Martin Gardner REIFFIN, Plaintiff-Appellant, v. MICROSOFT CORPORATION, Defendant-Appellee, 214 F.3d 1342

OPINION PER CURIAM, JUDGE PAULINE NEWMAN CONCURS IN THE JUDGMENT WITH OPINION. PER CURIAM. Martin Gardner Reiffin appeals the decision of the United States District Court for the Northern District of California, granting

summary judgment that United States Patents Nos. 5,694,603 and 5,694,604 are invalid for failure to meet the “written description” requirement of 35 U.S.C. § 112, first paragraph. We conclude that the district court erred in application of the statute. The

summary judgment is reversed, and the case is remanded for further proceedings. DISCUSSION In 1982 Mr.

Reiffin filed a patent application entitled “Computer System with Real-Time Compilation.” The application discloses a system in which a combination of software and hardware compiles a computer program concurrently with the program’s entry into an editor, achieving what is described as “contemporaneous real-time entry and compilation of a source program.” A source program is a computer program written in a high level human readable language which the application refers to as source code; the end product of the compilation of the source program is a binary machine language composition which the application refers to as object code, and which is required for the program’s execution by a computer.

We also take notice of the following dictionary

definitions: COMPILE B to generate a program written in machine language (or sometimes in symbolic language) from a program written in a high level language such as BASIC or FORTRAN V. EDITOR B a software or firmware tool, a program or part of a program ... [which] aids in modifying, editing, rewriting, changing, or debugging a program being developed. Philip E. Burton, A Dictionary of Micro-computing 31, 51 (1976).

The system as described in the specification utilizes an “interrupt mode of operation” to allow the computer’s Central Processing Unit (“CPU”) to execute a compiler and an editor seamlessly as viewed by the computer user. In normal operation the compiler is continuously executed by the CPU; as the compiler is executed it performs lexical, syntactic, and semantic analyses of program source code stored in a source buffer in the computer’s memory, outputting compiled object code into an object buffer.

Whenever the computer user strikes a key on the keyboard, a so-called “interrupt sequence” causes the compiler’s execution to pause and directs the CPU to execute the editor. After the editor performs whatever operation is required by the keystroke (for example, entering an alphanumeric character into the source buffer), a “return” instruction is executed by the CPU. This return instruction ends the interrupt sequence and causes the CPU to resume its normal state in which the compiler is continuously executed.

The specification also describes an alternative embodiment in which the interrupt sequence is activated by a timer or clock instead of by the keyboard. Mr. Reiffin filed a continuation of the 1982 application in 1985. He filed another continuing application with additional text and modified claims in 1990, describing the system as a “multithreaded computer application.” The 1990 application issued as the ’603 patent on December 2, 1997. The ’604 patent, filed in 1994 as a continuation of the 1990 application, also issued on December 2, 1997.

The claims of the ’603 and ’604 patents were amended several times during the lengthy prosecution, which included appeals to the Board of Patent Appeals and Interferences. The two patents in suit have the same specification, and differ as to their claims; the ’603 patent claims a memory product storing multithreaded software, and the ’604 patent claims a method of multith-readed operation and a multithreaded system. Claim 12 of the ’603 patent is representative: 12.

A computer-readable disk means encoded with a plurality of concurrently executable threads of instructions eonsti-tuting a multithreaded computer application program to control the execution of a desktop microcomputer having an interrupt operation, a clock timer for periodically activating said interrupt operation, and memory means for storing a body of data, said encoded executable instructions comprising a first thread of instructions executable by the microcomputer and including means to process said stored body of data, at least a second thread of instructions for preemptively taking control of the microcomputer in response to said periodic activations of said interrupt operation by said clock timer and including means to process said stored body of data for a brief time interval after each said preemption, and said first thread of instructions repeatedly regaining control of the computer after each said time interval so that said first thread of instructions resumes processing said body of data at the point where it had been previously preempted, whereby said threads of instructions execute concurrently in a multithreaded mode of operation.

Mr. Reiffin charged that several of Microsoft’s software applications infringe the ’603 and ’604 patents, including word processing programs that check spelling and grammar as text is entered, and operating systems such as Windows 98 which control switching of the program threads that are active during normal operation of a personal computer. On cross-motions for

summary judgment on the issue of patent validity, the district court granted Microsoft’s motion and held all of the claims invalid for failure to comply with the written description requirement of 35 U.S.C. § 112 ¶ 1. The district court determined that, as a matter of law, the written description requirement encompasses an “omitted element test” which “prevents a patent owner from asserting claims that omit elements that were essential to the invention as originally disclosed.” Reiffin, 48 USPQ2d at 1278.

