Once a patent is granted, a patentee may seek to change the scope of the claims through reissue, subject to the additional statutory limitations in 35 U.S.C. § 251, including that the reissue claims must be directed to “the invention disclosed in the original patent.” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014) (also noting the prohibition against recapture of disclaimed subject matter). This has come to be known as the “original patent” requirement of § 251. And satisfaction of the Section 112 written description requirement does not necessarily satisfy the original patent requirement.

U.S. Industrial Chemicals. v. Carbide & Carbon Chemicals

The U.S. Supreme Court addressed the original patent requirement in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668 (1942). There, the original specification explained that the addition of water improved the efficiency of a certain reaction by limiting inefficient side reactions; and nothing in the original specification indicated that water was optional. Id. at 671–73. After the patent was issued, the patentee discovered that water was not required for the most efficient reaction, and later obtained a reissue patent with a substitute specification and new claims indicating that the reaction could take place with or without added water. Id. at 673–74.

The disclosures of the original and reissue patents would be for the same patent or invention “if the reissue fully describes and claims the very invention intended to be secured by the original patent.” Id. at 675–76. The Court also noted that “[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.” Id. at 676.

Because the original specification and claims treated the introduction of water as “a necessary step” in the process, and because on the face of the two patents the introduction of water was “a step not designated as optional or desirable but described and claimed as an integral part of the whole operation”; the Supreme Court concluded that the step of introducing water was “essential in the original patent,” and its absence in the reissue claims rendered those claims invalid as directed to a different invention than originally disclosed. Id. at 676–77. The Court further explained that a reissue claim does not meet the requirements of § 251 merely because the newly claimed invention “might have been claimed in the original patent because it was suggested or indicated in the specification.” Id. at 676. The Court also noted that it was of no moment that “the result attained [in the reissue patent] is the same as that brought about by following the process claimed in the original patent.” Id. at 678.

The Federal Circuit has applied the “original patent” requirement similarly in a number of cases.

Antares Pharma v. Medac Pharma

For example, in Antares, the original patent described jet injector devices for self-delivery of pharmaceuticals and specified the depth to which the needle plunges, the force at which the medicant is expelled, and the gauge of the needle. Id., 771 F.3d at 1356. All of the original claims were limited to the disclosed jet injector device. Id. at 1362–63. On reissue, the patentee sought coverage for various safety features of injection devices, such as a push button with a lock. Id. “Although safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification.” Id. at 1363. The Court further held that the cursory “suggestion” that a push button safety feature could be used in the original specification was not sufficient to satisfy § 251, because the specification did not “disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention.” Id. (citing U.S. Indus. Chem., 315 U.S. at 676).

Forum US v. Flow Valve

In Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1349 (Fed. Cir. 2019), the original patent claims were directed to a “workpiece machining implement” that required a “plurality of arbors supported by the body member.” All of the disclosed embodiments had multiple arbors (such as a shaft or bar which holds a piece of work during machining), and the original specification explained that multiple arbors allowed for rapid and accurate machining along different axes of rotation. Id. On reissue, the patentee sought to broaden the claims to remove the “plurality of arbors” limitation in favor of a “support that is selectively positionable.” Id. at 1350. The Court held that the reissue claims were invalid for failure to satisfy the original patent requirement, explaining that “nowhere do the written description or drawings disclose that arbors are an optional feature of the invention.” Id. at 1352. “Even if a person of ordinary skill in the art would understand that the newly claimed, arbor-less invention would be possible, that is insufficient to comply with the standard set forth in Industrial Chemicals and Antares.” Id.

In re Peters

In another case, however, original U.S. Pat. No. 4,145,633 claimed a display device having front and back walls separated by support elements, each having a metal tip along its length with a tapered cross-section. In re Peters, 723 F.2d 891, 92 (Fed. Cir. 1983). The claims of the reissue patent, however, omitted the tapered shape of the metal tip limitation. Peters, 723 F.2d at 892–93. The Court held that nothing in the original specification suggested that the tapered shape of the tips was “essential or critical to either the operation or patentability of the invention” because: (1) the tapering limitation was not used to overcome any prior art; and (2) “[m]ost importantly, one skilled in the art would readily understand that in practicing the invention it is unimportant whether the tips are tapered.” Id. at 893–94. “[T]he overall disclosure reasonably conveys to one skilled in the art that the inventor had possession of the broad invention at the time the original application was filed, a claim drawn to that invention is available upon compliance with all provisions of § 251. Id. at 894 (citing In re Kaslow,707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983)). Notably, the omitted tapering limitation in Peters had no described functional role or importance.

