R + L Carriers, Inc. v. Qualcomm, Inc. , 801 F.3d 1346 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
R+L CARRIERS, INC.,
Plaintiff-Appellant
v.
QUALCOMM, INC.,
Defendant-Appellee
______________________
2014-1718
______________________
Appeal from the United States District Court for the
Southern District of Ohio in No. 1:09-cv-00445-SSB,
Senior Judge Sandra S. Beckwith.
______________________
Decided: September 17, 2015
______________________
ANTHONY C. WHITE, Thompson Hine LLP, Columbus,
OH, and MEGAN DORTENZO, Cleveland, OH, argued for
plaintiff-appellant. Also represented by ARTHUR P.
LICYGIEWICZ, Cleveland, OH; PHILIP B. SINENENG, Colum-
bus, OH; STEPHEN BUTLER, SR., Cincinnati, OH.
J. DEREK VANDENBURGH, Carlson, Caspers, Vanden-
burgh, Lindquist & Schuman, P.A., Minneapolis, MN,
argued for defendant-appellee. Also represented by
DOUGLAS J. WILLIAMS; JONATHAN S. FRANKLIN, Norton
Rose Fulbright US LLP, Washington, DC; RICHARD
2 R+L CARRIERS, INC. v. QUALCOMM, INC.
STEPHEN ZEMBEK, Houston, TX; SHEILA C. KADURA,
Austin, TX.
______________________
Before NEWMAN, O’MALLEY, and WALLACH, Circuit
Judges.
O’MALLEY, Circuit Judge.
R+L Carriers, Inc. (“R+L”) brought suit against, inter
alia, Qualcomm, Inc. (“Qualcomm”), asserting infringe-
ment of the claims of U.S. Patent No. 6,401,078 (“the ’078
patent”). While the case was pending, R+L filed for ex
parte reexamination of the ’078 patent. Although the
patent survived, R+L added language to all of the claims
at issue. Because the district court determined that the
new claims were not substantially identical to the initial
claims of the ’078 patent, and because there was no dis-
pute that Qualcomm ceased its allegedly infringing activi-
ty before the reexamination certificate issued, R+L
stipulated to final judgment, dismissing its infringement
claim against Qualcomm. R+L appeals the district court’s
determination that the amendments made during reex-
amination resulted in a substantive change in claim
scope. For the reasons set forth below, we affirm, albeit
on slightly different grounds than those relied upon by the
district court.
I. BACKGROUND
A. The ’078 Patent
The ’078 patent generally relates to an improved
method of consolidating freight into trailers to optimize
delivery efficiencies for the loads in each trailer. Accord-
ing to the ’078 patent, prior art shipping practices would
evaluate the contents of each incoming trailer by review-
ing bills of lading for the packages when they arrived at a
central terminal. The patent explains that the freight on
each trailer was then consolidated with freight going in
R+L CARRIERS, INC. v. QUALCOMM, INC. 3
the same direction and hauled away from the central
terminal. The patent explains that the purpose of consol-
idation was to deliver all of the freight on time, while
using the fewest number of trailers to do so. Although
load planning software at the time could help perform this
task more efficiently, the patent asserts that the prior art
software could not account for unscheduled freight that
was not entered into the computer.
To solve this alleged deficiency in the prior art, the
’078 patent discloses a system for transmitting the con-
tents of a trailer to the central terminal so that load
planning can occur while the trailer is en route. The
system contemplates the scanning of bills of lading,
transmitting those documents once scanned, and receiv-
ing the data where it can be extracted for load planning
and billing purposes. The patent appears to describe two
alternative methods for extracting the load planning
information from the transmission and preparing loading
manifests therefrom: (1) a computerized system automati-
cally interpreting the data; and (2) a data entry clerk
manually reviewing the information. The U.S. Patent
and Trademark Office (“PTO”) initially issued the patent
on June 4, 2002, containing only one independent claim
(“original claim 1”).
