Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
limitations. See Ball Corp. v. United States, 219 USPQ 73, 78-79 (Cl. Ct.
1982).
In any event, my point of departure from the majority’s reasoning
with regard to “material narrowing” is the determination that Eggert no
longer applies. However, it seems unlikely that the other precedents require
that a material narrowing “in other respects” to avoid the recapture rule be
always limited to “overlooked” aspects of the invention. The reissue statute
is “remedial in nature, based on fundamental principles of equity and
fairness, and should be construed liberally.” In re Weiler, 790 F.2d 1576,
1579, 229 USPQ 673, 675 (Fed. Cir. 1986).
What Subject Matter is Surrendered?
The majority also relies on Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., Ltd., 535 U.S. 722, 122 S. Ct. 1831, 62 USPQ2d 1705
(2002), for definition of “surrendered subject matter.” The law of
prosecution history estoppel as it relates to limiting the doctrine of
equivalents provides useful analogies for determining how prosecution
history may apply to recapture of surrendered subject matter in a reissue.
However, the Festo presumption applies to recapture of equivalents that may
be given up during prosecution, rather than to broadening reissue recapture
of subject matter that was surrendered. The Supreme Court identified three
ways in which the patentee can overcome the presumption of surrender (535
U.S. at 737-41, 122 S. Ct. at 1840-42, 62 USPQ2d at 1712-14, reproduced at
part IV.A.(10) supra), none of which apply to reissue recapture.
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