Invt Spe LLC v. ItcInvt Spe LLC v. Itc
JEFFREY A. LAMKEN, MoloLamken LLP, Washington, DC, argued for appellant. Also represented by LUCAS M. WALKER; SARA MARGOLIS, New York, NY; JOHN K. HARTING, BRENDA L. JOLY, CYRUS ALCORN MORTON, CHRISTOPHER SEIDL, Robins Kaplan LLP, Minneapolis, MN.
RICHARD P. HADORN, Office of the General Counsel, United States International Trade Commission, Washington, DC, argued for appellee. Also represented by DOMINIC L. BIANCHI, WAYNE W. HERRINGTON.
CHARLES M. MCMAHON, McDermott, Will & Emery LLP, Chicago, IL, argued for all intervenors. Also represented by MARTIN BADER, STEPHEN S. KORNICZKY, ERICKA SCHULZ, Sheppard, Mullin, Richter & Hampton LLP, San Diego, CA; EDWARD V. ANDERSON, Palo Alto, CA.
Before NEWMAN, TARANTO, and CHEN, Circuit Judges.
BACKGROUND
Complainant INVT SPE LLC (INVT) appeals from a determination by the International Trade Commission (Commission or ITC) in Investigation No. 337-TA-1138, Certain LTE- and 3G-Compliant Cellular Communications Devices, that respondents Apple Inc., HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA) Inc. did not violate
We affirm the Commission‘s determination that there was no section 337 violation with respect to the ‘439 patent because INVT failed to show infringement and the existence of domestic industry. We agree with INVT‘s argument on appeal that the asserted ‘439 claims are drawn to “capability.”
We find the Commission‘s determination with respect to the ‘590 patent moot based on the patent‘s expiration, and thus vacate and remand as to that patent.
A. ‘590 Patent
Before this decision issued, the ‘590 patent expired on March 5, 2022. See Letter from the Office of the General Counsel Attorney for ITC, ECF No. 78; Appellant‘s Suppl. Br. 1, ECF No. 84. For the reasons discussed, infra, the appeal as it relates to the ‘590 patent is moot. We vacate the Commission‘s decision as to that patent and remand with instructions to dismiss as moot the relevant portion of the complaint.
B. ‘439 Patent
The ‘439 patent relates to wireless communication systems, specifically an improvement to adaptive modulation and coding (AMC), which is a technique used to transmit signals in an orthogonal frequency division multiplexing (OFDM) system. ‘439 patent col. 1 ll. 7–14.
In an OFDM system, the frequency bandwidth is divided into subcarriers. A subcarrier is a narrow subdivision of a communication system‘s available frequency spectrum (bandwidth). Id. col. 1 ll. 25–26. Groups of subcarriers in neighboring positions within the frequency domain are referred to as subbands. Id. col. 2 ll. 18–22. AMC involves adjusting parameters, such as a modulation scheme or a coding rate, in response to changing conditions that impact the channel quality. Id. col. 1 ll. 34–52, 65–67. The prior art included AMC based on subcarrier and subbands divisions of the communication system bandwidth. See id. col. 1 l. 53 – col. 2 l. 49.
The ‘439 patent is directed to AMC based on subband groups. See id. col. 5 l. 9 – col. 6 l. 44, col. 7 l. 32 – col. 10 l. 26. This means that that the modulation scheme and coding rate are determined per subband group as the minimum unit of adaptivity, rather than per subcarriers or subbands. Id. col. 7 l. 32 – col. 12 l. 24; see id. col. 2 ll. 4–8; id. col. 2 ll. 12–25, col. 7 l. 65 – col. 8 l. 2, col. 8 ll. 41–48, col. 10 ll. 21–26. Subband groups are made up of multiple subbands, although not necessarily subbands in neighboring positions. See id. col. 7 ll. 43–46; col. 10 l. 26 – col. 11 l. 3. A subband group might consist of a plurality of neighboring subbands, id. col. 10 ll. 33–49, Fig. 8, or a plurality of subbands at predetermined intervals, id. col. 10 ll. 50–61, Fig. 9, or even all of the subbands as a single subband group, id. col. 10 l. 62 – col. 11 l. 3, Fig. 10.
Claim 1 of the ‘439 patent recites:
1. A communication apparatus comprising:
[a] a channel estimating section that carries out a channel estimation per subband;
[b] a parameter deciding section that decides modulation parameters and coding parameters per subband group comprised of a plurality of the subbands, based on a result of the channel estimation per subband;
[c] a parameter information transmission section that transmits, to a communicating party, parameter information indicating the modulation parameters and the coding parameters decided at the parameter deciding section;
[d] a receiving section that receives a signal containing data modulated and encoded on a per subband group basis at the communicating party using the modulation parameters and the coding parameters of the parameter information transmitted at the parameter information transmission section; [e] a data obtaining section that demodulates and decodes the received signal received at the receiving section on a per subband group basis using the modulation parameters and the coding parameters decided at the parameter deciding section, and obtains the data contained in the received signal; and
[f] a pattern storage section that stores in advance patterns for selecting subbands constituting the subband groups wherein the parameter deciding section decides the modulation parameters and the coding parameters per subband group comprised of the subbands selected based on the patterns stored
in the pattern storage section.
