In Re Staats

United States Court of Appeals

for the Federal Circuit

__________________________

(Serial No. 11/503,541)

IN RE ERIK P. STAATS AND ROBIN D. LASH

__________________________

2010-1443

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Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

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Decided: March 5, 2012

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JOHN M. WHEALAN, of Silver Spring, Maryland, ar-

gued for appellants. Of counsel on the brief were JEFFREY

A. LAMKEN and LUCAS M. WALKER, MoloLamken LLP, of

Washington, DC, ROBERT A. HULSE, Fenwick & West,

LLP, of San Francisco, California, and RICHARD J.

LUTTON, JR., Apple Inc., of Cupertino, California.

WILLIAM LAMARCA, Associate Solicitor, United States

Patent and Trademark Office, of Alexandria, Virginia,

argued for appellee. With him on the brief were RAYMOND

T. CHEN, Solicitor, and JANET GONGOLA, Associate Solici-

tor.

__________________________

Before DYK, O’MALLEY, and REYNA, Circuit Judges.

IN RE STAATS 2

Opinion for the court filed by Circuit Judge DYK. Concur-

ring opinion filed by Circuit Judge O’MALLEY.

DYK, Circuit Judge.

Appellants Erik P. Staats and Robin D. Lash (collec-

tively “Staats”) appeal a decision of the Board of Patent

Appeals and Interferences (“Board”). The Board rejected

claims 12-32 of Staats’s reissue application as being

broadened by a reissue application outside of the two-year

time limit imposed by 35 U.S.C. § 251. See Ex parte

Staats (“Board Decision”), No. 2009-007162 (B.P.A.I. Apr.

26, 2010). We reverse and remand.

BACKGROUND

This case requires us to construe the reissue statute

and the limits it places on broadening reissues. The

statute provides for broadening reissue patents:

Whenever any patent is, through error without

any deceptive intention, deemed wholly or partly

inoperative or invalid, by reason of a defective

specification or drawing, or by reason of the pat-

entee claiming more or less than he had a right to

claim in the patent, the Director shall, on the sur-

render of such patent, . . . reissue the patent . . .

for the unexpired part of the term of the original

patent.

35 U.S.C. § 251. But it imposes a two-year time limit,

providing:

No reissued patent shall be granted enlarging the

scope of the claims of the original patent unless

applied for within two years from the grant of the

original patent.

Id. We must decide whether the Board correctly held that

a broadening reissue application filed outside of the two-

3 IN RE STAATS

year period is not timely if it is not related to an earlier

application filed within the two-year period. We hold that

the Board’s approach is contrary to our precedent.

I

On April 1, 1996, Staats filed an application for a pat-

ent titled “Isochronous Channel Having a Linked List of

Buffers” with the United States Patent and Trademark

Office (“PTO”). Based on this application, U.S. Patent

Number 5,940,600 (“’600 patent”) issued to Staats on

August 17, 1999. The ’600 patent described improve-

ments 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 prior art managed isochronous

data transfers with dedicated software drivers on a com-

puter’s central processing unit (“CPU”) that ran to the

exclusion of all other processes on the CPU. In the prior

art, the CPU would “spend all of its time servicing the

isochronous data transmissions,” even during portions of

the CPU’s computing cycles when no isochronous data

was being transferred. ’600 patent, col.2, ll.1-4. The ’600

patent described a first embodiment, which used a “linked

list of buffers” corresponding to specific locations on the

system’s display to implement an “interrupt” system. In

this first embodiment, the CPU was interrupted when it

received isochronous data, but was able to perform other

tasks during portions of computing cycles when no

isochronous data was being transferred. Thus, in contrast

to the prior art, isochronous data transfers did not pre-

vent the CPU from performing other tasks such as re-

sponding to menu-level instructions from the user or

executing commands from other applications.

The ’600 patent also disclosed a second embodiment,

which established an isochronous data channel directly

IN RE STAATS 4

between a sender node and a receiver node, not including

the CPU itself. The second embodiment included, for

example, the establishment of an isochronous channel

directly between a video camera and a Video Cassette

Recorder (“VCR”), without the channel’s passing through

the CPU. Because the isochronous data path bypassed

the CPU, the second embodiment did not require the use

of the “linked list of buffers” in order to allow the CPU to

run other tasks. Though both the first embodiment and

the second embodiment were described in the specifica-

tion, each of the claims in the ’600 patent was directed to

the first embodiment and specifically recited a “linked list

of buffers.”

