*1
ever,
whether
need decide
the
Unit-
we
“use” to
describes the
includes mineral
its land—to construct
federal interest
put
would
retained
ed States
that
not convince us
Dam —does
land
For the
rights
question.
the Jemez
to the
then-contemplated
above,
stated
we answer
reasons
ongoing right
appropri-
to
conveyed an
use
have no
negative.
in the
We
case
question
lands after
minerals
ate
from
what other
controversy before
as to
us
miner-
expressly conveyed those
Congress
in the United States for the
rights may lie
If
had
Congress
to
rights
al
the Pueblo.
event,
subject to PLO 873.
lands
incon-
statutory
to
intended
effect
de-
appropriation of minerals
Corps’
min-
conveying all
sistency- by expressly
—
compensation to the Pueblo.
just
mands
Pueblo and then exclud-
rights
eral
Const., amend.
See
V.
U.S.
the PLO 873 land—it
rights
mineral
ing
far more than
have included
would
Ill
the land
“sub-
was
notation
some
2,240 acres of
Act
The 1978
declared
873,
do
PLO
the terms
ject to”
land in
to be held
trust
question
rights
the United
convey mineral
Pueblo, including all mineral
benefit of the
circumstances, we
these
States. Under
Act’s
of certain
rights. That
reservation
congressional
find
intent
cannot
clear
rights
United States under PLO 873
to the
land
in the
keep
rights
mineral
PLO
did
retain
United States the
States,
itself. See
United
Ratzlaf
land in
right
minerals from the
to use
114 S.Ct.
U.S.
with the
Dam recon-
connection
Jemez
(courts
(1994)
reading
avoid
L.Ed.2d 615
project. The decision
struction
inconsistently);
portions
statutes
Grif-
contrary
Court of Federal Claims to
Contractors, Inc., 458 U.S.
v. Oceanic
fin
reversed,
and the case
re-
therefore
L.Ed.2d
S.Ct.
proceedings
further
not incon-
manded for
Fitness,
(1982) (same);
Inc. v.
Vectra
opinion.
sistent with this
1384-85
Corp.,
TNWK
(Fed.Cir.1998) (same).
COSTS
that any lingering
we note
Finally,
costs.
No
statutory
construction
doubts as
AND REMANDED
REVERSED
must be resolved to
provisions
these
See, e.g.,
Pueblo.
DeCoteau
Court,
County
v. District
(1975)
1082,
(ambiguous uncertain Native intended to benefit sions laws REIFFIN, Gardner Martin favor). in their Americans construed Plaintiff-Appellant, Act left lands Because 873, it fair to subject to PLO question federal interest those assume some CORPORATION, MICROSOFT was the United States. lands retained Defendant-Appellee. rights The Pueblo that those suggests No. 98-1502. of access and in the nature of easements Appeals, States Court of United with service of maintenance in connection Federal Circuit. dam This view finds project. Act, in the 1986 the 1978 amendments June which clarified that the United States Denied 2000.* Rehearing June pur- of access for the tained “easement maintaining poses operating 2(c) 99-575, § No. Pub.L.
[Jemez Dam].” appeal, of this how- purposes
* peal. Judge ap- would rehear the Newman *2 Reiffin, Danville, California,
Martin G. argued se. pro On the brief were Edward O’Connor, F. Yocca Stradfing Carlson & Rauth, Beach, Newport California. Of Counsel on the brief were Thomas A. Fair- hall, Cavan, Christopher M. and James C. Gumina, McDonnell Boehnen Hulbert & Berghoff, Chicago, Illinois.
John D. Vandenberg, Klarquist Spark- Whinston, LLP, man Campbell Leigh & Portland, Oregon, argued defendant- appellee. him With on the brief were Geringer James E. Joseph T. Jaku- bek. Of counsel on the brief were Ter- McMahon, rence P. Anthony, William L. Jr., Keefe, Eric L. Wesenberg, and Heidi Herrington Sutcliffe, LLP, Orrick & Park, Menlo California. Anzalone,
Steven M. Finnegan, Henderson, Farabow, Dunner, Garrett & L.L.P., DC, Washington, for amici curi- International, Inc., ae Garmin and Nation- al Association of Manufacturers. With him on Burley the brief were Don O. Robert L. Burns. MICHEL, NEWMAN,
Before SCHALL, Judges. CURIAM, PER
OPINION JUDGE PAULINE NEWMAN IN CONCURS THE JUDGMENT WITH OPINION.
