Harari v. Lee
656 F.3d 1331
| Fed. Cir. | 2011Background
- Harari appeals Board judgments in interferences over Harari's ’398 application and Micron-assigned patents (Lee and Mihnea).
- Board held lack of written description support for Harari's claims based on failure to incorporate the ’579 application by reference and on claim construction.
- Hollmer (Fed. Cir. 2010) held the incorporation language could identify the ’579 application; relevance to extent of incorporation remained unresolved.
- This court vacates/remands Mihnea for unresolved factual issues but affirms Lee under proper claim construction.
- Harari’s photocopied ’398 application referenced two co-pending applications (including ’579) and asserted entire disclosures were incorporated by reference.
- Key disputes: (i) extent of incorporation by reference, (ii) whether certain features (reprogramming, indirect read, margining) are within incorporated material, (iii) whether single bit line activates multiple cells for claim 63, and (iv) whether offset erase verify bias claims have written description.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the ’579 application was incorporated by reference and to what extent | Harari: entire ’579 disclosure incorporated; any portions claimed relevant fall within that incorporation. | Micron: incorporation limited or unclear; portions may be excluded; the Board correctly treated material as new matter if not properly identified. | Incorporation in entirety; remand to determine precise extent for Mihnea. |
| Whether Harari's claim 63 requires a single bit line or could involve multiple bit lines | Harari: claim uses singular terms; broad construction allowed; Lee teaches multi-line access but claim language supports single line activating many cells. | Micron: plain language limits to one bit line cannot activate multiple cells. | Claim 63 is to be construed to require a single bit line activating multiple cells; Board erred in broader construction. |
| Whether offset erase verify bias claims have written description support under incorporation | Harari: ’579 description of margining/biasing supports offset erase verify bias. | Mihnea argues adjustments relate to master Reference cell biasing, not erase verify bias for data-state transition. | The question is remanded; the board must decide with full factual record. |
| Whether the ’579 material supports the offset erase verify bias and indirect read embodiments for Mihnea | Harari: indirect read with master/local reference biasing provides verifying path for erase/verify. | Micron: Board correctly limited to direct read for verify and did not consider indirect read to support erase verify bias. | Vacate/Remand on Mihnea due to unresolved factual issues about incorporation extent and disclosure. |
| Whether Harari's Lee claim 63 lacks written description under proper construction | Harari: under Hollmer and prior disclosures, content supports. | Micron: construction requires analyzing the proper scope; the Board's factual finding about single bit line is supported. | Affirmed on Lee with proper claim construction; Harari's Lee claims are supported. |
Key Cases Cited
- Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010) (establishes incorporation-by-reference framework for ’579 application)
- Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338 (Fed. Cir. 2008) (a means-plus-type interpretation of ‘a’ in open-ended claims; context matters)
- Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996) (analyze claims and specification together to determine singular vs. plural term meaning)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (review is de novo for claim construction)
- Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007) (reasonable person standard for identifying incorporated material)