In re Yasuhito Tanaka – Addition of Narrower Claims is Appropriate Basis for Reissue

By Jason Rantanen

In Re Yasuhito Tanaka (Fed. Cir. 2011) Download 10-1262
Panel: Bryson, Linn (author), Dyk (dissent)

Patent No. 6,093,991 issued to Yasuhito Tanaka in 2000.  Two years later, Tanaka filed a reissue application seeking to broaden the scope of independent claim 1.  During the reissue proceeding, Tanaka gave up the broadening attempt, instead presenting unamended claims 1-7 and new claim 16 depending from claim 1. 

The examiner rejected claims 1-7 and 16 on the ground that, because Tanaka's declaration did not specify an error that broadens or narrows the scope of the claims of the issued patent, there was no error correctable by reissue.  A seven judge panel of the Board of Patent Appeals and Interferences affirmed the examiner's decision in a precedential opinion, concluding that 35 U.S.C. § 251 "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" and 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.'"  Slip Op. at 4 (quoting Board decision).  

Majority: Addition of Narrower Claims is Permitted
On appeal, Judges Linn and Bryson disagreed with the Board's holding.  Drawing upon a rule articulated in dicta by Judge Rich in In re Handel, 312 F.2d 943, 946 n.2 (CCPA 1963), an implication of the rule in In re Muller, 417 F.2d 1387 (CCPA 1969), and an assumption of the rule in Hewlett-Packard Co. v. Bausch & Lomb, Inc., 822 F.2d 1556 (Fed. Cir. 1989), the majority held that longstanding precedent and the principles of stare decisis permit patent applicants to file a reissue application solely to add additional claims:

Even though the rule that adding a dependent claim as a hedge against possible invalidity is a proper reason to seek reissue has seemingly never been formally embodied in a holding of this court or its predecessor, articulation of the rule in Handel was not simply a passing observation—it was a considered explanation of the scope of the reissue authority of the PTO in the context of a detailed explanation of the reissue statute. Based on this court’s adoption of that rule and its adherence to the rule in both Muller and Hewlett-Packard, this court rejects the Board’s contrary ruling.

Judge Dyk's Dissent
Rejecting the majority's shaky reliance on Handel, Muller, and Hewlett-Packard, Judge Dyk instead pointed to even older precedent – a nineteenth century Supreme Court decision – that, in his view, rendered reissue unavailable when nothing in the original patent was being corrected.

It is plausibly suggested that ‘the claim could be made perfect in form, and consistent with the description of all that portion of the apparatus which relates to the invention, by simply striking out the letter of designation for the upper chest, J, and the letter of designation for the conveyor shaft of that chest, K.’ But that the inventor did not and does not intend so to amend his claim is conclusively shown by his having repeated the same claim, including these very letters of designation, in the [retained] claim of the reissued patent. His attempt is, while he retains and asserts the original claim in all particulars, to add to it an-other claim which he did not make, or suggest the possibility of, in the original patent . . . .

To uphold such a claim . . . would be to disregard the principles governing reissued patents, stated upon great consideration by this court at the last term in the case of Miller v. [Bridgeport] Brass Co., 104 U.S. 350, and since affirmed in many other cases.

Dissent, quoting Gage v. Herring, 107 U.S. 640, 645 (1883) (emphasis added by Judge Dyk).  In Judge Dyk's view, Gage thus foreclosed the ability of applicants to retain the original claims without alteration or amendment, or at a minimum created enough conflict with the cases cited by the majority that the court was free to address the issue on the merits.  

Comment: As both the majority and dissent seem to implicitly recognize, neither is on particularly solid ground in terms of prior decisions.  The majority relies on a rule that it itself admits is dicta, but nevertheless characterizes as the product of longstanding precedent.  The dissent foundation's is even less stable, being built on vague language from an opinion that involved an earlier version of § 251.  It is not at all clear from Gage that the Court was concerned with the mere addition of a new claim or instead with the addition of a broadening claim, although after reading Gage I think the majority has the more correct interpretation.  In the end, though, the majority supports its opinion not just with citation to Handel, but also with reasoning sufficient enough to provide an independent basis for the ruling.

96 thoughts on “In re Yasuhito Tanaka – Addition of Narrower Claims is Appropriate Basis for Reissue

  1. simply file a “no defect” Tanaka-style reissue application

    somebody’s still in a 2D circle…

  2. TINLA The defect [in a broadening reissue] is not one of invalidity or the like. It’s just a failure to claim all subject matter to which the patentee is entitled. That’s why the PTO forms didn’t even require that a defect be alleged for broadening reissues.

    A better question to ask is: why did the USPTO begin requiring applicants to state the defect when applying for a broadening reissue, and with increasing specificity in recent years? Was it because someone at the USPTO hates patents? Or was there some other reason? Maybe something to do with determining specificallyh what the applicant deems the defect to be and how he/she intends to fix the defect, and putting the public on notice? You know, arbitrary and capricious stuff like that.

  3. MM, I think we are in agreement that Tanaka means that patentees seeking reissues of any sort need no longer allege any kind of defect, except that the patent is partly inoperative by failing to protect the disclosed invention to the full extent allowed by law. The patentee’s oath will merely need to be that this filure was not intentional.

    We are in agreement on this point, TINLA. I also agree with your implicit understanding that it would be silly to file any reissue for the purpose of narrowing an independent claim if you can simply file a “no defect” Tanaka-style reissue application.

  4. TINLA I don’t see how you can keep a straight face while asserting that the independent claim that technically covers an infringing device under its scope provides protection of value equal to a narrower claim that recites the valuable feature that turns out to be the cause for the success of the infringing device.

    I don’t see how I could keep a straight face while saying that either. Perhaps that’s why I never said such a thing.

