In re Shahram Mostafazadeh And Joseph O. Smith.

• Decision Date: 03 May 2011
• Docket Number: No. 2010–1260.,2010–1260.
• Citation: 643 F.3d 1353,98 U.S.P.Q.2d 1639
• Parties: In re Shahram MOSTAFAZADEH and Joseph O. Smith.
• Court: U.S. Court of Appeals — Federal Circuit

643 F.3d 1353

98 U.S.P.Q.2d 1639

In re Shahram MOSTAFAZADEH and Joseph O. Smith.

No. 2010–1260.

United States Court of Appeals, Federal Circuit.

May 3, 2011.

Steve D. Beyer, Beyer Law Group LLP, of Cupertino, CA, argued for appellants. With him on the brief was Edward Van Gieson.Janet A. Gongola, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for the Director of the United States Patent and Trademark Office. With her on the brief were Raymond T. Chen, Solicitor, and Frances M. Lynch, Associate Solicitor.Before DYK, FRIEDMAN, and PROST, Circuit Judges.DYK, Circuit Judge.

Shahram Mostafazadeh and Joseph O. Smith (collectively, “applicants”) appeal from a decision of the United States Patent and Trademark Office, Board of Patent Appeals and Interferences (“Board”). The Board affirmed the examiner's rejection of claims 11–23 in the applicants' reissue patent application. Ex Parte Mostafazadeh, No.2009–004238, 2009 WL 2712148 (B.P.A.I. Aug. 27, 2009) [hereinafter Board Decision ]. Because the reissue application impermissibly attempted to recapture subject matter surrendered during prosecution of the original patent application, we affirm.

Background

U.S. Patent Number 6,034,423 (“the '423 patent”), which issued in 2000, is generally directed to lead frame based semiconductor packaging. This type of semiconductor packaging supports and protects the integrated circuit module (“chip”), while providing electrical pathways between the chip and external devices. The '423 patent describes two embodiments, the pin-type package and the bottom-surface-mount package. Both embodiments include a chip (also known as a die), which is mounted on a metal lead frame and encapsulated by a ceramic or plastic casing. Within the lead frame, the chip is supported by a die attach pad and connected to a pair of bus bars, which are used to facilitate electrical connections to external devices.

In the pin-type embodiment, shown in Figure 1 below, the protective casing [130] covers the top, sides, and bottom surfaces of the lead frame [220]. The lead frame electrically connects the chip [110] to external devices through a number of metal leads [122] that extend outside the casing. The portions of the leads that extend outside the casing are typically bent downward to form pins [140]. These pins are used to connect the package to external devices.

Image 1 (2.63" X 3.44") Available for Offline Print

In the bottom-surface-mount embodiment, shown in Figure 2 below, the protective casing [160] covers only the top and side surfaces of the lead frame [220], leaving the bottom surface [170] exposed. In this embodiment, electrical connections to external devices are made through solder balls [150] on the bottom surface of the lead frame. The exposed bottom surface of the lead frame contains several attachment pads [126], to which the solder balls are attached.

Image 2 (2.44" X 3.55") Available for Offline Print

As originally filed, the claims encompassed both the pin-type and bottom-surface-mount embodiments. All of the originally filed claims were rejected as either anticipated or obvious because the prior art disclosed the pin-type embodiment encompassed by the claims.¹ To overcome this rejection, claims 1 and 9 (the only independent claims) were amended to add the requirement of “circular attachment pads.” ² The applicants made no assertion that attachment pads as such were novel. Rather, the assertion was that a circular attachment pad was novel. In the remarks accompanying the amendment, the applicants argued that “neither the circular pads ... nor their attendant benefits [were] disclosed or suggested by [the prior art].” J.A. 308. The ' 423 patent issued with the amended claim set.

In 2001, the applicants filed an application to reissue the '423 patent. This application included twelve new claims. In the reissue declaration, the applicants alleged that the original claims were partially inoperative because the circular-attachment-pad limitation was “unduly limiting in the context of claims directed at the bus bar feature.” J.A. 106–07. Though the reissue claims retained the requirement of “an attachment pad,” the circular shape requirement was omitted.³ The examiner rejected the reissue claims under 35 U.S.C. § 251 as being an improper recapture of subject matter surrendered during prosecution of the ' 423 patent. The examiner noted that the circular-attachment-pad limitation, which was added during prosecution of the ' 423 patent, had been “argued to be both critical to the invention and distinguishing over the prior art.” J.A. 111–12.

