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.