United States Court of Appeals for the Federal Circuit
2006-1440
ALLVOICE COMPUTING PLC,
Plaintiff-Appellant,
v.
NUANCE COMMUNICATIONS, INC.
(formerly known as ScanSoft, Inc.),
Defendant-Appellee.
James E. Gaylord, Adams and Reese LLP, of Nashville, Tennessee, argued for
plaintiff-appellant. With him on the brief were Peter A. McLauchlan, and Chris P.
Perque, of Houston, Texas.
Lawrence K. Kolodney, Fish & Richardson P.C., of Boston, Massachusetts,
argued for defendant-appellee. With him on the brief was Jolynn M. Lussier.
Appealed from: United States District Court for the Southern District of Texas
Judge Keith P. Ellison
United States Court of Appeals for the Federal Circuit
2006-1440
ALLVOICE COMPUTING PLC,
Plaintiff-Appellant,
v.
NUANCE COMMUNICATIONS, INC.
(formerly known as ScanSoft, Inc.),
Defendant-Appellee.
___________________________
DECIDED: October 12, 2007
___________________________
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
2006-1440 2
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.
2006-1440 3
'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).
2006-1440 4
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,
2006-1440 5
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
col.29 ll.29-32. The district court, through the expert report of Professor Janicke –
which it adopted in full – concluded that "this limitation requires a system outputting,
alternately, to a plurality of different word processing or other application programs."
Allvoice Computing PLC v. Scansoft, Inc., Civil Action No. H-02-4471 (S.D.Tex. Oct. 13,
2005) (adopting in its entirety Mr. Janicke's report and claim construction) (Janicke
Report ¶ 34). The district court thus added the requirement that the system be able to
output "alternately" to different programs. Although the output means must be capable
of outputting recognized words to more than one program, the claim does not suggest
the requirement that the means do so alternately. In other words, the district court
incorrectly added the requirement that the user have the ability to change the
destination program "on the fly." A person skilled in the art would understand the clause
to merely require compatibility with multiple output programs – not the ability of users to
switch between multiple output programs at will.
In adding a limitation beyond the requirements of the claims, the district court
emphasized a portion of the prosecution history beyond its true significance. During
2006-1440 6
prosecution, AllVoice distinguished its invention from a program in the prior art called
Digital Dictate. AllVoice noted that Digital Dictate had only a capability to work with a
single application program. Janicke Report ¶ 34. This single application distinction,
however, did not suggest that AllVoice's invention must include the ability to work with
multiple applications at once and change the destination program "on the fly." At most,
this distinction in the prosecution history merely requires that AllVoice’s patented
interface work with multiple applications. This distinction did not mean that the interface
must also output to different programs "alternately." Thus, viewing the prosecution
history in its proper context, this court construes the claim to require "a system capable
of outputting to a plurality of different word processing or other application programs."
With this clarification of claim meaning, the specification does contain structure
corresponding to the "output means" clause of claim 60: "The speech recognition
interface application 12 receives the recognised word at the head of the alternative list
shown in FIG. 3 and outputs the word using the dynamic data exchange ("DDE")
protocol in the Windows operating system." '273 Patent col.7 ll.3-7.
2006-1440 7
As explained in detail by AllVoice’s expert, Richard Sonnier, a person of ordinary
skill in this art would understand the DDE protocol. Allvoice Computing PLC v.
Scansoft, Inc., Civil Action No. H-02-4471 (S.D.Tex. Aug. 11, 2004) (Second
Supplemental Sonnier Decl. ¶ 14-15.). DDE is "a form of interprocess communication
that uses shared memory to exchange data between applications." Id. (referencing
Microsoft Windows Software Development Kit Programmer's Reference, Volume 1:
Overview as Exhibit A.) "A skilled artisan reading the specification would recognize that
numerous applications support the DDE transfer protocol and that preparing the
software instruction to transfer recognized words (text) to third party wordprocessors,
spreadsheets and other applications that typically receive text, would be a trivial matter
well within the reach of a person of ordinary skill in the art." Second Supplemental
Sonnier Decl. ¶ 15. This court concludes that the reference to DDE in the specification
is a structure corresponding to the "output means" clause of claim 60. With that
understanding of the proper parameters of the claim, the record shows that an artisan of
ordinary skill would understand the bounds of the claim when read in light of the
specification. KSR Int'l Co. v. Teleflex Inc., 550 U.S. ----, 127 S.Ct. 1727, 1742 (2007)
("A person of ordinary skill is also a person of ordinary creativity, not an automaton.").
