1 PowerOasis, Inc. licenses the patents in suit from

PowerOasis Networks, LLC. Both companies have sued T-Mobile. I

refer to plaintiffs collectively as “PowerOasis.” 

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW HAMPSHIRE

PowerOasis, Inc. and

PowerOasis Networks, LLC

v. Case No. 05-cv-42-PB

Opinion No. 2007 DNH 042

T-Mobile USA, Inc.

MEMORANDUM AND ORDER

PowerOasis1 has several patents for a “Power and

Telecommunications Access Vending Machine.” It has sued T-Mobile

USA, Inc. for patent infringement, claiming that T-Mobile’s

wireless “HotSpot Network” infringes several claims in two of the

patents. 

T-Mobile has responded with a motion for summary judgment

arguing that the claims in suit are invalid. Because I determine

that the claims PowerOasis relies on were anticipated by a 

wireless data network operated by T-Mobile’s predecessor, I grant

T-Mobile’s motion for summary judgment.

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 1 of 29
2 I cite to the ‘400 patent where the ‘400 and ‘658 patents

do not differ in substance.

-2-

I. BACKGROUND

A. The Patents In Suit

The patents in suit are U.S. Patents Nos. 6,466,658 (“ ‘658

patent”) and 6,721,400 (“ ‘400 patent”). They disclose

inventions designed to support “the operation of computers and

other electrical and electronic devices while [their owners are]

traveling away from home.” ‘400 patent col. 1, ll. 22-24.2 

PowerOasis refers to its inventions as “vending machine[s]

for dispensing telecommunications access.” Id., Abstract. The

“vending machine[s]” provide electrical power and/or a

telecommunications channel access (such as a high-speed Internet

connection) to a customer after the customer supplies payment

information or user identification. Id. col. 2, ll.43-67. The

“vending machine[s']” central features include “a control unit,”

which receives payment information and controls access to the

electrical power or telecommunications channel, “a customer

interface,” with which customers can monitor the “vending

machine,” and a “payment mechanism.” Id. col. 16, ll.5-25.

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Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 3 of 29
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B. The Claims

The disputed patents are quite similar. Both consist of a

single independent claim (claim 1) and 48 dependent claims.

PowerOasis bases its infringement claims on dependent claims 15,

18, 31, 35, 38, 40 and 49. The independent claim and the

disputed dependent claims are reproduced below. 

What is claimed is:

1. A vending machine for vending

telecommunications 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

status of said vending machine;

an electronic circuit for determining when

the vending transaction is completed;

a telecommunications channel access 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 access connector

connected to said telecommunications channel

access circuit for enabling connection to an

external telecommunications device of the

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 4 of 29
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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.

....

15. A vending machine as claimed in claim 1,

wherein said customer interface comprises a

mechanism that interfaces with software

supplied by the customer.

....

18. A vending machine as claimed in claim 1,

wherein said telecommunications access

channel # 1 connector comprises a high

bandwidth channel connector.

....

31. A vending machine as claimed in claim 1,

wherein said telecommunications channel

access circuit is adapted to be connected to

a direct internet connection via an Internet

service provider selected by the vending

machine.

....

35. A vending machine as claimed in claim 1,

wherein said telecommunications channel

access connector comprises a transceiver to

connect wirelessly to an external

communications device of the customer.

....

38. A vending machine as claimed in claim 1,

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 5 of 29
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wherein said control unit is located remote

from said vending machine.

....

40. A vending machine as claimed in claim 1,

wherein said control unit further comprises

circuitry for controlling a plurality of

vending machines.

....

49. A vending machine as claimed in claim 1,

wherein said payment mechanism comprises a

mechanism that interfaces with software

resident on equipment of the customer.

C. Prosecution History

The ‘658 and ‘400 patents are links in a chain of

continuation and continuation-in-part (“CIP”) applications that

began with the patentees’ first application in 1997. The

following describes this prosecution history.

On February 6, 1997, the patentees filed Application No.

08/796,562 (“Original Application”). The Patent and Trademark

Office (PTO) examiner rejected one claim and allowed the

remainder of the claims, which became U.S. Patent No. 5,812,643

(“ ‘643 patent”). ‘643 patent Notice of Allowability at 1. As

to the allowed claims, the examiner noted that “none of the art

of record suggest nor teach the system and method of vending

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 6 of 29
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telecommunications channel access and power to a customer having

the physical combination of elements and steps as set forth [in

the application].” Id. at 3.

