Reiffin v. Microsoft Corp., 214 F.3d 1342 (2000)
`54 U.S.P.Q.2d 1915
`
`" KeyCite Yellow Flag — Negative Treatment
`Distinguished by
`Edwards Lifesciences Corp. V. St. Jude Medical, Inc.,
`C.D.Cal.,
`June 24, 2004
`
`214 F.3d 1342
`United States Court of Appeals,
`Federal Circuit.
`
`Martin Gardner REIFFIN, Plaintiff—Appellant,
`V
`
`MICROSOFT CORPORATION,
`
`Defendant—Appellee.
`
`No. 98-1502.
`I
`June 5, 2000.
`
`I
`
`John D. Vandenberg, Klarquist Sparkman Campbell Leigh &
`Whi11sto11, LLP, of Portland, Oregon, argued for defendant-
`appellee. With him on the brief were James E. Geringcr and
`Joseph T. Jakubek. Of counsel on the brief were Terrence P.
`McMahon, William L. Anthony, Jr., Eric L. Wesenberg, and
`Heidi Keefe, Orrick Herrington & Sutcliffe, LLP, of Menlo
`Park, California.
`
`Steven M. Anzalone, Finnegan, Henderson, Farabow, Garrett
`& Durmer, L.L.P., of Washington, DC, for amici curiae
`Garmin International,
`Inc., and National Association of
`
`Manufacturers. With him on the brief were Don O. Burlcy
`and Robert L. Burns.
`
`Before NEWMAN, MICHEL, and SCHALL, Circuit Judges.
`
`Opinion
`
`Rehearing Denied June 30, 2000. *
`
`OPINION PER CURIAM, JUDGE PAULINE NEWMAN
`CONCURS IN THE JUDGMENT WITH OPINION.
`
`Patentee brought action against producer of software
`applications, alleging infringement of patents directed to
`computer system permitting concurrent compilation and
`editing. The United States District Court for the Northern
`District of California, Vaughn R. Walker, J., 1998 WL
`397915,granted summary judgment that patents were invalid
`for failure to meet the “written description” requirement,
`and patentee appealed. The Court of Appeals held that: (1)
`court need only look at specification of disputed patents
`to determine whether their claims meet statutory written
`description requirement, and (2) claims unsupported by
`ancestor application, that do not seek benefit of ancestor
`application's filing date, are not invalid.
`
`PER CURIAM.
`
`Martin Gardner Reiffm appeals the decision of the United
`
`States District Court for the Northern District of California, '
`granting summary judgment that United States Patents Nos.
`5,694,603 and 5,694,604 are *l344 invalid for failure to
`meet the “Written description” requirement of 35 U.S.C.
`§ 112, first paragraph. We conclude that the district court
`erred in application of the statute. The summary judgment is
`reversed, and the case is remanded for further proceedings.
`
`Reversed and remanded.
`
`DISCUSSION
`
`Pauline Newman, Circuit Judge, concurred in the judgment
`and filed opinion.
`
`Attorneys and Law Firms
`
`*1343 Martin G. Reiffin, of Danville, California, argued
`pro se. On the brief were Edward F. O'Connor, Stradling
`Yocca Carlson & Rauth, of Newport Beach, California. Of
`Counsel on the bricfwcrc Thomas A. Fairhall, Christopher M.
`Cavan, and James C. Gumina, McDonnell Boehnen Hulbert
`& Berghoff, of Chicago, Illinois.
`
`In I982 Mr. Reiffin filed a patent application entitled
`“Computer System with Real—Time Compilation.” The
`application discloses a system in which a combination
`of software and hardware compiles a computer program
`concurrently with the program's entry into an editor,
`achieving what is described as “contemporaneous real-time
`entry and compilation of a source program.” A source
`program is a computer program written in a high level
`human readable language which the application refers to as
`source code; the end product of the compilation of the source
`program is a binary machine language composition which the
`application refers to as object code, and which is required for
`the program's execution by a computer. We also take notice
`of the following dictionary definitions:
`
`WESTLAW
`
`1
`
`USAA 1024
`
`

`
`Reiffin v. Microsoft Corp., 214 F.3d 1342 (2000)
`54 U.S.P.Q.2d 1915
`
`COMPILE B to generate a program written in machine
`language (or sometimes in symbolic language) from a
`program written in a high level language such as BASIC
`or FORTRAN V.
`
`firmware tool, a program
`EDITOR B a software or
`[which] aids in modifying,
`or part of a program
`editing, rewriting, changing, or debugging a program being
`developed.
