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Federal Circuit Finds Another Reissue Application Fails to Meet the "Original Patent" Requirements

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Sterne, Kessler, Goldstein & Fox P.L.L.C.

In Forum v Flow Valve, decided June 17, 2019, the Federal Circuit held Flow Valve’s reissue claims were invalid for failing to comply with 35 U.S.C. 251(a): “for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention received in reissue claims: ‘[i]t must appear from the face of the instrument that what is covered by the reissue claims was intended to have been covered and secured by the original.’”

The patent claimed fixtures for holding pipe fittings during machining. The original patent disclosed only embodiments that used arbors to hold a pipe joint while it rotated. The reissue patent added claims that did not use arbors.

Flow Valve argued that a skilled artisan would have understood the disclosure to include embodiments without arbors. The Court disagreed, stating that even if a skilled artisan would have understood the newly claimed invention was possible, that “was insufficient to comply with th[is] standard.”


This article appeared in the July 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.