    What do you mean by “protection of value”? I don’t see any mention of “value” in the statute. Either the patent is deemed to be partly inoperative or it isn’t. A claim that covers a device is fully operative for the purpose of protecting that device … unless the claim is deemed to be invalid, of course, in which case the applicant who deems the claim to be invalid should be fixing that claim and not filing dependent claims just because he/she suddenly realizes that they are nice to have (after failing to file a continuation application).

  5. TINLA Unlike you, I welcome this change, becasue it allows Applicants part of the fair chance they deserve to respond to changes in the law.

    Give an example of a “change in the law” which would render an original claim inoperative AND which could only be fixed by adding a dependent claim. I don’t think you can do it.

  6. I think we are in agreement that Tanaka means that

    Mighty big assumption there TINLA – and far far too generous, as Sunshien has indicated no understanding at all of what you post.

    You a natural glass-half-full kinda guy?

  7. MM, I think we are in agreement that Tanaka means that patentees seeking reissues of any sort need no longer allege any kind of defect, except that the patent is partly inoperative by failing to protect the disclosed invention to the full extent allowed by law. The patentee’s oath will merely need to be that this filure was not intentional.
    Then they can amend willy nilly within the first two years, so long as they do not attempt to claim new matter or recapture subject matter that was affirmatively surrendered on the record. After that two years, they also can’t broaden claims or add claims broader in scope than those originally allowed.

    Unlike you, I welcome this change, becasue it allows Applicants part of the fair chance they deserve to respond to changes in the law. I imagine you must work in-house responding to demand letters, and this decision makes your job harder, because changes in the law have been your most powerful weapon in fending off such threats.

    Unfortunately, Applicant’s affirmative surrenders of subject matter that turned out later to be recognized as unnecessary cannot be fixed in reissue, and that’s too bad.

  8. lolz – ya forgot about the without deceptive intent part (amongst other thngs your little 2D mind cannot comprehend).

  9. Feel free ta actually put something down of more substance

    LOL. Go f yourself, pingaling. You’re a sad, broken record.

  10. “It’s been the case for years, by the way, that you can’t fix the failure to traverse a restriction requirement or file a divisional by filing a reissue application seeking to add the claims that were not pursued in the parent.”

    I’m not talking about that circumstance, where the subject matter was abandoned, and it can’t be unintentional or through error as required by the statute.

    Let’s say the spec enablingly describes A+B+C, A+B+C+D, and A+B+D, and the issued claim is to:

    1. A+B+C.

    Can a narrowing reissue be filed to add D to claim 1? Of course, right?

    Can a broadening reissue be filed within two years to move the limitation of C to a dependent claim? Of course, right?

    During that broadening reissue, can other dependent claims be added for the limitation of D? Seriously, I want to know what you think, since you have compared that to failure to file a divisional or traverse a restriction. And if you think it can’t be done, then how can the narrowing reissue to add D to claim 1 be performed? Do you think that Applicants can only move dependent claim limitations up into independent claims in a reissue?

    Presuming that we are in agreement that the Applciant can add D to claim 1 in a narrowing reissue, then what is the supposed “defect” that you think has to be alleged for the broadening reissue that results in a dependent claim effectively reciting the invention of A+B+C+D? Only that the Applicant claimed less than he had a right to claim, right? The defect is not one of invalidity or the like. It’s just a failure to claim all subject matter to which the patentee is entitled. That’s why the PTO forms didn’t even require that a defect be alleged for broadening reissues.

    Now look at 251. The two year time limit requires that claims not be broadened after 2 years. It does not say that the claims have to be narrowed. So basically, we are talking about a “non-broadening reissue” as opposed to a “narrowing reissue.” Maybe we should start calling all reissues either “broadening” or “non-broadening” to be more accurate, and avoid this confusion. And the defect in the claims is not that the claim scope is less than the applicant had a right to, but that there was a failure to claim all subject matter.

    And I don’t see how you can keep a straight face while asserting that the independent claim that technically covers an infringing device under its scope provides protection of value equal to a narrower claim that recites the valuable feature that turns out to be the cause for the success of the infringing device. The fact that the damages will be world’s apart for these two claims should shed light on the fact that the absence of that valuable limitation in a dependent claim results in the applicant claiming less subject matter than he had a right to claim.

    The failure of the PTO oath forms to accurately track the law does not change the law here any more than it did in the copyright registration of electronic compilations, where it turned out that following the USPTO’s instructions led to ineffective registrations.

    After this, I don’t see why any defect has to be alleged at all for so-called “narrrowing reissues.” Why would any applicant narrow the independent claim when they can just add dependent claims?

  11. I believe the reasoning in the case is poor, to say the least

    Glad you think so highly of yourself and your insubstantial handwaivy thingiees. Feel free ta actually put something down of more substance, and on your next Med trip, please let Judge Rich know how ya feel.

    is therefore non-responsive

    Um, no. Just because you and your royal bad self don’t agree with the response does not mean that there is no response (yet another of the 2D man little mind drawbacks).

    once or month or so you do manage to articulate a thoughtful comment

    Lolz – ya gonna havta let me know, cause if you think it be thoughtful, Iza need to double check for errors.

  12. It is an indisputable fact every claim “is vulnerable” to a validity attack. Therefore, every/b> claim is “partly inoperative.” Therefore, every patentee is entitled to reissue his or her “inoperative” patent simply by asking for it.

    Effectively, this is the holding in Tanaka. I’ve re-pasted it here so it isn’t lost in pingaling’s train wreck.

  13. ping, I know you are DAAFR but let me set you straight about something very fundamental that you seem to be confused about: I don’t agree with the holding in this case and I believe the reasoning in the case is poor, to say the least.

    Telling me to “read the case and see why” the majority reached their result is therefore non-responsive and, quite frankly, more than a bit idi0tic on your part. Again, that’s not a surprise at this late date but it remains disappointing because once or month or so you do manage to articulate a thoughtful comment.

