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The Federal Circuit Sinks Reissue Claims for Floating Apparatus: A Lesson for Patent Prosecution

August 31, 2023
Bryan P. Finneran
Associate Attorney

Patents are an important tool for inventors or other patent owners that allow them to prevent competitors from using the technology without authorization from the patent owner. To obtain a patent in the U.S., one must file an application with the United States Patent and Trademark Office (USPTO), which evaluates the application to make sure it satisfies strict requirements under Title 35 of the United States Code, and related rules/regulations. The recent Federal Circuit holding from In Re Float’N’Grill LLC, 2022-1438 (Fed. Cir. 2023) (the “FNG case”) underscores the pitfalls of filing a low-quality, excessively narrow patent application, and allowing it to issue without filing a continuation application (i.e., an additional patent application based on the same specification, which allows the first patent to issue while also allowing for new, potentially broader, claims to be pursued in a second application, all while preserving the original filing date).  

In the FNG case, inventors Michael Bashawaty and Jeremy Quillico of Livonia, Michigan obtained U.S. Pat. No. 9,771,132 (the “’132 patent”) for their floating apparatus for supporting a grill over a body of water, and successfully pitched their “Float’N’Grill” business to an investor on the show Shark Tank. The ‘132 patent, however, had an unduly narrow specification and claims, and issued without any related continuation applications having been filed. The ‘132 patent specification describes but a single embodiment of the floating apparatus, where a portable outdoor grill is removably securable to a plurality of magnets disposed within grill supports of a floating apparatus. ‘132 Patent at 2:60 - 3:39. Also, as the Federal Circuit stated, the only independent claim (Claim 1) in the ‘132 patent is “narrowly tailored to the single embodiment disclosed in the written description…” In Re Float’N’Grill at *3. For example, Claim 1 recites a plurality of magnets in a way that mirrors the description of the plurality of magnets in the specification, according to the Federal Circuit. Id. Claim 1 was never rejected during prosecution of the ‘132 patent.

The inventors realized later on how easy it would be for competitors to design around their narrow claims (thereby avoiding infringement), and thus sought reissue claims. They filed a reissue application, where the claims were much broader than the original claims, and no longer required the “plurality of magnets” limitation. The reissue application was rejected under 35 U.S.C. § 251 by a USPTO examiner for failing to meet the original patent requirement for reissue patent claims. The Patent Trial and Appeal Board upheld the examiner’s rejection, and the inventors appealed the case to the Federal Circuit. The Federal Circuit articulated that the original disclosure, on its face, must explicitly and unequivocally describe the invention as recited in the reissue claims. This strict requirement under 35 U.S.C. § 251 does not extend to continuation applications (which must be filed during the pendency of the parent application). Thus, it could be much easier to obtain broader claims by way of a continuation application than by way of a reissue application.  

The Federal Circuit noted that “[n]o other structures besides the plurality of magnets are disclosed, suggested, or implied for removably securing the grill to the supports,” Id. at *3. Thus, the plurality of magnets were considered essential to the invention as originally disclosed, and according to the Federal Circuit, the reissue claims fail under 35 U.S.C. § 251 for neglecting an essential element. The Federal Circuit cited U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668 (1942) in support of its decision. In the U.S. Industrial case, the Supreme Court upheld a rejection of reissue claims based on very similar reasoning. In that case, the original specification underscored the importance of including water to improve efficiency of a relevant reaction, but the reissue claims removed a requirement for including water. Id. The Supreme Court held that water was “essential in the original patent,” and thus omitting water from the reissue claims was impermissible. Id. The Supreme Court also noted that just because certain claims could have been made in the original application does not mean those claims are permissible in a reissue application. Id.

The FNG decision serves as a reminder that it is risky not to file a continuation application when broader claims may be desired after the original patent claims are allowed. The FNG decision also highlights the importance of describing other embodiments of an invention as opposed to narrowly describing a single embodiment, and failing to indicate certain features are optional. A good patent attorney is trained to carefully draft patent applications with varying claim scope, so that an invention is not limited to only one way of practicing the invention.  

If you have questions regarding drafting, filing, and/or prosecuting patent applications, or questions related to continuation and/or reissue patents, seek the advice of a patent attorney.