Broadening reissue’s claims has to be limited to what the original claims were intended to cover

original patentForum US, Inc. v. Flow Valve, LLC, 2018-1765 (Fed. Cir. 6/17/2019).

This is a decision on an appeal from the W. D. Okla. district court 5:17-cv-00495-F.

The district court granted summary judgement of invalidity of a Flow’s reissue patent. Flow appealed. The Federal Circuit affirmed.

Legal issue: 35 USC 251, “invention disclosed in the original patent” requirement applied to broadened reissue claims.

The Federal Circuit held that the original patent must make it clear that what is covered by the broadening reissue claims was intended to be claimed in the original patent. In this case, a limitation was disclosed to be present in all embodiments and was originally claimed; was absent from the reissue claim; and the reissue claim was held invalid.

It is well settled that for broadening reissue claims, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Indus. Chems., 315 U.S. at 676 (interpreting 35 U.S.C. § 64 (1934)). The Supreme Court described this standard in nearly identical language almost fifty years before Industrial Chemicals. SeeCorbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42–43 (1893) (“[T]o warrant new and broader claims in a reissue, such claims must not be merely suggested or indicated in the original specification, drawings, or models, but it must further appear from the original patent that they constitute parts or portions of the invention, which were intended or sought to be covered or secured by such original patent.”). Congress codified this long-standing requirement, which became known as the “same invention” requirement. Antares, 771 F.3d at 1359–60 (quoting 35 U.S.C. § 64 (1946)); see, e.g., Section 53, Patent Act of1870, 16 Stat. 198 (1870) (“[T]he commissioner shall … cause a new patent for the same invention … to be issued to the patentee.”). [Forum US, Inc. v. Flow Valve, LLC, 2018-1765 (Fed. Cir. 6/17/2019).]

With the passage of the 1952 Patent Act, Congress revised the statutory language from “the same invention” to “the original patent.” Antares, 771 F.3d at 1360; 35 U.S.C. § 251 (1952). Despite this revision, case law has not suggested that the 1952 Patent Act’s revised statutory language substantively changed “the ‘same invention’ requirement or that the standard of Industrial Chemicals has in any way been altered by the legislative changes.” Antares, 771 F.3d at 1360–61.[Forum US, Inc. v. Flow Valve, LLC, 2018-1765 (Fed. Cir. 6/17/2019).]

Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and se-cured by the original.” Indus. Chems., 315 U.S. at 676 (emphasis added). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. [Forum US, Inc. v. Flow Valve, LLC, 2018-1765 (Fed. Cir. 6/17/2019).]

Exemplary application of the law to the facts in this decision.

Original patent claim 1 recited “a pluralityof arbors” and means for rotating a supporting assembly about an axis of one of the arbors. The specification disclosed arbors in a machining fixture for holding a pipe joint. The specification did not disclose an arbor-less embodiment. The new reissue independent claim did not define an arbor. On those facts, the Federal Circuit concluded that:

Thus, the reissue claims do not comply with the standard set forth in Industrial Chemicals and Antares as a matter of law. [Forum US, Inc. v. Flow Valve, LLC, 2018-1765 (Fed. Cir. 6/17/2019).]

Author: Rick Neifeld, Neifeld IP Law, PC
5400 Shawnee Road, Suite 310
Alexandria, VA 22312-2300 USA

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