Case: 18-1049 Document: 71 Page: 1 Filed: 07/17/2023
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ALFONSO CIOFFI, MELANIE ROZMAN, MEGAN
`ROZMAN, MORGAN ROZMAN,
`Plaintiffs-Appellees
`
`v.
`
`GOOGLE LLC,
`Defendant-Appellant
`______________________
`
`2018-1049
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Texas in No. 2:13-cv-00103-JRG, Chief
`Judge J. Rodney Gilstrap.
`______________________
`
`ON PETITION FOR PANEL REHEARING
`______________________
`
`Before REYNA, BRYSON, and TARANTO, Circuit Judges.
`PER CURIAM.
`
`O R D E R
`The appellees (collectively, “Cioffi”) have petitioned for
`panel and en banc rehearing of the April 18, 2023, decision
`of this court reversing the district court’s determination
`
`

`

`Case: 18-1049 Document: 71 Page: 2 Filed: 07/17/2023
`
`2
`
`CIOFFI v. GOOGLE LLC
`
`that the asserted claims were not invalid under 35 U.S.C.
`§ 251.
`
`Cioffi’s petition argues, in part, that the standard for
`validity articulated by this court in Antares Pharma, Inc.
`v. Medac Pharma, Inc., 771 F.3d 1354 (Fed. Cir. 2014), and
`Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed.
`Cir. 2019), does not apply to this case. That is because, in
`Cioffi’s view, the Antares standard applies only when “a pa-
`tentee broadens the claims by removing a limitation that
`the specification described as an integral part of the inven-
`tion.” Pet. 10.
`There are several problems with that argument. To
`begin with, Cioffi did not make that argument in its briefs
`on appeal. Because the argument has been raised for the
`first time in Cioffi’s petition for rehearing, it is waived. See
`Haas v. Peake, 544 F.3d 1306, 1308 (Fed. Cir. 2008); Pentax
`Corp. v. Robison, 135 F.3d 760, 762 (Fed. Cir. 1998).
` Waiver aside, the argument is unpersuasive for three
`reasons. First, the express terms of section 251 do not limit
`the original patent requirement to broadening reissues.
`See 35 U.S.C. § 251. To the contrary, the statute provides
`that the Patent and Trademark Office may “reissue the pa-
`tent for the invention disclosed in the original patent” in
`various situations, including where the patentee “claim[s]
`more or less than he had a right to claim in the patent.” Id.
`
`Second, there is no indication in Antares or Forum that
`the clear and unequivocal disclosure required to comply
`with the original patent requirement is limited to broaden-
`ing reissue claims. As we noted in Antares, the original
`patent requirement predated the Supreme Court’s decision
`that held broadening reissue claims to be permissible. 771
`F.3d at 1358–59 (citing Miller v. Bridgeport Brass Co., 104
`U.S. 350 (1881)). Moreover, “the original patent require-
`ment focuses on the original specification rather than the
`original claims,” because “by definition in reissue the orig-
`inal claims do not disclose the invention claimed on
`
`

`

`Case: 18-1049 Document: 71 Page: 3 Filed: 07/17/2023
`
`CIOFFI v. GOOGLE LLC
`
`3
`
`reissue.” Id. at 1362. And although in the Forum case we
`described the standard of Antares as applying “for broad-
`ening reissue claims,” we did not decide—nor did we need
`to decide—whether the standard applied to narrowing re-
`issue claims. Forum, 926 F.3d at 1351. For the reasons
`stated below, we similarly do not need to decide that issue
`here.
`Third, all four of the claims asserted by Cioffi in this
`case are broadening reissue claims. Cioffi acknowledges in
`its petition that two of the four claims at issue in this ap-
`peal—claim 43 of the ’500 patent and claim 67 of the ’528
`patent—are broader in some respects than the original
`claims. Cioffi contends, however, that those claims were
`broadened “in a way unrelated to their challenge under
`original patent,” Pet. 10, suggesting that it is permissible
`to broaden claims on reissue if the broadening does not re-
`late to the grounds on which the original patent was
`“deemed wholly or partly invalid or inoperative.” 35 U.S.C.
`§ 251.
`That suggestion, however, runs afoul of the well-estab-
`lished principle that a claim of a reissue application en-
`larges the scope of the original patent if it is broader than
`the original claims in any respect. As this court has ex-
`plained, “A claim is broadened if it is broader in any respect
`than the original claim, even though it may be narrower in
`other respects.” In re Cuozzo Speed Techs., LLC, 793 F.3d
`1268, 1283 n.9 (Fed. Cir. 2015) (citing In re Rogoff, 261 F.2d
`601, 603 (CCPA 1958)); see also ArcelorMittal France v. AK
`Steel Co., 786 F.3d 885, 889 (Fed. Cir. 2015); PTO, Manual
`of Patent Examining Procedure § 1412.03(I) (9th ed., Feb.
`2023). That is, a claim has been broadened “if it contains
`within its scope any conceivable apparatus or process
`which would not have infringed the original patent.” Til-
`lotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed.
`Cir. 1987).
`
`

