Federal Circuit Upholds Texas Court Invalidity Judgment

Applying the reissue-recapture rule of § 251, the U. S. Court of Appeals for the Federal Circuit has agreed with the Texas district court of the northern, which held certain claims of a reissue patent were invalid because they sought to recapture subject matter surrendered during prosecution of the original patent application. North Am. Container, Inc. v. Plastipak Packaging, Inc., Case Nos. 04-1306, -1307 (Fed. Cir. July 14, 2005) (Lourie, J.).

North American Container sued Plastipak Packaging and other manufacturers and distributors of blow-molded plastic bottles in the Northern District of Texas for infringing its reissued patent.

The reissued patent issued from a series of continuation applications. During prosecution of the originally filed application, claims were rejected as obvious over prior art, which the patentee distinguished by pointing out that one disclosed a slightly concave base and the other a base "clearly concave in its entirety." The district court held this