  14. Lolz – yet another classy response.

    Just because you dont see the substance in the self-agrandizing (and website-pumping) effects of internal linking does not mean that such dont exist or are not of substance (hey, I dont hold this against the big D – it just be a tool ta be used – it aint a value-judgment).

    How like you to put down that which you are clueless about.

    Realizing tha my playful banter has more substance than you in all your serious-selfpompASSness will ever have must drive you to swear.

    O wait – it already does.

  15. lolz – ya started reading, but ya still be trapped in your own little 2D mind.

    Your innate response to the sensation of being trapped?

    A religious putdown (what, no cancer survivors or Parkinson sufferers around?).

    Stay classy San Diego.

  16. Sunshine “claims’ dust, but cannot see the difference between “claims” and “Claim Scope”.

    An added claim can be lesser in Scope. One can add and not broaden scope. One can add and particularly differentiate in a dependent claim.

    Again Sunshine, have ya bothered ta actually read teh case yet?

    The error of “claiming less” is, quite plainly, the error that leads to a broadening reissue.” Quite plainly, you are still confused in your inability to grasp the actual situation of the case.

    If so, then the original patent is wholly operative, end of discussion

    Clearly wrong – read teh case to see why.

    missing the key point which is that the statute requires that the original patent be deemed at least partly inoperative.

    And without reading the case you are missing the key point that a dependent claim – different in scope is fully and legally allowable to be added. You cannot get out of your own way with the scope/claim conflation in your little mind.

    It’s like watching a 2D man trapped within a circle in the plane of a sheet of paper. “I am stuck inside this circle” exclaims the 2D man, not realizing that the real world has three dimensions and that by simply rising out of the 2D plane, the man escapes not only the circle, but his own limited mind.

    by the by – the restriction nonsense Sunshine spouts is also captured in the actual case. If Sunshine spent even a fraction of his time spent spouting and tilting in reading the case, he would quickly realise just how foo_lish his posts are.

  17. From page 9 of the opinion:

    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.

    This is an amazingly weak and circular argument. Talk about hand-waving. Look where it gets us.

    It is an indisputable fact every claim “is vulnerable” to a validity attack. Therefore, every/b> claim is “partly inoperative.” Therefore, every patentee is entitled to reissue his or her “inoperative” patent simply by asking for it. This may be the CAFC’s most Catholic patent decision ever. ;)

  18. Something O substance? Like your comment to DC this morning:

    Great post in so far as the opportunity to self quote is amply provided for.

    Drive those numbers up baby !!

    Go f yourself, ping.

  19. I think your point is that the condition that the claims are partly inoperative becasue they claim less than the applicant had a right to claim

    Sorry, no. You are eating the dust that ping picked up.

    The error of “claiming less” is, quite plainly, the error that leads to a broadening reissue. Everybody on earth knows this and if you have any doubt just look at any reissue oath filed in the last, oh, twenty years by an applicant seeking a broadening reissue. Nobody seeking a broadening reissue says “My patent is partly inoperative because I erroneously claimed more than I should have. Therefore, I want to file a broadening reissue.”

    But what if the applicant wants to add a claim to another invention disclosed in the application but not explicitly claimed, even though one or more claims are broad enough in scope to provide some protection?

    What do you mean by “some protection”? If a competitor manufactures this “other invention” disclosed in the application, is it covered by the original claims? If so, then the original patent is wholly operative, end of discussion. If the original claims do not cover this “other invention” and you want to fix that, then you need to file a broadening reissue.

    So you seem to be saying that when the defect is that the claims claim less than the Applicant had a right to claim, that means that the independent claims must be too narrow, and Applicants filing under this condition are performing a broadening reissue.

    Again, check the reissue oaths filed at the USPTO for broadening reissues. It’s not just me that’s saying this. This is what everybody says … because the alternative makes no sense whatsoever, as I explained above.

    Can there be no possibility in your view that the “less” language does not necessarily mean claim scope and only claim scope?

    By focusing on this “less” claims issue, you are missing the key point which is that the statute requires that the original patent be deemed at least partly inoperative. The applicant MUST, therefore, recognize a defect in the original claims that would prevent them from being found valid or enforceable. Since when does adding a dependent claim fix an existing, known defect in an independent claim? I understand that such claims can provide insurance IF the independent claims LATER turn out to be invalid as non-enabled, vague, anticipated, or non-obvious. But such a potential exists for all claims. Are all claims, then, “partly inoperative”? Really?

    It’s been the case for years, by the way, that you can’t fix the failure to traverse a restriction requirement or file a divisional by filing a reissue application seeking to add the claims that were not pursued in the parent. In light of the reasoning (LOL) in this case, what possible policy reason could there be for preventing an applicant from pursuing such abandoned subject matter?

  20. Funny, no response to the fact that Giles Rich be in my camp on this.

    O wait, that would entail his highness Sunshine ta actually be informed. Silly me.

  21. Big D – OT, just a be otch on the software you have in place – it appears that broken tags do additional damage in replies to the broken tag (slicing certain tagged portions of a response), or simply not enabling a response directly to a broken tag item.

    Just a helpful observation.

  22. Sorry, pingaling. You never answered the question. What IS “inoperative” about the original claims in a Tanaka-style reissue?

    WRONG – I done told ya ta read the decision. Onviously, it be beneath ya to actaully be informed on teh matter.

    Have ya read teh decision yet? Should I have someone read it to you? (in case there are too many words with more than two syllables – ya know, words that might force you to do mental gymnastics)

    Try especially ta understand the concept on page 9 re “inoperative” – yeah in the present tense, and what it means as to “full extent of the law” – yeah in the present tense.

    And dare I ask ya to answer with something O substance instead of your usual handwaivy fluffy answers…?

  23. MM said: “If all you are doing in the reissue is adding dependent claims, then quite obviously you must believe that there is no defect in the original claims.

    Right? You appear to agree that the statute certainly does require a “deeming” that the patent is (NOT “will be”) “partly or wholly inoperative” and that it’s the applicant who is doing the “deeming.” So at any given moment, a possible applicant for reissue may “deem” his/her patent either operative or, alternatively, at least partly inoperative.