On June 28, 2013, R+L filed for ex parte reexamina-
tion of the ’078 patent based on prior art identified by a
third party. In the first office action, the PTO rejected
original claim 1, inter alia, as anticipated by a key prior
art reference—a publication from the N&M Transfer
Company that “teaches a method for transferring ship-
ping documentation data for a package from a transport-
ing vehicle to a remote processing center.” Joint
Appendix (“J.A.”) 2925. To overcome the PTO’s rejection,
R+L modified original claim 1 as follows:
1. A method for transferring shipping documenta-
tion data for a package from a transporting vehi-
4 R+L CARRIERS, INC. v. QUALCOMM, INC.
cle to a remote processing center comprising the
steps of:
placing a package on the transporting vehicle;
using a portable document scanner to scan an im-
age of the documentation data for the package,
said image including shipping details of the pack-
age;
providing a portable image processor capable of
wirelessly transferring the image from the trans-
porting vehicle;
wirelessly sending the image to a remote pro-
cessing center;
receiving the image at said remote processing cen-
ter; and
prior to the package being removed from the
transporting vehicle, utilizing said documentation
data at said remote processing center to prepare
[a] an advance loading manifest document for an-
other transporting vehicle which includes said
package for further transport of the package on
another transporting vehicle.
’078 Patent Reexamination Certificate col. 2 ll. 1–18
(deletion in brackets; additions in italics) (“amended claim
1”). In allowing amended claim 1, the PTO explained that
the key prior art reference only discussed loading a “mani-
fest for the current shipping vehicle and not an advance
loading manifest document for another transporting
vehicle.” J.A. 3088. The PTO issued the reexamination
certificate on March 21, 2014, with amended claim 1
replacing original claim 1.
B. Procedural History
R+L filed suit against Qualcomm on June 25, 2009,
alleging, inter alia, induced infringement of the ’078
R+L CARRIERS, INC. v. QUALCOMM, INC. 5
patent. R+L’s case against Qualcomm was consolidated
into a multidistrict litigation (“MDL”) in the United
States District Court for the Southern District of Ohio. In
re Bill of Lading Transmissions & Processing Sys. Patent
Litig., MDL Docket No. 1:09-md-2050 (S.D. Ohio). In a
prior appeal, on June 7, 2012, this court held that R+L’s
induced infringement claims survived Qualcomm’s motion
to dismiss. In re Bill of Lading Transmission & Pro-
cessing Sys. Patent Litig., 681 F.3d 1323, 1346–47 (Fed.
Cir. 2012).
We remanded the case against Qualcomm for further
proceedings. After the PTO issued the reexamination
certificate on March 21, 2014, the district court sua sponte
ordered all of the parties in the MDL to brief the effect of
the claim amendments made during reexamination. On
May 19, 2014, the district court determined that R+L’s
amendment to original claim 1 substantively narrowed
the claim, thereby precluding recovery of damages for
infringement prior to the date the PTO issued the reex-
amination certificate. The district court agreed with the
accused infringers in the MDL that, although original
claim 1 covered both manual and computer-prepared
loading manifests, amended claim 1 covered only comput-
er-prepared loading manifests. The district court rea-
soned that the specification of the ’078 patent disclosed
both manual and computerized extraction of information
from bills of lading and preparation of loading manifests,
the language in original claim 1 did not limit methods for
preparing loading manifests to only computerized sys-
tems, and the term “advance” in amended claim 1 was
added to get around the N&M prior art, which, among
other things, disclosed manual entry of the loading mani-
fest. For these reasons, the district court concluded that
amended claim 1 must encompass only the preparation of
computer-generated loading manifests.
Because Qualcomm sold its allegedly infringing busi-
ness unit before the PTO issued the reexamination certifi-
6 R+L CARRIERS, INC. v. QUALCOMM, INC.
cate for the ’078 patent, R+L conceded that it could not
recover any damages against Qualcomm based on the
district court’s determination that claim 1 was substan-
tively narrowed during reexamination. Accordingly, R+L
stipulated to entry of final judgment, dismissing its
infringement claims against Qualcomm. R+L timely
appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1) (2012).
