Narrowed Reissue Claim Invalid for Covering Embodiment Not Infringing Original Claim

In Brady Construction Innovations Inc. v. Perfect Wall Inc. (August 15, 2008; not precedential), a reissue claim was held invalid for broadening because it was filed beyond the two year window and covered an embodiment that did not infringe a previous construction of the original claims.

An earlier Federal Circuit decision held that the accused products did not infringe the claims of the original patent where the claim limitation “said stud having at least one hole formed therein proximal to said top end” was limited to a pre-existing hole. According to opinion by Chief Circuit Judge Michel,

This court has held:

A claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent. A reissue claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987); see also In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994).

. . . Brady does not ask that we explicitly overrule the prior panel’s construction of the
claims of the original patent, and Brady admits that products that would not infringe the claims of the original patent do infringe reissue claim 11. This is because reissue claim 11 requires that “said stud having at least one hole formed therein proximal to said top end by an attachment means.” In other words, in reissue claim 11, the hole is not preexisting but is formed using a self tapping screw (the attachment means disclosed in the specification). Because products in which the hole is not pre-existing but instead formed using a self-tapping screw (i.e., the accused products in this case) would not infringe the claims of the original patent but would infringe reissue claim 11, we conclude that reissue claim 11 enlarged the scope of the original patent. We affirm the district court’s grant of summary judgment of invalidity as to that claim.

. . . In sum, we affirm the district court’s summary judgment of invalidity as to reissue claim 11 because that claim enlarged the scope of the original patent claims and Brady applied for reissue more than two years after the original patent issued.