Allvoice Computing Plc v. Nuance Communications

• Decision Date: 12 October 2007
• Docket Number: No. 2006-1440.,2006-1440.
• Citation: 504 F.3d 1236
• Parties: ALLVOICE COMPUTING PLC, Plaintiff-Appellant, v. NUANCE COMMUNICATIONS, INC. (formerly known as ScanSoft, Inc.), Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

504 F.3d 1236

ALLVOICE COMPUTING PLC, Plaintiff-Appellant, v. NUANCE COMMUNICATIONS, INC. (formerly known as ScanSoft, Inc.), Defendant-Appellee.

No. 2006-1440.

United States Court of Appeals, Federal Circuit.

October 12, 2007.

James E. Gaylord, Adams and Reese LLP, of Nashville, TN, argued for plaintiff-appellant. With him on the brief were Peter A. McLauchlan, and Chris P. Perque, of Houston, TX.

Lawrence K. Kolodney, Fish & Richardson P.C., of Boston, MA, argued for defendant-appellee. With him on the brief was Jolynn M. Lussier.

Before NEWMAN, RADER, and GAJARSA, Circuit Judges.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the Southern District of Texas held AllVoice Computing PLC's ("AllVoice's") U.S. Patent No. 5,799,273 ("the '273 patent") invalid because claims 60, 61, and 67 were indefinite under 35 U.S.C. § 112 ¶ 2 and because the patent specification did not disclose the best mode of practicing claim 73. AllVoice Computing PLC v. Nuance Commc'ns, Inc., H-02-4471 (S.D.Tex. Feb. 22, 2006). Thus, the district court did not decide whether Nuance Communications, Inc.'s ("Nuance's") Dragon Naturally Speaking software infringes the '273 patent on voice recognition technology. Because the district court erred in applying both indefiniteness and best mode, this court reverses and remands.

I

The '273 patent covers an interface between a speech recognition engine and various end-user application programs on a personal computer. Claim 60, one of the asserted claims, reads:

60. A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications, the universal speech-recognition interface comprising:

input means for receiving speech-recognition data including recognised words;

output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and

audio playback means for playing audio data associated with the recognised words.

'273 Patent col.29 ll.22-34. When a user speaks into a computer's audio input device, the computer's speech recognition engine receives the message. At that point, the claimed invention creates an interface that facilitates translation of the apprehended message directly into application programs, typically word processors. Additionally, the interface in dependent Claim 61 maintains its own data structures to keep track of the relative positions of words in the application programs. These data structures also preserve associations between those words and the original recorded speech. Claim 61 reads as follows:

61. The universal speech-recognition interface of claim 60, further comprising: means, independent of the one computer-related application, for forming link data linking a portion of the audio data to at least one the recognised words independently of the one computer-related application, the link data comprising:

one or more audio identifiers which link a portion of the audio data to one or more recognised words; and

one or more position identifiers which link the recognised words to corresponding positions within the one computer-related application; and

means, independent of the one computer-related application, for updating the position identifiers in response to changes in positions of the recognised words within the one computer-related application.

'273 Patent col.29 ll.35-51 (emphases added). The interface in Claim 60 allows users to edit documents produced through speech recognition without losing the ability to play back the recorded speech in a coherent manner. Further, Claim 61 specifies the independence of the interface from any computer-related application. Claim 67, another independent claim, also includes the editing function and independence from any computer-related application.

Claim 73, held invalid for failing to satisfy the best mode requirement, includes instructions for performing a variety of functions:

73. A computer usable medium having computer readable instructions stored therein for causing a processor in a data processing apparatus to process recognition signals defining a string of recognised words and corresponding audio data to display the words and selectively play the audio data, the instructions comprising instructions for:

a) causing the processor to input the recognition signals from a speech recognition engine and the audio data, the recognition signals including a string of recognised words and audio identifiers identifying audio components corresponding to each recognised word;

b) causing the processor to implement an interface application program to receive the input recognised words and to input the recognised words into a processing application program to process the recognised words to cause the recognised words to be relatively moved;

c) causing the processor to implement the interface application program to form link data linking the audio data to the recognised words, said link data comprising the audio identifiers and information identifying the corresponding recognised words;

d) causing the processor to generate an image of the recognised words on a display;

e) causing the processor to receive a selection signal generated by a user for selectively identifying a word in the displayed words;

f) causing the processor to implement the interface application program to compare the identity of the selected word with said link data to identify any corresponding audio component; and

g) causing the processor to send the identified corresponding audio component to an audio playback device.

'273 Patent col.31 ll.29-60 (emphasis added). The invention in claim 73, essentially a data link, keeps track of word position changes to identify audio corresponding with the selected text.

II

This court reviews a grant of summary judgment without deference. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed.Cir.2004). This court also reviews claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir. 1998) (en banc). "The review of indefiniteness under 35 U.S.C. § 112, paragraph 2, proceeds as a question of law without deference." SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1338 (Fed. Cir.2005). A violation of the best mode requirement must be proved by clear and convincing evidence. U.S. Gypsum Co. v. Nat'l Gypsum Co., 74 F.3d 1209, 1212 (Fed.Cir.1996).

III

Through the claim construction performed by court-appointed expert, Professor Paul M. Janicke, the district court found that certain means-plus-function clauses in claims 60, 61, and 67 were indefinite. This court disagrees. All of these disputed clauses satisfy the claim definiteness requirement.

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

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

The disputed clauses in claims 60, 61, and 67 qualify for means-plus-function treatment under 35 U.S.C. § 112 ¶ 6. "Claim construction of a means-plus-function limitation includes two steps. First, the court must determine the claimed function. Second, the court must identify the corresponding structure in the written description of the patent that performs the function." Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed.Cir.2006). "The determination of the claimed function and corresponding structure of a means-plus-function claim limitation is a question of law, reviewed de novo." ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1087 (Fed.Cir.2003). Under 35 U.S.C. § 112 ¶ 2 and ¶ 6, a means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381-82 (Fed.Cir.1999).

The clause at issue in claim 60 reads as follows: "output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text." '273 Patent...