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United States Court of Appeals for the Federal Circuit 05-1088

 

 AQUATEX INDUSTRIES, INC., Plaintiff-Appellant, v. TECHNICHE SOLUTIONS, Defendant-Appellee. __________________________ DECIDED: August 19, 2005 __________________________ Before MAYER, GAJARSA, and DYK, Circuit Judges. MAYER, Circuit Judge.

 

AquaTex Industries, Inc. (“AquaTex”) appeals the judgment of the United States District Court for the Middle District of Tennessee, AquaTex Indus. Inc. v. Techniche Solutions, No. 02-CV-914 (M.D. Tenn. Sept. 27, 2004), granting summary judgment of noninfringement in favor of Techniche Solutions (“Techniche”). Because there was no literal infringement, and because the district court improperly determined that prosecution history estoppel barred infringement under the doctrine of equivalents, we affirm-in-part, reverse-in-part, and remand.

Background AquaTex initiated this action against Techniche for contributory infringement of United States Patent No. 6,371,977 (“the ’977 patent”). AquaTex is the assignee of the ’977 patent entitled “Protective Multi-Layered Liquid Retaining Composite.” Both parties market multi-layered, liquid-retaining composite material for evaporative cooling garments. AquaTex contends that Techniche’s evaporative cooling garments and products infringe the ’977 patent either literally or under the doctrine of equivalents. The ’977 patent claims a method of cooling a person through evaporation by providing a multi-layered, liquid-retaining composite material comprising a fiberfill batting, and either hydrophilic polymeric fibers or hydrophilic polymeric particles. The technology is suited for use in a wide variety of items such as protective garments, blankets, and compresses. In general terms, practice of the patented method involves soaking a composite material in a liquid for a matter of minutes, wringing out the excess liquid, and then placing the material or garment against a person for cooling by evaporation. The ’977 patent specification describes the invention as including: a basic configuration of a multi-layered, liquid-retaining composite material comprising of: a conductive layer which is adapted for placement in close proximity to, or indirect contact with the body of the wearer; a filler layer impregnated [with] a fiberfill batting material and with liquid absorbent particles, fibers, or a combination of both; a retainer layer for retention of the filler layer between the conductive layer and the retention layer; and, if needed, an outside protective layer attached to, or placed adjacent to, the outermost surface of the retention layer. ’977 patent, col. 3, ll. 31-44. The patent includes 35 claims. Independent claims 1 and 9 are disputed in this case. Claim 1 reads: A method of cooling a person by evaporation, comprising:

05-1088 2

providing a multi-layered, liquid-retaining composite material comprising a fiberfill batting material, and hydrophilic polymeric fibers that absorb at least about 2.5 times the fiber’s weight in water; soaking said multi-layered composite in a liquid; employing said multi-layered, liquid-retaining composite material as a garment or a flat sheet and evaporatively cooling said person. ’977 patent, col. 13, ll. 64-67 & col. 14, ll. 1-6 (emphasis added). Similarly, claim 9 requires the water-absorbent layer to comprise “a fiberfill batting material and hydrophilic polymeric particles.” The specification of the ’977 patent describes a “filler layer impregnated [with] a fiberfill batting material and with liquid absorbent particles, fibers, or a combination of both[.]” col. 3, ll. 37-39. Further, the specification states: With respect to the liquid absorbent fibers, the blend is a combination of a superabsorbent polymeric fiber and a fiberfill or batting. The particular fiberfill is not known to be critical. That is, any commercial fiberfill may be used as long as it does not adversely affect the performance of the end composite. Accordingly, when the end composite is to be used as or part of a fire retardant garment, the fiberfill or batting is chosen accordingly. In such a case, the fiberfill is typically comprised of a flame and heat resistant material such as woven aramid and/or polybenzamidazole (“PBI”) fibers. That is, the fiberfill is selected from a group consisting of an aramid polymer fabric material, as [a] blend of aramid polymer fabric materials, a polybenzamidazole material, and a blend of aramid polymer fabric and polybenzamidazole materials. For other non-flame retardant applications, commercial fiberfill such as DuPont DACRON® available from DuPont, or polyester fiberfill products from Consolidated Textiles, Inc. of Charlotte, N.C. Additionally, U.S. Pat. Nos. 5,104,725; 4,304,817; and 4,818,599; all of which [are] incorporated by reference, disclose fiberfill fibers and blends suitable for certain applications of the present invention. ’977 patent, col. 3, ll. 45-65. The commercial fiberfill examples described in the specification are all synthetic or man-made materials. Likewise, the three United States patents incorporated by reference each discloses and teaches the use of synthetic polyester fiberfill or synthetic polyester fiberfill blends.

05-1088 3

During prosecution of the ’977 patent the United States Patent and Trademark Office initially rejected AquaTex’s current claims 1 and 9 as anticipated by United States Patent No. 4,897,297 (“the ’297 patent”). The rejection focused on the ’297 patent’s disclosure of a method for cooling a person using a multi-layered, liquid-retaining composite material comprising a fiberfill batting material. The examiner noted that the disclosed fiberfill batting material was a “mixture of synthetic polymer pulp or wood pulp, which is a fiber.” In response to the office action, AquaTex traversed the rejection by distinguishing the ’297 patent and by adding an additional claim limitation. AquaTex contended that: “The ’297 Patent discloses a compress that is made from an elastic fabric and comprises a hydrogel-forming polymeric material. The absorbent polymer filler material may be particulate, and may be accompanied by a diluent filling material.” Important to our analysis, AquaTex stated “the ’297 Patent fails to disclose or suggest the fiberfill batting and polymeric fibers and/or particles of the composite material in the claimed method. Additionally, the ’297 Patent fails to disclose or suggest the evaporative cooling method of the present invention.” Addressing an obviousness rejection by the examiner based upon the ’297 patent, AquaTex similarly pointed out that “the ’297 Patent does not cool by evaporation, and is elastic.” AquaTex amended current claims 1 and 9 to specify cooling a person “by evaporation” to distinguish the ’297 patent. As discussed in the office action response, the combination of materials within the ’297 patent is designed to retain liquid and insignificant amounts of evaporation would occur over long periods of time. AquaTex contrasted the evaporative cooling method of the claimed invention which is designed to

05-1088 4

release rather than retain moisture. The examiner withdrew the rejection and allowed the ’977 patent to issue. Techniche’s accused products use Vizorb®, which is manufactured by Buckeye Technologies. Vizorb® is a commercially available composite material primarily containing cellulose fluffed pulp, but also incorporating both natural and synthetic fibers. In particular, it is manufactured from wood cellulose, superabsorbent polymer, bicomponent fiber, cellulose based carrier sheet, and a chemical binder. Physically, Vizorb’s® fibers are between three to six millimeters in length and the product is glued together. The superabsorbent in Vizorb® is generally referred to as a powder. It is typically used in feminine hygiene products, baby diapers, and adult incontinence products, not as filler for furniture, pillows, or sleeping bags. Techniche moved for summary judgment on the ground that its accused product does not infringe AquaTex’s ’977 patent literally or by application of the doctrine of equivalents. AquaTex correspondingly moved for partial summary judgment that Techniche’s products do infringe its ’977 patent. The trial court construed “fiberfill” from the perspective of one of ordinary skill in the art to encompass synthetic fibers, and not natural fibers or a combination of synthetic and natural fibers. The court based its claim construction analysis on the ordinary meaning of the claim term “fiberfill” as elicited from a number of technical and industry dictionaries. Further, the court examined the specification of the ’977 patent to reach the determination that the commercial fiberfill batting contemplated by the patentee must consist of polyester or other synthetic fibers. It also found that AquaTex disavowed the claim scope of natural fibers during prosecution of the ’977 patent by 05-1088 5

stating in its office action response that “the ’297 Patent fails to disclose or suggest the fiberfill batting and polymeric fibers and/or particles of the composite material in the claimed method.” The court concluded that AquaTex was barred from asserting any doctrine of equivalents claim because it disavowed the use of wood pulp or a mixture of synthetic and natural fibers as fiberfill in the water-absorbent layer. It reasoned that prosecution history estoppel barred AquaTex from asserting that “fiberfill batting material” could be partially comprised of natural fibers. The court granted Techniche’s motion for summary judgment of noninfringement, denied its request for attorney fees,* and denied AquaTex’s motion for sanctions, which is not at issue in this appeal. AquaTex appeals and our jurisdiction is pursuant to 28 U.S.C. § 1295(a)(1). Discussion We review a district court’s grant of summary judgment de novo. Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1365 (Fed. Cir. 2000). “Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law.” Id. (citations omitted). Summary judgment is improper “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “In the context of a grant of summary judgment of no infringement, this court reviews the entire infringement inquiry without deference.” Salazar v. Procter & Gamble Co., 2005 U.S. App. LEXIS 1351, at *5 (Fed. Cir. July 8, 2005) (citing Omega Eng’g, Inc. v. Raytek * Because Techniche failed to cross appeal on this issue properly, we decline to consider it. See Radio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840, 844 (Fed. Cir. 1984) (“[A] party will not be permitted to argue before us an issue on which it has lost and on which it has not appealed, where the result of acceptance of its argument would be a reversal or modification of the judgment rather than an affirmance.”). 05-1088 6

Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003)). Application of prosecution history estoppel to limit the doctrine of equivalents presents a question of law that this court also reviews without deference. Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d 1348, 1351 (Fed. Cir. 2004). Because the ’977 patent claims the use of evaporative cooling garments, rather than the actual multi-layer fabric itself, AquaTex’s cause of action is one for contributory infringement under 35 U.S.C. § 271(c). Although not directly infringing, a party may still be liable for inducement or contributory infringement of a method claim if it sells infringing devices to customers who use them in a way that directly infringes the method claim.** R.F. Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1267 (Fed. Cir. 2003). “Liability for either active inducement of infringement or for contributory infringement is dependent upon the existence of direct infringement.” Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993). “An infringement analysis entails two steps. First, the meaning and scope of the asserted patent claims is determined, and then the properly construed claims are compared to the accused product or process.” Ranbaxy Pharms., Inc. v. Apotex, Inc., 350 F.3d 1235, 1239-40 (Fed. Cir. 2003) (citing Cybor Corp. v. FAS Techs., Inc., 138 ** The trial court determined that in order for contributory infringement to exist, Vizorb®, a component of Techniche’s products, must not have any substantial noninfringing uses. Contributory infringement liability arises when one “sells within the United States . . . a[n] . . . apparatus for use in practicing a patented process, constituting a material part of the invention . . . and not a staple article or commodity of commerce suitable for substantial noninfringing use . . . .” 35 U.S.C. § 271(c) (2000). From the record before us, the “apparatus for use in practicing” the claimed methods is Techniche’s multi-layered product. The proper question is not whether Vizorb® is a staple article of commerce, which is readily apparent, but whether the accused Techniche products are “suitable for substantial noninfringing use[s].”

