Antares Pharma Inc. v. Medac Pharma Inc.

United States Court of Appeals
for the Federal Circuit
______________________
ANTARES PHARMA, INC.,
Plaintiff-Appellant,
v.
MEDAC PHARMA INC. AND MEDAC GMBH,
Defendants-Appellees.
______________________
2014-1648
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:14-cv-00270-SLR, Judge Sue
L. Robinson.
______________________
Decided: November 17, 2014
______________________
IMRON T. ALY, Schiff Hardin LLP, of Chicago, Illinois,
argued for plaintiff-appellant. With him on the brief were
RICHARD J. HOSKINS and SAILESH K. PATEL. Of counsel
was JOEL M. WALLACE.
CHRISTOPHER J. HARNETT, Ropes & Gray LLP, of New
York, New York, argued for defendants-appellees. With
him on the brief were JAMES F. HALEY, JR., CHING-LEE
FUKUDA and HASSEN A. SAYEED.
______________________
2 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
Before DYK, REYNA, and TARANTO, Circuit Judges.
DYK, Circuit Judge.
Plaintiff-Appellant Antares Pharma, Inc. (“Antares”)
appeals from a decision of the United States District
Court for the District of Delaware denying Antares’
motion for preliminary injunction. Antares seeks to
enjoin alleged infringement of claims 31, 34, 35, and 37 of
a reissue patent, RE44,846 (“the ’846 patent”). Because
we hold that these reissue claims are invalid for failure to
comply with the “original patent” requirement of 35
U.S.C. § 251, we affirm.
BACKGROUND
I
Antares is a developer of automatic injection devices
used to self-administer pharmaceuticals. It is the assign-
ee of U.S. Patent No. 7,776,015 (“the ’015 patent”), which
issued on August 17, 2010. That patent, entitled
“NEEDLE ASSISTED JET INJECTOR,” discloses a
system for injecting medicant in which a needle punctures
the skin before forcefully expelling the medicant, thereby
minimizing some of the downsides of typical jet injectors
(in which the medicant itself ruptures the outer layers of
skin), while still maintaining some of the advantages of
typical jet injectors. During prosecution, the applicants
repeatedly distinguished their invention from the prior
art by focusing on the “jet injector” limitation present in
their claims but not the prior art. The originally issued
claims all contained the “jet injection” limitation.
On June 22, 2012, roughly 22 months after the ’015
patent issued, Antares sought a reissue for the patent
pursuant to 35 U.S.C. § 251, stating that there was an
error in the original ’015 patent insofar as the patentee
claimed “more or less than he had a right to claim in the
ANTARES PHARMA INC. v. MEDAC PHARMA INC. 3
patent.” See 35 U.S.C. § 251. Section 251 allows a patent
holder to correct an existing, issued patent by broadening
or narrowing the originally issued claims. If the claims
sought on reissue are broader than the original claims,
the patentee must apply for the reissue within two years
of the patent issuing. Id. Here, the applicants complied
with the two-year requirement.
The ’846 reissue patent was granted on April 15,
2014. The specification and claims 1–22 were left unal-
tered; claims 23–37 were added. The originally allowed
claims recite various embodiments of a jet injection device
and specify, for example, the exact depth the needle assist
plunges to, the force at which the medicant is expelled,
and the gauge of the needle. The reissue claims (claims
23–37) cover embodiments of injection devices (not re-
stricted to jet-injection devices) with particular combina-
tions of safety features. Claim 31, for example, covers
certain injectors containing at least a latch, pushbutton,
and needle guard. By Antares’ own admission, the reis-
sue claims recite a different invention from what was
originally claimed. See Appellant Br. 14–15 (“These are
two different inventions . . . . [Original c]laim 1 is di-
rected to ‘jet injection device’ performance . . . . [Reissue
c]laim 31, on the other hand, is directed to safety features
for any ‘injection device.’”) (emphasis in original).
