Broadening Reissue Application Filed Within Two Years Allows Subsequent Broadening Reissue Applications After the Two Year Bar Regardless of Whether the Claim Language is Related

By Kevin M. Repper

In the case of In re Erik P. Staats and Robin D. Lash, No. 2010-1443 (Fed. Cir. 2012), the Federal Circuit made a decision based on their interpretation of 35 U.S.C. §251 and the precedent court case In re Doll, 419 F.2d 925 (C.C.P.A).  35 U.S.C. §251 discloses that “whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent,…reissue the patent… for the unexpired part of the term of the original patent.” The reissue statute imposes a two-year limit when the patentee intends on broadening the scope of the claims of the original patent.

Doll interpreted section 251 and explicitly rejected the PTO’s argument that “claims presented in a reissue application filed within two years of the original patent grant are barred by 35 U.S.C. §251 when such claims are not submitted until more than two years after the grant and are broader in scope than both the original patent claims and the broadening reissue claims originally submitted.” Therefore, it is allowable for one to file broadening claims outside of the two year window as long as the patent holder filed initial broadening claims within the two year window. In the present case, the court must decide whether the Board correctly held that a broadening reissue application filed outside of the two year period is not timely if it is not related to an earlier application filed within the two year period.

Staats filed an application for a patent with the USPTO and it was issued on August 17, 1999 as U.S. Patent Number 5,940,600 (‘600 patent). The ‘600 patent described improvements to the management of isochronous data transfers such as the transfer of real-time video data from one component in a computer system to another component in the computer system. The ‘600 patent included a first embodiment, which used a linked list of buffers and a second embodiment that did not use the linked list of buffers. Both the first and second embodiments were described in the specification, however only the first embodiment was claimed in the original patent.

Staats timely filed a broadening re-issue application relating to the first embodiment in the specification.  Staats filed a second broadening reissue application on May 12, 2004, as a continuation of the first broadening reissue application. Again, the second broadening reissue application only addressed errors related to the first embodiment.  Almost seven years after the original ‘600 patent issued, Staats filed a third broadening reissue application as a continuation of the second broadening reissue application.  In the third broadening reissue, Staats added claims that were drawn towards the second embodiment that did not include the linked list of buffers.

Although acknowledging the precedent in Doll, the examiner rejected the third reissue application under 35 U.S.C. §251 after finding that the new broadened claims were not related in any way to what was covered in the original broadening reissue.  On appeal, although recognizing that it was bound by Doll, the Board found that the newly added broadening claims were directed to an invention that was independent and distinct from that claimed in the original patent application and the first broadening reissue application. According to the Board, the broadening sought in the third application was unforeseeable from the original reissue application and the public notice function of 35 U.S.C. §251 had not been met.

The PTO argued that the language of the statute, requiring that the broadening reissue be applied for within two years, does not suggest that the first broadening reissue can serve as a placeholder for later applications. The PTO contended that a patentee must give the public adequate notice within two years of what the patentee intends to broaden and Staats clearly did not do in regards to the claims listed in the third broadening re-issue application.

The PTO continued to argue that while Doll is binding it is nevertheless distinguishable. According to the PTO, the broadened claims challenged in Doll were related to the subject matter covered by the claims identified and broadened within the two-year window and thus was adequately notified of Doll’s later broadening.  The court rejects this argument because the court in Doll never made the distinction between related and unrelated claims.  Doll simply ruled that the two year window only applies to the first broadening reissue application.  The court further points out that the PTO’s approach is unmanageable because it would be difficult to distinguish one patent embodiment from another or to determine when a later claim is related to an earlier one.

According to the court, as long as you file the first broadening reissue application within section 251’s two year limit, you may continue to file reissue applications outside of the two year limit, regardless of whether the claim language is related. Staats filed his first broadening reissue application within the two year window and therefore the Board’s rejection of the third reissue application was remanded for further proceedings consisting with the opinion.

Claim Language Defined in the Specification Is Reason for Overturning District Courts Ruling of Invalidity for Violating the Recapture Rule

By Kevin M. Repper

In AIA Engineering Ltd. v. Magotteaux Intern. S/A, 657 F.3d 1264 (Fed.Cir.2011), the Federal Circuit overturned a district court judgment of invalidity under the recapture rule of 35 U.S.C. § 251.  The court held that the patentee was acting as his own lexicographer, instead of attempting to broaden his own claims, when he repeatedly used the term “solid solution” during patent prosecution.

Magotteaux International was granted aU.S.patent directed to wear products used for crushing and grinding abrasive materials.  Consistently throughout the prosecution of the patent, the patentee used the claim language “ceramic pads consisting of a homogenous solid solution of 20-80 percent aluminum oxide and 80-20 percent zirconium oxide.”  Magotteaux later applied for reissue to change “consisting of” to “comprising” and “solid solution” to a “ceramic composition.”  The reissue patent was granted.

