In re Dinsmore: Patentee May Not Petition for Reissue in order to Retract a Terminal Disclaimer

Category: Post-Grant Proceedings   
 By: Jesus Hernandez, Blog Editor/Contributor
TitleIn re Dinsmore, No. 2013-1637 (Fed. Cir. June 10, 2014).
IssueThe applicants argue that, because the ’568 and ’086 patents are not and never have been commonly owned, the recorded terminal disclaimer was “an ineffective, invalid terminal disclaimer” and its filing therefore was an “error” within the meaning of the reissue statute, 35 U.S.C. § 251.
In re Dinsmore at *6.
HoldingWe affirm the Board’s ruling because the applicants have not identified an “error” underlying the choices made in the original patent that they now seek to revise [and revising a conscious choice is not tantamount to remedying the result of a mistaken belief].
Id. at *7 (text added).
Procedural HistoryMark Dinsmore and David Caruso (“applicants”), who are the inventors named in U.S. Patent No. 7,236,568, applied to reissue the ’568 patent under 35 U.S.C. § 251. During the patent’s prosecution, they had recorded a terminal disclaimer in response to rejections for obviousness-type double patenting. The terminal disclaimer declares that the ’568 patent “shall be enforceable only for and during such period” as it is commonly owned with the patent that underlay the double-patenting rejections. In their reissue application, the applicants sought to modify the recorded terminal disclaimer to delete the common- ownership provision, and to modify the claims that gave rise to the disclaimer, because the two patents are not and never have been commonly owned. An examiner in the Patent and Trademark Office rejected the reissue application, and the Patent Trial and Appeal Board affirmed.
In re Dinsmore at *1-2.
Legal Reasoning (Taranto, Bryson, Hughes)
Legal Standard: Terminal DisclaimersSection 251, at the relevant time, read:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.

In re Dinsmore at *6.
Effect of Decision to file Terminal DisclaimerThe terminal disclaimer promises that the ’568 patent “shall be enforceable only for and during such period that it and the prior patent [i.e., the ’086 patent] are commonly owned.” J.A. 579. That promise, which is clear on its face, can readily be given effect: the patent will not be enforced except when owned by the owner of the ’086 patent. And the applicants, by filing the disclaimer, achieved the immediate effect of overcoming the obviousness-type double-patenting rejection.
In re Dinsmore at *7.
Nothing Missing that was Required; Nothing Included that was ForbiddenThe applicants identify nothing missing that was required or anything included that was forbidden. Under the relevant PTO regulation, “to obviate judicially created double patenting in a patent application” a terminal disclaimer must “[i]nclude a provision that any patent granted on that application . . . shall be enforceable only for and during such period that said patent is commonly owned with the . . . patent which formed the basis” for the rejection. 37 C.F.R. § 1.321(c). The terminal disclaimer at issue here did just that: it made the required promise about what would happen if the two patents at issue were ever separately owned. It thereby fulfilled a purpose of the bar on obviousness-type double patenting—“to prevent multiple infringement suits by different assignees asserting essentially the same patented invention.” In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013).
Id. at *7-8.
Submission of Terminal Disclaimer is a ChoiceSection 251 requires not only that the original patent be “wholly or partly inoperative or invalid,” and that the inoperativeness or invalidity be by reason of a defective specification or drawing or unduly broad or narrow claiming, but that “error” be the cause of the infirmity. Section 251 often applies to applicants’ choices, i.e., their deliberate decisions about what to say in their patents, not just slips of the pen. But not every choice that produces inoperativeness or invalidity by reason of a specification, drawing, or claiming problem (within the meaning of section 251) can qualify. Only choices based on “error” count.
Id. at *8.
Terminal Disclaimer Submission not an Error[A]pplicants simply have not alleged or shown that they had a mistaken belief as to the invalidity of those claims on the cited ground of obviousness-type double patenting in the absence of the disclaimer or, therefore, the choice they faced: cancel or sufficiently modify those claims to avoid the rejection; or file the disclaimer. They have not alleged or shown that they did, let alone reasonably could, misunderstand the plain meaning of the disclaimer. They also have not alleged or shown that their choice in favor of filing the disclaimer resulted from any mistaken belief that the ’568 and ’086 patents were in fact commonly owned. The applicants never declared, and do not show here, that they believed that such common ownership existed when they filed the terminal disclaimer to obtain the ’568 patent.
Id. at *10-11.
No Remidiable ErrorFrom all that appears, the applicants—knowing that the patents were not commonly owned—intentionally surrendered a possible right (the ability to obtain all or some of the ’568 patent claims in a form enforceable independently of the ’086 patent) in exchange for a benefit (overcoming an obviousness-type double-patenting rejection of several of the proposed claims). See, e.g., J.A. 575 (arguing to the examiner that the “terminal disclaimer in compliance with [37 C.F.R. §1.321(c)] overcomes the obviousness-type double patenting rejection”). On the record of this case, applicants are ultimately seeking simply to revise a choice they made, not to remedy the result of a mistaken belief. Theirs is not an error remediable under the reissue statute.
Id. at *11.
The Board’s decision rejecting the application for reissue is affirmed.
In re Dinsmore at *12.
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