`

`Case: 18-1049 Document: 71 Page: 4 Filed: 07/17/2023
`
`4
`
`CIOFFI v. GOOGLE LLC
`
`Contrary to Cioffi’s contention, the other two claims at
`issue on appeal—claim 5 of the ’528 patent and claim 49 of
`the ’529 patent—are also broadening reissue claims. Claim
`5 of the reissue ’528 patent depends from claim 1 of that
`patent, and claim 1 recites “displaying data from the first
`logical process and the second logical process . . . .” ’528
`patent, cl. 1. That limitation is broader than the corre-
`sponding limitation in claim 1 of the original patent, No.
`7,484,247, which recites “displaying, in a windowed format
`on a display terminal, data from the first logical process
`and the second logical process . . . .” ’247 patent, cl. 1 (em-
`phasis added).
`Claim 49 of the reissue ’529 patent, which depends
`from claim 36 of that patent, similarly broadens the “dis-
`play” limitation of claim 1 of the ’247 patent. In place of
`the limitation in the original ’247 patent requiring “dis-
`playing, in a windowed format on a display terminal, data
`from the first logical process and the second logical pro-
`cess,” Claim 36 of the ’529 reissue patent recites “display-
`ing digital content generated by the secure web browser
`process,” ’529 patent, cl. 36. The “displaying” limitations of
`claim 5 of the ’528 patent and claim 49 of the ’529 patent
`are thus broader than the corresponding “displaying” limi-
`tation of the original ’247 patent.
`Finally, in the petition for rehearing Cioffi relies on two
`cases not cited in Cioffi’s briefs on appeal, Revolution Eye-
`wear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed. Cir.
`2009), and In re Amos, 953 F.2d 613 (Fed. Cir. 1991). In
`Revolution Eyewear, the court rejected the defendant’s ar-
`gument that the written description requirement was not
`satisfied and then “similarly” held that the challenged
`claim complied with section 251. 563 F.3d at 1367. We
`have subsequently characterized that statement from Rev-
`olution Eyewear as responding to the way the parties pre-
`sented the section 251 issue, and we have twice rejected the
`argument Revolution Eyewear stands for the proposition
`that the test for compliance with the requirements of
`
`

`

`Case: 18-1049 Document: 71 Page: 5 Filed: 07/17/2023
`
`CIOFFI v. GOOGLE LLC
`
`5
`
`section 251 is identical to the test for compliance with the
`written description requirement of section 112. See An-
`tares, 771 F.3d at 1362 & n.8; In re Float’N’Grill LLC, No.
`2022-1438, at 14 (Fed. Cir. July 12, 2023).
`This court’s decision in In re Amos is also unhelpful to
`Cioffi. The court in that case declined to address whether
`the tests for written description under section 112 and for
`the “same invention” under section 251 are co-extensive.
`953 F.2d at 618. And in In re Amos, as we pointed out in
`Antares, 771 F.3d at 1363, “the exact embodiment claimed
`on reissue was expressly disclosed in the specification,”
`which is not the case here. Contrary to Cioffi’s contention,
`Revolution Eyewear and In re Amos thus do not support
`Cioffi’s argument in this case and do not serve as prior de-
`cisions that must be followed instead of the court’s later
`decisions in Antares and Forum.
`Upon consideration thereof,
`IT IS ORDERED THAT:
`The petition for panel rehearing is denied.
`
`
`
`
`July 17, 2023
` Date
`
`
`
`FOR THE COURT
`
`/s/ Jarrett B. Perlow
`Jarrett B. Perlow
`Clerk of Court
`
`