In re Shahram Mostafazadeh and Joseph O. Smith (CAFC 2010-1260) precedential; Judges Dyk (author), Friedman, Prost

In 2001, the applicants filed an application to reissue the '423 patent. This application included twelve new claims. In the reissue declaration, the applicants alleged that the original claims were partially inoperative because the circular-attachment-pad limitation was "unduly limiting in the context of claims directed at the bus bar feature." J.A. 106-07.

A bus bar is a type of electrical connection.

The reissue claims dropped a previously included element: a circularly shaped attachment pad.

The examiner rejected the reissue claims under 35 U.S.C. § 251 as being an improper recapture of subject matter surrendered during prosecution of the '423 patent. The examiner noted that the circular-attachment-pad limitation, which was added during prosecution of the '423 patent, had been "argued to be both critical to the invention and distinguishing over the prior art." J.A. 111-12.

The BPAI agreed. So Mostafazadeh & Smith appealed to the CAFC.

Under the reissue statute, a patent holder may seek reissue of an existing patent. See 35 U.S.C. § 251. The statute provides that:

Whenever [the] 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 patentee claiming more or less than he had a right to claim in the patent, the Director shall . . . reissue the patent for the invention disclosed in the original patent . . . . No new matter shall be introduced into the application for reissue.

Id. It is well established, however, that a patentee may not "regain[ ] through reissue the subject matter that he surrendered in an effort to obtain allowance of the original claims." In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997); see also Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995 (Fed. Cir. 1993). Under this rule against recapture, "claims that are broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution are impermissible." Clement, 131 F.3d at 1468 (internal citation and quotation marks omitted). "Whether the claims of a reissue patent violate 35 U.S.C. § 251, and thus are invalid, is a question of law, which we review de novo." N. Am. Container, Inc. v. Plastipack Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005).

Application of the recapture rule is a three step process. Clement, 131 F.3d at 1468; see also N. Am. Container, 415 F.3d at 1349; Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001). The first step is to "determine whether and in what 'aspect' the reissue claims are broader than the patent claims." Clement, 131 F.3d at 1468. "[A] reissue claim that deletes a limitation or element from the patent claims is broader" with respect to the modified limitation. Id. Next, the court must "determine whether the broader aspects of the reissue claims relate to surrendered subject matter." Id. at 1468- 69. "To determine whether an applicant surrendered particular subject matter, we look to the prosecution history for arguments and changes to the claims made in an effort to overcome a prior art rejection." Id. at 1469.

Here there is no dispute regarding the first and second steps of the recapture analysis. Both parties agree that the reissue claims are broader than the patented claims and that the broader aspects relate to the surrendered subject matter (i.e., the circular-attachment-pad limitation). Thus, only the third step of the recapture analysis is at issue. In this final step, the court must "determine whether the surrendered subject matter has crept into the reissue claim." Id. In discussing this third step, it is important to distinguish among the original claims (i.e., the claims before the surrender), the patented claims (i.e., the claims allowed after surrender), and the reissue claims. Violation of the rule against recapture may be avoided under this final step of the analysis if the reissue claims "materially narrow" the claims relative to the original claims such that full or substantial recapture of the subject matter surrendered during prosecution is avoided. N. Am. Container, 415 F.3d at 1349; see also Pannu, 258 F.3d at 1371; Clement, 131 F.3d at 1470.

To avoid violation of the rule against recapture in this way, the narrowing must relate to the subject matter surrendered during the original prosecution (i.e., the applicant cannot recapture the full scope of what was surrendered). See N. Am. Container, 415 F.3d at 1350; Pannu, 258 F.3d at 1372; Clement, 131 F.3d at 1471.

[A] limitation that is added during prosecution to overcome prior art cannot be entirely eliminated on reissue because doing so would constitute recapture of the surrendered subject matter. The limitation may be modified, however, so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.

The BPAI displayed its own woolly-headedness. That's what this precedential ruling is about: rectifying the patent board.

