FORUM US, INC. v. FLOW VALVE, LLC, decided June 17, 2019, Reissue Claiming

U.S. Patent No. RE45,878 is directed to holding workpieces during machining (page 2). The specification discloses only embodiments with arbors (pages 3-4). In the Reissue, the claims were broadened to include fixtures that do not use arbors – the arbor limitations of the original claims were removed (pages 4-5). To broaden claims in reissue, the specification must not just suggest the broader claims but the breadth must also constitute part or portions of the invention (pages 8-9). The specification does not disclose an embodiment without arbors (page 9). An expert declaration on what a person would understand based on use of “machining” in general as opposed to a “turning machine” does not help in understanding what the specification actually says, but instead is directed to what is understood (pages 9-10). Boiler plate language is not a clear and unequivocal disclosure of an embodiment (page 10). Accordingly, the claims are invalid (page 11).

Hindsight: “Catch all” or general statements may not help in actual disclosure determinations. Instead, specific examples and lists of alternatives should be used. By addressing both combination and particular parts separately, alternatives on both levels may be contemplated and listed in drafting. The summary may be drafted in a pyramidal format from broad to narrower. This layered breadth may allow later claiming of broader inventions. Giving examples of different species of the different levels of breadth may help.