In re Yasuhito Tanaka, --- F.3d ----, No. 2010-1262, 2011 WL 1437887, 98 U.S.P.Q.2d 1331 (Fed. Cir., April 15, 2011), the Federal Circuit ruled that a reissue application that merely adds dependent claims satisfies the requirements for seeking reissue. This decision could effectively broaden the scope of reissue proceedings in patent cases.
The Tanaka case involved a reissue application in which a single new dependent claim was presented, but the original claims were unchanged. The examiner rejected the claims, holding that “[t]he Applicant has not specified an error that broadens or narrows the scope of the claims . . . The original claim 1 remains . . . therefore the broadest scope of the patent remains the same.” The Board of Patent Appeals and Interferences agreed.
On Appeal, however, the Federal Circuit reversed, citing three prior cases. Most notably, the court quoted In re Handel, for the proposition that “adding dependent claims as a hedge against possible invalidity of original claims ‘is a proper reason for asking that a reissue be granted’” and that “’[t]he term ‘inoperative’ has been construed to mean inoperative adequately to protect the invention, which may be due to failure of the solicitor to understand the invention.’” 312 F.2d 943, 946 n.2 (CCPA 1963) (Rich, J.). Based on Handel and two other cases, the Federal Circuit held that “[t]he omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law,” which provides a basis for reissue.
In a dissenting opinion, Judge Dyk noted that the prior cases relied upon by the court did not address the issue at hand: the language from those cases is pure dicta. Further, the majority’s decision seems contrary to two very old Supreme Court decisions on the subject, Gage v. Herring, 107 U.S. 640 (1883), and Miller v. Bridgeport Brass Co., 104 U.S. 350 (1881).
Despite the dissent, the conclusion of the majority in Tanaka is reasonable and defensible. While the Tanaka majority relied on dicta from prior cases, the dissent is built upon very old cases, with different facts, and an earlier version of the reissue statute. While the law remains to be developed, the Tanaka decision authorizes the addition of dependent claims through reissue, even with no other changes to the patent. This development may allow patent holders a broader avenue to strengthen their patent after it issues – an avenue that has not clearly existed before.