The U.S. District Court for the District of Columbia granted HTC Corporation and HTC America, Inc.’s (“HTC”) motion for summary judgment of invalidity of claims 1 and 18 of U.S. Patent No. 6,879,830, owned by IPCom GmbH & Co., KG (“IP-Com”). The district court concluded that those claims were indefinite because they claimed both an apparatus and method steps. We reverse the district court’s judgment because the district court misconstrued the claims, which cover only an apparatus.
As an alternative basis for invalidating claims 1 and 18, HTC argues that the claims are indefinite because the '830 patent’s specification fails to disclose corresponding structure for the claims’ means-plus-function limitation. On this point, we agree with the district court that the specification adequately disclоses a processor and transceiver for use in performing the functions recited in these claims. Although the district court was wrong to conclude that a processor and transceiver alone provide sufficient structure for the asserted claims, HTC waived any other legitimate attack on the adequacy of the disclosures with respect to claims 1 and 18. We, thus, find that the district court was
I.
HTC sued IPCom in 2008 and sought a declaration that it did not infringe a valid and enforceable claim of one of IPCom’s patents. IPCom filed a counterclaim and alleged infringement of two additional patents, including the '830 patent.
The '830 patent covers a handover in a cellular telephone network. A cellular telephone — called a “mobile station” in the patent — maintains a link with a tower— called a “base station.” A handover occurs when a mobile station switches from one base station to another. This happens, for example, when a person using a cellular telephone travels in a car between coverage areas. The invention, in principle, reduces the chance of interrupted service during a handover.
Claim 1 recites:
A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by: storing link data for a link in a first base station,
holding in reserve for the link resources of the first base station, and when the link is to be handed over to the second base station:
initially maintaining a storage of the link data in the first base station, initially causing the resources of the first base station to remain held in reserve, and
at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising: an arrangement for reactivating the link with the first base station if the handover is unsuccessful.
U.S. Patent No. 6,879,830 col. 8 11. 12-32 (filed Jan. 6, 2000) (emphasis added).
Claim 18 is identical to claim 1, except that the phrase in claim 1 that reads, “at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station ...” is modified in claim 18 to read, “at a later timepoint determined based on a message from one of the mobile station and the second base station regarding a successful completion of handing over the link, deleting the link data from the first base station and freeing up the resources of the first base station....” Id. col. 10 1. 61-col. 12 1. 6 (emphasis added). The distinction is immaterial to this appeal.
In its opening claim construction brief, HTC moved for summary judgment of invalidity on the ground that the means-plus-function limitation “arrangement for reactivating,” found in the last paragraph of claims 1 and 18, was indefinite because the patent failed to disclose structure corresponding to the claimed function. The district court rejected that argument because, the court believed, a person of skill in the art would understand that the corresponding structure was a processor and transceiver.
HTC Corp. v. IPCom GMBH & Co.,
II.
The district court erred when it held the claims indefinite for claiming an apparatus and method steps. First, the district court misconstrued the claims. Then, the district court applied to the erroneous construction this court’s precedent prohibiting hybrid claiming of apparatus and method steps. The prohibition on hybrid claiming is inapplicable to claims 1 and 18 when they are correctly construed.
A.
The district court erred in construing claims 1 and 18 because it failed to adhere to the principles of claim construction set forth in
Phillips v. AWH Corp.,
A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:
storing link data for a link in a first base station,
holding in reserve for the link resources of the first base station, and
when the link is to be handed over to the second base station:
initially maintaining a storage of the link data in the first base station,
initially causing the resources of the first base station to remain held in reserve, and
at a later timepoint ... deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:
an arrangement for reactivating the link with the first base station if the handover is unsuccessful.
'830 patent col. 8 II. 12-32, col. 10 1. 61-col. 12 1. 6 (emphases added). The parties disagree whether the mobile station or the network, both recited in paragraph 1, implements the six functions enumerated in paragraphs 2-7. If the mobile station implements the functions, the claims are indefinite because they recite both an apparatus — the mobile station — and method steps — the functions enumerated in paragraphs 2-7. If the network performs the functions, the claims are not indefinite because the claims merely describe the network environment in which the mobile station must be used. The district court concluded, without complying with Phillips’s claim construction principles, that the mobile station implements the functions recited in paragraphs 2-7.
1.
The district court did not examine adequately the claims themselves.
Phillips,
Supporting that assumption, the claims re-introduce the mobile station in paragraph 7 after the enumerated funсtions. The mobile station is followed by a functional limitation in paragraph 8: “the mobile station comprising ... an arrangement for reactivating the link with the first base station if the handover is unsuccessful.” '830 patent col. 8 11. 28-32, col. 12 11. 4-6 (emphasis added). The claims would read in a disjointed manner if they were to recite the mobile station in the first paragraph, modify the mobile station with the six enumerated functions, and then, without a transition, recite the mobile station again in paragraph 7, followed by yet another modifier. Had the claim drafter intended that format, the drafter likely would have followed the recitation of the mobile station in paragraph 7 with “further comprising” instead of “comprising” to signal that additional modification would be attached to the mobile station.
