Imagine That IP Law Blog

Last week’s non-precedential decision by the Federal Circuit Court of Appeals in Cioffi v. Google LLC, No. 2018-1049, 2023 U.S. App. LEXIS 9142 (Fed. Cir. Apr. 18, 2023) serves as a warning for both holders of reissue patents and patent owners considering filing a reissue. The Court held that the “original patent” requirement is the standard for support in the specification for claims in a reissued patent under 35 U.S.C. §251. In order for a claim to be supported under the original patent requirement, there must be an express disclosure of the exact embodiment claimed on reissue. This requirement for reissue claims is more stringent than the written description requirement for obtaining a U.S. Patent under 35 U.S.C. §112, which is satisfied if those skilled would understand the specification to be disclosing the claimed subject matter,  and may be even higher than the written description requirements before the European Patent Office (EPO).

Specifically, in Cioffi, the Court found four separate patent claims invalid under the original patent requirement of 35 U.S.C. §251. Each of the asserted claims stems from reissue patents of U.S. Patent No. 7,484,247 (‘the 247 Patent”). The asserted claims and the ‘247 patent are all directed to the use of multiple processors or processes in a computer system to prevent malware obtained over a network from accessing certain data stored on a computer. Cioffi v. Google LLC, , at *12-13.

At trial, Google argued that the asserted claims failed to satisfy the original patent requirement because there was no clear and equivocal disclosure of an embodiment containing two “web browser processes” in the ‘247 patent. In response, Cioffi’s expert explained that “those skilled in the art … would understand that P1 and P2 can refer to two processes, both of which are accessing data from the Internet, which thus meets the Court’s construction of ‘web browser process.’” Further, although Cioffi acknowledged that the specification of the ‘247 patent does not use the term “web browser process,” it argued that “web browsing is clearly within the scope and definition of ‘interactive applications’ and thus the ‘interactive network process’” disclosed in the ‘247 patent.

However, the Court found those facts to be insufficient to satisfy the “original patent” requirements under 35 U.S.C. §251. Specifically, the Court concluded that the expert testimony “serves to “assert[] what a person of ordinary skill in the art would purportedly understand” from the specification rather than what is apparent “from the face of the instrument and is therefore “insufficient to comply with the standard set forth in Industrial Chemicals and Antares.” Id,  at *15.

Instead, the Court “interpreted the original patent requirement to require that ‘the exact embodiment claimed on reissue be expressly disclosed in the specification.’” Id, at *12-13  (Internal citation omitted). Therefore, “[i]n order to satisfy the original patent requirement, the invention claimed on reissue must be ‘more than merely suggested or indicated’ by the specification of the original patent” and instead, “[t]here must be an express disclosure of the exact embodiment claimed on reissue.” Id, at *12-13

By contrast, the written description requirement in 35 U.S.C. §112(a) does not require an express disclosure of the exact embodiment claimed. Instead, the Federal Circuit expressly holds that “the description requirement does not demand any particular form of disclosure ... [n]or that the specification recite the claimed invention in haec verba, Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (internal citation omitted). The flexible nature of the written description requirement is codified in the MPEP, which states “there is no in haec verba requirement” and instead explains that “newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure.” (MPEP 2163). Therefore, to comply with the written description requirement under 35 U.S.C. §112(a), the specification may support the claims through implicit or inherent disclosure

Even under the more stringent written description requirements before the EPO, express disclosure of the exact embodiment claimed is not required. Under Art. 123(2) of the European Patent Convention(“EPC”), “it is impermissible to add to a European application subject-matter which the skilled person cannot derive directly and unambiguously, using common general knowledge and also taking into account any features implicit to a person skilled in the art in what is expressly mentioned in the document, from the disclosure of the application as filed.” As a result, the EPO does not require express disclosure of the exact embodiment claimed and instead allows for implicit features that are apparent to a person skilled in the art.

Yet in Cioffi, the Court held that the implicit disclosures as understood by a person of ordinary skill in the art as permitted under 35 U.S.C. §112(a) and EPC Art. 123(2), “is more lenient than the one we have adopted in our cases applying the original patent requirement” under 35 U.S.C. §251 Cioffi v. Google LLC, at *16 .

For Patent Owners
Under the standard for complying with the original patent requirement in 35 U.S.C. §251, as applied in Cioffi, Patent Owners should carefully consider the risks and benefits of surrendering their patent in order to re-open prosecution in a reissue. Under Cioffi, the claims in the resulting reissued patent would require express disclosure of the exact embodiment claimed on the reissue. Failing to meet 35 U.S.C. §251’s higher standard could result in a situation, where an otherwise patent that complied with 35 U.S.C. §112(a) was surrendered in order to obtain a patent with claims that are invalid under 35 U.S.C. §251.

In addition, Cioffi is a non-precedential decision. Under Federal Circuit Rule 32.1, the Court “may look to a nonprecedential or unpublished disposition for guidance or persuasive reasoning but will not give one of its own nonprecedential dispositions the effect of binding precedent.” (FederalCircuitRulesofPractice.pdf (uscourts.gov)). Accordingly, Patent Owners can argue Cioffi’s is not a binding precedent and articulates a different standard for satisfying the “original patent” requirements under 35 U.S.C. §251 than previously applied in the precedential decisions of the Court.

For example, the Court previously held that “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 of the new claims as invented and disclosed by the patentees.” Forum US, Inc. v. Flow Valve, Ltd. Liab. Co., 926 F.3d 1346, 1353 (Fed. Cir. 2019) (internal citation omitted). As the Court explained, “the inquiry that must be undertaken to determine whether the new claims are for the invention originally disclosed, .... is to examine the entirety of the original disclosure and decide whether, through the ‘objective eyes’ of the hypothetical person having ordinary skill in the art, an inventor could fairly have claimed the newly submitted subject matter in the original application, given that the requisite error has been averred. In re Amos, 953 F.2d 613, 618 (Fed. Cir. 1991) (internal citation omitted).

In addition, in Revolution Eyewear, the Court further explains that “[t]his inquiry is analogous to the written description requirement under § 112.” Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1367 (Fed. Cir. 2009) (internal citation omitted). In fact, in Antares, the case in which Cioffi relies upon for providing the standard under 35 U.S.C. §251, the Court expressly states that “the Industrial Chemicals standard is analogous to the written description requirement, which... requires that the patent description ‘clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.’” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014). As a result, the Court has previously held that the satisfaction of the requirements under 35 U.S.C. §251 is analogous to the requirements under 35 U.S.C. §112(a).

Therefore, a Patent Owner may argue that the non-precedential decision in Cioffi requiring ‘the exact embodiment claimed on reissue be expressly disclosed in the specification” did not supplant the Court’s previous holdings that the requirements under 35 U.S.C. §251 are analogous to 35 U.S.C. §112(a).

For Patent Challengers
For Patent Challengers looking to invalidate a reissued patent, Cioffi represents another potential arrow in the quiver to attack the validity of a patent. Like Google, in Cioffi, a Patent Challenger can invalidate a reissued patent under 35 U.S.C. §251’s original patent requirement simply by showing that the original patent did not have an express disclosure of the exact embodiment claimed on the reissue.