LOURIE, Circuit Judge.
This is an appeal and cross-appeal from the April 7, 1992 judgment of the United States District Court for the Middle District of Florida, Mentor Corp. v. Coloplast, Inc., Case Nos. 89-954-Civ-T-22A, 90-528-Civ-T-22A (M.D.Fla.1992). Following a March 1992 jury verdict, judgment was entered against Coloplast, Inc., holding, inter alia, that all the original and reissued claims of Mentor Corporation's U.S. Patent Re. 33,206 were willfully infringed, that the '206 patent was not invalid, and that Coloplast was liable for $250,000 in damages. The district court subsequently granted Coloplast's motion for judgment as a matter of law that willfulness was not shown, and denied its motion in all other respects. Coloplast appeals on the issues of validity and infringement. Mentor cross-appeals on the issue of willfulness. We affirm-in-part, reverse-in-part, and vacate-in-part.
In July 1989, Mentor sued Coloplast for infringement of U.S. Patent 4,475,910, entitled "Male Condom Catheter Having Adhesive on Rolled Portion." While the lawsuit was pending, it was reissued as the '206 patent and Coloplast filed a separate suit for a declaration of invalidity, unenforceability, and noninfringement of that patent. Mentor amended its complaint in the original action to allege infringement of the '206 patent and the two cases were consolidated.
The claimed invention relates to a condom catheter which is used on male patients suffering from incontinence. Claims 1-4 of the '206 patent recite a catheter having a pressure sensitive adhesive on a non-stick (release) layer located on the outer surface of a condom sheath prior to it being rolled up, such that on rolling the sheath outwardly, the adhesive on the outer surface comes into contact with and sticks to the inner surface. When unrolled, the adhesive which was initially applied to the release layer on the outer surface is thereby transferred to the inner surface. Claim 1, from which claims 2-4 depend, reads:
Claims 6-9, which were added during reissue, do not recite the transfer of adhesive from the outer to the inner surface of the catheter. They read as follows:
Coloplast sells the Coloplast Self Sealing Urosheath, which is made by applying adhesive directly to the inner surface, the outer surface being coated with a non-stick, release layer. Use of the Coloplast device does not involve the transfer of adhesive from the outer to the inner surface. Coloplast admitted that its device was covered by broadened reissue claims 6-9, but asserted that it had acquired intervening rights and, in any event, that the claims were invalid.
The district court entered judgment according to the jury's answers to special interrogatories, finding, inter alia, that Coloplast infringed claims 1-4 of the '206 patent by the sale of the Coloplast Urosheath, that Coloplast had willfully infringed the '206 patent, that Mentor's broadened reissue claims 6-9 did not recapture any subject matter deliberately cancelled by Mentor, and that Coloplast had not acquired intervening rights with respect to claims 6-9. Following Coloplast's post-trial motion for judgment as a matter of law, the court upheld the jury's finding of infringement, but set aside the finding of willfulness.
On appeal of a judgment entered on a verdict after denial of a motion for judgment as a matter of law under Fed.R.Civ.P. 50(b), Coloplast must show
Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1513, 220 USPQ 929, 936 (Fed.Cir.), cert. denied, 469 U.S. 871, 105 S.Ct. 220, 83 L.Ed.2d 150 (1984).
Coloplast argues that claims 6-9 of the reissue patent are invalid because they are not based on "error" within the meaning of 35 U.S.C. § 251 (1988). Coloplast argues that Mentor deliberately and intentionally amended its claims in response to a prior art rejection and that such conduct is not reissuable error. Thus, it asserts, the court erred as a matter of law. We agree.
Whether the statutory requirement of "error" has been met is an issue of law which we review de novo. This legal conclusion is based on underlying factual inquiries which are reviewed for substantial evidence. See Ball Corp. v. United States, 729 F.2d 1429, 1439, 221 USPQ 289, 297 (Fed.Cir.1984) ("On the basis of the facts before us and the reasons given for the cancellation of the claims from the original application, we cannot find, as a matter of law, that [the patentee] is barred from securing reissue....").
Section 251 provides in pertinent part:
In re Willingham, 282 F.2d 353, 357, 127 USPQ 211, 215 (CCPA 1960).
If a patentee tries to recapture what he or she previously surrendered in order to obtain allowance of original patent claims, that "deliberate withdrawal or amendment ... cannot be said to involve the inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an error of the kind which will justify the granting of a reissue patent which includes the matter withdrawn." Haliczer v. United States, 356 F.2d 541, 545, 148 USPQ 565, 569 (Ct.Cl.1966). "The recapture rule bars the patentee from acquiring, through reissue, claims that are of the same or of broader scope than those claims that were cancelled from the original application." Ball Corp., 729 F.2d at 1436, 221 USPQ at 295 (citations omitted). The recapture rule does not apply where there is no evidence that amendment of the originally filed claims was in any sense an admission that the scope of that claim was not in fact patentable, Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed.Cir.1984), but that is not the situation here.