On September 18, 1998, the patentees filed Application No.

09/156,487 (“1998 Application”), which was a continuation of the

Original Application. They amended the application on December

1, 1999, see 1999 Amendment, and subsequently abandoned it.

On June 15, 2000, the patentees filed Application No.

09/594,028 (“CIP Application”), which was a continuation-in-part

of the 1998 Application. It became U.S. Patent No. 6,314,169 

(“‘169 patent”). The CIP Application added substantial new

matter to the previous applications. This new matter included

the substitution of the term “customer interface” for the claim

term “display” in claim 1 and the addition of several

independent claims disclosing a “vending machine” with component

parts “located remote from said vending machine.” The CIP

Application also made changes to the specification. The relevant

new specification language appears in boldface in the passages

below:

This invention provides access to one or more

utilities after the customer provides payment

in electronic form (e.g. credit card, debit

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 7 of 29
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card, smart card, or other forms of

electronic or magnetic currency devices) or

optionally, currency. Alternatively, no

physical payment method is required, and

payment is carried out through software that

is present in the user's laptop or other

device. In still another option, payment is

not made during the transaction, and the user

is identified through some type of

authentication. These can include RF ID

cards, hotel keys, ID cards, software or

anatomical characteristics such as

fingerprint, voiceprint or retinal pattern

identification. ‘400 patent col. 2, ll.

50-61; see also id. col. 10, ll. 59-65.

Alternatively, no payment mechanism is

required, and the vending transaction starts

when a customer is identified. Once

identified, the user can be billed at a later

date. Or, the identification is used as

additional security for use in conjunction

with electronic or magnetic payment cards or

software e-money. Id. col. 6,ll. 9-14; see

also id. col. 10, ll. 5-7.

The microprocessor [that controls the vending

process] also communicates with the customer

via a user interface to provide details on

the progress of the transaction. The user

interface is not particularly limited and

need not even include a visual display on the

vending machine. Id. col. 3, ll. 5-9.

Once attached and initiated, the customer can

monitor the state of the vending machine and

the transaction via the user interface. The

user interface may be a visual display or

some other type of progress indicator such as

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 8 of 29
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an auditory signal. For example, the vending

machine could instruct or inform the user via

an audio speaker. Alternatively, the user

interface can be present inside or uploaded

to the user's laptop or other device thereby

obviating the need for 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. col. 6, ll. 14-26; see also

id. col. 9, ll. 32-35.

Another object of this invention is

portability. Using an internal power source

and wireless telecommunications 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 operating multiple

vending machines. These multiple vending

machines may be arranged in the form of a

kiosk to allow multiple customers access to

the vending machine at the same time.

Similarly, almost any combination of

functional components of the vending machine

could be moved to a location remote from the

machine. This could be accomplished, for

example, by networking a cluster of machines

to a server either on site or at a remote

location. Id. col. 4, ll. 23-37; see also

id. col. 11, ll. 26-31.

On November 16, 2001, the patentees filed Application No.

09,985,930 (“2001 Application”), which was a continuation of the

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 9 of 29
3 I draw the facts concerning T-Mobile’s products--which

PowerOasis does not dispute--primarily from the memoranda of law

and exhibits supporting T-Mobile’s summary judgment motions. I

draw all inferences in favor of PowerOasis.

4 Prior to June 15, 1999, T-Mobile’s predecessor,

MobileStar Networks, Inc., developed, publicly used, and offered

for sale a high-speed wireless data network (the “MobileStar

Network”) that connected laptop users to the Internet and served

fifteen to twenty-five public access locations. T-Mobile

submits--and PowerOasis does not dispute--that in all relevant

respects, the MobileStar Network is the same as the HotSpot

Network.

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CIP Application. It became the ‘658 patent. The 2001

Application did not add substantially to the previous patent,

although it did delete several dependent claims. Dependent claim

45, which had first appeared in the CIP Application, was

renumbered to become dependent claim 38.

On October 15, 2002, the patentees filed Application No.