05-1088 7

F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). Claim construction is a question of law reviewed de novo. Cybor Corp., 138 F.3d at 1456. To ascertain the meaning of a disputed claim term “the words of a claim are generally given their ordinary and customary meaning,” as would be understood by “a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, __, (Fed. Cir. 2005) (en banc). The specification is of central importance in construing claims because “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. at *24. Where, as here, the disputed claim term is technical or a term of art, “[t]he best source for understanding [it] is the specification from which it arose, informed, as needed, by the prosecution history.” Id. at *30 (quoting Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998)). Along with the intrinsic evidence of record, including the prosecution history, extrinsic evidence can be useful in claim construction and “technical dictionaries may provide [help] to a court ‘to better understand the underlying technology’ and the way in which one of skill in the art might use the claim terms.” Id. at *38 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996)). The claim limitation disputed by the parties is “fiberfill batting material,” and the primary issue is whether it should be construed to encompass only synthetic fibers as the trial court held. Resolution of the claim construction issue then controls whether Vizorb® constitutes “fiberfill” as required by the ’977 patent for literal infringement

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because Vizorb® contains a combination of natural and synthetic fibers. Whether Techniche is liable for contributory infringement depends upon this issue. Turning to the specification of the ’977 patent, we examine the context of the term “fiberfill” in the claims themselves. Both claims 1 and 9 call for a method of cooling a person by evaporation through use of “a multi-layered, liquid-retaining composite material comprising a fiberfill batting material, and hydrophilic polymeric fibers [particles in claim 9] . . . .” As used in this context, the fiberfill batting material, in conjunction with other polymeric fibers or particles, must be capable of liquid retention and evaporation. The claims, however, offer little guidance as to the underlying composition of “fiberfill batting material” apart from the functions it must be capable of performing. The written description, on the other hand, does provide guidance as to the composition of “fiberfill batting material.” In the detailed description of the invention, AquaTex dictated that “[t]he particular fiberfill is not known to be critical. That is, any commercial fiberfill may be used as long as it does not adversely affect the performance of the end composite.” ’977 patent, col. 3, ll. 47-50. From this statement, the patentee has informed the public that any commercial fiberfill that is capable of performing the claimed functions will suffice. The written description continues by describing numerous examples of commercial grade fiberfill, all of which are comprised entirely of synthetic materials. Because AquaTex chose to incorporate by reference the teachings of three United States Patents to define the scope of the term “fiberfill,” these publications are highly relevant to one of ordinary skill in the art for ascertaining the breadth of the claim term. In United States Patent No. 4,304,817, the specification teaches that “[p]olyester fiberfill

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is used commercially in many garments and other articles because of its desirable thermal insulating and aesthetic properties . . . . Most commercial polyester fiberfill has been in the form of crimped polyester staple fiber.” col. 1, ll. 11-16. Similarly, the remaining two patents describe “fiberfill” in terms of a synthetic, normally polyester, fiber for use as a filling material. None of the patents discusses the possibility of using natural fibers as commercial fiberfill batting. “In addition to consulting the specification . . . a court ‘should also consider the patent’s prosecution history, if it is in evidence.’” Phillips, 415 F.3d at __ (quoting Markman v. Westview Instr., Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc)). In interpreting “fiberfill,” the trial court relied heavily upon statements made during prosecution of the ’977 patent as a clear disavowal of natural fibers for use as “fiberfill batting material.” The prosecution history, however, is ambiguous and does not directly address the composition of “fiberfill.” Thus, we disagree with the trial court that AquaTex’s arguments foreclose potential compositions of fiberfill, and we decline to give the prosecution history much weight. See Phillips, 415 F.3d at __ (because the prosecution history represents an ongoing negotiation, “it often lacks the clarity of the specification and thus is less useful for claim construction purposes”). Particularly, the examiner represented that the prior art ’297 patent contained a blend of fiberfill batting comprised of synthetic polymer pulp and wood pulp. Instead of addressing the composition of the fiberfill batting in the prior art, AquaTex chose to traverse the rejection by distinguishing how the overall composition of materials was used, and by pointing out that the prior art composition of materials was designed to retain liquid for long periods of time. The representations made during prosecution neither support nor 05-1088 10

discredit any particular meaning of the term “fiberfill.” They are not a clear disavowal of claim scope. The extrinsic evidence of record, in the form of technical dictionaries, supports construing “fiberfill” as a purely synthetic fiber because it is consistently defined as such. The definitions given in all but one of the dictionaries relied upon by the trial court define “fiberfill” as either a synthetic fiber or as a man-made material used as a filler for various items. The contradictory source was a chemical dictionary that simply gave two examples of natural materials that could constitute “fiberfill.” Other extrinsic industry sources examined by the trial court lend support to construing “fiberfill” as a synthetic or polyester fill material. The United States Customs Service, in its publication “Fiber Trade Names and Generic Terms” Nov. 1999, lists “Fiberfill” as a “Fiber Trade Name” for the generic term “Polyester.” Similarly, the United States International Trade Commission issued a ruling that polyester staple fiber is known in the industry as “fiber for fill.” Certain Polyester Staple Fiber from Korea and Taiwan, Investigation Nos. 731-TA-825-826 (Final) (May 5, 2000). While we adhere to the adage that limitations from the specification must not be imported into the claims, see, e.g., Nazomi Communications, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005), based upon the teachings of the specification, one of ordinary skill in the textile manufacturing industry would understand that commercial “fiberfill batting material” is made of synthetic or polyester fibers. The combined teachings within the specification of the ’977 patent, the patents incorporated by reference, and the consistent interpretations in the industry publications would lead one skilled in the art to this conclusion. Therefore, we affirm the district court’s

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determination that the accused Techniche products do not literally infringe claims 1 and 9 of the ’977 patent. However, “[t]he doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002) (“Festo II”). Infringement under the doctrine of equivalents requires that the accused product contain each limitation of the claim or its equivalent. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). An element in the accused product is equivalent to a claim limitation if the differences between the two are insubstantial. The analysis focuses on whether the element in the accused device “performs substantially the same function in substantially the same way to obtain the same result” as the claim limitation. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (internal quotation omitted). Prosecution history estoppel can prevent a patentee from relying on the doctrine of equivalents when the patentee relinquishes subject matter during the prosecution of the patent, either by amendment or argument. Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d 1373, 1376-77 (Fed. Cir. 1999). “The doctrine of prosecution history estoppel limits the doctrine of equivalents when an applicant makes a narrowing amendment for purposes of patentability, or clearly and unmistakably surrenders subject matter by arguments made to an examiner.” Salazar, 2005 U.S. App. LEXIS 13517, at *6; see Festo II, 535 U.S. at 736 (narrowing amendment for purposes of patentability); Eagle Comtronics, Inc. v. Arrow Communication Labs., Inc., 305 F.3d 1303, 1316 (Fed. Cir. 2002) (argument-based estoppel).

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While at least one claim limitation was added here to overcome an anticipation rejection during the prosecution of the patent, Techniche does not allege amendment-based estoppel. Instead it asserts argument-based estoppel. To invoke argument-based estoppel, the prosecution history “must evince a clear and unmistakable surrender of subject matter.” Pharmacia, 170 F.3d at 1377 (internal quotation omitted). To determine if subject matter has been relinquished, an objective test is applied, inquiring “whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter.” Cybor Corp., 138 F.3d at 1457. We do not see the clear and unmistakable surrender of subject matter required to invoke argument-based prosecution history estoppel. During prosecution of the ’977 patent AquaTex stated that “the ’297 Patent fails to disclose or suggest the fiberfill batting and polymeric fibers and/or particles of the composite material in the claimed method.” Techniche and the trial court believe this argument limited claim coverage of fiberfill to only synthetic fibers. The argument, however, does not address or even relate to the composition of the fiberfill batting. Rather, it was based on the ’297 patent not teaching or suggesting the overall composition of materials, or the use of the disclosed compress to cool a person through evaporation. The compress of the ’297 patent was designed to retain much of its liquid over long periods of time, thus giving the material a high heat capacity and a high insulative value. ’297 patent, col. 6, ll. 24-55. The claimed invention of the ’977 patent achieves cooling through evaporation. The arguments made during prosecution, and the corresponding addition of the claim limitation “by evaporation,” indicate that AquaTex was distinguishing the overall method of cooling of its claimed invention from that of the ’297 patent. The subject 05-1088 13

matter surrendered by the narrowing amendment bears no relation to the composition of the fiberfill batting material. There is no indication in the prosecution history whether or not AquaTex agreed or disagreed with the examiner’s statement that the fiberfill found in the prior art comprised natural fibers. Thus, the trial court erred in holding that prosecution history estoppel barred AquaTex from asserting infringement under the doctrine of equivalents. Upon remand the trial court must consider whether or not each limitation of the claims in dispute, or its equivalent, is present in the accused Techniche products. See Graver Tank, 339 U.S. at 608. Conclusion Accordingly, the judgment of the United States District Court for the Middle District of Tennessee is affirmed-in-part, reversed-in-part, and the case is remanded for further proceedings consistent with this opinion. COSTS No costs.

