Anascape, Ltd. v. Nintendo of America, Inc., 601 F.3d 1333 (Fed. Cir. 2010) (NEWMAN & Dyk; GAJARSA, concurring)Anascape04132010
MAJOR ISSUES: written description; new matter; continuation-in-part application redesignated as continuation
COMMENT. If a patent applicant files an application (parent) and subsequently files a continuing application that adds “new matter,” claims dependent on the new matter are not entitled to the benefit of the continuing application’s filing date. Such new matter dependent claims may be invalid in the light of prior art dated after the parent filing but before the continuing application, as this case illustrates. Some conceptional confusion has arisen as to what the statutory basis for this settled rule is: is it the bar on new matter (Section 132)? the written description requirement (Section 112)? or the statute on continuing application priority benefit (Section 120)? See Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, CPLRG 0016 (Fed. Cir. 2010) (en banc), https://www.chisum.com/cplrg-guides/0016#
1.CONTROLLERS FOR SCREEN IMAGE MOVEMENT; VIDEO GAMES. Two patents concerned “hand-operated controllers for the movement of images on a computer screen or television display, particularly as used in video games.” U.S. Pat. No. 6,222,525 USPatNo6222525; U.S. Pat. No. 6,906,700 USPatNo6906700.
a. PARENT (‘525). A parent application (‘525) disclosed a controller with a single input member operable in six degrees of freedom (that is, linear movement and rotational movement, each on three axes).
b. CONTINUATION-IN-PART (‘700). In a subsequent application (‘700), the specification and claims were enlarged to encompass more than a single controller operable in six degrees of freedom, including multiple inputs together operable in six degrees.
i. DESIGNATION CHANGED TO “CONTINUATION.” The inventor originally designated the ‘700 application as a “continuation-in-part.” The inventor later changed the designation to “continuation,” but that change did “not determine its legal status.”
ii. “HAND OPERABLE SINGLE INPUT MEMBER” CHANGED TO “HAND OPERABLE INPUT MEMBER(S).” The ‘700 specification changed every occurrence of “hand operable single input member” (emphasis added) to “hand operable input member(s).”
2. INFRINGEMENT SUIT. The owner of the ‘525 and ‘700 patents filed, Anascape, a district court suit against an accused infringer, Nintendo.
a. The accused infringer’s control had no single input member that moved in six degrees of freedom.
b. The district court found no infringement of the ‘525 patent, a finding that the patent owner did not appeal.
c. The district court construed the ‘700 patent claim as not limited to controllers with a single input member that moved in six degrees.
d. The patent owner agreed that the ‘700 patent was invalid unless it was entitled to the benefit of the ‘525 patent application filing date, which was July 5, 1996. It conceded that there were prior art references, dated before the ‘700 patent filing date (November 16, 2000), but after the ‘525 filing that rendered the ‘700 patent claims unpatentable.
3. JURY: SPECIAL VERDICT. At trial, a jury rendered a special verdict that the ‘700 patent did not fail to satisfy the written description requirement. It was not asked “whether the ‘525 patent satisfies the written description requirement for the ‘700 claims.”
4. The Federal Circuit held that the ‘700 patent’s claims were invalid because the ‘525 patent specification disclosure of a single input did not support the claims to multiple input members that together operate in six degrees of freedom. The district court erred in ruling otherwise.
5. The ‘525 patent provided no support for a claim for a controller other than one with a single input providing six degrees of freedom.
a. The patent owner relied on some of the claims issued in the ‘525 patent, which recited an input member “moveable on at least two axes.” However, the “at least two” text was not in the specification as filed in 1996, but rather was added by an August 2000 amendment, and thus cannot provide written description support. “See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (`[T]o satisfy the written description requirement, “the missing descriptive matter must necessarily be present in the [original] application’s specification such that one skilled in the art would recognize such a disclosure.” ‘ (quoting Tronzo, 156 F.3d at 1159) (alteration in original)).”
b. The ‘525 specification’s “Background of the Invention,” “Summary of Invention,” statement of the “object of the invention,” and “Abstract” all recited a “single input member.”
c. The ‘525 specification referred to a multiple input only in the course of criticizing a prior art controller (Chang). The ‘700 specification deleted that criticism.
d. The ‘525 drawings all show a single input member. The patent owner’s expert testimony on “hypothetical modifications” to embodiments in the drawings were “inconsistent with the disclosure of the specification.”
6. The patent owner’s argument that the changes made in the ‘525 specification by the ‘700 specification were not “new matter” was “untenable” because the changes were “extensive and substantive.”
7. The patent owner argued that the ‘525 application merely described a “preferred embodiment” of the invention and did not “disclaim the broad scope of the ‘700 claims.” The argument lacked merit. The question was not disclaimer but description. A patent owner does disclaim every variant not mentioned, but a patent owner is not “presumed to support variants that are not described.”
8. The court concluded: “the description in the ‘525 specification is not reasonably read as describing a larger invention, of which the single input was only a preferred embodiment.”
1. On written description, see Chisum Patent Law Digest 2210; Chisum on Patents 7.04.
2. On new matter, see Chisum Patent Law Digest 3500; Chisum on Patents 11.04.