United States District Court, W.D. Pennsylvania
October 12, 2005.
MEDRAD, INC. Plaintiff,
TYCO HEALTHCARE GROUP LP, et al., Defendants.
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
II. STANDARD OF REVIEW
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 the
movant must prevail as a matter of law because no reasonable jury
could return a verdict in her favor. III. DISCUSSION
The dispositive question presented by these cross motions for
summary judgment is whether the reissue statute, 35 U.S.C. § 251,
can be used to correct a mistake that plaintiff made during the
prosecution of the predecessor patent, i.e., failing to file
supplemental reissue declarations in compliance with PTO Rule
1.175. Defendants contend that section 251 cannot be used to
remedy a procedural mistake made during the prosecution of a
predecessor patent. According to defendants, by statute, errors
correctable by reissue are limited to those that remedy a defect
found in the specification, drawings, or claims of a patent.
Defendants argue that because the '602 Patent makes no change to
these parts of the predecessor patent the reissued patent is
Plaintiff, on the other hand, contends that courts routinely
allow patent holders to fix a variety of procedural mistakes and
errors made during the prosecution of a patent pursuant to
section 251. Plaintiff emphasizes that the statute is remedial in
nature and should be construed broadly. According to plaintiff,
it proceeded appropriately under section 251 in order to fix the
failure to file supplemental reissue declarations during the
prosecution of the predecessor patent. Because we find that section 251 requires that some error in
the specification, drawings, or claims of the patent be corrected
as a result of the reissue process, we grant defendants' motion
for summary judgment. Although we recognize that the reissue
statute is remedial and must be construed broadly, we cannot
interpret a federal statute in a way that eliminates the very
phrases of limitation from its text. Were we to adopt plaintiff's
reasoning that a patent holder could secure, by reissue, a patent
that is the same in all respects on its face, but corrects a
mistake made during the prosecution of a predecessor patent that
results in the patent being invalid, we would do just that.
Neither the statute, nor the cases interpreting it, justify such
While we recognize that this holding produces a harsh result
ultimately, plaintiff's patent is invalidated because it failed
to file a supplemental declaration with the PTO we cannot
reconcile plaintiff's legal argument with the language of section
251, and the controlling case law interpreting it. Perhaps the
language of section 251 will, or should, change. However, it is
not the province of this court to do so. A. Legal Authority
1. Validity of Patent
A patent, including a reissued patent, is presumed to be valid.
35 U.S.C. § 282; Westvaco Corp. v. Int'l Paper Co.,
991 F.2d 735, 745 (Fed. Cir.*fn3 1993); Am. Hoist & Derrick Co. v.
Sowa & Sons, Inc., 725 F.2d 1350, 1359-60 (Fed. Cir. 1984).
Therefore, a successful challenge to the validity of a patent,
whether regularly issued, or issued pursuant to re-examination or
reissue procedures, must meet the clear and convincing evidence
standard. Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d 970,
973-74 (Fed. Cir. 1986).
2. The Reissue Statute
Section 251 of the Patent Act provides for reissue of defective
patents. 35 U.S.C. § 251. The section, in pertinent part, states:
Whenever any patent is, through error without
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
35 U.S.C. § 251 (emphasis added). By its own terms, section 251
requires that the patentee base his application for reissue upon
one of four specified grounds statutorily identified as
correctable defects. In re Amos, 953 F.2d 613
, 616 (Fed. Cir.
1991). This error requirement limits the availability of reissue
to certain correctable errors. Hester Indus., Inc. v. Stein,
Inc., 142 F.3d 1472
, 1479 (Fed. Cir. 1998). Again, these
correctable errors are: (1) a defect in the specification; (2) a
defect in the drawings; (3) an error caused by claiming more than
one is entitled to (an overclaiming error); or (4) an error
caused by claiming less than one is entitled to (an underclaiming
error). As such, a reissued patent must result in a change to the
specification, drawings, or claims of the predecessor patent. In
re Clement, 131 F.3d 1464, 1472 (Fed. Cir. 1997); In re
Rogoff, 261 F.2d 601, 605-06 (C.C.P.A.*fn4
that there is no statutory basis for reissue where the "new"
claims are of the same scope as the claims in the predecessor
patent). The statute is remedial in nature, is based on fundamental
principles of equity and fairness, and should be construed
liberally. In re Doyle, 293 F.3d 1355
, 1358 (Fed. Cir. 2002)
(quoting In re Weiler, 790 F.2d 1576
, 1579 (Fed. Cir. 1986)).
