Reissue and the Original Patent Doctrine

Takeaways:

• The original patent doctrine sets boundaries on broadening reissue claims.
• In reissue, ex post facto expert testimony cannot substitute for undisclosed elements.

As mentioned in last month’s IP Practice Tips, reissue applications are subject to additional legal doctrines founded in requirements of 35 U.S.C. § 251. One doctrine that has been operative since the first reissue statute was introduced in 1832 is modernly known as the “original patent requirement” (OPR). As currently seen in 35 U.S.C. 251(a), the statute provides in pertinent part “…the Director shall … reissue the patent for the invention disclosed in the original patent, […].” OPR rejections are usually made in broadening reissue applications as an applicant seeks to broaden one or more aspects of a patent’s claims.

Sometimes referred to as the “same invention” requirement, the OPR is a well settled doctrine. For example, in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, (Fed. Cir. 2019), the Court quoted both U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668,  676 (1942), (“it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification,”) and Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42-43 (1893), (“[T]o warrant new and broader claims in a reissue, such claims must not be merely suggested or indicated in the original specification, …, it 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.”) In the Federal Circuit’s precedential Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014), the Court distinguished the OPR from the ability to claim “overlooked aspects,” and applied the OPR as “the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Id. at 1362.

More recently, the Federal Circuit addressed the OPR with two decisions of note. In In re Float’N’Grill LLC., 72 F.4^th 1347 (Fed. Cir. 2023), the Court relied upon the OPR to prevent the broadening of a disclosed critical element in the claim. Here, the specification disclosed magnets as the only means for removably attaching a grill to a pool float. The Patent Owner’s reissue application attempted to replace the claimed “plurality of magnets” by functionally claiming the grill as “removably securable and removable.” Because the magnets were disclosed as critical (that is, without alternatives,) the Court found the reissue application failed to meet the OPR of §251.  Similarly, in a non-precedential decision Cioffi v. Google LLC, 18-1049 (Fed. Cir. 2023), the Court soundly rejected Cioffi’s expert testimony of what a person of ordinary skill in the art would infer from reading the specification, stating that there must be “express disclosure” of the “exact embodiment claimed in reissue.” Thus, the Court found that ex post facto expert testimony cannot substitute for undisclosed elements.

All these cases demonstrate that success in broadening reissues requires careful consideration of the boundaries of the original disclosure. During examination, the CRU examiners will review the reissue application to determine if the reissue claims satisfy the OPR. Red flags that CRU examiners look for include whether the reissue application’s claims are enabled under 35 U.S.C. § 112 requirements, whether the patent specification indicates an intent to not claim the subject matter newly claimed in the reissue application, and whether the newly claimed invention is clearly and unequivocally disclosed in the original specification as a separate invention with the claimed combination of features. Thus, when crafting broadened reissue claims it is critical to consider the OPR in light of the breadth and criticality of features disclosed in the original patent application filing.