For New Claims in a Broadening Reissue Patent, It Must Be Clear That They Cover What Was Intended to Have Been Covered by the Original Patent

A declaratory judgment action was filed against the patentee over a reissue patent relating to a support assembly for holding workpieces during machine operations. The original patent claimed assemblies comprising a “plurality of arbors.” The specification and drawings of the original patent also only described assemblies with arbors. During prosecution of the reissue patent, the patentee added seven claims directed to assemblies without arbors, but made no changes to the written description or drawings. The district court granted summary judgment of invalidity for failure to comply with the “original patent” requirement of section 251, finding that the original patent did not disclose the inventions added in the reissue. The patentee appealed, but the Federal Circuit affirmed.   

Pursuant to Section 251(a), “the specification of the original patent must do more than merely suggest or indicate the invention recited in the reissue claims.” Rather, it must be clear “that what is covered by the reissue was intended to have been covered and secured by the original.” The patentee did not dispute that the original patent failed to disclose an embodiment with no arbor, but instead relied on an expert declaration that a POSA would have understood arbors to be an “optional feature.” The declaration, however, did not “aid the court in understanding” the claimed invention. Moreover, the specification did not disclose that arbors were an optional feature. Thus, the reissue claims were not supported by the claims and disclosures of the original patent, and were properly found invalid.