Reevaluate reissues after the Federal Circuit’s Youman ruling
Laurence S Rogers explains why a recent ruling of the Federal Circuit warrants a second look at patents containing potentially invalidating errors
On May 8 this year, the Federal Circuit in In re Youman clarified years of so-called recapture law relating to reissued patents. In that ruling, the Federal Circuit vacated a decision of the Board of Patent Appeals and Interferences that rejected reissue claims being pursued by a client of this firm. The decision should not only significantly change the way certain types of so-called intermediate scope reissue claims are examined by the USPTO, but should also come as welcome news to patent owners who are considering a broadening reissue to correct a claim that was overly narrowed to avoid prior art.
The Recapture Rule generally prevents a patent owner from reissuing a patent to claim subject matter that was deliberately surrendered during the original prosecution. The Recapture Rule involves a three-step analysis: (1) determine whether and in what aspect the reissue claim is broader than the patent claim; (2) determine whether the broader aspects of the reissue claim relate to surrendered subject matter; and (3) if the reissue claim is broader relative to the patented claim in a manner related to the surrendered subject matter, determine whether the surrendered subject matter has crept back into the reissue claim. If the answer to the last question is “yes”, the Recapture Rule bars the reissue claim.
Impermissible recapture typically occurs when a patent owner, on reissue, attempts to remove entirely a claim limitation that was added or argued during the original prosecution to avoid prior art. Sometimes, however, a patent owner realises that a claim in an issued patent was inadvertently narrowed too much during prosecution. In such a case, the patent owner might desire to reissue the patent to modify the added limitation to broaden it to some extent, but not eliminate it entirely. The result would be a claim that is intermediate in scope between the original patent application claim before the overly narrow limitation was added, and the claim as it issued in the original patent with the overly narrow limitation.
In years past, following the reasoning of In re Eggert (BPAI 2003), the USPTO allowed reissue claims of intermediate scope. The Recapture Rule as applied to such claims was embodied in Section 1402.02(I)(C) of the Manual of Patent Examining Procedure (MPEP, 8th ed, rev 5 Aug 2006), which stated:
If the reissue claim recites a broader form of the key limitation added/argued during original prosecution to overcome an art rejection (and therefore not entirely removing that key limitation), then the reissue claim may not be rejected under the recapture doctrine. Ex Parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Inter. 2003) (precedential). For example, if the key limitation added to overcome an art rejection was "an orange peel," and the reissue claim instead recites "a citrus fruit peel," the reissue claim may not be rejected on recapture grounds.
In 2008, however, the Office promulgated a new rule that per se precluded any intermediate broadening on reissue of a claim limitation that, during the original prosecution, had been added to avoid the prior art. This new rule was based on the USPTO’s reading of N Am Container, Inc v Plastipak Packaging, Inc (Fed Cir 2005). The new rule, Section 1402.02(I)(C) (8th ed, rev 7 July 2008), stated that “[if] surrendered subject matter … has been in any way broadened in a reissue application claim, then a recapture rejection under 35 USC Section 251 is proper”.
Youman’s reissue claims
In Youman, the patent owner sought to reissue a claim for an electronic television programming guide that had originally recited a “selection means for allowing said user to select a title for display on said television receiver by selecting the first n characters of said title”. Following a prior art rejection, the applicants amended the claim to recite the selection means, “said selection means comprising means for causing each of said n characters to cycle forward and backward through a plurality of alphanumeric characters”. The claims issued with this cycling limitation.
On reissue, filed for within the two year window for a broadening reissue, the patent owner sought a claim with a modified form of the cycling limitation. Specifically, the cycling limitation was modified to include a changing limitation, which read as follows: “changing from a first character to a second character”.
The USPTO and Board decisions
The Office rejected Youman’s changing claim as an improper recapture of surrendered subject matter, and the Board affirmed. Relying on N Amer Container and the 2008 version of the MPEP rule, the Board applied the three-part recapture test and held that, because the reissue claim broadened the cycling limitation in the patented claim to an intermediate scope, it constituted an impermissible recapture of surrendered subject matter.
In so doing, the Board articulated the last step of the recapture analysis as allowing a reissue claim to escape the recapture only if the claim included a narrowing limitation directed to one or more overlooked aspects of the invention. As none of the other changes that narrowed the reissue claim were directed to overlooked aspects of the invention, the Board affirmed the Office’s rejection. Youman appealed to the Federal Circuit.
The Federal Circuit’s decision
The Federal Circuit reversed and remanded.
Rejecting the essentially per se rule against intermediate-scope reissue claims applied by the Board, the Federal Circuit held that “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue”. With respect to the Board’s reliance on N Am Container and on the 2008 version of the MPEP rule prohibiting reissue if a limitation added to avoid prior art during the original prosecution is ‘“in any way broadened”’ on reissue, the Court said such reliance was “misplaced” and “inappropriate”.
The Federal Circuit went on to say: “[I]n the case at bar, … the Board has already determined that the added limitation – cycling – has not been eliminated; rather, it has been broadened to changing. Such modification does not instantly implicate the Recapture Rule bar, as the Board held; rather, such a broadening modification must be evaluated to determine if it materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.”
With intermediate broadening no longer per se barred, counsel should carefully consider whether reissue is now warranted in particular cases for which it previously may not have been. The question during reissue will be whether a proposed intermediate broadening continues to “materially narrow” the reissue claim relative to the original claim as it existed before the amendment or argument made to avoid prior art. If the modified (broadened) limitation is contained in the prior art relied on by the examiner during the original prosecution, the modified limitation will not materially narrow the claim. Otherwise, it might. Whether the modification does or does not materially narrow needs to be evaluated on a case-by-case basis in view of the prior art, the degree of broadening, and arguments made during prosecution.
Laurence S Rogers is a partner at Ropes & Gray in New York. He represented the appellants in In re Youman.