PTAB Invalidation of Original Claims Bars Pre-issue Damages for Reissued Claims

A surprisingly underutilized patenting mechanism — the reissue patent application — should be an essential component of any portfolio building practice.  The reissue application allows patent owners to correct/adjust claim scope (in some cases broaden), add additional claims, and perform a number of other corrections to an originally issued patent prior to asserting it.

For example, where a Patent Owner has its claims cancelled that the PTAB, the Patent Owner may seek to reissue its patent thereafter with new, narrower claims.  (This option may be more attractive than the PTAB’s amendment process, which is limited in the number of claims that may be raised, and, reissue is not an inter partes process).

But, reissue is not  a magic time machine. That is, trying to resurrect a damages case linked to your earlier cancelled claims by arguing that your narrowed, reissue claims are somehow the same scope, is a losing argument (not surprisingly)
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