Introduction

On July 5, 2019, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in In re: Global IP Holdings LLC. Global IP Holdings LLC (“Global”) owns U.S. Patent No. 8,690,233 (the ’233 patent), claiming “carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores.” As the ’233 patent specifically claims reinforced thermoplastic skins, Global filed a reissue in hopes of broadening its claims. Namely, Global sought to claim the use of “plastic” skins rather than “thermoplastic” skins only. An inventor’s declaration was submitted for the reissue application, in which inventor Darius J. Preisler asserts that he was aware of the use of non-thermoplastics at the time of the invention. However, this declaration was insufficient, and the examiner rejected Global’s reissue claims due to noncompliance with the written description requirement. “The examiner noted that ‘the specification indicates that the first and second skins and core are only described as being formed generally from plastic materials.’” As such, Global was deterred from claiming the use of the full range of plastics as doing so would have introduced new matter. Global appealed to the Patent Trial and Appeal Board (“the Board”), which affirmed the examiner’s rejection. Global then appealed the Board’s decision and the Federal Circuit has jurisdiction.

Decision

“[The] written description requirement is met when the specification clearly allows persons of ordinary skill to recognize that the inventor ‘invented what is claimed.’” Furthermore, the determination of whether the requirement is dependent on the application’s context.

In respect to Global’s reissue claims, the Board held that “the ’233 patent’s specification was insufficient ‘regardless of the predictability of results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention.’” However, according to the Federal Circuit, this conclusion is contradictory to Ariad’s instruction that the amount of detail required “varies depending on the nature and scope of the claims and on the complexity of predictability of relevant technology.”

In re Peters demonstrated a similar case in which the original claims of the invention required tapered metal tips. A reissue was requested to broaden the claims and include non-tapered tips. While “the Board held that the broadened claims sought by the reissue application were not supported by the original disclosure,” the Federal Circuit disagreed, as “the broadened claims merely omit an unnecessary limitation…” In addition, no prior art was overcome by the claims’ amendments.

For the reasons above, the Federal Circuit vacates and remands the Board’s decision.

Conclusion

This decision further defines introducing new matter in the prosecution of reissue applications. Although there may be no basis for the amended claims in the originally filed written description, an amendment made to the claims that does not alter the concept provided by the invention may not be introduced as new matter, given that the feature omitted or altered is not critical and the reissue is not done to overcome prior art.

Full In re: Global IP Holdings LLC decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1426.Opinion.7-5-2019.pdf

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