Reissue/Reexamination Defects

  • Improper Purpose For Reexamination Claim Amendment May Invalidate Claim: Southwestern Bell (Fed. Cir. 05/27/08) (non-precedential) (amended claims invalid because amended not in light of prior art raising a substantial new question of patentability but rather to address an adverse claim construction in a district court action.)
  • (Pre-AIA) Reissue Requires Error Without Deceptive Intent: Proof of deceptive intent must be as rigorous as in context of inequitable conduct. AstraZeneca (Fed. Cir. 12/14/12).
  • Filing Terminal Disclaimer (So That Patent Not Enforceable When Not Co-Owned) Was Not “Error” Correctable By Reissue: There is “no deficient understanding behind a choice” (suggesting an “error”) when applicant files terminal disclaimer where it does not deny knowing that patent and application were separately owned. In re Dinsmore (Fed. Cir. 06/10/14); cf. Fleming (Fed. Cir. 12/24/14) (reissue-suitable error when applicant “failed to appreciate the full scope of his invention and the inadequacy of the original claims for properly capturing the full scope.”)
  • May Not Merely Add Narrower Claim In Reissue As a Hedge Against Possible Invalidity Of Issued Claims: In re Tanaka (BPAI 12/09/09) (reissue requires that patent is partially inoperative).
  • “Original Patent Requirement”: Reissue Must Be For “Same Invention” As Disclosed In Original Patent: “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’” 315 U.S. at 676. Rather, the Spec. must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares (Fed. Cir. 11/17/14) (declaring patent invalid on appeal from preliminary injunction denial, citing S. Indus. Chem. (U.S. 03/30/1942).)