Forum US Inc v. Flow Valve LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Forum US, Inc. (Delaware)
  • Defendant: Flow Valve, LLC (Oklahoma)
  • Plaintiff’s Counsel: Crowe & Dunlevy; Ewing & Jones, PLLC
• Case Identification: 5:17-cv-00495, W.D. Okla., 04/28/2017
• Venue Allegations: Venue is alleged to be proper because Defendant resides in the district, conducts regular business there, and previously availed itself of the court’s jurisdiction in a related patent suit.
• Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s reissue patent is invalid, unenforceable, and not infringed by Plaintiff's workpiece supporting fixtures.
• Technical Context: The technology concerns specialized fixtures used to hold and precisely machine the ends of metal pipe elbows, primarily for the oil and gas industry.
• Key Procedural History: This action follows a prior lawsuit between the parties involving the original, now-surrendered version of the patent-in-suit. Plaintiff alleges Defendant obtained the current reissue patent with new claims (14-20) specifically drafted to cover Plaintiff's products after seeing them in the prior litigation. Plaintiff further alleges Defendant committed inequitable conduct during the reissue prosecution by failing to disclose material prior art and submitting a false inventor declaration.

Case Timeline

Date	Event
2009-06-05	Priority Date for U.S. Reissue Patent No. RE 45,878
2012-07-10	Issue Date for original U.S. Patent No. 8,215,213
2014-07-10	Application for Reissue Patent filed
2015-06-01	Deposition of Defendant's counsel in prior suit noted in complaint
2016-02-02	Issue Date for U.S. Reissue Patent No. RE 45,878
2016-09-23	Settlement Agreement in prior litigation
2017-04-28	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Reissue Patent No. RE 45,878 - “Workpiece Supporting Assembly”

• Patent Identification: U.S. Reissue Patent No. RE 45,878, “Workpiece Supporting Assembly,” issued February 2, 2016.

The Invention Explained

• Problem Addressed: The patent addresses inefficiencies in machining multiple surfaces of a complex workpiece, such as a pipe elbow. Traditionally, machining each end of an elbow required re-orienting and re-clamping the part in a lathe, which is time-consuming and can introduce inaccuracies (RE 45,878 Patent, col. 1:28-39).
• The Patented Solution: The invention is a single holding fixture that rigidly secures the pipe elbow. The fixture described in the specification features multiple mounting shafts, or "arbors," each aligned with a different axis of the elbow that requires machining. A lathe can grip one arbor to machine one end of the elbow; the entire fixture can then be repositioned for the lathe to grip a second arbor to machine another end, all without ever removing the elbow from the fixture itself. This "single setup" approach aims to expedite the process and improve machining integrity (’878 Patent, Abstract; col. 3:41-49).
• Technical Importance: The technology seeks to "minimize machine setup time while optimizing the integrity of the machining operation" for multi-face workpieces ('878 Patent, col. 1:40-43).

Key Claims at a Glance

• The complaint focuses on new claims 14-20, which were added during reissue and are the subject of the declaratory judgment action (Compl. ¶¶ 9, 20). Independent claim 17 is representative of the newly added apparatus claims.
• Independent Claim 17:
  • A workpiece supporting assembly for securing an elbow during a machining process...comprising:
  • a body having an internal surface defining a channel, the internal surface sized to receive a medial portion of the elbow...;
  • a support that is selectively positionable to operably urge the medial portion of the elbow against the internal surface to thereby secure the elbow...;
  • the body selectively positionable to a first position where a datum axis of one end of the secured elbow is operably aligned with the workpiece machining implement; and
  • the body alternatively positionable to a different second position where a datum axis of the other end of the secured elbow is operably aligned with the workpiece machining implement.
• The complaint notes that claims 14-20, unlike the original patent claims, do not require a "plurality of arbors" (Compl. ¶ 9).

III. The Accused Instrumentality

Product Identification

• Plaintiff’s workpiece supporting assemblies, or "fixtures," used to machine the ends of pipe elbows (Compl. ¶ 10).

Functionality and Market Context

• The complaint alleges that Plaintiff has made "meaningful preparation" to produce and use "additional fixtures" to meet increasing demand for swivel joints in the oil and gas industry (Compl. ¶ 20). The technical operation of these fixtures is not described in detail. The dispute arises from Plaintiff’s belief that Defendant will allege these fixtures are covered by claims 14-20 of the '878 Patent, which Plaintiff asserts are invalid, unenforceable, and not infringed (Compl. ¶ 20). The complaint also asserts that any of its fixtures existing before the '878 Patent’s issue date are protected by absolute intervening rights (Compl. ¶ 19).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement and therefore does not contain affirmative infringement allegations or a claim chart. It alleges that Defendant's counsel indicated the new reissue claims (14-20) were specifically drafted to cover fixtures used by Plaintiff (Compl. ¶ 40). Plaintiff asserts its fixtures do not infringe any valid and enforceable claim of the '878 Patent (Compl. ¶ 20). The complaint does not provide sufficient detail regarding the technical operation of Plaintiff's fixtures to construct a comparative claim chart.

