In Re Yamazaki ( 2012 )

United States Court of Appeals
for the Federal Circuit
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IN RE SHUNPEI YAMAZAKI
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2012-1086
(Serial No. 10/045,902)
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Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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Decided: December 6, 2012
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ERIC J. ROBINSON, Robinson Intellectual Property Law
Office, P.C., of Fairfax, Virginia, argued for the appellant.
With him on the brief was SEAN C. FLOOD.
ROBERT J. MCMANUS, Associate Solicitor, Office of the
Solicitor, United States Patent and Trademark Office, of
Alexandria, Virginia, argued for appellee. With him on
the brief were RAYMOND T. CHEN, Solicitor, and NATHAN
K. KELLEY, Associate Solicitor.
__________________________
IN RE YAMAZAKI 2
Before LOURIE and REYNA, Circuit Judges, and KRIEGER,
District Judge.
LOURIE, Circuit Judge.
Appellant Shunpei Yamazaki appeals from a decision
of the Board of Patent Appeals and Interferences (“the
Board”) affirming the rejection of reissue application
10/045,902 (the “Reissue Application”) for lack of error
correctable under 35 U.S.C. § 251. Ex parte Yamazaki,
No. 2010-002033, 2011 WL 109119 (B.P.A.I. Jan. 10,
2011) (“Board Decision”), reh’g denied, 2011 WL 3605913(B.P.A.I. Aug. 12, 2011) (“Rehearing Decision”). Because
we agree that reissue proceedings cannot be used to
withdraw a terminal disclaimer from Yamazaki’s issued
patent, we affirm.
BACKGROUND
This appeal reaches us at the close of a long-running
dispute between Yamazaki and the United States Patent
and Trademark Office (“PTO”) over a terminal disclaimer
filed during the prosecution of U.S. Patent 6,180,991 (the
“’991 patent”).
In 1995, Yamazaki filed U.S. Patent Application
08/426,235 (the “Original Application”), entitled “Im-
proved Semiconductor Having Low Concentration of
Phosphorus.” During prosecution, the examiner issued an
obviousness-type double patenting rejection based on
Yamazaki’s earlier-issued U.S. Patent 4,581,476 (the “’476
patent”). To overcome that rejection, Yamazaki filed a
terminal disclaimer on November 27, 1996, affirmatively

Honorable Marcia S. Krieger, District Judge,
United States District Court for the District of Colorado,
sitting by designation.
3 IN RE YAMAZAKI
disclaiming the statutory term of any patent granted on
the Original Application that would extend beyond the
expiration date of the ’476 patent. The parties agree that
the ’476 patent expired on December 22, 2003.
Yamazaki later amended each independent claim of
the Original Application, such that, in Yamazaki’s view,
the pending claims became patentably distinct over the
claims of the ’476 patent and the terminal disclaimer
became unnecessary. Accordingly, on April 8, 1999, with
the Original Application still pending, Yamazaki submit-
ted a petition under 37 C.F.R. § 1.182 requesting that the
PTO withdraw the recorded terminal disclaimer (“Petition
to Withdraw”). See Manual of Patent Examining Proce-
dure (“MPEP”) § 1490 (7th ed., 1998) (“If timely re-
quested, a recorded terminal disclaimer may be
withdrawn before the application in which it is filed
issues as a patent . . . . [T]he nullification of a recorded
terminal disclaimer may be addressed by filing a petition
under 37 C.F.R. 1.182 . . . .”).
The PTO did not act on Yamazaki’s petition. Prosecu-
tion of the Original Application continued, however, and
led to a Notice of Allowance issued on July 18, 2000. With
the Petition to Withdraw still pending, Yamazaki paid the
requested issue fee, and the Original Application duly
issued as the ’991 patent on January 30, 2001. The
terminal disclaimer thus remained in force on the issue
date, as reflected on the face of the ’991 patent, and as a
result substantially curtailed the enforceable term of the
’991 patent. That is, the ’991 patent would have expired
on January 30, 2018, if afforded the full 17-year term
allowable under 35 U.S.C. § 154(c)(1); however, adopting
the December 22, 2003, expiration date of the ’476 patent
effectively limited the ’991 patent to a term of only 35
months.
