In Re Staats
671 F.3d 1350
Fed. Cir.2012Background
- Staats filed a broadening reissue within the two-year window for the first embodiment of the ‘600 patent, which issued in 1999.
- The first broadening reissue (RE38,641) issued in 2004 focusing on a linked list of buffers.
- Staats later filed a second broadening reissue (RE39,763) in 2004–2007 addressing the same embodiment.
- A third broadening reissue was filed in 2006, seeking claims directed to the second embodiment described in the specification but not previously claimed.
- The Board rejected claims 12–32 as broadened outside the two-year limit and unrelated to the earlier broadening, and the Federal Circuit reversed, holding Doll controls.
- Judge O’Malley concurred, criticizing the majority’s reasoning and advocating full statutory analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether §251’s two-year limit applies only to the first broadening reissue per Doll | Staats: Doll controls; two-year limit only attaches to first broadening. | PTO: later broadenings must relate to the initial broadening to satisfy public notice. | Yes; the two-year limit applies to the first broadening reissue only. |
| Whether continuing reissue claims outside two years can broaden unrelated subject matter | Staats: continuation allowed; broader claims may be added later. | PTO: must be related to the originally identified broadening to satisfy §251. | Yes; Doll allows later broadening, even if unrelated to initial broadening. |
| Whether the Board properly treated the third reissue as barred under §251 | Staats: third reissue properly pursued under continuing reissue practice. | Board: third reissue too broad and unrelated to the two-year window. | Board erred; third reissue may be pursued consistent with §251 as interpreted. |
| What is the controlling precedent for interpreting §251’s time bar | Doll binding; two-year rule attaches to first broadening. | PTO argues Doll should be distinguished. | Doll remains controlling precedent. |
Key Cases Cited
- In re Doll, 419 F.2d 925 (C.C.P.A. 1970) (two-year limit applies to first broadening reissue, not to later broadening changes during prosecution)
- In re Graff, 111 F.3d 874 (Fed. Cir. 1997) (continuation prosecutions may broaden claims after the two-year period)
- In re Fotland, 779 F.2d 31 (Fed. Cir. 1985) (broadenings may occur in prosecution after initial broadening under Doll)
- Miller v. Brass Co., 104 U.S. 350 (U.S. 1881) (found broadening reissues permissible under earlier act; two-year rule evolved later)
- Wollensak v. Reiher, 115 U.S. 96 (1885) (special circumstances required to excuse two-year delay)
- Mahn v. Harwood, 112 U.S. 354 (1884) (two-year rule with possible excusal for special circumstances)
- Elec. Gas-Lighting Co. v. Boston Electric Co., 139 U.S. 481 (1891) (early precedent on broadening reissues and public notice)
- Ives v. Sargent, 119 U.S. 652 (1887) (public notice and timely action principles in patent law)
- S. Corp. v. United States, 690 F.2d 1368 (Fed. Cir. 1982) (en banc treatment affecting precedential value of Doll lineage)
- In re Serenkin, 479 F.3d 1359 (Fed. Cir. 2007) (statutory construction de novo review on §251)