Rule from 1880’s Against Broadening Amendments In Reexams Is Non-Precendential.

Today’s CAFC ruling in SWBT v. Collins, (5/27/2008), affirms a ruling that, in part, disallows an amendment in the reexam of a patent in litigation. The rule prohibiting broadening amendments in reexam goes back to the Bridgeport Brass, 104 U.S. 350 (1882) and Coon, 113 U.S. 268 (1885) cases, but a century later, the patent statute has set the standard in 35 USC 305. According to today’s opinion, the CAFC last looked at section 305 over ten years ago. Why isn’t the issue presented in Collins case worthy of a precedential ruling?

The panel holds that Collins could not use reexam to amend to avoid, i.e, to “address an adverse claim construction” by the district court. That point of emphasis may, or may not, align entirely with section 305, which says nothing expressly about claim construction avoidance. The statute first is permissive, not preclusive: the patentee “will be permitted to propose any amendment …and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art …or in response to a decision adverse to the patentability of a claim.” It continues with the limitation that “No …claim enlarging the scope of a claim of a patent …will be permitted in a reexamination.” There thus are three subsets of amendments proposed in reexams – (i) to “address” a claim construction, (ii) to distinguish from prior art, or to respond to an adverse patentability decision, and (iii) to enlarge the scope of a claim. The lines around those groupings may, or may not, define exact territories, and the boundaries between those may be uncertain.

This recalls the broadened area of “surrendered territory” debated in Hilton-Davis, and the interpreted breadth of the “sealing ring” limitation added in a reexam in Festo.

The section 305 issue is hardly certain in precedent, and the CAFC’s 1994 Freeman case came before the Hilton and Festo rulings, and moreover, the real issue of permitted amendments is less about the patentee’s intent or objective and more pointed on the scope of the proposed amendment. All of these bore in favor of an in-depth, precedential ruling on section 305, and not to pass the issue presented in Collins into the nonprecedential icebox.