## United States Court of Appeals for the Federal Circuit

2007-1265

POWEROASIS, INC. and POWEROASIS NETWORKS, LLC, Plaintiffs-Appellants,

v. T-MOBILE USA, INC., Defendant-Appellee. Sibley P. Reppert , Lahive & Cockfield LLP, of Boston, Massachusetts, argued for plaintiffs-appellants. With him on t he brief was William A. Scofield, Jr. William F. Lee , Wilmer Cutler Pickering Ha le and Dorr LLP, of Boston, Massachusetts, argued for defendant-appellee. With him on the brief were David B. Bassett and Amr O. Aly , of New York, New York. Appealed from: United States District C ourt for the District of New Hampshire Judge Paul J. Barbadoro

## United States Court of Appeals for the Federal Circuit

2007-1265

POWEROASIS, INC. and POWEROASIS NETWORKS, LLC, Plaintiffs-Appellants,

v. T-MOBILE USA, INC., Defendant-Appellee.

Appeal from the United States District Court for the District of New Hampshire in case no. 05-CV-42, Judge Paul Barbadoro.

______________________________ DECIDED: April 11, 2008

______________________________ Before NEWMAN, SCHALL, and MOORE, Circuit Judges

. MOORE, Circuit Judge

. PowerOasis, Inc. and PowerOasis Netw orks, LLC (PowerOasis) appeal the United States District Court for the Distric t of New Hampshire’s grant of summary judgment that claims 15, 18, 31, 35, 38, 40, and 49 (assert ed claims) of U.S. Patent Nos. 6,466,658 (’658 patent) and 6,721,400 (’400 patent) ar e 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 wr itten description of the invent ion claimed in the asserted patents, as required by 35 U.S. C. § 112. We affirm the grant of summary judgment ofinvalidity 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 vendi ng machines that sell telecommunications access. The PowerOasis patents contain virt ually 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 teleco mmunications channel. The ’658 and ’400 patents list filing dates of November 6, 20 01 and October 15, 2002, respectively. The ’658 and ’400 patents st em from a series of continuation and continuation-in-part applications. The first application in the pat ent chain (Original Appl ication) 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 applicat ion on September 18, 1998 (which was later abandoned), and on June 15, 2000, it filed a continuation- in-part application (2000 CIP Application), which iss ued as U.S. Patent No. 6,314, 169 (’169 patent). The ’169 patent is not asserted by PowerOasis in th is litigation. The 2000 CIP Application added considerable new language to the specification, which the district court characterized as “substantial new matter.” PowerOas is, Inc. v. T-Mobile USA, Inc. , No. 05-cv-42-PB, 2007 WL 962937, at *2 (D.N.H. Mar. 30, 2007). PowerOasis subsequently filed the two applic ations that led directly to the two patents asserted in this suit: first the ’ 658 patent, then the ’400 patent. PowerOasis sued T-Mobile for patent infringement alle ging that T-Mobile’s wireless “HotSpot

2007-1265 2Network” 1 infringes claims 15, 18, 31, 35, 38, 40, and 49 of both PowerOasis patents. Each of the asserted claims depends from i ndependent claim 1, whic h is not asserted by PowerOasis. Except for minor variations in the language of th e independent claims that do not relate to the issues on appeal , the language of the asserted claims is identical in both PowerOasis pat ents. Independent claim 1 recites: 1. A vending machine for vending te lecommunications channel access to a customer, said vending machine comprising: a payment mechanism for obtaining information from the customer to initiate a vending transaction; a customer interface for indicating the stat us of said vending machine; an electronic circuit for determining when the vending transaction is completed; a telecommunications channel a ccess circuit adapted to be connected to at least one external telecommunications channel for enabling access to the at least one external telecommunications channel at the beginning of a vending transaction and disabling access at the end of the vending transaction; a telecommunications channel acce ss connector connected to said telecommunications channel a ccess circuit for enabling connection to an external tele communications device of the customer; and a control unit having a device for receiving payment information from the customer and for controlling said electronic circuit and said telecommunications channel access circuit. The parties had agreed that “customer inte rface” is “an interface that enables information to be passed between a human user and hardware or software components of a system,” but disagreed about the location of the customer interface. PowerOasis argued that the “customer interface” may o ccur on a customer’s laptop. T-Mobile

