by Dennis Crouch
Forum US v. Flow Valve (Fed. Cir. 2019)
The question here is whether the broadened claims in Flow Valve’s U.S. Patent No. RE45,878 satisfy the heightened written description requirement for reissue patents.
In order to broaden claims as part of a reissue application, the patentee must show that the new scope was considered by the original patent applicant as party of the original invention. This precedent stretches back to 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.
Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38 (1893).
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.
U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668 (1942).
These cases are pre-1952. At the time, the statute limited reissues be “for the same invention.” In 1952, that provision was altered to instead limit reissue claims to “the invention disclosed in the original patent.” Although the text of this statutory change appears to loosen the limits on reissue claim scope, the Federal Circuit has indicated that the statutory change did not change the requirement. Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014) (The pre-1952 requirement has not “in any way been altered by the legislative changes”).
Here, the patent at issue focuses on fixtures for holding pipe fittings during machining. All of the embodiments in the original patent as well as the claims include arbors that are used for holding the pipe joint in place (circled below). However, during the reissue the patentee added new claims without the arbor requirement.
The courts agreed that, in this situation, the broadened scope that includes an arbor-less device was not apparent from the “face of the instrument” — i.e., in the text of the original patent application.
A written description requirement: The patentee had presented expert testimony that a person of skill in the art would understand that the arbors were optional components of the assembly. Taking that evidence as true, the Federal Circuit found it insufficient to save the claims because the test is whether the new claim scope is written down in the specification. In essence, this is a heightened written description test, not a test of enablement.
Query: How would our patent system adjust to applying this written description standard in all cases, not just reissues?