Leech Tishman

The Federal Circuit upheld a grant of summary judgement for Microsoft Corp. in a case involving allegations that the company infringed a patent for speech recognition.

Allvoice owns a patent that allows users to store an audio recording of a dictation, replay it to correct the recognized text, and directly dictate into any application. The patented technology does this by using an interface program that communicates with a speech-recognition engine and the user’s text processing application.

In 2009, Allvoice sued Microsoft, alleging infringement of the patent.

A federal district court concluded that certain claims of the patent were invalid for failing to qualify as one of the four statutory categories of invention under 35 U.S.C. § 101.

New and Useful

Section 101 defines patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

According to the court, the Allvoice patent claims did not describe a “manufacture” but merely claimed software instructions.

The court found other claims of the patent invalid for indefiniteness.

Microsoft subsequently filed a motion for summary judgment of non-infringement, and the court agreed on all grounds.

Allvoice appealed.

Tangible Form

The Federal Circuit noted that:

Except for process claims, “the eligible subject matter must exist in some physical or tangible form.”… To be considered a machine under section 101, “the claimed invention must be a `concrete thing, consisting of parts, or of certain devices and combination of devices.'”… Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.”

The court concluded:

Software may be patent eligible, but when a claim is not directed towards a process, the subject matter must exist in tangible form. Here, the disputed claims merely claim software instructions without any hardware limitations.

Allvoice argued that the claimed software must necessarily be in a machine readable, physical state in order to exist, and that the district court therefore should have concluded that these claims are directed to a manufacture, one of the four categories of patentable inventions.

The Federal Circuit disagreed that the district court should have done the drafting work neglected in the patent application:

We decline to import or, as Allvoice argues, “imply” a tangible medium into claims that fail to recite or reference any such medium.

The case is Allvoice Developments US LLC v. Microsoft Corp.

Takeaway

The case illustrates the challenges inherent in attempting to enforce a software-related patent. Such patents must be drafted carefully to survive a legal challenge.

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Photo Attribution: “Microsoft CES 2009″ by Ben Franske – Own work. Licensed under GFDL via Wikimedia Commons.

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