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Archive for the ‘Recapture Doctrine’ Category

CAFC Again Recalibrates Recapture Doctrine

Posted On: May. 9, 2012   By: Scott A. McKeown
recapture ruleIn re Youman Faults BPAI Recapture Analysis

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.  Read the rest of this entry »

Recapture Doctrine Before The CAFC

Posted On: Feb. 17, 2011   By: Scott A. McKeown

mistakesLast Friday, In re Mostafazadeh was argued before the CAFC (argument here). The case explored the boundaries of the patent reissue recapture rule. At dispute in the appeal was whether or not the third step of the rule, as outlined in MPEP 1412.02, is tied to the “critical limitation” (i.e., originally surrendered subject matter) or not. {10:30 min. mark}

The three step analysis of In re Clement is as follows:

(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; 

(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) finally, we 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. (emphasis added)

In considering the case, the CAFC found both the MPEP discussion of step (3) and BPAI decision on this point to be confusing. {14.50 min mark} Read the rest of this entry »

Recapture of Subject Matter Through Patent Reissue

Posted On: Sep. 15, 2010   By: Scott A. McKeown
stop-goCan Inconsistent Statements Made Outside of the USPTO Surrender Claim Scope for Recapture Purposes?

The recapture doctrine of patent reissue is often a subject of debate before the BPAI. As we discussed last week, the question of the propriety of an intermediate claims scope vis-a-vis recapture was recently decided by the BPAI, and briefing before the CAFC is near complete on the same issue (In re Mostafazadeh). A day after the BPAI decision of last week, the Federal District Court of Ohio considered recapture in the context of statements made outside of the USPTO in Bendix Commercial Vehicle Systems LLC, et al v. Haldex Brake Products Corp., 1-09-cv-00176 (N.D.O.H)

As a reminder, the recapture doctrine exists because a deliberate surrender of subject matter is not an “error” that is correctable by patent reissue. The recapture doctrine prevents Patent Holders from broadening claim scope in patent reissue that was deliberately surrendered during original prosecution. In Bendix, the defendant (Haldex) argued that the asserted broadened reissue patent, RE 38,874, (relating to automotive braking equipment) was invalid under 35 USC § 251 due to statements made during an earlier litigation and in a foreign patent office. Read the rest of this entry »

BPAI Clarifies Patent Reissue Recapture Doctrine

Posted On: Sep. 9, 2010   By: Scott A. McKeown
mistakesDoes Recapture Include an Intermediate Claim Scope?

In a nutshell, the recapture doctrine prevents Patentees from broadening claims via patent reissue to “re-capture” subject matter intentionally surrendered during original prosecution. The recapture doctrine exists because a deliberate surrender of subject matter is not an “error” that is correctable by patent reissue. MPEP § 1412.02 spells out the 3-part test to identify when subject matter claimed in reissue is subject to recapture.

In 2003, the BPAI issued Ex Parte Eggert, which indicated that an intermediate claim scope presented in reissue (i.e., somewhere between what was surrendered and what was ultimately claimed) would not constitute recapture. Thus for example, if the prior art showed a hard-wired communication and the claim that issued was amended during original prosecution to recite an infrared communication, the intermediate scope sought via a broadening patent reissue might be “wireless communication.”

Back in April of this year, we questioned the continued viability of Ex Parte Eggert in view of the CAFC’s decision in North American Container. While the USPTO had publicly taken the position that Eggert would no longer be followed, some wondered whether that decision was actually consistent with the holding of North American Container. Yesterday, a decision issued, amplifying the USPTO’s reading of North American Container. Read the rest of this entry »

Patent Reissue Doesn’t Fix Errors in Portfolio Management

Posted On: Apr. 14, 2010   By: Scott A. McKeown

mistakesAs provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that was made without deceptive intent that renders an issued patent wholly, or partly, inoperative.

Patent owners seeking reissue within two years of patent issuance are permitted the additional opportunity to broaden the issued claims, subject to intervening rights. Reissue applications filed outside this two year window may not broaden issued claim scope.

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution.  Important limits are placed on patent reissue with respect to Read the rest of this entry »

Treatment of the Recapture Doctrine at the BPAI post North American Container

Posted On: Apr. 2, 2010   By: W. Todd Baker

mulligan1All hackers err… golfers know there are both appropriate and inappropriate times to take a mulligan.  When is it OK to take a mulligan via reissue?  The 3-step test to determine whether the recapture rule prohibits a mulligan in reissue has been well-established since In re Clement[1] was decided in 1997.  As set out by the MPEP in § 1412.02, the 3-step test requires an examiner to make the following determinations:

(1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

(2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) 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.  {Emphasis added.}

You may recall the 2003 Board of Patent Appeals and Interferences (“Board”) precedential decision Read the rest of this entry »

Avoiding Reliance on the Doctrine of Equivalents Through Patent Reissuance

Posted On: Dec. 18, 2009   By: Stephen G. Kunin

If a patent owner has disclosed, but not claimed some embodiments of the invention, resort to the doctrine of equivalence to protect such unclaimed embodiments may be lost through the doctrine of prosecution history estoppel. Let’s assume, for sake of argument, that the patent application that led to the patent contained no claims to the genus covering the species set forth as separate embodiments of the invention and the prosecution history of the patent contained no arguments applicable to the unclaimed embodiments. Consequently, if the patent is less than two years old, the patent owner may seek to correct this error in claiming less than she was entitled to claim through the filing of a broadened reissue application claiming the previously unclaimed embodiments of the invention. The doctrine of impermissible recapture in such circumstances would not apply.

In accordance with MPEP § 1412.01:

Claims presented in a reissue application are considered to satisfy the requirement of 35 U.S.C. 251 that the claims be “for the invention disclosed in the original patent” where:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112 first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
****
**>One should understand<, however, >that< the mere failure to claim a disclosed embodiment in the original patent (absent an explicit statement in the original patent specification of unsuitability of the embodiment) would not be grounds for prohibiting a claim to that embodiment in the reissue.

Filing a reissue application to claim previously unclaimed embodiments of the invention must be filed within two years of the issuance of the original patent, if claims to the previously unclaimed embodiments would read on something which the original claims do not. This would presume that no claims to the genus covering all the embodiments of the invention existed in the original patent. The test for a broadening reissue is whether the reissue patent claims would be infringed without infringing the original patent claims.

This gambit will avoid the loss of potentially valuable patent rights where the patent owner did not file a voluntary divisional application to seek protection for the previously unclaimed embodiments of the invention before issuance of the original patent.