Federal Circuit further extends nearly decade-long litigation

On June 8th, 2006, the Federal Circuit reversed a district court's decision to grant summary judgment for invalidity of a patent based on anticipation, obviousness and indefiniteness. In doing so, the court engaged in a fact-specific comparison of the operations of the patented technology and the prior art references in order to determine whether the patent was anticipated or obvious. The court also held that a patent will not be indefinite merely because it is not rigorously precise in its wording.This ruling stems from a series of appeals to the Federal Circuit from the Western District of New York. Xerox had originally brought suit against 3Com in 1997 for infringement of its patent for its \'Graffiti\' handwriting recognition system used in its various Palm handheld computer devices. Over the next several years, the case went back and forth between the Federal Circuit and the district court, with the Federal Circuit reversing the district court's holdings of noninfringement and validity. This appeal was based on the district court's most recent order granting 3Com's motion for summary judgment of invalidity of the Xerox patent based on anticipation, obviousness, and indefiniteness. The question on appeal of a summary judgment motion is whether a genuine issue of material fact exists in order to reverse the summary judgment, and the Federal Circuit examines the facts anew without any deference to the lower court's findings.An patent is anticipated, and therefore invalid, if a single prior art reference either expressly or inherently discloses every limitation of the claimed invention. The district court found that two pieces of prior art, the Burr and Nagayama references, anticipated various claims of Xerox's patent. On appeal, Xerox argued that five elements of the claims were not anticipated by the two references. The Federal Circuit held that there was no genuine issue as to whether four of the five claim limitations were present in the prior art references. However, the court found a fact question existed with regard to the fifth limitation, which requires \'graphical separation based on stroke direction.\' Xerox's patent uses stroke direction in order to distinguish symbols that are geometrically identical or which have a predetermined graphical specification in the system. The court held that although the Burr and Nagayama references captured stroke direction data, it was not clear whether they used that data to distinguish one symbol from another. Thus, there was a genuine issue of material fact as to whether the references anticipated the Xerox patent claims of stroke direction.For much the same reason, the Federal Circuit also reversed the district court's findings of obviousness. Xerox's patent claim is invalid if it would have been obvious to one of ordinary skill in the art of handwriting recognition to combine the teachings of previous references to utilize their features to produce the invention described in Xerox's patent claims. Because the Federal Circuit concluded an issue of material fact existed about whether Xerox's stroke direction limitation was indeed present in the prior references, the court also remanded the issue of obviousness to the district court for reconsideration based on the stroke direction issue. Lastly, the Federal Court addressed the issue of indefiniteness of Xerox's patent. In order to be valid, a claim must be definite, meaning that the meaning of the claim must be discernable, rather than \'insolubly ambiguous.\' The district court had found the patent to be indefinite because the term \'sloppiness space\' in the patent was ambiguous and not adequately defined. The Federal Circuit disagreed, and held that in the written description of the Xerox patent explicitly defined symbols as being well separated from each other in sloppiness space if they involved an angular offset or directional distinction. The court held that this description provided adequate guidance that the meaning of the claim was discernible enough to be definite. This case analyzes the invalidity of a particular patent under the doctrines of anticipation, obviousness and indefiniteness. It reveals how the Federal Circuit's holding that a claim limitation is anticipated is a specific, fact-intensive inquiry and involves a detailed comparison of a patent claim with prior art references. In addition, it illustrates how costly and time-consuming patent litigation can be: After almost ten years of litigation and appeals, this case will have to be considered by the district court at least one more time, with another appeal likely to follow.To read the complete decision, log on to http://fedcir.gov/opinions/04-1470.pdf.


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