Fleming v. Escort, Inc.

The U.S. Court of Appeals for the Federal Circuit explained that an error in drafting original claims that failed to capture the full scope of the invention, even where the error stemmed from the inventor’s perspective as a programmer, is a “classic” reissue error.  Fleming v. Escort, Inc., Case Nos. 14-1331, -1371 (Fed. Cir., Dec. 24, 2014) (Taranto, J.).

A prerequisite for filing an application for a reissue under 35 U.S.C. § 251 is that the applicant must establish that was an error in the original patent. Errors are not limited to slips of the pen, but encompass—and most often are—drafting choices.  However, not all drafting choices will constitute error under § 251.  For example, a drafting choice based on a false or deficient understanding of fact or law may qualify as an error, while an eyes-open choice made to secure a patent will not.

Here, after Hoyt A. Fleming sued Escort for infringement of his patent (and prevailed before a jury) the district court denied Escort’s motion for judgment that the asserted patents were invalid as not based on a proper reissue “error.”  Escort appealed.

Fleming argued that the error in the original patent that led to the reissue application was a failure to appreciate the full scope of the invention and inadequacy of the claims.  Escort challenged this purported error by arguing that the inventor explained that he wrote his original patent from the perspective of a “programmer.”  He explained it was marketplace developments that prompted him to reassess his issued claims and to see their deficiencies.  The Federal Circuit characterized this as a classic error under § 251, explaining that an error based on a deficient understanding of some combination of fact and law bearing on the meaning of claim language and how particular language does or does not map onto products or processes that could be claimed consistent with the written description are “classic” reissue errors.

The Federal Circuit found that the programmer perspective does not undermine the premise of a mistaken understanding of the scope of the written description and/or claims; to the contrary, it helps explain the origin of the error.

Practice Note:  Erroneous understandings of the written description or claims are just that, regardless of what triggered the recognition of error in those understandings.