United States Court of Appeals
`for the Federal Circuit
`______________________
`
`FORUM US, INC., A DELAWARE CORPORATION,
`Plaintiff-Appellee
`
`v.
`
`FLOW VALVE, LLC, AN OKLAHOMA LIMITED
`LIABILITY COMPANY,
`Defendant-Appellant
`______________________
`
`2018-1765
`______________________
`
`Appeal from the United States District Court for the
`Western District of Oklahoma in No. 5:17-cv-00495-F, Sen-
`ior Judge Stephen P. Friot.
`______________________
`
`Decided: June 17, 2019
`______________________
`
`KEITH JAASMA, Ewing & Jones, PLLC, Houston, TX, ar-
`gued for plaintiff-appellee. Also represented by HARVEY D.
`ELLIS, JR., DAVID M. SULLIVAN, Crowe & Dunlevy, PC, Ok-
`lahoma City, OK.
`
` GARY PETERSON, Tomlinson McKinstry, PC, Oklahoma
`City, OK, argued for defendant-appellant. Also repre-
`sented by ROSS N. CHAFFIN, KELLY J. KRESS, ROBERT D.
`TOMLINSON.
` ______________________
`
`
`

`

`2
`
`FORUM US, INC. v. FLOW VALVE, LLC
`
`Before REYNA, SCHALL, and HUGHES, Circuit Judges.
`REYNA, Circuit Judge.
`Flow Valve, LLC appeals from the U.S. District Court
`for the Western District of Oklahoma’s grant of summary
`judgment of invalidity of its reissue patent. The original
`patent does not disclose the invention claimed in the reis-
`sue patent. The reissue claims therefore do not comply
`with the original patent requirement of 35 U.S.C. § 251 as
`a matter of law. We affirm.
`BACKGROUND
`I. The Patent-in-Suit
`Flow Valve owns U.S. Patent No. RE45,878 (“the Reis-
`sue patent”), entitled “Workpiece Supporting Assembly.”
`The Reissue patent is a reissue of U.S. Patent No.
`8,215,213 (“the ’213 patent”). During prosecution of the Re-
`issue patent, the patentees added seven claims—claims 14
`through 20—but made no changes to the written descrip-
`tion or drawings of the original ’213 patent.1
`The Reissue patent relates to supporting assemblies,
`i.e., fixtures, for holding workpieces during machining.
`The workpieces disclosed in the patent are machined pipe
`fittings, such as those used in the oil and gas industry.
`Such fittings attach to other pipe sections by means of
`threaded connections where one or more ends of the fitting
`require machining on a turning machine to form threads or
`seat surfaces. Reissue patent col. 1 ll. 20–27. A turning
`machine, such as a lathe, rotates the workpiece while sta-
`tionary tools perform various operations on the workpiece,
`such as cutting or sanding, as the workpiece rotates. See
`id. col. 1 ll. 29–37. Machinists often make and use fixtures
`
`1 The ’213 and Reissue patents share identical writ-
`ten descriptions and drawings. We therefore refer to the
`Reissue patent unless otherwise noted.
`
`

`

`FORUM US, INC. v. FLOW VALVE, LLC
`
`3
`
`that utilize arbors to hold the workpiece while it rotates on
`the turning machine, and it is advantageous to have a
`multi-purpose fixture capable of holding a workpiece in
`multiple orientations to expedite machining by minimizing
`setup time. See id. col. 1 ll. 36–58.
`The written description and drawings disclose only em-
`bodiments with arbors. The following figures illustrate the
`placement of arbors in a machining fixture for holding the
`pipe joint as disclosed in the Reissue patent.
`
`
`Reissue patent Figs. 4 & 5 (annotations added by Appellee).
`The written description discloses a first and a second arbor
`as central to the fixture design:
`[T]he body member 52 has a first arbor 58 and a
`second arbor 60 supported to extend from the body
`member 52. The first arbor 58 is positioned so that
`the longitudinal axis 62 thereof is coincident with
`the datum or central axis 64 of the extending elbow
`end 12B so that, when workpiece machining imple-
`ment 40 rotates the chuck 42, the first arbor 58 is
`rotated about its longitudinal axis 62, the body
`member 52 will rotate the elbow end 12B about the
`datum axis 64 thereof.
`In like manner, the second arbor 60 is posi-
`tioned so that the longitudinal axis 66 thereof is
`
`

