In Re MCDONALD

Case: 21-1697 Document: 52 Page: 1 Filed: 08/10/2022
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JOHN BRADLEY MCDONALD,
Appellant
______________________
2021-1697
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/658,050.
______________________
Decided: August 10, 2022
______________________
ALAN BURNETT, Law Office of R. Alan Burnett,
Bellevue, WA, argued for appellant John Bradley McDon-
ald.
ROBERT MCBRIDE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Katherine K. Vidal. Also represented by
BENJAMIN T. HICKMAN, THOMAS W. KRAUSE, AMY J.
NELSON, FARHEENA YASMEEN RASHEED.
______________________
Before NEWMAN, STOLL, and CUNNINGHAM, Circuit
Judges.
CUNNINGHAM, Circuit Judge.
This appeal arises from the decision of the Patent Trial
and Appeal Board rejecting claims 1–7, 10, 12–16, and
18–38 (“the reissue claims”) of the application for reissue of
Case: 21-1697 Document: 52 Page: 2 Filed: 08/10/2022
2 IN RE: MCDONALD
U.S. Patent No. 8,572,111 (“the ’111 patent”). The Board
rejected the reissue claims as based on a defective reissue
declaration and further rejected claims 1–7, 10, 12–14, and
29–38 as impermissibly attempting to recapture subject
matter that the patentee intentionally surrendered during
prosecution. Ex parte McDonald, No. 2019-002063, 2020
WL 2990970 (P.T.A.B. May 29, 2020). The Board subse-
quently denied a request for rehearing of its May 29, 2020,
decision. J.A. 23–37. Mr. McDonald’s appeal to this court
followed. For the reasons below, we affirm.
I. BACKGROUND
In 2008, a patent application was filed for methods and
systems related to the display of primary and secondary
search results in response to search queries. J.A. 1113,
1148–53. Mr. John Bradley McDonald was named as the
inventor and Masterfile Corporation was named as the as-
signee. 1 J.A. 1113. The application’s original claims 1–9
and 19–21 did not recite a “processor” for conducting the
claimed searches. J.A. 1148–53. The examiner rejected
those claims as being directed to patent-ineligible subject
matter under 35 U.S.C. § 101. J.A. 1208.
In response, Mr. McDonald amended those claims, add-
ing a “processor” to certain claim limitations, J.A. 1345–51,
and arguing 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,” J.A. 1353. The examiner agreed and withdrew
the § 101 rejection. J.A. 1366–68. The 2008 patent
1 Throughout the prosecution history, sometimes the
patent owner rather than Mr. McDonald is listed as the ac-
tor. For ease of reference, we will refer to Mr. McDonald
throughout the opinion.
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IN RE: MCDONALD 3
application ultimately issued as U.S. Patent No. 8,280,901(“the ’901 patent”). J.A. 1601.
While the application leading to the ’901 patent was
pending, Mr. McDonald filed a continuation application,
which ultimately issued as the ’111 patent. J.A. 44–72.
The claims in the continuation application included “pro-
cessor” limitations like those added to the parent applica-
tion to overcome the § 101 patent eligibility rejection. J.A.
1636–43.
In 2015, Mr. McDonald filed a reissue application seek-
ing to broaden the claims of the ’111 patent. J.A. 114,
128–29. Specifically, 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 re-
sults [using a processor executing] by exe-
cuting the primary search query;
c) displaying a plurality of primary elec-
tronic representations representing at
least a subset of [data] search results in the
primary search result, the plurality of pri-
mary electronic representations being dis-
played in a primary search results portion
of the search and display window, wherein
each primary electronic representation
represents a single respective correspond-
ing [data item] search result in the primary
search result;
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4 IN RE: MCDONALD
d) receiving a secondary search query,
wherein the secondary search query com-
prises 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 exe-
cuting the secondary search query, wherein
at least a portion of the [data] search re-
sults in the primary search result is differ-
ent from the [data] search results in the
secondary search result, wherein the sec-
ondary 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 repre-
sentation, and (ii) a metadata similarity
search based on metadata associated with
the [data item] search result represented
by the selected primary electronic repre-
sentation; and
f) displaying a plurality of secondary elec-
tronic 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 repre-
sentation 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
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IN RE: MCDONALD 5
plurality of secondary electronic represen-
tations] are visible at the same time; and
wherein [the data in] the primary search
result is unchanged by display of the plu-
rality of secondary electronic representa-
tions [secondary search result].
