Opinion
97-CV-6182T.
May 21, 2004
DECISION and ORDER
INTRODUCTION
Plaintiff Xerox Corporation, ("Xerox"), brings this patent infringement action against defendants 3Com Corporation, U.S. Robotics Corporation, U.S. Robotics Access Corp. and Palm Computing, (collectively "3Com") claiming that defendants have infringed upon Xerox's U.S. Patent No. 5,596,656, (the '656 patent). The '656 patent discloses a system for computer recognition and interpretation of handwritten symbols called "Unistrokes." Xerox claims that defendants have infringed the '656 patent by manufacturing and selling a device, (known as a "PalmPilot"), that utilizes a computer-based system for recognizing handwritten symbols called "Graffiti." Xerox contends that Graffiti infringes upon the '656 patent because it practices all of the independent claims of the '656 patent.
By Decision and Order dated June 6, 2000, I construed the claims of the '656 patent, and based on that claim construction, held that Graffiti did not infringe on that patent. By Decision and Order dated October 5, 2001, the United States Court of Appeals for the Federal Circuit substantially affirmed this court's claim construction, but held that this court erred in determining that Graffiti did not infringe on Xerox's patent. The Court of Appeals affirmed-in-part and reversed-in-part my June 6, 2000 Decision and Order, and remanded the action for further proceedings consistent with its Mandate.
Thereafter, the parties filed competing motions for summary judgment on the issues of infringement, validity, and enforceability. By Decision and Order dated December 20, 2001, I granted Xerox's motion for summary judgment on the issues of infringement, validity, and enforceability. In short, I held that based on the Court of Appeals' October 5, 2001 interpretation of the '656 Patent, defendants' accused products infringed the claims of the relevant claims of the '656 patent. I further held that the patent was valid based on the premise that the Court of Appeals would not have construed the patent in a manner that would render it invalid.
On February 20, 2003, in an unpublished Decision and Order, the Federal Circuit Court of Appeals affirmed this court's determination that defendants had infringed the '656 Patent, but vacated my finding that the patent was valid. The Court of Appeals held that notwithstanding its determination regarding infringement, this court was required to conduct a full analysis regarding the validity of the '656 patent. Specifically, the Court of Appeals held that "[b]ecause the district court has not analyzed the [prior art] references for either obviousness or anticipation, remand is appropriate so that the district court may address the validity of the claims at issue." Xerox v. 3Com, ("Xerox II") 61 Fed.Appx. 680, 684 (Fed. Cir. 2003).
Based on the Federal Circuit Court of Appeals Mandate, the parties have filed competing motions for summary judgment on the issue of validity. Xerox moves for summary judgment on the issue of validity on grounds that the patent is valid, and that there is no evidence that the patent is obvious in light of the prior art, or that prior art anticipated the '656 Patent. Defendant 3Com argues that the patent is invalid because the claims of the '656 patent are anticipated by and/or rendered obvious by at least three prior-art references. 3Com also contends that dependant claims 9-11 are invalid for failure to satisfy the requirements of 35 U.S.C. § 112, which requires the specification of a patent to set forth a written description in clear, concise, and exact terms so that one skilled in the art could make and use the described invention.
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. Anticipation and Obviousness StandardsPursuant to 35 U.S.C. § 102, claims of a patent may be determined to be invalid it the invention or inventions disclosed in the claims are anticipated by prior art. A claim is "anticipated" if a single prior art reference "discloses each and every limitation of the claimed invention." Schering Corp v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). In accordance with patentability requirements set forth in 35 U.S.C. § 103, a patent claim may be determined invalid if it is obvious in light of the prior art. 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).
Xerox argues that this court should grant its motion for summary judgment and affirm the validity of the '656 patent because the PTO has affirmed the validity of the patent in its initial issuance of the Patent and again on reexamination. The mere fact, however, that the PTO has issued a patent, or affirmed a patent's validity on reexamination clearly can not preclude this court from conducting an examination into the validity of the '656 Patent. Moreover, the fact that the PTO deemed the '656 patent valid in light of the prior art does not mandate a finding of validity by this court, particularly where the Court of Appeals has, by its own admission, given a broad construction to the claims at issue. There is no evidence that the PTO considered the prior art in light of the claims as construed by the Court of Appeals, and therefore the PTO's previous finding of validity is neither conclusive nor determinative of the issue of validity currently before the court.
