Appeal No. 2005-0841
Application No. 08/230,083
then shifts to the applicant to establish that the prosecution
history of the application which matured into the patent sought
to be reissued establishes that a surrender of subject matter did
not occur.
As will become apparent, our rationale parallels practice in
determining whether subject matter is surrendered when a doctrine
of equivalents analysis occurs in infringement cases.
(8)
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 USPQ2d at 1649:
[A]s recognized in Ball, the recapture rule is based on
principles of equity[5] 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.
5 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 USPQ 413, 416 (Fed.
Cir. 1985) (in banc); In re Willingham, 282 F.2d 353, 354-55, 127 USPQ 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 USPQ2d at 1525.
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