Since the present reissue statute was enacted as part of the 1952 Patent Act, the Patent Office has granted almost eight million utility patents and less than twenty-five thousand reissue patents.  Nevertheless, reissue practice, while arcane, is a useful tool for a patentee to correct patents that claim too little (within 2 years from grant) or too much (at any time during the term of the patent) or that are defective for other reasons.  But besides the two-year limitation on broadening reissue applications, there are limits to what can be changed under the reissue statute, the most significant of these being the recapture rule, as the Federal Circuit held properly prevented General Electric Co. from reissuing U.S. Patent No. 7,990,705 in In re General Electric Co.

The Patent Trial and Appeal Board upheld rejection of three applications stemming from reissue of the '705 patent, which was "directed to synthetic jet enhanced convection cooling of component enclosures, which encompass a heat-generating element" and "describes using a synthetic jet assembly to direct jet fluid toward or onto the external surface of such enclosures."  As set forth in the opinion, the '705 patent issued with three independent claims:

1.  A component enclosure comprising:
    one or more sidewalls defining a volume configured to substantially surround a heat generating component positioned within said volume; and
    a synthetic jet assembly positioned adjacent at least one of the sidewalls, said synthetic jet assembly including at least one synthetic jet ejector comprising a jet port, said jet port aligned at least one of perpendicularly, parallelly, and obliquely with a surface of said at least one sidewall, said synthetic jet assembly is configured to direct a jet of fluid through said port at least one of substantially parallel to said surface, perpendicularly onto said surface, and obliquely toward said surface.

9.  A method of increasing cooling of an enclosure, said method comprising positioning a synthetic jet assembly adjacent at least one of a plurality of side- walls of the enclosure, the synthetic jet assembly including at least one synthetic jet ejector including a jet port, the jet port being aligned at least one of perpendicularly, parallelly, and obliquely with a surface of the at least one sidewall, the synthetic jet assembly being configured to direct a jet of fluid through the jet port at least one of substantially parallel to the surface, perpendicularly onto the surface, and obliquely toward the surface.

17.  An electronic component system comprising:
    a component enclosure comprising a plurality of sidewalls defining a volume;
    a heat generating component positioned within the volume; and
    a synthetic jet assembly positioned adjacent at least one of the plurality of sidewalls, said synthetic jet assembly including at least one synthetic jet ejector comprising a jet port, said jet port aligned at least one of perpendicularly, parallelly, and obliquely with a surface of said at least one sidewall, said synthetic jet assembly is con- figured to direct a jet of fluid through said port at least one of substantially parallel to said surface, perpendicularly onto said surface, and obliquely toward said surface.

GE filed a reissue application that, when faced with a restriction requirement from the Examiner, became the three applications on appeal in this case (Nos. 14/593,087, 15/070,427, and 15/070,483).  "The '087 application claims the component enclosure/jet assembly combination while the '427 and '483 applications claim the jet assembly subcombination," according to the opinion.

The PTAB found all three applications had claims that violated the recapture rule, which specifies that "[a]n inventor may not . . . recapture through reissue subject matter that was surrendered to obtain allowance of the issued claims," as set forth in In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011); see In re Willingham, 282 F.2d 353, 357 (CCPA 1960); Haliczer v. United States, 356 F.2d 541, 545 (Ct. Cl. 1966).  The grounds for rejecting the pending claims of all three applications was"

The Board found (1) that the reissue claims were broader than the issued claims because the reissue claims can read on a jet assembly unattached to a sidewall whereas the '705 patent's claims cannot; (2) that the broadened aspect of the reissue claims relates to surrendered subject matter, i.e., an unattached jet assembly; and (3) that the surrendered subject matter had crept into the reissue claims because the attachment-related limitations added during prosecution were entirely absent from the proposed reissue claims.

The Federal Circuit affirmed in a per curiam opinion from a panel comprised of Judges Moore, Reyna, and Chen.  The opinion sets forth the analytical framework for applying the rule:  first, "we determine whether and in what aspect the reissue claims are broader than the patent claims," In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012).  Second, we "determine whether the broader aspects of the reissue claims relate to surrendered subject matter," citing In re Clement, 131 F.3d 1464, 1468–69 (Fed. Cir. 1997).  Third, we "determine whether the surrendered subject matter has crept into the reissue claim."  Id. at 1469.  "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."  Mostafazadeh, 643 F.3d at 1353.  Put another way, "[t]he narrowing must . . . relate to the surrendered subject matter."  Id. at 1359; N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1350 (Fed. Cir. 2005).  The exception to the recapture rule is that the rule does not apply to "overlooked" elements, that were "never claimed and thus surrendered," citing In re Youman, 679 F.3d at 1347.

Reviewing how the PTAB applied the rule to the claims in the three divisional reissue applications, the panel held that the Board had correctly applied the rule to the pending claims of the '087 application because these claims were broader than the claims of the '705 patent and the '705 patent claims had been limited during prosecution to embodiments where the synthetic jet "is formed integrally with a surface of at least one of the sidewalls and external to said volume," and "that the jet of fluid flows external to said volume" (limitations also contained in '705 patent claims 7 and 13, according to a footnote in the opinion).  The panel held that "elimination of the attachment limitation expanded the scope of the claims to cover unattached jet assemblies [that] were surrendered during prosecution."

In additional support for their conclusion, the panel noted that during prosecution (of the original application), the applicant was compelled to add language reciting attachment to a side wall to overcome prior art, because the Examiner was not persuaded to patentability by amendments that merely added limitations related to positioning of the synthetic jet.  The Federal Circuit held on this record from the prosecution history that the Board was correct in determining that the surrendered subject matter was an unattached jet assembly.

The panel also rejected GE's arguments that other aspects of the amended claims narrowed their scope, saying that "[a]ny narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter and therefore insufficient to avoid recapture," citing Mostafazadeh, 643 F.3d at 1358.  And the opinion also rejected GE's "overlooked aspect" arguments on the grounds that "[e]ach purportedly narrowing limitation identified by General Electric was within the scope of at least one original claim of the '705 patent and therefore, cannot be said to be an 'overlooked aspect' [of the claims]."

Finally the panel similarly rejected the "overlooked aspects" argument with regard to the '427 and '483 divisional applications, on the basis that these particular embodiments were within the scope of the original claims.

Reissue applications can be valuable tools to obtain claims of appropriate scope (particularly in conjunction with inter partes review, where amendments are much more difficult to come by).  But as this decision illustrates, it is equally important to keep in mind during prosecution the scope that is being relinquished and, should broader scope be necessary or advantageous to keep a continuation or divisional application pending.

In re General Electric Co. (Fed. Cir. 2019)
Nonprecedential disposition
Panel: Circuit Judges Moore, Reyna, and Chen
Per curiam opinion