Forum US, Inc. v. Flow Valve, LLC

United States Court of Appeals
for the Federal Circuit
______________________
FORUM US, INC., A DELAWARE CORPORATION,
Plaintiff-Appellee
v.
FLOW VALVE, LLC, AN OKLAHOMA LIMITED
LIABILITY COMPANY,
Defendant-Appellant
______________________
2018-1765
______________________
Appeal from the United States District Court for the
Western District of Oklahoma in No. 5:17-cv-00495-F, Sen-
ior Judge Stephen P. Friot.
______________________
Decided: June 17, 2019
______________________
KEITH JAASMA, Ewing & Jones, PLLC, Houston, TX, ar-
gued for plaintiff-appellee. Also represented by HARVEY D.
ELLIS, JR., DAVID M. SULLIVAN, Crowe & Dunlevy, PC, Ok-
lahoma City, OK.
GARY PETERSON, Tomlinson McKinstry, PC, Oklahoma
City, OK, argued for defendant-appellant. Also repre-
sented by ROSS N. CHAFFIN, KELLY J. KRESS, ROBERT D.
TOMLINSON.
______________________
2 FORUM US, INC. v. FLOW VALVE, LLC
Before REYNA, SCHALL, and HUGHES, Circuit Judges.
REYNA, Circuit Judge.
Flow Valve, LLC appeals from the U.S. District Court
for the Western District of Oklahoma’s grant of summary
judgment of invalidity of its reissue patent. The original
patent does not disclose the invention claimed in the reis-
sue patent. The reissue claims therefore do not comply
with the original patent requirement of 35 U.S.C. § 251 as
a matter of law. We affirm.
BACKGROUND
I. The Patent-in-Suit
Flow Valve owns U.S. Patent No. RE45,878 (“the Reis-
sue patent”), entitled “Workpiece Supporting Assembly.”
The Reissue patent is a reissue of U.S. Patent No.
8,215,213 (“the ’213 patent”). During prosecution of the Re-
issue patent, the patentees added seven claims—claims 14
through 20—but made no changes to the written descrip-
tion or drawings of the original ’213 patent. 1
The Reissue patent relates to supporting assemblies,
i.e., fixtures, for holding workpieces during machining.
The workpieces disclosed in the patent are machined pipe
fittings, such as those used in the oil and gas industry.
Such fittings attach to other pipe sections by means of
threaded connections where one or more ends of the fitting
require machining on a turning machine to form threads or
seat surfaces. Reissue patent col. 1 ll. 20–27. A turning
machine, such as a lathe, rotates the workpiece while sta-
tionary tools perform various operations on the workpiece,
such as cutting or sanding, as the workpiece rotates. See
id. col. 1 ll. 29–37. Machinists often make and use fixtures
1 The ’213 and Reissue patents share identical writ-
ten descriptions and drawings. We therefore refer to the
Reissue patent unless otherwise noted.
FORUM US, INC. v. FLOW VALVE, LLC 3
that utilize arbors to hold the workpiece while it rotates on
the turning machine, 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. See id. col. 1 ll. 36–58.
The written description and drawings disclose only em-
bodiments with arbors. The following figures illustrate the
placement of arbors in a machining fixture for holding the
pipe joint as disclosed in the Reissue patent.
Reissue patent Figs. 4 & 5 (annotations added by Appellee).
The written description discloses a first and a second arbor
as central to the fixture design:
[T]he body member 52 has a first arbor 58 and a
second arbor 60 supported to extend from the body
member 52. The first arbor 58 is positioned so that
the longitudinal axis 62 thereof is coincident with
the datum or central axis 64 of the extending elbow
end 12B so that, when workpiece machining imple-
ment 40 rotates the chuck 42, the first arbor 58 is
rotated about its longitudinal axis 62, the body
member 52 will rotate the elbow end 12B about the
datum axis 64 thereof.
