Federal Circuit invalidates reissue patent invalid for lack of written description (WD)


Forum US, Inc. v. Flow Valve, LLC et al. (FC Docket No. 2018-1765; June 17, 2019)

~ Forum filed DJ action, DC granted SJ to Forum for lack of WD, FV appealed

~ U.S. 8,215,213 relates “to supporting assemblies” (“arbors”) “for holding a workpiece”

~ Reissued as RE45,878 with seven new claims including “arbor-less embodiment”; FV argued skilled artisan would understand from specification that arbors are optional (including expert declaration)

~ FC panel explained that “for broadening reissue claims,” it is not enough “that an invention…was suggested or indicated in the specification” (Indus. Chem., US 1934; Corbin, US 1893; Antares, FC 2014 (“the ‘same invention’ requirement”); In re Amos, FC 1991; Revolution Eyewear, FC 2009)

~ FC panel determined insufficient WD, e.g., “[t]he few references…to machining in general…and the boilerplate language that modifications can be made” insufficient, and declaration found insufficient as not aiding “the court in understanding what the instruments say”.

This entry was posted in Reissue, Uncategorized, Written description. Bookmark the permalink.

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