Allvoice Computing v. Nuance Communications (CAFC 2006-1440)

Ordinary Skill In The Art

One failing of the district court was not considering the appropriate level of skill. Since KSR, everyman has become know-it-all man. Nuance missed a beat on this score as well, leaving AllVoice's skilled worker the only player on the field.

Before reviewing the bounds of the claim in light of the specification, the analysis requires attention to the level of skill assigned to a person of ordinary skill in the art. Unfortunately, the district court did not specify the proficiency of the hypothetical person of ordinary skill in the art that is essential to administering the definiteness test.

During oral argument before this court, AllVoice's counsel defined "a person of ordinary skill in the art" in the context of this case as "someone who has a degree in computer science or something equivalent and 2-3 years experience programming in Windows." This definition is consistent with the level of skill ascertained in other software patent disputes. See, e.g., Data Race, Inc. v. Lucent Techs., Inc., 73 F. Supp. 2d 698, 746 n.330 (W.D. Tex. 1999) ("Bachelor of Science degree in electrical engineering, computer science or 3-5 years of recent experience in the field"); Katz v. AT&T Corp., 63 F. Supp. 2d 583, 594 n.2 (E.D. Pa. 1999) ("[a]t least a Bachelor’s degree in a scientific or engineering field, such as physics, electrical engineering, or computer science, and at least two years experience working in the field of computer telephony"). Because Nuance did not pose a different definition nor dispute the above definition, this court uses that characterization in applying the definiteness test.

Indefiniteness

Means-plus-function claims were found indefinite by the district court.

The definiteness requirement is set forth at 35 U.S.C. § 112 ¶ 2: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." The test for definiteness asks whether one skilled in the art would understand the bounds of the claim when read in light of the specification. Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).

The district court applied less-than ordinary skill in construing the claims.

The disputed clauses in claims 60, 61, and 67 qualify for means-plus-function treatment under 35 U.S.C. § 112 ¶ 6. "Claim construction of a means-plus-function limitation includes two steps. First, the court must determine the claimed function. Second, the court must identify the corresponding structure in the written description of the patent that performs the function." Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)... Under 35 U.S.C. § 112 ¶ 2 and ¶ 6, a means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381-82 (Fed. Cir. 1999).

Claim 60 was misconstrued by the district court: a decently drafted claim phrase: "output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text;" which essentially specifies multiple program compatibility, was saddled by the district court with "the requirement that the user have the ability to change the destination program 'on the fly.'"

In adding a limitation beyond the requirements of the claims, the district court emphasized a portion of the prosecution history beyond its true significance... [V]iewing the prosecution history in its proper context, this court construes the claim to require "a system capable of outputting to a plurality of different word processing or other application programs."

The limitation alluded specifically to Microsoft's DDE software protocol for inter-application communication and data exchange.

In a couple of other claims, the term "independent" became "isolated" in regard to status data storage and transfer, an "unduly" narrowing.

The clauses at issue in claims 61 and 67 relate to the interface’s ability to perform functions "independent of" the connected application program... The district court construed "independent of" to mean essentially "isolated." According to this interpretation, the claimed interface cannot receive any information back from the application. Rather, it must keep track of the positions of words in the application without ever obtaining position data from the application.

The district court dinged the claims for lack of specification support for the necessary algorithms, but the CAFC figured a code jockey could ride the disclosed horse.

Best Mode

Because of the district court's erroneous claim construction, adding an additional limitation, the court swallowed Nuance's argument that one of AllVoice's products, WordExpress, "constituted an undisclosed best mode for claim 73." The alleged undisclosed best mode was using a macro function.

The district court held the '273 patent invalid for deliberate concealment of the best mode – a requirement of 35 U.S.C. § 112 ¶ 1. A careful reading of the claim, however, shows that the alleged undisclosed best mode is not a best mode of practicing the claimed invention. To the contrary, the alleged best mode subject matter falls outside the scope of claim 73. Thus, the alleged best mode is not a way of practicing the claimed invention at all.

