Does 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.
A link to the decision, Ex Parte Roger Youman and Marney Morris is found (here). In Youman, the Patentee sought to broaden certain means-plus-function elements, and modify language relating to the selection of displayed character via remote control. In the issued claims a “cycling forward and backward” through displayed characters was added to distinguish over the art of record. In the reissue this language was broadened to “changing from a first to a second character.” This change was argued by the Patentee as intermediate with respect to the surrendered subject matter and the original claim. The Patentee argued that Eggert was controlling and consistent with North American Container. With respect to the Eggert/North American Container debate, the BPAI explained:
Eggert conflicts with the Federal Circuit rationale for it was this very “intermediate scope” rationale that formed the basis for the Eggert majority’s conclusion that there was no recapture in that case. See Eggert, 67 USPQ2d at 1717-18 (holding that broadening the scope of an issued claim via reissue to have a scope between that of the issued claim and the rejected claim does not impermissibly recapture surrendered subject matter under § 251). See also Ex parte Liebermann, No. 2007-0012, 2007 WL 5211672 (BPAI 2007) (informative), at *11-12 (noting that Eggert is inconsistent with the rationale expressed in North American Container and should no longer be followed or apply to USPTO proceedings). Accord Ex parte Mostafazadeh, 2009-004238, 2009 WL 5486107 (BPAI 2009) (non-precedential), at *4-7 (explaining underlying reasoning and policy considerations in abrogating Eggert).
Some commentators believe that North American Container may not expressly overrule Eggert. This is because, based on the facts of North American Container, the Federal Circuit arguably did not address the “intermediate scope” issue of Eggert. Instead, in North American Container, the limitation relied on during prosecution was omitted in its entirety.
PPG Comment: Should the Patentee decide to appeal to the CAFC this would be the third patent reissue question to head to the CAFC this year. (See Ex parte Staats and Ex Parte Tanaka discussions). I’d like to see this issue explored further by the CAFC as it presents an important question for Patentees.
Not discussed above is the shocking 10 year pendency of this case, which included an unexplained 3 year gap in prosecution. This is not an exception in my experience. ….but the broken state of patent reissue within the USPTO will be left for another day.