Upholding a decision of the Patent Trial & Appeal Board (Board), the United States Court of Appeals for the Federal Circuit ruled, for the first time, that the rule prohibiting the recovery of the object surrendered during the lawsuit applies to surrendered subject matter to overcome a § 101 patent denial of eligibility. In the case of McDonald’sCase No. 21-1697 (Fed. Cir. Aug. 10, 2022) (Newman, Stoll, CunninghamNOT A WORD.)

During the prosecution of a parent patent application relating to the display of search results, inventor John McDonald added a “processor” limitation to certain claims to overcome a rejection under Section 101. McDonald then filed a continuation application, which was eventually granted. McDonald then filed for reissue seeking to expand the continuation patent claims by removing all of the originally added “processor” claim language. With the reissue application, he included a statement that the processor language was not necessary for the patentability and operability of the relevant claims. The Examiner dismissed the claims as obvious, and McDonald appealed. On appeal, the Board upheld the obviousness rejection and also dismissed the applications for reissue as being based on a defective statement devoid of correctable error. The Commission found that McDonald’s was making an impermissible attempt to recover the surrendered item. McDonald’s appealed.

To exercise de novo review, the Federal Circuit first recounted more than a century of case law relating to the reissue and recovery of patents. The Court explained that a patent can be reissued if the inventor wrongly claimed less than he was entitled to claim in the original patent, but the rule of recovery prevents a holder from recovering what was was abandoned during the chase. The Court then turned to its three-step clawback analysis in which it considers the following:

  1. Whether, and in what respect, reissue claims are broader than patent claims
  2. If broader, if those broader aspects of the reissue claim relate to the subject matter waived
  3. If so, whether the renounced object crept into the request for reissue.

Applying this test, the Court concluded that McDonald was seeking to broaden its claims and that the renounced subject matter had crept into those broadened claims. The Court also ruled that McDonald’s failed the “error” requirement of the reissue statute, finding that his actions were deliberate rather than inadvertent or mistaken.

The Federal Circuit then addressed McDonald’s arguments that the salvage rule does not apply to subject matter turned over to overcome a Section 101 rejection. rejections of prior art under Sections 102 and 103, but concluded that the public interest in relying on the public record of a patent must also apply to subject matter conveyed under the 101. The Court also reiterated that it “considers an entire patent family litigation history when applying both the rule against salvage and the estoppel of the patent family. prosecution history. The Court thus upheld the Commission’s decision prohibiting McDonald’s from recovering items previously surrendered in lawsuits.

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