II
Defendants medac Pharma, Inc. and medac GmbH
(collectively, “Medac”) manufacture and sell pre-filled,
hand-powered methotrexate syringes. On September 10,
2013, Medac submitted a 505(b)(2) new drug application
(“NDA”) with the FDA for their pre-filled methotrexate
syringes, which they intend to sell under the trade name
RASUVO. Antares does not accuse the methotrexate
medication itself of infringing any patents; rather, Antar-
es accuses the injection device housing the methotrexate
4 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
of infringing various claims. Because the product pro-
spectively sold under the application would allegedly
infringe claims of the ’846 patent, the filing of the applica-
tion constitutes an act of artificial infringement under 35
U.S.C. § 271(e)(2)(A) (assuming infringement is estab-
lished).
Antares filed suit against Medac in the District of
Delaware on February 28, 2014, initially alleging in-
fringement of certain patents not involved in the present
appeal based on Medac’s filing of the 505(b)(2) NDA. On
March 14, 2014, Antares filed a motion for preliminary
injunction. On April 18, 2014, Antares filed an amended
complaint, adding the ’846 patent to the list of patents it
was asserting against Medac, and amended the motion for
preliminary injunction accordingly, asserting claims 31,
34, 35, and 37 of the ’846 patent. Since only the asserted
claims in the ’846 patent are at issue on appeal, we limit
our discussion to those claims.
On May 5, 2014, Medac counterclaimed for invalidity
and non-infringement of the patents-in-suit. On May 28,
2014, Medac filed its opposition to the motion for prelimi-
nary injunction, arguing that the asserted reissue claims
of the ’846 patent were invalid for violating the recapture
rule and failing the original patent requirement of § 251.
The recapture rule generally prohibits applicants from
claiming, on reissue, claim scope surrendered during the
course of the original prosecution. See In re Mostafaza-
deh, 643 F.3d 1353, 1358 (Fed. Cir. 2011). As discussed
below, the original patent requirement requires that the
original specification expressly disclose the particular
invention claimed on reissue.
On July 10, 2014, the district court denied the motion
for preliminary injunction, finding that Antares failed to
carry its burden of showing a likelihood of success on the
merits with respect to the ’846 patent because claims 31,
ANTARES PHARMA INC. v. MEDAC PHARMA INC. 5
34, 35, and 37, added during reissue, are likely invalid for
violating the recapture rule. The court found that, during
the original prosecution, the applicants repeatedly distin-
guished the prior art by focusing on the fact that the
claims were limited to jet injectors. During reissue, when
the applicants sought to claim safety features not limited
to jet injectors, they were broadening their claims to cover
non-jet injectors. Because the court held that the recap-
ture rule was violated, it did not consider the question of
whether the original patent requirement was satisfied.
The court held that Antares would likely suffer irrepara-
ble harm and that the balance of interests was in equi-
poise.
Antares appealed the denial of the preliminary in-
junction with respect to the asserted claims of the ’846
patent. We have jurisdiction pursuant to 28 U.S.C.
§§ 1292 & 1295. We review the district court’s denial of
the preliminary injunction for abuse of discretion, but we
review errors of law relating to that denial de novo.
Globetrotter Software, Inc. v. Elan Computer Grp., Inc.,
236 F.3d 1363, 1367 (Fed. Cir. 2001). We review the
applicability of the recapture rule and the original patent
requirement of 35 U.S.C. § 251 de novo. Medtronic, Inc. v.
Guidant Corp., 465 F.3d 1360, 1373 (Fed. Cir. 2006).
DISCUSSION
I
Antares argues that the district court incorrectly ap-
plied the recapture rule and that, under the “overlooked
aspects” cases, the recapture rule is inapplicable. In this
respect, Antares relies on Mostafazadeh, 643 F.3d at
1360. Antares argues that, while the recapture rule
generally prohibits a patentee from “regain[ing] through
reissue the subject matter that he surrendered in an
effort to obtain allowance of the original claims,” the
recapture rule is entirely inapplicable if the reissue claims
6 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
recite “overlooked aspects” of the invention. Mostafaza-
deh, 643 F.3d at 1358 (quoting In re Clement, 131 F.3d
1464, 1468 (Fed. Cir. 1997)); see also In re Youman, 679
F.3d 1335, 1347 (Fed. Cir. 2012). Antares argues that
overlooked aspects are “patentably distinct (1) inventions;
(2) embodiments; or (3) species not originally claimed[,]
not mere incidental features of the originally-claimed
invention.” Mostafazadeh, 643 F.3d at 1360 (citation
omitted). 1 Because we hold that the asserted claims of
the ’846 patent fail the original patent requirement of 35
U.S.C. § 251, we do not reach the question of whether the
recapture rule applies and, if it does, whether it was
violated here.
