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 origi-nal 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 recap-ture, “claims that are broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution are impermissi-ble.” Clement, 131 F.3d at 1468 (internal citation and quotation marks omitted).
As to the mechanics of applying the recapture rule:
Application of the recapture rule is a three step proc-ess. Clement, 131 F.3d at 1468; see also N. Am. Con-tainer, 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 claimsz, 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.
The issues in this case:
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.
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. For example, in North American Container, the original claims were directed to a one-piece, blow-molded plastic bottle. 415 F.3d at 1338. During prosecution of the original claims, the claims were amended by adding a limitation requiring that the inner walls be “generally convex.” Id. at 1340.
The losing argument:
The applicants argue that narrowing is material where the additional claim limitations “render an other-wise invalid claim valid,” whether or not the narrowing is related to the surrendered subject matter. Br. of Appel-lants at 29. In making this argument, the applicants rely on this court’s decision in Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472 (Fed. Cir. 1998). The applicants misinterpret Hester. In Hester, we rejected the applicant’s argument that the added limitations were materially narrowing, finding that the limitations were unrelated to the surrendered subject matter. Id. at 1482–83. We did not suggest that the materiality of the allegedly narrow-ing limitations was determined by whether the limita-tions rendered the claims patentable.
Thus, 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 CAFC found difficulty with the Board's decision:
The Board held here that the third step of the recap-ture 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 limita-tions that narrow the claims in other aspects.”
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.
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 re-claimed in whole or substantial part (i.e., an added limita-tion has been eliminated or revised). See Clement, 131 F.3d at 1468–69.
Second, the applicants argue that the reissue claims “each have a number of limitations that are narrowing relative to the surrendered [subject matter].” Br. of Appellants at 29. Specifically, the applicants rely on limitations related to the bus bar, which require that: (1) the “bottom surfaces of the die attach platform, the con-tacts and the bus bar [be] substantially co-planar,” (2) the “protective casing cover[ ] the die and lead frame while leaving bottom surfaces of the die attach platform, the bus bar and the conductive contacts exposed,” and (3) the protective casing “physically isolate the bus bar from at least some of the conductive contacts.” J.A. 204. While these limitations certainly narrow the reissue claims relative to the original claims, the narrowing is related only to the bus bar, not the circular attachment pad. In other words, the narrowing limitations are unrelated to the surrendered subject matter and thus insufficient to avoid recapture.
We thus affirm the rejection of claims 11–23 in the applicants’ reissue application.