Opinion
97-CV-6182T.
February 16, 2005
DECISION and ORDER
INTRODUCTION
By Decision and Order dated May 21, 2004, I granted defendants' motion for summary judgment and dismissed plaintiff's Complaint on grounds that the patent claims asserted in this infringement action are invalid. Specifically, I held that the asserted claims of U.S. Patent No. 5,596,656, (the '656 patent) are anticipated by two prior art references: a journal article authored by D.J. Burr (the "Burr" reference); and a Japanese patent issued to Tadahiro Nagayama (the "Nagayama" reference). In so holding, I determined that the elements of unistroke symbols (also referred to hereinafter as single-stroke symbols), "graphical separation," and "spatial independence" as required by the independent claims of the '656 patent were present in the Burr and Nagayama prior art references, and therefore those references invalidated the independent claims of the '656 patent.
Defendants 3Com Corporation, U.S. Robotics Corporation, U.S. Robotics Access Corp. and Palm Computing, (collectively "3Com") now move for clarification of this court's Decision and Order, and ask the court to specifically address each element of each of the asserted patent claims and declare the claims invalid in light of the Burr and Nagayama references. Defendants contend that while the court correctly determined that the asserted independent claims of '656 patent are invalid, pursuant to Federal Circuit Court of Appeals precedent, (which exhorts district courts to examine each of the asserted claims individually when determining validity), this court should have made specific findings of invalidity with respect to each of the asserted claims, including both independent and dependant claims.
Plaintiff Xerox cross-moves for reconsideration of my May 21, 2004 Decision and Order, or, in the alternative, for relief from the court's May 26, 2004 final Judgment dismissing the Complaint. Xerox seeks relief from the "manifest errors" contained in the May 21, 2004 Decision and Order and the subsequent Judgment.
For the reasons set forth below, I grant defendant 3Com's motion for clarification and deny plaintiff's motion for reconsideration and/or relief from Judgment. In granting 3Com's motion for clarification, I find that there are no material issues of fact in dispute, and that 3Com has demonstrated by clear and convincing evidence that each element of the asserted claims of the '656 patent is anticipated by the Burr and Nagayama prior art references. Therefore, for the reasons stated in my May 21, 2004 Decision and Order, as supplemented by this Decision and Order, I find that the asserted claims of the '656 patent, including the asserted independent and dependant claims, are invalid.
BACKGROUND
The facts underlying the parties' dispute have been discussed in the previous decisions issued by the Court of Appeals and this Court. Familiarity with those facts is presumed.
DISCUSSION
I. Standard of Review
In my May 21, 2004 Decision and Order, I held that the independent claims of the '656 patent were invalid as obvious or anticipated in light of the prior art Burr and Nagayama references. However, pursuant to Sandt Technology v. Resco Metal and Plastics, 264 F.3d 1344, (Fed. Cir. 2001), it is clear that when determining whether or not the asserted claims of a patent are anticipated or obvious in light of prior art, a district court should examine not only the independent claims, but the dependant claims as well. "Because dependant claims contain additional limitations, they cannot be presumed invalid as obvious just because the independent claims from which they depend have properly been so found." Sandt, 264 F.3d at 1356. Moreover, each limitation found in the independent claims must be addressed when determining whether or not a claim is anticipated or obvious in light of prior art. Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
In determining whether or not a claim is anticipated or rendered obvious by prior art, I apply the legal standard set forth in my May 21, 2004 Decision and Order. Specifically, a claim is "anticipated" if a single prior art reference "discloses each and every limitation of the claimed invention." Schering Corp., 339 F.3d at 1377 (Fed. Cir. 2003). A claim is "obvious" if the patented invention would have been obvious to a person skilled in the art at the time the invention was disclosed.Eisele v. St. Armour, 423 F.2d 135 (6th Cir. 1970); see also Glaxo Group Ltd. v. Apotex, Inc., 268 F.Supp.2d 1013, 1031 (N.D. Ill. 2003) ("patent claim is invalid for obviousness where the differences between the subject matter patented and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made")
Whether or not a claim is anticipated by prior art is a question of fact. Eaton Corp. v. Rockwell International Corp., 323 F.3d 1332 (Fed. Cir. 2003). Whether or not a claim is obvious in light of prior art is a legal conclusion, but one which is premised on factual findings. Beckson Marine v. NFM Inc., 292 F.3d 718 (Fed. Cir. 2002); Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870 (Fed. Cir. 1993). Although the determination of whether or not a claim is anticipated or obvious requires factual determinations, those issues may nevertheless be resolved on motions for summary judgement where there are no material facts in dispute. See Key Pharmaceuticals v. Hercon Laboratories Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (claims of anticipation amenable to summary judgment where there are no material issues of fact in dispute);Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1359 (Fed. Cir. 2000) (granting summary judgment on issues of obviousness).
