Broadening Reissue Application Filed Within Two Years Allows Subsequent Broadening Reissue Applications After the Two Year Bar Regardless of Whether the Claim Language is Related

By Kevin M. Repper In the case of In re Erik P. Staats and Robin D. Lash, No. 2010-1443 (Fed. Cir. 2012), the Federal Circuit made a decision based on their interpretation of 35 U.S.C. §251 and the precedent court case In re Doll, 419 F.2d 925 (C.C.P.A).  35 U.S.C. §251 discloses that “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,…reissue the patent… for the unexpired part of the term of the original patent.” The reissue statute imposes a two-year limit when the patentee intends on broadening the scope of the claims of the original patent. Doll interpreted section 251 and explicitly rejected the PTO’s argument that “claims presented in a reissue application filed

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Claim Language Defined in the Specification Is Reason for Overturning District Courts Ruling of Invalidity for Violating the Recapture Rule

By Kevin M. Repper In AIA Engineering Ltd. v. Magotteaux Intern. S/A, 657 F.3d 1264 (Fed.Cir.2011), the Federal Circuit overturned a district court judgment of invalidity under the recapture rule of 35 U.S.C. § 251.  The court held that the patentee was acting as his own lexicographer, instead of attempting to broaden his own claims, when he repeatedly used the term “solid solution” during patent prosecution. Magotteaux International was granted aU.S.patent directed to wear products used for crushing and grinding abrasive materials.  Consistently throughout the prosecution of the patent, the patentee used the claim language “ceramic pads consisting of a homogenous solid solution of 20-80 percent aluminum oxide and 80-20 percent zirconium oxide.”  Magotteaux later applied for reissue to change “consisting of” to “comprising” and “solid solution” to a “ceramic composition.”  The reissue patent was granted. A year later, AIA Engineering sued Magotteaux in the U.S. District Court for Middle District of Tennessee.  AIA sought declaratory judgment of noninfringement, invalidity,

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Federal Circuit Finds Reissue Can Be Supported by Adding Only Depending Claims

In In re Tanaka, 98 USPQ2d 1331 (Fed. Cir. 2011), Yasuhito Tanaka is the inventor of U.S. Patent No. 6,093,991 (the ‘991 patent), which relates to a one-way clutch which improves the efficiency of an alternator. Tanaka filed reissue application Serial No. 10/201,948 (“the ′948 application”) in which he attempted to broaden the claims.  After having the broader claims rejected, Tanaka revised the claims to correspond to the original claim scope, and added a new dependent claim. 

Federal Circuit finds Recapture Rule Extends to Subject Matter Surrendered in Related Cases

In MBO Lab., Inc. v. Becton, Dickinson & Co., 94 USPQ2d 1598 (Fed. Cir. April 12, 2010), MBO owns U.S. Reissue Patent No. 36,885 (the “RE ’885 patent”).  The Re’885 patent is directed to a syringe that protects against needle-stick injuries by sheathing a contaminated needle in a flange-covered guard.  The RE ‘885 patent is a reissue of U.S. Patent No. 5,755,699 (the “’699 patent”), and claims priority to, among other patents, U.S. Patent No. 5,176,655 (the “’655 patent”), U.S. Patent No. 5,395,347 (the “’347 patent”); and Application No. 08/398,772 (the “’772 application”). During prosecution of the ‘655 patent, in order to overcome a rejection of claim 18, the applicant amended the claim to include a limitation that described the needle retracting into the guide means and relied upon the new feature to distinguish over the prior art which had the needle being fixed and the guide moving.  Claim 18 later issued with the new limitation. The ‘347 patent is

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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”

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