(bold bracketed letters added).
A “communication apparatus,” as recited in claim 1, can be a user device, and a “communicating party” can be a base station. See id. col. 2 ll. 54–60 (describing a base station as the transmission side and a mobile terminal as the receiving side). The ‘439 patent describes a user device (receiving side) determining the adaptive parameters and sending the parameters to the base station (transmission side); the base station encoding data using those parameters and sending the encoded data back to the user device (receiving side); and the user device (receiving side) decoding the data using those parameters. See id. col. 9 l. 13 – col. 12 l. 24.
C. LTE Standard
The accused devices are communication devices, including smartphones, tablets, smart watches, and computers, that use the 3G and LTE1 standards. FID, at *2, *9. INVT‘s infringement theory for the ‘439 patent is based in part on alleging that the asserted claims of the ‘439 patent are standard essential, i.e., subject matter essential to practicing the LTE standard. Id. at *58.
In the LTE standard, the smallest portion of the communications spectrum is referred to as a subcarrier, like in the ‘439 patent. However, a group of subcarriers (subbands, in the ‘439 patent) is referred to as a “resource block.” See Appellant‘s Br. 35; Intervenors’ Br. 12. A group of resource blocks (subband groups, in the ‘439 patent) is referred to as “LTE subbands.” See Appellant‘s Br. 35; Intervenors’ Br. 12.
At a high level, under the LTE standard, the user device chooses one of 16 possible combination of modulation and coding parameters, per LTE subband, to send to the base station. See FID, at *67. The base station, in turn, selects a combination of modulation and coding parameters, but from a much greater number of possible combinations. See id. at *60–61 (noting almost 3,000 possible values for calculating the coding parameters). As discussed later, there is no evidence in the record that at least one modulation and coding parameter combination that the base station can select matches a combination that the user device can select. See infra Part II.C.1 & C.2. After selecting its parameters, the base station modulates and encodes the data using those selected parameters and then sends the modulated and encoded data and its selected parameters to the user device. FID, at *59–61. The user device demodulates and decodes the data using the parameters selected by the base station. Id.
message. Id. at *67; see Intervenor‘s Br. 60; Appellant‘s Br. 37 (citing J.A. 10867). The DCI message includes an assignment of resource blocks, which tells the user device which portions of the bandwidth to use to receive data from the base station. FID, at *67. The DCI message also includes an MCS4 index—one MCS value for the entire resource block assignment. Id. at *59, *68. There are 32 possible values for the MCS index, each one associated with a modulation scheme (Qm)5 and a TBS6 index. Id. at *59. The TBS index corresponds to a TBS table, which includes almost 3,000 entries. Id. at *60–61.7 Based on the resource block assignment and the TBS value, the user device calculates the coding parameter. Id. at *60. The FID depicts and discusses in detail the LTE standard‘s CQI, MCS, and TBS tables. See id. at *59–61.
In summary, based on the DCI message, MCS index, TBS index, and the resource block assignment, the user device receives information about the modulation and coding parameters that were selected by the base station to modulate and encode the data that the user device receives from the base station. Id. at *68. The user device demodulates and decodes the received data using the modulation and coding parameters selected by the base station. Id. Regardless of the number of LTE subbands included in the resource block assignment, one set of modulation and coding parameters is used to modulate and encode and demodulate and decode the data. Id. (citing J.A. 10871–74; J.A. 11861, 11864–65, 11867). As will be discussed, the evidence does not show that the user device ever receives data modulated and encoded with the same parameters initially selected by the user device. See infra Part II.C.1 & C.2.
D. ALJ‘s Final Initial Determination (FID)
Relevant to the disposition of this appeal, the ALJ‘s FID found that the accused
In the proceeding below, the dispute over whether the asserted ‘439 claims are essential to practicing the LTE standard was limited to limitations [d] and [e]. See J.A. 1713–14 (“Respondents do not dispute the essentiality or infringement of elements 1(a), 1(b), 1(c), 1(f), and 1(g). Tr. (Acampora) 1907:21–1908:10 (‘Q. Right. You limited your opinions to 1.d and 1.e in Claim 1, right? A. As far as my opinions on noninfringement [and essentiality] are concerned, that‘s correct.‘).” (emphasis omitted)); FID, at *58–63 (analyzing whether limitations [d] and [e] are essential to the LTE standard).
Prior to the evidentiary hearing, the ALJ addressed limitation [e], which recites a communication apparatus‘s “data obtaining section that demodulates and decodes the received signal . . . using the . . . parameters decided at the parameter deciding section” of the communication apparatus. J.A. 252–54 (Order No. 52). Although the ALJ declined to provide an explicit construction, the ALJ explained that the claim limitation could be met even when the parameters used to demodulate and decode are decided by the communicating party (i.e., a base station), so long as the communicating party chooses “those very parameters” decided by the communication apparatus (i.e., a user device) for communication between the two entities. J.A. 254 (emphasis added). The ALJ reasoned that the plain language dictated the result, noting that “claim 1 does not require the [user device‘s] ‘parameter deciding section’ to serve as the final or ultimate decision maker with respect to exchanges that occur in the communication system . . . As INVT asserted, ‘Claim 1 is silent on the operation of the communicating party.‘” J.A. 254 n.3.