While a patent may ultimately be declared invalid by a court of law, there is a legal presumption that a patent issued by the Patent Office is valid. Ruiz v. A.B. Chance Co., 234 F.3d 654, 662 (Fed. Cir. 2000). To overcome the presumption of validity, the party seeking to invalidate a patent must present clear and convincing evidence that the patent is invalid. Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999).
II. The Asserted Claims of the '656 Patent are Anticipated by the Burr and Nagayama references.
A. Independent Claims
As I held in my May 21, 2004 Decision and Order, the Burr and Nagayama references disclose single-stroke symbols that are graphically separate and practice spatial independence. These three limitations: single-stroke symbols, graphical separation, and spatial independence are found in each of the independent claims of the '656 patent (Claims 1, 10, 12, and 16). Plaintiff's motion for reconsideration seeks to revisit this determination, but I find no basis for reconsidering my previous determination, and therefore deny plaintiff's motion.
Independent claims 1, 10, 12, and 16, however, contain additional limitations that were not addressed in my previous Decision and Order. The issues regarding these limitations were fully briefed in the parties' competing motions for summary judgment on the issue of validity, and therefore the record is complete with respect to the remaining issues surrounding the remaining limitations of the independent (and dependant) claims. Based on a review of those additional claim limitations, I find that each of the limitations of the independent claims is anticipated by the Burr and Nagayama references.
1. Claim 1 of the '656 Patent
Claim 1 of the '656 Patent Discloses:
A system for interpreting handwritten text comprising a user interface including a manually manipulatable pointer for writing mutually independent Unistroke symbols in sequential time order and a user controlled signaling mechanism for performing a predetermined, symbol independent, delimiting operation between successive Unistroke symbols in said sequential order, some of said Unistroke symbols being linear and others being arcuate, each of said Unistroke symbols representing a predefined textual component said delimiting operation distinguishing said Unistroke symbols from each other totally independent of without reference to their spatial relationship with respect to each other;
a sensor mechanism coupled to said user interface for transforming said Unistroke symbols into corresponding ordered lists of spatial coordinates in said sequential order;
a recognition unit coupled to respond to said sensor mechanism for convening said ordered lists of coordinates into corresponding computer recognizable codes in said sequential order, each of said codes representing a corresponding textual component;
a display; and
a character generator coupled to said recognition unit and to said display for writing the textual components defined by said codes on said display in a spatial order that corresponds to the sequential order of said codes.
In addition to the limitations of single-stroke symbols, graphical separation and spatial independence which were addressed in my May 21, 2004 Decision and Order, this claim contains the additional limitations of: (1) a "system for interpreting handwritten text;" (2) a "user interface including a manually manipulatable pointer for writing;" (3) user input of symbols "in sequential time order;" (4) Unistroke symbols "representing a predefined textual component;" (5) Unistroke symbols "some . . . being linear and others being arcuate;" (6) a "sensor mechanism" that transforms Unistroke symbols "into corresponding ordered lists of spatial coordinates in sequential order;" (7) a "recognition unit that converts the "spatial coordinates" into "corresponding computer codes" that "represent a corresponding textual component;" (8) a "display;" and (9) a "character generator" to writ[e] the textual components on the display.