J.A. 73–74 (disputed claim limitations italicized; bracket-
ing representing proposed removals in the reissue applica-
tion; and underlining representing proposed additions in
the reissue application); see also McDonald, 2020 WL
2990970, at *1–2.
Notably, the reissue application included amendments
to remove the “processor” limitations that Mr. McDonald
had previously added. J.A. 131–39, 331–39, 428–38. The
declaration attached to the reissue application explained
his amendments related to the “processor” limitations:
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 pa-
tentee 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 exe-
cuting” 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.
J.A. 128. The examiner rejected claims 1–7, 10, 12–16, and
18–38 as obvious. J.A. 602–35. Mr. McDonald appealed to
the Board.
The Board affirmed the obviousness rejection of claims
35–38 and entered two new grounds of rejection.
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6 IN RE: MCDONALD
McDonald, 2020 WL 2990970, at *9. First, the Board re-
jected the reissue claims as being based on a defective re-
issue declaration lacking an error correctable by reissue.
Id. at *9, 12–13. Second, the Board also rejected claims 1–
7, 10, 12–14, and 29–38 as impermissibly attempting to re-
capture subject matter that the patentee intentionally sur-
rendered during prosecution to overcome a § 101 patent
eligibility rejection. Id. at *9–12. Mr. McDonald filed a
request for rehearing, arguing against the Board’s applica-
tion of the recapture rule. J.A. 1024–37. The Board denied
the request. J.A. 23–37.
Mr. McDonald appealed to this court pursuant to 35
U.S.C. § 141. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
II. DISCUSSION
Mr. McDonald contends that the Board erred in reject-
ing reissue claims 1–7, 10, 12–14, and 29–38 under 35
U.S.C. § 251 as being an improper recapture of surren-
dered subject matter. Appellant’s Br. 15. He also contends
that the Board erred by rejecting all the reissue claims as
being based on an Inventor Reissue Declaration that was
defective for failing to identify an error that is correctable
through reissue. Id. We consider each of Mr. McDonald’s
arguments in turn.
Whether the recapture rule applies to a particular set
of facts—that is, whether the claims of a reissue patent vi-
olate 35 U.S.C. § 251—is a question of law, which we re-
view de novo. In re Mostafazadeh, 643 F.3d 1353, 1358
(Fed. Cir. 2011). The underlying factual findings are re-
viewed for substantial evidence. Pannu v. Storz Instru-
ments, Inc., 258 F.3d 1366, 1370 (Fed. Cir. 2001).
A. The Reissue Statute and the Recapture Rule
Over a century ago, the Supreme Court recognized that
a patentee may seek reissue of a patent if she erroneously
claimed less than she had a right to claim in the original
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IN RE: MCDONALD 7
patent. See, e.g., Leggett v. Avery, 101 U.S. 256 (1879).
Subsequently, the reissue statute was codified to delineate
the circumstances where a patent may be reissued: when
it “is, through error without any deceptive intention,
deemed wholly or partly inoperative or invalid.” 35 U.S.C.
§ 251. Stemming from the reissue statute, the recapture
rule provides that a reissue will not be granted to “recap-
ture” claimed subject matter that was surrendered during
prosecution to obtain the original claims. In the context of
pre-AIA 2 § 251, we have explained what errors can be ap-
propriately corrected through reissue and what limitations
are imposed by the recapture rule. See Greenliant Sys., Inc.
v. Xicor LLC, 692 F.3d 1261, 1267 (Fed. Cir. 2012) (“[A] pa-
tentee may surrender a patent and seek reissue enlarging
the scope of the original patent’s claims if through error
without any deceptive intent he claimed less than he had a
right to claim in the original patent and he applies for re-
issue within two years from the grant of the original pa-
tent.” (cleaned up)); Ball Corp. v. United States, 729 F.2d
1429, 1436 (Fed. Cir. 1984) (“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. On the other hand,
the patentee is free to acquire, through reissue, claims that
are narrower in scope than the canceled claims.” (emphasis
in original)).
