• Jun 17 2019
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  • Category: CAFC Updates

Flow Valve’s U.S. Patent No. RE45,878 relates to supporting assemblies, i.e., fixtures, for holding workpieces (such as pipe fittings used in the oil and gas industry) during machining. Forum filed a declaratory judgment action seeking a declaration of invalidity of the Reissue patent, contending that the added reissue claims were invalid because they did not comply with the original patent requirement under 35 U.S.C. § 251, and thus that the reissue claims improperly broadened the original patent claims by omitting the “arbor limitations” in violation of the original patent requirement because the patent did not disclose an invention without arbors. Flow Valve appeals. The CAFC notes that 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. That is, the original patent must clearly and unequivocally disclose the newly claimed invention as a separate invention. Applying this standard, the CAFC holds that the reissue claims do not comply with the original patent requirement of 35 U.S.C. § 251 as a matter of law, and affirms the district court’s summary judgment of invalidity.

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