1 The relevant features of the T-M obile HotSpot Networ k are undisputed. Unlike a stand-alone vending machine that vends telecommunications access, the TMobile HotSpot Network consists of se veral main components that are geographically distributed throughout t he United States. These comp onents work together to enable

2007-1265 3argued that the customer interface must be located on the vending machine itself. Relying entirely on new langu age added to the 2000 CIP application, the district court adopted PowerOasis’s proposed c onstruction that the claim term “customer interface” encompasses an interface that is lo cated on the customer’s laptop. In light of the district court’s constructi on of “customer interface,” T-Mobile filed a motion for summary judgment that the asserted claims were anticipated by the MobileStar Network. It is und isputed that prior to June 15 , 1999, MobileStar Networks, Inc. (a company acquired by T-Mobile in 2002) developed, deployed, publicly used, and offered for sale the MobileSt ar Network, which was a hi gh-speed wireless data network that connected users to the Internet. It is al so undisputed that prior to June 15, 1999, the MobileStar Network contai ned all of the same features that form the basis of PowerOasis’s allegation that the T-Mobile HotSpot Networ k infringes its patents. TMobile argued, therefor e, that this public use, sale, and offer for sale more than one year prior to the June 15, 2000 f iling date of the 2000 CIP Application 2 constituted § 102(b) prior art which anticipated the PowerOasis patent s. 35 U.S.C. § 102(b). PowerOasis responded by claiming its asserted claims should have the benefit of priority going all the way back to the filing date of its Orig inal Application (February 6, 1997) which would antedate the MobileStar Network. On summary judgment, the district cour t determined that the asserted claims were not entitled to the priority date of t he Original Application because the written description of the Original Application did not support the later issued claims. The

users to access Internet services. Mult iple users can simultaneously access the TMobile HotSpot Network. 2 T-Mobile does not di spute that the ’ 658 and ’400 patent s are at least

2007-1265 4district court noted that, to arrive at the broad construction it accorded the “customer interface,” it relied “exclusively” on the new matter that was added to the 2000 CIP Application. PowerOasis , 2007 WL 962937, at *8. Because the district court concluded that the ’658 and ’400 patents ar e not entitled to the effective filing date of the Original Application, the district c ourt granted the motion for summary judgment of invalidity. This appeal followed. DISCUSSION We review the grant of summary judgment de novo . LiebeI-Flarsheim Co. v. Medrad, Inc. , 481 F.3d 1371, 1377 (Fed. Cir. 2007) . Summary judgment is not appropriate if the disput e about a material fact is “genuine, ” that is, if the evidence is such that a reasonable jury could return a ve rdict for the non-moving party. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986). PowerOasis appeals two aspects of t he district court’s summary judgment determination. First, PowerOas is argues that the district c ourt erred when it placed the burden of proof on PowerOasis to show that it is entitled to the priority date of the Original Application. Second, PowerOasis argues that the dist rict court erred in concluding that the disclosure of the Orig inal Application does not provide a written description adequate to support t he asserted claims of the ’ 658 and ’400 patents. See 35 U.S.C. § 112 ¶ 1. PowerOasis contends that, at a minimum, there is a genuine issue of material fact which prevent s summary judgment of invalidi ty. We consider each issue in turn.

entitled to the effective filing date of the 2000 CIP Application, June 15, 2000.