10/270,108 (“2002 Application”), which was a continuation of the

2001 Application. It became the ‘400 patent. The 2002

Application made insubstantial changes to the previous patent.

D. T-Mobile’s Allegedly Infringing Device3

T-Mobile acts as an Internet service provider through the TMobile HotSpot Network.4 (Archibald Deposition, Doc. No. 54 Ex.

I (“Archibald Dep.”) at 13-14). The HotSpot Network provides

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 10 of 29
5 IEEC 802.11 refers to wireless internet standards

developed by the Institute of Electrical and Electronics

Engineers.

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high-speed wireless broadband Internet access for IEEE 802.115

enabled laptops and personal digital assistants in public

locations such as Starbucks, Kinkos, and Hyatt hotels. (Doc. No.

55 Ex. 3, p. 7). The HotSpot Network works as follows:

When a user enters a HotSpot location with an appropriately

equipped device such as a laptop, the user may attempt to connect

to the Internet using a browser program such as Microsoft

Internet Explorer. (Archibald Declaration, Exhibit to Doc. No.

55 (“Archibald Dec.”) at ¶ 6). If the laptop computer is

equipped with a wireless (“Wi-Fi”) modem, it will interact with

T-Mobile’s wireless Access Point equipment within its range by

transmitting and receiving radio frequency (“RF”)signals.

(Archibald Dec. at ¶ 6). 

When the user attempts to connect to the Internet, the TMobile Access Point device converts the wireless RF signals

received from the user’s laptop into standard, wired

communication signals for further transmission to a T-Mobile

Point of Presence (“POP”). T-Mobile’s POPs are physical

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 11 of 29
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locations in T-Mobile’s network that are dispersed throughout the

United States and consist of computer servers and various

networking equipment such as routers and switches. Each POP

supports and communicates with several Access Points. (Archibald

Dec. at ¶ 6). Thus, the user’s request to connect to the

Internet is communicated by the Access Point to a remotely

located T-Mobile POP. (Archibald Dec. at ¶ 7). 

The POP includes network router equipment that runs a

service referred to as the Subscriber Selection Gateway Service

(“SSG”). (Archibald Dec. at ¶ 8). The SSG receives the user’s

request to connect to the Internet and processes it. (Archibald

Dec. at ¶ 8). The SSG determines whether the user is trying to

access an Internet site that is among a group of sites known as

the “Open Garden.” (Archibald Dec. at ¶ 8). The Open Garden is

a group of Internet sites such as the Starbucks home page, to

which a user can connect, free of charge, without providing any

payment information (such as a credit card number) or

authentication information (such as a username and password). 

(Archibald Dec. at ¶ 8). 

If a user attempts to connect to an Open Garden site, the

POP routes this request, through a data network and a T-Mobile

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 12 of 29
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data network and a T-Mobile Data Center, to the Internet.

(Archibald Dec. at ¶ 8). In this manner, the HotSpot network

provides a user with access to a telecommunications channel--the

connection between the user’s device and the Access Point, and

ultimately to the Internet sites in the Open Garden--for free and

without the user having to provide any authentication information

to the HotSpot network. (Archibald Dec. at ¶ 8).

The first time the user attempts to connect to an Internet

site that is not an Open Garden site, however, a process begins

for the user to log onto the HotSpot network. The POP routes the

user’s request through T-Mobile’s data network to a T-Mobile Data

Center. At the Data Center, a computer server running a service

referred to as the Subscriber Edge Service Manager (“SESM”)

processes the user’s request. (Archibald Dec. at ¶ 10). Instead

of sending the requested Internet page back to the user, the SESM

sends the HotSpot network login page. (Archibald Dec. at ¶ 10). 

The login page provides the user with the option of signing up

for a HotSpot account or logging into an existing account by

providing a valid username and password. (Archibald Dec. at ¶

10). If the user does not have an existing HotSpot account, the

user must complete a series of forms to create an account and

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 13 of 29
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must select the type of subscription plan desired. (Archibald

Dec. at ¶ 11). If the user already has an account, the user must

enter the appropriate username and password. (Archibald Dec. at

¶ 11).

