Articulate Systems, Inc. v. Apple Computer, Inc.

Citations: 66 F. Supp. 2d 105; 1999 U.S. Dist. LEXIS 13484; 1999 WL 673246Docket: No. Civ.A. 96-10345-RGS

Court: District Court, D. Massachusetts; August 23, 1999; Federal District Court

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The court has reviewed objections to the Magistrate Judge's Report and Recommendation and has adopted the recommendation to deny Apple Computer's Motion for Summary Judgment regarding the indefiniteness of the term "higher level events" in Articulate Systems' patent. The court concurs that Apple did not meet its burden in proving that this term is indefinite. While the court acknowledges the merit of Apple's request for a claim construction hearing, it intends to hold such a hearing only if the remaining summary judgment motions are denied. The court also notes that Apple’s proposal to defer a ruling on the matter until the hearing is held is misaligned with the legal processes governing these events.

Articulate Systems holds U.S. Patent 5,377,303, which pertains to voice recognition software that allows users to control an operating system through voice commands. Articulate claims that Apple’s "PlainTalk" software infringes on this patent. Apple has filed four motions for summary judgment, focusing here on the assertion that Articulate’s patent is invalid for indefiniteness due to insufficient clarity of the term "higher level events" in the patent claims. The term appears in independent Claim 1 and is not defined in the patent specification, leading Apple to argue that it would not be understood by someone skilled in the relevant field. The legal standard under 35 U.S.C. § 112 requires claims to distinctly point out the invention's subject matter, allowing competitors to understand the boundaries of potential infringement. The court ultimately recommends denying Apple’s motion for summary judgment on these grounds.

No express definition of each term in a patent claim is necessary if those skilled in the art can understand the claim in relation to the specification. The adequacy of claims is relative to the subject matter's nature, and the legal determination of a patent's indefiniteness is grounded in case law. Various sources can clarify claim language, such as the claim itself, the specification, prosecution history, and expert testimony. A patentee may define terms uniquely, and patents can remain valid despite some ambiguity in language. When claims can be interpreted multiple ways, they should be construed to uphold their validity. The presumption of validity under 35 U.S.C. § 282 favors the patentee, requiring challengers to prove invalidity with clear and convincing evidence. In this case, Apple must demonstrate that the term "higher level event" lacks clarity for skilled individuals, failing which, Articulate is not obliged to counter with evidence, and Apple's summary judgment motion will be denied. Apple cites Dr. Alexander I. Rudnicky’s opinion to bolster its claim of indefiniteness regarding Articulate’s patent.

Dr. Rudnicky is presented by Apple as an expert in voice recognition software, but there are significant issues with his qualifications. He holds degrees in psychology, not computer science, and does not clearly indicate relevant programming experience in his Declaration or resume. Apple's attorney defines the necessary qualifications for an expert in the field as having experience in software programming and a degree in computer science, which Dr. Rudnicky lacks. Consequently, he is deemed unqualified to testify on the meaning of "higher-level events" in the context of the patent.

Additionally, Dr. Rudnicky's opinion is criticized for being largely conclusory and lacking clarity. In specific paragraphs of his Declaration, he states that "higher-level event" is ambiguous and undefined in the patent, leading to uncertainty regarding the scope of the invention. He notes that the term could be interpreted in multiple ways and asserts that neither he nor skilled individuals in the field would be able to clearly ascertain its meaning based on the patent or its history.

Dr. Rudnicky's opinion lacks critical elements, including the reasoning behind his conclusion that "higher-level event" is ambiguous, a list of its possible meanings, the sources he consulted, and how these meanings might be mutually exclusive. Such omissions are significant as patent claims with multiple interpretations should be read to maintain their validity. Dr. Rudnicky claims he found no relevant documentation for this term; however, Apple's "Inside Macintosh" manuals, dating back to 1991, have defined "high level event" and contrasted it with "low level event." The distinction between "high" and "higher" level events may be overly nuanced, as those writing software for Apple would likely be familiar with these manuals. Furthermore, Apple’s responses to interrogatories prior to Dr. Rudnicky's declaration demonstrate that the term "higher level events" was clearly used and defined in relation to the ’303 patent, indicating no confusion or uncertainty regarding its meaning. Apple's documentation consistently employed the term in various contexts, suggesting that the claim is not ambiguous as asserted by Dr. Rudnicky.

Dr. Rudnicky's assertion that the prosecution history lacks clarity regarding the term "higher level event" is challenged by evidence that the prosecution provided specific examples to the patent examiner after prior rejections of Claim 1. These examples, which include actions like drawing a string on a screen and window zooming, are found in the patent at page 11, lines 54-57. Given that a patentee can define terms as they see fit, Rudnicky's dismissal of these examples is not justified. Consequently, his declaration does not convincingly establish a prima facie case for the indefiniteness of the ’303 patent. 

Apple also supports its argument with deposition testimony from two members of Articulate’s development team, specifically Thomas Firman and Timothy John Crawford Morgan. Notably, Firman, identified as the inventor, had left Articulate three years prior to the final patent application filing in December 1993 and was not involved when Apple published its software manuals on event definitions. Firman’s deposition suggests confusion regarding the differences between Apple’s definitions of "high level events" and the general understanding within the field. Despite this, in context, he acknowledges that "high level events" is a widely accepted term among computer scientists and does not see a distinction between "high" and "higher level events." His comments indicate difficulty in speculating on Apple’s specific usage of the term due to its arbitrary nature, emphasizing the need for context in its application.

Apple argues that the term "high level event," as used in its documentation, is ambiguous, suggesting that if the inventor, Firman, struggles to understand it without additional context, others in the field would also be unable to comprehend its meaning. However, Firman’s deposition contradicts this assertion. He clearly defines "higher level event" as a compound event that cannot be duplicated by a single lower-level function and provides specific examples, such as "launching an application." Firman confirms his use of the term to distinguish between low-level and high-level events in his work with Voice Navigator, indicating that he and others in his field understand the term well. Furthermore, he explains that in general computer science, high-level events relate to application or middleware contexts, while low-level events pertain to hardware or drivers. Firman acknowledges that there are accepted references for "higher-level events" in computer science, although he cannot cite them. His testimony establishes that the term is well understood within the field, challenging Apple's claim of indefiniteness. Additionally, another team member, Timothy Morgan, was asked to define "high level events" based on Apple’s documentation, indicating that there is definitional clarity available in Apple’s materials. Overall, Firman’s testimony, when considered in context, presents a factual issue that undermines Apple’s motion for summary judgment.

Morgan was questioned about the terms "high level event" and "higher level event," indicating he was unfamiliar with the latter, as the documentation he reviewed only referenced "high level event." He expressed confusion over the distinction, stating, "I cannot see any reference to higher-level events in this documentation," suggesting a lack of familiarity with the term as it pertains to the Apple documentation. His uncertainty does not convincingly establish that the '303 patent is invalid for indefiniteness. Even if it did, Firman's testimony and other evidence—including prosecution history, Apple's software manual, and claim charts—counter this claim, indicating that skilled individuals would understand "higher level events" in the context of the specification. Consequently, Apple's motion for summary judgment on indefiniteness is recommended to be denied.

Additionally, the inventor of the '303 patent did not perceive a difference between "high level event" and "higher level event." The confusion is compounded by conflicting statements from Articulate's lawyers regarding the terms' equivalence. The patent describes these examples as "high level commands," but it remains unclear how they relate to high or higher level events. Firman testified that high level commands are distinct from high level events, while Articulate's attorneys indicated that a high level event is generated by a high level command. Thus, the prosecution history illustrates that examples from high level commands were used to define high level events, which satisfied the patent examiner.