Wi-Lan USA, Inc. v. Apple Inc.
830 F.3d 1374
Fed. Cir.2016Background
- Wi‑LAN sued Apple alleging iPhones on 4G LTE infringe two patents (the ’040 and ’640) derived from Ensemble’s WiMAX intermediary‑node inventions that add intermediary nodes between base stations and user devices.
- The ’040 patent claims a node that packs/fragments variable‑length SDUs into PDUs and allocates bandwidth “for the specified connection, based on the priority of the connection.”
- The ’640 patent claims a method where an intermediary node (wireless subscriber radio unit) requests uplink (UL) bandwidth from a base station, maintains queues for data “pertaining to one or more UL connections with similar QoS,” and allocates received UL grants to those UL connections by QoS priority.
- At claim construction the district court construed “specified connection” (’040) as a connection between an intermediary node and a specific end user and construed “UL connections” (’640) as uplink connections between the intermediary node and its users. Apple later moved for summary judgment of noninfringement based on constructions requiring multiple user connections; district court granted summary judgment for Apple.
- Wi‑LAN sought reconsideration with a new construction (for ’640, that “UL connections” meant the link between intermediary node and base station); the district court considered and rejected it. Wi‑LAN appealed both constructions and the summary judgment outcome.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether “specified connection” (’040) excludes embodiments where an intermediary node can maintain only one specified connection | Wi‑LAN: claims can cover an intermediary node with only a single specified connection (e.g., iPhone baseband⇄application processor) | Apple: specification and claim language show multiple specified connections; allocation/prioritization language implies plurality | Court: Affirmed district court — “specified connection” excludes embodiments limited to only one specified connection |
| Whether Wi‑LAN waived its late‑proposed construction of “UL connections” (’640) raised on reconsideration | Wi‑LAN: the court should consider the new construction on reconsideration | Apple: Wi‑LAN changed positions too late and waived the new construction | Court: No waiver — district court did not abuse its discretion in considering the new construction |
| Proper construction of “UL connections” (’640): user↔node vs. node↔base station | Wi‑LAN: “UL connections” means the connection between intermediary node and the base station | Apple: “UL connections” are uplink connections between the intermediary node and its users | Court: Affirmed district court — “UL connections” are connections between the intermediary node and its user devices |
| Effect of constructions on infringement / summary judgment | Wi‑LAN: alternative constructions would allow infringement by iPhone architecture | Apple: under district court constructions the accused iPhones do not embody required plurality of user connections, so no infringement | Court: Because constructions are affirmed and Wi‑LAN concedes noninfringement under them, summary judgment of noninfringement is affirmed |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (standard of review for claim construction) (holding ultimate claim construction is legal question; subsidiary factual findings reviewed for clear error)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim‑construction framework and reliance on intrinsic evidence)
- Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313 (Fed. Cir. 2016) (applying Teva/Phillips to claim construction review)
- O2 Micro Int’l Ltd. v. Monolithic Power Sys., 467 F.3d 1355 (Fed. Cir. 2006) (case‑management principles for claim construction and infringement‑contention amendments)
- Nuance Commc’ns v. Abbyy USA Software House, 813 F.3d 1368 (Fed. Cir. 2016) (review of district court’s case‑management discretion)
- Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362 (Fed. Cir. 2014) (denial of reconsideration for late‑raised claim construction upheld)
- Watts v. XL Sys., 232 F.3d 877 (Fed. Cir. 2000) (prosecution statements can limit claim scope)