October 13, 2019

October 11, 2019

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For Recapture, Look to the Change of Scope Between the Original Application Claims And the Reissue Claims

Vacating and remanding a decision by the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), the U.S. Court of Appeals for the Federal Circuit concluded that the Board did not properly apply the required recapture analysis in the rejection of the applicants’ reissue application for an electronic television programming guide. In re Youman et al., Case No. 11-1136 (Fed. Cir., May 8, 2012) (Prost, J.) (Lourie, J. dissenting).

Inventors Youman et al. original patent issued with a claim directed to “[a]n electronic programming guide . . . comprising . . . selection means for allowing said user to select a title for display . . . said selection means comprising means for causing each of said n characters to cycle forward and backward through a plurality of alphanumeric characters.” The claim phrase “cycle forward and backward” was added during prosecution. The applicants argued that the invention uses a remote control to “cycle” through the alphabet rather than using a keyboard to enter characters into a personal computer as taught by the prior art. Within the statutory two-year period, the applicants filed a reissue application with 21 new claims, alleging that the original claims were partly inoperative by reason of the patent claiming less than the applicants had a right to claim. The new claims replaced the phrase “cycle forward and backward” with claims reciting in pertinent part “[a]n electronic television programming guide . . . comprising . . . a wireless remote control, comprising nonalphanumeric keys . . . wherein a user may search for a title . . . by changing from a first character to a second characters using the nonalphanumeric key.” After the Board affirmed the examiner’s final rejection under § 251 as being directed to improperly recaptured subject matter previously surrendered, the applicants appealed, challenging whether the recapture rule prevented them from claiming “changing” as a selecting means in the reissue claims.

The Federal Circuit, citing to In re Mostafazadeh (see IP Update, Vol. 14, No. 5), applied the three-part recapture test, noting that there was no dispute regarding the first part of the test, i.e., that “the reissue claims are broader than the patented claims.” Turning to the second part of the recapture analysis, whether “the broader aspects of the reissue claims relate to surrendered subject matter,” the Court agreed with the Board that the surrendered subject matter was “any selecting means broader that the cycling limitation of the patented claim.”

The Court then focused on the third part of the recapture analysis, “whether the surrendered subject matter has crept into the reissue claim,” and determined that the Board “failed in several respects to apply this third step.” The Court found that broadening the patented claim from “cycling” to “changing” does not instantly implicate the recapture bar. The Court further concluded that the original application claim, not the patented claim, should be used as a frame of reference for determining whether the reissue claims materially narrows the claims. In the view of the majority of the panel, doing otherwise “would frustrate the remedial nature of the reissue statute and contradict case law.” 

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