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December 20, 2001


The opinion of the court was delivered by: Telesca, District Judge.



Plaintiff Xerox Corporation, ("Xerox"), brings this patent infringement action against defendants 3Com Corporation, U.S. Robotics Corporation, U.S. Robotics Access Corp. and Palm Computing, (collectively "3Com") claiming that defendants have infringed upon U.S. Patent No. 5,596,656, (the '656 Patent), which is owned by Xerox. The '656 Patent discloses a system for computer interpretation of handwritten symbols called "unistrokes." Xerox claims that 3Com is infringing the '656 Patent by manufacturing and selling a device, (known as a "PalmPilot"), that utilizes a computer-based system for recognizing handwritten symbols called "Graffiti." Xerox contends that Graffiti infringes upon the '656 Patent because it practices all of the independent claims of the '656 Patent.

By Decision and Order dated June 6, 2000, I construed the claims of the '656 Patent, and held that 3Com's Graffiti system did not infringe on that patent. Xerox appealed and the Court of Appeals affirmed-in-part and reversed-in-part my June 6, 2000 Decision and Order, and remanded this action for further proceedings consistent with its Mandate.

For determination are motions for summary judgment brought by the parties on the issues of infringement, validity, and enforceability. Xerox claims that it is entitled to judgment in its favor on the issue of infringement because the Court of Appeals has conclusively determined that Graffiti infringes on the '656 Patent. In the alternative, Xerox claims that because every symbol used in 3Com's Graffiti system reads on each of the independent claims of the '656 Patent, Graffiti infringes on that patent. With respect to the issues of the validity and enforceability of the '656 Patent, Xerox claims that it is entitled to judgment in its favor on those issues as well because there is no clear and convincing evidence that its patent is either invalid or unenforceable.

3Com contends that it is entitled to summary judgment in its favor on the issues of infringement, validity and enforceability. 3Com argues that although the Court of Appeals reversed this court's holding that Graffiti does not infringe the '656 Patent, it remanded the case for further proof, or for a trial, on the issue of whether or not every Graffiti symbol infringes on the claims of the '656 Patent. 3Com also claims that because not every Graffiti symbol practices the claims of the '656 Patent, it is entitled to summary judgment of non-infringement. In the alternative, 3Com argues that if the '656 Patent is construed in such a way that Graffiti is covered by that patent, then the '656 Patent is invalid as against prior art because the patent's claims would be covered by inventions disclosed in previous references. 3Com further argues that the '656 Patent is invalid or unenforceable due to the inventor's failure to disclose the best mode of practicing the invention; failing to comply with the enablement, written description, and definiteness requirements in prosecuting the patent application; failing to disclose all of the inventors; and because Xerox engaged in inequitable conduct during the original prosecution of the patent and during reexamination.


I. The Patent

Xerox is the owner of U.S. Patent 5,596,656 entitled "Unistrokes for Computerized Interpretation of Handwriting." The patent describes the invention of a set of single-stroke characters, called Unistrokes, which, when written by hand on a pressure-sensitive screen, can be recognized and translated by a computer into alphanumeric characters. According to the invention, Unistroke symbols are ideal for computer recognition because unlike ordinary Roman alphanumeric characters, which are "not readily distinguishable from each other in the face of rapid or otherwise sloppy writing" and contain "subtle graphical distinctions", Unistrokes are "exceptionally well separated from each other graphically." United States Patent No. 5,596,656 at Column 1, lines 54-55; Column 1, line 59; Column 2, lines 38-39. This "wide separation of unistroke symbols . . . reduces the probability of obtaining erroneous or ambiguous results from the recognition process." United States Patent No. 5,596,656 at Column 4, lines 47-49. As an example of Unistrokes that are graphically well separated from each other, the '656 Patent discloses the following symbol set:

As can be seen from this example, this embodiment of the unistrokes invention employs 5 distinct symbols (found above as the symbols in the first line from left to right), each of which is written in four different rotational orientations (0°, 45°, 90°, and 135°), which results in a symbol set of 20 unistroke symbols. See '656 Patent at Column 3, lines 15-17. In this embodiment, the 20 symbols may be written in either of two directions, which results in a character set of 40 unique symbols. '656 Patent at Column 3, lines 17-20. Utilizing this feature of the invention, the '656 Patent discloses, (as one embodiment of the invention), a set of Unistroke symbols corresponding to the letters and numbers of the Roman alphanumeric system as follows, (with the arrow signifying the direction in which the stroke is formed):

As can be seen from this figure, unistroke symbols that are geometrically identical (for example the strokes representing the "c" and the "d"), can be distinguished by the direction in which they are formed.