During prosecution of the original patent application, the examiner rejected claim 1 as unpatentable over U.S. Patent 4,187,851 to Hauser in view of U.S. Patent 2,389,831 to Welsh and U.S. Patent 3,403,682 to McDonell. According to the examiner, Hauser lacked the positioning of an adhesive means between the rolls, which was taught by Welsh and McDonell. Mentor responded by replacing claim 1, which did not require "transfer" of adhesive from an outer layer to an inner layer, with a new claim 7, which read in part as follows:
The claims were again rejected under 35 U.S.C. § 103 as unpatentable over McDonell in view of Welsh. The examiner stated that McDonell disclosed a male catheter with a sheath having an outer surface with adhesive and a release layer, and that Welsh showed a sheath with adhesive, which when unrolled was transferred from the outer surface to the inner surface. In response, Mentor further amended claim 7 to recite that as the sheath member is
(Emphasis added.) Mentor argued that "none of the references relied upon actually showed the transfer of adhesive from the outer surface to the inner surface as the sheath is rolled up and then unrolled." Mentor
Within two years of issuance, Mentor filed a reissue application accompanied by an attorney declaration, stating that Mentor claimed less than it had a right to claim because the claims of the '910 patent did not "read literally upon male external catheters manufactured using a process in which the adhesive is applied to the inner latex surface of the sheath at the time of manufacture, before the device was rolled." The declaration further stated that "[t]he error arose because [the attorney] assumed that the manufacture of male external catheters by applying the adhesive to the inner latex surface of the catheter was too impractical to be commercially feasible...." Mentor thus added new claims lacking the requirement of transfer of adhesive from the outer to the inner layer. The examiner rejected the claims as obvious over McDonell in view of Welsh. After Mentor submitted detailed information on commercial success, the examiner allowed the claims and the patent was reissued with original claims 1-4 and new claims 6-9.
Coloplast correctly argues that reissue claim 6, which does not include the adhesive transfer limitation, impermissibly recaptures what Mentor deliberately surrendered in the original prosecution. Specifically, the reissue claims do not contain the limitation that, during rolling and unrolling, the adhesive be transferred from the outer to the inner surface of the catheter.
Error under the reissue statute does not include a deliberate decision to surrender specific subject matter in order to overcome prior art, a decision which in light of subsequent developments in the marketplace might be regretted. It is precisely because the patentee amended his claims to overcome prior art that a member of the public is entitled to occupy the space abandoned by the patent applicant. Thus, the reissue statute cannot be construed in such a way that competitors, properly relying on prosecution history, become patent infringers when they do so. In this case, Mentor narrowed its claims for the purpose of obtaining allowance in the original prosecution and it is now precluded from recapturing what it earlier conceded.
Mentor argues that the reissue claims do not recapture subject matter surrendered during the original prosecution. Mentor specifically alleges that recapture is avoided because newly-added reissue claims 6-9 are materially narrower in some respects, albeit broader in others.
Reissue claims that are broader in certain respects and narrower in others may avoid the effect of the recapture rule. If a reissue claim is broader in a way that does not attempt to reclaim what was surrendered earlier, the recapture rule may not apply. However, in this case, the reissue claims are broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution. Mentor thus attempted to reclaim what it earlier gave up. Moreover, the added limitations do not narrow the claims in any material respect compared with their broadening.
The limitation in claim 6 that the catheter material be "flexible" did not materially narrow the claims, which already recited that the material be "resilient." Likewise, the limitation that the catheter be rolled outward to form a "single" roll did not materially limit the claims; the catheter can only be rolled and applied from a single end to form a single roll when the other end is connected to a urine collection means. Further, the addition of the words "thereon," referring to the location of the adhesive release layer on the outer surface prior to unrolling, and "only," referring to the adhering of the adhesive to the inner surface after unrolling, did not materially narrow the claims.
Additionally, claims 7-9, which depend from claim 6, do not avoid recapture because they do not add any limitations, material in relation to the impermissible broadening, that distinguish them over claim 6, which we
Thus, since none of reissue claims 6-9 meets the legal requirements for reissue, the court erred in denying the motion for judgment of invalidity as a matter of law. We therefore reverse that part of the court's judgment finding claims 6-9 not invalid. At this stage of the proceedings, we need not reach the issue of infringement of the reissue claims in light of our conclusion regarding their invalidity. We thus vacate the holding on infringement of claims 6-9.
Coloplast also argues that it did not infringe claims 1-4 of the Mentor patent as a matter of law. We agree. Neither party disputes the structure of the Coloplast device or how it is used. The parties only dispute the proper scope of the claims. Claim construction is an issue of law which we review de novo. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578, 6 USPQ2d 1557, 1559 (Fed.Cir.1988). Mentor argues that claims 1-4 are product-by-process claims and that, under Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 18 USPQ2d 1001 (Fed.Cir.1991), the process limitations do not prevent the claims from encompassing an identical product made by a different process. Mentor's argument, however, is inapplicable to the present case. The claims in issue here are not in fact product-by-process claims; product-by-process claims recite how a product is made, not how it is used. The only process aspect of the present claims relates to how the product is used, and that is an essential aspect of the claims.
Claims 1-4 recite a catheter in which the adhesive is transferred from the outside of the catheter to the inside upon rolling and unrolling. Neither party disputes that Coloplast's device excludes the transfer of adhesive from the outer to inner surface. Thus, as a matter of law, Coloplast's device cannot infringe those claims, and no reasonable juror could have found otherwise. The court therefore erred in denying Coloplast's motion for judgment of noninfringement as a matter of law.
Because of our disposition on the issues of infringement and validity, we do not address Mentor's cross-appeal on willfulness. We affirm the judgment in all other respects.
We reverse the district court's decision denying the motion for judgment as a matter of law concerning noninfringement of claims 1-4 and invalidity of claims 6-9. We vacate the court's judgment with respect to infringement of claims 6-9. We affirm the judgment in all other respects.
Costs to Coloplast.