We have further expounded upon the limits and the eq-
uitable underpinnings. The reissue statute is “based on
fundamental principles of equity and fairness.” In re
Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986). Nonetheless,
“[t]he 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
2 “AIA” refers to the Leahy-Smith America Invents
Act, Pub. L. No. 112–29, 125 Stat. 284 (2011).
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8 IN RE: MCDONALD
application.” Id. at 1582. Congress struck a balance be-
tween “the competing interest of providing a patentee with
an opportunity to correct errors of inadequate claim scope
with the public interest in finality and certainty of patent
rights, and legislated in favor of allowing the patentee to
correct its errors through broadening, if necessary.” In re
Youman, 679 F.3d 1335, 1342 (Fed. Cir. 2012).
In addressing pre-AIA § 251, we have explained that
the statute provides the public with two safeguards against
such broadening. First, “the public is on notice for two
years following the issuance of a patent that the patent can
be broadened to recapture matter ‘dedicated to the public’
through error.” Id. Analogously, “‘the recapture rule’ pre-
vents a patentee from regaining through reissue subject
matter surrendered during prosecution, thus ensuring the
ability of the public to rely on a patent’s public record.” Vec-
tra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1384 (Fed.
Cir. 1998). Second, reissue is limited to “instances where
the patentee could demonstrate an ‘error without any de-
ceptive intention.’” In re Youman, 679 F.3d at 1342; see
also MBO Lab’ys, Inc. v. Becton, Dickinson & Co., 602 F.3d
1306, 1314 (Fed. Cir. 2010) (“Without a rule against recap-
ture, an unscrupulous attorney could feign error and re-
draft claims in a reissue patent to cover a competing
product, thereafter filing an infringement suit.”); Mentor
Corp. v. Coloplast, Inc., 998 F.2d 992, 996 (Fed. Cir. 1993)
(“Error under the reissue statute does not include a delib-
erate decision to surrender specific subject matter in order
to overcome prior art, a decision which in light of subse-
quent developments in the marketplace might be regret-
ted.”).
The AIA amended § 251 to delete the phrase “without
any deceptive intention” after “error” from the revised stat-
ute. See § 20(b)(1)(B), 125 Stat. at 333–34 (effective Sept.
16, 2012). Neither party argues that this change to the
statute is material to our decision today. See Appellant’s
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IN RE: MCDONALD 9
Br. 34 n.1; Appellee’s Br. 34. The revised 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.
35 U.S.C. § 251(a).
Since the enactment of the AIA, we have addressed the
requirements of § 251 in certain cases. See, e.g., Antares
Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354,
1358–60 (Fed. Cir. 2014) (applying the requirements of
§ 251 but not reaching the question of whether the recap-
ture rule applies); Cubist Pharms., Inc. v. Hospira, Inc.,
805 F.3d 1112, 1121 (Fed. Cir. 2015) (applying the recap-
ture rule as set out in In re Youman). It is against this
backdrop that we now consider whether the recapture rule
applies to claim amendments made to overcome a § 101 pa-
tent eligibility rejection.
Under the three-step recapture rule analysis, we con-
sider: (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 sur-
rendered subject matter; and (3) if so, whether the surren-
dered subject matter has crept into the reissue claim. In re
Youman, 679 F.3d at 1343–45 (citing In re Mostafazadeh,
643 F.3d at 1360 (“The recapture rule is triggered only
where the reissue claims are broader than the patented
claims because the surrendered subject matter has been
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10 IN RE: MCDONALD
reclaimed in whole or substantial part (i.e., an added limi-
tation has been eliminated or revised).”)).
