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).
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. Specifically, with respect to claim
construction, the court held: