PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (2008)
`86 U.S.P.Q.2d 1385
`
`
`
`KeyCite Yellow Flag - Negative Treatment
` Declined to Extend by In re Katz Interactive Call Processing Patent
`Litigation, C.D.Cal., August 14, 2009
`522 F.3d 1299
`United States Court of Appeals,
`Federal Circuit.
`
`POWEROASIS, INC. and PowerOasis
`Networks, LLC, Plaintiffs–Appellants,
`v.
`T–MOBILE USA, INC., Defendant–Appellee.
`
`No. 2007–1265.
`|
`April 11, 2008.
`|
`Rehearing and Rehearing En
`Banc Denied Aug. 13, 2008.
`
`Synopsis
`Background: Patent owner brought action against
`competitor alleging infringement of patents directed
`toward vending machines that sold telecommunications
`access. The United States District Court for the
`District of New Hampshire, Paul Barbadoro, J., 2007
`WL 962937,granted competitor's motion for summary
`judgment of invalidity. Owner appealed.
`
`Holdings: The Court of Appeals, Moore, Circuit Judge,
`held that:
`
`[1] owner had burden to come forward with evidence to
`prove entitlement to claim priority to earlier filing date;
`
`(CIP)
`in continuation-in-part
`[2] asserted claims
`application that added language describing vending
`machine with user interface located remotely from
`vending machine, such as on user's laptop, were not
`entitled to effective filing date of original application that
`claimed user interface that was part of unitary vending
`machine;
`
`[3] expert did not demonstrate at time of filing date of
`original application how applicant was in possession of
`claimed invention either expressly or inherently; and
`
`[4] owner was not entitled to broad claim construction
`for purposes of infringement and different narrower claim
`construction for purposes of validity.
`
`Affirmed.
`
`Attorneys and Law Firms
`
`*1301 Sibley P. Reppert, Lahive & Cockfield LLP, of
`Boston, Massachusetts, argued for plaintiffs-appellants.
`With him on the brief was William A. Scofield, Jr.
`
`William F. Lee, Wilmer Cutler Pickering Hale and Dorr
`LLP, of Boston, Massachusetts, argued for defendant-
`appellee. With him on the brief were David B. Bassett and
`Amr O. Aly, of New York, New York.
`
`Before NEWMAN, SCHALL, and MOORE, Circuit
`Judges.
`
`Opinion
`
`MOORE, Circuit Judge.
`
`PowerOasis, Inc. and PowerOasis Networks, LLC
`(PowerOasis) appeal the United States District Court
`for the District of New Hampshire's grant of summary
`judgment that claims 15, 18, 31, 35, 38, 40, and 49 (asserted
`claims) of U.S. Patent Nos. 6,466,658 ('658 patent) and
`6,721,400 ('400 patent) are invalid as anticipated under
`35 U.S.C. § 102(b). In reaching its decision, the district
`court concluded that none of the asserted claims of the
`two patents were entitled, under 35 U.S.C. § 120, to
`the benefit of the filing date of PowerOasis's original
`application because the earlier application did not provide
`a written description of the invention claimed in the
`asserted patents, as required by 35 U.S.C. § 112. We affirm
`the grant of summary judgment of invalidity with respect
`to all asserted claims.
`
`BACKGROUND
`
`The two PowerOasis patents at issue, the ′658 patent
`and the ′400 patent (PowerOasis patents), are directed
`to vending machines that sell telecommunications access.
`The PowerOasis patents contain virtually
`identical
`specifications. The stated purpose of the PowerOasis
`patents is to provide a “vending machine” that enables
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`1
`
`USAA 1058
`USAA v Asghari-Kamrani
`CBM2016-00063
`CBM2016-00064
`
`

