Although a “now-regretted choice” does not meet the “error” precondition for obtaining reissue under 35 U.S.C. § 251, marketplace developments that prompt a patentee to reassess their issued claims is a “classic reason that qualifies as error” for the purposes of reissue. Here, for example, marketplace developments in radar detector technology that caused the patentee to desire less programmer-centric claims was found to be a sufficient misunderstanding of the full scope of the invention to meet the “error” precondition for obtaining reissue. “Erroneous understandings of the written description or claims are just that, regardless of what triggered the recognition of error in those understandings.” This would be a good case to consult and cite when filing for a reissue to better capture marketplace developments.
Background / Facts: The reissue patents being asserted here are directed to radar detectors for detecting police signals. They claim techniques for incorporating a Global Positioning Satellite (GPS) unit into a radar detector to reduce false alarms by allowing the detector to disregard certain signals from an identified location known to produce such false alarms (e.g., a storefront door opener transmitting a radar signal that can be mistaken for a police presence). The original patents were written from the perspective of a “programmer,” and the patentee sought reissue to better capture marketplace developments.
Issue(s): Whether the patentee’s reason for seeking reissue met the “error” precondition for obtaining reissue.
Holding(s): Yes. “The asserted error here is that, when drafting his original patent, [the patentee] failed to appreciate the full scope of his invention and the inadequacy of the original claims for properly capturing the full scope. This is a classic reason that qualifies as error. [] It identifies a deficient understanding of some combination of fact and law bearing on the meaning of claim language, the inventions disclosed in the written description, and how particular language does or does not map onto products or processes that could be claimed under section 251 consistent with the written description. … [T]he fact that it was marketplace developments that prompted [the patentee] to reassess his issued claims and to see their deficiencies [] does not alter the qualifying character of the reason for reissue. Erroneous understandings of the written description or claims are just that, regardless of what triggered the recognition of error in those understandings.”