- “This court bars recapture because a patentee is only entitled to a reissue patent for broader claims when the patentee claimed less than he had a right to claim in the patent through error without any deceptive intent, not through deliberate amendments or arguments designed to convince an examiner to allow the claims.”
- “[W]e seek to clarify that a patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related patent application.”
- “When a reissue patent contains the unmodified original patent claims and the reissue claims, a court can only invalidate the reissue claims under the rule against recapture.”
AIA ENGINEERING LTD. V. MAGOTTEAUX INTERNATIONAL S/A
- Notwithstanding the limited ability to enlarge claim scope through reissue, the recapture rule prevents a patentee from regaining subject matter deliberately surrendered during the prosecution of the original patent.
- A three-step test guides the analysis:(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
