This morning the Federal Circuit released a precedential opinion in a patent case appealed from the Patent Trial and Appeal Board. The Federal Circuit affirmed the Board’s decision to reject reissue claims. Here is the introduction to the opinion.

In re McDonald (Precedential)

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.