PER CURIAM.
Martin Reiffin appeals Gardner the deci- sion of the District United States Court for California,1 grant- the Northern District of ing summary judgment that States United 5,694,603 5,694,604 Patents Nos. Corp., (N.D.Cal.1998). Reiffin Microsoft CPU; compiler “written cuted meet for failure to invalid lexical, syntactic, and performs requirement executed description” conclude that code analyses program We source paragraph. first semantic computer’s court erred in a source buffer stored *3 is The object the statute. outputting compiled code memory, reversed, remanded the case is and object an buffer. Whenever the into proceedings. further key keyboard, a on the puter user strikes sequence” causes the “interrupt a so-called
DISCUSSION pause and directs compiler’s execution patent appli- Reiffin filed a 1982 Mr. After the to execute editor. the CPU System with “Computer entitled re- operation cation is performs editor whatever The Compilation.” application (for Real-Time example, keystroke en- quired by a a in which combination system discloses character into the tering alphanumeric an compiles a com- hardware of software and buffer), “return” instruction is a source concurrently pro- with the puter program by the This return instruc- executed CPU. editor, achieving what into an gram’s entry interrupt sequence and tion ends real- “contemporaneous as is described to resume normal causes the CPU source entry and of a compilation time continuously compiler state in which the is comput- A is a program source program.” describes specification executed. high human written in a level program in- embodiment in which the an alternative application which the language readable terrupt sequence by is activated a timer or code; product the end source refers as keyboard. of clock instead of compilation program the source Mr. a continuation of the Reiffin filed composition binary language a machine filed another in 1985. He application object refers as application which the application with additional text continuing code, pro- and required 1990, describing and claims modified by computer. We also gram’s execution a computer ap- system a “multithreaded as following dictionary defi- notice take The 1990 issued plication.” nitions: patent on December 1997. as program B to a generate COMPILE in 1994 as a continu- patent, The ’604 filed (or language machine some- written in also issued on application, ation of the pro- a symbolic language) times from The claims of the ’603 December 1997. language in a gram high level were amended several patents as V. such BASIC FORTRAN during lengthy prosecution, times tool, firmware EDITOR B a software or the Board of appeals which included a program a program Appeals and Interferences. Patent modifying, editing, [which] aids in suit have same pro- a two writing, changing, debugging claims; as to their developed. specification, and differ gram being memory product a patent the ’603 Burton, Dictionary E. A Micro- Philip software, and multithreaded storing 31, 51 computing a method of multith- patent the ’604 specifi- system as described sys- and a multithreaded operation readed oper- “interrupt an mode of cation utilizes repre- 12 of the ’603 tem. Claim computer’s Central ation” allow sentative: (“CPU”) to Processing execute Unit computer-readable 12. A disk means seamlessly an compiler and editor concurrently plurality with a encoded computer In normal viewed user. of instructions eonsti- continuously exe- executable threads compiler is operation the located within the threads of instructions Multithreading is in the '603 defined application program.” patent, '603 time- same ... '604 as "the concurrent col. 1:25-38. preemptive plurality of a sliced execution computer appli- tuting ly multithreaded disclosed.” Reiffin, 48 at 1278. program control the execution cation Examining the contents of having desktop microcomputer of a an application, the district court found interrupt a clock operation, timer described four ele- periodically activating op- interrupt said ments essential to C invention eration, memory storing means for editor, compiler, an interrupt, and a data, body of said encoded executable return. Reviewing seventy-seven comprising instructions claims of the issued ’603 ’604 patents,
