The opinion of the court was delivered by: GARY LANCASTER, District Judge
This is an action in patent infringement. Plaintiff, Medrad,
Inc., alleges that defendants, Tyco Healthcare Group LP,
Mallinckrodt Inc., Liebel-Flarsheim Co., and Nemoto Kyorindo Co.,
Ltd., have infringed on its patent in violation of the Patent
Act, 35 U.S.C. § 271, et seq. The patent asserted in this case,
United States Patent No. RE 37,602 (the '602 Patent), discloses
and claims inventions relating to patient infusion systems for
use with Magnetic Resonance Imaging, or MRI, systems. Plaintiff
seeks injunctive and monetary relief.
Before the court are the parties' cross motions for summary
judgment regarding the validity of plaintiff's reissued patent.
Defendants filed a motion for summary judgment of invalidity of
the '602 Patent based on defective reissue [doc. no. 211].
Defendants argue that under the reissue statute, 35 U.S.C. § 251,
a patentee may secure reissue of a patent only to correct one of four statutorily identified 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. According to
defendants, because plaintiff did not file the reissue
application that resulted in the '602 Patent to fix one of these
four errors, the '602 Patent is invalid.
Plaintiff also filed a motion for summary judgment of no
invalidity based on its filing of the reissue application [doc.
no. 216]. Plaintiff argues that a reissue application can be
filed to correct any number of mistakes made during the
prosecution of a patent. Plaintiff contends that the United
States Patent and Trademark Office (the PTO) properly issued the
'602 Patent to correct an error caused by a failure to file the
appropriate declarations during prosecution of a predecessor
For the reasons set forth below, defendants' motion will be
granted and plaintiff's motion will be denied. Because the patent
sued upon in this case has been deemed invalid as a result of
these rulings, this case will be closed. I. BACKGROUND
The facts material to this issue are not in dispute.
There were two predecessor patents to the '602 Patent, both of
which plaintiff owned by assignment. First, U.S. Patent No.
5,494,036 (the '036 Patent), issued on February 27, 1996. And
second, U.S. Patent No. RE 36,648 (the '648 Patent), issued on
April 11, 2000. Plaintiff sought to reissue the '036 Patent to
broaden its claims, and filed a reissue declaration regarding
that desired change. During prosecution of the application,
however, the PTO actually narrowed plaintiff's claims.*fn1
In addition, during the prosecution, plaintiff added two more
inventors to the patent.
Therefore, while plaintiff originally sought reissue to correct
a purported underclaiming error, and filed a reissue declaration
regarding that error, the PTO reissued the patent to correct an
overclaiming error and an inventorship error. For reasons not
clear from the record, plaintiff failed to file a supplemental
reissue declaration regarding the two errors identified and ultimately corrected by the PTO, as it was
required to do under PTO Rules. 37 C.F.R. § 1.175.
Shortly after the PTO issued the '648 Patent, plaintiff filed a
complaint with the U.S. International Trade Commission alleging
illegal importation of infringing devices in violation of section
337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337. The
Administrative Law Judge found, via summary determination, that
the '648 Patent was invalid because plaintiff failed to file
supplemental reissue declarations regarding the overclaiming and
inventorship errors that were ultimately corrected by the PTO.
The ALJ's initial determination became the final determination of
the Commission, and the ITC investigation was terminated on
February 12, 2001.
Before the ALJ's initial determination became final, plaintiff
filed an application with the PTO seeking reissue of the '648
Patent, which itself was a reissued patent. Plaintiff filed this
second reissue application in order to remedy the problems with
the '648 Patent that were identified by the ALJ, namely, the lack
of supplemental reissue declarations regarding the overclaiming
and inventorship errors that were ultimately corrected by the
'648 Patent. On March 26, 2002, the PTO issued the '602 Patent,
which is the basis of plaintiff's complaint in this case. The
'602 Patent does not change the specification, drawings, claims, or any other part of the '648 Patent. The only
difference between the two patents is that during the prosecution
of the '602 Patent the missing supplemental reissue declarations,
identified as lacking by the ITC, were allegedly filed.*fn2
Fed.R.Civ.P. 56(c) provides that summary judgment may be
granted if, drawing all inferences in favor of the non-moving
party, "the pleadings, depositions, answers to interrogatories
and admissions on file, together with the affidavits, if any,
show that there is no genuine issue as to any material fact and
that the moving party is entitled to a judgment as a matter of
law." To defeat summary judgment, the non-moving party cannot
rest on the pleadings, but rather must go beyond the pleadings
and present "specific facts showing that there is a genuine issue
for trial." Fed.R.Civ.P. 56(e).
The mere existence of some factual dispute between the parties
will not defeat an otherwise properly supported motion for
summary judgment. A dispute over those facts that might affect
the outcome of the suit under the governing substantive law, i.e. the material facts, however, will preclude the entry
of summary judgment. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986). Similarly, summary judgment is improper so long
as the dispute over the material facts is genuine. Id. In
determining whether the dispute is genuine, the court's function
is not to weigh the evidence or to determine the truth of the
matter, but only to determine whether the evidence of record is
such that a reasonable jury could return a verdict for the
non-moving party. Id. at 248-49. Under these standards, the
non-moving party must do more than show there is "some
metaphysical doubt" as to the material facts. Matsushita Elec.
Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586
"Where the record taken as a whole could not lead a rational
trier of fact to find for the non-moving party, there is no
`genuine issue for trial.'" Matsushita Elec., 475 U.S. at 587
(citations omitted). In summary, the inquiry under a Rule 56
motion is whether the evidence of record presents a genuine
dispute over material facts so as to require submission of the
matter to a jury or whether the evidence is so one-sided that ...