November 2, 2019
35 U.S.C. § 251 governs claims that are broadened through a reissue. Specifically, Section 251(a) provides:
Whenever any patent is, through error, deemed wholly or partly inoperative or invalid … by reason of the patentee claiming more or less than he had a right to claim in the patent, … the Director shall … reissue the patent for the invention disclosed in the original patent …
The Federal Circuit in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. June 17, 2019), held broadening reissue claims invalid for failing to satisfy this “original patent” requirement.
The patent in Forum US involved a fixture for holding workpieces during machining. The claims from the original patent required, among other things, “a plurality of arbors … 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.” The specification described a turning machine that rotates the workpiece while stationary tools perform various operations on the workpiece, such as cutting or sanding. “Arbors” are used to hold the workpiece while it rotates.
In the reissue patent (RE45,878), the patentees added claims for fixtures having no arbors. The plaintiff Forum US Inc. (“Forum US”) filed a declaratory judgment action contending that the added reissue claims were invalid because they did not comply with the “original patent” requirement of § 251. The district court granted summary judgment in favor of Forum US. Defendant Flow Valve, LLC (“Flow Valve”) appealed to the Federal Circuit.
In affirming the district court’s holding of invalidity, the Federal Circuit relied primarily on U. S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942). Under Industrial Chemicals, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” To be valid, “[i]t 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.” The Federal Circuit emphasized that “the original patent ‘must clearly and unequivocally disclose the newly claimed invention as a separate invention.’”
Applying this standard, the Federal Circuit had no trouble finding that the district court correctly held Flow Valve’s reissue claims invalid. Flow Valve conceded that the original patent did not, on its face, disclose any arbor-less embodiment. Flow Valve argued that, nevertheless, a person of ordinary skill in the art would have understood from the specification that “arbors are an optional feature.” The court held that this did not suffice under Industrial Chemicals and Federal Circuit precedent. The “original patent” requirement looks to what the original specification “actually say[s],” not merely to “what a person of ordinary skill in the art would purportedly understand” based upon reading it. Because the original patent in Forum US disclosed no arbor-less embodiment, the Federal Circuit concluded that the reissue claims failed the test.
When reading Forum US, one might wonder whether the case would have come out differently if Flow Valve had – instead of seeking reissue claims after its patent had issued – sought its arbor-less claims in a pending continuation case. In that posture, the “written description” requirement from 35 U.S.C. § 112 would have governed, not the “original patent” requirement from Section 251. The standards are different.
Generally speaking, the Federal Circuit’s test for satisfying the “written description” requirement is whether the disclosure of the application “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date of the patent.” Rivera v. ITC, 857 F.3d 1315, 1319 (Fed. Cir. 2017) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). When applying this test, the Federal Circuit has at times relied on the knowledge of those skilled in the art, even though not expressly found in the four corners of the specification, to hold that broadened claims had adequate support in the specification. See Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1351-53 (Fed. Cir. 2011). “Because the specification is viewed from the perspective of one of skill, in some circumstances, a patentee may rely on information that is ‘well-known in the art’ for purposes of meeting the written description requirement.” Bos. Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011).
To be sure, there are limits to how far a patentee can go in arguing that the knowledge of a person of ordinary skill in the art shows that the inventor had possession of newly claimed and broadened subject matter. For example, in Rivera v. ITC, 857 F.3d 1315, the Federal Circuit held claims invalid for lacking an adequate written description. The court stated that “[t]he knowledge of ordinary artisans may be used to inform what is actually in the specification, … but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification.” Id. at 1322.
Given this body of law regarding Section 112, it is possible that the patentee Flow Valve could have prevailed if the Forum US case involved a dispute over the adequacy of its patent’s “written description.” Determining whether Flow Valve would have indeed prevailed would require a close examination of the record and all of the relevant caselaw.
Author: Ray Huang