Barco, N.V. & Barco, Inc. v. Eizo Corp. & Eizo Inc., aff’d, Barco, N.V. & Barco, Inc. v. Eizo Corp. & Eizo Inc., Appeal No. 2017-2086 (Fed. Cir. Apr. 3, 2018) is the latest federal district court decision analyzing the rule against recapture under 35 U.S.C. § 251. The Court of Appeals for the Federal Circuit summarily affirmed the lower court’s decision under Rule 36. As patent applicants are increasingly using the reissue process to try to remove limitations relied upon to distinguish prior art during an original prosecution – in many instances to broaden claim scope to cover a competitor’s product – Barco follows a judicial trend of courts stamping down on this abuse of the reissue statute.
Violation of the rule against recapture has been treated as a question of law reserved for the court as opposed to the jury. Courts analyzing the issue use a three step test: 1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims; 2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and 3) whether the reissued claims were materially narrowed in other respects to avoid the recapture rule. Pannu v. Storz Instr., 258 F.3d 1366, 1371 (Fed. Cir. 2001). With respect to this third step however, any narrowing must relate to the surrendered subject matter. See Barco, Slip. Op. at 9; In re Mostafazadeh, 643 F.3d 1353, 1358-1359 (Fed. Cir. 2011); N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1350 (Fed. Cir. 2005) (narrowing unrelated to “generally convex inner wall” limitation added during original prosecution did not save claims from violating the recapture rule).
In Barco, the court found a violation of the rule against recapture where a limitation appearing in the original patent on which the reissue was based was omitted in certain asserted claims. There, the original patent application concerned a method of image processing including a step referred to as the “Measurement Limitation.” This limitation was claimed in multiple claims. After the USPTO rejected the application as obvious in view of prior art references including U.S. Patent No. 5,706,816 (“Mochizuki”), Barco represented to the USPTO that the application was not obvious because Mochizuki did not disclose the Measurement Limitation. After receiving Barco’s response, the obviousness rejections were withdrawn and the application issued as U.S. Patent No. 7,639,849 (“the ‘849 patent”).
Barco later obtained a reissue of the ’849 patent (“the ’707 patent”) and asserted it against Eizo. Eizo argued that claims 64-66, 68-76, 80, 91, 98-99, 117, 120, 122, and 128-129 of the ’707 patent (“The Challenged Claims”) violated the rule against recapture because the Measurement Limitation was completely absent from those claims. The Court agreed. As to the first step of the recapture test, the court found the reissued claims broader in scope compared to the original claims, reasoning that “[b]y omitting the Measurement Limitation, the claims in question could encapsulate the subject matter disclosed in Mochizuki[.]” As to the second step, the broader aspects related to surrendered subject matter because Barco “conveyed to the patent examiner that the application was distinct from . . . Mochizuki and Pearman because of the presence of the Measurement Limitation[,]” and by omitting that limitation in the Challenged Claims, the surrendered subject matter crept back into the Challenged Claims. Finally, the Challenged Claims were not materially narrowed. Accordingly, these claims were found void as a matter of law.
The CAFC’s Rule 36 affirmance of Barco v. Eizo follows a trend of courts stamping down on the attempted use of reissue to remove limitations relied upon during an original prosecution to overcome prior art rejections. In light of the recent Cioffi v. Google decision finding that recapture is not an issue that should be submitted to a jury, defendants facing an allegation of infringement of a reissue patent should carefully examine whether there has been a violation of the rule against recapture and if so, move for summary judgment as soon as permitted.