Ikorongo Challenges Federal Circuit’s Heightened “Same Invention” Requirement for Reissue Patents

by Dennis Crouch

Ikorongo Technology has filed a petition for certiorari asking the Supreme Court to overturn the Federal Circuit’s heightened disclosure standard for the “same invention” requirement in reissue patents. The petitioner argues that the Federal Circuit’s test, established in Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014), directly contradicts the Supreme Court’s decision in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942). Petition for Writ of Certiorari, Ikorongo Tech. LLC v. Bumble Trading LLC, No. 23-1118 (U.S. Apr. 2024).

Reissue has long been a part of the U.S. Patent system, and today’s guiding statute (35 U.S.C. 251) looks substantially the same as that enacted back in 1836.  The basic idea is that a defective patent can be “surrendered” and a new patent issued “for the same invention.”  At that time there was no explicit requirement for a patent claim, and most new patents did not include claims as we see them today.  This “same invention” statutory requirement continued within the statute through major developments, including the 1870 Act, and was still the law in 1942 when the Supreme Court decided U.S. Indus. Chems. (The statute was at that time codified at 35 U.S.C. 64).  The patent laws were substantially rewritten again in 1952, including a seemingly substantial change to the statute at issue here.  In particular, the language was altered to no longer require “the same invention” but instead permit reissue covering “the invention disclosed in the original patent.” 35 U.S.C. 251.  When I read this provision, my mind automatically links to the written description and enablement requirements of Section 112(a), and so continue to be surprised by the Federal Circuit’s heightened disclosure requirement for reissues.

In order to alter claims as part of a reissue application — particularly broadening those claims — the patentee must show that the new scope was considered by the original patent applicant as party of the original invention.  As early as 1893, the Supreme Court held that a broadening reissue claim must satisfy more than “be merely suggested or indicated in the original specification.” Rather, the court held that the new claims “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).  The U.S. Indus. Chems. case concurred in this approach, holding that the face of the patent must show an intent to cover and secure “what is covered by the reissue.”  These cases are pre-1952. As mentioned above, the statutory language was loosened in the 1952 Act to no longer require the same invention.  But, in 2014 the Federal Circuit in Antares Pharma held that the statutory change the doctrine.  Antares (The pre-1952 requirement has not “in any way been altered by the legislative changes”).

Although I think that the best argument here for a relaxed standard is the statutory change, Ikorongo takes a different tact — arguing that the Federal Circuit’s heightened description standard in Antares Pharma improperly goes above and beyond the requirements set forth in U.S. Indus Chems.  In particular, the Federal Circuit now requires “explicit and unequivocal” statements in the original disclosure that the newly claimed invention was seen as a separate and distinct invention.  Antares Pharma.  In that case, the court held reissue claims invalid because, although newly claimed safety features were mentioned in the specification, “they were never described separately from the jet injector, nor were the particular combination of safety features claimed on reissue ever disclosed in the specification.” Although the mentions of these safety features may have been sufficient to satisfy the enablement and written description requirements for an original patent, they did not meet the “explicit and unequivocal” disclosure needed to support reissue claims.

But, as Ikorongo argues, this “explicit and unequivocal” separate invention standard is not found in U.S. Industrial Chemicals.

Antares‘s replacement of this Court’s ‘same invention’ test with a brand new and meaningfully different ‘separate invention’ test is made worse still by the fact that Antares provides no guidance as to what the newly claimed invention should be ‘separate’ from, outside the Antares-specific context of a patentee admitting their reissue claims were directed to ‘a different invention’ than originally claimed.


In its 1942 U.S. Indus. Chems. decision, the Supreme Court examined the validity of a reissued patent covering a process for producing ethylene oxide. The specification described introducing ethylene and oxygen into a reaction chamber with a catalyst, and the introduction of water as a mandatory component to facilitate the reaction and to control by-products detrimental to reaction efficiency.  The reissue patent broadened the original claims to make the introduction of water permissive rather than mandatory.

