Docket No. 2013-1496
July 14, 2014
Brief Summary: GBT’s submission of “stipulated” claim construction order in IDS constituted “clear and unmistakable” limitation of claim scope. Grant of SJ of non-infringement to Apple affirmed.
Summary: Golden Bridge (GBT) appealed DC grant of SJ that Apple does not infringe the asserted claims of US 6,574,267 (re-examined) and 7,359,427 relating to wireless cellular networks (Code Division Multiple Access (CDMA) systems). The system uses “preamble” signals that establish communication between base and mobile stations in the network. In another litigation (the Texas litigation), the DC construed preamble to mean “a signal used for communicating with a base station that is spread before transmission.” In this case, the DC agreed with the definition of the Texas litigation but added “that is without message data” (the FC panel added the term “used” to the DC construction as held in the Texas litigation but left out by the DC). GBT argued that the “spread before transmission” definition “departs from the plain meaning of preamble, and that there is no lexicography or disclaimer that would merit this departure”, it is not bound by the Texas litigation and submission of the Texas claim construction order in an IDS did not “constitute a disclaimer of the broader claim scope.” The opinion explained that GBT’s submission of that IDS and request “that the PTO ‘expressly consider’ its stipulated construction of preamble from the Texas Litigation” limited the term (“It would have been natural for both the PTO and the public to rely upon the stipulation in determining the scope of the claimed invention.”) The panel concluded that “GBT did more than simply disclose potentially relevant prior art”, which would “not automatically limit the claimed invention” (Abbott, FC 2003), noting that “an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope” (Intellectual Props., FC 2013). The opinion also explained that while “our precedent allows applicants to rescind a disclaimer during prosecution, GBT did not avail itself of this route and never notified the PTO that it sought a meaning of preamble that was different from its stipulated construction” (Hakim, FC 2007). The DC grant of SJ of non-infringement to Apple was affirmed.