 

 AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED

 

United States Court of Appeals for the Federal Circuit

 

 

01-1452

 

 

 

 

CFMT, INC. and CFM TECHNOLOGIES, INC.,

 

Plaintiffs-Appellants,

 

v.

 

 

YIELDUP INTERNATIONAL CORP.,

 

Defendant-Appellee.

 

 

 

 

            Henrik D. Parker, Woodcock Washburn LLP, of Philadelphia, Pennsylvania, argued for plaintiffs-appellants.  With him on the brief were Barbara L. Mullin, Richard B. LeBlanc, and David N. Farsiou.  Of counsel on the brief was Fred T. Magaziner, Dechert LLP, of Philadelphia, Pennsylvania.

 

            L. Gene Spears, Baker Botts L.L.P., of Houston, Texas, argued for defendant-appellee.  With him on the brief was David G. Wille, Baker Botts, L.L.P., of Dallas, Texas.

 

Appealed from:         United States District Court for the District of Delaware

 

Judge Roderick R. McKelvie

United States Court of Appeals for the Federal Circuit

                                                                                                                                                                                                                                                                                                                                                                                            

01-1452

 

CFMT, INC. and CFM TECHNOLOGIES, INC.,

 

                                                                                                                                                                                                                                                                          Plaintiffs-Appellants,

 

v.

 

YIELDUP INTERNATIONAL CORP.,

 

                                                                                    Defendant-Appellee.

 

___________________________

 

                                          DECIDED:  November 12, 2003

___________________________

 

Before RADER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and LINN, Circuit Judge.

 

RADER, Circuit Judge.

            On summary judgment, the United States District Court for the District of Delaware determined that CFMT, Inc.’s U.S. Patent No. 4,778,532 (the ’532 patent) and U.S. Patent No. 4,917,123 (the ’123 patent) are invalid, CFMT, Inc. v. YieldUp Int’l Corp., 92 F. Supp. 2d 359 (D. Del. 2000), and, after a bench trial, unenforceable, CFMT, Inc. v. YieldUp Int’l Corp., 144 F. Supp. 2d 305 (D. Del. 2001).  Because the district court erred in applying both the enablement and inequitable conduct requirements, this court reverses-in-part, vacates-in-part, and remands.

I.

            The ’532 and ’123 patents cover a system for cleaning semiconductor wafers.  The process for manufacturing semiconductor wafers must keep them as free as possible from contamination to prevent defects in semiconductors.  To keep the wafers clean, conventional processes sequentially immerse the wafers in various liquids in an open environment.  This bathing procedure exposes the wafers to airborne contaminants and also exposes workers to hazardous chemicals. 

            The ’532 and ’123 patents claim improvements in these open cleaning systems.  Specifically, the ’532 and ’123 patents claim a system that is closed to the outside environment and requires no human handling.  Instead the wafers remain at all times in a closed container that sequentially introduces different chemicals to clean the wafers.  Because the ’123 patent is a divisional of the ’532 patent, the two patents have identical disclosures.  The parent ’532 patent contains method claims only.  Independent claims 1 and 55 are representative (emphases added):

  1.  An enclosed, full flow method for the cleaning of semiconductor wafers comprising positioning said wafers in a vessel, closing said vessel to the environment, and flowing process fluids sequentially and continuously past said wafers in said vessel, including the steps of

(a)   contacting said wafers with at least one cleaning fluid to remove contaminants from said wafers;

(b)   removing said cleaning fluid from said wafers with a rinsing fluid; and

(c)   removing said rinsing fluid from said wafers with a drying fluid;

whereby the processing does not requirement [sic] movement or operator handling of said wafers between said steps; and

maintaining the vessel containing said wafers hydraulically full during each process step.

 

  55.  An enclosed, full flow method for the treatment of semiconductor wafers comprising positioning said wafers in a vessel, closing said vessel to the environment, and flowing process fluids in sequential steps continuously past said wafers in said vessel, including the step of reacting the surface of said wafers with at least one chemical reagent, whereby the processing does not require movement or handling of said wafers between said steps and maintaining the vessel containing said wafers hydraulically full during each process step.

 

            The divisional ’123 patent contains corresponding apparatus claims.  Independent claims 1 and 20 are representative (emphases added): 

  1.  Apparatus for wet processing of semiconductor wafers comprising:

(a)   vessel means for supporting said wafers in a closed circulation process stream wherein process fluids may sequentially flow past said wafers, said vessel being hydraulically full with process fluid when said process fluids flow past said wafers;

(b)   means for supplying at least one cleaning fluid to said process stream for removing contaminants from said wafers, and means for withdrawing said cleaning fluid from said process stream;

(c)   means for supplying a rinsing fluid to said process stream for removing other fluids from said wafers, means for minimizing gas/liquid interfaces in said rinsing fluid and means for withdrawing said rinsing fluid from said process stream; and

(d)   means for supplying a drying fluid to said process stream for removing other fluids from said wafers and means for withdrawing said drying fluid from said process stream.

 

  20.  Apparatus for wet processing of semiconductor wafers comprising:

(a)   vessel means for supporting said wafers in a closed circulation process stream wherein process fluids may sequentially flow past said wafers and

(b)   means for supplying at least one chemical reagent to said process stream for reacting with portions of said wafers, said process stream being positioned within said vessel means such that said vessel means is hydraulically full with process fluid.

 

            The record in this case shows that the inventors installed for Texas Instruments (TI) a machine that performed the claimed method.  At first the apparatus did not meet this customer’s standards for wafer cleanliness.  The inventors adjusted the apparatus and experimented for months before meeting the customer’s standards.  In fact, the inventors obtained a third patent claiming the improvements in their initial apparatus. 

            CFMT and CFM Technologies, Inc.* (collectively CFMT) sued YieldUp International Corp. (YieldUp) for infringement of the ’532 and ’123 patents.  In turn, YieldUp denied infringing and asserted that the patents were invalid as nonenabled and were unenforceable for inequitable conduct before the United States Patent and Trademark Office (PTO).  YieldUp moved for summary judgment that the patents were invalid for lack of enablement.  CFMT filed a cross-motion for summary judgment that the patents were enabled.

            YieldUp based its nonenablement argument on problems CFMT faced in setting up a commercial embodiment of the invention, the “beta tool Full Flow” machine.  As noted before, CFMT had installed the Full Flow machine at a TI site.  In its first runs, the machine did not meet TI’s cleanliness standards.  After months of experiments, the inventors identified the problem in a drying step and solved it.  Concurrently, a patent application that led to the ’532 patent was pending before the PTO.  While prosecuting the application, CFMT submitted a list of advantages of the invention to the PTO, but did not tell the PTO of the problems at TI.  The examiner allowed the case and the ’532 patent issued.  As also noted, the inventors eventually filed a patent application on the improvement that solved the problem.  That application matured into U.S. Patent No. 4,911,761 (the ’761 patent). 

            On April 5, 2000, the district court granted YieldUp’s motion for summary judgment that the ’532 and ’123 patents were invalid for nonenablement.  The district court construed the claims of the ’532 patent as limited by the preamble terms “cleaning” and “treatment,” which the district court construed to mean removing contaminants from the wafer surface.  CFMT, Inc., 92 F. Supp. 2d at 371-72.  Similarly, the district court construed the claims of the ’123 patent as limited by the preamble term “wet processing,” which the district court construed to mean the same as “cleaning.”  Id. at 374.  The district court stated that the specification “must enable one skilled in the art to clean semiconductor wafers using the Full Flow system.”  Id. at 377.  The district court found that “the Full Flow system that was based on the ’532 and ’123 patents could not clean” wafers, that the “inventors experimented with the Full Flow system for more than six months,” and “that the solution to the problem eventually resulted in the ’761 patent demonstrates that the experimentation required . . . was not routine.”  Id. 

            The district court further conducted a bench trial to determine whether CFMT committed inequitable conduct in prosecuting the application that matured into the ’523 patent.  On June 6, 2001, the district court entered judgment that the ’532 and ’123 patents are unenforceable due to inequitable conduct before the PTO.  The district court relied on two events during prosecution of the application leading to the parent ’532 patent.  First, CMFT did not report to the PTO the initial TI test results (the TI data).  The court concluded that the data was material because “a reasonable examiner would have considered data rebutting [the invention’s] advantages in deciding whether to allow” the patents.  CFMT, Inc., 144 F. Supp. 2d at 317.  Second, during prosecution, the applicants traversed an obviousness rejection and stated eleven advantages of the invention.  The district court found that the undisclosed TI data contradicted these laudatory statements.  Because it considered the TI data highly material, the district court inferred that CMFT intended to deceive the PTO.   

            The district court then entered final judgment that the claims of the ’532 and ’123 patents were invalid and unenforceable.  CFMT appealed to this court, which has jurisdiction under 28 U.S.C. § 1295(a)(1) (2000).

This court reviews without deference a district court’s grant of summary judgment.  Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).  A court considering summary judgment must “view the evidence presented through the prism of the substantive evidentiary burden.”  Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 245 (1986).  The court must also draw all reasonable inferences in favor of the nonmovant.  Id. at 255.

