Federal Circuit disposition — 2010-1443

United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 11/503,541)
IN RE ERIK P. STAATS AND ROBIN D. LASH
__________________________
2010-1443
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
___________________________
Decided: March 5, 2012
___________________________
JOHN M. WHEALAN , of Silver Spring, Maryland, ar-
gued for appellants. Of counsel on the brief were JEFFREY
A. LAMKEN and LUCAS M. WALKER, MoloLamken LLP, of
Washington, DC, ROBERT A. H ULSE, Fenwick & West,
LLP, of San Francisco, California, and RICHARD J.
LUTTON , J R., Apple Inc., of Cupertino, California.
WILLIAM L AMARCA , 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 G ONGOLA, Associate Solici-
tor.
__________________________
Before DYK , O’M ALLEY, and REYNA, Circuit Judges.

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IN RE STAATS 2
Opinion for the court filed by Circuit Judge D YK . Concur-
ring opinion filed by Circuit Judge O’M ALLEY.
D YK , Circuit Judge.
Appellants Erik P. Staats and Robin D. Lash (collec-
tively “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 (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 pat-
entee claiming more or less than he had a right to
claim in the patent, the Director shall, on the sur-
render 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-

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IN RE STAATS 3
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 pat-
ent 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 improve-
ments 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 com-
puter’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 pre-
vent the CPU from performing other tasks such as re-
sponding 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

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IN RE STAATS 4
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 specifica-
tion, 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 appli-
cation 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, US 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 applica-
tion. Similar to the first broadening reissue application,
the second broadening reissue application only addressed
errors related to the first embodiment, that is, errors

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IN RE STAATS 5
“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, US 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 broaden-
ing 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 de-
scribed 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, 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. 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 applica-

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IN RE STAATS 6
tion 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 func-
tion 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 juris-
diction 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).
D ISCUSSION
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 broad-
ened 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 broaden-
ing reissues. See Miller v. Brass Co., 104 U.S. 350, 353
(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 inadver-

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IN RE STAATS 7
tence, accident, or mistake, and without any
fraudulent or deceptive intention, the commis-
sioner 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, the Court in
Miller held that the statute allowed for broadening reis-
sues. 104 U.S. at 354-55. At the same time, the Court
recognized a rule of laches for broadening reissue applica-
tions filed more than two years after the issuance of the
original patent. Id. at 352. The Miller Court held that
“the claim of a specific device or combination, and an
omission to claim other devices or combinations apparent
on the face of the patent, are, in law, a dedication to the
public of that which is not claimed.” Id. This dedication
to the public could not be avoided unless the patentee
proved “real inadvertence, accident, or mistake,” which
“should be done with all due diligence and speed.” Id.
Thus, for broadening reissues, “the rule of laches should
be strictly applied.” Id. at 356.
This rule was followed in subsequent Supreme Court
cases, which recognized that a delay of longer than two
years should only be excused by “special circumstances.”
Wollensak v. Reiher, 115 U.S. 96, 101 (1885); see also
Mahn v. Harwood, 112 U.S. 354, 363 (1884). When there
was “no ambiguity, and nothing to prevent the patentee
from seeing at once, on inspecting his patent, whether his
whole invention was claimed or not,” the Supreme Court
saw “no possible excuse” for delay beyond two years.
Mahn, 112 U.S. at 363; see also Elec. Gas-Lighting Co. v.
Bos. Elec. Co., 139 U.S. 481, 501-02 (1891); Ives v. Sar-
gent, 119 U.S. 652, 662 (1887).