IN RE YAMAZAKI 4
On May 10, 2001, approximately three months after
the ’991 patent issued and more than two years after
Yamazaki first sought to withdraw the terminal dis-
claimer, the PTO issued a decision dismissing the Petition
to Withdraw. The PTO concluded that it could not con-
sider Yamazaki’s petition because a recorded terminal
disclaimer may not be nullified after the subject patent
has issued. Yamazaki requested reconsideration, which
the PTO denied.
Yamazaki then changed tack and filed the Reissue
Application now before us on January 16, 2002, seeking to
rescind the terminal disclaimer through reissuance of the
’991 patent. The Reissue Application sought to correct
“errors” committed during prosecution of the Original
Application that had rendered “the subject ’991 patent
inoperative during its terminal part of the statutory term”
and resulted in Yamazaki “claim[ing] less than the pat-
entee had the right to claim in regards to the term of the
’991 patent.”1 The PTO did not act on the Reissue Appli-
1 In particular, Yamazaki submitted a declaration
with the Reissue Application that identified the following
as errors allegedly correctable by reissue:
1 The error of the applicants in failing to en-
sure proper disposition of the Petition to
Withdraw during prosecution of the [Original
Application];
2 The error of the applicants in not withdraw-
ing the [Original Application] from issuance
under 37 CFR 1.313 before the payment of
the issue fee;
3 The error of the applicants in not withdraw-
ing the [Original Application] from issuance
under 37 CFR 1.313 after the payment of the
issue fee;
4 The error of the applicants in not deferring
issuance of the patent under 37 CFR 1.314
5 IN RE YAMAZAKI
cation until April 6, 2004—by which time the ’476 and
’991 patents had expired—when the examiner rejected
Yamazaki’s oath and declaration as defective for failing to
recite an error upon which a reissue application could be
based. See MPEP § 1490 (“It has been the Office position
that reissue is not available to withdraw or otherwise
nullify the effect of a terminal disclaimer recorded in an
issued patent.”). Yamazaki timely responded, and on
January 4, 2005, the examiner issued a final rejection on
similar grounds. An in-person examiner interview oc-
curred sometime in the ensuing three months,2 and the
examiner entered an interview summary noting that
those present at the interview had “agreed . . . that the
Reissue can be used to correct an error involving a Termi-
nal Disclaimer.” Nevertheless, the PTO delayed further
action for more than two years before issuing another
non-final office action that once again rejected the Reissue
Application as premised on a defective basis for reissue.
Rather than pursue further prosecution, Yamazaki
filed an appeal to the Board on September 24, 2007.
Yamazaki’s appeal engendered yet another lengthy delay,
as the Board did not issue its initial decision until Janu-
ary 11, 2011. Board Decision, 2011 WL 109119.
The Board, convening as an expanded panel of seven
Administrative Patent Judges, concluded that the termi-
nal disclaimer had “reset the expiration date of the origi-
until the outstanding Petition to Withdraw
was considered; and
5 The error of the Examiner/USPTO in failing
to consider and act upon the Petition to With-
draw filed 21 months prior to issuance of the
subject of the ’991 patent.
2 The examiner’s summary of the interview, dated
April 5, 2005, does not specify the interview date.
IN RE YAMAZAKI 6
nal ’991 patent to that of the ’476 patent.” Id. at *4. The
Board held that the PTO therefore could not reissue the
’991 patent to remove the terminal disclaimer under 35
U.S.C. § 251 because that statute (1) prohibits reissuing
an expired patent, and (2) precludes expanding a reissued
patent’s term beyond that set when the original patent
issued. Id. at *5–7. The Board denied Yamazaki’s re-
quest for rehearing, reiterating that the “term of the
original patent,” as used in § 251, is fixed as of the origi-
nal patent’s date of issue. Rehearing Decision, 2011 WL
3605913, at *2–5. Two members of the panel concurred in
the result but differed with the majority’s interpretation
of § 251, concluding that reissue proceedings would be
appropriate for withdrawing a terminal disclaimer re-
corded in an issued but as yet unexpired patent. Id. at *6;
see also Board Decision, 2011 WL 109119, at *8–9.