Each of the above-listed limitations is present in the Burr and Nagayama references. Both Burr and Nagayama disclose a "system for interpreting handwritten text." Burr at p. 554 (the system described "converts semistylized lowercase words into ASCII code suitable for word processors"); Nagayama at p. 2 (patent discloses a "control method using real-time recognition of handwritten character patterns. . . .").
The Burr and Nagayama references disclose a "user interface including a manually manipulatable pointer for writing." Burr at p. 554 (the user "`teaches' the computer his writing style by writing 26 reference characters"); Nagayama at p. 2 (device is used by "writing with a pen").
Burr and Nagayama disclose the user input of symbols "in sequential time order." Burr at pp. 554-559 (generally describing the process of inputting single-stroke symbols which are converted into a set of coordinates which form a shape matrix); Nagayama at p. 4 (invention allows for the real-time recognition of single-stroke symbols "so that data input operation can begin as soon as the operator decides to input the data"); p. 8 (character recognition begins upon pen-lift).
Both Burr and Nagayama disclose single-stroke symbols that represent a "predefined textual component." Burr at p. 555 ("[r]eference shapes are stored as a set of 26 curves, one for each letter of the alphabet"); Nagayama at p. 6 (the invention compares the handwritten single-stroke symbol to "reference standard patterns in the dictionary").
Burr and Nagayama disclose the fifth element listed above, that some of the single-stroke symbols be linear and others arcuate. Burr at p. 555 ("each symbol consist[s] of a single curve (no pen lifts); Burr at p. 558, fig. b (depicting the "t" symbol as formed by two straight lines); Nagayama at p. 8, (describing how a single line symbol may be used to generate a displayed representation of two lines); Nagayama at p. 13, fig. 5 (depicting arcuate single-stroke symbols that may be used with the invention).
Similarly, the sixth limitation, that a "sensor mechanism" be used to transform Unistroke symbols "into corresponding ordered lists of spatial coordinates in sequential order" is present in Burr and Nagayama. Burr at pp. 555-556 (describing the interpolation of the written symbol into a numerical representation and ordered into a "shape matrix" representing the grouped symbols); Nagayama at pp. 2-6 (describing the use of a transparent digitizer that senses the pressure of the writing instrument to determine the beginning and end of a single-stroke symbol, and then resolving the symbol into a set of points)
Burr and Nagayama also disclose a "recognition unit that converts the "spatial coordinates" into "corresponding computer codes" that "represent a corresponding textual component;" Burr at pp. 555-556 (describing normalization of curves and the use of a shape matching algorithm used to recognize shapes and convert the written shapes into a numeric representation); Burr at p. 554 (the described system converts semistylized lowercase words into ASCII code); Nagayama at pp. 5-6 (single-stroke character is "digitized, resolved into a set of points", stored in memory, compared to reference standard patterns such as an "a")
Burr and Nagayama each disclose the use of a display and a "character generator" to writ[e] the textual components on the display. Burr at pp. 557-559 (describing display of words generated by the disclosed handwriting recognition program); Nagayama at p. 6 ("[t]he character is now displayed for visual confirmation").
Xerox argues that Nagayama does not disclose a system for text entry, but instead discloses a system for the entry of commands, and therefore Nagayama does not contain any of the limitations relating to textual components set forth in claim one. While it is true that Nagayama discloses a method for inputting commands, that method relies on the inputting of single-stroke symbols that correspond to textual characters, and the display of those characters to confirm the correct input. Accordingly, Nagayama does practice the limitations found in Claim 1 with respect to the recognition and/or display of text.