Because the ’600 patent issued on August 17, 1999,

the two-year period for filing a broadening reissue appli-

cation expired on August 17, 2001. Within that window,

on August 17, 2001, Staats timely filed a first broadening

reissue application relating to the first embodiment

described in the specification. A declaration stated that

the broadening reissue application was for “failure to

claim or to further claim subject matter disclosed in the

specification pertaining to a method for handling data

transmitted on an isochronous channel using a linked list

of buffers . . . .” J.A. 10 (emphasis added). The first

reissue patent, US RE38,641 E, was issued on October 26,

2004, with each of the new claims 12-17 directed to a

process and specifically reciting “a linked list of buffers.”

J.A. 9-10.

While the first broadening reissue application was

pending, and outside the two-year period, Staats filed a

second broadening reissue application on May 12, 2004,

as a continuation of the first broadening reissue applica-

tion. Similar to the first broadening reissue application,

the second broadening reissue application only addressed

errors related to the first embodiment, that is, errors

5 IN RE STAATS

“pertaining to a method for handling data transmitted on

an isochronous channel using a linked list of buffers.” J.A.

11 (emphasis added). The second reissue patent, US RE

39,763 E, issued on August 7, 2007.

While the second broadening reissue application was

pending, but almost seven years after the original ’600

patent issued, and well outside of the two-year period,

Staats filed a third broadening reissue application on

August 11, 2006, as a continuation of the second broaden-

ing reissue application. During prosecution of the third

broadening reissue application, Staats added broadened

claims 12-32 on June 11, 2007, almost eight years after

the original grant of the ’600 patent. Claims 12-32 were

directed toward the second embodiment that was de-

scribed in the specification of the ’600 patent, but which

embodiment had not been previously claimed.

The patent examiner recognized that he was bound by

our precedent In re Doll, 419 F.2d 925 (C.C.P.A. 1970).

Doll interpreted section 251 and explicitly rejected the

PTO’s argument that “claims presented in a reissue

application filed within two years of the original patent

grant are barred by 35 U.S.C. § 251 when such claims are

not submitted until more than two years after the grant

and are broader in scope than both the original patent

claims and the broadening reissue claims originally

submitted.” Id. at 926, 928. But the examiner here

nonetheless rejected the third reissue application under

35 U.S.C. § 251 after finding that the new broadened

claims were “not related in any way to what was covered

in the original broadening reissue.” J.A. 119-20. On

appeal, the Board also recognized that it was bound by

Doll, but sustained the examiner’s rejection. The Board

found that the newly added broadening claims were in

fact “directed to an invention that [was] independent and

distinct” from that claimed in the original patent applica-

IN RE STAATS 6

tion or the first broadening reissue application. Board

Decision, slip op. at 25, 29. The Board explained that

because Staats sought “to broaden the patented claims . . .

in a manner pertaining to a different embodiment than

that specified” in the original reissue application, the

broadening now sought was “unforeseeable” from the

original reissue application, and the “public notice func-

tion of § 251” had not been met. Id. at 21. Thus, the

Board held that Staats’s continuing reissue application

could not “broaden 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 14, 29. Staats timely appealed, and we have juris-

diction pursuant to 28 U.S.C. § 1295(a)(4)(A). We review

issues of statutory construction de novo. In re Serenkin,

479 F.3d 1359, 1361 (Fed. Cir. 2007).

DISCUSSION

The parties do not dispute that the requirements of

section 251 were satisfied if the two-year requirement was

satisfied. They dispute only whether 35 U.S.C. § 251

allows a continuing reissue application to add broadened

claims after section 251’s two-year limit where the broad-

ened claims are unrelated to the broadened claims filed

within the two-year limit.

The law with respect to broadening reissues was

originally developed by the Supreme Court under the

Patent Act of 1870, which made no reference to broaden-

ing reissues. See Miller v. Brass Co., 104 U.S. 350, 353

(1881). The Patent Act of 1870 provided:

[W]henever any patent is inoperative or invalid by

reason of a defective or insufficient specification,

or by reason of the patentee claiming as his own

invention or discovery more than he had a right to

claim as new, if the error has arisen by inadver-

7 IN RE STAATS

tence, accident, or mistake, and without any

fraudulent or deceptive intention, the commis-

sioner shall, on the surrender of such patent . . .

cause a new patent for the same invention . . . to

be issued to the patentee.

