Important Parts Take a look at for Reissues Patents

by Dennis Crouch

In re Float’N’Grill LLC, 2022-1438 (Fed. Cir. 2023)

Simply in time for my early August floating journey down within the Ozarks, the Federal Circuit has affirmed the USPTO’s rejections of Float’N’Grill’s proposed reissue claims.  The issue: the reissue claims omit an “important factor” of the unique invention in violation of 35 U.S.C. 251. The case right here is sort of much like the maligned important components take a look at of Gentry Gallery, however depends upon the reissue statute somewhat than the written description requirement of Part 112(a).

Float’N’Grill’s US 9,771,132 covers a floating grill. In patent lingo, we name this a “floating equipment with grill helps” to permit grilling whereas floating in water. The disclosed embodiment makes use of magnets to removably safe the grill to the grill helps, and the unique claims required a plurality of magnets.  After the patent issued, the patentee acknowledged that the magnet limitation was unduly slim.  The broadening reissue was filed throughout the two-year 112(d) deadline and changed the magnet limitation with one requiring the parts to be “removably securable.”

It is a Shark Tank innovation that obtained funding (video beneath). Earlier than getting an investor, these guys filed a low high quality preliminary patent utility that had unduly slim claims that have been exploited by knock-off variations and actually simply disclosed a single embodiment.  They obtained a discover of allowance inside a yr and paid the problem charge with out a continuation.   In its determination, the Federal Circuit rejected their reissue patent claims on what’s clearly a technicality and one that’s extraordinarily biased towards those that spend extra on patent prosecution.  Patent holders with more cash would drafted a extra “lawyerly” preliminary patent utility that included wiggle room boilerplate statements and extra prophetic embodiments; and would have saved a continuation utility alive.  Both of these methods would have saved the broader claims.

The Authentic Patent Requirement: Part 251 requires that the reissue claims be directed to “the invention disclosed within the authentic patent.”  And right here, the issue, in accordance with the PTO and Federal Circuit, is that the magnets was important to the invention as initially disclosed.

The important thing precedent on level is U.S. Industrial Chemical compounds, Inc. v. Carbide & Carbon Chemical compounds, Corp., 315 U.S. 668 (1942). In that case, the Supreme Courtroom rejected a  set of reissue claims on comparable grounds.  The unique specification highlighted the inclusion of water to enhance the effectivity of a response. Later, within the reissue, the patentee eliminated the water requirement.  In its evaluation, the Supreme Courtroom concluded that water was “a needed step” within the invented course of “important within the authentic patent.”  As such, the declare omitting water was improperly added within the reissue.

In US Industrial Chemical compounds, the court docket additionally remarked that the unique patent requirement goes past the atypical limits of Part 112.  The take a look at isn’t handed just by exhibiting that the proposed invention “might need been claimed within the authentic patent as a result of it was urged or indicated within the specification.”

The Federal Circuit reaffirmed these ideas in Discussion board US, Inc. v. Circulate Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019).  In that case, the unique patent doc disclosed a number of completely different machining implements, every having a number of arbors. The patent  additionally described benefits of the multiple-arbor association.  Within the reissue although the patentee tried to take away the multiple-arbor requirement in favor of a  extra generic assist. In its opinion, the Federal Circuit concluded the proposed claims have been invalid for failure to fulfill the unique patent requirement.  The court docket famous that the patent doc did not counsel anyplace “that arbors are an elective function of the invention.”  See additionally Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014).