Patent Law

Silly Syllables

By Gary Odom and Jordan Kuhn

The University of Texas (UT) can't be sued for patent infringement, but it's more than happy to sue. Fairness has little to do with patents, and even less with the power of the State. UT sued a slew of companies for infringing 4,674,112. It lost on claim construction, and so appealed, but with only silliness to back it up.

The Board of Regents of the University of Texas System v. Benq America, Motorola, et al (CAFC 2007-1338)

'112, which dates to 1985, claims "non-verbal entry" on a standard touchtone phone.

For each letter of the word to be transmitted, a user depresses a single key on a telephone's keypad (e.g., the "2" key is selected for the letter "A"1). Id. Because each key available on the standard telephone keypad represents more than one letter, the user's input will be inherently ambiguous. Id. As an example, to enter the word "HELP" on the keypad, a user depresses a sequence of four keys ("4357"), one key for each letter of the word. Id., col.4 ll.44-52. While this four-key sequence corresponds to eighty-one different alphabetic character strings,2 only one of these corresponds to an English word--the word "HELP." Id. Thus, in order to resolve the ambiguity and correctly identify the inputted word, the method compares this sequence against a "vocabulary" (i.e., a directory) of possible entries. Id., Abstract. The specification of the '112 patent states that the vocabulary may include either words or "syllabic elements" that can be combined to form a word. Id., col.2 ll.21-27. While it is easier for the system to compare the inputted word to a vocabulary of words, the system can minimize memory requirements and enable an expanded word recognition capability by using a vocabulary of syllabic elements instead. Id., Abstract; see id., col.5 l.62-col.6 l.36 (describing method for employing syllabic element vocabulary).

The claim construction and its upshot -

In the Claim Construction Order, the district court addressed eleven disputed claim terms and phrases, only two of which are relevant to this appeal. First, the district court concluded that the claim term "syllabic element" means "a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word." Id., slip op. at 5-21. Second, the district court concluded that the claim term "one or more pre-programmed codes" did not require construction.

Ultimately, the district court concluded that the accused devices do 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., slip op. at 9.

Based upon the district court's construction of the term "syllabic element" and its grant of summary judgment to Motorola, the parties stipulated to judgment of non-infringement for all remaining Defendants.

Looking at the claims, the specification, and the file wrapper, the appeals court confirmed the district court interpretation. The spec implied "that a syllabic element is limited to a single syllable."

The Board of Regents, on the other hand, argues that this passage in fact implies the opposite--that a syllabic element may be more than one syllable. It reasons that because "common letter-groups, suffixes, [and] prefixes" are "referred to as 'syllabic elements,'" the term "syllabic element" must include every common letter-group, suffix, or prefix. According to the Board of Regents, because some well-known suffixes and prefixes include more than one syllable (e.g., hypo-, hyper-, -ation, -phyllic), this passage compels a construction that allows syllabic elements to be more than one syllable.

Just because a "syllabic element" may be a prefix or a suffix does not mean that all prefixes and suffixes are "syllabic elements."

This prosecution history, like the specification, consistently distinguishes between a "syllabic element" and a "word." Moreover, like the district court, we find illuminating the explanation that "syllabic elements" are "syllable-like letter groups."... Something is "syllable-like" when it shares a syllable's essential characteristic--the recognizable rhythmic beat of a spoken syllable. Thus, while "syllable" often refers primarily to language as it is spoken, a "syllable-like letter group" explicitly covers both spoken syllables and the written letter groups that are associated with these sounds.

If, as the Board of Regents proposes, "syllabic element" were broadly defined to include letter groups having any number of syllables, then all words would also be syllabic elements (because every word is a single- or multi-syllabic letter group).

Rather ridiculous notion, to argue eviscerating the claim term so.

UT also offered twisted reasoning on infringement.

[T]he Board of Regents alleges 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. The district court did not make that incorrect assumption. 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. See 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.

Affirmed.

Jeffrey R. Bragalone, Shore Chan Bragalone LLP, of Dallas, Texas, argued for plaintiff-appellant. With him on the brief were Michael W. Shore, Alfonso Garcia Chan,and Jennifer M. Rynell.

Full post as published by The Patent Prospector on July 25, 2008 (boomark / email).