II. The '656 Patent is Anticipated by Prior Art References
In determining whether or not a patent claim is anticipated or obvious in light of prior art, the court must first construe the claims of the patent at issue, and then compare the construed claims to the prior art. Key Pharmaceuticals, 161 F.3d at 715. Anticipation analysis is similar to infringement analysis in that art which would infringe on a patent claim if it appeared after a patent was issued will anticipate a claim if the art predates the patent. Aerotec Industries of Cal. v. Pacific Scientific Co., 381 F.2d 795 (9th Cir. 1967) ("That which infringes, if later, will anticipate, if earlier.")
In the instant case, the claims of the '656 Patent have been subjected to an exhaustive review by both this court and the Court of Appeals for the Federal Circuit. As construed, the independent claims of the '656 patent contain two key elements: "graphical separation," and "spatial independence." Xerox II, 61 Fed. Appx 680, 681-82 (Fed Cir. 2003); Xerox v. 3Com, 198 F. Supp.2d at 290. In its first decision in this case, the Court of Appeals construed the term "graphical separation" to describe unistroke symbols that have "sufficient graphical separation" for a computer to "definitively recognize a symbol immediately upon delimitation or pen lift." Xerox v. 3Com, 267 F.3d 1361, 1366-1367. ("Xerox I"). I adopted this construction in my December 20, 2001 Decision and Order, and in Xerox II, the Court of Appeals affirmed that graphical separation "is established if the Unistroke symbols are sufficiently distinct to enable a computer to definitively recognize them." Xerox II, 61 Fed. Appx. at 682-83.
The term "spatial independence" has been construed by the Court of Appeals to require that "the accused device be able to distinguish between and recognize symbols without reference to where a previous symbol was written on the writing surface."Xerox II 61 Fed. Appx. at 681. (citing Xerox I, 267 F.3d at 1367).
3Com contends that three prior art references invalidate the asserted claims of the '656 Patent because the references anticipate the two key elements of the independent claims: graphical separation and spatial independence. Xerox argues that the prior art references do not anticipate the claims of the '656 Patent because they do not disclose symbols that are definitively recognized upon delimitation that are spatially independent.
A. The Asserted Prior Art References
1. The Burr Reference
3Com sets forth three prior art references which it claims anticipate the independent claims of the '656 Patent. 3Com contends that these references each disclose spatially independent, graphically separated single-stroke symbols that are recognized immediately upon delimitation. First, 3Com cites a 1983 journal article by D.J. Burr, who at the time of authorship worked for Bell Laboratories. The article, entitled "Designing a Handwriting Reader," proposes the creation of a computer based handwriting recognition device in which a user inputs data using only single-stroke curves. The recognition device compares the curves to a database of stored shapes, and displays an alpha-numeric character corresponding to the handwritten curve.
Once a word is formed by the displayed characters, the device compares the "shape matrix" of the word formed against a database of stored words to determine whether or not the data recognized by the device was the intended data. For example, if a user intended to enter the word "data" into the recognition device, but the intended letter "t" was recognized as the letter "f," the device would compare the shape matrix of the "word" "dafa" against known word shapes, and change the letter "f" to a "t" to form the word "data."
2. The Nagayama Reference
On February 25, 1984, the Japanese Patent Office published patent application No. SHO59-35277 by Tadahiro Nagayama entitled "Control Method Using Real-time Recognition of Handwritten Character Patterns." (Hereinafter the "Nagayama Reference" or "Nagayama"). In general, the Nagayama reference discloses a method for using handwriting recognition to enter commands into a computer. The reference discloses the use of single-stroke characters or figures that can be written anywhere on a digitized surface, which, upon pen lift, are recognized by the device. The recognized figures correspond to commands, functions, menu items, or other items.
