Core Wireless Licensing S.A.R.L. v. Apple Inc.
853 F.3d 1360
Fed. Cir.2017Background
- Core Wireless sued Apple alleging infringement of claim 17 of U.S. Patent No. 6,978,143, which claims a mobile station that receives a threshold channel-selection parameter, stores it, compares it to a current value, and uses that comparison as the basis for selecting an uplink channel (common or dedicated).
- The patent’s disclosed invention and Figure 6 describe the mobile station performing the comparison and then making the channel selection decision (possibly requesting allocation from the network if a dedicated channel is chosen).
- The magistrate judge construed the "means for comparing" limitation as including control unit 803 programmed in accordance with the algorithm in Figure 6 and specified portions of the specification; the parties tried the case under that construction.
- At trial Apple introduced evidence that its devices do not make uplink channel-selection decisions (the network does) and the jury found no infringement of claim 17; the district court denied JMOL and held the mobile station must have the capability to perform channel selection.
- Core Wireless argued on appeal that the district court misapplied the magistrate judge’s construction (and alternatively that Apple’s devices nonetheless infringe). The Federal Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper scope of means-plus-function "means for comparing" | Construction does not require the mobile station to be capable of making channel-selection decisions; only the comparison function is required | The claim, read with the disclosed structure/algorithm, requires the mobile station to be capable of making channel selections | Held: Claim 17 (means-plus-function) is tied to the disclosed algorithm and requires an MS capable of channel selection |
| Whether the district court altered the magistrate judge's claim construction | Magistrate judge’s omission of certain Apple-proposed language shows construction does not require MS selection capability | Magistrate’s inclusion of Figure 6 and specific spec passages demonstrates the disclosed structure contemplates MS selection capability | Held: Magistrate judge’s construction is consistent with MS-based selection; Core Wireless forfeited timely clarification and its premise is incorrect |
| Sufficiency of evidence of noninfringement | Even if claim requires MS selection, Apple devices still infringe because they send measurement reports (Event 4a) to the network | Event 4a reports are not a channel-selection decision by the MS because the network may ignore them and the MS has no control over selection | Held: Reasonable jury could find no infringement; evidence supports noninfringement verdict |
| Waiver/preservation of claim-construction complaint | Core Wireless preserved the issue via a Rule 50(a) JMOL motion | Apple contends Core Wireless failed to timely object at trial and thus waived the argument | Held: Court did not decide waiver; rejected Core Wireless’s underlying merits argument so outcome independent of waiver finding |
Key Cases Cited
- WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) (a computer disclosed only by algorithm is a special-purpose computer for means-plus-function claims)
- Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931 (Fed. Cir. 1987) (means-plus-function claim covers structure disclosed in the specification and equivalents)
- Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361 (Fed. Cir. 2012) (algorithms must be disclosed to define scope of computer-implemented means-plus-function claims)
- Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306 (Fed. Cir. 2003) (issues about claim-construction arguments and waiver when not raised at trial)