Words of a claim “are generally given thеir ordinary and customary meaning.”
Vitronics Corp. v. Conceptronic, Inc.,
2.
In addition to examining the claim language, the district court should have referred to the specification to understand the claims.
Phillips,
HTC fails to cite any part of the specification indicating that the mobile station implements the six functions. The mobile station, HTC argues, is the “quarterback” of the handover because the specification speaks in terms of the mobile station’s “performing” a handover. The specification, however, does not suggest that the mobile station must actually implement the six functions to perform a handover. In one scenario described in the specification, the mobile station sends the first base station a “Handover Notify” message indicating that it is trying to perform a hand
3.
A court should also look to the prosecution history when construing a claim.
Phillips,
The district court placed too much weight on the appliсants’ use of the word “process” when the claim language and the specification indicated that the applicants did not claim a process. Claim language and the specification generally carry greater weight than the prosecution history. “[B]ecause the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.”
Phillips,
Like the district court, HTC places too much weight on the prosecution history. In addition to seizing on the applicants’ use of the word “process,” HTC argues that the applicants acquiesced when the examiner called the six enumerated functions “steps.” That fact carries little weight. The examiner was also referring, in most instances, to a pending method claim, which the applicants later withdrew.
The cases that HTC cites do not change our view. In
Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc.,
this court held that an examiner’s restriction requirement and a patentee’s remarks during prosecution were insufficient tо support a finding that the patentee disavowed a particular claim scope.
Although the district court was correct in considering the prosecution history, the claim language and specification in this case are better sources for the corrеct construction.
4.
A court may also look to extrinsic evidence, such as dictionaries and expert opinions.
Phillips,
B.
Based on its erroneous claim construction, the district court held that claims 1 and 18 are indefinite because they claim an apparatus and method steps.
See IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
The claim at issue in IPXL read as follows:
The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters аssociated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.
Id. (quoting U.S. Patent No. 6,149,055 col. 22 11. 8-13 (filed June 26, 1996)). We held the claim indefinite because the claim failed to make clear whether infringement would occur “when one creates a system that allows the user to change the predicted transaction information ■ or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction.” Id. The IPXL claim, in other words, was ambiguous because it recited both a system that allowed a user to practice a method step and the user’s practicing the method step. Claims 1 and 18 are different. They do not recite a mobile station and then have the mobile station perform the six enumerated functions. The claims merely establish those functions as the underlying network environment in which the mobile station operates.
Claims 1 and 18 are similar to a claim we found definite in
Microprocessor Enhancement Corp. v. Texas Instruments, Inc.,
A method of executing instructions in a pipelined processor comprising: [structural limitations of the pipelined processor]; the method further comprising: [method steps implemented in the pipe-lined processor].
Id.
at 1374 (quoting U.S. Patent No. 5,471,-593 col. 129 1. 27-col. 130 1. 32 (filed Jan. 21, 1994)). The
MEC
claim made clear that direct infringement was limited to practicing the claimed method in the pipe-lined processor possessing the required structure.
Id.
Claims 1 and 18, likewise, make clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed apparatus: the mobile station— which must be used in a particular network environment. Both the
MEC
claim and the claims in this case feature what the
MEC
court called a “preamble-within-a-preamble’’ format.
Id.
Although the
C.
Finally, IPCom moves that we take judicial notice of several third-party wireless-technology patents that it claims would be jeopardized if we were to hold claims 1 and 18 indefinite. Appellee’s Br. 33-34. We deny the motion as moot because the claims are definite.
III.
HTC argues, as an alternative basis for invalidity, that claims 1 and 18 fail to disclose corresponding structure sufficient to satisfy the principles governing means-plus-function claims. Although the district court was wrong when it found that a processor and transceiver alone supplied sufficient structure, HTC failed to preserve the argument that the specification fails to disclose an algorithm sufficient to transform the processor and transceiver into a special-purpose computer designed to implement the clаimed functions. HTC argued only that the specification’s reference to cellular telephones was insufficient to convey use of a processor and transceiver with sufficiently complex hardware to perform the handover function described in claims 1 and 18.
A.
The mobile station recited in paragraphs 7-8 of claims 1 and 18 is a “mobile station comprising ... an arrangement for reactivating the link with the first base station if the handover is unsuccessful.” The parties agree that the term “arrangement for reactivating” is a means-plus-function limitation.
