Can 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.
As one would expect, the defendant also argued traditional disclaimer/estoppel theories along with recapture, to no avail.
The recapture argument was the continuation of an earlier effort. During the patent reissue proceeding, the defendant filed a protest pointing out the alleged recapture issue to the USPTO, but the examiner sided with the Patent Holder explaining that [n]o rejection of the claims over the prior art of record was made in the application and therefore no arguments were made to distinguish the claims from the prior art of record.
Essentially siding with the earlier examiner’s position, the district court explained (decision here):
Haldex also points to statements made after the issuance of the original patent, during a prior litigation over that patent, claiming that these statements constitute the surrender of claims relating to anything other than a one-piece caliper. Acceptance of this argument would require an extension of the current law governing the recapture rule. Federal Circuit case law clearly holds that a surrender, for purposes of the recapture rule, can only be made through arguments, statements, and amendments made during the prosecution of the original patent. See, e.g., Hester Indust, Inc. v.Stein, Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998)(citing In Re Clement, 131 F.3d 1464, 1469 (Fed.Cir. 1997)(“To determine whether an applicant surrendered particular subject matter, we look to the prosecution history for arguments and changes to the claims made in an effort to overcome a prior art rejection.”).
PPG Comment: With respect to litigation statements, this decision is not at all surprising. Recapture answers the simple question of whether or not a surrender of claim scope was deliberate BEFORE patent issuance. (i.e., not a correctable “error” that can be corrected LATER by patent reissue). Since the error can only have happened before issuance, it follows that factors considered in a recapture analysis are also limited to pre-issuance conduct.
On the other hand, the court was able to dodge the more interesting foreign prosecution question. The defendants identified alleged surrender of claim scope based on statements made in the prosecution of the German priority application (occurring before the U.S. prosecution). The court was able to side step this issue based on the fact that different U.S. claims were introduced by preliminary amendment at the time of U.S. filing. (also noting that the appropriate PCT form box was NOT checked carrying over amendments from the earlier, German prosecution).
Aside from a 112 rejection (non-prior art), the U.S. application was allowed without discussion of prior art. What if the claims had remained the same, recapture?