            This court also reviews claim construction without deference.  Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc).  Enablement is a question of law with factual underpinnings; this court reviews the ultimate legal conclusion without deference.  Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003).  This court reviews a determination of inequitable conduct for abuse of discretion and reviews the underlying factual issues of materiality and intent for clear error.  Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234 (Fed. Cir. 2003). 

A.  Nonenablement

            The district court based its nonenablement judgment on two grounds: (1) lack of utility or inoperability and (2) undue experimentation needed to carry out the invention.  The district court first construed each of the preamble terms “cleaning,” “treatment,” and “wet processing” as requiring “removal of contaminants.”  Based on that construction, the district court concluded that “the claims of the ’532 and ’123 patents must enable one skilled in the art to clean semiconductor wafers using the Full Flow system.”  The district court considered that “the first wafers processed with the Full Flow system appeared clean to the naked eye” but looked “filthy” viewed using laser scanning.  The district court concluded that the TI data showed that the claimed system did not remove particles until the inventors developed the improvements leading to the ’716 patent.  The district court found that “the Full Flow system that was based on the ’532 and ’123 patents could not clean semiconductor wafers.”  The district court considered that the inventors experimented “for more than six months” making “hundreds of modifications.”  The district court concluded that the “fact that the solution to the problem eventually resulted in the ’761 patent demonstrates that the experimentation required to enable the ’532 and ’123 patents was not routine.” 

            The parties do not challenge the district court’s construction of the preamble terms “cleaning,” “treatment,” and “wet processing” as a limitation requiring “removal of contaminants.”  The parties also do not dispute that the record shows CFMT’s initial efforts to build the claimed apparatus and to carry out the individual steps of the claimed method required undue experimentation.  Instead, this case asks this court to examine whether these claims required a specific level of contaminant removal that the disclosure did not enable.  Further, this court must consider whether the improvements in the ’716 patent show that the ’532 and ’123 patents did not enable the scope of those claimed inventions.  

            At the outset, the district court erred in requiring that the patent disclosures enable a single embodiment, the Full Flow system, to meet TI’s commercial standards.  In essence, the district court set the enablement bar too high.  Enablement does not require an inventor to meet lofty standards for success in the commercial marketplace.  Title 35 does not require that a patent disclosure enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect. 

            Title 35 requires only that the inventor enable one of skill in the art to make and use the full scope of the claimed invention.  Thus, when an invention claims a general system to improve the cleaning process for semiconductor wafers, the disclosure enables that invention by showing improvements in the overall system.  See, e.g., Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed. Cir. 1991) (“The enablement requirement is met if the description enables any mode of making and using the claimed invention.”).  Of course, if a patent claimed a system that achieved cleanliness up to a specified numerical particle-free range, then enablement would require disclosure of a method that enables one of ordinary skill to achieve that range without undue experimentation.  Thus, the level of disclosure necessary to satisfy section 112 of title 35 varies according to the scope of the claimed invention.  Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 1306-07 (Fed. Cir. 2001); In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). 

            The claims of the ’532 and ’123 patents state no standard of cleaning.  As the district court correctly found, “cleaning” in the context of this invention means generally removing contaminants from the wafer surface.  Absent some standard for cleanliness in the claims, this court proceeds to examine the record for a showing that the disclosures of the CFMT patents would enable a person of skill in the art to make and use a system or apparatus to achieve any level of contaminant removal without undue experimentation.  See Engel Indus., 946 F.2d at 1533.  

            The record contains evidence that the inventors’ prototype removed grease stains.  The inventors testified that before setting up the TI apparatus, they verified by naked eye that a prototype of the invention removed penciled grease marks.  This record evidence is probative of whether the “removal of contaminants” limitation is enabled.  This court also notes that the record contains no evidence that a person of ordinary skill would have to undertake undue experimentation to build a similar prototype and carry out the claimed method to remove the contaminants -- in this instance, grease marks.

            The lengthy experiments at TI do not show nonenablement because the inventors undertook that work to satisfy TI’s particular commercial requirements, not to show enablement of the scope of the claimed inventions.  “Patents are not production documents, and nothing in the patent law requires that a patentee must disclose data on how to mass-produce the invented product.  . . .  [T]he law requires that patents disclose inventions, not mass-production data, and that patents enable the practice of inventions, not the organization and operation of factories.”  Christianson v. Colt Indus. Operating Corp., 822 F.2d 1544, 1562 (Fed. Cir. 1987).  Reliance on the TI data alone also betrays another error, namely that this court gauges enablement at the date of the filing, not in light of later developments.  In re Wright, 999 F.2d 1557, 1563 n.8 (Fed. Cir. 1993).

            The district court essentially concluded that the invention claimed in the patents at issue simply did not work, that is, could not clean wafers, and therefore it would require undue experimentation to carry out the invention.  See 35 U.S.C. § 101 (2000).  This court has recognized the relationship between the enablement requirement of § 112 and the utility requirement of § 101.  See, e.g., In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000) (“[I]f the claims in an application fail to meet the utility requirement because the invention is inoperative, they also fail to meet the enablement requirement because a person skilled in the art cannot practice the invention”); EMI Group N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1348 (Fed. Cir. 2001).  In this case, however, the district court similarly set the standard for utility too high for this invention.  While the district court’s major premise is correct that an inoperable invention is not enabled, the district court erred in its minor premise that the claimed invention is inoperable and lacks utility.

            The inoperability standard for utility applies primarily to claims with impossible limitations.  See, e.g., Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1359 (Fed. Cir. 1999) (claims found inoperable because they require violating the principle of conservation of mass); Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989) (claims to a perpetual motion machine ruled inoperable).  Moreover, where a patent discloses several alternative combinations of methods (as most systems claims will), the party asserting inoperability must show that all disclosed alternatives are inoperative or not enabled.  EMI Group, 268 F.3d at 1349.  The ’532 and ’123 patents do not claim an impossible result or an inoperative invention.

            Because the preamble term “cleaning” means only “removal of contaminants,” not removal of all contaminants or removal of contaminants according to the TI commercial standard, the inventor shows utility and enables the invention by disclosing “removal of contaminants.”  Even if the single Full Flow embodiment does not achieve complete cleaning, that alone would not render the invention inoperative.  See Moleculon Research, 793 F.2d at 1269 (claims had utility despite only a partial description of how to reach the claimed goal of “restoring a preselected pattern” in a puzzle; it sufficed to describe a general approach to solving the puzzle); EMI Group, 268 F.3d at 1349.  Nor would it render the claims invalid as nonenabled.  See Engel Indus., 946 F.2d at 1533.  In this case, with its specific claims and invention, the specification needed to teach one of ordinary skill to make and use a system or apparatus that removes any contaminants.  In sum, any meaningful “cleaning” would satisfy the claimed goal of “cleaning of semiconductor wafers.” 

            The district court’s second ground for nonenablement invoked the ’761 improvement patent as evidence that the inventors engaged in undue experimentation to “clean” semiconductor wafers.  The district court reasoned that the inventor had not enabled the ’532 and ’123 patents because only the further invention of the ’761 improvement patent sufficed to meet TI’s commercial standard. 

            Improvement and selection inventions are ubiquitous in patent law; such developments do not alone cast doubt on enablement of the original invention.  See Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1568 (Fed. Cir. 1990) (citing In re Hogan, 559 F.2d 595 (CCPA 1977)).  In general, few patented inventions are an immediate commercial success.  Rather, most inventions require further development to achieve commercial success.  Thus, additional inventive work does not alone show nonenablement.  

            Moreover, the district court’s reasoning presumes incorrectly that development of an improvement patent, the ’761 in this case, implies extensive experimentation.  To the contrary, patent acquisition does not require any threshold level of effort or ingenuity.  See 35 U.S.C. § 103(a) (2000) (“Patentability shall not be negatived by the manner in which the invention was made.”); 35 U.S.C. § 103 Revision Notes and Legislative Reports, 1952 Notes (“[I]t is immaterial whether [the invention] resulted from long toil and experimentation or from a flash of genius.”); Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000) (stating that “the path that leads an inventor to the invention is expressly made irrelevant to patentability by statute”).  Thus, the ’761 improvement patent alone is not conclusive evidence of undue experimentation. 

            Because the district court misapplied the law of enablement in concluding that the claims of the ’532 and ’123 patents are invalid, this court vacates that part of the decision.  While the record at this stage does not appear to present a genuine issue of material fact about whether a person of ordinary skill in the art could achieve any level of cleaning with the claimed invention without undue experimentation, this court remands for the district court to reconsider that question.  The district court may decide, under the correct legal standard, whether to grant CFMT’s cross-motion for summary judgment of enablement or whether to proceed to trial on that issue.

B.  Inequitable Conduct

            Inequitable conduct requires proof that a patent applicant did not disclose material information to the PTO with intent to deceive.  Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 872 (Fed. Cir. 1988).  More specifically, “[i]nequitable conduct includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.”  Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995).  These elements must be shown with clear and convincing evidence.  Id.  The district court applied the pre-1992 standard for materiality, because the relevant acts took place before 1992.  Under that standard, information is material if “there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.”  See Molins, 48 F.3d at 1179 n.8. 

            The district court concluded that CFMT committed inequitable conduct in its comments about the advantages of the invention during prosecution of the ’532 patent to overcome a rejection for obviousness and in its failure to disclose the TI data.  The district court inferred intent based on the inventors’ knowledge of the materiality of the comments and omissions. 