With this interpretation, the ALJ held that INVT failed to show claim 1 was essential to the LTE standard. FID, at *58–63. Specifically, the ALJ found that INVT “failed to present evidence that the modulation and coding parameters corresponding to the CQI index the [user device] initially reports to the base station are the ‘very parameters’ that the base station ultimately determines are appropriate” to meet limitations [d] and [e]. Id. at *58 (internal footnote omitted). Under the LTE standard, the CQI transmitted from an LTE user device includes only 16 possible modulation and coding parameter combinations, whereas there is a “much larger” number of possible modulation and coding parameter combinations from which the LTE base station can select and send to the user device as part of the DCI message. Id. at *60–61. The ALJ found that “even if the base station happens to consider the CQI reported by the [user device], it does not appear to be likely, must [sic] less required, for the base station to choose the ‘very parameters’ initially decided by the [user device].” Id. at *61.
The ALJ also rejected INVT‘s argument that, despite the significant mismatch between the possible parameters the user device is able to select and the base station is able to select, the claim was standard
Because INVT could not rely on the accused products’ compliance with the LTE standard to establish infringement, the ALJ stated that INVT was required to show that actual operation of the accused products meets every limitation of the asserted claims. Id. at *63. Under this analysis, the respondents’ arguments were focused on limitations [d] and [e] not being met by the accused products. Id. at *67; id. at *71–72 (noting parties’ agreement and respondents’ lack of argument for limitations [a] through [c]); see also id. at *73–74 (noting INVT‘s lack of evidence and argument separate from the standard-essential ones for limitation [f]). The ALJ agreed with respondents that the accused products did not meet limitations [d] or [e] because they did not receive data modulated and encoded “on a per subband group basis” nor demodulate and decode data “on a per subband group basis.” Id. at *67–69. Specifically, the per-subband-group limitation was not met because a single MCS (indicating a single modulation and coding scheme) was used and sent to the user device for an entire resource block assignment (spanning one or multiple LTE subbands, i.e., subband groups). Id. at *67–69. The ALJ also found that limitation [e] was not met based on INVT‘s failure to show that the information in the DCI received and used by the user device from the base station is informed by the CQI that the user device previously transmitted to the base station. Id. at *69–70. The evidentiary failure was because of a failure to analyze source code governing the operation of the base station (as opposed to the source code of the user device). Id. at *70.
Relying on a similar analysis, the ALJ found that INVT failed to meet the technical prong of the domestic industry requirement. First, even if the representative product, a Samsung Galaxy S9, complies with the LTE standard, claim 1 is not standard essential. Id. at *73. Second, INVT failed to show that the S9‘s actual operation meets the “on a per subband group basis” requirement of limitations [d] and [e]. Id. at *74.
INVT appeals. We have jurisdiction under
DISCUSSION
I
The ‘590 patent expired on March 5, 2022. The ITC has a limited statutory mandate and can only grant prospective relief. Tessera, Inc. v. Int‘l Trade Comm‘n, 646 F.3d 1357, 1371 (Fed. Cir. 2011); Tex. Instruments, Inc. v. Int‘l Trade Comm‘n, 851 F.2d 342, 344 (Fed. Cir. 1988) (citing
INVT argues that its appeal regarding the ‘590 patent is not moot even after the patent‘s expiration because of pending district-court litigation that was stayed in favor of the ITC investigation. Appellant‘s Suppl. Br. 4–5, ECF No. 84. However, we have previously held that because ITC decisions on patent infringement or invalidity do not have preclusive effect on district court litigation, a decision by this court does not have enough “collateral consequences” to avert mootness, even though a pending district court case involves the same issues. Hyosung TNS v. Int‘l Trade Comm‘n, 926 F.3d 1353, 1358–59 (Fed. Cir. 2019) (citing Bio-Technology General Corp. v. Genentech, Inc., 80 F.3d 1553, 1563–64 (Fed. Cir. 1996); then citing Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1568–69 (Fed. Cir. 1996); and then citing Tandon Corp. v. U.S. Int‘l Trade Comm‘n, 831 F.2d 1017, 1019 (Fed. Cir. 1987)).
