146 F.3d 1348 (Fed. Cir. 1998), 96-1514, Hyatt v. Boone

Docket Nº:96-1514, 96-1515.
Citation:146 F.3d 1348
Party Name:47 U.S.P.Q.2d 1128 Gilbert P. HYATT, Appellant, v. Gary W. BOONE, Cross-Appellant.
Case Date:June 17, 1998
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1348

146 F.3d 1348 (Fed. Cir. 1998)

47 U.S.P.Q.2d 1128

Gilbert P. HYATT, Appellant,

v.

Gary W. BOONE, Cross-Appellant.

Nos. 96-1514, 96-1515.

United States Court of Appeals, Federal Circuit

June 17, 1998

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Aug. 26, 1998.

Page 1349

[Copyrighted Material Omitted]

Page 1350

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.

PAULINE NEWMAN, Circuit Judge.

The parties to Patent Interference No. 102,598 are Gilbert P. Hyatt, inventor of United States Patent No. 4,942,516 entitled

Page 1351

"Single Chip Integrated Circuit Computer Architecture" (the '516 patent), and Gary W. Boone, inventor of patent application Serial No. 07/473,541 entitled "Variable Function Programmed Systems" (the '541 application). Mr. Hyatt appeals the decision of the Board of Patent Appeals and Interferences, entering judgment against him and cancelling the relevant claims of his '516 patent. Mr. Boone cross-appeals the Board's entry of judgment against him. We affirm the Board's decision, 1 with modification of the judgment to declare Boone the prevailing party in the interference.

DISCUSSION

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 Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability.") 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

Page 1352

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.

I

HYATT'S '881 APPLICATION

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) ("[T]he act of filing the United States application has the legal effect of being, constructively at least, a simultaneous conception and reduction to practice of the invention."); see Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed.Cir.1986) ("constructive reduction to practice occurs when a patent application on the claimed invention is filed"); 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 ("the written specification in the application is the evidence proving the invention of that which is reduced to practice"). 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) (section 112 paragraph 1 must be met by the earlier application). The Board found that Hyatt's '881 application did not provide the requisite written description; the Board did not decide the question of enablement.

A

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) (the original claims are part of the patent specification); 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.

Page 1353

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,"...

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    ...conceived the invention and exercised reasonable diligence to achieve actual or constructive reduction to practice. See Hyatt v. Boone, 146 F.3d 1348, 1351 (Fed.Cir.1998) (citations omitted). "Priority is a question of law which is to be determined based on underlying factual determina......
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    ...diligence to his own actual or constructive reduction to practice, 'from a time prior to conception by the other.'" Hyatt v. Boone, 146 F.3d 1348, 1351 (Fed. Cir. 1998) (quoting version of 35 U.S.C. § 102(g) prior to 2011 amendment; other citations The parties, 3 working independently,......
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    ...conceived the invention and exercised reasonable diligence to achieve actual or constructive reduction to practice. See Hyatt v. Boone, 146 F.3d 1348, 1351 (Fed.Cir.1998) (citations omitted). "Priority is a question of law which is to be determined based on underlying factual determina......
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    ...diligence to his own actual or constructive reduction to practice, 'from a time prior to conception by the other.'" Hyatt v. Boone, 146 F.3d 1348, 1351 (Fed. Cir. 1998) (quoting version of 35 U.S.C. § 102(g) prior to 2011 amendment; other citations The parties, 3 working independently,......
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    ...diligence to his own actual or constructive reduction to practice, from a time prior to conception by the other.'" Hyatt v. Boone, 146 F.3d 1348, 1351 (Fed. Cir. 1998) (quoting version of 35 U.S.C. § 102(g) prior to 2011 amendment; other citations The parties, 3 working independently, ......
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    ...Page 359 invention, including all of the elements and limitations presented in the [claim], at the time of filing." Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed.Cir.1998). Whether the written description requirement is satisfied is a question of fact that is determined on a case-by-case ba......
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7 firm's commentaries
  • Written Description - A Must Or Not?
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    • Mondaq United States
    • December 21, 2004
    ...2002) [xxvii] Rochester, 69 USPQ2d at 1891-92 [xxviii] Id. at 1892-93 [xxix] Id. at 1894 [xxx] Id. [xxxi] Id. (citing Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998)) [xxxii] Id. at 1895 (citing PIN/NIP, Inc. v. Platte Chemical Co., 304 F.3d 1235 (Fed. Cir. 2002) [xxxiii] Id. [xxxiv] I......
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    ...appropriate"). Technical Versus Statutory Deficiencies The decision here is interesting when contrasted with Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998). In that interference case, priority was questioned based on compliance with 37 C.F.R. § 1.60 ("Rule 60"), because the A......
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    • JD Supra United States
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    ...necessarily appropriate”). Technical Versus Statutory Deficiencies The decision here is interesting when contrasted with Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998). In that interference case, priority was questioned based on compliance with 37 C.F.R. § 1.60 (“Rule 60”), because the Appl......
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    ...provide an adequate written description of that protein." In distinguishing this case from precedent cited by Yeda (Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998) and In re Wallach, 378 F.3d 1330 (Fed. Cir. 2004)), the importance of the circumstances is clear: "[n]either Hyatt nor......
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  • The teaching function of patents.
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    • Notre Dame Law Review Vol. 85 Nbr. 2, February 2010
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    ...he makes a sufficient disclosure to enable other persons skilled in the art to practice the invention."). (178) See Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) ("[T]he inventor need not provide evidence of either conception or actual reduction to practice when relying on ......
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    ...of Patent Appeals and Interferences (BPAI) finally reconsidered its earlier decision of priority on May 10, 1996. See Hyatt v. Boone, 146 F.3d 1348, 1351 n.1 (Fed. Cir. 1998). An opinion in the last appeal of the BPAI's decision awarding priority to Boone was issued on August 26, 1998. See ......
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