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Court rejects overly broad reissue patent application

Cantor Colburn Year End 2023 IP Newsletter

Regrets — we’ve all had a few. A patentee, for example, might regret not obtaining broader patent protection. A reissue patent could come to the rescue, but only if certain requirements are met. One patentee recently learned this lesson the hard way.

Patentee floats expanded claims

The patent at issue covers a float designed to support a grill that allows a user to grill food while in a body of water. The invention includes two grill supports with “a plurality of magnets” to removably secure the grill to the supports.

The patentee subsequently filed a reissue application, believing that it had claimed less than it was entitled to claim. None of the reissue claims included the plurality of the magnets’ limitation, but instead, called more generically for the removable securing of a grill to the float apparatus.

A patent examiner rejected the reissue claims under Section 251 of the Patent Act because they didn’t require the supports to contain a plurality of magnets. After the Patent Trial and Appeal Board (PTAB) affirmed the examiner’s decision, the patentee appealed.

Court sinks reissue patent

On review, the U.S. Court of Appeals for the Federal Circuit explained that, under Sec. 251, reissue claims must cover “the invention disclosed in the original patent.” This is known as the original patent requirement. According to the U.S. Supreme Court, an original patent and a reissue patent are for the same invention if the reissue fully describes and claims “the very invention” that the original patent was intended to secure.

Conversely, a reissue claim doesn’t satisfy the original patent requirement simply because the newly claimed invention might have been claimed in the original as a suggestion or indication in the specification. Further, it’s irrelevant that the result accomplished in the reissue is the same as that attained by following the process claimed in the original.

According to the Federal Circuit, a Sec. 251 analysis should focus on the invention disclosed in the original patent. The courts will focus on whether that disclosure, on its face, explicitly and unequivocally described the invention as recited in the reissue claims. Thus, reissue claims that broaden a patent limitation to cover undisclosed alternatives to a particular feature — that appears from the face of the original specification to be a “necessary, critical, or essential part of the invention” — don’t meet the original patent requirement.

Using this analysis, the reissue patent here didn’t satisfy the requirement. In the original patent, the “plurality of magnets component” was the only disclosed component for removably securing the grill to the support; it wasn’t described as optional, representative of removable fasteners generally or exemplary of a broader invention. Moreover, the original doesn’t include examples of alternative components or arrangements that might perform the functions of or operate in a manner similar to the plurality of magnets.

The plurality of magnets component, the PTAB and court both found, is an essential element of the invention — the court emphasized that an express statement of “criticality” in the original specification isn’t necessary. The original specification included no disclosure or suggestion of an alternative fastener, and the one disclosed is unlike any alternative that might even be considered (for example, nuts and bolts). The specification contained nothing suggesting to a person with ordinary skill in the field that alternative removable fasteners may be used.

Don’t get burned

Can patent applicants seek expanded scopes of coverage beyond what they originally sought? Yes, by filing a continuation or divisional application while the initial application is pending and including claims extending to the full scope of the invention described in the original specification. After the patent has been granted, though, they’ll need to satisfy Sec. 251.

© 2023

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