INVT relies on Microsoft and Powertech. Appellant‘s Suppl. Br. 5, ECF No. 84 (quoting Microsoft Corp. v. Int‘l Trade Comm‘n, No. 2012-1445, 2014 WL 10209132 (Fed. Cir. Jan 3, 2014) (per curiam); and then citing Powertech Tech. Inc. v. Tessera, Inc., 660 F.3d 1301 (Fed. Cir. 2011)). Neither helps INVT avoid mootness. Microsoft is a nonprecedential opinion, where the patent expired after the court‘s decision on the merits, and no party raised the issue of the patent‘s imminent expiration or mootness until after the petition for rehearing en banc was denied and two days before the mandate was set to issue. 2014 WL 10209132, at *2; see Hyosung, 926 F.3d at 1359 n.3; Microsoft Corp., No. 2012-1445, ECF. No. 104. Powertech did not involve mootness. It addressed the fact that a Federal Circuit decision on an appeal from the ITC can have precedential effect on district courts as to certain other issues but also reaffirmed that ITC determinations of patent infringement and validity do not have preclusive effect on district courts, even when affirmed by the Federal Circuit. 660 F.3d at 1307–08 (explaining that district courts were bound by the legal precedent set forth in the prior decision Tessera, that a licensed sale does not become unauthorized and infringing merely because the licensee falls behind on royalty payments). Here, like in Hyosung, we see no “potential for collateral consequences resulting from the possible stare decisis effect of our decision, if precedential” that prevents the appeal from becoming moot. 926 F.3d at 1359.
Because the ‘590 patent portion of this appeal is mooted due to the intervening happenstance of the patent‘s expiration, we vacate the ITC‘s decision as to that patent and remand with instructions to dismiss as moot the relevant portion of the complaint. See Tessera, 646 F.3d at 1371; U.S. Bancorp Mortg. Co. v. Bonner Mall P‘ship, 513 U.S. 18, 25 & n.3 (1994); United States v. Munsingwear, Inc., 340 U.S. 36, 39–40 (1950); see also Oral Arg. 48:48–49:18.
II
On appeal, INVT argues that the ALJ erred in finding that the accused products do not infringe claim 1 of the ‘439 patent based on a combination of misinterpreting the claim, to require performance by (not merely capability of) an accused product,
INVT‘s arguments do not prevail. We agree with INVT that the asserted ‘439 claims are drawn to “capability,” and not to actual operation as the ALJ found. However, INVT has failed to show that the accused LTE-compliant devices have the capability required by the claims. Therefore, whether under a theory of the claims being standard essential or the claims being met by the accused devices, INVT has not proven infringement.
A
According to INVT, claim 1 of the ‘439 patent requires only that the accused LTE-compliant devices are capable of receiving, from a base station, data modulated and encoded with the same parameters decided by the user device, and capable of demodulating and decoding that data using those parameters. See Appellant‘s Br. 62–65.
Our cases have held that sometimes a device only needs to be “capable of operating” according to a claimed limitation, for a finding of infringement. See Finjan, 626 F.3d at 1204. Other times, a device does not infringe unless it actually operates as claimed. See ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018) (discussing Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984 (Fed. Cir. 2009)). Whether infringement requires actual performance of the recited functions by the accused device depends on the claim language. See Finjan, 626 F.3d at 1204 (citing Fantasy Sports Props. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002)); see also ParkerVision, Inc., 903 F.3d at 1361 (articulating a distinction between configuration-type and capability-type claims).
Possibly the most straightforward example of this is the common distinction between method claims and apparatus claims. See, e.g., Finjan, 626 F.3d at 1203–05. In Finjan, this court held that Finjan‘s “non-method claims describe capabilities without requiring that any software components be ‘active’ or ‘enabled.‘” Id. at 1204–05. The court, therefore, upheld a finding of infringement for products in which the accused proactive-scanning software module was locked when sold by the defendants. Id. at 1205; see also id. at 1203–04 (distinguishing Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1291 (Fed. Cir. 2000), in which the accused software product required a manual step to activate the patented feature, but the claim at issue was a method claim). In contrast, Finjan‘s method claims were not infringed by the accused products because those claims required actual performance of each claimed step; there was no evidence that proactive scanning was performed in the United States. Id. at 1206 (“To infringe a method claim, a person must have practiced all steps of the claimed method.” (quoting Lucent Techs. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009))). Cf. ParkerVision, Inc., 903 F.3d at 1363 (similarly differentiating apparatus claims and method claims in the patent invalidity context).
However, differences exist between apparatus claims as well, depending on the claim language. We have construed some apparatus claims to require an infringing device to actually perform and operate according to the functional terms recited in the claim. The intervenors cite two such cases, Cross Medical and Ball Aerosol. See
Ball Aerosol and Cross Medical both involve mechanical apparatus claims. According to these two cases, intervenors argue, the ‘439 claims should be construed to require actual operation of the functions recited in limitations [d] and [e] in order for there to be infringement. Intervenors’ Br. 64–69. In Cross Medical, we rejected the argument that the limitation “anchor seat means which has a lower bone interface operatively joined to said bone segment” could be met merely by an interface that was capable of contacting bone. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1305–06 (Fed. Cir. 2005). Instead, the claim language “operatively joined” required that the interface and the bone segment be connected and in contact such that the device effectively performed posterior stabilization. Id. at 1306. Direct infringement did not occur until the device was connected to the bone, which a surgeon performed, not the allegedly infringing device maker. Id. at 1310–14.