II
Typically, if an applicant files a patent application
disclosing and claiming one invention and later realizes
that the specification discloses a second or broader inven-
tion, he may seek coverage of those additional claims
pursuant to 35 U.S.C. § 120, which allows for continuing
applications to claim the priority date of earlier applica-
tions. One type of continuing application is a continua-
tion application. A continuation application is “a second
application for the same invention claimed in a prior
nonprovisional application and filed before the original
prior application becomes abandoned or patented.” MPEP
§ 201.07 (9th ed. Mar. 2014); see also 37 C.F.R. § 1.53(b).
A divisional application is another type of continuing
application and is intended for “distinct invention[s],
carved out of a pending application and disclosing and
1 Antares acknowledges that the “overlooked as-
pects” cases cannot save separate inventions claimed on
reissue but expressly disclaimed during prosecution,
because “what was expressly surrendered cannot have
been overlooked.” Appellant Rep. Br. at 6.
ANTARES PHARMA INC. v. MEDAC PHARMA INC. 7
claiming only subject matter disclosed in the earlier or
parent application.” MPEP § 201.06; see also 37 C.F.R.
§ 1.53(b). When an applicant seeks to add new claims
pursuant to a continuation or divisional application, the
statute explicitly states that the original specification
provides adequate support for the new claims if the
original specification satisfies the § 112(a) written de-
scription requirement for the new claims. 35 U.S.C.
§ 120. 2
The filing of continuations and divisionals is limited
by the co-pendency requirement of § 120: a continuing
application cannot be filed after the original parent appli-
cation issues. In such circumstances, an applicant can
only seek to add claims by filing a reissue application. 35
U.S.C. § 251. The delay in seeking to broaden the claims
is not without cost. By waiting until after the patent is
issued, the applicant becomes subject to two additional
requirements relevant here: first, the claims must not
violate the recapture rule; second, the claims must satisfy
the statutory original patent requirement of 35 U.S.C.
§ 251. 3
2 These are in contrast to continuations-in-part,
which, because they introduce new subject matter, cannot
gain the benefit of the earlier filing date for the additional
material. MPEP § 201.08.
3 A third requirement, the prohibition on the intro-
duction of “new matter,” restricts applicants’ abilities to
modify the specification, rather than the claims, and is
not relevant here. 35 U.S.C. § 251 (1952); 35 U.S.C. § 64(1870); Gill v. Wells, 89 U.S. 1, 19 (1874); MPEP
§ 2163.06–07.
8 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
III
The original patent requirement is well-established,
being recognized in the reissue statute and longstanding
Supreme Court jurisprudence. The current statute gov-
erning reissues provides in relevant part:
Whenever any patent is, through error . . . ,
deemed wholly or partly inoperative or inva-
lid . . . by reason of the patentee claiming more or
less than he had a right to claim in the patent, the
Director shall . . . reissue the patent for the inven-
tion disclosed in the original patent . . . .
35 U.S.C. § 251(a) (emphasis added).
Supreme Court cases have recognized this require-
ment for more than 150 years. 4 See, e.g., Battin v. Tag-
gert, 58 U.S. 74, 85 (1854) (noting that reissued patents
must be “for the same invention as the original patent”);
Klein v. Russell, 86 U.S. 433, 466 (1873) (same). The
requirement became even more important when the
Supreme Court first held that broadening reissue applica-
tions were permissible. See Miller v. Bridgeport Brass
Co., 104 U.S. 350, 351, 354–55 (1881) (holding that broad-
ening reissues were permissible under certain circum-
stances, but that a patentee seeking on reissue to claim a
particular configuration of domes relating to lamp tech-
nology violated the “same invention” requirement of the
reissue statute because the original patent disclosed only
a different configuration); see also In re Staats, 671 F.3d
1350, 1353–54 (Fed. Cir. 2012) (“Despite the language of
the statute referring only to narrowing reissues, the
[Supreme] Court . . . held that the statute allowed for
4 As discussed below, prior to the 1952 Amend-
ments, the original patent requirement was referred to as
the “same invention” requirement.