Xerox further argues that the Burr and Nagayama references do not disclose the use of a set of symbols containing linear and arcuate single-stroke symbols. Xerox argues that Burr requires all symbols to be comprised of curves, and therefore does not contain linear symbols. While the Burr reference does state that the symbols must consist of a single curve, the system described in the article, and an illustration included with the reference demonstrate that linear symbols may be used. At page 558 of the Burr article, at figure "b", the author demonstrates that a linear symbol representing the letter "t" may be used in the Burr system. The symbol representing "t" is made of two intersecting lines each of which are essentially straight. Figure six found on the same page reveals that the linear "t" symbol was accurately recognized by the handwriting reader. Additionally, because the handwriting reader operates by matching a handwritten shape to a previously created reference shape, there is no technological limitation on creating a reference shape that is comprised of a linear symbol, despite the author's admonition that symbols be comprised of curves. Burr at pp. 554-555. With respect to the Nagayama system, there is no limitation suggesting that the symbols are limited to all linear or all arcuate forms. The only limitation in Nagayama is that all symbols be single-stroke symbols. Nagayama at p. 4. Moreover, Nagayama discusses how a linear symbol created by the user may be recognized by the reader and used to generate a graphical depiction of two lines, such as the boundaries of a roadway. Nagayama at p. 8. Nagayama also provides an illustration of a linear single-stroke character in figure 5 of the patent, in which the patent depicts the linear, single-stroke symbol for the numeral "1". Accordingly, I find that the Burr and Nagayama references disclose linear, single-stroke symbols.
2. Claim 10 of the '656 Patent is anticipated by Burr
Claim 10 of the '656 patent discloses:
A machine implemented method for interpreting handwritten text comprising writing said text in sequential time order using an alphabet of mutually independent Unistroke symbols to spell out said text at an atomic level, each of said Unistroke symbols conforming to a respective graphical specification that includes a stroke direction parameter, some of said Unistroke symbols having graphical specifications that differ from each other essentially only on the basis of their respective stroke direction parameters, some of said Unistroke symbols being linear and others being arcuate;
entering a predetermined, symbol independent delimiter between successive ones of said Unistroke symbols in said time order, said delimiter distinguishing successive Unistroke symbols from each other without reference to and totally independently of their spatial relationship with respect to each other;
capturing the stroke direction of each of said Unistroke symbols as an ordered list of coordinates;
disambiguating said Unistroke symbols from each other based upon predetermined criteria, including the stroke directions of the respective symbols.
Several of the limitations set forth in independent claim 10 have been previously discussed, and I will not revisit those elements here. Claim 10, however, does contain two additional limitations requiring: (1) that some of the Unistroke symbols have graphical specifications that differ from each other "essentially only on the basis of their respective stroke direction parameters", and, (2) that there be an "alphabet" of symbols.
The issue of stroke direction has been throughly discussed both by this court and the Federal Circuit Court of Appeals. In my December 20, 2001 Decision and Order, I held, on the basis of the Federal Circuit's October 5, 2001 Decision and Order, ( 267 F.3d 1361) that the "stroke direction" limitation did not require similarly shaped symbols to be drawn in opposite directions, but that similar symbols drawn in virtually the same way would differ in stroke direction if the direction of the stroke differed upon the completion of the formation of the symbol. Xerox Corp. v. 3Com Corp., 198 F.Supp.2d 283, 291-293. As I noted in my December 20, 2001 Decision and Order, such a conclusion was mandated by the Court of Appeals' interpretation of the "stroke direction" limitation when it determined that the Graffiti Symbols for "O" and "Q" differed in stroke direction despite the fact that those symbols are drawn in almost identical fashion, with both symbols being formed by starting at the top of the symbol and forming an oval in a counterclockwise manner. The Court of Appeals determined that because the "Q" was formed by the addition of a straight, horizontal line which continued from left to right from the top of the completed oval, the "O" and the "Q" had different stroke directions. Xerox Corp. v. 3Com Corp., 198 F.Supp.2d 283, 291-293. The Court of Appeals reaffirmed this interpretation as applied by this court in that Court's most recent decision of April 1, 2003. Xerox Corp. v. 3Com Corp., 61 Fed. Appx. 680, 682 ("the district court properly understood the claim construction set forth in our prior opinion.")