2007-1265 5I. Burden of Proof It is well established that a patent is presumed valid, and “the burden of persuasion to the contrary is and remains on the party asserting invalidity.” Ralston Purina Co. v. Far-Mar-Co, Inc. , 772 F.2d 1570, 1573 (Fed. Cir. 1985). The district court acknowledged a challenged patent is entitled to a pres umption of validity, but questioned whether the presumption of validity extends to the question of priority. The district court concluded that “when a dispute arises concerning whether a CIP patent is entitled to priority to the date of the original application and the Pa tent Office has not addressed the issue, the burden of proof ordinarily should rest with the party claiming priority to the date of the or iginal applicatio n.” PowerOasis , 2007 WL 962937, at *8. Accordingly, the district court held that Powe rOasis had the burden of proving that it is entitled to claim priority to the filing date of the Original Application. Id. PowerOasis contends that the party asse rting invalidity must always bear the burden of proof as to whether cl aims in a patent application are entitled to the priority date of a parent application. PowerOasis relies on this court’s decision in Ralston for support of its position that the party atta cking validity bears the burden to show that claims stemming from a CIP a pplication are not entitled to an earlier filing date. In short, PowerOasis argues the presumption of validity should include a presumption that claims in a CIP are all entitled to the earliest effective filing date. 3 In Ralston , both the

3 A “CIP” application is a continuat ion-in-part application containing a portion or all of the disclosure of an ear lier application together with added matter not present in that earlier applicat ion. Transco Prods., Inc. v. Performance Contracting, Inc. , 38 F.3d 551, 555 (Fed. Cir. 1994) (citing M. P.E.P. § 201.08). While the PTO has noted that the expressions “continuation,” “divisional,” and “continuation-in-part” are merely terms used for administrative convenience, id. , the quintessential difference

2007-1265 6U.S. Patent and Trademark Office (PTO) and the Board of Patent Appeals and Interferences (Board) made a priority dete rmination. Ralston Purina Co. v. Far-MarCo, Inc. , 586 F. Supp. 1176, 1189, 1212 (D. Kan. 1984). Ralston involved an appeal related to U.S. Patent No. 3,940,495, whic h issued from a continuation of application Serial No. 600,471, filed De cember 9, 1966 (1966 CIP application), which was a continuation-in-part of application Serial No. 381,853, filed July 10, 1964. Id. at 1185. In Ralston , the 1966 CIP application had been the subject of an interference, which awarded the inventor the benefit of his earliest application in a detailed opinion by the Board. Id. at 1189, 1213. The dist rict court in Ralston properly accorded deference to the Board’s decision on priority. See id. at 1213. Additionally, the § 102(a) prior ar t on which the defendant in Ralston relied was brought to the attention of the examiner duri ng prosecution. See id. at 1212. “When an attacker simply goes over the same ground travelled [sic] by the PTO, part of the burden is to show that the PTO was wrong in its decision to grant the patent.” Am. Hoist & Derrick Co. v. Sowa & Sons , 725 F.2d 1350, 1360 (Fed. Cir. 1984) (emphasis in original). This c ourt has explained that: When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assum ed to have some expertise in interpreting the references and to be familiar from their wo rk with the level of skill in the art and whose duty it is to i ssue only valid patents. Id. at 1359. In Ralston , accordingly, the defendant had t he added burden of overcoming the deference due to the PTO.

between a continuation and a continuation-in- part is the addition of new matter.

2007-1265 7In contrast to Ralston , in this case, the PTO did not, at any point, make any determination with regard to the priority date of the various claims of the asserted patents. There was no interference in this case related to the asserted patents or the 2000 CIP Application that awar ded PowerOasis the benefit of priority for its Original Application nor was there any determination of priority duri ng prosecution incident to a rejection. The MobileStar Ne twork prior art was never consi dered by the examiner. In fact, in this case the PTO did not make a determination r egarding the priority date for the asserted claims with respect to any reference. In the absence of an interference or re jection which would require the PTO to make a determination of priority, the PTO does not make such find ings as a matter of course in prosecution. 4 The PTO’s own procedures i ndicate that examiners do not make priority determinations except where necessary: Unless the filing date of the earlier non provisional application is actually needed, for example, in the case of an interference or to overcome a reference, there is no need for the Offi ce to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion for all of the earlier nonprovisiona l application is repeated in the second application in a continuation-in-part.

