NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ALLVOICE DEVELOPMENTS US, LLC,
Plaintiff-Appellant
v.
MICROSOFT CORP.,
Defendant-Appellee
______________________
2014-1258
______________________
Appeal from the United States District Court for the
Western District of Washington in No. 2:10-cv-02102-
RAJ, Judge Richard A. Jones.
______________________
Decided: May 22, 2015
______________________
DANIEL J. SHIH, Susman Godfrey L.L.P., Seattle, WA,
argued for plaintiff-appellant. Also represented by IAN B.
CROSBY, RACHEL S. BLACK; CHRIS PAUL PERQUE, Gardere
Wynne Sewell LLP, Houston, TX.
DAVID JASON LENDER, Weil, Gotshal & Manges LLP,
New York, NY, argued for defendant-appellee. Also repre-
sented by EDWARD R. REINES, Redwood Shores, CA;
DOUGLAS WAYNE MCCLELLAN, Houston, TX; DAVID E.
KILLOUGH, Microsoft Corporation, Redmond, WA.
2 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
______________________
Before PROST, Chief Judge, DYK, and O’MALLEY,
Circuit Judges.
O’MALLEY, Circuit Judge.
Allvoice Developments US, LLC (“Allvoice”) appeals
the district court’s grant of summary judgment that
Microsoft Corporation’s (“Microsoft”) accused products do
not infringe the asserted claims of U.S. Patent No.
5,799,273 (the “’273 Patent”) and that claims 60–68 of the
’273 Patent are invalid under 35 U.S.C. § 101 (2012). 1
The district court’s December 23, 2013 judgment of non-
infringement depended upon its findings that Allvoice’s
infringement contentions did not disclose Allvoice’s only
infringement theory for the “link data” limitation and
that Allvoice was not diligent in seeking to amend its
infringement contentions. Because we find that the
district court did not abuse its discretion in reaching those
conclusions, we affirm the judgment of non-infringement.
Because claims 60–68 are not directed to one of the four
statutory categories of inventions identified in 35 U.S.C.
§ 101, we also affirm the judgment of invalidity as to
those claims.
1 As of the date of the final judgment of non-
infringement, only claims 28, 37–38, 49–51, 56–57, 71–74,
and 77 of the ’273 Patent remained at issue. The district
court’s summary judgment of invalidity regarding claims
60–68 occurred on December 21, 2011. At that same time,
the district court also found that claims 1–27, 40, 44–45,
47, 52–55, 58–59, 65, 69–70, and 75–76 of the ’273 Patent
were indefinite under 35 U.S.C. § 112. Allvoice does not
appeal the indefiniteness judgment.
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP. 3
BACKGROUND
Allvoice is the owner of the ’273 Patent. The ’273 Pa-
tent is directed to a speech recognition product that
allows users to store an audio recording of a dictation,
replay the recording to correct the recognized text, and
directly dictate into any application, as opposed to requir-
ing a user to copy and paste the recognized language from
a proprietary dictation application into other applications.
’273 Patent col. 1 l. 59–col. 2 l. 55. The ’273 Patent
achieves this by utilizing an interface application program
(“IAP”) that communicates with a speech-recognition
engine and the user’s chosen text processing application.
The interface forms link data that associates the positions
of the recognized words with the audio data. This inter-
face also updates the link data when changes to the text
are made to ensure that the correct associations between
text and audio data are maintained.
In August 2009, Allvoice filed suit against Microsoft,
alleging infringement of the ’273 Patent. The following
July, Allvoice served its first amended infringement
contentions (“operative infringement contentions”), as-
serting claims 1–3, 10–13, 15, 19, 20, 26, 28, 37–38, 40,
44–45, 47, 49–75, and 77 of the ’273 Patent against Mi-
crosoft, identifying the particular Microsoft products
accused of infringement, and specifying how those prod-
ucts met each claim limitation of the asserted claims.
Following this exchange, the parties began the claim
construction process by submitting a joint claim construc-
tion chart of disputed claim terms on September 3, 2010
and filing their respective claim construction briefs.
Microsoft also amended its interrogatory responses dis-
puting Allvoice’s infringement contentions, expressly
disclaiming, among other things, that its products satisfy
the “link data” limitation in the claims of the ’273 Patent.
During this time, Microsoft also filed a motion for partial
summary judgment of invalidity, where Microsoft alleged
4 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
that some of the asserted claims were invalid for failure to
comply with § 101 and others were invalid under § 112.
