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Reissue Declaration Failed to Specify Error for All Claims

December 05, 2001

Decision icon Decision

Last Month at the Federal Circuit - January 2002

Judges: Schall (author), Clevenger, and Dyk (dissenting)

In Dethmers Manufacturing Co. v. Automatic Equipment Manufacturing Co., No. 01-1114 (Fed. Cir. Dec. 5, 2001), the Federal Circuit affirmedin- part, reversed-in-part, and remanded for further proceedings a SJ that all claims of U.S. Patent No. Re. 35,482 ("the reissue patent") were invalid. In addition, the Federal Circuit affirmed a SJ of noninfringement of U.S. Patent No. 5,356,166 ("the '166 patent").

Dethmers Manufacturing Company ("Dethmers") sued Automatic Equipment Manufacturing Company ("Automatic") for infringement of the reissue patent, which concerns collapsible and removable hitches for towing vehicles, such as a hitch for towing a car behind a motor home. In response, Automatic counterclaimed that Dethmers's EXCALIBAR product infringed the '166 patent, which concerns a lockable, telescoping bar assembly.

At trial, the district court had found that a substitute reissue declaration filed in the reissue patent failed to satisfy the requirements of 37 C.F.R. § 1.175(a)(5) ("Rule 175") and, thus, rendered all claims invalid. During prosecution of the reissue patent, the applicant had filed a reissue declaration to correct two errors in U.S. Patent No. 5,232,240 ("the '240 patent"). The Examiner objected to the reissue declaration for failing to specify how asserted errors in the specification and abstract arose. In response, the applicant submitted a substitute reissue declaration that specified the errors in the specification and abstract, and included a table summarizing the differences between the claims in the reissue patent and the '240 patent. Shortly thereafter, the PTO allowed the reissue patent. Although the PTO determined that the substitute reissue declaration satisfied the requirements of Rule 175, the trial court, in granting a SJ motion by Automatic, applied a de novo standard of review to this determination, found the substitute reissue declaration deficient, and held all claims invalid. Dethmers then appealed this SJ to the Federal Circuit.

The district court also had granted Dethmers's motion for SJ that the EXCALIBAR product did not literally infringe the '166 patent, but denied the motion for SJ with respect to infringement under the DOE. Later, the district court reconsidered its decision on infringement under the DOE and found that prosecution history estoppel barred application of the doctrine.

On appeal, Dethmers argued that the reissue declaration used in the reissue patent satisfied the requirements of Rule 175. The Federal Circuit determined that, at the time the reissue declaration was filed, Rule 175 required that the reissue declaration explain the source of every error, state that there was no deceptive intent, and describe how the amendment corrects the error. The Federal Circuit noted that the validity of each claim turned on whether the reissue declaration explained every difference in that claim. In its analysis, the Federal Circuit identified the changes made to each claim during reissue and found that the reissue declaration properly addressed the changes made to claims 1-3 and 8-10. However, the Federal Circuit ruled that the reissue declaration failed to address the changes made to claims 4-7. The Federal Circuit reversed the district court's judgment with respect to the invalidity of claims 1-3 and 8-10, and affirmed the district court's judgment with respect to the invalidity of claims 4-7.

With respect to the '166 patent, Automatic argued that the amendments made to the claims did not give rise to prosecution history estoppel because they were not made to avoid prior art and were voluntary. The Federal Circuit disagreed with Automatic and ruled that any amendment related to patentability can give rise to prosecution history estoppel. Therefore, since the amendments gave rise to prosecution history estoppel, the Federal Circuit affirmed the district court's determination that the amendments barred application of the DOE.

Judge Dyk dissented, preferring to give deference to the PTO's determination that the reissue declaration satisfied Rule 175 for all claims.