ANTARES PHARMA INC. v. MEDAC PHARMA INC. 9
broadening reissues.”). 5 Thereafter, the Supreme Court
continued to rigorously enforce the original patent re-
quirement. See, e.g., Topliff v. Topliff, 145 U.S. 156, 169–
70 (1892) (collecting and summarizing cases and noting
that reissues “shall be for the same invention as the
original patent, as such invention appears from the speci-
fication and claims of such original”); Corbin Cabinet Lock
Co. v. Eagle Lock Co., 150 U.S. 38, 42–43 (1893) (rejecting
reissue claims because they were “merely suggested or
indicated in the original specification,” and it was not
sufficiently clear that they “constitute[d] parts or portions
of the invention”); Sontag Chain Stores Co. v. Nat’l Nut
Co. of Cal., 310 U.S. 281, 288 (1940) (“The reissued patent
must be for the same invention . . . .”).
The Supreme Court’s definitive explanation of the
original patent requirement appears in U.S. Industrial
Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.,
315 U.S. 668 (1942). There, the Court analyzed a reissue
patent relating to a process for the production of a chemi-
cal compound. The original claims required the presence
of water as a catalyst. After the patent was issued, it
became clear that water was not required as a catalyst.
The patentee asserted that the original claim was in error
because it required the presence of water, and the patent-
ee sought and obtained a reissue that omitted that “erro-
neous” requirement. The patentee subsequently brought
suit for infringement of the newly added claims, which
omitted the water limitation. Id. at 670–75. The Court
held the reissue claims invalid for failing to satisfy the
“same invention” requirement. Id. at 680–81. It ex-
plained that a reissue claim is for the “same invention” if
the original patent specification fully describes the
5 This change was codified in the 1952 Amend-
ments. See 35 U.S.C. § 251 (1952).
10 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
claimed inventions, but not if the broader claims “are []
merely suggested or indicated in the original specifica-
tion.” Id. at 676. “[I]t is not enough that an invention
might have been claimed in the original patent because it
was suggested or indicated in the specification.” Id. The
reissue claims were invalid because, although the original
specification hinted at the fact that water might be op-
tional (see id. at 672 (“Water can be admitted in the
reaction vessel . . . .”)), it was nonetheless clear that the
invention disclosed in the original patent required the
presence of water. Id. at 676–78. That hint, suggestion,
or indication that water was optional was not enough to
save the reissue claims. Id. Circuit cases immediately
following Industrial Chemicals adopted the same test. 6
The Supreme Court’s articulation of the “same inven-
tion” test in Industrial Chemicals was in the context of 35
U.S.C. § 64, which had slightly different language from
the current reissue statute, 35 U.S.C. § 251. Prior to the
1952 Amendments, the statute provided:
Whenever any patent is wholly or partly inopera-
tive or invalid . . . the commissioner
6 See, e.g., Freeman v. Altvater, 138 F.2d 854, 859
(8th Cir. 1943) (citing to Industrial Chemicals and ex-
plaining that “[f]ailing to disclose in the original patent
matters claimed in the reissue will not enable the patent-
ee to cover such new matter by the reissue, as least when
the matter was within his knowledge when he applied for
the original patent[; i]t is not enough that the invention
might have been claimed in the original patent or that it
was suggested in the specification . . .”); Monogram Mfg.
Co. v. Glemby Co., 136 F.2d 961, 963 (2d Cir. 1943) (inter-
preting Industrial Chemicals as asking whether the
reissue claims were “fairly disclosed as essential” in the
original specification).
ANTARES PHARMA INC. v. MEDAC PHARMA INC. 11
shall . . . cause a patent for the same inven-
tion . . . to be reissued to the patentee . . . .
