NOTE: This disposition is nonprecedential.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, Washington, DC; DAVID ALMELING, MARK LIANG, LUANN LORAINE 

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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-appellant 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 determination 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 reissue patent of U.S. Patent No. 7,484,247 (“the ’247 patent”). 

The asserted patents and the ’247 patent are all directed to the use of multiple processors or processes in a 

computer system to prevent malware obtained over a network 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 “possibly contain[] malware.” Id. at col. 4, ll. 65–66. When the 

known and trusted programs share memory and resources 

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CIOFFI v. GOOGLE LLC 3

with programs that may contain malware, the malware 

may be “capable of corrupting critical files on the shared 

memory storage medium.” Id. at col. 6, ll. 56–64. 

To address that problem, the ’247 patent discloses “a 

means of isolating the network interface program [e.g., a 

web browser] from the main computer system such that the 

network interface program does not share a common 

memory storage area with other programs.” Id. at col. 7, ll. 

1–4. In such a system, the specification explains, “malware 

programs are rendered unable to automatically corrupt 

critical system and user files located on the main memory 

storage area.” Id. at col. 7, ll. 9–11.

For purposes of this appeal, claim 49 of the ’529 patent 

is generally representative of the asserted claims. Claim 

49 depends from claim 36 of the ’529 patent. Those claims 

recite:

36. A method of operating a portable computer 

based system employing a common operating system 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 containing malware from a network of one or more computers using a secure web browser process, 

wherein the secure web browser process is configured to execute on the at least one electronic data 

processor, and comprises a first web browser process and at least one second protected web browser 

process, the first web browser process and the at 

least one second protected web browser process being configured to access the website content via the 

network of one or more computers;

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executing instructions in the first web browser process, wherein the first web browser process is configured to access data contained in the first 

memory space and to initialize the at least one second protected web browser process;

passing data from the first web browser process to 

the at least one second protected web browser process;

executing instructions in the at least one second 

protected web browser process, wherein the at least 

one second protected web browser process is configured to access data contained in the second protected 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 configured such that the at least one system file residing 

on the first memory space is protected from corruption by website content potentially containing malware downloaded from the network and executing 

as part of the at least one second protected web 

browser process.

* * *

49. The method of claim 36 further comprising:

executing instructions from the first web browser 

process on a first core of a multi-core processor; and

executing instructions from the at least one second 

protected web browser process on a second core of 

the multi-core processor.

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’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 rather 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 processor (“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” according to which the system of Figure 1 operates. Id. at col. 

10, ll. 64–66. In that embodiment, a user may open a “protected process,” such as a web browser program, that executes 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 embodiment, the computer system carries out “an interactive 

network process, such as online gaming.” Id. at col. 14, ll. 

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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 configuration 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 processor 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 configuration, the first logical process “may comprise executing 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 instructions 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,

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CIOFFI v. GOOGLE LLC 7

and the parties stipulated to a judgment of non-infringement 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 construction of two claim terms and remanded for further proceedings. Id. As relevant to this appeal, we construed the 

term “web browser process” to mean a “process that can access 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 subject matter of the reissue claims was not disclosed in the 

original patent (in violation of the “original patent” requirement) and reclaimed subject matter surrendered during 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 embodiment containing “interactive network processes” in the 

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8 CIOFFI v. GOOGLE LLC

specification constituted a clear and unequivocal disclosure 

of two web browser processes. J.A. 54. In particular, the 

district court relied on the testimony of Dr. Hubert Dunsmore, 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 processes, 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 recapture. 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 motion 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 requirement, 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 compliance 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)).

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CIOFFI v. GOOGLE LLC 9

In 1893, the Supreme Court explained in Corbin Cabinet 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 original patent that they constitute parts or portions of the invention, 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 currently provides that the Director of the United States Patent and Trademark Office may grant a reissue patent “for 

the invention disclosed in the original patent.” 35 U.S.C. 

§ 251(a) (2012).

