from the United States District Court for the Western
District of Oklahoma in No. 5:17-cv-00495-F, Senior Judge
Stephen P. Friot
Jaasma, Ewing & Jones, PLLC, Houston, TX, argued for
plaintiff-appellee. Also represented by Harvey D. Ellis, Jr.,
David M. Sullivan, Crowe & Dunlevy, PC, Oklahoma City,
Peterson, Tomlinson McKinstry, PC, Oklahoma City, OK, argued
for defendant-appellant. Also represented by Ross N. Chaffin,
Kelly J. Kress, Robert D. Tomlinson.
Reyna, Schall, and Hughes, Circuit Judges.
Valve, LLC appeals from the U.S. District Court for the
Western District of Oklahoma's grant of summary judgment
of invalidity of its reissue patent. The original patent does
not disclose the invention claimed in the reissue patent. The
reissue claims therefore do not comply with the original
patent requirement of 35 U.S.C. § 251 as a matter of
law. We affirm.
Valve owns U.S. Patent No. RE45, 878 ("the Reissue
patent"), entitled "Workpiece Supporting
Assembly." The Reissue patent is a reissue of U.S.
Patent No. 8, 215, 213 ("the '213 patent").
During prosecution of the Reissue patent, the patentees added
seven claims-claims 14 through 20-but made no changes to the
written description or drawings of the original '213
Reissue patent relates to supporting assemblies, i.e.,
fixtures, for holding workpieces during machining. The
workpieces disclosed in the patent are machined pipe
fittings, such as those used in the oil and gas industry.
Such fittings attach to other pipe sections by means of
threaded connections where one or more ends of the fitting
require machining on a turning machine to form threads or
seat surfaces. Reissue patent col. 1 ll. 20-27. A turning
machine, such as a lathe, rotates the workpiece while
stationary tools perform various operations on the workpiece,
such as cutting or sanding, as the workpiece rotates. See
id. col. 1 ll. 29-37. Machinists often make and use
fixtures that utilize arbors to hold the workpiece while it
rotates on the turning machine, and it is advantageous to
have a multi-purpose fixture capable of holding a workpiece
in multiple orientations to expedite machining by minimizing
setup time. See id. col. 111. 36-58.
written description and drawings disclose only embodiments
with arbors. The following figures illustrate the placement
of arbors in a machining fixture for holding the pipe joint
as disclosed in the Reissue patent.
patent Figs. 4 & 5 (annotations added by Appellee). The
written description discloses a first and a second arbor as
central to the fixture design:
[T]he body member 52 has a first arbor 58 and a
second arbor 60 supported to extend from the body member
52. The first arbor 58 is positioned so that the
longitudinal axis 62 thereof is coincident with the datum or
central axis 64 of the extending elbow end 12B so that, when
workpiece machining implement 40 rotates the chuck 42, the
first arbor 58 is rotated about its longitudinal
axis 62, the body member 52 will rotate the elbow end 12B
about the datum axis 64 thereof.
In like manner, the second arbor 60 is positioned so
that the longitudinal axis 66 thereof is coincident
with the datum or central axis 68 of the extending elbow end
patent col. 3 ll. 11-22 (emphases added). The written
description further explains that "the multiple arbors
of the workpiece supporting assembly provides [sic]
means for machining the ends of the unfinished elbow member
12 by a single setup and only a change from one arbor to one
of the other arbors allows rapid and accurate machining of
the workpiece." Id. col. 3 ll. 42-46.
Reissue patent, the patentees broadened the claims to include
embodiments of fixtures that do not use arbors by writing new
claims without the arbor limitations. Claim 1 of the ...