Broadening Reissue Recapture Rule Applies to Subject Matter Surrendered to Overcome § 101 Rejection
The rule prohibiting use of a broadening reissue application to recapture subject matter surrendered during prosecution applies to claim scope surrendered to overcome a § 101 patent eligibility rejection, as held by the U.S. Court of Appeals for the Federal Circuit for the first time on August 10, 2022 in In re McDonald. Stated differently, claim scope surrendered to gain allowance in response to a § 101 patent eligibility rejection is treated the same as subject matter surrendered to overcome rejections based on lack of novelty and obviousness.
A patentee may seek reissue of a patent if she erroneously claimed less than she had a right to claim in the original patent. Currently, if filed within two years of the original patent’s grant date, an application for reissue may be used to obtain broader claim scope when the original patent “is, through error, deemed wholly or partly inoperative or invalid.” 35 U.S.C. § 251. In appropriate circumstances, the patentee having claimed less than she had the right to claim might be the sort of “error” that is correctable through reissue. Use of the reissue statute has been limited in at least two important substantive ways. First, 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 her original patent application. Second, the recapture rule bars the patentee from acquiring, through reissue, claims that are of the same or of broader scope than those claims that were canceled from the original application (including canceled later-added claims) during original prosecution.
According to long-settled precedent, claim scope surrendered to gain allowance in response to a § 102 rejection (lack of novelty) or a § 103 rejection (lack of nonobviousness) cannot be recaptured through broadening reissue. In In re McDonald,[1] a case of first impression, the U.S. Court of Appeals for the Federal Circuit (CAFC) held that the recapture rule also prohibits use of a broadening reissue application to recapture subject matter surrendered during prosecution in order to overcome a § 101 patent eligibility rejection. Stated differently, claim scope surrendered to gain allowance in response to a § 101 patent eligibility rejection is treated the same as subject matter surrendered to overcome rejections based on lack of novelty and obviousness; neither may be recaptured by a patentee through reissue.
During original prosecution of a patent application relating to displaying computer-generated search results, the inventor amended his claims by adding a “processor” limitation to certain claims to overcome a § 101 rejection. A subsequent continuation application was allowed and granted. The granted claims included the processor limitation. Within two years of grant, McDonald then filed a reissue application seeking to broaden the claims of the continuation patent by deleting the same processor limitation that he had previously added by amendment to successfully overcome the examiner’s § 101 patent eligibility rejection. Ignoring the essential facts of the original prosecution history, McDonald stated that the processor limitation was unnecessary to the patentability and operability of the relevant claims. Whether necessary to operability is a matter of fact; there is no reasonable question or doubt, however, that the processor limitation was necessary to patentability as its addition by amendment was the basis for the examiner’s withdrawal of a § 101 patent eligibility rejection.
The CAFC summarized the three-step recapture rule analysis as follows: (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. Calling the facts of the case “simple,” the CAFC concluded, “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 Court also noted that McDonald’s addition of the processor limitation was not the result of inadvertence or mistake, stating: “He cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.”
The CAFC had little trouble disposing of McDonald’s argument that the recapture rule does not apply to subject matter surrendered to overcome a § 101 rejection. While the issue had never before been decided, the Court found that the public’s reliance interest on a patent’s public record necessarily must apply to subject matter surrendered under § 101. “The common thread through our prior decisions remains whether there is an intentional surrender of claim scope,” it explained. Mr. McDonald did not articulate any persuasive policy considerations that might justify disparate application of the recapture rule for § 101 rejections, on the one hand, and § 102 and § 103 rejections, on the other, and the Court could not find any, either.
In what can only be called a bold patent prosecution strategy, Mr. McDonald sought to broaden claims through reissue in exactly the same way that he had narrowed them in order to gain their allowance. The CAFC has now made it clear that the strategy is doomed to failure should any other patentee be tempted to try it again.