Notwithstanding its remedial nature, the Court of Appeals for the
Federal Circuit has stated that section 251 is not a panacea
designed to cure every mistake that might be committed by an
applicant or his attorney. Id. (quoting In re Orita,
550 F.2d 1277, 1281 (C.C.P.A. 1977)); see also In re Weiler,
790 F.2d at 1579 (stating that "not every event or circumstance that
can be labeled `error' is correctable by reissue").
B. Legal Analysis
The first hurdle that a reissued patent must overcome is
whether "a proper ground for reissue existed under section 251."
In re Clark, 522 F.2d 623, 625 (C.C.P.A. 1975). A determination
of whether a reissue application has met the statutory
requirements of section 251 is a question of law. In re
Clement, 131 F.3d at 1468. As detailed above, section 251
provides for reissue of a patent that is deemed invalid due to
four specific errors: a defect in the specification, a defect in
the drawings, an underclaiming error, or an overclaiming error.
35 U.S.C. § 251. In this case, plaintiff filed a reissue application in order to
correct the error in the '648 Patent identified by the ITC,
i.e., the lack of supplemental reissue declarations addressed
to the overclaiming and inventorship issues ultimately corrected
by the PTO. Plaintiff does not contend that this correction fits
into one of the four statutorily identified errors. Instead,
plaintiff asserts that the Court of Appeals for the Federal
Circuit, as well as other courts, have ruled that procedural
errors are correctable through reissue, without regard to the
identification of a statutorily defined defect. However, the
cases on which plaintiff relies do not support that argument.
1. Court of Appeals for the Federal Circuit Cases
The cases from the Court of Appeals for the Federal Circuit
that plaintiff relies on do not hold that section 251 can be
utilized to correct procedural errors made during the prosecution
of a predecessor patent, which may affect the ultimate validity
of the patent, but have no effect on the specification, drawings,
or claims of the patent itself. Rather, the majority of the cases
involve straightforward instances where the reissue statute was
used to correct erroneous claims. See In re Doyle,
293 F.3d at 1358; Scripps Clinic & Research Foundations v. Genetech,
Inc., 927 F.2d 1565, 1575 (Fed. Cir. 1991); In re Wilder,
736 F.2d 1516, 1518 (Fed. Cir. 1984); Ball Corp. v. United States,
729 F.2d 1429, 1434 (Fed. Cir. 1984).
Even in In re Bennett, 766 F.2d 524 (Fed. Cir. 1985), a case
characterized by plaintiff as key to deciding this issue in its
favor, the patentee sought reissue in order to change the
language of the patent's claims. Bennett, 766 F.2d at 525. The
patentee did not file a reissue application in order to correct a
"procedural error"; rather, a "procedural error" occurred when
the wrong person signed the reissue application. Id. The Court
of Appeals for the Federal Circuit approved of the patentee
fixing this mistake by filing a supplemental document reflecting
the correct signature the inventor's. Contrary to plaintiff's
contention, the court did not find that the patentee could make
that correction by filing a reissue application under section
Instead, the court ruled that section 251 proceedings are not
insulated from those provisions of the Patent Act that enable
patentees to correct a variety of errors in how documents are
signed, and how inventors are listed on documents. In reaching
this conclusion, the court pointed out that section 26 of the
Patent Act allows for provisional acceptance of defectively
executed documents and that sections 116 and 256 provide for
amendments to correct errors in inventorship. Id. at 526-28. Admittedly the court also discussed the remedial nature of
section 251 and the principles of equity and fairness behind it.
