On October 18, 2019, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its decision in In Re General Electric Company. The Federal Circuit held that General Electric Company”™s (“GE”) U.S. Reissue Patent Application Nos. 14/593,087 (“the ”˜087 application), 15/070,427 (the ”™427 application), and 15/080,483 (the ”™483 application) (collectively, “the reissue applications”) impermissibly recaptured subject matter surrendered during prosecution of U.S. Patent No. 7,990,705 (the ”™705 patent).
The ”™705 patent is directed to “synthetic jet enhanced convention cooling of component enclosures, which encompass a heat-generating element.” During prosecution of the ”˜705 patent”™s application, GE overcame rejections for anticipation and obviousness by adding a limitation where the synthetic jet be external, and attached, to the component enclosure (hereinafter, “the attachment limitation”). On August 1, 2013, GE filed a U.S. reissue application which was later divided into the reissue applications. The examiner rejected all proposed claims in the reissue applications due to defective reissue declarations. GE appealed the examiner”™s rejection to the Patent Trial and Appeal Board (“PTAB”). Although the PTAB reversed the examiner”™s defective reissue rejection, it alternatively rejected the reissue applications for impermissibly recapturing subject matter intentionally surrendered during prosecution of the ”˜705 patent. The PTAB denied GE”™s request for rehearing. GE timely appealed to the Federal Circuit.
On appeal, the Federal Circuit first stated that in applying the recapture rule it must determine: (1) whether and in what aspect the reissue claims are broader than the patent claims, (2) whether the broader aspects of the reissue claims relate to surrendered subject matter, and (3) whether the surrendered subject matter has crept into the reissue claim. The Federal Circuit further explained that under the third element, there is no violation of the recapture rule if the reissue claims are materially narrower than the original claims such that full or substantial recapture of surrendered subject matter is avoided. Further, the Federal Circuit noted that the recapture rule does not apply to reissue claims directed to additional inventions, embodiments, and species, which were never claimed in the original patent.
Turning to the ”™087 application, the Federal Circuit concluded that GE impermissibly attempted to recapture surrendered subject matter. Specifically, the Federal Circuit found that GE eliminated the attachment limitation which broadened the scope of the reissue claims. Further noting the attachment limitation led to allowance of the ”™705 patent, the Federal Circuit found the ”™087 application”™s claims covered subject matter surrendered during prosecution of the ”™705 patent. Lastly, despite GE”™s contention that additional limitations materially narrowed the scope of the ”™087 application”™s claims, the Federal Circuit explained such limitations did not pertain to the subject matter surrendered by omitting the attachment limitation and therefore, did not sufficiently limit the claims to avoid recapture.
With respect to the ”™427 and ”™483 applications”™ claims, GE conceded recapture of disclaimed subject matter but argued the claims covered subcombinations not originally claimed. In response, the Federal Circuit concluded the claimed subcombinations fell within the scope of the ”™705 patents claims. Accordingly, the subcombinations were not sufficient to avoid recapture.
Therefore, the Federal Circuit held the reissue applications impermissibly recaptured subject matter surrendered during prosecution of ”™705 patent. This decision is an important reminder to review the prosecution history of the original patent when drafting claims for its reissue application to avoid impermissible recapture of surrendered subject matter.