Wi-Lan, Inc. v. Apple Inc.
811 F.3d 455
Fed. Cir.2016Background
- Wi-LAN owns reissue U.S. Patent No. RE37,802 covering a multi-code direct-sequence spread spectrum (MC-DSSS) technique; it sued Apple for infringement based on Apple products implementing wide-area wireless standards.
- Asserted claims (1 and 10) recite a transceiver with (a) a converter that splits a data stream into plural sets of N symbols, (b) a “first computing means” that produces “modulated data symbols corresponding to an invertible randomized spreading,” and (c) a means to combine the modulated symbols; claim 10 adds receive/decode functionality.
- At Markman the court construed “modulated data symbols” as “data symbols that have been spread by a spreading code” and adopted the parties’ agreed means-plus-function construction for “first computing means” (element 12 of Figures 1 and 4 and equivalents), excluding the patent’s exemplary transforms (e.g., Figure 8).
- At trial the jury found the asserted claims invalid and not infringed; Apple’s non-infringement defense emphasized an ordering difference (Apple combines before randomizing) and its invalidity defense relied on prior art (e.g., Sasaki) that used real randomizers rather than the patent’s complex randomizer.
- The district court denied Wi‑LAN’s JMOL on infringement (upholding the jury’s non-infringement finding) but granted JMOL that the claims were not invalid, reasoning post-verdict that the “first computing means” necessarily included a complex multiplier.
- On appeal the Federal Circuit affirmed denial of JMOL on non-infringement (jury verdict supported by substantial evidence) but reversed the JMOL on no-invalidity because the district court impermissibly reconstructed the claim post-verdict to add the complex multiplier requirement.
Issues
| Issue | Wi‑LAN's Argument | Apple’s Argument | Held |
|---|---|---|---|
| Whether Apple’s products infringe claim 1 (ordering of randomize vs. combine) | Claim language does not permit an ordering requirement; Apple’s order is equivalent so infringes under doctrine of equivalents | Claim 1 requires producing randomized modulated symbols before combining; Apple’s products combine first, so no literal infringement and not equivalent | Affirmed denial of JMOL on infringement; substantial evidence supported jury that ordering difference was not insubstantial (no infringement) |
| Whether claims are invalid as anticipated by prior art (real vs. complex randomizer) | Prior art lacks complex multiplier, so claims not anticipated | Prior art (e.g., Sasaki) discloses invertible randomized spreading using real randomizers, anticipating claims under the court’s constructions | Reversed district court JMOL of no-invalidity because the court improperly added a complex multiplier requirement post-verdict beyond its prior claim construction |
| Whether the district court may clarify/expand claim construction at JMOL to add omitted structure | Court cannot adopt a new, more detailed construction at JMOL; must judge the verdict under the issued construction | District court claimed expert testimony showed complex multiplier was implicit and clarified construction accordingly | Court held post-verdict reconstruction was impermissible; clarification went beyond what was inherent or obvious to the jury |
| Applicability of doctrine of equivalents to means-plus-function limitations | Even if ordering required, mathematically identical outputs make Apple’s structure equivalent | Structural differences (hardware pipeline, transistor counts, power) are substantial to a person of skill; not equivalent | Jury reasonably found differences substantial; doctrine of equivalents does not rescue infringement claim |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction principles; intrinsic record controls)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (factual findings underlying claim construction reviewed for clear error)
- Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (doctrine of equivalents requires differences to be insubstantial to skilled artisan)
- Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir.) (doctrine of equivalents and requirement to prove equivalence for each limitation)
- Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir.) (permissible post-trial clarification that only made plain what should have been obvious to the jury)
- Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314 (Fed. Cir.) (cannot adopt a new, more detailed claim construction at JMOL stage)