Here, the facts are simple. By first adding the “proces-
sor” limitations during prosecution of the original claims,
then removing the exact terms “using a processor execut-
ing” and “using the processor executing,” Mr. McDonald
seeks to reclaim a broader claim scope related to the sur-
rendered subject matter that has now crept back into the
reissue claim. Cf. J.A. 73–89, 1345–53.
Notably, the reissue statute’s error requirement con-
templates “inadvertence or mistake.” In re Youman, 679
F.3d at 1343. However, Mr. McDonald made no mistake.
“Deliberate withdrawal or amendment of claims to obtain
a patent cannot be said to involve the inadvertence or mis-
take contemplated by 35 U.S.C. § 251 . . . .” MBO Lab’ys,
602 F.3d at 1313 (cleaned up). Mr. McDonald deliberately
amended the claim scope during prosecution of the parent
application, explaining that the new “processor” limita-
tions 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.” J.A. 1353. He cannot now use
the reissue application as a Trojan horse to recapture that
which he deliberately gave up.
We have previously explained that “this court reviews
a patent family’s entire prosecution history when applying
both the rule against recapture and prosecution history es-
toppel.” MBO Lab’ys, 602 F.3d at 1318. “Because the rule
against recapture and prosecution history estoppel both
protect the public’s interest in relying on a patent’s prose-
cution history, we think equity requires a review of a pa-
tent family’s prosecution history to protect against
recapture in a reissue patent.” Id. We have also rejected
the erroneous theory that the recapture rule “does not con-
template surrenders made while prosecuting the original
application or any precedent divisional, continuation, or
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IN RE: MCDONALD 11
continuation-in-part applications. . . . We have never lim-
ited our review of recapture only to the prosecution history
for the patent corrected by reissue.” Id. at 1316.
The public’s reliance interest on a patent’s public rec-
ord applies not only to subject matter surrendered in light
of § 102 or § 103 rejections but also to subject matter sur-
rendered in light of § 101 rejections. Mr. McDonald focuses
on the “prior art” language of certain decisions—citing lan-
guage describing the initial amendments as made in an ef-
fort “to overcome a prior art rejection”—in an attempt to
limit the recapture rule to § 102 or § 103 rejections. Appel-
lant’s Br. 25–27. See, e.g., Medtronic, Inc. v. Guidant Corp.,
465 F.3d 1360, 1372–73 (Fed. Cir. 2006) (“[T]he deliberate
surrender of a claim to certain subject matter during the
original prosecution of the application for a patent made in
an effort to overcome a prior art rejection is not such ‘error’
as will allow the patentee to recapture that subject matter
in a reissue.” (internal quotation marks omitted)). Alt-
hough we previously addressed cases centered on prior art
rejections, this does not mean that the recapture rule is
limited to that context. See, e.g., In re Clement, 131 F.3d
1464, 1469 (Fed. Cir. 1997) (involving a prior art rejection);
In re Youman, 679 F.3d at 1343 (same); MBO Lab’ys, 602
F.3d at 1316 (“The public’s reliance interest provides a jus-
tification for the recapture rule that is independent of the
likelihood that the surrendered territory was already cov-
ered by prior art or otherwise unpatentable.” (emphasis in
original)).
Likewise, we are unpersuaded by Mr. McDonald’s cita-
tion to Cubist. Appellant’s Br. 25–27. While we held that
the recapture rule did not apply in that case involving a
§ 112 amendment because the rule “applies only if the pa-
tentee surrendered subject matter in the original prosecu-
tion in order to overcome a prior art rejection,” this
phrasing merely summarized the subject matter of the In
re Clement case. Cubist, 805 F.3d at 1121. Rather, in Cub-
ist, the outcome hinged on our determination that
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12 IN RE: MCDONALD
canceling the claim in response to the indefiniteness rejec-
tion did not constitute intentional surrender of claim scope.
