APRIL, THE 20TH, 2016

CLASS 24
PATENT LAW NOTES

REISSUE, REAXIMNATION, POST GRANT REVIEW

1- Reissue
Authority provided to correct and reissue defective patents
Explicitly authorized by Congress in Section 3 of the Act of July 3
1832
Three different administrative procedures:
1. Reissue 251-252
2. Disclaimer 253:
- Patentee can erase any claim in the issued patent.
- Patentee has interest in doing so b/c patent law imposes a
penalty where a patent contains both valid and invalid claims.
3. Correction 254-256
Both Reissue and Correction give the patentee the opportunity to fix
defects on an issued patent.
In the following: the distinction between correction and reissue
proceedings, the errors correctable in a reissue proceeding and
intervening rights and the enforcement of reissue patents
a- Correction v. Reissue
Superior Fireplace v. Majestic Products
Dispute revolves around a term in the claim
SUPERIOR
FILES
A
COMPLAIN
AGAINST
MAJESTIC
FOR
INFRINGEMENT
MAJESTIC POINTED THAT THE SECOND limitation of claim 1 recited
Rear walls
- Superior then proceeded to apply for a certificate of correction
the change the claim so it becomes Rear Wall
Superior first filed a section 254 (Correction) request which corrects
mistakes made by the PTO. It was rejected
Then filed a Section 255 (Correction) request which corrects
mistakes made by applicant. It was granted and correction was
made
Section 255 authorizes certificates to correct mistakes that are
either
o (1) of a lyrical or typographical nature; or
o (2) of minor character
District court held that none of those situations were found here

Theres a clear and convincing standard of persuasion. Requirement

based on the presumption of validity
The challenge in this case should apply to the certificate as well as
the validity of the claim
Issue: whether a lyrical or topographical mistake may ever
encompass a mistake that, upon correction, would broaden
a claim
o The words of 255 do not preclude broadening corrections and
the court here does not want to say other and thus impose a
limitation which the statue does not impose
Parties also dispute whether a mistake which was fixed and thus
broadened the claim must be evident from the public record
Thus leads the court to classify typographical mistake into
three categories:
o Immediately apparent and leave no doubt as to what
the mistake is
o Mistakes not apparent to the reader at all (that reads
logically in the context of the sentence)
o Those where it is apparent that a mistake has been
made, but is it unclear what the mistake is
The broadening is no indefinite, and here we follow Section
251
o The broadened claim must be supported by the original
specification
o Cannot apply for a broadening reissue more than 2
years after a patent has issued
o Congress provided intervening rights for the public
with respect to claims that were broadened under 251
The court here found that claim 1 contained an evident mistake
because the uncorrected claim later refers back to the rear wall,
which does not agree with the earlier reference to rear walls in the
plural. One of these limitations contains a mistake, but the claim
does not indicate which is mistaken.
- After reviewing the rest of the specification, drawings
and prosecution history, the court concluded that
correction was not possible because it was not
apparent.
255 includes the wording Minor Character and the court interprets
this as excluding mistakes that broaden a claim
As a matter of law that [the mistake] was not correctable by a
certificate of correction under 35 U.S.C. 255.
Superiors certificate of correction is thus invalid

2- Errors Correctable in Reissue Proceedings

Mentor Corp v. Coloplast
Mentor sued Coloplast from infringement
Claims 6-9 of the patent were added during reissue
Coloplast argue that they are invalid because they are not based on
error within the meaning of 251
Here, claim 6 impermissibly recaptured what mentor deliberately
surrendered in the original prosecution, since it omits a limitation
that was there before
Mentor narrowed its claims for the purpose of obtaining allowance in
the original prosecution and it is now precluded from recapturing
what it earlier conceded
Recapture rule: principle of patents law that in a reissue
patent a patentee cannot regain a claim that was previously
abandoned to gain allowance of the patent application. This
is a defense in an infringement action as it allows the
defendant to attack the validity of a reissue patent. The rule
is codified at 35 USCS 251.
Reissue claims that are broader in certain respects and narrower in
others may avoid the effect of the recapture rule. If a reissue claim
is broader in a way that does not attempt to reclaim what was
surrendered earlier, the recapture rule may not apply. However, in
this case, the reissue claims are broader than the original patent
claims in a manner directly pertinent to the subject matter
surrendered during prosecution.
Additionally, claims 7-9, which depend from claim 6, do not avoid
recapture because they do not add any limitations, material in
relation to the impermissible broadening, that distinguish them over
claim 6
None of the 6 through 9 claims meet the legal requirements for
reissue
2- Intervening rights and the enforcement of reissue patents

