Failure to Comply with Terms of Reissue Statute Invalidate Reissue Patent During Litigation
In Medrad, Inc. v. Tyco Healthcare Group LP., 391 F.Supp.2d 374 (W.D. Pa 2005), Medrad sued Tyco for infringement of its reissue patent, U.S. Patent No. RE 37,602 (the ‘602 patent), which relates to patient infusion systems for use with MRI systems. There are two predecessor patents to the ‘602 patent, the first being U.S. Patent No. 5,494,036 (the ‘036 patent). Medrad sought to broaden the claims of the ‘036 patent and filed a reissue declaration. However, in issuingU.S. Patent No. RE 36,648 (the ‘648 patent), the PTO instead narrowed Medrad’s claims, though two more inventors were added during the prosecution. According to the District Court, “while plaintiff originally sought reissue to correct a purported underclaiming error, and filed a reissue declaration regarding that error, the PTO reissued the patent to correct an overclaiming error and an inventorship error.” Medrad had failed to comply with PTO Rules, 37 C.F.R § 1.175 requiring a supplemental reissue declaration regarding the two errors identified and corrected by the PTO but which were not covered by the original declaration.
As a result, Medrad filed a second reissue application to remedy the problems of the ‘648 patent. The PTO issued the ‘602 patent, the only divergence from its immediate predecessor is that during the prosecution of the ‘602 patent, the missing supplemental reissue declarations were filed. The ‘602 patent does not differ from the ’648 patent in the specifications, drawings, or claims.
Tyco filed a motion for summary judgment of invalidity of the ‘602 patent, arguing that the reissue was defective under the reissue statute, 35 U.S.C. § 251. This statute provides that a reissue application can only be filed to correct one of four statutorily identified errors: a defect in the specification, a defect in the drawings, or an error in either overclaiming or underclaiming in the patent. Medrad contends that a reissue can correct any number of patent prosecution mistakes, including failure to file the appropriate declarations.
The District Court relied on the case law of the Court of Appeals for the Federal Circuit (CAFC), which does not establish any precedent of 35 U.S.C. § 251 being used to correct procedural errors made during prosecution. Rather, all of the CAFC cases identified by the court that address this issue begin their analysis by identifying which of the four statutorily identified errors the reissue applicant is trying to correct. That is, the courts have consistently interpreted the reissue statute to require that the mistake sought to be remedied be within the express terms of the statute. Therefore, the District Court granted Tyco’s motion for summary judgment of invalidity of the ‘602 patent since this reissue patent was not based upon an issue for which reissue can be sought under 35 U.S.C. § 251. As such, while reissue is generally available for a multitude of errors, reissue is not available for more procedural defects not within the scope of the reissue statute itself.