IP Law Daily, PATENT—D. Md.: Patent owner’s amendment of claims in reexamination did not provide basis for dismissal of infringement suit, (Apr 5, 2023)

By Kevin M. Finson, J.D.

A live controversy remained in a case asserting infringement of a patent for edge trim on armor panels after reexamination because the amended claims did not expand the scope of the original claims.

A maker of armor panels was not entitled to dismissal of a patent infringement suit brought against it, the federal district court in Baltimore has held. Amendments made to the patent claims during USPTO reexamination proceedings synchronized with the he court’s claim construction, and so necessarily did not expand the scope of the claims (Leading Technology Composites, Inc. v. MV2, LLC, April 4, 2023, Blake, C.).

Leading Technology Composites, Inc. (LTC) was the owner of U.S. Patent No. 8,551,598 (the ’598 patent), which claimed edge trims on armor panels. LTC brought suit for infringement against MV2, LLC (MV2), a manufacturer of armor panels. During the pendency of the case, the USPTO conducted reexamination of the claims of the ’598 patent. As a result of the reexamination, LTC cancelled claims 1 through 6 and amended claim 7 to incorporate the features of claims 1-6. MV2 moved to dismiss the case as moot and for lack of subject matter jurisdiction, arguing that LTC had amended its claim for an improper purpose and that the amendment entitled MV2 to absolute intervening rights.

Amendment. MV2 argued that the governing statute allowed amending claims only to distinguish claims from the prior art and to respond to an adverse decision as to the patentability of the claims. Because LTC stated in part that it desired to harmonize the language of its claims with the court’s claim construction order. MV2 argued that the amendment should not be allowed. The court found that in light of the USPTO’s office action finding the claims unpatentable it was obvious that LTC amended in order to address the unpatentability finding. LTC’s one line referencing harmonization with the claim construction order did not lead the court to the belief that this was the sole reason for the amendment.

Intervening rights. MV2 argued that the case was moot because it was entitled to absolute intervening rights as a result of LTC’s expansion of its claims on amendment. The court held that this could not be true because LTC’s amendment merely copied language from the court’s claim construction and so necessarily did not change the scope of the claim.

The court denied LTC’s motion to dismiss.

The Case is No. 1:19-cv-01256-CCB.

Attorneys: Jesse J. Camacho (Practus, LLP) for Leading Technology Composites, Inc. George Adam Ruther (Rosenberg Martin Greenberg, LLP) for MV2, LLC.

Companies: Leading Technology Composites, Inc.; MV2, LLC

Cases: Patent MassachusettsNews