1.  Misrepresentations to the PTO

            The district court found that the applicants, in traversing an obviousness rejection during prosecution before the PTO, misrepresented the invention by stating its advantages without disclosing the TI data.  The statements at issue appear in an amendment filed in December 1988 (emphases added):

The new and/or unexpected results and advantages achieved by the presently claimed invention include:

1.   reduction of contamination by airborne particles;

2.   reduction of contamination from human or robotic operators:

3.   good heat transfer between process chemicals and wafers;

4.   uniform exposure of the wafers to reagent chemicals at uniform concentrations for precisely limited periods of time;

5.   reduction of hazards to personnel by minimizing exposure to chemicals;

6.   minimizing stagnant conditions and avoiding filming effects; and

7.   providing a mechanically simple process and apparatus which allow for easy operation and cleaning while minimizing the possibility [sic] contaminant build-ups in the apparatus.

      Still further advantages are provided by preferred embodiments of the present invention, including:

1.   the reduction of quantities of hazardous process fluids used due to recirculation of the process fluids;

2.   the ability to provide quality drying fluids to displace the residual rinsing fluid;

3.   the ability to provide a high-quality rinsing fluid having both low suspended solids and low dissolved impurities; and

4.   the ability to provide high flow rates of rinsing fluid to rinse the wafers and precisely dilute concentrated chemical reagents.

The net effect of all the above advantages is to reduce the risk of introducing contaminants while simultaneously improving the yield of non-defective semiconductor devices. 

 

            The district court found that an examiner would have considered the TI data important because it rebuts those stated advantages.  The district court focused on the final sentence quoted above, treating it as a “summary of the advantages distinguishing the Full Flow system from the Aigo tool” and interpreting “contaminants” to include all undesirable materials mentioned in the enumerated advantages.  The district court concluded that “the inventors’ statements in response to the obviousness rejection were inaccurate and constituted a misrepresentation.” 

            The district court clearly erred in finding that the applicants’ statements were material misrepresentations.  In the first place, the statements were not inaccurate.  As recognized by the examiner in the Notice of Allowance, the invention advances the art by closing the system for cleaning semiconductor wafers.  A closed system provides the inherent advantage of less contamination by airborne particles. 

            The final sentence of the applicants’ advantages advocacy refers to reducing contaminants as described in the enumerated examples.  Moreover, the only specific contaminants in those examples are airborne particles (the only mention of “particles”) and contaminants from human or robotic operators.  Thus, the advantages advocacy recited only the natural, expected results of a closed system.  The final quoted sentence at most overemphasizes the benefits of the invention.  This advocacy does not rise to the level of misrepresentation. 

            The district court also clearly erred in finding that the examiner relied on the applicants’ advantages advocacy.  To the contrary, the examiner, in supplying reasons for allowance, stated only that the art of record does not teach a closed, hydraulic system as claimed.  Thus, the examiner concluded that no combination of the prior art, even if supported by a motivation to combine, would disclose all the limitations of the claims.  In other words, the examiner detected, in light of all limitations of the claims, no obviousness.  See In re Gulack, 703 F.2d 1381, 1385 n.9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981, 985 (CCPA 1974) (obviousness requires a suggestion of all limitations in a claim).  Therefore the examiner did not appear to resort to consideration of secondary considerations, such as the unexpected results and advantages in the quoted statements, to surmount the obviousness objection.  In sum, the advantages advocacy was not as highly material as the district court seemed to think.

            An applicant cannot prove unexpected results with attorney argument and bare statements without objective evidentiary support.  See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997) (“attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness”); In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that unexpected results must be established by factual evidence.  Mere argument or conclusory statements . . . [do] not suffice.”  (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).  During prosecution, an applicant may submit objective factual evidence to the PTO in the form of patents, technical literature, and declarations under 37 C.F.R. § 1.132 (2003) submitting expert testimony and, at times, test data.  The advantages advocacy in this case does not fit any of these categories and was unaccompanied by and not asserted to be supported by any factual evidence.  Therefore, a reasonable examiner would not have found it important in deciding whether to allow the application.  Instead, the examiner expressly stated the grounds for allowance, namely that the art of record does not teach a closed, hydraulic system as claimed.

            In sum, the district court clearly erred in finding that the applicants’ statements to the PTO were misrepresentations and in finding that those statements were highly material to the examiner’s actions.

2.  Failure to disclose the TI data

            The district court also concluded that CFMT breached the duty of candor because it did not disclose the TI data to the PTO.  The district court considered the TI data material to enablement. 

            As already noted, the TI data was temporally and substantively of very marginal relevance to enablement of the claims as filed.  As noted, the TI data reflects a commercial, not a statutory, standard for enablement.  The district court therefore clearly erred in concluding that the TI data was highly material.

3.  Intent

            This court recognizes that a district court may infer intent to deceive the PTO.  However, even gross negligence does not alone suffice to establish intent.  Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988).  Instead, “the involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive.”  Id. 

            This court discerns no evidence that CFMT intended to deceive the PTO.  As explained above, the materiality of the undisclosed subject matter is low.  Therefore, the trial court had little basis for inferring intent.  The district court clearly erred in finding that the applicants intentionally withheld material information and therefore abused its discretion in concluding that the applicants engaged in inequitable conduct in prosecuting the patents at issue.

            Accordingly, this court reverses the district court’s decision on inequitable conduct.

CONCLUSION

            The district court erred in granting summary judgment that the patents at issue do not meet the enablement requirement of 35 U.S.C. § 112 and in ruling after trial that the patents are unenforceable due to inequitable conduct before the PTO.  This court therefore reverses-in-part, vacates-in-part, and remands.

COSTS

            Each party shall bear its own costs.

REVERSED-IN-PART, VACATED-IN-PART, and REMANDED

United States Court of Appeals for the Federal Circuit

04-1470

XEROX CORPORATION,

Plaintiff-Appellant,

v.

3COM CORPORATION, U.S. ROBOTICS CORPORATION,

U.S. ROBOTICS ACCESS CORP., PALM COMPUTING, INC.,

PALM, INC., PALMSOURCE, INC., and PALMONE, INC.,

Defendants-Appellees.

Donald R. Dunner

, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for plaintiff-appellant. With him on the brief were 

 

United States Court of Appeals for the Federal Circuit

04-1470

XEROX CORPORATION.,

Plaintiff-Appellant,

v.

3COM CORPORATION., U.S. ROBOTICS CORPORATION.,

U.S. ROBOTICS ACCESS CORP., PALM COMPUTING, INC.,

PALM, INC., PALMSOURCE, INC., and PALMONE, INC.,

Defendants-Appellees.

___________________________

DECIDED: June 8, 2006

___________________________

Before NEWMAN, RADER, and BRYSON, Circuit Judges.

BRYSON, Circuit Judge.

Xerox Corporation appeals from a summary judgment entered by the United States District Court for the Western District of New York, in which the court held invalid claims 1-3 and 7-16 of Xerox’s U.S. Patent No. 5,596,656 (“the ’656 patent”). Because we conclude that there are genuine issues of material fact remaining in dispute with regard to whether the prior art discloses all of the relevant claim limitations, we reverse the grant of summary judgment of invalidity for anticipation and obviousness and we remand the case to the district court for further proceedings on those issues. Because we conclude that claims 9 and 11 are not insolubly ambiguous, we reverse the district court’s grant of summary judgment holding those claims invalid for indefiniteness. 

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I

The ’656 patent discloses a system and method for “computerized interpretation of handwritten text.” ’656 patent, col. 2, ll. 36-37. The system employs an alphabet of “unistroke symbols” that correspond to alphanumeric characters such as Arabic numerals and the letters of the English alphabet. Each unistroke symbol consists of a single, unbroken pen stroke that can be recognized by a computer upon some delimiting operation, such as lifting the pen from a computer-connected, pressure-sensitive writing surface.

Claims 1-3 and 7-16 of the ’656 patent provide as follows:

1. A system for interpreting handwritten text comprising

a user interface including a manually manipulable 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.

2. The system of claim 1 wherein 

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said user interface further includes a substantially planar writing surface;

said unistroke symbols are written on said writing surface; and

said sensor mechanism transforms each of said unistroke symbols into an ordered list of x,y coordinate pairs.

3. The system of claim 2 wherein

said pointer is a passive device that is manually engaged with, drawn across, and then disengaged from said writing surface to define the geometric shape and direction of each of said unistroke symbols; and

said writing surface is interfaced with said sensor mechanism for inputting the geometric shape and direction of each of said unistroke symbols to said sensor mechanism.

7. The system of any of claims 2-6 wherein

said pointer is a stylus.

8. The system of claim 2 wherein

said unistroke symbols are delimited from each other in said sequential time order by making and breaking contact between said pointer and said writing surface once for each unistroke symbol.

9. The system of claims 2, 3, 4, 5 or 6 wherein said unistroke symbols are well separated from each other in sloppiness space.

10. 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 

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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.

11. The method of claim 10 wherein said unistroke symbols are well separated from each other in sloppiness space.

12. 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.

13. The handwriting recognition process of claim 12 wherein certain unistroke symbols correlate with natural language alphanumeric symbols, and other unistroke symbols correlate with user invokeable control functions.

14. The handwriting process of claim 13 wherein at least one of said other unistroke symbols correlates with a control function that shifts the correlation of at least some of said certain unistroke symbols from one 

04-1470 5

set of natural language alphanumeric symbols to another set of natural language alphanumeric symbols.

15. The handwriting recognition process of claim 14 wherein said control function shifts said correlation for just one following unistroke symbol and then restores said correlation to an initial state.

16. 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.

In 1997, Xerox brought suit against 3Com Corporation and six other defendants (collectively, “3Com”). Xerox alleged that the ’656 patent was infringed by 3Com’s “Graffiti” system for handwriting recognition, which is used with 3Com’s PalmPilot handheld digital devices. 3Com then requested that the U.S. Patent and Trademark Office reexamine the ’656 patent. Following consideration of a number of prior art references, including a journal article written by D.J. Burr and a Japanese patent application by Tadahiro Nagayama, the Patent and Trademark Office confirmed the patentability of all 16 of the patent’s claims.