After the user enters the appropriate login request, the

Access Point sends the request to the POP, which routes the

request across T-Mobile’s data network to the SESM at the Data

Center, and then back across the data network to the remotely

located T-Mobile HotSpot Back Office. After the Back Office

receives the user’s login request, computer servers and databases

in the Back Office authenticate the user and authorize the user

to connect to the Internet--beyond the Open Garden--via the

HotSpot network. (Archibald Dec. at ¶ 8).

After the user is authenticated, all subsequent requests to

access Internet sites are routed from the Access Point, through

the POP and the data network, to the nearest Data Center and then

to the Internet. (Archibald Dec. at ¶ 14). The user’s session

continues until the user logs out from the HotSpot network by

either clicking the logout button or turning off the Wi-Fi

device. (Archibald Dec. at ¶ 14).

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 14 of 29
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Notably, as described above, the only HotSpot Network

customer interface with which the user interacts appears on the

screen of the user’s laptop or personal digital assistant. 

II. STANDARD OF REVIEW

Summary judgment is appropriate "if the pleadings,

depositions, answers to interrogatories, and admissions on file,

together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party

is entitled to a judgment as a matter of law." Fed. R. Civ. P.

56(c).

The party moving for summary judgment "bears the initial

responsibility of . . . identifying those portions of [the

record] which it believes demonstrate the absence of a genuine

issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317,

323 (1986). Once the moving party has met its burden, the burden

shifts to the adverse party to "produce evidence on which a

reasonable finder of fact, under the appropriate proof burden,

could base a verdict for it; if that party cannot produce such

evidence, the motion must be granted." Ayala-Gerena v. Bristol

Myers-Squibb Co., 95 F.3d 86, 94 (1st Cir. 1996). The "adverse

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 15 of 29
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party may not rest upon the mere allegations or denials of the

adverse party's pleading, but the adverse party's response . . .

must set forth specific facts showing that there is a genuine

issue for trial." Fed. R. Civ. P. 56(e); see also Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 256 (1986).

III. DISCUSSION

T-Mobile argues that the patent claims at issue in this

litigation are invalid because they were anticipated by the

MobileStar Network, a high speed wireless data network that TMobile’s predecessor first placed in service after PowerOasis

filed the Original Application but more than a year before it

filed the CIP Application. PowerOasis does not challenge TMobile’s contention that the MobileStar Network was in use more

than a year before it applied for the patents in suit. Nor does

it take issue with T-Mobile’s assertion that the MobileStar

Network is indistinguishable from the HotSpot Network in all

material respects. Instead, it argues that T-Mobile’s

anticipation defense fails because the claims in suit are

entitled to the priority date of the Original Application. In

responding to this argument, I first outline relevant Federal

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Circuit precedent and then apply it to the facts of the case.

A. Federal Circuit Precedent

1. Anticipation

A patent is invalid because of anticipation if the invention

was “in public use or on sale in this country, more than one year

prior to the date of the application for patent in the United

States . . . .” 35 U.S.C. § 102(b). Anticipation is a question

of fact, and the burden of proof is on the party claiming the

defense by clear and convincing evidence. See Mentor H/S, Inc.

v. Medical Device Alliance, Inc., 244 F.3d 1365, 1377 (Fed. Cir.

2001). 

Because PowerOasis acknowledges both that the MobileStar

Network was in public use more than one year before it applied

for the ‘648 and ‘400 patents and that the network is in all

material respects indistinguishable from the HotSpot Network, the

claims in suit are invalid because of anticipation unless

PowerOasis is entitled to the benefit of the filing date of the

Original Application. See e.g., Bristol-Myers Squibb Co. v. Ben

Venue Laboratories, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001)

(“it is axiomatic that that which would literally infringe if

later anticipates if earlier”). Thus, the only factual issues

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 17 of 29
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that are relevant to the present motion are those that pertain to

the issue of priority.

2. Priority

A CIP patent has priority to the application date of the

original patent only if the application’s written description

discloses the patented invention with the specificity required by

35 U.S.C. § 112. 35 U.S.C. § 120. Powerful public policy

considerations underlie § 120's reliance on § 112's written

description requirement. As the Federal Circuit has explained,

“[t]he purpose of the written description requirement is to

prevent an applicant from later asserting that he invented that

which he did not; the applicant for a patent is therefore

required to recount his invention in such detail that his future

claims can be determined to be encompassed within his original

creation.” Moba, B.V. v. Diamond Automation, Inc., 325 F.3d

1306, 1319 (Fed. Cir. 2003)(emphasis in original). Unless this

requirement is respected, innovation is undermined because

inventors must live in fear that their inventions, which do not

infringe when they are placed in use, will later be captured by a

CIP application filed only after their ideas have been proven to

be of value in the marketplace. 

