776 F. Supp. 2d 1072
N.D. Cal.2011Background
- SST filed suit seeking a declaration of non-infringement and invalidity of claims 12–13 of the reissue '370 patent; Xicor counterclaimed for infringement.
- The '370 patent reissues claims 12–13 that delete the TEOS limitation found in claims 1–4 of the '585 patent.
- The dispute centers on whether claims 12–13 are invalid under the rule against recapture of surrendered subject matter.
- The '370 reissue traces to the '585 patent and the '774 patent family, with TEOS limitations prominent in the prosecution histories.
- The court applies the three-step recapture test to determine if claims 12–13 are invalid, and grants SST’s motion for summary judgment.
- The court concludes that TEOS-related subject matter was surrendered and recaptured, and that the reissue claims are not materially narrowed, making them invalid under the rule against recapture.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the reissue claims are broader than the original claims. | SST: yes, deleting TEOS makes broader. | Xicor: no broadening beyond legitimate reissue scope. | Yes; broadened by removing TEOS limitation. |
| Whether TEOS alternatives were surrendered during prosecution of related patents. | SST: surrender occurred to obtain '774 and '585 patents. | Xicor: TEOS limitations were not surrendered as to the reissue. | Yes; TEOS alternatives were surrendered in related prosecutions. |
| Whether the reissued claims were materially narrowed to avoid recapture. | SST: no material narrowing with respect to TEOS alternatives. | Xicor: some narrowing occurred but not to TEOS context. | No; not materially narrowed; recapture holds. |
Key Cases Cited
- MBO Labs. v. Becton, Dickinson & Co., 602 F.3d 1306 (Fed. Cir. 2010) (recapture limits on broadened reissues; entire patent family relevance)
- North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005) (three-step recapture test; broader vs. surrendered matter)
- In re Clement, 131 F.3d 1464 (Fed. Cir. 1997) (broadened reissue when a limitation is deleted)
- In re Marosi, 710 F.2d 799 (Fed. Cir. 1983) (evidence of unobvious differences can establish patentability over prior art)
- Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009) (product-by-process claims; interplay of process vs. product limitations)
- Kim v. ConAgra Foods, Inc., 465 F.3d 1312 (Fed. Cir. 2006) (prosecution history estoppel and public reliance concerns)