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Reiffen v. Microsoft: The Rise and Fall of the So-Called Omitted Elements Test

IP Litigator
September/October 2000

Berkowitz, Jeffrey A., Karl, Darrel C., Thayer, Linda J.

Article

Authored by Jeffrey A. Berkowitz, Darrel C. Karl, and Linda J. Thayer

On June 5, 2000, the Federal Circuit reversed the lower court's summary judgment decision in Reiffin v. Microsoft Corp., 48 USPQ2d 1274, 1277 (N.D. Cal. 1998) ["Reiffin I"] and remanded the matter to the Northern District of California court for further determination as to whether the claims of the two patents at issue (U.S. Pat. Nos. 5,694,603 and 5,694,604) are invalid for failure to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. Reiffin v. Microsoft Corp., No. 98-1502, 2000 U.S. LEXIS 12191, at *7 (Fed. Cir., June 5, 2000)(per curiam)["Reiffin II"]. In its per curiam opinion, the Court concluded that the lower court had erred by deciding whether the patents contained an adequate written description based on the original application filed in 1982, even though Reiffen had not claimed the benefit of the earlier application under 35 U.S.C. § 120. The Court stated that because the earlier date was not claimed, in this case, only the specifications of the later applications were relevant for purposes of § 112, ¶ 1.

In the coming months, the lower court will now revisit the issue of validity with a restricted focus on the later-file specifications of the two patents, both of which have the same specification and presumably share some content with the parent 1982 specification. The '603 patent claims a memory product storing multithreaded software, and the '604 patent claims a method of multithreaded operation and a multithreaded system. In 1985, Reiffin filed a continuation of the 1982 application and, in 1990, filed a continuation-in-part application of the 1985 application that contained additional text and modified claims and described the system as a "multithreaded computer application." Both the '603 and '604 patents issued on December 2, 1997—the '603 patent from the 1990 continuation application and the '604 patent from a continuation of the 1990 application that was filed in 1994. The claims of the '603 and '604 patents were amended several times during the lengthy prosecution. The validity determination on remand will likely hinge on whether the additional material in the 1990 application that was not present in the 1982 application provides sufficient detail to meet the requirements of the written description requirement of §112, ¶ 1.

This determination will bring the lower court back to the same question-what is the appropriate test for determining the sufficiency of the written description under § 112, ¶ 1? Only this time the focus should be on the 1990 application as opposed to the 1982 application.

 

Additionally, the lower court will turn its attention to the validity of the claims of the '603 and '604 patents in view of prior art to the 1990 application.

In Reiffin I, the lower court clearly applied what it called the "omitted element test," which was purportedly "reiterate[d] and clarifie[d]" by the Federal Circuit in Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998). Reiffin I, at 1278. The district court found that the 1982 specification described four elements and, after concluding that none of the claims of the two issued patents contained all four elements, held all of the claims invalid for failure to comply with the written description requirement. Id. at 1279. Although the Federal Circuit court recognized that the district court had misconstrued its Gentry Gallery decision as establishing or supporting a "omitted elements test," the Court as a whole surprisingly declined to comment, choosing instead to decide the case solely on the narrow issue of the lower court's use of the 1982 specification. Reiffin II, at *12.

In an enlightening concurrence, however, Judge Newman chastises the Court's per curiam opinion, astutely observing that it is "singularly mischievous" for it leaves the lower court in "procedural and substantive limbo." Id. at *12-*13 (Newman, J., concurring). Judge Newman characterizes the proposition that a patentee must include "in every claim each and every element" of the invention for the claims to be valid "not a correct statement of the law." Id. at *14. Citing two well-known treatises on the subject,1 the concurrence expounds that section 112, ¶ 2, requires only that a patentee "distinctly claim" the subject matter of the invention but does not "require inclusion in every claim of every element that is part of the device or its operation." Id. The concurrence points out that the cases cited to by Microsoft and relied upon by the district court as supporting an "omitted elements" test were misunderstood and cautions against confusing cases voiding improperly-broadened reissue claims for omission of an element when considering the validity of original claims. In summary, Judge Newman stated that the Gentry Gallery decision did not "create a new requirement of claim content, or change the long-standing law and practice of claim drafting," but merely followed controlling precedent from the Supreme Court dating back to 1945. See id. at *16, citing Special Equipment Co. v. Coe, 324 U.S. 370 (1945).

Judge Newman's clarification that the creation of an "omitted elements" test out of either §112, ¶ 1 or any of the Court's prior decisions is incorrect, comes not a moment too soon. Since the district court's decision in Reiffin I in July 1998, other district courts had begun to repeat and therefore perpetuate the myth of an "omitted element test" by citing to Reiffin I.  For example, although acknowledging that the Federal Circuit had not yet referred to the "omitted element" analysis as a bona fide "test," the District Court of Delaware nonetheless found claims of a patent invalid under § 112 for omitting essential elements, citing as support Reiffin I and crediting Gentry Gallery as the origin of the analysis. See Purdue Pharma v. F. H. Faulding and Co., 48 F. Supp. 2d 420 (D. Del. 1999); see also Pipe Liners, Inc. v. Pipelining Prods., Inc., 1999 U.S. Dist. LEXIS 17271 (D. Del., October 22, 1999). Other courts and technology journals had also begun to describe Gentry Gallery as "announcing an omitted element test."2

Since Gentry Gallery was decided in January 27, 1998, the Federal Circuit has itself cited to Gentry Gallery seven times, although only five times in published opinions and only once on the issue of written description. Still, despite attempts by lower courts to interpret it otherwise, the Court has presented consistent views on written description. In Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985 (Fed. Cir. 1999), the one subsequently published opinion dealing with written description, for example, a three-judge panel declined to overturn the lower court's interpretation of the patent claims and instead agreed that the specification "provided ample support for the breadth of the term 'heading.'" Id. at 993. The Court distinguished the case at bar stating that, in Gentry Gallery, the Court limited the claims to one location for the control means based on unambiguous statements in the written description that described the location of the claim element as "the only possible location" and found that other variations were "outside the stated purposed of the invention." Id. By contrast, in Johnson Worldwide, the term "heading" was used interchangeably throughout the written description in terms of both the direction of the motor and the boat, and therefore there was no reason to limit the claim to one meaning or the other. Id.

Though non-precedential by itself, the Newman concurrence clearly provides a roadmap for defining the intent of the Court's Gentry Gallery holding and the proper scope of the written description evaluation. Together with existing precedential opinions, there seems to be very little, if any, support for continued speculation on an "omitted elements" test. In summary, "neither law nor policy requires that the claim contain all the elements described in the specification." Reiffin II, at *7 (Newman, J., concurring)

Endnotes
1 Irving KaytonPatent Practice (6th Ed.) 3.1, 3.3 (1995); Ernest B. Lipscomb, III, 3 Lipscomb's Walker on Patents 290-91 (1985).

2 See McGinley v. Franklin Sports, Inc., 75 Supp. 2d 1218, 1232 (D. Kan. 1999) (applying “omitted element doctrine” according to Gentry Gallery); Cindy I. Liu, INTELLECTUAL PROPERTY: B. Patent: 2. Patentability: a) Written Description: Gentry Gallery, Inc. v. Berkline Corp.,14 Berkeley Tech. L.J. 123 (1999).

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