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In Augustine Medical, Inc. v. Gaymar Industries, Inc., 181

F.3d 1291 (Fed. Cir. 1999), the Federal Circuit provided guidance

as to how priority questions are to be resolved when priority is

claimed to the date of a parent application. Rather than attempt

my own creative rephrasing of this guidance, I reproduce it

below, omitting only internal citations and quotations. 

A CIP application contains subject matter

from a prior application and may also contain

additional matter not disclosed in the prior

application. Different claims of such an

application may therefore receive different

filing dates. Subject matter that arises for

the first time in the CIP application does

not receive the benefit of the filing date of

the parent application. Thus, the decision

on the proper priority date - the parent

application date or the CIP application date

- for subject matter claimed in a CIP

application depends on when that subject

matter first appeared in the patent

disclosures. To decide this question, a

court must examine whether the disclosure of

the application relied upon reasonably

conveys to the artisan that the inventor had

possession at that time of the later claimed

subject matter. This is a question of fact.

Id. at 1302-03.

Other Federal Circuit decisions have recognized that while

the original application need not include a precise description

of an invention that is later claimed in a CIP Application, it

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 19 of 29
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must include sufficient information to convey with “reasonable

clarity” to a practitioner of the relevant art that the inventor

was “in possession” of the invention when the application was

filed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64

(Fed. Cir. 1991); Moba, 325 F.3d at 1320-21. Further,

“[e]ntitlement to a filing date does not extend to subject matter

which is not disclosed, but would be obvious over what is

expressly disclosed.” In Re Charles D. Huston, 308 F.3d 1267,

1277 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines, Inc.,

107 F.3d 1565, 1571-72 (Fed. Cir. 1997)). 

The Federal Circuit has not explained how the burden of

proof should be allocated when a priority question arises in the

context of an invalidity dispute. In a decision addressing the

burden of proof in interference proceedings under the “old”

interference rules, the court held in Utter v. Hiraga, 845 F.2d

993, 998 (Fed. Cir. 1988) that “[a] party who, like Hiraga,

relies on an earlier-filed application under 35 U.S.C. § 119 or §

120 has the burden to show that the foreign or parent application

supports later added claims under 35 U.S.C. § 112, ¶ 1,

regardless of whether that party is the junior or senior party in

the interference.” More recent decisions decided under the “new”

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interference rules make clear that after an interference has been

declared, the party attacking the declaration must overcome the

presumption that the decision is correct by disproving the

priority ruling by a preponderance of the evidence. See, e.g.,

Bilstad v. Wakalopulos, 386 F.3d 1116, 1120-21 (Fed. Cir. 2004);

Kubota v. Shirbuya, 999 F.2d 517, 521 (Fed. Cir. 1993). While

these decisions are not directly on point, they suggest that the

burden of proof on issues of priority ordinarily should be

assigned to the party claiming priority to a parent application

except where a prior ruling addressing the issue is entitled to a

presumption of correctness. 

When invalidity is argued, it is axiomatic that the

challenged patent is entitled to a presumption of validity. See,

e.g., Metabolite Labs, Inc. v. Lab. Corp. of Am. Holdings, 370

F.3d 1354, 1365 (Fed. Cir. 2004). However, it is less clear

whether the presumption of validity extends to priority questions

that arise during validity disputes. One leading commentator

declares the issue debatable where the Patent Office has not

addressed the issue, Chisum on Patents, §13.04[6], and district

court decisions addressing the subject cut both ways. Compare

Penwalt Corp. v. Akzona, Inc., 570 F. Supp. 1097, 1102 (D. Del.

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1983) (presumption of validity inapplicable to priority claims)

with Ralston Purina Co. v. Far-Mar-Co., 586 F. Supp. 1176, 1211-

12 (D. Kan. 1984) (extending presumption of validity to priority

disputes). 

