64 F.4th 1311
Fed. Cir.2023Background
- Patentee Joe Salazar owned U.S. Patent No. 5,802,467 directed to a communications system with a “microprocessor” that generates protocols, creates reprogrammable protocols, retrieves parameter sets, and transmits via an IR transceiver.
- Salazar previously sued HTC (Salazar I); a jury found HTC did not infringe. Salazar later sued AT&T and related carriers asserting the same patent against the same accused devices.
- The district court construed the claim language “a microprocessor” and subsequent references to “said microprocessor” to mean “one or more microprocessors, at least one of which is configured to perform the generating, creating, retrieving, and generating functions.”
- At trial AT&T argued anticipation based on prior art (Goldstein) and moved under Rule 50 only on infringement, damages, and preclusion (explicitly declining to move on anticipation). The jury found noninfringement and no invalidity.
- The district court entered judgment consistent with the jury verdict; Salazar appealed the claim construction; AT&T cross-appealed on preclusion/Kessler and anticipation grounds.
- The Federal Circuit affirmed noninfringement (agreeing with the district court’s construction), declined to reach AT&T’s preclusion/Kessler arguments, and held AT&T waived its anticipation challenge by failing to move under Rule 50.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of "a microprocessor" / "said microprocessor" | Salazar: "a" = one or more; different microprocessors may each perform different recited functions (no single processor must do all) | AT&T / district court: while "a" permits multiple processors, the subsequent "said microprocessor" and functional limitations require at least one microprocessor capable of performing all recited functions | Affirmed: claim reads as one or more microprocessors, but at least one must be configured to perform the generating/creating/retrieving functions (district court construction approved) |
| Claim preclusion / Kessler doctrine | Salazar: claims not barred by prior HTC litigation | AT&T: prior judgment and Kessler doctrine bar relitigation / harassment of customers | Court did not decide—declined to reach because it affirmed noninfringement |
| Anticipation (invalidity) | AT&T: asserted claims anticipated by Goldstein prior art | Salazar: claims not anticipated; jury found not invalid | AT&T waived this argument on appeal because it did not move for JMOL under Rule 50 at trial regarding anticipation |
Key Cases Cited
- Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313 (Fed. Cir. 2016) (interpreting "a processor" plus subsequent definite reference to require a single processor to perform all recited functions in certain claims)
- In re Varma, 816 F.3d 1352 (Fed. Cir. 2016) ("a" can require a single instance capable of all subsequently recited functionality despite allowing multiple instances overall)
- Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338 (Fed. Cir. 2008) (indefinite article "a" generally means "one or more" and subsequent "said" typically reinvokes that non‑singular meaning unless context dictates otherwise)
- Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011) (context can require a singular reading of "a" where claim language makes clear only a single instance satisfies the claim)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim terms given their ordinary meaning to a person of ordinary skill; intrinsic evidence primary)
- Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (clarified standard of review for claim construction and when factual findings receive deference)
- Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) (discussed liberal construction of Rule 50(a) where cursory JMOL motions were made and district court acknowledged them)
- Kessler v. Eldred, 206 U.S. 285 (1907) (doctrine preventing harassment of customers of an adjudged noninfringer)