer produced the loading reveal, but for the additional restriction that the progress loading manifest is for one more transporting motor vehicle. Although the amendment may not possess limited changed claim one particular to computer-produced loading manifests, the examiners commentary reveals a method that could be covered by original claim one particular but not corrected claim you: the process of setting up a launching manifest pertaining to the current shipping vehicle. Thus, claim 1 was simplified during reexamination and is not substantially similar to first claim 1 ) The National Circuit known that set up word enhance was only added to present clarity, since R+L states, R+L plainly understood that it was limiting the scope of its promises in another way to bypass the prior skill. This is more often than not necessarily the case when delivering amendments during prosecution, and also follows the Festo presumption that changes made during prosecution happen to be presumed to become for reasons of patentability. R+L was unable to overcome this presumption.

Since amended declare 1 can be not significantly identical to original assert 1, R+L is not entitled to intrusion damages ahead of issuance in the reexamination certificate. At this time in the litigation, there were no argument that Qualcomm ceased their allegedly infringing activity. Because of this, there can be zero damages against Qualcomm, plus the infringement statements were dismissed by the Federal Circuit.