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Reiffin v. Microsoft Corp., No. 98-1502, 214 F.3d 1342, 54 U.S.P.Q.2d (BNA) 1915 (Fed. Cir. June 5, 2000).

35 U.S.C. § 112 - WRITTEN DESCRIPTION - OMITTED ELEMENT TEST - CONTINUING APPLICATION - PATENT SPECIFICATION - 35 U.S.C. § 120 - FILING DATE - ANCESTOR/PARENT APPLICATION

To determine the validity of patent claims that issued from a continuing application, the written description requirement of 35 U.S.C. § 112, para. 1 requires a court to examine disclosures in the specification of the continuing application's patent, not that of the ancestor application. An examination of the specification of ancestor applications only becomes necessary if a patentee seeks to claim the benefit of an earlier filing date under 35 U.S.C. § 120.

[SUMMARY] | [ISSUE & DISPOSITION] | [AUTHORITIES CITED] | [COMMENTARY]

SUMMARY

Martin Gardner Reiffin ("Reiffin") owns U.S. Patent Nos. 5,694,603 ("the '603 patent") and 5,694,604 ("the '604 patent"), generally directed toward systems that combine computer software and hardware to compile a computer program while simultaneously entering that program into an editor. Source programs are computer programs that have been written in a "high level human readable language." The compilation program ultimately converts the source program into a binary machine language that the computer uses to execute the program. The specifications for the '603 and '604 patents describe systems that use an "interrupt mode of operation" to allow the computer's Central Processing Unit ("CPU") to run the compiler and editor programs simultaneously.

Reiffin filed his original application in 1982 and subsequently filed several additional applications continuing from the ancestor application. In particular, Reiffin filed a 1990 continuing application that modified his original claims and added text to the original 1982 application. The application as modified in 1990 issued as the '603 patent in 1997. In 1994, Reiffin filed an additional continuing application based upon the 1990 continuing application. The claims of the 1994 continuing application issued as the '604 patent in 1997. While these two patents shared the same specification, they claimed different inventions. The '603 patent was drawn to "memory product storing multithreaded software," while the '604 patent claimed a "method of multithreaded operation and a multithreaded system."

Reiffin filed suit in the U.S. District Court for the Northern Districe of California, claiming that Microsoft had infringed the '603 and '604 patents. Arguing pro se, Reiffin asserted that several of Microsoft's software applications, including those word processing programs that were capable of contemporaneously checking spelling and grammar, infringed his patents.

The trial court granted Microsoft's motion for summary judgment and ruled that all of the claims of the '603 and '604 patents were invalid for failure to satisfy the written description requirement of 35 U.S.C. § 112. The district court ruled that § 112 includes an "omitted element test" that prohibits a patentee from advancing claims if those claims omit elements that are essential to claim the invention as originally disclosed. Applying this test to the claims at issue, the district court held that none of the claims in the '603 and '604 patents included all of the elements essential to claim the invention, as originally disclosed in Reiffin's 1982 application.

ISSUE & DISPOSITION

Issue(s)

Whether the written description requirement of 35 U.S.C. § 112, para. 1 requires a court to examine the specification of an ancestor application in determining the validity of the claims of a patent that issued from a continuing application, if the patentee does not seek to claim the benefit of an earlier filing date under 35 U.S.C. § 120?

Disposition

AUTHORITIES CITED

Cases Cited by the Court

• Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 U.S.P.Q.2d (BNA) 1498 (Fed. Cir. 1998).
• Hyatt v. Boone, 146 F.3d 1348, 47 U.S.P.Q.2d (BNA) 1128 (Fed. Cir. 1998).
• Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 20 U.S.P.Q.2d (BNA) 1746 (Fed. Cir. 1991).
• Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 U.S.P.Q.2d (BNA) 1111 (Fed. Cir. 1991).
• In re Gosteli, 872 F.2d 1008, 10 U.S.P.Q.2d (BNA) 1614 (Fed. Cir. 1989).
• Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 211 U.S.P.Q. (BNA) 303 (3d. Cir. 1981).
• In re Glass, 492 F.2d 1228, 181 U.S.P.Q. (BNA) 31 (CCPA 1974).
• Reiffin v. Microsoft Corp., 48 U.S.P.Q.2d (BNA) 1274 (N.D. Cal. 1998).