II. DISCUSSION
A patentee of a patent that survives reexamination is
only entitled to infringement damages for the time period
between the date of issuance of the original claims and
the date of issuance of the reexamined claims if the origi-
nal and the reexamined claims are “substantially identi-
cal.” 35 U.S.C. § 252 (2012) (stating that a reissued
patent shall have the same effect as the original patent
“in so far as the claims of the original and reissued pa-
tents are substantially identical” (emphasis added)); see
35 U.S.C. § 307(b) (stating that “a reexamination proceed-
ing will have the same effect as that specified in section
252 for reissued patents”); Laitram Corp. v. NEC Corp.,
163 F.3d 1342, 1346 (Fed. Cir. 1998) (citing 35 U.S.C. §§
252, 307(b)). If, on the other hand, a substantive change
has been made to the original claims during reexamina-
tion, the patentee is entitled to infringement damages
only for the time period following issuance of the reexam-
ination certificate. Bloom Eng’g Co. v. N. Am. Mfg. Co.,
129 F.3d 1247, 1250 (Fed. Cir. 1997) (“‘Identical’ does not
mean verbatim, but means at most without substantive
change.” (emphasis added)). To determine whether sub-
stantive changes have been made, we consider “whether
the scope of the claims are identical, not merely whether
different words are used.” Laitram, 163 F.3d at 1346;
Bloom Eng’g, 129 F.3d at 1250.
We have held previously that we review de novo a dis-
trict court’s conclusion regarding whether the scope of
R+L CARRIERS, INC. v. QUALCOMM, INC. 7
reexamined claims are “substantively identical” to the
scope of the original claims. Laitram, 163 F.3d at 1346–
47. In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831 (2015), however, the Supreme Court held
that we must review the district court’s resolution of
subsidiary factual matters during claim construction for
clear error. Id. at 841–42. Because we are reviewing the
scope of the reexamined and original claims, this is a
matter of claim construction. See Laitram, 163 F.3d at
1346–47 (“This rule flows from the general principle that
‘the interpretation and construction of patent claims,
which define the scope of the patentee’s rights under the
patent, is a matter of law, exclusively for the court.’”
(quoting Markman v. Westview Instruments, Inc., 52 F.3d
967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996))). Accordingly, we must review the district court’s
subsidiary factual findings on the scope of the reexamined
and original claims for clear error, but the ultimate con-
clusion regarding the scope of the claims de novo. See
Teva, 135 S. Ct. at 841–42.
It is undisputed that R+L cannot recover damages for
infringement from Qualcomm unless amended claim 1 is
“substantially identical” to original claim 1. 35 U.S.C.
§ 252. Accordingly, this case turns on our review of the
district court’s determination that amended claim 1 is
substantively narrower than original claim 1. See Bloom
Eng’g, 129 F.3d at 1250. Qualcomm argues that it is clear
that, although original claim 1 encompassed computer
and manual loading manifests, amended claim 1 is lim-
ited to computer-generated loading manifests because, it
says, that limitation was necessary to overcome the N&M
reference. R+L argues, to the contrary, that it is clear
that “loading manifests” in original claim 1 was always
limited to computer-generated or computer-assisted
documents and that the only amendment necessary to
overcome the N&M reference was the clarification that
the loading manifest must be a document for another
8 R+L CARRIERS, INC. v. QUALCOMM, INC.
transporting vehicle, rather than the current vehicle.
Thus, R+L contends that the narrowing on which the
district court relied for its judgment actually never oc-
curred.
As an initial matter, we disagree with both Qualcomm
and R+L on the primary premises of their arguments. As
for Qualcomm, we do not agree that claim 1 was substan-
tively narrowed in reexamination because insertion of the
term “advance” into the claims limited claim 1 to only
computer-generated loading manifests. Qualcomm reads
too much into the term “advance,” which, as discussed
below, was added to the claim for reasons unrelated to the
format for preparing the loading manifests. Speculation
about what R+L was attempting to accomplish vis-à-vis
the N&M reference does not change our view.
Under the statute and our prior case law, it is irrele-
vant why an amended claim is narrowed during reexami-
nation, or even whether the patentee intended to narrow
the claim in a particular way. If the scope of the amended
claim is not “substantially identical” to the scope of the
original claim—based on a normal claim construction
analysis—per § 252, that fact affects intervening rights.
See 35 U.S.C. § 307(b). The fact that the reason for the
amendment during reexamination might not have been
for the purpose of narrowing the claim in a particular way
does not matter. And, the court is not charged with
assessing why a claim might have been narrowed as a
predicate to determining whether it has been narrowed.
