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A Reason For The Addition Of Claims During Reexamination Is Not Statutorily Required

Jan.15.2008

In Cordis Corp. v. Medtronic (No. 06-1393, January 7, 2008), the Federal Circuit affirms the district court’s denial of the co-defendants’ motions for a new trial and for judgment as a matter of law of noninfringement in consolidated appeals from two related cases following a jury finding of infringement against the co-defendants, and a district court finding of invalidity of one of the asserted patent claims. The district court’s invalidity of one of the asserted patent claims is, however, reversed.

At issue is the district court’s invalidation of that claim under 35 U.S.C. §305, which states that a patent owner may amend or add claims during reexamination to “distinguish the invention as claimed from the prior art cited” or “in response to a decision adverse to the patentability of a claim of the patent.” Section 305 also prohibits the amendment or addition of any claim “enlarging the scope of a claim of the patent” during reexamination. The district court had found that the claim was specifically and impermissibly added during the reexamination proceeding for the purpose of covering its competitors’ products.

The Federal Circuit panel holds that “Section 305 does not require the patent owner to include an express statement that the new claims distinguish the prior art or remarks indicating how the new claims distinguish the prior art references.” It reasons that “[i]f the claims fail to distinguish the prior art, the claims will be rejected on the appropriate grounds” by the Patent and Trademark Office. The panel further notes that the Manual of Patent Examining Procedure directs patent examiners to determine only whether any added claims impermissibly enlarge the scope of the original claims, something that was not at issue in this case.

[http://fedcir.gov/opinions/06-1393.pdf]

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Jonathan M. Lindsay
Partner – Orange County
Phone: +1 949.263.8400
Email: jlindsay@crowell.com