Predictably, the U.S. Court of Appeals for the Federal Circuit affirmed a district court's ruling that reissue patent applications can only broaden the patent scope of the original claims if filed within two years of the grant of the original patent. Brady Construction Innovations v. Perfect Wall and Metal-Lite et al., Case Nos. 07-1460, -1486 (Fed. Cir., Aug. 15, 2008) (Michel, J.)
Slip Track Systems and Brady Construction Innovations, Inc. (collectively Brady), sued Metal-Lite in the Central District of California alleging that their patent could have priority over a Metal-Lite patent that issued on the same day and that Metal Lite's products infringed the Brady's patent. A jury found that the patent, directed to a building construction assembly, was entitled to priority and that Metal-Lite's products infringed Brady's patent.
On appeal, the Federal Circuit affirmed the priority determination but vacated and remanded the infringement determination holding that the prosecution history of Brady's patent limited its invention to studs having pre-existing holes that provided traction to a header in a wall with respect to the studs when under stress. On remand, the district court granted Metal-Lite's motion for summary judgment of non-infringement because the accused products did not use studs with pre-existing holes.
Perhaps under stress, Brady filed an application for a reissue of the patent 12 years after issuance. The reissue maintained the original claims and slipped in independent claim 11 directed to a different embodiment than the original claims. The newly added limitation included at least one hole that is formed by attachment means such as a self-tapping screw. The U.S. Patent and Trademark Office (USPTO) allowed the reissue application and Brady quickly sued its competitors for infringement.
The district court granted the defendant's motion for summary judgment of invalidity because the reissue violated 35 U.S.C. § 251's prohibition on broadening reissues more than two years after the original patent issued. On Appeal, Brady admitted that the accused products would not infringe the claims of the original patent, but would infringe reissue claim 11. Brady argued that new claim 11 was narrower than the original claims because it tacked on the new limitation of the self-tapping screw.
The Federal Circuit found that the accused products in which the hole is not pre-existing but instead formed using a self-tapping screw, while not infringing the claims of the original patent, would infringe reissue claim 11. Therefore, the Court concluded that the reissue application broadened the scope of the original claims and was thus invalid for being filed more than two years after the original patent issued.
Practice Note: A reissue applications is a tool for broadening the scope of the claims of the original patent if the new claims are made for an invention that was disclosed in the original patent and filed within two years of the original patent grant date.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.