In like manner, the second arbor 60 is posi-
tioned so that the longitudinal axis 66 thereof is
4 FORUM US, INC. v. FLOW VALVE, LLC
coincident with the datum or central axis 68 of the
extending elbow end 12C.
Reissue patent col. 3 ll. 11–22 (emphases added). The writ-
ten description further explains that “the multiple arbors
of the workpiece supporting assembly provides [sic] means
for machining the ends of the unfinished elbow member 12
by a single setup and only a change from one arbor to one
of the other arbors allows rapid and accurate machining of
the workpiece.” Id. col. 3 ll. 42–46.
In the Reissue patent, the patentees broadened the
claims to include embodiments of fixtures that do not use
arbors by writing new claims without the arbor limitations.
Claim 1 of the ’213 patent is representative of the original
claims:
1. A workpiece machining implement comprising:
a workpiece supporting assembly compris-
ing:
a body member having an internal
workpiece channel, the body mem-
ber having a plurality of body open-
ings communicating with the
internal workpiece channel;
means supported by the body mem-
ber for positioning a workpiece in
the internal workpiece channel so
that extending workpiece portions
of the workpiece extend from se-
lected ones of the body openings;
a plurality of arbors supported by
the body member, each arbor hav-
ing an axis coincident with a datum
axis of one of the extending work-
piece portions; and
FORUM US, INC. v. FLOW VALVE, LLC 5
means for rotating the workpiece
supporting assembly about the axis
of a selected one of the arbors.
’213 patent col. 3 l. 52–col. 4 l. 5 (emphases added). Claim
14 is representative of the claims added (14–20) to the Re-
issue patent:
14. A workpiece supporting assembly for securing
an elbow during a machining process that is per-
formed on the elbow by operation of a workpiece
machining implement, the workpiece supporting
assembly comprising:
a body having an internal surface defining
a channel, the internal surface sized to re-
ceive a medial portion of the elbow when
the elbow is operably disposed in the chan-
nel; and
a support that is selectively positionable to
secure the elbow in the workpiece support-
ing assembly, the body pivotable to a first
pivoted position, the body sized so that a
first end of the elbow extends from the
channel and beyond the body so the first
end of the elbow is presentable to the work-
piece machining implement for performing
the machining process, the body pivotable
to a second position and sized so that a sec-
ond end of the elbow extends from the
channel beyond the body so the second end
of the elbow is presentable to the workpiece
machining implement for performing the
machining process.
Reissue patent col. 4 l. 64–col. 5 l. 15.
6 FORUM US, INC. v. FLOW VALVE, LLC
II. The Procedural History
On April 28, 2017, Forum US, Inc. filed a declaratory
judgment action seeking a declaration of invalidity of the
Reissue patent. Forum contended that the added reissue
claims were invalid because they did not comply with the
original patent requirement under 35 U.S.C. § 251. Forum
moved for summary judgment on the basis 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. J.A. 101–15.
In opposition, Flow Valve argued that a person of ordi-
nary skill in the art would understand that the patent dis-
closed multiple inventions, consisting of embodiments with
and without arbors. Flow Valve supported its argument
with an expert declaration from Terry Iafrate, an experi-
enced machinist.
The district court granted summary judgment in favor
of Forum on the basis that the written description and
drawings of the Reissue patent do not “explicitly and une-
quivocally” indicate the invention claimed in the reissue
claims. J.A. 12–13 (citing Antares Pharma, Inc. v. Medac
Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014)). The district
court found that the Iafrate declaration did not create a
genuine issue of material fact because “no matter what a
person of ordinary skill would recognize, the specification
of the original patent must clearly and unequivocally dis-
close the newly claimed invention in order to satisfy the
original patent rule.” Id.
Flow Valve appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
This court reviews the district court’s grant of sum-
mary judgment de novo. Conroy v. Reebok Int’l, Ltd., 14
F.3d 1570, 1575 (Fed. Cir. 1994). In determining whether
FORUM US, INC. v. FLOW VALVE, LLC 7
the district court properly granted summary judgment, we
view the evidence in the light most favorable to the non-
moving party. Israel Bio-Eng’g Project v. Amgen, Inc., 475
F.3d 1256, 1263 (Fed. Cir. 2007).
