Guidance for Applying the Doctrine of Intervening Rights and the “Protection of Investments Made or Business Commenced” Language of 35 U.S.C. § 252 Provided in Recent Federal Circuit Opinion

March 30, 2021

The U.S. Court of Appeals for the Federal Circuit recently issued an opinion in which the merits panel addresses the doctrine of intervening rights under 35 U.S.C. § 252, and particularly the protection of “investments made or business commenced” before the asserted patent’s claims are amended through post-issuance proceedings (e.g., reissue and reexamination).  The Court explains that monetary investments made and recouped before issuance of the reissued patent or reexamination certificate are not the only investments that a court can deem sufficient to protect as an equitable remedy and holds that recoupment is one factor that can be considered when weighing the equities to determine whether to grant equitable intervening rights—but is not the sole factor that a district court must consider nor a factor that must be weighed more heavily in all instances.  The case is John Bean Technologies Corp. v. Morris & Associates, Inc., 988 F.3d 1334 (Fed. Cir. 2021).