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Federal Circuit Case Law |
Medrad, Inc. v. Tyco Healthcare Group LP et al.
Decided October 16, 2006 pdf
Judge Linn with Judges Michel and Archer
A reissue patent application may be filed to correct procedural errors such as a faulty inventor’s declaration.
Medrad obtained patent claims to a patient blood infusion system, and filed a reissue application with an inventor’s declaration that explained how broader claims were needed. The reissued patent had narrowed claims however, so Medrad filed another reissue application solely to correct the declaration and to correct inventorship. During subsequent litigation at the U.S. District Court for the Western District of Pennsylvania, Judge Gary Lancaster found the later reissued patent invalid because of the judge’s belief that reissue cannot be used to correct such a “procedural” error. Medrad appealed.
The Federal Circuit reversed because the reissue statute 35 US 251 for correcting errors in a patent does not “require that the error occur in the actual language of the claims.”
Some practitioners have problems following procedures when filing a reissue application. Careful claim analysis and documentation are needed before filing to determine claim scope differences from previously sought claims.
In Re. Arnold B.
Serekin
Decided March 6, 2007
“[T]he deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under 251 (the reissue statute).”
Serenkin filed a PCT application from his provisional application but forget to include the figures. The PCT receiving office offered to give him a new date upon receipt of the figures or to keep the original priority date, without figures. His attorney reluctantly chose the new date. After obtaining a U.S. patent, Serenkin filed for a reissue application, asserting that the choice of the later date was an error. The PTO rejected the reissue application and Serenkin appealed.
The Federal Circuit affirmed. The court noted that “reissue is appropriate to perfect priority claim where patentee substantially complied with …requirements but inadvertently omitted the filing dates from prior applications” but that reissue is not suitable to correct a “deliberate, but subsequently found to be disadvantageous choice.”
The PTO sometimes lets an applicant add figures from a priority document to an application after filing to correct an error. The PTO has less flexibility when following PCT rules, however.
Medtronic, Inc. v. Guidant Corporation et al.
Decided October 12, 2006 pdf
Judge Schall with Judges Michel and Dyk
“[W]hen a reissue claim, while broader in certain respects than the original patent claim, is materially narrowed in other respects, the recapture rule does not apply.”
Medtronic sued Guidant at the U.S. District Court for the District of Delaware
for declaratory judgment that Guidant’s reissue patent claims for a heart pacer
method “are invalid by reason of violation of the rule against recapturing
surrendered subject matter.” Judge Sue Robinson found the claims not invalid,
however and Medtronic appealed to the Federal Circuit.
The Federal Circuit reviewed the scope of amended claims, the reasons for amendments, and agreed that the recapture rule did not apply. Both courts found that when broad claims were added during reissue, the claims also were materially narrowed in other respects.
The work of filing, prosecuting and defending reissue patents often focuses on the claim construction problem of how to broaden claims in some aspects, yet narrow them in other aspects.
The case summaries and other information here
represent the contemporary, private views of Marvin Motsenbocker and are
intended to be informative only and not to give legal advice or opinions. Any
views expressed or implied are subject to change and are not necessarily those
of any law firm, its attorneys or clients.