Reissue Claim is Improperly Broadened if “Broader in Any Respect.”

Brady Construction Innovations v. Perfect Wall (Fed. Cir. 2008) (Non Precedential).

This case is simple. Brady filed for a reissue more than two years after the patent issued. The reissue broadened the claims. Those claims are therefore invalid.

Brady’s original patent issued July of 1992. After losing an infringement action in 2003, Brady filed for a reissue patent. The reissue patent issued as RE39,462 in 2007 and Brady again filed suit. The patentee’s press release at the time tells the story:

“Previously, the Court of Appeals had limited the original slotted track patent in a way that Brady never intended. This new patent removes the limitation recently imposed by the Court of Appeals. From this date forward, anyone who manufactures and sells [any style of] slotted track will infringe Brady’s new patent regardless of how the slotted track is installed.”

35 U.S.C. 251 spells out the guidelines for reissue patent applications. Generally, a reissue is available to correct an error made by the patentee. Although the statute specifically allows a reissue to correct an error in “claiming more or less than he had a right to claim in the patent,” the statute also places a strict two-year time limit on enlarging the scope of any claims.

“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.”

Any enlargement in scope of any claim element will generally run afoul of the limitation. In particular, the CAFC has repeatedly held that a claim will be considered to be enlarged under Section 251 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.”

Here, based on the construction of the original patent by the CAFC, it was clear that the new claim had been broadened – rendering it invalid.

48 thoughts on “Reissue Claim is Improperly Broadened if “Broader in Any Respect.”

  1. 47

    Wearing a powdered wig is not necessarily out of respect for the individual, but respect for 1) yourself; 2)the legal process; and 3) the institution of the court.

  2. 46

    I’m with you on dispensing with a suit requirement for most office situations, Mr. Mooney, but here we’re dealing with federal court. I can’t imagine not wearing a suit and tie for a court appearance, and I’m pretty surprised that a male attorney took the podium without wearing a tie.

  3. 45

    Sorry EG, I didn’t see your earlier post. I wholeheartedly agree. Anyone who has a problem with wearing a suit to court has a self esteem/ego problem. No surprise that Mooney is chiming in against suits.

  4. 44

    “I have never been able to understand why millions of males all around the globe get up every morning, tie a colored ribbon around their throats, and pull the knot tight.”

    Perhaps you’d understand a little better if you didn’t pull that knot so tight.

  5. 41

    The Federal Circuit is pretty clear about “Court Decorum” at link to cafc.uscourts.gov.

    • The dignity of the Court is to be respected and maintained at all times.
    • Attire for counsel and spectators should be restrained and appropriate to the dignity of a Court of
    Appeals of the United States.

  6. 40

    AllSeeingEye,

    Couldn’t have said it better. That was my point: respect the institution, whatever your view personally about the judges/justices you appear before. I generally don’t wear a tie, even when I meet with clients (most clients feel more comfortable if you don’t). But in court, I’ll be in suit and tie, no matter what my personal feelings might be.

  7. 39

    Having looked at the patent, I’ve now got a lot more sympathy for the patentee.

    Original claim 1 read:

    1. A building construction assembly that includes a header and a stud wherein the header is capable of vertical movement relative to said assembly comprising:
    a header having a web and flanges with said flanges connected to said web; at least one of said flanges having at least one vertical slot therein; a stud having a width less than the distance between said flanges of said header and having a top end;
    said stud **having at least one hole formed therein proximal to said top end**;
    said top end fitting between said flanges perpendicular to said header positioned so that said hole is aligned with said vertical slot;
    and an attachment means passing through said slot and through said hole to slideably unite said header to said stud whereby said slot permits said header to move vertically with respect to said stud while restricting horizontal movement of said header.

    In the original litigation the CAFC, vacating a district court finding of infringement, held that **having at least one hole formed therein proximal to said top end** was limited to pre-formed holes.

