Whether Plaintiffs' original claims prior to the reexamination were generic so as to mean both automatic and manual disengagement of the installation tool from stud heads being placed into snowmobile tracks?
No. Plaintiffs' original claims were directed only to the automatic disengagement of stud heads from the tool. Because Plaintiffs argue that their reexamined claims are directed to both the automatic and manual disengagement of stud heads from the tool, their reexamined claims have impermissibly broadened the scope of their original claims under 35 U.S.C. § 305, and are invalid.
Lynn J. Anderson and Koronis Parts, Inc. ("Anderson") are the owners of reexamined U.S. Patent No. B1 4,758,055 related to a method of installing small pointed studs into snowmobile tracks to provide additional traction. Anderson filed suit based on the reexamined claims in the U.S. District Court for the District of Minnesota. The district court granted Defendants' motion for summary judgment of invalidity of Plaintiffs' reexamined claims on the ground that the reexamined claims impermissibly broadened the scope of the original claims. On appeal, Plaintiffs asserted that their reexamined claims were directed to both the automatic and manual disengagements of stud heads from the installation tool when the studs were fully installed into the snowmobile tracks, thus covering Defendants' system requiring the manual disengagement. On the basis of the patent specification and prosecution history, the court concluded that Plaintiffs' original claims were directed only to automatic disengagement of stud heads from the tool. By finding that the original claims did not cover manual disengagement of stud heads from the tool, the court of appeals declared the reexamined claims overbroad and therefore invalid under 35 U.S.C. § 305. This section states in part, "[n]o proposed amended or new claim enlarging the scope of a claim will be permitted in a reexamination proceeding."
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