    Clearly, if all of the original issued claims are “deemed” operative by the applicant, then adding dependent claims accomplishes absolutely nothing”

    Just to make sure I understand your point, I think your point is that the condition that the claims are partly inoperative becasue they claim less than the applicant had a right to claim cannot be satisfied merely by adding dependent claims, because no claim of broader scope than those already in the patent can be achieved simply by adding dependent claims. So you seem to be saying that when the defect is that the claims claim less than the Applicant had a right to claim, that means that the independent claims must be too narrow, and Applicants filing under this condition are performing a broadening reissue.

    But what if the applicant wants to add a claim to another invention disclosed in the application but not explicitly claimed, even though one or more claims are broad enough in scope to provide some protection? Can’t they do that solely by adding dependent claims, because each and every claim sets forth a different invention, and patent damages are calculated on a claim by claim basis, with claims to more valuable subject matter yielding increased damages.

    Can there be no possibility in your view that the “less” language does not necessarily mean claim scope and only claim scope?

  24. Asked and answered Sunshine.

    Sorry, pingaling. You never answered the question. What IS “inoperative” about the original claims in a Tanaka-style reissue?

    Please try to avoid confusing the present tense (“is”) with the future tense (“will be”) or the unknown (“may be”).

    I understand if this is difficult for you. The temptation for you to kick up dust must be profound. I notice, at least, that’s it seems nearly impossible for you to resist (although this is not unusual for you).

  25. Nor does the ability to speak “normally” or adapt Star Wars scenes make your views any more correct.

    Nuance is lost on you still.

    Have ya bothered to actually read the decision yet, bbb?

    Thought not.

  26. Qui-Gon Jinn: Are you brainless?
    Jar-Jar Binks: I spaake!
    Qui-Gon Jinn: The ability to speak does not make you intelligent. Now get out of here.

  27. I don’t know whether I qualify as a serious reader or not, Max. But I am too serious to have my claim constructions rely on miraculous restorations of sanity.

  28. We are. And yes, I thought that might be. I’m just amusing myself here, teasing out informative answers from serious readers. Thank you Cy.

  29. Perhaps, post-issue, the Doctrine of Claim Differentiation would oblige one to construe “present” in claim 1 as including “absent”, whereby sanity is miraculously restored, with claim 2 indeed narrower than claim 1?

    Or perhaps claim 2 is invalid under 35 U.S.C. 112. Assuming we’re talking about a U.S. patent.

  30. I have to answer bbb at the foot of the thread because it won’t take my answer locally.

    I’m curious whether it really is impossible under all circumstances for a dependent claim legitimately to be “wider” than the independent claim from which it depends.

    Suppose the independent claim recites a product item with a succession of coating layers positively recited to be present, and including an uppermost protective layer.

    Suppose claim 2 recites: Product of claim 1, devoid of said uppermost protective layer.

    I ask because I see this sort of thing in apps for alloy compositions coming out of Japan, where the minor alloying elements are handled like this. And there are quite a few such apps.

    Perhaps, post-issue, the Doctrine of Claim Differentiation would oblige one to construe “present” in claim 1 as including “absent”, whereby sanity is miraculously restored, with claim 2 indeed narrower than claim 1?

  31. bbb,

    You are quite welcome, even though the nuances here obviously escape you.

    I recommend that you too actually read the decision cause what I say be covered there – I recommend page 9. Dwell on it for awhile.

  32. What IS “inoperative” about the claims in a Tanaka-style reissue?

    Asked and answered Sunshine. Have ya read the decision yet, or do ya always spout off without beign informed?

    O wait – this is Sunshine – SOP.

    why isn’t the PTO entitled to require the applicant to state the defect that IS in the patent claims as originally issued (i.e., the defect being corrected).

    Nice straw, no one is saying that no defect is claimed – the decision also covers this. Cmon Sunshine, must I hold your hand all the way through this thing?

  33. Do you even think about this stuff before you write it, Jar Jar?

    “In contrast, claim differentiation is a doctrine that relies on the assumption that since an IC must be broader than its DC, the IC must by implication cover embodiments above and beyond those explicitly recited in the DC.”
    “the fact that a claim depends means that the abov elimitations are in the DC.”

    Where did it say something about limitations? Obviously a dependent claim must have all the limitations of the independent claim. Otherwise, it’d be an improper claim. What you’ve apparently missed is that the independent claim covers embodiments beyond those explicitly recited in the dependent claim.

    Thanks for playing.

  34. ping (and maybe a couple CAFC judges

    Yup – the company I keep – like Giles Rich, whatta crackpot he was, huh Sunshine.

    Hmmm, EG, let’s see, would I rather hang out with Sunshine or Giles Rich on teh Patent Law insight tour?

    That should be an easy decision.

  35. Hmm let’s see the actual stature – “or by reason of the patentee claiming more or less than he had a right to claim in the patent”

    Nope. Nothing be said about “defect in the original claims”
    DEEMED WHOLLY OR PARTLY INOPERATIVE”

    So the original claims must be deemed at LEAST partly inoperative, i.e., defective at least partly, in their operation. That’s plain English, pingaling.

    What IS “inoperative” about the claims in a Tanaka-style reissue? And if the applicant is deeming them so (which he or she must do), why isn’t the PTO entitled to require the applicant to state the defect that IS in the patent claims as originally issued (i.e., the defect being corrected).

  36. the IC must by implication cover embodiments above and beyond those explicitly recited in the DC

    Actually, it be mroe than just mere implication – the fact that a claim depends means that the abov elimitations are in the DC.

    I sure hope that you dont prosecute patent applications your way.

  37. EG,

    For shame – Dien be not on point at all. Not even close. “We are not now considering the merits of the rejection

    You can frown all you want, but as I corrected Ned-O-gram more than once – this aint a “no-fault” reissue.