A year later, AIA Engineering sued Magotteaux in the U.S. District Court for Middle District of Tennessee.  AIA sought declaratory judgment of noninfringement, invalidity, and unenforceability of the reissue patent while Magotteaux countered for patent infringement.  The Judge for the District court ruled in favor of AIA for the motion for summary judgment of invalidity. The Judge found that the substitution of “ceramic composite” for “solid solution” broadened the scope of the claim and that Magotteaux relied on the “solid solution” to overcome the prior art.

The Federal Circuit Judge reversed this ruling, citing the three-step test for applying the recapture rule: “(1) first we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” Medtronic Inc. v. Guidant Corp., 465 F.3d 1360, 1373, 80 USPQ2d 1558 (Fed. Cir. 2006).

The Federal Circuit concluded that the language “solid solution” and “ceramic composite” were synonymous in light of the specification, prosecution history, and extrinsic evidence.  Therefore, the court did not need to reach the third step in determining the recapture rule.

The two constituent materials of the patent, aluminum oxide and zirconium oxide, retain a distinct composition and/or crystal structure. Both parties agreed that the ordinary meaning of “solid solution” would require a “single, uniform crystalline structure.” Therefore, it would have been impossible to make an alumina-zirconia “solid solution” as disclosed in the original claims.  The court concluded, however, that because the applicant repeatedly disclosed “solid solution” in the specification, the applicant acted as his own lexicographer, providing a special definition for the term that was a synonym for “homogeneous ceramic composite.”

The court used both extrinsic and intrinsic evidence to determine the outcome of the case. First, it was determined that solid aluminum oxide and solid zirconium oxide do not share a common crystal structure at any temperature. Therefore, the impossibility of the solid solution of the original claim would have been apparent to one of ordinary skill. The court concluded that when the specification discloses a special meaning for a term that ultimately differs from the common meaning, the special meaning governs, “particularly when it also serves to avoid an inoperable claim construction.

Key Points

The Federal Circuit overturned the District Court by determining the meaning of “solid solution” as it pertains to the specific patent.  The court concluded by the extrinsic evidence that it would be impossible for a “solid solution” to be incorporated into the claims. The court examined the intrinsic evidence to determine how the “solid solution” was defined in the specification. The court concluded that although a “solid solution” and a “ceramic composite” may not mean the same thing to one of ordinary skill, the two terms were synonymous in light of the specification.

The District Court failed to observe the intrinsic evidence for the definition of “solid solution” within the specification and therefore failed to determine that “solid solution,” as defined by the specification, was synonymous with “ceramic composite.”

AIA Engineering Ltd. v. Magotteaux Intern highlights that a common definition of language in the claim is overshadowed by a special meaning of the language in the specification.  As demonstrated, this allows an invalid claim (due to common definitions of the language in the claim) to be valid, as long as a special meaning of the claim language in the specification is enabling.

Federal Circuit Finds Reissue Can Be Supported by Adding Only Depending Claims

In In re Tanaka, 98 USPQ2d 1331 (Fed. Cir. 2011), Yasuhito Tanaka is the inventor of U.S. Patent No. 6,093,991 (the ‘991 patent), which relates to a one-way clutch which improves the efficiency of an alternator. Tanaka filed reissue application Serial No. 10/201,948 (“the ′948 application”) in which he attempted to broaden the claims.  After having the broader claims rejected, Tanaka revised the claims to correspond to the original claim scope, and added a new dependent claim.  Continue reading

Federal Circuit finds Recapture Rule Extends to Subject Matter Surrendered in Related Cases

In MBO Lab., Inc. v. Becton, Dickinson & Co., 94 USPQ2d 1598 (Fed. Cir. April 12, 2010), MBO owns U.S. Reissue Patent No. 36,885 (the “RE ’885 patent”).  The Re’885 patent is directed to a syringe that protects against needle-stick injuries by sheathing a contaminated needle in a flange-covered guard.  The RE ‘885 patent is a reissue of U.S. Patent No. 5,755,699 (the “’699 patent”), and claims priority to, among other patents, U.S. Patent No. 5,176,655 (the “’655 patent”), U.S. Patent No. 5,395,347 (the “’347 patent”); and Application No. 08/398,772 (the “’772 application”).

During prosecution of the ‘655 patent, in order to overcome a rejection of claim 18, the applicant amended the claim to include a limitation that described the needle retracting into the guide means and relied upon the new feature to distinguish over the prior art which had the needle being fixed and the guide moving.  Claim 18 later issued with the new limitation.

