Tuesday, March 06, 2012

In re Staats on re-issue

The issue before the CAFC: 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.

Of In re Doll: 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.

Going back to 1881: 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 (1881).

Of the argument by the Patent Office: 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 distinguishable. 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.

The bottom line: In short, this panel is bound by Doll. See S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en 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.


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