Wednesday, August 22, 2012

CAFC on the rule against recapture

As to the conclusion of Greenliant v. Xicor:

Here, Xicor is bound by the arguments it made during the prosecution of the ’585 patent, which clearly establish that it surrendered devices produced through the use of non-TEOS reactants for the recited low pressure chemical vapor deposition in order to gain allowance. Thus, we affirm the district court’s holding that claims 12 and 13 of the RE’370 patent are invalid under the rule against recapture.

The background law

Under 35 U.S.C. § 251, a patentee may, within two years of the issuance of a patent, seek a broadening reissue of that patent if, among other things, the patentee originally claimed “less than he had a right to claim.” See MBO Labs., Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1313 (Fed. Cir. 2010). However, under the rule against recapture, “a patentee is precluded from regaining the subject matter that he surrendered in an effort to obtain allowance of the original claims.” N. Am. Con-tainer, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005) (internal quotation marks omitted). This case presents the question of whether broadening claims 12 and 13 of the reissued RE’370 patent (the claims at issue in this case) improperly recaptured claim scope that Xicor1 had previously surrendered during the prosecution of its predecessor, U.S. Patent No. 5,977,585 (“the ’585 patent”).

As to standards

“We review a district court’s legal determination that a reissue patent violates the rule against recapture with-out deference.” MBO Labs., 602 F.3d at 1312. Because the district court decided this case on summary judgment, we apply a de novo standard of review. Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1335 (Fed. Cir. 2009). Regardless of the standard applied by the district court, we apply the correct clear and convincing evidence standard on appeal and agree with the district court’s result. See Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1322 (Fed. Cir. 2006).


To decide whether a patentee surrendered certain subject matter, we must determine “whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee’s amendment or argu-ment” concerning a particular claim was for reasons of patentability, that is, “to overcome prior art and secure the patent.” Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006).


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