The ‘347 patent is a continuation-in-part of the ‘655 patent.  During prosecution of the ‘347 patent, the applicant also distinguished the claims from the prior art by noting that the prior art has a fixed needle, whereas the claimed invention allowed the needle to be retracted into the barrel which has the effect of making the claimed invention safer to use.   The claims were allowed to issue based in part on this representation.

The’772 application is continuation of the ’347 patent.  During prosecution, the applicants again relied upon the needle being slidable relative to the barrel as a distinguishing factor over the prior art.  While the Examiner eventually allowed the claims, the applicants abandoned the ‘772 application in favor of another application which resulted in the ‘699 patent.

In applying for a reissue application for the ‘699 patent, the applicant indicated as an error that the claims were too narrow in requiring the needle to move, whereas the invention should cover any relative movement between the needle and the barrel.  New claims 21-36 included these broadened claims.  The reissue application issued with the broadened claims as RE ‘885 patent.

MBO sued a competitor, Becton, Dickinson & Co., claiming that Becton’s SafetyGlideTM hypodermic safety syringes infringed RE ’885 claims.  At trial, Becton moved for summary judgment for non-infringement claiming that the broadened claims were invalid for violating the rule against recapture, and that the existing claims did not cover the SafetyGlideTM.  The district court granted Becton’s motion for summary judgment as to the issue of recapture, but invalidated all of the claims instead of only the broadened claims.

On appeal, MBO argued that the broadened claims were not invalid as against the rule of recapture, and also on the grounds that the existing claims could not be invalidated under the rule of recapture as they were in the original ‘699 patent.

On the issue of the rule of recapture, the Federal Circuit first noted that the rule prohibiting recapture is based upon the reissue statute, 35 U.S.C. §251.  35 U.S.C. §251 only allows reissue of a patent where the applicant can show an error that arose “through error without any deceptive intent” he claimed “less than he had a right to claim in the [original] patent”.  Thus, amendments which are made deliberately are not errors, and therefore subject matter which was deliberately included in an amendment to narrow the amendment cannot be corrected through the reissue process.  Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1372–73 (Fed. Cir. 2006) (“[T]he deliberate surrender of a claim to certain subject matter during the original prosecution of the application for a patent ‘made in an effort to overcome a prior art rejection’ is not such ‘error’ as will allow the patentee to recapture that subject matter in a reissue.”).  The court also noted that the public is entitled to rely upon any such surrender, and therefore there is an equitable element to the rule against recapture.  In sum, the Federal Circuit noted that “[w]ithout a rule against recapture, an unscrupulous attorney could feign error and redraft claims in a reissue patent to cover a competing product, thereafter filing an infringement suit.”

The Federal Circuit than outlined the test for determining whether there has been impermissible recapture:

  1. determine in which aspects the reissued claims are broader than the original patent claims;
  2. if the reissued claims are broader, whether the broader aspects relate to surrendered subject matter and “whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee’s amendment or argument was to overcome prior art and secure the patent.” Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006).
  3. whether the reissued claims were materially narrowed in other aspects such that the reissued claims avoid the recapture rule.

MBO had argued that any broadened aspects in its reissue claims were not surrendered during prosecution of the ‘699 patent.  In rejecting this argument, the Federal Circuit noted that the applicants had twice relied upon an argument that the needle was movable to achieve patentability.  As evidence of these arguments, the Federal Circuit pointed to arguments presented in the prosecution of the ‘347 patent as well as in the ‘772 application, whose allowed claims were copied into the ‘699 patent. While MBO had argued that some of the arguments relied upon to find recapture did not relate to the feature of the recited needle movement but to another feature, the Federal Circuit noted that merely because the arguments were not specifically needed to overcome one particular combination of prior art did not mean that the argument did not distinguish over other prior art combinations.  As stated by the Federal Circuit, “a patentee’s arguments that emphasize one feature cannot cure arguments that clearly surrender another.”

The Federal Circuit further went on to justify its reliance on statements and amendments made in the parent application in finding impermissible recapture in the child cases, such as in the ‘699 patent.  While noting that commentators such as Donald S. Chisum, Chisum on Patents (2004) propose a theory that recapture only applies to the patent against which reissue is filed, the Federal Circuit rejected this theory as “erroneous.” As an initial point, the Federal Circuit held that the term original patent in 35 U.S.C. §251 has always been defined to include not only the patent on which the reissue application is made, but also to continuations.  As evidence, the Federal Circuit cited to North American Container Inc. v. Plastipak Packaging Inc., 415 F3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005).  The Federal Circuit next traced the origins of the reissue statute starting in 1832, and noted that under the existing and predecessor statutes, the court has never applied the recapture in a doctrine to exclude the possibility that the recapture could occur in a parent application.  The Federal Circuit also noted such an interpretation is also consistent with the recapture rule’s “public-reliance rational”, and any more “myopic review” would undercut this rule by allowing in a continuation patent what could not be performed in the parent patent.  As such, the Federal Circuit formally held that, in reviewing whether an impermissible recapture has occurred, the entire patent family is reviewed. Thus, the Federal Circuit upheld the district court’s finding of recapture based upon statements and amendments made in the parent applications.

