Federal Circuit Snubs Applicant’s Attempt to ‘Recapture’ Ineligible Subject Matter via Reissue

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the Patent Trial and Appeal Board (PTAB) correctly rejected a patent applicant’s reissue claims as “impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution.”

The opinion, authored by Judge Cunningham, explained that John Bradley McDonald, who is named as the inventor on U.S. Patent No. 8,572,111, amended claims 1-9 and 19-21 following an examiner’s rejection of them as patent ineligible, since they were not tied to a processor for conducting the claimed searches. McDonald added “a processor” to certain claim limitations in order to meet the requirement for tying the methods described by the patent to a particular machine and the examiner ultimately withdrew the Section 101 rejection. That patent issued as U.S. Patent No. 8,280,901. The ‘111 patent was a continuation application filed while the ‘901 patent was still pending and included claims with the processor limitation. Then, in 2015, McDonald filed a reissue application seeking to broaden the claims of the ‘111 patent, specifically by deleting the references to a particular processor. In his declaration attached to the reissue application, McDonald said:

“After reviewing the specification and the issued claims, Applicant states that there is at least one error in the original patent by reason of the patentee claiming less than he had the right to claimin United States Patent No. 8,572,111.

Applicant found that independent claims 1 and 29 include elements that the Applicant believes to be unnecessary to the patentability and operability of the claimed inventions and are thus unnecessarily narrowing. In particular, the recitation of “using a processor executing” and “using the processor executing” in claim 1 and “using a processor executing” in claim 29 are unnecessary to the patentability and operability to the inventions of claims 1 and 29.”

The examiner rejected the claims as obvious and McDonald appealed to the PTAB, which affirmed the obviousness rejections and also entered two new grounds of rejection: 1) the Board argued that the reissue claims were “based on a defective re-issue declaration lacking an error correctable by reissue”; and 2) said that claims 1–7, 10, 12–14, and 29–38 were “impermissibly attempting to re-capture subject matter that the patentee intentionally surrendered during prosecution to overcome a § 101 patent eligibility rejection.” McDonald’s subsequent request for rehearing was denied and he appealed to the CAFC.

The CAFC agreed with the Board, noting that the reissue option is reserved for cases in which a patentee “erroneously claimed less than she had a right to claim in the original patent.” In subsequent rulings throughout the years, specific circumstances warranting reissue have been codified, and the Federal Circuit has stated that the reissue statute “was not enacted as a panacea for all patent prosecution problems, nor as a grant to the patentee of a second opportunity to prosecute de novo his original application.” With respect to the “recapture rule,” analysis, citing In re Youman, the court said it 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. Applying these factors to the case at hand, the CAFC said “the facts are simple”:

“By first adding the ‘processor’ limitations during prosecution of the original claims, then removing the exact terms ‘using a processor executing’ and ‘using the processor executing,’ Mr. McDonald seeks to reclaim a broader claim scope related to the surrendered subject matter that has now crept back into the reissue claim.”

The reissue statute makes reference to “inadvertence or mistake,” but McDonald here “made no mistake,” said the court. Since he deliberately amended the claims to overcome the Section 101 rejection by inserting the “processor” claims initially, “[h]e cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.”

McDonald’s attempts to limit the recapture rule to only Section 102 or 103 rejections also fell flat with the court. “Although we previously addressed cases centered on prior art rejections, this does not mean that the recapture rule is limited to that context,” said the opinion.

Ultimately, because McDonald deliberately added the “processor” limitations during prosecution of the original claims “the recapture rule does not permit him to now remove those limitations to broaden his claim.”

The CAFC also affirmed the PTAB’s ruling that the statement of error in the Reissue Declaration related to an error that was uncorrectable by reissue and therefore found the claims to be based on a defective inventor reissue declaration. The court explained:

“The error pinpointed in the Inventor Reissue Declaration—the existence of the allegedly unnecessary ‘processor’ limitations—is uncorrectable by reissue because doing so would violate the recapture rule….. This purported error cannot be the basis on which the Board permits recapture of the proposed claims.”

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Author billperry