In each of these cases, the focus of the § 251 analysis was on the invention disclosed in the original patent and whether that disclosure, on its face, explicitly and unequivocally described the invention as recited in the reissue claims.

Float'N'Grill Reissue

The Float'N'Grill floating grill (or a floating apparatus that supports a grill) was featured on the Shark Tank television show in 2021, and the subject of U.S. Patent No. 9,771,132 which was issued in September 2017. Float'N'Grill filed a broadening reissue application in August 2018, asserting that the original patent had claimed the invention too narrowly.

The original patent disclosed a plurality of magnets for removably securing the grill to the floating apparatus. No other structure was disclosed. As originally issued, the claims recited a plurality of magnets that mirrored its description in the specification.

For the reissue, instead of the plurality of magnets, the reissue claims recited that the bottom side of the grill was “removably securable.”

Citing 35 U.S.C. § 251, the USPTO found that the original patent disclosed “a single embodiment of a floating apparatus for supporting a grill” using a “plurality of magnets” for effecting a safe and stable attachment, and did not disclose the plurality of magnets as being “an optional feature of the invention.”

The Federal Circuit agreed that the reissue claims were not directed to the invention disclosed in the original patent and, therefore, do not meet the original patent requirement of § 251. In re Float'N'Grill LLC, No. 22-1438, — F.4th — (Fed. Cir. July 12, 2023).

Here, the original specification describes a single embodiment of the invention characterized as a float apparatus having a grill support including a plurality of magnets for safely and removably securing the grill to the float. The plurality of magnets component of the grill support structure, which has been eliminated in the reissue claims, is the only disclosed component for removably securing the grill to the support. It is not described in the original patent disclosure as optional, representative of removable fasteners generally, or exemplary of a broader invention. Nor does the original disclosure include examples of alternative components or arrangements that might perform the functions of or operate in a similar manner to the disclosed plurality of magnets.

The Federal Circuit found that “magnets are unique in facilitating the attachment of members merely by contact, as contrasted to nuts and bolts and other conventional fasteners that typically require multiple parts and more than one hand to assemble”; and “the plurality of magnets is the only mechanism disclosed to fulfill the necessary functions of removably and safely securing the grill to the float.”

Also, the omission of the plurality of magnets here was similar to the omission of water in U.S. Industrial Chemicals and the omission of the plurality of arbors in Forum. “In both cases, nothing in the original specifications clearly and unequivocally disclosed any alternative to perform the functions of the omitted element.”

Indeed, the plurality of magnets was described in the original Float'N'Grill patent “in definitional and necessary terms.” See `132 Patent at 3:18–21 (“The floating apparatus for supporting a grill 10 further includes a plurality of magnets 60 disposed within the middle segment 58 of the upper support[s]”); id. at 2:15–18 (similar); id. at 2:31–34 (“A flattened bottom side of a portable outdoor grill is removably securable to the plurality of magnets”); id. at 1:22–38 (“[W]hat has been needed is a plurality of magnets disposed within a middle segment of the upper support[s] . . . . A portable outdoor grill is removably securable to the plurality of magnets”).

Furthermore, “an express statement of criticality of an element in the original specification is not a prerequisite for a determination that that element is essential to the invention claimed in the original patent.” Rather, the courts look to whether the inventions were described exclusively with the critical limitations, with “an analysis of the relationship of those limitations to the functionality and disclosure of the original invention revealed their essential and critical nature.”

And it was not relevant to the original patent requirement whether ordinary artisans could replace the disclosed magnet mechanism with some other undisclosed mechanism to achieve a similar removably securable functionality.

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