The applicants appealed to the Board, which affirmed the examiner's rejection of the reissue claims. The Board concluded that the reissue claims impermissibly recaptured subject matter surrendered during the prosecution because the reissue claims were broadened with respect to the patented claims by eliminating the requirement that the attachment pads be circular, and the reissue claims were not materially narrowed in other respects so as to avoid the recapture rule. Board Decision, at 12, 16.

The applicants timely appealed. This court has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

Discussion

I

Under the reissue statute, a patent holder may seek reissue of an existing patent. See 35 U.S.C. § 251. The statute provides that:

Whenever [the] patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall ... reissue the patent for the invention disclosed in the original patent.... No new matter shall be introduced into the application for reissue.

Id. It is well established, however, that a patentee may not “regain [ ] through reissue the subject matter that he surrendered in an effort to obtain allowance of the original claims.” In re Clement, 131 F.3d 1464, 1468 (Fed.Cir.1997); see also Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995 (Fed.Cir.1993). Under this rule against recapture, “claims that are broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution are impermissible.” Clement, 131 F.3d at 1468 (internal citation and quotation marks omitted). “Whether the claims of a reissue patent violate 35 U.S.C. § 251, and thus are invalid, is a question of law, which we review de novo.” N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed.Cir.2005).

Application of the recapture rule is a three step process. Clement, 131 F.3d at 1468; see also N. Am. Container, 415 F.3d at 1349; Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371 (Fed.Cir.2001). The first step is to “determine whether and in what ‘aspect’ the reissue claims are broader than the patent claims.” Clement, 131 F.3d at 1468. “[A] reissue claim that deletes a limitation or element from the patent claims is broader” with respect to the modified limitation. Id. Next, the court must “determine whether the broader aspects of the reissue claims relate to surrendered subject matter.” Id. at 1468–69. “To determine whether an applicant surrendered particular subject matter, we look to the prosecution history for arguments and changes to the claims made in an effort to overcome a prior art rejection.” Id. at 1469.

Here there is no dispute regarding the first and second steps of the recapture analysis. Both parties agree that the reissue claims are broader than the patented claims and that the broader aspects relate to the surrendered subject matter (i.e., the circular-attachment-pad limitation). Thus, only the third step of the recapture analysis is at issue. In this final step, the court must “determine whether the surrendered subject matter has crept into the reissue claim.” Id. In discussing this third step, it is important to distinguish among the original claims (i.e., the claims before the surrender), the patented claims (i.e., the claims allowed after surrender), and the reissue claims. Violation of the rule against recapture may be avoided under this final step of the analysis if the reissue claims “materially narrow” the claims relative to the original claims such that full or substantial recapture of the subject matter surrendered during prosecution is avoided. N. Am. Container, 415 F.3d at 1349; see also

Pannu, 258 F.3d at 1371; Clement, 131 F.3d at 1470.

To avoid violation of the rule against recapture in this way, the narrowing must relate to the subject matter surrendered during the original prosecution (i.e., the applicant cannot recapture the full scope of what was surrendered). See N. Am. Container, 415 F.3d at 1350; Pannu, 258 F.3d at 1372; Clement, 131 F.3d at 1471. For example, in North American Container, the original claims were directed to a one-piece, blow-molded plastic bottle. 415 F.3d at 1338. During prosecution of the original claims, the claims were amended by adding a limitation requiring that the inner walls be “generally convex.” Id. at 1340. This amendment was designed to overcome a prior art patent which had “slightly concave” inner walls. Id. On reissue, the applicant sought to broaden the patented claims by omitting the “generally convex” limitation, but also narrowed them relative to the original claim scope by requiring a specific relationship between the diameter of the inner walls and the overall diameter of the bottle. Id. at 1341–42. We held that the reissue claims violated the recapture rule because the alleged narrowing did not relate to the surrendered subject matter (i.e., the generally convex inner wall limitation added during prosecution). Id. at 1350.

Similarly, in Pannu, the original “application disclosed a round lens called an ‘optic’ that focuses light on the retina, and two or more elements called ‘haptics' that...