`

`4
`
`FORUM US, INC. v. FLOW VALVE, LLC
`
`coincident with the datum or central axis 68 of the
`extending elbow end 12C.
`Reissue patent col. 3 ll. 11–22 (emphases added). The writ-
`ten description further explains that “the multiple arbors
`of the workpiece supporting assembly provides [sic] means
`for machining the ends of the unfinished elbow member 12
`by a single setup and only a change from one arbor to one
`of the other arbors allows rapid and accurate machining of
`the workpiece.” Id. col. 3 ll. 42–46.
`In the Reissue patent, the patentees broadened the
`claims to include embodiments of fixtures that do not use
`arbors by writing new claims without the arbor limitations.
`Claim 1 of the ’213 patent is representative of the original
`claims:
`1. A workpiece machining implement comprising:
`a workpiece supporting assembly compris-
`ing:
`a body member having an internal
`workpiece channel, the body mem-
`ber having a plurality of body open-
`ings
`communicating with
`the
`internal workpiece channel;
`means supported by the body mem-
`ber for positioning a workpiece in
`the internal workpiece channel so
`that extending workpiece portions
`of the workpiece extend from se-
`lected ones of the body openings;
`a plurality of arbors supported by
`the body member, each arbor hav-
`ing an axis coincident with a datum
`axis of one of the extending work-
`piece portions; and
`
`

`

`FORUM US, INC. v. FLOW VALVE, LLC
`
`5
`
`means for rotating the workpiece
`supporting assembly about the axis
`of a selected one of the arbors.
`’213 patent col. 3 l. 52–col. 4 l. 5 (emphases added). Claim
`14 is representative of the claims added (14–20) to the Re-
`issue patent:
`14. A workpiece supporting assembly for securing
`an elbow during a machining process that is per-
`formed on the elbow by operation of a workpiece
`machining implement, the workpiece supporting
`assembly comprising:
`a body having an internal surface defining
`a channel, the internal surface sized to re-
`ceive a medial portion of the elbow when
`the elbow is operably disposed in the chan-
`nel; and
`a support that is selectively positionable to
`secure the elbow in the workpiece support-
`ing assembly, the body pivotable to a first
`pivoted position, the body sized so that a
`first end of the elbow extends from the
`channel and beyond the body so the first
`end of the elbow is presentable to the work-
`piece machining implement for performing
`the machining process, the body pivotable
`to a second position and sized so that a sec-
`ond end of the elbow extends from the
`channel beyond the body so the second end
`of the elbow is presentable to the workpiece
`machining implement for performing the
`machining process.
`Reissue patent col. 4 l. 64–col. 5 l. 15.
`
`

`

`6
`
`FORUM US, INC. v. FLOW VALVE, LLC
`
`II. The Procedural History
`On April 28, 2017, Forum US, Inc. filed a declaratory
`judgment action seeking a declaration of invalidity of the
`Reissue patent. Forum contended that the added reissue
`claims were invalid because they did not comply with the
`original patent requirement under 35 U.S.C. § 251. Forum
`moved for summary judgment on the basis that the reissue
`claims improperly broadened the original patent claims by
`omitting the arbor limitations in violation of the original
`patent requirement because the patent did not disclose an
`invention without arbors. J.A. 101–15.
`In opposition, Flow Valve argued that a person of ordi-
`nary skill in the art would understand that the patent dis-
`closed multiple inventions, consisting of embodiments with
`and without arbors. Flow Valve supported its argument
`with an expert declaration from Terry Iafrate, an experi-
`enced machinist.
`The district court granted summary judgment in favor
`of Forum on the basis that the written description and
`drawings of the Reissue patent do not “explicitly and une-
`quivocally” indicate the invention claimed in the reissue
`claims. J.A. 12–13 (citing Antares Pharma, Inc. v. Medac
`Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014)). The district
`court found that the Iafrate declaration did not create a
`genuine issue of material fact because “no matter what a
`person of ordinary skill would recognize, the specification
`of the original patent must clearly and unequivocally dis-
`close the newly claimed invention in order to satisfy the
`original patent rule.” Id.
`Flow Valve appeals. We have jurisdiction under 28
`U.S.C. § 1295(a)(1).
`
`DISCUSSION
`This court reviews the district court’s grant of sum-
`mary judgment de novo. Conroy v. Reebok Int’l, Ltd., 14
`F.3d 1570, 1575 (Fed. Cir. 1994). In determining whether
`
`

