Holding: When considering whether a reissued patent broadens the scope of the original patent under 35 U.S.C. §251(d), the scope of the claims of the original patent are reviewed as written and without consideration of the subjective intent of the inventors.
Kostic is a joint owner and inventor of US Patent No. 8,494,950 directed to methods of connecting websites to users for the buying and selling of click-through link traffic. In particular, the ‘950 Patent discloses a method where the buyer and seller conduct a trial to determine the click-through traffic to provide each party with more information and then conduct a bidding process to set the terms of the sale. The specification of the ‘950 Patent also discloses a direct sale process where a seller may skip the trial and bidding process and start the sale process immediately.
Claim 1 of the ‘950 Patent recites a method that includes conducting the pre-bidding trial and then a bidding process after the trial period is concluded. Claim 3 of the ‘950 Patent depends on claim 1 and recites that the interested exchange partners may “conduct a direct exchange of click-through traffic without a trial process.” Six years after the issuance of the ‘950 Patent, a reissue application was filed stating that the error necessitating reissue was that dependent claim 3 failed to include all the limitation of claim 1, from which it depends. Since claim 3 excludes the trial bidding process claimed in claim 1, claim 3 would be invalid under 35 U.S.C. § 112.
The Examiner rejected the reissue application, finding that it was a broadening reissue that was filed outside of the permissible two-year period after issuance. In making this rejection, the Examiner interpreted the original claim 3 to require the performance of all of claim 1, including the trial and bidding process, and then to also require a direct sale without a trial. The amended claim 3 in the reissue sought to not require the trial process, and thus, broadened the original. The PTAB upheld the Examiner’s rejection on appeal.
At the Federal Circuit, Kostic argued that for the purpose of 35 U.S.C. § 251(d), which prohibits enlarging the scope of the claims in a reissue application, the scope of the original claim 3 and the scope of the reissue claim 3 should be examined in view of the intended scope of the original claim 3. The Federal Circuit disagreed with this view. A claim is construed as written, not as the patentees wish they had drafted the claim. In reaching this conclusion for reissue applications, the Federal Circuit looked to the closely analogous context of certificates of correction, where claim scope is compared by construing claims based on what they actually recite rather than what may have been intended.
Federal Circuit Precedential 
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