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IN RE STAATS 8
The current version of the reissue statute was enacted
in 1952 as part of an overall revision of the patent laws.
The legislative history demonstrates that the amendment
to section 251 was designed to codify prior Supreme Court
authority, and in particular, the two-year limit. In a
Senate Committee Report, Congress explained that “[a]
two year period of limitation on applying for broadened
reissues is added, codifying the present rule of decision
with a fixed period.” S. Rep. No. 82-1979, at 26 (1952),
reprinted in 1952 U.S.C.C.A.N. 2394, 2419. As one of the
drafters of the 1952 Patent Act noted, “the courts [had]
developed a rule of laches according to which a broaden-
ing reissue could not be applied for more than two years
after the grant of the original patent except under ex-
traordinary circumstances excusing the delay.” P.J.
Federico, Commentary on the New Patent Act, reprinted in
75 J. Pat. & Trademark Off. Soc’y 161, 205 (1993).1
The PTO argues that the language of the statute, re-
quiring that the broadening reissue be “applied for within
two years,” does not suggest that the first broadening
reissue can serve as a kind of placeholder for later appli-
cations. So too, it urges that the pre-1952 Supreme Court
case law and the legislative history behind section 251
evince “one consistent theme,” that “a patentee must
promptly give the public adequate notice within two years
of what the patentee intends to broaden.” Appellee’s Br.
22. According to the PTO, such adequate notice is not
provided when the broadened claims presented outside
the two-year period are “unrelated to,” and thus “unfore-
1 Federico’s commentary, first published in 1954,
has previously been cited by this court as constituting “an
invaluable insight into the intentions of the drafters of
the Act.” Symbol Techs., Inc. v. Lemelson Med., 277 F.3d
1361, 1366 (Fed. Cir. 2002).

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IN RE STAATS 9
seeable from,” the subject matter identified for broaden-
ing within two years. Id.
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 dis-
tinguishable. 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.

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IN RE STAATS 10
The PTO’s argument is largely an argument that Doll
should be limited to its specific facts. But the “necessary
implications” of a case’s holding are “of course not limited
to the facts of that case.” Herb’s Welding, Inc. v. Gray,
470 U.S. 414, 442 (1985). Significantly, Doll itself made
no distinction between related and unrelated claims. Doll
simply held that section 251’s time limit clearly applied
only to the filing date of the first broadening reissue
application itself. 419 F.2d at 928. This court has ac-
knowledged Doll’s holding that after a broadening reissue
application 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.” In
re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997); see also In re
Fotland, 779 F.2d 31, 34 (Fed. Cir. 1985). To be sure,
subsequently filed continuation applications relate back
to a previously filed application under 35 U.S.C. § 120
only if each successive continuation application was filed
while its parent application was still pending. See Ency-
clopedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609
F.3d 1345, 1349 (Fed. Cir. 2010). However, we see no
basis for limiting Doll to situations where later broadened
claims are related to, or are directed to the same embodi-
ment as in the original application. The PTO’s approach
is, moreover, unmanageable. Every claim must, by defini-
tion, be different in scope than the other claims of the
patent, and it is difficult to distinguish one patent em-
bodiment from another or to determine when a later claim
is related to an earlier claim. A rule requiring that the
new claims be related to the previously submitted claims,
or be directed to the same embodiment, would be difficult
to administer in a consistent and predictable way.
In short, this panel is bound by Doll. See S. Corp. v.
United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en

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IN RE STAATS 11
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.
REVERSED AND REMANDED

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United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 11/503,541)
IN RE ERIK P. STAATS AND ROBIN D. LASH
__________________________
2010-1443
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________
O’M ALLEY, Circuit Judge, concurring.
I concur in the judgment the majority reaches – the
decision of the Board of Patent Appeals and Interferences
(“the Board”) in this case cannot stand. I do not join in
the majority’s reasoning, however. To the extent the
majority opinion concludes that the only basis upon which
to premise reversal is the existence of In re Doll, 419 F.2d
925 (C.C.P.A. 1970) in this court’s repertoire of decided
cases, the opinion is inadequate. To the extent the major-
ity opinion is no more than a begrudging nod to Doll’s
precedential effect with an invitation to reconsider that
decision, the majority opinion is wrong. Indeed, it is
wrong on multiple levels.
The plain language of 35 U.S.C. § 251, coupled with
the legislative history, long-standing unambiguous regu-
lations implementing the statute, all relevant case law,
and common sense, all compel reversal in this case. Doll

