Broadening Reissue, Reexam, IPR Or PGR (Secs. 251, 305, 314, 316, 326)

  • BASICS: “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.” 35 U.S.C. § 251. Claim-by-claim analysis. Arcelormittal II (Fed. Cir. 05/12/15) (all but two reissue claims invalid for broadening). Generally, a reissue is available to correct an error made by the patentee. Any claim sought in a reissue filed after two years from the grant of the original patent is invalid if broader than the original claim. Reexamination may not broaden claim. Id. §§ 305, 314. “Whether amendments made during reissue enlarge the scope of the claim, and therefore violate § 251, is a matter of claim construction, which we review de novo, while giving deference to subsidiary factual determinations.” Arcelormittal II (Fed. Cir. 05/12/15) (citing Teva).
    • AIA: No amended claim in IPR or PGR may enlarge scope of the claims. 35 U.S.C. §§ 316(d), 326(d) (AIA).
  • For Reissue To Validly Contain A Broadened Claim, The Reissue Application Must Have Been Filed Within Two Years Of Patent Grant And With Some Broadened Claim In It: A reissue application or continuing reissue application may add broadened claims after the two-year limit even if those broadened claims are unrelated to the broadened claims filed within the two-year limit. In re Staats (Fed. Cir. 03/05/12); In re Doll (CCPA 01/08/70) (if reissue application is filed within two years of original grant, claims filed more than two years later are permitted even if broader than original claims and “the broadening reissue claims originally submitted,” without addressing whether necessary that any broadening claims must be filed within two years of grant); In re Graff (Fed. Cir. 04/14/97) (aff’g rejection of broadened reissue claim where reissue application was filed within two years of original grant but without any broadened claim, and broadened claim was added more than two years after original grant).
  • Claim Is Broadened If It Covers Something Different: “A claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent. A reissue claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects.” Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987); accord Arcelormittal II (Fed. Cir. 05/12/15) (independent claim broadened, even without being amended, by addition of dependent claim with range broader than original claim had earlier been construed to cover); In re Cuozzo (Fed. Cir. 02/04/15) (2-1) (applying same test to inter partes review), rehearing en banc denied (Fed. Cir. 07/08/15) (6-5); new panel opinion (Fed. Cir. 07/08/15), aff’d on other grounds (U.S. 06/20/2016); In re Reiffin (Fed. Cir. 07/27/09); Sisvel (Fed. Cir. 09/01/23) (non-precedential) (aff’g PTAB that proposed substitute claim replacing “based on” with “using” broadened claim because conceivable cover something original claim did not); see also Brady Constr. (Fed. Cir. 08/15/08) (non-precedential) (invalidating reissue claim that required (among other things) a stud having at least one hole (but having no restriction that the hole be pre-existing) where original claim required pre-existing hole); In re Bennett (Fed. Cir. 06/28/85) (en banc) (“‘Conveyor means’ is broader in scope than ‘a continuously running, in operation, conveyor belt’.”).

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