On May 13, 2011, the district court held a hearing on
the parties’ claim construction disputes and Microsoft’s
motion for summary judgment of invalidity. On Decem-
ber 21, 2011, the district court issued its order construing
several terms and granting-in-part Microsoft’s motion.
See Allvoice Devs. US, LLC v. Microsoft Corp., No. 2:10-
cv-2102, slip op. at 1 (W.D. Wash. Dec. 21, 2011) (herein-
after, “Markman opinion”). Specifically, the district court
concluded that claims 60–68 are invalid for failing to
qualify as one of the four statutory categories of invention,
because the claims did not describe a manufacture, as
Allvoice asserted, but rather merely claimed software
instructions, which, alone, is not a tangible object. Id. at
5–6. Additionally, the district court found that claims 1–
27, 40, 44–45, 47, 52–55, 58–59, 65, 69–70, and 75–76 are
invalid for indefiniteness. Id. at 6–8. With respect to the
disputed claim terms, the district court construed “audio
identifiers identifying audio components corresponding to
each recognized word”—the “audio identifier” limitation—
to mean “[i]dentifiers that indicate, for each recognized
word, (1) the file containing the corresponding audio
component and (2) the position of the corresponding audio
component within that file.” Id. at 15. Additionally, the
district court adopted Microsoft’s proposed construction
for the term “said link data comprising the audio identifi-
ers and the determined positions of corresponding recog-
nized words”—the “link data” limitation—finding that the
term means “[l]ink data, which is stored in the interface
application memory, includes the character positions of
recognized words [or characters] in the text processing
application and the corresponding audio identifiers for
those words [or characters].” Id. at 16.
Following the district court’s claim construction order,
Allvoice filed a motion to amend its infringement conten-
tions in April 2012, contending that it was necessary to do
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP. 5
so in order to provide clarification and also to address the
court’s claim construction rulings. See Allvoice Devs. US,
LLC v. Microsoft Corp., No. 2:10-cv-2102, slip op. at 1
(W.D. Wash. Dec. 27, 2012). Applying Local Patent Rule
124, which allows for such amendments after a timely
showing of good cause, the district court found that
Allvoice had failed to meet this burden. Id. at 5. In order
to demonstrate good cause, the district court required
Allvoice to show that it was diligent in requesting the
amendment and that Microsoft would not be prejudiced
by the amendment. Id. at 2. Because Allvoice had served
its operative infringement contentions on July 23, 2010,
was aware of Microsoft’s claim construction arguments in
September 2010, and had the order on claim construction
from the court in December 2011, but did not move to
amend its contentions until April 2012, and, did not
attempt to show good cause for its delay, the district court
concluded that Allvoice failed to prove that it had been
diligent in seeking an amendment. Id. at 3–4. While the
district court recognized that Allvoice and Microsoft had
agreed that Allvoice could file its motion to amend on or
before April 12, 2012, the court concluded that this fact
did not trump the need to demonstrate diligence, especial-
ly because Microsoft did not agree to the amendment, only
the filing of a motion seeking leave to do so. Because it
found that Allvoice had been dilatory in filing its motion
to amend, the district court did not consider whether
Microsoft would have been prejudiced, and denied
Allvoice’s motion to amend. Id. at 5.
Subsequently, Microsoft filed a motion for summary
judgment of non-infringement, alleging that its accused
products did not meet either the “link data” limitation or
the “audio identifier” limitation as construed by the
district court. Microsoft also argued that its accused
products did not store an audio message as required by
claims 56 and 57, that its products did not infringe under
the doctrine of equivalents, and that it did not indirectly
6 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
infringe the patent-in-suit. The district court agreed on
all grounds and granted summary judgment in favor of
Microsoft as to all remaining asserted claims, claims 28,
37–38, 49–51, 56–57, 71–74, and 77. Allvoice Devs. US,
LLC v. Microsoft Corp., 988 F. Supp. 2d 1248, 1263 (W.D.
Wash. 2013) (hereinafter, “Summary Judgment Order”).
Allvoice timely appealed to this court. We have juris-
diction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
On appeal, Allvoice challenges several of the district
court’s rulings, including its decisions regarding the
operative and proposed amended infringement conten-
tions, the construction of the “link data” and “audio iden-
tifier” terms, the grant of summary judgment of no direct
infringement for the “link data” and “audio identifier”
terms, including the refusal to consider infringement of
the “audio identifier” term under the doctrine of equiva-
lents, the interpretation of claims 56 and 57 to require
the storage of audio data received from the speech recog-
nition engine, the grant of summary judgment of no
indirect infringement, and the grant of summary judg-
ment of invalidity with respect to claims 60–68. 2
A. Summary Judgment of Non-Infringement
The district court granted summary judgment of non-
infringement, in part, because Allvoice could not prove
that Microsoft’s accused products met the “link data”
limitation, which is present in all asserted claims, includ-
2 Allvoice does not challenge the district court’s de-
termination that claims 1–27, 40, 44–45, 47, 52–55, 58–
59, 65, 69–70, and 75–76 are invalid under 35 U.S.C.
