Recapture Requires Deliberate Surrender to Overcome Prior Art

Medtronic, Inc. v. Guidant Corp., [05-1515] (Fed. Cir. 2006] [SCHALL, Michel, Dyk] The Federal Circuit affirmed the district court's determination that plaintiff reissue patent relating to cardiac pacing did not violate the recapture rule.
SIGNIFICANCE: The fact that claims that originally covered the accused device were amended to exclude the accused device, does not mean that reissued claims that do cover the accused device violate the recapture rule.
The Recapture Rule prevents a patentee from regaining through reissue subject matter that was surrendered during prosecution of the original patent in an effort to obtain allowance of the original claims. The surrender can occur either by amendment or argument. The recapture rule is applied in a three step process:

1. it is determined whether, and in what respect, the reissue claims are broader than the original claims
2. it is determined whether the broader aspects of the reissue claims relate to subject matter surrendered in original prosecution
3. it is determined whether the claims are materially narrowed in other respects so that the claims have not been enlarged and thereby escape the recapture rule.

Whether claims of a reissued patent violate 35 U.S.C. 251 is a question of law. The legal conclusion of whether an applicant has met the statutory requirements of 35 USC 251 is based on underlying findings of fact.

The Federal Circuit found that some of original claims did not cover the embodiment allegedly "recaptured" and thus the recapture analysis need not include those claims, but the Federal Circuit did find two claims that did originally cover the allegedly recaptured embodiment. However, the fact that the claims originally covered certain subject matter, and were amended in a way that excluded that subject matter, does not necessary mean that reissuign the patent to cover that subject matter is a recapture. In considering whether subject matter was surrendered the Court must look at whether there was a deliberate widhdrawal or amendment to secure the patent, because reissue does not remedy deliberate action. Examining the circumstances, it appeared clear to the Federal Circuit that the attorney and the examiner were mistaken about the scope of the invention. The Federal Circuit further noted that there was no evidence that the embodiment was surrendered to overcome a prior art rejection. For similar reasons the Federal Circuit also found no surrender by the arguments of counsel.

Judge Dyk, in dissent, argued persuasively that an objective observer viewing the prosecution would have concluded that a deliberate surrender had occured as to at least some of the claims.