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"Ordinary creativity" of one of ordinary skill in the art used to show claims not indefinite

October 15, 2007
Post by Blog Staff

In a decision today the Federal Circuit held that the district court had incorrectly determined that AllVoice Computing PLC's patent was invalid for indefiniteness and failure to meet the best mode requirement. In reaching its decision, the Federal Circuit determined that the lower court had used the prosecution history of the patent to interpret the claims too narrowly and that the alleged best mode violation was outside of the scope of the claim.

This Federal Circuit also cited to KSR as a reason for holding a patent to be valid. Specifically, the court cited the passage describing one of ordinary skill in the art as "a person of ordinary creativity, not an automaton" in support of its holding that the claims were not indefinite. Because of this "ordinary creativity," one of ordinary skill in the art would understand the scope of the means-plus-function limitations in the claims, and as a result, they were not indefinite.

More detail of AllVoice Computing PLC v. Nuance Commc'ns, Inc. after the jump.

This appeal arises from a patent infringement suit by AllVoice Computing (AllVoice) against Nuance Communications (Nuance) regarding Nuance's well-known speech recognition software, Dragon Naturally Speaking. On summary judgment, the district court held that claims 60, 61, and 67 of Nuance's patent were indefinite under 35 U.S.C. § 112 ¶ 2, and held the patent invalid for failure to meet the best mode requirement of 35 U.S.C. § 112 ¶ 1 regarding claim 73. AllVoice appealed.

Before proceeding to claim interpretation and best mode analysis, the court determined the level of skill assigned to a person of ordinary skill in the art. After noting that the district court had filed to make such a determination, the court adopted AllVoice's suggestion that a person of ordinary skill in the art for this particular case was "someone who has a degree in computer science or something equivalent and 2-3 years experience programming in Windows." With this definition of the level of ordinary skill in the art in hand, the court then turned to claim construction.

The issue regarding claim 60 dealt with the speech recognition software's ability to use the recognized spoken text as input for various applications. The limitation at issue was an "output means for outputting the recognized words into at least any one of the plurality of different computer-related applications to allow processing of the recognized words as input text." In interpreting this limitation, the district court concluded that the claim required the system to alternately output to a plurality of word processing or other application programs. Finding no such disclosure in the specification, the district court held that the claim was indefinite.

The Federal Circuit held that the district court had added a limitation into the clam by requiring the ability to output to a plurality of programs alternately. Instead, the Federal Circuit determined that the limitation merely required compatibility with multiple output programs, not the ability of users to switch between multiple output programs at will. With this broader interpretation of the claim, the Federal Circuit, citing to KSR, determined that, considering the person of ordinary skill's creativity, "the record shows that an artisan of ordinary skill would understand the bounds of the claim when read in light of the specification."

The court then turned to claims 61 and 67, which concerned the ability to track the location of the inserted spoken text within various types of documents. The key limitation at issue required the program to track the location "of the recognized words independently of the . . . computer-related application." The district court determined that this limitation meant that there could be absolutely no communication between the speech recognition software and the other application regarding the text location. This interpretation was based in part on the prosecution history where AllVoice distinguished the patent from prior art that used the bookmark feature in Microsoft Word to achieve a similar result.

The Federal Circuit held that this interpretation of the prosecution was not correct and that the term "'independent of' means that the interface must maintain its own position data, in its own data structures, but still have the ability to receive positional information from the application." With this broader interpretation of the claim in mind, the court then identified several portions of the specification as well as expert testimony that demonstrated that there was sufficient guidance for one skilled in the art to understand the claim bounds. As a result, the claims were not indefinite, and the district court's decision to the contrary was reversed.

The Federal Circuit then turned to the best mode issue. Nuance alleged that one of AllVoice's products contained a macro (a computer program that runs within a word processing program to automate certain tasks) that was used to track and update the position of recognized text that had been inserted into the document. Nuance alleged that the failure to disclose this macro in the specification was an attempt to conceal the best mode of practicing the invention.

The Federal Circuit determined that the macro was useful in maintaining the location of the inserted recognized text. However, looking at the language of claim 73, the court determined that it only referred to the "means for forming the link data" required for tracking the location of the inserted recognized text. Because the claims and the specification used the terms "forming," "updating," and "monitoring" to denote separate processes with different end results, the court determined that the macro related to subject matter outside of claim 73. As a result, disclosure of the macro was not required and there was no violation of the best mode requirement.

Finding the district court's reasons for summary judgment to be incorrect, the Federal Circuit reversed and remanded the case for further proceedings. This case is a reminder of the Federal Circuit's general dislike for indefiniteness arguments. It also shows that the court will use KSR in contexts other than obviousness, so practitioners may benefit from finding language in KSR beneficial to their arguments outside the obviousness context. It's a bit of a silver lining to KSR for patent owners and applicants.

To read the full decision in AllVoice Computing PLC v. Nuance Commc'ns, Inc., click here.


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