§ 112. Nor does it challenge the district court’s ruling
regarding infringement of the “link data” limitation under
the doctrine of equivalents.
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP. 7
ing claims 56 and 57. Summary Judgment Order, 988 F.
Supp. 2d at 1260. Allvoice concedes that only the “Text
Services Framework (“TSF”) property store” in the ac-
cused products arguably satisfies this limitation. The
district court, however, found that Allvoice failed to
identify the TSF property store in either its original or its
first amended infringement contentions. Id. at 1259.
Because Allvoice failed to disclose this theory in its opera-
tive infringement contentions, the district court concluded
that Allvoice could not rely upon it for purposes of oppos-
ing summary judgment. In the absence of any allegation
that Microsoft’s products contained the claimed “link
data,” the district court granted summary judgment in
favor of Microsoft. Id. at 1260.
Allvoice contends that the district court abused its
discretion when it determined that Allvoice’s operative
infringement contentions did not sufficiently identify
where link data is found within the accused products. In
the alternative, Allvoice argues that, even if its infringe-
ment contentions were deficient with respect to the “link
data” limitation, the district court abused its discretion in
denying Allvoice’s motion to amend those contentions to
specifically include a reference to the TSF property store.
If the district court had considered the TSF property store
aspect of Microsoft’s products, Allvoice maintains that
summary judgment of non-infringement would not have
been granted.
1. Operative Infringement Contentions
Allvoice alleges that its infringement contentions ade-
quately identified the SAPI Server as meeting the “link
data” limitation. Because it disclosed in its contentions
that the link data is stored in the memory of the SAPI
Server in Microsoft’s products and stated that the SAPI
Server includes the TSF, Allvoice contends that it suffi-
ciently disclosed that the link data is stored in the proper-
8 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
ty storage of the TSF, because that is what the SAPI
Server’s memory is.
Allvoice, however, fails to demonstrate how the dis-
trict court’s decision that Allvoice was required to explicit-
ly reference the TSF property store in its contentions was
an abuse of discretion. This court gives “broad deference”
to a district court’s enforcement of local patent rules.
Sandisk Corp. v. Memorex Prods., 415 F.3d 1278, 1292
(Fed. Cir. 2005) (“[T]his court gives broad deference to the
trial court’s application of local procedural rules in view of
the trial court’s need to control the parties and flow of
litigation before it.”). This discretion extends to any
decision to exclude evidence for failure to comply with
disclosure requirements of the local patent rules. See O2
Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d
1355, 1369 (Fed. Cir. 2006) (explaining “that the exclusion
of evidence is often an appropriate sanction for the failure
to comply with [the local rule] deadlines”). Accordingly,
“[d]ecisions enforcing local rules in patent cases will be
affirmed unless clearly unreasonable, arbitrary, or fanci-
ful; based on erroneous conclusions of law; clearly errone-
ous; or unsupported by any evidence.” Id. at 1366–67
(citing Genentech Inc. v. Amgen, Inc., 289 F.3d 761, 774
(Fed. Cir. 2002)).
Here, the district court acknowledged that Allvoice, in
its operative contentions, had alleged that the SAPI
Server “forms” link data and stores it in its memory.
Summary Judgment Order, 988 F. Supp. 2d at 1256.
But, it concluded, and Allvoice does not dispute, that
there were no explicit references to the property store of
the TSF in the operative infringement contentions. While
Allvoice argued below that the documents cited within its
contentions contained such a reference, the district court
concluded that “a careful review” of the cited documents
indicated that they referred to another program—the
Speech TIP—and not the TSF property store. Id. at 1260.
Allvoice does not dispute this point on appeal, arguing
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP. 9
simply that its references to the SAPI Server were suffi-
cient to provide adequate notice of its infringement theo-
ry. We disagree.
Western District of Washington Local Patent Rule
124(c) requires that the party alleging patent infringe-
ment must provide infringement contentions that “identi-
fy[] specifically where each element of each Asserted
Claim is found within each Accused Device.” W.D. Wash.
