Greenliant Systems, Inc. v. Xicor LLC

A patentee may enlarge the scope of his original claim only if by error he claimed less than he had a right to claim in the original patent.

Opinion (Dyk): Xicor LLC, (Xicor) appealed a final judgment in favor of Greenliant Systems, Inc. (Greenliant) that held Xicor’s RE#370 patent invalid with respect to claims 12 and 13. RE#370 was a patent reissue of Xicor’s #585 patent and was held to be invalid because of the rule against recapture. Xicor’s reissue attempt of #585 included claims 12 and 13, which were originally surrendered and excluded from the #585 patent because they did not impart structural limitations and could not be used to distinguish the #585 patent from prior art. The rule against recapture essentially holds that reissue claims are invalid if they are broadened to include subject matter that was surrendered during prosecution of the original patent. In examining whether an objective person would conclude the purpose of Xicor’s surrender was to distinguish itself from prior art, the Court examined the binding arguments Xicor made in the prosecution history of the #585 patent and determined Xicor did indeed surrender the relevant subject matter in order to obtain the #585 patent. Based on the rule of recapture, the Court AFFIRMED the lower court holding that claims 12 and 13 of the RE#370 patent were invalid.