Appeal 2006-1068
Reissue Application 08/425,766
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 the practice in determining
whether subject matter is surrendered when a doctrine of equivalents analysis
occurs in infringement cases.
(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 USPQ2d at 1649:
[A]s recognized in Ball, the recapture rule is based on principles of
equity[3] 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.
3 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
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