Patents Post Grant Blog

CAFC to Decide Prosecution Laches in Patent Reissue

Earlier this year we discussed the Ex Parte Tanaka decision of the Board of Patent Appeals & Interferences (BPAI) with respect to “bullet claims”  in patent reissue, now before the CAFC. On June 24, 2010, a second Board decision relating to patent reissue was appealed to the Federal Circuit (Ex Parte Staats).

Although presented in the context of patent reissue, the point of contention in Staats is actually one of prosecution laches and the application of equitable principles to statutory interpretation. In Staats, the Board upheld a rejection of a broadening reissue application as defective under 35 U.S.C. 251 for failing to include the appropriate broadening oath within two years of the original patent issuance. The Board reasoned that although a parent reissue had filed an appropriate broadening oath and identified at least one error, the continuation reissue was not entitled to rely on that oath, despite the continuity between these reissue applications. The BPAI presented the issue as :

This is a case of first impression. Resolution of the case hinges on one fundamental question: Can a continuing reissue application 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? Put another way, is it enough under the law to merely present an intent to broaden that is limited to a particular aspect (e.g., a particular embodiment of the invention) within the two-year period, yet broaden in unforeseeable ways (e.g., pertaining to other embodiments) outside the two-year period?

While the Board noted that the question of interpreting 35 U.S.C. 251 in this manner was a case of first impression, MPEP 1412.03 (IV) was argued by Apple as directly on point (i.e., explicitly authorizing the practice). Curiously, the Board found this aspect of the MPEP ambiguous, and analyzed the statute based upon their understanding of the equitable principles behind the two-year limitation provided by the statute.

In doing so, the BPAI relied heavily on the aspect of foreseeability emphasized in case law addressing prosecution laches. In affirming the rejection, the BPAI surmised:

Since this broadening was completely unforeseeable by the public within the two-year statutory period-a circumstance that is undisputed-it runs counter to the public notice function underpinning § 251 and is therefore improper.

In arriving at their conclusion on equitable principles, the BPAI reviewed the seminal cases in this area (In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) and (In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970). The Board noted that both of these early decisions supported their conclusion that the manner of broadening must be identified within two years.

Arguably, neither of these cases needed to consider the manner of the broadening. Thus, the Board noted only that the facts of Doll were consistent with their decision, and Graff emphasized the two year requirement. So, to buttress their decision, the Board relied on case law relating to prosecution laches, such as Symbol Techs., Inc. v. Lemelson Med., Educ. & Res. Found., 277 F.3d 1361, 1364 (Fed. Cir. 2002).

However, the cases dealing with foreseeability in the prosecution laches context relate to applications that were prosecuted in secret (i.e., before the days of publication). As reissue applications are published in the Official Gazette, foreseeability with respect to specific changes is only a mouse click away via PAIR. Certainly, in the past, there was significant motivation to purposely delay prosecution in the days of  “submarine applications.”  However, by waiting 8 years to file the continuation reissue application in question, Apple only surrendered enforceable patent term to the public (intervening rights).

There is little motivation for anyone to drag their feet in reissue, likewise, the manner of broadening is not the least bit secret. Interested parties cannot not only track the progress of such broadening publicly, but are provided a mechanism to protest via the submission of prior art under 37 CFR 1.291.

Should be an interesting CAFC opinion, stay tuned.