Guidant prevails against Medtronic over RE 38,119

Guidant prevailed in a nonprecedential decision in which the CAFC affirmed a decision by Judge Sue Robinson of D. Delaware concerning the recapture rule as it impacts re-issue patents.

In the prosecution of the re-issue application (directed to claims broader than in the initally allowed case), the examiner initially rejected claims for lack of written description support. [See also discussion of the use of written description in 88 JPTOS 743, which criticizes an article in the July 28, 2006 issue of Science.] Ultimately, Guidant got allowance of the new claims.

Medtronic filed a declaratory judgment for invalidity of the new claims, arguing invalidity of the new claims through improper recapture. Guidant argued that there was attorney error because the prosecuting attorney failed to understand the technology. The CAFC cited Hester v. Stein, 142 F.3d 1472 and In re Wilder, 736 F.2d 1516. The recapture rule prevents the patentee from obtaining, through re-issue, material that was surrendered during the initial prosecution. Pannu v. Storz, 258 F.3d 1366.

For the test for re-capture rule, the CAFC cited to N. Am Container, 415 F.3d 1335, as well as Pannu and Clement.

The CAFC agreed with the district court (and Medtronic) that claims 15 and 16 did include the unconditional embodiment, later claimed in re-issue. However, the CAFC looked for a DELIBERATE withdrawal or amendment to secure the patent. This the CAFC did not find, in part guided by the examiner's amendment referring to "minor wording changes."

Judge Dyk dissented as to whether or not there was deliberate withdrawal.