Federal Circuit finds Recapture Rule Extends to Subject Matter Surrendered in Related Cases

In MBO Lab., Inc. v. Becton, Dickinson & Co., 94 USPQ2d 1598 (Fed. Cir. April 12, 2010), MBO owns U.S. Reissue Patent No. 36,885 (the “RE ’885 patent”).  The Re’885 patent is directed to a syringe that protects against needle-stick injuries by sheathing a contaminated needle in a flange-covered guard.  The RE ‘885 patent is a reissue of U.S. Patent No. 5,755,699 (the “’699 patent”), and claims priority to, among other patents, U.S. Patent No. 5,176,655 (the “’655 patent”), U.S. Patent No. 5,395,347 (the “’347 patent”); and Application No. 08/398,772 (the “’772 application”).

During prosecution of the ‘655 patent, in order to overcome a rejection of claim 18, the applicant amended the claim to include a limitation that described the needle retracting into the guide means and relied upon the new feature to distinguish over the prior art which had the needle being fixed and the guide moving.  Claim 18 later issued with the new limitation.

The ‘347 patent is a continuation-in-part of the ‘655 patent.  During prosecution of the ‘347 patent, the applicant also distinguished the claims from the prior art by noting that the prior art has a fixed needle, whereas the claimed invention allowed the needle to be retracted into the barrel which has the effect of making the claimed invention safer to use.   The claims were allowed to issue based in part on this representation.

The’772 application is continuation of the ’347 patent.  During prosecution, the applicants again relied upon the needle being slidable relative to the barrel as a distinguishing factor over the prior art.  While the Examiner eventually allowed the claims, the applicants abandoned the ‘772 application in favor of another application which resulted in the ‘699 patent.

In applying for a reissue application for the ‘699 patent, the applicant indicated as an error that the claims were too narrow in requiring the needle to move, whereas the invention should cover any relative movement between the needle and the barrel.  New claims 21-36 included these broadened claims.  The reissue application issued with the broadened claims as RE ‘885 patent.

MBO sued a competitor, Becton, Dickinson & Co., claiming that Becton’s SafetyGlideTM hypodermic safety syringes infringed RE ’885 claims.  At trial, Becton moved for summary judgment for non-infringement claiming that the broadened claims were invalid for violating the rule against recapture, and that the existing claims did not cover the SafetyGlideTM.  The district court granted Becton’s motion for summary judgment as to the issue of recapture, but invalidated all of the claims instead of only the broadened claims.

On appeal, MBO argued that the broadened claims were not invalid as against the rule of recapture, and also on the grounds that the existing claims could not be invalidated under the rule of recapture as they were in the original ‘699 patent.

On the issue of the rule of recapture, the Federal Circuit first noted that the rule prohibiting recapture is based upon the reissue statute, 35 U.S.C. §251.  35 U.S.C. §251 only allows reissue of a patent where the applicant can show an error that arose “through error without any deceptive intent” he claimed “less than he had a right to claim in the [original] patent”.  Thus, amendments which are made deliberately are not errors, and therefore subject matter which was deliberately included in an amendment to narrow the amendment cannot be corrected through the reissue process.  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.”).  The court also noted that the public is entitled to rely upon any such surrender, and therefore there is an equitable element to the rule against recapture.  In sum, the Federal Circuit noted that “[w]ithout 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.”

The Federal Circuit than outlined the test for determining whether there has been impermissible recapture:

  1. determine in which aspects the reissued claims are broader than the original patent claims;
  2. if the reissued claims are broader, whether the broader aspects relate to surrendered subject matter and “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).
  3. whether the reissued claims were materially narrowed in other aspects such that the reissued claims avoid the recapture rule.

MBO had argued that any broadened aspects in its reissue claims were not surrendered during prosecution of the ‘699 patent.  In rejecting this argument, the Federal Circuit noted that the applicants had twice relied upon an argument that the needle was movable to achieve patentability.  As evidence of these arguments, the Federal Circuit pointed to arguments presented in the prosecution of the ‘347 patent as well as in the ‘772 application, whose allowed claims were copied into the ‘699 patent. While MBO had argued that some of the arguments relied upon to find recapture did not relate to the feature of the recited needle movement but to another feature, the Federal Circuit noted that merely because the arguments were not specifically needed to overcome one particular combination of prior art did not mean that the argument did not distinguish over other prior art combinations.  As stated by the Federal Circuit, “a patentee’s arguments that emphasize one feature cannot cure arguments that clearly surrender another.”

The Federal Circuit further went on to justify its reliance on statements and amendments made in the parent application in finding impermissible recapture in the child cases, such as in the ‘699 patent.  While noting that commentators such as Donald S. Chisum, Chisum on Patents (2004) propose a theory that recapture only applies to the patent against which reissue is filed, the Federal Circuit rejected this theory as “erroneous.” As an initial point, the Federal Circuit held that the term original patent in 35 U.S.C. §251 has always been defined to include not only the patent on which the reissue application is made, but also to continuations.  As evidence, the Federal Circuit cited to North American Container Inc. v. Plastipak Packaging Inc., 415 F3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005).  The Federal Circuit next traced the origins of the reissue statute starting in 1832, and noted that under the existing and predecessor statutes, the court has never applied the recapture in a doctrine to exclude the possibility that the recapture could occur in a parent application.  The Federal Circuit also noted such an interpretation is also consistent with the recapture rule’s “public-reliance rational”, and any more “myopic review” would undercut this rule by allowing in a continuation patent what could not be performed in the parent patent.  As such, the Federal Circuit formally held that, in reviewing whether an impermissible recapture has occurred, the entire patent family is reviewed. Thus, the Federal Circuit upheld the district court’s finding of recapture based upon statements and amendments made in the parent applications.

Lastly, the Federal Circuit found that, while recapture invalidated the broadened claims, recapture does not apply to the original patent claims.  Therefore, the Federal Circuit reversed the district court’s decision invalidating the original patent claims.

Significance for Patent Owners and Applicants

The purpose of the reissue statute is to allow applicants to correct inadvertent errors.  However, as noted in MBO Lab, the definition of a correctable error is quite narrow and restrictive.  It is for this reason that applicants cannot rely upon the reissue process to correct errors in all situations, and are better served by ensuring that a continuation application is pending at all times for important applications.  While unfortunate due to the impact on the USPTO’s workload, decisions such as that in MBO Lab make it unadvisable to rely solely on the reissue process as a mechanism to ensure applicants have the claim scope they need to maximize the value of their invention.

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