## Facts

- Seattle Box owned a patent and later a reissue patent covering a system for bundling tiers of oil pipe on sleepers using spacer blocks.
- The original claim required spacer blocks with a height “greater than the diameter of the pipe.”
- The reissue amended the key limitation to require spacer blocks with a height “substantially equal to or greater than the thickness of the tier of pipe length,” broadening claim scope.
- Seattle Box sued Industrial Crating & Packing, Inc. and its principal for patent infringement, initially under the original patent and later under the reissue.
- In an earlier appeal, liability issues (including validity and infringement) were resolved and the case was remanded for consideration of intervening rights under 35 U.S.C. § 252.
- On remand, the district court declined to grant defendants intervening rights for certain accused products and activities.
- Defendants appealed the denial of intervening rights and related accounting consequences.

## Issues

1. Whether defendants were entitled to absolute intervening rights under 35 U.S.C. § 252 for specific pipe-bundling configurations made, purchased, used, or committed to before issuance of the broadened reissue.
2. Whether the district court erred by refusing to grant equitable intervening rights under § 252 permitting continued manufacture, use, or sale for post-reissue activities based on pre-reissue reliance and investment.
3. How liability and accounting should be limited across pre-reissue and post-reissue periods given the broadened reissue claim language.

## Decision

- The Federal Circuit affirmed in part and reversed in part the post-remand judgment.
- The court held the district court was too restrictive in denying absolute intervening rights and that defendants were entitled to § 252 protection for certain configurations that did not infringe the original claim but fell within the broadened reissue and were tied to pre-reissue activity.
- The court held the district court also erred by categorically refusing equitable intervening rights and directed consideration of equitable relief for ongoing operations where fairness warranted.
- The case was remanded for further proceedings to distinguish protected versus unprotected products and to revise the accounting accordingly.

## Legal Principles

- A broadened reissue claim can trigger intervening rights under 35 U.S.C. § 252 for third parties who relied on the original claim scope.
- Absolute intervening rights protect specific things made, purchased, used, or sufficiently committed to before the reissue, even if they would infringe the reissued claims.
- Equitable intervening rights may extend beyond pre-reissue items and may permit continued post-reissue manufacture, use, or sale under court-set conditions based on fairness considerations (including pre-reissue investment and reliance).
- Intervening rights limit infringement liability without reopening settled findings on validity and infringement for items and periods not covered by § 252 protections.

## Conclusion

The Federal Circuit held that broadening a patent by reissue required meaningful application of § 252: certain pre-reissue configurations were entitled to absolute intervening rights, and the district court had to consider equitable intervening rights for continued operations, requiring remand to recalibrate liability and the accounting by product category and time period.


Seattle Box Co. v. Indus. Crating & Packing, Inc., 756 F.2d 1574 (Fed. Cir. 1985)