Appeal No. 2005-0841
Application No. 08/230,083
subject matter in order to overcome prior art, a decision
which in light of subsequent developments in the
marketplace might be regretted.").
With respect to the recapture issue, there are no
underlying material facts as to which there is a genuine
issue in dispute. The original patent's prosecution
history, on which we rely, is before us and undisputed.
All that remains is the ultimate legal conclusion as to
whether the asserted reissue claims fail to meet the
"error" requirement because the claims impermissibly
recapture surrendered subject matter. See id. at 994, 998
F.2d 992, 27 USPQ2d at 1524 (stating that whether the
"error" requirement has been met is a legal conclusion).
For the reasons explained above, we conclude as a matter
of law that the asserted reissue claims fail in this
regard. Summary judgment of invalidity of the asserted
reissue claims under § 251 is called for. Accordingly,
we affirm the district court's entry of summary judgment.
The court in Pannu, 258 F.3d at 1370-71, 59 USPQ2d at 1600,
expressly endorses the process for applying the recapture rule set
forth in Clement and Hester. Specifically, according to Pannu:
[t]he first step is to "determine whether and in what
'aspect' the reissue claims are broader than the patent
claims." Id. [citing to Clement, 131 F.3d at 1468, 45
USPQ2d at 1164]. “The second step is to determine
whether the broader aspects of the reissued claim related
to surrendered subject matter.” Id. [citing to Clement,
131 F.3d at 1468, 45 USPQ2d at 1164]. Finally, the court
must determine whether the reissued claims were
materially narrowed in other respects to avoid the
recapture rule.
Id. at 1371, 59 USPQ2d at 1600 (citations omitted). The Federal
Circuit applied the test set forth in Clement in analyzing the
facts in Pannu as follows.
A-39
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