Applying the definition of stroke direction that has been adopted in this case, it is clear that Burr incorporates single-stroke symbols that differ from each other essentially only on the basis of stroke direction. Like the Graffiti symbols for "O" and "Q" that differ only on the basis of the horizontal line extending from the top of the oval, the Burr symbols for "o and "a" differ essentially only on the basis of the vertical line extending downward from the middle of the left side of the oval of the "a". Indeed, the Burr "a" is virtually identical to a Graffiti "Q" that has been rotated 90 degrees clockwise. Therefore, because the Burr "o" and "a" differ essentially only on the basis of stroke direction, as that term has been defined by the Court of Appeals, Claim 10 of the '656 patent requiring that some Unistroke symbols differ essentially only on the basis of stroke direction is invalid as anticipated by the Burr reference. This limitation is further invalidated as anticipated by Burr by the fact that Burr teaches the use of a time-warp algorithm, which takes into account stroke direction by considering the temporal relationship between the points making up the single-stroke symbol. Burr at p. 554 ("[t]he method combines a dynamic time-warp algorithm with a dictionary lookup of stored vocabulary words."); Burr at ¶ 555 ("[e]ach segment is a 2-D vector, with orientation in the direction of time flow.")
Xerox argues that the "o" and the "a" of Burr are not differentiated on the basis of stroke direction, but are distinct on the basis of their geometric shapes. This argument, however, runs directly contrary to Xerox's previous contention that the "O" and the "Q" of the Graffiti system differed only on the basis of stroke direction, and runs counter to the Court of Appeals' pronouncements on the subject.
Finally, with respect to the "alphabet" limitation of claim 10, it is clear that Burr teaches the use of an "alphabet" of single-stroke symbols. Burr at 555 ("[r]eference shapes are stored as a set of 26 curves, one for each letter of the alphabet.") Accordingly, I find that the "alphabet" limitation of the '656 patent is anticipated by Burr.
3. Claim 12 of the '656 Patent is anticipated by Burr andNagayama
Claim 12 of the '656 patent discloses:
A handwriting recognition process for pen computers, said process comprising the steps of correlating Unistroke symbols with natural language alphanumeric symbols, each of said Unistroke symbols being fully defined by a single continuous stroke that conforms geometrically and directionally to a predetermined graphical specification, some of said Unistroke symbols being linear and others being arcuate;
entering user written Unistroke symbols into buffer memory in sequential time order, successive ones of said Unistroke symbols being delimited from each other by a predetermined, symbol independent delimiting operation, said delimiting operation distinguishing successive Unistroke symbols from each other without reference to and totally independently of their spatial relationship with respect to each other;
reading out said Unistroke symbols from buffer memory in sequential time order to provide buffered Unistroke symbols;
translating each buffered Unistroke symbol that correlates with a natural language symbol into said natural language symbol; and
outputting any natural language symbols that are produced by such translating to a utilization device.
Claim 12 of the '656 patent contains several limitations found in Claim 1, but also contains 2 additional limitations. First, Claim 12 requires that Unistroke symbols be correlated with and outputted as "natural language alphanumeric symbols." Second, Claim 12 requires that the information generated by the handwriting reader be stored in and read out of buffer memory in "sequential time order." I find that both of these limitations are present in the Burr and Nagayama references.
With respect to the correlation and output of Unistroke symbols as natural language alphanumeric characters, Burr teaches the use of 26 symbols that correlate to and are displayed as natural language letters. Burr at 554-555. Nagayama also teaches the use of symbols that correspond to letters and numbers, and are displayed as such. Nagayama at p. 6, 13.
