Appeal 2007-2127
Reexamination Control No. 90/006,621
the two patents in terms of "multithreaded," and its quoting claim 12 from
the '603 patent containing the terms "threads," "multithreaded," and
"concurrently executable threads," implies that the Federal Circuit expressly
decided that there was support for "multithreading" in the '603 patent and,
therefore, the USPTO is bound by stare decisis from asserting that the 1994
application is not entitled to the priority date of the 1982 application.
These arguments are not persuasive. The Federal Circuit was
reviewing a district court decision granting summary judgment to Microsoft
on the ground that the '603 and '604 patents were invalid for failure to meet
the written description requirement of 35 U.S.C. § 112, first paragraph,
based on the so-called "omitted element test." The district court noted that
"Microsoft's motion only addresses one specific aspect of the written
description requirement (namely, the omitted element test)," Reiffin v.
Microsoft Corp., 48 USPQ2d 1274, 1276 (N.D. Cal. 1998). The Federal
Circuit expressly stated that "[t]he district court did not decide whether the
claims of the '603 and '604 patents are adequately supported by the written
descriptions of the inventions set forth in the specifications of those patents."
Reiffin v. Microsoft, 214 F.3d at 1345, 54 USPQ2d at 1917. The Federal
Circuit further stated:
Microsoft did not dispute, in its motion for summary judgment
or on this appeal, that the descriptive texts of the issued '603 and '604
patents meet the written description requirement as to the claims of
those patents, and the district court did not discuss this issue. Instead,
the district court looked to the specification of Reiffin's 1982
grandparent application for the written description relevant to the
claims of the '603 and '604 patents . . . .
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