In In re McDonald,1 the Federal Circuit held that the recapture rule prevented reissue claims from including features deliberately relinquished in response to a patent eligibility rejection. As a result, the accompanying reissue declaration failed to identify errors correctable by reissue.
John Bradley McDonald filed a patent application in 2008 (2008 application) related to the display of primary and secondary search results for search queries. The 2008 application’s initial claims 1–9 and 19–21 did not include a “processor” for performing the search queries. The Examiner refused the claims for reciting patent-ineligible subject matter under 35 U.S.C. § 101.
Mr. McDonald responded by adding a processor to the claims and asserting that the addition of a processor provided meaningful restrictions on the scope of claims 1 and 19 by specifying a particular machine. The Examiner was persuaded and rescinded the Section 101 rejection. The 2008 patent application subsequently issued as U.S. Patent No. 8,280,901.
While the 2008 patent application was pending, Mr. McDonald submitted a continuation that application, which later issued as U.S. Patent No. 8,572,111 (the ’111 patent). The continuation patent application claims also included “processor” language like the language added to the 2008 parent patent application to overcome the Section 101 eligibility rejection.
Mr. McDonald subsequently submitted a reissue application requesting to broaden the ’111 patent claims. Mr. McDonald amended claim 1 of the ’111 patent as follows:
1. (Amended) A computer-implemented method of displaying search results in a search and display window, the method comprising:
a) receiving a primary search query from a user;
b) determining a primary search result comprising a first plurality of search results [using a processor executing] by executing the primary search query;
c) displaying a plurality of primary electronic representations representing at least a subset of [data] search results in the primary search result, the plurality of primary electronic representations being displayed in a primary search results portion of the search and display window, wherein each primary electronic representation represents a single respective corresponding [data item] search result in the primary search result;
d) receiving a secondary search query, wherein the secondary search query comprises a user selection of one of the primary electronic representations;
e) determining a secondary search result [using the processor executing] comprising a second plurality of search results by executing the secondary search query, wherein at least a portion of the [data] search results in the primary search result is different from the [data] search results in the secondary search result, wherein the secondary search result is determined by at least one of: (i) a visual similarity search on the [data item] search result represented by the selected primary electronic representation, and (ii) a metadata similarity search based on metadata associated with the [data item] search result represented by the selected primary electronic representation; and
f) displaying a plurality of secondary electronic representations representing at least a subset of [data] the search results in the secondary search result, the plurality of secondary electronic representations being displayed in a secondary search results portion of the search and display window, wherein each secondary electronic representation represents a single respective corresponding [data item] search result in the secondary search result;
wherein when the plurality of secondary electronic representations are displayed, at least a portion of the plurality of primary electronic representations [and the plurality of secondary electronic representations] are visible at the same time; and wherein [the data in] the primary search result is unchanged by display of the plurality of secondary electronic representations [secondary search result].2
The reissue declaration described the processor amendments as follows:
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 claim in 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 of the inventions of claims 1 and 29.
The Examiner rejected claims 1–7, 10, 12–16 and 18–38 as obvious, and Mr. McDonald appealed to the Patent Trial and Appeal Board.
The Board confirmed the obviousness rejection of claims 35–38 but issued two new grounds for rejection. First, the Board refused the reissue claims for a defective reissue declaration because the error was not fixable by reissue. Second, the Board refused claims 1–7, 10, 12–14 and 29–38 as trying to recapture subject matter that was purposely surrendered previously to overcome the Section 101 patent eligibility rejection.
Mr. McDonald appealed, and the Federal Circuit affirmed. On appeal, Mr. McDonald argued that the Board should not have refused reissue claims 1–7, 10, 12–14 and 29–38 under 35 U.S.C. § 251 as being an improper recapture of surrendered subject matter, and the reissue declaration was not defective because it included an error fixable via reissue.
The Federal Circuit observed that the reissue statute enables the correction of a mistake when it “is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid.”3 However, the recapture rule specifies that a reissue application cannot “recapture” features that were relinquished to obtain allowance for the original claims to be corrected.
