Hyatt v. Boone
Decision Date | 17 June 1998 |
Docket Number | Nos. 96-1514,96-1515,s. 96-1514 |
Citation | 47 USPQ2d 1128,146 F.3d 1348 |
Parties | Gilbert P. HYATT, Appellant, v. Gary W. BOONE, Cross-Appellant. |
Court | U.S. Court of Appeals — Federal Circuit |
John M. DiMatteo, Patterson, Belknap, Webb & Tyler LLP, of New York City, argued for appellant. With him on brief was Gregory L. Roth, Law Offices of Gregory L. Roth, of La Palma, California.
Louis Touton, Jones, Day, Reavis & Pogue, of Los Angeles, California, argued for cross-appellant. Of counsel on brief was Jay M. Cantor, Spencer, Frank & Schneider, of Washington, DC.
Before NEWMAN, MICHEL, and PLAGER, Circuit Judges.
Determination of priority of invention invokes a complex body of procedural and substantive law, applied in the first instance in administrative proceedings in accordance with 35 U.S.C. § 135(a) () The interference proceeding implements the principle of United States law that the right to a patent derives from priority of invention, not priority of patent application filing.
The general rule is that the first person to conceive the invention is the first inventor, see Irving Kayton, The United States Patent as a Legal Instrument, in 1 Patent Practice 2-1, 2-39 (Irving Kayton and Karyl S. Kayton eds., 4th ed. 1989) ("The earliest possible date of invention, therefore, is the date of conception."), provided that when the first to conceive the invention is the last to reduce it to practice, the person who was first to conceive must have exercised reasonable diligence to his own actual or constructive reduction to practice, "from a time prior to conception by the other." 35 U.S.C. § 102(g). See Charles L. Gholz, Interference Practice, in 6 Patent Practice, supra, 24-1, 24-6(c); Paulik v. Rizkalla, 760 F.2d 1270, 1272, 226 USPQ 224, 225 (Fed.Cir.1985) (in banc). Thus, during an interference proceeding evidence may be presented of conception, reduction to practice, and diligence, as appropriate to the positions of the parties, see id.; see generally Gholz, supra, at 24-1, or a party may rely on the patent document to establish the facts of priority of invention. See Gholz, supra, at 24-45.
The contested invention is a computer formed on a single integrated circuit chip, having specified circuits and functions. The sole count of the interference is:
A computer on a chip comprising:
an integrated circuit chip having a computer implemented thereon;
an integrated circuit main memory storing computer instructions, wherein said integrated circuit main memory is included on said integrated circuit chip;
an integrated circuit operand memory storing operands, wherein said integrated circuit operand memory is included on said integrated circuit chip; and
an integrated circuit processing circuit processing the operands stored by said integrated circuit operand memory in response to the instructions stored in said integrated circuit main memory, wherein said processing circuit is included on said integrated circuit chip.
The interference contest was initiated by Boone after Hyatt's '516 patent issued. Boone followed the procedure of copying certain of Hyatt's patent claims into his pending application and asking the patent examiner to "declare" the interference. 37 C.F.R. § 1.607 (1990). The examiner so acted. See 37 C.F.R. § 1.611 (1990).
Both parties claimed the benefit of earlier-filed patent applications, relying on the earlier applications for constructive reduction to practice of the subject matter of the count. See 37 C.F.R § 1.626 (1990). Conception is not at issue in this appeal, and neither party presented evidence of actual reduction to practice. At the Motions stage from which the Board's decision evolved, the only issue was each party's entitlement to certain asserted dates of constructive reduction to practice.
Boone was granted an effective filing date, through a chain of nine prior applications, of
an application filed on July 19, 1971. Hyatt was granted an effective filing date, through a chain of four prior applications, of an application filed on December 14, 1977. The Board denied Hyatt the benefit of the filing date of his December 28, 1970 application No. 05/101,881 (the '881 application) as to the subject matter of the count. Hyatt disputes the denial of the '881 application filing date, and also challenges the date awarded to Boone.
The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Yasuko Kawai v. Metlesics, 480 F.2d 880, 885, 178 USPQ 158, 162 (CCPA 1973) (); see Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed.Cir.1986) (); In re Glass, 492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA 1974). There is no need for proof or corroboration of the subject matter that is included in the application unless a date earlier than the filing date is sought to be established. Yasuko Kawai, 480 F.2d at 886, 178 USPQ at 163 (). Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application.
However, the patent application must comply with the legal requirements for support of the interference count. When a party to an interference seeks the benefit of an earlier-filed United States patent application, the earlier application must meet the requirements of 35 U.S.C. § 120 2 and 35 U.S.C. § 112 p 1 3 for the subject matter of the count. The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement. Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed.Cir.1993) ( ). The Board found that Hyatt's '881 application did not provide the requisite written description; the Board did not decide the question of enablement.
We review the Board's findings on the standard of clear error, for compliance with the written description requirement is a question of fact. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed.Cir.1991). Hyatt relies as written description on the text of claim 40 as that claim was originally filed in the '881 application, viewed with the entire specification.
The claims as filed are part of the specification, and may provide or contribute to compliance with § 112. See Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 938, 15 USPQ2d 1321, 1326 (Fed.Cir.1990) ( ); In re Benno, 768 F.2d 1340, 1346, 226 USPQ 683, 686-87 (Fed.Cir.1985); In re Frey, 35 C.C.P.A. 970, 166 F.2d 572, 575, 77 USPQ 116, 119 (CCPA 1948). Hyatt's original claim 40 is for a data processing system implemented on a single integrated circuit chip, as follows:
40. An electronic data processing system including read only memory means, alterable memory means and program means, said system being implemented on a single integrated circuit chip.
There is no other mention in the '881 specification of a single integrated circuit chip, although other electronic data systems are extensively described.
Hyatt's position is that the text of claim 40 describes the subject matter of the interference count, in that the "read only memory means" of claim 40 is the same as the "integrated circuit main memory storing computer instructions" of the count, the "alterable memory means" of claim 40 is the same as the "integrated circuit operand memory storing operands" of the count, and the "program means" of claim 40 is the same as the "integrated circuit processing circuit" of the count. Hyatt states that the '881 specification contains detailed descriptions of various computer circuits, which supplement the text of claim 40 in that the specification describes a computer made up of numerous integrated circuits mounted on multiple printed circuit boards and comprising a "physically distributed, operatively dispersed system."
The Board held that the written description must be sufficient, when the entire specification is considered, that the "necessary and only reasonable construction" that would be given it by a person skilled in the art is one that clearly supports each positive limitation in the count. The Board found that the term "program means" in claim 40 is used to describe only computer instructions or as a modifier of "program control means," and does not describe or require the interpretation that the program processes the operands stored by the alterable memory in accordance with instructions...
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