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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for the ‘Broadening’ Category

CAFC Again Recalibrates Recapture Doctrine

Posted On: May. 9, 2012   By: Scott A. McKeown
recapture ruleIn re Youman Faults BPAI Recapture Analysis

Back in 2010, the BPAI rejected certain claims in Ex parte Youman as attempting to recapture previously surrendered subject matter via a patent reissue application. This case was noteworthy for several reasons, not the least of which was its 10+ year pendency before reaching a Board decision. A link to the earlier BPAI decision is found (here).

As a reminder, Youman sought to broaden certain means-plus-function elements of his issued patent, and modify language relating to the selection of displayed characters of an electronic program guide via a television remote control.

The originally issued claims recited a “selection means…cycling forward and backward” through displayed characters. This feature was added to distinguish over the art of record during the prosecution of the underlying patent application. In the patent reissue application (broadening), this language was broadened to using a wireless remote control for “changing from a first to a second character.” This change was rejected by the BPAI as an attempt to recapture previously surrendered subject matter.

In rejecting the claim as recapturing previously surrendered subject matter, the BPAI relied upon some of the same MPEP language (”overlooked aspects”) later criticized by the CAFC in In re Mostafazadeh. In its most recent consideration of the recapture doctrine, the CAFC focused on the claim language that must be analyzed in the third prong of the recapture test.  Read the rest of this entry »

CAFC Reverses USPTO on Patent Reissue Dispute

Posted On: Mar. 6, 2012   By: Scott A. McKeown
Topics: Broadening, Reissue
in re staatsContinuation Practice in Broadening Patent Reissue Applications Examined

Yesterday, the CAFC decided an important question pertaining to broadening patent patent reissue practice. (In re Staats, decision here). The issue before the Court was whether a broadening patent reissue application of Apple Computer Patent 5,940,600 was filed within the proscribed two year window.

During prosecution of the subject patent reissue application (a third, broadening continuation filing) the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the proscribed two year window. The Office reasoned that the error in the original reissue filing (parent) was allegedly unrelated to the error presented for correction in the third filing…presented for the first time 7 years later. In essence, the Office argued that it is not enough to merely present a “place holder” intent to broaden within the proscribed two years only to file a continuation years later that attempts to broaden in “unforeseeable” ways.

The CAFC heard arguments on the BPAI decision back in September of 2011 and strongly hinted that earlier CCPA precedent would control the case. Not surprisingly, the Court reversed the USPTO based on previous precedent Read the rest of this entry »

Defects in Patent Reissue Oaths Inefficiently Cured

Posted On: Oct. 20, 2011   By: Scott A. McKeown

patent reissue oathMost practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception.  I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement.

In most cases, the dispute relates to a lack of specificity in identifying the error to be corrected in the patent reissue application. While in many cases the correction necessary is relatively minor. However, in most cases the objection raised relative to the oath does not come from the examiner, but instead, a Quality Assurance Specialist (QAS) of the USPTO. Thus, it is not uncommon to contact the examiner to request a recommended change to an oath to finally settle the dispute only to have the examiner inform you “I think it’s fine, but the QAS has some issue that I don’t really understand.” This leaves the Patentee with no efficient means to address the problem in a timely manner. This type of roadblock is especially aggravating in broadening patent reissue applications.

Read the rest of this entry »

USPTO Patent Reissue Laches Theory Tested at CAFC

Posted On: Sep. 12, 2011   By: Scott A. McKeown
Topics: Broadening, Reissue
patent reissueIn re Staats Argued at CAFC

Last week, an important question relating to broadening patent reissue practice was argued before the CAFC. (In re Staats).

At issue in Staats is a third reissue patent application of Apple Computer Patent 5,940,600. The third reissue patent application was a continuation that claimed priority back to the original reissue application. (the original reissue application being properly filed within two years of issuance of the ‘600 Patent). During prosecution of the third continuation the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the two year window for broadening reissue. The examiner reasoned that the error in the original reissue filing was allegedly unrelated to the error presented for correction in the third filing.