Another feature of unistroke symbols is the fact that unlike characters of the Roman alphabet, which can require two or more strokes to form, unistrokes are single-stroke symbols. Accordingly, the recognition device need not wait for a second or third stroke before it can begin the process of recognizing the Unistroke symbol. This single stroke characteristic, combined with the graphically distinct nature of the symbols, allows Unistroke symbols to be definitively recognized immediately upon completion of the stroke.

Finally, the single-stroke nature of the Unistroke symbols, along with definitive recognition and other characteristics, facilitates recognition of the symbols without reference to where previous symbols were written on the pressure-sensitive screen. This concept is referred to by the parties, and by this court and the Court of Appeals, as "spatial independence," and is taught in Claims 1, 10, 12, and 16 of the '656 Patent.

II. Procedural History

Xerox commenced this action on April 28, 1997, claiming that the defendants willfully infringed and are infringing on the '656 Patent by making, using and selling the invention disclosed therein. Specifically, plaintiff contends that defendants' PalmPilot line of hand-held computers, uses the Unistrokes technology disclosed in the '656 Patent in their Graffiti software. Defendants deny plaintiffs claims.

By Decision and Order dated September 29, 1998, this court denied defendants' motion for summary judgment and granted the plaintiffs cross-motion for partial summary judgment, finding that the '656 Patent is not invalid for prior public use. Thereafter, defendants filed a request for re-examination of the '656 Patent by the Patent and Trademark Office ("PTO"). On January 14, 1999, the PTO granted 3Com's request for re-examination. After an initial office action by the PTO which found all of the claims to be invalid, this court imposed a stay of proceedings in this litigation. The PTO subsequently concluded its re-examination, confirming all 16 claims of the '656 Patent. This court then lifted the stay and the parties filed competing motions for summary judgment on the issues of infringement and validity of the '656 Patent.

By Decision and order dated June 6, 2000 I construed the disputed claims of the '656 Patent, and held that based on the construction of those claims, defendants' Graffiti system of recognizing handwritten symbols did not infringe on the '656 Patent. Xerox appealed this court's Decision and by Decision and Order dated October 5, 2001, the Court of Appeals for the Federal Circuit affirmed in-part, and reversed in-part my Decision. On November 9, 2001 the parties filed new motions for summary judgment based on their competing interpretations of the Court of Appeals' Decision.


I. Summary Judgment Standard

Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." When considering a motion for summary judgment, all inferences and ambiguities must be resolved in favor of the party against whom summary judgment is sought. R.B. Ventures, Ltd. v. Shane, 112 F.3d 54 (2nd Cir. 1997). If, after considering the evidence in the light most favorable to the nonmoving party, the court finds that no rational jury could find in favor of that party, a grant of summary judgment is appropriate. Annis v. County of Westchester, 136 F.3d 239, 247 (2nd Cir. 1998).

II. Infringement

Xerox moves for summary judgment on the issue of infringement on two grounds. First, Xerox contends that the Court of Appeals has decided that the defendants' product infringes on the '656 Patent, and therefore, this court may not revisit the issue, and may only enter judgment in Xerox's favor on the infringement issue. In the alternative, Xerox argues that if this court decides to reexamine the issue of infringement, the court will find that every Graffiti symbol practices every limitation of the independent claims of the '656 Patent, and thus infringes on that patent.

3Com disagrees with Xerox's contention that the Court of Appeals has already decided the issue of infringement, and argues that the Court of Appeals remanded the action for this court to take further proof on the infringement issue. Relying heavily on Judge Clevenger's Concurring Opinion, 3Com contends that this court on remand is obligated to analyze every Graffiti symbol to determine whether or not every symbol meets each of the limitations of the '656 Patent: particularly the "graphical separation" limitation. 3Com argues that because some Graffiti symbols do not read on every limitation set forth in the independent claims of the '656 Patent, this court must enter summary judgment in favor of 3Com on the issue of infringement.

Although I find that the Court of Appeals has not conclusively decided the issue of infringement, I hold that Xerox is entitled to summary judgment in its favor on the issue of infringement on grounds that all of defendants' Graffiti symbols read on the claims of the '656 Patent as those claims have been construed by the Court of Appeals.

A. The Court of Appeals did not conclusively decide the issue of infringement.

In remanding this case, the Court of Appeals affirmed (in substantial part) this court's claim construction, and reversed this court's application of the construed patent claims to the accused product. ...

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