Federal Circuit Ruling Clarifies Recapture Rule and Marks Victory for Rovi Corp.

On May 8, the Federal Circuit in In re Youman clarified the law of recapture in ruling in favor of Ropes & Gray LLP’s client, Rovi Corp., by vacating a decision of the Board of Patent Appeals and Interferences (BPAI) regarding reissue claims.

The court’s decision held that the BPAI had improperly affirmed a Patent and Trademark Office decision that rejected reissue claims sought for an important Rovi patent. The BPAI had ruled that “any” broadening of a patent claim with respect to a limitation that had been added during prosecution to avoid the prior art, so as to produce a reissue claim of an intermediate scope, was improper under the recapture rule.

Rejecting the BPAI’s essentially per se rule against intermediate-scope reissue claims, the Federal Circuit held that ”if the patentee on reissue modifies a limitation that had been added during the original prosecution to avoid prior art, such that the limitation as modified is broader than the patented claim yet still materially narrows the reissue relative to the original claim before the limitation was added, the recapture rule does not bar reissue.”