`
`Philip E. Burton, A Dictionary of Microcomputing 31, 51
`(1976).
`
`The system as described in the specification utilizes an
`“interrupt mode of operation” to allow the computer's Central
`Processing Unit (“CPU”) to execute a compiler and an
`editor seamlessly as viewed by the computer user. In normal
`operation the compiler is continuously executed by the CPU;
`as the compiler is executed it performs lexical, synmctic,
`and semantic analyses of program source code stored in a
`source buffer in the computer's memory, outputting compiled
`object code into an object buffer. Whenever the computer user
`strikes a key on the keyboard, a so—called “interrupt sequence”
`causes the compiler's execution to pause and directs the CPU
`to execute the editor. After the editor performs whatever
`operation is required by the keystroke (for example, entering
`an alphanumeric character into the source buffer), a “return”
`instruction is executed by the CPU. This return instruction
`ends the interrupt sequence and causes the CPU to resume its
`normal state in which the compiler is continuously executed.
`The specification also describes an alternative embodiment in
`which the interrupt sequence is activated by a timer or clock
`instead of by the keyboard.
`
`Mr. Reiffm filed a continuation of the 1982 application in
`1985. He filed another continuing application with additional
`text and modified claims in 1990, describing the system
`
`as a “multithreaded computer application.”2 The 1990
`application issued as the '603 patent on December 2, 1997.
`The '604 patent, filed in 1994 as a continuation of the 1990
`application, also issued on December 2, 1997. The claims of
`the ‘603 and ‘604 patents were amended several times during
`the lengthy prosecution, which included appeals to the Board
`of Patent Appeals and Interferences.
`
`The two patents in suit have the same specification, and differ
`as to their claims; the '603 patent claims a memory product
`storing multithreaded software, arid the ‘604 patent claims
`
`WESTLAW
`
`a method of multithreaded operation a11d a multithreaded
`system. Claim 12 of the '603 patent is representative:
`
`12. A computer-readable disk means encoded with
`a plurality of concurrently executable
`threads of
`instructions constituting *1345 a multithreaded computer
`application program to control the execution of a desktop
`microcomputer having an interrupt operation, a clock timer
`for periodically activating said interrupt operation, and
`memory means for storing a body of data, said encoded
`executable instructions comprising
`
`executable by the
`instructions
`thread of
`first
`a
`microcomputer and including means to process said stored
`body of data,
`
`at least a second thread of instructions for preemptively
`taking control of the microcomputer in response to said
`periodic activations of said interrupt operation by said
`clock timer and including means to process said stored
`body of data for a brief time interval after each said
`preemption,
`
`and said first thread of instructions repeatedly regaining
`control of the computer after each said time interval so
`that said first thread of instructions resumes processing said
`body of data at the point where it had been previously
`preempted,
`
`whereby said threads of instructions execute concurrently
`in a multithreaded mode of operation.
`
`Mr. Reiffm charged that several of Microsoft's software
`applications infringe the '603 and '604 patents, including word
`processing programs that check spelling and grammar as text
`is entered, and operating systems such as Windows 98 which
`control switching ofthe program threads that are active during
`normal operation of a personal computer.
`
`On cross-motions for summary judgment on the issue of
`patent validity, the district court granted Microsoft's motion
`and held all of the claims invalid for failure to comply
`with the written description requirement of 35 U.S.C. §
`112 11 1. The district court determined that, as a matter
`of law, the written description requirement encompasses an
`“omitted element test” which “prevents a patent owner from
`asserting claims that omit elements that were essential to
`the invention as originally disclosed.” Rezfiin, 48 USPQ2d
`at 1278. Examining the contents of the original 1982
`application, the district court found that the specification
`described four elements as essential to the invention C a
`
`2
`
`

`
`Reiffin v. Microsoft Corp., 214 F.3d 1342 (2000)
`54 U.S.P.Q.2d1915
`
`compiler, an editor, an interrupt, and a return. Reviewing
`the seventy-seven claims of the issued '603 and '604 patents,
`the court concluded that none of the claims includes all four
`
`elements, and held all of the claims invalid for failure to
`comply with the written description requirement.
`
`We conclude that the district court erred in looking to the text
`of the original 1982 application to determine whether the '603
`and '604 patents, filed in 1990 and 1994, comply with the
`written description requirement. For purposes of § 1 12 T 1, the
`relevant specifications are those of the '603 and '604 patents;
`earlier specifications are relevant only when the benefit of an
`earlier filing date is sought under 35 U.S.C. § 120.
