Last Month at the Federal Circuit
Last Month at the Federal Circuit

April 2012

Two-Year Limit for Filing Broadening Reissue Application Under 35 U.S.C. § 251 Applies Only to Filing Date of First Broadening Reissue Application

Judges:  Dyk (author), O’Malley (concurring), Reyna
[Appealed from Board]

In In re Staats, No. 10-1443 (Fed. Cir. Mar. 5, 2012), the Federal Circuit reversed and remanded the Board’s decision rejecting the claims of Erik P. Staats and Robin D. Lash’s (collectively “Staats”) reissue application as being broadened outside of the two-year limit imposed by 35 U.S.C. § 251. 

Staats filed a patent application, which issued to Staats as U.S. Patent No. 5,940,600 (“the ’600 patent”).  The ’600 patent described improvements to the management of isochronous data transfers such as the transfer of real-time video data from one component in a computer system to another component in the computer system.  The specification disclosed two embodiments: a first requiring a “linked list of buffers” corresponding to specific locations on the system’s display to implement an “interrupt” system whereby, in contrast to the prior art, isochronous data transfers did not prevent the CPU from performing other tasks; and a second in which the “linked list of buffers” was not required.  The ’600 patent claims, however, were each directed to the first embodiment.

Prior to the expiration of the two-year period imposed by § 251, Staats timely filed a first broadening reissue application relating to the first embodiment and specifically reciting a “linked list of buffers.”  A declaration was filed, stating that the broadening reissue application was for “failure to claim or to further claim subject matter disclosed in the specification pertaining to [the first embodiment].”  Slip op. at 4.  While the first broadening reissue application was pending, and outside the two-year period under § 251, Staats filed a second broadening reissue application as a continuation of the first broadening reissue application.  As with the first broadening reissue application, the second addressed errors related to the first embodiment.  While the second broadening reissue application was pending, Staats filed a third broadening reissue application as a continuation of the second.  During prosecution of the third application, Staats added broadened claims directed toward the second embodiment almost eight years after the original ’600 patent issued.

The examiner rejected the claims under § 251, finding that the new broadened claims were “not related in any way to what was covered in the original broadening reissue.”  Id. at 5.  On appeal, the Board affirmed the examiner’s rejection, holding that “Staats’s continuing reissue application could not ‘broaden patent claims beyond the statutory two-year period in a manner unrelated to the broadening aspect that was identified within the two-year period.”  Id. at 6.  Staats appealed.

The sole issue on appeal to the Federal Circuit was whether § 251 allows a continuing reissue application to add broadened claims after § 251’s two-year limit where the broadened claims are unrelated to the broadened claims filed within the two-year limit.  The PTO argued that a patentee must give the public adequate notice within two years of what the patentee intends to broaden, and that such notice is not provided when the broadened claims presented outside the two-year period are unrelated and thus unforeseeable from the subject matter identified for broadening within the two-year period.

“[W]e see no basis for limiting Doll to situations where later broadened claims are related to, or are directed to the same embodiment as in the original application.”  Slip op. at 10.

The Federal Circuit rejected the PTO’s argument, finding it inconsistent with In re Doll, 419 F.2d 925 (C.C.P.A. 1970).  Doll held that § 251’s two-year time limit applied only to the filing date of a first broadening reissue application, and not to the date that the broadened claims are first presented.  The Court also noted that subsequently filed continuation applications relate back to a previously filed application under 35 U.S.C. § 120 only if filed while the preceding parent application was still pending.

Additionally, the Federal Circuit denied the PTO’s attempt to distinguish Doll based on whether later-presented claims were related to the originally presented reissue claims.  The Court found no reason to limit Doll to related claims and that the PTO’s attempt to limit Doll in such manner was “unmanageable” because “it is difficult to distinguish one patent embodiment from another or to determine when a later claim is related to an earlier claim.”  Id. at 10.  Thus, the PTO’s proposed interpretation would result in a rule that “would be difficult to administer in a consistent and predictable way.”  Id.

Accordingly, because it was bound by Doll, the Federal Circuit reversed the Board’s rejection and remanded for further proceedings.

Judge O’Malley concurred in the judgment, but wrote separately because she did not believe that the only basis upon which to premise reversal is the existence of Doll.  Rather, she would find that “the plain language of 35 U.S.C. § 251, coupled with the legislative history, the long-standing unambiguous regulations implementing the statute, all relevant case law, and common sense, all compel reversal in this case.”  O’Malley Concurrence at 1.  Thus, “[t]o the extent the majority fail[ed] to conduct a full statutory analysis and to recognize that each step in such a proper analysis compels that result,” she “decline[d] to join the majority’s reasoning and [wrote] separately to point out the important gaps therein.”  Id. at 4.