• Identified Points of Contention:
  • Invalidity as a Precursor to Infringement: A primary point of contention is Plaintiff’s allegation that claims 14-20 are invalid under 35 U.S.C. § 251 because they omit the "plurality of arbors" limitation, which Plaintiff argues was the only embodiment taught in the original patent and thus the new, broader claims violate the "original patent" requirement for reissue patents (Compl. ¶ 14).
  • Technical Questions on Claim Scope: The complaint raises a significant technical question regarding the limitation "urge the medial portion of the elbow against the internal surface." Plaintiff alleges that Defendant’s inventors and prosecution counsel admitted in depositions that this does not describe how their own invention works, characterizing its inclusion in the claims as a "substantive mistake" (Compl. ¶ 17). This raises the question of whether Plaintiff's fixtures perform this function as required by the claim.

V. Key Claim Terms for Construction

• The Term: "a support that is selectively positionable to operably urge the medial portion of the elbow against the internal surface" (Claim 17)

  • Context and Importance: The definition of this term is critical because the complaint alleges that Defendant’s own inventors admitted their invention does not function this way (Compl. ¶ 17). Such an admission could be used by Plaintiff to argue for a narrow construction that excludes its own products, or potentially to challenge the validity of the claim for lack of written description. Practitioners may focus on this term as a potential "silver bullet" for non-infringement if Plaintiff's fixtures similarly do not press the elbow "against the internal surface."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification describes "support adjustment bolts" that "press against the medial portion 12A of the elbow 12, and upon tightening, the adjustment bolts 56 will secure the elbow 12 therein" ('878 Patent, col. 3:3-6). A party could argue this language supports a general concept of securing the elbow via pressure, without requiring literal contact with the main channel wall.
    • Evidence for a Narrower Interpretation: The claim language explicitly requires urging the elbow "against the internal surface." The specification's primary embodiment shows adjustment bolts 56 that appear to secure the elbow 12 within the larger internal channel 54 without necessarily pressing it against the opposing wall of the channel ('878 Patent, Fig. 5; col. 2:65-col. 3:6). This could support a narrow interpretation requiring direct, forceful contact with the main body's inner surface, a condition Plaintiff alleges is not met even by the patentee's own device.

• The Term: "body selectively positionable to a first position ... and ... a different second position" (Claim 17)

  • Context and Importance: This term replaced the more specific "plurality of arbors" limitation from the original patent. Its construction will determine whether the claim is broad enough to cover positioning mechanisms different from the dual-arbor system shown in the patent's figures. The central validity dispute under the reissue statute hinges on whether the original patent specification supports this broader, more functional claiming style (Compl. ¶ 14).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party seeking a broad interpretation would argue that the overall purpose of the invention is to allow machining of multiple ends in a single setup, and that the "positionable body" language captures this essential function without being limited to the specific mechanism used to achieve it. The Summary of Invention describes the functionality in broad terms ('878 Patent, col. 1:44-59).
    • Evidence for a Narrower Interpretation: The only positioning mechanism disclosed in the entire patent is the "plurality of arbors" system, where a first arbor (58) and a second arbor (60) are physically distinct structures used for re-orientation ('878 Patent, col. 3:11-28; Figs. 4, 5). Plaintiff will likely argue that because no other positioning mechanism is described, the term must be construed as limited to that structure, or that the claim is invalid for lacking written description for any broader scope.

VI. Other Allegations

• Unenforceability / Inequitable Conduct: The complaint makes extensive allegations of inequitable conduct, forming the basis for its second cause of action (Compl. ¶¶ 26-38). Plaintiff alleges Defendant and its counsel intentionally withheld material prior art from the USPTO during the reissue prosecution, including the "Gonzales Fixture," "indexing chucks," and other references that were discussed in the prior litigation (Compl. ¶¶ 28-29, 32). It is alleged that this art taught key features of the claims and that its non-disclosure was intended to deceive the USPTO (Compl. ¶¶ 30, 32). The complaint further alleges that one of the named inventors submitted a false declaration to the USPTO, swearing he had reviewed the new claims when he admittedly had not (Compl. ¶ 34).
• Intervening Rights: The complaint asserts that any of its fixtures that existed prior to the February 2, 2016 issue date of the '878 reissue patent are entitled to "absolute intervening rights" under 35 U.S.C. § 252, which would prevent an infringement claim against those specific products (Compl. ¶¶ 19, 42, 44).

VII. Analyst’s Conclusion: Key Questions for the Case

This declaratory judgment action appears poised to focus less on a technical comparison for infringement and more on threshold questions of patent validity and enforceability stemming from the reissue process.

• A core issue will be one of reissue validity: Did the original patent’s disclosure, which only described a "plurality of arbors" for repositioning, provide adequate written description to support the new, broader claims (14-20) that omit this limitation? The court’s decision on whether this change violates the "original patent" requirement of 35 U.S.C. § 251 could be dispositive.
• A second central issue will be the enforceability of the patent: The complaint presents detailed allegations of inequitable conduct, including the intentional withholding of known, material prior art and the filing of a false inventor declaration. The court will have to weigh the evidence of materiality and intent to deceive, which, if proven, could render the entire patent unenforceable.
• Finally, a key question for any surviving claims will be one of claim scope and factual infringement: Can the claim limitation requiring the elbow to be urged "against the internal surface" be met, especially in light of allegations that the patentee’s own inventors admitted this was a "mistake" and not how their own device works? This creates a significant potential for a non-infringement or invalidity finding based on the patentee's own statements.