Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
prosecution where claims and arguments can change depending on the
circumstances, e.g., prior art applied and amendments to claims. It is from a
fixed perspective that the public (not the patentee) must make an analysis of
what the patentee surrendered during prosecution. Moreover, Appellants
(not the public) control what amendments and arguments are presented
during prosecution. When an amendment or argument is presented, it is the
Appellants that should be in the best position to analyze what subject matter
(i.e., territory to use the Supreme Court’s language) is being surrendered (or
explain why the reissue claims are materially narrowed).
Our belief is supported by what appears to be dicta in MBO
Laboratories, Inc. v. Becton, Dickinson & Company, 474 F.3d 1323, 1331-32,
81 USPQ2d 1661, 1666-67 (Fed. Cir. 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,
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