Reversing a lower court’s decision, the U.S. Court of Appeals for the Federal Circuit held that claims of a reissue patent did not impermissibly recapture surrendered subject matter under 35 U.S.C. §251. AIA Engineering v. Magotteaux Intern’l SA, Case No. 2011-1058 (Fed. Cir. Aug. 31, 2011) (Lourie, J).
The patent on appeal, U.S. Patent No. RE39,998 (RE’998 patent), was a reissue of U.S. patent 6,399,176 (the ’176 patent). The patents are directed to composite wear products used for crushing and grinding abrasive materials in industrial settings. During prosecution of the ’176 patent, patentee-defendant Magotteaux argued to the examiner, in response to a prior art rejection, that the claimed invention was different from that of the asserted prior art because the “homogenous solid solution” was a liquid metal, whereas the prior art utilized a solution of salts of a metal. The ’176 patent issued after the applicant’s remarks.
Less than one year later, Magotteaux sought to reissue the ’176 patent, seeking to amend claim 1 and add independent claim 12, both of which used the term “ceramic composite” instead of the term “solid solution” that was originally used in issued claim 1. The examiner did not object to these new limitations.
During prosecution of the reissue application, an anonymous party filed a protest under 37 C.F.R. §291, contending that claims 1 and 12 of the reissue application should be rejected under 35 U.S.C. §251 for impermissible recapture. The examiner, however, disagreed, finding the terms “solid solution” and “ceramic composite” synonymous, and the reissue application issued as the RE’998 patent.
AIA Engineering Ltd. later sued Magotteaux in district court for a declaratory judgment of non-infringement, invalidity and unenforceability of the RE’998 patent. Magotteaux then filed a third-party complaint against a subsidiary of AIA, alleging infringement. After the lower court construed the claims, AIA moved for summary judgment that the RE’998 patent claims improperly recaptured surrendered subject matter. The district court granted the motion, holding that the substitution of terms during reissue broadened the scope of the RE’998 claims over those in the original patent, as well as that Magotteaux had relied on the “solid solution” limitation to overcome prior art during prosecution of the ‘176 patent, thereby surrendering that subject matter.
The Federal Circuit disagreed. The Court held that the patentee acted as his own lexicographer and used “homogenous solid solution” as a synonym for “homogeneous ceramic composite” in the patent’s specification. The Court also held that Magotteaux did not disclaim any interpretations of “solid solution” during prosecution of the ’176 patent. The Court confirmed through the use of extrinsic evidence that a person having ordinary skill in the art would have known that it is physically impossible to make a “solid solution,” under that term’s ordinary meaning, as claimed in the ’176 patent. Therefore the Court found that the terms “homogeneous solid solution” and “homogeneous ceramic composite,” in the context of the ’176 and RE’998 patents, are synonymous, and, thus, the reissue claims were not broader than the claims of the ’176 patent in this respect.