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Federal Circuit issues two decisions regarding reissue patents
November 14, 2006
Over the course of three court days, the Federal Circuit issued two decisions in cases involving reissue patents. After a patent is issued, if the patent holder discovers that the patent is "wholly or partly inoperative or invalid," the patentee may surrender the original patent and seek reissue of the patent. If this is sought within the first two years after the original patent issued, the claims may be broadened to the extent supported by the specification and not limited by the prior art. Often reissue applications are filed for this purpose; the patent holder realizes that they could have received broader claims based on the cited prior art, so they seek to broaden the patent after it is issued. Reissue applications are not without risk, however, as all the claims of the patent are "in play," meaning that the USPTO may reject claims it had previously allowed on new grounds. So, reissue can result in the loss of the patent if the patent office rejects the original claims for some reason other than those raised during prosecution of the original patent. There is a limitation on the ability of the ability to broaden claims of a patent during reissue: the rule against recapture. This rule states that if the patent holder gave up claim coverage during prosecution of the original patent, he or she may not recapture that surrendered subject matter via reissue. This concept is similar to the doctrine of prosecution history estoppel, which prevents a patent holder from arguing infringement by equivalents when the claim element at issue was narrowed during prosecution. More information about the new cases after the jump.In Medtronic, Inc. v. Guidant Corp., the Federal Circuit considered the rule against recapture. The patent at issue related to cardiac pacemakers. When the patent originally issued, it covered only one of two embodiments known to the inventor, largely because of miscommunication between the inventor and his patent attorney. Once the patent issued, the error was discovered, and the patent holder sought reissue. First, the court noted that one of the most common sources of errors in patents is miscommunication between the inventors and the patent attorney resulting in the attorney not appreciating the full scope of the invention. Thus, the requirement for an "error" for a reissue patent to valid was present. Next, the court tackled the harder question of recapture. When analyzing the rule against recapture, the court uses a three-part test: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original 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. Applying this test, the court determined that the reissue claims did not violate the rule against recapture. While the reissue claims were broader than the original claims, the broader aspects of the reissue claims were not "surrendered" so as to prevent recapturing it during reissue. Specifically, the amendments at issue were examiner's amendments that were characterized as "minor wording changes." Thus, the court held that there was no surrender as required to implicate the rule against recapture. In another case regarding reissue patents, the court considered whether a defective inventor's declaration is among the "errors" the statute permits to be corrected via reissue. In Medrad, Inc. v. Tyco Healthcare Group, the defendant, Tyco, contended that the problem with the declarations was "procedural," and not a problem with the specification, drawings, claiming too much, or claiming too little, and hence could not be corrected on reissue. Medrad argued that the failure to file supplemental declarations rendered the patent invalid, thus they had "claimed less than it had a right to claim" within the meaning of the reissue statute, ? 251. The Federal Circuit decided that this type of error may be corrected via reissue. Specifically, the reissue statute is a remedial one, and thus liberally construed. Also, the court found no evidence in the statute itself or its legislative history to support Tyco's proposed limiting interpretation. The court refused to read into the statute additional limitations on the types of errors that may be corrected by reissue. Accordingly, the court reversed the lower court's decision that the reissue patent was invalid. These cases illustrate the potential pitfalls of reissue patents, although both ultimately were decided in favor of the patent holder. Even when reissue is warranted, it not only brings the potential risk of losing the original patent, but also introduces myriad additional issues if the reissue patent is ever litigated against an infringer. To read the complete decisions, click here and here.
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