`

`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (2008)
`86 U.S.P.Q.2d 1385
`
`a customer to connect a laptop to a telecommunications
`channel. The ′658 and ′400 patents list filing dates of
`November 6, 2001 and October 15, 2002, respectively.
`The ′658 and ′400 patents stem from a series of
`continuation and continuation-in-part applications. The
`first application in the patent chain (Original Application)
`was filed on February 6, 1997 and ultimately issued as U.S.
`Patent No. 5,812,643 ('643 patent). PowerOasis does not
`assert the ′643 patent in this litigation.
`
`PowerOasis filed a continuation application on September
`18, 1998 (which was later abandoned), and on June 15,
`2000, it filed a continuation-in-part application (2000
`CIP Application), which issued as U.S. Patent No.
`6,314,169 ('169 patent). The ′169 patent is not asserted by
`PowerOasis in this litigation. The 2000 CIP Application
`added considerable new language to the specification,
`which the district court characterized as “substantial new
`matter.” PowerOasis, Inc. v. T–Mobile *1302 USA, Inc.,
`No. 05–cv–42–PB, 2007 WL 962937, at *2 (D.N.H. Mar.
`30, 2007).
`
`PowerOasis subsequently filed the two applications that
`led directly to the two patents asserted in this suit: first the
`′658 patent, then the ′400 patent. PowerOasis sued T–
`Mobile for patent infringement alleging that T–Mobile's
`wireless “HotSpot Network” 1 infringes claims 15, 18, 31,
`35, 38, 40, and 49 of both PowerOasis patents. Each of
`the asserted claims depends from independent claim 1,
`which is not asserted by PowerOasis. Except for minor
`variations in the language of the independent claims that
`do not relate to the issues on appeal, the language of the
`asserted claims is identical in both PowerOasis patents.
`Independent claim 1 recites:
`
`1
`
`The relevant features of the T–Mobile HotSpot
`Network are undisputed. Unlike a stand-alone
`vending machine that vends telecommunications
`access, the T–Mobile HotSpot Network consists of
`several main components that are geographically
`distributed throughout the United States. These
`components work together to enable users to access
`Internet services. Multiple users can simultaneously
`access the T–Mobile HotSpot Network.
`
`1. A vending machine for vending telecommunications
`channel access to a customer, said vending machine
`comprising:
`
`a payment mechanism for obtaining information
`from the customer to
`initiate a vending
`transaction;
`
`a customer interface for indicating the status of said
`vending machine;
`
`an electronic circuit for determining when the
`vending transaction is completed;
`
`a
`
`telecommunications channel access circuit
`adapted to be connected to at least one external
`telecommunications channel for enabling access
`to the at least one external telecommunications
`channel at
`the beginning of a vending
`transaction and disabling access at the end of the
`vending transaction;
`
`a telecommunications channel access connector
`connected to said telecommunications channel
`access circuit for enabling connection to an
`external telecommunications device of the
`customer; and
`
`a control unit having a device for receiving
`payment information from the customer and
`for controlling said electronic circuit and said
`telecommunications channel access circuit.
`The parties had agreed that “customer interface” is “an
`interface that enables information to be passed between
`a human user and hardware or software components
`of a system,” but disagreed about the location of the
`customer interface. PowerOasis argued that the “customer
`interface” may occur on a customer's laptop. T–Mobile
`argued that the customer interface must be located on the
`vending machine itself. Relying entirely on new language
`added to the 2000 CIP application, the district court
`adopted PowerOasis's proposed construction that the
`claim term “customer interface” encompasses an interface
`that is located on the customer's laptop.
`
`In light of the district court's construction of “customer
`interface,” T–Mobile filed a motion for summary
`judgment that the asserted claims were anticipated by the
`MobileStar Network. It is undisputed that prior to June
`15, 1999, MobileStar Networks, Inc. (a company acquired
`by T–Mobile in 2002) developed, deployed, publicly used,
`and offered for sale the MobileStar Network, which was
`a high-speed wireless data network that connected users
`to the Internet. It is also undisputed that prior to June
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`2
`
`

