Commonwealth Scientific v. Buffalo Technology

• Citation: 542 F.3d 1363
• Decision Date: 19 September 2008
• Docket Number: No. 2007-1449.,2007-1449.
• Parties: COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION, Plaintiff-Appellee, v. BUFFALO TECHNOLOGY (USA), INC. and Buffalo, Inc., Defendants-Appellants.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

542 F.3d 1363

COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION, Plaintiff-Appellee, v. BUFFALO TECHNOLOGY (USA), INC. and Buffalo, Inc., Defendants-Appellants.

No. 2007-1449.

United States Court of Appeals, Federal Circuit.

September 19, 2008.

Rehearing Denied October 17, 2008.

Daniel J. Furniss, Townsend and Townsend and Crew LLP, of Palo Alto, CA, argued for plaintiff-appellee. With him on the brief were Gary H. Ritchey and Nancy L. Tompkins.

Richard D. Kelly, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Alexandria, VA, argued for defendants-appellants. With him on the brief were Robert C. Mattson, Frank J. West, Takahiro Miura, and Robert C. Nissen. of counsel were Joanna H. Kim and Richard J. Codding, Akin, Gump, Strauss, Hauer & Feld, LLP, of Los Angeles, CA.

Richard C. Vasquez, Morgan Miller Blair, a Law Corporation, of Walnut Creek, CA, for amici curiae Accton Technology Corporation (Taiwan). With him on the brief were Jeffrey T. Lindgren, Kevin R. Brodehl, and Eric W. Benisek.

Ruffin B. Cordell, Fish & Richardson P.C., of Washington, DC, for amicus curiae Microsoft Corporation. With him on the brief was Barry K. Shelton, of Austin, TX.

Theodore B. Olson, Gibson, Dunn & Crutcher LLP, of Washington, DC, for amici curiae Atheros Communications, Inc., et al. With him on the brief were Matthew D. McGill, Amir C. Tayrani, and Thomas A. Burns.

Roy T. Englert, Jr., Robbins, Russell, Englert, Orseck, Untereiner & Sauber LLP, of Washington, DC, for amici curiae Battelle Memorial Institute, et al. With him on the brief was Mark T. Stancil.

Kathleen M. Sullivan, Quinn Emanuel Urquhart Oliver & Hedges, LLP, of Redwood Shores, CA, for amici curiae Nokia Corporation, et al. With her on the brief were Brian C. Cannon and Tun-Jen Chiang. Of counsel on the brief were Ronald A. Antush and David L. Cohen, Nokia Corporation and Nokia Inc., of Irving, TX.

Richard W. Clary, Cravath, Swaine & Moore LLP, of New York, NY, for amicus curiae Qualcomm Incorporated.

Steffen N. Johnson, Winston & Strawn LLP, of Washington, DC, for amicus curiae Technology Properties Limited. With him on the brief were Gene C. Schaerr, Andrew C. Nichols, and James F. Hurst, of Chicago, IL.

Robert A. Cote, McKool Smith, P.C., of New York, NY, for amicus curiae WiLAN, Inc. With him on the brief were Robert E. Goodfriend and Jason Blackstone, of Dallas, TX, Rodney R. Sweetland, III, of Washington, DC, and Gretchen K. Harting and Seth R. Hasenour, of Austin, TX.

Before LOURIE, RADER, and BRYSON, Circuit Judges.

Opinion for the court filed by Circuit Judge BRYSON. Opinion concurring in the result filed by Circuit Judge LOURIE.

BRYSON, Circuit Judge.

Commonwealth Scientific and Industrial Research Organisation ("CSIRO") is Australia's national science agency. It engages in a range of basic and applied scientific research in diverse fields. One of its research projects has been directed to solving problems presented by indoor wireless local area networks ("WLANs"). WLANs usually have a network topology consisting of one or more access points with a wired connection to a local area network. They feature wireless connections to one or more transceivers that reside on remote devices such as laptop computers. The remote devices communicate with the network access points by way of radio wave transmissions.

One of the difficulties encountered by those who sought to develop WLAN systems was the problem of multiple, echoed signals traveling from transmitters to receivers. The multiple, echoed signals are caused by the "bouncing" of transmitted radio waves off objects within a room or building, causing the echoed signals to reach the receiver at different times subsequent to the receipt of the main signal. The "echo effect" caused by the bouncing signals creates what is known as the "multiple path propagation" or "multipath" problem. When the multipath problem is present, a single signal sent from a transmitter will be received multiple times by the receiver over a short period of time. When that happens, the echoes from a first transmission may mask subsequent transmissions.

