Aia Engineering Ltd. v. Magotteaux Intern. S/A
657 F.3d 1264
| Fed. Cir. | 2011Background
- Magotteaux owns the RE'998 patent, a reissue of its earlier '176 patent directed to a composite wear component with Al2O3/ZrO2 ceramic material.
- The '176 claim 1 required a homogeneous solid solution of 20-80% Al2O3 and 80-20% ZrO2; the RE'998 claims 1 and 12 substituted this with a 'homogeneous ceramic composite' of the same composition range.
- The district court held that substituting 'ceramic composite' for 'solid solution' broadened the claims and violated the recapture rule under 35 U.S.C. § 251.
- The invention involves forming a porous ceramic pad from fused Al2O3 and ZrO2 grains, where liquid metal is impregnated into the pad during casting to form the wear component.
- Magotteaux appealed, arguing that 'homogeneous solid solution' and 'homogeneous ceramic composite' are synonymous, so there was no recapture; the district court erred in claim construction.
- The Federal Circuit reversed, held the terms are synonymous, and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are 'homogeneous solid solution' and 'homogeneous ceramic composite' synonymous? | Magotteaux asserts they are synonyms; patentee acted as lexicographer. | AIA contends they are distinct terms with different scope. | Synonymous in this context; patentee acted as his own lexicographer. |
| Did substituting 'ceramic composite' for 'solid solution' broaden the RE'998 claims and trigger recapture? | No broadened scope because terms are synonymous. | Yes, substitution broadened the reissue claims, enabling recapture. | No recapture; substitution not a broadening under the recapture test. |
| Does the substitution of 'comprising' for 'consisting of' in claim 12 create recapture concerns? | The amendment broadens but does not surrender subject matter. | Same; no surrender occurred to trigger recapture. | No surrender, no recapture; remand for remaining issues. |
Key Cases Cited
- Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360 (Fed. Cir. 2006) (three-step recapture test for reissue claims)
- Pannu v. Storz Instruments, Inc., 258 F.3d 1366 (Fed. Cir. 2001) (recapture requires clear and convincing surrender evidence)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction guidance; intrinsic vs extrinsic evidence)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (claims are to be construed as a matter of law de novo)
- Astrazeneca LP v. Apotex, Inc., 633 F.3d 1042 (Fed. Cir. 2010) (special meaning of a claim term may be defined by the specification)
- Talbert Fuel Sys. Patents Co. v. Unocal Corp., 275 F.3d 1371 (Fed. Cir. 2002) (caution against treating potentially inoperable constructions as valid)
- Westvaco Corp. v. Int'l Paper Co., 991 F.2d 735 (Fed. Cir. 1993) (analysis of claim scope and related issues in later proceedings)