`

`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (2008)
`86 U.S.P.Q.2d 1385
`
`15, 1999, the MobileStar Network contained all of the
`same *1303 features that form the basis of PowerOasis's
`allegation that the T–Mobile HotSpot Network infringes
`its patents. T–Mobile argued, therefore, that this public
`use, sale, and offer for sale more than one year prior to
`the June 15, 2000 filing date of the 2000 CIP Application 2
`constituted § 102(b) prior art which anticipated the
`PowerOasis patents. 35 U.S.C. § 102(b). PowerOasis
`responded by claiming its asserted claims should have the
`benefit of priority going all the way back to the filing
`date of its Original Application (February 6, 1997) which
`would antedate the MobileStar Network.
`
`2
`
`T–Mobile does not dispute that the ′658 and ′400
`patents are at least entitled to the effective filing date
`of the 2000 CIP Application, June 15, 2000.
`
`On summary judgment, the district court determined that
`the asserted claims were not entitled to the priority date of
`the Original Application because the written description
`of the Original Application did not support the later issued
`claims. The district court noted that, to arrive at the broad
`construction it accorded the “customer interface,” it relied
`“exclusively” on the new matter that was added to the
`2000 CIP Application. PowerOasis, 2007 WL 962937, at
`*8. Because the district court concluded that the ′658 and
`′ 400 patents are not entitled to the effective filing date
`of the Original Application, the district court granted the
`motion for summary judgment of invalidity. This appeal
`followed.
`
`DISCUSSION
`
`We review the grant of summary judgment de novo.
`Liebel–Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377
`(Fed.Cir.2007). Summary judgment is not appropriate if
`the dispute about a material fact is “genuine,” that is, if
`the evidence is such that a reasonable jury could return
`a verdict for the non-moving party. Anderson v. Liberty
`Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d
`202 (1986).
`
`PowerOasis appeals two aspects of the district court's
`summary judgment determination. First, PowerOasis
`argues that the district court erred when it placed the
`burden of proof on PowerOasis to show that it is
`entitled to the priority date of the Original Application.
`Second, PowerOasis argues that the district court erred in
`
`concluding that the disclosure of the Original Application
`does not provide a written description adequate to support
`the asserted claims of the ′658 and ′400 patents. See 35
`U.S.C. § 112 ¶ 1. PowerOasis contends that, at a minimum,
`there is a genuine issue of material fact which prevents
`summary judgment of invalidity. We consider each issue
`in turn.
`
`I. Burden of Proof
`
` [2]
`[1]
` It is well established that a patent is presumed
`valid, and “the burden of persuasion to the contrary
`is and remains on the party asserting invalidity.”
`Ralston Purina Co. v. Far–Mar–Co, Inc., 772 F.2d 1570,
`1573 (Fed.Cir.1985). The district court acknowledged
`a challenged patent is entitled to a presumption of
`validity, but questioned whether the presumption of
`validity extends to the question of priority. The district
`court concluded that “when a dispute arises concerning
`whether a CIP patent is entitled to priority to the date
`of the original application and the Patent Office has not
`addressed the issue, the burden of proof ordinarily should
`rest with the party claiming priority to the date of the
`original application.” PowerOasis, 2007 WL 962937, at
`*8. Accordingly, the district court held that PowerOasis
`had the burden of proving that it is entitled to claim
`priority to the filing date of the Original Application. Id.
`
`*1304 [3]
` PowerOasis contends that the party asserting
`invalidity must always bear the burden of proof as to
`whether claims in a patent application are entitled to the
`priority date of a parent application. PowerOasis relies on
`this court's decision in Ralston for support of its position
`that the party attacking validity bears the burden to show
`that claims stemming from a CIP application are not
`entitled to an earlier filing date. In short, PowerOasis
`argues the presumption of validity should include a
`presumption that claims in a CIP are all entitled to the
`earliest effective filing date. 3 In Ralston, both the U.S.
`Patent and Trademark Office (PTO) and the Board of
`Patent Appeals and Interferences (Board) made a priority
`determination. Ralston Purina Co. v. Far–Mar–Co., Inc.,
`586 F.Supp. 1176, 1189, 1212 (D.Kan.1984). Ralston
`involved an appeal related to U.S. Patent No. 3,940,495,
`which issued from a continuation of application Serial No.
`600,471, filed December 9, 1966 (1966 CIP application),
`which was a continuation-in-part of application Serial
`No. 381,853, filed July 10, 1964. Id. at 1185. In Ralston,
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`3
`
`

