Back in 2010, the BPAI rejected certain claims in Ex parte Youman as attempting to recapture previously surrendered subject matter via a patent reissue application. This case was noteworthy for several reasons, not the least of which was its 10+ year pendency before reaching a Board decision. A link to the earlier BPAI decision is found (here).
As a reminder, Youman sought to broaden certain means-plus-function elements of his issued patent, and modify language relating to the selection of displayed characters of an electronic program guide via a television remote control.
The originally issued claims recited a “selection means…cycling forward and backward” through displayed characters. This feature was added to distinguish over the art of record during the prosecution of the underlying patent application. In the patent reissue application (broadening), this language was broadened to using a wireless remote control for “changing from a first to a second character.” This change was rejected by the BPAI as an attempt to recapture previously surrendered subject matter.
In rejecting the claim as recapturing previously surrendered subject matter, the BPAI relied upon some of the same MPEP language (”overlooked aspects”) later criticized by the CAFC in In re Mostafazadeh. In its most recent consideration of the recapture doctrine, the CAFC focused on the claim language that must be analyzed in the third prong of the recapture test. By way of reminder, the recapture doctrine has been distilled down to a three part test, namely:
(1) Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) Next, determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) Finally, determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
As steps 1 and 2 were not disputed in Youman the CAFC explained the BPAIs mistake in applying step 3 as:
[T]he Board failed to distinguish between instances where an added limitation has been modified versus instances where an added limitation is eliminated in its entirety. As Mostafazadeh teaches, such a distinction is critical to applying correctly step three of the recapture rule.
The majority of our precedent (including precedent relied on by the Board) involves instances where the patentee eliminates the added limitation in its entirety; in such circumstances it is clear that the surrendered subject matter has been recaptured and the scope of the reissue claim is even broader than the original. . . . .
In the case at bar, however, the Board has already determined that the added limitation—cycling—has not been eliminated; rather, it has been broadened to changing. Board Decision, 2010 WL 3503790, at *9. Such modification does not instantly implicate the recapture rule bar, as the Board held; rather, such a broadening modification must be evaluated to determine if it materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.
The [USPTO] argues that material narrowing should be determined relative to the patented claim, rather than the original claim. We disagree. Using the original claim as a frame of reference for determining whether the reissue claim materially narrows is consistent both with case law and the purposes underlying the reissue statute. By measuring material narrowing relative to the original claim, which was deliberately surrendered during the original prosecution, we are ensuring that the patentee is unable to recapture what it surrendered deliberately, but allowing room for error, as required by the reissue statute. . . .
With regards to determining whether a modified limitation is materially narrowing, Mostafazadeh should provide the Board with guidance for conducting such analysis. . . . .Mostafazadeh establishes, as a ceiling for determining whether a modified limitation material narrows, any recapture of surrendered subject matter that was in the prior art of the original prosecution. The logic of such a ceiling flows from the concept of “error” under the reissue statute. When a patentee is narrowing its claim limitations due to prior art that would otherwise render the claims unpatentable, the patentee can only be doing so deliberately, without any possibility of error. Thus, if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue. The Board’s failure to distinguish this case from instances where the added limitation is deleted in its entirety and to conduct the proper analysis for a modified limitation is reason enough to vacate and remand.
Interestingly, with respect to the above underlined statement, the Court made no reference to the fact that the claims omitted the previous means-plus-function language. Thus, the structure of the previous function (linked in the specification in a means-plus-function sense) has, in fact, been eliminated in some respect. Moreover, the originally issued claim recited a user control means and a selection means. Yet, the reissue claims require only the wireless remote control. Further, the original prosecution history emphasizes the ability to use fewer buttons as a distinction. (presumably the selection means)
The case should make for an interesting remand. Unfortunately, the patent expires on November 29, 2014, so there is not much term left to “reissue” at this point. (disturbingly, this reissue application has been pending since November 24, 1999).