Golden Bridge Technology, Inc. v. Apple Inc.
758 F.3d 1362
| Fed. Cir. | 2014Background
- GBT sued Apple for infringing patents (U.S. Pat. Nos. 6,574,267 and 7,359,427) claiming a CDMA improvement where a mobile station transmits a spread preamble at increasing power levels until a base-station acknowledgment is received.
- In earlier Texas litigation, GBT stipulated to a construction of “preamble” as “a signal used for communicating with the base station that is spread before transmission.” That construction was submitted to the PTO during reexamination/prosecution of the asserted patents.
- The district court adopted a claim construction requiring the preamble to be spread before transmission and construed “preamble” as “a signal used for communication with the base station that is spread before transmission and that is without message data.”
- Apple’s accused 3G devices use a PRACH preamble formed by creating a signature sequence and then spreading that signature with a scrambling code; the completed PRACH preamble is transmitted (i.e., spreading occurs during generation, not after creation of a distinct preamble signal).
- District court granted summary judgment of noninfringement because the accused PRACH preamble was not itself spread prior to transmission (only the signature used to generate it was spread), and GBT’s alternative theory that the signature sequence alone was the preamble was raised for the first time on reconsideration and thus waived.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of “preamble” | GBT: term should have its plain meaning; not limited to being spread before transmission; IDS submission does not bind scope | Apple: GBT’s stipulation to Texas construction and submission to PTO amounts to disclaimer limiting preamble to being spread before transmission | Court: GBT’s submission of its stipulated construction to the PTO was a clear, unmistakable prosecution disclaimer; preamble limited to a signal spread before transmission |
| Whether PRACH preamble meets the construed preamble requirement | GBT: PRACH preamble (signature + scrambling code) is the accused preamble and is spread during generation, satisfying claim | Apple: PRACH preamble is not spread prior to transmission; only the signature is spread during generation, so does not meet "spread before transmission" limitation | Court: No genuine dispute — PRACH preamble is not spread prior to transmission; summary judgment of noninfringement affirmed |
| Whether signature sequence alone is the accused preamble (reconsideration) | GBT: signature sequence alone meets preamble limitation (raised on reconsideration) | Apple: GBT waived this theory by not asserting it at summary judgment; in any event signature is not a signal for communicating with the base station spread before transmission | Court: GBT’s signature-sequence theory was raised first on reconsideration and waived; district court did not abuse discretion in denying reconsideration |
| Effect of IDS and prosecution statements on claim scope | GBT: IDS disclosures are not admissions of materiality and do not bind claim construction | Apple: GBT’s explicit stipulation submitted during prosecution is binding despite being in IDS-related documents | Court: Distinguishes a mere IDS from submitting a stipulated construction; an applicant’s remarks in IDS-related submissions can constitute limiting prosecution statements; GBT bound by its stipulation |
Key Cases Cited
- Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272 (Fed. Cir.) (claim construction reviewed de novo)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claims given plain and ordinary meaning in context)
- Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir.) (limits on departing from ordinary meaning: lexicography or disavowal)
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir.) (prosecution disclaimer must be clear and unmistakable)
- Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274 (Fed. Cir.) (mere listing in IDS is not an admission of materiality)
- Uship Intellectual Props., LLC v. United States, 714 F.3d 1311 (Fed. Cir.) (applicant remarks submitted with IDS can limit claim scope)
- Del. Valley Floral Grp., Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374 (Fed. Cir.) (summary judgment review applying regional circuit law)
- Exigent Tech. Inc. v. Atrana Solutions Inc., 442 F.3d 1301 (Fed. Cir.) (affirming summary judgment where patentee lacks evidence)