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April 13, 2010

Waving Goodbye

Anascape sued Nintendo and Microsoft over 6,906,700, which claims multiple controller input with tactile feedback. '700 is a CIP of 6,222,525. As such, '700's earliest possible priority date for its claims depends upon spec support within '525. And so '700's validity, as invalidating prior art lies between the '525 filing date and the '700 filing date. Thereupon hangs the patent's fate, upon whose reliance is an early priority date.

Anascape v. Nintendo of America (CAFC 2008-1500) precedential

The district court gave Anascape the early '525 filing date for priority.

See 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 . . . ."). In Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345-46 (Fed. Cir. 2000), the court explained the need "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." This rationale applies to a specification whose filing date is needed to antedate prior art. See Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319-20 (Fed. Cir. 2003); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).

To obtain the benefit of the filing date of a parent application, the claims of the later-filed application must be supported by the written description in the parent "in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). See generally Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., No. 2008-1248, 2010 WL 1007369 (Fed. Cir. Mar. 22, 2010).

Anascape has conceded that if not so entitled, the '700 patent claims are subject to invalidation based on the intervening prior art of a Sony "DualShock" controller sold in the United States in 1998 and described in a patent application of Goto published in 1998, and a Sony "DualShock 2" controller sold in the United States in October 2000. Anascape's response to this prior art is that the '700 patent claims are entitled to the July 5, 1996 filing date. The district court so found; this is the principal issue on this appeal.

The technical issue was whether the '525 spec supported multiple controllers offering six degrees of freedom, which means a single control might offer less than six. Nintendo asserted that '525 disclosed on a single controller that offered six degrees of freedom.

Nintendo counts over twenty explicit statements that the invention is directed to a single input member that is operable in six degrees of freedom. The '525 specification does not describe a controller with input members limited to fewer than six degrees of freedom.

For a parent application to provide the filing date for claims of a continuing application, the description in the parent must meet the requirements of 35 U.S.C. §112, first paragraph, as to that claimed subject matter. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998); see also, e.g., Fiers v. Revel, 984 F.2d 1164, 1169-70 (Fed. Cir. 1993) (entitlement to the benefit of an earlier-filed application date requires that the earlier application meets the requirements of §112). Anascape points to some of the issued claims of the '525 patent, which recite an "input member moveable on at least two axes," and argues that this adequately describes, for priority purposes, use of more than a single input member in order to obtain movement in six degrees of freedom. We need not decide the significance of the words "at least two," for, as Nintendo points out, this text was not part of the specification and claims as filed in 1996, but was added to the claims by amendment in August 2000. 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)). This text was not present in the original '525 specification, and cannot contribute written description support for the '700 claims as of the '525 filing date.

Inventor Brad A. Armstrong tried to cover his priority tracks by changing the '700's CIP to a pure continuation.

The specification of the '700 patent describes controllers that are not limited to a single input member capable of movement in six degrees of freedom. In filing the application that became the '700 patent, several changes were made in the '525 specification.2

2 The '700 specification was designated, upon filing, as a continuation-in-part of the '525 application. Although the inventor later changed the designation to a "continuation," the designation given to a derivative application does not determine its legal status.

Anascape disingenuously argued that no new matter had been introduced in the later '700.

Anascape states that these changes in the '700 specification and claims are not "new matter." That position is untenable, for the changes are extensive and substantive. A description can be broadened by removing limitations. The limitation to a single input member capable of movement in six degrees of freedom was removed, in filing the '700 application, and new claims were provided of commensurately broadened scope. This is classical new matter. See, e.g., Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008) ("the examiner rightly refused to allow the applicants to amend the specification to remove references to 'heat' as the way of sealing the sleeve," for the change "would have broadened the patent and introduced impermissible new matter" and rendered the reissue claims "invalid for lack of support in the initial disclosure").

Anascape argues that the subject matter described in the '525 specification simply is the preferred embodiment, and that the inventor did not disclaim the broader scope of the '700 claims. The district court observed that "nothing in the ['525] specification disclaims other variations." Anascape, 2008 WL 160546, at *6. However, the question is not whether the patentee in the '525 specification "disclaimed" the scope of the '700 patent; the question is whether the '525 specification sufficiently describes the later-claimed subject matter, as to entitle the '700 claims to the filing date of the '525 application. See Lucent Technologies, Inc. v. Gateway, Inc., 543 F.3d 710, 718-19 (Fed. Cir. 2008) (to claim priority based on the filing date of an earlier application, the earlier application must support the claims of the later-filed application).

