The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision of the Patent Trial and Appeal Board sustaining the examiner's rejection of a claim of a reissue application under 35 U.S.C. § 251 because the reissue claim broadened the scope of the original patent 1. The court held that when considering whether a claim presented in a reissue application broadens the scope of the original patent under 35 U.S.C. § 251(d), one must look to the "actual scope of the claim-at-issue, not the subjective intended scope of the inventors."
In 2013, inventors Kostic and Vandevelde obtained a patent for an intermediary website that acts as a broker between buyers and sellers of click-through traffic. Independent claim 1 of the patent was directed to a method "for buying and selling of click-through traffic" and included a limitation for "conducting a pre-bidding trial of click-though traffic." Independent claim 1 included additional limitations specified as being performed "during a trial period" and "after the trial period." Dependent claim 3 recited the method of claim 1 where exchange partners "conduct a direct exchange of click-through traffic without a trial process."
Six years later, in 2019, the patentee filed a reissue application with a declaration indicating as basis for the reissue application that dependent claim 3 was in error because it violated 35 U.S.C. § 112 (fourth paragraph) for failing to include the limitations of claim 1 from which it depends. That is, the reissue applicant asserted that the intent of dependent claim 3 was to remove the limitation of conducting a trial from independent claim 1.
During prosecution of the reissue application, the applicant proposed two versions of amendments to dependent claim 3. In the first version, dependent claim 3 was rewritten into independent form while removing all references to a trial process. In the second version, dependent claim 3 was rewritten into independent form using conditional language to describe what steps are implemented when a trial process is conducted and what steps are implemented when no trial process is conducted. In both cases, and among other reasons, the examiner rejected reissue application claim 3 because: 1) the declared error providing a reason for the reissue application was defective; and 2) the claim was found to broaden the scope of the claims of the original patent in violation of § 251 that states, in part, "no reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent."
The patent's specification indicates that "many simultaneous trials, sale, or direct sale transactions" can be conducted. Thus, the examiner reasoned that "claim 3 is interpreted to require not only the performance of the entirety of claim 1 (including all of the trial-related steps), but further to require a "direct" sale/exchange without its own trial, beyond the trial already present in claim 1."
Upon review, the Board found that the examiner had not erred in rejecting reissue claim 3 for a defective declaration and improper broadening under § 251. To support this finding, the Board noted that the patent disclosure did not provide an embodiment consistent with an interpretation of claims 1 and 3 promoting an exchange service without a trial process. The Board further noted that 35 U.S.C. § 112 (fourth paragraph) actually precludes the applicant's interpretation of dependent claim 3 being intended to remove limitations from independent claim 1 because this statute requires that a dependent claim "be construed to incorporate by reference all the limitations of the claim to which it refers."
On appeal to the Federal Circuit, the applicant argued that the proper inquiry is not whether the scope of reissue claim 3 is broader than the scope of original claim 3, but whether the scope of reissue claim 3 is broader than the "intended scope" of original claim 3. The court disagreed citing the "plain text of 35 U.S.C. § 251(d), which prohibits reissue patents "enlarging the scope of the claims," not reissue patents enlarging the intended scope of the claims." The Court further explained that this view is consistent with the purpose and history of § 251(d) where the bar on broadening reissue patents was created to protect other parties who had reason to conclude that their actions were free from infringement concerns, as well as not unduly burdening competitors who must determine the scope of the claimed invention based on an erroneously drafted claim. Thus, because reissue claim 3 broadened the scope of the original patent claims, the reissue application was statutorily barred under § 251(d).
When determining whether the original patent has an error that can be corrected in a reissue application, the applicant's intended claim scope is not the relevant inquiry. What the specification supports, and how the claims are reasonably interpreted in light of the intrinsic record, is what controls whether a reissue claim broadens the scope of the originally claimed invention.
Footnote
1 In re Kostic, 135 F.4th1374 (Fed. Cir. 2025).
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