HTC CORP. v. IPCom GmbH & Co., KG
667 F.3d 1270
| Fed. Cir. | 2012Background
- HTC appealed a district court ruling that claims 1 and 18 of IPCom's '830 patent were indefinite for claiming both an apparatus and method steps.
- The '830 patent covers handover in a cellular network, with six enumerated functions and a means-for-reactivating element interpreted as a means-plus-function limitation.
- The district court held the claims indefinite under IPXL because of hybrid claiming and because there was alleged lack of corresponding structure.
- The Federal Circuit reversed the district court's IPXL-based indefiniteness ruling, construing the claims as addressing a network environment in which the mobile station operates.
- The court upheld that the specification discloses a processor and transceiver as structure, but concluded HTC waived any separate algorithm indefiniteness challenge and did not remand for further fact-finding.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are claims 1 and 18 indefinite for hybrid apparatus/method claiming (IPXL)? | HTC argues the claims improperly merge apparatus and method steps. | IPCom maintains the claims are properly drafted as a network environment for a mobile station. | Not indefinite; properly construed as network environment. |
| Were the six functions in claims 1 and 18 correctly attributed to the network rather than the mobile station? | HTC contends the mobile station performs the six functions. | IPCom contends the base stations perform the functions. | The network performs the six functions; mobile station is used within that environment. |
| Did the district court err in relying solely on a processor/transceiver as sufficient structure for a means-plus-function limitation? | HTC argued processor/transceiver alone is insufficient to provide structure. | IPCom argued processor/transceiver suffices as structure. | The specification discloses a processor/transceiver, but hardware alone is not enough; algorithmic structure is required. |
| Did HTC preserve an adequate algorithm-based challenge to the means-plus-function limitation? | HTC argued the algorithm was inadequately disclosed. | IPCom argued no need to address the algorithm at this stage. | HTC waived the algorithm challenge; the court did not resolve it on the merits. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction framework and reliance on specification)
- IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) (hybrid claiming renders claims indefinite)
- Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008) (preamble-within-a-preamble format definiteness guidance)
- Aristocrat Techs. Austl. Pty Ltd. v. Intl. Game Tech., 521 F.3d 1337 (Fed. Cir. 2008) (means-plus-function structure requires more than generic computer disclosure)
- WMS Gaming, Inc. v. International Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) (algorithm disclosure required for means-plus-function claims)