AllVoice Computing PLC v Nuance Communications, Inc.
Lexis: 2007 U.S. App. LEXIS 23949
Decided October 12, 2007
Facts: AllVoice holds Patent No. 5,799,273 (the ‘273 patent), directed to an interface between a speech recognition engine and various end-user application programs on a personal computer. AllVoice sued Nuance, alleging that Nuance’s Dragon Naturally Speaking software infringed the ‘273 patent.
Procedural History: The District Court found the ‘273 patent invalid because claims 60, 61, and 67 were indefinite and because the patent specification did not disclose the best mode of practicing claim 73. AllVoice appealed to the Federal Circuit Court of Appeals.
Holding: The district court erred in its application of both the indefiniteness and best mode doctrines. Reversed and remanded.
Analysis:
• Indefiniteness: The test for definiteness is whether one skilled in the art would understand the bounds of the claim, read in light of the specification. For means-plus-function clauses, the 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 of the claim.
o Claim 60: The district court incorrectly construed the phrase “output means†to require a system outputting, alternately, to a plurality of application programs. In doing so, the court relied on a portion of the prosecution history where AllVoice distinguished its invention from a prior art program that only worked with one application program. The court erred because this distinction only requires AllVoice’s invention to simply work with multiple programs, and not with multiple programs alternatively. It is clear from the declaration of AllVoice’s expert that one of ordinary skill in the art would understand a reference in the specification to correspond to the output means of claim 60.
o Claims 61 and 67: The district court incorrectly construed “independent†means to requires isolated means, such that the claimed interface cannot receive positioning data from the application program. The district court again relied on a portion of the prosecution history where AllVoice distinguished its invention from a prior art program that failed to positioning features within its system. The court erred by reading this distinction as a disavowal of any interface ability to receive positioning data from the application program, when all the distinction requires is that the program have its own positioning features, which can operate on data received from the application program.
o Claims 61 and 67: The district court also incorrectly found the claims to be indefinite for failing to disclose a sufficient algorithmic structure. “In software cases...algorithms in the specification need only disclose adequate defining structure to render the bounds of the claims understandable to one of ordinary skill in the art.†The statement of an expert concluded that the algorithm set forth in the specification could be implemented by one of ordinary skill in the art using many well known features of Windows. This being the only assessment in the record of the sufficiency of the algorithmic structure, the claims must be found to be sufficiently definite.
• Best Mode: Only the claimed invention is subject to the best mode requirement. The court must determine (1) whether, at the time of filing, the inventor had a best mode of practicing the claimed invention, and (2) whether the inventor has concealed that best mode from the public.
o Claim 73: The district court found the ‘273 patent invalid for deliberate concealment of the best mode, because some functions of one of AllVoice’s commercial products constituted an undisclosed best mode. The court erred, because claim 73 does not require the features of the commercial product, and thus the alleged best mode falls outside the scope of claim 73.
Notes: In completing the best mode analysis, the court, along with relying on the plain language of claim 73, looked to claim differentiation to find that the alleged best mode fell outside the scope of the claim. It noted a distinction between the words “formingâ€, “updatingâ€, “monitoringâ€, and “maintainingâ€. Independent claims 1, 15, and 28 all included “updatingâ€, “monitoringâ€, and “maintaining†limitations in various contexts, but claim 73 required “forming link data.†Thus, the alleged best mode, which performed these unclaimed functions, fell outside of the scope of claim 73.
Lexis: 2007 U.S. App. LEXIS 23949
Decided October 12, 2007
Facts: AllVoice holds Patent No. 5,799,273 (the ‘273 patent), directed to an interface between a speech recognition engine and various end-user application programs on a personal computer. AllVoice sued Nuance, alleging that Nuance’s Dragon Naturally Speaking software infringed the ‘273 patent.
Procedural History: The District Court found the ‘273 patent invalid because claims 60, 61, and 67 were indefinite and because the patent specification did not disclose the best mode of practicing claim 73. AllVoice appealed to the Federal Circuit Court of Appeals.
Holding: The district court erred in its application of both the indefiniteness and best mode doctrines. Reversed and remanded.
Analysis:
• Indefiniteness: The test for definiteness is whether one skilled in the art would understand the bounds of the claim, read in light of the specification. For means-plus-function clauses, the 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 of the claim.
o Claim 60: The district court incorrectly construed the phrase “output means†to require a system outputting, alternately, to a plurality of application programs. In doing so, the court relied on a portion of the prosecution history where AllVoice distinguished its invention from a prior art program that only worked with one application program. The court erred because this distinction only requires AllVoice’s invention to simply work with multiple programs, and not with multiple programs alternatively. It is clear from the declaration of AllVoice’s expert that one of ordinary skill in the art would understand a reference in the specification to correspond to the output means of claim 60.
o Claims 61 and 67: The district court incorrectly construed “independent†means to requires isolated means, such that the claimed interface cannot receive positioning data from the application program. The district court again relied on a portion of the prosecution history where AllVoice distinguished its invention from a prior art program that failed to positioning features within its system. The court erred by reading this distinction as a disavowal of any interface ability to receive positioning data from the application program, when all the distinction requires is that the program have its own positioning features, which can operate on data received from the application program.
o Claims 61 and 67: The district court also incorrectly found the claims to be indefinite for failing to disclose a sufficient algorithmic structure. “In software cases...algorithms in the specification need only disclose adequate defining structure to render the bounds of the claims understandable to one of ordinary skill in the art.†The statement of an expert concluded that the algorithm set forth in the specification could be implemented by one of ordinary skill in the art using many well known features of Windows. This being the only assessment in the record of the sufficiency of the algorithmic structure, the claims must be found to be sufficiently definite.
• Best Mode: Only the claimed invention is subject to the best mode requirement. The court must determine (1) whether, at the time of filing, the inventor had a best mode of practicing the claimed invention, and (2) whether the inventor has concealed that best mode from the public.
o Claim 73: The district court found the ‘273 patent invalid for deliberate concealment of the best mode, because some functions of one of AllVoice’s commercial products constituted an undisclosed best mode. The court erred, because claim 73 does not require the features of the commercial product, and thus the alleged best mode falls outside the scope of claim 73.
Notes: In completing the best mode analysis, the court, along with relying on the plain language of claim 73, looked to claim differentiation to find that the alleged best mode fell outside the scope of the claim. It noted a distinction between the words “formingâ€, “updatingâ€, “monitoringâ€, and “maintainingâ€. Independent claims 1, 15, and 28 all included “updatingâ€, “monitoringâ€, and “maintaining†limitations in various contexts, but claim 73 required “forming link data.†Thus, the alleged best mode, which performed these unclaimed functions, fell outside of the scope of claim 73.