by Dr. Mike Hammer, Senior Partner, JMB Davis Ben-David

I recently read an interview with a politician running for city council in our upcoming municipal elections. In summarizing his overall approach, he said: “Life is uncertain!  Who knows what will happen in the future.  The important thing is to focus on the present!” I’m sure he meant to highlight his commitment to solving current local challenges, but to my patent attorney ears his dismissal of the future sounded at best a misguided failure of imagination, and at worst a mindset that is incapable of the advance thinking needed to address potential problems before they occur. It reminded me of a recent decision by the US Court of Appeals for the Federal Circuit (the CAFC) in In Re: Float’N’Grill LLC, which provides an object reminder of the importance of knowing your invention and its area of technology, and the criticality of thinking about the future all the while fully engaging with the present.

The case involves Float’N’Grill LLC’s (“FNG”) broadening reissue application of US Patent No. 9,771,132, which, as one might predict, is directed to a “floating apparatus for supporting a grill.” In 2021, FNG appeared on the US television show “Shark Tank,” and presented their invention as a way to solve the timeless problem of how to grill food while on a boating trip, but without having to get out of one’s (apparently very small) boat. To address this unmet need, the inventors developed a system in which a grill could be removably secured to a support structure mounted in a towable raft. In the ‘132 Patent, FNG described and claimed a single embodiment of this structure, which used a plurality of magnets to easily and reversibly secure the grill. After the ‘132 Patent issued, FNG filed a broadening reissue patent application in the attempt to obtain greater claim scope.  In particular FNG’s reissue claims removed the requirement for a “plurality of magnets” for securing the grill to the raft. The USPTO rejected the reissue claims, both at the level of examination and on appeal, and the CAFC agreed.

The CAFC’s decision was based on a straightforward understanding of the law which allows for reissue applications in the first place.  35 USC §251 provides, in part: “Whenever any patent is, through error, deemed wholly or partly inoperative or invalid…by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall…reissue the patent for the invention disclosed in the original patent….No new matter shall be introduced into the application for reissue” (emphasis added). In other words: to obtain a claim in a reissue application, the claimed invention must have been described in the original patent. Here, the ‘132 Patent described and claimed a single embodiment of its grill mounting structure, which used a plurality of magnets for securing the grill. The ‘132 Patent did not describe any optional variations for this mechanism, and did not even suggest that there could be other mechanisms for removably mounting a grill to the raft.  Accordingly, the CAFC held that the USPTO was correct in its rejection of FNG’s reissue claims.

This case is about much more than just the requirements for reissue patent applications. First and foremost it is a reminder of how critical it is know one’s invention. The ‘132 patent is exceptionally specific. The description of the invention, the provided drawings, and the issued claims are practically interchangeable.  This narrowness indicates a close-up focus on a prototype, without consideration of the bigger picture of the inventive features of the conceived device.  For example, although not discussed by the CAFC in its decision, claim 1 also requires any infringing device to have at least one cup holder! While having a place to put a cold drink while grilling on the lake on a summer afternoon is certainly a good thing, I can’t imagine that it was a make or break patentable element of the claim.

Along with knowing the invention, it is important to understand its field of technology.  It will be relatively easy to invent around and market a competing small to mid-size consumer device such as that which is so narrowly claimed in the ‘132 Patent.  In contrast, even if a new active pharmaceutical ingredient, such as a monoclonal antibody for use in inhibiting cancer metastasis, is claimed with similar specificity, the time, effort, and money required to bring a non-infringing variant to market is quite high. Accordingly, the enduring value of a narrow claim in the former case will be much less than that in the latter.

From a practical perspective, there were other opportunities that FNG also missed. The ‘132 Patent matured from a first-filing patent application which did not claim priority to a US provisional patent application. One of the unquantifiable benefits of filing a provisional patent application is the ability to think about the described invention over the course of the priority year.  In that time, greater perspective and understanding of the invention can be gained.  Lastly, if FNG had been thinking with a wider view, it is possible that they would have filed a continuing application before the ‘132 Patent issued, which would have allowed the addition of a broader description and claiming of the invention.

As we sail towards the sunset of another summer (possibly with a floating grill in tow), I encourage us all to learn from FNG’s experience:  when thinking about an invention, it is important to know exactly what you have in your hand (or in your Eppendorf tube), but it is equally important to consider how the technology might be used and improved.  The perspective gained always results in a better patent application (and hopefully issued patent), and sometimes can even result in a better invention. 

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