A patentee may express an “element in a claim for a combination” “as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.” 35 U.S.C. § 112 ¶ 6. When a patentee invokes such “means-plus-function” claiming, the “claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id.
To determine whether a means-plus-function limitation is definite, a court applies a two-step analysis. First, a court identifies the particular claimed function.
Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
After identifying the particular claimed function, a court, in the second step of the analysis, looks to the specification and identifies the corresponding structure, material, or acts that perform that function.
Id.
(citation omitted). The district court concluded that the structure corresponding to the “arrangement for reactivating” limitation was “a processor connected to a transceiver and programmed to formulate and send messages to reactivate the link, if the handover is unsuccessful.” Although the specification does not literally disclose a processor and transceiver, the district court stated that it had “no doubt that one skilled in the art would immediately deduce that a processor
On this point, we agree with the district court. Whether a specification adequately sets forth structure corresponding to a claimed function is viewed from the perspective of one skilled in the art.
Budde v. Harley-Davidson, Inc.,
HTC argues that the district court and IPCom placed too much stock in Dr. Rose’s testimony. Dr. Rose, HTC argues, merely observed during his deposition that processors and transceivers were among the components found in mobile phones at the time of invention. Dr. Rose, moreover, specifically opined in a declaration that the patent did not disclose or suggest to one skilled in the art any specific structural configuration for a processor and transceiver to perform the recited functions.
The district court did not clearly err in relying on Dr. Rose’s dеposition testimony. Although indefiniteness is a question of law, we review a trial court’s factual findings in support of its legal conclusion for clear error.
Tech. Licensing Corp. v. Videotek, Inc.,
Another expert, Dr. Vijay Madisetti, further supported the district court’s conclusion. Dr. Madisetti referred to one scenario, described in thе specification, in which it is determined that a handover is required because the quality of the link between the mobile station and first base station has fallen below a certain value. That scenario, Dr. Madisetti opined, “tells one of ordinary skill in the art that the [mobile station] is able to receive messages through the use of a transceiver and monitor the link quality, which processors typically do in assessing whether the quality of such signals falls below a certain level.” Dr. Madisetti went on to explain that various other functionalities described in the patent conveyed to one skilled in the art that a processor was needed for accomplishing the claimed functions. The expert testimony supports the district court’s conclusion.
HTC also contends that, even if one skilled in the art would know that use of a processor and transceiver were needed, one would not understand exactly how that processor and transceiver would be configured — e.g., what its precise “circuitry,” “components,” or “schematics” would be or what “controllers” would be employed.
HTC Corp. v. IPCom GmbH & Co.,
No. 08-cv-1897 (D.D.C. Nov. 24, 2009), ECF No. 132 at 17-18
(“HTC’s Opening Markman Br.”);
ECF No. 180 at 155
(“Markman Hr’g Tr.”).
Our case law does not require that level of hardware disclosure, however. As long as a sufficient algorithm describing how a general-
Contrary to HTC’s view, examination оf the specification from the perspective of a skilled artisan does not convert an indefiniteness inquiry into an enablement inquiry. We are not analyzing whether a skilled artisan could have devised a processor and transceiver — with all necessary component parts — but whether a skilled artisan would have understood the specification as requiring a processor and transceiver. This approach is consistent with our precedent.
Tech. Licensing Corp.,
The district court, in sum, did not err in finding that the specification disclosed a processor and transceiver to one of skill in the art, and that no additional hardware disclosure was needed.
B.
The district court misstated the law, however, when it stated that disclosure of а processor and transceiver alone was sufficient to provide structure to these claims. The processor and transceiver amount to nothing more than a general-purpose computer. We have “consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.”
Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,
Rather than relying on the processor and transceiver, IPCom had to identify an algorithm that the processor and transceiver execute.
Id.
at 1333 (citing
WMS Gaming, Inc. v. Int’l Game Tech.,
C.
The district court failed to analyze the existence and adequacy of an algorithm in the '830 patent because HTC never asked it to do so. HTC never attacked the adequacy of the algorithm to which IPCom pointed before the district court. HTC consistently focused on the lack of hardware rather than the lack of an algorithm. In its opening claim construction brief, for example, HTC argued that the “recited means-plus-function limitations [are] indefinite for failure to disclose ... corresponding structure ...” because “nowhere in the '830 patent is there any disclosure of any circuitry, structure, components or schematics of а mobile phone for performing the recited functions.”
HTC’s Opening Markman Br.