The core issue before the Supreme Court was whether the reissued patent was for the “same invention” as the original, as required by law. The Court concluded that the reissue did not meet the standard; by removing the requirement for water the new claim described a fundamentally different process and thus exceeded the permissible scope of a reissued patent. Water was a necessary and integral aspect of the original invention.  In its decision, the Supreme Court explained that reissue claims satisfy the requirement “if the reissue fully describes and claims the very invention intended to be secured by the original patent.” It further clarified that “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.”   U.S. Indus Chems. references the Court’s 1870 decision of Seymour v. Osborne, 11 Wall. 516.  That case established that a reissued patent which omits essential elements from the original patent is invalid.

Notably for Ikorongo’s case, the Supreme Court did not require an “explicit and unequivocal” disclosure of the waterless process as a separate invention. Rather, it stated the test as whether the reissue claims were “for the same invention described and claimed and intended to be secured by the original patent.”  The Court looked to both the specification and the original claims to ascertain the disclosed invention.

By contrast, the Federal Circuit in Antares asserted that “by definition in reissue the original claims do not disclose the invention claimed on reissue.” It therefore looked only to the specification, requiring a clear and unequivocal disclosure of the reissue claim scope as a separate invention, without regard for the original claims. Under this approach, even if the reissue claims encompass the same invention as the original claims, they may still be invalid if that common scope is not explicitly carved out as a separate invention in the specification.

Ikorongo contends this contradicts U.S. Industrial Chemicals, where the Supreme Court considered the original issued claims as part of the same invention analysis. The Court did not require the specification to explicitly disclose the reissue claim scope separate from the original claims. Instead, it looked to whether the reissue claims were directed to the same invention described and/or claimed in the original patent.

The petition also takes issue with the Federal Circuit’s characterization of its invalidity holding as compelled by precedent, despite appearing to announce the separate invention standard for the first time in Antares. Ikorongo further argues this heightened written description requirement for reissues disrupts the public notice function of claims and undermines the remedial purpose of the reissue statute.

Overturning Antares would likely make it easier to obtain broadened reissue claims by focusing the § 251 inquiry on consistency with the original claimed invention, rather than demanding an explicit disclosure of the broadened scope as a separate invention in the specification.  Still, the statute has a strict two-year timeline for broadening reissues.  More fundamentally, the case presents an opportunity for the Court to clarify the impact of the 1952 Patent Act’s amendment to the statutory language. While the Federal Circuit has downplayed that statutory change, I argue that it should be read as Congress loosening the same invention requirement by shifting the focus from the original claimed invention to the invention disclosed in the original patent — effectively tying reissue to the 112 requirements.

In its decision in this particular case, the Federal Circuit affirmed without opinion the lower court decision on improper reissue.

The Ikorongo invention relates to a method and system for tracking and sharing a user’s visited geographic location data using a location-aware device, such as a smartphone. The original patent, U.S. Patent No. 7,080,139, claimed an invention that allowed users to selectively share their “computer usage experiences,” which included visiting locations with location-aware devices and sharing that information with buddies.  Ikorongo sought and obtained reissue patents, U.S. Patent Nos. RE45,543 and RE47,704, which focused more specifically on tracking and sharing visited geographic location data using a “satellite-based location-fixing protocol.” The reissue claims omitted certain aspects of the original claims, such as the sharing of other types of computer usage experiences like browsing URLs, downloading files, or watching videos.  The district court found the reissue improper, applying the Antares standard, which requires that the original patent specification “clearly and unequivocally disclose the newly claimed invention as a separate invention.”  Although the original patent disclosed collecting visited geographic location data, it did not disclose sharing that data separately from other computer usage experiences. The court also found that the original patent did not adequately disclose using a “satellite-based location-fixing protocol” to track the location data. Because these aspects of the reissue claims were not clearly and unequivocally disclosed as separate inventions in the original patent, the court held the reissue patents invalid.

