Appeal 2007-2127
Reexamination Control No. 90/006,621
Id. at 1346, 54 USPQ2d at 1917. Thus, the Federal Circuit did not decide
that the '603 and '604 patents satisfy the written description requirement for
"multithreading," as implied by Patent Owner, but only held that the district
court erred in deciding that there was no written description in those patents
based on the 1982 application, when the 1982 application was not relied on.
The fact that the Federal Circuit used the term "multithreading" does not
mean that it had decided that there was written description for the term. The
doctrine of "stare decisis" is totally inapplicable in this situation.
Patent Owner's second point (apparently) is that the definition of
"multithreading" in the 1990 application is intrinsic evidence of support in
the 1990 application, which cannot be overcome with extrinsic evidence.
Since the issue is priority, we assume Patent Owner is not talking about
written description in the 1994 application.
There are several responses to this argument. First, the definitions of
"threads" and "multithreading" in the '603 patent are not part of the original
1990 disclosure, but were added by amendment after the filing date; they are
not intrinsic evidence in the original specification. See Phillips v. AWH,
415 F.3d at 1313, 75 USPQ2d at 1326 ("the ordinary and customary
meaning of a claim term is the meaning that the term would have to a person
of ordinary skill in the art in question at the time of the invention, i.e., as of
the effective filing date of the patent application"). Second, Patent Owner
admitted during prosecution of the 1990 application that the terms "threads"
and "multithreading" have their ordinary meaning in the art, and referred to
extrinsic sources of dictionaries and treatises, thus expressly bringing
extrinsic evidence of the meanings within the realm of prosecution history
intrinsic evidence. Third, by stating that terms have their ordinary meaning
86
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