Yamazaki appealed, and we have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(4).
DISCUSSION
The question presented in this appeal is whether
§ 251 permits the use of reissue proceedings to withdraw
a terminal disclaimer that was in effect upon issuance of
the ’991 patent. The outcome turns on the correct inter-
pretation of § 251, which we consider de novo. In re
Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
In pertinent part, § 251 reads as follows:
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 pat-
entee claiming more or less than he had a right to
7 IN RE YAMAZAKI
claim in the patent, the Director shall, on the sur-
render of such patent and the payment of the fee
required by law, reissue the patent for the inven-
tion disclosed in the original patent, and in accor-
dance with a new and amended application, for
the unexpired part of the term of the original pat-
ent. No new matter shall be introduced into the
application for reissue.
35 U.S.C. § 251 (2006) (emphasis added).
Yamazaki contends that the Board erred in rejecting
his reissue application for failure to state an error cor-
rectable by reissue under § 251. Specifically, Yamazaki
points to errors of his own and of the PTO that, by allow-
ing the ’991 patent to issue with the Petition to Withdraw
still pending, see supra note 1, rendered the ’991 patent
wholly or partially inoperative and caused him to claim
less than he was entitled to by unnecessarily disclaiming
part of the ’991 patent’s full term. Yamazaki argues
further that “the term of the original patent,” as used in
§ 251, refers to the maximum statutory grant of exclusiv-
ity under 35 U.S.C. § 154(a), which provides that “such
grant shall be for a term beginning on the date on which
the patent issues and ending 20 years from the date on
which the application for the patent was filed.” According
to Yamazaki, a terminal disclaimer does not alter that
statutorily defined term but merely adjusts the patent’s
expiration date without altering the statutory term itself.
Yamazaki thus maintains that any disclaimed portion of
the base statutory term remains available and subject to
reissue as part of the “term of the original patent” speci-
fied in § 251.
The PTO counters that once a patent has issued, a re-
corded terminal disclaimer becomes part of the original
IN RE YAMAZAKI 8
patent and defines its term, so that the patent must be
treated as if the disclaimed term never existed. In the
PTO’s view, Yamazaki’s request to reissue the ’991 patent
without its terminal disclaimer would thus violate § 251
by expanding the term of the reissue beyond “the term of
the original patent.” In the alternative, the PTO contends
that § 251 also precludes Yamazaki’s reissue request
because no “unexpired part of the term of the original
patent” remains, the ’991 patent having expired with the
’476 patent in 2003.
The parties thus agree that the “term of the original
patent” defines the outer limit of the PTO’s reissue au-
thority under § 251, i.e., the term of a reissued patent
may not extend beyond that of the original. We therefore
must determine the effect of Yamazaki’s terminal dis-
claimer on the term of the original ’991 patent for pur-
poses of § 251. If, as Yamazaki argues, the terminal
disclaimer merely shifted the ’991 patent’s expiration date
within an “absolute” statutory term that extends to 2018,
the PTO could reset the expiration date anywhere within
that term through reissue without exceeding the term of
the original ’991 patent. On the other hand, if the termi-
nal disclaimer defined the original ’991 patent’s term
based on the expiration date of the ’476 patent, any
reissue of the ’991 patent would be confined to that re-
duced term under § 251. We agree with the PTO and
conclude that when the ’991 patent issued with its termi-
nal disclaimer in effect, that disclaimer became part of
the original ’991 patent and served to define its term,
regardless of any further term that might have been
otherwise available in the absence of the disclaimer.
To examine the effect of a terminal disclaimer on the
term of an original patent, we turn first to 35 U.S.C.