`

`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (2008)
`86 U.S.P.Q.2d 1385
`
`the 1966 CIP application had been the subject of an
`interference, which awarded the inventor the benefit of his
`earliest application in a detailed opinion by the Board.
`Id. at 1189, 1213. The district court in Ralston properly
`accorded deference to the Board's decision on priority. See
`id. at 1213.
`
`3
`
`is a continuation-in-part
`A “CIP” application
`application containing a portion or all of the
`disclosure of an earlier application together with
`added matter not present in that earlier application.
`Transco Prods., Inc. v. Performance Contracting, Inc.,
`38 F.3d 551, 555 (Fed.Cir.1994) (citing M.P.E.P. §
`201.08). While the PTO has noted that the expressions
`“continuation,” “divisional,” and “continuation-in-
`part” are merely terms used for administrative
`convenience, id., the quintessential difference between
`a continuation and a continuation-in-part is the
`addition of new matter.
`Generally, a CIP adds new matter on which at least
`one claim relies for support.
`
`In contrast to Ralston, in this case, the PTO did not,
`at any point, make any determination with regard to
`the priority date of the various claims of the asserted
`patents. There was no interference in this case related
`to the asserted patents or the 2000 CIP Application that
`awarded PowerOasis the benefit of priority for its Original
`Application nor was there any determination of priority
`during prosecution incident to a rejection. The MobileStar
`Network prior art was never considered by the examiner.
`In fact, in this case the PTO did not make a determination
`regarding the priority date for the asserted claims with
`respect to any reference.
`
`*1305 In the absence of an interference or rejection
`which would require the PTO to make a determination
`of priority, the PTO does not make such findings as
`a matter of course in prosecution. 4 The PTO's own
`procedures indicate that examiners do not make priority
`determinations except where necessary:
`
`4
`
`Additionally, the § 102(a) prior art on which the defendant
`in Ralston relied was brought to the attention of the
`examiner during prosecution. See id. at 1212. “When
`an attacker simply goes over the same ground travelled
`[sic] by the PTO, part of the burden is to show that the
`PTO was wrong in its decision to grant the patent.” Am.
`Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350,
`1360 (Fed.Cir.1984) (emphasis in original). This court has
`explained that:
`
`When no prior art other than
`that which was considered by the
`PTO examiner is relied on by the
`attacker, he has the added burden of
`overcoming the deference that is due
`to a qualified government agency
`presumed to have properly done its
`job, which includes one or more
`examiners who are assumed to have
`some expertise in interpreting the
`references and to be familiar from
`their work with the level of skill in
`the art and whose duty it is to issue
`only valid patents.
`
`Id. at 1359. In Ralston, accordingly, the defendant had
`the added burden of overcoming the deference due to the
`PTO.
`
`Determining the effective filing date each claim in a
`CIP application is entitled to can be quite complex.
`Since CIPs generally add new matter, the claims may
`be fully supported by the parent application or they
`may rely on the new matter for support. See Michael
`J. Meurer & Craig Allen Nard, Invention, Refinement
`and Patent Claim Scope: A New Perspective on the
`Doctrine of Equivalents, 93 Geo. L.J. 1947, 2012 n.
`24 (2005) (noting “[u]nder the new matter doctrine,
`revisions to the written description that occur after an
`application is filed may jeopardize the priority date
`derived from that application”). In fact, a CIP could
`contain different claims entitled to receive different
`effective filing dates in the same patent. There would
`be no reason for the PTO to undertake what could
`be a very time consuming written description analysis
`simply to pronounce the effective filing date of each
`claim, absent some dispute over it during prosecution.
`
`Unless the filing date of the earlier nonprovisional
`application is actually needed, for example, in the case
`of an interference or to overcome a reference, there
`is no need for the Office to make a determination
`as to whether the requirement of 35 U.S.C. § 120,
`that the earlier nonprovisional application discloses
`the invention of the second application in the manner
`provided by the first paragraph of 35 U.S.C. § 112, is
`met and whether a substantial portion for all of the
`earlier nonprovisional application is repeated in the
`second application in a continuation-in-part.
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
`
`4
`
`

