Vectra Fitness v. TNWK Corporation
United States Court of Appeals for the Federal Circuit (Fed. Cir). December 14, 1998

BACKGROUND
You diligently monitor your competitor's activities, including new products and recently issued patent or published Patent Cooperative Treaty (PCT) publications. You note that a competitor's recently published PCT application is very similar to one of your recently issued United States patents. Upon review of your United States patent, you feel that it would be beneficial to obtain claims that are a bit broader so that they encompass the disclosure of your competitor's PCT application.

EXECUTIVE SUMMARY
In this patent reissue proceeding involving exercise equipment, the district court found that the reissue claims sought to broaden the original claims more than two years after the issuance of the original claims. The original claims were interpreted in light of a statutory disclaimer that narrowed the claims after the patent issued, but before broader reissue claims were sought. Since the statutory disclaimer had the effect of eliminating the broader claims, the original claims were interpreted as being narrowly drawn. The Fed. Cir. affirmed. The Practice Pointer to be gained from this case is that it is important to keep claims pending after a patent issues to obtain broader claims in the future to avoid the complications of reissue proceedings, including the surrender of the patent.

THE LAW
Section 251 of Title 35 of the United States Code provides in part: Whenever any patent is, through error without any deceptive intention, 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 Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent . . . for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue. . . . No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.

In brief, Section 251 allows patentees to correct errors in patents by surrendering the patent and requesting the USPTO to reevaluate amended claims. These claims can be narrower or broader in scope. Claims that are broader in scope cannot be reissued if they are filed more than two years from the date the original patent was issued. The act of surrendering the patent places all claims before the USPTO, not just the amended claims.

Section 253 of Title 35 of the United States Code provides: Whenever, without deceptive intention, a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him. In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

Briefly, Section 253 allows patentees to cancel, or disclaim, claims that are believed to be invalid. Such disclaimed claims become part of the original patent.

IMPORTANCE OF THE CASE
This is a case of narrow first impression that probes the intersection of Section 251 and Section 253 of Title 35 of the United States Code. The Fed. Cir. held that "claims of the original patent" in Section 251 does not include claims disclaimed pursuant to Section 253.