Patent Law

Stuck

By Gary Odom and Jordan Kuhn

RE36,885 claims a hypodermic safety syringe. '885 is fifth in a family dating back to 1990. MBO amended claims in the parent application, and in a succeeding CIP, to overcome prior art. In a cousin to the reissued '885, MBO argued over the prior art. The examiner allowed the claims, but MBO abandoned that application to pursue 5,755,699, which would later reissue as '885. MBO sought the reissue that became RE '885 to get broader claims. Which it did. But, in enforcement, the reissue was captured by recapture.

MBO Laboratories v. Becton, Dickinson & Co. (CAFC 2008-1288) precedential

MBO sued Becton, Dickinson & Co. for infringing RE '885.

"The patented invention, the accused device, and relevant prior art syringes all include features intended to protect health care workers and bystanders from inadvertent needle sticks following an injection or drawing of fluid."

The claim construction has been before the CAFC before, back in 2007.

This court reversed all of the district court's claim constructions except for one not relevant to this appeal. MBO, 474 F.3d at 1330-34. We held that the district court improperly construed the terms in light of the rule against recapture instead of relying on the terms' ordinary meanings, contrary to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). MBO, 474 F.3d at 1332.

On remand, the parties entered into a stipulation agreement, narrowing the issues before the district court.

MBO narrowed its infringement contentions. Becton admitted infringement of a couple claims if they were valid, but filed for summary judgment of invalidity and non-infringement.

Even though Becton limited its recapture argument to the reissue claims, the district court held that the entire RE '885 patent was invalid because claims 27, 28, 32, and 33 recaptured surrendered subject matter. The district court consequently denied Becton's motion for summary judgment of non-infringement as moot and entered final judgment in Becton's favor.

MBO appealed.

MBO asserts that it never surrendered a guard body that could move relative to the syringe's fixed needle in its correspondence with the Patent Office.

The CAFC reversed and remanded the other claims, but the recapture issue held 27, 28, 32, and 33 stuck.

Under the reissue statute, a patentee may surrender a patent and seek reissue "enlarging the scope of the [original patent's] claims" if "through error without any deceptive intent" he claimed "less than he had a right to claim in the [original] patent" and he applies for reissue "within two years from the grant of the original patent." 35 U.S.C. § 251 (2006). We have explained that this statute "is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally." In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986).

Notwithstanding its remedial nature, the reissue statute has limits. "The reissue statute was not enacted as a panacea for all patent prosecution problems, nor as a grant to the patentee of a second opportunity to prosecute de novo his original application." Id. at 1582. Under the rule against recapture, a patentee's reissue claims are invalid when the patentee broadens the scope of a claim in reissue to cover subject matter that he surrendered during prosecution of the original claims. See Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998) ("The recapture rule 'prevents a patentee from regaining through reissue . . . subject matter that he surrendered in an effort to obtain allowance of the original claims.'" (quoting In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997))).

This court bars recapture because a patentee is only entitled to a reissue patent for broader claims when the patentee claimed "less than he had a right to claim in the patent" through "error without any deceptive intent[]," not through deliberate amendments or arguments designed to convince an examiner to allow the claims. 35 U.S.C. § 251; see also Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1372-73 (Fed. Cir. 2006) ("[T]he deliberate surrender of a claim to certain subject matter during the original prosecution of the application for a patent 'made in an effort to overcome a prior art rejection' is not such 'error' as will allow the patentee to recapture that subject matter in a reissue." (quoting Clement, 131 F.3d at 1468-69)); Haliczer v. United States, 356 F.2d 541, 545 (Ct. Cl. 1966) ("[D]eliberate withdrawal or amendment of claims . . . to obtain a patent cannot be said to involve the inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an error of the kind which will justify the granting of a reissue patent which includes the matter withdrawn."). Moreover, the court prohibits recapture based on principles of equity. An applicant's surrender of subject matter places "competitors and the public . . . on notice . . . and may have [caused them] to rely on the consequent limitations on claim scope." MBO, 474 F.3d at 1331; see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1384 (Fed. Cir. 1998) ("[T]he 'recapture rule' . . . ensur[es] the ability of the public to rely on a patent's public record."); Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 993 (Fed. Cir. 1993) ("[T]he reissue statute cannot be construed in such a way that competitors, properly relying on prosecution history, become patent infringers when they do so."). Without a rule against recapture, an unscrupulous attorney could feign error and redraft claims in a reissue patent to cover a competing product, thereafter filing an infringement suit. See Hester, 142 F.3d at 1484 ("[H]ere, the second attorney draft[ed] the [reissue] claims nearly a decade later and with the distinct advantage of having before him the exact product offered by the now accused infringer.").

