Docket Nos. 2014-1437, 2014-1485
LOURIE, WALLACH, HUGHES
January 8, 2016
Brief Summary: DC decision of no infringement because Apple’s products did not mean “ordering requirement” of the claims affirmed. Grant of JMOL of no invalidity reversed because DC added a new claim construction post-verdict (i.e., not a mere elaboration “on a meaning inherent in the previous construction”).
Summary: Wi-LAN appealed DC denial of JMOL and its motion for a new trial on infringement of its RE37,802 regarding the wireless data communication technique called “Multi-Code Direct-Sequence Spread Spectrum” (MC-DSSS) (vs. prior art DSSS and CDMA systems), and Apple cross-appealed the grant of JMOL of no invalidity. Apple was found not to infringe due to the “ordering requirement” of the claims because “the computing means must ‘produce modulated data symbols corresponding to an invertible randomized spreading’” and then “the converter must ‘combine the modulated data symbols’”, while “Apple’s products randomize the data symbols only after combining them”. The FC panel agreed with this decision as “[s]ubsequent use of the definite articles ‘the’ or ‘said’ in a claim refers back to the same term recited earlier in the claim” (Baldwin Graphics, FC 2008) (“The term ‘the modulated data symbols’ therefore refers back to the randomized data symbols produced by the computing means in the second claim element.”). It also found the “ordering requirement” to be “consistent with the specification” (“Every embodiment discussed in the specification randomizes the data symbols before combining them.”) Wi-LAN argued Apple should still be held to infringe under DOE which the FC panel acknowledged “may be applied to a means-plus-function limitation to afford that limitation a somewhat broader scope of equivalents than it would otherwise receive under § 112, ¶6” (Ring & Pinion, FC 2014). “Infringement under the [DOE] requires the patentee to prove that the accused device contains an equivalent for each limitation not literally satisfied” (Catalina Mktg., FC 2002) and equivalence is only present “if the differences between the two elements are ‘insubstantial’ to one of ordinary skill in the art” (Warner-Jenkinson, US 1977). The FC panel found that “[s]ubstantial evidence supports the jury’s verdict that the order difference between Apple’s products and the claimed invention are not substantial” and, therefore, there was no infringement under DOE. Apple also argued that its invalidity arguments were improperly dismissed because the DC added a new claim construction post-verdict, and the FC panel agreed (i.e., not a mere elaboration “on a meaning inherent in the previous construction” (Mformation Techs., FC 2014)). Thus, that part of the DC decision was reversed.