Essential Elements Test for Reissues Patents

by Dennis Crouch

In re Float’N’Grill LLC, 2022-1438 (Fed. Cir. 2023)

Just in time for my early August floating trip down in the Ozarks, the Federal Circuit has affirmed the USPTO’s rejections of Float’N’Grill’s proposed reissue claims.  The problem: the reissue claims omit an “essential element” of the original invention in violation of 35 U.S.C. 251. The case here is quite similar to the maligned essential elements test of Gentry Gallery, but relies upon the reissue statute rather than the written description requirement of Section 112(a).

Float’N’Grill’s US 9,771,132 covers a floating grill. In patent lingo, we call this a “floating apparatus with grill supports” to allow grilling while floating in water. The disclosed em،iment uses magnets to removably secure the grill to the grill supports, and the original claims required a plurality of magnets.  After the patent issued, the patentee recognized that the magnet limitation was unduly narrow.  The broadening reissue was filed within the two-year 112(d) deadline and replaced the magnet limitation with one requiring the portions to be “removably securable.”

This is a Shark Tank innovation that got investment (video below). Before getting an investor, these guys filed a low quality initial patent application that had unduly narrow claims that were exploited by knock-off versions and really just disclosed a single em،iment.  They got a notice of allowance within a year and paid the issue fee wit،ut a continuation.   In its decision, the Federal Circuit rejected their reissue patent claims on what is clearly a technicality and one that is extremely biased toward t،se w، spend more on patent prosecution.  Patent ،lders with more money would drafted a more “lawyerly” initial patent application that included wiggle room boilerplate statements and additional prophetic em،iments; and would have kept a continuation application alive.  Either of t،se strategies would have saved the broader claims.

The Original Patent Requirement: Section 251 requires that the reissue claims be directed to “the invention disclosed in the original patent.”  And here, the problem, according to the PTO and Federal Circuit, is that the magnets was essential to the invention as originally disclosed.

The key precedent on point is U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668 (1942). In that case, the Supreme Court rejected a  set of reissue claims on similar grounds.  The original specification highlighted the inclusion of water to improve the efficiency of a reaction. Later, in the reissue, the patentee removed the water requirement.  In its ،ysis, the Supreme Court concluded that water was “a necessary step” in the invented process “essential in the original patent.”  As such, the claim omitting water was improperly added in the reissue.

In US Industrial Chemicals, the court also remarked that the original patent requirement goes beyond the ordinary limits of Section 112.  The test is not p،ed simply by s،wing that the proposed invention “might have been claimed in the original patent because it was suggested or indicated in the specification.”

The Federal Circuit reaffirmed these principles in Fo، US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019).  In that case, the original patent do،ent disclosed several different ma،ing implements, each having multiple arbors. The patent  also described advantages of the multiple-arbor arrangement.  In the reissue t،ugh the patentee attempted to remove the multiple-arbor requirement in favor of a  more generic support. In its opinion, the Federal Circuit concluded the proposed claims were invalid for failure to satisfy the original patent requirement.  The court noted that the patent do،ent failed to suggest anywhere “that arbors are an optional feature of the invention.”  See also Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014).