Generally, a CIP adds new matter on which at least one claim reli es for support. 4 Determining the effective filing dat e each claim in a CIP application is entitled to can be quite comple x. Since CIPs generally add new matter, the claims may be fully supported by the paren t application or they may rely on the new matter for support. See Michael J. Meurer & Cr aig Allen Nard, Invention, Refinement and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents , 93 Geo. L.J. 1947, 2012 n.24 (2005) (noting “[u]nder the new matter doctrine, revisions to the written description that occur after an application is filed may jeopardize the priority date derived from that application”). In fact, a CIP could contain different claims entitled to receive different effective fili ng dates in the same patent. There would be no reason for the PTO to undertake what could be a very ti me consuming written description analysis simply to pronounce the effective filing date of each claim, absent some dispute over it during prosecution.

2007-1265 8M.P.E.P., Seventh Ed. (July 1998), at § 2 01.08. When neither t he PTO nor the Board has previously considered priori ty, there is simply no reason to presume that claims in a CIP application are entitled to t he effective filing date of an earlier filed application. Since the PTO did not make a determination r egarding priority, there is no finding for the district court to defer to. Of course, the fact that the MobileStar Network prior art was never before the PTO does not change the presum ption of validity or who ha s the burden of proof with respect to the prima facie case of invalidity. See Am. Hoist , 725 F.2d at 1360. T-Mobile, the party asserting invalidity, must still show by clear and convincing evidence that the asserted patent is invalid. Once it has established a prima facie case of invalidity and its burden is met, “the party re lying on validity is then obligated to come forward with evidence to the contrary.” Ralston , 772 F.2d at 1573. T-Mobile established its prima facie case of invalidity with respect to the asserted claims. It is undisputed that the MobileStar Network was in public use more than one year prior to the June 15, 2000 fi ling date of the CIP Application. PowerOasis conceded that the MobileStar Network wo uld infringe the claims of t he ’658 and ’400 patents if it were in operation today. “[T]hat which would literally infringe if later in time anticipates if earlier.” Schering Corp. v. Geneva Pharms., Inc. , 339 F.3d 1373, 1379 (Fed. Cir. 2003) (internal citation omitted). Accordingly, PowerOasis has conceded that unless the asserted claims are accorded an earlier filing date than the 2000 CIP Application, the MobileStar Network is § 102(b) prior art. Once T-Mobile established by clear and convincing evidence that the Mo bileStar Network wa s § 102(b) prior art to the asserted claims of the ’658 and ’ 400 patents, the burden was on PowerOasis to come forward

2007-1265 9with evidence to the contrary. The district court therefore correctly placed the burden on PowerOasis to come forward with evidence to prove entitlement to claim priority to an earlier filing date. II. Written Description Requirement Application of the written description requirement is central to the resolution of this appeal. “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu , 66 F.3d 292, 297 (Fed. Cir. 1995); see also Augustine Med., Inc. v. Gaymar Indus., Inc. , 181 F.3d 1291, 1302-03 (Fed. Cir. 1 999) (“Different claims of [a CIP] application may therefore receive di fferent effective filing dates. . . . Subject matter that arises for the first time in [a] CIP application does not re ceive the benefit of the filing date of the parent application.”). To satisfy the written description requi rement the disclosure of the prior application must “convey with re asonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] wa s in possession of the invention .” Vas-Cath Inc. v. Mahurkar , 935 F.2d 1555, 1563-64 (Fed. Ci r. 1991) (emphasis in orig inal). While a prior application need not contain precisely the same words as are found in the asserted claims, see Eiselstein v. Frank , 52 F.3d 1035, 1038 (Fed. Cir. 1995); Purdue Pharma LP v. Faulding Inc. , 230 F.3d 1320, 1323 (Fed. Cir. 2000) (holding that the disclosure does not have to provide in haec verba support in order to sati sfy the written description requirement), the prior application must indica te to a person skilled in the art that the inventor was “in possession” of the in vention as later claimed. Ralston , 772 F.2d at