    The description, in relevant part, reads:

    “”The **preferred** method for assembling the invention involves placing end 40 of stud 12 between flanges 16 so that the end 40 abuts against the bottom 30 of the web 14 such that the header 10 and the stud 12 are perpendicular to each other and a vertical slot 24 is generally centered on side 52 of the stud 12. Appropriate **attachment means, such as a self-tapping screw 20, is positioned in the slot 24 midway between the bottom 41 of the slot 24 and the top 42 of the slot 24. Once positioned, the self-tapping screw 20 is drilled into the stud 12**.

    In **another** method of assembling the invention, holes 22 are **pre-drilled in the stud 12**. The stud 12 is then inserted between said flanges 16 so that the holes 22 in said stud are aligned with the slots 24. The **attachment means** 20 passes through the slot 24 and, through the hole 22 in the stud 12. Said attachment means 20 is tightened down sufficiently to keep said header 10 and said stud 12 united, but not so tight as to prevent said header 10 from moving vertically in response to environmental forces as shown in FIGS. 3 and 4. This limitation with respect to the tension of the attachment means applies to all embodiments discussed herein.””

    Claim 11 of the re-issue includes all of the limitations of original claim 1, except that it requires the hole to be formed **by** the attachment means.

    Ignoring the previous construction of claim 1, on the face of it claim 11 certainly looks like a narrower version of claim 1.

    Suppose claim 11 had been drafted in dependent form:

    11. A building construction assembly as claimed in claim 1, wherein said hole is formed by said attachment means passing through said slot and through said hole to slideably unite said header to said stud.

    This would clearly be a limiting amendment supported by the description, but for the pre-existing construction of claim 1.

    In the original litigation, SlipTrack sued Metal Lite in the Central District of California alleging that the ’760 patent had priority over a Metal Lite patent that issued on the same day, and that Metal Lite’s products infringed the ’760 patent. In September 2003, a jury found that the ’760 patent was entitled to priority, that Metal Lite’s products infringed the ’760 patent, and that SlipTrack was entitled to damages.
    On appeal, the CAFC affirmed the priority determination but vacated and remanded the infringement determination. SlipTrack Sys., Inc. v. Metal Lite, Inc., 113 Fed. Appx. 930 (Fed. Cir. Dec. 1, 2004). Specifically, the CAFC held that the claim limitation “said stud having at least one hole formed therein proximal to said top end” means “that a hole must be formed in the stud prior to insertion of the stud between the flanges so that the hole can be used to align the stud with the vertical slot before passing the attachment means through the vertical slot and into the stud.” Id. at 938. The CAFC based its claim construction primarily on statements in the prosecution history, holding that “the prosecution history of the ’760 patent reveals that the patentee limited its invention to studs having pre-existing holes.” Id. at 937.4 We vacated the district court’s judgment of infringement and remanded for further proceedings consistent with our claim construction.

    The relevant part of the prosecution history: “As to indefiniteness, the examiner queried, “how is the stud ‘aligned’ with the vertical slot?” In response, Brady canceled claims 6 through 9, and in claim 1, the only remaining independent claim, Brady deleted the limitation that the stud be “aligned with said vertical slot” and amended it to read “said stud having at least one hole formed therein proximal to said top end.” Brady explained: “[T]he Examiner’s question of how the stud is aligned with the vertical slot has been answered by adding hole 22 proximal to top end 40 of the stud as an element of the claims. **The hole 22 serves as a reference point on the stud which is used to align the stud and the slot**.”

    This original construction by the CAFC seems a bit bizarre to me, and relies on reading the prosecution history in as prejudicial a way as possible. Note that the original patent included the dependent claim:

    4. The building construction assembly of claim 1 wherein **said attachment means is a screw passing through said slot into said stud**; and
    said screw biasing said header to said stud yet spaced from said header sufficiently to allow vertical movement of said header with respect to said stud.