Local Patent R. 124(c) (emphasis added). It is well within
the discretion of a district court to require specificity in
infringement contentions, especially considering that the
purpose of these contentions is to require “parties to
crystallize their theories of the case early in the litiga-
tion . . . .” O2 Micro, 467 F.3d at 1364 (quotation omit-
ted); see W.D. Wash Local Patent R. 101 (explaining that
the local patent rules were “designed to streamline the
pre-trial and claim construction process, and generally to
reduce the cost of patent litigation”). A review of the
record and documents cited in Allvoice’s infringement
contentions supports the district court’s finding that
neither Allvoice’s contentions nor the documents refer-
enced therein discuss the TSF property store. Allvoice’s
references to the SAPI Server were insufficient to satisfy
its notice obligations. Without evidence that Allvoice did
in fact specifically reference the TSF property store in its
operative contentions, the district court’s decision to
exclude the TSF property store theory at the summary
judgment stage for Allvoice’s failure to comply with the
local patent rules was not an abuse of discretion.
2. Amended Infringement Contentions
In the alternative, Allvoice argues that the district
court abused its discretion in finding that Allvoice was not
diligent in seeking leave to amend its infringement con-
tentions. If Allvoice was allowed to amend its infringe-
ment contentions to include a specific reference to the
TSF property store, it alleges that the district court would
10 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
have had no basis to grant Microsoft’s motion for sum-
mary judgment of non-infringement with respect to the
“link data” limitation.
Under Western District of Washington’s Local Patent
Rule 124, a party may only amend its infringement con-
tentions “by order of the Court upon a timely showing of
good cause.” W.D. Wash. Local Patent R. 124 (emphasis
added). Good cause may be demonstrated in various
ways, including:
(a) a claim construction by the Court different
from that proposed by the party seeking amend-
ment; (b) recent discovery of material prior art de-
spite earlier diligent search; and (c) recent
discovery of nonpublic information about the Ac-
cused Device which was not discovered, despite
diligent efforts, before the service of the Infringe-
ment Contentions.
Id. In order to establish good cause, the moving party
first must demonstrate diligence in amending its conten-
tions. O2 Micro, 467 F.3d at 1366–67. If the moving
party is not able to meet that burden, it is unnecessary to
examine the potential prejudice of the amendment to the
non-moving party. Id. at 1368.
Allvoice alleges that the district court’s decision not to
allow it to amend its infringement contentions after the
district court’s claim construction ruling was an abuse of
discretion because the plain language of Local Patent
Rule 124 allows for such an amendment if the district
court adopts a claim construction “different from that
proposed by the party seeking amendment.” W.D. Wash.
Local Patent R. 124(a). Additionally, Allvoice contends
that, because the parties stipulated that Allvoice could
seek leave to amend its infringement contentions on or
before April 12, 2012, it was unreasonable for the district
court to fault Allvoice for its delay in filing the motion.
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP. 11
Here, the district court found that Allvoice had failed
to explain why it waited more than three months after the
Markman order and over nineteen months after the joint
claim chart of disputed terms—where Microsoft first
proposed the construction that the district court ultimate-
ly adopted for the “link data” limitation—to file its motion
to amend. Without any explanation for its delay, the
district court determined that the mere fact that the
parties had agreed that Allvoice could file a motion did
not excuse Allvoice from providing a reason why it waited
so long file its motion, especially considering that Allvoice
was aware of the possibility that the district court could
adopt Microsoft’s construction as early as September
2010. See O2 Micro, 467 F.3d at 1366 (“If the parties
were not required to amend their contentions promptly
after discovering new information, the contentions re-
quirement would be virtually meaningless as a mecha-
nism for shaping the conduct of discovery and trial
preparation.”). While a different claim construction may
justify an amendment, the district court did not abuse its
discretion when it concluded that the local rules do not
allow a party to amend its infringement contentions as a
matter of right whenever the district court adopts a claim
construction position at odds with that urged by the
moving party. Diligence still must be shown. While, if
acting as the district court, one or more of us may have
granted leave to amend in these circumstances, that is
not the question before us. We assess only whether the
district court abused its discretion in requiring a showing
of diligence and finding Allvoice’s showing inadequate; we
conclude it did not.
