Federal Circuit Defines Error Correctable By Reissue to Encompass Any Error Affecting Enforceability

Reissue Not Restricted To Errors in Claims and Extends to Procedural Error Affecting Enforceability of Claims

In Medrad Inc. v. Tyco Healthcare Group LP, 80 USPQ2d 1526 (Fed. Cir. 2006), the Federal Circuit overturned a District Court finding of invalidity for a reissue patent due to a violation of 35 U.S.C. §251.  Specifically, U.S. Reissue Patent No. 37,602 (hereinafter “the ‘602 reissue patent”) relates to patient infusion systems for use with magnetic resonance imaging systems.  There are two predecessor patents to the ‘602 reissue patent, both of which were assigned to Medrad.  The first predecessor patent was U.S. Patent No. 5,494,036 (hereinafter the “‘036 patent”), issued on February 27, 1996.  On February 23, 1998, Medrad filed an application for reissue of the ‘036 patent and submitted reissue declarations stating that the inventors had claimed less than they had a right to claim (an “underclaiming” error).  During prosecution of the reissue, Medrad narrowed the scope of various claims (correcting an “overclaiming” error) and corrected inventorship, in addition to correcting the underclaiming error.  At the conclusion of prosecution, Medrad did not submit a supplemental reissue declaration for any errors other than those on which reissue had initially been granted as required by 37 C.F.R. §1.175.  That reissue patent issued as U.S. Reissue Patent No. 36,648 (hereinafter the “‘648 reissue patent.”) On realizing this error, Medrad filed a second reissue patent application to submit the supplemental reissue declaration, and this second reissue patent application issued as the ‘602 reissue patent. 

On October 24, 2001, Medrad filed a complaint in district court against Tyco alleging infringement of the ‘602 reissue patent.  Medrad and Tyco filed cross motions for summary judgment regarding the validity of the ‘602 reissue patent, and more specifically, regarding whether the failure of Medrad to file a supplemental declaration in the ‘648 reissue patent qualified as an “error” under 35 U.S.C. §251. 

35 U.S.C. §251 requires the following in regards to the error requirement: 

Whenever any patent is, through error without any deceptive intention, deemed wholly or partially 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.

The district court construed 35 U.S.C. §251 as requiring “that some error in the specification, drawings, or claim of the patent be corrected as a result of the reissue process.”  Since Medrad’s reissue application for the ‘602 reissue patent only corrected a failure to submit a supplemental declaration, the district court granted Tyco’s motion for summary judgment, holding the ‘602 reissue patent invalid since 35 U.S.C. §251 does not provide for reissues based on these other errors.  

On appeal, the Federal Circuit held that 35 U.S.C. §251 can be read to encompass any error that causes a patentee to claim more or less than he had a right to claim.  In overturning the district court’s holding in regards to what constitutes an error correctable by 35 U.S.C. §251, the Federal Circuit restated its holding in In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986)that “in enacting [35 U.S.C. §251], Congress provided a statutory basis for correction of ‘error.’  The statute is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally.”  The plain meaning of 35 U.S.C. §251 indicates that the error involves rendering a patent wholly or partly invalid.  Here, by including changes to the language of the claims that narrowed the scope of coverage and by correcting inventorship, the resulting ‘648 reissue patent claimed more than it had a right to claim in the patent without submitting a supplemental declaration to support the narrowing subject matter and the change in inventorship.  The correction of such an error meets the express terms of 35 U.S.C. §251, and thus serves as a basis for reissue.  As such, the Federal Circuit reversed the district court’s finding of invalidity as there was an error on which the ‘648 reissue patent could be based.

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