One means of dealing with the multipath problem is to delay the transmission of subsequent signals sufficiently to avoid the masking effect. Delaying the transmission of subsequent signals, however, reduces the maximum data rate the network can achieve and thereby renders the wireless transmission system less useful for many applications.

In order to combat the multipath problem without reducing the data transmission rate of the system, CSIRO invented a solution that was ultimately described and claimed in U.S. Patent No. 5,487,069 ("the '069 patent"). The proposed solution was to transmit different portions of a series of signals containing the data to be transmitted over a number of different frequency channels. By transmitting data on many different frequencies, the system would ensure that none of the signals in the series (or their echoes) would interfere with other signals transmitted on different channels. And by transmitting a number of signals on different frequencies simultaneously, the WLAN system could achieve a high overall transmission rate while still allowing sufficient temporal separation between each signal transmitted on each frequency to avoid inter-symbol interference.

In a patent infringement action filed in the United States District Court for the Eastern District of Texas, CSIRO accused Buffalo Technology (USA), Inc., and Buffalo, Inc., (collectively, "Buffalo") of infringing various claims of the '069 patent. After construing the disputed claim terms of the '069 patent, the district court addressed the parties' cross-motions for summary judgment. In its order on those motions, the court granted summary judgment in favor of CSIRO on the contested issues of patent validity and infringement.

Independent claim 42 is one of the claims that the district court found to be infringed. That claim provides as follows:

A transceiver for operation in a confined multipath transmission environment, said transceiver comprising antenna means coupled to transmission signal processing means and to reception signal processing means, said transmission signal processing means in turn coupled to an input data channel, said transceiver being operable to transmit and receive data at radio frequencies, said transmission signal processing means comprising modulation means for modulating input data of said input data channel into a plurality of sub-channels comprised of a sequence of data symbols such that the period of a subchannel symbol is longer than a predetermined period representative of the time delay of significant ones of non-direct transmission paths, means to apply data reliability enhancement to said data passed to said modulation means and means, interposed between said data reliability enhancement means and said modulation means, for interleaving blocks of said data.

Independent claim 56, which the court also found to be infringed, is similar to claim 42, but it claims a transmitter instead of a transceiver. Independent claim 68, also found to be infringed, contains many of the elements of claim 42, but instead of claiming an apparatus, it claims a method of transmitting data in a confined multipath environment of radio frequencies.

Following the district court's entry of summary judgment of infringement, CSIRO moved for the entry of a permanent injunction. After a hearing, the court entered an injunction against Buffalo, as requested.

On appeal, we affirm the district court's summary judgment rulings in all but one respect. With respect to the issue of validity, we uphold the court's entry of summary judgment that the '069 patent was not anticipated. We also uphold the district court's entry of summary judgment that the '069 patent was not invalid because of the addition of new matter to the application or because the asserted claims lacked a sufficient written description in the original specification. With respect to the issue of obviousness, however, we conclude that the district court erred by entering summary judgment against Buffalo because we hold that there was a disputed issue of material fact as to whether the prior art references that were before the district court were combinable in a manner that would have rendered the asserted claims of the '069 patent obvious. Although we vacate the summary judgment of obviousness, we have nonetheless addressed the issue of infringement, on which the district court entered summary judgment against Buffalo, because that issue will continue to be important to the ultimate disposition of the case unless the claims are held to be invalid for obviousness. As to that issue, we uphold the district court's summary judgment of infringement.

I

The summary judgment proceedings in this case were unusual in that the parties stipulated that the district court could make findings of fact with respect to disputed factual issues in the course of deciding the cross-motions for summary judgment. At the summary judgment hearing on August 15, 2006, the trial judge asked the parties to confirm "with respect to the issue of infringement and with respect to the issue of validity that both sides agree that the Court has before it all of the record that it needs to determine both of these issues, whichever way it might ultimately determine to go." Both parties agreed. For further clarification, the court then asked the parties, "[I]f the Court gets into anything where there is a factual issue that needs to be determined, are you both stipulating that you have before the Court the record and are agreeing that the Court can make that factual determination?" Again, both parties agreed. Buffalo's counsel later stated that the stipulation permitting the court to decide any fact issues that might arise applied only to those issues on which Buffalo had moved for summary judgment. Those issues included...