35 U.S.C. § 64 (1946) (emphasis added). The 1952
Amendments changed the language from “the same
invention” to “the original patent,” so that the provision
reads: “[w]henever any patent is, through error . . .,
deemed wholly or partly inoperative or invalid . . . the
Director shall . . . reissue the patent for the invention
disclosed in the original patent . . . .” Id. § 251 (1952).
Despite the change in language relating to the “same
invention” requirement, it appears that no change in
substance was intended. There is nothing in the statuto-
ry language or legislative history suggesting that Con-
gress intended to overturn the long line of Supreme Court
cases culminating in Industrial Chemicals by this change
in language. As explained in P.J. Federico, Commentary
on the New Patent Act, reprinted in 75 J. Pat. & Trade-
mark Off. Soc’y 161, 205 (1993):
While the old statute stated that the patent is re-
issued “for the same invention,” the new statute
states that the patent is reissued “for the inven-
tion disclosed in the original patent.” Here, again,
there is no indication in the printed record that
any change was intended, although a slight
broadening effect has been argued. 7
So too, in Warner-Jenkinson Co. v. Hilton Davis Chemical,
520 U.S. 17 (1997), although not directly addressing the
“same invention” requirement, the Supreme Court ex-
plained that “[t]he 1952 Patent Act is not materially
7 “Federico’s commentary is an invaluable insight
into the intentions of the drafters of the Act.” Symbol
Techs., Inc. v. Lemelson Med., 277 F.3d 1361, 1366 (Fed.
Cir. 2002).
12 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
different from the 1870 Act with regard to claiming,
reissue, and the role of the PTO,” and that “[s]uch minor
differences as exist between those provisions in the 1870
and the 1952 Acts have no bearing on [our precedent] and
thus provide no basis for our overruling it.” Id. at 26.
After the 1952 Amendments, the circuit courts and
our predecessor court continued to view Industrial Chem-
icals as articulating the applicable test, irrespective of the
passage of the 1952 Amendments. See, e.g., Bolkcom v.
Carborundum Co., 523 F.2d 492, 502 (6th Cir. 1975);
McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381,
389 (10th Cir. 1965); Riley v. Broadway-Hale Stores, Inc.,
217 F.2d 530, 531 (9th Cir. 1954); In re Rowand, 526 F.2d
558, 559–60 (C.C.P.A. 1975).
Thus, for example, in McCullough, the Tenth Circuit
held a reissue patent valid over an invalidity challenge.
Referencing Industrial Chemicals, the court stated that
“[t]he original and reissue patents are for the same inven-
tion where the latter fully describes and claims the very
invention intended to be secured by the original patent
and describes and claims only those things which were
embraced in that invention and where it is not merely
suggested in the original but constitutes a part or portion
of that invention.” McCullough, 343 F.2d at 389. The
court considered that “[i]t is not enough that an invention
might have been claimed in the original patent because it
was suggested or indicated in the specification,” but must
be “explicitly disclosed and taught” in the specification.
Id. (internal quotation marks omitted).
Similarly, in Riley v. Broadway-Hale Stores, Inc., 217
F.2d 530, 531 (9th Cir. 1954), the court held that a single,
vague reference in the original specification to shoulder
pads without gaps in the padding did not adequately
support the reissue claims, which claimed shoulder pads
without gaps, when the original claims only claimed
ANTARES PHARMA INC. v. MEDAC PHARMA INC. 13
shoulder pads with gaps, and the specification described
the gapped shoulder pads as an “essential feature” of the
invention. Riley, 217 F.2d at 532. As the court explained,
“[t]he broader claims of the reissue must be more than
merely suggested or indicated in the original patent.” Id.“[I]t is not enough that an invention might have been
claimed in the original invention because it was suggested
or indicated in the specification.” Id. (quoting Indus.
Chems., 315 U.S. at 375–76).
Finally, in In re Rowand, our predecessor court re-
jected a reissue claim seeking coverage of a particular
method for making Teflon tubing when the specification
focused on describing the product itself. 526 F.2d at 560.
The court held that a single, vague statement in the
specification broadly summarizing the general method for
making Teflon tubing did not adequately disclose the
particular method claimed on reissue. Id. Citing to
Industrial Chemicals, the court held that the invention
claimed on reissue was not sufficiently disclosed and
failed under § 251. Id. at 559.
