692 F.3d 1261
Fed. Cir.2012Background
- Xicor LLC appeals a district court final judgment in Greenliant Systems, Inc. v. Xicor LLC, affirming a declaration that RE’370 claims 12 and 13 are invalid under the recapture rule.
- District court entered judgment based on the SST decision holding TEOS-limited claims in the ’585 patent surrendered and recaptured by RE’370 claims 12 and 13.
- ’585 and RE’370 share substantially identical specifications for improved EEPROM tunneling layers formed by TEOS-deposited oxide, with TEOS and low-pressure CVD as key limits.
- Claims 12 and 13 of RE’370 are broader than the ’585 claims due to removal of the TEOS limit; the dispute centers on whether Xicor surrendered non-TEOS subject matter during prosecution.
- Prosecution history shows Xicor argued TEOS deposition imparted structural differences distinguishing the claimed tunneling layer and relied on TEOS to gain allowance.
- Court applies the three-step recapture test and agrees Xicor surrendered non-TEOS devices during the ’585 prosecution, so RE’370 claims 12 and 13 are invalid.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claims 12-13 broadened subject matter recaptured from the ’585 patent | Xicor contends no recapture because TEOS removal is not structural. | Greenliant argues TEOS-limited scope was surrendered; recapture applies. | Yes; claims 12-13 recapture surrendered subject matter. |
| Whether Xicor surrendered non-TEOS devices through prosecution history alone | Xicor asserts TEOS was not essential to structural differences. | Greenliant asserts prosecution history shows TEOS arguments conveyed surrender of non-TEOS devices. | Yes; surrender inferred from prosecution history of the ’585 patent. |
| Whether product-by-process limitations imparting structural differences affect recapture analysis | TEOS deposition conditions, not TEOS itself, imparted structure; no surrender. | TEOS arguments before PTO show structural differences; weight to process limits is governed by product-by-process rules. | Structural differences due to TEOS deposition were surrendered; product-by-process factors do not avoid recapture. |
| Whether the TEOS limitation, as argued to distinguish prior art, constitutes surrender of non-TEOS subject matter | TEOS was used to distinguish, not to surrender broader non-TEOS subject matter. | TEOS-based arguments were explicit surrender of non-TEOS alternatives to obtain allowance. | Yes; TEOS-based arguments amounted to surrender of non-TEOS subject matter. |
Key Cases Cited
- MBO Labs., Inc. v. Becton, Dickinson & Co., 602 F.3d 1306 (Fed. Cir. 2010) (recapture rule and surrender of subject matter during reissue prosecution)
- North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005) (prosecution disclaimer and surrender concepts in recapture context)
- Kim v. ConAgra Foods, Inc., 465 F.3d 1312 (Fed. Cir. 2006) (objective observer test for surrender of subject matter)
- Pannu v. Storz Instruments, Inc., 258 F.3d 1366 (Fed. Cir. 2001) (recapture and prosecution history principles)
- Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009) (product-by-process claims and structural considerations)
- Thorpe v. Bolcks? (In re Thorpe), 777 F.2d 695 (Fed. Cir. 1985) (product-by-process claims focus on product structure, not process)
- SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) (product-by-process and structural distinctions)
- Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989 (Fed. Cir. 2003) (prosecution history disclaimer and claim scope)
- Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (U.S. 1989) (limits on product-by-process claims and structural equivalence)