By Denver S. Bisignano, Jonathon K. Hance, LaTasha M. Snipes, and Jeffrey S. Whittle, Bracewell & Giuliani LLP
(Denver S. Bisignano is an associate in Bracewell & Giuliani LLP’s Technology practice. His practice focuses on intellectual property law including patents, trademarks, copyrights, infringement studies and opinions, licensing, and related matters. Jeffrey S. Whittle is Head of the firm’s Technology Law practice and a partner in Bracewell’s Houston office. He has experience in technology-based transactions including licenses and agreements. Jonathon K. Hance is an associate in the firm’s Intellectual Property Litigation section. His practice includes cases of patent infringement, trademark infringement, false-marking, and misappropriation of trade secrets. LaTasha Mabry Snipes is an associate in the firm’s Technology practice. She counsels clients in all aspects of intellectual property law, including patents, patent licensing, patent disputes, trademarks, and technology transfers.)
The Federal Circuit’s recent decision, In re Youman,1 clears the way through the Recapture Rule2 minefield by providing clear standards for patentees to file reissue applications that broaden subject matter surrendered during prosecution of their patent applications.
A Federal Circuit panel clarified that the original patent application claims, and not the issued patent claims, are the claims a court must view when determining whether reissue application claims violate the Recapture Rule.3 In doing so, the panel implicitly announced that, through a reissue application process, patentees may be able to modify (broaden), but not entirely eliminate, a claim feature of an issued patent added during prosecution of the original patent application, provided that the broadening modification materially narrows the claim in a manner that avoids substantial or whole recapture of surrendered subject matter.
Thus, the panel’s decision disarms landmines that the Board of Patent Appeals and Interferences buried in the Recapture Rule minefield,4 thereby clearing a path not only for inventors Roger Youman and Mareny Morris, on remand, but for other patent applicants savvy enough to apply the Federal Circuit’s ruling should a patent reissue path be desired.
MINEFIELD LAYOUT: RULE AGAINST RECAPTURE (A.K.A. "RECAPTURE RULE")
Federal patent law5 allows patent owners to enlarge the scope of the claims of the original patent if through error, and without deceptive intent, the patentee claimed less than the patentee had a right to claim in the original patent. Courts, however, do not consider deliberate withdrawal or amendment of claims or specific arguments limiting the scope of terms used in a claim to obtain a patent to involve the type of "error" contemplated.6
As such, the patentee may not utilize the reissue process to broaden the claims of a patent to recapture subject matter surrendered through deliberate amendments or through specific arguments made during prosecution to overcome prior art. This prohibition is known as the "rule against recapture," a.k.a. the "Recapture Rule."
This rule applies to subject matter claimed in the original patent. The rule is not violated, however, when the broadened subject matter is not related to subject matter surrendered during prosecution, a.k.a. "surrendered subject matter." Moreover, the rule does not apply to reissue claims directed to additional inventions, embodiments, and species not originally claimed, that are completely unrelated to the surrendered subject matter.
NAVIGATING RECAPTURE RULE MINEFIELD
To best navigate the Recapture Rule minefield, patentees should recognize that courts apply a three-step Recapture Rule analysis to determine if an applicant’s proposed reissue claims violate the rule.7
First, courts will determine whether, and in what ‘aspect,’ a proposed reissue claim is broader than the corresponding patent claim. Second, if the proposed reissue claim is broader, courts will determine whether the broader aspects relate to surrendered subject matter. Third, if the proposed reissue claim is broader, and the broader aspects relate to the surrendered subject matter, courts will determine if respective limitations materially narrow the proposed reissue claim in a way that avoids substantial or total recapture of the surrendered subject matter.
Courts perform the analysis on what is termed a "limitation-by-limitation basis" in a proposed reissue claim, and the material narrowing should be related to the surrendered subject matter. Further, this "partial recapture" should not take the surrendered subject matter limitation down to a level so as to read on the prior art.
MINESWEEPING IN RE YOUMAN
Actions Leading to the Federal Circuit
In November 1994 inventors Roger Youman and Marney Morris filed a patent application directed to an electronic television program guide schedule selection system, which issued as a patent on May 13, 1997. During prosecution of the original patent, the inventors amended the programming guide list selection means featured in independent claim 1 to include "means for causing each of … n characters [of TV program titles] to cycle forward and backward through a plurality of alphanumeric characters." The United States Patent and Trademark Office allowed the application as a result of the amendment, and the patent issued as U.S. Patent No. 5,629,733 (the "733 patent").
On May 13, 1999, within the requisite two years from date of issuance, the inventors (reissue applicants) filed a broadening reissue application, which attempted to broaden the "cycle forward and backward" limitation. During prosecution of the reissue application, the reissue applicants further amended the broadest proposed reissue claims to include a search-based limitation whereby "n characters may be selected…from a plurality of displayed alphanumeric characters by changing from a first character to a second character using…nonalphanumeric keys."8
The patent examiner rejected the amended reissue claims as violating the Recapture Rule. In response, the reissue applicants appealed to the Board of Patent Appeals. Nevertheless, the board affirmed the patent examiner's rejection.
