Reissue Validity Sustained Despite Alleged Surrender During Prosecution

There is no improper recapture in a patent reissue when neither the examiner nor the prosecuting attorney considers an embodiment claimed after reissue to be part of the original patent, a divided Federal Circuit panel concludes in Medtronic, Inc. v. Guidant Corporation, et al. (No. 05-1515; October 12, 2006).

Guidant's reissue is based on a patent resulting from an original application in which certain claims, as initially drafted, covered both “unconditional” and “conditional” pacemaker embodiments. During prosecution of the original application, one of these claims, rejected as obvious in light of certain prior art, was amended, and the prior art was distinguished, in arguments, on the basis that the amended claim did not disclose the conditional embodiment. Following a telephone interview with patent prosecution counsel, the patent examiner made additional amendments for “minor wording changes” to put the other claims “in condition for allowance,” after which the original patent issued with claims directed to only the conditional embodiment. Guidant later sought and was granted its reissue, which included claims covering the unconditional embodiment. Following a bench trial in a declaratory judgment action, Medtronic appeals from a district court judgment that Guidant's reissue is not invalid for violating the rule against recapture.

The panel majority affirms, concluding that, in this case, there was no deliberate surrender of subject matter to obtain allowance of the claims, since neither the examiner nor the prosecuting attorney considered the unconditional embodiment a part of the invention. Correspondence with both the inventor and the examiner demonstrates that the prosecuting attorney thought the claims were directed to the conditional embodiment alone, while the examiner's amendment, made to add “minor wording changes,” demonstrates that the examiner thought the claim was to the conditional embodiment alone. This is the kind of inadvertence or mistake that the reissue doctrine was meant to remedy.