Federal Circuit invites en banc review of broadening reissue jurisprudence
By Jeffery Habenicht – Edited by Charlie Stiernberg
In re Staats, No. 2010-1443 (Fed. Cir. Mar. 5, 2012)
The Federal Circuit reversed the Board of Patent Appeals and Interferences’ (“Board”) decision to reject Staats’s reissue application and remanded for further proceedings. The Board had rejected Staats’s continuing reissue application because it was filed outside of the two-year time limit imposed by 35 U.S.C. § 251 and was not sufficiently related to a previous broadening reissue application filed within the two-year limit. In re Staats, No. 2010-1443, slip op. at 5–6 (Fed. Cir. Mar. 5, 2012).
The Federal Circuit held that the Board’s decision was inconsistent with its predecessor court’s decision in In re Doll, which concluded the two-year time limit in § 251 only applied to the initial broadening reissue application — not to properly filed continuation applications. Id. at 9 (citing In re Doll, 419 F.2d 925 (C.C.P.A 1970)). The court rejected the PTO’s argument that Doll only applied if the continuation application was “related” to a reissue application filed within the two-year window. Id. The court stated that this type of test would be “unmanageable,” because, by definition, every claim must be different in scope than the other claims. Id. at 10. In so holding, the court relied almost exclusively on Doll. The court concluded that if the PTO wanted to overrule Doll it would have to petition for a rehearing en banc. Id. at 11.
IPBIZ summarizes the case. Patently-O provides an overview and analysis. PharmaPatents criticizes the court’s broad interpretation of § 251, arguing that it will result in “twenty years of uncertainty” and a resurgence of post-grant strategic maneuvering. Patents Post-Grant, however, argues that Staats will have little effect because relying on broadening reissue applications as a matter of course has its own inherent drawbacks.
Staats filed a patent application with the PTO titled “Isochronus Channel Having a Linked List of Buffers” in April 1996, and the patent issued on August 17, 1999. Id. at 4. Although the patent disclosed two embodiments, the claims only covered the first embodiment. Id. Within the two-year statutory period, Staats filed a broadening reissue application that related to the first embodiment. Id. While the first reissue application was pending, Staats filed a second broadening reissue application also directed at the first embodiment. Id. Subsequently, seven years after the patent issued—but while the second application was still pending—Staats filed a third broadening reissue application that included claims directed at the second embodiment. Id. at 5.
In holding as it did, the court engaged in a cursory review of the history behind § 251. Id. at 8. This review, however, played no role in the court’s final decision. Instead, the court rejected the PTO’s interpretation of § 251 on the sole ground that it was “inconsistent with [its] predecessor court’s decision in Doll.” Id. at 9. The court responded to the PTO’s argument that Doll could be distinguished, but did not address the PTO’s policy arguments. Id.
Judge O’Malley filed a concurring opinion. O’Malley argued the majority’s opinion failed to do justice to the arguments supporting the decision in Doll; the court’s interpretation of § 251 was supported by more than a single prior case. O’Malley argued that the statute’s language, its legislative history, relevant regulations, other case law, and common sense “all compel reversal in this case.” Id. at 1 (O’Malley concurring). O’Malley also argued that the “PTO’s policy arguments are overstated” because they are offset by the “limited life of additional claims” and the protections of 35 U.S.C. § 252. Id. at 2.
In re Staats is significant because it clarifies previous uncertainty about how the two-year time limit for reissue applications will be applied. The rule laid out by the majority is straightforward. However, the court’s comment than an overruling of Doll would require en banc review seems to invite a petition for rehearing. In contrast, O’Malley’s attempt to bolster the decision in Doll may be interpreted as an attempt to prevent an en banc hearing. Given the possibility of en banc review, and the differing opinions of the judges, Staats’ implications for the Federal Circuit remain to be seen.
Jeffery Habenicht is a 2L at the Harvard Law School.