Additionally, both Burr and Nagayama teach the writing of information to and the reading of information from buffer memory in sequential time order. Burr teaches the use of character information which is written to memory where the information is compared to known words. The character information is then used to generate the display of the letters as recognized by the recognition device, in the order in which they were written, and the display of the best word match for the recognized characters. Burr, pp. 554-558. Nagayama also teaches the storing of information to memory in sequential time order. Nagayama at p. 5 ("[t]he line [symbol] that makes up the single-stroke character being written is digitized, resolved into a set of points, and stored in the image memory"). Once the character is recognized, it is "displayed for visual confirmation," thus demonstrating the output from memory in sequential time order. Nagayama at p. 6. Because both Burr and Nagayama teach all of the limitations of Claim 12, I find that claim 12 is invalid as anticipated by prior art.
4. Claim 16 of the '656 Patent is anticipated by Burr andNagayama.
Claim 16 of the '656 patent discloses:
A machine implemented handwriting recognition process comprising the steps of correlating natural language symbols with Unistroke symbols, where each of said Unistroke symbols is fully defined by a single continuous stroke that conforms geometrically and directionally to a predetermined graphical specification, at least certain of said Unistroke symbols being arcuate;
writing user selected Unistroke symbols in sequential time order while performing a predetermined, symbol independent delimiting operation for delimiting successive ones of said Unistroke symbols from each other, said delimiting operation distinguishing successive Unistroke symbols from each other without reference to and totally independently of the spatial relationship of said Unistroke symbols with respect to each other;
detecting said selected Unistroke symbols; and
translating the detected Unistroke symbols that are written into said machine into a corresponding natural language representation.
The limitations set forth in Claim 16 are present in Claims 1 and 12, and therefore, based on my previous discussions of those limitations, I find that Claim 16 of the '656 patent is invalid as anticipated by the Burr and Nagayama references.
B. The Dependant Claims of the '656 Patent are anticipated or rendered obvious by the Burr and Nagayama References.
Claim 2 of the '656 patent teaches the use of a user interface with "a substantially planer writing surface" for writing single-stroke symbols, and a "sensor mechanism" that "transforms each of said Unistroke symbols into an ordered list of x, y coordinate pairs." These limitations are present in the Burr and Nagayama references. In Burr, the author utilizes a digitizer "tablet" connected to a graphic terminal. Burr at 557. The system records the symbols in x, y coordinate pairs. Burr at 556. Similarly, Nagayama utilizes a substantially planer writing surface, and a sensor that transforms the symbol into an ordered list of x, y coordinates. Nagayama at pp. 2, 5.
Claim 3 of the '656 patent discloses the use of a "passive" pointer device and a writing surface with a sensor mechanism. Each of these limitations is anticipated by Burr and Nagayama, both of which disclose the use of a writing surface that incorporates a sensor mechanism to record pressure applied by a stylus.
Claim 7 of the '656 patent discloses the use of a pointer device that is a stylus. This limitation is anticipated by the Burr and Nagayama references, each of which disclose the use of a stylus for writing on a surface containing a sensor mechanism.
Claim 8 discloses that a Unistroke symbol is delimited by the making and breaking of contact between the stylus and the sensor mechanism. This limitation is found in Burr and Nagayama, each of which disclose the formation of single-stroke symbols that are delimited by the making and breaking of contact with the writing surface. Burr at p. 555; Nagayama at p. 5.
Claims 9 and 11 of the '656 patent disclose the use of single-stroke symbols that are "well separated from each other in sloppiness space." Symbols are well separated from each other in sloppiness space "[i]f there is little, if any, overlap between the variants of the different symbols. . . ." Xerox Corp. v. 3Com Corp., 267 F.3d at 1366. I find that pursuant to 35 U.S.C. § 112, these claims are indefinite, and therefore, are invalid.
"The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more. The degree of precision necessary for adequate claims is a function of the nature of the subject matter." Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (internal citations omitted).
