Prosecution History Limits Claims and Precludes Broader Claims Obtained in Reissue Patent

Case Name: North American Container, Inc. v. Plastipak Packaging, Inc., No. 04-1306 (Fed. Cir. 7/14/05).

The One Sentence Summary: Patent claims for plastic bottles were limited to convex shapes by prosecution history arguments, and broader claims granted in a reissue proceeding were invalid due to violation of the recapture rule.

Federal Circuit Holdings:

• The prosecution history arguments that distinguished prior art plastic bottles as "slightly concave" resulted in a limitation on the claims: "We agree with the district court’s conclusion that the applicant, through argument during the prosecution, disclaimed inner walls of the base portion having any concavity. Cognizant of the high standard required in order to show a prosecution disclaimer, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003), we conclude that that standard has been met here. To overcome an obviousness rejection, the applicant distinguished his invention from the Dechenne patent on the basis of the latter disclosing inner walls that are "slightly concave." The inescapable consequence of such an argument is that the scope of applicant’s claims cannot cover inner walls that are "slightly concave." Moreover, it logically follows, as the district court also concluded, that the scope of applicant’s claims is also limited to inner walls of the base portion with no concavity." Slip Opinion at 17.
• A term can be given different meanings in different parts of the same claim when the prosecution history requires it: "Although the same limitation, i.e., "generally convex," appearing in different parts of the same claim is typically given the same construction, the applicant’s argument during prosecution has warranted a departure from that general rule. As explained above, the "generally convex" limitation normally allows for some concave points on the walls of the base portion as long as the majority of points are convex, and, indeed that is how the court construed the limitation for the outer walls of the base portion. As we have also explained above, however, the "generally convex" limitation for the inner walls of the base portion cannot be given the same construction as the outer walls because the applicant disclaimed any concavity for the inner walls, but not the outer walls. " Slip Opinion at 18.
• "Limitations may be construed to exclude a preferred embodiment if the prosecution history compels such a result. Elekta Instruments S.A., 214 F.3d at 1308." Slip Opinion at 18-19.
• "The district court did not err in construing the term "generally" to mean a majority of points. As NAC properly recognizes, terms of approximation such as "generally" need not be construed with mathematical precision. See, e.g., Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003). We do not believe, however, that the district court’s construction imposes any "mathematical precision," as NAC asserts. In merely requiring a majority of points to be convex, the court articulated a common-sense understanding of the term confirmed by a dictionary. Moreover, we find the court’s construction more fitting to the technology at issue here than NAC’s proposed construction of "on the whole." Slip Opinion at 19.
• The district court's construction of the term "re-entrant portion" was proper in light of the usage of the term in prior art and by the applicant in the prosecution history. Slip Opinion at 19.
• The district court erred in importing a numerical limitation on thickness into the claims from a preferred embodiment. Slip Opinion at 23.
• The recapture rule prevents regaining surrendered subject matter through a reissued patent: "Under the recapture rule, a patentee is precluded "from regaining the subject matter that he surrendered in an effort to obtain allowance of the original claims." Id. at 1370-71 (citing In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997)). When that has occurred, the patent is invalid. Id. at 1368. We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. Id. at 1371 (citations omitted)." Slip Opinion at 24.
• The applicant violated the recapture rule by seeking broader claims that were not limited to convex shapes.