Id. at 528. However, the holding in Bennett was that a
patentee could, pursuant to other sections of the Patent Act,
correct an error in how a reissue application was executed, and
that the correction would "relate back" to the original filing
date of the reissue application. Therefore, Bennett is
distinguishable from this case, and does not support plaintiff's
argument that the Court of Appeals for the Federal Circuit has
allowed patentees to use section 251 to fix procedural errors.
We have found no other opinion issued by the Court of Appeals
for the Federal Circuit interpreting section 251 in the way
plaintiff suggests. Rather, all of the cases addressing this
issue identify, as the first step in the analysis, which of the
four statutorily identified errors the patentee is seeking to
correct under section 251. There are no cases from the Court of
Appeals for the Federal Circuit supporting plaintiff's expansive
interpretation of section 251. 2. Other Appellate Court Cases
Nor do any of the other cases relied upon by plaintiff support
that interpretation. Plaintiff relies heavily on Brenner v.
State of Israel, 400 F.2d 789 (D.C. Cir. 1968) and A.F.
Stoddard & Co., Ltd. v. Dann, 564 F.2d 556 (D.C. Cir. 1977) to
support its argument that section 251 can be used to fix
procedural prosecution errors. Although these cases do stretch
the bounds of section 251 to, and perhaps beyond, its limits,
they do not compel the result that plaintiff seeks in this case.
Firstly, these are decisions of the Court of Appeals for the
District of Columbia Circuit, not the Court of Appeals for the
Federal Circuit, which issues precedential opinions in the realm
of patent cases. Secondly, the cases are factually and legally
distinguishable from this case.
(a) Brenner v. State of Israel
In Brenner, the patentee filed a reissue application in order
to remedy his failure to file a certified copy of the foreign
patent under which he claimed priority during prosecution of the
predecessor patent. Brenner, 400 F.2d at 790. The failure to
file that patent violated section 119 of the Patent Act, and made
the patentee's priority claim ineffective. Id. The District Court found that the reissue statute was
sufficiently broad to entitle the patentee to a reissued patent
that included a priority claim based on his foreign patent. Id.
at 790. The Court of Appeals for the District of Columbia Circuit
affirmed, guided by its obvious belief that the patentee should
not loose his priority rights due to a "trivial clerical error."
Id. at 791. However, the court also grounded its ruling in the
statutory language of section 251 by equating the loss of an
effective priority `claim' with an underclaiming error. Id.
(finding that because the error caused the patentee to lose the
benefit of his claim of priority, the "patentee claim[ed] . . .
less than he had a right to claim in the patent").
The instant case does not deal with an attempt to fix a "claim"
of priority, and is distinguishable on that ground. In addition,
Brenner actually emphasizes the importance of making a
threshold finding that the reissue application fits within the
language of section 251. For these reasons, Brenner is not
particularly helpful to plaintiff's argument that section 251 can
be used to fix procedural mistakes that fall outside the scope of
the four statutorily defined defects. (b) A.F. Stoddard & Co. v. Dann
We find Stoddard to carry even less weight due to its lack of
any meaningful discussion of section 251, its requirements or
limitations, or the cases applying it. In Stoddard, the Court
of Appeals for the District of Columbia Circuit permitted a
patentee to change the name of the inventor listed on the patent
under section 251. Stoddard, 564 F.2d at 558. In so doing, the
court overruled the Patent Office Board of Appeals's decision
that "section 251, even if most liberally construed, does not
authorize the reissuance" of a patent in the name of a different
inventor. Id. at 561.
While the Stoddard opinion includes lengthy commentary on the
constitutional basis for the patent system, and specifically the
role of inventorship in that system, the patent system's
requirement of full disclosure, the notion of harmless error, and
the inequity of putting form over substance, it remarkably does
not include a discussion of whether a proper statutory ground for
reissue existed under section 251. The Court of Appeals for the
Federal Circuit has instructed that this is the first question
that must be answered in determining the validity of a reissued
patent. In re Clark, 522 F.2d at 625, In re Wilder,
736 F.2d at 1518. For this reason alone, the Stoddard decision is of
questionable value. In addition, the court's holding was based on an interpretation
of another section of the Patent Act, namely section 116, which
allows a patent application to be amended to correct a mistake in
how joint inventors are listed. 35 U.S.C. § 116. The court found
that section 116 could be read as sufficiently expansive to
justify the inventorship correction requested by the patentee.