`
`A
`
`The district court did not decide whether the
`[2]
`[1]
`claims of the '603 and ’604 patents are adequately supported
`by the written descriptions of the inventions set forth in
`the specifications of those patents. However,
`that
`is all
`that is required for compliance with the written description
`requirement of § 112 1] 1, which states the basic requirements
`for the content of the specification:
`
`35 U.S.C. § 112 1] 1. The specification
`shall contain a written description of
`the invention, and of the manner and
`
`process of making and using it, in such
`full, clear, concise, and exact terms as
`to enable any person skilled in the art
`to which it pertains
`to make and use
`the same....
`
`The purpose of this provision is to ensure that the scope
`of the right
`to exclude, as set forth in the claims, does
`not overreach the scope of the inventor's contribution to
`the field of art as described in the patent specification. See
`*1346 In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d
`1614, 1618 (Fed.Cir.l989) (“[T]he description must clearly
`allow persons of ordinary skill in the art to recognize that
`[the inventor] invented what is cl aimed.”); see alvo Va.v—Catlz,
`Inc. v. Malzurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111,
`1115 (Fed.Cir.1991) (“Adequate description of the invention
`guards against the inventor's overreaching by insisting that
`he recount his invention in such detail that his future claims
`
`can be determined to be encompassed within his original
`creation.” (quoting Rengo Co. v. Molins 11/Iach. C0,, 657 F.2d
`535,551,211 USPQ 303, 321 (3d. Cir.1981))).
`
`WESTLAW
`
`[3] Compliance of the ’603 and '604 patents with the written
`description requirement requires that the specifications of
`these patents describe the inventions claimed in these patents.
`Thus, for example,
`the 1990 application considered as a
`whole must convey to one of ordinary skill in the art, either
`explicitly or inherently, that Mr. Reiffin invented the subject
`matter claimed in the ’603 patent. See Vas—Cath, 935 F.2d
`at 1563, 19 USPQ2d at 1116; Continental Can Co. USA v.
`Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749
`(Fed.Cir.199l) (descriptive matter may be inherently present
`ill a specification if one skilled in the art would necessarily
`recognize such a disclosure).
`
`in its motion for summary
`Microsoft did not dispute,
`judgment or on this appeal, that the descriptive texts of the
`issued '603 and '604 patents meet the written description
`requirement as to the claims of those patents, and the district
`court did not discuss this issue. Instead, the district court
`looked to the specification of Reiffin’s 1982 grandparent
`application for the written description relevant to the claims
`of the '603 and '604 patents, apparently relying on the
`statement in Gentry Gallery, Inc. v. Berkline Corp. that “[the
`inventor's] original disclosure serves to limit the permissible
`breadth of his later-drafted claims.” 134 F.3d 1473, 1479,
`45 USPQ2d 1498, 1503 (Fed.Cir.1998). This reliance was
`misplaced, however, for in Gentry Gallery there were no
`prior applications and the “original disclosure” was that of
`the issued patent. The “original disclosure” reference simply
`recognized that “the sufficiency [of a disclosure] under §
`112, first paragraph must be judged as of its filing date.”
`Application ofGlasS, 492 F.2d 1228, 1232, 181 USPQ 31, 34
`(CCPA 1974).
`
`B
`
`[5]
`[4]
`Analysis of the disclosure in ancestor applications
`is appropriate when benefit of an earlier filing is sought under
`35 U.S.C.§ 120:
`
`120. An application
`§
`35 U.S.C.
`for pate11t for a11 invention disclosed
`in the manner provided by the first
`paragraph of section 112 of this title
`in an application previously filed in
`the United States
`shall have the
`
`same effect, as to such invention, as
`
`though filed on the date of the prior
`application....
`
`3
`
`

`
`Reiffin v. Microsoft Corp., 214 F.3d 1342 (2000)
`54 U.S.P.Q.2d1915
`
`Although § 120 incorporates the requirements of § 112 11
`1, these requirements and the statutory mechanism allowing
`the benefit of an earlier filing date are separate provisions
`with distinct consequences. In accordance with § 120, claims
`to subject matter in a later-filed application not supported
`by an ancestor application in terms of § 112 11
`1 are not
`invalidated; they simply do not receive the benefit of the
`earlier application's filing date. See, e.g., Hyatt v. Boone, 146
`F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed.Cir.l998).