`

`FORUM US, INC. v. FLOW VALVE, LLC
`
`7
`
`the district court properly granted summary judgment, we
`view the evidence in the light most favorable to the non-
`moving party. Israel Bio-Eng’g Project v. Amgen, Inc., 475
`F.3d 1256, 1263 (Fed. Cir. 2007).
`Whether new claims in a reissue patent comply with 35
`U.S.C. § 251 is a question of law that we review de novo.
`AIA Eng’g Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264,
`1271 (Fed. Cir. 2011). The legal conclusion regarding § 251
`compliance, however, can involve underlying questions of
`fact. Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1479
`(Fed. Cir. 1998). Although the court must determine
`whether the original and reissue patents are for the same
`invention, the court may consider expert “evidence to as-
`certain the meaning of a technical or scientific term or term
`of art so that the court may be aided in understanding not
`what the instruments mean but what they actually say.”
`U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems.
`Corp., 315 U.S. 668, 678 (1942).
`In this case we must determine whether the new claims
`in the Reissue patent comply with the original patent re-
`quirement. We hold that they do not.
`We begin our analysis with the language of the statute.
`Section 251(a) provides:
`Whenever any patent is, through error, deemed
`wholly or partly inoperative or invalid, by reason of
`a defective specification or drawing, or by reason of
`the patentee claiming more or less than he had a
`right to claim in the patent, the Director shall, on
`the surrender of such patent and the payment of
`the fee required by law, reissue the patent for the
`invention disclosed in the original patent, and in ac-
`cordance with a new and amended application, for
`the unexpired part of the term of the original pa-
`tent. No new matter shall be introduced into the
`application for reissue.
`
`

`

`8
`
`FORUM US, INC. v. FLOW VALVE, LLC
`
`35 U.S.C. § 251(a) (emphases added).
`It is well settled that for broadening reissue claims, “it
`is not enough that an invention might have been claimed
`in the original patent because it was suggested or indicated
`in the specification.” Indus. Chems., 315 U.S. at 676 (in-
`terpreting 35 U.S.C. § 64 (1934)). The Supreme Court de-
`scribed this standard in nearly identical language almost
`fifty years before Industrial Chemicals. See Corbin Cabi-
`net Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42–43 (1893)
`(“[T]o warrant new and broader claims in a reissue, such
`claims must not be merely suggested or indicated in the
`original specification, drawings, or models, but it must fur-
`ther appear from the original patent that they constitute
`parts or portions of the invention, which were intended or
`sought to be covered or secured by such original patent.”).
`Congress codified this long-standing requirement, which
`became known as the “same invention” requirement. An-
`tares, 771 F.3d at 1359–60 (quoting 35 U.S.C. § 64 (1946));
`see, e.g., Section 53, Patent Act of 1870, 16 Stat. 198 (1870)
`(“[T]he commissioner shall . . . cause a new patent for the
`same invention . . . to be issued to the patentee.”).
`With the passage of the 1952 Patent Act, Congress re-
`vised the statutory language from “the same invention” to
`“the original patent.” Antares, 771 F.3d at 1360; 35 U.S.C.
`§ 251 (1952). Despite this revision, case law has not sug-
`gested that the 1952 Patent Act’s revised statutory lan-
`guage substantively changed “the
`‘same
`invention’
`requirement or that the standard of Industrial Chemicals
`has in any way been altered by the legislative changes.”
`Antares, 771 F.3d at 1360–61.
`Thus, for broadening reissue claims, the specification
`of the original patent must do more than merely suggest or
`indicate the invention recited in reissue claims; “[i]t must
`appear from the face of the instrument that what is covered
`by the reissue was intended to have been covered and se-
`cured by the original.” Indus. Chems., 315 U.S. at 676
`
`

