Docket No. 2011-1514
LINN, PLAGER, DYK
August 22, 2012
Brief summary: Under the rule of recapture, a patentee is “bound by the arguments that it made before the examiner” regardless of the ultimate reasons for allowance.
Summary: Xicor appealed USDC ND CA grant of declaratory judgment for Greenliant in which Xicor’s claims were found invalid under the rule against recapture; the FC panel affirmed. Under this rule, “a patentee is precluded from regaining the subject matter that he surrendered in an effort to obtain allowance of the original claims” (MBO Labs., FC 2010; N. Am. Container, FC 2005; ). Xicor’s U.S. Pat. No. 5,977,855 relating to semiconductor devices was reissued as RE38,370. Following an obviousness rejection during prosecution of the ‘855 patent, the disputed claims were amended from device to product-by-process claims by adding a limitation describing how the silicon dioxide layer was formed (“comprising the use of tetraethylorthosilicate (abbreviated “TEOS”)). After appeal to the BPAI, which included arguments regarding the importance of TEOS to the final structure of the claimed device (Amgen, FC 2009 (if the process by which a product is made imparts “structural and functional differences” distinguishing the claimed product from the prior art, then those differences “are relevant as evidence of no anticipation” although they “are not explicitly part of the claim”)), the claims were allowed. The reissue application included new claims that omitted the “comprising the use of [TEOS]” limit, but were otherwise the same, which were allowed. In front of the DC, the parties agreed that the SJ order of another litigation that found the reissue claims invalid “applies equally in this case” (this, however, did not limit Xicor’s right to appeal). Xicor unsuccessfully argued to the FC that “the TEOS limit could not have influenced the Board’s decision to allow the claims” because “‘it is the deposition conditions—such as temperature and pressure—that determine the physical characteristics’ of the claimed tunneling oxide layer, not the reactant, such as TEOS, that is used.” However, the panel concluded that “Xicor is bound by the arguments that it made before the examiner and before the Board…[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made” (citing Springs Window Fashions LP, FC 2003 (examiner’s reasons for allowance “do not negate the effect of the applicant’s disclaimer”)). Thus, the DC decision was affirmed.