At least in cases such as the present one, where the Patent

Office has not determined that a CIP patent should be entitled to

the priority date of the original patent application, I see no

reason why a presumption to such effect should be recognized. 

Accordingly, for the reasons acknowledged by the Federal Circuit

in Hiraga, I conclude that when a dispute arises concerning

whether a CIP patent is entitled to priority to the date of the

original patent application and the Patent Office has not

addressed the issue, the burden of proof ordinarily should rest

with the party claiming priority to the date of the original

application. See 845 F.2d 993, 998. 

I apply these general legal principles in resolving the

present dispute. 

B. Analysis

Relying exclusively on changes made to the Original

Application by the CIP Application, I construed the claim term

“customer interface” broadly in a prior order to encompass

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 22 of 29
6 Judge Zobel recently construed the same claim term in the

same patents to mean “a part of the vending machine for

communicating information about the status of the vending machine

to the customer.” PowerOasis v. Wayport, Inc., 2006 WL 1752322

*4-5 (D. Ma). My disagreement with Judge Zobel on this point

stems solely from my inability to reconcile what otherwise

appears to be a correct construction of “customer interface” with

the new references in the CIP Application that give the term a

broader meaning. If Judge Zobel’s construction of “customer

interface” is correct, the HotSpot Network plainly does not

infringe the claims in suit because it does not have a “customer

interface” as she defined the term. 

-23-

interfaces that are located on a customer’s electronic device. 

See PowerOasis v. T-Mobile USA, Inc., 2006 D.N.H. 036 at 19-21. 

This broad conception of customer interface extends beyond what

was claimed in the Original Application--i.e., a vending machine

with a “display” as one of its component parts.6 Thus,

PowerOasis is not entitled to claim priority for this new matter

to the date of the Original Application unless it can prove that

it was “in possession” of the new matter when it filed its

Original Application. 

The relevant evidence in this case consists solely of the

Original Application and an affidavit from Richard Morley, an

expert witness who claims that a person reasonably skilled in the

relevant art would understand from the Original Application that 

PowerOasis was then in possession of the concept of a vending

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machine with a customer interface located on a customer’s

electronic device. I am unpersuaded by PowerOasis’s contention

that its evidence on this point presents a genuine issue for

trial. 

The claims in the Original Application describe an invention

with a “display” rather than a “customer interface.” Although

the Original Application’s written description refers to the

display as a “user interface,” it invariably does so in a context

which suggests only that an interface is achieved through the use

of a component part of the claimed invention. For example, all

of the Original Application’s preferred embodiments and all of

the figures that depict the claimed display referred to in the

claims describe a physical display that is a part of the vending

machine. See, e.g., ‘643 patent col. 6, ll 59-67 (“in the

preferred embodiment of Fig. 2, the user interface consists of

two lights which turn on and off in particular patterns to inform

the customer as to how the transaction is processing. In other

preferred embodiments, these 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 information on the progress of the transaction including

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-25-

the accumulated changes”). While I recognize that a written

description may demonstrate that the inventor is in possession of

additional matter beyond what is disclosed in preferred

embodiments, I cannot find a single reference in the written

description which suggests that PowerOasis understood its

invention to include the new matter that it claimed for the first

time in the CIP Application.

Although Morley asserts that a person reasonably skilled in

the art would understand from the Original Application that

PowerOasis was in possession of the concept of a vending machine

with a customer interface located on the customer’s computer, his

affidavit does not give rise to a genuine factual dispute on this

issue. With respect to the customer interface issue, Morley

states:

It was well known to those of ordinary skill

as of February 6, 1997, that the

functionality of providing information to a

customer via a user interface can be provided

by displaying information on a computer

screen, such as on a portable computer of the

type referred to in the [Original

Application] when that computer is connected

to a network of other components and

computers. (Morley Decl., Doc. No. 58 Ex. 1

at 6).

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 25 of 29
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On this basis, he concludes that “[i]t is [his] opinion that the

disclosure in the [Original Application] would have reasonably

conveyed to one of ordinary skill in the art that the inventors

were in possession of the concept of the later-claimed ‘customer

interface’ as construed by this court, when they filed [the

Original Application].” (Morley Decl. at 6). Additionally,

Morley states: 

One of ordinary skill would have known that a

laptop computer could be connected to a

network including other components and

computers, and that information could be

transmitted from the network to the laptop

computer. Such an interface would

necessarily involve the use of “software

supplied by the customer” on their laptop. 

