Ideally, patent infringement is proven by analyzing a patent’s claims to the products and/or processes of a single infringer. However, often times, patent claims are written in such a way that there is not a clear case of “direct infringement.” In such cases, a Patentee must rely on indirect or divided infringement theories.
Proving indirect infringement (e.g., inducement) is complicated by the need to prove that the indirect infringer had knowledge of the infringement of others. Likewise, cases such as Golden Hour Data Systems v. emsCharts and Softtech, demonstrate that joint infringement of patent claims by multiple parties requires a “showing of direction and control.” As such, claims that are only infringed indirectly, or by multiple parties present a significant hurdles during assertion.
Patentees may attempt to remedy direct infringement problems, prior to assertion, through patent reissue. For example, a broadening reissue (if pursued within two years of issuance) may be used to remove limitations from issued claims such that a case of direct infringement may be more readily proven. Likewise, a narrowing reissue, may be filed to recast claimed features in a more amenable fashion. However, with the pendency of patent reissues spanning years, and even decades in some cases, is the special dispatch accorded patent reexamination a more attractive option to address such infringement issues?
In addition to speed, reexamination may be more attractive as it does not subject all claims to review like reissue, and does not consider patentability issues such as statutory subject matter under 35 U.S.C. § 101, or 35 U.S.C. § 112 for original claims.
Patent owner initiated reexamination can therefore be leveraged to modify existing claims by presenting a narrowly tailored SNQ for those claim[s] where direct infringement is at issue. The patent owner can file a proposed amendment along with the reexamination request to essentially secure viable claims in the fastest manner possible. MPEP 2221 Consider the following, hypothetical (underlining showing the change to be made in the reexamination request):
1. A method of doing something novel with a computer system, comprising:
communicating a first thing from a server to a client
communicating a second thing, prior to the communication of the first thing so that the second thing is also received [receiving the first thing] at the client.
As can be seen from above the originally issued claim required the client to actively perform the step of receiving, likely creating divided/indirect infringement issues (not to mention extra territoriality issues). Now the step is recast as a communication to the client, inferentially referencing the client device.
Clearly, patents may not be broadened in patent reexamination (35 U.S.C. § 305). See for example last week’s BPAI decision, Ex Parte Direct Imaging Systems. Yet, in the amendment above, the Patentee would likely explain that the bracketed language is just a grammatical change to account for the new, narrower language that was necessary to distinguish over the art of record.
As noted in MPEP § 2258, broadening is defined as “A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent.” Here the scope is arguably not enlarged with respect to subject matter, just redrawn and narrowed with respect to a single actor.
Is a narrowing amendment that creates a case of direct infringement a broadening in violation of the statute? Alternatively, is it a change that is unrelated to patentability, thus not otherwise authorized under 35 USC § 305? See Southwestern Bell Telephone Co. v. Arthur A. Collins, Inc. (unpublished Fed. Cir. 2008).