In Ball Aerosol, the apparatus claim recited a specific physical relationship between elements of a candle holder, in which protrusions in the bottom of a candle holder are resting upon the cover of the candle tin, the cover having been removed from the rest of the tin. Ball Aerosol, 555 F.3d at 994–995. The claim recited not only a particular physical relation between two components of the device, but included a limitation resembling a particular use of those components. Id. at 987–88 (“the cover, when removed, being placed upon the surface with the holder being set upon the cover for the cover to support the holder above the surface“). We ultimately construed the Ball Aerosol claim to be a configuration-type claim, which required showing that the candle holder was actually placed on its cover. Id. at 995 (finding no infringement although the accused Travel Candle had a removable cover that the candle holder was capable of being placed on, because there was no evidence that the Travel Candle was in fact ever placed in such a configuration). The candle holder makers and sellers did not infringe the claim because no infringement occurred until the candle holder was positioned on top of the cover.
In both of those cases, actual operation of arranging elements in a particular way was required because of the claim language. Neither case involved claim language resembling the language in INVT‘s claims. Intervenors emphasize that the Cross Medical claims included the present-tense verb “has,” similar to the present-tense verbs “demodulates” and “decodes” in the ‘439 claims. But this court‘s construction in Cross Medical was based on “operatively joined,” not “has.” Intervenors do not provide any analysis of Ball Aerosol. While the Ball Aerosol claim is atypical for its recitation, within a mechanical device claim, of how a component is to be used or operated—somewhat akin to computer device claims, which commonly include functional language—it ultimately has little relevance for construing INVT‘s claims.
Because of the nature of the technology, computer and software claims typically use functional language to define the invention. Functional language is used to define and delimit otherwise generic or interchangeable general purpose computer hardware, which can be programmed to perform an unlimited array of functions. In other words, the recited operative steps a computer- or software-based device undertakes is what defines what a computer-implemented invention is. We have frequently construed such functional language
In Finjan, accused products sold with locked software modules still infringed the device claims because the claims described capabilities and did not require software components be active or enabled. Finjan, 626 F.3d at 1204–05. The claims used “for performing“-type claim language—“a logical engine for preventing execution,” “a communications engine for obtaining a Downloadable,” and “a linking engine . . . for forming a sandbox package.” Id. at 1205. Based on the language, we held that the system claims recite “software components with specific purposes.” Id. Because defendants admitted that program code for the relevant function (proactive scanning) was literally present on all accused devices, the claim was infringed “in the same way that an automobile engine for propulsion exists in a car even when the car is turned off.” Id. at 1205. The presence of that programming in the accused products was all that was necessary for establishing infringement.
But “for performing“-type language like in Finjan is not the only way for a computer-implemented claim to be directed to capability, as intervenors contend. See, e.g., Intervenors’ Br. 66–68. In Silicon Graphics, the computer apparatus claim recited “a rasterization circuit coupled to the processor that rasterizes the primitive according to a rasterization process which operates on a floating point format.” Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 788 (Fed. Cir. 2010) (emphasis added and omitted). The accused product was a graphics processor that could not perform rasterization unless combined with an operating system. Id. at 794. We held that infringement did not turn on whether the accused product was actually performing the rasterization but, simply, whether it included a rasterization circuit for doing so. Id. at 795. We held that the apparatus claim directed to a computer, claimed in functional terms, is nonetheless infringed so long as the product is “designed ‘in such a way as to enable a user of that [product] to utilize the function . . . without having to modify [the product]‘“—i.e., capable of the functions. Id. (original alterations) (quoting Fantasy Sports, 287 F.3d at 1118). We noted that “[w]here, as here, a product includes the structural means for performing a claimed function, it can still infringe ‘separate and apart’ from the operating system that is needed to use the product.” Id. Both appellee and intervenors ignore the fact that Silicon Graphics treats “that rasterizes” as capability-type language. See Appellee‘s Br. 53 (noting other parts of the claim which use “for performing“-type language); Intervenors’ Br. 67–68 (same, conflating the rasterization circuit and the processor, to which the rasterization circuit is coupled).
The FID relied primarily on Finjan and the absence of “for performing“-type claim language, providing little else for why the ‘439 claims require actual operation. The intervenors argue that simple-present-tense words are enough to require actual operation, see Intervenors’ Br. 65, 67, but Silicon Graphics shows that is not true.8 In fact, based on just claim language, we
Like with the claims in Finjan and Silicon Graphics, we find that the asserted ’439 claims are directed to capability—as in a device that includes “software components with specific purposes,” programmed to have the ability to perform the operative steps: namely, a “receiving section” that can receive a signal containing data modulated and encoded using the parameters decided at user device, and a “data obtaining section” that can demodulate and decode the signal using the parameters decided at the user device. Finjan, 626 F.3d at 1204–05. In other words, the claims recite a device with the capability of performing the recited functions when in operation without any modification or further programming.
