Greenliant Systems, Inc. v. XICOR LLC., (Fed. Cir. 2012).
The claim limitation at issue in a broadening reissue was a product-by-process limitation that in the original patent reads: said silicon dioxide layer being formed by low pressure chemical vapor deposition comprising the use of tetraethylorthosilicate [TEOS.] The claims in the reissue application omitted the comprising the use of [TEOS] limititation, but otherwise duplicated claims 1 and 4 of the parent patent.
The court found the broadened claims invalid under the recapture doctrine, particularly in view of statements made by and to the Board of Appeals in the original patent. The patentee’s “arguments clearly and unmistakably represented to the examiner and the Board that TEOS was a necessary component of the deposition process that imparted the distinct structural characteristics upon [the applicant’s] claimed tunneling oxide layer.” The fact that the arguments were made was sufficient to result in surrender; it didn’t matter that the PTO may not have relied on the arguments in issuing the patent or that the applicant's arguments may have been wrong.