Openwave Systems, Inc. v. Apple Inc.
808 F.3d 509
Fed. Cir.2015Background
- Unwired Planet (assignee of three related patents) sued Apple and RIM in 2011; parallel ITC proceedings were later terminated and the district court lifted a stay.
- The dispute turned on construction of three terms (treated as one): “mobile device” / “wireless mobile telephone” / “two-way communication device.”
- The district court adopted a construction excluding devices that contain a “computer module,” while preserving embodiments that use microcontrollers.
- Unwired Planet initially refused to stipulate noninfringement, prompting Defendants’ summary-judgment motion; ultimately Unwired Planet stipulated noninfringement and final judgment was entered for Defendants.
- The sole appellate question was whether the specification disclaimed (i.e., clearly and unmistakably disavowed) coverage of mobile devices that include computer modules; the Federal Circuit affirmed the district court’s construction and judgment of noninfringement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claim term “mobile device” should be given its ordinary meaning or be limited by specification disclaimers to exclude devices with a computer module | Unwired Planet conceded the specification disparages computer-module devices but argued that such disparagement does not amount to a disclaimer of claim scope (claims should get ordinary meaning) | Defendants argued the specification repeatedly and expressly disavows mobile devices containing computer modules, so claims must exclude them | Court held specification’s repeated derogatory statements constituted a clear, unmistakable disavowal; “mobile device” construed to exclude devices containing a computer module (while not excluding microcontroller embodiments) |
Key Cases Cited
- Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361 (Fed. Cir.) (repeated disparagement may show disclaimer)
- Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir.) (standard for disavowal requires clear and unmistakable disclaimer)
- SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir.) (specification can show intentional disclaimer)
- Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir.) (disavowal requires reasonable clarity and deliberateness)
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir.) (disclaimer must be unambiguous)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction focuses on person of ordinary skill and specification as primary guide)
- GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir.) (do not import limitations from embodiments absent clear intent)
- Starhome GmbH v. AT&T Mobility LLC, 743 F.3d 849 (Fed. Cir.) (stipulation of noninfringement narrows appellate review to claim construction)
- Altiris, Inc. v. Symantec Corp., 318 F.3d 1363 (Fed. Cir.) (same principle regarding stipulations)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S.) (de novo review of claim construction based on intrinsic evidence; clear-error standard for factual findings)