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

Practices: Intellectual Property, Intellectual Property Litigation, Intellectual Property Transactions, Patent Strategy

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.”

New York-based IP litigation partner Larry Rogers obtained this significant victory.

In an interview, Rogers told Law360 "the decision should come as welcome news to those patent owners who are seeking to reissue their patents to obtain claims of intermediate scope, because of an error made during the original prosecution that inadvertently overly narrowed a claim."
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