The board found that because the proposed reissue claims broadened the corresponding issued patent claims to an intermediate scope. It further found that because the narrowing aspects of the proposed reissue claims were not directed to aspects that were "overlooked" during pursuit of claims in the original patent, the reissue applicant's attempted broadening constituted an impermissible recapture of surrendered subject matter. With only a few exceptions, the board’s position was that any broadening of a modified limitation, regardless of how minimal, would trip a mine in the Recapture Rule minefield.
The reissue applicants, unwittingly having stepped on an improperly implanted mine, appealed to the Federal Circuit for assistance. Before the Federal Circuit, the reissue applicants challenged the board’s holding that the Recapture Rule minefield prevents broadening of claim elements related to limitations added during prosecution of the original patent application from which the patent issued. Specifically, the reissue applicants challenged whether the Recapture Rule prevents the use of the "changing from a first character to a second character using…nonalphanumeric keys" language as selecting means in place of "cycling forward and backward…through a list of alphanumeric characters" in the proposed reissue claims.9
Minefield Defined by Surrendered Subject Matter
The surrendered subject matter defines the layout of the Recapture Rule minefield. The parties agreed, for the purposes of the first and the second steps of the Recapture Rule analysis, that proposed reissue claim 24 (containing the "changing" limitation) was broader than the issued patent claim 1 (containing the "cycle" limitation), and that the broader aspects of the proposed reissue claim relate to surrendered subject matter.
The parties, however, disagreed as to what constituted "surrendered subject matter,” and thus, disagreed as to where the Recapture Rule mines were located. The panel, however, pointed out that courts will look to changes in scope between the original and issued patent claim language and arguments in prosecution history made in an effort to overcome prior art to identify subject matter surrendered by the patentee.10
Here, the panel found that the surrendered subject matter constituted "any selecting means that was broader than the cycling limitation of the … [corresponding issued patent] claim."11 This established the layout of the Recapture Rule minefield. Accordingly, the appeal turned on whether the board, as part of the third step of the analysis, properly identified whether the reissue applicant materially narrowed the selecting means limitation or portion of the proposed reissue claim in a way that avoids tripping the properly located Recapture Rule mines.12
Pathway Through Recapture Rule Minefield Cleared — Some Recapture Allowed
The board found the patent examiner's recapture rejection was proper because Youman's proposed reissue claim was broader in scope than the corresponding issued patent claim, the broader aspects related to surrendered subject matter, and narrowing limitations — i.e., the "wireless remote," "nonalphanumeric keys," and "changing" limitations — were not "overlooked aspects."13
The Federal Circuit panel, however, disagreed. Instead, it found that the board failed to properly conduct the third step of the Recapture Rule analysis. Particularly, in performing the material narrowing analysis, the board failed to distinguish between instances where an added limitation has been modified versus instances where an added limitation is eliminated in its entirety, even though such distinction was identified in prior Federal Circuit case law, In re Mostafazadeh,14 as being critical to properly applying the third step of the Recapture Rule.
As such, the board improperly found the reissue applicants to have tripped mines in the Recapture Rule minefield where there were none, and thus, failed to determine whether the reissue applicants avoided properly located mines by modifying the "cycling" limitation to the "changing" limitation in the claim. Accordingly, the panel vacated the board's decision and remanded the case back to the board to determine whether the broadening modification materially narrows the associated claim limitation relative to the corresponding original patent application claim such that the surrendered subject matter is not entirely or substantially recaptured.
The third member of the three-member panel, Judge Alan Lourie,15 nevertheless dissented, asserting, in essence, that material narrowing must be directed to the issued patent claim, not the original patent application claim, and that the assertion is supported by the cases relied upon in In re Mostafazadeh.16
PATHWAY THROUGH RECAPTURE RULE MINEFIELD PROVIDES OPPORTUNITIES
The Federal Circuit's patentee-friendly holding potentially provides real opportunities for patentees who can transverse a path through the Recapture Rule minefield without tripping any of the mines. If a patent is within two years of its issue date, and if there is a desire to broaden aspects of issued patent claims to remove narrow aspects of claim features that are not desired to differentiate the issued patent claims from prior art or there is a desire to protect unclaimed embodiments, then a broadening reissue filing may be a desired option worth pursuing. Keep in mind, however, that to consider filing a broadening reissue application, a reissue applicant needs to allege an error that occurred without any deceptive intent.
Unfortunately, possible undetected mines along the pathway through the Recapture Rule minefield still remain. Youman was determined by a three-judge panel and not the full court. Accordingly, in a different case or should this issue be considered en banc, the full court could overrule the panel and instead follow the reasoning of the dissent — to effectively reintroduce mines cleared by the panel majority.
These further possible reconsiderations by the Federal Circuit seem remote as the full court likely would reach the same result as the panel. If the full court were, for example, to consider material narrowing of surrendered subject matter with respect to the issued patent claims as asserted by the dissent, rather than the original patent application claims as asserted by the majority, there arguably would be no point in ever proceeding beyond the second step in the three-step analysis. Thus, the dissent's interpretation would render the third step of the three-step analysis meaningless.