2007-1265 101575; see also Janice M. Mueller, Patent Misu se Through the Capt ure of Industry Standards , 17 Berkeley Tech. L.J. 623, 638 (2002) (“The [written description] requirement operates as a timing mechanism to ensure fair play in the presentation of claims after the original filing date and to guard against manipulation of that process by the patent applicant.”). “Entitlement to a filing date doe s not extend to subject matter which is not disclosed, but would be obvious ov er what is expressly disclosed.” In re Huston , 308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoti ng Lockwood v. Am. Airlines, Inc. , 107 F.3d 1565, 1571-72 (Fed. Cir . 1997)). In Lockwood , we held: While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted fr om the vantage point of on e skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obv ious variant of that which is disclosed in the specification. Rat her, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inv entor invented the claimed invention as of the filing date sought. 107 F.3d at 1572. We have explained that to satisfy the written description requirement, “the missing descripti ve matter must necessarily be present in the [original] application’s specification su ch that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc. , 156 F.3d 1154, 1159 (Fed. Cir. 1998); see also Martin v. Mayer , 823 F.2d 500, 505 (Fed. Cir. 1987) (hol ding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclos ure. . . . Rather, it is a question whether the applicati on necessarily discloses that particular device”) (emphasis in original). This requires that the written description actually or inherently disclose the claim element. See Turbo Care Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co. , 264 F.3d 1111, 1118-20 (Fed. Cir . 2001) (holding that to

2007-1265 11comply with the written description require ment the location of the spring must be actually or inherently disclos ed; that the location may be obv ious from the disclosure is not enough); Tronzo , 156 F.3d at 1159 (holding a claim invalid for failure to satisfy the written description requirement when the specif ication did not disclose all cup shapes literally or “inherently”). Co mpliance with the written de scription requirement is a question of fact but is amenable to summa ry judgment in cases where no reasonable fact finder could return a verdic t for the non-moving party. See Invitrogen Corp. v. Clontech Labs., Inc. , 429 F.3d 1052, 1072-73 (Fed. Cir. 2005). Entitlement to the filing dat e of the Original Application would allow PowerOasis to antedate MobileStar Network, thereby remo ving it as a reference against the claims. The only evidence PowerOasis came forward with to antedate the MobileStar Network was the Original Application and the declaration of its expert witness. The district court analyzed both the Original Application and the declaration of PowerOasis’s expert witness, and held that the asserted claims of the ’658 and ’400 pat ents are only entitled to the filing date of the 2000 CIP Application because PowerO asis did not prove it was “in possession” of the claimed invention when it filed its Origi nal Application. In this case, the district court’s determi nation that the Original Application does not provide a written description of “custome r interface” as set forth in the asserted claims is correct. The Original Applicatio n described a vending machine with a “display” or “user interface” as part of the vending machine, rather than a vending machine with a “customer interface” located on a cust omer’s electronic device. The 2000 CIP Application added language describing a vending machine with a user interface located remotely from the vending machine, such as on a user’s laptop, as shown by the

2007-1265 12relevant new specification langua ge underlined in the passages below: 5 The microprocessor also communicate s with the customer via a user interface to provide details on the progress of the transaction. The user interface is not particularly limit ed and need not even include a visual display on the vending machine. ’169 patent col.2 l.66 – col.3 l.3. Once attached and initiated, the cust omer can monitor the state of the vending machine and the transaction vi a the user interface. The user interface may be a visual display or some other type of progress indicator such as an auditory signal. For ex ample, the vending machine could instruct or inform the user via an audi o speaker. Alternatively, the user interface can be present inside or uploaded to the user’s laptop or other device thereby obviating the need fo r an interface within the vending machine unit. Similarly, the use of a card access system which prevents usage by ejecting the user’s card would also obviate the need for a visual or aural interface. Id. at col.6 ll.7-19. Another object of this invention is portability. Using an internal power source and wireless telecommunication s channels, this invention is not limited to a fixed location. In this configuration, the invention could be used at fairs, outdoor concerts and similar sites where permanent installations are not cost effective. In these cases, it might be more cost effective to have one control unit oper ating multiple vending machines. These multiple vending machines ma y be arranged in the form of a kiosk to allow multiple customers access to the vending machine at the same time. Similarly, almost any combi nation of functional components of the vending machine could be moved to a location remote from the machine. This could be accomplished, for exam ple, by networking a cluster of machines to a server either on site or at a remote location. Id. at col.4 ll.17-31. The 2000 CIP Application also substituted the term “customer interface” for the claim term “display” in claim 1 and added several independent claims di sclosing a “vending machine” with component parts “located re mote from said vending machine.” The district court stated that it “cannot find a single reference in the written description which suggests that PowerOasis understood its invention to include the new matter that it claimed fo r the first time in the CI P Application.” PowerOasis , 2007