In the instant case, one skilled in the art could not know whether or not a symbol is sufficiently distinct from another symbol so as to be sufficiently "well separated from . . . [an]other in sloppiness space." "Sloppiness space" is not a term of art used in the industry, and does not convey a concept that was known in the industry. Moreover, the patent does not explain how one would determine whether or not symbols are sufficiently distinct so as to be well separated in sloppiness space. There is no test for determining whether or not single-stroke symbols are or are not well separated from one another in sloppiness space. Although the determination of how much one symbol overlaps another is readily discernable on the basis of a simple calculation, there is no standard for determining the point at which one symbol's overlapping coordinates cause it to become insufficiently well separated in sloppiness space. Likewise, there is no way to determine whether or not two symbols do achieve sufficient separation so as to be well separated in sloppiness space. Because the term "sloppiness space" is ambiguous and is not clearly defined or explained in the patent to an extent that would allow one skilled in the art to understand how symbols can be well separated in sloppiness space, I find that claims 9 and 11 of the patent are invalid pursuant to 35 U.S.C. § 112 for lack of definiteness.
Even if claims 9 and 11 are not invalid as indefinite, I find that those claims are anticipated by Burr. It has been adjudged by this court, and affirmed by the Court of Appeals, that despite Graffiti's use of some symbols that appear to have significant overlap, such as the symbols for "O" and "Q"; "P" and "D"; and "B" and "R", those symbols nevertheless constitute symbols that are well separated from each other in sloppiness space, and therefore infringe on the '656 patent. Upon reviewing the Burr reference, and in light of the previous determinations of this court and the Court of Appeals, it is clear that Burr teaches the use of symbols that are well defined in terms of sloppiness space. The majority of the sample symbols reproduced by the author in figure 5 of the patent are vastly distinct from one another, thus practicing sufficient separation in sloppiness space. Those symbols that do appear to have some overlap, such as the "i" and "l" symbols, practice sloppiness separation just as the Graffiti symbols discussed above. Accordingly, because Burr teaches the use of symbols that are well separated in sloppiness space, Burr anticipates Claims 9 and 11 of the '656 patent.
Claim 13 of the '656 patent requires that "certain Unistroke symbols correlate with natural language alphanumeric symbols, and other Unistroke symbols correlate with user invokeable control functions." This limitation is anticipated by Nagayama, which also discloses the use of single-stroke symbols that correspond to either letters, numbers, or control functions.
Claims 14 the '656 patent discloses the use of Unistroke symbols to serve as a control function that "shifts the correlation of at least some . . . Unistroke symbols from one set of natural language alphanumeric symbols to another set of natural language alphanumeric symbols." Claim 15 discloses the same control function but specifies that the control function will be effective as to only one subsequent Unistroke, and then will return to the original natural language alphanumeric symbol set. In effect, these claims disclose the use of a Unistroke symbol acting in a similar manner as a "shift" or "caps lock" key on a typewriter: activating the control function could cause one or all ensuing characters to be transformed from lower to uppercase, or vice versa.
3Com concedes that neither Burr nor Nagayama explicitly disclose the use of a symbol acting as a control function for ensuing symbols. Nagayama, however, does disclose a strikingly similar feature in which a user can input commands that may be used to convert graphics that are displayed on the screen. For example, Nagayama teaches that single-stroke symbols may be used to convert curves to straight lines. Nagayama at p. 7. This feature, along with the fact that Nagayama discloses the use of single-stroke symbols to act as command inputs, when combined with known prior art, (i.e. the "Organek" system, which disclosed the use of single-stroke symbols to invoke control functions such as "shift," and "caps lock"), renders Claims 14 and 15 of the '656 patent obvious. It would have been obvious to one skilled in the art of handwriting recognition to combine the teachings of Organek with Nagayama to utilize the known features of both in assigning a control function to a single-stroke symbol. Accordingly, I find that Claims 14 and 15 of the '656 patent are invalid as obvious in light of Nagayama and Organek.
CONCLUSION
For the reasons set forth above, I grant defendants' motion for reconsideration (Docket Item 338), and hold that the asserted claims of the '656 patent are invalid as anticipated or obvious in light of the prior art. I deny plaintiff's motion for reconsideration and/or relief from judgment. (Docket Item 343).ALL OF THE ABOVE IS SO ORDERED.