Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
Our belief is supported by what appears to be dicta in MBO Laboratories,
Inc. v. Becton, Dickinson & Company, No. 2006-1062, slip. op. at 12-13 (Fed. Cir.
Jan. 24, 2007):
The recapture rule is a limitation on the ability of patentees to broaden
their patents after issuance. . . . . Section 251 is “remedial in nature,
based on fundamental principles of equity and fairness, and should be
construed liberally.” However, the remedial function of the statute is
limited. Material which has been surrendered in order to obtain
issuance cannot be reclaimed via Section 251: . . . It is critical to
avoid allowing surrendered matter to creep back into the issued
patent, since competitors and the public are on notice of the surrender
and may have come to rely on the consequent limitations on claim
scope. . . . (“[T]he recapture rule ... ensur[es] the ability of the
public to rely on a patent’s public record.”). The public’s reliance
interest provides a justification for the recapture rule that is
independent of the likelihood that the surrendered territory was
already covered by prior art or otherwise unpatentable. The recapture
rule thus serves the same policy as does the doctrine of prosecution
history estoppel: both operate, albeit in different ways, to prevent a
patentee from encroaching back into territory that had previously been
committed to the public. (citations omitted.)
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