Cioffi v. Google LLC ( 2023 )

Case: 18-1049 Document: 61 Page: 1 Filed: 04/18/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ALFONSO CIOFFI, MELANIE ROZMAN, MEGAN
ROZMAN, MORGAN ROZMAN,
Plaintiffs-Appellees
v.
GOOGLE LLC,
Defendant-Appellant
______________________
2018-1049
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 2:13-cv-00103-JRG, Chief
Judge J. Rodney Gilstrap.
______________________
Decided: April 18, 2023
______________________
CHRISTIAN JOHN HURT, The Davis Firm, PC, Longview,
TX, argued for plaintiffs-appellees. Also represented by
WILLIAM DAVIS; ERIC W. BENISEK, ROBERT MCARTHUR,
Vasquez Benisek & Lindgren, LLP, Walnut Creek, CA.
ANDREW DUFRESNE, Perkins Coie LLP, Madison, WI,
argued for defendant-appellant. Also represented by DAN
L. BAGATELL, Hanover, NH; NATHAN K. KELLEY, Washing-
ton, DC; DAVID ALMELING, MARK LIANG, LUANN LORAINE
Case: 18-1049 Document: 61 Page: 2 Filed: 04/18/2023
2 CIOFFI v. GOOGLE LLC
SIMMONS, DARIN W. SNYDER, O'Melveny & Myers LLP, San
Francisco, CA.
______________________
Before REYNA, BRYSON, and TARANTO, Circuit Judges.
BRYSON, Circuit Judge.
The plaintiffs-appellees (collectively, “Cioffi”) brought
this patent infringement action against defendant-appel-
lant Google LLC, alleging infringement of a total of four
claims across three patents. Following a trial, the jury
found the asserted claims to be infringed and not invalid.
The district court then addressed the question whether the
asserted claims were invalid under 35 U.S.C. § 251 and
held that they were not. We reverse the district court’s de-
termination that the claims were not invalid.
I
A
Cioffi asserted four patent claims against Google in
this case: claim 43 of U.S. Patent No. RE43,500 (“the ’500
patent”); claims 5 and 67 of U.S. Patent No. RE43,528 (“the
’528 patent”); and claim 49 of U.S. Patent No. RE43,529
(“the ’529 patent”). Each of the asserted patents is a reis-
sue patent of U.S. Patent No. 7,484,247 (“the ’247 patent”).
The asserted patents and the ’247 patent are all di-
rected to the use of multiple processors or processes in a
computer system to prevent malware obtained over a net-
work from accessing certain data stored on the computer.
As the specification of the ’247 patent explains, prior art
computer systems would frequently run “a known and
trusted set of programs” concurrently with an “Internet
browser” and other programs such as “Java applets[] or
EXE/COM executables.” ’247 patent, col. 4, ll. 60–65.
Those latter programs, the specification notes, could “pos-
sibly contain[] malware.” Id. at col. 4, ll. 65–66. When the
known and trusted programs share memory and resources
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CIOFFI v. GOOGLE LLC 3
with programs that may contain malware, the malware
may be “capable of corrupting critical files on the shared
memory storage medium.” Id. at col. 6, ll. 56–64.
To address that problem, the ’247 patent discloses “a
means of isolating the network interface program [e.g., a
web browser] from the main computer system such that the
network interface program does not share a common
memory storage area with other programs.” Id. at col. 7, ll.
1–4. In such a system, the specification explains, “malware
programs are rendered unable to automatically corrupt
critical system and user files located on the main memory
storage area.” Id. at col. 7, ll. 9–11.