    Should this not have carried some weight in the original claim construction; i.e. in interpreting the claims in a way that is consistent with the description?

    Presumably the proper way for the patentee to have pursued the case would have been to have appealed against the CAFC’s claim construction? Would they have been allowed to do this?

    Assuming the patentee’s invention had genuine merit, it all seems a bit harsh.

  8. 38

    On the reissue thing – if the USPTO granted the reissue then can the patentee not litigate it in good faith? Was the USPTO deceived in any way in the re-issue prosecution? (OK, OK, if the re-issue was infringed by something that had been held not to be infringed by the original issued claims then there is obviously something wrong).

    Re the tie thing – Why? I’ve never really got it either. Best sense I can make is that a tie is a pointer, and look what it points at.

  9. 37

    Sorry to interrupt the love fest Mooney and BB, but wearing a tie is not necessarily out of respect for the individual, but respect for 1) yourself; 2)the legal process; and 3) the institution of the court. If you are lacking in the 1) department, 2) and 3) will make no sense to you. I suppose shedding your Birkenstocks and putting your bare feet up on the desk to hide your scruffy beard and unkempt hair is a better strategy. Eeeyeah right.

  10. 36

    Awh cumon – Shucks, you have to be an asswhole not to wear a tie addressing the Federal Circuit. But, yes, of course, you have to be a bigger asswhole to mention it in open court with a live mike.

    Yet here, Laertes! Aboard, aboard for shame!
    The wind sits in the shoulder of your sail,
    And you are stay’d for.
    There … my blessing with thee!
    And these few precepts in thy memory
    Look thou character. Give thy thoughts no tongue,
    Nor any unproportion’d thought his act.
    Be thou familiar, but by no means vulgar.
    Those friends thou hast, and their adoption tried,
    Grapple them to thy soul with hoops of steel;
    But do not dull thy palm with entertainment
    Of each new-hatch’d, unfledg’d comrade. Beware
    Of entrance to a quarrel but, being in,
    Bear’t that th’ opposed may beware of thee.
    Give every man thy ear, but few thy voice;
    Take each man’s censure, but reserve thy judgement.
    Costly thy habit as thy purse can buy,
    But not express’d in fancy; rich, not gaudy;
    For the apparel oft proclaims the man;
    And they in France of the best rank and station
    Are of a most select and generous chief in that.
    Neither a borrower, nor a lender be;
    For loan oft loses both itself and friend,
    And borrowing dulls the edge of husbandry.
    This above all: to thine own self be true,
    And it must follow, as the night the day,
    Thou canst not then be false to any man.
    Farewell; my blessing season this in thee!

    William Shakespeare

  11. 35

    Re: dress code

    To paraphrase a former Nobel Peace Prize laureate:

    “I have a dream that [attorneys arguing before the Federal Circuit] will not be judged by the color of their [tie], but by the content of their [argument].

    “I have a dream….”

    (May MLK rest in peace)

  12. 33

    A few years back I had a big client meeting in Silicon Valley. I arrived there a day early, realized that I had forgotten to bring a tie and made a mad rush to a mens store — bought two ties (at great personal expense). Arrived at the meeting the next morning and I was the only one wearing a tie.

  13. 32

    Reminds me: I wonder when the rest of the country will catch on to what California already knows about wearing suits and ties to work.

  14. 30

    EG’s position is one you would have to be pretty liberal to disagree with, and I am, so I will.

    There is an issue here of form over function. Ties have no function, unless you drool a lot. I have never been able to understand why millions of males all around the globe get up every morning, tie a colored ribbon around their throats, and pull the knot tight. It is almost as brainless as women wearing spiked heels. It’s done because “it looks good” or “it looks professional” but it only looks good or professional to those who have been doing it all their lives without a moment’s thought. To the rest of us it looks like just what it is: monkey see, monkey do.

