Marine Polymer Technologies, Inc. v. HemCon Inc.

PATENTS; INTERVENING RIGHTS (Doctrine of equitable intervening rights protects an accused infringer's ability to make, sell, offer to sell, or use particular items that are covered by a reexamined patent, provided that the items are of the same type that the accused infringer had made, purchased, or used before the reexamination.)

HemCon, Inc. (“HemCon”) appealed a judgment of the U.S. District Court of New Hampshire that HemCon infringed Marine Polymer Technologies, Inc.'s (“Marine”) polymer patent. The patented polymer at bar accelerated hemostasis (the process which causes bleeding to stop) and was useful in trauma units for treating serious wounds. Marine had the patent re-examined, to obtain review of the validity of the patent, and to permit correction of the claims to preserve their validity if challenged. While Marine’s patent was being re-examined by the PTO, HemCon came out with their own substantially similar polymer patent. The court found that the doctrine of equitable intervening rights protects an accused infringer's ability to make, sell, offer to sell, or use particular items of the same type that the accused infringer had made, purchased, or used before the reexamination even if the particular item was produced thereafter. The inquiry as to whether equitable intervening rights involves a four factor test: (1) whether non-infringing goods can be manufactured from the inventory used to manufacture the infringing product; (2) whether there are existing orders for the products; (3) whether the accused infringer made substantial preparation to manufacture the products before the reexamination or reissue; and (4) whether the accused infringer relied on the original patent scope in making these preparations. Because HemCon met the four factors, they had absolute intervening rights and the court therefore VACATED the decision of the district court.