Hoyt Fleming v Escort (Fed. Cir. 2014)
The GPS patents in suit are Fleming’s Reissue Nos. RE39,038 and RE40,653. Although several of the asserted claims were found invalid due to Escort’s prior invention, some of the claims were found both infringed and not invalid.
Part of the appeal involves the question of whether reissue was proper. Under Section 251 of the Patent Act, a reissue must be based upon an “error” in the original. Reissues granted where there was no “error” can be invalidated for improper reissue. Thus, the dividing line between error and no-error is important. Here, the court repeats is prior precedent that errors include both slips of the pen errors as well as those arising from a deficient understanding of law or fact. However, a drafting choice is not an error simply because it is later regretted.
Fleming apparently drafted the original patent claims from his perspective as a computer programmer rather and that led to him not appreciating the full scope of his patentable invention. In the appeal, the Federal Circuit agreed with the patentee that this is “a classic reason that qualifies as error” under the reissue statute.
It identifies a deficient understanding of some combination of fact and law bearing on the meaning of claim language, the inventions disclosed in the written description, and how particular language does or does not map onto products or processes that could be claimed under section 251 consistent with the written description.
One important factor in why Fleming wanted the reissue was to capture later developments in the marketplace that were disclosed in the application but not captured in the original claims. Although that appears akin to ‘regret’ rather than original error, the Federal Circuit ruled that the market reason for the change will not disqualify an otherwise proper reissue.
[T]he fact that it was marketplace developments that prompted Fleming to reassess his issued claims and to see their deficiencies, does not alter the qualifying character of the reason for reissue. Erroneous understandings of the written description or claims are just that, regardless of what triggered the recognition of error in those understandings.
Verdict Affirmed.
I see that “claiming too narrowly” is an excusable “error”. One that you can freely admit to the client. So I take it to be an error which in itself does not amount to malpractice. Funny, for me the prime reason why one engages a professional to write one’s patent application is to exclude the error of claiming less scope than what one is entitled to. Here, I should not like to admit that I claimed less than I could have.
Or is the point that one will always finesse out of malpractice issues by attributing the error to the inventor/applicant/client rather than to the drafting/prosecuting attorney/law firm?
That said, under the EPC you can broaden, right through until the patent issues. So the only trans-Atlantic difference is the extra 2 years in the USA.
Suppose the US patent issued less than 2 years ago. Ought one then to walk the client through the manifold advantages of filing by that date a broadening reissue application, send reminders as the cut-off date approaches etc etc? Indeed, would it be malpractice to fail to do this?
The EPC prohibition on broadening after grant, Art 123(3) EPC, amounts to an invitation to “keep something pending” at the EPO, through the 20 year life of the patent. No wonder that the EPO once tried to cap the pendency of divisionals.
Incidentally, can somebody provide a definition of “broadening”? Why? Because I recall email correspondence with a US instructing associate some months ago, where an amendment I saw as indubitably “broadening” the opposed EPO patent struck my instructing associate has NOT being a “broadening” amendment. I was unable to follow his reasoning.
So I take it to be an error which in itself does not amount to malpractice.
Malpractice requires more than just an error.
Here, I should not like to admit that I claimed less than I could have. … Or is the point that one will always finesse out of malpractice issues by attributing the error to the inventor/applicant/client rather than to the drafting/prosecuting attorney/law firm?
I don’t think that’s the point at all. But if you’re that concerned about saving face, I’m sure that the client would be happy to send the case to someone else to handle the reissue application.
Ought one then to walk the client through the manifold advantages of filing by that date a broadening reissue application, send reminders as the cut-off date approaches etc etc?
That’s actually pretty routine, Max.
Incidentally, can somebody provide a definition of “broadening”?
It’s broadening if it covers embodiments that were not covered by the original claims. An amendment can be both broadening and narrowing, for what it’s worth.
Why? Because I recall email correspondence with a US instructing associate some months ago, where an amendment I saw as indubitably “broadening” the opposed EPO patent struck my instructing associate has NOT being a “broadening” amendment.
I’m pretty sure I’ve suggested before that you find new US counsel to associate with. Perhaps some day I’ll share some of my stories about the silly things some European associates have said.
Very helpful replies Dan (as you know, I post in the hope of drawing responses that are informative). It is of course very common to find that, in any given patent family, most of the family members are at the USPTO. An atrefact of a particularly “strong” patent system, some might say.
A comfort, to know that it can still be a “broadening” amendment even if, elsewhere in the claim, there is also a “narrowing” amendment. That makes sense.
As to US associates, it is they who are sending me cases, not the other way round. If they spend time telling me “How it is, here in the USA” my reaction is not to send them away or tell them to find other EPO counsel.
Yes do please tell us your horror stories about how “silly” EPO counsel can be. The more the better.
The problem as I see it is that what the EPO counsel does is base everything off of EPO rules, and not US rules. The rules are vastly different, from no problem/solution test in the US, to the US’s incredibly-hard-to-understand rules such as the Alice test, to completely different levels of evidence for one skilled in the art, the fact that the preamble is dangerous in the US but can limit the claims in the EPO, etc. Many times, for instance, we get claims written in Europe that don’t “do” anything. Instead, they simply create values or store things in memory, etc. The claims don’t “do” anything with what is determined/created/stored. In the EPO, one may be able to argue the “technical effect” of what the produced item is, but in the US, it’s better (eg, from an Alice standpoint) to have some language that actually “does” something with the data that’s produced.