B
While we agree with INVT that its claims are “capability” claims, that does not mean we agree with its conception of what necessarily are the capabilities of an infringing device. We thus find it necessary to further construe the asserted ’439 patent claims to clarify that determining a user Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001). Similarly, in High Tech Medical Instrumentation, the court held that infringement could not be based on an unintended alteration of the device. High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1555 (Fed. Cir. 1995). In ViaTech, a nonprecedential opinion, the claims required a dynamic license database and it was undisputed that the accused product lacked a database. The fact that the product had the ability to eventually create or generate a database (with the installation of Windows on the device) could not support a finding of infringement. ViaTech Techs. Inc. v. Microsoft Corp., 733 F. App’x 542, 551–52 (Fed. Cir. 2018). These cases do not inform whether the ’439 claims are correctly construed to be directly infringed by the sale of a device that has the pre-existing capability, without modification, to perform the claimed functions.
device’s capability involves analyzing a base station’s operation. INVT argues that the Commission erred by considering the operation of base stations in determining whether the asserted ’439 claims were infringed. See Appellant’s Br. 61 (“[T]he asserted claims are directed to devices, not base station . . . . Whether a base station is required to take certain actions is irrelevant to whether the accused user devices meet the claim limitations.”). The intervenors argue, on the other hand, that whether the accused products are capable of meeting the claim limitations depends on how the base stations operate. See Intervenors’ Br. 71 (“[W]hether Respondents’ product do (or even can) demodulate/decode data using the parameter combinations from the CQI table depends on whether base stations themselves even can modulate/encode data using those combinations.”). We agree with the intervenors that, although the asserted ’439 claims do not include the base station itself, the base station’s operation is a part of the infringement analysis.
The base station is part of “the environment” in which the user device must function. Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1374 (Fed. Cir. 2011). The claims have specific requirements for the data signal that the user device’s receiving section and data obtaining section handle and process when the device is activated and put into operation. That received data signal must be modulated and encoded with specific parameters—and not by the claimed user device but by a separate base station. See ’439 patent, claim 1, limitation [d] (“a signal containing data modulated and encoded on a per subband group basis at the [base station] using the modulation parameters and the coding parameters of the parameter information transmitted at the parameter information transmission section”). To understand whether a user device can ever receive a data signal with the particularized characteristics set forth in the claim, it is necessary to know whether the base station (i.e., the communicating party) is capable of transmitting that particular type of data signal to the user device. Therefore, although the recited base station is not “a limitation on the claimed invention itself,” Nazomi Commcn’s, Inc. v. Nokia Corp., 739 F.3d 1339, 1345 (Fed. Cir. 2014), in the sense that an infringer would not need to, for instance, use, make, or sell the base station, the base station’s operation affects whether the claims are met, see, e.g., Advanced Software Design, 641 F.3d at 1373–74.
In Advanced Software, the claimed invention was for validating a check, to prevent check fraud, and involved either decrypting or encrypting information on the check. The preamble of the claim set out that the check included “selection information [that] is encrypted” to generate a control code and a “control code [which] is printed on the [check].” We held that these steps in the preamble “define[d] the financial instrument that the claimed system validates” as opposed to setting forth steps that would have to be performed by the accused infringer. Advanced Software, 641 F.3d at 1373–74 & 1374 n.1. Nevertheless, the accused infringer would infringe “only by validating checks that [had] been encrypted and printed in accordance with steps described in the preamble.” Id. at 1374.
Like in Advanced Software, the claimed device of the ’439 patent operates in an environment that involves actions of another device (the communicating party, i.e., the base station). The claimed device’s capability of performing the recited functions depends on being supplied a certain modulated and encoded signal, which, in turn, requires the supplier (the communicating party) to actually supply that signal. Because the communicating party (base station) generates the necessary environment, its operations must be known to determine whether the accused device infringes, i.e., is capable of performing the claimed functions.
C
We find, on this record, that INVT has not shown infringement, even though the claims are drawn to capability.
“[W]here claim language recites ‘capability, as opposed to actual operation,’
While we have noted the principle that “apparatus claims cover what a device is, not what a device does,” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990), as a useful reminder that the focus of apparatus claims is the structure and not the operation or use, with computer- or software-based inventions, apparatus claims routinely depend on functional claiming to describe the apparatus. It is the functional terms that distinguish a general purpose computer, “which can be programmed to perform very different tasks in very different ways” from a special purpose computer that is programmed to perform the particular function. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Therefore,
For the ’439 claims, the receiving section in limitation [d] and the data obtaining section in limitation [e] require receiving and handling a data signal from the base station that is modulated and encoded using parameters that were decided by the user device. INVT has failed to show that under the LTE standard, a user device ever receives and handles such a data signal, i.e., infringement based on the claim being essential to the standard, as discussed next in Subsection 1. Nor has INVT shown that the accused products receive such a data signal, i.e., infringement based on comparing the claims to the actual accused products, as discussed subsequently in Subsection 2. Those failures mean that infringement has not been shown.
1
Infringement can be proven based on an accused product’s use of an industry standard if the asserted claim is standard essential. See Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326–29 (Fed. Cir. 2010); Godo Kaisha IP Bridge 1 v. TCL Commcn’s Tech. Holdings Ltd., 967 F.3d 1380, 1383–84 (Fed. Cir. 2020).
