Reissue Applications Are Bound by the Scope of the Claims as Written, Not as Intended

Written by:Nathan D. Reeves and Michael E. Salamy

N RE KOSTIC

Before Stoll, Clevenger, and Cunningham.  Appeal from the Patent Trial and Appeal Board.

Summary: When considering whether a reissue claim broadens the scope of the original patent, the PTAB determines the actual scope of the original claim, not the scope the inventors intended.

Kostic filed a reissue application for their patent directed to a method of selling online advertising, which had issued more than two years before.  Independent claim 1 of the patent recited a step of conducting a trial process, and dependent claim 3 recited the method of claim 1 “without a trial process.”  The reissue application attempted to rewrite dependent claim 3 in independent form, making the trial process optional.  The examiner rejected the reissue for impermissibly broadening the claims beyond the two-year limit.  The PTAB affirmed the examiner’s rejection, and Kostic appealed.

On appeal, Kostic argued that the proper inquiry was not whether the scope of the reissue claim was broader than the actual scope of the original claim, but whether the scope of the reissue claim was broader than the intended scope of the original claim. The Federal Circuit disagreed, holding that the claims are to be construed as written, not as the patentee intended.  Because reissue claim 3, which recited a trial process as optional, would be broader than the original claims, which required a trial process, the reissue application was barred.

Editor: Sean Murray