`

`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (2008)
`86 U.S.P.Q.2d 1385
`
`M.P.E.P., Seventh Ed. (July 1998), at § 201.08.
`When neither the PTO nor the Board has previously
`considered priority, there is simply no reason to
`presume that claims in a CIP application are entitled to
`the effective filing date of an earlier filed application.
`Since the PTO did not make a determination regarding
`priority, there is no finding for the district court to defer
`to.
`Of course, the fact that the MobileStar Network prior
`art was never before the PTO does not change the
`presumption of validity or who has the burden of proof
`with respect to the prima facie case of invalidity. See Am.
`Hoist, 725 F.2d at 1360. T–Mobile, the party asserting
`invalidity, must still show by clear and convincing
`evidence that the asserted patent is invalid. Once it has
`established a prima facie case of invalidity and its burden
`is met, “the party relying on validity is then obligated to
`come forward with evidence to the contrary.” Ralston, 772
`F.2d at 1573.
`
`T–Mobile established its prima facie case of invalidity with
`respect to the asserted claims. It is undisputed that the
`MobileStar Network was in public use more than one
`year prior to the June 15, 2000 filing date of the CIP
`Application. PowerOasis conceded that the MobileStar
`Network would infringe the claims of the ′658 and
`′400 patents if it were in operation today. “[T]hat which
`would literally infringe if later in time anticipates if
`earlier.” Schering Corp. v. Geneva Pharms., Inc., 339
`F.3d 1373, 1379 (Fed.Cir.2003) (internal citation omitted).
`Accordingly, PowerOasis has conceded that unless the
`asserted claims are accorded an earlier filing date than
`the 2000 CIP Application, the MobileStar Network is §
`102(b) prior art. Once T–Mobile established by clear and
`convincing evidence that the MobileStar Network was §
`102(b) prior art to the asserted claims of the ′658 and
`′400 patents, the burden was on PowerOasis to come
`forward with evidence to the contrary. The district court
`therefore correctly placed the burden on PowerOasis to
`come forward with evidence to prove entitlement *1306
`to claim priority to an earlier filing date.
`
`II. Written Description Requirement
`
`[5]
`[4]
`the written description
` Application of
`
`requirement is central to the resolution of this appeal.
`“It is elementary patent law that a patent application
`is entitled to the benefit of the filing date of an earlier
`
`filed application only if the disclosure of the earlier
`application provides support for the claims of the later
`application, as required by 35 U.S.C. § 112.” In re Chu,
`66 F.3d 292, 297 (Fed.Cir.1995); see also Augustine Med.,
`Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302–03
`(Fed.Cir.1999) (“Different claims of [a CIP] application
`may therefore receive different effective filing dates....
`Subject matter that arises for the first time in [a] CIP
`application does not receive the benefit of the filing date
`of the parent application.”).
`
` [10]
` [9]
` [8]
` [7]
`[6]
` To satisfy the written description
`requirement the disclosure of the prior application must
`“convey with reasonable clarity to those skilled in the art
`that, as of the filing date sought, [the inventor] was in
`possession of the invention.” Vas–Cath Inc. v. Mahurkar,
`935 F.2d 1555, 1563–64 (Fed.Cir.1991) (emphasis in
`original). While a prior application need not contain
`precisely the same words as are found in the asserted
`claims, see Eiselstein v. Frank, 52 F.3d 1035, 1038
`(Fed.Cir.1995); Purdue Pharma LP v. Faulding Inc.,
`230 F.3d 1320, 1323 (Fed.Cir.2000) (holding that the
`disclosure does not have to provide in haec verba support
`in order to satisfy the written description requirement),
`the prior application must indicate to a person skilled
`in the art that the inventor was “in possession” of the
`invention as later claimed. Ralston, 772 F.2d at 1575;
`see also Janice M. Mueller, Patent Misuse Through the
`Capture of Industry Standards, 17 Berkeley Tech. L.J.
`623, 638 (2002) (“The [written description] requirement
`operates as a timing mechanism to ensure fair play in
`the presentation of claims after the original filing date
`and to guard against manipulation of that process by
`the patent applicant.”). “Entitlement to a filing date does
`not extend to subject matter which is not disclosed, but
`would be obvious over what is expressly disclosed.” In
`re Huston, 308 F.3d 1267, 1277 (Fed.Cir.2002) (quoting
`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72
`(Fed.Cir.1997)). In Lockwood, we held:
`
`terms,
`the meaning of
`While
`phrases, or diagrams in a disclosure
`is to be explained or interpreted
`from the vantage point of one
`skilled in the art, all the limitations
`must appear in the specification.
`The question
`is not whether a
`claimed invention is an obvious
`variant of that which is disclosed
`in the specification. Rather, a prior
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
`
`5
`
`