    OK, but the people in power say you’re gonna’ do it, so you’re gonna’ do it. But — puleeese — don’t now tell me that it’s a sign of respect. The concept of coerced respect is ludicrious. Forcing women to wear skirts, forcing men to wear suits and ties, forcing us all to stand up when the judge comes in are just ways these control freaks maintain control over our behavior. If it’s outlandish dress or loud behavior that disrupts the court, that’s one thing, but an open collar or a pant-suit doesn’t disrupt anything.

    Having said that, which I just have, let me also say that I have an immense amount of respect most of the judges I’ve been before. They have a very difficult job, and most of them do it well. I show my respect for them not by standing or sliding a knot against my Adam’s apple, but by doing everything I can to get my pleadings and motions right and trying to make it as easy for them as I can.

    But I have been before judges who are crooks and dolts, too — people I hold in about as much esteem as week old lizard droppings. Nobody respects these people one iota more because we are made to stand or wear a tie. When I was a professor, I would never dream of having my students stand when I entered the class, or wear a tie in the classroom. And yet I knew by the way they treated me that they respected me. Most of ’em anyway.

    All I’m sayin’ is, let’s drop the law school drivel about we wear ties and skirts in court as a sign of respect. We wear them because the system is arrogant and because we get cited for contempt if we don’t. You can’t coerce respect.

  15. 29

    JAOI,

    This isn’t the proper thread. The others are probably getting tired of our conversations. Let’s take it back to the following:

    link to patentlyo.com

    This way, when others see the “fixing constitutional errors,” they can immediately ignore it.

  16. 28

    To all on the “etiquette” issue,

    Before getting “critical” about the need to dress appropriately when appearing before a court, be it the Federal Circuit or SCOTUS, let’s remember we’re supposed to be respectful to the particular court when we appear before it (no matter what your opinion is of that court or the judges/judges that sit on it). Dressing appropriately before the court is not only manners 101 in legal advocacy, but ensures you won’t get off on the wrong foot (pardon the pun regarding David Boles’ footware) right away with the judges/justices. Not having a tie when appearing in court (unless the court says otherwise) doesn’t show much common sense, or respect, to that court, and isn’t going to help your client much either. Also, you can usually find out from the clerk of the court what the “dress code” is so you won’t be surprised (or ignorant) of what it is.

  17. 27

    Dear Jim,

    I have reviewed our dialogue regarding the Patent Clause. I believe I have found the precise point of departure between our respective opinions:

    On Aug. 2 at 01:12PM you wrote:
    “… In my opinion, ‘exclusive’ means ‘single,’ ‘sole,’ ‘whole,’ or ‘undivided.’…”

    With all due respect, this is where you are mistaken, at least in my view and in the view of the author of the article which was written to explain:

    “This article examines exclusive, sole and non-exclusive licences of intellectual property rights and the respective meanings of the terms.”

    There is legal distinction between “exclusive” and, e.g., “sole” in regard to patents. The full article, which explains the distinction, is found on this link:
    link to pharmalicensing.com

    Here is an excerpt:
    “Sole and exclusive is a term often used in licences but it is confusing and meaningless. If the licence is exclusive then it is not ‘sole’.”

    “Exclusive” means all but one, i.e., the patent owner.
    “Sole” means the licensee AND the patent owner.

    That is why the Patent Clause recites “the exclusive Right” and only “the exclusive Right” – it does not say or imply “sole” or any other word, phrase or meaning.

    I trust you and others who harbored mistaken views will appreciate that I do not mean to be confrontational. Please bear in mind that this issue is THE most fundamental issue regarding patents.

    For example, reputable powerful patent firms that take contingency cases will reserve final say on whether or not to accept a settlement offer to the patent owner — and, when you stop and thing about it, it tells tomes about the critical nature of “exclusive” versus “compulsory” licensing when even reputable and powerful patent attorneys do not “control the deal” but leave that final say to the patent owner.

