In re Staats: Two-Year Time Limit for Reissue Applications

In In re Staats, a Federal Circuit panel including Judges Dyk, O’Malley and Reyna found that the requirement set forth in 35 U.S.C. § 251 for filing broadening reissue application within two years of patent issuance is met once a first broadening reissue application has been filed within that time period, and that subsequently-filed and broadening continuation applications based on the first broadening reissue application need not be filed within the two-year period. In reaching this decision, the Federal Circuit interpreted and affirmed a ruling made by its predessor court, the United States Court of Customs and Patent Appeals (CCPA) in In re Doll.

Staats’ original patent, U.S. Pat. No. 5,950,600 entitled “Isochronous channel having a linked list of buffers,” granted on August 17, 1999 to Apple Computer Inc. On August 17, 2001, exactly two years after the patent grant, Staats filed a first broadening reissue application with claims directed to a first disclosed embodiment pertaining to a method for handling data on an isochronous channel using a linked list of buffers to implement a CPU-based interrupt system. A first reissue patent, U.S. RE38,641, issued on October 26, 2004.

Staats filed a second broadening reissue application on May 12, 2004 as a continuation of the first broadening reissue application, which issued as U.S. RE39,763 on August 7, 2007. In addition, Staats filed a third broadening reissue application on August 11, 2006, as a continuation of the second broadening reissue application. During prosecution, Staats added broadened claims directed to a second disclosed embodiment pertaining to a method which established the isochronous channel directly between a sensor node and a receiver node, without participation by the CPU. The U.S. Patent and Trademark Office (USPTO) rejected the third application as time-barred according to 35 U.S.C. § 251, and Staats appealed to the USPTO Board of Patent Appeals and Interferences (BPAI). Aware of Doll, the BPAI nevertheless affirmed by finding that, by including claims for the first time directed to the second embodiment, the broadening sought was unforeseeable and the public notice function inherent in the two-year broadening reissue filing requirement of 35 U.S.C. § 251 had not been satisfied. Staats appealed the BPAI decision to the Federal Circuit.

On appeal, the Federal Circuit reversed the BPAI. In an opinion for the court authored by Judge Dyk, the Federal Circuit reviewed the legislative and decisional history with regard to broadening reissue applications, beginning with the Patent Act of 1870 and concluding with the Patent Act of 1952. The Federal Circuit noted that the law of broadening reissues was first developed by the Supreme Court in the 1881 decision Miller v. Brass Company, in which the Court held that the 1870 Act allowed for broadening reissues, subject to rule of laches. As to laches, the Federal Circuit cited several subsequent Supreme Court decisions finding that a delay of longer than two years should be excused only under “special circumstances.” This two-year rule was codified in 35 U.S.C. § 251 as part of the 1952 Act. In Doll, the CCPA held that the two-year time limit applied only to the filing of a first broadening reissue application.

In Staats, the USPTO urged that Doll be distinguished because the claims in dispute in the later-filed broadening reissue application there were related to the claims in the earlier-filed application, while the claims at issue in Staats were not related to claims in the earlier-filed reissue applications. As a result, the USPTO argued that the intended notice requirement of 35 U.S.C. § 251 is not met in Staats. Judge Dyk found the USPTO’s argument to be unavailing, noting that “Doll itself made no distinction between related and unrelated claims” and offering that “[if] the PTO believes we should overrule Doll, that is a matter that must be presented to the en banc court.”

In an apparent effort to discourage the en banc review, Judge O’Malley authored a concurrence in which she disagreed with the majority’s analysis seemingly relying on Doll alone. In summary, Judge O’Malley emphasized that “[the] plain language of 35 U.S.C. § 251, coupled with the legislative history, long-standing unambiguous regulations implementing the statute, all relevant case law, and common sense, compel reversal in this case.” As to the USPTO’s notice arguments, Judge O’Malley suggested that “[given] the limited life of additional claims which can be sought through the type of continuing reissue practice at issue here, the protections afforded by the intervening rights provisions in 35 U.S.C. § 252, and the countervailing implementation concerns [that are raised by requiring claim relatedness to be judged for the purposes of evaluating the applicability of the two-year requirement], the PTO’s arguments are overstated – substantially so.”

Significantly, in view of Staats, a patentee that has failed to maintain a continuation chain by filing a continuation application prior to the issuance of a patent can effectively re-establish that chain by filing a broadening reissue application within two years following the patent grant. However, unlike other continuing applications, a broadening reissue application and any continuation applications filed based on it will be subject to the intervening rights provisions of 35 U.S.C. § 252 and case law prohibitions against the recapture of canceled subject matter in an original patent.

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