Despite the change in statutory language enacted by 

Congress after the Supreme Court’s decision in Industrial 

Chemicals, courts have continued to apply the principles of

Industrial Chemicals when evaluating whether a reissue 

claim satisfies the original patent requirement. Antares 

Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1360–

61 (Fed. Cir. 2014) (collecting cases). In our recent cases 

addressing the original patent requirement, we have held 

that in order to satisfy the original patent requirement, the 

invention claimed on reissue must be “more than merely 

suggest[ed] or indicat[ed]” by the specification of the 

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10 CIOFFI v. GOOGLE LLC

original patent. Forum, 926 F.3d at 1351; see also Antares, 

771 F.3d at 1362. Instead, we have explained, the specification of the original patent “must clearly and unequivocally 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 requirement to require that “the exact embodiment claimed 

on reissue [be] expressly disclosed in the specification.” Antares, 771 F.3d at 1363.

Google argues that the original patent requirement is 

not satisfied because there is no clear and unequivocal disclosure in the ’247 patent of an embodiment that comprises 

two web browser processes. Cioffi responds that the original patent requirement is satisfied because the embodiment disclosed in Figure 6 and column 14 of the ’247 patent 

represents a clear and unequivocal disclosure of an embodiment having two web browser processes. As noted above, 

the embodiment depicted in Figure 6 contains an “interactive network process” that includes an exchange of “interactive network process status data” between P2 and P1. 

’247 patent, col. 14, ll. 28–45.

As Cioffi acknowledges, the specification of the ’247 patent 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 ‘interactive applications’ and thus the ‘interactive network process’ disclosed in Figure 6.” Id. at 30. The district court 

accepted that general argument, holding that “the ’247 Patent specification’s ‘interactive network processes’ embodiment 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 testimony of Dr. Dunsmore, who testified, in relevant part, as 

follows:

Q: Professor Dunsmore, let’s move to [Google’s expert’s] second argument. Do you agree with 

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CIOFFI v. GOOGLE LLC 11

[Google’s expert] that the specification does not disclose 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 “assert[] what a person of ordinary skill in the art would purportedly understand” from the specification rather than 

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12 CIOFFI v. GOOGLE LLC

what is apparent “from the face of the instrument.” See Forum, 926 F.3d at 1351–52 (citation omitted). As we explained in Forum, testimony directed to the former point

“is insufficient to comply with the standard set forth in Industrial Chemicals and Antares.” Id. at 1352.

The district court characterized Dr. Dunsmore’s testimony 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. Dunsmore’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 disclosure of a broad embodiment in the original patent specification would represent a clear and unequivocal 

disclosure of a narrow embodiment that was not expressly 

described in the specification, as long as the narrow embodiment was nevertheless encompassed by the broad disclosure. That standard is more lenient than the one we have 

adopted in our cases applying the original patent requirement.

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 embodiments recited in the asserted claims. First, a skilled 

artisan would have to conclude that an “interactive network process,” as described in column 14 of the specification, includes web browsing. It is true that in the 

“Background” section, the specification states that “many 

applications[,] such a[s] gaming, messaging, and browsing” 

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CIOFFI v. GOOGLE LLC 13

may have an “interactive nature.” ’247 patent, col. 6, ll. 

17–18. In the opening discussion of the Figure 6 embodiment, 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 embodiment of Figure 6 could be applied to the other types of programs 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 column 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 Appellees’ Br. 27. As the specification explains, that process “retrieves 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 suggests 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 systems.” ’247 patent, col. 14, ll. 10–13. The specification does 

not expressly indicate that interactive network process status 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 column 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 Figure 6 of the ’247 patent, web browsers are discussed with 

respect to various embodiments of the invention. For example, the specification explains that the embodiment 

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14 CIOFFI v. GOOGLE LLC

depicted in Figure 2 may be used to run a “protected process, 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 respect to Figure 9 that “[a] second logical process may comprise 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 description 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 patent. 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

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