More specifically, the reissue statute provides:
Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for the reissue.4
The court explained that the issue to be decided was “whether the recapture rule applies to claim amendments made to overcome a § 101 patent eligibility rejection.”5 The court described the recapture rule as follows:
Under the three-step recapture rule analysis, we consider: (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.6
The court reasoned that by adding the “processor” language during prosecution of the original claims, then removing the same language for the reissue application claims, Mr. McDonald attempted to recapture broader claim language previously surrendered.7
The court acknowledged that the reissue statute’s error requirement anticipates an inadvertent mistake.8 However, the court noted, Mr. McDonald made no mistake. An intentional amendment of the claims to receive an approval is not the inadvertent error encompassed by 35 U.S.C. § 251, the court reasoned.9 According to the court:
Mr. McDonald deliberately amended the claim scope during prosecution of the parent application, explaining that the new “processor” limitations overcame the § 101 rejection by tying “the methods recited in claims 1 and 19 to a particular machine (i.e.[,] the processor),” which “impose[d] meaningful limits in the scope of claims 1 and 19.” . . . He cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.10
The court also rejected Mr. McDonald’s “erroneous” theory that the recapture rule does not extend to surrenders made while prosecuting other related applications in the patent family, such as any divisional, continuation or continuation-in-part applications.11 The court explained that the recapture rule has never been limited only to the patent corrected by reissue.12
The court reasoned that the public’s dependence on a patent’s public record includes not only subject matter relinquished in view of anticipation and obviousness rejections but also subject matter ceded as a result of a patent eligibility rejection.13
The court noted, “We reject the argument that the recapture rule leaves a unique gap that would permit the recapture of claim scope surrendered in response to § 101 rejections.”14 The court therefore held:
The Board properly applied the recapture rule to bar Mr. McDonald’s attempt to reclaim claim scope already surrendered during prosecution. Because Mr. McDonald deliberately—not erroneously or inadvertently—added the “processor” limitations during prosecution of the original claims to overcome the § 101 rejection, the recapture rule does not permit him to now remove those limitations to broaden his claim.
Accordingly, the court affirmed the Board’s rejection of reissue claims 1–7, 10, 12–14 and 29–38 of the ’111 patent for violating the recapture rule and for a defective inventor reissue declaration.
Patent applicants/owners need to be careful when prosecuting their applications. Amendments made to overcome rejections can limit the scope of any patent issuing therefrom. In addition, as shown in In re McDonald, amendments to overcome a patent eligibility rejection to procure a patent will prevent later attempts to correct any mistakes in the amendments through reissue.
Applicants/owners do have another option: maintaining the pendency by filing a continuation application with complementary/collateral patent claims. Significantly, continuation applications are not subject to the recapture rule, which is limited to reissue applications. Thus, for important inventions, maintaining the pendency of at least one continuation application can be critical in providing the patent applicant/owner with the most robust options for changing claims at a later date.
Overall, the Federal Circuit has again put patent applicants/owners on notice that positions asserted before the Patent Office to obtain allowance must be chosen strategically. Unnecessary arguments and/or claim amendments must be avoided to ensure the subsequently granted patent claims are not too narrow. The prior art should be carefully scrutinized if a pre-filing prior art search is performed or when reviewing an Office Action that cites prior art. In addition, the appropriate variety of patent claims, from broad to narrow in scope, should be submitted tactically to maximize the value of the invention and patent covering the invention.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 In re McDonald, 43 F.4th 1340, 2022 USPQ2d 745, 2022 WL 3220649 (Fed. Cir. 2022).
2 Id., 43 F.4th at 1343–44 (bracketed language to be deleted; and underlined language to be added in the reissue application).
3 35 U.S.C. § 251.
4 35 U.S.C. § 251(a).
5 In re McDonald, 43 F.4th 1340, 1346, 2022 USPQ2d 745, 2022 WL 3220649 (Fed. Cir. 2022).
6 Id., 43 F.4th at 1346 (citations omitted).
7 Id., 43 F.4th at 1347.
8 Id., 43 F.4th at 1347.
9 Id., 43 F.4th at 1347 (citing MBO Lab’ys, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1313, 94 USPQ2d 1598, 1602–03 (Fed. Cir. 2010) (cleaned up)).
10 Id., 43 F.4th at 1347 (citation omitted).
11 Id., 43 F.4th at 1347.
12 Id., 43 F.4th at 1347 (citing MBO Lab’ys, 602 F.3d at 1316).
13 Id., 43 F.4th at 1347.
14 Id., 43 F.4th at 1348.