The district court meanwhile construed the claims and granted summary judgment of noninfringement. On Xerox’s appeal to this court, we agreed with the 

04-1470 6

district court’s construction of certain contested claim terms: We upheld the district court’s ruling that the term “unistroke symbols” requires “sufficient graphical separation for the computer to definitively recognize a symbol immediately upon delimitation or pen lift.” Xerox Corp. v. 3Com Corp., 267 F.3d 1361, 1366 (Fed. Cir. 2001) (“Xerox I”). We also agreed that “spatial independence” means that the invention must be “capable of properly distinguishing and recognizing symbols without reference to where a previous symbol was written on the writing surface.” Id. at 1367.

Nonetheless, we concluded that the district court had erred in granting summary judgment of noninfringement. In particular, we disagreed with the court’s conclusion that it was clear that the Graffiti symbols were not sufficiently “graphically separated” from each other to be unistroke symbols; that the Graffiti system did not allow for “definitive recognition” of symbols immediately upon pen lift by the user; and that the Graffiti system did not feature “spatial independence.” First, we noted that a number of the claims recited symbols having graphical separation based on “geometric shape and direction,” and that some of Graffiti’s symbols, which are similar geometrically, are distinguishable based on stroke direction. We held that the district court had erred in “looking only to the geometry of the symbol and ignoring the direction the pen must travel to create the symbol.” Id. at 1368. Second, we held that the district court “was incorrect that Graffiti does not allow for definitive recognition of all symbols immediately upon pen lift,” since none of the Graffiti symbols are altered by subsequent strokes. Id. Third, we held that the court had erred in concluding that Graffiti “does not employ ‘spatial independence.’” Id. The spatial independence limitation is met, we held, “if the computer recognizes the symbol without reference to where a previous symbol was 

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written,” which is a feature found in the Graffiti system. Id. at 1369 (emphasis in original). We therefore remanded the case to the district court for further proceedings on the issues of infringement and invalidity.

On remand, the district court granted summary judgment of infringement. In addition, the court held that the ’656 patent was not invalid because it concluded that this court, in Xerox I, “presumably did not construe the claims in such a way as to be invalid.” Xerox Corp. v. 3Com Corp., 198 F. Supp. 2d 283, 296 (W.D.N.Y. 2001). 3Com appealed from that judgment. On appeal, we affirmed the district court’s claim construction and its grant of summary judgment of infringement. With respect to the issue of invalidity, however, we held that our prior decision on the issue of claim construction “did not obviate the need for a separate validity analysis,” and we therefore reversed the district court on that issue. Xerox Corp v. 3Com Corp., 61 Fed. Appx. 680, 681 (Fed. Cir. 2003) (“Xerox II”).

In doing so, we addressed a point raised on appeal “[i]n an effort to provide some guidance to the district court on remand.” Xerox II, 61 Fed. Appx. at 684. Specifically, we explained that “definitive recognition” does “not require a permanent, unalterable choice of a symbol that cannot be changed if the recognition is later determined to be erroneous.” Id. That is, “subsequent action by the user or subsequent processing by the computer to delete or replace [the] symbol does not negate . . . recognition.” Id. In short, “definitive recognition” occurs when the “system completes the recognition of the unistroke symbol.” Id.

On remand, the district court issued two orders. In its first order, the court granted summary judgment of invalidity. Xerox Corp. v. 3Com Corp., No. 97-CV-6182T, 

04-1470 8

at 16 (W.D.N.Y. May 26, 2004). The court found that “[b]oth the Burr and Nagayama references teach the use of single-stroke symbols that are definitively recognized upon pen lift.” Id. at 10. In response to Xerox’s argument that both systems provide for additional actions following symbol recognition, the district court pointed to this court’s decision in Xerox II and explained that “these additional manipulations of the entered data do not transform the definitive recognition of the symbol that has already occurred into tentative recognition.” Id. at 11. Thus, the district court concluded that the evidence demonstrates that “each reference discloses the creation of unique symbols which are capable of being definitively recognized by the recognition device.” Id. at 12.

Responding to Xerox’s argument that Burr’s symbol recognition system is sometimes inaccurate and thus the symbols of Burr cannot be said to have sufficient graphical separation to permit definitive recognition, the district court explained that “[w]hether 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.” Id. at 13-14 (emphasis in original). The district court explained that although some 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.” Id. at 14.

The district court also rejected Xerox’s argument that neither Burr nor Nagayama teaches a “set” of single-stroke symbols. The court explained that Burr “allows the user to define the stroke-set to be used” and therefore “discloses a set of 26 single-stroke curves which correspond to letters of the English alphabet.” Id. at 12-13. The court 

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noted that Nagayama expressly requires “a set of two or more characters or figures, each of which have a single stroke.” Id. at 13.

The court further concluded that both Burr and Nagayama teach “spatial independence” because both “teach devices which allow symbols to be written anywhere on the recognition device surface.” Id. at 14. In response to an argument raised by Xerox, the court explained that “even if spatial relationships are used to group words [in Burr], the symbols are distinguished and recognized without reference to where a previous symbol was written.” Id. at 15. Based on that analysis, the court granted 3Com’s motion for summary judgment of invalidity.

Both parties sought clarification because the district court’s first order did not specifically address the asserted independent and dependent claims. The district court then issued a second order in which it granted summary judgment of invalidity based on specific findings as to each limitation of the asserted claims. Xerox Corp. v. 3Com Corp., No. 97-CV-6182T, at 3 (W.D.N.Y. Mar. 1, 2005). In particular, the court ruled that Burr and Nagayama disclose the limitation that “some of the single-stroke symbols [are] linear and others arcuate.” Id. at 9. In that regard, the district court noted that a figure contained in Burr depicted the “t” symbol as “made of two intersecting lines each of which are essentially straight” and that 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.” Id.

The court next rejected Xerox’s argument that Nagayama does not disclose a system for text entry. It explained that “[w]hile it is true that Nagayama discloses a method for inputting commands, that method relies on the inputting of single-stroke 

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symbols that correspond to textual characters, and the display of those characters to confirm the correct input.” Id. at 10.

The court also concluded that “Burr incorporates single-stroke symbols that differ from each other essentially only on the basis of stroke direction.” Id. at 14. The court reasoned that “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 [sic] side of the oval of the ‘a.’” Id. The court added that the “stroke direction” claim limitation “is further invalidated as anticipated [because] 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.” Id. at 15.

Addressing claims 14 and 15, which recite at least one unistroke symbol that correlates with a control function that shifts the correlations of some of the unistroke signals from one set of natural language symbols to another, the court found those claims to be obvious in light of Nagayama as combined with the prior art system of Organek. The court explained that it would have been obvious to one skilled in the art of handwriting recognition to combine Organek’s disclosure of single-stroke symbols to invoke control functions (such as “shift” or “caps lock”) with Nagayama’s teaching of single-stroke symbols to convert graphics displayed on a screen. Id. at 23.

Finally, the court held claims 9 and 11 invalid for indefiniteness. Those claims recite an additional limitation that the unistroke symbols must be “well separated from each other in sloppiness space.” The court explained that the claim 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 

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in sloppiness space.” Id. at 21. Moreover, the court added that “sloppiness space” is “not a term of art used in the industry, and does not convey a concept that was known in the industry.” Id. at 20. Thus, according to the district court, “there is no way to determine whether or not two symbols do achieve sufficient separation so as to be well separated in sloppiness space.” Id. at 21. Consequently, the court found the term “sloppiness space” to be ambiguous and concluded that claims 9 and 11 are therefore invalid for indefiniteness under 35 U.S.C. § 112. The court further concluded that “[e]ven if claims 9 and 11 are not invalid as indefinite, . . . those claims are anticipated by Burr.” Id. at 21. The district court explained that most of Burr’s symbols are “vastly different from one another, thus practicing sufficient separation in sloppiness space.” With respect to the Burr symbols that appear to have some overlap, such as the “i” and the “l,” the court held that those symbols “practice sloppiness separation just as [much as] the Graffiti symbols” that had already been held to infringe. Id. at 22.

II

Xerox argues that the district court erred in granting summary judgment of invalidity for 3Com as to claims 1-3 and 7-16, and that the court should have granted Xerox’s cross-motion for summary judgment on the issue of invalidity. In its brief, Xerox addresses four invalidity issues—anticipation by Burr (applicable to claims 1-3, 7-12, and 16; anticipation by Nagayama (applicable to claims 1-3, 7-8, 12-13, and 16); obviousness in light of Nagayama combined with Organek (applicable to claims 14 and 15); and indefiniteness (applicable to claims 9 and 11). We address Xerox’s anticipation arguments together and the obviousness and indefiniteness arguments separately. 

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A. Anticipation by Burr and Nagayama

1. “Unistroke Symbols”

 

Xerox argues that the ’656 patent is not anticipated because neither Burr nor Nagayama discloses “unistroke symbols,” a limitation that is present in every claim of the ’656 patent. The term “unistroke symbols” is defined to mean symbols having “sufficient graphical separation for the computer to definitively recognize a symbol immediately upon delimitation or pen lift.” Citing our discussion of unistroke symbols in Xerox II, Xerox contends that the invention of Burr fails to “complete[] the recognition” of the symbols upon pen lift because Burr merely provides for creation of a set of 26 “dissimilarity” numbers representing the most probable symbol shape matches. According to Xerox, recognition in Burr is not complete until after “dictionary lookup” occurs. As we explained in Xerox II, however, “[d]efinitive recognition does not require a permanent, unalterable choice of a symbol that cannot be changed if the recognition is later determined to be erroneous.” 61 Fed. Appx. at 684. In Burr, shape matching of each inputted symbol occurs independent of dictionary verification. In fact, Burr explicitly describes two distinct steps: “warp-based character matching” and “dictionary lookup.” See D.J. Burr, Designing a Handwriting Reader, IEEE Transactions on Pattern Analysis and Machine Intelligence, Vol. PAMI-5, No. 5, at 554 (Sept. 1983) (“Burr”). Thus, dictionary lookup is not a step necessary for “recognition” of a character to occur; it simply serves as a means for later determining that a particular recognition may be erroneous.

