The US Court of Appeals for the Federal Circuit invalidated reissue patent claims for impermissible broadening, finding that the newly claimed subject matter did not comply with the requirement of 35 USC § 251(a) that reissue claims must be for the same invention as that originally disclosed. Forum US, Inc. v. Flow Valve, LLC, Case No. 18-1765 (Fed. Cir. June 17, 2019) (Reyna, J).
The original and reissue patents relate to supporting fixtures for holding workpieces during machining, specifically the use of arbors. Machinists often make and use fixtures that utilize arbors to hold the workpiece while it rotates on the turning machine, and it is advantageous to have a multi-purpose fixture capable of holding a workpiece in multiple orientations to expedite machining by minimizing setup time. The original and reissue patents share the same written description that discloses a first and a second arbor as central to the fixture design, along with drawings disclosing only embodiments with arbors, none without. In the reissue patent, Flow Valve sought and obtained claims having no arbor limitation.
Although broadening reissues are permissible within the first two years after a patent issues, in order to broaden the claims, the original patent must clearly and unequivocally disclose the newly claimed invention as a separate invention. 35 USC § 251. The district court granted summary judgment in favor of Forum, finding that the written description and drawings of the reissue patent did not “explicitly and unequivocally” disclose the invention claimed in the reissue claims. Flow Valve appealed.
The Federal Circuit, relying on its prior ruling in Antares Pharma (IP Update, Vol. 17, No. 12), explained that in order to support new and broader claims in a reissue, the newly claimed subject matter must be more than merely suggested or indicated in the original specification, drawings or models; it must constitute a part or portion of the originally disclosed invention that was intended or sought to be covered or secured by such original patent. This notion has become a bedrock principle of patent reissue law since the Supreme Court of the United States decisions in U.S. Indus. Chems., Inc. (1942) and Corbin Cabinet Lock Co. (1893).
Here, the abstract and the summary of the invention in the reissue patent describe a plurality of arbors, indicating that the only disclosed invention includes arbors. Flow Valve did not dispute that the original patent did not disclose an arbor-less embodiment. Instead, using expert declaration, Flow Valve argued that a person of ordinary skill in the art would understand from the specification that arbors were an optional feature of the disclosed invention.
The Federal Circuit was not persuaded, noting that the declaration did not aid the court in understanding what the written description actually said, but instead merely asserted what a person of ordinary skill in the art would purportedly understand in the absence of the disclosure of an arbor-less embodiment. The Court found that nowhere did the written description or drawings disclose or even suggest that arbors were an optional feature of the invention as would be required to satisfy § 251. As the court noted, even if a person of ordinary skill in the art would understand that the newly claimed, arbor-less invention would be possible, that would be insufficient to comply with the standard set forth in Industrial Chemicals and Antares.
Practice Note: Before undertaking the time and expense to reissue broader claims, patent owners are advised to critically review the written description to ensure that it supports the broader claims.
