The Harari Cases: Copied Claims Found Unsupported Despite Proper Incorporation of Prior Applications

By Chris Reaves

After a lengthy prosecution led to two interferences over new, copied claims, a Federal Circuit panel reviewed whether the new claims were supported by the old description.  The Circuit found that the application properly incorporated the complete disclosures of two prior applications.  However, it also found, in a limitation on a prior ruling in Baldwin Graphics, that the indefinite article “a” in a “consisting of” clause meant “one and only one” in the specific context of the claim.

Background

Eliyahou Harari and his colleagues filed Patent Application Nos. 07/337,566 (‘566) and 07/337,579 (‘579), and much later, after “a chain of continuations and a divisional,” 09/056,398 (‘398).  The applications claimed various methods for programming computer memory arrays.  ‘398 added claims that it admitted were “substantial copies” or “near exact copies” of those in Patent Nos. 5,619,454, filed by Roger Lee, and 6,426,898 and 6,493,280, filed by Andrei Mihnea.  Nonetheless, as ‘398 was a child application of ‘566, which predated the applications for all three issued patents, it had priority to any supported claims.  The USPTO therefore initiated two interferences, one against the Lee patent and one against the Mihnea patents, before the Board of Patent Appeals and Interferences.

Micron Technology, Inc., party of interest for both Lee and Mihnea, argued that ‘398’s description did not support any of the disputed claims.   The two Board panels both ruled that ‘579 had not been properly incorporated into ‘398, and that certain claims were not supported even by the applications combined.  Both interferences were therefore dismissed.

Harari appealed, and a Federal Circuit panel consisting of Prost, Moore, and O’Malley consolidated the interferences.  While the appeal was pending, Harari v. Hollmer, another Federal Circuit case regarding another child application of ‘566, determined that Harari’s method of identifying ‘579 for incorporation was valid.  Micron conceded the point, but argued that certain key portions of ‘579 were still excluded due to the specific language of ‘398.  Harari, meanwhile, argued that the combined disclosures of the applications supported the new claims.

Ruling 1: Re-Incorporating Content Does Not Limit Earlier Incorporation

The filing of ‘398 included the entire text of ‘566 using a photocopy; ‘566 in turn incorporated ‘579 through the following language: “The disclosures of [‘579] are hereby incorporate[d] by reference.”  However, ‘566 later referred to specific implementations of ‘579 and states: “Relevant portions of the disclosures are hereby incorporated by reference” (emphasis added).  Micron argued that the second incorporation limited the first, but the Circuit agreed with Harari that the “broad and unequivocal language” of the first incorporation controlled, and that the second incorporation could be read merely to return the reader’s attention to specific portions of ‘579.

In the Mihnea interference, the Board had found that some of the claims at issue would be supported with ‘579’s inclusion, a decision Micron did not challenge on appeal.  However, the Board had not addressed the claims with an “offset erase verify bias”.  As the question was complex, the Circuit remanded for further factual determinations.

Ruling 2: Baldwin Rule Is Not Absolute; “A” Can Mean “Just One” In Context

During the Lee interference, the Board construed the independent claim at issue, which had an element of “accessing a bit line”, to cover access of multiple bit lines as well.  In support of this construction on appeal, Harari cited Baldwin Graphics Systems v. Siebert (512 F.3d 1338), where the Circuit construed “a” to mean “one or more” for a “comprising” claim.  However, the Harari panel clarified that Baldwin “does not set a hard and fast rule,” and can be trumped by contrary indications in the claim language or specification.  Here, the claim was a method “comprising … accessing a bit line”; the open-endedness of “comprising” spoke to the steps and not the components that the steps used.  Just as importantly, the claim went on to refer to other elements with the phrase “one or more” – at one point in the same step as “said bit line” – but never used the phrase for the bit line itself.  Therefore, the court concluded that the claim described access of one and only one bit line.

With that established, the Circuit also quickly determined that the written description never disclosed a single bit line “activating a number of memory cells”; it disclosed one line to each cell.  Although Harari argued in the alternative that one disclosed design, using multiple bit lines and a multiplexer, inherently merged the lines into one, the Board panel had found otherwise and the Circuit panel saw no error in this finding.  Therefore, with no written description support for an element of the independent claim at issue, the Circuit upheld the dismissal of the Lee interference in favor of Micron.

Post-Case Analysis

When your prosecution goes long, others might try to “cut in line” and patent the same material, intentionally or otherwise.  One way to penalize this failure to search AppFT is to copy the claims for yourself; you not only block the opposing patents, which are invalid through anticipation regardless, but you gain the benefit of extra claims for your trouble, all using a Board interference instead of the more-expensive and time-consuming court system.  However, this is only valid when there is true overlap of subject matter; otherwise, you’re the thief.

(With the implementation of the America Invents Act, interferences are on their way out, but will still apply to any patents filed before March 16, 2013, so we can expect to see them remain applicable for a decade or so. Additionally, prosecutors will retain the ability to add supported claims through both application amendment and patent reissue, and the new reviews will still provide an alternative form of attack.)

Although the Circuit’s ruling on multiple incorporations allows prosecutors some leeway, it is still sloppy practice to re-use the language of incorporation.  One incorporation of any given reference is sufficient, and if you mean to draw attention to something already incorporated, then say it has been “previously incorporated” instead of repeating yourself.  Regardless, there is little if any reason to incorporate part and only part of an existing reference.  If for some reason you must do so, definitely do not use vague phrasing like “relevant portions of the disclosures”; you do not want a panel deciding for you which portions are “relevant.”

The limit to the Baldwin rule suggests that prosecutors should take one of two strategies: use phrases like “one or more” everywhere or use them nowhere.  This is, of course, nothing but a specific application of an important general rule: be consistent with your language.  We are not writing poetry, and synonyms and phrase variations are not our friends.  If you mean the same thing in two places, use exactly the same phrasing each time, or down the road someone will read meaning into your distinctions.

Also addressed is the distinction, sometimes forgotten, between methods and other claims.  Apparatuses, systems, and compositions “comprise” components, allowing the addition of more, but methods “comprise” steps that describe the interaction of a fixed set of components.  In some cases, you can have a step with a component comprising subcomponents, but other times your best option is to have “one or more” of every component.

The opinion is available at: http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1075-1076.pdf

Oral arguments may be heard at: http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2010-1075.mp3

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