By Joshua Rich --
Every patent must include a written description of the invention sufficient to enable a person of ordinary skill in the art to make and use the invention. A broadening reissue under 35 U.S.C. § 251 must meet a more exacting standard: the claimed invention must be clearly and unequivocally disclosed in the original patent to justify grant of broadened claims. The Forum US case illustrated the difference, where the Federal Circuit affirmed the District Court's grant of summary judgment of invalidity due to failure to comply with the reissue statute.
Flow Valve owned U.S. Patent No. 8,215,213, directed to supporting assemblies used in the machining of pipefittings. The supporting assemblies would allow a machinist to manipulate the orientation and position of the pipefittings quickly and easily, expediting the use of various tools on the pipefittings. As disclosed in the specification (both figures and text), the supporting assemblies included arbors along the axes of the pipe fitting for engagement of a machine, such as a lathe, that would turn the pipefitting for machining. Two figures from the '213 patent illustrate the arbors (circled in red):
The '213 patent also claimed inventions expressly with arbors as part of the supporting assembly. Claim 1, representative of the thirteen issued claims, covered:
A workpiece machining implement comprising:
a workpiece supporting assembly comprising:
a body member having an internal workpiece channel, the body member having a plurality of body openings communicating with the internal workpiece channel;
means supported by the body member for positioning a workpiece in the internal workpiece channel so that extending workpiece portions of the workpiece extend from selected ones of the body openings;
a plurality of arbors supported by the body member, each arbor having an axis coincident with a datum axis of one of the extending workpiece portions; and
means for rotating the workpiece supporting assembly about the axis of a selected one of the arbors.
'213 patent (emphasis added). Flow Valve had sued Forum US for patent infringement on the '213 patent, and Forum US changed its design to eliminate arbors. While that initial suit was pending, Flow Valve sought broadening reissue of the '213 patent and drafted claims to cover Forum US's new design.[1] Specifically, Flow Valve sought -- and obtained -- additional claims 14-20 in U.S. Patent No. RE45,878 that did not require arbors as part of the supporting assemblies. Claim 14 covers:
A workpiece supporting assembly for securing an elbow during a machining process that is performed on the elbow by operation of a workpiece machining implement, the workpiece supporting assembly comprising:
a body having an internal surface defining a channel, the internal surface sized to receive a medial portion of the elbow when the elbow is operably disposed in the channel; and
a support that is selectively positionable to secure the elbow in the workpiece supporting assembly, the body pivotable to a first pivoted position, the body sized so that a first end of the elbow extends from the channel and beyond the body so the first end of the elbow is presentable to the workpiece machining implement for performing the machining process, the body pivotable to a second position and sized so that a second end of the elbow extends from the channel beyond the body so the second end of the elbow is presentable to the workpiece machining implement for performing the machining process.
Rather than waiting for Flow Valve to sue it on the '878 reissue patent, Forum US brought a declaratory judgment suit arguing, among other things, that the new reissue claims were invalid for lack of compliance with § 251.[2] Section 251 provides:
Whenever any patent is, through error, 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 and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Specifically, Forum US argued that the reissue claims were not "for the invention disclosed in the original patent" and moved for summary judgment on that basis. Flow Valve responded, based on an expert declaration, that a person of ordinary skill in the art would understand that the patent disclosed multiple inventions, including embodiments with and without arbors. This gambit didn't work; the District Court granted Forum US's motion for summary judgment, invalidating claims 14 through 20, because "no matter what a person of ordinary skill would recognize, the specification of the original patent must clearly and unequivocally disclose the newly claimed invention in order to satisfy the original patent rule."[3]
Upon appeal, the Federal Circuit reviewed the District Court's decision de novo, but employed the same reasoning in affirming the decision. The Court relied on two cases -- both cited by the District Court -- separated by over seven decades: U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668 (1942), and Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014). The two cases stand for the same proposition, 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."[4] Instead, the face of the patent itself must show that what is covered by the reissue claims was intended to have been covered by the original patent. As phrased by Antares, the original patent "must clearly and unequivocally disclose the newly claimed invention as a separate invention."[5]
Here, there was really no question that the broader reissue claims were not clearly and unequivocally disclosed in the original patent. The original patent did not disclose an embodiment of the invention without an arbor. Similarly, the abstract and summary of the invention described the invention as having a plurality of arbors. For that reason, Flow Valve had relied on an expert declaration regarding what "a worker of ordinary skill would understand." But while such a declaration might be sufficient to satisfy the written description requirement, it does not help illuminate the text of the original patent. Simply put, the specification did not "clearly and unequivocally disclose the newly claimed invention as a separate invention," and the reissue claims failed the original patent requirement.
The Forum US case is yet another reminder of the value of expert patent prosecution counsel. Flow Valve might have been able to pursue its claims in a continuation application, if it had one pending (which experienced counsel would likely have suggested). In doing so, it would not have had to meet the additional requirements of a broadening reissue. But not knowing the quirky rules of reissue, including the original patent requirement, can prove fatal to the same claims if they do not appear clearly to be part of the invention in the original patent.
Forum US, Inc. v. Flow Valve, LLC (Fed. Cir. 2019)
Panel: Circuit Judges Reyna, Schall, and Hughes
Opinion by Circuit Judge Reyna
[1] See Forum US, Inc. v. Flow Valve, LLC, Civil Action No. 5:17-cv-00495-F (W.D. Okla.), Dkt. # 1 (Complaint).
[2] Id.
[3] Id., Dkt. #45, p. 10.
[4] Indus. Chems., 315 U.S. at 676.
[5] Antares, 771 F.3d at 1362.
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