`

`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (2008)
`86 U.S.P.Q.2d 1385
`
`application itself must describe an
`invention, and do so in sufficient
`detail that one skilled in the art can
`clearly conclude that the inventor
`invented the claimed invention as of
`the filing date sought.
`
`107 F.3d at 1572. We have explained that to satisfy the
`written description requirement, “the missing descriptive
`matter must necessarily be present in the [original]
`application's specification such that one skilled in the art
`would recognize such a disclosure.” Tronzo v. Biomet, Inc.,
`156 F.3d 1154, 1159 (Fed.Cir.1998); see also Martin v.
`Mayer, 823 F.2d 500, 505 (Fed.Cir.1987) (holding that
`the written description requirement is “not a question
`of whether one skilled in the art might be able to
`construct the patentee's device from the teachings of
`the disclosure.... Rather, it is a question whether the
`application necessarily discloses that particular device”)
`(emphasis in original). This requires that the written
`description actually or inherently disclose the claim
`element. See *1307 TurboCare Div. of Demag Delaval
`Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111,
`1118–20 (Fed.Cir.2001) (holding that to comply with the
`written description requirement the location of the spring
`must be actually or inherently disclosed; that the location
`may be obvious from the disclosure is not enough);
`Tronzo, 156 F.3d at 1159 (holding a claim invalid for
`failure to satisfy the written description requirement when
`the specification did not disclose all cup shapes literally
`or “inherently”). Compliance with the written description
`requirement is a question of fact but is amenable to
`summary judgment in cases where no reasonable fact
`finder could return a verdict for the non-moving party.
`See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052,
`1072–73 (Fed.Cir.2005).
`
`Entitlement to the filing date of the Original Application
`would allow PowerOasis
`to antedate MobileStar
`Network, thereby removing it as a reference against the
`claims. The only evidence PowerOasis came forward with
`to antedate the MobileStar Network was the Original
`Application and the declaration of its expert witness. The
`district court analyzed both the Original Application and
`the declaration of PowerOasis's expert witness, and held
`that the asserted claims of the ′658 and ′400 patents
`are only entitled to the filing date of the 2000 CIP
`Application because PowerOasis did not prove it was
`“in possession” of the claimed invention when it filed its
`Original Application.
`
`In this case, the district court's determination that
`the Original Application does not provide a written
`description of “customer interface” as set forth in the
`asserted claims is correct. The Original Application
`described a vending machine with a “display” or “user
`interface” as part of the vending machine, rather than a
`vending machine with a “customer interface” located on
`a customer's electronic device. The 2000 CIP Application
`added language describing a vending machine with a user
`interface located remotely from the vending machine,
`such as on a user's laptop, as shown by the relevant new
`specification language underlined in the passages below: 5
`
`5
`
`Other new matter not relevant to the customer
`interface was also added. See, e.g., ′169 patent col.2
`ll.46–55; id. at col.3 ll.13–18; id. at col.10 ll.54–60; id.
`at col. 14 l.55—col. 15 l.7; figs. 10–12.
`
`The microprocessor also communicates with the
`customer via a user interface to provide details on the
`progress of the transaction. The user interface is not
`particularly limited and need not even include a visual
`display on the vending machine. ′169 patent col.2 l.66—
`col.3 l.3.
`
`Once attached and initiated, the customer can
`monitor the state of the vending machine and the
`transaction via the user interface. The user interface
`may be a visual display or some other type of progress
`indicator such as an auditory signal. For example, the
`vending machine could instruct or inform the user via
`an audio speaker. Alternatively, the user interface can
`be present inside or uploaded to the user's laptop or
`other device thereby obviating the need for an interface
`within the vending machine unit. Similarly, the use of
`a card access system which prevents usage by ejecting
`the user's card would also obviate the need for a visual
`or aural interface. Id. at col.6 ll.7–19.
`
`Another object of this invention is portability.
`Using an
`internal power source and wireless
`telecommunications channels, this invention is not
`limited to a fixed location. In this configuration, the
`invention could be used at fairs, outdoor concerts
`and similar sites where permanent installations are
`not cost effective. In these cases, it might be more
`cost *1308 effective to have one control unit operating
`multiple vending machines. These multiple vending
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`6
`
`

