On April 15, the Federal Circuit reversed the BPAI decision and remanded the matter for further proceedings in accordance with the opinion. The Federal Circuit held that a patent owner that retains original patent claims and adds new narrower claims in a reissue application does indeed present a type of error correctable by reissue under 35 U.S.C. § 251.
The Federal Circuit relied on precedent from the CCPA decided in 1963:
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. The patentee had mistakenly failed to include narrow claims that he had a right to claim and later sought reissue to obtain those narrower claims without proposing to cancel any broader claims encompassing the claims sought to be added. The proposed reissue claims differed from the existing claims simply by the inclusion of additional limitations.
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)). . . . 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.
The Federal Circuit cited other precedent, such as an earlier case favoring the claiming of species in reissue. The Federal Circuit also invoked the use of narrower claims to clarify the meaning of the issued broader claims by reliance on the doctrine of claim differentiation:
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.
The Federal Circuit dismissed concerns that the public would be disadvantaged by subsequent addition of narrower claims, since that was already addressed by the equitable intervening rights statute (35 U.S.C. § 252).Judge Dyk dissented with the majority. He opined that none of the cited cases squarely addressed the issue at hand. Judge Dyk relied on the Supreme Court decision in Gage v. Herring, 107 U.S. 640 (1883) to find support for the Patent Office’s position that if the original claims are maintained, there is no adequate error for a reissue application:
The applicants here attempt to do virtually the same thing as in Gage. By retaining the original claims without alteration or amendment, the applicants have admitted that there was no error in the original patent. The fact that no error is being corrected here, as in Gage, makes reissue unavailable in this case.
Judge Dyk’s dissent also found that the present case lacked proper surrender of the original patent:
Here, the addition of the dependent claims has no impact on the applicants’ rights under the original patent. The original claims were not changed, and the addition of new claims has no effect on the applicants’ rights under the original claims. The applicants effectively attempt to retain their rights under original patent while securing a second patent which covers the subject matter of the dependent claims.
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.
Regardless of whether you agree with the majority or the dissent, this decision does provide the patent owner another avenue of correction of patent rights and an attempt to maintain a claim of past damages via preservation of the original patent claims. To avoid past damages, the burden is on the defendant to prove invalidity of any original claims that may be infringed and to show “substantive amendment“ of the originally claimed subject matter in any newly added narrower claims that might survive invalidity and yet still at least arguably be infringed.