Holding:

In In re: John Bradley McDonald, LLC, No. 2021-1697 (Fed. Cir. Aug. 10, 2022), the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed a decision by the Patent Trial and Appeal Board (“the Board”) rejecting the reissue claims of U.S. Patent No. 8,752,111 (“the ’111 patent”). The Federal Circuit agreed that the reissue impermissibly attempted to recapture the subject matter that the patentee intentionally surrendered during prosecution.

Background:

In 2008, a patent application directed to methods and systems related to the display of primary and secondary search results in response to search queries was filed. Id. at *2. Mr. John Bradley McDonald was the named inventor and Masterfile Corporation was named as the assignee. Id. The first nine claims of the original application did not recite a “processor” for conducting the claimed searches, and the examiner rejected those claims as directed to patent-ineligible subject matter under 35 U.S.C. §101. Id.

To overcome the rejection, Mr. McDonald amended the claims, adding the term “processor” to certain claims, arguing that the term “processor” imposed meaningful limits on the scope of claims 1 and 19. Id. The Examiner withdrew the rejection and the patent issued as U.S. patent No. 8,280,901 (“the ’901 patent”). Id. at *3.

While the application leading to the ’901 patent was pending, Mr. McDonald filed a continuation patent, which issued as the ’111 patent. Id. The claims in the ’111 patent included the “processor” limitations that were added in the ’901 patent application in order to overcome the §101 rejection. Id.

In 2015, Mr. McDonald filed a reissue seeking to broaden the claims of the ’111 patent, specifically amending claim 1 of the ’111 patent to, inter alia, remove the “processor limitations.” Id. at *5. In the declaration Mr. McDonald submitted with the reissue application, Mr. McDonald stated that he believed that the “processor” limitations were unnecessary to patentability and operability. Id. It was the inclusion of those “processor” limitations that was the error on which the reissue application was based. Id.

The Examiner rejected claims 1-7, 10, 12-16, and 18-38 as obvious. Id.

Board:

On appeal, the Board affirmed the obviousness rejection of claims 35-38 and entered two new grounds of rejection. Id. The Board’s first new ground of rejection was on a defective reissue declaration lacking an error correctable by reissue. Id. at *6. Second, the Board rejected the claims for impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution to overcome a §101 rejection. Id.

Legal Standard:

Under 35 U.S.C. §251, a patent may be reissued when it “is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid.” Within the penumbra of the reissue statute, the recapture rule forecloses granting reissue claims that attempt to “recapture” claimed subject matter that was surrendered during prosecution to obtain the original claims. Id. at *7. However, the patentee is free to obtain claims narrower in scope than the canceled claims in a reissue.

Federal Circuit:

The Court applied a three-part recapture rule analysis to determine whether the claims of the ’111 patent violate the reissue statute. Id. at *9. In this test, the Court considers: 1) whether and in what aspect the reissue claims are broader than the patent claims; 2) if broader, whether those broader aspects of the reissue claim relate to the surrendered subject matter and 3) if so, whether the surrendered subject matter has crept into the reissue claim. Id.

Applying the test to the facts at hand:

  1. Without the “processor” limitations the reissue claims are broader than the issued patent claims;
  2. The broader aspects (the lack of “processor” limitations) relate to the surrendered subject matter because the processor limitations were the exact limitations added to overcome a §101 rejection; and
  3. The surrendered subject matter (no processor limitations) is in the reissue claims.

Id. at *10.

The Court stated that Mr. McDonald made no mistake and that “deliberate withdrawal or amendment of claims to obtain a patent cannot be said to involve the inadvertence or mistake contemplated by 35 U.S.C. §251[.]”. Id. The Court held that after arguing that the addition of the processor limitations provided grounds for patentability, Mr. McDonald, “cannot now use the reissue application as a Trojan Horse to recapture that which he deliberately gave up.” Id. The Court noted that it is not limited to review only of the prosecution history for the patent corrected by reissue but can extend the analysis to the patent family. Id. The Court affirmed the recapture ruling of the Board upholding the rejection of the reissue application claims. Id. at *13.

Regarding Mr. McDonald’s contention that the Board erred by rejecting the reissue claims as based on a defective inventor reissue declaration, since the Court held that the claims in the reissue violated the recapture rule, the Court held that the “error” identified in the declaration cannot be the basis on which the Board permits recapture of the proposed claims. Id.. The Court also affirmed the Board with regards to this ground of rejection. Id. at *14.

Takeaways:

Reissue is a useful tool when there are errors that a patentee may have missed while an application was pending. However, while this seems like a simple case, it’s important to remember that once subject matter is surrendered, it cannot be recaptured.

Notice that the recapture was applied to a broadening reissue application. The ’111 patent issued Oct. 29, 2013. The reissue application was filed in 2015, within the permissible two years to file a broadening reissue application. But the recapture rule was still applied because broadening is only allowed to “recapture matter ‘dedicated to the public’ through error.” Subject matter surrendered during prosecution is subject to the recapture rule.

It is also noteworthy that the recapture rule was applied in the context of an amendment made to overcome a § 101 rejection. The Federal Circuit firmly rejected Mr. McDonald’s argument that reissue recapture only applied to amendments made to overcome prior art rejections. The key is whether there is an intentional surrender of claim scope.