  38. no defect in the original claims

    Misread much?

    Hmm let’s see the actual stature – “or by reason of the patentee claiming more or less than he had a right to claim in the patent

    Nope. Nothing be said about “defect in the original claims” – nice goal post moving equipment though.

    Right there in the statute lolz.

    adding dependent claims accomplishes absolutely nothing

    Have you even bothered to read the Tanaka case?

    You be full O absolutes – impossible this, absolutely nothing that – yet ya be so wrong.

    And yet again you have the supposition that on intriduced dependent claim somehow harms the independent claim…

    Med Check !!

  39. Me too – just not for the same reasons (Parkinson jokes rank right up there with mocking cancer survivors).

  40. Oh ping, it’s so cute how you think that if you just say it over and over in a jar jar binks voice, it’ll be true.

    Once again, you entirely missed Monkey’s point. I sure hope you don’t prosecute patent applications this way.

  41. ping Please note that the twoyear limitation is explcitly tied to scope and not tied to number of claims.

    Nobody has ever stated otherwise, as far as I know. That’s not what Tanaka is about. But perhaps you’re just not being clear, ping.

    a claim can be added that does not change scope, and adds a narrower claim.

    Again, this is not the issue in Tanaka. Many of us have filed claims in reissues that are narrower than the original filed claims. But there has been a requirement for many years now to state what is the defect in the claims that you are intending to fix by the reissue. That comes right out of the statute.

    If all you are doing in the reissue is adding dependent claims, then quite obviously you must believe that there is no defect in the original claims.

    Right? You appear to agree that the statute certainly does require a “deeming” that the patent is (NOT “will be”) “partly or wholly inoperative” and that it’s the applicant who is doing the “deeming.” So at any given moment, a possible applicant for reissue may “deem” his/her patent either operative or, alternatively, at least partly inoperative.

    Clearly, if all of the original issued claims are “deemed” operative by the applicant, then adding dependent claims accomplishes absolutely nothing (although they could damage an original independent claim if one of the newly added dependent claims is later “deemed” by a court to be non-enabled).

    ping: adding a dependent claim be adding a claim to less,

    This here is the LOL until you cry part. Plain words? Give me a break already.

    Meet pingaling the coffee jerk:

    pingaling: What’ll be, sir?

    Elderly man (with mild Parkinson’s, holding cup out and shaking): Can you please fill up this cup with coffee?

    pingaling: Sure! You hold onto the cup. Steady now! [pours in scalding hot coffee, 4/5 of the way to the brim, then stops] How much more coffee do you want, sir?

    Elderly man: Actually I’d like a little less than this!! My hand is shaky.

    pingaling: Okay dude! [pours scalding hot coffee into the cup, going over the brim and all over the elderly man's hand]

    Elderly man (screaming in agony]: What the #$!& did you do that for?

    pingaling: I first poured in 4/5 of a cup. Then you asked for a little less. So I poured you 3/4 of a cup more.

    Good luck with that explanation in any other court besides the CAFC!!

  42. also – Dien be dicta too, if Iza not mistaken (too lazy to check right now) and conflatin re-exam and reissue be a grave mistake.

    Just an observation.

  43. Malcolm’s suggestion that allowing “hedge” dependent claims in reissues could make the independent claims from which they depend seem broader, and thus violate the “broadening” rule has traction.

    Um, no it dont have traction. That be pure (typical) Sunshine handwaivy stuff.

    Just how do you think “all of a sudden” the intro of a new dependent claim can change the established independent claim is where you lose traction.

    The Fed be only “murky” in that it be dicta – it be exceptionally clear in what it be saying (hint – it be saying that you be wrong).

    my view that the Board’s decision can be justified” Iza pretty sure you do not want to rest on a case that has been overturned. That be a pretty unsettling “rest”.

  44. As you’re likely aware, Malcolm and I often don’t see “eye-to-eye” on many patent issues, which is fine by me. But the fact that he agrees with my analysis here doesn’t mean what I’ve said is wrong. In fact, Malcolm’s suggestion that allowing “hedge” dependent claims in reissues could make the independent claims from which they depend seem broader, and thus violate the “broadening” rule has traction.

    I also didn’t say MPEP 1402 was the same as legal precedent, but was consistent with view taken by the Board. And as Jason correctly points out and as my analysis also noted at the end, the Federal Circuit precedent for adding “hedge” dependent claims in reissue is murky at best.

    Where I hang my hat is the CCPA’s Dien decision which frowned on “no fault” reissue practice (which ultimately spurred our current reexam procedure). In my view, allowing “hedge” claims in reissue is the same or similar to a “no fault” reissue and thus inconsistent with Dien.

    Again, I not going to say that reasonable minds can differ about “hedge” claims. The language in the reissue statute gives me an Excedrin headache every time I look at it. I’m just giving my view that the Board’s decision can be justified. With that, I rest my case.

  45. EG,

    Quite simply, the board got it wrong.

    They decided ta ignore completely teh admittedly dicta portion of the earlier ruling (which by the by was pretty explicit in its view), but never supplied an authority for the view they wanted to press (And you of all people should know that citing ‘downward’ to the MPEP aint gonna cut it).

    Thus, your “appears to be sound” – aint.

    Sides which – ya should know somethins up when Sunshine be all warm and fuzzy with ya.

  46. My little minded Sunshine friend – nuances do escape you, so let me just quote me:

    ping said in reply to Jules…
    “it appears 251 changed at least by addition of the “or less” ”

    And thus the nuanced turning point missed by so many here…

    Apr 20, 2011 at 10:19 AM

    I know it be hard for your little mind to grasp, but adding a dependent claim be adding a claim to less, since by definition a dependent claim be a subset of the independent claim, be a correction of the “less” kind at teh same time that “adding” a claim be a correction of the “more” kind.

