Gpne Corp. v. Apple Inc.
830 F.3d 1365
| Fed. Cir. | 2016Background
- GPNE sued Apple asserting infringement of U.S. Patent Nos. 7,570,954 and 7,792,492, which claim devices called "nodes" in a two-way paging system that communicates via a central control station.
- The patents consistently describe the devices in the specification as "pagers" (and never as "telephones"); claims use the term "node" but do not define the device type.
- At Markman, GPNE proposed "node" be a device that can transmit and receive; Apple argued "node" means a "pager" that operates independently of telephone networks. The district court adopted Apple’s construction: "pager with two-way data communications capability that transmits wireless data communications on a paging system that operates independently from a telephone network."
- At a seven-day jury trial, parties disputed whether accused iPhones/iPads were "pagers"; Apple compared them to legacy pagers, and GPNE rebutted. The jury found the patents not invalid but not infringed.
- GPNE moved for JMOL/new trial; denied. On appeal GPNE challenged (1) the claim construction ("node" = "pager" and "independent of telephone network") and (2) that the court left the meaning of "pager" to the jury in violation of O2 Micro.
- The Federal Circuit affirmed: it upheld the district court’s construction based on repeated specification language and prosecution history, rejected GPNE’s O2 Micro argument (court adequately resolved disputed scope), and found no abuse of discretion in trial supervision or denial of a clarifying jury instruction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of "node" (whether it may be called a "pager") | "Node" is broader than "pager"; claims do not require a "pager" | Specification and prosecution history consistently describe nodes as pagers; "node" may be construed as a pager | Affirmed: "node" may be construed as a "pager" given repeated/specification context |
| Whether "operates independently of a telephone network" is a proper limitation | Limitation is improper and based on a single sentence; claim should not be limited to independence from telephone networks | Sentence is a summary of the invention; prosecution history supports independence limitation | Affirmed: limitation proper because it describes the invention as a whole |
| Whether district court left meaning of "pager" to the jury in violation of O2 Micro | Allowing extensive comparisons to legacy pagers effectively let jury decide "pager" scope; court erred | Court resolved the disputed scope of "node"; remaining nuances of "pager" did not affect operative claim scope | Affirmed: no O2 Micro error—the court resolved the dispute sufficiently for the jury |
| Whether trial conduct (Apple's pager comparisons / denial of clarifying instruction) warranted new trial | Apple’s comparisons and court’s refusal to define "pager" prejudiced the jury; new trial required | GPNE had opportunities to rebut and did so; instruction and construction were sufficient; no abuse of discretion | Affirmed: no abuse of discretion; denial of new trial proper |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (legal standard for review of claim construction) (deference to district court factual findings)
- O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir.) (court must resolve fundamental disputes about claim scope)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (ordinary and customary meaning; read claims in light of specification)
- VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir.) (patent language repeatedly characterizing a term can limit meaning)
- Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir.) (description of the present invention can limit claim scope)
- Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314 (Fed. Cir.) (court need not resolve every possible ambiguity beyond what is necessary)
- Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310 (Fed. Cir.) (claims need not be purged of every ambiguity)
- Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325 (9th Cir.) (standards for appellate review of trial conduct and counsel argument)
- Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359 (Fed. Cir.) (waiver of new claim construction raised after trial)