## Facts

- Mentor owned a patent (reissued as U.S. Patent Re. 33,206) for a male condom catheter used for incontinent patients.
- Original claims (claims 1–4) required a pressure-sensitive adhesive to be placed on a release layer on the sheath’s outer surface before rolling, so that rolling/unrolling transferred the adhesive to the inner surface to secure the device to the skin.
- During the original prosecution, Mentor sought broader claims that did not require adhesive transfer; the examiner rejected those broader claims, and the patent issued with narrower claims.
- In a later reissue proceeding, Mentor obtained additional claims (reissue claims 6–9) that omitted the transfer limitation and broadly covered catheters with adhesive on the inner surface.
- Mentor sued Coloplast alleging infringement; while the suit was pending, Coloplast sought declaratory relief against the reissued patent, and the actions were consolidated.
- Coloplast admitted its product fell within the literal scope of reissue claims 6–9, but argued those claims were invalid for recapturing surrendered subject matter; it also denied infringing original claims 1–4.
- A jury found infringement of all asserted claims, no invalidity, willfulness, and awarded damages; the district court set aside willfulness by JMOL but otherwise left the verdict intact.

## Issues

1. Whether reissue claims 6–9 were invalid under 35 U.S.C. § 251 for impermissibly recapturing claim scope surrendered during original prosecution.
2. Whether Coloplast’s product infringed original claims 1–4, which required transfer of adhesive from the outer surface to the inner surface.
3. Whether the district court properly granted JMOL overturning the jury’s willfulness finding.

## Decision

- The Federal Circuit held reissue claims 6–9 invalid because they improperly recaptured subject matter Mentor had surrendered to obtain the original patent.
- The court held Coloplast did not infringe original claims 1–4 as a matter of law because the accused product did not meet the transfer limitation.
- The court affirmed the district court’s JMOL of no willfulness.
- The court affirmed in part, reversed in part, and vacated in part, with remand for proceedings consistent with its rulings.

## Legal Principles

- Reissue under 35 U.S.C. § 251 corrects certain errors but cannot be used to broaden claims to reclaim subject matter deliberately surrendered during original prosecution (the recapture rule).
- When an applicant narrows claims to obtain allowance, prosecution history limits later attempts—via reissue—to remove the narrowing limitation and regain the rejected scope.
- Patent infringement requires each claim limitation to be met; absence of a required limitation (here, adhesive transfer) defeats infringement as a matter of law.
- Willful infringement requires proof of culpable conduct beyond mere infringement; reasonable defenses may support JMOL against willfulness.

## Conclusion

The Federal Circuit applied the recapture rule to invalidate broadened reissue claims that omitted a prosecution-critical limitation and held the accused product did not infringe the original claims because it lacked the claimed adhesive-transfer feature, leaving no basis for enhanced damages based on willfulness.


Mentor Corp. v. Coloplast, Inc., 998 F.2d 992 (Fed. Cir. 1993)