# United States **Court of Appeals**  **for the Federal Circuit**

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IN RE MARK T. DINSMO RE AND DAVID J. CARUSO

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2013

- 1637

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Serial No. 12/137,662.

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Decided: June 10, 2014

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O RLANDO L OPEZ , Burns & Levinson LLP, of Boston, Massachusetts, argue d for appellants.

C OKE M ORGAN S TEWART , Associate Solicitor , United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With her on the brief were N ATHAN K. K ELLEY , Deputy General Counsel for Intelle ctual Property Law and Solicitor, and K RISTI L. R. S AWERT , Associate Solicitor

.

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Before T ARANTO , B RYSON , and H UGHES , Circuit Judges.

T ARANTO , Circuit Judge. Mark Dinsmore and David Caruso (“ a pplicants ”), 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, the y had recorded aIN RE : DINSMORE 2

terminal dis claimer in response to rejections for obviou sness

- type double patenting

. The termi nal disclaimer declar es 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 discl aimer 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 e xaminer in the Patent and Trademark Office rejected the reissue application

, and the Patent Trial and Appeal Board affirmed. Ex parte Dinsmore , No. 13

- 6879, 2013 WL 5274029 (Patent Tr. & App. Bd. June 3, 2013). Be cause the a pplicants have not identified an “ e rror” within the meaning of section 251, we affirm.

B ACKGROUND
The ’56 8 patent , en titled “Miniature x

- ray source with improved output stability and voltage standoff ,” issued on June 26, 2007, with Mr. Dinsmore and Mr. Caruso listed

as inventors and twX, LLC as the sole assi gnee. During prosecution, the e xaminer , in addition to reject ing all the filed claims on several prior

- art grounds , had reject ed claims 1 and 18

- 20 of the original application

— which eventually became issued claims 1, 16

- 17, and 21 of the ’568 patent

— “on the ground of nonstatutory obviousness

type double patenting as being unpatentable over claims

. . . of U.S. Patent No. 6,658,086

, ” J.A. 553 , a 2003 patent listing M r. Dinsmore as the sole inventor and a firm called Carl Zeiss as the sole assignee. Th e applicants responded by filing a terminal disclaimer over the ’086 patent
, disclaiming any term for the ’568 patent beyond the expiration date of the ’086 patent

, a nd narrowing all of the filed claims to overcome other rejections that the examiner had ma de under 35 U.S.C. §§ 102 & 103

. The ’5 68 patent then issued.INRE : DINSMORE 3

To file the terminal disclaimer, the applicants co mpleted and submitted the PTO’s terminal

- disclaimer form, PTO/SB/26, en titled “Terminal Disclaimer To Obviate A Double Patenting Rejection Over A ‘Prior’ Patent .” As required by 37 C.F.R. § 1.321(c)

— which address es term inal disclaimers “filed to obviate [a] judicially created double patenting” rejection

— the applicants ’ terminal disclaimer declares that “any patent so granted on the instant application shall be enforceable only for and during such period that it and the prior patent are co mmonly owned.” J.A. 579. It says nothing about who then actually owned, or will in the future own, the ’086 patent that gave rise to the disclaimer

. In f iling the disclaimer, the applicants stated: “T he enclosed terminal disclaimer in compliance with 37 CFR 1.321(c) overcomes the obv iousness

- type double patenting rejection.” J.A. 575. In allowing the claims, the examiner said that the disclaimer had been reviewed, accepted

, and recorded.
On June 12, 2008, the applicants applied to reissue all claims of the ’568 patent under 35 U.S.C. § 251, seeking simply to remove the recorded terminal disclaimer wit hout substituting a new one or amending any of the cla ims. Implementing section 251’s precondition of “error” for reissue, a PTO regulation required the applicants to file a reissue declaration that, among other things, identif ied “[a]t least one error upon which reissue is based .” 37 C.F.R. § 1.175(a)(1). The applicants stated in their (in itial) declaration that the y inadvertently and without deceptive intent filed a Terminal Disclaimer over [the ’086 patent], which was not commonly owned by the owners of [the ’568 patent] cur rently at issue.