A patentee is not deemed to disclaim every variant that it does not mention. However, neither is a patentee presumed to support variants that are not described. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) ("The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required to 'recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.'" (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991))). Each case must be viewed as it would be understood by a person of ordinary skill in the field of the invention.

Expert witness testimony was immaterial.

Dr. Howe's conclusion is not supported by any evidence at all, and cannot override the objective content of these documents. See PowerOasis, 522 F.3d at 1307-08 (in determining the relationship between a later-claimed invention and an earlier application, it is helpful to consider the changes made in the later application).

The '525 was deemed insufficient to support the '700 claims.

Thus, 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. See Honeywell Int'l, Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) ("Here, the written description uses language that leads us to the conclusion that a fuel filter is the only 'fuel injection system component' that the claims cover, and that a fuel filter was not merely discussed as a preferred embodiment."). Whether or not the inventor could have described the '525 invention more broadly, "[i]t is not sufficient for purposes of the written description requirement of §112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose." Lockwood, 107 F.3d at 1572.

The district court got the claim construction right, but the priority date wrong.

The jury found that the '700 claims are not invalid on the ground of anticipation or obviousness or written description requirements. These verdicts all require that the '700 claims are entitled to the filing date of the '525 patent, for Anascape has agreed that if not so entitled the claims are invalid.

Since the '700 claims are not entitled to the '525 filing date of July 5, 1996, the judgments of validity and infringement cannot stand, for Anascape conceded that the Sony prior art anticipates the '700 claims if not so entitled. Thus judgment as a matter of law is appropriate, for "a 'reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.'" Cambridge Toxicology Group, Inc. v. Exnicios, 495 F.3d 169, 179 (5th Cir. 2007) (quoting Fed. R. Civ. P. 50(a)(1)). The judgments of validity, infringement, and the award of damages must be reversed.


Microsoft settled at district court.

In dissent, Judge Garjasa expressed nuances of import. The dissent in its entirety -

While I agree with the majority's result, I write separately to highlight the majority's best use of the written description requirement as a priority-policing mechanism in contradistinction to an independent basis for invalidity. In this case, Anascape filed the '700 patent as a continuation-in-part of the '525 patent's application. Pursuant to 35 U.S.C. § 120, Anascape's '700 patent would be entitled to the '525 patent's priority date only if the '525 patent's written description disclosed the subject matter of the later-filed '700 patent. See In re Smith, 458 F.2d 1389, 1394 (CCPA 1972). Because, as the majority correctly concludes, the '700 patent claims subject matter not disclosed by the '525 patent, the '700 patent is not entitled to the '525 patent's priority date. In this case, the failure to establish the earlier priority date is fatal as Anascape conceded that a prior art Sony product anticipated the asserted claims.

The majority's application of the written description requirement, in my judgment, would be the preferred use of the written description requirement. As this court's predecessor stated:

Satisfaction of the description requirement insures that subject matter presented in the form of a claim subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention can fairly be held to be the filing date of the application. This concept applies whether the case factually arises out of an assertion of entitlement to the filing date of a previously filed application under § 120 . . . or arises in the interference context wherein the issue is support for a count in the specification of one or more of the parties . . . or arises in an ex parte case involving a single application, but where the claim at issue was filed subsequent to the filing of the application . . . .

In re Smith and Hubin, 481 F.2d 910, 914 (CCPA 1973); see also In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989) ("When the scope of a claim has been changed by amendment in such a way as to justify an assertion that it is directed to a different invention than was the original claim, it is proper to inquire whether the newly claimed subject matter was described in the patent application when filed as the invention of the applicant. That is the essence of the so-called 'description requirement' of § 112, first paragraph.").

This court, however, has held en banc that § 112, first paragraph provides for a written description requirement capable of invalidating claims, Ariad Pharm., Inc. v. Eli Lilly & Co., No. 2008-1248, 2010 WL 1007369 (Fed. Cir. March 22, 2010), though I continue to believe that "[c]onfining written description to the priority context would provide greater clarity to district courts and practitioners, both of whom are currently left to trudge through a thicket of written description jurisprudence that provides no conclusive answers and encourages a shotgun approach to litigation," id. at *22 (Gajarsa, J., concurring). While the statutory language has been interpreted by this court to require a written description for patentability, it is not the ideal vehicle for invalidating claims. Such a vehicle is better provided by the enablement requirement of § 112. Under this court's current law, enablement provides the preferred vehicle for invalidating claims that extend beyond what the patent actually discloses to a person of skill in the art. See Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1378 (Fed. Cir. 2009) ("To meet the enablement requirement, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation." (internal quotation marks omitted)).

