In Law360 article, Brandon Smith and Paul Stewart Discuss the Federal Circuit’s “Float’N’Grill“ Decision

In the latest installment of Knobbe Martens’ Law360 series on noteworthy Federal Circuit opinions, partners Brandon Smith and Paul Stewart write about a recent decision in In re: Float'N'Grill LLC, a case where the Federal Circuit assessed whether the Patent Trial and Appeal Board properly upheld the rejection of a proposed reissue claim based on the original patent requirement of Section 251.

In the article, the authors examine the case, in which the court held that “where a structure is not described in the specification as optional and only a single embodiment is disclosed, then a reissue claim may not be broadened to cover an entire class of structures.” This differs from and is more stringent than the requirements of Section 112 for ordinary patent applications.  Outside the context of reissues, the Federal Circuit has repeatedly held that disclosure of a single embodiment does not limit the claims to that embodiment.

Smith and Stewart explain that Float'N'Grill illustrates the importance of keeping patent families open with pending continuation or divisional applications. “This approach likely would have avoided many of the issues presented by the reissue claims,” they said. Furthermore, they also share that the case “again demonstrates the importance of specification drafting and disclosing alternative embodiments. The Federal Circuit focused on the single disclosed embodiment of the '132 patent and several statements where the magnets were not listed as exemplary or optional embodiments.”

Read the full article on Law360 here [PDF available here].