Appeal 2007-0040
Application 10/170,069
Patent 6,073,699
(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
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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