Indeed, we explained in the analogous context of consider-
ing whether a claim was broadened on reexamination that
we consider “whether any conceivable process would
infringe the amended claim, but not infringe the original
claim.” Predicate Logic, Inc. v. Distributive Software, Inc.,
544 F.3d 1298, 1303 (Fed. Cir. 2008). Similarly, in de-
termining whether an amended claim is narrower, we
determine whether there is any product or process that
would infringe the original claim, but not infringe the
R+L CARRIERS, INC. v. QUALCOMM, INC. 9
amended claim. See id. The purpose of the amendment is
irrelevant to this inquiry. We do not agree, accordingly,
that, simply because it may have made sense to narrow
claim 1 to exclude manual operations in order to overcome
the N&M reference, that form of narrowing necessarily
occurred.
Having said that, we do not agree with R+L that
“loading manifest” in claim 1 always encompassed only
manifests generated using load planning software. We
agree with the district court’s thorough claim construction
analysis of original claim 1 and its conclusion that the
term “loading manifest” is broad enough to encompass
both manual and computer generated documentation. We
find that, under a proper claim construction analysis, both
original claim 1 and amended claim 1 are similarly broad
in that respect. Whatever R+L’s reason for adding the
word “advance” into claim 1, the district court’s conclusion
as to the scope of original claim 1 under traditional claim
construction principles is not affected.
That conclusion does not expose Qualcomm to damag-
es for infringement of amended claim 1, however, because
we find that claim 1 was narrowed in other ways during
reexamination and is, thus, not substantially identical to
original claim 1 in the ’078 patent. R+L amended “load-
ing manifest” to claim an “advance loading manifest
document for another transporting vehicle.” ’078 Patent
Reexamination Certificate col. 2 ll. 15–16 (additions in
italics). R+L made this amendment after the PTO reject-
ed original claim 1 over various pieces of prior art, not
just N&M. The examiner expressly stated he was allow-
ing amended claim 1 because “the manifest discussed by
[the prior art] is a manifest for the current shipping
vehicle and not an advance loading manifest document for
another transporting vehicle.” J.A. 3088. In other words,
the examiner’s focus in allowing the claims was not on
whether a computer produced the loading manifest, but
on the additional limitation that the advance loading
10 R+L CARRIERS, INC. v. QUALCOMM, INC.
manifest be “for another transporting vehicle.” Id. Alt-
hough the amendment may not have limited amended
claim 1 to computer-produced loading manifests, the
examiner’s commentary reveals a method that would be
covered by original claim 1 but not amended claim 1: the
process of preparing a loading manifest “for the current
shipping vehicle.” J.A. 3088.
R+L’s own argument that “advance” did not alter the
scope of the claims as it relates to the method for prepar-
ing the manifests further supports this conclusion. In its
briefing, R+L acknowledges that the claims were allowed
over the prior art because it agreed to add the “for another
transporting vehicle” limitation. Appellant’s Br. 11. As
R+L stated in its interview summary during reexamina-
tion, addition of “loading manifest document for another
transportation vehicle” resulted in a tentative agreement
that the amendment would overcome the rejections over
the prior art. J.A. 3194–95. Even if the word “advance”
was only added to “provide clarity,” as R+L argues, R+L
clearly understood that it was limiting the scope of its
claims in another way to get around the prior art. See
Appellant’s Br. 11; J.A. 3194–95. 1 Thus, amended claim
1 is not “substantially identical” to original claim 1 be-
cause original claim 1 encompassed scope that amended
claim 1 does not. See 35 U.S.C. § 252.
Accordingly, we conclude that amended claim 1 is not
“substantially identical” to original claim 1. 35 U.S.C.
§ 252. R+L is, thus, not entitled to infringement damages
prior to issuance of the reexamination certificate for the
1 Notably, R+L itself suggested adding the term
“advance” to further emphasize the “for another trans-
porting vehicle limitation.” Thus, even if the term “ad-
vance” did not alter the method for preparing the loading
manifests covered by claim 1, it does appear that the term
“advance” assisted in narrowing the claim in other ways.
R+L CARRIERS, INC. v. QUALCOMM, INC.
11
’078 patent. Since R+L concedes that Qualcomm did not
perform any allegedly infringing conduct after the PTO
issued the reexamination certificate, the district court
properly entered judgment dismissing the case against
Qualcomm.
III. CONCLUSION
For the foregoing reasons, we affirm the judgment of
the district court dismissing R+L’s infringement claims
against Qualcomm.
AFFIRMED