Whether the addition of the term "type quality" to modify the term "alphanumeric characters" imposes a limitation that substantively changes the claims at issue.
Yes. While a claim amendment made during reexamination following a prior art rejection is not per se a substantive change, the addition of "type quality" in this case does affect the scope of the claims and hence is a substantive change. Claim construction is a matter of law and therefore is reviewed de novo by the appellate court.
The Laitram Corporation is the assignee of U.S. Patent No. 3,952,311 (the '311 patent), that is directed to a high speed, electro-optical printing system. Laitram filed suit against NEC Corporation for infringement of the '311 patent. A third party initiated a reexamination proceeding, and the suit was stayed pending the outcome of the reexamination. After the PTO rejected independent claims 1 and 2 in the proceeding, Laitram gained allowance of these claims after incorporating, among other things, "type quality" as a limitation to the term "alphanumeric characters."
NEC argued that this change to the original claims is a substantive change, and therefore, Laitram's reexamined claims are not identical to the original claims. If the reexamined original claims are found to be identical, Laitram can recover damages for the time period prior to the date of issuance of the reexamination certificate. On this appeal, NEC contended that its motion for judgment as a matter of law (JMOL) should have been granted because the scope of the claims had changed.
In trying to convince the court of its position, Laitram urged that the addition of "type quality" to claims 1 and 2 only makes explicit what was already implicit in the original claim. Furthermore, Laitram stated that the term "type character" appears numerous times in the written desciption and is akin to "type quality." The Federal Circuit rejected these arguments and held "that a plain reading of the claims would indicate that the original and reexamined claims are of a different scope." Laitram, para 15. Laitram, therefore, was not entitled to infringement damages.