Absolute Intervening Rights

Absolute intervening rights protect parties who took specific actions before a patent was reissued or reexamined: WHEN THEY ARISE: absolute intervening rights arise when: (a) a patent is reissued (broadened reissue) or reexamination produces an amended claim that differs from the original claim; AND (b) before the reissue or reexamination, a third party made, purchased, offered to sell, or used a specific article in the US; STATUTORY BASIS: 35 U.S.C. § 252 (reissue) and § 307 (reexamination) provide intervening rights protections; WHAT IS PROTECTED: the specific articles (products) that were made, purchased, or placed in use BEFORE the reissue or reexamination; these specific articles are protected absolutely — the third party can continue using, selling, or disposing of those specific articles forever; CRITICAL LIMITATION — 'SPECIFIC ARTICLES': absolute intervening rights protect only the SPECIFIC ARTICLES already in existence before the reissue; they do NOT protect the right to make new copies; the right to MAKE additional articles may be protected by equitable intervening rights, not absolute rights; EXAMPLE: Company X builds 100 machines that would infringe the reissued patent; those 100 specific machines are protected by absolute intervening rights — Company X can continue using and selling those exact 100 machines even after the reissue; but Company X cannot manufacture machine number 101 without potentially infringing the reissued patent (absent equitable intervening rights); TRIGGERING REQUIREMENT: the acts must have been performed BEFORE the reissue (or reexamination); acts performed after the original patent's surrender/claim cancellation but before reissue qualify.

Intervening rights exist in two forms with different scopes and requirements: ABSOLUTE INTERVENING RIGHTS: protect the SPECIFIC ARTICLES that were made, purchased, or in use before the reissue; unconditional — no showing of reliance, investment, or hardship required; the third party retains the right to use/sell those exact articles regardless of investment or circumstances; non-waivable by the patentee; EQUITABLE INTERVENING RIGHTS: protect the RIGHT TO CONTINUE MAKING, USING, OR SELLING products based on substantial preparation or investment made before reissue or reexamination; requires a showing of: (a) substantial preparation to make, use, or sell the product before reissue; AND (b) it is equitable to allow continued activity given the investment and reliance; courts have DISCRETION — equitable intervening rights are not guaranteed even if the party made substantial investments; FACTORS FOR EQUITABLE RIGHTS: amount of investment or preparation made before reissue; good faith reliance on original patent's claim scope; number of articles already made vs. planned; whether the party was on notice of the reissue proceedings; hardship from denying continued manufacture; EXAMPLE OF EQUITABLE RIGHTS CLAIM: Company Y purchased manufacturing equipment and signed supply contracts in reliance on the original patent's limited scope; before the reissued patent issued, Company Y had substantial preparation but had not yet manufactured the product; equitable intervening rights might protect Company Y's right to manufacture (but this is discretionary); TIMELINE: both types of rights require actions BEFORE the reissue; after the reissued patent issues, no new intervening rights arise.

The intervening rights doctrine applies differently in reexamination than in reissue: REEXAMINATION CONTEXT: when a patent survives ex parte or inter partes reexamination with AMENDED OR NEW CLAIMS, the amended claims are treated similarly to reissued claims for intervening rights purposes; STATUTORY BASIS: § 307(b) — a certificate of reexamination that makes a determination on claims amends those claims; the intervening rights of § 252 apply to amended or new claims issued as a result of reexamination; WHEN NO INTERVENING RIGHTS APPLY: if the reexamination confirms claims WITHOUT CHANGE, there are no intervening rights — the original claims remain exactly as before; the confirming reexamination certificate does not amend anything; AMENDED CLAIMS: if claims are amended during reexamination to add a limitation (narrowing) or are newly added: the amended/new claims can give rise to intervening rights; a party who practiced the ORIGINAL claim but not the AMENDED claim before reexamination may have absolute intervening rights for specific articles; BROADENED CLAIMS IN REEXAMINATION: claims can only be broadened in reissue proceedings, NOT in reexamination; in reexamination, claims can only be narrowed (or cancelled); so intervening rights in reexamination are less common than in reissue because reexamination cannot create broader infringement claims; IPR AND PGR CONTEXT: inter partes review (IPR) and post-grant review (PGR) can also result in amended claims through a motion to amend; intervening rights likely apply to IPR/PGR amended claims under § 318(c)/§ 328(c) by analogy; PATENT TRIAL AND APPEAL BOARD (PTAB) amendments: in IPR, a patent owner can file a motion to amend claims; if PTAB grants the motion and the amended claims are broader than some prior art-limited reading, intervening rights may apply.

Proving absolute intervening rights requires demonstrating specific elements: ELEMENTS: (1) the patent was reissued or reexamination produced an amended/new claim; (2) the defendant or its predecessor made, purchased, offered to sell, OR used the specific article IN THE UNITED STATES; (3) this act occurred BEFORE the date of reissue (or reexamination certificate); (4) the article would be covered by the reissued/amended claims but was not covered by the original patent claims OR was protected by the original claim before surrender; PROVING SPECIFIC ARTICLES: the defendant must identify the SPECIFIC ARTICLES — not just the general product category; documentation needed: manufacturing records showing specific items were made before reissue; purchase records; inventory records; PROVING 'BEFORE REISSUE': the act must predate the reissue date (date the reissue patent is granted); the period between original patent surrender (application filed for reissue) and reissue grant qualifies; acts during this period are protected; ORIGINAL CLAIM SCOPE: the defense applies when the original claim was narrower — the article was not infringing the original patent; if the article infringed the original patent, the party cannot have been acting in reliance on the limited scope of the original claims; PLEADING: intervening rights is an affirmative defense; must be pleaded in the answer to avoid waiver; can be raised by motion for summary judgment after discovery; BURDEN: defendant bears burden of proof by a preponderance of the evidence; courts require specific evidence, not general assertions about past business activities.

Intervening rights and prosecution history estoppel both relate to the scope of patent claims and what conduct is protected, but they operate differently: PROSECUTION HISTORY ESTOPPEL: applies in the original prosecution context; when a patent applicant amends claims or makes arguments to overcome prior art, the applicant surrenders the scope of what was given up for doctrine of equivalents purposes; protects the PUBLIC by limiting claim scope; applies to all potential infringers; NOT a defense that individual defendants must prove — it is an estoppel on the patentee; INTERVENING RIGHTS: applies ONLY in the reissue and reexamination context; protects specific third parties who RELIED on the original claim's scope; requires proof by the specific defendant of reliance-based actions before reissue; benefits only the specific defendant who can prove the reliance; DOCTRINAL OVERLAP: both doctrines address situations where patent claims change; both can benefit defendants in infringement litigation; in reissue cases, a defendant may assert BOTH: (a) prosecution history estoppel from the original prosecution (limiting DOE); AND (b) absolute/equitable intervening rights for specific articles; REISSUE'S BROADENING REISSUE: a broadened reissue claim might not have prosecution history estoppel from the reissue prosecution; but the intervening rights doctrine provides protection to parties who relied on the original (narrower) claim scope; PRACTICAL INTERPLAY: a defendant asserting intervening rights should also analyze whether any claim construction arguments or prosecution history estoppel limits the reissued claim's scope; narrowing the reissued claim through construction may eliminate infringement entirely, making intervening rights unnecessary.