    The “deeming” part be that of the applicant and thus, as Tanaka points out the applicant has a defect in the claims of both “more” and “less” – The applicant has the right to claim “less” as in a refined dependent claim that by definition claims less and the error is that this “less” was omitted without deceptive intent and thus a “more” (as in more claims) is necessary in order to “partly inoperative” patent. Please note that the twoyear limitation is explcitly tied to scope and not tied to number of claims. Thus, clearly, a claim can be added that does not change scope, and adds a narrower claim.

    I see why you think this needs somersaults since forcing your little mind ta think beyond its predilictions of windmills, rye fields and naughty professors (and imaginings of dead presidents) is a somersault for ya, but the plain words are what they are.

    Once ya grasp the concept, reread the section 252 and you will see that it all makes abundant sense.

  47. But, on the last point, implicit broadening by adding or deleting dependent claims

    I don’t see how deleting a dependent claim could result in implicit broadening of a claim from which it depends. At the same time, I don’t see how you could obtain a reissue patent that only deleted a dependent claim unless it was a narrowing reissue and you erroneously claimed more than you were entitled to under 112, rather than 102 or 103.

  48. I agree with you on the analysis. This clearly is a brand of no defect reissue. I think, though, they should be allowed if the patent owner submits material new art.

    But, on the last point, implicit broadening by adding or deleting dependent claims, I have heard that from examiners from time to time during reexaminations, but I truly do not even understand where they are coming from. It would be nice if we had at least one court case to explain the concept. However, I have never received an actual rejection based on adding or cancelling dependent claim in a reissue or reexamination.

  49. 35 U.S.C. 251 Reissue of defective patents.
    Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative … by reason of the patentee claiming … less than he had a right to claim in the patent, the Director shall … reissue the patent …

    This is the part of the statute which authorizes a broadening reissue. Until this comment thread, I had never heard of anyone construing that passage to mean “less number of claims”. Indeed, that remains a laughable construction, even after this case.

    ping (and maybe a couple CAFC judges but I doubt many more than that) can do all the somesaults they want but the type of reissue Tanaka sought is, plainly, a “no defect” reissue, i.e., the reissue is neither a narrowing reissue or a broadening reissue with respect to the original patent so presumbably the USPTO requirement about characterizing one’s reissue as such is no longer relevant. The original claims remain absolutely unchanged in scope after a Tanaka reissue. Perhaps the USPTO will require applicants to state that they are seeking a “Tanaka reissue”. Why not?

    At least, applicants better hope that the original claims are unchanged. It seems possible that the addition of dependent claims could, in some circumstances, have the effect of causing the original independent claims to be costrued more broadly than they would have been had the dependent claims not have been added. Such a broadening, if not initiated within two years of issuance, could invalidate the patent, no? Seems more than a bit odd, sure … but the holding in this case is also more than a bit odd.

  50. Yet another failure for the architect of bad policy at the USPTO, John J. Love. See Memorandum dated November 15, 2007 from John J. Love to all Technology Center Directors, “Clarification of Treatment of Reissue Applications That Only Add One or More Narrower Claims”, at link to uspto.gov

  51. ping, slowly, now, I am have a hard time understanding your point.

    Are you suggesting that patents owner should be denied access to the patent office if new prior art potentially renders their claims invalid unless they admit to this proposition in advance? Must they actually state the claims are invalid and amend the claims on filing if they have good arguments that the claims are still patentable over that art?

    I would suggest that the only requirement for such a reissue is that the patent owner actually file an IDS with art that was not earlier before the office and which is arguably more pertinent. The PTO should, in face of such a reissue, simply confirm the patentability of the claims over the new art, or reject oover THAT art, as the case may be. They of course may reject over additional art they discover themselves through a search.

  52. The reissue, when needed, might be the better recourse

    It be an optional recourse – each avenue has its own plusses and minuses.

    We really need a no defect reissue

    Um, no. As esplained here (pay attention now), the defect is in not claiming less. Weza already have what “we need.” Try ta keep up now.

    by missing the nuance, ya be making a mountain out of a molehill.

  53. Some wry Wednesday humor courtesy

    Yup – asking Sunshine to actually give somethin O substance – pretty dammm wry indeed.

  54. “They may be listening to the patent bar rather than the PTO on this issue.”

    I don’t think the PTO would mind if no dependent claims were filed until reissue. That might simplify the examination process, and it might allow them to get the backlog where it needs to be. However, I don’t foresee applicants willingly not filing dependent claims when they can get them for free.

  55. Max, folks keep continuations pending for these purposes — maximum flexibility in face of unforseen prior art and new embodiments, which at times, need the elimination of unnecessary limitations.

    But this is expensive.

    The reissue, when needed, might be the better recourse, just that the focus here is primarily on prior art. Still, if the broader claims are invalid they are still useful while present to add carefully tailored narrow claims without “broadening.”

    I think MM’s problem is not that the PTO gets to reexam patents when they are invalid. I think he wants the patent owner to fess up about it. But that is unrealistic, of course.

    We really need a no defect reissue. The Feds have now given us the way forward. Sign of the time. They may be listening to the patent bar rather than the PTO on this issue.

  56. if the PTO is given enough resources to examine such petitions for reissue diligently and intelligently, where’s the harm Malcolm?

    Some wry Wednesday humor courtesy of MD.

  57. it appears 251 changed at least by addition of the “or less”

    And thus the nuanced turning point missed by so many here…

  58. On the contrary – mu point proven by the cute little red monkey only shows that your understanding of the concept is deficient.

    Iza can lead ya to water, but I cant make ya drink.

  59. The court took a BRI (BUI?) with “operative” relying on a fottnote in Handel. Not to mention they relied on a bunch of dicta under the premise of stare decisis.

    I suppose if this decision goes unchallenged, the precedent will stay this way until the law changes. Speaking of which, it would be nice to know out of curiosity exactly how and why 251 was changed. After scanning Gage (USSC 1883), it appears 251 changed at least by addition of the “or less” language.

