Judge Albright Invalidates Ikorongo Patents Under Original Patent Doctrine

On April 12, 2022, in Ikorongo Technology LLC, et al. v. Bumble Trading LLC, Judge Albright granted Bumble’s motion for summary judgment of invalidity under 35 U.S.C. § 251, which contains the original patent requirement.

35 U.S.C. § 251 allows patent owners to correct errors in issued patents “by reason of the patentee claiming more or less than he had a right to claim in the patent.” In this case, the patent owner filed broadening reissues, to broaden the scope of the claims. Under § 251(a), if a patent owner alters the claims, the reissued claims must be “for the invention disclosed in the original patent.” Judge Albright explained that the original patent requirement protects the public because when a reissue enlarges the scope of the patent, the patent owner had led the public to rely on the original patent to describe the scope of the invention.

The original patents were directed to users sharing experiences with buddies. The reissued claims were directed to the tracking of a user with a GPS-enabled cell phone, without other related experience information. Judge Albright concluded that “[a] fair reading did not put the public on notice that the claims should have been corrected to cover a satellite-based, geographic location tracking invention for sharing one’s visited geographic location data with buddies, without including the sharing of related experience information.”