Reissue : US PTO Litigation Alert™

Court Distinguishes between Original Patent and its Reissue Patent

Scott Daniels | January 2, 2013

This is a good story.

It begins in 2003 when U.S. Patent No. 6,615,065 issued to Somanetics. Two years later, Somanetics filed a reissue application based on the ‘065 patent. In 2008 the Patent Office granted ex parte reexamination of the ‘065 patent based on a request filed by CAS, and the ‘065 reissue application and the ‘065 reexamination were merged into a single proceeding. Then in 2009, while the merged reissue/reexamination was pending, Somanetics sued CAS for infringement of the ‘065 patent.
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Short Update on Reissue Declarations after Tanaka

Scott Daniels | August 29, 2011

Last week we reported on the PTO’s adherence to the holding of In re Tanaka, allowing a patentee to file a reissue application where the only “reissue mistake” in the original prosecution was the failure to include certain dependent claims.  But despite the PTO’s more liberal approach, the patentee must do more in its reissue declaration than check the box indicating that the reason for reissue was “the patentee claiming more or less than he had a right to claim in the patent” – the reissue declaration must actually specify the reissue error, e.g., the failure to include desired dependent claims.

In Reissue Application 12/433,592, filed in April 2009, the patentee, STMicroelectronics, submitted a preliminary amendment leaving the original claims intact, but adding 33 new claims.  The reissue declarant checked the box indicating that a mistake had been made with the claims, but failed to state explicitly what that mistake had been.  At the end of last month, more than two years after the reissue application was filed, the Examiner rejected all claims (under 35 U.S.C. § 251) , stating that the “reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application.”

In light of Tanaka, the path for the patentee to overcome the § 251 rejection is clear, and there will ultimately be a happy conclusion for its reissue application despite the lapse in its reissue declaration.  Still, one has to ask why the PTO took so long to make what is no more than a formal rejection. 

PTO Begins to Implement Tanaka Reissue Standard

Scott Daniels | August 25, 2011

Last December, the PTO Board affirmed the rejection of claims in a combined reissue-reexamination proceeding (11/430,299-90/007,824) in part, because of a defective reissue oath that asserted failure to include a dependent claim as the reissue error.  Yesterday, the Board reversed the rejection, citing the CAFC’s recent decision in Ex parte Tanaka for the proposition “that the addition of dependent claims as a hedge against possible invalidity is within a reasonable interpretation of the reissue statute…”  (As an aside, the Board maintained a separate rejection of the claims, affirming the Examiner’s claim construction). 

Earlier this month, the PTO issued a notice indicating its intent to comply with Tanaka, stating that

[w]here the only change to a patent made in an application for its reissue is the addition of a claim or claims that is/are narrower in scope than the existing patent claims, without any narrowing of the existing patent claims, the applications claims are not be rejected as failing to state an error under 35 U.S.C. § 251.  In addition, any rejection of record in a pending application on this basis will be withdrawn …

Obviously, most patentees wishing that they had more dependent claims will be reluctant to “open-up” their patents by filing a reissue application.  Still, in those cases involving strong prior art against the main claims, reissue may be make sense.

Three Tidbits

Scott Daniels | May 5, 2011

1.     PTO Affirms Reexamination of Katz ‘120 Patent

Earlier this week the PTO Board of Appeals affirmed the rejection of the claims in reexamination of U.S. Patent No. 5,974,120 assigned to Ronald Katz Technology Licensing.  Essentially, the Board agreed with the examiner that the ‘120 claims in reexamination – that claimed a telephone processing system for receiving call from terminals in different call modes (e.g., “800” or an area code) – was obvious over certain combinations of prior art references, despite Katz’ technical arguments and assertions of commercial success.

A point that might interest some is that the ‘120 patent, which expired July 7, 2009, is only now being held invalid.  Clearly, there is no fault to be found with the patentee, the reexamination requesters, or PTO.  Yet one wonders about a patent system in which an invalid patent (assuming that the Board is correct) remains in force so long, here since October 1999. 

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Patentee May Add Narrower Claims in Reissue, at Least for Now

Scott Daniels | April 19, 2011

The CAFC’s decision last Friday, In re Tanaka, addressed the question of whether a patentee’s failure to have included a dependent claim during the original prosecution is an error correctible by reissue, i.e., an error on which a reissue application may be based.  The CAFC panel said yes, but that might not be the final word on the issue.

The reissue provisions of the Patent Statute allow a patentee to correct errors in its patent if the patent is “deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patent claiming more or less than he had a right to claim in the patent….”  In Tanaka, the patentee filed a reissue application seeking to obtain claims broader in scope than those of the original patent; the application included a reissue declaration stating that there was error because the patent claimed less than he had a right to claim.  When the patentee determined that the examiner would not allow broader claims, he withdrew the broader claim and added a dependent claim, i.e., a claim that fell completely within the scope of the independent claim; the patentee also filed a substitute reissue declaration stating that his failure to include the dependent claim during the original prosecution was an error justifying the reissue application.

The examiner and later the PTO Board rejected the application, holding that a reissue application that retains all the original claims and adds only narrower claims, does not present the type of error correctible by reissue.

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