Appeal 2007-2127
Reexamination Control No. 90/006,621
decisis arising out of the Federal Circuit's decision in Reiffin v.Microsoft.
Patent Owner relies mostly on the following statement from that case:
The two patents in suit have the same specification, and differ
as to their claims; the '603 patent claims a memory product storing
multithreaded software, and the '604 patent claims a method of
multithreaded operation and a multithreaded system. Claim 12 of
the '603 patent is representative. [Quoting claim 12 to a disk
encoded with a plurality of concurrently executable threads of
instructions constituting a multithreaded computer program.]
[Emphasis added.]
214 F.3d at 1344, 54 USPQ2d at 1916. Patent Owner argues (Br. 22-23):
It is well settled that no amount of extrinsic evidence can
overcome the intrinsic evidence of the definitions set forth in a
specification. The inventor is the lexicographer, not the Patent Office.
The Federal Circuit had before it and considered the specifications of
Patent Owner's 1982 application and his '603 and '604 patents. The
specifications considered by the Federal Circuit included definitions
erroneously rejected by the Examiner. The Federal Circuit described
the invention using Patent Owner's terms, and set forth as
"representative" of the invention a patent claim reciting Patent
Owner's defined terms.
Patent Owner's argument that "[t]he Federal Circuit had it right in
Reiffin v. Microsoft Corp. when it correctly ruled that 'the district court erred
in holding the '603 and '604 claims invalid for failure to comply with the
written description requirement' of 35 U.S.C. § 112, ¶ 1" (Br. 4) implies that
the Federal Circuit expressly found that the '603 and '604 patents met the
written description requirement. Patent Owner's argument that "[t]he
Federal Circuit had before it and considered the specifications of Patent
Owner's 1982 application and his '603 and '604 patents" (Br. 22-23), and that
by its stating that the two patents have the same specification, its describing
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