Federal Circuit affirms ruling that Apple does not infringe Core Wireless’ Patent

Federal CircuitCore Wireless Licensing S.A.R.L. v. Apple Inc.,  (Fed. Cir. Apr. 14, 2017) (Before O’Malley, Bryson, and Wallach, J.) (Opinion for the court, Bryson, J.)

Core Wireless sued Apple for infringing its patent directed to a cellular network system including a mobile station providing for improved transmission of data packets. Core Wireless’ patent strives to do so by having a mobile station, not the network, make uplink channel selection decisions during data packet transmission.

A magistrate judge construed the term “means for comparing” to have the function of “comparing said threshold value of the channel selection parameter to a current value of the channel selection parameter for basis of said channel selection,” as provided in the specification. At trial, Apple introduced evidence that its mobile stations lack the capability to select between common and dedicated channels, falling outside the magistrate’s claim construction. The jury found that Apple did not infringe Core Wireless’ patent. Core Wireless moved for judgment as a matter of law (JMOL), arguing that Apple misapplied the magistrate’s construction by arguing that “means for comparing” requires the mobile station to have the capability to perform channel selection. The district court denied Core Wireless’ motion, agreeing with Apple’s proposed construction.

At issue on appeal is whether the district court misapplied the magistrate judge’s pretrial claim construction and whether the claim construction adopted by the district court when ruling on Core Wireless’ JMOL was erroneous.

First, Core Wireless argued that the claim construction used by Apple at trial was clearly rejected by the magistrate. The Court found that the magistrate never clearly rejected Apple’s construction. Instead, the magistrate focused on whether control unit 803 was a general purpose processor, in light of what was taught in the specification.

Next, Core Wireless challenged the district court’s JMOL order where it construed “means for comparing” to require that the mobile station have the capability to make channel selections. The Court disagreed, noting the “means-plus-function language.” Turning to the specification, to ascertain what performs the claimed function, the Court concluded that the whole purpose of the invention was to enable the mobile station to make the channel selection decision, and the examples were not merely preferred embodiments. Additionally, none of the embodiments described in the specification had a network make the channel selection decision. Additionally, the remainder of the specification, confirmed by the prosecution history and extrinsic evidence, supported a finding that the mobile station and not the network made channel selections.

Last, the Court rejected the position taken by Core Wireless that Apple’s devices do infringe even if the claim requires the mobile station to be capable of channel selection.

Ultimately, the Court concluded that the district court correctly denied Core Wireless’s motion for judgment as a matter of law and properly upheld the jury’s verdict of noninfringement.

Means plus function limitations in a claim are interpreted based on the structures provided in the specification and the functions those structures perform. Examples may limit a “means plus function” claim term when they represent the only embodiment and the “whole purpose” of the invention.

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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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