SIMO Holdings Inc. v. Hong Kong uCloudlink et al.
O’MALLEY, WALLACH, TARANTO
January 5, 2021
Brief Summary: DC claim construction and grant of SJ to SIMO reversed due to improper interpretation of preamble language. Summary: uCloud appealed DC claim construction, grant of summary judgment (SJ) of infringement, permanent injunction, and award of $8+ million in damages to SIMO. The disputed patent, SIMO’s US 9,736,689, relates to systems for avoiding roaming charges of cellular networks. uCloudlink’s accused products are devices that can act as WiFi hotspots. The DC found the preamble of ‘689 claim 8 to be limiting (“the only part that identifies the physical components of the apparatus…supplies the necessary structure”), relying on the FC’s Oatey decision (FC 2008 (“normally we do not interpret claim terms in a way that excludes embodiments disclosed in the specification…absent probative evidence [to] the contrary”)). The FC panel reviewed the claim construction de novo as it was decided on intrinsic evidence only (Arctic Cat, FC 2019), giving the “words of the claim their ordinary meaning in the context of the claim and the whole patent document” and the prosecution history (World Class, FC 2014). The FC panel agreed with the DC that the initial language of claim 8 is limiting but explained that the structural language was not preamble because it “follows, rather than precedes, the word ‘comprising,’ which is one of the transition words that typically make the end of the preamble, with what follows constituting the body of the claim” (CIAS, FC 2007; Gillette, FC 2005; In re Fought, FC 2019 (“preamble limiting when it serves as antecedent basis”); Bio-Rad, FC 2020 (claim “body’s reliance on preamble for antecedent basis”); Cochlear, FC 2020 (preamble statement of intended use not limiting)). However, the FC panel noted that “[t]he parties…treated the language at issue as part of the preamble” but maintained it was nonetheless limiting. The FC panel reviewed its SuperGuide decision (FC 2004) for the “general grammatical principle” that “[w]hen there is a straightforward, parallel construction that involves all nouns or verbs in a series, a prepositive or postpositive modifier normally applies to the entire series”, a principle with “particular force when the term joining the items in a series is ‘and’”. The disputed portion of claim 8 refers to “a plurality of” (i.e., “at least two” (August Tech., FC 2011)) which the FC panel concluded applies “to each item in the list following that phrase”. And it found this construction did not “contradict the specification” but “simply leaves out some alternative embodiments of what SIMO’s specification describes as inventive, while capturing one embodiment expressly described.” The FC panel therefore reversed the grant of SJ to SIMO and found “that uCloudlink is entitled to a judgment of noninfringement” without remand.