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Addition of "No-Charge" Limitation During Prosecution Costs Inventor His Patent

White & Case Technology Newsflash

On December 11, 2013, Judge Susan Illston of the United States District Court for the Northern District of California found the asserted claims of Ho Keung Tse's U.S. Patent No. 6,665,797 (the "'797 patent") invalid for lack of written description as required by 35 U.S.C. § 112, and dismissed his patent infringement suits against a number of defendants. Judge Illston based her ruling on the bedrock principle that "35 U.S.C. § 112 requires that every patent contain a written description of the invention." Slip op. at 5.

On May 30, 2012, Mr. Tse, filed actions alleging both direct and indirect infringement.[1] The '797 patent discloses a method of protecting software from unauthorized use without any external hardware, such as a physical decryption key. The '797 patent's authentication method involves a central software program comprising three sub-programs: (1) a sub-program for providing encrypted identity information (the "EI sub-program"), (2) a sub-program for authenticating a computer (the "AC sub-program"), and (3) a sub-program for authorizing the access or use of the protected software (the "AS sub-program"). The central software program verifies the user's identity by using the EI sub-program, and optionally checks to see if the computer is authorized by using the AC sub-program. Once the checks have been completed, the AS program permits access to the protected software.

Mr. Tse initially filed for a patent on the software protection program on December 1, 1995 (the "parent application") and subsequently filed a continuation-in-part application ("CIP application") on July 9, 1998. Mr. Tse abandoned prosecution of the parent application in 2003, but continued prosecuting the CIP application. To overcome a prior art rejection during the prosecution of the CIP application, Mr. Tse amended the claims in the application to require "access to the protected software be provided without a charge or payment" (the "no-charge limitation"). See '797 Patent Application, Formal Amendment dated Apr. 2, 2001 at 3. On December 16, 2003, the USPTO granted the '797 patent based upon the CIP application.

In 2007, defendants from a previously filed patent infringement suit involving the '797 patent initiated an ex parte reexamination of the '797 patent. During the reexamination proceedings, the USPTO Examiner concluded that the no-charge limitation was wholly unsupported by the parent application and, therefore, claims incorporating the no-charge limitation could not claim priority to the parent application. Mr. Tse appealed and the BPAI affirmed the Examiner's findings and denied Mr. Tse's request for rehearing.

Motion for Summary Judgment due to Lack of Written Description
The defendants filed a motion for summary judgment on the narrow, but dispositive, ground that the no-charge limitation rendered the asserted claims of the '797 patent invalid for lack of written description in either the parent or the CIP application. Mr. Tse responded by arguing that (1) the no-charge limitation was inherently disclosed by the three sub-programs described in the specification and (2) the no-charge limitation was added as a narrowing amendment and, therefore, is necessarily supported by the written description in the application.

On December 11, 2013, Judge Illston granted the motion, finding that the no-charge limitation lacked both express and inherent written support in either the parent or the CIP application. In the opinion, Judge Illston reiterated that "[t]o be valid … 35 U.S.C. § 112 requires that every valid patent contain a written description of the invention. The purpose of this requirement is to 'ensure that the patent applicant was in full possession of the claimed subject matter on the application filing date.'" Slip op. at 5 (quoting TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001)). "The test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Id. (quoting Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)).

Applying the Ariad test to the parent application, Judge Illston agreed with the BPAI's finding that the parent application provided no express written support for the no-charge limitation. Id. at 6. Further, because the CIP application "contains mostly cosmetic changes from the [parent] application … it too fails to provide support sufficient to satisfy the written description requirement in 35 U.S.C. § 112." Id. at 7. Regarding any inherent disclosure of the no-charge limitation, Judge Illston found that the limitation was not "necessary" and that the invention "would function just the same without the limitation." Id. at 9. As such, there was no inherent support for the no-charge limitation. Id. at 10. Finally, Judge Illston rejected the argument that a narrowing amendment is necessarily supported by the original written specification and reiterated that even a narrowing amendment must be actually supported by the specification. Id.

The Court's recent holding is a reminder that all claims of a patent must always be sufficiently supported by the written specification. Further, it cannot be assumed that a narrowing amendment made during prosecution is inherently supported by the original specification. Attacking narrow legal issues that could resolve an entire patent case should be considered by those facing claims of patent infringement.

Tse v. Google, Inc. et al., Case No. 3:13-cv-00194, Dkt. No. 112 (N.D. Cal. Dec. 11, 2013)
Tse v. Blockbuster, LLC, Case No. 3:13-cv-01204, Dkt. No. 51 (N.D. Cal. Dec. 11, 2013)


[1] - In December 2012, the cases were transferred under 28 U.S.C. § 1404(a) to Judge Illston's docket in the Northern District of California, and related for pre-trial purposes. See Tse v. Google, Inc. et al., Case No. 6:12-cv-00356 at Dkt. 52 (E.D. Tex. Dec. 13, 2012); Tse v. Blockbuster, LLC, Case No. 4:12-cv-00328 at Dkt. 24 (E.D. Tex. Mar. 8, 2013).


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