  60. I think you are not reading my original post carefully. I said that a DC can broaden the IC via claim differentiation. You seem to think I said a DC can be broader than an IC. That’s different.

  61. In contrast, claim differentiation is a doctrine that relies on the assumption that since an IC must be broader than its DC, the IC must by implication cover embodiments above and beyond those explicitly recited in the DC.

    Cepts that be what I said – and if IC must be broader, than no DC can be broader.

    Ya just proved my point RM

  62. No, an improper DC is one that does not add further limitations to the claim from which it depends.

    In contrast, claim differentiation is a doctrine that relies on the assumption that since an IC must be broader than its DC, the IC must by implication cover embodiments above and beyond those explicitly recited in the DC.

  63. it’s impossible to see how

    Um, no. evidently it is very possible to see how.

    examiners being pretty lax with this

    hmmm, abouts the same laxity that significant new question O patentability is applied.

  64. The Court did say that a dependent claim could broaden the independent claim

    Um, no. That would be an improper dependent claim.

  65. Interesting proposition from MM, but how realistic is it? Most claims are somewhere between “certainly valid” and “certainly invalid”, and nobody knows where. If there is a public interest in valid claims getting respect, what better way to achieve that objective than by allowing patent owners to run to the PTO every time they perceive an infringing embodiment of the broad main claim, to secure the due issue of a narrow claim focussed on that embodiment, and more nearly 100% valid. And if the PTO is given enough resources to examine such petitions for reissue diligently and intelligently, where’s the harm Malcolm?

  66. Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid…

    Still, without admitting that an originally issued claim is invalid (and canceling it), it’s impossible to see how an applicant seeking to add only new dependent claims can credibly assert that the original patent is “partly inoperative” without additional dependent claims. It’s not as if adding dependent claims creates any new potential infriners.

    In fact, those broad claims in the original patent should work just as well as the new dependent claims … unless they are invalid, of course, in which case it would seem to be in the public’s interest for the patentee to admit it.

    entertain me writes: As a side note, I remember examiners being pretty lax with this, if you just asserted some plausible error (like 2-3 sentences) it was enough,

    Not sure how far back your memory goes, but if you take a look at the USPTO training materials on reissues over the past couple of years, you will notice that the days of “pretty lax” examination of reissue oaths were pretty much over … at least, “officially” …

  67. Not published elsewhere, but here it is in total:

    BPAI Rules Reissue Improper in Only Adding Narrower Claims as Hedge Against Invalidity

    Reissue practice and reissue oaths are plagued by the tortured language of 35 U.S.C. § 251. Having suffered through 3 related reissues myself, I’ve often referred to this language in 35 U.S.C. § 251 as being something “other than English.” An expanded panel of the Patent Office Board of Appeals and Interferences (Board) in Ex parte Tanaka had to decide whether this byzantine language permitted reissue where only narrower claims were added as a “hedge” against invalidity of the original claims. Their answer was a unanimous and emphatic “NO,” an answer the Federal Circuit and its predecessor, the CCPA, had surprisingly dodged for over 45 years.

    Basically, 35 U.S.C. § 251 provides for reissue where, “through error without any deceptive intention,” the patent is “deemed wholly or partly inoperative or invalid” because the “patentee claim[ed] more or less than he had a right to claim in the patent.” (I did say this language was something “other than English,” didn’t I?) The reissue applicant in Tanaka filed a reissue of U.S. Patent No. 6,093,991 (on an alternator pulley) with new, narrower claims added solely “as a hedge against possible invalidity of the original claims.” The Examiner deemed the reissue oath to be defective under 35 U.S.C. § 251 “because the error identified in the reissue declaration is not an error correctible by reissue.” Put differently, simply adding narrower claims as insurance against invalidity of the original claims was not a valid basis for filing a reissue.

    On appeal, the expanded Board agreed with the Examiner. The expanded Board noted that the Federal Circuit in the 2007 case of In re Serenkin had said that, while 35 U.S.C. § 251 “should be construed liberally, it does not enable correction of every error.” In fact, the BPAI noted a similar fact situation in the 1963 case of In re Handel where the examiner had rejected the reissue oath because the original patent claims were all retained. The Board affirmed but on a different ground (the reissue claims were not for same invention). The CCPA overturned the Board’s ruling in Handel, but then discussed (in a footnote) the examiner’s original rationale for rejecting the reissue oath. The CCPA then added: “[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” (emphasis added).

    Put differently, the underlined language from Handel basically said that what the reissue applicant did in Tanaka was a proper reason for reissue. But what was also clear to the expanded Board in Tanaka was that this language in this footnote from Handel had nothing to do with why the CCPA overturned the Board’s ruling and was therefore dicta. In fact, the Federal Circuit had acknowledged as much in the 1989 case of Hewlett-Packard Co. v. Bausch & Lomb, Inc., where the reissue applicant had also filed three new, narrower claims “as a hedge against the original patent claims being held overly broad.” But once again, the Federal Circuit dodged the “narrower claims as a hedge” issue in favor of holding the reissue in Hewlett-Packard improper because there was no “inadvertent error in conduct” by the patentee.

    The expanded Board also pointed to the 1969 case of In re Mueller as presenting “similar facts.” In Mueller, the examiner rejected a reissue based on adding 4 additional narrower claims which the examiner viewed as an impermissible “recapture” of the non-elected species. The CCPA in Mueller held these added claims didn’t impermissibly “recapture” the non-elected species. But the CCPA was also completely silent on “the issue of whether the failure to present [these] narrower claims was an error correctible” by reissue.

    After noting these various “near misses” by the Federal Circuit and CCPA in determining whether it was permissible to seek reissue solely to add narrower claims as a “hedge,” the expanded Board in Tanaka noted that current version of MPEP § 1402 expressly proscribed such a practice:

    An error under 35 U.S.C. 251 has not been presented where a reissue application only adds one or more claims that is/are narrower than one or more broader existing patent claims without either narrowing the broader patent claim by amendment or canceling the broader patent claim (emphasis in the original).

