Mentor Corp. v. Coloplast Inc.
998 F.2d 992 (1993)
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Rule of Law:
Under 35 U.S.C. § 251, a patentee cannot reclaim, through the reissue process, subject matter that was deliberately surrendered during the original patent prosecution in order to overcome a prior art rejection. This principle, known as the recapture rule, prevents a patentee from regaining protection for claim scope that was intentionally conceded to secure the patent.
Facts:
- Mentor Corporation developed a male condom catheter where a pressure-sensitive adhesive on the outer surface transferred to the inner surface upon unrolling.
- During the original patent application process, Mentor faced rejections from the patent examiner based on prior art.
- To overcome these rejections and secure the patent, Mentor amended its claims to explicitly add the limitation that the adhesive is 'transferred' from the outer surface to the inner surface as the catheter is unrolled.
- The patent was granted with this 'transfer' limitation.
- A competitor, Coloplast, Inc., began selling a catheter where the adhesive was applied directly to the inner surface, a design that did not involve any 'transfer' of adhesive.
- After its original patent issued, Mentor filed for a reissue, claiming its attorney had made an 'error' by failing to appreciate the commercial feasibility of a catheter without the adhesive transfer feature.
- Mentor added new, broader claims (claims 6-9) to the reissue application that omitted the 'transfer' limitation, thereby covering devices like Coloplast's.
- The U.S. Patent and Trademark Office granted the reissue patent, including both the original claims (1-4) and the new, broader claims (6-9).
Procedural Posture:
- Mentor sued Coloplast in the U.S. District Court for the Middle District of Florida for infringement of its original patent.
- While the suit was pending, Mentor's patent was reissued; Coloplast then filed a separate suit for a declaratory judgment of invalidity and noninfringement of the reissued patent.
- The district court consolidated the two cases.
- A jury trial resulted in a verdict for Mentor, finding that Coloplast willfully infringed all claims of the reissued patent and that the patent was not invalid.
- The district court entered judgment based on the jury's verdict.
- Coloplast filed a motion for judgment as a matter of law.
- The district court granted the motion as to willfulness but denied it in all other respects, upholding the findings of infringement and validity.
- Coloplast (as appellant) appealed the judgment on validity and infringement to the U.S. Court of Appeals for the Federal Circuit, and Mentor (as cross-appellant) appealed the judgment on willfulness.
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Issue:
Does the deliberate cancellation or amendment of a claim to overcome a prior art rejection during the original patent prosecution constitute 'error' under 35 U.S.C. § 251, thereby permitting the patentee to recapture the surrendered subject matter through broadened reissue claims?
Opinions:
Majority - Lourie, Circuit Judge
No. A deliberate decision to surrender specific subject matter in order to overcome prior art is not the type of 'error' that can be corrected by reissue under 35 U.S.C. § 251. The court reasoned that the reissue statute is not intended to give patentees a second opportunity to prosecute their original application or to correct strategic decisions that are later regretted in light of marketplace developments. The court applied the 'recapture rule,' which bars a patentee from acquiring, through reissue, claims that are of the same or broader scope than those that were deliberately cancelled or amended during the original prosecution. Mentor's amendment adding the 'transfer' limitation was a deliberate act to distinguish its invention from the prior art and obtain the patent. Therefore, attempting to remove that very limitation in reissue to cover a competitor's product is an impermissible recapture of surrendered subject matter, rendering the broadened reissue claims (6-9) invalid. Furthermore, the court found no infringement of the original claims (1-4) because Coloplast's device, as a matter of law, did not have the 'transfer' feature required by those claims.
Analysis:
This case provides a classic and forceful application of the recapture rule, clarifying the limits of the patent reissue process. The decision reinforces the public notice function of a patent's prosecution history, establishing that competitors are entitled to rely on the scope of subject matter that a patentee deliberately surrenders to obtain a patent. It solidifies the principle that strategic prosecution decisions, even if they prove to be commercially disadvantageous later, do not constitute correctable 'error' under § 251. This holding prevents patentees from using reissue as a tool to retroactively broaden their claims to ensnare competitors who designed products to fall outside the scope of the original, narrowed patent claims.