Section 252 talks about the effect of reissue

Intervening rights limit the enforcement of a reissue patents. Two
types:
o Absolute intervening rights: it covers product already made at
the time of reissue. As long as the use or sale of the accused
product does not infringe a claim of the reissue patent that
also was in the original patent, the owner of the reissued
patent has no recourse under the Patent Act [against

products protected by absolute intervening rights.] This

absolute right extends only to anything made, purchased, or
used before the grant of the reissue patent
o Equitable intervening rights: provides for the courts to grant
much broader intervening rights, though it is not absolute.
The trial court may, as dictated by the equities, protect
investments made before the reissue
[I found this and I thought it was more helpful]

Absolute intervening rights

The language of 35 U.S.C. 252 makes clear that absolute intervening
rights extend only to anything made, purchased, sold, or used "before
the grant of a reissue" patent. In other words, the doctrine of
absolute intervening rights "covers products already made at
the time of reissue."
-

These rights are considered "absolute" because of the statutory

command that a reissued patent "shall not" limit the rights
of an accused infringer that practices the original claims
before reissuance of the patent.
The statute also limits absolute intervening rights to a "specific
thing" existing before the patent reissues. Seizing on this
language, some courts have suggested that absolute intervening
rights may not apply to methods or processes. As one court
noted, "[t]he first sentence and one-half of the second sentence
of 35 U.S.C. 252 appears not to relate to a patented process.
The only reference to a patented process occurs in the last half
of the second sentence," which addresses equitable intervening
rights.

Equitable intervening rights

Three important features of equitable intervening rights distinguish it
from absolute intervening rights.
1) First, the equitable form of the doctrine is discretionary, not
mandatory.
2) Second, equitable intervening rights explicitly applies to both
"processes" and "things."
3) Third, the doctrine can apply to processes and things both
before and after issuance of a reissued patent, as long as
"substantial preparation was made" in their development "before
the grant of the reissue" patent.

Thus, "one may be able to continue to infringe a reissue patent if

the court decides that equity dictates such a result." In these
respects, the second sentence of 252, which allows for
equitable intervening rights, "provides for the court to grant
much broader rights than does the first sentence," which defines
absolute
intervening
rights.
The rationale underlying equitable intervening rights is to allow a
court, as "dictated by the equities, [to] protect investments
made before reissue." But "[t]his equitable right is not
absolute," and courts have placed limits on the doctrine.
- For example, courts may refuse to allow an alleged infringer to
continue its infringing activities in perpetuity, or to "expand its
operations throughout the remainder of the life of the . . .
[r]eissue without royalty fees or damages."
- In determining whether to grant equitable intervening rights,
courts generally consider the following factors:
1) whether "substantial preparation" was made by the infringer
before the reissue;
2) whether the infringer continued manufacturing before reissue on
advice of its patent counsel;
3) whether there were existing orders or contracts;
4) whether noninfringing goods can be manufactured from the
inventory used to manufacture the infringing product and the
cost of conversion;
5) whether there is a long period of sales and operations before
the patent reissued from which no damages can be assessed;
and
6) whether the infringer has made profits sufficient to
recoup its investment.

