Brief Fact Summary. For the purpose of narrowing the claims for an upcoming infringement action, Bausch & Lomb (Defendant) submitted false affidavits declaring errors in an acquired patent.
Synopsis of Rule of Law. Failing to include narrower or dependent claims in a patent is not enough on its own to establish error warranting reissue under 35 U.S.C. Â§ 251.
Issue. Is the failure to include narrower or dependent claims in a patent enough on its own to establish error warranting reissue under 35 U.S.C. Â§ 251?
Held. (Nies, J.)Â No.Â Failing to include narrower or dependent claims in a patent is not enough on its own to establish error warranting reissue under 35 U.S.C. Â§ 251.Â Two parts are required in Section 251: (1) error in the patent and (2) error in conduct.Â The practice of allowing reissue for the purpose of including narrower claims as a way to avoid possible invalidation of the broad claim is silently approved of in precedent.Â This would reach error in the patent, but it need not be decided since Defendant certainly did not meet the second part.Â The only evidence of error in conduct was in Fleming’s affidavits, and these were shown to be factually false.Â Without these, there was no error in conduct, and the reissue claims fail.Â However, it does not follow that Claims 1 to 9 must be held invalid simply because the reissue claims were.Â The original claims stand.Â Affirmed in part; vacated in part.
Discussion. Since practitioners require certainty, and it is quite difficult to determine what exactly constitutes error, there is a movement to eliminate the error requirement.Â The 1992 Advisory Commission suggested that elimination is mandated because of inconsistent interpretations of “error” by the courts.Â The Advisory Commission pointed out the only public policy involved in limiting reissues to errors happens in the case of deceptive intent.Â See the Advisory Commission on Patent Law Reform, a report to the Secretary of Commerce 129 (1992).