  18. 24

    Did you know there’s a dress code for appearing in front of the Federal Circuit? At least one lawyer didn’t. — Jim H.

    I believe O’Conner jumped some lady-suit a few years ago for wearing a pant-suit to oral argument.

    It’s the whole decorum thing, man. Next thing they’ll be setting the ethics police loose on you if you don’t wear a dark suit or if your tie is too loud.

    BTW: didn’t David Boles wear tennis shoes or no socks or something in Gore v. Bush? Pity. Could have made the difference. . .

  19. 23

    “It says nothing about introducing new claims having the same breadth or are less broad.”

    What is this “It” you refer to? :)

    “I may submit a reissue application within the two year timeframe with new, broader claims”

    Yes. There are of course other limits beyond the scope of this discussion (e.g. there must be an error in claiming during prosection, no recapture is allowed), but the limits don’t prevent adding new claims as opposed to amending existing claims.

    In a sense, all of the claims in a reissue are new claims. To determine whether a reissue is broadening, the reissue claims are compared to the orginal claims.

  20. 22

    “Let me see if I now understand. I may submit a reissue application within the two year timeframe with new, broader claims (as long as it complies with 112). Correct?”

    Correct – except as limited by the recapture rule.

  21. 21

    The statute (35 usc 251) simply says that the PTO may reissue patents, and that “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.” Nothing is said about “new” claims or “existing” claims or “broadened claims.”

    The MPEP’s interpretation of this is pretty reasonable: “A broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent.” (MPEP 1412.03) I don’t see any reason why new claims should be prohibited in a reissue. It’s sometimes much easier to clarify the issues or correct grammatical problems with a new claim.

  22. 20

    Just Visiting,

    “There is nothing improper about a broadening reissue with two years (assuming the other requirements are met).”

    This I understand. However, as I understand it, existing claims (and not new claims) may be broadened during this timeframe. It says nothing about introducing new claims having the same breadth or are less broad.

    Let me see if I now understand. I may submit a reissue application within the two year timeframe with new, broader claims (as long as it complies with 112). Correct?

  23. 19

    Adding a new claim broader that is broader in any respect to the current claims is a broadening reissue. If this were not so, then any limitation on broadening reissue could be circumvented by writing new claims.

    There is nothing improper about a broadening reissue with two years (assuming the other requirements are met). In this case where the filing is a decade after the original patent issued there was no opportunity to file a divisional/continuation.

  24. 18

    Since this is at least the third CAFC decision I recall making it perfectly clear that it is illegal to attempt to broaden by reissue any part of a claim after the reissue-claim-broadening time bar has expired, [and since all patent reissue applications are relatively rare, and usually important] why are we still seeing PTO examiners and PTO Quality Control [which used to check all allowed reissues] still issuing them, and also apparently not reporting attorneys improperly attempting such barred claim broadening?

  25. 17

    A clarification to my question above…

    When I say “issued patent,” I mean the claims have been allowed, issue fee has been paid, but the patent has not yet published.

  26. 16

    Help me out…

    Reissue application contained a new claim — Claim 11.

    First, how could the scope of the original claims be broadened if the new Claim 11 was the only claim prosecuted during the reissue exam and the original claims weren’t?

    Second, wouldn’t the proper procedural vehicle to add claims to an issued patent with a divisional, continuation, or CIP? How was this permitted with a reissue?

  27. 15

    “Next time wear a tie, this is the federal circuit.”

    Lol, they think they’re something else don’t they? I love how discourteous they are to so many people.

    That clip is nice for more than that snippet though.

  28. 14

    Hey folks,

    Did you know there’s a dress code for appearing in front of the Federal Circuit? At least one lawyer didn’t.

    Listen to the audio at the approximate time of 33:30. To download audio, click the following link, enter “2007-1460” for the case number, and click the audio link.

    link to oralarguments.cafc.uscourts.gov

  29. 13

    Just to complete the answer to MPEP’s question, it’s actually a broader question than 35USC. The Paris Convention, Article 4, is all about priority claims.

