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No Reissue Recapture Where Reissue Claims Not Deemed Broader and Applicant Is Own Lexicographer

August 31, 2011

Decision icon Decision

Judges: Rader, Lourie (author), Bryson

[Appealed from: M.D. Tenn., Judge Haynes, Jr.]

In AIA Engineering Ltd. v. Magotteaux International S/A, No. 11-1058 (Fed. Cir. Aug. 31, 2011), the Federal Circuit reversed the district court’s SJ decision invalidating claims in U.S. Patent No. RE39,998 (“the ’998 patent”) under 35 U.S.C. § 251 for impermissible recapture and remanded.

On June 4, 2002, Magotteaux International S/A and Magotteaux, Inc. (collectively “Magotteaux”) were granted U.S. Patent No. 6,399,176 (“the ’176 patent”) directed to a composite wear component containing a combination of ceramic materials. The combination of ceramic materials included a mixture of aluminum oxide (Al2O3) and zirconium oxide (ZrO2). Among other things, independent claim 1 in the ’176 patent contained the following language: “Composite wear component . . . consisting of . . . a porous ceramic pad, the porous ceramic pad consisting of a homogenous solid solution of 20 to 80 % of Al2O3 and 80 to 20 % of ZrO2.” Slip op. at 4 n.2.

During prosecution of the ’176 patent, the applicant did not alter the portion of the claim setting forth the “homogeneous solid solution.” The applicant did, however, submit a declaration under 37 C.F.R. § 1.132. The applicant used “solid solution” multiple times in the declaration, stating that a “homogeneous solid solution of both ceramics meets the advantages of both Al2O3 and ZrO2.” Id. at 4 (citation omitted).

Less than one year after issue, the patentee applied for reissue of the ’176 patent, amending claim 1 and adding claims 12-21. In both amended claim 1 and new independent claim 12, the patentee changed “homogeneous solid solution” to “homogeneous ceramic composite,” and in claim 12 also changed “consisting” to “comprising.” Despite an anonymous third-party protest under 37 C.F.R. § 291 asserting that claims 1 and 12 should be rejected under 37 U.S.C. § 251 for impermissibly recapturing subject matter surrendered during prosecution of the ’176 patent, the PTO issued the ’998 patent.

AIA Engineering Ltd. (“AIA Engineering”) sued Magotteaux for a DJ of noninfringement, invalidity, and unenforceability of the ’998 patent; and Magotteaux filed a third-party complaint against Vega Industries, Ltd., Inc. (“Vega”), alleging that Vega infringed the ’998 patent. AIA Engineering and Vega (collectively “AIA”) then moved for SJ, asserting that the ’998 patent claims were invalid due to impermissible recapture.

The district court held that the substitution of “ceramic composite” for “solid solution” in claims 1 and 12 of the ’998 patent broadened the scope of the reissue claims. The district court further held that Magotteaux relied on the “solid solution” limitation to overcome prior art during prosecution, thereby surrendering broader scope to a “ceramic composite.” Accordingly, the district court granted SJ in favor of AIA, holding the ’998 patent claims invalid for impermissible recapture under 35 U.S.C. § 251.

On appeal, the Federal Circuit concluded that the district court erred in claim construction, and held that “homogeneous solid solution” was synonymous with “homogeneous ceramic composite.” Id. at 11.

The Court began its analysis by construing “homogeneous ceramic composite.” The Court noted that the district court did not explicitly set forth a construction for the term. On appeal, Magotteaux argued that “homogeneous ceramic composite” should be construed as “an aggregation of relatively consistent grains of at least Al2O3 and ZrO2 wherein each of the Al2O3 and ZrO2 retains a distinct composition and/or crystal structure.” Id. at 14 (citation omitted). In contrast, AIA did not propose a construction and contended that the district court correctly adopted a claim construction proposed by Magotteaux.

The Court agreed with the claim construction proposed by Magotteaux. Both parties’ experts also supported Magotteaux’s proposed claim construction.

The Court also analyzed the meaning of “homogeneous solid solution” in claim 1 of the ’176 patent.

Both AIA and Magotteaux agreed that the plain meaning of “solid solution” was “‘a solid solution’ involving a solute in a solvent with a single, uniform structure.” Id. at 19. AIA argued, however, that “solid solution” in claim 1 of the ’176 patent should be given its plain meaning, while Magotteaux argued that the patentee acted as his own lexicographer, giving a definition for “solid solution” that makes it synonymous with “ceramic composite.”

The Court first analyzed the intrinsic evidence and determined that the patentee did act as his own lexicographer, concluding that “solid solution” was synonymous with “ceramic composite.” The Court examined the specification and noted that it stated the “‘inserts’ in the ‘composite wear component’ are ‘made of a ceramic material, itself composite, consisting of a solid solution or homogeneous phase of 20 to 80% of Al2O3 and 80 to 20% of ZrO2.’” Id. at 20 (citation omitted).

The Court further noted that construing “solid solution” in terms of its plain meaning would contradict “a ceramic material, itself composite, consisting of a solid solution” because the ceramic material was two distinct crystalline structures, whereas the solid solution was agreed upon as having a plain meaning including only one distinct crystalline structure. The Court attempted to avoid such contradictions when possible and noted that construing “solid solution” to have the same meaning as “ceramic composite” avoided this problem.

Additionally, the Court supported its conclusion that the patentee was his own lexicographer by noting the district court’s description of the invention, which set forth that “once combined, Al2O3 and ZrO2 retain their crystal structure.” Id. at 17. Accordingly, the district court’s description required that the “solid solution” have two distinct crystalline structures, which was inconsistent with the plain meaning of “solid solution.” The Court also pointed to the method disclosed in the specification and determined that the method did not teach preparation of a solid solution with only one distinct crystalline structure.

The Court also disagreed with the district court’s conclusion that the prosecution history supported the plain meaning construction of “solid solution.” The Court noted that the patentee used the term “solid solution” in a declaration; however, the statements using the term were only examples of the invention, and they did not limit the term to the plain meaning construction.

Both parties’ experts agreed that if “solid solution” was construed in terms of its plain meaning, then the invention of claim 1 of the ’176 patent would not be physically possible, which would have been apparent to one of ordinary skill in the art. The Court noted that it was skeptical of any claim construction that would render the invention inoperable. Further, the Court stated that when the specification reveals a definition for a term that differs from the plain meaning, the specification’s definition governs, especially when the plain meaning would render the invention inoperable.

Rejecting AIA’s request that the Court consider evidence from foreign prosecution histories, the Court noted that precedent “cautions against” relying on evidence from foreign claim construction analysis. Id. at 25.

Because the Court held that “solid solution” was synonymous with “ceramic composite,” the Court determined that “ceramic composite” was not broader than “solid solution” and therefore did not consider whether any subject matter was surrendered during prosecution of the ’176 patent. Accordingly, the Court concluded that there was no impermissible recapture of evidence under 35 U.S.C. § 251 and that the district court erred in granting AIA’s motion for SJ invalidating the claims in the ’998 patent. Therefore, the Court reversed and remanded the district court’s decision.

Summary authored by Elana B. Fisher, student associate at Finnegan.