`Thus the district court erred in holding the '603 and
`'604 claims invalid for failure to comply with the written
`description requirement.
`
`Mr. Reiffin states that he does not need the benefit of the
`
`1982 application's filing date. Microsoft disagrees. We do
`not undertake this determination on the undeveloped record
`before us. Since the district court erred in looking to the 1982
`specification for support under § 112 of the claims granted
`on the 1990 and 1994 specifications, we do not reach Mr.
`Reiffin's challenge to the “omitted element test.”
`
`CONCLUSION
`
`The summary judgment is reversed. We remand for further
`proceedings.
`
`*1347 Costs to Mr. Reiffin, Fed. R.App. P. 39(a).
`
`REVERSED AND REA/IANDED
`
`PAULINE NEWMAN, Circuit Judge, concurring in the
`judgment.
`The ground on which the district court based its ruling is
`not treated in this court's per curiam opinion, leaving the
`remand in procedural and substantive limbo. The sole basis
`of the district court's summary judgment was its adoption
`of the “omitted element test,” which was i11 tur11 derived
`from Microsoft's incorrect statement of the law of written
`
`description. 3 The issues concerning the “omitted element
`test” were fully presented on appeal, and our reversal of the
`summary judgment on a different ground does not answer the
`question that is central to this case. Our silence on whether
`this is a correct rule of law will be singularly mischievous, for
`it relates to Mr. Reiffin's entitlement to his earlier filing date
`under 35 U.S.C. § 120, an issue that the parties expect to be
`raised on the case's return to the district court.
`
`WESTLAW
`
`The district court accepted Microsoft's proposition that the
`patentee must
`include in every claim “each and every
`element” that was described as “part of his invention,”
`whether or not the element is necessary for patentability of
`the claim. Failure to do so, the district court held, invalidates
`
`the claims for noncompliance with the written description
`requirement of § 112 11 1. That is not a correct statement of
`the law. Section 112 11 2 instructs the applicant to “distinctly
`claim[ ] the subject matter which the applicant regards as his
`invention.” This does 11ot automatically require inclusion i11
`every claim of every element that is part of the device or its
`operation.
`
`It is standard for applicants to provide claims that vary in
`scope and in content, including some elements of a novel
`device or method, and omitting others. See Irving Kayton, 1
`Patent Practice (6th ed.) 3.1, 3.3 (1995):
`
`[P]atent practitioners typically draft
`a series of claims approximating a
`spectrum of patent protection.... The
`first way in which a claim may
`be made narrower is by adding a
`limitation to it
`in the form of an
`additional element.
`
`Claiming an invention in this manner does not raise an issue of
`compliance with § 112 11 1. I11deed, the “omitted element test”
`threatens this venerable practice, which is also summarized
`in Ernest B. Lipscomb, III, 3 Lipscombb Walker on Patents
`290-91 (1985):
`
`[A] claim may cover an invention
`embracing the entire process, machine,
`manufacture, or composition of matter
`which is described in the specification,
`or it may cover such sub—processes
`or
`such sub-combinations of
`the
`
`invention as are new, useful and
`patentable.
`
`See, eg., Special Equipment Co. v. Coe, 324 U.S. 370, 65
`S.Ct. 741, 89 L.Ed. 1006 (1945) (reversing the rejection of
`a sub—combination claim directed to the previously claimed
`invention less one element). While the specification must of
`course describe the claimed invention, it is well established
`that the claims need not include every component that is
`described in the specification. See Aro Mfg. Co. v. Convertible
`Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5
`
`4
`
`

`
`Reiffin v. Microsoft Corp., 214 F.3d 1342 (2000)
`54 U.S.P.Q.2d 1915
`
`L.Ed.2d 592 (1961) (There is “no legally recognizable or
`protected ‘essential’ element
`in a combination patent.”).
`The decision in Gentry Gallery,
`Inc. v. Berkline Corp.,
`134 F.3d 1473, 45 USPQ2d 1498 (Fed.Cir.l998), cited as
`authority by the district court, does not hold otherwise.