Patent Act of 1870, ch. 230, § 53, 16 Stat. 198, 205-06

(1870) (emphasis added). Despite the language of the

statute referring only to narrowing reissues, the Court in

Miller held that the statute allowed for broadening reis-

sues. 104 U.S. at 354-55. At the same time, the Court

recognized a rule of laches for broadening reissue applica-

tions filed more than two years after the issuance of the

original patent. Id. at 352. The Miller Court held that

“the claim of a specific device or combination, and an

omission to claim other devices or combinations apparent

on the face of the patent, are, in law, a dedication to the

public of that which is not claimed.” Id. This dedication

to the public could not be avoided unless the patentee

proved “real inadvertence, accident, or mistake,” which

“should be done with all due diligence and speed.” Id.

Thus, for broadening reissues, “the rule of laches should

be strictly applied.” Id. at 356.

This rule was followed in subsequent Supreme Court

cases, which recognized that a delay of longer than two

years should only be excused by “special circumstances.”

Wollensak v. Reiher, 115 U.S. 96, 101 (1885); see also

Mahn v. Harwood, 112 U.S. 354, 363 (1884). When there

was “no ambiguity, and nothing to prevent the patentee

from seeing at once, on inspecting his patent, whether his

whole invention was claimed or not,” the Supreme Court

saw “no possible excuse” for delay beyond two years.

Mahn, 112 U.S. at 363; see also Elec. Gas-Lighting Co. v.

Bos. Elec. Co., 139 U.S. 481, 501-02 (1891); Ives v. Sar-

gent, 119 U.S. 652, 662 (1887).

IN RE STAATS 8

The current version of the reissue statute was enacted

in 1952 as part of an overall revision of the patent laws.

The legislative history demonstrates that the amendment

to section 251 was designed to codify prior Supreme Court

authority, and in particular, the two-year limit. In a

Senate Committee Report, Congress explained that “[a]

two year period of limitation on applying for broadened

reissues is added, codifying the present rule of decision

with a fixed period.” S. Rep. No. 82-1979, at 26 (1952),

reprinted in 1952 U.S.C.C.A.N. 2394, 2419. As one of the

drafters of the 1952 Patent Act noted, “the courts [had]

developed a rule of laches according to which a broaden-

ing reissue could not be applied for more than two years

after the grant of the original patent except under ex-

traordinary circumstances excusing the delay.” P.J.

Federico, Commentary on the New Patent Act, reprinted in

75 J. Pat. & Trademark Off. Soc’y 161, 205 (1993). 1

The PTO argues that the language of the statute, re-

quiring that the broadening reissue be “applied for within

two years,” does not suggest that the first broadening

reissue can serve as a kind of placeholder for later appli-

cations. So too, it urges that the pre-1952 Supreme Court

case law and the legislative history behind section 251

evince “one consistent theme,” that “a patentee must

promptly give the public adequate notice within two years

of what the patentee intends to broaden.” Appellee’s Br.

22. According to the PTO, such adequate notice is not

provided when the broadened claims presented outside

the two-year period are “unrelated to,” and thus “unfore-

1 Federico’s commentary, first published in 1954,

has previously been cited by this court as constituting “an

invaluable insight into the intentions of the drafters of

the Act.” Symbol Techs., Inc. v. Lemelson Med., 277 F.3d

1361, 1366 (Fed. Cir. 2002).

9 IN RE STAATS

seeable from,” the subject matter identified for broaden-

ing within two years. Id.

The problem with the PTO’s argument is that it is in-

consistent with our predecessor court’s decision in Doll.

Doll arose after the 1952 Patent Act. In Doll, the PTO

argued that the statute required “no reissue patent [] be

granted enlarging the scope of the claims of the original

patent, unless said claims are applied for within two

years of the grant of the original patent.” 419 F.2d at 927

(internal quotation marks omitted). Our predecessor

court disagreed and concluded that section 251’s two-year

time limit applied to the filing date only of the first broad-

ening reissue application. Id. at 928. Accordingly, Doll

reversed the PTO’s rejection of claims that were broader

than those originally included with the appellant’s timely

filed first broadening reissue application and were pre-

sented for the first time in an amendment filed outside of

the two-year period. Id.

