On June 17, 2019, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) decided Forum US, Inc. v. Flow Valve, LLC. In doing so, the Federal Circuit held that the claimed invention of a broadening reissue application must be clearly and unequivocally disclosed in the original U.S. patent.
Briefly, Flow Valve, LLC (“Flow Valve”) owned U.S. Patent No. RE45,878 (“the Reissue Patent”), a broadening reissue patent of U.S. Patent No. 8,215,213 (“the ”²213 patent”), which was directed to supporting assemblies for holding workpieces during machining. The ”²213 patent provided that the “workpieces” were machined pipe fittings supported by multiple axles. During prosecution of the Reissue Patent, the claims were broadened to include embodiments that did not use axels to support the workpieces, yet the written description remained the same.
On April 28, 2017, Forum US, Inc. (“Forum”) filed a declaratory judgment action seeking a declaration of invalidity of the Reissue Patent on the basis that the added reissue claims did not comply with the original patent requirement under 35 U.S.C. § 251. In response, Flow Valve contended that a person of ordinary skill in the art would understand that the original patent disclosed the multiple inventions claimed in the Reissue Patent. The district court found in favor of Forum on the basis that the written description of the original patent did not “explicitly and unequivocally” support the reissued claims. Flow Valve appealed to the Federal Circuit.
On appeal, Flow Valve did not dispute that the ”²213 patent failed to explicitly disclose the claimed invention of the Reissue Patent. Instead, it maintained that a person of ordinary skill in the art would understand from the patent specification that the axels were an optional feature of the disclosed invention. In support of its argument, Flow Valve relied on an expert declaration stating that a worker of ordinary skill would understand that not every embodiment of the ”²213 patent required axels.
In response, the Federal Circuit began its analysis with the language of 35 U.S.C. § 251 (“§ 251”). The Federal Circuit focused on the portion of § 251 which states that the USPTO may “reissue the patent for the invention disclosed in the original patent.” Further, the Federal Circuit took note of the well settled principle that for broadening reissue claims, “it must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original [patent].” Accordingly, the Federal Circuit determined that the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.”
The Federal Circuit emphasized that the essential inquiry under § 251 is whether one skilled in the art, reading the patent specification, would identify subject matter of the new claims as invented and disclosed by the patentee. In other words, whether a person of ordinary skill in the art would simply understand the newly claimed invention could be possible is insufficient to comply with the disclosure requirement set forth in § 251. Therefore, the Federal Circuit found Flow Valve”™s expert declaration unpersuasive because it did not identify where the ”²213 patent disclosed an axel-less embodiment.
Turning to the ”²213 patent, the Federal Circuit did not find support for the axel-less embodiment. Moreover, the Federal Circuit stated “the boilerplate language that modifications can be made to the original disclosed invention does not even suggest an [axel-less] embodiment of the disclosed [reissue] invention.” Thus, the Federal Circuit concluded that the written description of the ”²213 patent failed to “clearly and unequivocally” disclose the axel-less embodiment.
In conclusion, the Federal Circuit upheld the principle that a claimed invention of a broadening reissue patent must be “clearly and unequivocally” disclosed in the original patent. Further, it is important to note the Federal Circuit”™s conclusion that boilerplate language stating modifications can be made to a claimed invention, is insufficient to support a specific non-disclosed embodiment.