Moreover, clearly defining the separate contexts in which written description and enablement are applicable would provide some justification for this court's currently inexplicable treatment of written description as a question of fact, yet enablement as a question of law. See Ariad, at *27 (Rader, J., dissenting-in-part and concurring-in-part). While Ariad conclusively established that § 112, first paragraph requires both an enabling disclosure and a written description, it left to the district courts and practitioners the task of resolving many questions concerning how Ariad applies in practice.

Here, the majority's opinion demonstrates a good example in applying the written description in a priority policing context, while leaving invalidity in the capable hands of the enablement doctrine. Though Ariad makes clear that written description is not confined to the priority policing context, I continue to believe such confinement, while not statutorily mandated, streamlines litigation and arguably reconciles some of our written description and enablement precedent.

Posted by Patent Hawk at April 13, 2010 9:26 AM | § 112


Right outcome. Interesting points. Piss poor analysis.

Did you notice Gajarsa back-peddling on Ariad already? So much for the dream of firm, reliable written description jurisprudence.

I am struck with how imprecise this opinion is. Here is clear mistatement:

“The ’700 patent was filed on November 16, 2000 as a continuation-in-part of the application that became U.S. Patent 6,222,525 (the ’525 patent). “

When was the last time you saw a patent filed? Nit picking? Sure, but how many times have you seen Newman dust some poor patent drafter’s clock because they used the wrong word in the wrong place?

More substantive legal confusion:

“Anascape filed the ’700 patent as a continuation-in-part of the ’525 patent’s application. Pursuant to 35 U.S.C. § 120, Anascape’s ’700 patent would be entitled to the ’525 patent’s priority date only if the ’525 patent’s written description disclosed the subject matter of the later-filed ’700 patent. . . . Because, as the majority correctly concludes, the ’700 patent claims subject matter not disclosed by the ’525 patent, the ’700 patent is not entitled to the ’525 patent’s priority date. “ B.S.

Funny, it used to be that a CIP was for filing new matter – i.e. the CIP claims subject matter not disclosed by the parent, in which case the new matter gets the filing date of the CIP, in which case the patent that issues on the CIP is valid even though it claims subject matter not disclosed by the parent, which is contrary to what both Newman and Garjarsa are talking about.

37 CFR 1.53(b)(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.

Granted, Anascape tried to say it’s CIP was really a continuation but Newman and Garjasa analyzed this case on the basis that the later filed application was CIP, as Garhasa’s misstatement of the law indicates.

Posted by: Babel Boy at April 14, 2010 8:30 AM

babel boy,

Quick to complain, yet wrong again.

Whether the item was a CIP or straight Continuation was pivotal to the analysis and handled appropriately by the judges. I am not sure who Garhasa is, but the analysis did center on the Continuation, as the parties stipulated (that if indeed was a CIP, the CIP was DOA).

Try to not add to the confusion.

Posted by: Pedantic Pete at April 14, 2010 10:32 AM

Look at the quote I provided and get back to me if/when you are able to see Gajarsa's error.

The '700 issued on a CIP. The '700 patent is indeed entitled to the parent's filing date for all matter that was disclosed in the parent. That's the whole blinkin' point of CIP -- getting the priority date. And, yes, the patent gets the date, even if (some of) the claims don't.

Nowhere in this opinion do either Newman or Gajarsa review the law of sorting out priority dates of original matter in a CIP from new matter.

Yes, I am quick to complain about very well paid federal judges who appear to be so often clueless. Every tax payer should be. Just wait 'til I tell Glenn Beck about this.

Posted by: Babel Boy at April 14, 2010 11:33 AM

Babel Boy,

The whole stinkin point of a Continuation is getting the priority date. A CIP only gets you the prioroity date for the appropriate earlier coverage - the added matter stuff doesn't. Let me say this slowly, so you can catch on - it was s t i p u l a t e d that the earlier date was necessary. When you blunder in with "Nowhere in this opinion do either Newman or Gajarsa review the law of sorting out priority dates of original matter in a CIP from new matter." you are pulling a "6" because such a review is not called for when the facts are stipulated and there is an analysis showing that the earlier application does not support the claims in question (they needed the CIP new matter portion - the disclosure of the parent patent wasn't enough).

