In denying defendant's motion for summary judgment of invalidity of plaintiff's reissue patent based on the recapture rule, the court rejected defendant's argument that statements made during prior litigation concerning the original patent constituted a surrender of claims. "Acceptance of this argument would require an extension of the current law governing the recapture rule. . . . The public is entitled to rely upon the patent’s public record, as set forth in the claims, specifications, and file history to determine the patent’s scope. However, the public is not entitled to rely on any other extrinsic evidence, including trial testimony to find evidence of surrender. To hold otherwise could encourage inventors to seek out obscure statements or other evidence of surrender and would place some knowing members of the public in a more advantageous position than others who were not privy to the same evidence."
Bendix Commercial Vehicle Systems LLC, et al v. Haldex Brake Products Corp., 1-09-cv-00176 (OHND September 10, 2010, Memorandum Opinion & Order) (Nugent, J.)