Recapture and Reissue - Recent Developments in the Federal Circuit

May 11, 2011

In a recent decision from the Federal Circuit, In Re Mostafazadeh, Case No. 2010-1260 (Fed. Cir. May 3, 2011), the Federal Circuit affirmed the Board of Patent Appeals and Interferences' (the "Board") decision upholding the patent examiner's rejection of certain claims of a reissue patent application. The Federal Circuit affirmed the Board because the reissue application impermissibly attempted to recapture subject matter surrendered during prosecution of the original patent application.

The patent at issue, U.S. Patent Number 6,034,423 (the "'423 patent"), is directed to lead frame based semiconductor packaging. The '423 patent describes two embodiments, a pin-type package and a bottom-surface-mount package. The originally filed claims were rejected as either anticipated or obvious. The independent claims were then amended to add the requirement of "circular attachment pads," and the applicant argued that "circular attachment pads" were novel. As a result of the amendment, the '423 patent issued as amended.

In 2001, the applicant filed an application to reissue the '423 patent, which included twelve new claims. The reissue declaration asserted that the original claims were partially inoperative because the circular-attachment-pad limitation was unduly limiting. The reissue claims retained the requirement of "an attachment pad" but deleted the circular shape requirement. The examiner rejected the reissue claims because they were improperly attempting to recapture subject matter surrendered during prosecution of the '423 patent, i.e., the circular shape. On appeal to the Board, the Board upheld the examiner's findings.

The Federal Circuit affirmed the Board's ruling. The Federal Circuit began by noting that it is well established that a patentee cannot regain relinquished subject matter that was surrendered during prosecution in order to obtain allowance of the original claims. Citing the three step process for the application of the recapture rule, i.e. (1) whether and in what aspect the reissue claims are broader than the patent claims as originally issued, (2) whether the broader aspects of the reissue claims relate to surrendered subject matter, and (3) whether an applicant surrendered the particular subject matter during the prosecution to overcome a prior art rejection, the Federal Circuit found that each of the steps were met.

As both parties agreed that the first two steps were satisfied, the Federal Circuit turned to an analysis of the third step. The Federal Circuit stated that "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."

The applicant made two arguments to avoid the recapture rule. First, the applicant asserted that they had avoided the recapture rule because they had not broadened the claims to encompass everything that was surrendered during prosecution. The Federal Circuit rejected this argument as contrary to its precedent because the recapture rule is only avoided if the claims are materially narrowed in a way that avoids recapture of the surrendered subject matter. "Thus, the mere argument that the reissue claims constitute only a partial recapture is insufficient without a corresponding demonstration of material narrowing." Second, the applicant argued that the reissue claims have limitations that narrow the claims relative to the surrendered subject matter. The Federal Circuit also rejected this argument because the limitations relied upon by the applicant, although narrowing the reissue claims relative to the originally issued claims, did not narrow the claims relative to the circular attachment pad.

As a result, these narrowing limitations were insufficient to avoid recapture.

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The authors of www.PatentLawyerBlog.com are patent litigation lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.