Stoddard, 564 F.2d at 567. The court did not substantively
discuss section 251 in the opinion at all. In fact, when the
court did mentioned the statute in the conclusion of the opinion,
it did so only to point out that the patentee could have obtained
the same correction under section 256, but chose to proceed under
section 251 instead. Id. at 567 & n. 16. This opinion cannot be
fairly read to hold that a patentee can use section 251 to fix
procedural mistakes in a patent. Therefore, Stoddard does
little to advance plaintiff's argument.
3. Cases Cited in the MPEP
The cases cited in the Manual of Patent Examining Procedure
similarly do not support plaintiff's argument that section 251
can be used to correct procedural errors. Instead, each of the
examples listed as a "proper ground" for filing a reissue
application result in a change to the specification, drawings, or claims of the patent, which some tribunals have defined to
include inventorship or priority "claims" of a patent. See Ex
parte Scudder, 169 U.S.P.Q. 814, 815 (B.P.A.I. 1971) (allowing
corrections to be made to the named inventor under section 251
because the mistake caused the inventors to "claim" more than, or
less than, they had a right to claim); Sampson v. Comm'r. of
Patents and Trademarks, 195 U.S.P.Q. 136, 137-38 (D.D.C. 1976)
(allowing information to be added to abandoned patent
applications in order to perfect a "claim" of priority).
In short, none of the cases plaintiff relies on support the
contention that section 251 can be used to fix procedural
mistakes. Nor do any of the cases support plaintiff's reading of
the statute, which eliminates the "by reason of" limitation
entirely and allows any error to be fixed as long as it was
inadvertent and results in a patent being invalid. Rather, the
courts have consistently interpreted section 251 according to its
own terms, which require that the mistake sought to be remedied
through reissue be one of the four statutorily identified errors.
As such, defendants have satisfied their burden to prove, by
clear and convincing evidence, that as a matter of law
plaintiff's patent is invalid. While we recognize that the PTO permitted plaintiff to use the
reissue procedure to fix its procedural mistake, the PTO is not
always correct in its interpretation and application of the
reissue statute. See e.g. In re Hounsfield, 699 F.2d 1320
(Fed. Cir. 1983) (PTO refused reissue due to a lack of intent to
claim; Court of Appeals for the Federal Circuit reversed, finding
that PTO erroneously viewed lack of intent to claim as precluding
reissue); Fontijn v. Okamoto, 518 F.2d 610, 621-23 (C.C.P.A.
1975) (reversing decision of PTO Board of Patent Interferences
that perfecting a claim of priority through reissue broadens the
claims of a patent).
Although this may produce a harsh result, especially
considering that plaintiff filed the second reissue application
to remedy a mistake that was apparently acquiesced to by the PTO
during the prosecution of the first reissue, it is the result
mandated by the statute, as it is currently drafted, and the
controlling case law.
For the foregoing reasons, defendants' motion for summary
judgment is granted, and plaintiff's motion for summary judgment
is denied. An appropriate order follows. ORDER
Therefore, this 12th day of October, 2005, IT IS HEREBY
ORDERED that defendants' motion for summary judgment [doc. no.
211] is GRANTED;
IT IS FURTHER ORDERED that plaintiff's motion for summary
judgment [doc. no. 216] is DENIED;
IT IS FURTHER ORDERED that all other pending motions are deemed
IT IS FURTHER ORDERED that final judgment in this Court is
entered pursuant to Rule 58 of the Federal Rules of Civil
Procedure and the Clerk of Court is directed to mark this case
© 1992-2005 VersusLaw Inc.