February 16, 2012

Federal Circuit Vacates Opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc., Agreeing to Rehearing En Banc; Venable files amicus brief on behalf of industry associations

2 min

On January 20, 2012, the Court of Appeals for the Federal Circuit vacated its opinion in the Marine Polymer Technologies, Inc. v. Hemcon, Inc. and agreed to rehear the case en banc

The vacated opinion was issued on September 26, 2011, and in essence held that intervening rights would exist when argument during post grant proceedings, such as reissue and reexamination proceedings, changed the scope of claims. Intervening rights provide that if a claim is “new or amended” through reissue or reexamination, any alleged infringing activity that began before that change is given a free pass – that is, the alleged infringer has “intervening rights.”

The Federal Circuit’s September opinion was a surprise to many, since it had previously been understood that the statutory language, which provides for intervening rights for new or amended claims, did not apply to arguments made during the post grant proceeding. Practitioners and patent owners were taken aback by the opinion and it was subject to significant criticism, including that it would open up the door to increased meritless reexamination proceedings and thus increased burden on the USPTO. 

The Federal Circuit’s vacating and agreement to rehear the case en banc has been positively received by many patent owners and practitioners who had criticized the previous opinion. No additional briefing by the parties has been permitted, and amicus briefs were due on February 10, 2012.

Michael Gollin, Venable partner, was lead counsel, working with Venable attorneys Bill Coston, Martin Saad, Meaghan Hemmings Kent, and Fabian Koenigbauer.

Please click here to view the amicus brief.