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.