5 Other new matter not relevant to t he customer interface was also added. See, e.g. , ’169 patent col.2 ll.46-55; id. at col.3 ll.13-18; id. at col.10 ll.54-60; id. at

2007-1265 13WL 962937, at *9. We agree. All of the references from the Original Application that PowerOasis identifies as allegedly providing written description support for the later-issued claims are to a “user interface” that is part of a uni tary vending machine. All of the Original App lication’s embodiments that include the user interface describe a physical display that is a part of the vending machine. As shown in Figure 2, “[t]he customer sees an oper ating panel 101 with a user interface 110 comprising two lights referred to as READY and AVAILABL E.” ’643 patent col.6 ll.27-29.

“[I]n the preferred embodiment of Fig. 2, the user interface [110] consists of two lights which turn on and off in particular patterns to inform the customer as to how the transaction is processing.” Id. at col.6 ll.59-63. The only depiction of the user interface 110 is depicted as part of the vending machine. “When the customer first approaches the vending machine 10 0 , the READY light is on.” Id. at col.6 ll.35-36 (emphasis added).

col.14 l.55 – col.15 l.7; figs.10-12.

2007-1265 14PowerOasis argues that the user interf ace “could take any number of possible forms.” Appellant Br. 24. To be sure, the specification describes other embodiments for the user interface. For example, “thes e lights may be replaced or augmented by a video display unit (VDU) which provides more detailed instruction to the customer on vending machine operation and detailed informa tion on the progress of the transaction including accumulated charges.” ’643 pat ent col.6 ll.63-67. The VDU “could be combined with a keyboard or ot her push-buttons that would allow the customer to set the language for the display, the connectors to be activated and, optionally, when to terminate the transaction.” Id. at col.7 ll.1-5. In other em bodiments, “the user interface includes a printer or similar device to provide the customer with a receipt for the transaction.” Id. at col.7 ll.8-10. While the Origi nal Application discloses multiple embodiments of the “user interface,” all such embodiments make the user interface part of the unitary vending machine apparatus. There is simply no disclosure in the Original Application of a user interface that is ei ther located on a custom er’s laptop or even separate from the vending machine itself. Indeed, although Figure 5 of the Original Application depicts a lapt op hooked up to the vending machine, the fi gure shows that the user interf ace is clearly located on the vending machine and not the laptop.

2007-1265 15Id. at fig.5. In Figure 5 of t he Original Applicati on, a laptop computer is connected to the operating panel of the vending machine (501), which is mounted on the wall. The “user interface” is represented by the video disp lay unit (510), which is located on the operating panel of the vending machine (502) and not on the laptop. Therefore, we agree with the district court that the Origin al Application did not contain support for a “customer interface” located on the customer ’s laptop, which was the claim construction urged by PowerOasis and adopted by the district court. This broad construction is supported only by the material added in the 2000 CIP Application. In fact, PowerOasis cited onl y to language first introduced in the 2000 CIP Application to support this broad construction: (1) “The user interface is not particu larly limited and need not even include a visual display on the vending machine.” ’658 patent col.3 ll.3-5 and ’400 patent col.3 ll.7-9; (2) “Alternatively, the user interfac e can be present in side or uploaded to the user’s laptop thereby obviating the need for an interface within the vending machine unit.” ’658 patent col.6 ll.15-18 and ’400 patent col.6 ll.20-23; and (3) “[A]lmost any combination of functional components of the vending

