The Specification is Directed to a Person of Ordinary Skill -- I.e. a Person of Ordinary Creativity, and Not an Automaton

Allvoice Computing PLC. v Nuance Communications, Inc., [2006-1440](October 12, 2007)[RADER, Newman, Gajarsa] The Federal Circuit reversed summary judgment in favor or Nuance that Allvoice's patent was invalid as indefinite and failed to disclose the best mode of practicing the claimed invention.
SIGNIFICANCE: 1. Indefiniteness means that the bounds of the claim cannot be understood by a person of ordinary skill in the art -- a person of ordinary creativity and not an automaton. 2. The best mode requirement only applies to the claimed invention.
BRIEF: The District Court, based upon a claim construction by a court-appointed expert, found that means-plus-function element in the claims were indefinite, and further that the patentee failed to disclose the best mode. LOF: "The review of indefiniteness under 35 U.S.C. § 112, paragraph 2, proceeds as a question of law without deference." The test for definiteness asks whether one skilled in the art would understand the bounds of the claim when read in light of the specification. Under 35 U.S.C. § 112 ¶ 2 and ¶ 6, a means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim. The Federal Circuit found that the district court added a limitation beyond the claims as a result of emphasizing a portion of the prosecution history beyond its true significance. As properly construed, the Federal Circuit found that the specification does contain structure corresponding to the "means". Interestingly, the Federal Circuit cited the abilities of a person of ordinary skill espoused in KSR (a person of ordinary skill is also a person of ordinary creativity, not an automaton) in finding that a person of ordinary skill would understand the specification.
As to best mode, the Federal Circuit said that the district court held the '273 patent invalid for deliberate concealment of the best mode – a requirement of 35 U.S.C. § 112 ¶ 1. A careful reading of the claim, however, shows that the alleged undisclosed best mode is not a best mode of practicing the claimed invention. To the contrary, the alleged best mode subject matter falls outside the scope of claim, thus the alleged best mode is not a way of practicing the claimed invention at all. To apply the best mode standard, a court must first determine whether, at the time the patent application was filed, the inventor had a best mode of practicing the claimed invention. This determination turns on the inventor's own subjective beliefs. The second part of the analysis asks has the inventor 'concealed' his preferred mode from the public?