Applying the reissue-recapture rule of § 251, the U. S. Court of Appeals for the Federal Circuit has agreed with the Texas district court of the northern, which held certain claims of a reissue patent were invalid because they sought to recapture subject matter surrendered during prosecution of the original patent application. North Am. Container, Inc. v. Plastipak Packaging, Inc., Case Nos. 04-1306, -1307 (Fed. Cir. July 14, 2005) (Lourie, J.).
North American Container sued Plastipak Packaging and other manufacturers and distributors of blow-molded plastic bottles in the Northern District of Texas for infringing its reissued patent.
The reissued patent issued from a series of continuation applications. During prosecution of the originally filed application, claims were rejected as obvious over prior art, which the patentee distinguished by pointing out that one disclosed a slightly concave base and the other a base "clearly concave in its entirety." The district court held this statement to be a surrender of subject matter that is not "mostly convex," thus limiting the construction of most claims. Applying that construction, the district court granted summary judgment of non-infringement in favor of most of the defendants on most claims. It also held certain of the reissue claims invalid for violating the rule against recapture of previously surrendered subject matter.
The Federal Circuit agreed. Applying the recapture rule (on a limitation-by-limitation basis) in a three-step process, the Federal Circuit held the reissue claims are broader in scope than the original patent claims, the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution, and the reissue claims were not materially narrowed in other respects, toward enlargement, and hence the recapture rule.
Upholding the district court’s claim construction, the Federal Circuit also found non-infringement of most of the claims by most of the defendants.
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