Appeal 2005-0801
Application 09/848,628
(9)
Burden of proof analysis
Our analysis begins with an observation made by our appellate
reviewing court in Hester, 142 F.3d at 1481-82, 46 U.S.P.Q.2d at 1649:
[A]s recognized in Ball, the recapture rule is based on
principles of equity[14] and therefore embodies the notion of
estoppel. 729 F.2d at 1439, 221 USPQ at 296. Indeed, the
recapture rule is quite similar to prosecution history estoppel,
which prevents the application of the doctrine of equivalents in
a manner contrary to the patent’s prosecution history. See
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., [520 U.S.
17, 33] 117 S. Ct. 1040, 1051[41 USPQ2d 1865, 1873] (1997).
Like the recapture rule, prosecution history estoppel prevents a
patentee from regaining subject matter surrendered during
prosecution in support of patentability. See id.
Hester argues that an analogy cannot be made with
prosecution history estoppel because the reissue procedure and
prosecution history estoppel are the antithesis of one another--
reissue allows an expansion of patent rights whereas
prosecution history estoppel is limiting. However, Hester’s
argument is unpersuasive. The analogy is not to the broadening
aspect of reissue. Rather, the analogy is with the recapture rule,
which restricts the permissible range of expansion through
14 The reissue statute has been characterized as being remedial in nature,
based on fundamental principles of equity and fairness and should be
construed liberally. In re Bennett, 766 F.2d 524, 528, 226 U.S.P.Q. 413,
416 (Fed. Cir. 1985) (in banc); In re Willingham, 282 F.2d 353, 354-55,
127 U.S.P.Q. 211, 214 (CCPA 1960). Nevertheless, fairness to the public
must also be considered. As stated in Mentor, "the reissue statement cannot
be construed in such a way that competitors, properly relying on prosecution
history, become patent infringers when they do so." 998 F.2d at 996,
27 U.S.P.Q.2d at 1525.
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