106 F. Supp. 3d 1083
N.D. Cal.2015Background
- Unwired Planet sued Apple alleging infringement of four patents: '831, '446, '260, and '092; cross-motions for summary judgment were filed. The court granted Apple summary judgment of noninfringement as to the '831, '446, and '260 patents, leaving only the '092 patent live.
- The '831 patent requires two channels: a wideband channel for security exchange and a narrowband channel for subsequent data; Unwired accused APNS (Apple Push Notification Service).
- The '446 patent requires sending voice input over a "voice channel" and returning data over a data channel; Unwired accused Siri.
- The '260 patent claim requires generating a provisioning request that comprises the same user information required to establish a user account plus the user’s selection; Unwired accused the App Store buyProduct/authenticate flow.
- The '092 patent (still at issue) claims using a plurality of device-dependent "location inputs" from location-finding equipment; disputes include whether Apple uses multiple inputs and whether pre‑critical-date commercial activity (Motorola agreement and other deals) triggers the on‑sale bar or prior-publication invalidity.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| '831 patent — narrowband requirement / direct infringement | APNS uses a narrowband channel for push notifications and a wideband channel for security exchanges; channels differ by endpoints and data rates | APNS communications use the same TCP/IP connection; Unwired has no evidence the channels differ in data-transfer capability; header-vs-payload distinction doesn't make a channel narrowband | Noninfringement: Apple summary judgment granted — APNS does not meet the "narrowband channel" limitation |
| '446 patent — voice channel / direct infringement | Siri transmits voice over a channel that should be treated as a voice channel; TCP/IP can carry voice (VoIP) and Siri exhibits some voice-channel characteristics | Siri uses TCP/IP without voice-channel transmission properties (short intervals, different error correction, carrier prioritization); Siri is not a voice channel as claimed | Noninfringement: Apple summary judgment granted — Siri does not use a "voice channel" |
| '446 patent — invalidity (Yamakita anticipatory art) | (Apple) Yamakita discloses server-based speech recognition using TCP/IP like Siri, and thus anticipates the '446 claims | (Unwired) '446 requires a voice channel; Yamakita uses data/TCP/IP not a voice channel | Apple’s invalidity motion denied — Yamakita does not anticipate because it lacks the voice-channel limitation |
| '260 patent — provisioning claim (App Store) | buyProduct (and authenticate+buyProduct) requests supply user information and selection constituting the required provisioning request | The user information in buyProduct (DSID, hashed token) is not the same information "required to establish" an iTunes account; authenticate and buyProduct are distinct requests and cannot be combined | Noninfringement: Apple summary judgment granted — App Store does not meet "user information required to establish a user account" limitation |
| '092 patent — plurality of location inputs / direct infringement | iOS location system uses multiple device-dependent inputs (GPS plus BSSID, cell ID, other identifiers) as alleged plurality | Apple contends only GPS is a location input or that identifiers (BSSID, cell ID) are not "information regarding location" absent Apple’s database mapping | Denied as to direct infringement: factual dispute exists about whether BSSID/cell ID and other items are location inputs; issue for jury |
| '092 patent — induced/contributory infringement | (Unwired) Apple induced/contributed to infringement because it distributes devices/software that implement the claimed method | Apple lacked actual knowledge or willful blindness because its noninfringement position (single input) was strong | Indirect infringement denied for Unwired: Apple summary judgment granted — no sufficient evidence of requisite knowledge/willful blindness |
| '092 patent — Proposal for LFS as printed publication (anticipatory) | Apple: the Proposal for LFS was publicly disseminated and thus is a printed publication invalidating the patent | Unwired: no evidence Proposal was publicly accessible; provenance traced to internal files and no witnesses corroborated public distribution | Anticipatory-publication denied for Apple; summary judgment for Unwired — Proposal not shown publicly accessible by clear and convincing evidence |
| '092 patent — on‑sale bar (Motorola agreement and other deals) | Apple: Unwired’s 1996 Motorola License & Development Agreement and other pre‑critical‑date deals commercialized the claimed invention and trigger the on‑sale bar | Unwired: dispute whether the licensed WLS Software equals the patented invention and whether the deals were sales of the claimed invention | Mixed: Court found the Motorola agreement was a commercial sale for on‑sale analysis but whether WLS Software embodies the '092 invention is disputed — jury must decide; other alleged offers resolved in part in Unwired’s favor |
| '092 patent — marking | (Apple) Unwired failed to mark products, limiting damages | (Unwired) marking not required for method-only claims | Summary judgment for Unwired — marking defense inapplicable to method claims |
| '092 patent — laches | Apple: Unwired delayed suit unreasonably, prejudicing Apple | Unwired: delay not prejudicial or improperly explained | Summary judgment for Unwired — Apple produced no evidence of material prejudice |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (indefiniteness standard for patent claims)
- Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) (knowledge standard for induced infringement and willful blindness)
- Pfaff v. Wells Electronics, Inc., 119 S. Ct. 304 (1998) (on‑sale bar tests: commercial offer and ready for patenting)
- Broadcom Corp. v. Emulex Corp., 732 F.3d 1325 (Fed. Cir. 2013) (treatment of disclosed embodiments in claim construction and infringement)
- Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308 (Fed. Cir. 2009) (marking doctrine does not apply to method claims)
- Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961) (no indirect infringement without direct infringement)
- Lime Light Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014) (inducement requires underlying direct infringement)