Search the Archives           Subscribe           About this News Service           Reader Comments

Archived updates for Monday, January 14, 2008

New Reexamination Claim to Cover Competitors' Product Not Improper

In Cordis Corp. v. Medtronic (January 7, 2008) the district court found that claim 44 of U.S. Patent No. 4,739,762 (below) was added during reexamination was invalid because, in its view, claim 44 was not added "(1) to distinguish the invention as claimed from the prior art" or "(2) in response to a decision adverse to the patentability of a claim of a patent" as required by 35 USC Section 305. To the contrary, the court concluded that claim 44 was "added solely to cover competitors’ stents, and not for a permissible reason under § 305."

However, according to the appellate opinion by Circuit Judge Bryson,
In holding claim 44 invalid, the district court incorrectly interpreted section 305. The portion of section 305 on which the district court relied permits a patentee to add claims (1) that distinguish the invention from the prior art cited under section 301 and (2) that are added in response to an office action adverse to the patentability of a claim. Claims added under either clause must satisfy section 305’s substantive limitation, which prevents patent owners from adding new claims that enlarge the scope of the patent’s coverage.

Cordis specifically stated that the changes it made in its July 21, 1998, submission to the PTO, including the addition of claims 44 through 59, were "[r]esponsive to" the office action that had rejected all but two of the claims of the ’762 patent in light of prior art references. Moreover, Cordis was free to include the new claims even apart from the office action if they were added to distinguish the invention from prior art cited under section 301. 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. If the claims fail to distinguish the prior art, the claims will be rejected on the appropriate grounds; for that reason, it may frequently be in the patent owner’s interest to include such remarks, but they are not necessary to satisfy section 305. For purposes of assessing validity under section 305, the MPEP directs the examiner to determine only whether any added claims impermissibly "enlarge the scope of the original claims." 37 C.F.R. § 1.552(b). Here, the district court acknowledged, and BSC concedes, that claim 44 does not broaden the scope of coverage of the ’762 patent.
    (0)comment(s)     translate     More Updates     Send