In the In re Staats case decided by the Federal Circuit on March 5, 2012, the Federal Circuit held that 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 In re Staats case involved an application that disclosed two distinct embodiments for handling isochronous data transfers, which include the transfer of real-time video data from one component to another in a computer system. In the prior art, isochronous data transfers were managed with dedicated software drivers on a computer’s CPU that ran to the exclusion of all other processes, even during portions of the CPU’s computing cycles when no data was being transferred.
The first embodiment used a “linked list of buffers” corresponding to specific locations on the system’s display to implement an “interrupt” system. In this embodiment, the CPU was interrupted when it receives isochronous data, but is able to perform other tasks during portions of the computing cycles when no isochronous data is being transferred.
The second embodiment established an isochronous data channel directly between a sender node and a receiver node, not including the CPU itself. For example, a channel might be established directly between a video camera and a VCR, without the channel passing through the CPU. Because the second embodiment bypasses the CPU, it does not require the use of the “linked list of buffers” to allow the CPU to run other tasks.
The application issued August 17, 1999 as the 5,940,600 patent (the ‘600 patent). The ‘600 patent included 12 claims, all of which were directed to the first embodiment and specifically recited a “linked list of buffers”.
On August 17, 2001, and within the two-year window defined by section 251, a first broadening reissue application was filed. The identified error upon which the first broadening reissue application was based related to the first embodiment. A second broadening reissue application was subsequently filed as a continuation of the first and also identified errors related to the first embodiment as the basis for the second broadening reissue application. A third broadening reissue application was subsequently filed as a continuation of the second.
On June 11, 2007, almost 8 years after the ‘600 patent issued, new claims 12-32 were added to the third broadening reissue application. New claims 12-32 were directed to the second embodiment. The examiner rejected new claims 12-32 because they were “not related in any way to what was covered in the original broadening reissue.” On appeal, the Board of Patent Appeals and Interferences (BPAI) agreed with the Examiner.
On appeal, the case In re Doll, 419 F.2d 925 (C.C.P.A. 1970) (hereinafter Doll) was discussed. In Doll, the Patent and Trademark Office (PTO) argued that section 251 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.” The CCPA disagreed and reversed the PTO’s rejection of the claims at issue in Doll that were broader than those originally included with the appellant’s timely filed first broadening reissue application which were presented for the first time in an amendment filed outside of the two-year period specified in section 251.
In the In re Staats case, the PTO argued that Doll, while binding, is distinguishable from the present case because the broadened claims challenged in Doll were “related to the subject matter covered by the claims identified and broadened within the two-year window,” whereas in the present case, the claims in dispute were directed to an alternative embodiment “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.”
The Federal Circuit disagreed with the PTO’s argument that essentially Doll should be limited to its specific facts. According to the Federal Circuit, Doll made no distinction between related and unrelated claims, instead, Doll “simply held that section 251’s time limit clearly applied only to the filing date of the first broadening reissue application itself.” Additionally, the Federal Circuit “has acknowledged Doll’s holding that after a broadening reissue 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.”
Further, the Federal Circuit argued that the PTO’s approach would be unmanageable. In particular, by definition, every claim must be different in scope than other claims. It would be difficult to distinguish one patent embodiment from another to determine when a later claim is related to an earlier claim. As such, the PTO’s approach would be difficult to administer in a consistent and predictable way.
Accordingly, the Federal Circuit held that broadened claims submitted in reissue application are permitted under 35 U.S.C. 251 even if submitted in a continuation reissue application more than two years after grant and even if broadened claims are unrelated to broadened claims filed within the two-year limit.
View the full presentation here: Broadening Reissue Claims