Resolving Claim Ambiguity via Reissue

Takeaways

• Intra-patent claim inconsistencies are errors correctible via reissue.
• Subtle legal distinctions in reissue may require PTAB appeals.

Patent prosecution errors occur. One such error that occurs is intra-patent claim inconsistencies that render claims indefinite and unenforceable. Precisely this situation occurred in TVnGO Ltd. v. LG Elecs., Inc., 861 F. App’x 453 (Fed. Cir. 2021) (nonprecedential); TVnGO Ltd. v. LG Elecs., Inc., No. 18-10238, 2020 WL 1899781 (D.N.J. Apr. 17, 2020).

In TVnGO, the Federal Circuit affirmed the district court’s determination that claims 1, 9, 10, 13, 17, and 20 of each of U.S. Patent No. 9,407,969 (’969 patent) and U.S. Patent No. 8,132,220 (’220 patent) were indefinite because dependent claims 9 and 20 utilized a phrase (“said overlay activation criterion includes […] a user command information”) that was determined to be in conflict with the independent claim’s use of the same phrase. The Federal Circuit was unmoved by TVnGO’s argument that merely dependent claims 9 and 20 were invalid, noting:

[M]erely dismissing the dependent claims as invalid, as TVnGO proposes, ignores that they are one of the few sources of intrinsic evidence on the meaning of “overlay activation criterion” in this record. When faced with this unknown and undefined phrase, a skilled artisan would look for clarification not only in the specification but also in “[o]ther claims of the patent in question.”

Later, TVnGO sought reissue of the ’969 and the ’220 patents, respectively. In the ’969 patent’s reissue, (application No. 17/867,612) TVnGO sought to cancel claims 9 and 20 to resolve the intra-patent claim language inconsistency basis for invalidity determined by the Court. However, in the ensuing Office Actions, the CRU Examiner took the position that cancelling claims 9 and 20 would not remove one of the few sources of intrinsic evidence as to the meaning of “overlay activation criteria” from the prosecution history, and rejected the claims under 35 U.S.C. § 112. That is, the record would still show that the prior claims had existed previously, and therefore would remain available for undermining the meaning of the language in the remaining claims. In the final Office Action, the Examiner held that regardless of dependent claim cancellation, the term would remain indefinite in the remaining independent and intervening claims. Essentially, the Examiner held that the error of intra-patent claim language inconsistency, at least in this application, was not correctible via reissue.

TVnGO appealed to the Patent Trial and Appeal Board (PTAB). After an interesting oral argument where TVnGO noted that courts only hold claims invalid and unenforceable and only the Office cancels claims from patents, the PTAB reversed the Examiner’s findings. The PTAB drew a distinction between TVnGO’s unsuccessful Federal Circuit argument for dismissal of only claims 9 and 20 as invalid, and TVnGO’s affirmative cancellation of claims 9 and 20 in the reissue application. The PTAB noted “Appellant’s disavowal of the “overlay activation criterion” coming from the user’s premise, as recited in dependent claims 9 and 20, is clear and unmistakable.” The PTAB continued:

[H]ad the Federal Circuit merely held the dependent claims invalid, the meaning of “overlay activation criterion” would still have been problematic […]. Here, however, there is additional intrinsic evidence that a person of ordinary skill would look to in that the prosecution history (which includes that of this reissue proceeding) shows Appellant has not canceled the problematic dependent claims and, therefore, removed the problematic interpretation clearly and unmistakably.

The TVnGO decision clarifies that cancelling claims via reissue can resolve intra-patent indefiniteness and ambiguity issues. When prosecuting patent applications, including reissue applications, appealing to the PTAB is usually an option of last resort. However, as evidenced here, when the issue hinges on subtle interpretations of the law, even competent and deeply experienced CRU Examiners may get it wrong, and appeal may be necessary.