For purposes of this appeal, claim 49 of the ’529 patent
is generally representative of the asserted claims. Claim
49 depends from claim 36 of the ’529 patent. Those claims
recite:
36. A method of operating a portable computer
based system employing a common operating sys-
tem and configured with a first memory space and
a second protected memory space and at least one
electronic data processor, comprising:
storing at least one system file within the first
memory space;
downloading website content potentially contain-
ing malware from a network of one or more com-
puters using a secure web browser process,
wherein the secure web browser process is config-
ured to execute on the at least one electronic data
processor, and comprises a first web browser pro-
cess and at least one second protected web browser
process, the first web browser process and the at
least one second protected web browser process be-
ing configured to access the website content via the
network of one or more computers;
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4 CIOFFI v. GOOGLE LLC
executing instructions in the first web browser pro-
cess, wherein the first web browser process is con-
figured to access data contained in the first
memory space and to initialize the at least one sec-
ond protected web browser process;
passing data from the first web browser process to
the at least one second protected web browser pro-
cess;
executing instructions in the at least one second
protected web browser process, wherein the at least
one second protected web browser process is config-
ured to access data contained in the second pro-
tected memory space and to execute instructions
from the downloaded website content, wherein the
downloaded website content is capable of accessing
the second protected memory space but is denied
access to the first memory space;
displaying digital content generated by the secure
web browser process;
wherein the secure web browser process is config-
ured such that the at least one system file residing
on the first memory space is protected from corrup-
tion by website content potentially containing mal-
ware downloaded from the network and executing
as part of the at least one second protected web
browser process.
***
49. The method of claim 36 further comprising:
executing instructions from the first web browser
process on a first core of a multi-core processor; and
executing instructions from the at least one second
protected web browser process on a second core of
the multi-core processor.
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CIOFFI v. GOOGLE LLC 5
’529 patent, claims 36, 49. The asserted claims of the ’500
and ’528 patents are similar, although claim 43 of the ’500
patent and claim 67 of the ’528 patent recite a “computer
program product” configured to perform certain steps ra-
ther than a method of operating a computer system.
The specification of the ’247 patent discloses several
embodiments that are relevant to this appeal. Figure 1 of
the ’247 patent depicts a computer system that contains a
first processor (“P1”), a first memory (“M1”), a second pro-
cessor (“P2”), and a second memory (“M2”). ’247 patent, col.
9, ll. 30–47; id. at col. 10, ll. 29–37; id. at Fig. 1. In that
embodiment, P1 can access the data stored in M1 and M2,
while P2 can access only the data stored in M2. Id. at col.
10, ll. 43–58. Additionally, only P2 is used to access the
network. See id. at col. 10, ll. 29–31. That arrangement
has the effect of “isolat[ing]” P1 and M1 from the network
such that malware may not “initiat[e] unwanted intrusions
on [P1].” Id. at col. 10, ll. 40–43.
Figure 2 of the ’247 patent depicts a “process flow” ac-
cording to which the system of Figure 1 operates. Id. at col.
10, ll. 64–66. In that embodiment, a user may open a “pro-
tected process,” such as a web browser program, that exe-
cutes on P2. Id. at col. 11, ll. 2–11. Meanwhile, P1
“receives user interface data,” such as keystrokes, from a
user and passes that data to P2 when the protected process
is active. Id. at col. 11, ll. 17–22. P2 then generates “video
data” from the protected process and passes that data to a
“video processor,” which is separate from P1 and P2. Id. at
col. 11, ll. 27–29; id. at Fig. 1. The video processor then
“interleaves” video data from the processes being executed
on P1 and P2 and transmits that data to a “video display.”
Id. at col. 11, ll. 29–33.
Figure 6 of the ’247 patent depicts another exemplary
process flow for the system shown in Figure 1. In that em-
bodiment, the computer system carries out “an interactive
network process, such as online gaming.” Id. at col. 14, ll.
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6 CIOFFI v. GOOGLE LLC
28–31. The user “initiates an interactive network process”
via P2, and P2 “receives interactive network process status
data from [the] network.” Id. at col. 14, ll. 31–34. Next, P2
“informs [P1] that interactive network process status data
is available.” Id. at col. 14, ll. 34–36. P1 then “retrieves
interactive network process status data from P2” and uses
that data “to update the interactive network process and
update [the] video display.” Id. at col. 14, ll. 36–39. After
that, P1 “passes the updated interactive network process
status data to P2,” which sends that data to the network.
Id. at col. 14, ll. 39–42. The specification adds that P1 may
be configured to accept only “game status information in
the proper format, thereby minimizing the chance” that
malware may be loaded onto P1 or M1. Id. at col. 14, ll.
50–54.
Figure 9 of the ’247 patent discloses a different config-
uration of the computer system that is described in the
specification of that patent. Id. at col. 16, ll. 6–8. In that
configuration, the computer system contains a single pro-
cessor that comprises “multiple processor cores.” Id. at col.
16, ll. 8–12. Alternatively, the specification explains, the
functions carried out by the two processors “may comprise
separate, secure logical processes executing on the same
physical processor.” Id. at col. 16, ll. 22–24. In such a con-
figuration, the first logical process “may comprise execut-
ing instructions necessary to carry out the functions of an
operating system,” or a computer program, “including but
not limited to a word processor.” Id. at col. 16, ll. 24–30.
The second logical process “may comprise executing in-
structions necessary to carry out the functions of a web
browser program . . . [or] an instant messenger program.”
Id. at col. 16, ll. 30–34.
B
This case has come to this court before. After the claim
construction proceedings, the district court held one of the
claims that is no longer at issue in the case to be indefinite,
Case: 18-1049 Document: 61 Page: 7 Filed: 04/18/2023
CIOFFI v. GOOGLE LLC 7
and the parties stipulated to a judgment of non-infringe-
ment of the other asserted claims. Cioffi v. Google, Inc.,
632 F. App’x 1013, 1014 (Fed. Cir. 2015). In the appeal
from that judgment, we reversed the district court’s con-
struction of two claim terms and remanded for further pro-
ceedings. Id. As relevant to this appeal, we construed the
term “web browser process” to mean a “process that can ac-
cess data on websites” either directly or indirectly. Id. at
1018–22.
C
At the trial on remand, Google argued that the asserted
claims were invalid under 35 U.S.C. § 251 because the sub-
ject matter of the reissue claims was not disclosed in the
original patent (in violation of the “original patent” re-
quirement) and reclaimed subject matter surrendered dur-
ing prosecution of the original patent (in violation of the
”rule against recapture”). The jury found that the asserted
claims were infringed and not invalid. J.A. 3922–23.
Google moved for judgment as a matter of law on several
issues, including non-infringement and invalidity under
section 251. J.A. 3905, 3909.
After reviewing Google’s post-trial submissions, the
district court determined that the issue of invalidity under
section 251 was for the court to decide instead of the jury.
J.A. 5634–42. The court then entered an order rejecting
Google’s arguments on that issue, concluding that Google
had failed to prove by clear and convincing evidence that
the asserted claims were invalid under section 251. J.A.
70.
Google argued that the asserted claims did not satisfy
the original patent requirement because the specification
of the ’247 patent did not clearly and unequivocally disclose
an embodiment containing two “web browser processes,” as
recited in the asserted claims. J.A. 3913–14. The district
court disagreed, finding that the disclosure of an embodi-
ment containing “interactive network processes” in the
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8 CIOFFI v. GOOGLE LLC
specification constituted a clear and unequivocal disclosure
of two web browser processes. J.A. 54. In particular, the
district court relied on the testimony of Dr. Hubert Dun-
smore, Cioffi’s expert, who explained that “those skilled in
the art reading Column 14 [of the ’247 patent specification]
would understand that P1 and P2 can refer to two pro-
cesses, both of which are accessing data from the Internet,
which thus meets the Court’s construction of ‘web browser
process.’” J.A. 21.
The district court also held that Google had not shown
that the asserted claims violated the rule against recap-
ture. J.A. 70. In a subsequent order, the court denied the
remainder of Google’s motion for judgment as a matter of
law, including on the issue of non-infringement. J.A. 72–
88. This appeal followed.
II
Google argues that the district court erred in holding
that the asserted claims were not invalid under the original
patent requirement and the rule against recapture. Google
also argues that the district court erred in denying its mo-
tion for judgment as a matter of law that Google did not
infringe the asserted claims. Because we conclude that the
asserted claims are invalid under the original patent re-
quirement, we reach only that issue.
A district court’s determination of validity under 35
U.S.C. § 251 is a question of law that we review de novo.
Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1350–
51 (Fed. Cir. 2019). The legal conclusion regarding compli-
ance with section 251, however, “can involve underlying
questions of fact.” Id. at 1351. For that reason, the court
“may consider expert ‘evidence to ascertain the meaning of
a technical or scientific term or term of art so that the court
may be aided in understanding not what the instruments
mean but what they actually say.’” Id. (quoting U.S. Indus.
Chems. v. Carbide & Carbon Chems. Corp., 315 U.S. 668,
678 (1942)).
Case: 18-1049 Document: 61 Page: 9 Filed: 04/18/2023
CIOFFI v. GOOGLE LLC 9
In 1893, the Supreme Court explained in Corbin Cabi-
net Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42–43 (1893),
that “to warrant new and broader claims in a reissue, such
claims must not be merely suggested or indicated” in the
original patent, “but it must further appear from the origi-
nal patent that they constitute parts or portions of the in-
vention, which were intended or sought to be covered or
secured by such original patent.” In Industrial Chemicals,
the Court expanded on that standard by noting that “[i]t
must appear from the face of the instrument that was it
covered by the reissue was intended to have been covered
and secured by the original.” 315 U.S. at 676. The Court’s
decision in Industrial Chemicals interpreted 35 U.S.C.
§ 64, which provided that reissue patents could be issued
only for “the same invention.” Id. at 670 n.3 (quoting 35
U.S.C. § 64 (1934)). That requirement was referred to as
the “same invention” requirement. Forum, 926 F.3d at
1351.
In 1952, Congress amended the Patent Act to replace
the phrase “the same invention” from section 64 with “the
original patent.” Id.; 35 U.S.C. § 251 (1952). The statutory
language embodying the original patent requirement cur-
rently provides that the Director of the United States Pa-
tent and Trademark Office may grant a reissue patent “for
the invention disclosed in the original patent.” 35 U.S.C.
§ 251(a) (2012).
Despite the change in statutory language enacted by
Congress after the Supreme Court’s decision in Industrial
Chemicals, courts have continued to apply the principles of
Industrial Chemicals when evaluating whether a reissue
claim satisfies the original patent requirement. Antares
Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1360–
61 (Fed. Cir. 2014) (collecting cases). In our recent cases
addressing the original patent requirement, we have held
that in order to satisfy the original patent requirement, the
invention claimed on reissue must be “more than merely
suggest[ed] or indicat[ed]” by the specification of the
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10 CIOFFI v. GOOGLE LLC
original patent. Forum, 926 F.3d at 1351; see also Antares,
771 F.3d at 1362. Instead, we have explained, the specifi-
cation of the original patent “must clearly and unequivo-
cally disclose the newly claimed invention as a separate
invention.” Antares, 771 F.3d at 1362; Forum, 926 F.3d at
1352. That is, we have interpreted the original patent re-
quirement to require that “the exact embodiment claimed
on reissue [be] expressly disclosed in the specification.” An-
tares, 771 F.3d at 1363.
Google argues that the original patent requirement is
not satisfied because there is no clear and unequivocal dis-
closure in the ’247 patent of an embodiment that comprises
two web browser processes. Cioffi responds that the origi-
nal patent requirement is satisfied because the embodi-
ment disclosed in Figure 6 and column 14 of the ’247 patent
represents a clear and unequivocal disclosure of an embod-
iment having two web browser processes. As noted above,
the embodiment depicted in Figure 6 contains an “interac-
tive network process” that includes an exchange of “inter-
active network process status data” between P2 and P1.
’247 patent, col. 14, ll. 28–45.
As Cioffi acknowledges, the specification of the ’247 pa-
tent does not use the claim term “web browser process.”
Appellees’ Br. 24. Nonetheless, Cioffi argues that “web
browsing is clearly within the scope and definition of ‘inter-
active applications’ and thus the ‘interactive network pro-
cess’ disclosed in Figure 6.” Id. at 30. The district court
accepted that general argument, holding that “the ’247 Pa-
tent specification’s ‘interactive network processes’ embodi-
ment encompasses the dual-web-browser process
limitations set forth in the Asserted Claims.” J.A. 54. In
support of its holding, the district court relied on the testi-
mony of Dr. Dunsmore, who testified, in relevant part, as
follows:
Q: Professor Dunsmore, let’s move to [Google’s ex-
pert’s] second argument. Do you agree with
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CIOFFI v. GOOGLE LLC 11
[Google’s expert] that the specification does not dis-
close the use of two web browser processes?
A: No, I do not.
Q: Okay. . . . So, Professor Dunsmore, directing
your attention to Column 14, Lines 28 through 45,
why do you disagree with [Google’s expert] that
there is -- why do you disagree with his position
that there is no disclosure of using two web browser
processes?
A: I disagree because of the things that are in --
highlighted here. Here we have two processors, P1
and P2. And both of them are retrieving data from
the network, and that’s exactly what needs to be
done by the processes of a web browser.
Q: And does P1 and P2 accessing website data
meet the definition -- the Court’s definition of what
a web browser process is?
A: Yes, it does.
Q: So, in your opinion, Professor Dunsmore, does
the [’247] patent specification adequately disclose
use of -- or does it adequately disclose use of a first
and second web browser process?
A: Yes.
J.A. 5044–45.
Dr. Dunsmore’s testimony essentially amounts to an
assertion that a web browser process is a type of interactive
network process because both processes “retriev[e] data
from the network.” J.A. 5045. He did not state, however,
that the terms “interactive network process” and “web
browser process” are synonymous or otherwise equivalent
in meaning. Thus, Dr. Dunsmore’s testimony serves to “as-
sert[] what a person of ordinary skill in the art would pur-
portedly understand” from the specification rather than
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12 CIOFFI v. GOOGLE LLC
what is apparent “from the face of the instrument.” See Fo-
rum, 926 F.3d at 1351–52 (citation omitted). As we ex-
plained in Forum, testimony directed to the former point
“is insufficient to comply with the standard set forth in In-
dustrial Chemicals and Antares.” Id. at 1352.
The district court characterized Dr. Dunsmore’s testi-
mony as explaining what the disclosures in the ’247 patent
specification would “convey to a person of ordinary skill in
the art.” J.A. 52. The court further noted that Dr. Duns-
more’s testimony established (1) that the term “‘interactive
network process’ encompasses web browser processes,” and
(2) that the term “‘interactive network process status data’
encompasses ‘website data.’” Id. But that falls short of
showing that the specification of the ’247 patent clearly and
unequivocally discloses, on its face, the use of two web
browser processes. Instead, it reflects a conclusion that a
skilled artisan would be able to infer that the ’247 patent
specification discloses an embodiment that “encompasses”
the use of two web browser processes. J.A. 54; see also J.A.
53. Under the standard applied by the district court, a dis-
closure of a broad embodiment in the original patent spec-
ification would represent a clear and unequivocal
disclosure of a narrow embodiment that was not expressly
described in the specification, as long as the narrow embod-
iment was nevertheless encompassed by the broad disclo-
sure. That standard is more lenient than the one we have
adopted in our cases applying the original patent require-
ment.