9 IN RE YAMAZAKI
§ 253, which governs both terminal disclaimers and
subject-matter disclaimers. Section 253 states:
Whenever, without any deceptive intention, a
claim of a patent is invalid the remaining claims
shall not thereby be rendered invalid. A patentee,
whether of the whole or any sectional interest
therein, may, on payment of the fee required by
law, make disclaimer of any complete claim, stat-
ing therein the extent of his interest in such pat-
ent. Such disclaimer shall be in writing, and
recorded in the Patent and Trademark Office; and
it shall thereafter be considered as part of the
original patent to the extent of the interest pos-
sessed by the disclaimant and by those claiming
under him.
In like manner any patentee or applicant may dis-
claim or dedicate to the public the entire term, or
any terminal part of the term, of the patent
granted or to be granted.
35 U.S.C. § 253 (2006) (emphases added).
Two aspects of § 253 are important to our analysis.
First, the statute dictates that a terminal disclaimer is
treated as part of the original patent—the same bench-
mark used to fix the maximum term for reissued patents
in § 251. See Vectra Fitness, Inc. v. TNWK Corp., 162
F.3d 1379, 1383 (Fed. Cir. 1998) (“The term ‘original
patent’ is used in both sections 251 and 253; it cannot be
presumed that the term has two different meanings in
these closely related statutes.”). More specifically, § 253
describes terminal disclaimers and disclaimers of patent
claims in parallel, first describing subject-matter dis-
claimers and then instructing that terminal disclaimers
IN RE YAMAZAKI 10
operate “[i]n like manner.” Section 253 thus indicates
that the provisions describing disclaimers of patent
claims—including that such disclaimers “shall thereafter
be considered as part of the original patent”—apply with
equal force to disclaimers of patent term. As such, it is
apparent that a terminal disclaimer’s effects on patent
term, whatever those effects might be, must apply to “the
term of the original patent” as recited in § 251.
Next, because the disclaimer of any issued claim in-
heres in the original patent, we have interpreted § 253 to
mean that after such disclaimer “the patent is treated as
though the disclaimed claims never existed.” Vectra, 162
F.3d at 1383 (citing Guinn v. Kopf, 96 F.3d 1419, 1422
(Fed. Cir. 1996)). We conclude that the same holds true
for Yamazaki’s disclaimer of patent term. If a patentee’s
post-hoc disclaimer of an issued patent claim applies as
part of the “original patent” such that the disclaimed
subject matter is treated as if it never existed, we see
little reason why a terminal disclaimer filed before the
issue date should not be afforded the same effect.
Our conclusion finds added support in other provi-
sions of the Patent Act relating to patent term. See
United Sav. Ass’n of Tex. v. Timbers of Inwood Forest
Assocs., Ltd., 484 U.S. 365, 371 (1988) (explaining that
the use of the same term in related statutes clarifies the
meaning of that term). For example, 35 U.S.C. §§ 155,
155A, and 156 codify additional mechanisms for varying
the “term” of an “original patent” relative to that provided
under § 154(a). See, e.g., § 155 (“Notwithstanding the
provisions of section 154, the term of a patent . . . shall be
extended . . . and such [extension] shall be considered as
part of the original patent . . . .”). To be sure, § 154(a)
establishes a baseline term for original U.S. Patents, but
Yamazaki’s contention that § 154(a) provides the sole
11 IN RE YAMAZAKI
basis for defining the “term” of a patent is undermined by
the appearance of the same language in other statutes.
Had Congress intended to distinguish the concept of
patent “term” established in § 154(a) from the mecha-
nisms for adjustment provided under §§ 155, 155A, 156,
and 253, it surely could have done so—for example, by
casting the latter statutes as affecting the expiration date
rather than the term of affected patents. Instead, each of
those statutes, like § 251, uses the word “term.” To hold
that § 251 uses “term” in a sense consistent with § 154(a)
but distinct from §§ 155, 155A, 156, and 253 would be to
endorse an untenable reading of the statutory scheme,
which we decline to do.
