Fed Circuit rejects ‘Trojan Horse’ patent bid
Inventor of computer search system denied option to amend patent | US Court of Appeals affirms PTAB decision.
The US Court of Appeals for the Federal Circuit has concluded that patent owners wanting to correct errors in patents that have been already issued cannot make broader claims on matters surrendered during the application process.
In a precedential decision handed down yesterday, August 10, the Federal Circuit described an attempt to recapture subject matter that the patentee intentionally surrendered during prosecution as a “Trojan horse”.
The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision to reject claims that inventor John McDonald amended his patent when trying to have it reissue, as the changes were “impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution to overcome a section 101 patent eligibility rejection”.
The patent in question, which McDonald first filed in 2008, relates to his invention of a computer search system, in which primary and secondary search results are displayed in response to search queries.
In 1879, the US Supreme Court in Leggett v Avery recognised that a patentee may seek reissue of a patent if they erroneously claimed less than they were entitled to claim in the original.
This was then 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”.
However, resistance is limited by the recapture rule, which provides that a reissue will not be granted to “recapture” claimed subject matter that was surrendered during prosecution to obtain the original claims.
Deliberate limitations
In the case of John McDonald, Circuit Judge Tiffany Cunningham said on behalf of the court that because McDonald had deliberately, rather than “erroneously or inadvertently”, added limitations during prosecution to overcome section 101 rejection, “the recapture rule does not permit him to now remove those limitations to broaden his claim”.
The judge added: “He cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.”
The court also rejected McDonald's argument that the “recapture rule leaves a unique gap” that would allow the recapture of claims surrendered in response to section 101 rejections.
“Despite being given the opportunity on multiple instances to explain what policy considerations might justify treating section 101 rejections differently than section 102 or section 103 rejections, Mr McDonald has articulated no reasons persuasive to this court,” said Cunningham.
She added: “While Mr McDonald faults section 101 case law as having ‘changed dramatically over the last 15 years’, 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 section 101 until section 101 law is considered ‘consistent’ and ‘stable’.”
Test overruled
Representing McDonald, patent attorney Alan Burnett—of law firm R. Alan Burnett—told WIPR that the opinion does not address the context of why including the limitation to “a processor” was an error, nor the full context of why the amendment was made in the first place.
“Prior to when the amendment was made, there was a ‘machine or transformation’ test requirement from the Federal Circuit (to meet section 101 statutory subject matter requirements),” he said. “This was being used almost universally by patent examiners for method claims involving software—you needed to include limitation to a machine (a processor was used in this case) or a transformation (which wasn’t applicable).”
He added that this test was overruled by the US Supreme Court case six months before the amendment was made, so the machine or transformation test was no longer the sole consideration at the time.
“The examiner more or less dictated to the prosecuting attorney that a limitation to a machine must be added to the claims, or they would not be allowed.”
“The problem with adding ‘a processor’ and subsequently ‘the processor’ is that the first and second queries are performed on multiple servers in a distributed manner (perhaps thousands of servers). Thus, some company that was practising the claims using distributed processing would not infringe the original claims.
“I followed the rules used by the patent office in the MPEP (Manual of Patent Examining Procedures) throughout prosecution of the broadening reissue application and was blindsided by a new ground of rejection by the PTAB, based on applying the recapture rule to a 101 amendment.
“This had never been done before (or at least was something the Federal Circuit had never addressed) so that is why this opinion is precedential.”
This article was updated later on August 11 to incorporate Alan Burnett's comments.
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