a first thread instructions executa- the court concluded none microcomputer including ble elements, includes all four held all to process body means said stored the claims invalid for failure *4 comply data, with the Written description requirement. at least second thread of instruc- We conclude that district court erred preemptively taking for of tions control looking original the text of the microcomputer response said application to determine whether the ’603 periodic op- activations of said interrupt and ’604 patents, filed in 1990 and including eration said clock timer and comply with the written description re- process body means said stored of ¶ § quirement. purposes of 112 data for brief time interval each after relevant specifications are those of the ’603 preemption, said patents; specifications and said of first thread instructions relevant when benefit of an earli- repeatedly regaining control of filing sought date is under 35 U.S.C. puter after each said time interval so § 120. that said first thread of instructions re- processing body sumes said of at data A it point previously where had been The district court did not decide preempted, whether the of the ’603 and ’604 whereby of said threads instructions adequately supported by the concurrently execute in a multithreaded descriptions written of the set inventions operation. mode of forth in specifications of those patents. Mr. Reiffin that charged several of Micro- However, that required is all that is applications soft’s infringe software compliance with the written description re patents, ’604 including word ¶ 1, quirement §of which states processing that check programs spelling basic the content of the entered, and grammar oper- as text is specification: ating systems such as which Windows 98 § U.S.C. 112 1. The of switching control the program threads shall description contain a written during operation are active normal invention, pro- and of the manner and a personal computer. it, full, making using cess of in such On summary judg- cross-motions for clear, concise, and exact terms as to of patent validity, on issue person enable skilled the art to granted Microsoft’s motion pertains ... to make and use all and held of the claims invalid for failure the same.... with comply the written description re- provision purpose this is to ensure quirement § 35 U.S.C. 1. The exclude, scope that the that, right district court determined as a matter claims, law, set in the forth overreach description requirement scope of the inventor’s contribution to encompasses an test” “omitted element patent the field of art “prevents as described owner from as- Gosteli, serting specification. claims that omit See In re 872 F.2d elements (Fed. 1008, 1012, USPQ2d 1614, were original- essential to the invention as Cir.1989) (“[T]he simply recognized that “the sufficien- clearly ence ordinary cy para- in the art to first disclosure] skill persons [of allow judged filing invented what date.” graph inventor] must be recognize [the Vas-Cath, Glass, claimed.”); Inc. see F.2d Application Mahurkar, (CCPA 1974). USPQ (“Ade- (Fed.Cir.1991) B guards the invention description of quate overreaching in- against the inventor’s in an Analysis of the disclosure that he recount his invention sisting when applications appropriate cestor future claims can be detail that his sought under of an earlier within his encompassed to be determined 120: U.S.C. Rengo (quoting creation.” Co. pat- An application 551, Molins Mach. for an invention disclosed ent Cir.1981))). (3d. USPQ provided paragraph manner the first ’603 and ’604 Compliance of the in an applica- section 112 of title description re with the written filed in the United previously States specifications quirement requires effect, as to shall have same *5 the inventions of these describe invention, as filed on the though such Thus, for in exam patents. claimed these application.... of the prior date considered as ple, application incorporates § Although require- convey ordinary to one of skill whole ¶ 1, ments of these art, inherently, explicitly in either statutory allowing mechanism and the subject mat Reiffin invented the that Mr. sepa- an date filing earlier in the ’603 See Vas- patent. ter claimed consequences. with distinct provisions rate Cath, USPQ2d at at In accordance with 1116; USA v. Mon Continental Can Co. sup- in a later-filed not application matter 1264, 1268, USPQ2d F.2d santo ported by an ancestor in terms (Fed.Cir.1991) (descriptive mat invalidated; they 112 1 not §of sim- in a inherently present specifi bemay ter do not receive the benefit of ply if one in the art would neces cation skilled See, filing e.g., Hyatt date. application’s disclosure). recognize sarily Boone, USPQ2d F.3d dispute, not in motion Microsoft did (Fed.Cir.1998). Thus the dis- summary this judgment appeal, or on in holding court the ’603 trict erred of the issued ’603 descriptive texts ’604 claims invalid for failure to and descrip