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.
The patent at issue in this case is a reissue patent that relates to a syringe that protects against needle-stick injuries by covering contaminated needles in a protective guard after they have been removed from a patient. The district court held the patent invalid in its entirety based on the rule of recapture. On appeal, the Federal Circuit upheld the district court’s finding that the patentee had violated the rule against recapture for four claims added during reissue proceedings, but reversed and remanded the district court’s invalidation of all other claims.
Under the reissue statute, a patent holder may seek to reissue a patent and enlarge “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….” However, the Federal Circuit stated that the rule against recapture limits enlargement of claim scope 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.” The Federal Circuit also clarified that “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,” not just while prosecuting the patent that is corrected by the reissue patent.
In this case, the original claim in the parent application recited relative movement between the protective guard and the needle. In subsequent prosecution, the patentee disclaimed a guard body that moved relative to a fixed needle to overcome prior art rejections. In its reissue application, the patentee rewrote its claims to cover all relative movement, not just retraction of the needle. The Federal Circuit held that by claiming relative movement between the guard body and needle in the reissue patent, the patentee violated the rule against recapture.
Finally, the Federal Circuit stated that the district court erroneously held the original patent claims invalid because “[w]hen a reissue patent contains the unmodified original patent claims and the reissue claims, a court can only invalidate the reissue claims under the rule against recapture.” Elaborating, the court stated that original patent claims always survive challenges under the rule of recapture since original claims cannot be broader than themselves.
A copy of the opinion can be found here.