J.A. 33. In a non

- final office action, the examiner denied the reissue application “as being based upon a defective reissue declaration,” “because the error which is reliedIN RE : DINSMORE 4

upon . . . is not an error upon which a reissue can be based.” J.A. 51.

In October 2009, in response to the non

- final rejection, the applicants petitioned the PTO Commissioner to permit them to replace the recorded terminal disclaimer with one identical in every material respect except that it dropped the original provision (required by PTO regul ation) that the ’568 patent could be enforced only when commonly owned with the ’086 patent. Thus, the term of the ’568 patent would remain tied to the expiration date of the ’086 patent. In March 2011, t he PTO denied the petition , and then twice more de nied the same request for relief from the applicants; the applicants did not seek judicial review of th ose denial s

. Meanwhile, o n October 27, 2009, the applicants had filed a response to the non

- final rejection, under 37 C.F.R. § 1.111

. They submitted a supplemental reissue declar ation, which changed their statement of the “error up on which reissue is based” to read as follows : Original [application] claims 1 and 18

- 20 were r ejected on the ground of non

- statutory obviousness

type double patenting and allowed based on an i neffective, invalid terminal disclaimer. The allo wance of issued claims 1 and 18

- 20 [ sic ] based on th e original claims was in error.

J.A. 75. They also cancelled originally filed claims 1 and 18

- 20 (issued claims 1, 16

- 17, and 21) and simul taneously introduced identical claims as “new” claims 22

- 25

. In April 2011, t he examiner

, noting that the revised terminal disclaimer was not accepted, denied the reissue applic ation. The applicants then tried again, this time cancelling the new claims 22

- 25, but the examiner issued a final rejection in September 2011.

On January 30, 2012

, the applicants filed a Request for Continued Examination, during which they amendedINRE : DINSMORE 5

their reissue application in three relevant ways. First, they cancelled all of the issued claims and added new,

narrow er claims

— identical to the cancelled claims except f

or a single, added limitation. They did so, t he y said, “ as

a hedge against unenforceability,” J.A. 234, presumably because they believed the narrower claims sufficient to overcome the obviousness- type double

- patenting rejection without a terminal disclaimer. Second, and on that apparent premise, they again submitted a modified te rminal disclaimer that re tained the term limit of t he ’56 8 patent as issued but eliminated the declaration limiting enforceability to times of common ownership

— presumably now treating as inapplicable the regulatory subsection, 37 C.F.R. § 1.321(c), that requires such a declaration “when filed to obviate [a n obviousness

- type] double patenting rejection.” Finally, they submit ted another (the third) reissue declaration , stating : Original [application] claims 1 and 18

- 20 were r ejected on the ground of non

- statutory obviousness

type double patenting and allowed based on an i neffective, invalid terminal disclaimer. The invalid terminal disclaimer renders the patent unenforc eable. The patentee presents narrower claims based on claims that were not rejected on that b asis

. J.A. 180. Eventually, the examiner issued a final office action rejecting all of the pending claims in the reissue applicati on, once again because “ the error identified in the [reissue] declaration is not an error that can support reissue. ” J.A. 246.

The applicants appealed to the Board, which affirmed the examiner , because the “voluntary and intentional filing of a terminal disclaimer to overcome a non

- statutory obviousness- type double patenting rejection during pros ecution of the original patent is not an ‘error’ correctible by

re issue under 35 U.S.C. § 251.” Ex parte Dinsmore , No.IN RE : DINSMORE 6

13

- 6879, 2013 WL 5274029 , at *9 (Patent Tr. & App. Bd. June 3, 2013 ).

