Federal Circuit Muddies Reissue Application Practice

AIA Engineering v Magotteaux (decided 8/31/11)

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What This Means to You

  • Because the law governing reissue applications is now uncertain, patentees should consider alternative strategies such as the use of continuation and divisional applications to achieve desired claim scope.

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Overview

In AIA Engineering Ltd. v. Magotteaux Int’l S/A, the US Court of Appeals for the Federal Circuit (Federal Circuit) further muddied the waters surrounding the “Recapture Rule” in reissue applications.

Background

Magotteaux obtained a patent claiming a wear component used to grind abrasive surfaces. Claim 1 recited a “porous ceramic pad consisting of a homogeneous ceramic composite solid solution” of alumina and zirconia. The prosecution history showed that the applicant relied on the “solid solution” limitation to distinguish the claimed invention from prior art.

Several years after issue of the original patent, Magotteaux filed for a reissue application amending claim 1 by replacing the “solid solution” limitation with “ceramic composite” and adding independent claim 12, which used “comprising” instead of “consisting of.” The examiner allowed the application despite an anonymous protest asserting that the amendments violated the Recapture Rule, which prevents recapture of previously surrendered subject matter.

Next, AIA brought suit seeking a declaratory judgment of invalidity of claims 1 and 12 for impermissible recapture of surrendered subject matter. The district court agreed and granted summary judgment of invalidity.

Decision Analysis

The Federal Circuit overturned the lower court and found that the amendments made during the reissue prosecution did not violate the Recapture Rule.

The Federal Circuit held that the district court erred in claim construction because, as used by applicant, “solid solution” was synonymous with “ceramic composite.” The court relied primarily on implicit redefinition of “ceramic composite” and on expert testimony that only a ceramic composite of alumina and zirconia was physically possible. Finding the terms to be equivalent, the court held that the reissue patent did not violate the Recapture Rule.

The decision is seemingly inconsistent with North American Container v. Plastipak Packaging, Inc., and In re Mostafazadeh, which both held that reissue claims that completely omit a claim element relied on during prosecution to overcome prior art violate the Recapture Rule.

Takeaway

This decision reflects the uncertainty that now exists for reissue applications concerning the Recapture Rule. Accordingly, patentees should consider alternative strategies such as the use of continuation and divisional applications to achieve desired claim scope.