Wi-Lan USA, Inc. v. Ericsson, Inc.
675 F. App'x 984
| Fed. Cir. | 2017Background
- Wi-LAN sued Ericsson for infringement of three patents: the ’298 and ’014 (the "Bandwidth Patents") and the ’437 patent (pre-allocated random access identifiers).
- On initial summary judgment the district court found Ericsson entitled to a license under an MFL (Most Favored Licensee) provision in a prior PCRA and dismissed infringement; this court reversed, holding the MFL applied only to patents owned/controlled as of the PCRA effective date.
- On remand the district court construed claim terms, granted summary judgment that claims 8 and 18 of the ’437 patent were invalid as anticipated by the GSM reference Mouly, and granted summary judgment of non-infringement for the Bandwidth Patents; it again held the MFL did not apply to the Patents‑in‑Suit.
- Wi‑LAN appealed the invalidity and non‑infringement rulings; Ericsson cross‑appealed the district court’s conclusion that the PCRA’s MFL provision does not cover the Patents‑in‑Suit.
- The Federal Circuit: vacated the district court’s anticipation and non‑infringement summary judgments and remanded for further proceedings; affirmed that the PCRA’s MFL provision does not cover the Patents‑in‑Suit (but used a narrower rationale than the district court).
Issues
| Issue | Plaintiff's Argument (Wi‑LAN) | Defendant's Argument (Ericsson) | Held |
|---|---|---|---|
| Whether claims 8 and 18 of the ’437 patent are anticipated by Mouly (GSM) | Mouly is ambiguous about whether handover access messages in asynchronous handovers are sent on a RACH; genuine factual dispute precludes anticipation SJ | Mouly discloses the limitations; no genuine dispute; summary judgment of anticipation proper | Vacated district court’s anticipation SJ; genuine factual disputes exist and remand required |
| Construction of term “bandwidth” in the Bandwidth Patents | "Bandwidth" need not be limited to a particular time period; broader meaning (quantity of data or time/frequency units) | Should be construed to require temporal component: "data transmission resources in a particular time period" | Affirmed district court’s construction: "data transmission resources in a particular time period" |
| Whether Ericsson’s LTE products literally infringe the Bandwidth Patents | BSRs (Buffer Status Reports) and Scheduler operation create disputed fact issues; BSRs function as requests identifying requested bandwidth | BSRs merely report approximate bytes; base station decides and calculates allocation, so accused products do not "identify a requested amount of bandwidth" as claimed | Vacated non‑infringement SJ and remanded because district court improperly credited defendant’s evidence over competing record evidence |
| Scope/application of the PCRA Most Favored Licensee (MFL) provision | (Wi‑LAN) MFL does not apply to patents acquired after the PCRA date; Patents‑in‑Suit post‑date the PCRA so excluded | (Ericsson) Once MFL triggered by a pre‑PCRA patent assertion, Ericsson is entitled to a most‑favored license whose terms (e.g., BelAir license) extend to later patents/products, including the Patents‑in‑Suit | Affirmed that MFL does not apply to the Patents‑in‑Suit; Court limits MFL benefits to the patent(s) that triggered the provision (pre‑PCRA triggering patent) |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment standard)
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment: credibility, weighing evidence are jury functions)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction principles; specification as primary guide)
- Eli Lilly & Co. v. Zenith Goldline Pharm., 471 F.3d 1369 (Fed. Cir.) (anticipation requires every claim limitation in a single prior art reference)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (claim construction: factual findings reviewable for clear error)
- Bai v. L & L Wings, Inc., 160 F.3d 1350 (Fed. Cir.) (infringement SJ appropriate only when no genuine factual dispute about presence/absence of claim limitations)
- Classen Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d 892 (Fed. Cir.) (procedural note: regional circuit law governs review of summary judgment)