reissue : CAFC Alert

Heightened “original patent” written description standard applies for reissue patents

| December 20, 2019

Forum US Inc., v. Flow Valve, LLC.

June 17, 2019

Before Reyna, Schall, and Hughes. Opinion by Reyna.


The CAFC affirmed a district court decision holding that Flow Valve’s Reissue Patent No. RE 45,878 (“the Reissue patent”) is invalid because of insufficiently supported broadening claims. The original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention,” otherwise the claims in the reissue patent do not comply with the original patent requirement of 35 USC 251.


Flow Valve’s original Patent No. 8,215,213 (“the original patent), entitled “Workpiece Supporting Assembly” relates to machined pipe fittings typically used in the oil and gas industry. The written description and drawings disclose only embodiments with arbors.

Figs. 4 and 5 from the original patent with arbors circled in red:

Claim 1 of the original patent also expressly claimed the arbors (emphasis added):

A workpiece machining implement comprising:

a body member having an internal workpiece channel, the body member having a plurality of body openings communicating with the internal workpiece channel;

means supported by the body member for positioning a workpiece in the internal work piece in the internal workpiece channel so that extending workpiece portions of the workpiece extend from selected ones of the body openings;

a plurality of arbors supported by the body member, 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.

When Flow Valve filed the reissue patent application, the patentees broadened the claims by adding seven new claims, where the arbor limitations were replaced by a “pivotable” limitation. Claim 14 is representative of the reissue patent:

Claim 14 of the reissue patent:

A workpiece supporting assembly for securing an elbow during a machining process that is performed on the elbow by operation of a workpiece machining implement, the workpiece supporting assembly comprising:

a body having an internal surface defining a channel, the internal surface sized to receive a medial portion of the elbow when the elbow is operably disposed in the channel; and

a support that is selectively positionable to secure the elbow in the workpiece supporting assembly, the body pivotable to a first pivoted position, the body sized so that a first end of the elbow extends from the channel and beyond the body so the first end of the elbow is presentable to the workpiece machining implement for performing the machining process, the body pivotable to a second position and sized so that a second end of the elbow extends from the channel beyond the body so the second end of the elbow is presentable to the workpiece machining implement for performing the machining process.

Forum US, Inc. sued Flow Valve for a declaratory judgment of invalidity of the reissue patent, arguing that the added reissue claims were invalid because they did not comply with the original patent requirement under 35 USC 251.

In particular, Forum argued that the claims broadened the original patent claims by omitting the arbor limitations, which is a violation of the original patent requirement of Reissue patent because the original patent did not disclose an invention without arbors.

In response, Flows Valve supplied an expert declaration asserting that a person of ordinary skill in the art would have understood from the specification that not every embodiment requires “a plurality of arbors” and that the arbors are an optional feature.

The district court granted Forum’s summary judgement, holding that “no matter what a person of ordinary skill would recognize, the specification of the original patent must clearly and unequivocally disclose the newly claimed invention in order to satisfy the original patent rule.”

Flows Valve appealed but the CAFC affirmed the district court’s decision.

In affirming the district court’s decision, the CAFC relied on two cases U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668 (1942), and Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir 2014), to the effect that, for broadening reissue claims, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification”, instead, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.”

Like the District Court, the Appeals Court discounted the expert declaration, commenting that “when a person of ordinary skill in the art would understand ‘does not aid the court in understanding what the’ patent actually say.”

Take away

  • Heightened “original patent” written description standard applies for reissue patents.
  • Expert testimony on the understanding of a person of skill in the art as evidence is insufficient.
  • If it is likely in the foreseeable future to have the needs to broaden the claims, use a continuation application so that applicant does not have to meet the additional “clear and unequivocal disclosure as separate invention” requirement of a broadening reissue.

CAFC says reissued patent can’t sail into safe harbor

| July 8, 2015

G.D. Searle LLC et al. v. Lupin Pharmaceuticals, Inc., et al.

June 23, 2015

Before: Prost, Bryson, and Hughes. Opinion by Bryson

The CAFC strictly construes the “safe harbor” provision of 35 USC § 121 and casts doubt on whether there are any circumstances in which reissue can be used to correct failure to file a divisional application.

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Reissue cannot modify Claim Construction determined for repeated Original Patent Claims

| June 3, 2015

ArcelorMittal France v. AK Steel Corp. et al.

May 12, 2015

Before: Dyk, Wallach and Hughes.  Opinion by Hughes.


