Tuesday, May 08, 2012

The CAFC tackles re-issue, recapture in In re YOUMAN


 The Board did not properly conduct step three of the recapture rule analysis. It failed to determine whether the applicants avoided the recapture rule bar on reissue by modifying their “cycling” limitation to “changing” in the reissue claim. Thus, we vacate the Board’s decision. On remand, the Board should properly apply the recapture rule analysis, as articulated in this opinion and in Mostafazadeh, to the claims at issue and make necessary findings of fact. 

Judge Lourie, in dissent:

I respectfully dissent from the majority’s holding that the scope of a claim in reissue is to be judged for recap- ture purposes by comparison with the claim as originally filed. When the originally filed claim has been amended, especially when the amendment was made in order to obtain allowance, a later reissue claim should be com- pared with the issued claim in order to determine whether it has been broadened and hence constitutes recapture of surrendered subject matter.

Reissue-recapture law, now encumbered by a variety of cases and writings, should basically not be complicated. Its application, though, is more difficult. Simply stated, if a patent applicant surrenders subject matter during prosecution, and then attempts to recapture part of what is surrendered, he should be denied that attempt because of the recapture rule. On the other hand, if the reissue also attempts to significantly narrow the broadened claim over what has been patented, in other ways than pertain to the point of broadening, the so-called third prong of the recapture analysis, then recapture may be avoided be- cause the claims overall are not broader than what is claimed in the issued patent.
The majority relies for its conclusion here on In re Mostafazadeh, which used the term “original” in noting what a reissue claim should be measured against for the third prong. 643 F.3d 1353, 1358–59 (Fed. Cir. 2011). But it makes no sense to compare a reissue claim to an original, pre-issued claim in this context. The original claim is only history as far as later narrowing is con- cerned. What should count is only whether a reissue claim is in toto broadened in relation to the issued claim. In accordance with these principles, the Mostafazadeh court held that the applicants in that case violated the recapture rule because the reissue claims were broader than the issued patent claims regarding the surrendered subject matter and were not “materially narrowed in a way that avoid[ed] recapture of the surrendered subject matter.” Id. at 1361 (citing N. Am. Container, Inc. v. Plastipack Packaging, Inc., 415 F.3d 1335, 1350 (Fed. Cir. 2005), Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1372 (Fed. Cir. 2001), and In re Clement, 131 F.3d 1464, 1471 (Fed. Cir. 1997)). Indeed, the cases relied on by Mostafazadeh likewise held that the “materially narrow- ing” inquiry focuses on whether the reissue claims were narrowed in any material respect compared to the issued patent claims, not the originally-filed claims. E.g., Pannu, 258 F.3d at 1372 (holding that recapture rule applied when “the reissued claims were not narrowed in any material respect compared with their broadening”); N. Am. Container, 415 F.3d at 1349–50 (holding that recapture rule applied to reissued claims that had been “enlarged” and were not “materially narrowed in other respects”). Thus, the majority’s extension of dicta in Mostafazadeh is unwarranted.



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