In two opinions issued in the past few weeks, the Federal Circuit has shaken up two requirements of the reissue statute that most practitioners don’t think about much. 35 USC 251(a) authorizes reissue of a patent “for the invention disclosed in the original patent.” 35 USC 251(c) provides that “[t]he provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent,” which includes the written description requirement of 35 USC 112(a). The “conventional” wisdom up to now has held that these requirements are more or less synonymous (and not considered arduous). Now, we aren’t so sure.
In Forum US, Inc. v. Flow Valve, LLC, ___ F.3d ____ 2019 U.S. App. LEXIS 18055 (Fed. Cir., June 17, 2019), the district court invalidated a reissue patent on summary judgment on the ground that the reissue claims did not comply with the “original patent” requirement of the reissue statute. The Federal Circuit affirmed, agreeing on the basis of long-standing precedent under the pre-1952 reissue statute – which referred to the “same invention” as the original patent – that the broadened scope of the reissue claims was not apparent from the face of the original patent specification.
The original patent claims were directed to “a workpiece machining implement” that included a “plurality of arbors” supported by a “body member” of the machining implement. The reissue claims were broadened to eliminate the reference to the plurality of arbors. In opposition to the motion for summary judgment of declaratory judgment plaintiff Forum, which argued that the original patent did not disclose an invention without arbors, patentee Flow submitted an expert declaration stating that persons skilled in the art would understand that the patent disclosed multiple embodiments, both with and without arbors. The district court found that the expert declaration did not raise a genuine issue of material fact because “no matter what a person of ordinary skill in the art 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.”
In affirming, the Federal Circuit agreed that the expert declaration did not create a genuine issue of material fact because it did not “aid the court in understanding what the ‘instruments … actually say’ but instead asserts what a person of ordinary skill in the art would purportedly understand.” Flow did not dispute that the original patent did not disclose any arbor-less embodiment of the invention. The court concluded:
Thus, for broadened reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to be covered and secured by the original.” U.S. Indus. Chems., 315 U.S. at 676. (Emphasis added by court.) Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares [Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014)] at 1362.
Thus, to the extent the “original patent’ requirement may in the past have been analogized to the written description requirement, Forum US makes it clear that the “original patent” requirement in reissue is heightened from the standards usually applied in the usual written description inquiry under 35 USC 112(a).
The written description requirement as applied to reissue applications came to the fore a mere three weeks later in In re Global IP Holdings LLC, ___ F.3d ____, 2019 U.S. App. LEXIS 20049 (Fed. Cir. July 5, 2019). In this case, the PTAB had affirmed the rejection of reissue claims for lack of written description. The “original patent” requirement was not involved, from what appears in the court’s opinion. The invention of the original patent as claimed was a “carpeted automotive vehicle load floor” that included a composite panel including first and second thermoplastic skins and core. The applicant had proposed to amend “thermoplastic” to “plastic,” averring in the reissue declaration that he was aware of the use of plastics other than thermoplastics and presumably should have originally presented claims that were not so limited. The Examiner rejected the claims as presenting new matter because the specification described only thermoplastic materials and did not describe skins or core as being formed generally from plastic materials. Global argued on appeal that the type of plastic used was not critical to the invention, that other types of plastic materials were “predictable options” and that the disclosure of the species of thermoplastics supported the genus of plastics the applicant now wished to claim. The PTAB affirmed, stating that “regardless of the predictability of substituting alternatives or the actual criticality of thermoplastics,” the specification showed that the applicant had possession of only thermoplastics as comprising the skins and core.
The court held that the standard applied by PTAB “conflicts with our precedent” and vacated and remanded the case to the PTAB. The court’s primary dispute with the PTAB’s analysis lay in the PTAB’s belief that the written description inquiry was to be conducted “regardless” of the predictability of the substitution of alternatives for thermoplastics or the criticality of thermoplastics in the invention as disclosed. Au contraire, said the court, citing In re Peters, 723 F.2d 891 (Fed. Cir. 1983), a seldom (if ever) cited reissue case in which the court found claims to comply with the written description requirement where they omitted “an unnecessary limitation that had restricted one element of the invention to the exact and non-critical shape disclosed in the original patent.” Id. at 892. The court found this result not to be contrary to its seminal case Ariad Pharm., Inc v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc), holding that “in some cases, the criticality or importance of the expressly disclosed species may be relevant to whether an inventor had possession of a claimed genus.” Although the applicant had cited the inventor’s declaration to the PTAB as factual support for its position, the court did not refer to the declaration in its analysis. The court vacated and remanded because the PTAB had not addressed the relevant factors based on the record evidence.
These cases seem to expose a divide between the seemingly strict standard applied in Forum US to determine whether broadened reissue claims that omit elements from original claims are for “the invention disclosed in the original patent” and the rather more benevolent standard enunciated in Global IP for whether the same type of broadened claim is supported by a written description in the original patent. The court’s treatment of the summary judgment declaration in Forum US seems particularly at odds with the analysis in Global IP. Only time will tell how these cases are reconciled.
 Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42-43 (1893); U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 678 (1942).
 Barry E. Bretschneider, Of Counsel, Washington, DC, office. The author thanks John F. Murphy of the Philadelphia office for his comments and analysis of the Global case.