35 U.S.C. § 251 -

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 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 long version of the story -

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 ('036 patent), which 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. Medrad did not submit supplemental reissue declarations regarding the overclaiming or inventorship errors as required by 37 C.F.R. § 1.175. That reissue application issued as U.S. Reissue Patent No. 36,648 ('648 reissue patent) and is the second predecessor patent to the '602 reissue patent.

On April 25, 2000, Medrad filed a complaint with the U.S. International Trade Commission alleging illegal importation of devices that infringed the '648 reissue patent. On motion for summary judgment, the administrative law judge ("ALJ") initially found that the '648 reissue patent was invalid due to Medrad's failure to file supplemental reissue declarations regarding the overclaiming and inventorship errors that were ultimately corrected during prosecution. The ALJ's initial decision became the final determination of the International Trade Commission, and the investigation was terminated.

Before the ALJ's initial determination became final, Medrad filed an application for reissue of the '648 reissue patent seeking to correct its failure to submit supplemental declarations during prosecution of the '648 reissue patent. That application resulted in the '602 reissue patent, which is the subject of this appeal. The '602 reissue patent and the '648 reissue patent have identical specifications, drawings, and claims; the only difference is that Medrad filed supplemental declarations during prosecution of the '602 reissue patent that allegedly corrected the failure to do so during prosecution of the '648 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. Medrad, 391 F. Supp. 2d at 376. Tyco argued that the reissue was defective under 35 U.S.C. § 251 because it did not correct one of four statutorily identified errors: a defect in the specification, a defect in the drawings, or an error in either claiming too much or too little in the patent. Id. The court construed section 251 as requiring "that some error in the specification, drawings, or claim of the patent be corrected as a result of the reissue process." Id. at 378. Because the error that Medrad corrected was "procedural" and not an error in the specification, drawings, or claims of the '648 reissue patent, the court granted Tyco's motion, denied Medrad's motion, dismissed all other pending motions as moot, and entered final judgment holding the '602 reissue patent invalid. Id. at 382-83.

On appeal, Medrad challenges the district court's interpretation of 35 U.S.C. § 251 and its invalidity finding based on that interpretation... Medrad argues that the district court erred in concluding that 35 U.S.C. § 251 does not extend to reissues based on defects in inventor declarations. Specifically, Medrad argues that section 251 does not require there to be an error in the specification, drawings, or claims of the patent, but rather encompasses any inadvertent error that results in underclaiming or overclaiming. Medrad cites In re Bennett, 766 F.2d 524 (Fed. Cir. 1985), Brenner v. State of Israel, 400 F.2d 789 (D.C. Cir. 1968), Fontijn v. Okamoto, 518 F.2d 610 (C.C.P.A. 1975), and A.F. Stoddard & Co. v. Dann, 564 F.2d 556 (D.C. Cir. 1977), as cases that have interpreted section 251 to include reissues based on errors that were not literally in the specification, drawings, or claims of the patent.

Nice try; the CAFC found Medrad's cited cases of Bennett, Brenner, Fontijn, and Stoddard off-point. Simply, the appeals court turned to the plain language of § 251.

We turn next to the highlighted language in section 251. According to the statute, if an error is without deceptive intent, the highlighted language provides for reissue whenever any patent is deemed wholly or partly inoperative or invalid "by reason of the patentee claiming more or less than he had a right to claim in the patent." The plain meaning of that phrase indicates that the error involves rendering a patent wholly or partly invalid by reason of--i.e., because of--claiming more or less than a patentee has a right to claim. Although such an error may result from the language used in a claim, the express terms of the statute do not refer only to errors in the claim language itself, as Tyco argues. Rather, the highlighted language in section 251 can be read to encompass any error that causes a patentee to claim more or less than he had a right to claim. Given the remedial nature of the statute and with an eye to its liberal construction, see Weiler, 790 F.2d at 1579, we find such a reading to be entirely appropriate.

The reissue regulations, 37 C.F.R. §§ 1.171-179, require an applicant to file an oath or declaration with an application for reissue. The declaration must state that:

(1) The applicant believes the original patent to be 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 the patentee had the right to claim in the patent, stating at least one error being relied upon as the basis for reissue; and

(2) All errors being corrected in the reissue application up to the time of filing of the oath or declaration under [37 C.F.R. § 1.175(a)] arose without any deceptive intention on the part of the applicant.

37 C.F.R. § 1.175(a). The regulations further provide that, "[f]or any error corrected, which is not covered by the [original reissue] oath or declaration submitted under [37 C.F.R. § 1.175(a)], applicant must submit a supplemental oath or declaration stating that every such error arose without deceptive intention on the part of the applicant." 37 C.F.R. § 1.175(b)(1). A failure to submit a supplemental declaration, if required, renders a patent invalid. See Nulpa Corp. v. IXL Mfg. Co., 114 F.3d 191, 195 (Fed. Cir. 1997) (holding a patent invalid under a previous version of 37 C.F.R. § 1.175, because "when amendments correcting an overclaiming [error] are made during reissue prosecution in response to a rejection, a patentee is obligated to file a supplementary declaration" if that error was not supported by the original declaration).

Interestingly, new broadening claims fell under the original reissue declaration. Later amendments, narrowing claims and correcting inventorship, fell afoul of 37 C.F.R. § 1.175.

Here, in the application for reissue that resulted in the '648 reissue patent, preliminary amendments were submitted to add new claims directed solely to the broadened subject matter identified in the inventors' declarations. These amendments were supported by the original reissue declaration. Later amendments, however, narrowed existing claims and corrected inventorship. Because the later amendments were not supported by the original reissue declaration, a supplemental declaration was required under 37 C.F.R. § 1.175; however, none was filed before the '648 reissue patent issued. If the narrowing amendment had never been filed, there would have been no need under the rules to file a supplemental declaration, and the resulting reissue would not have been subject to a validity challenge for failure to file such supplemental declaration. However, 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.

Tyco has another bullet in its gun, but the CAFC just wanted to kick it back to the district court, having clarified that most any patenting defect suffices under the reissue statute § 251.

Tyco alternatively argues that we should affirm summary judgment of invalidity because the declarations submitted in the '602 reissue patent do not comply with 37 C.F.R. § 1.175. The district court, however, expressly declined to consider that issue. See Medrad, 391 F. Supp. 2d at 377 n.2 ("Defendants dispute whether the declarations that were filed during the prosecution of the '602 [reissue patent] actually satisfy the requirement of PTO Rule 1.175. We need not reach that issue, however, given our disposition of these motions."). We think that issue is more appropriately addressed by the district court on remand, and we decline to consider it in the first instance.

Because we conclude that a defect that formed the basis for the '602 reissue patent was the type of defect that can be corrected under 35 U.S.C. § 251, we reverse the district court's summary judgment that the '602 reissue patent is invalid and remand for further proceedings consistent with this opinion.

Why this was a non-precedential opinion is beyond me.