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PowerOasis, Inc. v. T-Mobile USA, Inc.

PowerOasis, Inc. v. T-Mobile USA, Inc.

United States Court of Appeals for the Federal Circuit

April 11, 2008, Decided

2007-1265

Opinion

 [***1386]  [*1301]   MOORE, Circuit Judge.

PowerOasis, Inc. and PowerOasis Networks, LLC (PowerOasis) appeal the United States District Court for the District of New Hampshire's grant of summary judgment that claims 15, 18, 31, 35, 38, 40, and 49 (asserted claims) of U.S. Patent Nos. 6,466,658 ('658 patent) and 6,721,400 ('400 patent) are invalid as anticipated under 35 U.S.C. § 102(b). In reaching its decision, the district court concluded that none of the asserted claims of the two patents were entitled, under 35 U.S.C. § 120, to the benefit of the filing date of PowerOasis's original application because the earlier application did not provide a written description of the invention  [**2] claimed in the asserted patents, as required by 35 U.S.C. § 112. We affirm the grant of summary judgment of invalidity with respect to all asserted claims.

BACKGROUND

The two PowerOasis patents at issue, the '658 patent and the '400 patent (PowerOasis patents), are directed to vending machines that sell telecommunications access. The PowerOasis patents contain virtually identical specifications. The stated purpose of the PowerOasis patents is to provide a "vending machine" that enables a customer to connect a laptop to a telecommunications channel. The '658 and '400 patents list filing dates of November 6, 2001 and October 15, 2002, respectively. The '658 and '400 patents stem from a series of continuation and continuation-in-part applications. The first application in the patent chain (Original Application) was filed on February 6, 1997 and ultimately issued as U.S. Patent No. 5,812,643 ('643 patent). PowerOasis does not assert the '643 patent in this litigation.

PowerOasis filed a continuation application on September 18, 1998 (which was later abandoned), and on June 15, 2000, it filed a continuation-in-part application (2000 CIP Application), which issued as U.S. Patent No. 6,314,169 ('169 patent).  [**3] The '169 patent is not asserted by PowerOasis in this litigation. The 2000 CIP Application added considerable new language to the specification, which the district court characterized as "substantial new matter." PowerOasis, Inc. v. T-Mobile  [*1302]  USA, Inc., No. 05-cv-42-PB, 2007 U.S. Dist. LEXIS 24175, 2007 WL 962937, at *2 (D.N.H. Mar. 30, 2007).

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522 F.3d 1299 *; 2008 U.S. App. LEXIS 7827 **; 86 U.S.P.Q.2D (BNA) 1385 ***

POWEROASIS, INC. and POWEROASIS NETWORKS, LLC, Plaintiffs-Appellants, v. T-MOBILE USA, INC., Defendant-Appellee.

Subsequent History: Rehearing denied by, Rehearing, en banc, denied by PowerOasis, Inc. v. T-Mobile USA, Inc., 2008 U.S. App. LEXIS 18947 (Fed. Cir., Aug. 13, 2008)

Prior History:  [**1] Appeal from the United States District Court for the District of New Hampshire in case no. 05-CV-42, Judge Paul Barbadoro.

PowerOasis, Inc. v. T-Mobile USA, Inc., 2007 U.S. Dist. LEXIS 24175 (D.N.H., 2007)

Disposition: AFFIRMED

CORE TERMS

interface, customer, vending machine, original application, user, patents, filing date, district court, asserted claim, Network, laptop, written description, invention, invalidity, telecommunications, display, summary judgment, disclosure, channel, skilled, specification, effective, prior art, disclose, burden of proof, anticipated, embodiments, connected, infringe, remote

Civil Procedure, Summary Judgment, Entitlement as Matter of Law, Appropriateness, Appellate Review, Standards of Review, Genuine Disputes, Evidence, Burdens of Proof, Allocation, Patent Law, Infringement Actions, Burdens of Proof, Inferences & Presumptions, Presumptions, US Patent & Trademark Office Proceedings, Continuation Applications, General Overview, Specifications, Description Requirement, Standards & Tests, Defenses, Patent Invalidity, Presumption of Validity, Nonobviousness, Elements & Tests, Prior Art, Invention Date & Priority, Priority, Burden Shifting, Clear & Convincing Proof, Definiteness, Precision Standards