Openwave Systems, Inc. et al. (“Unwired”) v. Apple Inc. et al.


Docket Nos. 2015-1108

MOORE, O’MALLEY, CHEN
December 15, 2015

Brief Summary: DC construction of “mobile device” affirmed since specification disavowed mobile devices that incorporate computer modules by disparaging the prior art on this point in the specification.

Summary: Unwired originally filed suit with the DC and then with the ITC. The DC then suspended its proceedings. The ITC issued a claim construction ruling that Unwired believed was unfavorable to it and sought to dismiss the proceedings. The DC lifted its stay and informed the DC it would concede non-infringement if it agreed with the ITC’s claim construction. The DC did so but Unwired did not stipulate because it believed “a material question regarding infringement remained unresolved.” Apple then filed a motion for SJ of non-infringement which was denied “on the ground that it was unclear from the record whether the accused products actually fell within the claims as construed” (“distinction between devices operating with microprocessors and those operating with computer modules”). Unwired then “filed a stipulation of non-infringement after all” and the DC entered final judgment of non-infringement, which was followed by this appeal. The disputed claim terms are “mobile device”, “wireless mobile telephone” and “two-way communication device”, which “the parties…agreed should be analyzed and construed together”; the FC therefore construed the terms “together under the umbrella term ‘mobile device’”. The DC “found that ‘the specification makes clear that the invention does not encompass mobile devices containing computer modules” based on “repeated derogatory statements…reasonably…viewed as a disavowel of that subject matter” (Chicago Bd. Options Exch., FC 2012). The FC opinion explains that “[t]he standard for disavowel of claim scope is…exacting” (Thorner, FC 2012; Dealertrack, FC 2012 (“To find disavowel, we must find that the specification is ‘both so clear as to show reasonably clarity and deliberateness, and so unmistakable as to be unambiguous evidence of disclaimer.’”) “To find disavowel…through disparagement of a particular feature”, the court asks “whether ‘the specification goes well beyond expressing the patentee’s preference’” (e.g., disclosure of a single embodiment does not necessarily limit the claims to that embodiment (GE Lighting Sols., FC 2014)). Unwired argued the DC’s claim construction was based on its single embodiment, but the FC disagreed, finding “the specification…rife with remarks that disparage and, therefore, disclaim mobile devices that incorporate computer modules” (including the Background and Summary sections; FC panel: specification “makes clear that any solution to this problem requires movement away from the prior art’s attempt to combine a computer module with a mobile device”) and “Unwired concedes as much.” The DC decision was therefore affirmed.

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