`
`*1348 In Gentry Gallery the issue was whether the written
`description, which described a specific location of a control
`console on a reclining sofa, adequately supported broad
`claims that were not limited to this location of the console;
`these broad claims were asserted by the patentee against
`a reclining sofa having the control console in a different
`location. This court held that the broad claims were not
`
`supported by the written description, and were invalid. As
`explained in Jolmson Worldwide Assoc. v. Zebco Corp., 175
`F.3d 985, 993, 50 USPQ2d 1607, 1613 (Fed.Cir.1999), “this
`court's determination [in Gentry Gallery ]
`that the patent
`disclosure did not support a broad meaning for the disputed
`claim terms was premised on clear statements in the written
`description that described the location of a claim element
`as
`‘the only possible location’ and that variations were ‘outside
`the stated purpose of the invention.’ ” The Gentry Gallery
`decision did not create a new requirement of claim content, or
`change the long-standing law and practice of claim drafting.
`Gentry Gallery is simply one of many decisions holding that,
`as quoted by the district court, “claims in an application which
`are broader than the applicant's disclosure are not allowable."
`Application ofSus, 49 C.C.P.A. 1301, 306 F.2d 494, 505, 134
`USPQ 301, 310 (CCPA 1962) (citations omitted).
`
`Microsoft also cites Tronzo v. Biomel, Inc, 156 F.3d 1154,
`
`47 USPQ2d 1829 (Fed.Cir.l998), as supporting the “omitted
`element test.” in Tronzo, a first application was directed
`specifically and narrowly to a conical-shaped hip prosthesis;
`a continuation-in-part application then described additional
`shapes for the prosthesis, and for the first time presented
`generic claims that covered the additional shapes. This court
`explained that the generic claims were not entitled to the
`parent application's filing date under § 120, for the generic
`
`claims were not supported by the written description in
`the parent application. See id. at 1158, 156 F.3d 1154, 47
`USPQ2d at 1833 (it is “clear that the [parent specification]
`discloses only conical shaped cups and nothing broaden”).
`The generic claims were then invalidated, not because of any
`“omitted element,” but because of ai1 intervening publication
`which rendered them anticipated.
`
`Nor are the other cases on which Microsoft and the district
`
`court relied relevant. They concern reissued patents having
`broadened claims,
`the courts applying 35 U.S.C. § 251
`and predecessor statutes which prohibit broadening reissue
`claims after two years, whether or not the broader claims are
`supported in the specification. For example, US. Industrial
`Chems., Inc. v. Carbide & Carbon Chem. Co., 315 U.S.
`
`668, 677-78, 62 S.Ct. 839, 86 L.Ed. 1105 (1942) holds that
`the omission from the reissue claims of one of the steps or
`elements prescribed in the original claims, “thus broadening
`the claims to cover a new and different combination,” voids
`the reissue. Microsoft also relies on the authority of Olin v.
`Tiinlcen, 155 U.S. 141, 146-47, 15 S.Ct. 49, 39 L.Ed. 100
`
`(1894), Huber v. Nelson Mfg. Co., 148 U.S. 270, 291-92,
`13 S.Ct. 603, 37 L.Ed. 447 (1893), and Mathews 12. Boston
`Machine Co, 105 U.S. 54, 58, 26 L.Ed. 1022 (1881). These
`reissue nilings have no relevance whatsoever to this case,
`which does not concern claim broadening by reissue.
`
`When the claim is supported by the patents disclosure, is
`adequately distinguished from the prior art, and otherwise
`meets the statutory requirements of pateiitability, neither law
`nor policy requires that the claim contain all the elements
`described in the specification as part of the new machine
`or method. The district court's controversial and incorrect
`
`decision should be confronted, not ignored.
`
`All Citations
`
`214 F.3d 1342, 54 U.S.P.Q.2d 1915
`
`Footnotes
`
`*
`1
`2
`
`Circuit Judge Newman would rehearthe appeal.
`Reiffln v. Microsoft Corp., 48 USPQ2d 1274 (N.D.Ca|.1998).
`Multithreading is defined in the '603 and '604 patents as “the concurrent time-sliced preemptive execution of a plurality
`of threads of instructions located within the same
`application program.” "603 patent, col. 1:25-38.
`Microsoft stated: “This is a dispositive motion for summary judgment of invalidity based upon the patents’ failure to contain
`a ‘written description’ of the claimed subject matter as required by 35 U.S.C. § 112 1] 1
`Each and every element
`originally described by the inventor as being a part of his invention (sometimes referred to as ‘essential elements’) must
`appear in the claims ultimately issued in the patent. See, e.g., Gentry Gallery.”
`
`WESTLAW
`
`5
`
`

`
`Reiffin v. Microsoft Corp., 214 F.3d 1342 (2000)
`54 U.S.P.Q.2d 1915
`
`End of Document
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`WESTLAW © 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`6