CAFC Decides Patent Reissue was Improperly Broadened Based on Previous Markman Definition

Yesterday, in ArcelorMittal France v. AK Steel Corp. (CAFC 2015), the CAFC considered the impact of a reissue of U.S. Patent 6,296,805 on a previous appeal decision.  The ‘805 patent, directed to rolled steel, recited the claim limitation “very high mechanical resistance.”  In an earlier infringement suit between the parties, the district court found this terminology to define “a tensile strength greater than 1500 MPa.” This construction was upheld by the CAFC on appeal, and the case as remanded as to other issues.

During the appeal of the claim construction, Patentee reissued the ‘805 patent as reissue patent RE44,153.  The reissue patent included a new claim, claim 23, that recited “mechanical resistance in excess of 1000MPa.”  The originally construed claims remained in the reissue patent. Once back in the district court, Patentee amended its complaint to include claim 23 of the new reissue patent.  Thereafter, on summary judgement, the district court ruled the reissue patent invalid for improper broadening. In the second appeal, decided yesterday, the CAFC agreed that claim 23 of the ‘153 reissue was improperly broadened.  

Ostensibly, the USPTO did not consider 1000MPa limitation as broadening relative to the specification of the ‘805 patent.  On the other hand, the CAFC found  “greater than 1000MPa” to be broadening based upon the district court’s previous construction that the scope of “very high mechanical resistance” was greater than 1500MPa. This difference in construction highlights the potential incongruity between USPTO and district court claim construction practices.

At the heart of the CAFC’s affirmance was the continued distaste for collateral attacks on previous judgments.  The Court explained that the “law of the case doctrine” prevents deviation from the decision of a prior appeal (i.e., claim construction) absent extraordinary circumstances tied to “new evidence”  — the CAFC did not find the patent reissue to constitute such.

The successful prosecution of the RE153 patent is not “new evidence” sufficient to trigger the extraordinary circumstances exception to the mandate rule and the law of-the-case doctrine. Permitting a reissue patent to disturb a previous claim construction of the original claims would turn the validity analysis under 35 U.S.C. § 251 on its head. The basic inquiry under § 251 requires comparing the scope of the claims of the reissue patent to the scope of the original claims to determine if the reissue patent “contains within its scope any conceivable apparatus or process which would not have infringed the original patent.” Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 1039 (Fed. Cir. 1987). If the reissue claim itself could be used to redefine the scope of the original claim, this comparison would be meaningless.

Note, the reissue that was pursued was not a “broadening reissue,” which is only possible if pursued within two years of original patent issuance. Instead, the ‘153 reissue was a narrowing reissue. Presumably the former would constitute new evidence under the law-of-the-case doctrine.

It is well established that a claim is considered to be broadening if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement. In this case, given the court’s earlier construction, if the defendant did not make steel of a strength greater than 1500MPA, claims that expanded the range down to 1000MPA would clearly permit a new infringement charge (assuming the defendant made steel with a strength of 1000MPa or greater).  On the other hand, if the baseline construction of the USPTO were applied, the broadening determination outcome in this case would have been different. 

Markman constructions may be considered by the USPTO, but are not binding on the agency. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007).  However in this case, one might argue that the since the claims had been assessed by the courts as to infringement scope, regardless of any PTO analysis to the contrary, the court construction was of heightened importance from a public policy perspective.

All that said, since the original claims did not recite a numerical range at all, the examiner may have just missed the issue altogether. This is because, absent the history of the litigation (which was filed), the claims would seem to be narrowing to the naked eye. it is worth noting that there were no substantive rejections of the claims during reissue examination. More recently, reissue applications have been moved from the general examining corps to the to the Central Reexamination Unit (CRU).

In 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.  By way of reminder, the recapture doctrine has been distilled down to a three part test, namely:

(1) Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

(2) Next, determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) Finally, 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.

As steps 1 and 2 were not disputed in Youman the CAFC explained the BPAIs mistake in applying step 3 as:

[T]he Board failed to distinguish between instances where an added limitation has been modified versus instances where an added limitation is eliminated in its entirety. As Mostafazadeh teaches, such a distinction is critical to applying correctly step three of the recapture rule.

