Reissue Patent Invalid for Violating Recapture Rule

Scott Daniels | September 9, 2010

The “Recapture Rule” generally arises where an applicant makes a narrowing amendment to overcome a rejection in the original prosecution, and later attempts to “recapture” the abandoned subject matter through a reissue application.  In AIA Engineering Limited v. Magotteaux International S/A, decided last Friday, it was the applicant’s argument traversing a rejection in the original prosecution that triggered the Recapture Rule, invalidating the patent.

The original patent claimed a wear component of an apparatus used to grind surfaces. Claim 1 recited a “porous ceramic pad consisting of a homogeneous ceramic composite solid solution” alumina and zirconia (emphasis added). During the prosecution of the original patent, applicant repeatedly referred to the “solid solution” limitation to distinguish the claimed invention from the prior art, e.g., “the invention is based on the observation that the ceramic pad must be a homogeneous solid solution on Al2O3/ZrO2” (emphasis added).  The examiner allowed the application on the basis of that distinction.

Years later, the patentee filed a reissue application amending claim 1 by replacing the phrase “homogeneous solid solution” with “homogeneous ceramic composite.” The patentee also added new independent claim 12 which used the word “comprising” instead of “consisting of,” and, like amended claim 1, recites a “homogeneous ceramic composite.” A competitor filed a protest, asserting that these changes to the reissue claims constituted improper broadening under the Recapture Rule. The reissue examiner, however, dismissed the protester’s concerns and allowed the reissue patent application.

Since that time, the reissue patent has been the subject of litigation at the U.S. ITC and a court in India.  The present case is brought by a competitor of the patentee, seeking declaratory judgment that the reissue patent is invalid for violating the Recapture Rule.  Friday, Judge William Haynes agreed and granted summary judgment.

Judge Haynes began by identifying the three questions used to determine whether the Rule has been violated:

(1)   are the reissue application claims broader in scope than the patented claims;

(2)   if so, do the broader aspects of the reissue claims relate to the subject matter surrendered in the original prosecution; and

(3)   has the surrendered subject matter “crept into” the reissue claims.

In re Clement, 131 F.3d 1464 (Fed. Cir. 1997).   He also noted that “surrender” in original prosecution may occur, not only by a narrowing amendment, but also by argument against prior art.

Turning to the reissue claims, Judge Haynes noted that “homogeneous ceramic composite” was a broader claim term than “homogeneous solid solution,” so that replacing the former with the latter during reissue broadened the claims.   Replacing “consisting of” with “comprising” also broadened the claims by permitting compounds in addition to alumina and zirconia to be present.  Further, this claim broadening had the effect of recapturing subject matter surrendered by argument during the original prosecution, and the reissue claims would encompass that surrendered subject matter.

Judge Haynes concluded that the recapture was impermissible under the Recapture Rule and that the claims were therefore invalid.  And, of course, the reissue protester was vindicated.

Incidentally, the Recapture Rule appears to be in the wind lately – see Ex parte Youman decided by the PTO Board yesterday, affirming the rejection of reissue claims.

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