A recent law review article discusses reissue as a potential cure for patentees who have had their claims invalidated by a court or the Patent Trial and Appeals Board (PTAB).[1]

Under 35 U.S.C. § 251, reissue is available when “any patent is, through error, 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 idea is that drafting overbroad claims may be “error” that can be afforded relief in the form of reissue under § 251 even after the patent has been held invalid. The author of the article points out that (1) nothing in § 251 suggests reissue should be unavailable following a court or PTAB decision invalidating patent claims, (2) no current law expressly forecloses the option of reissue after invalidation, and (3) some favorable – though very dated – case law remains in effect supporting reissue after invalidation.

For example, the author cites cases dating between 1927 and 1954 from courts in the First, Fourth, and Ninth Circuits that have either upheld reissue patents after a finding of invalidity of all claims of the original patent, or have expressly rejected the notion that reissue patents would be per se invalid under these circumstances.[2]

In short, the author argues that a patentee “should be entitled to initiate reissue proceedings”[3] after the patent has been invalidated by a court or the PTAB if the reason for invalidity is that the claims are invalid as written (but not if the reason for invalidity is that “the patent does not describe a patentable invention”[4]).

The author details multiple considerations that should be balanced when determining whether to attempt resuscitating patent claims by reissue. For example, failure to act fast may subject the patentee to the equitable defense of laches. In addition, competitors may be entitled to intervening rights arising during the pendency of the reissue application, shielding them from later infringement claims based on the reissue. And post-invalidation reissue may be more or less favorable depending on the pace of innovation and market entry in the patentee’s technical field.

If the tactic is successful, reissue could be an attractive option for some patent owners. In particular, patentees facing possible invalidation in a PTAB post-grant trial may be able to resort to reissue as a last-ditch effort to save their claims, especially in light of the PTAB’s reluctance to grant leave to amend claims during these trials. And, although reissue typically comes with its own risks (e.g., reopening prosecution), the owner of an invalidated patent has less to lose by filing for reissue.

Overall, the possibility of reissue after invalidation begs several interesting questions. For instance, what are the underlying legal implications of an adjudication finding patent claims invalid? The rights of priority inherent in a duly filed patent application exist independent of the claims, and there is no reason to believe these rights vanish when badly drafted claims are held invalid.

But suppose the original claims are litigated in a district court. The infringement defendant wins a judgment of invalidity, either in the district court or in an inter partes review. The patentee thereafter obtains a reissue from the Patent Office, getting narrower but otherwise valid claims. First of all, can the Article I agency, the Patent Office, truly revive a property right that the Article III court has “deemed invalid” (read: “should never have existed in the first place)? Second, does the patentee now get a second bite at the apple with the same defendant? Does res judicata apply against the patentee?

Another consideration relates to the basic availability of reissue. Under § 251(d), reissue applicants who seek to broaden the scope of their claims must do so within two years of issue. If the patent has been litigated and deemed invalid, that two-year window is almost certainly long since closed. Would a reissue of an invalidated patent be considered a broadening reissue, and in these circumstances prohibited by § 251(d)? Arguably, resuscitating claims of zero/invalid scope to obtain claims of any scope at all could be construed as a broadening reissue.

Then again, if the patentee adds narrowing limitations to the invalidated claims and obtains a reissue, then arguably the new claims are properly narrowed and not subject to any preclusion doctrines, as these new, narrower claims have not been adjudicated in any real sense. Of course, the patentee could have sought the reissue before bringing the first infringement action. It seems that res judicata could preclude the patentee from bringing infringement claims against the same defendant in this case. But the standard for reissue revolves around “error” on the part of the patentee or the Patent Office. Does res judicata apply against a patentee who, “through error,” didn’t realize his patent was invalid?

Other questions present themselves. What becomes of licensing arrangements and other agreements entered into prior to the invalidity determination when the patentee later obtains a narrowed, valid reissue patent? Should licensing terms contemplate such a scenario from the outset? Did Congress intend for reissue to apply after invalidation (the word “invalid” is right there in the statute), or is this simply an unnoticed loophole in the Patent Act? It will be interesting to see if this tactic ever gains traction, and if it does, how courts ultimately come down on it.

[1] John E. Kind, Post Invalidation Reissue: An Underused Tool in the Patent Arsenal, 57 IDEA 1 (2016), http://law.unh.edu/sites/default/files/media/kind_formatted_final.pdf.

[2] Id. at 9–12 n.41 (citing Moist Cold Refrigerator Co. v. Lou Johnson Co., 217 F.2d 39 (9th Cir. 1954); Rancourt v. Panco Rubber Co., 67 F.d2 790 (1st Cir. 1933); Frink Co. v. Erikson, 20 F.2d 707 (1st Cir. 1972); United Carbon Co. v. Carbon Black Research Found., 59 F. Supp. 384 (D. Md. 1945).

[3] Id. at 6.

[4] Id. at 13.