The majority of our precedent (including precedent relied on by the Board) involves instances where the patentee eliminates the added limitation in its entirety; in such circumstances it is clear that the surrendered subject matter has been recaptured and the scope of the reissue claim is even broader than the original. . . . .

In the case at bar, however, the Board has already determined that the added limitation—cycling—has not been eliminated; rather, it has been broadened to changing. Board Decision, 2010 WL 3503790, at *9. Such modification does not instantly implicate the recapture rule bar, as the Board held; rather, such a broadening modification must be evaluated to determine if it materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.

The [USPTO] argues that material narrowing should be determined relative to the patented claim, rather than the original claim. We disagree. Using the original claim as a frame of reference for determining whether the reissue claim materially narrows is consistent both with case law and the purposes underlying the reissue statute. By measuring material narrowing relative to the original claim, which was deliberately surrendered during the original prosecution, we are ensuring that the patentee is unable to recapture what it surrendered deliberately, but allowing room for error, as required by the reissue statute. . . .

With regards to determining whether a modified limitation is materially narrowing, Mostafazadeh should provide the Board with guidance for conducting such analysis. . . . .Mostafazadeh establishes, as a ceiling for determining whether a modified limitation material narrows, any recapture of surrendered subject matter that was in the prior art of the original prosecution. The logic of such a ceiling flows from the concept of “error” under the reissue statute. When a patentee is narrowing its claim limitations due to prior art that would otherwise render the claims unpatentable, the patentee can only be doing so deliberately, without any possibility of error. Thus, if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue. The Board’s failure to distinguish this case from instances where the added limitation is deleted in its entirety and to conduct the proper analysis for a modified limitation is reason enough to vacate and remand.

(emphasis added)

Interestingly, with respect to the above underlined statement, the Court made no reference to the fact that the claims omitted the previous means-plus-function language. Thus, the structure of the previous function (linked in the specification in a means-plus-function sense) has, in fact, been eliminated in some respect. Moreover, the originally issued claim recited a user control means and a selection means. Yet, the reissue claims require only the wireless remote control. Further, the original prosecution history emphasizes the ability to use fewer buttons as a distinction. (presumably the selection means)

The case should make for an interesting remand.  Unfortunately, the patent expires on November 29, 2014, so there is not much term left to “reissue” at this point. (disturbingly, this reissue application has been pending since November 24, 1999).

Continuation 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 In re Doll 419 F.2d 925,928 (CCPA 1970) and explained that Doll could not be overruled absent the en banc consideration of the Court, noting:

[W]e see no basis for limiting Doll to situations where later broadened claims are related to, or are directed to the same embodi-ment as in the original application. The PTO’s approach is, moreover, unmanageable. Every claim must, by definition, be different in scope than the other claims of the patent, and it is difficult to distinguish one patent embodiment from another or to determine when a later claim is related to an earlier claim. A rule requiring that the new claims be related to the previously submitted claims, or be directed to the same embodiment, would be difficult to administer in a consistent and predictable way. . . . . In short, this panel is bound by Doll. See S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc) (adopting the decisions of the CCPA as binding precedent); In re Am. Fertility Soc’y, 188 F.3d 1341, 1347 (Fed. Cir. 1999) (holding that an earlier precedential decision is binding precedent on later panels). If the PTO believes we should overrule Doll, that is a matter that must be presented to the en banc court.

Yet, the concurring opinion strongly suggests that that the PTO’s public policy arguments for potentially overruling Doll would fall flat.

In the end, the PTO . . .  falls back on policy concerns it claims allow it to ignore the face of § 251 and to disregard both its own and this court’s pronouncements regarding the proper operation of that governing provision. Given the limited life of additional claims which can be sought through the type of continuing reissue practice at issue here, the protections afforded by the intervening rights provisions in 35 U.S.C. § 252, and the countervailing implementation concerns the PTO’s new standard creates, however, the PTO’s policy arguments are over-stated – substantially so. Even if those policy statements were not overstated, they would be an insufficient reed upon which to rest such a sweeping change in the law.

Indeed, most practitioners avoid broadening patent reissue practice altogether by simply maintaining a pending, regular continuation application. The notion that anyone would pursue broadening patent reissue as a matter of course ignores the significant pendency problems, as well as thorny recapture and intervening rights issues. As such, it would seem unlikely that the Office will pursue en banc review.