Lastly, the Federal Circuit found that, while recapture invalidated the broadened claims, recapture does not apply to the original patent claims.  Therefore, the Federal Circuit reversed the district court’s decision invalidating the original patent claims.

Significance for Patent Owners and Applicants

The purpose of the reissue statute is to allow applicants to correct inadvertent errors.  However, as noted in MBO Lab, the definition of a correctable error is quite narrow and restrictive.  It is for this reason that applicants cannot rely upon the reissue process to correct errors in all situations, and are better served by ensuring that a continuation application is pending at all times for important applications.  While unfortunate due to the impact on the USPTO’s workload, decisions such as that in MBO Lab make it unadvisable to rely solely on the reissue process as a mechanism to ensure applicants have the claim scope they need to maximize the value of their invention.

Federal Circuit Defines Error Correctable By Reissue to Encompass Any Error Affecting Enforceability

Reissue Not Restricted To Errors in Claims and Extends to Procedural Error Affecting Enforceability of Claims

In Medrad Inc. v. Tyco Healthcare Group LP, 80 USPQ2d 1526 (Fed. Cir. 2006), the Federal Circuit overturned a District Court finding of invalidity for a reissue patent due to a violation of 35 U.S.C. §251.  Specifically, U.S. Reissue Patent No. 37,602 (hereinafter “the ‘602 reissue patent”) relates to patient infusion systems for use with magnetic resonance imaging systems.  There are two predecessor patents to the ‘602 reissue patent, both of which were assigned to Medrad.  The first predecessor patent was U.S. Patent No. 5,494,036 (hereinafter the “‘036 patent”), issued on February 27, 1996.  On February 23, 1998, Medrad filed an application for reissue of the ‘036 patent and submitted reissue declarations stating that the inventors had claimed less than they had a right to claim (an “underclaiming” error).  During prosecution of the reissue, Medrad narrowed the scope of various claims (correcting an “overclaiming” error) and corrected inventorship, in addition to correcting the underclaiming error.  At the conclusion of prosecution, Medrad did not submit a supplemental reissue declaration for any errors other than those on which reissue had initially been granted as required by 37 C.F.R. §1.175.  That reissue patent issued as U.S. Reissue Patent No. 36,648 (hereinafter the “‘648 reissue patent.”) On realizing this error, Medrad filed a second reissue patent application to submit the supplemental reissue declaration, and this second reissue patent application issued as the ‘602 reissue patent. 

On October 24, 2001, Medrad filed a complaint in district court against Tyco alleging infringement of the ‘602 reissue patent.  Medrad and Tyco filed cross motions for summary judgment regarding the validity of the ‘602 reissue patent, and more specifically, regarding whether the failure of Medrad to file a supplemental declaration in the ’648 reissue patent qualified as an “error” under 35 U.S.C. §251. 

35 U.S.C. §251 requires the following in regards to the error requirement: 

Whenever any patent is, through error without any deceptive intention, deemed wholly or partially inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.

The district court construed 35 U.S.C. §251 as requiring “that some error in the specification, drawings, or claim of the patent be corrected as a result of the reissue process.”  Since Medrad’s reissue application for the ‘602 reissue patent only corrected a failure to submit a supplemental declaration, the district court granted Tyco’s motion for summary judgment, holding the ‘602 reissue patent invalid since 35 U.S.C. §251 does not provide for reissues based on these other errors.  

On appeal, the Federal Circuit held that 35 U.S.C. §251 can be read to encompass any error that causes a patentee to claim more or less than he had a right to claim.  In overturning the district court’s holding in regards to what constitutes an error correctable by 35 U.S.C. §251, the Federal Circuit restated its holding in In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986)that “in enacting [35 U.S.C. §251], Congress provided a statutory basis for correction of ‘error.’  The statute is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally.”  The plain meaning of 35 U.S.C. §251 indicates that the error involves rendering a patent wholly or partly invalid.  Here, by including changes to the language of the claims that narrowed the scope of coverage and by correcting inventorship, the resulting ‘648 reissue patent claimed more than it had a right to claim in the patent without submitting a supplemental declaration to support the narrowing subject matter and the change in inventorship.  The correction of such an error meets the express terms of 35 U.S.C. §251, and thus serves as a basis for reissue.  As such, the Federal Circuit reversed the district court’s finding of invalidity as there was an error on which the ’648 reissue patent could be based.