The Board held here that the third step of the recapture analysis had not been satisfied (i.e., the surrendered subject matter was entirely within the scope of the reissue claims). The Board's analysis on this point is perplexing. The Board stated that the recapture rule is violated "if the reissue claim omits or broadens any limitation that was added/argued during the original prosecution to overcome an art rejection, even if it includes other limitations that narrow the claims in other aspects." Board Decision, at 14. To support this proposition, the Board relied on a portion of § 1412.02 of the Manual of Patent Examining Procedure ("MPEP"), which states in part:

If surrendered subject matter . . . has been in any way broadened in a reissue application, . . . then a recapture rejection under 35 U.S.C. § 251 is proper and must be made for that claim.

MPEP § 1412.02(I)(C), Rev. 7, July 2008. The reference to "broadening" the added limitation or "broadening" the "surrendered subject matter" is confusing. It could mean that the limitation is less restrictive or it could mean that the limitation is more restrictive. The former presents a recapture, while the latter does not. See N. Am. Container, 415 F.3d at 1350; Pannu, 258 F.3d at 1372; Clement, 131 F.3d at 1471. It is far clearer to speak in terms of broadening or narrowing the claims than to speak of broadening or narrowing the "limitation" or the "surrendered subject matter."

Though the Board went on to analyze whether the claims were materially narrowed "in other respects so as to avoid recapture," it seems to have defined "materially narrowed" in a manner contrary to our precedent. See Board Decision, at 15. Based on this provision of the MPEP, the Board concluded that "[a] limitation materially narrows the . . . claims if the narrowing limitation is directed to one or more overlooked aspects of the invention." Id. (internal quotations omitted). It then defined "overlooked aspects" of the invention as "patentably distinct (1) inventions; (2) embodiments; or (3) species not originally claimed--not mere incidental features of the originally-claimed invention." Id. at 17. The Board noted that "[t]he latest version of the MPEP confirms this point" by emphasizing that if "the reissue claim(s) are really claiming additional inventions/embodiments/species not originally claimed (i.e., overlooked aspects of the disclosed invention), then recapture will not be present." Id. at 16; see also MPEP § 1412.02(I)(C), Rev. 7, July 2008. Accordingly, the Board concluded that rejection of the reissue claims was proper because the narrowing limitations, which related to the bus bar, were "not directed to distinct inventions; rather they [were] different definitions of the same [bottom-surface-mount embodiment disclosed in the original patent], varying in breadth or scope of definition." Board Decision, at 18.

The Board's reliance on this portion of the MPEP is misplaced. This portion of the MPEP deals with claims in which there is no need to apply the recapture rule in the first place. The recapture rule is triggered only where the reissue claims are broader than the patented claims because the surrendered subject matter has been reclaimed in whole or substantial part (i.e., an added limitation has been eliminated or revised). See Clement, 131 F.3d at 1468-69. In contrast, this portion of the MPEP addresses reissue claims directed at "additional inventions/embodiments/species not originally claimed." Because the subject matter of these claims was "not originally claimed," it is wholly unrelated to the subject matter that was surrendered during prosecution and the recapture rule is not even triggered. At oral argument, the PTO conceded this point, noting that this portion of the MPEP is unrelated to recapture.

As discussed above, the recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.

Back to the applicant's attempt to recapture surrendered subject matter.

The applicants urge that they have avoided the recapture rule because they have not broadened the claims to encompass everything that was surrendered during prosecution. This argument is plainly contrary to our precedent. Here there is no dispute that the reissue claims are broader than the patented claims. Where this is the case, the recapture rule is avoided only if the claims are materially narrowed in a way that avoids recapture of the surrendered subject matter. See N. Am. Container, 415 F.3d at 1350; Pannu, 258 F.3d at 1372; Clement, 131 F.3d at 1471. Thus, the mere argument that the reissue claims constitute only a partial recapture is insufficient without a corresponding demonstration of material narrowing. Retention of the attachment pad limitation is related to the surrendered subject matter, but is not materially narrowing because the use of an attachment pad was well known in the prior art.

The narrowing limitations are unrelated to the surrendered subject matter and thus insufficient to avoid recapture.

Affirmed.

Patent reissue is the last refuge of incompetent prosecution. If there is any prospect that the claims are less than full coverage, keeping a patent alive by filing a continuation is the smart way to go.