Appeal No. 2003-0124
Application No. 09/487,832
patent applicant. Thus, the reissue statute
cannot be construed in such a way that
competitors, properly relying on prosecution
history, become infringers when they do so.
Mentor Corp. v. Coloplast Inc., 998 F.2d 992, 996, 27 USPQ2d
1521, 1525 (Fed. Cir. 1993). This is the underlying policy
behind what has come to be known as the "reissue recapture rule."
In its simplest terms, this rule may be summarized as follows: A
patentee is precluded from recapturing in reissue that which he
earlier conceded was unpatentable and abandoned or surrendered,
whether by cancellation, amendment or argument of claims, for the
purpose of obtaining the original patent.
Accordingly, it seems clear to us that the reissue recapture
rule focuses on that which the prosecution history indicates that
applicant intended to give up or concede to be unpatentable by an
applicant, i.e., the "surrendered subject matter," in order to
obtain a patent, for this is the subject matter. It is the
surrendered subject matter which cannot be recaptured in reissue.
Upon our review of the facts, we find that the reissue
recapture rule does not apply. As pointed out above, Appellants
did not intend to give up or concede that the subject matter of
claims 2-4 and 9 were unpatentable. Appellants did this in error
without deceptive intent and finally, the Appellants did not give
1919
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