For example, in analyzing a reissue claim on a limitation-by-limitation basis as called for in North American Container, if the “material narrowing” is directed to surrendered subject matter and the patented claims were used as the reference for the comparison, any "broadening" also present in the reissue claim necessarily would have to be found directed to other claim limitations.
The same materially narrowed limitation could not be both broader and narrower than those featured in the issued patent claim. Accordingly, applying the dissent’s logic, the three-step analysis would never proceed past the second step because the broader aspects would have to be unrelated to the surrendered subject matter that is materially narrowed. It could, however, be broader than the corresponding claim limitation in the issued patent claim yet narrower than the corresponding claim limitation in the original patent application claim.
Further, in the reverse case, if a reissue applicant broadened the surrendered subject matter with respect to the corresponding issued patent claim, it would be flagged as a "broader aspect" in the first step of the three-step analysis and would be flagged as being directed to the surrendered subject matter in the second step of the three-step analysis. If one were to follow the methodology presented by the dissent, there would be no need to perform the third step of the analysis. The surrendered subject matter is broadened with respect to the issued patent claims and any broadening of a surrendered limitation would risk being considered improper. Accordingly, there would be no need to continue.
Why not continue with the third-step analysis, anyway? The Federal Circuit in previous decisions17 has indicated that the material narrowing should be directed to the surrendered subject matter in the respective limitation to avoid the Recapture Rule.
As such, the proposed creation claim would not be saved from the blast radius of a tripped mine in the Recapture Rule minefield by performing material narrowing that is not directed to the surrendered subject matter.
Here lies the problem with the dissent's reasoning. The same claim limitation could not both be broader and narrower than that provided in the corresponding issued patent claim.18 Filling up a cup of water and dumping half of it out provides the same result as filling it up halfway. If it's broadened even to an intermediate point, the dissent would consider it a violation of the Recapture Rule. The analysis of the extent of any material narrowing to the surrendered subject matter would be incorporated in the first step when trying to determine if there are any broadening aspects.
As such, employment of the three-step analysis on a limitation-by-limitation basis, in contrast to examining the claim as a whole, only works properly if the "material narrowing" comparison is directed to the claims of the original patent application, regardless of whether the surrendered subject matter is the result of an amendment or argument.
1 In re Youman, 679 F.3d 1335, No. 2011-1136, slip op., (Fed. Cir. May 8, 2012).
2 For a more detailed discussion of the Recapture Rule, see Denver S. Bisignano, Jeffrey S. Whittle, and Constance G. Rhebergen, Perils of Reissue-Recaptured Doctrine Has Teeth (June 6, 2011).
3 The term "original claim" or "original patent application claim" (as used herein) refers to the claim in the original application, prior to amendment, or cancellation; the term "patented claim" or “issued patent claim” refers to claims allowed over the prior art in the issued patent; and the term "reissue claim" or "reissue application claim" (as used herein) refers to the claims subject to the reissue application.
4 Youman, No. 2011-1136 slip op. at *14-15. The panel pointed out that the board relied upon the Manual of Patent Examining Procedure ("MPEP") § 1402.02(I)(C)(8th ed., rev. 7, July 2008) and N. Am. Container Inc. v. Plastipak Packaging Inc., 415 F.3d 1335 (Fed. Cir. 2005) to hold improperly that because a reissue claim broadened an added limitation of a issued patent claim undergoing reissue, the broadening constituted an impermissible recapture of surrendered subject matter.
5 35 U.S.C. § 251.
6 Haliczer v. United States, 356 F.2d 541, 545 (Ct. Cl. 1966) (“[D]eliberate withdrawal or amendment of claims in order to obtain the original 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.”).
7 In re Mostafazadeh, 643 F.3d 1353, 1358-60 (Fed. Cir. 2011)(discussing application of the rule in a case that involved and attempted broadening of surrendered subject matter).
8 Youman, No. 2011-1136, slip op. at *7.
9 Youman, No. 2011-1136, slip op. at *5, 7-8.
10 Youman, No. 2011-1136, slip op. at *12-13 (referring to In re Clements, 131 F.3d 1464, (Fed. Cir. 1997) and its progeny as an historic reference for the premise).
11 Youman, No. 2011-1136, slip op. at *14.
12 The patentability of the proposed reissue claim turned on whether the narrowing was sufficient to avoid substantial or whole recapture of surrendered subject matter. Youman, No. 2011-1136, slip op. at *19 (stating that “[i]f the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.”).
13 Youman, No. 2011-1136, slip op. at *15.
14 Mostafazadeh, 643 F.3d at 1361.
15 Judge Lourie was the author of North American Container Inc. v. Plastipak Packaging Inc., 415 F.3d 1335 (Fed. Cir. 2005), a prior leading Federal Circuit case on reissue law, which discussed the methodology for analyzing narrowing limitations.
16 Youman, No. 2011-1136, slip op. at *22 (Lourie, J., dissenting).
17 Pannu v. Storz Instruments Inc., 258 F. 3d 1366 (Fed. Cir. 2001).
18 Additional inventions, embodiments, or species would, of course, not be subject to the rule against recapture and, thus, would not be subjected to the three-step analysis from the outset. Mostafazadeh, 643 F.3d at 1360.