This is simply one of the many differences we have to address when dealing with EPO associates.
It’s gotten so bad that I’ve written a document helping to explain the differences between US and EPO patenting and prosecution, and I give this document to all our EPO clients.
MaxDrei,
What do you suppose is the rate of filing a broadening re-issue application as a percentage of all applications processed by a typical firm?
How much shoveling of that molehill are you ready to do in order to make such a small hill, much less a mountain?
RE: “under the EPC you can broaden, right through until the patent issues.”
Not that easily. Yes if there was a sufficiently broad supporting statement of the invention* in the EPC specification that is broader than any of the original claims, but how likely is that in many cases?
*Not just a species example support for a previously unclaimed genus, or the like
Sure, Paul, it is not likely that, under the EPC, the disclosure supports the “broader” claim of a broadening prosecution amendment, but I had gathered that, even in the USA, with all the 35 USC 112 issues, in particular WD, it is not a piece of cake either. I see WD as something of a counterpart to Art 123(2) EPC when it comes to broadening amendments in pre-issue prosecution.
Having said that, Applicants often file an initial narrow claim for A publication, with a broader disclosure, thereby to “hide” the broader scope, to be claimed later on during prosecution. At the EPO, of course, the ED will refuse to search the widened claim, until you file a divisional. But that’s OK.
So, let us continue our discussion, setting aside broadening after issue, and focussing on “broadening” amendments prior to issue. May I ask, are they less problematic at the USPTO and, if so, how come?
Max, re U.S. claim broadening, I think you have to draw distinctions between chemical [“unpredictable arts”] generic claiming species support requirements as compared to other patenting areas, even though some non-chemical litigated cases like Lizardtech confuse that.
Plus, draw distinctions between what you can get away with in ex parte application prosecution as compared to what you might run afoul of in patent litigation, a CBM or PGR proceeding, or an interference, especially as to the 112 writtent description requirement now that the Fed. Cir. has clairified that mere enablement is not enough. Now you also have to worry about claim broadening increasing a risk of an Alice-101 issue.
Beyond that I would not hazard any prognostications.
It appears that Crouch finally got around to reading McCormick and Patlex.
Less disturbing if one realizes that in the U.S. that whatever can be done in a broadening reissue to cover later products of others with broader new or amended claims can be done even easier by instead keeping a continuation or divisional pending for years to be amended [and/or to cite and distinguish over defendant’s alleged prior art]. A not infrequent litigation tactic that sometimes catches defendants in a suit on the original patent by surprise.
In contrast a broadening reissue is only for the first 2 years after that patent issues, and is further limited by the recapture doctrine, 112 claim support requirements, and the intevening rights protection statute. Only a miniscule percentage of issued patents obtain broadening reissues.
The good news is that after many years of complaints about delays and misshandlings, all reissue examinations, broadening or narrowing, have now been moved to the CRU instead of sitting unprocessed for years in the Examining Corps in violation of their MPEP special dispatch requirement.
Good poins, Paul.
Re this: In contrast a broadening reissue is only for the first 2 years after that patent issues
More accurately, the intent to take advantage of the broadening reissue statute must be made clear within the two year window after grant. Once this reissue provision is invoked, however, broadening continuation reissue applications can subsequently be filed right up until the patent is expired, with no other limitations other than those Paul identified. See In re Staats (Fed Cir 2012), and David Longo’s thoughtful post here: link to patentlyo.com
Yes, but an intent to obtain a broadened claim of some kind [even if different from the eventual claim broadening] must be expressed IN a reissue application for that patent which was pending before the two years from grant date are up.
What about that old adage “Ignorance of the law is no excuse”? Here, it does seem to be a good excuse.
To err is human,…
…to forgive…
Claming more or less than you were entitled to are grounds recited in the reissue statute itself. A claim broadening reissue application oath is usually not really about ignorance of the law, it is in not realizing until one sees a competitive product and checks the patent claims that one sees that the originally filed claims have a limitation that is unnecessary yet could prevent an infringement assertion, or finds some other defect.
There is speculation that claim Narrowing reissues will become more common, to try to avoid all the previously unconsidered prior art being cited in the many IPR petitions, and the difficulty in amending claims during the IPR. Or, that narrowing reissues will be sought to put more meat on the bones of claims now in Alice-101 danger. Does anyone know if either is actually happening?
I had an inventor tell me that claim 2 was in all our products, but not claim 1, for marking purposes. Claim 2 was dependent from claim 1. Apparently the attorney prosecuting the claims did not believe claim 2 to be inventive on its own.
I filed a broadening reissue explaining this. The PTO said attorney incompetence was not error. We petitioned and this was overturned.
The moral of this story is that the inventor is the boss. He thought claim 2 could be asserted without claim 1. That was the error. Had he understood patent law better, he would have insisted that claim 2 be independent.
Ned, did you mean to say that he would have insisted that claim 2 be DEPENDENT?
I find your comment difficult to follow.
“Fleming apparently drafted the original patent claims from his perspective as a computer programmer rather and that led to him not appreciating the full scope of his patentable invention.”
Another reminder of the old adage, “He who is his own lawyer has a fool for a counselor, and a naif as a client.”
Comments are closed.