By Jason Rantanen
In Re Yasuhito Tanaka (Fed. Cir. 2011) Download 10-1262
Panel: Bryson, Linn (author), Dyk (dissent)
Patent No. 6,093,991 issued to Yasuhito Tanaka in 2000. Two years later, Tanaka filed a reissue application seeking to broaden the scope of independent claim 1. During the reissue proceeding, Tanaka gave up the broadening attempt, instead presenting unamended claims 1-7 and new claim 16 depending from claim 1.
The examiner rejected claims 1-7 and 16 on the ground that, because Tanaka's declaration did not specify an error that broadens or narrows the scope of the claims of the issued patent, there was no error correctable by reissue. A seven judge panel of the Board of Patent Appeals and Interferences affirmed the examiner's decision in a precedential opinion, concluding that 35 U.S.C. § 251 "disallow[s] reissue applications that simply add narrow claims to the reissue patent when no assertion of inoperativeness or invalidity for the reasons set forth in § 251 can be made by the patentee" and finding that Tanaka was impermissibly seeking an additional claim on reissue 'in order to hedge against the possible invalidity of one or more of the original claims.'" Slip Op. at 4 (quoting Board decision).
Majority: Addition of Narrower Claims is Permitted
On appeal, Judges Linn and Bryson disagreed with the Board's holding. Drawing upon a rule articulated in dicta by Judge Rich in In re Handel, 312 F.2d 943, 946 n.2 (CCPA 1963), an implication of the rule in In re Muller, 417 F.2d 1387 (CCPA 1969), and an assumption of the rule in Hewlett-Packard Co. v. Bausch & Lomb, Inc., 822 F.2d 1556 (Fed. Cir. 1989), the majority held that longstanding precedent and the principles of stare decisis permit patent applicants to file a reissue application solely to add additional claims:
Even though the rule that adding a dependent claim as a hedge against possible invalidity is a proper reason to seek reissue has seemingly never been formally embodied in a holding of this court or its predecessor, articulation of the rule in Handel was not simply a passing observation—it was a considered explanation of the scope of the reissue authority of the PTO in the context of a detailed explanation of the reissue statute. Based on this court’s adoption of that rule and its adherence to the rule in both Muller and Hewlett-Packard, this court rejects the Board’s contrary ruling.
Judge Dyk's Dissent
Rejecting the majority's shaky reliance on Handel, Muller, and Hewlett-Packard, Judge Dyk instead pointed to even older precedent - a nineteenth century Supreme Court decision - that, in his view, rendered reissue unavailable when nothing in the original patent was being corrected.
It is plausibly suggested that ‘the claim could be made perfect in form, and consistent with the description of all that portion of the apparatus which relates to the invention, by simply striking out the letter of designation for the upper chest, J, and the letter of designation for the conveyor shaft of that chest, K.’ But that the inventor did not and does not intend so to amend his claim is conclusively shown by his having repeated the same claim, including these very letters of designation, in the [retained] claim of the reissued patent. His attempt is, while he retains and asserts the original claim in all particulars, to add to it an-other claim which he did not make, or suggest the possibility of, in the original patent . . . .
To uphold such a claim . . . would be to disregard the principles governing reissued patents, stated upon great consideration by this court at the last term in the case of Miller v. [Bridgeport] Brass Co., 104 U.S. 350, and since affirmed in many other cases.
Dissent, quoting Gage v. Herring, 107 U.S. 640, 645 (1883) (emphasis added by Judge Dyk). In Judge Dyk's view, Gage thus foreclosed the ability of applicants to retain the original claims without alteration or amendment, or at a minimum created enough conflict with the cases cited by the majority that the court was free to address the issue on the merits.
Comment: As both the majority and dissent seem to implicitly recognize, neither is on particularly solid ground in terms of prior decisions. The majority relies on a rule that it itself admits is dicta, but nevertheless characterizes as the product of longstanding precedent. The dissent foundation's is even less stable, being built on vague language from an opinion that involved an earlier version of § 251. It is not at all clear from Gage that the Court was concerned with the mere addition of a new claim or instead with the addition of a broadening claim, although after reading Gage I think the majority has the more correct interpretation. In the end, though, the majority supports its opinion not just with citation to Handel, but also with reasoning sufficient enough to provide an independent basis for the ruling.