Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Forum US, Inc. v. Flow Valve, LLC, 2018-1765 (June 17, 2019). Forum filed a declaratory judgment action against Flow Valve seeking a declaration that the claims of Flow Valve’s reissue patent, No. RE45,878, were invalid for failure to comply with the “original patent” requirement of 35 U.S.C. § 251. The original patent—U.S. Patent No. 8,215,213—disclosed and claimed fixtures for holding workpieces (such as pipe fittings for use in the oil and gas industry) in place during machining. Forum asserted the reissue claims were invalid because they were broader than the invention disclosed in the original patent. Specifically, Forum asserted that every embodiment described or depicted in the original patent used arbors (spindle-like attachments) for holding a workpiece while it rotates, and the reissue claims were impermissibly broad in not specifying the use of arbors. Forum moved for summary judgment of invalidity, and the district court granted the motion. Flow Valve appealed.
The Federal Circuit affirmed. The Court first noted that compliance with the original patent requirement is a question of law subject to de novo review. The Court further noted that in assessing compliance with § 251 the use of expert evidence is limited to aiding the Court’s understanding of the meaning of technical or scientific terms or terms of art. The Court explained that § 251 requires that a reissue patent be “for the invention disclosed in the original patent.” The Court further explained that for broadening reissue claims, like those at issue in the appeal, the question is not whether the specification would have been sufficient to support the claims had they been presented in the original patent. A suggestion or indication of the invention in the specification is not enough; rather, “[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 . . . Stated differently, the original patent must clearly and unequivocally disclose the newly claimed invention as a separate invention.” The Court concluded the original Flow Valve patent did not, on its face, disclose an arbor-less embodiment of the invention. The opinions of Flow Valve’s expert, directed to what a person of ordinary skill would understand versus what the specification expressly discloses, were insufficient to create a dispute of material fact.