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Patent Invalidated for Recapture of Surrendered Subject Matter

July 25, 2001

Decision icon Decision

Last Month at the Federal Circuit - August 2001

Judges: Mayer (author), Friedman, and Rader

In Pannu v. Storz Instruments, Inc., No. 00-1482 (Fed. Cir. July 25, 2001), the Federal Circuit affirmed a SJ invalidating U.S. Patent No. Re. 32,525 (“the ‘525 patent”) because it had improperly broadened claims in a manner directly pertinent to subject matter surrendered during prosecution.

The ‘525 patent relates to an artificial intraocular eye lens to replace a natural eye lens. During the prosecution of the ‘525 patent lineage of applications, applicant canceled and amended claims to overcome several prior art rejections. In particular, applicant added limitations directed to snagresistant discs on “haptics” that are attached to a round lens and contact internal tissue in the eye for the purpose of positioning and securing the lens.

During reissue, the Examiner allowed the applicant to delete some of the claim limitations that defined the shape of the haptics but required the applicant to add other limitations. The resulting reissue claims define the “snag-resistant means” to have a specific width and snag-resistant elements being substantially coplanar with position and supporting elements.

The Federal Circuit stated that reissue claims that are broader than the original patent’s claims in a manner directly pertinent to the subject matter surrendered during prosecution are improper. In the reissue oath, the applicant had admitted that he had unnecessarily narrowed the scope of the claim with respect to the shape of the haptics. He stated that the haptics may actually be of any shape as long as the elements terminate in a free end having snag-resistant means. The Court ruled that by such arguments, the applicant had specifically limited the shape of the haptics to a “continuous, substantially circular arc.” On reissue, he was estopped from attempting to recapture the precise limitation he added to overcome prior art rejections.

The Court rejected Pannu’s arguments that narrowing limitations to other claim elements should prevent application of the recapture rule. If a patentee is seeking to recover subject matter that was surrendered during the initial prosecution, the Court ruled, the flexibility of considering other narrowing limitations is eliminated, for the prosecution history establishes the substantiality of the change and estops its recapture.