Id. at 1121–22. The recapture rule is “rigid and properly
so in that it effects an express statutory limitation on
broadened reissue.” Ball Corp., 729 F.2d at 1438. The com-
mon thread through our prior decisions remains whether
there is an intentional surrender of claim scope. The well-
tailored scope of our prior decisions and the fact that many
of our prior cases involved prior art rejections do not ex-
pressly preclude the application of the recapture rule to
amendments made for other reasons.
We also disagree with Mr. McDonald’s reliance on the
Manual of Patent Examining Procedure (“MPEP”)
§ 1412.02 to argue that there was no surrender in the orig-
inal application, including the parent application, because
the amendment was not made to overcome a prior art re-
jection. Appellant’s Br. 28–34. Even as Mr. McDonald
acknowledges, “[t]he MPEP and guidelines ‘are not binding
on this court.’” Appellant’s Br. 36 (quoting In re Fisher, 421
F.3d 1365, 1372 (Fed. Cir. 2005)); see also J.A. 30–31
(Board reiterating that the “MPEP, while informative, does
not have the force of law”). Indeed, the MPEP merely sum-
marizes our underlying precedent, which refers to cases in-
volving amendments made to overcome prior art rejections
but does not expressly prohibit the recapture rule from ap-
plying to amendments made for other purposes.
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. Despite
being given the opportunity on multiple instances to ex-
plain what policy considerations might justify treating
§ 101 rejections differently than § 102 or § 103 rejections,
Mr. McDonald has articulated no reasons persuasive to
this court. See, e.g., Oral Arg. at 0:06–2:10, available at
https://oralarguments.cafc.uscourts.gov/default.aspx?fl=
21-1697_03102022.mp3. While Mr. McDonald faults § 101
case law as having “changed dramatically over the last 15
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IN RE: MCDONALD 13
years,” id. at 0:36–1:15, these changes do not justify giving
disparate treatment to various statutory provisions under
the recapture rule. It would, furthermore, be illogical and
inefficient to freeze all rules relating to § 101 until § 101
law is considered “consistent” and “stable.” Id. at 0:33,
1:19.
Accordingly, we affirm. The Board properly applied the
recapture rule to bar Mr. McDonald’s attempt to reclaim
claim scope already surrendered during prosecution. Be-
cause Mr. McDonald deliberately—not erroneously or in-
advertently—added the “processor” limitations during
prosecution of the original claims to overcome the § 101 re-
jection, the recapture rule does not permit him to now re-
move those limitations to broaden his claim.
B. The Defective Inventor Reissue Declaration
Mr. McDonald also contends that the Board erred by
rejecting the reissue claims as based on a defective inven-
tor reissue declaration. A reissue declaration must “specif-
ically identify at least one error pursuant to 35 U.S.C. § 251being relied upon as the basis for reissue.” 37 C.F.R.
§ 1.175(a). The Board found that “the statement of error in
the Reissue Declaration relates to an error that is uncor-
rectable by reissue.” McDonald, 2020 WL 2990970, at *12.
We agree with the Board. The error pinpointed in the
Inventor Reissue Declaration—the existence of the alleg-
edly unnecessary “processor” limitations—is uncorrectable
by reissue because doing so would violate the recapture
rule. Mr. McDonald’s argument on the defectiveness of the
declaration rises and falls with his argument on the viola-
tion of the recapture rule. Indeed, Mr. McDonald conceded
as much at oral argument. See Oral Arg. at 35:53–36:03
(Q: “Do you agree that the argument on the Inventor Reis-
sue Declaration rises and falls with how we rule on the
overall recapture issue?” A: “Yes, I do.”). This purported
error cannot be the basis on which the Board permits re-
capture of the proposed claims.
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14 IN RE: MCDONALD
III. CONCLUSION
The Board did not err in rejecting reissue claims 1–7,
10, 12–14, and 29–38 of the ’111 patent as violating the re-
capture rule and all the reissue claims as being premised
on a defective inventor reissue declaration. We have con-
sidered Mr. McDonald’s other arguments and find them
unpersuasive. Accordingly, we affirm.
AFFIRMED
COSTS
No costs.