recapture : CAFC Alert

Prosecution Argument Bars Later Recapture Through Broadening Reissue

Nicolas Seckel | August 29, 2012

Greenliant Systems, Inc. v. Xicor LLC

August 22, 2012

Panel:  Linn, Plager and Dyk.  Opinion by Dyk

Summary:

Xicor obtained a patent claiming a semiconductor device with a tunneling layer formed by low pressure chemical vapor (CVD) deposition using tetraethylorthosilicate (TEOS).   Xicor sought and obtained reissue of the patent with device claims that did not recite the use of TEOS.   Subsequently, Greenliant sued Xicor for declaratory judgment of invalidity of the reissue claims based on recapture rule, which prohibits recapture via reissue of subject matter surrendered in order to overcome prior art during prosecution of the original patent.  The District Court held the reissue claims invalid, and the Federal Circuit affirms.  Xicor had repeatedly argued during prosecution of the original patent that the product-by-process limitation of using TEOS imparted structural limitations to the final product.  This is sufficient for the recapture rule to apply, even if Xicor now recognizes that the structure of the tunneling layer does not actually depend on the material used for the CVD process, but on deposition conditions such as temperature and pressure.


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Recapture Issues in a Reissue Application

Dennis Hubbs | May 30, 2012

In Re Roger Youman and Marney Morris

May 8, 2012

Panel: Lourie, Schall and Prost. Opinion by Prost. Dissent by Lourie.

Summary:

Applicants filed a broadening reissue application within two years of the patent issuing.  The examiner rejected the claims because applicants attempted to recapture surrendered subject matter.  The Board of Patent Appeals and Interferences (BPAI) affirmed the examiner’s rejection but the Court of Appeals for the Federal Circuit (CAFC) overturned the BPAI ruling and in doing so, clarified the three step process to determine if applicant is barred by the recapture rule.


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