I listened to the oral arguments and heard the patentee arguing both the facts and the law, noting that their claims should be valid even under the wrong Antares standard: “We clearly and unequivocally disclosed in our original patent an invention that tracks and shares visited geographic location data separate and apart from any other data and does so using satellite-based technologies.”  Nathan Hall (Nix Patterson) arguing on behalf of Ikorongo.  Bumble argues the original disclosure of “location” is distinct from and does not support “geographic location” in the reissue claims. Noah Graubart (Fish) arguing for Bumble.

22 thoughts on “Ikorongo Challenges Federal Circuit’s Heightened “Same Invention” Requirement for Reissue Patents

  1. 5

    In Antares the Fed. Cir. affirmed the denial of a preliminary injunction entered by the District Court because the reissue was invalid for failure to satisfy the “original patent” requirement. The case is a bit odd in that the District Court did not even reach the “original patent” requirement because it concluded the reissue was likely invalid for violating the recapture rule. And the Fed. Cir. did not reach consideration of the recapture rule because the panel decided the case under its “original patent” requirement. Not surprising that Judge Dyk authored the opinion.

    1. 5.1

      Thanks for the reminder of the reissue “recapture rule.” [Not being able to recapture claim scope with a broadening reissue that had been given up by the applicant in prosecution of the issued patent claims].

  2. 4

    I filed one broadening reissue. It took almost six years to get an allowance. Fortunately, it was a pre-GATT case. But, that is a long time, especially considering intervening rights.

  3. 3

    One problem in all this is that unauthorized adopters of the invention disregard the specification. They act like the claims are the only notice they are given. That’s why they are always trying to get rid of continuations. They think it’s fair to (mis)construe the claims of the original patent and then never be liable for using the invention described by the specification. But the specification puts them on notice. If they want to market a new product or service disclosed in the specification after the priority date, then they are using technology invented by another and shouldn’t feel entitled to get away with it. Infringers read claims like a puzzle, trying to figure out how they can get away with practicing the invention without permission. So that’s why inventors must file continuations and reissues, hoping that 10 to 15 years of chasing them will yield some small payback for our work.

    1. 3.1

      That’s pretty standard stuff for portfolio discussions.

    2. 3.2

      “They act like the claims are the only notice they are given. That’s why they are always trying to get rid of continuations.”

      Who are these people that are “always trying to get rid of continuations”? Name a couple of them, please.

      1. 3.2.1

        Obtuse. Is it deliberate?

      2. 3.2.2

        Note the PTO’s recently proposed substantial patent fee increases for continuing applications, terminal disclaimers and RCEs.

  4. 2

    While the Supremes are unlikely to take cert on this broadening reissue legal issue, 35 USC 251 could certainly use some clairification.
    What is surprising is how rarely reissues are used in general. Only broadening reissues are limited to filing them less than two years after the patent issued. One sees many patent suits lost for non-infringment or invalidity that look like broader or narrower reissed claims might have prevailed. One explanation I have heard is the reluctance of patent attorneys or clients to make the admission of error or mistake required for a application reissue. Or, they are afraid of getting hit with new prior art. Also, of course, it could also reduce pre-reissue infringement damages recovery in many cases.
    As to the blog discussion re what appears to me to be a vestigial retention or influence of the prior “same invention” requirement [even though the statute was amended in 1952], also note that the reissue statute has a whole second provision about Divisionals of reissues that should be logically accomodated.
    If I remember correctly, reissue application are now handled by the PTO’s special examination group, which should reduce some of the legal errors that sometimes occured back when reissues were handled by regular examiners with no experience with them.

    1. 2.1

      Keeping a continuation pending is a zillion times preferable to filing a reissue. If there is a reason to prefer the option of filing a reissue versus the option of pursuing different claims in a continuation, I’d like to hear it. That would be some inside of the center of the inside baseball stuff.

