Docket No. 2017-2102
REYNA, BRYSON, HUGHES
August 16, 2018
Brief summary: Jury finding of infringement and no invalidity of CW’s ‘151 claim affirmed but “implied waiver” / unenforceability arguments remanded; finding of infringement of ‘536 claim reversed.
Summary: Apple appealed DC jury finding of infringement and no invalidity of CW’s US 6,447,151 claim 14 and 6,633,536 claim 19 relating to “improvement[s] in the way mobile devices communicate with base stations.” Apple argued that ‘151 claim 14 “is infringed only when a mobile device is configured to receive one and only one TAV [timing advance value] transmission per multi-frame structure” because “its devices are configured to receive multiple TAVs” (“[t]he period of time that particular data must be sent in advance of the time it should be received”) “per multi-frame structure…even when operating in the ‘continuous mode’”. The FC panel, however, found “[t]hat position” to be “contrary to the plain language of the ‘151 specification and the asserted claim” (e.g., “Apple’s interpretation of the claim would exclude” “the embodiment described in the specification”). The FC panel also explained that “Apple’s argument that its devices are always configured to…receive more than one TAV per multi-frame structure misses the mark” since “infringement is not avoided merely because a non-infringing mode of operation is possible” (z4 Techs., FC 2007; VirnetX, FC 2014). The FC panel therefore affirmed the jury’s finding that Apple’s iPhone infringes ‘151 claim 14. The FC panel also explained that “[t]he issue of validity” of ‘151 claim 14 under the two theories proposed by Apple “came down to a disagreement between the experts” which “the jury could reasonably credit”; the finding of no invalidity was therefore affirmed. Apple also argued the DC incorrectly found the ‘151 patent not to be unenforceable because Nokia (the original assignee) did not disclose a patent application to a standards setting organization (Hynix, FC 2011; Qualcomm, FC 2008). The FC panel remanded this issue since “[i]t is possible to interpret the [DC’s] ruling as being based on the conclusion that, because Nokia’s proposal was not adopted, no inequitable conduct flowed from Nokia’s failure to disclose its patent application” and it therefore “did not obtain any unjust advantage” (Therasense, FC 2011 (“an equitable defense will not be recognized if the offending party did not gain a benefit from its wrongdoing”, “[i]mplied waiver is an equitable doctrine” that “hinges on basic fairness”, “exception to the materiality requirement for ‘cases of affirmative egregious misconduct’”)). The FC panel also reversed the judgment of infringement of ‘536 claim 19 because Core Wireless’s theory of infringement-that Apple’s devices treat a SPEECH_DEGRADED identifier as a bad state-is legally insufficient” as it did not address “what the label itself indicates” (“[t]he fact that Apple’s devices subsequently take one of two actions with these frames is insufficient to infringe”). Apple also argued “that no reasonable jury could have found Apple’s products met” the “bit pattern” limitation, and the FC panel agreed, finding Apple’s use of a “RATSCCH message” to be “fatal to [CW’s] theory of infringement” due the magistrate’s construction of the term “delineating the message” that was “adopted…from the prosecution history” as the ‘536 patent does not use the term. Thus, the FC panel reversed the finding of infringement of ‘536 claim 19.