The Importance of Disclosing Multiple Embodiments
A recent decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) illustrates the limits of what a patent owner may be able to pursue or obtain in a broadening reissue application. In this context, In re Float’N’Grill LLC[1] also serves as a reminder to practitioners of the importance of disclosing variants of an invention as multiple embodiments in an original patent application, and of otherwise ensuring that the application cannot be construed as disclosing or otherwise being limited to solely one embodiment.
The inventors filed a U.S. patent application for a “Floating Apparatus for Supporting a Grill.” The sole independent claim focused on specific structural details of the only disclosed embodiment of the invention and included the following limitations:
- “a plurality of magnets disposed within the middle segment of the upper support of each of the right grill support and the left grill support”; and
- “wherein a flattened bottom side of a portable outdoor grill is removable securable to the plurality of magnets and removably disposed immediately atop the upper support of each of the right grill support and the left grill support.”
The patent application was granted after a first-action allowance, with no substantive intervening prosecution and no further amendments to the claims.
Within the permitted two-year period after grant, the patentee then filed a reissue application in an attempt to obtain broader claim coverage. Three new independent claims were drafted more broadly than originally patented Claim 1 and took different approaches to avoid or eliminate the restrictive limitation of “a plurality of magnets…”. Particularly, the new claims either did not claim any type of magnetic attachment at all, or required only a single magnet, or recited only in the claim’s preamble to a “float adapted to magnetically attach to a grill.”
Prosecution led to a final rejection in which all of the new claims still pending were rejected under 35 U.S.C. Section 251, i.e., the “original patent” requirement for reissue applications. In the Section 251 rejection, the examiner indicated that:
- the original patent disclosed “a single embodiment of a floating apparatus for supporting a grill” using a “plurality of magnets” and did not disclose the “plurality of magnets” as being “an optional feature” of the invention; and
- “the magnets are a critical element of the invention, as the magnets alone are responsible for effecting a safe and stable attachment between the floating apparatus and the grill.”
In response, the patentee filed an appeal with the Patent Trial and Appeal Board (PTAB or Board) of the U.S. Patent and Trademark Office, in which the Board sustained the examiner’s Section 251 rejections. The patentee appealed the Board’s decision to the CAFC.
On appeal, the CAFC affirmed the decision of the PTAB, stating that “the reissue claims in question do not cover ‘the invention disclosed in the original patent’” as required by Section 251. In reaching its decision, the Court relied on precedential decisions that mainly addressed inventive features that were deemed to be “essential” and not “optional.”
The U.S. Supreme Court’s U.S. Industrial Chemicals[2] decisionwas explained as providing the “blackletter standard for satisfaction of the original patent requirement.” There, the original specification indicated that the addition of water in a given chemical reaction improves efficiency, and the issued claims included the feature. In a reissue application, however, the patentee attempted to obtain broadened claims which omitted the feature of adding water. In its decision, the Supreme Court deemed the feature as “a step not designated as operational or desirable but described and claimed as an integral part of the whole operation” and concluded that it was “essential in the original patent.” Thus, the reissue claims were deemed invalid as directed to a different invention than that originally disclosed.
Similarly, in Forum US Inc.[3] the CAFC held that claims to a “workplace machining implement” required a “plurality of arbors supported by the body member,” because all disclosed embodiments included multiple arbors. Thus a broadening reissue application in which the patentee sought to remove the “plurality of arbors” from the claims was determined to violate the “same invention” requirement of Section 251 because “nowhere do the written description or drawings disclose that arbors are an optional feature of the invention.”.
In contrast, in In re Peters[4] the original patent claimed a display device with walls separated by support elements, each having a metal tip with a tapered cross-section. Claims in a reissue application omitted the tapered shape of metal tip and were rejected. The Board of Patent Appeals and Interferences (the predecessor of PTAB) sustained the rejection but the CAFC reversed the rejection on appeal. Particularly, the Court noted that nothing in the original specification suggested that the tapered shape was “essential or critical to either the operation or patentability of the invention.” Thus, the Board improperly confined the claims to specific embodiments, or improperly required that differing tip shapes be disclosed to permit broadened reissue claims, even though, in the CAFC’s view, the overall disclosure reasonably conveyed to a person of ordinary skill in the art “that the inventor had possession of the broad invention at the time of filing the application.”
In the present case, the CAFC agreed with the PTAB that the “plurality of magnets” claimed in the original patent were an “essential part of the invention” as the “only disclosed structure for performing the necessary task of removably and safely securing the grill to the float apparatus.” In so noting, they remarked that the specification lacks any disclosure or suggestion of an alternative fastener, and “the one fastener disclosed is unlike any alternative that might even be considered.” The Court likened the omission of the plurality of magnets from the reissue claims to the omission of adding water in U.S. Industrial Chemicals and the omission of the plurality of arbors in Forum US Inc..
A key argument of the patentee was that the “plurality of magnets” represent a non-essential embodiment analogous to the tapered metal tips in Peters. But the CAFC disagreed. Among other things, the Court noted that even in the absence of an express statement of criticality in the application regarding the “plurality of magnets,” that feature can be deemed as essential. Particularly, the CAFC explained that limitations may be deemed to be critical or essential where the invention is described exclusively with the limitations later omitted from the reissue claims, and where an analysis of the relationship of those limitations to the functionality and disclosure of the original invention reveals their essential and critical nature. The CAFC noted, in contrast, that the omitted tapering limitation in Peters had no described functional role and its configuration was superficial at best.
In sum, Float’N’Grill offers a cautionary tale about what may happen when an original patent specification does not sufficiently include alternative embodiments, or even anything clearly pointing in such a direction, that could then be relied upon in a broadening reissue application. A question also arises as to whether at least an earlier attempt at a broadening continuation application, filed during pendency of the original application, could have led to a better outcome.
Generally, the case reminds that practitioners should still find little to lose by discussing possible variant embodiments with inventors at the time of preparing an application, and by illustrating at least one variant in addition to describing one or more variants in the specification. In the process, if opportunities for claim broadening can be identified at the time of allowance, a broadening continuation application filed before issuance may well prove more effective and more easily prosecuted to grant than a broadening reissue application subject to the strict “same invention” requirement of 35 U.S.C. Section 251.
