“[T]he doctrine of prosecution disclaimer precludes a patentee from recapturing through claim interpretation specific meanings disclaimed during prosecution.”- CAFC in Traxcell v. Nokia
On October 12, the United States Court of Appeals for the Federal Circuit (CAFC) issued two related precedential opinions affirming the decisions of the U.S. District Court for the Eastern District of Texas, holding that neither Verizon Wireless and Sprint Communications nor Nokia Solutions infringed Traxcell Technologies LLC’s patents.
Traxcell sued Verizon and Sprint for infringing four of its patents, all of which share a specification and a 2001 priority date. The four patents are U.S. Patent Nos. 8,977,284 (the ‘284 patent), 9,5,10,320 (the ‘320 patent), 9,642,024 (the ‘024 patent), and 9,549,388 (the ‘388 patent). In a separate suit, Traxcell sued Nokia for infringing the ‘284, the ‘320, and the ‘024 patents.
The claims of three of the four patents at issue—the ‘284, 320, and ‘024 patents (collectively the SON patents)—are related to self-optimizing network (SON) technology for making “corrective actions” to improve communications between a wireless device and a network. Unlike the SON patents, the claims of the ‘388 patent (the navigation patent) are directed to network-based navigation. Specifically, the ‘388 patent discloses the network, rather than a wireless device itself, determining the device’s location.
Traxcell asserted the ‘284, ‘320, and ‘024 patents against Nokia, accusing its product Eden-NET of infringement. Eden-NET consists of a suite of software modules that allow a wireless network operator to adjust the network. The question is whether Eden-NET is the kind of self-adjusting network product that these patents claim.
On January 7, 2019, a magistrate judge issued a claim-construction order that construed the terms “location” and “first computer” or “computer,” among others. The order also determined that claim 1 of the ‘284 patent was indefinite. Traxcell did not object to the indefiniteness ruling. Instead, Traxcell sought a certificate of correction from the U.S. Patent and Trademark Office (USPTO) to fix what it viewed as a typographical error. After claim construction, Nokia moved for, and was granted summary judgment of noninfringement, which Traxcell appealed along with the claim construction order.
The district court construed “location” to mean a “location that is not merely a position in a grid pattern.” This determination was made primarily based upon arguments Traxcell made during prosecution. Citing Omega, the CAFC reasoned that “the doctrine of prosecution disclaimer precludes a patentee from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir.
2003). The claim construction order explained that during prosecution the applicant has distinguished the claims from prior art that used a position in a grid pattern as the location, stating their method of was “more refined” than this. In view of the prosecution history, the CAFC found the disclaimer to be clear. Therefore, the CAFC affirmed the claim construction.
Given this construction, the CAFC turned to the infringement issue. The claims at issue required a showing that Eden-NET products used or generated a “location” for wireless devices that is “not merely a position in a grid pattern.” Additionally, Traxcell needed to prove that Eden-NET identified and stored the “location” for a wireless device.
Nokia’s expert provided without contradiction that the accused technology’s geolocation systems collect Key Performance Indicators (KPIs) from base stations and the KPIs are grouped into 50-meter-by-50-meter “bins.” None of the particular KPIs, Nokia’s expert explained, correspond to a particular phone. Instead, they are averages within a grid over a certain period of time. Therefore, the CAFC reasoned that there is no genuine issue of material fact and affirmed the noninfringement decision.
The term “first computer” or “computer” was construed to require that a single computer perform the recited functions. Similarly, to the “location” limitation, Traxcell asserted during prosecution that the term “first computer” or “computer” meant a single computer to distinguish over prior art. Based on this disclaimer, along with the claim language and specification, the CAFC affirmed the claim construction.
The CAFC next moved to the infringement issue. The district court concluded that Traxcell had not provided evidence that the limitation was satisfied because Traxcell failed to show that a single Eden-NET computer could perform all the claimed functions and because a multiple-computer infringement theory was “doomed” by prosecution history estoppel. The CAFC agreed with the district court, noting that as to literal infringement, Eden-NET is a distributed system that utilizes several computers and therefore cannot be infringing. Regarding non-literal infringement, the CAFC agreed that prosecution-history estoppel bars Traxcell from now arguing doctrine of equivalents for an alternative multiple-computer infringement theory.
