The U.S. Court of Appeals in Washington, D.C., affirmed a decision by a lower court in December 2001 that Palm infringed on Xerox's Unistrokes handwriting recognition patent. However, Milpitas, Calif.-based Palm can still prove the patent is invalid, the court said.
The court returned the case to Judge Michael Telesca of the U.S. District Court for the Western District of New York in Rochester for a decision on the patent's validity.
"In our view, sending the case back to the district court simply delays the inevitable," Barry Kesselman, Xerox associate general patent counsel, said in a statement. "In the end, Palm will be held responsible for infringing Xerox's patent." Telesca had previously accepted the U.S. Patent Office's finding of the validity of Xerox's patent.
Palm representatives did not immediately return calls for comment.
The case goes back to 1997 when Xeroxa lawsuit charging that U.S. Robotics, now named Palm, was using Xerox's Unistrokes handwriting recognition technology in its Graffiti software without a license. Unistrokes was invented in Xerox's Palo Alto Research Center.
Xerox has asked the court to impose an injunction to prevent Palm from selling devices that infringe on Xerox's patent. Last month, PalmSource, the operating system subsidiary of Palm, Communication Intelligence's Jot handwriting recognition software--dubbed Graffiti 2--in current and future versions of the Palm operating system.it signed a license to use
The district court ordered Palm to post a $50 million bond so Xerox would be able to collect some damages if Palm was found to be infringing on the Xerox patent.