Courts Must Apply Phillips Standard to Determine Claim Scope for Intervening Rights Inquiry

In Convolve, Inc. v. Compaq Computer Corp., No. 14-1732 (Fed. Cir. Feb. 10, 2016), the Federal Circuit reversed the district court’s grant of summary judgment of noninfringement based on its determination that liability was precluded by intervening rights.

Convolve filed suit against Seagate and Compaq in 2000, alleging, among other things, infringement of U.S. Patent No. 6,314,473. While the litigation was pending, the 473 patent underwent reexamination. During reexamination, the patentee added the word “seek” in front of “acoustic noise” in the claims in response to a prior-art rejection. On remand from a prior appeal to the Federal Circuit, the district court adopted the examiner’s finding that the “acoustic noise” was not limited to “seek acoustic noise” and held that patent infringement liability was precluded by intervening rights arising from the substantive amendment to the claims.

On a second appeal, the Federal Circuit applied the Phillips framework to find that the claims were originally limited to seek acoustic noise, and the addition of the word “seek” in reexamination did not alter the scope of the claims. According to the Court, the district court erred in adopting the examiner’s findings wholesale, without accounting for the difference between the broadest reasonable interpretation standard used in reexamination and the Phillips standard. The Court thus reversed the lower court’s grant of summary judgment.