Whether new claims in a reissue patent comply with 35
U.S.C. § 251 is a question of law that we review de novo.
AIA Eng’g Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264,
1271 (Fed. Cir. 2011). The legal conclusion regarding § 251
compliance, however, can involve underlying questions of
fact. Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1479
(Fed. Cir. 1998). Although the court must determine
whether the original and reissue patents are for the same
invention, the court may consider expert “evidence to as-
certain the meaning of a technical or scientific term or term
of art so that the court may be aided in understanding not
what the instruments mean but what they actually say.”
U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems.
Corp., 315 U.S. 668, 678 (1942).
In this case we must determine whether the new claims
in the Reissue patent comply with the original patent re-
quirement. We hold that they do not.
We begin our analysis with the language of the statute.
Section 251(a) provides:
Whenever any patent is, through error, deemed
wholly or partly inoperative or invalid, by reason of
a defective specification or drawing, or by reason of
the patentee claiming more or less than he had a
right to claim in the patent, the Director shall, on
the surrender of such patent and the payment of
the fee required by law, reissue the patent for the
invention disclosed in the original patent, and in ac-
cordance with a new and amended application, for
the unexpired part of the term of the original pa-
tent. No new matter shall be introduced into the
application for reissue.
8 FORUM US, INC. v. FLOW VALVE, LLC
35 U.S.C. § 251(a) (emphases added).
It is well settled that for broadening reissue claims, “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., 315 U.S. at 676 (in-
terpreting 35 U.S.C. § 64 (1934)). The Supreme Court de-
scribed this standard in nearly identical language almost
fifty years before Industrial Chemicals. See Corbin Cabi-
net Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42–43 (1893)
(“[T]o 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 fur-
ther 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.”).
Congress codified this long-standing requirement, which
became known as the “same invention” requirement. An-
tares, 771 F.3d at 1359–60 (quoting 35 U.S.C. § 64 (1946));
see, e.g., Section 53, Patent Act of 1870, 16 Stat. 198 (1870)
(“[T]he commissioner shall . . . cause a new patent for the
same invention . . . to be issued to the patentee.”).
With the passage of the 1952 Patent Act, Congress re-
vised the statutory language from “the same invention” to
“the original patent.” Antares, 771 F.3d at 1360; 35 U.S.C.
§ 251 (1952). Despite this revision, case law has not sug-
gested that the 1952 Patent Act’s revised statutory lan-
guage substantively changed “the ‘same invention’
requirement or that the standard of Industrial Chemicals
has in any way been altered by the legislative changes.”
Antares, 771 F.3d at 1360–61.
Thus, for broadening reissue claims, the specification
of the original patent must do more than merely suggest or
indicate the invention recited in reissue claims; “[i]t must
appear from the face of the instrument that what is covered
by the reissue was intended to have been covered and se-
cured by the original.” Indus. Chems., 315 U.S. at 676
FORUM US, INC. v. FLOW VALVE, LLC 9
(emphasis added). Stated differently, the original patent
“must clearly and unequivocally disclose the newly claimed
invention as a separate invention.” Antares, 771 F.3d at
1362. We apply the standard set forth in Industrial Chem-
icals and Antares to this case and hold that the reissue
claims are invalid.
Flow Valve does not dispute that the face of the original
’213 patent does not disclose an arbor-less embodiment of
the invention. Further, the abstract and the summary of
the invention both describe a plurality of arbors, indicating
that the only disclosed invention includes arbors.
Instead, Flow Valve argues that a person of ordinary
skill in the art would understand from the specification
that arbors were an optional feature of the disclosed inven-
tion. Appellant Br. 16. In support of this argument, Flow
Valve relies on the Iafrate declaration, which states that “a
worker of ordinary skill would understand that not every
fixture disclosed in the patent requires a ‘plurality of ar-
bors’” and that “the arbors are an optional feature.” J.A.
