Google Won’t Reply to SCOTUS Petition Seeking Review of CAFC’s ‘Original Patent’ Standard for Reissue

Yesterday, Google waived its right to respond to a petition for writ of certiorari to the U.S. Supreme Court filed by the inventors of a method for protecting computers from malware.

The inventors, Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman), are appealing a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that reversed a district court ruling and $20 million verdict for the inventors. The CAFC held that the Texas district court erred in ruling that four claims across the three patents were not invalid and agreed with Google’s argument that the claims were invalid under the “original patent requirement” because they contained reissue claims not disclosed in the original patent.

The petition argues that the CAFC’s view that “[t]here must be an ‘express disclosure’ of the ‘exact embodiment claimed on reissue’…. far exceeds the standard set in U.S. Industrial Chemical, Inc. [v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668, 676 (1942)] conflicts with decades of Federal Circuit precedent predating Antares [Pharma, Inc. v. Medac Pharma Inc.], and finds no basis in the reissue statute, 35 U.S.C. § 251.”

Antares is a 2014 Federal Circuit decision holding that safety features “serially mentioned as part of the broader disclosure” did not satisfy the original patent requirement. Cioffi, et. al. claim in their petition that that Antares “ratcheted up this Court’s standard for broadening reissue, holding that ‘the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.’” The question presented is:

1. Should the Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014) “exact embodiment” standard for “original patent” disclosure be overruled as inconsistent with 35 U.S.C. § 251 and this Court’s decision in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668 (1942)?

The underlying case involves the inventors’ U.S. Patent No. 7,484,247, titled System and Method for Protecting a Computer System From Malicious Software.” The patent was issued on January 27, 2009, but the inventors sought reissue after determining they should have claimed additional embodiments. The USPTO granted four reissue patents, three of which are relevant to the case: RE43,500, RE43,528, and RE43,529.

The inventors claim Google’s Chrome web browser infringes the reissue patents and sued Google in 2013. After a first time at the Federal Circuit in which the case was remanded to the district court, a jury awarded Cioffi, et. al. $20 million in past damages and the district court in post-trial review rejected Google’s original patent defense. According to the petition, the court said “it was undisputed that a ‘web browser process’ was a species of both a ‘logical process’ and ‘interactive network process,’ and the original ’247 patent described the ‘interactive network process’ architecture in appropriate detail.”

On appeal to the CAFC, however, the Federal Circuit panel said that “because the exact words ‘web browser process’ did not appear in the specification and the evidence did not show that ‘the terms ‘interactive network process’ and ‘web browser process’ are synonymous or otherwise equivalent in meaning,’” the disclosure was insufficient.

The inventors argue that this “exact embodiment” standard is not supported by the plain language of Section 251; is contrary to Supreme Court precedent in Industrial Chemical; and that the new standard essentially forecloses reissue of genus claims, among other arguments. On the latter point, the petition explains that “in light of Antares, genus claims – the use of broader terms that may encompass sub-embodiments – cannot be narrowed and corrected through reissue unless the original patent also happens to disclose the ‘exact embodiment’ upon which reissue is sought.”

The inventors are asking the Court to overrule Antares and its progeny and to restore what the petition says is a 150-year standard of permitting inventors to correct issued patent claims through reissue. “[T]his standard makes it virtually impossible to obtain narrower claims in reissue by narrowing from a disclosed broad embodiment (a genus), to a narrower sub-embodiment (a species) – a point made plain by the instant case where the Inventors narrowed from a broader disclosed embodiment to a narrower species,” says the petition. It adds:

“The Federal Circuit’s original patent test under Antares upsets the balance this Court has maintained for over 150 years, closes the door to what are otherwise novel and patentable inventions, and further erodes the utility of the U.S. patent system.”