Docket No. 2014-1258
PROST, DYK, O’MALLEY
May 22, 2015
Brief Summary: DC grant of SJ of noninfringement (infringement theory not timely presented) and invalidity under § 101 (“merely claimed software instructions, which, alone, is not a tangible object”) affirmed.
Summary: Allvoice appealed DC grant of SJ that Microsoft’s products do not infringe the asserted claims of US 5,799,273 direct to a speech recognition product because did not disclose its only infringement theory and was not diligent in seeking to amend its infringement contentions, and that other claims are invalid under 35 USC § 101 (“merely claimed software instructions, which, alone, is not a tangible object”). Regarding infringement, Allvoice acknowledged that only the “Text Services Framework (‘TSF’) property store” in the accused products but the DC found it did not “disclose this theory in its operative infringement contentions…[and therefore] could not rely upon it for opposing summary judgment.” The FC panel found no abuse of discretion by the DC descision as it was properly based on local rules (“the party alleging patent infringement must provide infringement contentions that ‘identify specifically where each element of each Asserted Claim is found within each Accused Device”). Regarding Allvoice’s request to amend its contentions, the DC found “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…to file its motion to amend”. The FC panel found no abuse of discretion with the DC’s conclusion. Regarding patentability under § 101, the opinion explained that “[e]xcept for process claims, ‘the eligible subject matter must exist in some physical or tangible form…the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices…a tangible article that is given a new form, quality, property, or combination through man-made or artificial means…a composition of matter requires the combination of two or more substances and includes all composite articles” (Digitech, FC 2014). “Here”, the FC panel explained, the disputed claims “do not recite a process or tangible or physical object and, thus, do not fall within any of the categories of eligible subject matter” (e.g, ‘273 claim 60: “A universal speech-recognition interface…comprising: input means…output means…; and audio playback means….”) The opinion notes that “[s]oftware may be patent eligible, but when a claim is not directed towards a process, the subject matter must exist in tangible form” and “[h]ere, the disputed claims merely claim software instructions without any hardware limitations.” Thus, the DC decision was affirmed.