Cioffi v. Google LLC

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NOTE: This disposition is nonprecedential.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

Case: 18-1049 Document: 61 Page: 3 Filed: 04/18/2023

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;

Case: 18-1049 Document: 61 Page: 4 Filed: 04/18/2023

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.

Case: 18-1049 Document: 61 Page: 5 Filed: 04/18/2023

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.

Case: 18-1049 Document: 61 Page: 6 Filed: 04/18/2023

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

Case: 18-1049 Document: 61 Page: 8 Filed: 04/18/2023

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

Case: 18-1049 Document: 61 Page: 10 Filed: 04/18/2023

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

Case: 18-1049 Document: 61 Page: 11 Filed: 04/18/2023

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

Case: 18-1049 Document: 61 Page: 12 Filed: 04/18/2023

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”

Case: 18-1049 Document: 61 Page: 13 Filed: 04/18/2023

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

Case: 18-1049 Document: 61 Page: 14 Filed: 04/18/2023

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