HTC Corp. v. Cellular Communications Equipment, LLC
701 F. App'x 978
| Fed. Cir. | 2017Background
- CCE owns U.S. Patent No. 7,218,923, claiming systems/methods to prevent third‑party smartphone apps from sending problematic messages by diverting messages to a "controlling entity" that can allow, modify, or stop them.
- HTC and others petitioned for inter partes review (IPR) challenging claims 1,2,4,5,8,24,25,31 as anticipated/obvious over D’Aviera, Calder, and Richardson; the PTAB instituted review and issued a Final Written Decision rejecting HTC’s challenges.
- Central disputed claim limitation: whether the claimed “diverting” and “controlling” functions must be performed by separate components (device claim 24 explicitly recites a "diverting unit" and a "controlling entity").
- The PTAB construed the claims (broadest reasonable interpretation) to require separate components for diverting and controlling and found HTC failed to show those separate components in the asserted prior art.
- On appeal to the Federal Circuit, the court affirmed the Board: it adopted the Board’s claim construction for device claim 24 and declined to separately construe method claim 1 (finding HTC forfeited a meaningful distinction between the claims).
Issues
| Issue | Plaintiff's Argument (CCE) | Defendant's Argument (HTC) | Held |
|---|---|---|---|
| Whether the claims require separate components to perform “diverting” and “controlling” | Claims (esp. device claim 24) recite distinct structures (“diverting unit” and “controlling entity”) and the spec describes them separately | The same structure can perform both functions; claim language doesn’t preclude one structure doing both | Held: separate components required under broadest reasonable interpretation for claim 24; affirmed |
| Whether the method claim (claim 1) can be broader than the device claim (claim 24) | Method and device claims should be read consistently; claim 24’s separation informs claim 1 | Claim 1’s language (“diverting a message”) does not name a diverting unit and can be satisfied by the controlling entity diverting to itself | Held: Court declined to adopt a different construction for claim 1 (HTC forfeited a distinct claim‑1 argument); adopted same construction as claim 24 |
| Proper claim‑construction standard and review | N/A | N/A | Board must use broadest reasonable interpretation in light of the specification; Federal Circuit reviews claim construction de novo when based on intrinsic evidence |
| Whether HTC preserved/argued that separate‑component requirement is ambiguous or unworkable for software | CCE relied on intrinsic specification and claim language; argued separation was required and supported by figures/spec | HTC argued generally that one structure can perform two functions and later did not argue ambiguity/unworkability; also argued on appeal software could render "separateness" meaningless | Held: HTC waived the software‑ambiguity argument by not raising it before the Board; waiver/forfeiture doctrines bar belated argument |
Key Cases Cited
- Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir.) (claims define scope and boundaries of patented subject matter)
- Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929 (Fed. Cir.) (claim construction principles)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S.) (PTAB must apply broadest reasonable interpretation in IPRs upheld)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (review standard for claim construction in IPR context)
- Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249 (Fed. Cir.) (separately listed claim elements imply distinct components)
- Gaus v. Conair Corp., 363 F.3d 1284 (Fed. Cir.) (same implication from separate claim listing)
- In re Kelley, 305 F.2d 909 (C.C.P.A.) (whether a single structure can meet multiple claim elements depends on the patent’s specification)
- Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir.) (preservation of claim‑construction positions for appeal)
- SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir.) (undeveloped arguments on appeal treated as waived)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S.) (distinguishing claim construction from pure statutory interpretation)