Patent Law | Expert Legal Commentary

June 11, 2012

In re Staats: Federal Circuit Refuses to Adopt Same Subject Matter Requirement for Reissue Applications

In re Staats

By Tom Zuber and Jeff Zuber of Zuber Lawler & Del Duca

In re Staats: Federal Circuit Refuses to Adopt Same Subject Matter Requirement for Reissue Applications

The Federal Circuit recently rejected the premise that the claims contained in subsequent patent reissue applications must relate back to the claims originally implicated by the first reissue application filed within the two-year statutory limit. In In re Staats, 671 F.3d 1350 (Fed. Cir. 2012), the Court held that a same subject-matter requirement was not supported by case law and allowed Staats’ timely-filed reissue application to go forward, even though it dealt with claims not originally implicated.

Background

In April, 1996, Staats filed for a patent with the USPTO regarding its isochronous data transfer technology.  This technology is novel because it allows more efficient use of a computer’s CPU while also allowing isochronous data transfer.  The application involved two embodiments – the first detailed a process that allowed the CPU to switch to other tasks when there was no isochronous data transfer.  The first embodiment used a “linked list of buffers” in order to accomplish this.  In prior art, a CPU could not perform other tasks, even when there was no isochronous data transfer.  The second embodiment described data transfer directly between a sender and receiver node, thus bypassing the CPU.  However, each of the claims in the patent referred to the first embodiment which recited a “linked list of buffers.”  The patent issued in August, 1999 (“’600 patent”).  Id. at 1351-52.

Within the two-year period for a broadening reissue application, Staats timely filed its first broadening reissue application.  This application added new claims and specifically recited “a linked list of buffers.”  The first reissue patent was issued in October, 2004.  Id. at 1352.

While the first broadening reissue application was pending, Staats filed a second broadening reissue application in May, 2004.  Similar to the first reissue application, the second application addressed errors related to the first embodiment.  The second reissue patent was issued in August, 2007. Id.

While the second broadening reissue was pending, Staats filed a third broadening reissue application in August, 2006 as a continuation of the second reissue application.  During prosecution, Staats added broadened claims 12-32, which were directed toward the second embodiment described in the ‘600 patent. Id. at 1352-53.

The PTO rejected Staats’ third reissue application, arguing that the new broadened claims were “directed to an invention that was independent and distinct” from the original patent application or the first broadening reissue application.  Thus, the PTO argued that Staats could not now “broaden the patented 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 1353.

Court Rejects Related-Claims Requirement for Subsequent Reissue Applications

On appeal to the Federal Circuit, the issue before the Court was whether 35 U.S.C. § 251 allowed “a continuing reissue application to add broadened claims after section 251’s two year limit where the broadened claims are unrelated to the broadened claims filed within the two year limit.”  Id.

The Court rejected the PTO’s argument that the first broadening reissue cannot serve as a placeholder for any later application.  The PTO interpreted § 251 to demand that the public be given adequate notice within two years of what the patentee intends to broaden. Id. at 1354.  Thus, if the patentee does not declare its intention to broaden certain claims within the two-year period, it cannot later do so.  Under this interpretation, Staats’ failure to signal its intent to broaden claims regarding the second embodiment within the original two-year period foreclosed its opportunity to do so later.

The Court found authority in Doll, where the court in that case concluded that “section 251’s two-year time limit applied to the filing date only of the first broadening reissue application,” and thus the two-year time limit only applied to Staats’ first broadening reissue application, which was timely.  Id. at 1354-55.

The PTO tried to distinguish Doll by noting in that case, the subject-matter of Doll’s broadening applications was related to the subject matter originally identified and broadened within the two-year window.  Id. at 1355.  In comparison, the instant case was distinct because Staats’ third application was trying to broaden subject matter in the second embodiment, which was distinct from the subject matter in the original broadening application related to the first embodiment.  Id.

However, the Court noted that case law made no distinction between subject matter of the broadened claims but did note timing issues.  Id.  The Court noted that Doll has been subsequently interpreted to illustrate that “after a broadening reissue application has been filed with the two year statutory period, an applicant is not barred from making further broadening changes after the two year period in the course of the prosecution of the reissue application.”  Id.  The Court noted that each subsequent continuation application will relate back only if each successive application was filed while its parent application was still pending. Id.

On the issue of subject matter, the Court called the PTO’s related-subject approach “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.

Thus, the Court held that because Staats filed its first broadening application within the statutory two-year limit, it satisfied the Doll analysis and reversed the Board’s rejection of the broadened claims.  Id. at 1356.

Concurrence Upholds Holding on Broader Grounds

Judge O’Malley concurred with the majority’s holding, but felt that the majority’s main reliance on Doll was too narrow and that the statutory language, history, and rules all upheld the majority’s holding.

The concurrence first noted that “nothing on the face of § 251 restricts the nature of any later-filed continuing reissue applications or ties the substance of such continuations to the broadened claims specified in the initial application.”  Id. at 1356.  He confirmed this interpretation by finding nothing contrary in the legislative history.  Id.

Next, the concurrence found that the PTO’s own rules and regulations sided with the majority.  Specifically, the concurrence cited the PTO’s Manual of Patent Examining Procedure that “if intent to broaden is indicated in a patent reissue application within the two years, a broadened claim can be presented in a continuing reissue application after the two year period…even though the broadened claim presented after the two years is different than the broadened claim presented within the two years.” Id. at 1357.  The concurrence noted that the PTO’s rules and regulations are also consistent with the Federal Circuit’s own case law on the issue in In re Graff and In re FotlandId.

Thus, the concurrence found that the PTO’s arguments were inconsistent with the statutory language and further that the PTO’s policy arguments were “overstated” and insufficient to change current law.  Id.

Conclusion

Staats signifies that the Court is not introducing any additional subject matter requirements for broadening reissue applications and that the two-year statutory period refers only to the first reissue application.  Inventors in patent prosecution should contact experienced patent counsel to see how Staats may affect your ability to broaden claims.

About the Authors

Tom Zuber is a Partner of Zuber Lawler & Del Duca, focusing on intellectual property protection and exploitation.

Jeff Zuber is a Partner of Zuber Lawler & Del Duca, focusing on intellectual property litigation and arbitration.

Image Credit: ©iStockphoto.com/PashaIgnatov

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