    (3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.

  30. 12

    Points taken, MD. But the best way to increase the overall efficiency of the litigation system would be to increase the likelihood that guncrazy plaintiffs with ridiculously dubious patents will be forced to pay the other side’s costs. That would go a long way towards reducing the number of time-sucking, resource-wasting lawsuits and appeals of this sort.

  31. 11

    Malcolm there is a public policy objective, in appeal courts confirming the first instance, namely the overall efficiency of the litigation system. In the EPO, every loser appeals, because reversal is so likely, so opposition proceedings take much too long. In the English Patents Court, only a third of losers appeal, because reversal is so unlikely, and most patent litigations are therefore finished in less than 15 months. So, I put it to you that the CAFC declined to reverse for three reasons: 1) litigation in the US courts, that costs innocent winners millions of USD, is nothing unusual, 2) finding “clear error” in a lower court brings discredit on the US courts and 3) when the decision whether or not to reverse is marginal, the public policy objective of minimising reversals takes precedence.

  32. 10

    The term of the reissue should be to July 2009, right? Wouldn’t the defendant get intervening rights for a good chunk of the remaining term? I don’t know the volumes for “Vertically Slotted Headers”, but I can’t make any sense out of Brady’s decision.

  33. 8

    See 35 U.S.C. 119(e)(3), “(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day.”

    And this is a silly case. Shows why you should always keep a live continuation.

  34. 7

    MPEP answer is no answer unless you can ascertain the level of deference that a court would grant to the PTO’s administrative decision to grant priority under 37 CFR 1.6 – a decision which arguably contravenes the plain language of 35 USC 119 …

  35. 5

    MPEP 500: “When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.”

  36. 4

    I have a bit of a problem. It seems that a guy filed a prov app on 11/12/2004 and filed an nonprov claiming back to the prov on 11/14/2005. 11/12/2005 landed on a Sat and 11/14/2005 was the monday thereafter. Does he get to claim the benefit of the prov or not? Statute says 12 mo not 12 mo and a couple of days.

    Anyone venture a guess?

  37. 3

    First person: We lost. The court construed the claims in a way we never expected!

    Second person: Never say die, never surrender!

    Third person: I know, let’s do a broadening re-issue! The USPTO will allow the broadened claims, because we never intended for our original claims to be interpreted the way they were. After the patent re-issues, we’ll release a press release threatening all our competitors. And then we’ll sue!

  38. 2

    Page 11

    “Metal Lite also argues that the case is exceptional because Brady filed suit in
    bad faith, knowing that claim 11 was invalid as a broadening reissue. While Brady’s
    press release stating that the reissue patent “removes the limitation recently imposed by the Court of Appeals” suggests that Brady may have known that its claim 11 was not
    narrower, the district court was in the best position to observe Brady and its counsel
    both during the prior case and this case. We see no clear error in its determination that the present litigation was not brought in bad faith.”

    Our system is completely effed up if defendants can’t get their expenses paid under circumstances like these. Note the bizarre logic that the CAFC uses to weasel out of punishing the patentee: because they couldn’t “observe” the plaintiff at the district court, they must pretend that the patentee never admitted that the reissued claims were broader. Huh? This wasn’t one of those IC cases where there is circumstantial evidence about an intent to deceive. This was a summary judgment slam dunk: the patentee issued a chest-thumping press release about its broadened claims and then sued a defendant whose product did not infringe the originally issued claims! Whether bad faith or gross negligence, surely this was an “exceptional” case warranting attorney’s fees if there ever was one.

    What happened?

  39. 1

    So why would the patentee file (tardily) for the reissue? Seems like an expensive act of futility. And I don’t see how the reissued patent, under these circumstances, could deter potential “infringers,” whose counsel presumably can read the statute. What am I missing here?

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