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Forum US, Inc. v. Flow Valve, LLC

Broadening Reissue Must Be Supported by Face of Original Patent Description

Forum US, Inc. v. Flow Valve, LLC, __ F.3d __, 2019 WL 2494728 (Fed. Cir. June 17, 2019) (REYNA, Schall, Hughes) (W.D. Okla.: Friot) (2 of 5 stars)

Fed Cir affirms summary judgment of invalidity. Flow Valve’s patent is a reissue relating to fixtures for holding workpieces during machining. The patent does not comply with § 251’s original patent requirement, and is invalid. The opinion describes the history of § 251 and reasons that the statute requires, in the case of a broadening reissue, that the original patent “must do more than merely suggest or indicate the invention recited in reissue claims; ‘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.’” Op. at 8 (quoting Industrial Chemicals, 315 U.S. 668 (1942)). It was undisputed that Flow Valve’s original application contained no embodiments addressed by the claims, which lacked an element that was present in all embodiments. Flow Valve’s submission of a declaration asserting that a skilled artisan would have understood the omitted feature to be “an optional feature.” “Even if a person of ordinary skill in the art would understand that the newly claimed, [feature]-less invention would be possible, that is insufficient to comply with the standard set forth in Industrial Chemicals and Antares, 771 F.3d 1354 (Fed. Cir. 2014).” Op. at 10. In re Amos, 953 F.2d 613 (Fed. Cir. 1991), is not contradictory because in that case the description addressed the later-claimed feature.

KEYWORDS: REISSUE; INVALIDITY (YES)