Federal Circuit No. 2014-1648
Within two years of the USPTO issuing a patent the Applicant may request the Office reissue the patent with enlarged claim scope, provided it is “for the invention disclosed in the original patent.”1 Antares sought and obtained a reissue of its U.S. Patent 7,776,015 (“the ’015 patent”) titled “needle-assisted jet injector.” All of the claims of the original ’015 patent contain the preamble “[a] jet injection device, comprising.” This claim term was relied upon during prosecution to avoid prior art. The broader claims of reissue patent 44,846 (“the ’846 patent”) contain the preamble “[a]n injection device comprising” and also contained a variety of elements directed to previously unclaimed safety features.
The question of whether the new claims of the ’846 patent are “for the invention disclosed in the original patent” came before the Federal Circuit on its review of the Delaware District Court’s denial of Antares’ motion for a preliminary injunction. Reviewing the district court’s decision de novo, the Federal Circuit applied the test announced by the Supreme Court in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.2 According to the holding and reasoning of that case, a patent’s original specification must “fully describe” the invention covered by new claims in a reissue patent. It is not sufficient that an invention might have been claimed, or that the invention was suggested or indicated in the specification.3 The Federal Circuit affirmed the district court’s denial, finding that the safety features recited in the new reissue claims were adequately described in the original specification, but only in the context of jet injectors. Furthermore, the invention is repeatedly described as a “jet injector” throughout the specification. Therefore the Federal Circuit concluded that there was simply no unequivocal and explicit disclosure of devices that are not jet injectors.
The most interesting aspect of this case is that the Federal Circuit did not remand the “invention disclosed in the original patent” question back to the district court for factual findings. The Federal Circuit stated that the test announced in Industrial Chemicals is “analogous to” the written description requirement, which is ordinarily a factual matter, but does not explain in which way(s) the test is analogous (and in which ways it isn’t). Antares filed a petition for rehearing en banc on December 18th on this issue, among others, so it will be interesting to see the Court’s response.