Thus, the record shows that claim 60 satisfies the definiteness requirement.
The clauses at issue in claims 61 and 67 relate to the interface’s ability to
perform functions "independent of" the connected application program. Claim 61 has
two contested clauses: "means, independent of the one computer-related application,
for forming link data linking a portion of the audio data to at least one of the recognised
words independently of the one computer-related application;" and "means,
2006-1440 8
independent of the one computer-related application, for updating position identifiers in
response to changes in positions of the recognised words within the one computer-
related application." '273 Patent col.29 ll.38-41, 48-51. Claim 64 (on which claim 67
depends) has the clause: "means, independent of the computer-related application, for
determining positions of the recognised words in the computer-related application."
'273 Patent col.30 ll.7-9. The district court construed "independent of" to mean
essentially "isolated." Janicke Report ¶ 56-60. According to this interpretation, the
claimed interface cannot receive any information back from the application. Rather, it
must keep track of the positions of words in the application without ever obtaining
position data from the application.
This interpretation of the claims is not correct. Instead, the claim term
"independent of" means that the interface must maintain its own position data, in its own
data structures, but still have the ability to receive positional information from the
application. Once again the district court went astray by taking the prosecution history
out of context. As discussed earlier, AllVoice distinguished its invention during
prosecution from an older software application program called Digital Dictate:
"However, in contrast to the claimed invention, the ‘Microsoft Word’ version of Digital
Dictate reviewed in the Seybold Reports 1 itself fails to include any feature that
determines the positions of recognized words. Instead of including these features within
its system, Digital Dictate depends on the bookmarking feature inherent to Microsoft
Word, the application program targeted to receive speech input." Janicke Report ¶ 55
(emphases in original). The district court read this passage as a disavowal of any
1
The Seybold Report is a twice-monthly newsletter devoted to the cross-media tools,
technologies and business trends shaping print and online publishing.
2006-1440 9
interface ability to receive information from the application program for use in
maintaining position data.
To the contrary, this passage merely requires that the AllVoice interface include a
feature that "determines [the] positions of the recognized words," "within its own
system." Id. This distinction does not bar the interface from receiving any information
from the application. As long as the interface maintains its own internal data structure
to keep track of the positions of words, neither the prosecution history nor the claim
language prevents the interface from using information from the application to maintain
that data structure.
Thus, the district court proceeded to assess indefiniteness with an unduly narrow
claim construction. This narrow reading of the "independent of" requirement in claims
61 and 67 led to a finding that the specification did not contain structure corresponding
to that narrow claimed function. With a proper reading of the claim term, however, the
specification does contain adequate structure. Figure 2 and its associated description
in columns 5, 6, and 7 of the patent show that memory maintains the position data
separately from the application. Specifically, memory 20 stores the link data 25 (the
position data stored by the interface 12) separately from the current document 26
maintained by the text processor 13. '273 Patent col.5 ll.44-62.
2006-1440 10
Because neither the claim language nor the prosecution history requires more, the
record shows that the district court erred in finding claims 61 and 67 indefinite on the
basis of the "independent of" language.
The district court also found claims 61 and 67 indefinite for failure to set forth
sufficient algorithmic structure associated with the contested means-plus-function
clauses. The district court held that the disclosure at col.7 l.7, et seq., of the '273
patent, along with Figures 4 and 8A, did not constitute sufficient structure "for
determining positions of the recognized words (claim 64 and indirectly claim 67) and for
updating word positions after edits (claim 61)". Janicke Report ¶ 60.
2006-1440 11
To the contrary, the specification contains sufficient algorithmic structure to give
meaning to claims 61 and 67. Claim definiteness, as discussed earlier, depends on the
skill level of a person of ordinary skill in the art. Miles Labs., Inc., 997 F.2d at 875. In
software cases, therefore, algorithms in the specification need only disclose adequate
defining structure to render the bounds of the claim understandable to one of ordinary
skill in the art. See, e.g., Med. Instrumentation and Diagnostics Corp. v. Elekta AB, 344
F.3d 1205, 1214 (Fed. Cir. 2003) ("[H]ere there would be no need for a disclosure of the
2006-1440 12
specific program code if software were linked to the converting function and one skilled
in the art would know the kind of program to use.") See also Intel Corp. v. VIA Techs.,
Inc., 319 F.3d. 1357, 1366 (Fed. Cir. 2003) (holding that the internal circuitry of an
electronic device need not be disclosed in the specification if one of ordinary skill in the
art would understand how to build and modify the device). In that connection, this
record does not contain clear and convincing evidence that the disclosure at col.7 l.7, et
seq., of the '273 patent, along with Figures 4 and 8A of the patent, do not constitute
sufficient structure to define the claim terms for the ordinarily skilled artisan.