Verizon and Sprint
Traxcell asserted the ‘284, ‘024, and ‘388 patents against Verizon. For the ‘284 and ‘024 SON patents, Traxcell’s allegations involve Verizon’s implementation of Ericsson’s self-organizing network technology (Ericsson C-SON). As for the ‘388 patent, Traxcell asserted that Verizon Mobile’s devices using VZ Navigator or Google Maps were infringing.
Against Sprint, Traxcell asserted the same patents, plus the ’320 patent. For the asserted SON patent claims, Traxcell alleged Sprint’s use of Samsung’s distributed self-optimizing network technology (Samsung dSON) was infringing. For the ‘388 patent, Traxcell alleged that Sprint mobile device’s use of Google Maps was infringing.
On April 15, 2019, a magistrate judge entered a claim construction order that found claims 1-11 of the ‘284 patent indefinite. After claim construction, Sprint and Verizon separately moved for summary judgement of noninfringement on the remaining claims. Adopting the recommendations of the magistrate judge, the district court granted both motions, which Traxcell appealed.
The CAFC recognized that the district court’s summary judgment ruling was based on several grounds. First, claim 12 of the ‘284 patent was not infringed because Traxcell failed to satisfy the “way” prong of the function-way-result test in asserting an infringing structural equivalent to a means-plus-function limitation. Additionally, Traxcell failed to show a genuine dispute about the “location” and “first computer,” or “computer” limitations. Third, claim 1 of the ‘284 patent was held indefinite for failure to disclose sufficient structure for a means-plus-function limitation. Lastly, Traxcell failed to show that the accused technology infringed the ‘388 patent by determining a wireless device’s location on the network itself, as claimed, rather than on the device.
Traxcell argued that Sprint’s accused technology included a structural equivalent to the disclosed structure under the function-way-result test. The district court disagreed, concluding that Traxcell failed to establish that the accused technology operates in substantially the same “way.” Citing Applied Medical, the CAFC recognized that under the function-way-result test, “literal infringement of a means-plus-function claim limitation requires that relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification.” Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006). The district court concluded and the CAFC agreed that Traxcell did not provide sufficient evidence that Sprint’s system contained the structure required for the means-plus-function element. Traxcell pointed to a “very detailed” algorithm from the specification but neglected to address a significant fraction of the algorithm’s structure.
As in the Nokia case, the claim terms “location” and “first computer” or “computer” were at issue here. Traxcell again tried to “pull an about face” regarding the claim construction of the term “location,” which the CAFC found unpersuasive once more. The CAFC further held that the accused technology constituted merely using a position in a grid pattern, which fails to satisfy the “location” limitation. Turning to the “first computer” or “computer” limitation, the CAFC concluded that Traxcell had not shown the accused technology utilized only a single computer. Accordingly, the CAFC affirmed the noninfringement decision.
Claim 1 of the ‘284 patent was held indefinite in the Nokia case on two grounds: (1) lack of reasonable certainty about which “wireless device” the term “at least one said wireless device” referred to, and (2) lack of adequate supporting structure in the specification for the claim’s means-plus-function limitation. As mentioned, Traxcell did not appeal this, but rather sought a certificate of correction. Traxcell argued to the lower court that even if its original claim was indefinite, now the claim was cured. However, the district court did not grant leave to amend, ruling that doing so would be prejudicial to both Sprint and Verizon, and even if the certificate corrected the first indefiniteness ground, it would not touch the second. The CAFC agreed that the corrected claim could not remedy the second issue and therefore affirmed the indefiniteness ruling.
The ‘388 patent shares a specification with the SON patents. However, its claims are not about optimizing a wireless network, but instead are about providing navigation information from a wireless network to a mobile device. Specifically, the claims require that the device’s location is: (1) determined on the network, (2) communicated to the device, and (3) used to display navigation information. The district court concluded that Traxcell failed to show that the network rather than the device determines the device’s location. Traxcell on appeal failed to rebut this point and continually failed to adequately explain the link between the cited evidence and their infringement theory, causing the CAFC to affirm the noninfringement decision.