Claims are standard essential if “the reach of the claims includes any device that practices the standard.” Fujitsu, 620 F.3d at 1327. In other words, “all implementations of a standard infringe the claim” and the “patent covers every possible implementation of a standard.” Id. 1327–28. In Fujitsu, this court explained that while “claims should be compared to the accused product to determine infringement,” “if an accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product.” Id. at 1327. Therefore, once a claim is found to be standard essential, that is sufficient to find infringement for any standard-compliant device. Id. at 1328.
Sometimes, “an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement. Or . . . the relevant section of the standard is optional, and standards compliance alone would not establish” infringement. Id. at 1327–28. In such instances, the patent owner cannot establish infringement simply by arguing that the product practices the standard but “must compare the claims to the accused products or, if appropriate, prove that the accused products implement any relevant optional sections of the standard.” Id. at 1328.
According to INVT, the ’439 claims are standard essential because, under the LTE standard, all LTE-compliant devices must be capable of receiving, demodulating, and decoding data using any of the available modulation and coding parameters in LTE, including parameters originally decided by the LTE-compliant user device. See Appellant’s Br. 62–63, 66–67. But because INVT failed to provide any evidence showing that a base station in fact ever sends the user device a data signal that is modulated and encoded using parameters that the user device decided, INVT has failed to prove the required capability.
INVT only provides two record citations for the contention that an LTE-compliant user device is necessarily capable of demodulating
The second citation is to the testimony of respondents’ expert, Dr. Acampora. See Appellant’s Br. 63 (citing J.A. 11918–19 (1918:1–1919:14)); see also FID, at *60, *66–67. Contrary to INVT’s characterization, this evidence does not show Dr. Acampora agreeing that the LTE standard contemplates that all LTE-compliant devices must be able to demodulate and decode using any of the available modulation and coding parameters of LTE, including the parameters originally decided by the device (i.e., the CQI parameters).
Preceding the portion of his testimony cited by INVT, Dr. Acampora testified that an LTE user device does not have to be able to demodulate and decode using the parameters shown in the CQI table, the table of the 16 combinations of parameters the user device can choose and transmit to the base station. J.A. 11915 (1915:2–6). It is true Dr. Acampora agreed that an LTE device must be able to demodulate QPSK, 16QAM, and 64QAM—in other words, the user device must be able to handle the modulation parameters listed in the CQI table. J.A. 11915 (1915:7–19).13 But, Dr. Acampora disagreed that the user device must be able to handle the coding parameters shown in the CQI table. J.A. 11915–17 (1915:20–1917:23). Dr. Acampora supported his conclusion with a detailed
In response, INVT’s counsel posed a hypothetical, which Dr. Acampora ultimately agreed with. This hypothetical included as an assumption that there is a MCS index that the base station can choose and send to the user device that could result in a coding parameter that is listed in the CQI table.14 Not fighting the hypothetical, Dr. Acampora agreed that if there is an MCS value, a corresponding TBS value, and resource block allocation that could ultimately result in a coding parameter that matches one listed in the CQI table (based on the appropriate calculations), the user device would be required to be able to decode using a CQI parameter. See J.A. 11917–19 (1917:24–1919:14). In other words: If the LTE standard provides for the user device to receive the same parameters the user device had decided, the user device that complies with the LTE standard must be capable of receiving the parameters it decided. Like the testimony of Dr. Vojcic, Dr. Acampora’s testimony does not show that the base station, operating under the LTE standard, ever selects the same parameters chosen by the user device, and that a standard-compliant user device ever receives data modulated and encoded with the claimed parameters.
The ALJ’s FID findings confirm there is no factual support for INVT’s position that LTE user devices necessarily have the ability to receive the claimed data signal modulated and encoded with the parameters originally decided by the user device. See FID, at *58–61 (citing J.A. 11881–84; J.A. 13157–63) (analyzing infringement based on interpreting the claims to require actual operation). Although the ALJ did
2
Because the ALJ found the claims were not essential to the LTE standard (which we agree with), the ALJ stated that INVT must prove that the “actual operation” of the accused products meets every claim limitation. We construe the claims to be directed to capability and, thus, to be more precise, INVT was required to prove infringement in the ordinary manner, which involves “compar[ing] the claims to the accused products.” Fujitsu, 620 F.3d at 1328. The same rationale detailed above regarding the requirement for reasonable capability again applies. An accused device cannot meet the required capabilities of the ’439 claims without evidence or agreement that the accused device performs, without modification, the recited functions at least once when it is in operation. We see no reversible error in the ALJ’s finding that INVT failed to prove that the accused products actually practice limitation [e], Appellee’s Br. 14, 16, for reasons discussed by the ALJ’s FID, FID, at *69–70.
The ALJ credited the intervenors’ expert’s testimony that without the benefit of reviewing source code governing the operation of the base station’s communication with an accused device, it was not possible to determine whether the DCI transmitted to the user device was “informed in any way by a CQI value that was sent earlier” from the accused user device. Id. at *70. It was, therefore, not possible to know whether the base station decides to use the “very parameters” included in the CQI without reviewing base station source code. Id. The ALJ relied on this significant evidentiary gap about whether and how the base station was influenced by the CQI code to find that INVT failed to prove by a preponderance of the evidence that the accused products practice limitation [e]. This evidentiary gap mirrors and reinforces our earlier observation that there is nothing to support INVT’s contention that the accused products are reasonably capable of receiving a data signal from the base station that is modulated and encoded using the parameters that are originally decided by the user device, and demodulating and decoding using the same parameters. Accordingly, we affirm the ALJ’s finding of noninfringement as supported by substantial evidence.