To the contrary, the record contains the statement of Richard Sonnier. This
statement set forth several straightforward ways that the algorithm represented in
Figure 8A could be implemented by one skilled in the art using well-known features of
the Windows operating system (messages, operating system function calls, and
hooking). The Sonnier statement concluded with the observation that "[a] person skilled
in the art reading the '273 specification would know that any of these techniques could
be used to determine the position of a recognized word in the third party application,
would know the software to use and how to implement it." Second Supplemental
Sonnier Decl. ¶ 17. Thus, the record does contain sufficient algorithmic structure to
give meaning to the claim terms from the vantage point of an ordinarily skilled artisan.
Thus, Mr. Sonnier supplied the only assessment in this record of the adequacy of the
specification to disclose enough steps to constitute an actual algorithm for carrying out
the functions claimed in the means-plus-function clauses of claims 61 and 67. Without
any record evidence to contradict Sonnier’s assessment, this court discerns that the
2006-1440 13
district court erred in this indefiniteness judgment as well. Therefore, this court holds
that claims 61 and 67 satisfy the definiteness requirement.
IV
The district court held the '273 patent invalid for deliberate concealment of the
best mode – a requirement of 35 U.S.C. § 112 ¶ 1. A careful reading of the claim,
however, shows that the alleged undisclosed best mode is not a best mode of practicing
the claimed invention. To the contrary, the alleged best mode subject matter falls
outside the scope of claim 73. Thus, the alleged best mode is not a way of practicing
the claimed invention at all.
35 U.S.C. § 112 ¶ 1 provides that the specification of a patent "shall set forth the
best mode contemplated by the inventor of carrying out his invention." This requirement
ensures a patent applicant discloses the preferred embodiment of his invention.
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1330 (Fed. Cir. 2002) ("The
purpose of the best mode requirement is to restrain inventors from applying for patents
while at the same time concealing from the public preferred embodiments of the
inventions they have in fact conceived.").
Only the claimed invention is subject to the best mode requirement. DeGeorge
v. Bernier, 768 F.2d 1318. 1325 (Fed. Cir. 1985) (reversing the Patent Appeals Board
for extending the best mode beyond the proper claim scope); Randomex, Inc. v. Scopus
Corp., 849 F.2d 585, 588, (Fed. Cir. 1988) ("It is concealment of the best mode of
practicing the claimed invention that section 112 ¶ 1 is designed to prohibit."); see Zygo
Corp. v. Wyko Corp., 79 F.3d 1563, 1567 (Fed. Cir. 1996) ("[T]he parameters of a
section 112 inquiry are set by the CLAIMS."). According to § 112 ¶ 1, an inventor is
2006-1440 14
required to disclose the best mode for "carrying out his invention." (emphasis added)
Because the claims represent "the subject matter which the applicant regards as his
invention," subject matter outside the scope of the claims also falls outside the scope of
the best mode requirement. 35 U.S.C. § 112 ¶¶ 1-2; see Engel Indus., Inc. v.
Lockformer Co., 946 F.2d 1528, 1531 (Fed. Cir. 1991) ("The best mode inquiry is
directed to what the applicant regards as the invention, which in turn is measured by the
claims."); Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed. Cir. 2001) ("[T]he
extent of information that an inventor must disclose depends on the scope of the
claimed invention.").
To apply the best mode standard, a court must first "determine[] whether, at the
time the patent application was filed, the inventor had a best mode of practicing the
claimed invention." United States Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d 1209,
1212 (Fed. Cir. 1996). This determination turns on the inventor's own subjective beliefs.
Id. (citing Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 928 (Fed. Cir. 1990)).
"[T]he second part of the analysis [asks] . . . has the inventor 'concealed' his preferred
mode from the 'public'?" Chemcast Corp., 913 F. 2d at 928.
Nuance alleged, and the district court agreed, that some functions of
WordExpress, one of Allvoice’s commercial products, constituted an undisclosed best
mode for claim 73. In reaching this judgment, the district court assumed that claim 73
required maintaining or updating link data during the editing process. Based on this
assumption, the district court held that the best mode for maintaining links after text
editing included the "Selrange macro" ("the macro"), Microsoft Windows "hooks," and
the disabling of certain features of Microsoft Word.
2006-1440 15
Claim 73 includes instructions causing a processor to perform a variety of
functions. '273 Patent col.31 ll.29-60. The instructions implement an interface program
that allows audio data and recognized words to be input into a processing program,
such as a word processor, in which the words are moved relative to each other. Id.