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.

Continue Reading Defects in Patent Reissue Oaths Inefficiently Cured

In 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 the aspect of foreseeabilityemphasized in case law addressing prosecution laches. In affirming the rejection, the BPAI surmised:

Since this broadening was completely unforeseeable by the public within the two-year statutory period, a circumstance that is undisputed, it runs counter to the public notice function underpinning § 251 and is therefore improper.

With respect to forseeability, the CAFC appeared to recognize the impracticability of the USPTO’s “forseeability” test during last week’s oral argument. The bulk of the discussion during oral argument (audio here) related to whether or not earlier CCPA precedent controlled. In this regard, In re Doll 419 F.2d 925, 928 (CCPA 1970) was discussed extensively, as well as some early Supreme Court cases pertaining to patent reissue. The Court did not appear to accept the argument that the earlier Supreme Court cases supported the argument of the USPTO ( 21:40) and questioned whether or not Doll was truly distinguishable from the present facts.

The solicitor pointed out that the patent reissue statute has a limited two year window for broadening as a matter of public policy. The solicitor reasoned that the 2 year limit serves to enhance public’s reliance on issued claim scope and protect the public. The Court did not appear persuaded by public policy considerations, noting the seemingly “one-off” nature of the current fact pattern. Nevertheless, the Solicitor warned that a reversal of the agency would encourage filers to seek creative errors to broaden claims until patent term was exhausted.

Of course, most practitioners avoid broadening patent reissue practice altogether by simply maintaining a pending, regular continuation applications. The notion that anyone would pursue broadening patent reissue as a matter of course ignores the significant pendency problems, as well as thorny recapture and intervening rights issues.

Assuming this case were affirmed, is there now grounds to argue for “claim scope laches” vis-a-vis regular patent application continuation practice?

USPTO Affirmed on Facts, But Corrected as to Proper Recapture Rule AnalysisBack 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.”The CAFC decision (here) explained that the materially narrowing necessary to avoid recapture must relate to the surrendered subject matter, not an “overlooked aspect” of the invention as required by the USPTO, stating:[A] limitation that is added during prosecution to overcome prior art cannot be entirely eliminated on reissue because doing so would constitute recapture of the surrendered subject matter. The limitation may be modified, however, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured..           .           .           .           .           .           . [T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. (emphasis added)Mostafazadeh did not eliminate the attachment pad limitation, only modified it by removing “circular.” Still, the Board found that the narrowing limitations added in the patent reissue did not relate to the attachment pad limitation, thus step (3) of the Clement test could not save the Patentee. Had the Patentee added narrowing language that related to the circular pads, such as requiring that the attachment pads be formed of a specific alloy, or oriented in a certain way, the removal of “circular” may have been acceptable.This case, much like In re Tanaka, will provide Patentees a greater degree of flexibility, and opportunity to pursue patent reissue going forward.

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.”

The CAFC decision (here) explained that the materially narrowing necessary to avoid recapture must relate to the surrendered subject matter, not an “overlooked aspect” of the invention as required by the USPTO, stating:

[A] limitation that is added during prosecution to overcome prior art cannot be entirely eliminated on reissue because doing so would constitute recapture of the surrendered subject matter. The limitation may be modified, however, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.

.           .           .           .           .           .           .

[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. (emphasis added)

Mostafazadeh did not eliminate the attachment pad limitation, only modified it by removing “circular.” Still, the Board found that the narrowing limitations added in the patent reissue did not relate to the attachment pad limitation, thus step (3) of the Clement test could not save the Patentee. Had the Patentee added narrowing language that related to the circular pads, such as requiring that the attachment pads be formed of a specific alloy, or oriented in a certain way, the removal of “circular” may have been acceptable.

This case, much like In re Tanaka, will provide Patentees a greater degree of flexibility, and opportunity to pursue patent reissue going forward.

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} Continue Reading Recapture Doctrine Before The CAFC

Recapture and Formality Issues Bog Down Important Cases 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.

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.