ArcelorMittal had filed suit on the ‘805 patent against the appellees.  However, the construction of a key term “very high mechanical resistance” was unfavorable to ArcelorMittal and a jury subsequently found the claims of the ‘805 patent not infringed and invalid.  During appeal of the decision ArcelorMittal filed a Reissue application at the USPTO which included a new dependent claim with a broader construction of “very high mechanical resistance” than that construed during the judicial action.  The CAFC affirmed the District Court’s claim construction but remanded the case on other grounds.

ArcelorMittal filed new suits based on the Reissue patent, but the District Court granted Summary Judgment invalidating the claims on the basis that the term “very high mechanical resistance” was earlier construed  during the ‘805 litigation narrower than the subsequent claims of the Reissue patent.  The CAFC affirmed the District Court asserting that under the law-of-the-case-doctrine and mandate rule, ArcelorMittal could not use the Reissue process at the PTO to broaden construction after the decision on the ‘805 patent.

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License agreement to a patent may extend to a corresponding reissue patent

| December 19, 2012

Intel Corp. v. Negotiated Data Solutions, Inc.

December 17, 2012

Panel:  Prost, Wallach and Linn.  Opinion by Linn.


Intel and National Semiconductor Corp. (“National”) entered into a cross-licensing agreement.  The agreement gave Intel rights to National’s patents and patent applications having an effective filing date during the period in the agreement which lasted from 1976 to 2003.   This case deals with four patents that were covered under the agreement. National assigned these patents to Vertical Networks, Inc. (“Vertical”) in 1998.  Vertical then filed broadening reissue applications for three of the patents.  In 2003, Vertical assigned the original patents and the reissue applications to Negotiated Data Solutions, Inc. (“N-Data”).  In 2005 and 2006, well after the agreement expired, the PTO issued reissue patents to N-Data.  The issue in this case is whether the agreement, which licenses National patents to Intel, automatically extends to any reissue patents that are derived from those licensed National patents.  The CAFC held that the license agreement extends to the full scope of any coverage available by way of reissue for the invention disclosed.

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Prosecution Argument Bars Later Recapture Through Broadening Reissue

| August 29, 2012

Greenliant Systems, Inc. v. Xicor LLC

August 22, 2012

Panel:  Linn, Plager and Dyk.  Opinion by Dyk


Xicor obtained a patent claiming a semiconductor device with a tunneling layer formed by low pressure chemical vapor (CVD) deposition using tetraethylorthosilicate (TEOS).   Xicor sought and obtained reissue of the patent with device claims that did not recite the use of TEOS.   Subsequently, Greenliant sued Xicor for declaratory judgment of invalidity of the reissue claims based on recapture rule, which prohibits recapture via reissue of subject matter surrendered in order to overcome prior art during prosecution of the original patent.  The District Court held the reissue claims invalid, and the Federal Circuit affirms.  Xicor had repeatedly argued during prosecution of the original patent that the product-by-process limitation of using TEOS imparted structural limitations to the final product.  This is sufficient for the recapture rule to apply, even if Xicor now recognizes that the structure of the tunneling layer does not actually depend on the material used for the CVD process, but on deposition conditions such as temperature and pressure.

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Recapture Issues in a Reissue Application

| May 30, 2012

In Re Roger Youman and Marney Morris

May 8, 2012

Panel: Lourie, Schall and Prost. Opinion by Prost. Dissent by Lourie.


Applicants filed a broadening reissue application within two years of the patent issuing.  The examiner rejected the claims because applicants attempted to recapture surrendered subject matter.  The Board of Patent Appeals and Interferences (BPAI) affirmed the examiner’s rejection but the Court of Appeals for the Federal Circuit (CAFC) overturned the BPAI ruling and in doing so, clarified the three step process to determine if applicant is barred by the recapture rule.

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Interpretation of statutory two-year time limit for enlarging the scope of claim in a continuing reissue application filed after the two-year window

| March 14, 2012

In re Erik P. Staats and Robin D. Lash

March 5, 2012

Panel:  Dyk, O’Malley and Reyna.  Opinion by Dyk.  Concurrence by O’Malley.


In 1999, a patent was issued to Staats (assigned to Apple Computer) based on an application for his invention regarding isochronous data transfer in a computer.  The patent discloses two embodiments.  Staats then filed a first reissue application within two years from the issue date of the patent, broadening the scope of claims related to a first embodiment.  Outside the two-year window, he further filed other broadening reissue applications as continuations.  In 2007, almost seven years after the original patent issued, the last broadening reissue application was filed, which is related to a second embodiment.  The PTO’s board held that the last continuing reissue application was not filed within the two-year window because it was not related to the first embodiment which was timely presented within the two-year window.  The CAFC reversed and remanded this case, affirming their precedent case which holds that the statutory two-year limit applies to only the filing date of a reissue application, not to the date that broadened claims are presented.

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