Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Cioffi v. Google LLC, No. 2018-1049 (Fed. Cir. Apr. 18, 2013), reserving the district court’s determination and holding that the asserted claims were invalid under 35 U.S.C. § 251 because the subject matter of the reissue claims was not disclosed in the original patent.
Cioffi sued Google alleging infringement of four patent claims across three reissue patents related to use of multiple processors or processes in a computer system to prevent malware obtained over a network from accessing certain data stored on the computer. Following a jury trial that found the asserted claims were infringed and not invalid, district court determined that the issue of invalidity under § 251 was for the court to decide instead of the jury. The court then found Google had failed to prove by clear and convincing evidence that the asserted claims were invalid. Google appealed.
The Federal Circuit reversed. When considering the patentability of reissue patent claims, the specification of the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention” meaning “the exact embodiment claimed on reissue [must be] expressly disclosed in the specification.” Google argued that the original patent requirement was not satisfied because there was no clear and unequivocal disclosure in the original patent of an embodiment that comprises two web browser processes. Cioffi pointed to a portion of the specification as alleged support, but admitted that the original patent does not use the claim term “web browser process.”
The Court rejected as overly lenient the district court’s conclusion that “a disclosure of a broad embodiment in the original patent specification would represent a clear and unequivocal disclosure of a narrow embodiment that was not expressly described in the specification, as long as the narrow embodiment was nevertheless encompassed by the broad disclosure.” Rather, the Court held, the original patent requirement “requires more than that a skilled artisan be able to infer that the embodiment claimed on reissue was described in the specification of the original patent. There must be an ‘express disclosure’ of the ‘exact embodiment claimed on reissue.’” Finding no such express disclosure, the Court agreed with Google and held the asserted claims are invalid under the “original patent requirement” of § 251.