meet the written description require- the written ply with claims of those requirement as ment. court did not dis patents, that he does not need Mr. Reiffin states Instead, this issue. the district court cuss application’s the 1982 the benefit of specification of Reiffiris looked disagrees. We do not date. Microsoft- for the written de grandparent application this determination on the unde- undertake to the claims of the ’603 scription relevant before the dis- veloped record us. Since relying patents, apparently on in looking the 1982 trict erred Inc. v. Berk Gentry Gallery, statement inventor’s] Corp. “[the line granted on the 1990 and permissible to limit the disclosure serves we do reach Mr. Reif- specifications, later-drafted claims.” 134 breadth his challenge to “omitted element fin’s test.” (Fed.Cir.1998). This reliance mis was however, Gentry Gallery for in placed, CONCLUSION prior applications were no there judgment summary The reversed. “original disclosure” was that of issued proceedings. remand for further patent. “original disclosure” refer- We Reiffin, Mr. Fed. P. It R.App. is standard for applicants provide Costs 39(a). scope content, claims that vary including some elements of a novel device AND REMANDED
REVERSED method, omitting others. See Irv- (6th ed.) ing Kayton, 3.1, 1 Patent Practice NEWMAN, Judge, PAULINE (1995): 3.3 judgment. concurring in the [Pjatent practitioners typically draft a approximating series spec- ground on which the trum protection.... The first ruling is based its treated way in may which a claim be made per opinion, court’s curiam leaving the by adding narrower is a limitation to it in procedural remand and substantive lim- in the form of an additional element. bo. sole basis of the district court’s adoption was its of the Claiming an invention in this manner does test,” “omitted element in turn was compliance not raise issue of with § 112 derived from Microsoft’s incorrect state- Indeed, the “omitted element test” of the law of description.3 practice, threatens this venerable which is concerning The issues the “omitted ele- Lipscomb, summarized Ernest B. fully presented ment test” were on appeal, III, 3 Lipscomb’s Walker on Patents 290- summary and our reversal of the judgment (1985): ground on a different does not answer the may [A] cover an em- invention question that is central to this case. Our machine, bracing process, the entire on silence whether this is correct rule manufacture, composition of matter mischievous, singularly law will be which is described in specification,
relates to Mr. Reiffin’s
his
entitlement to
may
or it
cover such
or
sub-processes
120,
date under 35 U.S.C.
such sub-combinations of the invention
parties expect
an issue that
to be
new,
as
patentable.
useful and
raised on the case’s return to the district
See,
Coe,
e.g., Special Equipment Co. v.
court.
370,
741,
324 U.S.
65 S.Ct.
were asserted
publication
an intervening
cause of
having the
console in
reclining
control
sofa
anticipated.
rendered them
This court held that
a different location.
other
which Micro-
Nor
cases on
supported by
were not
the broad claims
district court relied
soft
relevant.
description, and were invalid.
the written
having
They
concern reissued
Assoc.
explained
As
Johnson Worldwide
claims,
applying
the courts
broadened
Corp., 175 F.3d
v. Zebco
predecessor
statutes
(Fed.Cir.1999),
“this
broadening
prohibit
reissue claims
Gentry Gallery
[in
]
court’s determination
years,
two
whether or not the broad-
after
did not
disclosure
specifica-
er
supported
claims are
disputed
meaning
a broad
example,
tion.
U.S.
Industrial
on clear
premised
terms was
statements
Chems.,
&
Inc. v. Carbide
Carbon Chem.
description that described the
the written
Co.,
668, 677-78,
315 U.S.
62 S.Ct.
‘the only
a claim element
location of
(1942)
holds that the omission
L.Ed.
were
location’ and that variations
possible
steps
from the reissue claims of one of the
inven-
purpose
the stated
‘outside
prescribed
or elements
”
Gentry Gallery decision did
tion.’
claims,
broadening the claims to cov-
“thus
requirement
of claim
not create
new
combination,”
voids
a new and different
content,
long-standing
law
change
the reissue.
relies on the
Microsoft also
drafting.
practice
Gentry
of claim
Timken,
authority of
Olin
U.S.
many
one
Gallery
simply
decisions
(1894),
146-47,
L.Ed. 100
S.Ct.
that,
holding
quoted
Mfg.
Huber
Nelson
court,
application which are
“claims in an
291-92,
(1893),
37 L.Ed.
S.Ct.
*7
applicant’s
than
disclosure are
broader
Co., 105
and Mathews v. Boston Machine
Sus,
Application
not allowable.”
54, 58,
tion’s date supported by
neric claims were