In re Mostafazadeh, No. 2010-1260 (Fed. Cir. May 3, 2011) (Judges Dyk, Friedman, and Prost)
This is a case involving a reissue application for a patent directed to lead frame based semiconductor packaging. In the original prosecution of the patent, the applicant overcame anticipation and obviousness rejections by amending the claims to require a “circular attachment pad,” asserting that the circular shape was the novel element. In the reissue application, the applicant dropped the “circular” part of the “circular attachment pad” requirement of the claims. The examiner rejected the reissue claims as impermissible recapture under 35 U.S.C. § 251, and the Board of Patent Appeals and Interferences (“BPAI”) affirmed the examiner’s rejection.
At the Federal Circuit, the court affirmed the Board’s rejection but was dissatisfied with the Board’s analysis. The BPAI relied on MPEP § 1412.02, which states that a reissue claim must be rejected “[i]f surrendered subject matter . . . has been in any way broadened in a reissue application . . . .” Slip Op. at 11 (citing MPEP § 1412.02(I)(C), Rev. 7, Jul. 2008). Analyzing whether reissue claims could avoid recapture, the BPAI defined a materially narrowed limitation as one “directed to one or more overlooked aspects of the invention,” and defined “overlooked aspects” as “patentably distinct (1) inventions; (2) embodiments; or (3) species not originally claimed—not mere incidental features of the originally-claimed invention.” Id. at 12 (internal citations omitted). The court called the BPAI’s definition of “materially narrowed” “contrary to our precedent” and said the BPAI’s reliance on this section of the MPEP was “misplaced.” Slip Op. at 11, 12.
The court remarked that the recapture rule is only triggered when an applicant’s reissue claims revise or eliminate a limitation of the patented claims. The court evaluated the reissue claims under its own formulation—claims that modify but do not eliminate an added limitation “must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.” Slip op. at 13. The court noted that “attachment pads” were well known in the art, so that limitation alone did not materially narrow the scope of the recapture. The patentee pointed to other limitations that were added, but the court concluded that those narrowing limitations of the reissue claims did not relate to the circular attachment pad. The court therefore affirmed the rejection of the reissue claims.
Read the original opinion here.
Odom v. Microsoft, No. 2011-1160 (Fed. Cir. May 4, 2011) (Judges Lourie, Bryson, and Linn) (nonprecedential)
Microsoft deflected a challenge from a patent owner asserting his method patent, which covered toolbars in software applications that use dividers to hide or display tools. After Odom’s counsel withdrew, Odom moved to dismiss his claims without prejudice. The court left Microsoft’s counterclaims for non-infringement and invalidity, however, and the parties cross-moved for summary judgment. The Federal Circuit affirmed the district court’s grant of summary judgment of invalidity for obviousness, rejecting Odom’s assertion that the prior art, which disclosed manipulatable toolbars in the context of web browsers, is too different from his use of toolbars in software applications to invalidate his patent. The court described the purported advances of the Odom patent as “insignificant” and “trivial” for a person of skill in the art. Slip. Op. at 10.
On a more unusual note, Odom also alleged judicial bias and improper judicial conduct by the U.S. District Court for the District of Oregon, where the case had been transferred from the Eastern District of Texas. Odom cited as evidence the Oregon court’s rulings against him on various evidentiary and procedural motions, its allowing Odom’s counsel to withdraw and allegedly to breach attorney-client privilege, and its allegedly conducting ex parte communications with Microsoft’s counsel. Examining the record, the Federal Circuit determined that there was no basis for Odom’s claims of bias, nor was there evidence of ex parte communications between Microsoft and the court.
Read the original opinion here.