An expanded panel of the BPAI affirmed the rejection (Ex Parte Staats) characterizing the issue in dispute as:

This is a case of first impression. Resolution of the case hinges on one fundamental question: Can a continuing reissue application broaden patented claims beyond the statutory two-year period in a manner unrelated to the broadening aspect that was identified within the two-year period? Put another way, is it enough under the law to merely present an intent to broaden that is limited to a particular aspect (e.g., a particular embodiment of the invention) within the two-year period, yet broaden in unforeseeable ways (e.g., pertaining to other embodiments) outside the two-year period?

In last year’s BPAI decision, the Board analyzed the statute based upon their understanding of the equitable principles underlying the two-year limitation provided by the statute. In doing so, the BPAI relied heavily on Read the rest of this entry »

CAFC Adjusts the USPTO’s Recapture Rule Analysis

Posted On: May. 4, 2011   By: Scott A. McKeown
Topics: Broadening, Reissue
recalibrateUSPTO Affirmed on Facts, But Corrected as to Proper Recapture Rule Analysis

Back in February I recounted the oral agument of In re Mostafazadeh. This case explored the degree to which a claim limitation added to distinguish over the prior art during original prosecution may be broadened during patent reissue. In patent reissue, Mostafazadeh sought an intermediate scope to the “circular attachment pad” limitation added to his claims during original prosecution. In the reissue claims, the terminology “circular” was removed. To justify this broadening, the Patentee argued that the claim was materially narrowed in “other respects.”

On appeal, the CAFC considered whether or not the “materially narrowed in other respects” aspect of the rule established in In re Clement, (MPEP 1412.02), must be related to the “critical limitation” (i.e., circular attachment pad) or whether the narrowing must relate to an “overlooked aspect,” such as an unclaimed species or embodiment as advanced by the USPTO.

In their affirmance of the USPTO. the CAFC characterized the BPAI analysis as “perplexing” and found their interpretation of “materially narrowing” as “contrary to our precedent.”

Read the rest of this entry »

Recapture Doctrine Before The CAFC

Posted On: Feb. 17, 2011   By: Scott A. McKeown

mistakesLast Friday, In re Mostafazadeh was argued before the CAFC (argument here). The case explored the boundaries of the patent reissue recapture rule. At dispute in the appeal was whether or not the third step of the rule, as outlined in MPEP 1412.02, is tied to the “critical limitation” (i.e., originally surrendered subject matter) or not. {10:30 min. mark}

The three step analysis of In re Clement is as follows:

(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. (emphasis added)

In considering the case, the CAFC found both the MPEP discussion of step (3) and BPAI decision on this point to be confusing. {14.50 min mark} Read the rest of this entry »

Only 50% of Broadening Patent Reissue Applications Exit the USPTO Within 5 Years

Posted On: Oct. 21, 2010   By: Scott A. McKeown
Recapture and Formality Issues Bog Down Important Cases

reissue

As shown in the charts above (click to enlarge images), we analyzed the 745 broadening patent reissues filed since 2005. A surprising 200 applications of the 745 were ultimately abandoned. While many of these applications may have been seeking to secure a claim scope that was precluded by prior art, it may also be that a significant number fell victim to the frustrations of reissue practice. The lowermost chart above factors out abandonments as a true conclusion, demonstrating that only 20% of broadened reissues are concluded within 3 years of filing. When compared to the special dispatch accorded to patent reexamination, these important applications clearly fare a great deal worse.

The data for narrowing reissues shows slightly better  timeliness, perhaps due to the absence of recapture doctrine concerns. Data for narrowing reissues will be posted in the coming days.

I understand the PTO is considering creating a special unit for patent reissues, much like was done for patent reexamination. My guess is more reissue would be filed should these applications be treated with the importance they deserve.

