If the narrowing [of claim scope] is unrelated to the surrendered subject matter, it is irrelevant for the purposes of the [35 U.S.C. § 251] analysis even if it renders the reissue claim as a whole intermediate in scope relative to the patented and original claims.
On May 8, 2012, in In re Youman, the U.S. Court of Appeals for the Federal Circuit (Lourie, Schall, Prost*) vacated and remanded the USPTO Board of Patent Appeals and Interferences decision upholding the patent examiner's rejection of U.S. patent application Serial No. 09/313,532 (seeking reissue of U.S. Patent No. 5,629,733), which related to an electronic program schedule system for a television that allows the user to access and navigate television program information efficiently, under 35 U.S.C. § 251. The Federal Circuit stated:
[The reissue statute, 35 U.S.C. § 251,] allows a patentee to broaden claims in its original patent if the patentee can show "error without any deceptive intention." [T]he reissue statute requires a patentee to file for a broadening reissue patent within two years of the issuance of the patent. As a result, the public is on notice for two years following the issuance of a patent that the patent can be broadened to recapture matter "dedicated to the public" through error; after the two year period, the public can definitively rely on the scope of the patent claims. Additionally, 35 U.S.C. § 252 ensures that if the patentee succeeds in obtaining a broader reissue patent, the public interest is protected through intervening rights.
Congress limited reissue to instances where the patentee could demonstrate an "error without any deceptive intention." Because the reissue statute is "based on fundamental principles of equity and fairness," the "error" requirement is liberally construed. The most commonly asserted correctable error is the failure of the patentee's attorney to appreciate the full scope of the invention during prosecution of the original patent application. Yet, "not every event or circumstance that might be labeled 'error' is correctable by reissue." Against the remedial backdrop of the reissue statute, one such circumstance that does not satisfy the "error" requirement is embodied by the recapture rule. The recapture rule bars a patentee from recapturing subject matter, through reissue, that the patentee intentionally surrendered during the original prosecution in order to overcome prior art and obtain a valid patent. The rationale underlying the rule is that the cancellation or amendment of the original claim in order to overcome prior art is a deliberate action that necessarily excludes the inadvertence or mistake contemplated by the statute's error requirement. To determine whether the applicants' reissue claims violate the recapture rule, we apply a three-step recapture rule analysis. Under the first step, we "determine whether and in what 'aspect' the reissue claims are broader than the patent claims." The parties do not contest that with regards to the selecting means, the Board correctly determined that the "changing" limitation in claim 24 ("the reissue claim") is broader than the "cycling" limitation of patented claim 1 of the '766 patent ("the patented claim"). This conclusion is confirmed by dependent reissue claim 25, which limits reissue claim 24 by calling for "changing from a first to second character comprising cycling through displayed alphanumeric characters."
Having agreed with the parties that the reissue claim is broader than the patented claim, step two requires us to "determine whether the broader aspects of the reissue claims relate to surrendered subject matter." Both parties answer this inquiry in the affirmative. Yet, they dispute what constitutes surrendered subject matter within the context of the recapture rule. . . . We agree with the Board that through their argument and amendment, the applicants' surrendered subject matter was any selecting means that was broader than the cycling limitation of the patented claim. If the reissue claims are broader relative to the patented claims in a manner related to the surrendered subject matter, we must "determine whether the surrendered subject matter has crept into the reissue claim." Unless the claims are materially narrowed in a way that avoids substantial or whole recapture of the surrendered subject matter, the surrendered subject matter has crept into the reissue claims and they are barred under the recapture rule. The Board failed in several respects to apply this third step of the recapture rule; thus, we must vacate and remand.
First, the Board considered any broadening of the patented claim via a modified limitation, regardless of how minimal, sufficient to invoke the recapture rule's bar. Specifically, the Board determined that the broadening from cycling to changing "essentially broadens patented claim 1 to an intermediate scope (i.e., narrower than original patent claim 1 before amendment, but broader than issued claim 1)." The Board then held that "[t]his broadening therefore constitutes an impermissible recapture of surrendered subject matter." In erring, 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. [S]uch a distinction is critical to applying correctly step three of the recapture rule. [In this case,] the Board has already determined that the added limitation -- cycling -- has not been eliminated; rather, it has been broadened to changing. Such modification does not instantly implicate the recapture rule bar, as the Board held; rather, such a broadening modification must be evaluated to determine if it materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.
The appellee argues that material narrowing should be determined relative to the patented claim, rather than the original claim. We disagree. Using the original claim as a frame of reference for determining whether the reissue claim materially narrows is consistent both with case law and the purposes underlying the reissue statute. By measuring material narrowing relative to the original claim, which was deliberately surrendered during the original prosecution, we are ensuring that the patentee is unable to recapture what it surrendered deliberately, but allowing room for error, as required by the reissue statute. [E]ven when narrowing a claim to overcome prior art, "[c]ertainly one might err without deceptive intention in adding a particular limitation where a less specific limitation regarding the same feature, . . . would have been sufficient to render the claims patentable over prior art." By contrast, if we use the patented claims, as the appellee urges, as a frame of reference and prevent any broadening relative to the patented claims, we would bar patentees from doing what they otherwise would be entitled to under the reissue statute -- broadening their claims within two years when such claims were overly narrowed during prosecution as a result of attorney error. This would frustrate the remedial nature of the reissue statute and contradict case law.
[A ceiling] for determining whether a modified limitation material narrows [is] any recapture of surrendered subject matter that was in the prior art of the original prosecution. The logic of such a ceiling flows from the concept of "error" under the reissue statute. When a patentee is narrowing its claim limitations due to prior art that would otherwise render the claims unpatentable, the patentee can only be doing so deliberately, without any possibility of error. Thus, if 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. The Board's failure to distinguish this case from instances where the added limitation is deleted in its entirety and to conduct the proper analysis for a modified limitation is reason enough to vacate and remand.
If the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated), the Board must still determine whether the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule. While the Board attempted to conduct this analysis, it incorrectly evaluated whether other limitations added during reissue materially narrow based on whether those added limitations were directed to an "overlooked aspect" of the invention. Whereas the recapture rule applies when surrendered subject matter is being reclaimed, overlooked aspects by definition were never claimed and thus never surrendered. "[O]verlooked aspects" is a separate inquiry under reissue that is independent of whether or not the recapture rule applies. Without conducting any analysis beyond determining that the limitations the applicants identified as materially narrowing were not overlooked aspects, the Board did not correctly apply step three.
Properly applied, the material narrowing must relate to the surrendered subject matter to prevent the recapture rule from applying. If the narrowing is unrelated to the surrendered subject matter, it is irrelevant for the purposes of the analysis even if it renders the reissue claim as a whole intermediate in scope relative to the patented and original claims. If the narrowing is related to the surrendered subject matter, it must render the reissue claim narrower than it is broader in a manner pertinent to the subject matter surrendered during prosecution in order to avoid the recapture rule.