3. The PenWindows Reference
PenWindows refers to an operating environment developed by Microsoft Corporation for pen-based computing systems. The PenWindows software was developed in the late 1980's and early 1990's, and was shipped to customers in 1992. Unlike systems using a combination display/writing surface, PenWindows utilized a digital palette connected to a standard computer. Writing on the palette allowed users to input data and execute commands.
4. The Sklarew Reference
Although the Federal Circuit Court of Appeals specifically directed this court to evaluate the asserted claims in light of the Sklarew reference, defendants concede that the Sklarew reference raises questions of fact as to whether or not Sklarew teaches, inter alia, (1) single-stroke symbols; (2) spatial independence; (3) definitive recognition immediately upon delimitation; and (4) an "alphabet" of Unistroke symbols. Accordingly, defendants have not moved for summary judgment on the issue of invalidity in light of the Sklarew reference.
B. The Prior Art References Disclose Single-Stroke Symbolsthat are Graphically Separated.
As stated above, both the Court of Appeals and this court have stated that symbols are graphically separated if they are single-stroke symbols that are capable of being definitively recognized immediately upon pen-lift. Xerox I, 267 F.3d at 1366. Both the Burr and Nagayama references teach the use of single-stroke symbols that are definitely recognized upon pen lift. At page 555 of the Burr Reference, Burr states that his system uses a set of 26 single-stroke curves which correspond to letters of the English alphabet. According to the reference, the "only" restriction on the symbols used is that "each symbol consist of a single curve (no pen lifts)." The system captures the x-y coordinates of each symbol drawn, and compares the drawn symbol to a set of stored symbols to determine which symbol has been drawn, and which character corresponds to the drawn symbol. Each symbol is therefor definitively recognized upon delimitation.
Nagayama also teaches the use of single-stroke symbols that are definitely recognized upon pen lift. The reference specifically discloses "a set of two or more characters or figures, each of which have a single stroke." Nagayama at page 2. The device recognizes the symbols immediately upon delimitation by "detecting removal of [a] pen from [a] transparent digitizer to determine the end of the input of a single-stroke character or figure." Id.
Xerox argues that neither of these references teaches definitive recognition because each system provides for additional actions once a symbol is recognized. For example, in Burr, recognized symbols are combined to form the shape matrix of a word, which matrix is then compared against a dictionary of known word shapes to establish a match. In Nagayama, the user confirms the recognition of the shape by entering a "confirm" command
As the Federal Circuit noted, however, these additional manipulations of the entered data do not transform the definitive recognition of the symbol that has already occurred into tentative recognition. The Federal Circuit, in providing guidance to this court, explicitly noted that:
Definitive recognition [of a Unistroke symbol] does not require a permanent, unalterable choice of a symbol that cannot be changed if the recognition is later determined to be erroneous. Thus, the inclusion of a means for correcting output after a symbol has been recognized does not convert what would have been definitive recognition into tentative recognition. As long as the system completes the recognition of the Unistroke symbol, subsequent action by the user or subsequent processing by the computer to delete or replace that symbol does not negate that recognition.Xerox II, 61 Fed. Appx. at 684.
In this case, the Burr and Nagayama references clearly disclose systems in which single-stroke symbols are definitively recognized upon delimitation. The subsequent processing or action by the user does not transform the definitive recognition of the symbols into tentative recognition. The evidence further demonstrates that the Burr and Nagayama references teach the use of symbol sets in which the symbols are definitively recognized, as each reference discloses the creation of unique symbols which are capable of being definitively recognized by the recognition device. Neither system discloses the use of symbols which would correspond to two or more different characters or functions — in which case the recognition system would be unable to definitively recognize a symbol.