If anything, the pendency problems plaguing patent reissue demonstrate the value of maintaining pending continuation applications.

Patent Reissue Oaths Can Impact Claim Interpretation

Posted On: Oct. 8, 2010   By: Scott A. McKeown
loose-lips-sink-shipsComparing Claims in Reissue Oath Haunts Patent Holder

On Wednesday, the Federal Circuit reversed a decision of the ITC that excluded the imports of Lucky Litter, LLC. The case (here) related to cat litter boxes having an automated cleaning feature. In reversing the ITC, the CAFC found that the “predetermined event” recited in claim 33 of the patent at issue (RE 36,847), was not limited to a cat exiting the litter box.

Prior to seeking patent reissue, claim 1 of the patent recited a “cat exit sensor for sensing a cat exit” and a “delay means.” The Patentee filed a broadening patent reissue to remove these features. The reissue application oath explained that “[i]n particular, claim 1 of U.S. Patent 5,477,812 contains recitations regarding a cat exit sensor and delay means which are too limiting of the invention and unnecessary in view of the prior art. Claims 23 through 48 of the reissue application have limitations similar to those of claim 1, but define the invention with greater breadth.”

The CAFC performed a traditional Phillips analysis of the ITC claim construction and held that “predetermined event,” by plain meaning, could not be limited to “cat exit.”  Still, the statement in the oath was cited by the court as a guidepost of the broader meaning of the claims added in reissue. Hindsight always being 20/20, what could the Patentee have done to potentially avoid this result? Read the rest of this entry »

Broadening Patent Reissue Requires Unequivocal Declaration Statement

Posted On: Sep. 27, 2010   By: Scott A. McKeown
Topics: Broadening, Reissue
indecision_diceBPAI Once Again Shoots Down Broadening Reissue

Patent reissue has been a recurring topic here as of late. More recently, the breadth of the recapture doctrine has been discussed. Earlier this year, I discussed ex parte Staats relative to a pending CAFC appeal, and the pending CAFC appeal of ex parte Tanaka.

While the main issue in ex parte Tanaka is whether or not the addition of narrower dependent claims via patent reissue can be said to correct an “error” pursuant to the reissue statute, Tanaka, to a lesser extent, also illustrates the danger of a generically worded reissue declaration. As the BPAI decision of last Friday once again emphasizes, (ex parte Matthew Howard Fronk et al.,) a proper broadening declaration must not only identify at least one error in the issued patent (made without deceptive intent), but must also unequivocally indicate an intention to broaden. More importantly, this unequivocal intent to broaden must be communicated to the USPTO by declaration only, within two years of original patent issuance. Read the rest of this entry »

Recapture of Subject Matter Through Patent Reissue

Posted On: Sep. 15, 2010   By: Scott A. McKeown
stop-goCan Inconsistent Statements Made Outside of the USPTO Surrender Claim Scope for Recapture Purposes?

The recapture doctrine of patent reissue is often a subject of debate before the BPAI. As we discussed last week, the question of the propriety of an intermediate claims scope vis-a-vis recapture was recently decided by the BPAI, and briefing before the CAFC is near complete on the same issue (In re Mostafazadeh). A day after the BPAI decision of last week, the Federal District Court of Ohio considered recapture in the context of statements made outside of the USPTO in Bendix Commercial Vehicle Systems LLC, et al v. Haldex Brake Products Corp., 1-09-cv-00176 (N.D.O.H)

As a reminder, the recapture doctrine exists because a deliberate surrender of subject matter is not an “error” that is correctable by patent reissue. The recapture doctrine prevents Patent Holders from broadening claim scope in patent reissue that was deliberately surrendered during original prosecution. In Bendix, the defendant (Haldex) argued that the asserted broadened reissue patent, RE 38,874, (relating to automotive braking equipment) was invalid under 35 USC § 251 due to statements made during an earlier litigation and in a foreign patent office. Read the rest of this entry »