The PTO argues that, while Doll is binding, it is dis-

tinguishable. The PTO urges that the broadened claims

challenged in Doll were “related to the subject matter

covered by the claims identified and broadened within the

two-year window,” and thus the public was adequately

notified of Doll’s later broadening. Appellee’s Br. 31. The

PTO argues that in contrast to Doll, the claims in dispute

here “are directed to [an] unrelated, alternative embodi-

ment that does not use a CPU or a ‘linked list of buffers’”

like the subject matter of the first embodiment covered by

the claims identified and broadened within the two-year

window. Id. Thus, according to the PTO, “the public was

not timely notified of Staats’ later broadening” in a man-

ner consistent with section 251’s public notice require-

ment. Id. at 33.

IN RE STAATS 10

The PTO’s argument is largely an argument that Doll

should be limited to its specific facts. But the “necessary

implications” of a case’s holding are “of course not limited

to the facts of that case.” Herb’s Welding, Inc. v. Gray,

470 U.S. 414, 442 (1985). Significantly, Doll itself made

no distinction between related and unrelated claims. Doll

simply held that section 251’s time limit clearly applied

only to the filing date of the first broadening reissue

application itself. 419 F.2d at 928. This court has ac-

knowledged Doll’s holding that after a broadening reissue

application has been filed within 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.” In

re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997); see also In re

Fotland, 779 F.2d 31, 34 (Fed. Cir. 1985). To be sure,

subsequently filed continuation applications relate back

to a previously filed application under 35 U.S.C. § 120

only if each successive continuation application was filed

while its parent application was still pending. See Ency-

clopedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609

F.3d 1345, 1349 (Fed. Cir. 2010). However, we see no

basis for limiting Doll to situations where later broadened

claims are related to, or are directed to the same embodi-

ment as in the original application. The PTO’s approach

is, moreover, unmanageable. Every claim must, by defini-

tion, be different in scope than the other claims of the

patent, and it is difficult to distinguish one patent em-

bodiment from another or to determine when a later claim

is related to an earlier claim. A rule requiring that the

new claims be related to the previously submitted claims,

or be directed to the same embodiment, would be difficult

to administer in a consistent and predictable way.

In short, this panel is bound by Doll. See S. Corp. v.

United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en

11 IN RE STAATS

banc) (adopting the decisions of the CCPA as binding

precedent); In re Am. Fertility Soc'y, 188 F.3d 1341, 1347

(Fed. Cir. 1999) (holding that an earlier precedential

decision is binding precedent on later panels). If the PTO

believes we should overrule Doll, that is a matter that

must be presented to the en banc court.

Here, Staats’s first broadening reissue application

was filed within section 251’s two-year limit. Under Doll,

that is sufficient to satisfy the two-year requirement. We

reverse the Board’s rejection of claims 12-32 as being filed

outside of the two-year statutory limitation and remand

for further proceedings consistent with this opinion.

REVERSED AND REMANDED

United States Court of Appeals

for the Federal Circuit

__________________________

(Serial No. 11/503,541)

IN RE ERIK P. STAATS AND ROBIN D. LASH

__________________________

2010-1443

__________________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

__________________________

O’MALLEY, Circuit Judge, concurring.

I concur in the judgment the majority reaches – the

decision of the Board of Patent Appeals and Interferences

(“the Board”) in this case cannot stand. I do not join in

the majority’s reasoning, however. To the extent the

majority opinion concludes that the only basis upon which

to premise reversal is the existence of In re Doll, 419 F.2d

925 (C.C.P.A. 1970) in this court’s repertoire of decided

cases, the opinion is inadequate. To the extent the major-

ity opinion is no more than a begrudging nod to Doll’s

precedential effect with an invitation to reconsider that

decision, the majority opinion is wrong. Indeed, it is

wrong on multiple levels.

The plain language of 35 U.S.C. § 251, coupled with

the legislative history, long-standing unambiguous regu-

lations implementing the statute, all relevant case law,

and common sense, all compel reversal in this case. Doll

IN RE STAATS 2

is but one data point in that properly structured statutory

analysis.