Other Sources Cited by the Court

• 35 U.S.C. § 112, para. 1.
• 35 U.S.C. § 120.
• Fed. R. App. P. 39(A).
• U.S. Patent No. 5,694,603.
• U.S. Patent No. 5,694,604.
• PHILIP E. BURTON, A DICTIONARY OF MICROCOMPUTING 31, 51 (1976)

  Cases Cited in Concurring Opinion

• Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961).
• Special Equip. Co. v. Coe, 324 U.S. 370 (1945).
• U.S. Indus. Chems., Inc. v. Carbide & Carbon Chem. Co., 315 U.S. 668 (1942).
• Huber v. Nelson Mfg. Co., 148 U.S. 270 (1893).
• Olin v. Timken, 155 U.S. 141 (1893).
• Mathews v. Mach. Co., 105 U.S. 54 (1882).
• Johnson Worldwide Assoc. v. Zebco Corp., 175 F.3d 985, 50 U.S.P.Q.2d (BNA) 1607 (Fed. Cir. 1999).
• Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 U.S.P.Q.2d (BNA)1498 (Fed. Cir. 1998).
• Tronzo v. BioMet, Inc., 156 F.3d 1154, 47 U.S.P.Q.2d (BNA)1829 (Fed. Cir. 1998).
• In re Sus, 306 F.2d 494, 134 U.S.P.Q. (BNA) 301 (CCPA 1962).

  Other Sources Cited in Concurring Opinion

• IRVING KAYTON, 1 PATENT PRACTICE (6th ed.) 3.1, 3.3 (1995).

• ERNEST B. LIPSCOMB, III, 3 LIPSCOMB'S WALKER ON PATENTS 290-91 (1985).

RELATED SOURCES

COMMENTARY

State of the Law Before Reiffin

Under 35 U.S.C. §112, para.1, a patent specification must contain a written description of the invention sufficient to enable a person of ordinary skill in the relevant art to make and use the invention. The is requirement is satisfied by describing the invention, including all its claimed limitations, in the specification of the patent. This provision insures that the scope of the right to exclude, as established by the claims, does not overreach the scope of the inventor's contribution. See In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). The written description must clearly allow one of ordinary skill in the art to recognize what the inventor has claimed. Additionally, a court would assume that the written description included those elements that a person of ordinary skill in the art would recognize as being inherent to the invention.

Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) stood for the proposition that although a claim need not be limited to a preferred embodiment, the scope of the patentee's right to exclude may occasionally be limited by a narrow disclosure. For instance, claims directed to an invention distinct from that disclosed in that patent's specification do not satisfy the written description requirement.

Relying primarily on language in Gentry and Ethicon Endo-Surgery, Inc. v. United States Surgical Corp, 93 F.3d 1572 (Fed. Cir. 1996), the district court adopted a broad "omitted element test" as part of the written description requirement of 35 U.S.C. § 112. This test prevents a patentee from asserting claims that omit elements deemed essential to the invention as originally disclosed. Under the district court's formulation, application of this test to the claims of a patent that issued from a continuing application will invalidate claims that omit any of the elements essential to the invention as originally disclosed in the specification of ancestor applications.

Effect of Reiffin on Current Law

The Federal Circuit reversed the district court's summary judgment in favor of Microsoft, concluding that the district court erred when it examined the disclosures in the specification of the ancestor application to determine the validity of the claims of patents that issued from continuing applications, particularly when the patentee had not claimed the filing date of the ancestor application pursuant to 35 U.S.C. § 120. The Court held that in such a case, the written description requirement of 35 U.S.C. § 112, para.1 is satisfied if the specification of the patent that issued from the continuing application conveys to one of ordinary skill in the art, either explicitly or inherently, that the inventor possessed the subject matter claimed solely in that patent. Examination of the disclosures in the specifications of ancestor applications only becomes necessary when the patentee seeks the benefit of the earlier filing date under 35 U.S.C. § 120.

Although the Court did not address the propriety of the "omitted element test" advanced by the district court, it held that even when the claims of a later-filed continuing application are not supported by the disclosures in the specification of an ancestor application, those claims remain valid so long as they are supported by the disclosures in the specification of the continuing application. However, the continuing application would not receive the benefit of an earlier filing date under 35 U.S.C. § 120.

In a strongly worded concurrence, Judge Newman expressed concern over the Court's failure to address the validity of the purported omitted element "test." Judge Newman observed that the district court derived this test, which frustrates well established principles for drafting patent claims, from an incorrect statement of the law. Judge Newman found no reason in either law or public policy to adopt this flawed legal "test."

Unanswered Questions

Does the "omitted element test," as articulated by the district court, have any life after this decision?

Prepared by:

• Jennifer Karnakis, '01
• Richard Mills-Robertson, '01
• Manuel Rodriguez, '01
• Mary DeLuca, '02
• Troy Clough, '02
• Brian Fannin, '02