Xerox further argues that neither of these references teaches a "set" of single stroke symbols, and therefore 3Com can not demonstrate that each symbol of a prior-art symbol set anticipates or renders obvious Unistrokes. Burr, however, discloses a set of 26 single-stroke curves which correspond to letters of the English alphabet. Burr at p. 555. Moreover, Burr allows the user to define the stroke-set to be used (provided that each stroke is created using only a single stroke) and in creating a stroke-set, the user could teach the reader to read unistrokes themselves. Nagayama requires "a set of two or more characters or figures, each of which have a single stroke." Nagayama at page 2. Accordingly, I find that Burr and Nagayama do disclose a set of single stroke symbols. While the symbols may be user-defined, the symbols, according to the limitations set forth in the respective references, are Unistroke symbols because they must be single stroke symbols that are sufficiently distinct, ie: (graphically) separate.
Xerox contends that the symbols disclosed in the Burr and Nagayama references do not anticipate or render obvious unistrokes because the symbols disclosed in those references are not graphically separate such that they are capable of being definitively recognized upon pen lift. In support of this argument, Xerox notes that certain symbols (particularly the "i" and "l" symbols of Burr) are not graphically separate because they are often confused by the mechanical reader, and therefore recognition of these symbols is often inaccurate. Xerox's argument, however, is inapposite. Whether or not the reader recognizes the symbol intended by the writer is irrelevant for purposes of determining whether or not symbols are graphically separate such that each symbol will be definitively recognized upon delimitation. Thus, while the "i" and "l" symbols may be visually similar to the human eye, they will be considered graphically separate as long as each symbol is definitively recognized upon pen lift. Under Burr, each symbol is definitively recognized by the reader, and thus each symbol is graphically separate.
C. The Prior Art References Disclose Unistroke Symbols thatutilize Spatial Independence.
As defined by the Court of Appeals, the spatial independence limitation of the '656 patent claims requires that "the invention be capable of properly distinguishing and recognizing symbols without reference to where a previous symbol was written on the writing surface." Xerox I, 267 F.3d at 1368.
Both Burr and Nagayama teach spatial independence. Both references acknowledge a deficiency in the then-present state of the art which required users to input data in particular areas, such as boxes. See Burr at p. 554; Nagayama at p. 4. Both Burr and Nagayama teach devices which allow symbols to be written anywhere on the recognition device surface, without respect to where the previous symbol was written. Accordingly, these references teach spatial independence, and thus anticipate the independent claims of the '656 Patent which require spatial independence.
Xerox argues that Burr does not exhibit spatial independence because the reference strongly suggests that spatial relationships between the written symbols is relied on by the recognition device to group characters into words. However, even if Burr does rely on spatial relationships to group words, that function has no effect on spatial independence, which merely requires that the system be able to distinguish and recognize symbols without reference to where a previous symbol was written on the writing surface." Xerox I, 267 F.3d at 1368. Under Burr, even if spatial relationships are used to group words, the symbols are distinguished and recognized without reference to where a previous symbol was written.
Xerox argues that Nagayama can not anticipate or render obvious the '656 patent because Nagayama does not disclose a system for text entry. While it is true that Nagayama discloses a method for inputting commands instead of text, the reference nevertheless discloses the use of single-stroke symbols that are sufficiently graphically separated so as to be definitively recognized upon delimitation. The fact that the intention of the entry is to input commands rather than text is immaterial to the limitations of the '656 patent, particularly in light of the fact the '656 Patent is not limited to the entry of text, but does in fact disclose the use of unistrokes for inputting commands as well as text.
Finally I have considered Xerox's remaining arguments in support of its motion for a finding of patent validity, and in support of its opposition to defendant's motion for summary judgment, and find those arguments to be without merit.
Because I find that the Burr and Nagayama references anticipate and render obvious the claims of the '656 patent, I find that the '656 patent is invalid in light of those prior art references. Because the '656 patent is invalid in light of Burr and Nagayama, the court need not consider the patent in light of the Pen Windows or Sklarew references, each of which appear to raise issues of fact not amenable to resolution upon a motion for summary judgment.
CONCLUSION
For the reasons set forth above, I grant defendants' motion for Summary Judgment (Docket Item 288), and hold that the '656 patent is invalid in light of the prior art. I deny plaintiff's motion for summary judgment. (Docket Item 284).
ALL OF THE ABOVE IS SO ORDERED.