      1. 2.1.1

        >If there is a reason to prefer the option of filing a reissue

        Maybe b/c most inventors can’t afford the legal and government fees just-in-case: (i) someone actually infringes; AND (ii) SCOTUS decides to rewrite patent law (again!), rending your patent invalid??

        While I agree with your basic observation (continuations >>> reissues), it’s just another reason why patents are mostly a sport-of-kings nowadays.


          You really think that most inventors who can afford to file a decent patent application in the first instance are incapable of paying for a string of continuations?

          I think you’re off your rocker. I think the percentage of patent owners who can afford to obtain a first patent and who can’t afford a string of continuations later is very, very small.

          Maybe these “poor” “solo inventors” with their awesome super valuable ideas should sell one of their self-driving trucks or houses if they can’t afford to keep a continuation pending. Or maybe decide not to have a “quiverfull” of kids.


            Translation: grifters gonna grift.


            Dude, you got issues and they have nothing at all to do with patent law. Seek help beyond this page.


              “ the percentage of patent owners who can afford to obtain a first patent and who can’t afford a string of continuations later is very, very small.”

              Agree or disagree?

              I’ve been watching this community long enough to know exactly who the people are who have “issues beyond patent law”. Hint: rhymes with “blibertarian stools.” In other words, it’s the same c r e e ps who think “government is the problem” but who want to make it as easy as possible to obtain patents so they can threaten everybody in the country with a Federal lawsuit.




                Malcolm’s Number One tactic:


                exactly who the people are who have “issues beyond patent law”


      2. 2.1.2

        Indeed, continuations of applications with improved claims is greatly preferable to reissues. But many do not get a hard or a different attorney review for potential defects or better-for-litigation claims until after they have already issued, and are being asserted, or are about to be asserted, in licensing or lititigation. A continuation is not then an option. Reexamination or reissue is.
        Also, reissues are not just for major substantive claim scope changes. There are also some things that are simple to fix with reissues that can avoid much larger unneccessary litigation expenses.


          “ many do not get a hard or a different attorney review for potential defects or better-for-litigation claims until after they have already issued, and are being asserted, or are about to be asserted, in licensing or lititigation. A continuation is not then an option”

          But this is exactly why you always file a continuation and have one pending at all times. The only reason not to file a continuation is if you are no longer interested in the technology covered by the application (i.e., you’ve “moved on” or changed your business model). The cost of filing the continuation (or continuations) is trivial compared to the value of having a pending continuation and the flexibility it provides. If there is ANY chance of licensing or litigation or needing to “fix a claim”, filing a continuation is a solid worthwhile investment.


            Yes, keeping a continuation pending on a patent one is planning to litigate is a fairly common tactic – the art asserted against the patent in suit can be presented and distinguished in the continuation, and claims written to be clearly infringed by later products of others if 112 possible.
            But the point was that just only having the same PTO practitioner filing the continuations is not as valuable as also having the continuation’s claims and prior art also reviewed by a patent lititgation attorney or other independent expert.


              Very much depends on how you train the practitioners in the first place (along with any other process controls like budget).

              I “get” that not all training is the same, and certainly there has been a growing emphasis of ‘just get it done’ (lowest possible cost), but I’ve been around long enough to have been trained to ‘do it right, right from the start,’ and draft the application already with several audiences in mind, including those in potential litigation stage.

  5. 1

    Looking in from outside, I am struck by the ubiquity of the expression “same invention”. See Wikipedia on the Paris Convention:

    “The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application.”

    And Art 87(1) of the European Patent Convention. The issue what is the “same invention” arises most every time Paris Convention priority is invoked, regardless of jurisdiction.

    Accordingly, I see this petition for the grant of certiorari as a red hot potato. The present composition of SCOTUS has no competence to venture into the minutiae of patent law, in case it (yet again) performs a mis-step. Accordingly, the petition will surely be declined.

    Anybody here sees it differently?

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