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In re Staats

United States Court of Appeals for the Federal Circuit

March 5, 2012, Decided



 [***1931]   [*1351]  Dyk, Circuit Judge.

Appellants Erik P. Staats and Robin D. Lash (collectively "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) [**2] . We reverse and remand.


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 patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender 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-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.

On April 1, 1996, Staats filed an application  [**3] for a patent 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")  [*1352]  issued to Staats on August 17, 1999. The '600 patent described improvements 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 computer'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 [***1932]  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  [**4] cycles when no isochronous data was being transferred. Thus, in contrast to the prior art, isochronous data transfers did not prevent the CPU from performing other tasks such as responding to menu-level instructions from the user or executing commands from other applications.

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671 F.3d 1350 *; 2012 U.S. App. LEXIS 4524 **; 101 U.S.P.Q.2D (BNA) 1930 ***; 2012 WL 688800


Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences. (Serial No. 11/503,541).

In re Staats, 2010 U.S. App. LEXIS 22914 (Fed. Cir., Nov. 3, 2010)



reissue, broadening, patent, two-year, embodiment, isochronous, buffers, patentee, channel, unrelated

Patent Law, US Patent & Trademark Office Proceedings, Reissue Proceedings, Broadening Reissues & Recapture, Requirements, Governments, Courts, Judicial Precedent, Claims & Specifications, General Overview