`

`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (2008)
`86 U.S.P.Q.2d 1385
`
`machines may be arranged in the form of a kiosk to
`allow multiple customers access to the vending machine
`at the same time. Similarly, almost any combination
`of functional components of the vending machine could
`be moved to a location remote from the machine. This
`could be accomplished, for example, by networking a
`cluster of machines to a server either on site or at a
`remote location. Id. at col.4 ll.17–31.
`
`The 2000 CIP Application also substituted the term
`“customer interface” for the claim term “display” in
`claim 1 and added several independent claims disclosing
`a “vending machine” with component parts “located
`remote from said vending machine.”
`The district court stated that it “cannot find a single
`reference in the written description which suggests that
`PowerOasis understood its invention to include the new
`matter that it claimed for the first time in the CIP
`Application.” PowerOasis, 2007 WL 962937, at *9. We
`agree. All of the references from the Original Application
`that PowerOasis identifies as allegedly providing written
`description support for the later-issued claims are to a
`“user interface” that is part of a unitary vending machine.
`
`All of the Original Application's embodiments that
`include the user interface describe a physical display that
`is a part of the vending machine. As shown in Figure 2,
`“[t]he customer sees an operating panel 101 with a user
`interface 110 comprising two lights referred to as READY
`and AVAILABLE.” ′643 patent col.6 ll.27–29.
`
`transaction is processing.” Id. at col.6 ll.59–63. The only
`depiction of the user interface 110 is depicted as part of the
`vending machine. “When the customer first approaches the
`vending machine 100, the READY light is on.” Id. at col.6
`ll.35–36 (emphasis added).
`
`*1309 PowerOasis argues that the user interface “could
`take any number of possible forms.” Appellant Br. 24.
`To be sure, the specification describes other embodiments
`for the user interface. For example, “these lights may be
`replaced or augmented by a video display unit (VDU)
`which provides more detailed instruction to the customer
`on vending machine operation and detailed information
`on the progress of the transaction including accumulated
`charges.” ′643 patent col.6 ll.63–67. The VDU “could
`be combined with a keyboard or other push-buttons that
`would allow the customer to set the language for the
`display, the connectors to be activated and, optionally,
`when to terminate the transaction.” Id. at col.7 ll.1–5. In
`other embodiments, “the user interface includes a printer
`or similar device to provide the customer with a receipt
`for the transaction.” Id. at col.7 ll.8–10. While the Original
`Application discloses multiple embodiments of the “user
`interface,” all such embodiments make the user interface
`part of the unitary vending machine apparatus. There is
`simply no disclosure in the Original Application of a user
`interface that is either located on a customer's laptop or
`even separate from the vending machine itself.
`
`Indeed, although Figure 5 of the Original Application
`depicts a laptop hooked up to the vending machine, the
`figure shows that the user interface is clearly located on the
`vending machine and not the laptop.
`
`“[I]n the preferred embodiment of Fig. 2, the user interface
`[110] consists of two lights which turn on and off in
`particular patterns to inform the customer as to how the
`
`Id. at fig.5. In Figure 5 of the Original Application, a
`laptop computer is connected to the operating panel of
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
`
`7
`
`

`

`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (2008)
`86 U.S.P.Q.2d 1385
`
`the vending machine (501), which is mounted on the
`wall. The “user interface” is represented by the video
`display unit (510), which is located on the operating
`panel of the vending machine (502) and not on the
`laptop. Therefore, we agree with the district court that
`the Original Application did not contain support for a
`“customer interface” located on the customer's laptop,
`which was the claim construction urged by PowerOasis
`and adopted by the district court.
`
`This broad construction is supported only by the material
`added in the 2000 CIP Application. In fact, PowerOasis
`cited only to language first introduced in the 2000 CIP
`Application to support this broad construction:
`
`(1) “The user interface is not particularly limited and
`need not even include a visual display on the vending
`machine.” *1310 ′658 patent col.3 ll.3–5 and ′400
`patent col.3 ll.7–9;
`
`(2) “Alternatively, the user interface can be present
`inside or uploaded to the user's laptop thereby obviating
`the need for an interface within the vending machine
`unit.” ′658 patent col.6 ll.15–18 and ′400 patent col.6
`ll.20–23; and
`
`functional
`combination of
`(3) “[A]lmost any
`components of the vending machine could be moved to
`a location remote from the machine.” ′658 patent col.4
`l.30 and ′400 patent col.4 l.33.
`
`the claimed invention, which uses a customer's electronic
`device (e.g., a laptop) to achieve the customer interface.
`He does not show anywhere in the Original Application
`where a customer interface is located on a customer's
`laptop either expressly or inherently. His declaration
`points to figures and disc