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.
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
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.
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).
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
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. ...