Since the creation of this court in 1982, we have ad-
dressed Industrial Chemicals and the original patent
requirement on four occasions: In re Hounsfield, 699 F.2d
1320 (Fed. Cir. 1983); In re Weiler, 790 F.2d 1576 (Fed.
Cir. 1986); In re Amos, 953 F.2d 613 (Fed. Cir. 1991); and
Hester Industries., Inc. v. Stein, Inc., 142 F.3d 1472 (Fed.
Cir. 1998). Significantly, none of those cases suggested
that the 1952 change in language worked a substantive
change in the “same invention” requirement or that the
standard of Industrial Chemicals has in any way been
altered by the legislative changes. Hester Industries
simply noted there was a change in the statutory lan-
guage and that “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 of the new claims as invented and disclosed by the
14 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
patentees.” Hester Indus., 142 F.3d at 1484 (quoting
Amos, 953 F.2d at 618) (ellipsis in original). Similarly,
Amos noted that Industrial Chemicals was decided under
the predecessor statute, but nonetheless described the
“same invention” requirement as “time-honored.” Amos,
953 F.2d at 617, 619 n.2. It dismissed any perceived
differences between the two requirements, explaining
that the “‘original patent’ clause of § 251” has “historically
[been] styled as [the] ‘same invention’” requirement. Id.
Our cases shed light on Industrial Chemicals in two
respects. First, they rejected a gloss put on Industrial
Chemicals by the Board in later cases, which had inter-
preted Industrial Chemical, Rowand, and In re Mead, 581
F.2d 251 (C.C.P.A. 1978) as creating an “intent to claim”
test for the original patent requirement. In Hounsfield,
we reversed the Board, holding that the Board’s interpre-
tation put an “erroneous” “gloss” on those decisions. 699
F.2d at 1322–23. The court explained that Industrial
Chemicals, Rowand, and Mead merely indicated that
“intent to claim” was “only one factor that sheds light
upon whether the claims of the reissue application are
directed to the same invention as the original patent and
the reissue would correct an inadvertent error in the
original patent.” Id. at 1323; see also Weiler, 790 F.2d at
1581 (“Language appearing first in [Industrial Chemicals]
has been picked up and has metamorphosed into a re-
quirement that an applicant show his original ‘intent to
claim’ the subject matter of the reissue claim sought.”).
Second, our cases explained that the Industrial Chemicals
standard is analogous to the written description require-
ment, which, as our en banc decision in Ariad Pharmaceu-
ticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir.
2010) made clear, requires that the patent description
“clearly allow persons of ordinary skill in the art to recog-
nize that the inventor invented what is claimed.” Id. at
1351 (citation and alterations omitted). See Hester In-
ANTARES PHARMA INC. v. MEDAC PHARMA INC. 15
dus., 142 F.3d at 1484; Amos, 953 F.2d at 618; see also
Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d
1358, 1367 (Fed. Cir. 2009) (describing the original patent
requirement as “analogous” to the written description
requirement). 8 Whether or not the written description
requirement of § 112 was satisfied here, Industrial Chem-
icals made clear that, for § 251, “it is not enough that an
invention might have been claimed in the original patent
because it was suggested or indicated in the specifica-
tion.” 315 U.S. at 676. Rather, the specification must
clearly and unequivocally disclose the newly claimed
invention as a separate invention. Id.IV
Applying the Industrial Chemicals standard, asserted
reissue claims 31, 34, 35, and 37 are invalid. The original
claims are significantly different in scope and coverage
than the asserted claims. Claims 1–22 are focused on jet
injectors, and every one of those claims contains the “jet
injection” limitation. The asserted claims are focused on
particular safety features and do not contain the jet
injection limitation. Indeed, appellants themselves argue
8 The court in Revolution Eyewear rejected the
“original patent” challenge in a single paragraph, ending
with the statement that it was doing so “[b]ecause [it had
just] held that the written description requirement [was]
satisfied.” 563 F.3d at 1367. That statement cannot be
taken to establish as precedent that the standards are the
same, but merely reflects the way the parties presented
the issue, neither of whom made any reference to Indus-
trial Chemicals or argued for a standard different than
§ 112. See Opening Brief of Counterclaim-
Defendant/Appellant Revolution Eyewear, Revolution
Eyewear, 2008 WL 4307403, at *29–30 (filed Aug. 18,
2008).