I'm sure Glen Beck will tell you to stop complaining until you get it right.

Posted by: Pedantic Pete at April 14, 2010 6:37 PM

You are obviously not trained in patent law or so poorly trained as to be indistinguishable from not trained.

There is a distinction between the claims in suit and the entire CIP. Only the claims in suit are affected by the lack of the earlier priority. However, Garjarsa's comment incorrectly states that the entire '700 patent is invalid.

Garjarsa: Because, as the majority correctly concludes, the ’700 patent claims subject matter not disclosed by the ’525 patent, the ’700 PATENT is not entitled to the ’525 patent’s priority date. [My emphasis on "patent" for your benefit.]

This is not a correct statement of the law. Not as applied to this case. Not in general. Gajarsa should have said:

". . . the claims in suit are not entitled to the '525 priority date." The judge's FU has essentially destroyed the entire CIP, most of which was not in the suit. That's why the judges should have reflected on the distinction between new and previously disclosed subject matter.

Keep working on it -- with a lot of effort you'll get it eventually.

Posted by: Babel Boy at April 15, 2010 7:52 AM

BB I'm sure that if that little point becomes worthy of note in the future someone will point out for him his little snafu. Till then you can stufu.

And for the record I'm not anywhere near as stupd as BB is being here.

Posted by: 6000 at April 15, 2010 8:50 AM


Before I take a bite of my foot, how do you know which claims are in suit (perhaps they all are).

Posted by: Pedantic Pete at April 15, 2010 10:12 AM

Granted that I preached to you prior to knowing, it looks like you are the bigger fool for complaining without knowing and then defending without checking.

The entire '700 patent was asserted.

You should chew on that for awhile (if I am poorly trained, what does that say about you?).

Posted by: Pedantic Pete at April 15, 2010 10:33 AM

Pete says: The entire '700 patent was asserted.

First of all, one doesn't assert a patent. One asserts claims. Just like one doesn't file a patent, one files an application, a point I made above. It is discouraging how loose and imprecise patent judges and patent practitioners can be with words.

Second, Pete, you would only have to read the first sentence of Newman's opinion to find that only CERTAIN claims of the '700 patent were asserted by Anascape.

"Nintendo of America Inc. appeals the judgment of the United States District Court for the Eastern District of Texas, holding that certain Nintendo video game controllers infringed certain claims of U.S. Patent 6,906,700 (the ’700 patent) owned by Anascape,Ltd., and awarding damages."

How clear can that be? "Certain claims" means "some but not all claims". Newman further refers to "the claims in suit."

There were 32 claims in the '700 patent, 16 were independent. Which of those claims were the "certain" ones and "the claims in suit?" Well, Newman and Garjarsa are keeping that a secret. Which is my complaint. They make no effort to distinguish what claims they are shooting down.

But we know that not all of the claims are at issue, only certain ones are. Those claims that aren't may very well be valid and valuable because they claim only subject matter disclosed in the parent.

Or they may claim new matter that is not related to the litigation. There may be a number of reasons the claims not in suit are valid and valuable. But now there is a judicial cloud over all of them because according to Garjarsa the whole patent is dead. That conclusion is BS, as far as this record indicates.

IQ=6, whining that he is not being stupid, jumps in with a stupid comment that this is a "little point." Some appellate judge with loose language and no apparent clue vaporizes potentially valuable claims that are not even at issue in the appeal, and that is a "little matter?"

Guess it depends on what your definition of "stupid" is. IQ=6 is just being his own lexicographer.

Posted by: Babel Boy at April 16, 2010 8:02 AM


For someone who wishes to be so precise, you continue to play the fool.

I checked the record, so let me be clear: "The entire set of claims from the '700 patent was asserted.

Perhaps you should check the record before you complain - or maybe you weren't trained that way.

Posted by: Pedantic Pete at April 16, 2010 9:37 AM

Pete, good boy. Be clear.

Also, show us the record you are talking about.

Posted by: Babel Boy at April 16, 2010 10:57 AM

"show us..."

No. Do your own work (you have been trained in how to do that, right?). That way, when you whine like a little girl, some one may take you seriously.

good boy indeed.

Posted by: Pedantic Pete at April 16, 2010 1:46 PM