We thus cannot agree with Yamazaki’s view of patent
term as an absolute, immutable statutory grant under
§ 154(a)—patent term calculations begin but do not
necessarily end with that section. Various statutory
devices, including a recorded terminal disclaimer, can
redefine the term of an original patent. When a patent
issues subject to a terminal disclaimer, the patentee
therefore has not just agreed to forgo some amount of its
enforceable term, but has in fact reduced the term itself
by effectively eliminating the disclaimed portion from the
original patent.
Accordingly, Yamazaki’s terminal disclaimer elimi-
nated any term from the original ’991 patent beyond
December 22, 2003. The intended and undisputed lan-
guage of the terminal disclaimer tied the original term of
the ’991 patent to that of the commonly owned ’476 pat-
ent, and there is no question that the ’476 patent lawfully
expired in 2003. Given the ’991 patent’s truncated term,
the Board correctly recognized that reissue “never existed
as a remedy to withdraw the terminal disclaimer.” Re-
hearing Decision, 2011 WL 3605913, at *5. Once the ’991
IN RE YAMAZAKI 12
patent issued with the terminal disclaimer in place, and
the terminal disclaimer consequently became part of the
original patent, the PTO was foreclosed from later reissu-
ing the patent for a term greater than that of the original
’991 patent—in this case, for a term extending beyond
December 22, 2003. Yet that is precisely the result Ya-
mazaki sought to achieve. The PTO thus had no choice
but to reject the Reissue Application, as the alternative
would have contravened the express conditions of § 251.
In so holding, we recognize that the reissue statute “is
remedial in nature, based on fundamental principles of
equity and fairness, and should be construed liberally.”
In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986). Yet
“the remedial function of the statute is not without lim-
its.” In re Serenkin, 479 F.3d 1359, 1362 (Fed. Cir. 2007).
In this case, the various delays Yamazaki experienced in
prosecuting his reissue application,3 while puzzling and
undeniably unfortunate, had no effect on the eventual
outcome because, as discussed, § 251 precluded the PTO
from allowing the Reissue Application at any point during
its pendency. Cf. In re Orita, 550 F.2d 1277, 1280–81
(CCPA 1977) (rejecting a reissue application as seeking a
correction that would have offended statutory require-
ments). We are also unpersuaded that reissue is made
appropriate by the PTO’s failure to act on the Petition to
Withdraw before the ’991 patent issued in the first place.
The PTO surely could have responded to the Petition to
Withdraw—whether affirmatively or otherwise—in the 22
3 Those delays included, among others, a wait of
more than two years for the first office action after the
reissue application was filed, a two-year delay between an
in-person examiner interview and the next official action,
and a delay of well over three years from the filing of
Yamazaki’s appeal brief until the Board issued its initial
Board Decision in this case.
13 IN RE YAMAZAKI
months between its filing and the issuance of the ’991
patent. But Yamazaki was similarly inattentive. Yama-
zaki simply paid the issue fee upon receiving the PTO’s
Notice of Allowance and admittedly bypassed numerous
opportunities to prevent the ’991 patent from issuing with
his petition still unresolved. See supra note 1. Yamazaki
thus shares primary responsibility for allowing the ’991
patent to issue with the terminal disclaimer in place—but
again, once it did, reissue was unavailable to remove that
disclaimer. In short, “[s]ection 251 is not a panacea
designed to cure every mistake which might be committed
by an applicant or his attorney, and the case at bar exem-
plifies a mistake which this section cannot cure.” Orita,
550 F.2d at 1281.
Because we conclude that the PTO lacked the author-
ity to nullify Yamazaki’s terminal disclaimer through
reissue proceedings at all times after issuance of the ’991
patent, we need not reach and do not address the PTO’s
alternative assertion that the ’991 patent’s expiration
during the long pendency of this reissue proceeding
divested the PTO of any ability to grant the reissue.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. Accordingly, we affirm the
final judgment of the Board.
AFFIRMED