Summary judgment of invalidity denied
Guidant Corp. et al. v. St. Jude Medical, Inc. et al., No. 04-0067-SLR, Jan. 6, 2006.
Robinson, J. Motion for summary judgment that reissued patent is invalid under “Recapture Rule” was denied.
The technology at issue involves cardiac resynchronization therapy for treatment of congestive heart failure. The recapture rule does not apply because the challenged subject matter was not surrendered. The recapture rule does not apply in the absence of evidence that an amendment or cancellation was ‘”an admission that the scope of that claim was not in fact patentable.’”
The recapture rule requires a three step process: (1) The court must determine whether and in what ‘respect’ the reissued claims will broaden the patent claim; (2) The court must determine whether the broader aspects of the reissued claim related to surrendered subject matter; and (3) The court must determine whether the reissued claims were materially narrowed in other aspects to avoid recapture. Without surrender of subject matter, there cannot be recapture of subject matter.
