198 F.3d 1374 (Fed. Cir. 1999), 99-1082, Atmel Corp. v Information Storage Devices

Docket Nº:99-1082
Citation:198 F.3d 1374
Party Name:ATMEL CORPORATION, Plaintiff-Appellant, v. INFORMATION STORAGE DEVICES, INC., Defendant-Appellee.
Case Date:December 28, 1999
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1374

198 F.3d 1374 (Fed. Cir. 1999)

ATMEL CORPORATION, Plaintiff-Appellant,

v.

INFORMATION STORAGE DEVICES, INC., Defendant-Appellee.

99-1082

United States Court of Appeals, Federal Circuit

December 28, 1999

Appealed from: U.S. District Court for the Northern District of California Judge Fern M. Smith

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Robert T. Haslam, Heller Ehrman White & McAuliffe, of Palo Alto, California, argued for plaintiff-appellant. With him on the brief were Michael K. Plimack and Hope L. Hudson.

Charlene M. Morrow, Fenwick & West LLP, of Palo Alto, California, argued for defendant-appellee. With her on the brief were William A. Fenwick, Virginia K. DeMarchi, and Douglas B. Luftman. Of counsel was Sean P. DeBruine.

Before MAYER, Chief Judge, LOURIE, Circuit Judge, and BLACK, District Judge.[*]

Opinion of the court filed by Circuit Judge LOURIE. Dissenting opinion filed by Chief Judge MAYER.

LOURIE, Circuit Judge.

Atmel Corporation appeals from the decision of the United States District Court for the Northern District of California granting summary judgment to Information

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Storage Devices, Inc. ("ISD") that claim 1 of Atmel's patent, U.S. Patent 4,511,811, is invalid for indefiniteness. See Atmel Corp. v. Information Storage Devices, Inc., No. C-95-1987-FMS, 1998 WL 184274 (N.D. Cal. Apr. 14, 1998). Because the district court erred by failing to consider the knowledge of one skilled in the art that indicated that the specification disclosed sufficient structure to satisfy 35 U.S.C. § 112, ¶ 2, we reverse and remand.

BACKGROUND

The '811 patent pertains to an improved "charge pump" circuit which is able to boost the voltage applied to, for example, a word line in a memory array during a programming operation without excessive current leakage. Claim 1, the sole claim of the patent, reads as follows:

1. An apparatus for selectively increasing the voltage on one or more of a plurality of conductive lines having inherent distributed capacitance disposed in a semiconductor circuit comprising:

means disposed on said semiconductor circuit for selecting one or more of said conductive lines;

high voltage generating means disposed on said semiconductor circuit for generating a high voltage from a lower voltage power supply connected to said semiconductor circuit;

voltage pulse generating means disposed on said semiconductor circuit for generating voltage pulses;

means for capacitively coupling voltage pulses from said voltage pulse generating means to a voltage node in said semiconductor circuit;

transfer means responsive to said selecting means and connected to said voltage node for transferring increments of charge from said high voltage generating means to the inherent distributed capacitance in selected ones of said conductive lines in response to said voltage pulses;

said transfer means including switching means cooperating with said selecting means for blocking substantially all of the flow of current through and transfer of charge from said high voltage generating means to said conductive lines which are unselected.

'811 patent, col. 8, ll. 17-45 (emphasis added).

In June 1995, Atmel filed a complaint in the district court alleging that ISD was liable for infringement of claim 1. See Atmel Corp. v. Information Storage Devices, Inc., 997 F.Supp. 1210, 1214 (N.D. Cal. 1998). In November 1997, ISD moved for summary judgment that, inter alia, claim 1 was indefinite under § 112, ¶ 2,1 alleging that the specification failed to disclose any structure corresponding to the disputed high-voltage means limitation. See id. ISD further requested that the district court simultaneously consider its motion along with the court's claim construction. See id. After ruling that it would be more efficient to construe the claims before ruling on validity, see id., the court proceeded to construe claim 1.

