Articulate Systems, Inc. v. Apple Computer, Inc.

66 F.Supp.2d 105

ARTICULATE SYSTEMS, INC., Plaintiff, v. APPLE COMPUTER, INC., Defendant.

No. Civ.A. 96-10345-RGS.

United States District Court, D. Massachusetts.

August 23, 1999.

Mark J. Hebert, John M. Skenyon, Jennifer T. Miller, Jolynn M. Lussier, Fish & Richardson, Boston, MA, David L. Hayes, Trinidad Arriola-Kern, Marta Beckwith, Fenwick & West, Palo Alto, CA, Howard G. Pollack, Fish & Richardson, P.C., Menlo Park, CA, Charlene M. Morrow, David C. McIntyre, Banner & Witcoff, Ltd., Washington, DC, James H. Pooley, Fish & Richardson, Menlo Park, CA, Monique L. Cordray, Fish & Richardson, La Jolla, CA, for Plaintiff.

Joseph P. Lavelle, Fabrizio F.R. Rasetti, Christopher N. Olsen, Howrey & Simon, Washington, DC, Susan M. Reid, Fenwick & West, Palo, Alto, CA, Robert F. Ruyak, Jonathan G. Graves, Howrey & Simon, Washington, DC, John P. Iwanicki, Michael H. Shanahan, Banner & Allegretti, Ltd., Boston, MA, Edwin H. Wheeler, Menlo Park, CA, Thomas J. Scott, Hunton & Williams, Washington, DC, Dale A. Malone, Banner & Witcoff, Ltd., Boston, MA, for Defendant.

ORDER ON MAGISTRATE JUDGE'S REPORT AND RECOMMENDATION REGARDING APPLE COMPUTER'S MOTION FOR SUMMARY JUDGMENT ON GROUNDS OF INDEFINITENESS

STEARNS, District Judge.

After review of the objections to the Magistrate Judge's well-reasoned Report, I ADOPT his Recommendation and therefore DENY Apple's Motion for Summary Judgment. I agree with the Magistrate Judge that Apple failed to carry its burden of demonstrating that the term "higher level events" is indefinite. This is not to say, however, that Apple's request for a claim construction hearing lacks merit. The court is inclined to hold one if the remaining summary judgment motions is denied. However, Apple's suggestion that a ruling on this matter be deferred until such a hearing is held confuses the purposes and legal rules governing these distinct events.

SO ORDERED.

REPORT AND RECOMMENDATION REGARDING DEFENDANT APPLE COMPUTER, INC'S MOTION FOR SUMMARY JUDGMENT THAT ARTICULATE'S PATENT IS INVALID FOR INDEFINITENESS (DOCKET NO. 135)

KAROL, United States Magistrate Judge.

Plaintiff, Articulate Systems, Inc. ("Articulate"), holds United States Patent 5,377,303 ("the '303 patent") on certain voice recognition software. The software allows a computer's operating system to recognize voiced utterances and convert them into recognizable commands, thus permitting the user to command the operating system through the use of his or her voice. Articulate claims in this lawsuit that Defendant, Apple Computer, Inc. ("Apple"), is offering a software product entitled "PlainTalk" that infringes the '303 patent. Apple ultimately filed four motions for summary judgment or partial summary judgment. This opinion addresses only the third of the four motions, in which Apple moves for summary judgment on the ground that "Articulate's patent is invalid, under the second paragraph of 35 U.S.C. § 112, for failing to particularly point out and distinctly claim the subject matter that Articulate regards as its invention." Defendant Apple Computer, Inc.'s Motion for Summary Judgment That Articulate's Patent is Invalid for Indefiniteness, Docket No. 135. Specifically, Apple claims in this motion that the term "higher level events," which appears in various claims of Articulate's patent, is not sufficiently defined or clarified by the patent specification to satisfy the statutory standard. Id. For reasons set forth below, I recommend that the motion be DENIED.

I. Legal Framework

The phrase "higher level events" appears in independent Claim 1 of the '303 patent, as well as in several dependent claims. Claim 1 thus reads, in pertinent part, that the inventor claims:

A system for enabling voiced utterances to control window elements in a graphical user interface, said graphical user interface being provided by an operating system responsive to events posted in an event queue, some events in the queue being posted in response to signals received from an alphanumeric keyboard in accordance with a predetermined format specific to the keyboard, said events including higher level events....