Likewise, Nagayama’s “confirmation” step does not preclude Nagayama’s system from “complet[ing] the recognition” upon pen lift. As Nagayama explains, upon 

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pen lift, “once [a centering] move has been completed, [the written character] is compared with reference standard patterns in the dictionary . . . , and if a high-correlation character is found in the dictionary, the character is deemed recognized.” See Control Method Using Real-time Recognition of Handwritten Character Patterns, Japanese Patent Application Kokai No. SHO59-35277, at 5 (filed Aug. 23, 1982) (“Nagayama”). The character is then “displayed for visual confirmation.” Id. As in Burr, the subsequent step in Nagayama serves only as a means to correct errors in the recognition that has already occurred. In the words used by the district court in its construction of the term “unistroke symbols,” which we upheld in Xerox I, both Burr and Nagayama “definitively recognize a symbol immediately upon delimitation or pen lift.”

Xerox contends that Burr does not disclose a system in which the symbols have “sufficient graphical separation to permit the computer to definitively recognize the symbol” upon pen lift, and thus Burr does not disclose the use of “unistroke symbols.” “Sufficient graphical separation,” however, is not a quality that exists in a vacuum. As is clear from the district court’s claim construction, which Xerox accepts, “graphical separation” among the symbols is “sufficient” if it permits the computer to distinguish the symbols upon pen lift. Thus, if the computer is capable of differentiating among symbols upon pen lift, there is “sufficient graphical separation” among them, and if the computer does not have that capability, there is not “sufficient graphical separation,” despite the similarities or differences that may appear to a casual observer of the symbols. Because Burr discloses a system in which definitive recognition occurs upon pen lift, as discussed above, there is necessarily sufficient graphical separation among those symbols to permit the computer to achieve definitive recognition. 

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Xerox makes the related argument that definitive recognition “requires accurate recognition.” It contends that Burr fails to disclose symbols that are “accurately recognized on pen lift” because Burr does not teach “specific reference symbols, . . . provides no guidance for choosing symbols that are graphically separate, and . . . places no restrictions on the user’s choice of symbols.” Xerox makes a similar argument with regard to the Nagayama reference. Yet nothing in the language of the claims or in the specification supports Xerox’s proposal that a particular degree of accuracy is necessary for a system to qualify as producing “definitive recognition.” Moreover, even if some degree of accuracy were required, an expert for the defendants, in a journal article published prior to this litigation, reported that Burr’s invention achieves 90 percent character recognition accuracy without dictionary lookup. See Charles C. Tappert et al., The State of the Art in On-Line Handwriting Recognition, IEEE Transactions on Pattern Analysis and Machine Intelligence, Vol. 12, No. 1, at 797 (Aug. 1990). Although Xerox suggests that a system must be “over 95%” accurate in order for it to qualify for “definitive recognition” under the ’656 patent, nothing in the patent indicates that 95 percent accuracy constitutes “definitive recognition” but 90 percent accuracy does not. Xerox’s arguments regarding “accurate recognition” are therefore unavailing.

Xerox further argues that Burr and Nagayama do not anticipate the ’656 patent claims, because neither reference discloses “a set of reference symbols that a user would emulate.” Yet there is no indication in the claim language that any such prototype symbols are required, and Xerox certainly does not suggest that its claims should be confined to the particular set of symbols illustrated in Figure 2 of the ’656 patent. Even 

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if we were to read the claims as requiring that the system provide some set of symbols for the user to employ, Burr supplies a set of representative single stroke symbols that can be emulated by the user, even though it also permits the user to define his own stroke set. Similarly, Nagayama provides “examples of single-stroke characters that could be used with the present invention.” Xerox’s argument regarding unistroke symbols is therefore without merit.

2. “Distinguishing said unistroke symbols from each other totally independent of and without reference to their spatial relationship”

Xerox contends that there is a material factual dispute between the parties as to whether Burr discloses symbols that have “spatial independence.” Xerox asserts that Burr requires its users to “segregate and group written strokes into words,” thus “suggesting that to properly distinguish and recognize at least the first input symbol of a word, Burr’s computer must reference where the last symbol of the previous word was written on a writing surface.” As explained by the district court on remand, however, “even if Burr does rely on spatial relationships to group words, that function has no effect on . . . the system[’s ability] to distinguish and recognize symbols without reference to where a previous symbol was written.” In other words, even if Burr’s dictionary lookup relies upon the location of a previously inputted symbol, Burr’s shape-matching algorithm works without regard to where a previous symbol was written. The spatial independence feature in Burr is evidenced by the fact that, as the Burr article explains, “[b]efore any correlation is done between two curves, each is independently normalized in three steps”: centering, re-sizing, and detilting. Such positional adjustments preclude recognition that is dependent upon the locations where 

 

successive symbols are written. Consequently, there is no material factual dispute with regard to the “spatial independence” limitation.

3. “Some of said unistroke symbols being linear”

Xerox argues that Burr fails to disclose the claim limitation that recites “some of said unistroke symbols being linear,” which is present in all of the asserted claims except for claim 16. In particular, Xerox contends that the district court erred in concluding that the symbol , depicted in Fig. 5(b) of the Burr article, is linear. According to Xerox, “two lines intersecting at substantially right angles do not yield a linear symbol.” Yet this argument overlooks the fact that the term “linear” can be defined as “of or pertaining to a line or lines.” See 8 Oxford English Dictionary 983 (2d ed. 1989); Random House Unabridged Dictionary 1117 (2d ed. 1993) (“of, consisting of, or using lines”); Encarta World English Dictionary 1048 (1999) (“relating to, consisting of, or using lines”). Moreover, each time the term “linear” is used in the claims, it is used in contrast to the term “arcuate,” as in claim 1, which recites “some of said unistroke symbols being linear and others being arcuate.” ’656 patent, col. 7, ll. 16-17; see also id. col. 8, ll. 41-42 (claim 10); id. col. 8, ll. 64-65 (claim 12). The reference to “some” symbols being arcuate and “others” being linear indicates that the term “linear” was used in the patent to denote consisting of a straight line or lines, as opposed to consisting of curves.

We agree with the district court that Burr’s symbol for the letter “t,” represented by the figure and drawn with a single stroke, discloses a “linear” symbol as that term is used in the ’656 patent. Burr states that all of the symbols used in the Burr system consist of a single stroke created without “pen lift,” and Figures 5 and 6 of the Burr 

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article demonstrate that the symbol is readily recognized as a “t,” even without dictionary lookup. Xerox’s argument regarding the “linear” claim limitation is thus unpersuasive.

4. Text Entry

Xerox asserts that all claims require “text entry” and that the Nagayama reference fails to anticipate because “each symbol is ‘mapped to commands and functions’ and not ‘text.’” For support, Xerox points to the term “natural language” contained in claims 12 and 16. See ’656 patent, col. 9, ll. 17-18; col. 10, ll. 24-25. Although Xerox is correct that those claims recite outputting natural language symbols as a result of inputting unistroke symbols, Nagayama nonetheless discloses this claim limitation. Nagayama explains that the memory in its invention “contain[s] a dictionary of reference standard characters, signals for commands, functions, etc.” In this manner, Nagayama distinguishes “characters” from “commands” or “functions.” Nagayama then states that after a single-stroke character is written, it is compared with the reference standard patterns in the dictionary; if a “high-correlation character” is found in the dictionary, the character is deemed recognized and is displayed. Only after such character display (and subsequent user confirmation) is a “signal corresponding to the recognized character . . . read from the memory 14 (Step 15), and sent to the computational control circuit.” See Nagayama at 5; see also id. at 9-10, Figs. 3 and 4. In other words, command entry and function selection occur as independent steps following character display. Nagayama is thus directed not only to command entry and function selection by recognition of handwritten characters, figures, and symbols; it 

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recites output of text as well. As a result, Xerox’s argument that Nagayama fails to disclose “text entry” is unavailing.

5. Stroke Direction

Xerox contends that Burr does not disclose unistroke symbols in which graphical separation is based on both geometric shape distinctions and differences in stroke direction. Xerox argues that Burr does not rely on stroke direction to identify symbols, but instead “discusses identifying symbols by ‘shape-matching,’ ‘difference[s] in shape,’ and dissimilarity of a drawn character to ‘each of the set of reference shapes.’”

The patent uses “stroke direction” in two ways that are pertinent to the anticipation issue. Claim 10 recites a system having some symbols with “graphical specifications that differ from each other essentially only on the basis of their respective stroke direction parameters.” That is, the claimed system has “several pairs of symbols that are geometrically identical; but for direction, the computer could not discern between them.” See Xerox I, 267 F.3d at 1368. Such pairs of symbols include, for example, Xerox’s symbols for “c” and “d” ( and ). Other claims, such as claims 12-16, refer to strokes that “conform[] geometrically and directionally to a predetermined graphical specification” to indicate that the recited system captures and employs both the shape and the direction of the strokes as a means of differentiating symbols. An example of a pair of symbols distinguishable based on a combination of shape and stroke direction would be Xerox’s symbols for “v” and “w” ( and ). It was in this sense that we referred in Xerox I to Graffiti’s symbols for “O” and “Q” ( and ) as illustrating the use of stroke direction as well as shape to distinguish symbols. In so doing, we distinguished Graffiti from the Whitaker prior art. We explained that Whitaker 

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cannot “discern” unistrokes by stroke direction because in the Whitaker system symbols are “written . . . on a sheet of paper” and then “scanned all at once into a computer,” so that the system is “unable to discern the direction in which a symbol is drawn.” Id.