Although Allvoice also argues that the district court’s
ruling was unjustified in light of the case schedule, which
provided Microsoft sufficient time to conduct additional
discovery and prepare expert reports following an
amendment of Allvoice’s contentions, these considerations
go to whether Microsoft would suffer prejudice if Allvoice
12 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
were allowed to amend, not whether Allvoice was diligent
in seeking an amendment. Because the district court did
not abuse its discretion in deciding that Allvoice did not
act diligently in moving to amend its infringement con-
tentions, we need not consider the potential prejudice to
Microsoft. 3
The district court granted summary judgment of non-
infringement, in part, because it found an absence of
evidence with respect to the “link data” limitation. We
review the grant of summary judgment under the law of
the regional circuit. Charles Mach. Works, Inc. v. Vermeer
Mfg. Co., 723 F.3d 1376, 1378 (Fed. Cir. 2013). The Ninth
Circuit reviews the grant or denial of summary judgment
de novo. Leever v. Carson City, 360 F.3d 1014, 1017 (9th
Cir. 2009).
Summary judgment is appropriate only if there is no
genuine issue of material fact and the movant is entitled
to judgment as a matter of law. FED. R. CIV. P. 56(c);
3 Allvoice also contends that this dispute regarding
the adequacy of its infringement contentions and whether
it should have been allowed to amend them could be
rendered moot if we agree with it that the district court’s
construction of the “link data” limitation was erroneous.
Specifically, if we agree that the district court erred when
it concluded that link data is stored in the IAP memory,
Allvoice contends that its failure to reference the TSP
property store would not matter. Neither this argument
nor Microsoft’s arguments that Allvoice’s challenge to the
“link data” claim construction is waived, irrelevant and
inconsistent with prior positions taken by Allvoice need
detain us long. We conclude that the language of the
claims, the written description, the prosecution history of
the ’273 Patent and Allvoice’s interference with the Holt
Application all confirm that link data must be stored in
the IAP memory.
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP. 13
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).
A movant can satisfy this burden by demonstrating that
the nonmoving party “failed to make a sufficient showing
on an essential element of her case with respect to which
she has the burden of proof.” Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986). Allvoice’s operative infringement
contentions did not reference the “TSF property store,”
which Allvoice concedes is the only element that arguably
satisfies the “link data” limitation in its patent, and
Allvoice was not allowed to amend its infringement con-
tentions to specifically include this reference. Without
any admissible theory as to how Microsoft’s accused
products satisfied the “link data” limitation, the district
court did not err in granting summary judgment of non-
infringement.
Because we affirm the district court’s grant of sum-
mary judgment of non-infringement as to all remaining
asserted claims, we need not reach Allvoice’s other in-
fringement arguments. See Orion Tech., Inc. v. United
States, 704 F.3d 1344, 1350 (Fed. Cir. 2013) (“An appel-
late court can affirm a decision of the trial court upon any
ground supported by the record.”) (citing Datascope Corp.
v. SMEC, 879 F.2d 820, 822 n.1 (Fed. Cir. 1989)).
B. Invalidity of Claims 60–68
The district court also determined that claims 60–68
were invalid for failing to comply with 35 U.S.C. § 101. 4
“We review the district court’s determination of patent
eligibility under 35 U.S.C. § 101 de novo.” DDR Holdings,
4 Because the district court invalidated these claims
before entering summary judgment of non-infringement
on the remaining claims, it did not apply its non-
infringement judgment to them. We note, however, that,
because each of these claims as construed also requires
link data, even if valid, they are not infringed.
14 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir.
2014).
Section § 101 defines patentable subject matter and
states:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.
“Section 101 thus specifies four independent categories of
inventions or discoveries that are eligible for protection:
processes, machines, manufactures, and compositions of
matter. ‘In choosing such expansive terms . . . modified
by the comprehensive ‘any,’ Congress plainly contemplat-
ed that the patent laws would be given wide scope.”’
Bilski v. Kappos, 561 U.S. 593, 601 (2010) (quoting Dia-
mond v. Chakrabarty, 447 U.S. 303, 308 (1980)). If a
claim is drawn to subject matter that falls outside the
four statutory categories of § 101, it is not patent eligible.
In re Nuitjen, 500 F.3d 1346, 1354 (Fed. Cir. 2007). This
is true without regard to whether it might otherwise be
ineligible because it encompasses a law of nature, natural
phenomenon, or abstract idea. See Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 124 S. Ct. 2347, 2354 (2014).
Except for process claims, “the eligible subject matter
must exist in some physical or tangible form.” Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344, 1348 (Fed. Cir. 2014). To be considered a machine
under section 101, “the claimed invention must be a
‘concrete thing, consisting of parts, or of certain devices
and combination of devices.’” Id. at 1349 (quoting Burr v.