The term "higher level events" is not specifically defined in the claims or elsewhere in the specification of the '303 patent. Apple contends that the term is not one that would be generally known to persons skilled in the relevant art, and, therefore, that the patent is invalid for indefiniteness under the second paragraph of 35 U.S.C. § 112 (West 1984) ("section 112").

The second paragraph of section 112 provides:

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.

35 U.S.C. § 112.

The purpose of this provision is to put competitors on fair notice of the limits of the claimed invention, so that they may fairly know the point at which their activities may begin to pose a serious risk of infringement. E.g., Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed.Cir.1996). It has thus been interpreted to require that the claim be spelled out with sufficient particularity and in language sufficiently familiar to one skilled in the art to inform the latter as to the limits of the claim. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed.Cir.1991); Candela Laser Corp. v. Cynosure, Inc., 862 F.Supp. 632, 642 (D.Mass.1994). There is no requirement that each term appearing in the claim be expressly defined in the claim or specification, as long as "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Morton Int'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed.Cir. 1993). Further, "[i]f the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more. The degree of precision necessary for adequate claims is a function of the nature of the subject matter." Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed.Cir. 1993) (citations omitted); see also Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed.Cir.1985) (claims must be "as precise as the subject matter permits"). Ultimately, the question of whether a patent is void for indefiniteness is an issue of law. See Amgen, 927 F.2d at 1217.

Case law recognizes a number of legitimate sources of information about the meaning to persons skilled in the art of language used in claims. For example, the Federal Circuit observed in Markman v. Westview Instruments that evidence of meaning might be found in the claim itself, in the specification, and in the prosecution history. Markman v. Westview Instruments Inc., 52 F.3d 967, 979-82 (Fed.Cir. 1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The court further noted that expert testimony could be a useful source of information regarding the meaning of language and its familiarity to persons skilled in the art. Markman, 52 F.3d at 979-82. Other useful sources of information include such extrinsic evidence as the inventor's testimony, dictionaries (both general and specialized), and learned treatises. Id. Indeed, it has been pointed out that a patentee may be his own lexicographer, id. at 980, meaning that he may, within reason, define words any way he wishes.

Implicit in cases such as Markman is the principle that a patent may be valid even though the meaning of certain claim language is not entirely free from ambiguity or instantly clear upon first reading. See id.; see also Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1552-56 (Fed.Cir.1997) (court consults intrinsic and extrinsic evidence, both of which were inconclusive considered separately, to resolve uncertainty about meaning of claim language), abrogated on other grounds, Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed.Cir.1998). Indeed, the principle has evolved that when patent claims are subject to more than one possible construction, they should, when reasonably possible, be interpreted so as to preserve their validity. Modine Mfg. Co. v. United States Int'l Trade Comm'n, 75 F.3d 1545, 1557 (Fed.Cir.1996). Accord ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed.Cir.1984) ("[c]laims should be so construed, if possible, as to sustain their validity.")

As is true with any challenge to patent validity, the patentee is entitled to the benefit of the presumption of validity found in 35 U.S.C. § 282. The burden is upon the challenger to prove invalidity by clear and convincing evidence, e.g., Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1570 (Fed.Cir.1986), defined as evidence "which produces in the mind of the trier of fact an abiding conviction that the truth of [the] factual contentions are `highly probable.'" Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed.Cir. 1988) (citing State of Colorado v. State of New Mexico, 467 U.S. 310, 316, 104 S.Ct. 2433, 81 L.Ed.2d 247 (1984)). Thus, it is incumbent in this case upon Apple to prove by clear and convincing evidence that, taking into account both intrinsic and extrinsic evidence, the meaning of the phrase "higher level event" is not sufficiently clear to persons skilled in the art to apprise potential competitors of the limits of Articulate's invention. If Apple fails to present such proof as part of its prima facie case, there is no burden on Articulate to come forward with any contrary evidence, and Apple's motion for summary judgment must be denied.

II. The Summary Judgment Record

Apple points to several types of evidence in the summary judgment record to support its position that the term "higher level events" is indefinite.

First, it relies on the opinion of Dr. Alexander I. Rudnicky. Declaration of Dr. Alexander I. Rudnicky in Support of Apple's Motion for Summary Judgment that Articulate's Patent is Invalid for Indefiniteness ("Rudnicky...