Pro Se Patent Applicants Are Given No Quarter

Kim v. Conagra Foods, Inc. (Fed. Cir. 2006) The Federal Circuit affirmed JMOL that the claims were not infringed, and affirmed the jury verdict that the claims were not invalid.
SIGNIFICANCE: No Special Treatement of Pro Se Patent Applicants. Surrender for purposes of the Recapture Rule is based upon what an "objective observer" would conclude was the purpose of the amendment or argument. (Although pro se litigants are held to less stringent standards. See Forshey v. Principi, 284 F.3d 1335, 1357-8 (Fed. Cir. 2002)).
BRIEF: The Federal Ciruit affirmed the claim construction based on statements in the Background. The Federal Circuit said that claims must be read in view of the specification of which they are a part, adding that the specification is the single best guide to the meaning of disputed term. Thus the preamble of the claim "potassium bromate replacer" was found to require some proof of oxidizing effect. Since plaintiff offered no proof of oxidizing effect, simply assuming that the same ingredients had the same effect in the accused product as they did in the claimed composition, there was no proof of infringement. Also at issue with respect to infringement was wheter the accused product "consisted essentially of" the claimed composition. The defendant introduced evidence of other ingredients, and plaintiff offered only her own conclusory testimony that the additional ingredients would not have materially affect tehd pter pertinent characteristics, but did not suppor this determination with any examinations or tests of the actual accused products.
Regarding Recapture Rule, the Federal Circuit reiterated the purpose of the recapture rule: to prevent a patentee from regaining through reissue the subject matter surrendered to obtain allowance of the original claims. The Federal Circuti rejected plaintiff's position that a pro se patent applicant shoudl be treated differently from other patentees. However, the Federal Circuit found no surrender, identifying the proper inquiry as "whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee's amendment or argument was to overcome prior art and secure the patent."