Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
(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[5] 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.
Hester argues that an analogy cannot be made with prosecution
history estoppel because the reissue procedure and prosecution history
estoppel are the antithesis of one another--reissue allows an expansion
of patent rights whereas prosecution history estoppel is limiting.
However, Hester’s argument is unpersuasive. The analogy is not to
the broadening aspect of reissue. Rather, the analogy is with the
recapture rule, which restricts the permissible range of expansion
through reissue just as prosecution history estoppel restricts the
permissible range of equivalents under the doctrine of equivalents.
5 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
relying on prosecution history, become patent infringers when they do so." 998
F.2d at 996, 27 USPQ2d at 1525.
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