In applying the rule against recapture, we follow a three-step test. N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005) (explaining the three-step recapture test); Pannu, 258 F.3d at 1371 (same). First, the court construes the reissued claims to "determine whether and in what 'aspect' the reissue claims are broader than the [original] patent claims." Clement, 131 F.3d at 1468. Second, if the reissue claims are broader, the court determines whether the patentee surrendered subject matter and "whether the broader aspects of the reissued claim relate to [the] surrendered subject matter." Id. at 1468-69; see also id. at 1469-70. To determine whether a patentee surrendered subject matter, we ask "whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee's amendment or argument was to overcome prior art and secure the patent." Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006). If the patentee surrendered by argument, he must clearly and unmistakably argue that his invention does not cover certain subject matter to overcome an examiner's rejection based on prior art. Medtronic, 465 F.3d at 1376 (holding that a patent attorney's argument did not "clearly and unmistakably surrender" the subject matter); Hester, 142 F.3d at 1482 (explaining that "unmistakable assertions made to the Patent Office in support of patentability" "can give rise to a surrender for purposes of the recapture rule"). Third, a court must "determine whether the reissued claims were materially narrowed in other respects to avoid the recapture rule." Pannu, 258 F.3d at 1371.

MBO's claims are punctured.

Substantial evidence supports the district court's finding that MBO clearly and unmistakably surrendered claiming a guard body that moved relative to a fixed needle.

MBO's deliberate surrender of a guard body moving forward to cover a fixed needle proves fatal to its reissue claims... MBO's failure to claim relative movement was not "error without any deceptive intent." 35 U.S.C. § 251. MBO knew exactly how to claim relative movement.

Because MBO surrendered a guard body that moved forward to cover a fixed needle and sought to reclaim relative movement in its reissue claims, MBO violated the rule against recapture.

MBO misunderstands the rationale behind the rule against recapture. The fact that some of the prior art may have disclosed a retractable needle cannot save MBO's reliance on its retractable needle to distinguish other prior art. "The public's reliance interest provides a justification for the recapture rule that is independent of the likelihood that the surrendered territory was already covered by prior art or otherwise unpatentable." MBO, 474 F.3d at 1332 (emphasis added). MBO also misunderstands how arguments as to one subject matter affect another. MBO's arguments distinguishing the prior art based on its safety flange do not affect its surrender of another subject matter: a patentee's arguments that emphasize one feature cannot cure arguments that clearly surrender another.

Subject matter matters.

[A] patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related patent application. We are aware of courts that have held that patentees may only violate the rule against recapture by surrendering subject matter while prosecuting "the patent that is corrected by the reissue patent." U.S. Filter Corp. v. Ionics, Inc., 68 F. Supp. 2d 48, 72 (D. Mass. 1999); see also 4A Donald S. Chisum, Chisum on Patents § 15.03[2][e][vi], at 15-107 to -108 (2004) (citing to no Federal Circuit opinions addressing recapture of subject matter surrendered in a related patent). Under this erroneous theory, the rule against recapture does not contemplate surrenders made while prosecuting the original application or any precedent divisional, continuation, or continuation-in-part applications. U.S. Filter Corp., 68 F. Supp. 2d at 72. This error stems from a misunderstanding of the term "original patent" in 35 U.S.C. § 251. See id. at 69-72. The term "original patent" refers to the patent corrected by reissue; it does not limit the universe of patents and their prosecution histories that can be the basis for surrendered subject matter. We have never limited our review of recapture only to the prosecution history for the patent corrected by reissue.

Congress has never limited the reissue statute's error requirement to errors made while prosecuting the patent corrected by reissue.

Neither this court nor the U.S. Supreme Court has ever applied the rule against recapture in a way that only considers the prosecution history for the patent corrected by reissue.

Because the rule against recapture and prosecution history estoppel both protect the public's interest in relying on a patent's prosecution history, we think equity requires a review of a patent family's prosecution history to protect against recapture in a reissue patent.

Affirmed: RE '885 claims 27, 28, 32, and 33 as invalid. Other claims reversed and remanded.

Full post as published by The Patent Prospector on April 18, 2010 (boomark / email).