The interface application also "form[s] link data linking the audio data to the recognised
words . . . ." Id. After a user selects a recognized word, the interface application uses
the link data to identify audio corresponding with the selected word and plays back the
audio corresponding to the selected word. Id.
The macro monitors keystrokes to determine the changes to a document.
Specifically, the macro detects a keystroke, determines whether the keystroke will add,
delete, or move a character in the text, and determines the position of the cursor to
ascertain the final effect of the keystroke. Id. The macro interacts with the "hooking"
feature of the Microsoft Windows operating system to perform these functions.
Because the macro cannot track the effects of non-keyboard editing techniques, the
WordExpress program temporarily disables some features of the Microsoft Word word-
processing program.
The district court incorrectly held that the macro's functions were within the scope
of claim 73. In light of the specification as a whole, this court construes "form[ing] link
data" as the formation of the data structure in volatile memory, excluding operations to
update or maintain link accuracy. '273 Patent col.7 l.1. The claim language dictates
this meaning. Indeed, the district court also construed this limitation to mean "form[ing]
link information about the words and audio signals" without reference to any updating or
maintenance of link data. Additionally, Nuance admits, through its expert, that claim 73
2006-1440 16
does not claim the functionality to update link data: "there is no specific requirement
that the interface be capable of playing back audio after a user has made arbitrary edits
using the keyboard."
In addition to the claim language, the doctrine of claim differentiation assists in
arriving at a correct claim meaning in this case. Indeed "claim differentiation takes on
relevance in the context of a claim construction that would render additional, or different,
language in another independent claim superfluous." Curtiss-Wright Flow Control
Corp., v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006); see Phillips v. AWH Corp.,
415 F.3d 1303, 1314 (Fed. Cir. 2005) ("Differences among claims can also be a useful
guide in understanding the meaning of particular claim terms."). In the instant case,
claim 1 includes "means for forming link data" and "means for updating said link data."
The claims thus distinguish between "forming" and "updating." These separate terms
define separate processes accomplished by separate means. If this court interpreted
the process of forming link data to include processes to update that data, the second
limitation (means for updating link data) would be superfluous. Independent claims 1,
15, and 28, among others, explicitly require forming link data, monitoring changes to
text, and updating link data as distinct actions accomplished through separate means.
'273 Patent col.16 ll.32-46, col.18 ll.51-67, col.22 ll.4-13. Thus, monitoring and updating
functions are not part of the forming link data limitation. The specification and the
claims consistently use the terms "forming," "updating," and "monitoring" to denote
separate processes with different end results. '273 Patent col.8 l.65 to col.9 l.12
(indicating that forming and updating are separate steps).
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Unlike claims 1, 15, 28, and others in the '273 patent, claim 73 does not include
"updating" link data, "maintaining" link data after editing, or "monitoring" changes to text.
'273 Patent col.16 ll.32-46, col.26 ll.1-6, col.73 ll.29-60. Because "forming link data"
does not include monitoring changes or updating link data, a method to perform those
unclaimed functions falls outside the scope of claim 73. The macro considered by the
district court does nothing more than monitor the changes to a document, to eventually
facilitate the updating of link data. Claim 73 does not include these features. Thus, the
macro cannot be a best mode for claim 73. Because the alleged best mode does not
fall within the scope of claim 73, this court need not consider whether the inventors of
the '273 patent actually believed the macro was their best mode of practicing the
invention or whether they deliberately concealed that subject matter.
Nuance suggests that claim 73 implicitly includes updating or maintaining link
data. To the contrary, each claim need not include every feature of an invention.
Rather, this court enforces a “presumption that each claim in a patent has a different
scope.” Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (quoting
Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)). Thus
every claim need not contain every feature taught in the specification. See, e.g.,
Nazomi Commc'ns, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005)
(claims may "embrace[] different subject matter than is illustrated in the specific
embodiments in the specification.").
Because the functionality of the alleged best mode falls outside the scope of
claim 73, this court detects no violation of the best mode requirement with respect to
2006-1440 18
claim 73. Accordingly this court reverses the district court’s holding of invalidity of the
'273 patent.
V
For the reasons set forth above, this court reverses both the district court’s
determination that claims 60, 61, and 67 were indefinite and its grant of summary
judgment of invalidity for failure to satisfy the best mode requirement with respect to
claim 73. Accordingly this court remands for further proceedings consistent with this
opinion.
REVERSED AND REMANDED.
COSTS
Each party shall bear its own costs.
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