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This case[1] addresses the original patent requirement under 35 U.S.C. § 251 that reissue claims must be directed to the invention disclosed in the original patent.

Background

Float‘N’Grill LLC (“FNG”) filed for reissue of its US Patent No. 9,771,132 (“the ’132 patent”) to expand the scope of its claim coverage.

The ‘132 patent is directed to a floating apparatus that supports a grill in a body of water (e.g., a pool). Accordingly, a user can grill while in the body of water.

The specification of the ’132 patent describes a floating apparatus that includes a float and a pair of grill supports. Each of the grill supports includes magnets for removably securing a grill to the grill supports. Magnets are the only structure disclosed for removably securing the grill to the grill supports.

As originally issued, claim 1 recited “a plurality of magnets” that exactly mirrored its description in the specification. Claim 1 was allowed in the first Office Action without rejection.

During prosecution of the reissue application, certain claims were rejected for failure to satisfy the original patent requirement of 35 U.S.C. § 251 because the rejected claims did not include the “plurality of magnets” limitation present in the original patent. Namely, the Examiner found the ‘132 patent disclosed “a single embodiment of a floating apparatus for supporting a grill” that required a “plurality of magnets” for securing a grill to the grill supports. In other words, the magnets were not an “optional feature.”

The Patent Trial and Appeal Board (“the Board”) sustained a majority of the Examiner’s rejections. FNG appealed.

Issue

Do FNG’s rejected reissue claims which exclude the “plurality of magnets” limitation satisfy the original patent requirement of 35 U.S.C. § 251?

Holding

FNG’s rejected reissue claims which exclude the “plurality of magnets” limitation do not satisfy the original patent requirement of 35 U.S.C. § 251 because the reissue claims broadened a limitation to cover undisclosed alternatives to a feature appearing from the face of the original specification to be a necessary, critical, or essential part of the invention.

Reasoning

A patentee seeking to change claim scope through reissue is subject to additional statutory limitations in 35 US.C. § 251. Namely, the reissue claims must be directed to “the invention disclosed in the original patent.” This is known as the “original patent” requirement of § 251.

The Supreme Court provided the black-letter law for the original patent requirement in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668 (1942). In that case, the Supreme Court found the relevant inquiry is “whether, in the light of the disclosures contained in the [original patent and the reissue], they are for the same invention.” The Supreme Court concluded that the original patent and the reissue are for the same invention “if the reissue fully describes and claims the very invention intended to be secured by the original patent.” The Supreme Court also found that a claim of the reissue is invalid as directed to a different invention if that claim omits a step that the original patent “described and claimed as an integral part of the whole operation.”

Applying the principles from U.S. Industrial Chemicals, the Federal Circuit agreed with the Board that the reissue claims in this case were not directed to the invention disclosed in the original patent and, therefore did not meet the original patent requirement of § 251.

To support this finding, the Federal Circuit reasoned:

  • the magnets are not described as optional, representative of removable fasteners generally, or exemplary of a broader invention;
  • the magnets are an essential part of the invention as they are the only disclosed structure for performing the necessary task of removably and safely securing the grill to the floating apparatus;
  • the specification contains nothing to suggest to one of ordinary skill in the art that alternative mechanisms may be used in place of the magnets or that the magnets act as a stand-in for a broader category of removable fasteners; and
  • the magnets are described in definitional and necessary terms in the original specification.

[1] In Re: Float’N Grill LLC, 2022-1438 (Fed Cir. July 12, 2023)