The district court first held, as a matter of law, that the disputed limitation is expressed in means-plus-function format under 35 U.S.C. § 112, ¶ 6.2 See id. at 1227. Neither party appeals this ruling. The

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court then observed that the portion of the specification that pertains to the structural component of this means-plus-function limitation discloses that:

[T]he present invention may include high-voltage generator circuit 34. Known Circuit techniques are used to implement high-voltage circuit 34. See On-Chip High Voltage Generation in NMOS Integrated Circuits Using an Improved Voltage Multiplier Technique, IEEE Journal of Solid State Circuits, Vol[.] SC-11, No. 3, June 1976 [the "Dickson article"].

'811 patent, col. 4, ll. 56-63. The district court also noted that Figures 2 and 4 of the '811 patent only depict the high-voltage generator circuit as a "black box," see Atmel, 997 F.Supp. at 1227, i.e., they provide no detail as to what electrical components, e.g., transistors, resistors, or capacitors, comprise that circuit.3 The district court then held that, based on the language in the written description set forth above, "the structure corresponding to the high voltage generating means cannot be any circuits beyond those described in the Dickson article." Id. For the district court, the resolution of the case turned on the permissibility of incorporating structures corresponding to the high-voltage means limitation by reference to material not in the specification. The court requested further briefing on this issue prior to ruling on ISD's motion for summary judgment. See id. at 1230.

After receiving this briefing, the court adopted the rule set forth in the version of the Manual of Patent Examining Procedure (MPEP), § 608.01(p), in effect at the time the patent application was filed.4 See Atmel, 1998 WL 184274, at *2-*3. In relevant part, that section states that material "necessary to . . . support the claims" may not be incorporated by reference to a nonpatent publication. MPEP § 608.01(p) (4th ed., Rev. 8, 1981). Interpreting such "essential material" to include the structure corresponding to a means-plus-function limitation, the court concluded that the '811 patent improperly incorporated structure corresponding to the high-voltage means limitation by reference to the Dickson article; accordingly, the district court disregarded the structures disclosed in that publication. See Atmel, 1998 WL 184274, at *3. In view of its prior holding that the structures corresponding to the high-voltage means limitation were limited by the specification itself to those set forth in the Dickson article, see Atmel, 997 F.Supp. at 1227, the court held that the resulting absence of any structure in the specification corresponding to the disputed limitation rendered the claim invalid as indefinite under 35 U.S.C. § 112, ¶ 2. See Atmel, 1998 WL 184274, at *3 (citing In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1884-85 (Fed. Cir. 1997)).

The district court then rejected ISD's argument that it should determine whether the claim was indefinite based on the way the disclosure would be understood by one skilled in the art, not on the "technical form" of the specification. See Atmel, 1998 WL 184274, at *3. In disregarding Atmel's expert testimony in support of its argument, the court concluded that:

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Section 112, ¶ 6 . . . requires that the specification disclose a structure corresponding to the claimed means. A patent holder cannot evade that requirement with a conclusory assertion that one skilled in the art would understand the claimed means despite the failure to disclose a structure. Under In re Dossel, the failure to comply with section 112, ¶ 6 necessarily violates section 112, ¶ 2.

Id. at *4.

Atmel appealed the district court's grant of summary judgment of indefiniteness to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

DISCUSSION

A. Standards of Review

Summary judgment is appropriate when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). We review a district court's grant of summary judgment de novo, reapplying the summary judgment standard. See Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed. Cir. 1994).

"A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." See Personalized Media Communications, LLC v. International Trade Comm'n, 161 F.3d 696, 705, 48 USPQ2d 1880, 1888 (Fed. Cir. 1998). Indefiniteness, therefore, like claim construction, is a question of law that we review de novo. See id. at 702, 48 USPQ2d at 1886; cf. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc) (holding that claim construction is a question of law reviewed de novo).

B. The Understanding of One Skilled in the Art

Citing In re Dossel, Atmel argues that the district court erred in not determining whether the high-voltage means limitation is sufficiently definite under § 112, ¶ 2 based on the way one skilled in the art would understand that limitation in view of the specification. See In re Dossel, 115 F.2d 942, 42 USPQ2d 1881 (Fed. Cir. 1997). ISD responds that the knowledge available to such a person cannot serve as a substitute for adequate disclosure of structure in the specification. We also understand ISD to argue that even if the court failed to apply the proper standard, that error is harmless in view of its assertion of a total absence of structure in the specification corresponding to the high-voltage means limitation.

We agree with Atmel that the district court erred in its analysis under § 112, ¶ 2 and should have determined whether...

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