The applicants timely appealed to this court, which has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

D ISCUSSION
The applicants a rgue 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 wa s an “error” within the meaning of the reissue statute, 3 5 U.S.C. § 251 . Section 251, at the relevant time , r ead:
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 p atentee 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 i nvention disclosed in the original patent, and in a ccordance with a new and amended application, for the unexpired part of the term of the original p atent. 1

1 The Leahy

- Smith America Invents Act amended this language by striking “without any deceptive inte ntion ,” a change that neither party argues is material to deciding this case. See P ub. L . No. 112

- 29 , § 20, 125 Stat 284 , 333

- 34 (2011). The amendments to section 251 took effect on September 16, 2012, see id. § 20(l), after the applicants both filed their re issue application (in June 2008) and requested continued examination of that appl ication (in January 2012).INRE : DINSMORE 7

“ Determining whether an applicant has met the statut ory requirements of 35 U.S.C. § 251 is a question of law, which we review de novo .” In re Clement , 131 F.3d 146 4, 1468 (Fed. Cir. 1997)

. We affirm the Board’s ruling b ecause the applicants have not identif ied an “error” underlying the choices made in the original patent that they now seek to revise

. We begin with the one clear assertion of error in the appl icant s’ reissue declarations: that the recorded terminal disclaimer was ineffective or invalid . That assertion

, however, is simply incorrect in the most straightforward

sense

. T he 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 ow ned by the owner of the ’086 patent. And the applicants, by filing the disclaimer, achieved the immediate effect of overc oming the obviou sness

- type double

- patenting rejection.
At the same time, t he terminal disclaimer was valid. The applicants identify nothing missing that was required or anything included that was forbidden. Un der the relevant PTO regulation, “to obviate judicially created double patenting in a patent application ” a terminal disclaimer must “[i] nclude a provision that any pate nt grante d 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 pr event multiple infringement suits by different assigneesIN RE : DINSMORE 8

asserting essentially the same patented invention.” In re Hubbell , 709 F.3d 1140, 1145 (Fed. Cir. 2013).
At bottom, therefore, the applicants can only be arg uing, more broadly, that the disclaimer w as “ineffective” in the sense that it did not produce a patent they could actually en force by themselves ( without common owne rship) and that they erred in produc ing that result (which they deem to be inoperativeness) by choosing to file the terminal discla im er in order to include in the ’568 patent, in their final form, the four claims that led to the obv iousness

- type double

- patenting rejection. This argument, however, is an insufficient basis for reissue , even if the condition of present inability to enfo rce constitutes ino perativeness within the meaning of section 251 . It is ultimately no more than a statement of a now -regretted choice , because the applicants identify no cognizable false or def icient understanding of fact or law that underlay the choice. Th is is not “error” as required by section 251.
Section 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 clai ming, but that “error” be the cause of th e infirmity. Section 251 often applies to applicants’ choices, i.e. , their delibe rate decisions about what to say in their patents , not just slips of the pen. But n ot every choice that produce s 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

. Our cases indicate that, for purposes of narrowing r eissue

- qualifying choice s to those involving “error

, ” it is important whether deficient understandings , by the applicants or their agents, gave rise to the patenting choice that reissue is being invoked to correct. I n the authorities that the applicants here feature, false orINRE : DINSMORE 9

inadequate understanding s about then

- existing fact s or law evidently underlay the aspect s of the original patent sought to be alter ed by reissue. 2 Most reissue cases involve no dispute about this basis of “error”: the court has noted that the typical s ituations are (for a broadening reissue) the “post

- issuance discovery of attorney error in understanding the scope of the invention” and (for a narrowing reissue) the “belated discovery of partially invalidating prior art.” In re Amos , 953 F.2d 613, 616 ( Fed. Cir. 1991); see In re Youman , 679 F.3d 1335, 1342 (Fed. Cir. 2012). On the other hand, we have held reissue unavailable in several case s where the applicants ident ified no deficient understanding behind a choice

, not even (as is common) asserting new ly noticed potential problems as to claim breadth or narrowness or other matters affec ting the aspects of the original patent that are the subject

2 See In re Tanaka , 640 F.3d 1246, 1247

- 48 (Fed. Cir. 2011) (applicant’s declaration stated that he misu nderstood “ the process of claiming according to U.S. pra ctice ”); Medrad, Inc. v. Tyco Healthcare Grp. LP , 466 F.3d 1047, 1052

