Grüneberg and Myers - Intellectual Property Law


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Broadening Reissue Must Satisfy Written Description and Original Patent Rule

In Forum US, Inc. v. Flow Valve LLC the Fed. Cir. affirmed the district court’s grant of summary judgment of invalidity for a broadening Reissue patent.  The Reissue patent broadly claimed a fixture for holding workpieces during machining while the written description and drawings disclose only embodiments with arbors.  Citing 35 USC 251, the district court granted summary judgment in favor of plaintiff on the basis that the written description and drawings of the Reissue patent do not “explicitly and unequivocally” indicate the invention claimed in the reissue claims holding that the specification of the original patent must clearly and unequivocally disclose the newly claimed invention in order to satisfy the original patent rule.  Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[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.  Reissue patentee’s argument, support by expert declaration that a person of ordinary skill in the art would understand from the specification that arbors were an optional feature of the disclosed invention did not aid the court in understanding what the “instruments . . . actually say. 

Richard Chinn