16 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
that the asserted reissue claims cover a different inven-
tion than that originally claimed. To be sure, the original
patent requirement focuses on the original specification
rather than the original claims. While the claims may be
used to determine whether the written description re-
quirement has been satisfied outside of the reissue con-
text, Ariad, 598 F.3d at 1347, by definition in reissue the
original claims do not disclose the invention claimed on
reissue. Thus, we must look to the specification. The
original specification here does not adequately disclose
the later-claimed safety features to meet the Industrial
Chemicals standard. The specification discussed only one
invention: a particular class of jet injectors. This is clear
from the title of the patent (“Needle Assisted Jet Injec-
tor”), the abstract (“A jet injection device. . .”), the sum-
mary of the invention (“The present invention relates to a
needle assisted jet injector.”), the repetitive descriptions
of the “present invention” as being for a jet injector (e.g.,
“[t]he present invention relates to a needle assisted jet
injector,” ’846 patent col. 2 ll. 54–55, and repetitions of
“the needle assisted jet injector according to the present
invention,” id. col. 5 ll 6–7, col. 5 ll 34–35, col. 8 ll. 21–22,
col. 12 ll. 34–35, col. 13 ll. 26–27), and the entirety of the
specification (“jet” is mentioned 48 times in the 7-page
specification).
Although safety features were mentioned in the speci-
fication, they were never described separately from the jet
injector, nor were the particular combinations of safety
features claimed on reissue ever disclosed in the specifica-
tion. Rather, the safety features were serially mentioned
as part of the broader conversation: how to build the
patented jet injection device. For example, Antares, in its
briefing, emphasizes the “push button” safety feature
claimed in the reissue. But, a “push button” is mentioned
in only one passage in the specification: “Alternatively, a
push button could be located at the proximal end of the
ANTARES PHARMA INC. v. MEDAC PHARMA INC. 17
device and be locked in an idle position. The movement of
the needle guard could unlock the push button and allow
the user to depress it and consequently fire the device.”
Id. col. 12 ll. 9–13. These “suggest[ions]” or “indicat[ions]”
of alternative inventions are not sufficient to satisfy the
original patent requirement of § 251. Indus. Chems., 315
U.S. at 676. Nowhere does the specification disclose, in
an explicit and unequivocal manner, the particular com-
binations of safety features claimed on reissue, separate
from the jet injection invention. This does not meet the
original patent requirement under § 251. 9
The situation here is quite unlike Amos, in which we
held that the original patent requirement was satisfied.
In Amos, the patentee sought to broaden his claims on an
invention relating to the use of rollers to hold down work-
pieces on a moving table. The specification expressly
disclosed that rollers, as they approached the end of the
table, could be “raised either mechanically by the roller
cams or electronically by the computer controlling the
router.” Amos, 953 F.2d at 614. The original claims only
covered the manual embodiment. On reissue, the appli-
cant sought to add the computer-controlled embodiment.
Id. The Board denied the reissue because there was no
objective intent to claim. Id. at 615. This court reversed
the Board because the exact embodiment claimed on
reissue was expressly disclosed in the specification. Id. at
9 Although the appeal before us is from the denial
of a preliminary injunction, whether the claims at issue
satisfy the original patent requirement of § 251 does not
depend on any not-yet-resolved factual issues, so a re-
mand is not required. See LifeScan Scotland, Ltd. v.
Shasta Techs., LLC, 734 F.3d 1361, 1368–69 (Fed. Cir.
2013).
18 ANTARES PHARMA INC. v. MEDAC PHARMA INC.
617–19. Such an express disclosure is exactly what was
missing here.
CONCLUSION
The claims on appeal are invalid for failure to satisfy
the original patent requirement of 35 U.S.C. § 251.
Because Antares cannot show likelihood of success on the
merits with respect to these claims, the district court
properly denied Antares’ motion for preliminary injunc-
tion.
AFFIRMED
Costs to appellees.