Not So Fast: Another Court Limits Use of Reissue
Barco, N.V. & Barco, Inc. v. Eizo Corp. & Eizo Inc., aff’d, Barco, N.V. & Barco, Inc. v. Eizo Corp. & Eizo Inc., Appeal No. 2017-2086 (Fed. Cir. Apr. 3, 2018) is the latest federal district court decision analyzing the rule against recapture under 35 U.S.C. § 251. The Court of Appeals for the Federal Circuit summarily affirmed the lower court’s decision under Rule 36. As patent applicants are increasingly using the reissue process to try to remove limitations relied upon to distinguish prior art during an original prosecution – in many instances to broaden claim scope to cover a competitor’s product – Barco follows a judicial trend of courts stamping down on this abuse of the reissue statute. Violation of the rule against recapture has been treated as a question of law reserved for the court as opposed to the jury. Courts analyzing the issue use a three step test: 1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims; 2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and 3) whether the reissued claims were materially narrowed in other respects to avoid the recapture rule. Pannu v. Storz Instr., 258 F.3d 1366, 1371 (Fed. Cir. 2001)....