Appeal No. 2005-0841
Application No. 08/230,083
Rarely is evidence of the patentee's intent in canceling
a claim presented. Thus, the court may draw inferences
from changes in claim scope when other reliable evidence
of the patentee's intent is not available. Claim scope
is not the lodestar of reissue. Rather, the court's
reliance on that indicator in the case law appears to be
born of practical necessity as the only available
reliable evidence.
The Government relies heavily on Haliczer v. United
States, which also involved a suit under 28 U.S.C.
§ 1498. The Court of Claims in that case held the
reissue claims invalid because the patentee sought to
acquire through reissue the same claims that had earlier
been canceled from the original application. The
recapture rule bars the patentee from acquiring, through
reissue, claims that are of the same or of broader scope
than those claims that were canceled from the original
application. On the other hand, the patentee is free to
acquire, through reissue, claims that are narrower in
scope than the canceled claims. If the reissue claims
are narrower than the canceled claims, yet broader than
the original patent claims, reissue must be sought within
2 years after grant of the original patent.
Thus, the applicability of the recapture rule and the
sufficiency of error under section 251 turn in this case,
in the absence of other evidence of the patentee's
intent, on the similarity between the reissue and the
canceled claims. Narrower reissue claims are allowable;
broader reissue claims or reissue claims of the same
scope as the canceled claims are not. The subject matter
of the claims is not alone controlling. Similarly, the
focus is not, as the Government contends, on the specific
limitations or on the elements of the claims but, rather,
on the scope of the claims.
Ball's Reissue Claims
The trial judge required the Government to establish
that the applicant has made a deliberate decision that
the canceled claims are unpatentable. The Government
argues that that standard is not correct because it loses
sight of the feature that the patentee gave up during
prosecution of the original application. We find the
Government's argument entirely unpersuasive. The proper
focus is on the scope of the claims, not on the
A-28
Page: Previous 127 128 129 130 131 132 133 134 135 136 137 138 139 140 141 Next
Last modified: November 3, 2007