Patents Post Grant Blog

Unwary Practitioners Often Inadvertently Surrender Claim Scope in Patent Reexamination

With so much patent reexamination going on at the USPTO these days, my inbox is always full of the latest press releases and news stories. Recently, Card Activation Technologies’ update on their concluded ex parte reexamination (U.S. Patent 6,032,859) has been popping up on my radar. Typically, I don’t have much to say about concluded reexaminations; they happen every day. Of course, sometimes the press releases can be entertaining, or perhaps the case may have a larger impact on a concurrent litigation, yet aside from that, there is not much to discuss for the average case.

Card Activation Technologies is one of those common cases in many respects. Yet, this case is worth discussing, as it demonstrates the most common mistake made by Patentees during patent reexamination.

In the reexamination of the CAT patent only claims 20-22, 25-33 and 36-38 were subject to reexamination (The ‘859 Patent issued with claims 1-38). Claims 20 and 29 are independent claims. Claims 21,22 and 25-28 all depended directly from independent claim 20. Likewise, claims 30-33 and 36-38 all depend directly from claim 29.

During reexamination, dependent claims 21 and 32 were confirmed. (both reciting the same limitation, but dependent from claims 20 and 29, respectively)

To conclude the reexamination, the Patentee amended independent claims 20 and 29 to include the limitations of dependent claims 21 and 32. This manner of amendment is almost always a bad practice in patent reexamination, but why?

To answer this question one must appreciate the manner in which reexamination certificates are printed.  When a claim is canceled in patent reexamination, the text will still appear (enclosed in brackets). In this way, any originally issued dependency can be maintained. Because of the continued existence of the text of a canceled claim, in some cases, it is preferred to leave the dependent claim as-is and cancel the independent claim. See MPEP § 2260.01

But, what difference does it make if the independent claim is amended?

The amending of independent claims 20 and 29 to add the limitations of the canceled dependent claims necessarily changes the scope of all their dependent claims. Of course, this was the goal in this reexamination, as the other dependent claims, subject to reexamination were rejected. However, claims 23, 24, 34 and 35, which also depended from independent claims 20 and 29 were not subject to reexamination. Thus, these claims retain their presumption of validity, albeit now narrowed in claim scope. Stated another way, by amending the independent claims, the scope of these claims is now unnecessarily narrowed.

The best way to accomplish the Patentee’s goal of terminating the reexamination would have been to cancel independent claims 20 and 29 and change the dependency of the allowed dependent claims to be dependent on claims 21 and 32 (now canceled). This would have maintained the scope of claims 23, 24, 34 and 35 as originally issued. Likewise, in cases where there are intervening dependent claims, it is usually best to present new claims rather than amend independent claims.

Giving CAT the benefit of the doubt, it may be that they just didn’t care about the dependent claims not subject to reexamination, but that is rarely the case. In any event, there is now a pending reexamination request (90/011,146) attacking all claims of the CAT patent (including the amended claims) so, perhaps this is all academic.