Patent Law

Enlargement Stress

By Gary Odom and Jordan Kuhn

Todd Brady came up with "a building construction assembly that allows a header in a wall some vertical freedom of movement relative to the studs, such that stresses applied to the assembly do not result in wall cracks. Such a configuration is useful when stresses vary in a wall, for example, through accumulation of snowfall or from an earthquake." Hence 5,127,760. After losing in claim construction during an infringement assertion, Brady attempted correction, 12 years after issuance. The reissue couldn't stand the stress.

Brady Construction Innovations v. Perfect Wall, Metal Lite, Steeler, and Scafco (CAFC 2007-1460, -1486) nonprecedential

Brady's reissue added a single claim, 11. The difference was a hole "be made by a self-tapping screw" rather than preexisting. That broadened the patent.

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.

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).

In the reissue prosecution, Brady provided the PTO with this court's prior decision in which we limited the claims of the original patent to only those with pre-existing holes. Brady argued to the PTO that claim 11 was narrower based on the same arguments it advances here. Nevertheless, the PTO could have rejected those arguments, and the district court did not clearly err in finding that Brady did not commit inequitable conduct and the case was not exceptional on that basis.

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.

The court refused to reopen previously decided claim construction.

Under the principles of stare decisis and the Supreme Court's guidance in Markman, this court follows the claim construction of prior panels absent exceptional circumstances. Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d 1331, 1338 n.* (Fed. Cir. 2008) ("[T]reating interpretive issues as purely legal will promote (though it will not guarantee) intrajurisdictional certainty through the application of stare decisis." (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996))).

Brady was found not guilty of bad faith or inequitable conduct. The case thus not exceptional, Brady didn't have to pay defendants' attorneys fees.

Full post as published by The Patent Prospector on August 16, 2008 (boomark / email).