Docket No. 2015-2037
O’MALLEY, BRYSON, WALLACH
April 14, 2017
Brief Summary: DC/jury finding of noninfringement by Apple affirmed based on construction of Core Wireless’s means-plus-function claims.
Summary: Core Wireless (CW) appealed jury finding that Apple did not infringe claim 17 of US 6,978,143 (jury found Apple did not infringe any of the claims) relating to a means for sending packet data from a mobile station (e.g., mobile telephone) to a network using a selected channel. The DC denied Core Wireless’s JMOL. Claim 17 includes three “means for” limitations (§ 112, para. 6, not AIA § 112(f) for this patent): a “means for receiving a threshold value”, a “means for storing said threshold value”, and a “means for comparing said thereshold value”. A magistrate judge construed the “‘means for comparing’…to have the function of ‘comparing said threshold value of the channel selection parameters to a current value of the channel selection parameter for basis of said channel selection’” and “the corresponding structure for performing that function to be [a] control unit 803 [in the mobile station] programmed to control the comparison…in accordance with the algorithm shown in Fig. 6, step 650” and described in certain other parts of the specification (Pennwalt, FC 1987). The FC panel explained that “he focused primarily on whether control unit 803 was a general purpose processor within the meaning of WMS Gaming” (FC 1999) (see also Ergo Licensing, FC 2012 (“Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming.”)) At trial, “Apple’s evidence showed that the network, not the mobile station, is responsible” for this function. In denying CW’s request for JMOL, the DC held that “the mobile station ‘must have the capability to perform ‘channel selection,’ even if that capability was not used during the actual alleged performance of the claimed method” and “that there was sufficient evidence from which a reasonable jury could find noninfringement”. CW first argued that the DC “in effect alter[ed] the magistrate judge’s claim construction” but the FC panel disagreed. It found that “[i]n addition to the portions of the specification that describe the algorithm depicted in Figure 6, each description of the structure that performs the recited function depicts the mobile station as making the channel selection decision” (reviewing, e.g., the Abstract, the summary of the invention, and several embodiments). CW argued its use at one point in the specification stating that “[c]hannel selection is advantageously performed in the control unit 803…shows that the patent may prefer embodiments in which the mobile station makes the channel selection, but that the patent is not limited to such embodiments.” The FC panel disagreed, finding “[t]he more natural reading of the passage in question is that the function” is performed in control unit 803 “as opposed to some other component of the mobile station that is controlled by control unit 803” and “supports the inference that the mobile station must be capable of channel selection”. The FC panel also disagreed that dependent claim 18 supported its argument. The FC panel also found the patent, the prosecution history and extrinsic evidence supported the DC finding “that the mobile station must have the capability to make channel selection decisions”. It also found that Apple’s system “it is up to the network to decide what to do with the transmitted information, if anything” and therefore found the jury’s noninfringment finding reasonable.