Appeal No. 2005-0841
Application No. 08/230,083
Judge McQuade, concurring-in-part; dissenting-in-part.
The reissue recapture rule prevents a patentee from regaining
through reissue the subject matter that was surrendered in an
effort to obtain allowance of the original claims. North American
Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349,
75 USPQ2d 1545, 1556 (Fed. Cir. 2005); Pannu v. Storz Instruments
Inc., 258 F.3d 1366, 1370-71, 59 USPQ2d 1597, 1600 (Fed. Cir.
2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 1480,
46 USPQ2d 1641, 1647 (Fed. Cir. 1998); In re Clement, 131 F.3d
1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997); Mentor Corp. v.
Coloplast, Inc., 998 F.2d 992, 995, 27 USPQ2d 1521, 1524 (Fed. Cir.
1993). In recent cases, the Court of Appeals for the Federal
Circuit has employed a three-step process to apply the reissue
recapture rule: the first step is to determine whether and in what
aspect the reissue claims are broader than the patent claims; the
second step is to determine whether the broader aspects of the
reissue claims relate to surrendered subject matter; and the third
step is to determine whether the reissue claims are materially
narrowed in other respects so as to avoid the recapture rule.
North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556;
Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600; Hester, 142 F.3d at
1480-83, 46 USPQ2d at 1648-50. The purpose of the third step is
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