*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, 43 L.Ed.2d 300 95 S.Ct. statutory provi

(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. 89 L.Ed. 1006 (1945) accepted rejection (reversing district Microsoft’s of a sub- that the proposition patentee must include combination claim previous directed to the element). every in every ly claim “each and element” claimed invention less one that was “part described as of his inven- While the must of de course tion,” invention, not whether or the element is scribe claimed is nec- it well es essary patentability for the claim. tablished that the claims need include so, held, component Failure to do every that is described in the noncompliance specification. Mfg. invalidates See Aro v.Co. Convert Co., description 336, with the written requirement Top Replacement ible 365 U.S. ¶ 345, 599, (1961) § 112 1. That is not a correct state- 81 S.Ct. 5 L.Ed.2d 592 (There 112 the law. 2 instructs “no legally recognizable pro Section is applicant “distinctly ... a elaim[] tected ‘essential’ element in combina subject applicant patent.”). matter which the in Gentry tion The decision gards as his invention.” not Gallery, This does Inc. v. Berkline Corp., automatically every (Fed.Cir.1998), require USPQ2d inclusion cit every court, claim of element that part authority by of the ed as the district operation. device not hold otherwise. every dispositive originally stated: a Microsoft "This is mo- element described invalidity being tion as based inventor a of his invention (sometimes elements’) upon patents’ failure a to contain 'written referred to as ‘essential description’ ultimately appear of the claimed as matter in the claims issued in See, required by patent. e.g., Gentry Gallery." 35 U.S.C. 112 1 .... Each parent applica- wheth- written Gallery the issue was Gentry tion. id. at See which description, described er the (it USPQ2d [par- at 1833 “clear that the on a specific location of control console ent conical specification] discloses sofa, adequately broad reclining supported broader.”). cups nothing shaped not limited this loca- claims that were invalidated, generic claims were then console; these broad claims element,” be- because of “omitted but patentee against

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, 26 L.Ed. 1022 These C.C.P.A. rulings have no relevance whatso- reissue 1962) (CCPA (citations USPQ case, ever to not concern omitted). broadening reissue. Biomet, also cites Tronzo v. Microsoft supported by the claim is When (Fed. Inc., 1154, USPQ2d disclosure, patent’s adequately distin- art, Cir.1998), guished prior from the and otherwise the “omitted ele supporting Tronzo, pat- the statutory meets first application test.” entability, nor policy requires neither law narrowly to a specifically was directed all the the claim contain elements a continua conical-shaped hip prosthesis; described tion-in-part described ad application then new machine or method. district shapes prosthesis, ditional for the court’s and incorrect decision controversial generic presented the first time confronted, ignored. should be shapes. additional This covered the generic explained applica parent were not entitled ge for the

tion’s date supported by

neric claims were