PATENT CASE OF THE WEEK
Forum US, Inc. v. Flow Valve, LLC, Appeal No. 2018-1765 (Fed. Cir. June 17, 2019)
Our case of the week features a rarely visited rule concerning reissue patents—the “original patent requirement” doctrine codified in 35 U.S.C. § 251.
The patent in suit is a reissue patent concerning fixtures for holding workpieces. The workpieces are machined pipe fittings used in the oil and gas industry. The fixtures hold the workpieces so they can be machined, and “it is advantageous to have a multi-purpose fixture capable of holding a workpiece in multiple orientations to expedite machining by minimizing setup time.” Machinists often make and use fixtures that utilize “arbors” that hold the workpiece while it rotates on a turning machine.
The written description of the patent disclosed two arbors as central to the fixture design, and the original patent claimed the use of multiple arbors. However, in the reissue patent, the claims were broadened by omitting the arbors.
On a motion for summary judgment, the district court held that the reissue claims were invalid for failing to comply with the original patent requirement.
The Federal Circuit traced the history of the original patent requirement. Relying on older Supreme Court cases, the Court noted that “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Indus. Chems. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 676 (1942) (interpreting 35 U.S.C. § 64 (1934)). Thus, “to warrant new and broader claims in a reissue, such claims must not be merely suggested or indicated in the original specification, drawings, or models, but it must further appear from the original patent that they constitute parts or portions of the invention, which were intended or sought to be covered or secured by such original patent.” Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42–43 (1893). That requirement, known as the “same invention” requirement, was codified in the Patent Act of 1952 as Section 251, which used the language “original patent.” Under that requirement, “for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; it 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.”
In this case, the original patent did not disclose an arbor-less embodiment of the invention—the abstract and summary of the invention both described a plurality of arbors. Flow Valve argued that a person of ordinary skill in the art would have understood from the specification that arbors were optional. The court found this did not comply with the original patent requirement: “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.”
On this basis, the Federal Circuit affirmed.
The opinion can be found here.
ALSO THIS WEEK
Game and Technology Co., Ltd. v. Activision Blizzard Inc., Appeal No. 2018-1981 (Fed. Cir. June 21, 2019)
The Federal Circuit affirmed a PTAB decision finding that a patent directed to online gaming was invalid as obvious. The court held that the PTAB’s construction of the terms “gamvatar” and “layers” were appropriate under the Broadest Reasonable Interpretation standard. A “gamvatar” is an avatar with game item functions having additional characteristics, and it was not necessary, as Game & Tech. argued, that the gamvatar represent a user both in the game and on a website. A “layer” may be a region for displaying graphics on the gamvatar or “additional items or background” that may be displayed separately from the gamvatar. Having construed the two terms, the Court affirmed that substantial evidence supported that the claims were obvious over a manual for the game Diablo II along with a 2005 patent application concerning online, interactive role playing games.
The opinion can be found here.
Mayne Pharma International Pty. Ltd. v. Merck Sharp & Dohme Corp., Appeal No. 2018-1593 (Fed. Cir. June 21, 2019)
The Federal Circuit affirmed an inter partes review decision of the Patent Trial and Appeal Board, finding challenged claims of a pharmaceutical patent anticipated or obvious. Patent Owner Mayne Pharma (“MPI”) argued that the petition should have been denied as time-barred under 35 U.S.C. § 315(b) because a real party-in-interest (“RPI”), Merck & Co., Inc. (“MCI”), was not added to Petitioner’s mandatory disclosures until more than a year after MPI had served an infringement complaint on both MCI and Petitioner (“MSD”), at which point MPI argued that the petition’s filing date should have been reset. MSD responded that the Court was not permitted to review the Board’s decision to maintain the original filing date, as it involved a mandatory disclosure provision under 35 U.S.C. § 312(a)(2) (petitioner must identify real parties in interest). MSD relied on the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, which MSD argued had held that the Board’s determination of compliance with 35 U.S.C. § 312(a)(3) (petitioner must identify grounds for review) was unreviewable.
The Court determined that the Board committed no reversible error, and that it therefore need not determine the issue of appealability. The Court found that the core interests of the RPI disclosure rule were satisfied, in that both MCI and MSD agreed to be bound by any estoppel flowing from the review, and the Board was properly apprised of any conflicts relating to MCI through the disclosure of its affiliate MSD. Because there was no evidence of bad faith, intentional concealment, or prejudice to MPI, the Court found that the Board properly relied on the “interests of justice” late-action rule of 37 C.F.R. § 42.5(c)(3) to permit the amendment to MSD’s mandatory disclosures without resetting the petition’s filing date.
The Court proceeded to affirm the Board’s finding of unpatentability on the merits.
The opinion can be found here.
Hyosung TNS Inc. v. International Trade Commission, Appeal No. 2017-2563 (Fed. Cir. June 17, 2019)
In this appeal from a decision by the United States International Trade Commission (“ITC”), the Federal Circuit addressed issues relating to mootness of an appeal. The ITC found that various automatic teller machine (“ATM”) models imported by Hyosung infringed certain claims of two patents owned by Diebold, and that Diebold’s patents were not invalid. Upon its finding of infringement, the ITC issued a limited exclusion order and cease and desist orders against Hyosung. Subsequently, Hyosung re-designed its products to avoid infringing the ’616 patent, and obtained U.S. Customs administrative ruling that the re-designed products did not infringe the ’616 patent and could be imported into the United States. Subsequent to the ITC’s Orders, the ’616 patent expired. The Federal Circuit, addressing Hyosung’s appeal of the infringement findings relating to the ’616 patent, held that Hyosung’s appeal is moot given that the ’616 patent expired subsequent to the ITC’s Orders. The Court also affirmed the ITC’s findings of infringement and no invalidity as to the other patent.
The opinion can be found here.