2007-1265 16machine could be moved to a location remote from the machine.” ’658 patent col.4 l.30 and ’ 400 patent col.4 l.33. Because none of this support was present in the Original Applicat ion and because the Original Application did not disclose a customer interf ace apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application filing date of June 15, 2000. Since it is undisputed that the MobileStar Network was in public use more than one year prior to this date , the asserted claims are invalid. Further, we agree with the district cour t that PowerOasis’s conclusory expert declaration was not sufficient to raise a genui ne issue of material fact regarding whether the Original Application disclosed to one skill ed in the art a custom er interface located on a customer laptop. The district court determined, and we agree, that Mr. Morley does not cite in a persuasive way any supporting references in the Original Application. He does not demonstrate how, at the time of t he filing date of the Or iginal Application, PowerOasis was in possession of the claim ed invention, which uses a customer’s electronic device (e.g., a laptop) to achieve t he customer interface. He does not show anywhere in the Original Application wher e a customer interface is located on a customer’s laptop either expr essly or inherently. His declaration points to figures and discussions of the user interface in the Origin al Application, each of which is to a user interface on the vending machine. He goes on to say it is “well known to those of ordinary skill as of Fe bruary 6, 1997, that t he functionality of providing information to a customer via a user interfac e can be provided by displayi ng information on a computer screen, such as on a portable computer of t he type referred to in the ’643 patent when that computer is connected to a network of other components and co mputers.” This is not a claim that use of a cu stomer laptop as the customer interface is necessarily

2007-1265 17disclosed by the Original Applic ation. At best, this is a statement that it would be obvious to substitute a customer laptop fo r the user interface disclosed on the vending machine. Obviousness simply is not enough; the subject matter must be disclosed to establish possession. See Turbo Care , 264 F.3d at 1119; Tronzo , 156 F.3d at 1159; Lockwood , 107 F.3d at 1571-72. Theref ore, the declaration by PowerOasis’s expert does not raise a genuine issue of material fa ct over whether the Original Application established that the inventor possessed the in vention as later claimed, which includes a customer interface located on a customer laptop apart from the vending machine. Finally, despite the fact t hat the district court adopted the very construction urged by PowerOasis for “customer interface” on appeal, PowerOasis argues that a different construction ought to be used for validity purpos es. PowerOasis’s argument boils down to a claim that PowerOasis is entitled to a broad claim construction for purposes of infringement and a different narrower claim construction for purposes of validity. See Oral Arg. at 6:56-8:01, available at http://www.cafc.uscourts.gov/oralarguments/ mp3/2007-1265.mp3; Appella nt Brief at 18- 24. PowerOasis contends t hat as long as the claim term “customer interface” was supported by the Original Appl ication then the claims are ent itled to the effective filing date of the Original Applicati on. However, the construction of “customer interface” that must be supported by the written descripti on of the Original Application is the construction given by the district court for the term as used in the ’658 and ’400 patents. That the Original Applicat ion may support a narrower construction of “customer interface” as a display on the vending mach ine does not mean that the Original Application supports the broader construction of a “customer interface” as an interface

2007-1265 182007-1265 19 located on the customer’s lapt op (remote from the vending ma chine). “[T]he invention is, for purposes of the ‘written descripti on’ inquiry, whatever is now claimed .” Vas-Cath , 935 F.2d at 1564 (emphasis in original). Sinc e the Original Application does not support a “customer interface” on a customer laptop, the asserted claims are not entitled to the effective filing date of the Original Application. Because the asserted claims are limited to the filing date of the CIP Application, June 15, 2000, they are anticipated by the MobileStar Network. CONCLUSION The district court correctly held that t here is no genuine issue of material fact regarding the asserted claims being anticipated. We therefore affirm the district court’s summary judgment of invalidity of claims 15 , 18, 31, 35, 38, 40, and 49 of the ’658 and ’400 patents. AFFIRMED