`

`FORUM US, INC. v. FLOW VALVE, LLC
`
`9
`
`(emphasis added). Stated differently, the original patent
`“must clearly and unequivocally disclose the newly claimed
`invention as a separate invention.” Antares, 771 F.3d at
`1362. We apply the standard set forth in Industrial Chem-
`icals and Antares to this case and hold that the reissue
`claims are invalid.
`Flow Valve does not dispute that the face of the original
`’213 patent does not disclose an arbor-less embodiment of
`the invention. Further, the abstract and the summary of
`the invention both describe a plurality of arbors, indicating
`that the only disclosed invention includes arbors.
`Instead, Flow Valve argues that a person of ordinary
`skill in the art would understand from the specification
`that arbors were an optional feature of the disclosed inven-
`tion. Appellant Br. 16. In support of this argument, Flow
`Valve relies on the Iafrate declaration, which states that “a
`worker of ordinary skill would understand that not every
`fixture disclosed in the patent requires a ‘plurality of ar-
`bors’” and that “the arbors are an optional feature.” J.A.
`181–82 ¶¶ 16, 19. Mr. Iafrate bases his opinion on pas-
`sages in the specification that refer generally to “machin-
`ing” as opposed to a “turning machine,” i.e., a lathe, and
`the statement in the specification that “it will be under-
`stood that numerous changes may be made which will
`readily suggest themselves to those skilled in the art which
`are encompassed within the spirit of the invention dis-
`closed.” J.A. 182–83 ¶¶ 20–23 (citing Reissue patent col. 1
`ll. 13–16, 41–44; id. col. 3 ll. 53–60).
`We conclude that the Iafrate declaration, when viewed
`in the light most favorable to Flow Valve, does not raise a
`genuine dispute of material fact. The Iafrate declaration
`does not aid the court in understanding what the “instru-
`ments . . . actually say,” but instead asserts what a person
`of ordinary skill in the art would purportedly understand
`in the absence of the disclosure of an arbor-less embodi-
`ment. See Indus. Chems., 315 U.S. at 678. Indeed,
`
`

`

`10
`
`FORUM US, INC. v. FLOW VALVE, LLC
`
`nowhere do the written description or drawings disclose
`that arbors are an optional feature of the invention. Even
`if a person of ordinary skill in the art would understand
`that the newly claimed, arbor-less invention would be pos-
`sible, that is insufficient to comply with the standard set
`forth in Industrial Chemicals and Antares.
`The few references in the written description to ma-
`chining in general do not refer to or disclose specific em-
`bodiments, and the boilerplate language that modifications
`can be made to the original disclosed invention does not
`even suggest an arbor-less embodiment of the disclosed in-
`vention. See Indus. Chems., 315 U.S. at 676. Nor do these
`passages “clearly and unequivocally” disclose such an em-
`bodiment. See Antares, 771 F.3d at 1362. Thus, the reissue
`claims do not comply with the standard set forth in Indus-
`trial Chemicals and Antares as a matter of law.
`In re Amos does not set forth a different standard or
`dictate a different outcome in this case. 953 F.2d 613 (Fed.
`Cir. 1991). The patentees in Amos sought a reissue patent
`to claim “a set of rollers mounted to hold down a work-
`piece . . . whereupon the rollers lift away.” Id. at 614. The
`reissue claims recited use of a computer to control the elec-
`tronic lifting of the rollers. Id. The original patent explic-
`itly disclosed that the rollers can be “raised either
`mechanically by the roller cams or electronically by the
`computer controlling [a] router.” Id. The original patent
`disclosed these two alternatives for raising the rollers, but
`the original claims did not recite the alternative of com-
`puter control. Id. Although the Patent Office concluded
`that the original patent disclosed the invention in the reis-
`sue claims, it denied the reissue application based on the
`lack of an “intent to claim” the new subject matter. We
`reversed, holding that the absence of an “intent to claim”
`was by itself an insufficient basis to deny the application
`and that instead, 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
`
`

`

`FORUM US, INC. v. FLOW VALVE, LLC
`
`11
`
`of the new claims as invented and disclosed by the patent-
`ees.” Id. at 618 (emphasis added); see also Antares, 771
`F.3d at 1362. Such a disclosure of the subject matter
`claimed by the broadening reissue claims,2 like the com-
`puter-controlled rollers disclosed in Amos, is missing in
`this case.
`
`CONCLUSION
`The reissue claims do not comply with the original pa-
`tent requirement under § 251(a) and are therefore invalid.
`The district court correctly granted summary judgment of
`invalidity in favor of Forum.
`AFFIRMED
`COSTS
`
`No costs.
`
`
`2 Similarly, in Revolution Eyewear, Inc. v. Aspex Eye-
`wear, Inc., we held that the challenged reissue claim com-
`plied with § 251 because there was no dispute that the
`figures of the original patent “depicted each element
`claimed” in the reissue claim. 563 F.3d 1358, 1366–67
`(Fed. Cir. 2009) (citing Amos, 953 F.2d at 618).
`
`