The district court compared the pair of Graffiti symbols for “O” and “Q” ( and ) with the pair of Burr symbols for “o” and “a” ( and ). The court found that “[l]ike 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 [sic] side of the oval of the ‘a’.” Based on that comparison, the court concluded that if Graffiti uses stroke direction as an element of graphical separation, Burr necessarily does as well. Despite the visual similarities between the two pairs of symbols, however, that conclusion does not necessarily follow. The two pairs of symbols would be parallel for purposes of anticipation only if it were determined that Burr captures and uses stroke direction in distinguishing among symbols. Absent the use of stroke direction, a system such as that disclosed in Burr would rely only on the geometric shape of the symbols to distinguish them, which would not be sufficient to anticipate the invention’s use of stroke direction as a distinguishing mechanism.

3Com argues that, based on this court’s discussion of the term “stroke direction” in Xerox I, it is clear that the Burr article discloses that limitation. We do not agree. In Xerox I, we held that although some of the Graffiti symbols look much alike, the element of stroke direction serves to distinguish them. Because Graffiti captures and uses stroke direction in differentiating symbols, we held that the district court was wrong to disregard that aspect of graphical separation in the Graffiti system. The question before 

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us now is whether Burr discloses the use of stroke direction in differentiating symbols and thus anticipates that limitation.

3Com argues that Burr’s shape-matching algorithm “considers . . . stroke direction information in finding a ‘best match’ with stored reference shapes.” In particular, 3Com argues that Burr necessarily relies on stroke direction because it teaches “dynamic programming,” which involves “serially connecting sampled coordinates” to form 2-D vectors, “with orientation in the direction of time flow.” Additionally, at oral argument 3Com’s counsel pointed to the use of the term “antiparallel” in the text accompanying Figure 2 of the Burr article as evidence that stroke direction is a component of Burr’s shape-matching algorithm.

A close reading of the Burr article, however, suggests that although Burr’s invention undoubtedly captures stroke direction data, it may not use that data to distinguish one symbol from another. In its discussion of “dynamic programming,” Burr explains that shape-matching is conducted by representing each character as a string of 2-D vectors “formed by serially connecting sampled coordinates from the digitizer, taken at constant sampling rate,” with each 2-D vector “orient[ed] in the direction of time flow.” Burr, at 555. Inputted symbols are then compared to reference shapes by determining the “element-to-element distance measure between two vectors [one from each curve] . . . based on their relative positions and orientations.” Id. This calculation factors in the angle between the inputted vector () and the reference vector (), the angle of a constructed vector () from the tail of to the midpoint of , as well as two correction terms γ and ε. Burr explains that ε is a correction term that “inhibits positional misalignment” while γ is a correction term that is “used to weight against vector 

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is antiparallel to .” Id. orientation misalignment.” The value referred to as γ is added only “[i]f at 556. It thus appears that Burr’s shape-matching algorithm is designed to remove the effects of diametric variations in stroke direction. That would make sense if the objective is only to compare the resultant shapes. If that is indeed the case, then Burr merely captures data regarding stroke direction, and not only fails to distinguish symbols on the basis of stroke direction, but expressly teaches away from that limitation by “correct[ing]” for “vector orientation misalignment.”

Similar conclusions may be drawn from the Nagayama application. Although Nagayama describes “a coordinates signal generator [that] generates signals corresponding to the coordinates of the points being pressed by the pen,” its discussion on symbol distinction is limited to “compar[ing] the pattern of the character stored in the image memory . . . with the reference standard patterns in the dictionary.” See Nagayama at 4. In this manner, Nagayama appears to disclose only the capture of directional data and subsequent shape matching; it is not clear that it distinguishes symbols based on both geometric shape and stroke direction, or “essentially only on the basis of . . . stroke direction.”1

Consequently, a genuine issue of material fact remains as to whether the Burr and Nagayama references disclose the various “stroke direction” limitations of the asserted claims of the ’656 patent. Because “invalidity by anticipation requires that the four corners of a single, prior art document describe every element of the claimed 04-1470 21

1 As for 3Com’s Graffiti system, the geometrically identical symbols for “space” and “backspace” and for the letter “U” and one variant of the letter “V” indicate that directional data is employed in distinguishing among symbols, as shape matching of those two pairs of symbols would not by itself disclose any distinction between them. 

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invention,” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000), we vacate the district court’s grant of summary judgment of invalidity for anticipation and remand the case to the district court for further proceedings with particular focus on whether Burr or Nagayama discloses the use of stroke direction in distinguishing symbols as that term is used in the patent.

B. Obviousness in Light of Nagayama and Organek

The district court held that dependent claims 14 and 15 would have been obvious in light of Nagayama and Organek. In particular, the court held that 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.” Xerox’s arguments on obviousness rely entirely on its assertion that Nagayama “lacks both [the] ‘text entry’ and ‘stroke direction’” limitations. We have rejected Xerox’s argument that Nagayama fails to disclose text entry. However, in light of our conclusions with respect to the stroke direction limitation, we cannot sustain the district court’s judgment on the ground invoked by the court. Accordingly, we remand to the district court to reconsider its judgment as to obviousness based on our analysis of the stroke direction limitation and to determine, in light of its reconsideration of the stroke direction issue, whether the invention of claims 14 and 15 would have been obvious in light of Nagayama and Organek.

C. Indefiniteness or Anticipation of Claims 9 and 11

Addressing the issue of the indefiniteness of dependent claims 9 and 11, the district court concluded that the term “sloppiness space” is ambiguous and is not adequately defined in the patent. The district court observed that “the patent does not 

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, 359 F.3d 1367, 1371 (Fed. Cir. 2004) (holding that a claim will not be held invalid if the “meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree”). We therefore reverse the district court’s grant of summary judgment that claims 9 and 11 are invalid for indefiniteness. explain how one would determine whether or not symbols are sufficiently distinct so as to be well separated in sloppiness space.” Yet, as Xerox asserts, the specification explicitly defines symbols that are “well separated from each other in sloppiness space” as those distinguished by “substantial angular offset (e.g., at least 45° and preferably 90°) or directional distinction (opposing directions).” See ’656 patent, col. 3, ll. 28-31. The specification also contrasts symbols that are well separated from each other in sloppiness space from the characters of the ordinary Roman alphabets, “which are not reliably distinguishable from each other in the face of rapid or otherwise sloppy writing.” ’656 patent, col. 1, ll. 54-56. While those descriptions are not rigorously precise, they provide adequate guidance as to the types of symbols that are “well separated from each other in sloppiness space,” particularly in light of the difficulty of articulating a more exact standard for the concept. See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (finding claims not indefinite when specification provided “a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether” claim limitation is satisfied). Thus, in light of the criteria provided in the specification, we hold that claims 9 and 11 are “subject to construction” and are not “insolubly ambiguous.” For that reason, those claims are not invalid for indefiniteness. See Bancorp Servs., L.L.C. v. Hartford Life Ins. Co.

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In the alternative, the district court found that “[e]ven if claims 9 and 11 are not invalid as indefinite, . . . those claims are anticipated by Burr.” The district court explained that “Burr teaches the use of symbols that are well defined in terms of sloppiness space.” The court, however, did not explain how it interpreted the term “sloppiness space.” To be sure, that is not surprising, considering that the court in its indefiniteness ruling had just found that term insolubly ambiguous. As a consequence, however, the district court’s analysis provides little insight into how Burr discloses the limitation of sloppiness separation, other than to suggest that if the Graffiti symbols are well separated in sloppiness space then the Burr symbols must be as well.2 Moreover, and more importantly, claims 9 and 11 incorporate the stroke direction limitations from claims 2-6 and 10. Accordingly, claims 9 and 11 cannot be held invalid for anticipation if the stroke direction limitations in those claims are not anticipated by Burr. We therefore vacate the portion of the district court’s judgment holding, in the alternative, that claims 9 and 11 are invalid for anticipation.

2 The district court’s analysis seems to be predicated in part on its belief that this court ruled in Xerox II that Graffiti infringes claims 9 and 11 of the ’656 patent. In dueling footnotes, the parties debate whether this court resolved that issue in Xerox II. In the proceedings leading to Xerox II, the district court characterized Xerox’s argument as being that “every Graffiti symbol practices every limitation of the independent claims [claims 1, 10, 12, and 16] of the ’656 patent.” The district court did not address the issue of infringement of the dependent claims at that time, and the parties did not present the infringement issue on a claim-by-claim basis in Xerox II. We therefore did not address the question whether the Graffiti system infringed the dependent claims. Accordingly, to the extent that it may be relevant to future proceedings in this case, we hold that the previous adjudication upholding the district court’s summary judgment of infringement did not extend to dependent claims 9 and 11. 

 

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III

In summary, while we agree with the district court’s analysis in many respects, we disagree with the court with regard to the “stroke direction” limitation, and we disagree with the court’s indefiniteness and anticipation analysis as applied to claims 9 and 11. Our determination with respect to the stroke direction limitation requires that we vacate the judgment and remand for further consideration of both the anticipation and obviousness rulings. Our determination with respect to the court’s indefiniteness analysis requires that we reverse the judgment that claims 9 and 11 are invalid on that ground.

Each party shall bear its own costs for this appeal.

REVERSED IN PART, VACATED IN PART, and REMANDED.

 

 

Additional Cases

 

 


*           CFM Technologies, Inc. assigned the patents to holding company CFMT, Inc., which in turn granted CFM Technologies, Inc. an exclusive license.