Seatle Box Co v. Industrial Crating

About equitable intervening rights
Seattle Box sued Industrial alleging patent infringement (617
patent)
On August 19, 1980, Seattle Box was granted the reissue (reissue
No. 373)
On Oct 10, 1980 Seattle box amended its complaint alleging
infringement of the 373 patent
Seattle Boxs original patent required spacer blocks to have a height

greater than the diameter of the pipe. To avoid the original patent,
Industrial made its spacer blocks 1/16 of an inch shorter than the
diameter of the pipes. In Seattle Boxs reissue patent, the
relevant claim language was expanded to encompass spacer
blocks of a height substantially equal to or greater than the
diameter of the pipe.
Industrial then shortened its pipes so that they a quarter inch
shorter than the pipes
Both the Fed Circuit and the district court thought there was not
infringement
Bur after that, industrial made pipes that were only 1/16 inches
shorter and the fed circuit here found that there was infringement
Intervening rights: the court must consider whether to use
its broad equity powers to fashion an appropriate remedy
Must ask whether substantial preparation was made [by the
infringer] before the grant of the reissue. Specifically, the
district courts inquiry should have been and it is now our burden
to decide whether the post- reissue use of the 224 bundles which
were made from pre-reissue spacer blocks constituted substantial
preparation to merit the protection afforded by intervening rights,
so as to protect investments made ... before the grant of
reissue.
Sets of facts weight heavily in the present equitable determination
of the application of intervening rights:
o 1- Industrial was ware of the 617 patent
o 2- Industrial continued manufacturing after reissue on the
advice of its patent counsel
o 3- Industrial had existing orders for 114 bundles and this is
important because the remedy of intervening rights is
calculated to protect an infringers preexisting
investments and business
o Courts also consider whether non-infringing goods can
be manufactured from the inventory used to
manufacture the infringing product. The cost and ease
of converting infringing items to non-infringing items
is an important factor.
It is apparent that Industrial was attempting to design its spacer
blocks around the 617 patent, which did not infringe it but infringed
it reissue
The court here found that it would be an abuse of discretion to not
allow Industrial to dispose of its inventory without liability to Seattle.
It decided that intervening right protect Industrial in this case
3- Reexamination

It gives the PTO a chance to reconsider the validity of claims in

issued patents
Two processes:
o The original ex parte reex system, three parts:
The request for reexamination
Anyone can initiate it
Request has to be new and substantial
Time limit: 3 months within which the PTO must
decide whether a request for reexamination meets
the statutory test for initiating proceedings
The administrative process for reexamination once a
request in granted
Similar to the initial prosecution process with
some different features
The end result of the process
A certificate canceling any claim of the patent
finally determined to be unpatentable, confirming
any claim of the patent determined to be
patentable and incorporating in the patent any
proposed amended or new claim determined to be
patentable
Canceled claim is completely void, as if never
issued
The new claim has the same effect as that
specified for new claims in reissued patents
Amended claims must most importantly
comply the rule prohibiting the expansion of
claims
o Inter parte which is more recent, since 1999
We must ask ourselves whether the statute achieves the goal of
providing an efficient alternative to litigating validity issues in
court

Quantum Corp v. Rodime

Issue: whether amendments made during a prior reexamination
proceeding impermissibly broadened the scope of the patent claims
at issue in violation of Section 305 and if so the legal effect of it
This court holds that the claims are invalid because they
were impermissibly broadened during reexamination
Rodimes patent is for computer hard-disk drives. The relevant
claims in the original patent covered drives having at least 600
concentric tracks per inch.
Quantum filed an action seeking a declaratory judgment that the

relevant claims were invalid because they had been broadened

during reexamination
Section 305: No proposed amended or new claim enlarging
the scope of a claim of the patent will be permitted in
reexamination
Rodime asserts that adding approximately does not broaden,
specially to PHOSITA
Court says the dispute here revolves around at least, which
defines an open-ended range starting at least below 600
Since the amended limitations includes subject matter not
covered by the original claims, the scope was expanded
during reexamination in violation of Section 305
Congress enacted section 305 which, while allowing an applicant to
amend his claims or add new claims to distinguish his invention
over cited prior art, explicitly prohibits any broadening of claims
during reexamination
No statutory provisions as to what the remedy should be in a case
like this
If an applicant wants to broaden, he should, within two
years, file for REISSUE not REEXAMINATION