D
Because limitation [e] is not met due to INVT’s aforementioned failure of evidence, we need not address INVT’s other infringement
In addition, because the parties agree that the domestic industry findings fall with the noninfringement findings, Appellant’s Reply Br. 35, we affirm the Commission on finding no domestic industry.
Lastly, we note that Chenery does not preclude our affirmance of the Commission’s decision although we do so on a different claim construction (drawn to capability) than that underlying the Commission’s decision. See SEC v. Chenery Corp., 332 U.S. 194, 204 (1947). We make no factual findings or decisions on any element of discretion that is the factfinding agency’s to make. Relying on Dr. Acampora’s testimony quoted earlier, see supra Section C.1, the ALJ found that “it does not appear to be likely, must [sic] less required, for the base station to choose the ‘very parameters’ initially decided by the UE.” FID, at *61. The ALJ erred in construing claim limitations as requiring more than capability for infringement, a legal question. The ALJ’s factual findings for noninfringement, however, are equally applicable under the correct claim construction because, as a matter of law, reasonable capability cannot be proven in light of the total absence of evidence put on by INVT. Therefore, our affirmance is not “on a basis containing any element of discretion—including discretion to find facts and interpret statutory ambiguities—that is not the basis the agency used,” that would improperly “remove the discretionary judgment from the agency to the court.” Koyo Seiko Co. v. United States, 95 F.3d 1094, 1101 (Fed. Cir. 1996) (quoting ICC v. Brotherhood of Locomotive Engineers, 482 U.S. 270, 283 (1987)); see also Mayfield v. Nicholson, 444 F.3d 1328, 1336 (Fed. Cir. 2006) (noting the possibility of a court “conclud[ing] that there was no violation of the Chenery doctrine on the ground that ‘it is clear . . . the agency would have reached the same ultimate result under the court’s legal theory.” (quoting Grabis v. OPM, 424 F.3d 1265, 1270 (Fed. Cir. 2005); and citing Koyo Seiko Co., 95 F.3d at 1100–01))). We have not “scour[ed] the record to find some alternative basis to reach the same result.” Borovsky v. Holder, 612 F.3d 917, 921 (7th Cir. 2010).
CONCLUSION
For the foregoing reasons, we affirm the Commission’s determination of no violation of section 337 and a lack of domestic industry as to the ’439 patent because INVT has not shown that the relevant LTE devices infringe. With respect to the expired ’590 patent, we vacate the Commission’s determination and remand with instructions to dismiss the relevant portion of the complaint.
AFFIRMED IN PART, VACATED IN PART WITH REMAND
COSTS
Costs against Appellant.
Notes
Q. Okay. So do [user devices] and LTE have to be able to handle the case where the scheduler does assign resources based on measurements reported by the [user device]?
A. [User device] would have to, absolutely, be able to receive -- to receive, using modulation and coding parameters that were decided by the user device, but in some cases it might also -- it should be able to receive other modulation and coding parameters.
Q. Do [user devices] under LTE basically have to be able to receive and obtain data under any of the available modulation and coding parameters of LTE?
A. They should -- yes, they must be capable of receiving any.
Q. And are all the accused products, based on your analysis, capable of receiving demodulating and decoding using the parameters decided by the [user device]?
A. Yes, Counsel.
J.A. 10826–27 (826:23–827:18).
Q. I heard you the first time. My question was still a little different.
I’m asking you if an LTE-compliant device receives data modulated QPSK with a coding rate of 78, will it be able to demodulate and decode that data?
A. That’s different than the question you asked earlier.
So if the [user device] concludes that the base station -- and I’ll put a little finer point on your question -- if the [user device] does the calculation I described, concludes that the code rate selected by the base station is 78 divided by 102.4, if that’s one of the possible outcomes of the computation, then the [user device] must be able to demodulate using the indicated modulation index and that code rate.
Q. Right. You’re still talking about the base station a lot, but I assume the answer is true for any of these coding rates.
If this modulation in this table and the associated coding rate is what the base station says to use, all [user devices], all LTE-compliant [user devices] and all the accused products have to be able to handle that and demodulate and decode using those parameters, right?
A. If the base station had chosen one of those, based upon how much data it has to send, transfer block size, resource block assignment so forth and so on, if the base station determines the TBS and the modulation rate, then if that combination -- which also includes how many resource blocks are being assigned -- happens to correspond with, say, to row 3, QPSK and 1093 divided by 102.4, if that happens, then the [user device] must be capable of demodulating using the corresponding modulation index and the code rate, yes.
If that should ever happen. I don’t know if it ever does happen.
Q. I’ll take that as a yes, Dr. Acampora. . . .
J.A. 11917–19 (1917:24–1919:14) (emphases added).