In December I posted about In re Tanaka, a case before the CAFC in which the question was whether or not an applicant’s desire to add a new dependent claim, but to make no other changes to his application, was sufficient to give him grounds to amend the application under the reissue statute, 35 U.S.C. §251:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue. * * *
The Board of Patent Appeals and Interferences had ruled that since Tanaka did not assert a defective specification or drawing, his desired amendment did not give him the right to seek reissue of his patent under that prong of the statute, and that the case law held that failing to include a dependent claim did not constitute claiming more less than the patentee had a right to claim – after all, by definition a proposed dependent claim must fall within the scope of some already-existing claim, so the patentee could not be deemed to have claimed more or less than he was entitled to. Thus the BPAI left in place a strange situation in which a person who was only guilty of leaving out a dependent claim had no recourse, but if the patentee had really screwed up big time, for example by mislabeling a figure, making a mis-statement in a claim, or gaining allowance of a claim that encompassed the prior art, then that patentee could seek reissue on those grounds – and at the same time introduce new dependent claims as well.
Last week a split panel reversed the BPAI. Citing to In re Handel – one of the decisions of the Court of Customs and Patent Appeals (CCPA, the predecessor of the CAFC) relied upon by the BPAI – Judge Linn, writing on behalf of himself and Judge Bryson, said that in that case, Judge Rich had explicitly said that adding new dependent claims was a way of correcting a defect in a patent: claiming less than the patentee had a right to claim, in the sense that the patentee included fewer claims than he had a right to include. Thus, said Judge Rich in Handel, “[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted.” Judge Linn then stated that “While this court has since characterized that view [of Judge Rich] as dictum, it has not departed from it.”
He then went on to show how allowing reissue applications solely for the purpose of incorporating new dependent claims was long-established practice. Among other things, he noted that
“Claims of narrower scope can be useful to clarify the meaning of broader, independent claims under the doctrine of claim differentiation. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). And dependent claims are also less vulnerable to validity attacks given their more narrow subject matter. Thus, the omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.”
Addressing a concern raised by Teva in an amicus brief, namely that “the public has an interest in preventing patentees from seeking reissue only to add narrower claims because such practice limits the public’s ability to rely on what is actually claimed in an issued patent”, the majority noted that 35 U.S.C. 252 gives courts equitable discretion to allow third parties who “prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent.” Thus, presumably, if an originally issued broad claim could be shown to be infringed but invalid, and a narrower, infringed and valid claim was only added during reissue, a company that in the interim began to infringe the originally-granted broad claim, or that even merely made “substantial preparations” to do so, could seek equitable relief to continue its activities.
Judge Dyk dissented, arguing that not only was there was no CCPA or CAFC precedent directly on point, but that there was Supreme Court precedent (Gage v Herring, 107 U.S. 640 (1883)) that precluded reissue applications solely to add new dependent claims. The majority distinguish Gage on grounds that that decision was given under a very different reissue statute.
In the companion Israel case I discussed, Schwarz Pharma chose not to appeal the hearing officer’s ruling that a new dependent claim could not be added after an application had bee allowed, so overruling that decision will have to await another day.