Section 251 permits an inventor to apply for a reis-

sued patent whenever he believes his patent is “wholly or

partly inoperative or invalid” due to defects in the specifi-

cation or in the scope of the claim language employed. 35

U.S.C. § 251. Once a reissue is sought, the same provi-

sions of Title 35 governing original patent applications –

including those provisions permitting the filing of con-

tinuations and divisional applications – are “applicable to

applications for reissue of a patent.” Id. Other than

limitations against introducing “new matter” into the

application for reissue (a restriction not at issue here), the

only other limitation on reissue practice set forth in § 251

is that the original reissue application be timely – i.e.,

filed within two years of the grant of the original patent.

Id. 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. Indeed, the United

States Patent and Trademark Office (PTO) points to no

statutory language – either in § 251 or elsewhere – to

support the Board’s ruling.

Like its text, nothing in the legislative history to § 251

indicates any desire to limit the way in which the provi-

sions of Title 35 “relating to applications for patent shall

be applicable to applications for reissue of a patent.” See

35 U.S.C. § 251. The legislative history to the Patent Act

of 1952, where section § 251 first appeared, spoke only to

the desire to codify both the fact of reissue practice and

the two year post grant time period within which such

reissue practice must be initiated. See S. Rep. No. 82-

1979, at 26 (1952), reprinted in 1952 U.S.C.C.A.N. 2394,

2419; H.R. Rep. No. 82-1928, at 26 (1952) (“A two year

period of limitation on applying for broadened reissues is

3 IN RE STAATS

added, codifying the present rule of decision with a fixed

period.”).

Consistent with § 251’s language and legislative his-

tory, all PTO governing rules and regulations have – for

decades – made clear that any timely intent to broaden

via reissue permits subsequent attempts to broaden via

continuation practice authorized under Title 35. Thus,

PTO Rule 175 requires only that “at least one error being

relied upon as the basis for reissue” be identified in the

oath accompanying a reissue application, clearly implying

that other errors may be “relied upon” even if not identi-

fied. 37 C.F.R. § 1.175(a)(1). And, the PTO’s own Manual

of Patent Examining Procedure (MPEP) repeatedly makes

clear 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.” MPEP § 1412.03 (8th ed. 8th

rev. July 2010). This is true “even though the broadened

claim presented after the two years is different than the

broadened claim presented within two years.” Id. The

PTO’s continuing public pronouncements regarding the

operation of § 251, while inconsistent with the position it

takes here, are consistent with the plain meaning of the

statute and its legislative history.

The MPEP and PTO Rule 175 are, moreover, consis-

tent with all relevant case law interpreting § 251. As the

majority notes, Doll concluded that § 251’s time limits are

applicable only to the first broadening reissue application

and do not, accordingly, bar further broadening changes

thereafter. 419 F.2d. at 928. This court has twice reaf-

firmed that reading of § 251, moreover. See In re Graff,

111 F.3d 874, 877 (Fed. Cir. 1997) (“The court in Doll

simply held that the reissue applicant, in the course of

prosecution of the reissue application, was not barred

from making further broadening changes in the claims.”);

IN RE STAATS 4

In re Fotland, 779 F.2d 31, 34 (Fed. Cir. 1985) (“In Doll

the Court of Customs and Patent Appeals held that when

a broadening reissue application was on file within the

two year period, the claims could be further broadened

after the two year period.”). As the majority opinion

makes clear, the PTO’s efforts to distinguish those cases

so as to avoid the need to comply with their holdings

stretch credulity.

In the end, the PTO ignores every step in a proper

statutory construction analysis and falls back on policy

concerns it claims allow it to ignore the face of § 251 and

to disregard both its own and this court’s pronouncements

regarding the proper operation of that governing provi-

sion. 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 countervail-

ing implementation concerns the PTO’s new standard

creates, however, the PTO’s policy arguments are over-

stated – substantially so. Even if those policy statements

were not overstated, they would be an insufficient reed

upon which to rest such a sweeping change in the law.

I agree that the Board’s decision and PTO rejection

must be reversed, and the matter remanded for further

processing of the appellant’s third reissue application. To

the extent the majority fails to conduct a full statutory

analysis and to recognize that each step in such a proper

analysis compels that result, however, I decline to join the

majority’s reasoning and write separately to point out the

important gaps therein.