17. HTC mentioned nothing about an algorithm in its indefiniteness
During the Markman hearing, HTC once more focused on what it perceived as gaps in the hardware described, arguing that the patent should have explained how the hardware was structured and which piece of the hardware accomplished the base station handover. Markman Hr’g Tr. 155. Thus, in comparing the text of the '830 patent to other patents describing processors, HTC’s counsel noted that, in those other disclosures, “[t]here’s a codec for coding and decoding. There’s analogue to digital converters, there’s all these controllers.... Sometimes they’re bundled up into different units in some ways. Sometimes they are separate. There’s lots of different ways to do this and the patent has to set forth something to tell you how to do it.” Id. Notably, despite IPCom’s citation to WMS Gaming and its assertion that the patent’s disclosed algorithm completed the allegedly missing structure, HTC argued that disclosure of an algorithm was inadequate in the absence of a more detailed description of the computer hardware into which the algorithm would be programmed. Id. at 151. And, when the district court later asked about “the argument that ... the algorithm itself ... is the structure,” HTC’s counsel stated that the argument was irrelevant because the '830 patent is not a “software patent.” Id. at 172.
The argument that the '830 patent failed to disclose an adequate algorithm did not emerge until HTC filed its responsive brief on appeal. Even then, moreover, HTC tied its attack on the algorithm to its attack on the generic nature of the hardwаre disclosure. Thus, HTC acknowledged for the first time that “the corresponding ‘structure’ may take the form of a particular software program or algorithm that converts a disclosed general-purpose processor into a machine that performs the specific function claimed.” Appellee’s Br. 46. HTC then argued that “the patent [in suit] does not describe how the mobile station generates those messages — -just the results of some undescribed algorithms operating on some undescribed hardware. It is not enough merely to describe ‘the results of the operation of an unspecified algorithm.’ ”
Id.
at 47 (quoting
Aristocrat,
As a general rule, an appellate court does not consider an issue not passed upon below.
Singleton v. Wulff,
An appellate court, however, has discretion to consider an issue for the first time on a case-by-case basis.
Singleton,
None of those circumstances exists here. The necessity of an algorithm has been well established at least since WMS Gaming, a 1999 case. This case does not alter that doctrine. HTC had an opportunity to argue the algorithm issue— at IPCom’s invitation — during briefing on claim construction and HTC’s summary judgment motion, and at oral argument before the district court. Because the parties have not developed the algorithm issue, moreover, we cannot resolve that issue now on the theory that its proper resolution is beyond any doubt. Indeed, if we were to remand the issue, the district court would have to conduct additional fact finding, and the parties potentially would have to conduct additional expert discovery. Remand, in sum, would stymie judicial economy because it would require the district court and the parties to invest resources in an issue that could have beеn raised for the first time below.
This waiver case is distinct from another involving algorithmic structure corresponding to a means-plus-function limitation decided by this court. In
Harris Corp. v. Ericsson Inc.,
Ericsson argued to the district court and this court that the claim should be construed to require a two-step algorithm of “producing nondiscrete estimates and deriving discrete decisions therefrom.”
In refusing to find waiver in Harris, we focused on the fact that Ericsson had asserted throughout the litigation that the claims required a two-step algorithm: the very point on which the case ultimately turned. There, we concluded that Ericsson’s modified articulation of its claim construction yielded nothing more than an “infinitesimal tweak in scope, devoid of any practical consequence.” Id. at 1252 n. 3. Here, by contrast, HTC emphasized the absence of circuitry, structure, and processor components in the district court, but now asserts the absence of any disclosure of a pertinent algorithm. HTC’s argument on appeal is a concept distinct from what it argued below; there is no way we legitimately could characterize HTC’s course change as a mere “tweak,” infinitesimal or otherwise, to the position it took in the trial court.
We agree that the structure necessary to support the functional claiming in claims 1 and 18 of the '830 patent must include an adequate algorithm describing how a processor and transceiver can perform the claimed function. Because HTC never attacked the adequacy of the algorithm in the '830 patent when given an opportunity to do so before the district court, however, HTC cannot lodge that attack for the first time here.
IV.
We reverse the district court’s grant of summary judgment to HTC on the ground that claims 1 and 18 cover hybrid subject matter. We hold, moreover, that the district court correctly concluded that the '830 patent’s specification adequately disclosed a processor and transceiver for use in performing the function claimed in claims 1 and 18. Although the district court was incorrect to assume that a processor and transceiver are alone sufficient under 35 U.S.C. § 112 ¶ 6 to provide structure for a functional claim such as that at issue here, HTC failed to preserve any attack on the algorithm that IPCom asserted provided additional needed structure. We, therefore, decline to overturn the district court’s denial of summary judgment on the alternative ground of indefiniteness or to order that the record be reopened on that motion.
REVERSED
Notes
. When asked at oral argument before this court where HTC had challenged the adequacy of the algorithm in the '830 patent when before the district court, HTC's counsel pointed to a footnote in its opening Markman brief. That footnote, however, again only focused on the alleged lack of "schematics[,] ... components or circuitry....” HTC's Opening Mark-man Br. 18 n.3.