Impermissible Recapture Rule Curtails Potential for Broadening Reissue

by Dennis Crouch

In re Mostafazadeh (Fed. Cir. 2011)

In 2001, National Semiconductor filed a broadening reissue request for its Patent No. 6,034,423 that had issued the year prior.  The invention itself is related to semiconductor packaging supports. During original prosecution of the application, the claims were amended to include a “circular attachment pad” limitation in order to overcome anticipation and obviousness rejections.  In the re-issue, the company is seeking claims not bound by the “circular” limitation.  The Examiner and BPAI both rejected the proposed amendment as an “improper recapture of subject matter surrendered during prosecution” of the original application.

The reissue process is designed to allow a patentee to alter the scope of the patent rights.  However, there are several limits on the ability of patent applicants to expand patent scope during reissue. First, claims can be broadened only if the broadening reissue is filed within two-years after issuance of the original patent. See MPEP 1412.03. Second, a patentee may not use a reissue to recapture subject matter that was surrendered in the original prosecution in an effort to obtain allowance of the originally filed claims. 

Because impermissible recapture is judged as a matter of law, USPTO determinations are reviewed de novo on appeal. The Federal Circuit has set out a three-step process for determining whether scope has been impermissibly recaptured:

1. Consider whether aspect of the pending reissue claims are broader than the patented claims.
2. Consider whether the broader aspects relate to material that was surrendered in order to overcome a prior art rejection.
3. Determine whether a substantial portion of surrendered material “has crept into the reissue claim.”  

The key is to look to see whether the reissue claims cover embodiments that were not covered by the issued  but that were covered by the originally filed claims. 

The impermissible recapture rule is not strict — some small amount of recapture is allowed. The court has ruled, for instance, that attempting to recapture a portion of previously surrendered scope is permissible if the reissue “materially narrows” the claims relative to the originally filed claims in a way that relates to the subject matter surrendered.  According to the court, a narrowed limitation may be “modified . . . so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.”  However, entirely eliminating a previously added limitation will always trigger the recapture rule prohibition.  Of course, this begs the question of “what is a limitation?”

Here, the patentee added the “circular attachment pad” limitation during prosecution and now want to eliminate the “circular” limitation.  The patentee argues that the claim is still substantially narrowed as compared to the original claims. The Federal Circuit rejected that argument because any broadening of scope in the reissue must be coupled by a material narrowing within the reissue in a way that relates to the subject matter being recaptured.

In an e-mail today, Hal Wegner of Foley & Lardner suggested prudent patent applicants should not rely on broadening reissues. Rather, the best practice is to file a continuation application to “cover miscellaneous embodiments that could not be fit within the claims as allowed by the examiner.”