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IN RE STAATS 2
is but one data point in that properly structured statutory
analysis.
Section 251 permits an inventor to apply for a reis-
sued patent whenever he believes his patent is “wholly or
partly inoperative or invalid” due to defects in the specifi-
cation or in the scope of the claim language employed. 35
U.S.C. § 251. Once a reissue is sought, the same provi-
sions of Title 35 governing original patent applications –
including those provisions permitting the filing of con-
tinuations and divisional applications – are “applicable to
applications for reissue of a patent.” Id. Other than
limitations against introducing “new matter” into the
application for reissue (a restriction not at issue here), the
only other limitation on reissue practice set forth in § 251
is that the original reissue application be timely – i.e.,
filed within two years of the grant of the original patent.
Id. Nothing on the face of § 251 restricts the nature of
any later-filed continuing reissue applications or ties the
substance of such continuations to the broadened claims
specified in the initial application. Indeed, the United
States Patent and Trademark Office (PTO) points to no
statutory language – either in § 251 or elsewhere – to
support the Board’s ruling.
Like its text, nothing in the legislative history to § 251
indicates any desire to limit the way in which the provi-
sions of Title 35 “relating to applications for patent shall
be applicable to applications for reissue of a patent.” See
35 U.S.C. § 251. The legislative history to the Patent Act
of 1952, where section § 251 first appeared, spoke only to
the desire to codify both the fact of reissue practice and
the two year post grant time period within which such
reissue practice must be initiated. See S. Rep. No. 82-
1979, at 26 (1952), reprinted in 1952 U.S.C.C.A.N. 2394,
2419; H.R. Rep. No. 82-1928, at 26 (1952) (“A two year
period of limitation on applying for broadened reissues is

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IN RE STAATS 3
added, codifying the present rule of decision with a fixed
period.”).
Consistent with § 251’s language and legislative his-
tory, all PTO governing rules and regulations have – for
decades – made clear that any timely intent to broaden
via reissue permits subsequent attempts to broaden via
continuation practice authorized under Title 35. Thus,
PTO Rule 175 requires only that “at least one error being
relied upon as the basis for reissue” be identified in the
oath accompanying a reissue application, clearly implying
that other errors may be “relied upon” even if not identi-
fied. 37 C.F.R. § 1.175(a)(1). And, the PTO’s own Manual
of Patent Examining Procedure (MPEP) repeatedly makes
clear that, “if intent to broaden is indicated in a patent
reissue application within the two years, a broadened
claim can be presented in a continuing reissue application
after the two year period.” MPEP § 1412.03 (8th ed. 8th
rev. July 2010). This is true “even though the broadened
claim presented after the two years is different than the
broadened claim presented within two years.” Id. The
PTO’s continuing public pronouncements regarding the
operation of § 251, while inconsistent with the position it
takes here, are consistent with the plain meaning of the
statute and its legislative history.
The MPEP and PTO Rule 175 are, moreover, consis-
tent with all relevant case law interpreting § 251. As the
majority notes, Doll concluded that § 251’s time limits are
applicable only to the first broadening reissue application
and do not, accordingly, bar further broadening changes
thereafter. 419 F.2d. at 928. This court has twice reaf-
firmed that reading of § 251, moreover. See In re Graff,
111 F.3d 874, 877 (Fed. Cir. 1997) (“The court in Doll
simply held that the reissue applicant, in the course of
prosecution of the reissue application, was not barred
from making further broadening changes in the claims.”);

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IN RE STAATS 4
In re Fotland, 779 F.2d 31, 34 (Fed. Cir. 1985) (“In Doll
the Court of Customs and Patent Appeals held that when
a broadening reissue application was on file within the
two year period, the claims could be further broadened
after the two year period.”). As the majority opinion
makes clear, the PTO’s efforts to distinguish those cases
so as to avoid the need to comply with their holdings
stretch credulity.
In the end, the PTO ignores every step in a proper
statutory construction analysis and falls back on policy
concerns it claims allow it to ignore the face of § 251 and
to disregard both its own and this court’s pronouncements
regarding the proper operation of that governing provi-
sion. Given the limited life of additional claims which can
be sought through the type of continuing reissue practice
at issue here, the protections afforded by the intervening
rights provisions in 35 U.S.C. § 252, and the countervail-
ing implementation concerns the PTO’s new standard
creates, however, the PTO’s policy arguments are over-
stated – substantially so. Even if those policy statements
were not overstated, they would be an insufficient reed
upon which to rest such a sweeping change in the law.
I agree that the Board’s decision and PTO rejection
must be reversed, and the matter remanded for further
processing of the appellant’s third reissue application. To
the extent the majority fails to conduct a full statutory
analysis and to recognize that each step in such a proper
analysis compels that result, however, I decline to join the
majority’s reasoning and write separately to point out the
important gaps therein.

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