The key issue before the US Court of Appeals for the Federal Circuit in In re Youman was whether the Board of Patent Appeals and Interferences (BPAI) properly applied the recapture rule in affirming the examiner's rejection of certain claims in the applicants' reissue patent application.

In this case, the patent applicants, Roger Youman and Marney Morris, invented an electronic television guide system allowing users to access and navigate television program information. Using the invention, a user can:

The examiner rejected the applicants' original claim as obvious in light of the prior art. To avoid the prior art, the applicants:

The examiner then issued a notice of allowance concluding that the means of selecting characters by cycling forward, backward, up and down through a list of alphanumeric characters was not obvious in light of the prior art. Thereafter, the application issued as US Patent Number 5,629,733 ('733 Patent).

In 1999, within two years of the '733 Patent's issue date, the applicants filed a reissue patent application, adding new claims 24 to 55. The applicants stated in the accompanying declaration that the '733 Patent was partially inoperative because it claimed less than the applicants had a right to claim. Following a non-final rejection, the applicants amended claim 24 to require the remote control to have non-alphanumeric keys that can be used to search for a program title by "changing" characters using the non-alphanumeric keys. The examiner finally rejected claims 24 to 44, under Section 251 of the Patent Act, because they improperly recaptured subject matter that the applicants surrendered in the '733 Patent application.

The applicants appealed to the BPAI, which affirmed the examiner's rejection. The BPAI determined that:

The applicants appealed the BPAI's decision to the Federal Circuit.

In its May 8, 2012 opinion, the Federal Circuit vacated the BPAI's decision and remanded. The Federal Circuit held that the BPAI did not properly apply the recapture rule's three-step analysis to the applicants' reissue claims. This analysis requires a determination of whether:

In vacating the BPAI decision, the Federal Circuit determined that:

Specifically, the Federal Circuit noted that the BPAI did not distinguish between instances where an applicant:

The court stated that this distinction is critical to a correct application of the third step of the recapture rule analysis, citing In re Mostafazadeh. In this case, the added "cycling" limitation was not eliminated, it was merely broadened to use the term "changing." The Federal Circuit held that this modification did not instantly implicate the recapture rule bar, as the BPAI held. Instead, the Federal Circuit held that this broadening modification must be evaluated to determine whether it materially narrows the original claim so the surrendered subject matter is not substantially or entirely recaptured.

The Federal Circuit also explained that using the original claim as a frame of reference ensures that the patentee cannot recapture what it deliberately surrendered, but allows room for error as required by the reissue statute. If instead the patented claim is used as a frame of reference to prevent claim broadening, the patentee could not broaden the claims within two years of the issue date of the original claims, as allowed by the reissue statute, when the claims were overly narrowed during prosecution because of attorney error.

Patent applicants should always carefully consider the scope of protection they may give up by any claim amendments made during prosecution of the original patent application. However, reissue patents remain available to broaden erroneously narrowed claims. The Federal Circuit's decision requiring the recapture analysis to use the original claim as the frame of reference potentially provides greater opportunity for a broadening reissue claim if the limitations included in the reissue claim materially narrow the originally filed claim rather than the patented claim.