In Re Mostafazadeh
643 F.3d 1353
| Fed. Cir. | 2011Background
- The '423 patent covers lead frame based semiconductor packaging with pin-type and bottom-surface-mount embodiments, including circular attachment pads in the amendments.
- Original claims were rejected; circular attachment-pad limitation was added to distinguish from prior art and issued with amended claims.
- In 2001, applicants filed a reissue application with twelve new claims; circular-attachment-pad limitation was omitted in the reissue.
- Examiner rejected the reissue claims as improper recapture of surrendered subject matter; Board affirmed.
- This appeal questions whether the reissue claims improperly recaptured surrendered material under 35 U.S.C. § 251; standard of review is de novo.
- Court must apply the three-step recapture test to determine validity of reissue claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether reissue claims broadened over patent claims recapture surrendered matter | Mostafazadeh/Smith argue recapture should be avoided due to narrowing in other respects | PTO/Director contend recapture occurred because circular pads were surrendered and reissue claims broadened | Reissue claims broadened; recapture violated § 251 |
| Whether narrowing related to bus-bar limitations avoids recapture | Retention of bus-bar narrowing limits avoids recapture | Narrowing must relate to surrendered subject matter; bus-bar limitations do not relate to the circular pads | Narrowing not tied to surrendered subject matter; does not avoid recapture |
| Whether MPEP guidance improperly governs recapture analysis | Board misapplied MPEP § 1412.02(I)(C) to recapture | MPEP provides proper framework for narrowing and overlooked aspects | MPEP guidance misapplied; recapture rule governs broadened reissue claims |
Key Cases Cited
- In re Clement, 131 F.3d 1464 (Fed. Cir. 1997) (recapture analysis three-step framework)
- North American Container, Inc. v. Plastipack Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005) (narrowing must relate to surrendered subject matter)
- Pannu v. Storz Instruments, Inc., 258 F.3d 1366 (Fed. Cir. 2001) (narrowing must relate to surrendered subject matter; shape limitations scrutinized)
- Mentor Corp. v. Coloplast, Inc., 998 F.2d 992 (Fed. Cir. 1993) (recapture analysis principles)