In re Tanaka.

• Decision Date: 15 April 2011
• Docket Number: No. 2010–1262.,2010–1262.
• Citation: 98 U.S.P.Q.2d 1331,640 F.3d 1246
• Parties: In re Yasuhito TANAKA.
• Court: U.S. Court of Appeals — Federal Circuit

640 F.3d 1246

98 U.S.P.Q.2d 1331

In re Yasuhito TANAKA.

No. 2010–1262.

United States Court of Appeals, Federal Circuit.

April 15, 2011.

Charles Gorenstein, Birch, Stewart, Kolasch & Birch LLP, of Falls Church, VA, argued for appellant. With him on the brief were Robert J. Webster and Michael B. Marion.Benjamin D.M. Wood, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for appellee. With him on the brief were Raymond T. Chen, Solicitor, and Nathan K. Kelley, Associate Solicitor.R. Carl Moy, William Mitchell College of Law, of St. Paul, MN, for amicus curiae William Mitchell College of Law Intellectual Property Institute.Carter G. Phillips, Sidley Austin LLP, of Washington, DC, for amicus curiae Merck & Co., Inc. With him on the brief were Jeffrey P. Kushan and Peter S. Choi. Of counsel on the brief was Edward W. Murray, Merck & Co., Inc, of Rahway, NJ.Henry C. Dinger, Goodwin Procter LLP, of Boston, MA, for amicus curiae Teva Pharmaceuticals USA, Inc. With him on the brief were Frederick H. Rein and Eric H. Yecies, of New York, NY.Before BRYSON, LINN, and DYK, Circuit Judges.Opinion for the court filed by Circuit Judge LINN.Dissenting opinion filed by Circuit Judge DYK.LINN, Circuit Judge.

Yasuhito Tanaka (“Tanaka”) appeals from a precedential decision of the Board of Patent Appeals and Interferences (“Board”) holding that a reissue application that retains all of the original patent claims and adds only narrower claims does not present the type of error correctible by reissue under 35 U.S.C. § 251. See Ex parte Yasuhito Tanaka, No.2009–000234 (B.P.A.I. Dec. 9, 2009) (“ Decision ”). Because the Board's determination is contrary to longstanding precedent of this court, this court reverses and remands.

Background

U.S. Patent No. 6,093,991 (“the '991 patent”) issued on July 25, 2000, with independent claim 1 and dependent claims 2–7. It describes an “alternator pulley” that uses a one-way clutch to improve the power generation efficiency of an automobile's alternator. Exactly two years after its issue date, Tanaka filed reissue application Serial No. 10/201,948 (“the '948 application”) in the United States Patent and Trademark Office (“PTO”) seeking to broaden the scope of independent claim 1 of the '991 patent. Tanaka's declaration in support of the broadening reissue stated that “the originally-presented claims did not adequately define the invention because they were more specific than necessary” and thus “the claims of the original patent cover less subject matter than we were entitled to claim.” J.A. 447.

Over the course of prosecution of the reissue application, Tanaka gave up his attempt to broaden claim 1 and instead presented for reexamination unamended original claims 1–7 and new claim 16, dependent on claim 1. On September 24, 2007, Tanaka submitted a substitute reissue declaration stating that “because I did not fully appreciate the process of claiming according to U.S. practice, I did not realize that I had claimed more or less than I was entitled to claim” and “the originally presented claims did not adequately define the invention because they were more specific than necessary.” J.A. 219–20.

On October 10, 2007, the examiner rejected claims 1–7 and 16 with the following explanation:

The nature of the defect is that the error specified in the oath filed 9/24/2007 is not an error correctible by a reissue. The Applicant has not specified an error that broadens or narrows the scope of the claims of issued patent 6093991. The original claim 1 remains in the current reissue application, therefore the broadest scope of the patent remains the same.

J.A. 207. This rejection was made final and Tanaka appealed to the Board.

In a precedential opinion with a panel of seven judges, the Board affirmed the examiner's rejection. The Board found no controlling authority to guide resolution of the precise question at issue: whether the examiner “erred in determining that the presentation of a narrower claim in a reissue application that still contains all of the original patent claims does not present the type of error correctible by reissue under 35 U.S.C. § 251.” Decision at 5. Interpreting the language of § 251 itself, the Board held that the statute “disallow[s] reissue applications that simply add narrow claims to the reissue patent when no assertion of inoperativeness or invalidity for the reasons set forth in § 251 can be made by the patentee....” Decision at 24. The Board thus affirmed the examiner's rejection, finding that Tanaka was impermissibly seeking an additional claim on reissue “in order to hedge against the possible invalidity of one or more of the original claims.” Decision at 19–21.

Tanaka timely appealed. This court has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

Discussion

In the absence of disputed facts, this court reviews the legal question of whether an applicant satisfies the statutory requirements of 35 U.S.C. § 251 de novo. In re Serenkin, 479 F.3d 1359, 1361 (Fed.Cir.2007).

On appeal, Tanaka argues that the Board erred in concluding that reissue is not a remedy available under these circumstances. Tanaka argues that the Board's conclusion is contrary to the binding precedent of this court and is a direct departure from long-established practices of the PTO.

The PTO responds that the Board correctly concluded that reissue is not an available remedy in this case. The PTO asserts that omission of a dependent claim does not render a patent “partially inoperative” under § 251, because the subject matter covered by the dependent claim is necessarily covered by its antecedent independent claim. Nor does the omission of a dependent claim according to the Director, constitute “claiming more or less than the patentee had a right to claim in the patent” as required by the statute. The Director argues that because binding precedent makes clear that “claiming more or less” in § 251 refers to the scope of protection afforded by the patent, an additional dependent claim neither adds to nor detracts from the scope of protection afforded by the original patent. Because Tanaka's purported error is neither one of overclaiming nor underclaiming, the PTO contends that it is not a claiming error cognizable under § 251 and that there is no support for applying § 251 beyond its literal scope in this case.

This court concludes that the Board's determination is contrary to longstanding precedent of this court and flies counter to principles of stare decisis. Section 251, which governs the reissue of defective patents, provides in pertinent part:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

35 U.S.C. § 251 (emphases added).

As interpreted by this court, the reissue statute imposes two requirements for properly invoking the reissue process. First, the original patent must be “wholly or partly inoperative or invalid.” Hewlett–Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1564 (Fed.Cir.1989). Second, “the defective, inoperative, or invalid patent” must have arisen “through error without deceptive intent.” Id. at 1565. There is no dispute in this case that any defect arose without deceptive intent.

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, 50 CCPA 918, 312 F.2d 943, 946 n. 2 (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)). Judge Rich added that because the original patent claims were all retained in the reissue application the “term ‘less' [in Handel's reissue declaration] appears to have been used in the sense of fewer claims than he could properly have made, rather than in the statutory sense of subject matter included within the claims.” Id. at 946 n. 2 (emphasis in original). 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. While this court has since characterized that view as dictum, it has not departed from it.

For example, in In re Muller, 57 CCPA 748, 417 F.2d 1387 (1969), the Court of Customs and Patent Appeals reversed a rejection under § 251 of a reissue application that included all of the original patent claims and four...