Anticipate This!™ | Patent and Trademark Law Blog

Medtronic, Inc. v. Guidant Corporation, et al.

Posted in Opinion Commentary by Jake Ward on October 25, 2006

Unmistakable assertions made in support of patentability can give rise to a surrender for purposes of the recapture rule. 

(Fed. Cir. 2006, 05-1515)

Medtronic alleged that Guidant’s Reissue Pat. No. 38,119 (the RE119 patent) was invalid for reason of recapturing surrendered subject matter.  On appeal from the district court (D. Del) judgement that RE119 was not invalid, the CAFC affirmed.

The technology at issue relates to a method and apparatus for treating ventricular asynchrony, a condition in which a person has a defect in his or her heart valve that causes the heart ventricles to contract at different times.  In essence, the invention was a bi-ventricular pacer that continually senses the activity of both the left and right ventricles, and when activity is sensed in either ventricle the device immediately electrically paces the other or both ventricles.

In amending the original claims upon reissue, Guidant had asserted that it had claimed less than it had a right to and that the claims indavertently did not include two particular embodiments (unconditional embodiment and only one sensing electrode embodiment).  Medtronic argued that both embodiments were recaptured improperly because they were surrendered by amendment and/or argument in the original prosecution.  

Reissue proceedings cannot be used to obtain subject matter that could not have been included in the original patent.  The “recapture rule” prevents a patentee from regaining, through reissue,  subject matter that was surrendered during prosecution of  the original patent in an effort to obtain allowance of original claims.  When a surrender of subject matter is considered,  the courts look to the prosecution history for arguments and changes to the claim made in an effort to overcome  a rejection.  “Unmistakable assertions made to the Patent Office in support of patentability can give rise to a surrender for purposes of the recapture rule.”

In it’s analysis, the CAFC determined that the application as originally filed did include the unconditional embodiment, but that the Examiner’s amendment adding the embodiment was not prompted by a rejection.  Also,  Guidant did not unmistakeably surrender the unconditional embodiment by argument.  With respect to the “only one sensing electrode” embodiment, the CAFC agreed that the application as originally filed did not include the embodiment (i.e.the claims could not be recaptured) and that there was no unmistakable assertion in support of patentability that invalidates the reissue claims drawn to the embodiment.  Thus, the holding of the district court was affirmed. 

In dissent, Judge Dyk states that the characterization of the language changes as “minor wording changes” on its face does not demonstrate a concern with patentability.  However,  he asserts that the amendments were not, in fact, minor wording changes, and that in light of the prosecution history they were plainly directed to patentability.  Accordingly, Judge Dyk would find that the recapture of the unconditional embodiment was improper.

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