Turning to the ’247 patent specification itself, there are
three related inferences that a skilled artisan would need
to draw from the Figure 6 embodiment to arrive at the em-
bodiments recited in the asserted claims. First, a skilled
artisan would have to conclude that an “interactive net-
work process,” as described in column 14 of the specifica-
tion, includes web browsing. It is true that in the
“Background” section, the specification states that “many
applications[,] such a[s] gaming, messaging, and browsing”
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CIOFFI v. GOOGLE LLC 13
may have an “interactive nature.” ’247 patent, col. 6, ll.
17–18. In the opening discussion of the Figure 6 embodi-
ment, however, the only “interactive network process” that
is expressly disclosed is “online gaming.” Id. at col. 14, ll.
3–45. A skilled artisan would need to infer that the embod-
iment of Figure 6 could be applied to the other types of pro-
grams described in the background section of the
specification.
Second, a skilled artisan would need to infer that the
“interactive network process status data” described in col-
umn 14 of the ’247 patent specification includes website
data. According to Cioffi, one of the web browser processes
recited in the asserted claims is the process running on P1
in the Figure 6 embodiment of the ’247 patent. See Appel-
lees’ Br. 27. As the specification explains, that process “re-
trieves interactive network process status data from P2.”
’247 patent, col. 14, ll. 36–37. In order to fall within the
scope of the claimed “web browser process,” the process
running on P1 must be capable of accessing “website data,”
either directly or indirectly. Cioffi, 632 F. App’x at 1021–
22. In the context of online gaming, the specification sug-
gests that interactive network process status data refers to
“[i]nformation about the current and new state of the game
[that is] exchanged between various users’ computer sys-
tems.” ’247 patent, col. 14, ll. 10–13. The specification does
not expressly indicate that interactive network process sta-
tus data would be equivalent to data available on a website.
A skilled artisan would need to draw the inference that the
interactive network process status data discussed in col-
umn 14 of the ’247 patent specification either includes or
could be replaced with website data.
Third, a skilled artisan would need to an infer that a
web browser process could be executed on P1 in the first
place. Although not expressly disclosed with respect to Fig-
ure 6 of the ’247 patent, web browsers are discussed with
respect to various embodiments of the invention. For ex-
ample, the specification explains that the embodiment
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14 CIOFFI v. GOOGLE LLC
depicted in Figure 2 may be used to run a “protected pro-
cess, such as browsing the internet.” Id. at col. 11, ll. 9–10.
That protected process is described as running on P2. Id.
at col. 11, ll. 4–21. And the specification explains with re-
spect to Figure 9 that “[a] second logical process may com-
prise executing instructions necessary to carry out the
functions of a web browser program,” while disclosing that
other types of processes, such as an “operating system” or
a “word processor,” may operate as a “first logical process.”
Id. at col. 16, ll. 24–32. Notably, however, in neither case
is a web browser, with its associated functions, described
as being executed on P1. Thus, a skilled artisan would
need to infer that it is possible to execute a web browser
process on P1, particularly in view of the specification’s de-
scription of such a process as “protected.” Id. at col. 11, ll.
9–10.
To be sure, the above inferences are ones that might
well be drawn by a skilled artisan after reading the ’247
patent. Dr. Dunsmore testified essentially to that effect,
and the district court found that testimony to be credible.
However, our precedent requires more than that a skilled
artisan be able to infer that the embodiment claimed on
reissue was described in the specification of the original pa-
tent. There must be an “express disclosure” of the “exact
embodiment claimed on reissue.” Antares, 771 F.3d at
1363. An express disclosure of an embodiment containing
two web browser processes “is exactly what was missing
here,” see id., and the asserted claims are therefore invalid
under the original patent requirement of 35 U.S.C. § 251.
Accordingly, we reverse the judgment of the district
court that the asserted claims are not invalid under 35
U.S.C. § 251.
REVERSED