In reStaats

• Decision Date: 05 March 2012
• Docket Number: No. 2010–1443.Serial No. 11/503,541.,2010–1443.Serial No. 11/503,541.
• Citation: 101 U.S.P.Q.2d 1930,671 F.3d 1350
• Parties: In re Erik P. STAATS and Robin D. Lash.
• Court: U.S. Court of Appeals — Federal Circuit

101 U.S.P.Q.2d 1930

671 F.3d 1350

In re Erik P. STAATS and Robin D. Lash.

No. 2010–1443.Serial No. 11/503,541.

United States Court of Appeals, Federal Circuit.

March 5, 2012.

38,641, 39,763. Cited. John M. Whealan, of Silver Spring, Maryland, argued 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 Solicitor.

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

Opinion for the court filed by Circuit Judge DYK. Concurring opinion filed by Circuit Judge O'MALLEY.

DYK, Circuit Judge.

Appellants Erik P. Staats and Robin D. Lash (collectively “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, 2010 WL 1725728 (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 patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender 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-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 patent 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 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 prior art managed isochronous data transfers with dedicated software drivers on a computer'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 prevent the CPU from performing other tasks such as responding 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 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 specification, 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 application 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, U.S. 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 application. Similar to the first broadening reissue application, the second broadening reissue application only addressed errors related to the first embodiment, that is, errors “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, U.S. 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 broadening 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 described 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, 57 CCPA 822, 419 F.2d 925 (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 application 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 function 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 jurisdiction 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 broadened 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 broadening reissues. See Miller v. Brass Co., 104 U.S. 350, 353, 26 L.Ed. 783 (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 inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the commissioner 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,...