The McDonald case at the CAFC

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 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 subsequently 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. 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 assignee.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 (...) Mr. McDonald contends that the Board erred in rejecting 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. 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 violate 35 U.S.C. § 251—is a question of law, which we review de novo. In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011). The underlying factual findings are reviewed for substantial evidence. Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1370 (Fed. Cir. 2001). (...) Here, 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. Cf. J.A. 73–89, 1345–53. Notably, the reissue statute’s error requirement contemplates “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 mistake 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” 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. He cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.