181–82 ¶¶ 16, 19. Mr. Iafrate bases his opinion on pas-
sages in the specification that refer generally to “machin-
ing” as opposed to a “turning machine,” i.e., a lathe, and
the statement in the specification that “it will be under-
stood that numerous changes may be made which will
readily suggest themselves to those skilled in the art which
are encompassed within the spirit of the invention dis-
closed.” J.A. 182–83 ¶¶ 20–23 (citing Reissue patent col. 1
ll. 13–16, 41–44; id. col. 3 ll. 53–60).
We conclude that the Iafrate declaration, when viewed
in the light most favorable to Flow Valve, does not raise a
genuine dispute of material fact. The Iafrate declaration
does not aid the court in understanding what the “instru-
ments . . . actually say,” but instead asserts what a person
of ordinary skill in the art would purportedly understand
in the absence of the disclosure of an arbor-less embodi-
ment. See Indus. Chems., 315 U.S. at 678. Indeed,
10 FORUM US, INC. v. FLOW VALVE, LLC
nowhere do the written description or drawings disclose
that arbors are an optional feature of the invention. Even
if a person of ordinary skill in the art would understand
that the newly claimed, arbor-less invention would be pos-
sible, that is insufficient to comply with the standard set
forth in Industrial Chemicals and Antares.
The few references in the written description to ma-
chining in general do not refer to or disclose specific em-
bodiments, and the boilerplate language that modifications
can be made to the original disclosed invention does not
even suggest an arbor-less embodiment of the disclosed in-
vention. See Indus. Chems., 315 U.S. at 676. Nor do these
passages “clearly and unequivocally” disclose such an em-
bodiment. See Antares, 771 F.3d at 1362. Thus, the reissue
claims do not comply with the standard set forth in Indus-
trial Chemicals and Antares as a matter of law.
In re Amos does not set forth a different standard or
dictate a different outcome in this case. 953 F.2d 613 (Fed.
Cir. 1991). The patentees in Amos sought a reissue patent
to claim “a set of rollers mounted to hold down a work-
piece . . . whereupon the rollers lift away.” Id. at 614. The
reissue claims recited use of a computer to control the elec-
tronic lifting of the rollers. Id. The original patent explic-
itly disclosed that the rollers can be “raised either
mechanically by the roller cams or electronically by the
computer controlling [a] router.” Id. The original patent
disclosed these two alternatives for raising the rollers, but
the original claims did not recite the alternative of com-
puter control. Id. Although the Patent Office concluded
that the original patent disclosed the invention in the reis-
sue claims, it denied the reissue application based on the
lack of an “intent to claim” the new subject matter. We
reversed, holding that the absence of an “intent to claim”
was by itself an insufficient basis to deny the application
and that instead, the “essential inquiry under the ‘original
patent’ clause of § 251 . . . is whether one skilled in the art,
reading the specification, would identify the subject matter
FORUM US, INC. v. FLOW VALVE, LLC 11
of the new claims as invented and disclosed by the patent-
ees.” Id. at 618 (emphasis added); see also Antares, 771
F.3d at 1362. Such a disclosure of the subject matter
claimed by the broadening reissue claims, 2 like the com-
puter-controlled rollers disclosed in Amos, is missing in
this case.
CONCLUSION
The reissue claims do not comply with the original pa-
tent requirement under § 251(a) and are therefore invalid.
The district court correctly granted summary judgment of
invalidity in favor of Forum.
AFFIRMED
COSTS
No costs.
2 Similarly, in Revolution Eyewear, Inc. v. Aspex Eye-
wear, Inc., we held that the challenged reissue claim com-
plied with § 251 because there was no dispute that the
figures of the original patent “depicted each element
claimed” in the reissue claim. 563 F.3d 1358, 1366–67
(Fed. Cir. 2009) (citing Amos, 953 F.2d at 618).