35 U.S.C. § 112 ¶ 1 provides that the specification of a patent "shall set forth the best mode contemplated by the inventor of carrying out his invention." This requirement ensures a patent applicant discloses the preferred embodiment of his invention. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1330 (Fed. Cir. 2002) ("The purpose of the best mode requirement is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of the inventions they have in fact conceived.").

Only the claimed invention is subject to the best mode requirement. DeGeorge v. Bernier, 768 F.2d 1318. 1325 (Fed. Cir. 1985) (reversing the Patent Appeals Board for extending the best mode beyond the proper claim scope); Randomex, Inc. v. Scopus Corp., 849 F.2d 585, 588, (Fed. Cir. 1988) ("It is concealment of the best mode of practicing the claimed invention that section 112 ¶ 1 is designed to prohibit."); see Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1567 (Fed. Cir. 1996) ("[T]he parameters of a section 112 inquiry are set by the CLAIMS."). According to § 112 ¶ 1, an inventor is required to disclose the best mode for "carrying out his invention." (emphasis added) Because the claims represent "the subject matter which the applicant regards as his invention," subject matter outside the scope of the claims also falls outside the scope of the best mode requirement. 35 U.S.C. § 112 ¶¶ 1-2; see Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1531 (Fed. Cir. 1991) ("The best mode inquiry is directed to what the applicant regards as the invention, which in turn is measured by the claims."); Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed. Cir. 2001) ("[T]he extent of information that an inventor must disclose depends on the scope of the claimed invention.").

To apply the best mode standard, a court must first "determine[] whether, at the time the patent application was filed, the inventor had a best mode of practicing the claimed invention." United States Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). This determination turns on the inventor's own subjective beliefs. Id. (citing Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 928 (Fed. Cir. 1990)). "[T]he second part of the analysis [asks] . . . has the inventor 'concealed' his preferred mode from the 'public'?" Chemcast Corp., 913 F. 2d at 928.

Claim differentiation helped suss out construction. The alleged missing best mode didn't apply to the damned claim at all.

In addition to the claim language, the doctrine of claim differentiation assists in arriving at a correct claim meaning in this case. Indeed "claim differentiation takes on relevance in the context of a claim construction that would render additional, or different, language in another independent claim superfluous." Curtiss-Wright Flow Control Corp., v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006); see Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) ("Differences among claims can also be a useful guide in understanding the meaning of particular claim terms."). In the instant case, claim 1 includes "means for forming link data" and "means for updating said link data." The claims thus distinguish between "forming" and "updating." These separate terms define separate processes accomplished by separate means. If this court interpreted the process of forming link data to include processes to update that data, the second limitation (means for updating link data) would be superfluous. Independent claims 1, 15, and 28, among others, explicitly require forming link data, monitoring changes to text, and updating link data as distinct actions accomplished through separate means. '273 Patent col.16 ll.32-46, col.18 ll.51-67, col.22 ll.4-13. Thus, monitoring and updating functions are not part of the forming link data limitation. The specification and the claims consistently use the terms "forming," "updating," and "monitoring" to denote separate processes with different end results. '273 Patent col.8 l.65 to col.9 l.12 (indicating that forming and updating are separate steps).

Unlike claims 1, 15, 28, and others in the '273 patent, claim 73 does not include "updating" link data, "maintaining" link data after editing, or "monitoring" changes to text. '273 Patent col.16 ll.32-46, col.26 ll.1-6, col.73 ll.29-60. Because "forming link data" does not include monitoring changes or updating link data, a method to perform those unclaimed functions falls outside the scope of claim 73. The macro considered by the district court does nothing more than monitor the changes to a document, to eventually facilitate the updating of link data. Claim 73 does not include these features. Thus, the macro cannot be a best mode for claim 73. Because the alleged best mode does not fall within the scope of claim 73, this court need not consider whether the inventors of the '273 patent actually believed the macro was their best mode of practicing the invention or whether they deliberately concealed that subject matter.

The CAFC reminds that a claim stands on its own as to scope.

[T]his court enforces a “presumption that each claim in a patent has a different scope.” Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (quoting Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)). Thus every claim need not contain every feature taught in the specification. See, e.g., Nazomi Commc'ns, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005) (claims may "embrace[] different subject matter than is illustrated in the specific embodiments in the specification.").

Reversed and remanded.