Rembrandt Patent Innovations v. Apple, Inc.
16-2324
| Fed. Cir. | Nov 22, 2017Background
- Rembrandt sued Apple for infringement of U.S. Patent No. 6,185,678, which claims systems and methods to verify boot integrity and recover corrupted boot components via a "trusted repository."
- The patent’s specification repeatedly describes an automated (without human intervention) recovery procedure ("AEGIS") as central to the invention and contrasts it with prior art that required human intervention and downtime.
- Accused Apple devices (iPhone/iPad/iPod Touch) use a boot chain (SecureROM → LLB → iBoot → iOS kernel) and, upon verification failure, enter DFU or Recovery Mode that requires a user to connect the device to iTunes and initiate recovery; iTunes then downloads and installs replacement components.
- District court construed the asserted claims to require automatic recovery (begin, proceed, and finish without user intervention) based on the intrinsic record and granted Apple summary judgment of noninfringement (both literal and under the doctrine of equivalents).
- Rembrandt appealed, arguing the claims do not require automatic recovery, or alternatively that Apple’s user‑initiated recovery still infringes literally or under the doctrine of equivalents.
- The Federal Circuit affirmed, holding the specification disclaims non‑automated recovery and that Apple’s process (requiring user initiation) neither literally infringes nor is equivalent.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction: whether "recovery" requires automatic (no human intervention) recovery | Rembrandt: claims lack the word "automatic" so recovery need not be automatic; specification permits user involvement in some embodiments | Apple: specification repeatedly characterizes the invention as providing automated recovery and disparages human‑involved prior art; claims should be read in view of the specification | Court: claims, read in light of the specification, require automated recovery; intrinsic record disclaims non‑automated recovery |
| Literal infringement: whether Apple’s products literally perform automatic recovery | Rembrandt: connecting device to iTunes and clicking restore is not part of recovery; once started, Apple’s process proceeds automatically | Apple: recovery does not begin without user initiation; devices remain unusable (downtime) until user acts | Court: no literal infringement—Apple’s process requires user initiation so it fails the automated‑recovery limitation |
| Doctrine of equivalents: whether Apple’s user‑initiated recovery is insubstantially different from claimed automatic recovery | Rembrandt: user initiation is an insubstantial change; the accused devices perform same function in same way to same result | Apple: user involvement materially differs and undermines a stated purpose (eliminating downtime); specification disclaims non‑automated solutions, limiting equivalents | Court: no equivalence—allowing equivalence would vitiate the automated limitation the specification disclaims; expert conclusory testimony insufficient |
| Claim scope vs. prosecution history/written description (implicit disavowal/waiver arguments) | Rembrandt: PTO treated recovery as including human activity during prosecution; inventors did not disclaim that scope | Apple: cited prior art (Bramnick) actually discloses automated recovery; waiver arguments not persuasive | Court: declined to resolve waiver; held Bramnick disclosed automated recovery, and the intrinsic record controls (no change to claim scope) |
Key Cases Cited
- Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard of review for claim construction and subsidiary factfinding)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims read in view of the specification)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (specification as primary guide to claim meaning)
- Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir. 2007) (description of the present invention can limit claim scope)
- Warner‑Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (doctrine of equivalents framework)
- Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326 (Fed. Cir. 2014) (conclusory expert testimony insufficient to show equivalence)
- Poly‑America, L.P. v. API Indus., Inc., 839 F.3d 1131 (Fed. Cir. 2016) (disclaimer via specification distinguishing prior art)
- Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315 (Fed. Cir. 2016) (cannot permit equivalents that entirely vitiate a claim element)