- 53 (Fed. Cir. 2006) (applicant did not realize that a supplemental declaration was required); In re Oda

, 443 F.2d 1200, 1206 (CCPA 1971) (reissue declaration, made by all four inventors, stated that errors were made while translating from corresponding Japanese applic ations ); see also Grant v. Raymond , 31 U.S. 218 (1832) (allowing correction of a patent where the inventor mi stakenly though t specification adequately described inve ntion); In re Rosuvastatin Calcium Patent Litigation , 703 F.3d 511 (Fed. Cir. 2012) (reissue approved where appl icants originally claimed too broadly after not properly reacting to invalidating prior art, with the e rror coming because of “chaos, confusion, and inexperience,” “ lack of legal training ” in the patent department, “ the changing and limited personnel within that department ,” and

“ unintentional miscommunications ” between personnel)

.IN RE : DINSMORE 10

of reissue. In such cases, the r eissue application w as held inadequate as being no more than an effort to reverse a later- regretted choice made in obtaining the original patent

. 3 A focus on the understandings behind a patent ee’s choice s during the patenting process may not resolve all “error” issues . But that focus suits this case. Here, t he applicants ha ve not identified an y deficient understanding as leading to the issuance of original claims 1, 16

- 17, and 21 with the terminal disclaimer.

T hus, t he applicants simply have not alleged or shown that the y 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 allege d 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

3 See In re Serenkin, 47 9 F.3d 1359, 1364 (Fed. Cir. 2007) (denying reissue where applicant was “fully alert” to the underlying facts and still “intentionally and kno wingly surrendered his right to a claim of priority”); In re Mead , 581 F.2d 251, 257 (CCPA 1978) ( no cognizable

er ror where applicant “knew” or at least “should have known” of intervening

- art risk of choice to break chain of copendency ); In re Orita , 550 F.2d 1277, 1280 (CCP A 1977) (where applicant knowingly acquiesced in r estriction , no error in resulting patent ; later failure “to timely fil e a divisional application covering the origin ally

non

- elected subject matter” immaterial to issued patent ). See also Miller v. Bridgeport Brass Co. , 104 U.S. 350, 355 (1881) ( reissue “can only be done when an actual mistake h as occurred; not from a mere error of judgment”).INRE : DINSMORE 11

resulted from a ny mistaken belief that the ’568 and ’086

pa ten ts 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.

From all that appears, the applicants

— knowing tha t 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 independent ly of the ’086 patent) in exchange for a benefit (overcom ing an obvious ness

- type double

- patenting reje ction 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. Th eirs is not a n error remed iable under the reissue statute.
The applicants argue otherwise by s tating that a “terminal disclaimer is akin to a contract” and that “the incorrect terminal disclaimer

. . . suffers from antecedent impossibility,” with the “modern designation of antece dent impossibility being either mutual mistake or unila teral mistake.” Appellants ’ Brief at 9

- 10. But the applicants gain nothing from this argument. “ A mistake is a belief that is not in accord with the facts ,” Restat ement (S econd) of Contracts § 151, and nowhere do appl icants claim that they filed the terminal disclaimer based

on such a belief. In fact, to the extent that the applicants were to argue (though they do not) that their error was in predicting the future behavior of the owner of the ’086 patent, the invocation of mutual

- mistake law would undermine, rather than aid, the ir case. See id. Comment a (“A party’s prediction or judgment as to events to occur in the future, even if erroneous, is not a ‘mistake’ as that word is defined here.”); Lakeshore Eng’g Servs., Inc. v.IN RE : DINSMORE 12

United States , 2014 WL 1394949, at *8 (Fed. Cir. Apr. 11, 2014).
The reissue application here does not meet the “error” requirement of section 251 . W e therefore need not a ddress broader questions about the intersection of reissue standards and terminal disclaimers

. C ONCLUSION
The Board’s decision rejecting the application for rei ssue is affirmed.

AFFIRMED