Thanks Mark, I'll hit on your pertinent highlights, then perhaps we can finally either agree or agree to disagree.
"...may be precluded..." - Please note the word "may". It is not in concrete, but totally dependent on individual circumstamce.
"An amendment that clarifies the text of the claim or makes it more definite without affecting its scope is generally viewed as satisfying the "substantially identical" standard." - meaning past infringement damages apply. BTW, this is what Henneman advised was done.
"An amendment that is aimed at overcoming prior art, however, generally means that the claims are not substantially identical." - Generally? I have no problem with that, as it makes perfect sense. Depending on specific circumstance, I can see where it would be challenging to amend only for clarification without altering scope. But it would depend on the nature of the needed clarification. I can also envision situations where terminology had evolved since the observed prior art citation to the time of the patent application was originally filed or there having been a "language" barrier in contrast with the cited prior art, so it would be more an exercise in symantics (just as examples).
"(noting that it is "difficult to conceive" of a situation when claims amended to avoid prior art would be substantially identical)." - More or less addressed above.
Look Mark, we've come full circle, perhaps a couple of times, on this subject. While your "warning" is appreciated and it is good that investors be aware, it all comes down to whether you choose to believe Henneman or not believe Henneman. It seems he would know. And it seems that, especially while engaged in infringement litigation, extreme effort would be expended to make minimal amendments (i.e., least possible) which do not impact scope in order to preserve the capability to demonstrate damages to support a past infringement allegation.
So here we have a point where we can agree or agree to disagree (and again, there is absolutely nothing wrong with that). It's a huge issue (for you), and a non-issue or minimal issue (for me). We agree to disagree. Done!
Here it may be appropriate to remind folks of the TPL/PTSC position in licensing (assuming it has not changed): When negotiating a license, the focus is on addressing present and future infringement, NOT past infringement. They practically stated that infringers are given a pass for past infringement. The focus is forward-looking. (No, I do not have a handy link to this, though I believe it was stated by one of the Lecky's in the 2006, 2007 or 2008 AMS; anyone have their notes handy? Was there a transcript?).
However, past infringement is the primary focus when bringing suit. It is the basis for bringing suit, as the party bringing suit wishing an audience with the court must be able to reasonably demonstrate that they have been damaged.
Based on this, how important is your never-ending concern? If the "substantially amended" issue only pertains to claimed past infringement, and past infringement is not a consideration in negotiating a license, how concerned should we be? Only in those cases where we bring suit (or countersuit)?
Also note that all of this discussion revolves around claims that were amended. Don't forget the claims that remained intact within each patent. And I guess I had better qualify that with "Independent" Claims intact.
Thanks,
SGE
