Processing All Things Federal Circuit
July 21, 2023 - Last Week in the Federal Circuit

Last Week In The Federal Circuit (July 10 – July 14): An Applicant Gets Grilled On The Original Patent Requirement

grill shashliks

With summer in full swing, it’s the perfect time to hang out in the pool and grill some burgers. Our case of the week involves an invention for doing both of those activities at the same time—and provides some insight on when claims can be broadened through the reissue process.

Case of the week: In re Float’N’Grill LLC, No. 22-1438

Panel: Judges Prost, Linn, and Cunningham, with Judge Linn writing the opinion

You should read this case if: you have a matter involving reissue claims

This week’s case centers on a patent covering a pool float that can support a grill. The specification disclosed a single embodiment: a float containing a “plurality of magnets” (labeled as 60 in the figure below) that could be used to attach the grill to the float.

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As originally issued, the claims mirrored that embodiment, including reciting a “plurality of magnets” within the float.

After the patent’s issuance, the patentee filed a reissue application, seeking claims that replaced the narrow “plurality of magnets” limitation with a more general requirement that the grill be “removably securable” to the float. The examiner rejected the reissue claims under 35 U.S.C. § 251, which provides that reissue claims must be directed to “the invention disclosed in the original patent.” According to the examiner, the magnets were “a critical element of the invention,” yet were absent from the reissue claims.

The Federal Circuit affirmed. Surveying Supreme Court and Federal Circuit decisions interpreting the original-patent requirement, the Court explained that the analysis focuses on whether “the invention disclosed in the original patent . . . , on its face, explicitly and unequivocally described the invention as recited in the reissue claims.” Thus, “reissue claims broadening a limitation to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical, or essential part of the invention, do not meet the original patent requirement of § 251.” And the Court stressed that no “express statement of criticality of an element in the original specification” is required for the element to be deemed “essential to the invention claimed in the original patent.”

Applying those principles, the Court concluded that the reissue claims here were not directed to the same invention disclosed in the original patent. The plurality of magnets was “an essential part of the invention” as originally disclosed. After all, the magnets were “the only disclosed structure for performing the necessary task of removably and safely securing the grill to the float apparatus.” The original disclosure did not describe the magnets as optional or merely representative of removable fasteners more generally. Nor did it specify any alternative components that could perform the same function as the disclosed magnets. Because the reissue claims omitted the plurality of magnets, they failed the original-patent requirement.


Precedential opinions: 5

Non-precedential opinions: 11

Rule 36: 9

Longest pending case from argument: Trinity Info Media, LLC v. Covalent, Inc., No. 22-1308 (254 days)

Shortest (non-Rule 36) pending case from argument: Axonics, Inc. v. Medtronic, Inc., No. 22-1451 (34 days)