New CAFC Decision Interpreting the Original Patent Requirement of 35 U.S.C. § 251 May Be Imminent

As intellectual property litigators who litigate reissue patents know, the Federal Circuit has not decided a case based on the original patent requirement of 35 U.S.C. § 251 since the 2014 Antares Pharma, Inc. v. Medac Pharma Inc. decision. 771 F.3d 1354 (Fed. Cir. 2014). In Antares Pharma, the court held that to comply with the original patent requirement, an invention claimed in a reissue patent must either be for: (i) the same invention disclosed in the original patent or (ii) a newly claimed invention “clearly and unequivocally” disclosed as a separate invention in the original patent. See id. at 1362. An appeal of a decision in Forum US, Inc. v. Flow Valve, LLC, Civ. No. 17-495-F (W.D. Ok.), Docket Entry 45, (CAFC Appeal No. 18-1765) invalidating certain claims pursuant to the original patent requirement is scheduled to be argued at the Federal Circuit on January 11, 2019 and may result in a new precedential decision applying the original patent requirement.

In Forum US, the plaintiff sought a declaratory judgment that claims 14-20 of U.S. Reissue Patent 45,878 were invalid. The original patent related to the machining of pipe joints used in the oil and gas industry. Each of the 13 original patent claims required “a plurality of arbors.” The summary of the invention likewise referred to a plurality of arbors. The specification of the original and reissue patents stated that “the multiple arbors of the workpiece supporting assembly provides means for machining the ends . . . and only a change from one arbor to one of the other arbors allows rapid and accurate machining of the workpiece in a machine turning machine.” See U.S. Reissue Patent 45,878 at Col. 3, lns. 42-47. According to Forum, no drawings or written description in the original patent disclosed a fixture that did not include two arbors. See Forum’s Answer Br. at p. 19.

Asserted reissue claims 14-20 omitted the “plurality of arbors” limitation. Forum claimed violation of the original patent requirement, presenting as an undisputed fact that the original patent specification did “not indicate in an explicit and unequivocal manner that the invention . . . c[ould] be practiced without a plurality of arbors.” (Civ. No. 17-00495, D.I. 45 at p. 5) The patentee, Flow Valve, argued that the original specification disclosed multiple inventions and that 35 U.S.C. § 251 does not include the terms “explicit” or “unequivocal.” (Id. at p. 6) But, the district court granted partial summary judgment to Forum, stating that “a reissue patent is invalid if it does not explicitly and unequivocally indicate the new invention sought to be covered in the reissue patent.” (Id. at p. 11).

Flow Valve appealed the Oklahoma district court decision to the Federal Circuit. On appeal, Flow Valve argued that fact issues concerning how a Person of Ordinary Skill in the Art (“POSA”) would have understood the original patent should have precluded summary judgment. See id., Corrected Opening Br. of Flow Valve at 13. For example, in opposing summary judgment, Flow Valve submitted a declaration from a working machinist stating that a POSA would have understood that “arbors were an optional feature of the invention” id. at 6 and argues that this declaration raised a genuine issue of material fact. Flow Valve further argues that the original patent never identified arbors as critical to the inventions disclosed. Id. at 17. Forum argues that the challenged reissue claims omit a limitation “taught to be a required element of the invention” in the original patent specification. See Forum’s Answer Br. at pp. 19-20. Forum further argues that no matter what a POSA would recognize, the original patent specification must disclose clearly and unequivocally the invention claimed in a reissue patent to satisfy the original patent requirement. Id. at 7.

Gibbons will monitor and report on how the Federal Circuit rules and whether the Court reaffirms or alters the legal standard for invalidating reissue claims pursuant to the original patent requirement.

Wendy R. Stein is a Director in the Gibbons Intellectual Property Department. She litigates patent infringement cases in federal court and recently presented a CLE entitled “Hot Issues in Reissue Patent Litigation” which is available on www.lawline.com.
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