Duryee, 68 U.S. 531, 571 (1863)). Similarly, “[t]o qualify
as a manufacture, the invention must be a tangible article
that is given a new form, quality, property, or combina-
tion through man-made or artificial means. Likewise, a
composition of matter requires the combination of two or
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP. 15
more substances and includes all composite articles.” Id.
(citing Diamond, 447 U.S. at 308).
Here, claims 60–68 of the ’273 Patent do not recite a
process or tangible or physical object and, thus, do not fall
within any of the categories of eligible subject matter.
Independent claim 60 is directed to a speech-recognition
“interface”:
A universal speech-recognition interface that ena-
bles operative coupling of a speech-recognition en-
gine 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 as-
sociated with the recognised words.
’273 Patent, col. 29 ll. 22–34.
Similarly, independent claim 64 recites:
A speech-recognition interface that enables opera-
tive coupling of a speech-recognition engine to a
computer-related application, the interface com-
prising:
input means for receiving speech-recognition data
including recognised words;
output means for outputting the recognised words
into a computer-related application to allow pro-
cessing of the recognised words as input text, in-
cluding changing positions of the recognised
words; and
16 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
means, independent of the computer-related ap-
plication, for determining positions of the recog-
nised words in the computer-related application.
’273 Patent, col. 29 l. 65–col. 30 l. 9.
Before the district court, Allvoice explained that the
claimed interfaces are described in the ’273 Patent’s
specification as “interface applications,” and, thus, that
these claims are limited to software. See Pl.’s Opening Cl.
Constr. Br. at 9–10, Allvoice Devs. US, LLC v. Microsoft
Corp., No. 2:10-cv-2102 (W.D. Wash. Sept. 27, 2010), ECF
No. 107 (“As indicated above, claims 60 and 67 [which is
dependent on claim 64] according to their preamble are
limited to the ‘interface’ which is described in the patent
in suit as an ‘interface application.’ Hence, these claims
are limited to software.”). Before this court, Allvoice
clarifies that the claimed interfaces are “software instruc-
tions.” 5 Software may be patent eligible, but when a
claim is not directed towards a process, the subject matter
must exist in tangible form. Here, the disputed claims
merely claim software instructions without any hardware
limitations.
Allvoice attempts to overcome this hurdle now by ar-
guing that the claimed software must necessarily be in a
machine readable, physical state in order to exist, and
that the district court therefore should have concluded
that these claims are directed to a manufacture, one of
the four categories of patentable inventions. But, as this
5 Although Allvoice did not ground its opposition to
Microsoft's motion for summary judgment on any benefits
received from employing functional claiming under
§ 112(6), it is also significant that the means-plus-
function limitations, as construed by Allvoice, do not
correspond to tangible structure, as opposed to software
instructions.
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP. 17
Court has recognized, instructions, data, or information
alone, absent a tangible medium, is not a manufacture.
See Digitech Image Techs., 758 F.3d at 1349–50 (rejecting
a patentee’s attempt to argue that the disputed claims
were subject matter eligible because the claim language
did not describe “any tangible embodiment of this infor-
mation (i.e., in physical memory or other medium) or
claim any tangible part of the digital processing system”);
In re Nuitjen, 500 F.3d at 1356 (declining to import a
tangible medium element into the claims directed to only
encoded signals, which were unpatentable under § 101).
We decline to import or, as Allvoice argues, “imply” a
tangible medium into claims that fail to recite or refer-
ence any such medium. 6 Because claims 60–68 are not
directed to a tangible article and are not process claims,
the district court did not err when it held these claims
were not patent eligible, and, thus, invalid.
CONCLUSION
Because the district court did not abuse its discretion
in enforcing the local patent rules, we affirm the district
court’s grant of summary judgment of non-infringement
as to claims 28, 37–38, 49–51, 56–57, 71–74, and 77 with
respect to the “link data” limitation. In light of this
ruling, we need not reach Allvoice’s other arguments
regarding infringement of these claims. Additionally,
with respect to the validity of claims 60–68 of the ’273
Patent, Allvoice conceded that these claims were limited
to software instructions without any hardware limita-
tions. In the absence of such limitations, the claims as
written fail to recite a manufacture, or any other statuto-
rily recognized invention. Accordingly, we also affirm the
6 Given our resolution of this issue, we decline to
address Microsoft’s argument that Allvoice waived this
argument by not raising it in its briefing to the trial court.
18 ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP.
district court’s grant of summary judgment of invalidity of
claims 60–68 of the ’273 Patent.
AFFIRMED