Takeaways:
- Claim construction for determining whether reissue claims are improperly broadened is based on fundamental claim construction cannons and not applicant intentions.
- Patent Owners should check patented claims before two years have passed after issuance in case claims need to potentially be broadened to match original drafting intentions.
Reissue is a powerful tool for patent owners to fix and potentially broaden claims of patents. Under 35 U.S.C. § 251(d), a patent owner can use reissue to broaden claims within two years of grant of the original patent. If a patent owner attempts to broaden claims after two years have passed, however, the broadened claims will be rejected. Whether the reissue claims are broader than the original claims “is a matter of claim construction.” ArcelorMittal France v. AK Steel Corp., 786 F.3d 885, 888 (Fed. Cir. 2015). Examiners and courts do not take into account the Applicant’s subjective intent on what the claims should have meant. See Chef Am., Inv. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).
The Federal Circuit in In re Kostic, 23-1347 reaffirmed that the question of whether reissue claims are broader than the original claims should be answered by “comparing the scope of a reissue claim to the actual scope of an original claim, rather than what the inventors subjectively intended to claim.” Slip Op at 11. This concept has been previously affirmed in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996) and Chef Am.
In Kostic, the claims related to a process of conducting a trial of click-through traffic before starting a bidding process to sell click-through traffic. Independent claim 1 included a limitation about the “pre-bidding trial.” Original claim 3 depended upon claim 1 and recited conducting the bidding process without a trial process. The patent issued in July 2013.
In October 2019, patent owner filed a reissue application stating the error was that “[d]ependent claim 3 fails to include limitations of claim 1 from which it depends.” Slip Op at 4. Patent owner drafted reissue application claim 3 into independent form and removed the limitations relating to conducting the trial process.
The Examiner rejected the reissue application, “finding that it was a broadening reissue application outside the permissible two-year period.” Slip Op at 5. Patent owner amended reissue application claim 3 to offer the pre-bidding trial process as an option. But the Examiner again rejected the reissue application as an improperly broadening. The PTAB affirmed the Examiner’s rejection on appeal, and the PTAB was affirmed by the Federal Circuit.
At the Federal Circuit, the patent owner argued that the proper question on whether the reissue claim is broader than the original claim is “whether the scope of reissue claim 3 is broader than the ‘intended scope’ of original claim 3.” Slip Op at 10. The Federal Circuit rejected this position, pointing to previous decisions where a similar argument was rejected. See Slip Op at 10-11. The Federal Circuit further pointed to the purpose and history of 35 U.S.C. § 251(d), highlighting that “[t]he bar on broadening reissues was created to protect ‘mechanics and manufacturers, who had just reason to suppose that the field of action as open.’” Slip Op at 11 (citing Miller v. Brass Co., 104 U.S. 350, 354-55 (1881). Thus, relying on subjective intent of what the inventors wanted to claim would prejudice competitors who relied on the original scope of the patented claims. Slip Op at 11. The Federal Circuit concluded that “we look to the actual scope of the claim-at-issue, not the subjective intended scope of the inventors” when determining whether a reissued patent broadens the scope. Slip Op at 12.
Turning to the reissue claim 3, the Federal Circuit affirmed that, by eliminating the need to conduct the pre-bidding trial process, the reissue application was improperly broadening the patent. Making the claimed trial process optional was still broader than the original claim that required it. Therefore, the Court held the reissue application was properly rejected.
In the end, applicants and inventors need to take care that their claims properly capture the intended scope of the inventors. If this consideration is missed before or during prosecution, patent owners need to set reminders to check if the patented claims have the inventors intend before the two-year broadening date passes. Patent owners must act quickly to correct these errors to protect their intended scope.
