Scott Daniels | April 15, 2010
The CAFC held this week – in MBO Labs. v. Becton, Dickinson – that a reissue applicant may not recapture claimed subject matter that was surrendered in a related application.
The rule against recapture prohibits a patentee from broadening the scope of its claims during reissue to cover subject matter that it had previously surrendered during the prosecution of its original claims. The rule exists because reissue is intended to correct “errors made without deceptive intent,” not to remove amendments or arguments made to convince an examiner to allow claims. Further, competitors are allowed to rely upon past prosecution histories which show that an applicant has surrendered certain claimed subject matter.
Courts perform a three-step analysis to determine whether the rule has been violated:
(1) the court construes the reissue claim to determine whether and in what “aspect” it is broader than the original patent claims,
(2) if the reissue claim is broader than the original patent claims, the court asks “whether the broader aspects of the reissued claims relates to the surrendered subject matter,” and
(3) the court determines whether the reissue claims were materially narrowed in other respects to avoid the recapture rule.
In MBO, the claimed invention was a hypodermic safety syringe. The original claim in the parent application broadly recited relative movement between a guard and a needle. Applicant defined the movement more narrowly in the parent application, as “retraction” of the needle, to overcome a prior art rejection. Then, in the later prosecution of the reissue patent-in-suit, the applicant rewrote the claim to recite relative movement as in the original claim in the parent application.
The CAFC therefore found that each of the three elements was satisfied, and concluded that the recapture rule had been violated. The CAFC therefore affirmed the trial court’s judgment that the amended claims were invalid.
Interestingly, though, the trial court had also invalidated several claims in the reissue patent that were unamended original patent claims. The CAFC reversed this aspect of the judgment, explaining that “original patent claims will always survive a recapture challenge.”