Comparing Claims in Reissue Oath Haunts Patent HolderOn 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?Claim construction issues aside, recent BPAI cases illustrate the importance of oaths in patent reissue. All too often, the preparation of the oath is deemed ministerial, and ignored in favor of prior art/claim drafting concerns. Oath preparation and wording should be a focal point of any patent reissue effort.When identifying an error in an original patent via added/amended claims in patent reissue, comparison to the originally issued claims is very attractive. This practice is not necessarily wrong, but can have unintended consequences as demonstrated by Lucky. By making such direct comparisons, the scope of the newly added claims becomes unnecessarily intertwined with the issued claims. For example, the oath in Lucky Litter would have been better off stating “new claims 23 through 48 are directed to the automated comb operation of a self cleaning cat litter box, albeit independent of any specific sensor or means-plus-function structure of the issued claims.” (I know, easy for me to say 10 years after the fact)It may be that the Patentee in Lucky still would have lost, oath or not. Nevertheless, the case demonstrates that oath filings are far from form practice, and can come back to haunt Patentees.  Finally, the patent is subject to an ongoing ex parte reexamination (90/010,389) and, as you may have guessed, new claims were added expressly reciting “cat exit.”  (see new claim 5

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?

Claim construction issues aside, recent BPAI cases illustrate the importance of oaths in patent reissue. All too often, the preparation of the oath is deemed ministerial, and ignored in favor of prior art/claim drafting concerns. Oath preparation and wording should be a focal point of any patent reissue effort.

When identifying an error in an original patent via added/amended claims in patent reissue, comparison to the originally issued claims is very attractive. This practice is not necessarily wrong, but can have unintended consequences as demonstrated by Lucky. By making such direct comparisons, the scope of the newly added claims becomes unnecessarily intertwined with the issued claims. For example, the oath in Lucky Litter would have been better off stating “new claims 23 through 48 are directed to the automated comb operation of a self cleaning cat litter box, albeit independent of any specific sensor or means-plus-function structure of the issued claims.” (I know, easy for me to say 10 years after the fact)

It may be that the Patentee in Lucky still would have lost, oath or not. Nevertheless, the case demonstrates that oath filings are far from form practice, and can come back to haunt Patentees.  Finally, the patent is subject to an ongoing ex parte reexamination (90/010,389) and, as you may have guessed, new claims were added expressly reciting “cat exit.”  (see new claim 54).

BPAI 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.

When prosecuting reissue patent applications, defective declarations are the norm due to the USPTO’s heightened interest in ensuring the declaration specifically identify the error sought to be corrected. Further, when presenting a broadening reissue, it is not uncommon for such an application to be filed very close to, or on the date of the two year anniversary of original patent issuance. When filing such “last minute” broadening reissue applications, failure to identify an unequivocal intent to broaden could be fatal.

In deciding a case last Friday the BPAI shot down an ambiguously worded declaration that attempted to cover both narrowing and broadening, explaining:

In the instant case, we cannot agree with Appellants’ contentions that the statement “by reason of a patentee claiming more or less than he had a right to claim in the patent” in the Reissue Application Declaration is a clear statement of intent to file a broadening reissue application. . . . .(emphasis added)

In the present case, Appellants’ description fails to indicate that the reissue is a broadening reissue and does not explain the nature of the broadening. . . .  Accordingly, Appellants’ argument that the Examiner was required to make findings that intent may be inferred from the reissue application declaration is not well taken. (App. Br. 8-9.) Appellants’ belated explanation of why the amendment to claim 1 broadens the claims of the ‘376 Patent in the preliminary amendment of October 20, 2004 and in the Appeal Brief (FF 6; App. Br. 11) are insufficient to rectify the deficiencies of the Reissue Application Declaration. Arguments of counsel cannot take the place of or supplement the Reissue Application Declaration. Oetiker, 1997 WL 1883795 at *5-6. Therefore, the Examiner did not err in rejecting claims 9-172 under 35 U.S.C. §251 as being directed to a broadening reissue improperly filed after two years from the issue date of the ‘376 Patent.

Clearly, the USPTO considers a broadening declaration proper ONLY when unequivocal, and presented within two years of original patent issuance.

As recent cases demonstrate, the nuances of patent reissue practice are significant and largely underappreciated by Patentees.