In In re Kostic, No. 23-1437 (Fed. Cir. May 6, 2025), the Federal Circuit affirmed the PTAB's finding that a reissue application for an online advertising patent improperly broadened the original claim.
The appellants filed a reissue application six years after the patent was granted. By statute, reissue applications filed more than two years after the grant of the original patent cannot broaden the scope of the original patent claims. In the reissue proceeding, the appellants attempted to fix what they perceived as an inconsistency between dependent claim 3 and the claim from which it depended by rewriting claim 3 as an independent claim and deleting a step from the original independent claim that allegedly created the inconsistency. But the PTAB found that omitting the original independent claim's language from the reissue claim would improperly broaden the scope of dependent claim 3.
On appeal, the appellants argued that the proper inquiry regarding the scope of a reissue claim is not whether it is broader than the scope of the original claim but whether it is broader than the "intended scope" of the original claim. And, because they obviously intended to draft claims that were consistent with each other, they should be permitted to omit the inconsistent language. The Federal Circuit disagreed, determining that the relevant statute, 35 U.S.C. §251(d), and precedent require "comparing the scope of a reissue claim to the actual scope of an original claim, rather than what the inventors subjectively intended to claim." Applying this holding to the appellants' reissue claim, the court affirmed the PTAB's finding that the reissue claim is broader than the scope of any claim of the original patent.
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