In re Tanaka, 2010-1262 (Fed. Cir. Apr. 15, 2011).

In a battle the court joins in footnotes, adopting its own dicta, and rejecting relevance of a  Supreme Court decision from the nineteenth century to interpreting today’s reissue statute, a divided Federal Circuit panel reversed a precedential Board of Patent Appeals and Interferences decision and found omission of a dependent claim to be an error correctible by reissue.

The Board in Ex parte Tanaka, No. 2009-000234 (B.P.A.I. Dec. 9, 2009) had found no precedential case, but relied on the statute itself to hold that adding an independent claim, with no change to the original claims did not correct an error under 35 U.S.C. § 251 because no change in the broadest claim meant the patentee was not claiming more or less than in the original patent.  The court overturned, 2-1, the Board’s decision, finding it “contrary to longstanding precedent.”  The majority called on dicta in two Court of Customs and Patent Appeals cases (In re Handel, 1963, and In re Muller, 1969) and a Federal Circuit case (Hewlett-Packard Co. v. Bausch & Lomb, Inc., 1989), and conjured the ghost of the great Judge Giles S. Rich to speak on its behalf out of a footnote in Handel:  “The 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.”  The majority pointed out that, though understood as dicta, the court has since not “departed from” this view in Muller and Hewlett-Packard.  But Judge Dyk, dissenting, was correct that the two later cases also did not decide the question, but just repeated the dicta again in dicta.  The issue in Muller was whether the new dependent claims were to a non-elected species, and the Hewlett-Packard court assumed the statement in Handel was correct but decided the case on inadequacy of the patentee’s affidavits to support the reissue application.

Beyond the Handel dicta, the majority found that omitting a dependent claim can make a patent partly inoperative or invalid because each claim, including each dependent claim, can be separately infringed, and because dependent claims can also serve to clarify meaning of a broader claim by the principle of claim differentiation (although the court did not demonstrate the latter to be so for Tanaka’s claims).  Both good reasons to see an added dependent claim as a correction, but Judge Dyk believed Supreme Court precedent was to the contrary.  Judge Dyk read Gage v. Herring (1883) to require the patentee to assert that an original patent claim required correction.  According to Judge Dyk, the Gage patentee was not allowed to only add a broader independent claim because retaining the original claims demonstrated there had been no error in the original patent.  The majority countered (in a footnote) that at the time Gage was decided the statute permitted reissues only to narrow claims, implying that the problem was the new claim offered was broader than any original claim.  The majority had to admit, however, that the Supreme Court had interpreted that statute to sometimes allow a broadened claim, and Judge Dyk argued (by return footnote) that the Gage Court explicitly said the patentee could have removed the limitations from the original claim (thus correcting an error in an original claim), but could not keep the original claim unchanged and instead add the new, broader claim omitting the limitations.

This decision looks like a good candidate for an en banc consideration or grant of certiorari.  The opinions do not give a satisfactory account of Gage’s relevance. The Court rejected the new claim in Gage because it was offered too late (citing Miller v. Brass Company, 104 U.S. 350 (1881), laches strictly applied in a request broadening reissue).  Amending the original Gage claim, regardless of the Court’s view on what was needed to show statutory error, would not have made the request for a broadening reissue timely; it would not have changed the decision that laches applied.

Endnote: Amicus Teva argued that competitors should be able to rely on the original claims, but the court pointed out that if a company has relied on invalid issued claims, and faces newly added, valid dependent claims in a reissue patent, equitable intervening rights are already provided in 35 U.S.C. § 252.