The specification of the ‘643 patent

specifically discloses examples of “standard

Internet software such as, but not limited to

Netscape, Microsoft Explorer, or Mosaic.” 

One of ordinary skill would have known that

such browser software on the customer’s

computer could be used to display information

to the customer as part of the “customer

interface.” (Morley Decl. at 6 (citing ‘643

patent col. 9, ll. 50-53)). 

In essence, Morley asserts that PowerOasis was in possession

of the new matter claimed in the CIP Application when it filed

the Original Application because the Original Application refers

to the claimed “display” as a user interface and practitioners of

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 26 of 29
7 While the Original Application’s specification refers to

standard Internet software such as Microsoft Explorer, it does

not discuss this software in the context of a user interface. 

Rather, the language Morley cites merely describes an embodiment

which would allow a customer to connect directly to a high speed

Internet connection on the vending machine without having to go

through the customer’s Internet access provider. See ‘643 patent

col 9, ll. 42-53. 

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the relevant art would understand that the functionality of an

interface could be achieved through the use of the customer’s

electronic device rather than by having an interface that is a

component of the invention. In making this assertion, he does

not cite in a persuasive way any supporting references in the

written description.7 Thus, he does not even attempt to

demonstrate how a practitioner of the relevant art would glean

from the Original Application’s written description that

PowerOasis was then in possession of a version of the claimed

invention that used the customer’s electronic device to achieve

the interface. 

More fundamentally, Morley’s affidavit is deficient because,

at best, it suggests that a person reasonably skilled in the art

would understand that the function of the claimed display could

be achieved by exploiting the customer’s electronic device. This 

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 27 of 29
8 PowerOasis asserted in a telephone conference with the

court after briefing and oral argument had been completed that

the Original Application disclosed a version of the claimed

invention with a “customer interface” as that term is used in the

CIP because: (1) the “display” claimed in the Original

Application is a species of the genus “customer interface;” and

(2) Federal Circuit precedent recognizes “the general rule that

disclosure of a species provides sufficient written description

support for a later filed claim directed to the genus,” Bilstad

v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004) (emphasis

omitted). I am unpersuaded by this argument because neither the

Original Application’s written description nor Morley’s affidavit

support the view that a person reasonably skilled in the art

would have understood when the Original Application was filed

that a “display” as claimed in the Original Application and a

“customer interface” that is achieved through the use of a

customer’s electronic device are species of the same genus. 

Accordingly, the general rule that PowerOasis invokes is

inapplicable in this case. 

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amounts to nothing more than an assertion that persons reasonably

skilled in the art would find it obvious from what was disclosed

in the Original Application that the function served by a

“display” could be achieved in this way. As I have explained, an

inventor is not deemed to be in possession of later claimed

matter simply because the new matter was obvious from what was

disclosed. See In re Charles D. Huston, 308 F.3d at 1277;

Lockwood, 107 F.3d at 1571-72. Because Morley’s affidavit

accomplishes nothing more, it does not trigger the need for a

trial to resolve the priority issue.8

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IV. CONCLUSION

For the reasons set forth herein, I grant T-Mobile’s motion

for summary judgment of invalidity (Doc. No. 53). Because I

decide this case on the issue of invalidity, I need not address

either PowerOasis’s motion for summary judgment of infringement

(Doc. No. 54) or T-Mobile’s motion for summary judgment of noninfringement (Doc. No. 55). The clerk is instructed to enter

judgment accordingly.

SO ORDERED.

/s/Paul Barbadoro 

Paul Barbadoro

United States District Judge

March 30, 2007

cc: Amr O. Aly, Esq.

David Bassett, Esq.

Thomas Donovan, Esq.

William Lee, Esq.

Robert Lucic, Esq.

Gregory Noonan, Esq.

Sibley Reppert, Esq

John Rhee, Esq.

William Schofield, Jr., Esq.

Benjamin Stern, Esq.

Case 1:05-cv-00042-PB Document 80 Filed 03/30/07 Page 29 of 29