Examining the contents of the original 1982 application, the district court found that the specification described four elements as essential to the invention C a compiler, an editor, an interrupt, and a return. Reviewing the seventy-seven claims of the issued ’603 and ’604 patents, the court concluded that none of the claims includes all four elements, and held all of the claims invalid for failure to comply with the Written description requirement.

We conclude that the district court erred in looking to the text of the original 1982 application to determine whether the ’603 and ’604 patents, filed in 1990 and 1994, comply with the written description requirement. For purposes of § 112 ¶ 1, the relevant specifications are those of the ’603 and ’604 patents; earlier specifications are relevant only when the benefit of an earlier filing date is sought under 35 U.S.C. § 120.

A The district court did not decide whether the claims of the ’603 and ’604 patents are adequately supported by the written descriptions of the inventions set forth in the specifications of those patents. However, that is all that is required for compliance with the written description requirement of § 112 ¶ 1, which states the basic requirements for the content of the specification: 35 U.S.C. § 112 ¶ 1.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains ... to make and use the same.... The purpose of this provision is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification. See In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.

Cir.1989) (“[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.”); see also Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111, 1115 (Fed.Cir.1991) (“Adequate description of the invention guards against the inventor’s overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” (quoting Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551, 211 USPQ 303, 321 (3d. Cir.1981))).

Compliance of the ’603 and ’604 patents with the written description requirement requires that the specifications of these patents describe the inventions claimed in these patents. Thus, for example, the 1990 application considered as a whole must convey to one of ordinary skill in the art, either explicitly or inherently, that Mr. Reiffin invented the subject matter claimed in the ’603 patent. See Vas-Cath, 935 F.2d at 1563, 19 USPQ2d at 1116; Continental Can Co. USA v.

Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.Cir.1991) (descriptive matter may be inherently present in a specification if one skilled in the art would necessarily recognize such a disclosure). Microsoft did not dispute, in its motion for

summary judgment or on this appeal, that the descriptive texts of the issued ’603 and ’604 patents meet the written description requirement as to the claims of those patents, and the district court did not discuss this issue. Instead, the district court looked to the specification of Reiffiris 1982 grandparent application for the written description relevant to the claims of the ’603 and ’604 patents, apparently relying on the statement in Gentry Gallery, Inc. v.

Berkline Corp. that “[the inventor’s] original disclosure serves to limit the permissible breadth of his later-drafted claims.” 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed.Cir.1998). This reliance was misplaced, however, for in Gentry Gallery there were no prior applications and the “original disclosure” was that of the issued patent. The “original disclosure” reference simply recognized that “the sufficiency [of a disclosure] under § 112, first paragraph must be judged as of its filing date.” Application of Glass, 492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA 1974).

B Analysis of the disclosure in ancestor applications is appropriate when benefit of an earlier filing is sought under 35 U.S.C. § 120: 35 U.S.C. § 120. An application for patent for an invention disclosed in the manner provided by the first paragraph of

section 112 of this title in an application previously filed in the United States ... shall have the same effect, as to such invention, as though filed on the date of the prior application.... Although § 120 incorporates the requirements of § 112 ¶ 1, these requirements and the statutory mechanism allowing the benefit of an earlier filing date are separate provisions with distinct consequences.

In accordance with § 120, claims to subject matter in a later-filed application not supported by an ancestor application in terms of § 112 ¶ 1 are not invalidated; they simply do not receive the benefit of the earlier application’s filing date. See, e.g., Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed.Cir.1998). Thus the district court erred in holding the ’603 and ’604 claims invalid for failure to comply with the written description requirement. Mr. Reiffin states that he does not need the benefit of the 1982 application’s filing date. Microsoft- disagrees.

We do not undertake this determination on the undeveloped record before us. Since the district court erred in looking to the 1982 specification for support under § 112 of the claims granted on the 1990 and 1994 specifications, we do not reach Mr. Reif-fin’s challenge to the “omitted element test.” CONCLUSION The

summary judgment is reversed. We remand for further proceedings. Costs to Mr. Reiffin, Fed. R.App. P. 39(a). REVERSED AND REMANDED . Reiffin v. Microsoft Corp., 48 USPQ2d 1274 (N.D.Cal.1998). . Multithreading is defined in the '603 and '604 patents as "the concurrent time-sliced preemptive execution of a plurality of threads of instructions located within the same ... application program.” '603 patent, col. 1:25-38.