Appeal 2006-1068
Reissue Application 08/425,766
the knowledge of the hypothetical person of ordinary skill in the art at the time of
the amendment. Admitting evidence not available to the public, such as an
affidavit of an attorney giving mental impressions from the attorney who made the
amendment, would undermine the public notice function of the patent and its
prosecution history.
(12)
Non-relevance of “intervening rights”
We have not overlooked a possibility that an argument might be made that
the so-called intervening rights provision relating to reissues makes jurisprudence
on the doctrine of equivalents presumption inapplicable to reissue recapture rules.
Our answer as to the argument is similar to the answer given by the Federal Circuit
in Hester with respect to whether the doctrine of equivalents surrender principles
have any applicability to reissue surrender principles. Hester squarely held that
they do. Moreover, mixing “intervening rights” with “surrender” is like mixing
apples with oranges or putting the cart before the horse. A patentee seeking a
reissue claim which is barred by recapture is not entitled to a reissue patent under
35 U.S.C. § 251. If there is no reissue patent, there can be no intervening rights.
(13)
Public Notice
We believe that any recapture analysis must be bottomed principally on a
“public notice” analysis that can occur only after a record becomes “fixed.” In the
case of a patent, the “claims” and the “prosecution history” become fixed at the
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