    As the expanded Board in Tanaka saw it, “the defect in this situation is not the result of the patentee claiming more or less than he had a right to claim in the patent.” In fact, the expanded Board observed the quandary of the reissue applicant in stating the necessary “error” in the substitute reissue oath. Instead, as happened in Hewlett-Packard, the alleged “error” in Tanaka had occurred because the patentee had “included too few claims.” Seeking reissue based solely on adding claims as a “hedge against possible invalidity of one or more of the original claims” would “allow a patentee to simply re-prosecute an otherwise operative and valid patent.” The expanded Board found little difference between that and the prior (and subsequently) dropped “no defect reissue” practice that the CCPA in the 1982 case of In re Dien had criticized as “as permitting a patentee to obtain an advisory opinion without seeking a true reissue of its patent because the patentee did not have to identify a true error in the original patent.”

    In footnote 7, the expanded Board in Tanaka also realized it was not writing on a clean slate either in terms of prior Board decisions. In fact, two prior 3-member Board panel decisions (the 1988 case of Ex parte Larkin, and the 1991 case of Ex parte Parks) had held that adding narrower claims solely as a ‘hedge” against invalidity of the original claims was a permissible basis for filing reissue. But these cases proved to be no impediment as the expanded Board in Tanaka expressly overruled those aspects of Larkin and Parks to the contrary. In conclusion, the expanded Board found “no controlling precedent requiring us to allow” the patentee to correct an alleged “error” based solely on adding narrower claims as a “hedge” against invalidity of the original claims.

    The reasoning in the expanded Board’s opinion in Tanaka appears to be sound. In fact, as the expanded Board astutely noted, allowing the practice of filing reissues with added narrower claims solely as a “hedge” against invalidity of the original claims would do an end run around the “no defect” reissues proscribed by the CCPA in Dien. The reissue applicant in Tanaka may appeal the expanded Board’s ruling, and the Federal Circuit may find something in its murky precedent to permit such “hedge” reissues. But I frankly can’t find any fault with the reasoning (or holding) by the expanded Board in Tanaka.

  68. Lolz Ned – in case ya missed it, the Board was wrong.

    I leave it to you to come up and be wrong, yet want to persevere in a given course.

    The Defect centers around what an applicant by right can claim. That includes (unlimited) claiming less. Adding a claim that claims less is indeed claiming less.

    Just because this also be prophalactic, dont mean it aint kosher.

  69. There are differences between CAFC panels over the years in just how broadly “remedial” the reissue statute is. I think that one of the problems in this area of the law, especially inconsistent CAFC cases on the extent of allowable “broadening” in “broadening reissues,” is due to citations from, or citations from other cases citing, pre-1952 reissue cases. That is, case law made under the prior OLD reissue statute, without any indicated understanding that the old reissue statute had an additional requirement that the subject matter had to have been disclosed and claimed in the original patent. [Language not in present 35 USC 251]. [Some of those CAFC panel members may have just swallowed the story successfully sold to Congress by General Markey, Pat Federico, et al, that their 1952 patent act was a "mere codification of prior patent law," but that was not entirely true.]

  70. Having read the decision of the board, I am in full agreement with the board that allowing a reissue to add dependent claims would be to sanction, in effect, no defect reissues.

    That said, isn’t there something in the present patent reform bill to permit just this — to allow the patent owner to have his patent reexamined over prior art not before the office in the first examination without having to allege that his patent was invalid?

    Obviously, the need exists no defect reissues. Why don’t we just admit it and get on with allowing the practice?

  71. “35 U.S.C. 251 Reissue of defective patents.
    Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative … by reason of the patentee claiming … less than he had a right to claim in the patent, the Director shall … reissue the patent …”

    The statute seems to provide a clearly applicable example of what would make a patent “inoperative.”

  72. Well the simple answer is that if you fix the claims, you go from no infringers to some infringers.

    But that cannot be what the courts mean by broadening, is it?

  73. What if the claim has the McKesson, BMC and Muniauction brand of inoperativeness and the reissue is an attempt to fix that?

    If you do it within the first two years then I think this would be a fine “error” to cite as justification for the re-issue – even better than Tanaka’s. After that, you might have an issue with whether your new claims are broadening. Or you might not.

  74. In relevant part:

    “Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid…”

    As a side note, I remember examiners being pretty lax with this, if you just asserted some plausible error (like 2-3 sentences) it was enough, but many applicants and patent attorneys seemed to be unaware of this (or perhaps unwilling). That being said, the recapture issue always seemed like a bigger deal.

  75. I think the issue here has to do with the word “inoperative.” This word is linked by the word “or” with the word “invalid” in the statute.

    I suspect the PTO position is that one must allege the patent is “invalid,” which might suggest that one has to narrow the claims if there is no problem in the specification or drawings.

    But “inoperative” is not clearly defined in the law. What does this mean?

    What if the claim has the McKesson, BMC and Muniauction brand of inoperativeness and the reissue is an attempt to fix that?

  76. Jason, it would be helpful if you could link to the expanded board decision as well. Their thinking might help us understand the issues here better.

  77. In the end, though, the majority supports its opinion not just with citation to Handel, but also with reasoning sufficient enough to provide an independent basis for the ruling.” I agree

  78. Jason,

    I had written a short article on the Board decision and felt it was on solid legal and logical footing in view of the CCPA’s 1982 decision in In re Dien. The CCPA in Dien criticized the prior (and subsequently) dropped “no defect reissue” practice by the USPTO “as permitting a patentee to obtain an advisory opinion without seeking a true reissue of its patent because the patentee did not have to identify a true error in the original patent.” But I also commented that the Federal Circuit might find something in its murky precedent to permit such “hedge” reissue, which the majority led by Judge Linn found.

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