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Errors Without Deceptive Intent Under Section 251 Are Not Limited to the Actual Claim Language

October 16, 2006

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Last Month at the Federal Circuit - November 2006

Judges: Michel, Archer, Linn (author)

[Appealed from: W.D. Pa., Judge Lancaster]

In Medrad, Inc. v. Tyco Healthcare Group LP, No. 06-1082 (Fed. Cir. Oct. 16, 2006), the Federal Circuit reversed the district court’s grant of SJ of invalidity of U.S. Reissue Patent No. 37,602 (“the ’602 patent”) because the defect that formed the basis for the ’602 patent was within the plain meaning of 35 U.S.C. § 251.

The ’602 patent relates to patient infusion systems for use with magnetic resonance imaging systems. There were two predecessor patents to the ’602 patent, U.S. Patent No. 5,494,036 (“the ’036 patent”) and U.S. Reissue Patent No. 36,648 (“the ’648 patent”), both of which were assigned to Medrad, Inc. (“Medrad”). Less than two years after the ’036 patent issued, Medrad filed an application for reissue of the ’036 patent and submitted reissue declarations stating that the inventors had claimed less than they had a right to claim (correcting an “underclaiming” error). During prosecution of the reissue, Medrad corrected the underclaiming error and also corrected inventorship and narrowed the scope of some of the claims (correcting an “overclaiming” error). Medrad did not submit supplemental reissue declarations regarding the overclaiming or inventorship errors as required by 37 C.F.R. § 1.175. That reissue application issued as the ’648 patent.

Subsequently, Medrad filed a complaint with the ITC alleging that illegal importation of devices infringed the ’648 patent. On a motion for SJ, the ALJ found the ’648 patent invalid due to Medrad’s failure to file supplemental reissue declarations regarding the overclaiming and inventorship errors. Before the ALJ’s initial determination became final, Medrad filed an application for reissue of the ’648 patent, seeking to correct the declaration error. That application resulted in the ’602 patent. The ’602 and ’648 patents have identical specifications and claims. The only difference between the two reissue patents is that Medrad filed supplemental declarations during prosecution of the ’602 patent that allegedly corrected the failure to do so during the prosecution of the ’648 patent.

Medrad filed suit against Tyco Healthcare Group LP, Mallinckrodt Inc., Liebel-Flarsheim Co., and Nemoto Kyorindo Co., Ltd. (collectively “Tyco”), alleging infringement of the ’602 patent. In a motion for SJ, Tyco argued that the ’602 patent was invalid under 35 U.S.C. § 251 because the reissue did not correct one of the four statutorily defined errors: a defect in the specification, a defect in the drawings, or an error in either claiming too much or too little in the patent. The district court construed § 251 as requiring some error in the specification, drawings, or claims of the patent be corrected as a result of the reissue process. Therefore, the district court granted Tyco’s SJ motion because the error that Medrad corrected was “procedural” and not an error within the scope of § 251.

On appeal, the Federal Circuit reversed the district court’s judgment of invalidity, concluding that the plain language of § 251 can encompass any error that causes a patentee to claim more or less than he had a right to claim. Section 251, which sets forth the requirements for obtaining a reissue patent, states that an inventor may obtain a reissue patent when the predecessor patent is “deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.” The Court explained that § 251 is not limited only to errors in the specification or claim language, as Tyco argued. Tyco failed to identify, and the Court could not find, any support in the language of § 251, in the statutory scheme, or in the legislative history to indicate that the disputed language of § 251—“by reason of the patentee claiming more or less than he had a right to claim in the patent”—limits the types of errors that are correctable to those errors that occur in the actual language of the claim. Thus, Medrad’s inadvertent failure to file supplemental declarations during prosecution of the ’648 patent, which resulted in the patent’s invalidity, was correctable under § 251.

The Federal Circuit declined to consider Tyco’s arguments that SJ of invalidity should be affirmed because Medrad’s declarations that resulted in the ’602 patent do not comply with 37 C.F.R. § 1.175. Because the district court expressly declined to consider this issue, the Court refused to consider it in the first instance and remanded.