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Federal Circuit Affirms Judgment of Non-infringement of UTS' Touch-Tone Telephone Tech Patent
Board of Regents of the University of Texas System v. BENQ America Corp., et al.
No. 2007-1388, U.S. Court of Appeals for the Federal Circuit, 07/24/2008
Companies Mentioned: Audiovox Communications Corp., BENQ America Corp., Board of Regents of the University of Texas System, Chi Mei Communication Systems, Inc., Compal Communications, Inc., Curitel Communications, Inc., High Tech Computer Corp., Hon Hai Precision Industry Co. Ltd., HTC Corp., Innostream, Inc., Kyocera Wireless Corp., LG Electronics Mobilecomm U.S.A., Inc., Motorola, Inc., NEC Corporation of America, Nokia, Inc., Panasonic Corporation of North America, Samsung Electronics America, Inc., Samsung Telecommunications America LLP, Sanyo North America Corp., Sendo America, Inc., Sharp Corp. a.k.a. Sharp Kabushiki Kaisha, Siemens Communications, Inc., Sony Ericcson Mobile Communications (USA), Inc., Sony Ericcson Mobile Communications AG, TCL & Alcatel Mobile Phones Limited, Toshiba Corp., UTSTARCOM, Inc., Wistron Corp.
Holding
The U.S. Court of Appeals for the Federal Circuit in this appeal affirmed a district court's summary judgment of non-infringement of a patent relating to non-verbal entry technology that uses “syllabic elements” via a standard touch tone telephone. In particular, the Federal Circuit, citing specification and prosecution history, concluded that the proper construction of "syllabic element" is a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word. Further, the Federal Circuit saw no error in the district court’s claim construction, which clarified that a syllabic element may be as small as a single letter. In the final judgment stipulation, the parties agreed that none of the accused devices relied on a vocabulary of "only syllabic elements," as the term "syllabic elements" was construed” by the district court. Thus, the district court properly entered judgment that the accused devices did not infringe the asserted claims of the patent-at-issue.
Detailed Summary
The ’112 patent is the patent-at-issue and is entitled “Character Pattern Recognition and Communications Apparatus.” It describes an apparatus and method designed to enable “non-verbal entry” and transmission of a word (or words) using a standard, touch-tone telephone. Opinion, p.2, citing ’112 Patent, Abstract.
Plaintiff-Appellant the Board of Regents of the University of Texas System (“Board of Regents”) appealed a final judgment by the United States District Court for the Western District of Texas. Id., citing Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., No. 1:05-CV-181 (W.D. Tex. May 2, 2007). The district court entered final judgment after the parties stipulated that defendants-appellees BENQ America, Corp., et al. (collectively “BENQ”) did not infringe patent-at-issue, owned by the Board of Regents. The parties stipulated to judgment based on the district court’s construction of the claim term “syllabic element” and its subsequent decision to grant summary judgment of non-infringement to defendant-appellee Motorola Corp. (“Motorola”) based, in part, on that construction.
In its summary judgment of non-infringement, the district court concluded that the accused devices did not infringe the matching limitation because none of the accused devices “relies upon a vocabulary of only syllabic elements, even if certain entries in those vocabularies happen to be one syllable long.” Id., p. 6, citing BENQ, slip op. at 9. The district court likewise reasoned that if it were to adopt the Board of Regents’s argument that the accused devices “intermittently infringe” when they do match against a syllabic element, a prior article written by Lawrence B. Rabiner ("Rabiner") “would anticipate because the Rabiner database of complete words, some of which were single-syllable words, would intermittently match against a syllabic element.” Id., citing slip op. at 9-10.
In this appeal, the Federal Circuit, citing specification and prosecution history, concluded that the “proper construction of ‘syllabic element’ is a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word. Moreover, (the Federal Circuit) s(aw) no error in the second sentence of the district court’s claim construction, which clarifies that a syllabic element may be as small as a single letter.” Id., p. 14.
With regard to the district court’s judgment of infringement, the Board of Regents argued in this appeal that the district court erred in granting summary judgment because it found, in spite of evidence to the contrary, that the accused devices include vocabularies of only complete words. Id., p. 18. The Federal Circuit however disagreed, stating that the basis for the district court’s grant of summary judgment was not that the accused devices include vocabularies of only complete words, “but rather that the accused devices do not contain vocabularies of only syllabic elements.” Id., citing Summary Judgment Opinion, slip op. at 9. As the district court explained, none of the accused devices “relies upon a vocabulary of only syllabic elements, even if certain entries in those vocabularies happen to be one syllable long.” Id., citing id.
The Federal Circuit found that the district court correctly granted summary judgment of non-infringement because there was no substantive dispute regarding the relevant issues of fact. The claim requires “matching said binary code with one or more pre-programmed codes, each pre-programmed code being representative of a syllabic element.” As aforesaid, a “syllabic element” is a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word (it may be as small as a single letter), and “each pre-programmed code being representative of a syllabic element” means that the vocabulary only includes syllabic elements. Id., p. 19. In the final judgment stipulation, the parties agreed that none of the accused devices “rely on a vocabulary of ‘only syllabic elements,’ as the term ‘syllabic elements’ was construed” by the district court. Thus, the district court properly entered judgment that the accused devices did not infringe the asserted claims of the ’112 Patent. Id.
On the basis of the foregoing, the Federal Circuit affirmed the district court’s summary judgment of non-infringement.
View a PDF of the judicial opinion.Service
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