35 U.S.C. 251 Reissue of defective patents.

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. No new matter shall be introduced into the application for reissue.

The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.

The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.

No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.

(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)

In Re Yasuhito Tanaka (CAFC 2010-1262) precedential; Bryson, Linn (author), Dyk (dissent)

Yasuhito Tanaka ("Tanaka") appeals from a precedential decision of the Board of Patent Appeals and Interferences ("Board") holding that a reissue application that retains all of the original patent claims and adds only narrower claims does not present the type of error correctible by reissue under 35 U.S.C. § 251. See Ex parte Yasuhito Tanaka, No. 2009-000234 (B.P.A.I. Dec. 9, 2009) ("Decision"). Because the Board's determination is contrary to longstanding precedent of this court, this court reverses and remands.

6,093,991 claims an alternator pulley for a auto engine. Tanaka filed his reissue application "exactly two years after its issue date," "seeking to broaden the scope of independent claim 1." Because he "did not fully appreciate the process of claiming according to U.S. practice," Tanaka ended up dropping the claim 1 broadening attempt, instead adding a "new claim 16, dependent on claim 1."

The PTO rejected the new claim narrowing, because "the Applicant has not specified an error that broadens or narrows the scope of the claims of issued patent 6093991."

Interpreting the language of § 251 itself, the Board held that the statute "disallow[s] reissue applications that simply add narrow claims to the reissue patent when no assertion of inoperativeness or invalidity for the reasons set forth in § 251 can be made by the patentee . . . ." Decision at 24. The Board thus affirmed the examiner's rejection, finding that Tanaka was impermissibly seeking an additional claim on reissue "in order to hedge against the possible invalidity of one or more of the original claims." Decision at 19-21.

On to CAFC appeal.

This court concludes that the Board's determination is contrary to longstanding precedent of this court and flies counter to principles of stare decisis.

As interpreted by this court, the reissue statute imposes two requirements for properly invoking the reissue process. First, the original patent must be "wholly or partly inoperative or invalid." Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1564 (Fed. Cir. 1989). Second, "the defective, inoperative, or invalid patent" must have arisen "through error without deceptive intent." Id. at 1565. There is no dispute in this case that any defect arose without deceptive intent.

Hedge claims against possible invalidity is "a proper reason for asking" for a reissue.

Nearly a half century ago, our predecessor court, the Court of Customs and Patent Appeals, clearly stated that adding dependent claims as a hedge against possible invalidity of original claims "is a proper reason for asking that a reissue be granted." In re Handel, 312 F.2d 943, 946 n.2 (CCPA 1963). The basis for the reissue application in Handel was nearly identical to that in this case.

A dim original prosecutor (solicitor) is reason enough for reissue. Judge Rich is a largely considered a demi-God of patent law.

Judge Giles S. Rich wrote the Handel decision reversing the Board's rejection of the reissue application. He explained that the reissue claims involved subject matter disclosed in the specification and thus were properly directed to "the invention disclosed in the original patent." Id. at 944. In a footnote, Judge Rich remarked that "[t]he term 'inoperative' has been construed to mean inoperative adequately to protect the invention, which may be due to failure of the solicitor to understand the invention." Id. at 945 n.2 (quoting McGrady, Patent Office Practice 309 (4th ed. 1959)). Judge Rich added that because the original patent claims were all retained in the reissue application the "term 'less' [in Handel's reissue declaration] appears to have been used in the sense of fewer claims than he could properly have made, rather than in the statutory sense of subject matter included within the claims." Id. at 946 n.2 (emphasis in original). Thus "[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted." Id. While this court has since characterized that view as dictum, it has not departed from it.

The Hewlett-Packard case was similar too in intent, though weaseling downed the reissue.

Explicitly commenting on the language of footnote 2 in Handel, the panel in Hewlett-Packard observed that "the practice of allowing reissue for the purpose of including narrower claims as a hedge against the possible invalidation of a broad claim has been tacitly approved, at least in dicta, in our precedent." Id. The court then went on to "assume that that practice is in accordance with the remedial purpose of the statute," but upheld the invalidation of narrower reissue claims on an entirely different basis-- namely, the factual inaccuracy of the affidavits submitted to the PTO in support of the reissue application. Id. at 1565-66.

Touching once again on validity hedge, in light of Handel and HP.

Even though the rule that adding a dependent claim as a hedge against possible invalidity is a proper reason to seek reissue has seemingly never been formally embodied in a holding of this court or its predecessor, articulation of the rule in Handel was not simply a passing observation--it was a considered explanation of the scope of the reissue authority of the PTO in the context of a detailed explanation of the reissue statute. Based on this court's adoption of that rule and its adherence to the rule in both Muller and Hewlett-Packard, this court rejects the Board's contrary ruling.

An atomistic PTO wanted "inoperative" to mean that the wheels had fallen off. The CAFC considered adding a fifth wheel copasetic.

This court also rejects the PTO's assertion that the omission of a narrower claim from an original patent does not constitute an error under § 251 because the omission of a dependent claim does not render the patent inoperative. While the Board correctly recognized that a patent is inoperative under § 251 if it is ineffective to protect the disclosed invention, the Board improperly assumed that Tanaka's original patent cannot be deemed partly inoperative in the absence of claim 16, whose scope is subsumed by claim 1, from which it depends. Decision at 17- 18. This court, however, has recognized that "each claim is a separate statement of the patented invention." Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1220 (Fed. Cir. 1995). And each claim of a patent has a purpose that is separate and distinct from the remaining claims. Claims of narrower scope can be useful to clarify the meaning of broader, independent claims under the doctrine of claim differentiation. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). And dependent claims are also less vulnerable to validity attacks given their more narrow subject matter. Thus, the omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.

Finally, the majority waved away the PTO's argument that adding a dependent claim did not meet the requisite "defect".

This court in In re Dien addressed the PTO's former practice of allowing patentees to file a reissue application for the purpose of having the claims reexamined in light of newly discovered prior art without alleging a defect nor seeking any change in the patent. 680 F.2d 151, 152 (CCPA 1982). The court criticized this practice as permitting a patentee to obtain an advisory opinion from the PTO. Id. at 154. Here, however, there is no dispute that Tanaka has admitted error in the original prosecution, pointing out that he neglected to seek a narrower dependent claim to which he was entitled. In addition, unlike the practice of "no defect" reissue, Tanaka's reissue application requested changes to his patent in the form of a new dependent claim. Applying for a reissue that adds only narrower claims without amending any of the original claims is not the same as a "no defect" reissue.

Reversed and remanded.

Judge Dyk filed a dissent that was "misplaced," reading Handel and other case law with a jaundiced eye towards allowing reissue. Judge Dyk bought the PTO's "no error" argument, based upon misreading § 251 and case law. Judge Dyk:

There is no assertion that correction of anything in the original patent was required. The Supreme Court in Gage held that under such circumstances reissue is unavailable. 107 U.S. at 645.

The majority read Gage, an 1883 decision, under a different reissue statute, correctly. The majority:

Gage did not address whether a reissue required that something be surrendered in the original claim(s) but instead invalidated a newly added claim that was broader than the original claim under a statute that at that time permitted correction of claims by reissue for the purpose of narrowing the claims; i.e., where the patentee claimed "more than he had a right to claim as new." Id. at 644-45 (citing Act of July 8, 1870, ch. 230, § 53, 16 Stat. 198).

Judge Dyk had some other inapposite views, including a squirrelly reading of "surrender" that is bizarrely out of context with the law. An applicant surrenders his original patent in order to attempt to alter claims, just as Tanaka did. That the outcome doesn't much further the patentee's original intent has nothing to do with previous surrender going into reissue proceedings. Judge Dyk:

This is, moreover, directly contrary to another aspect of the reissue statue, which requires "surrender of [the original] patent." 35 U.S.C. § 251. As a condition of reissue, § 251 requires that the applicant relinquish any claim to the original patent--"the patentee has no rights except such as grow out of the reissued patent." Eby v. King, 158 U.S. 366, 373 (1895). Here, the applicants surrender nothing; they attempt to retain their rights under the original patent in their entirety.