Judges: Prost, Moore (author), O’Malley

[Appealed from Board]

In Harari v. Lee, Nos. 10-1075, -1076 (Fed. Cir. Sept. 1, 2011), the Federal Circuit affirmed the Board’s decision that Eliyahou Harari et al.’s (collectively “Harari”) U.S. Patent Application No. 09/056,398 (“the ’398 application”) had no written description support for the claims-at-issue in a first intereference (“the Lee interference”). The Court also vacated and remanded the Board’s decision that the ’398 application had no written description support for the claims-at-issue in a second interference (“the Mihnea interference”).

Harari’s ’398 application descends through a chain of continuation and divisional applications from U.S. Patent Application No. 07/337,566 (“the ’566 application”). Harari filed the ’398 application as a photocopy of the ’566 application along with claims that were substantial copies of those found in Roger Lee’s U.S. Patent No. 5,619,454 (“the Lee patent”) and Andrei Mihnea’s U.S. Patent Nos. 6,426,898 and 6,493,280 (collectively “the Mihnea patents”). The PTO declared interferences against Lee and Mihnea. In both interferences, Micron Technology, Inc. (“Micron”)—a real party in interest representing Lee and Mihnea—filed threshold motions to dismiss, alleging that Harari’s claims were unpatentable for lack of written description support and that Harari’s ’398 application failed to incorporate U.S. Patent Application No. 07/337,579 (“the ’579 application”) by reference.

The Board agreed, determining that the allegedly incorporated material was instead new matter. Because Harari relied on this material to support the claims-at-issue, the Board held that Harari’s claims lacked written description support. The Board therefore granted Micron’s threshold motions to dismiss and entered judgment of priority against Harari, which Harari appealed.

After the Board entered judgment for Micron, the Federal Circuit decided Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010), which involved another Harari patent application. In Hollmer, the Court held that the same incorporation language at issue in Lee (appeal No. 10-1075) and Mihnea (appeal No. 10-1076) was sufficient to identify the ’579 application. Based on this decision, Micron conceded that the ’579 application had been incorporated, but the parties still dispute how much was incorporated.

On appeal, the Federal Circuit explained that “[w]hether and to what extent a patent application incorporates material by reference is a question of law” that the Court reviews de novo. Slip op. at 6. In making that determination, the standard is “whether one reasonably skilled in the art would understand the application as describing with sufficient particularity the material to be incorporated.” Id.

“When the claim language and specification indicate that ‘a’ means one and only one, it is appropriate to construe it as such even in the context of an open-ended ‘comprising’ claim.” Slip op. at 19-20.

Harari argued that, in Hollmer, the Court held that the entire ’579 application was incorporated by reference. The Court disagreed, explaining that the parties in Hollmer disputed only whether the incorporation language adequately identified the ’579 application and did not address the extent of the incorporation. The Federal Circuit therefore proceeded to address the extent of the incorporation in Lee and Minhea.

The parties’ dispute centered on two passages in the ’398 application. In one passage, the “disclosures” of the ’579 application and another application not at issue were “hereby incorporate[d] by reference.” Id. at 7 (alteration in original) (citation omitted). In a subsequent passage, the “[r]elevant portions of the disclosures” were “hereby incorporated by reference.” Id. (alteration in original) (citation omitted). The Court determined that the first passage incorporated the entire disclosure of the ’579 application. Comparing the two incorporations, the Court pointed out that when the drafter intended only to incorporate specific portions of the disclosures, it did so expressly and that nothing prevents later incorporating the relevant portions of an application for a second time. The Court therefore determined that the ’579 application and the other copending application were incorporated in their entirety into the ’398 application.

Next, the Federal Circuit determined that, even if there was a limited incorporation, all of the sections at issue—a reprogramming feature and an indirect read implementation—are part of the incorporated portions related to optimized erase and optimized write implementations. The Court explained that, although the specification refers to reprogramming as “a different aspect” and “different feature” of the disclosed invention, such language is not dispositive of the inquiry. The Court agreed with Harari that the optimized read and write implementations necessarily include the reprogramming feature, and the feature was therefore incorporated by reference. The Court also agreed with Harari that the indirect read implementation was incorporated as part of the described optimized erase and write implementations.

The Federal Circuit then considered whether the incorporated material provides sufficient written description support for the claims. The Court divided the claims into two categories: those with “offset erase verify bias” and those without. The Board during the Mihnea proceedings had concluded that, even assuming the indirect read implementation was incorporated, Harari could not rely on it to support the erase verify bias claims. The Federal Circuit disagreed, reframing the dispute in Mihnea as whether the ’579 application’s description of margining and biasing a master reference cell relative to a local reference cell provides written description support for the offset erase verify bias claims. The Court remanded this “technical, fact-intensive question” to the Board for further proceedings. Id. at 17.

Turning to Lee, the Federal Circuit reviewed the Board’s decision that the claim-at-issue encompassed accessing more than one bit line to activate multiple memory cells. Micron challenged the Board’s claim construction, arguing that the plain language of the disputed claim requires that multiple memory cells are activated by accessing their control gates and a single bit line. Harari responded that, because “a bit line” means one or more bit lines, the Board’s claim construction was correct.

The Court recognized that Harari’s arguments relied on the Court’s previous holdings that the indefinite article “a” means “‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’”. Id. at 19 (citation omitted). The Court, however, explained that Baldwin does not set a hard and fast rule that “a” always means more than one. Rather, the Court reads the limitation in light of the claim and specification to discern its meaning. Here, the Court observed that the claim recited a method comprising accessing a number of control gates and a bit line to activate a number of cells, and concluded that the plain language indicates that only a single bit line is used when accessing a number of cells. The Court noted that nothing in Harari’s claims suggested that more than one bit line was being accessed and pointed out that the first step expressly distinguishes the singular and plural by reciting “a number of control gates” and “a bit line.” The Court argued that the second step reinforced this interpretation by reciting “said bit line.” The Court then compared these claims to the claims of the Lee patent and observed that Lee also does not consider accessing more than one bit line at a time. Accordingly, the Court concluded that the only correct construction of the term “a bit line” and “said bit line” is that a single bit line activates multiple memory cells.

Finally, the Court turned to whether this construction was supported by written description in the ’579 application. The Court rejected Harari’s argument that the ’579 application discloses electronically connecting multiple bit lines to form one bit line. Specifically, the Court observed that Harari pointed to no part of his disclosure to explain that one can electronically connect multiple bit lines. The Court further pointed out that even if there were disclosure for accessing multiple bit lines with a multiplexer, this is not the same as accessing a single bit line. The Court therefore affirmed the Board’s decision that the claims-at-issue in the Lee interference were unpatentable for lack of written description.