SIMO Holdings Inc. v. Hong Kong UCloudlink Network Tech. Ltd. et al.
TARANTO, CHEN, STOLL
January 5, 2021
Brief Summary: FC panel agreed preamble is limiting but also that uCloudlink does not infringe the claims, reversing the DC decision.
Summary: uCloudlink appealed DC grant of summary judgment (SJ) that four of its products infringe claim 8 of SIMO’s US 9,736,689 relating to cellular networks and a final judgment of $8+ million. The preamble of claim 8 recites “a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database” and the claim body recites functions that are provided “at least one of the plurality of processors” (e.g., “enabling an initial setting”, “establishing a data communication link”). The DC’s infringement holding was based on its conclusion that ‘689 claim 8 does not require a “non-local calls database”. The DC “first determined that the preamble is limiting” and “is the only part that identifies the physical components of the apparatus” (“i.e., what the preamble requires must be present for an apparatus to come within the claim”, “[i]t is the preamble that supplies the necessary structure”), but also “that a ‘non-local calls database’ is not actually required” based on its understanding of the FC’s Oatey decision (FC 2008; “[W]e “normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification” and that “[a]t leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence [to] the contrary…the specification indisputably states that the nonlocal calls database is optional”, “a reasonable alternative interpretation…to treat ‘and’ in the preamble as though it read ‘and/or’”). This FC panel agreed that the preamble is “limiting in the sense that infringement of the claim requires that the accused device satisfy the language (literally or under the doctrine of equivalents)” (“In supplying the only structure for the claimed apparatus, the preamble language supplies ‘essential structure,’ and the body does not define ‘a structurally complete invention’-which are two key reasons for preamble language to be deemed limiting.” Catalina Mktg., FC 2002; “We have repeatedly held a preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim.” In re Fought, 941 F.3d 1175, 1178 (Fed. Cir. 2019); see also, e.g., Bio-Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1371 (Fed. Cir. 2020) (body’s reliance on preamble for antecedent basis “is a strong indication that the preamble acts as a necessary component of the claimed invention” (internal quotation marks omitted); see also FN3 citing Arctic Cat (FC 2019), Georgetown Rail (FC 2017), TomTom (FC 2015), and Cochlear (FC 2020) in which the preamble was not limiting). However, the FC panel disagreed with the DC that the “non-local calls database” is not required, instead concluding that the claimed “plurality of” memory, processors, etc. “requires at least two of each of the listed items” (SuperGuide, FC 2004 (“a plurality of” phrase applies to the individual items in the list); August Tech., FC 2011) (“textual sloppiness—which SIMO had the obligation as the patent drafter to avoid”). The FC panel also concluded that “no remand is warranted and that uCloudlink is entitled to a judgment of noninfringement” since, e.g., “SIMO did not meet that standard for creating a triable issue on whether any accused product has even a single non-local calls database.” The DC decision was therefore reversed.