Medrad, Inc. v. Tyco Healthcare Group LP, et al.
Failure to File a Supplemental Reissue Declaration Under 37 C.F.R. 1.175 Is A Type of Defect Correctable Under 35 U.S.C. § 251.
On appeal from the district court (W.D. Pa.), the CAFC reversed a summary judgement of invalidity regarding Medrad’s U.S. Reissue Patent 37,602 (the 602 reissue patent). The 602 reissue patent had as its predecessor U.S. Reissue Patent 36,648 (the 648 reissue patent), which was previously found invalid by the ITC for Medrad’s failure to file supplemental reissue declaration regarding overclaiming and inventorship errors. Such a declaration states that (1) applicant believes the original patent to be inoperative or invalid by reason of defective specification, drawing or claiming more or less than application had the right to claim, and (2) that all errors arose without deceptive intention. The 602 reissue patent was filed to correct these “procedural” errors, and had an identical specification, drawings, and claims to the 648 reissue patent.
Medrad had originally filed a complaint against Tyco alleging infringement of the 602 reissue patent, relating to patient infusion systems for use with magnetic resonance imaging systems. Tyco argued that the reissue was defective under 35 U.S.C. Section 251. The issue on appeal was whether this section requires an error occur in the actual language of a patent’s claims or whether the section refers broadly to errors that result in patent rights with more or less scope than would have been provided but for the error?
Section 251 sets forth the requirements for obtainin a reissue patent and provides:
Whenever any patent is, through error without any deceptive intention, 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 Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. (Emphasis added).
The CAFC stated that Tyco failed to identify any support for limiting Section 251 to require an error occur in the actual language of a patent’s claims. In fact, under the terms of Section 251 highlighted above, correction of the failure to submit a supplemental declaration in support of narrowing subject matter and a change in inventorship is expressly covered. Accordingly, the errors of the 648 reissue patent were properly corrected and the 602 reissue patent valid.