Harris Corp. v. Ericsson Inc.

• Decision Date: 05 August 2005
• Docket Number: No. 03-1625.,No. 03-1626.,03-1625.,03-1626.
• Citation: 417 F.3d 1241
• Parties: HARRIS CORPORATION, Plaintiff-Cross Appellant, v. ERICSSON INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

417 F.3d 1241

HARRIS CORPORATION, Plaintiff-Cross Appellant, v. ERICSSON INC., Defendant-Appellant.

No. 03-1625.

No. 03-1626.

United States Court of Appeals, Federal Circuit.

August 5, 2005.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Henry C. Bunsow, Howrey Simon Arnold & White, LLP, of San Francisco, California, argued for plaintiff-cross appellant. With him on the brief were Robert C. Laurenson, of Irvine, California, and Denise M. De Mory, of San Francisco, California. Of counsel on the brief were Raphael V. Lupo, Brian E. Ferguson and Natalia V. Blinkova, McDermott, Will & Emery, of Washington, DC; and Brett C. Govett, Fulbright & Jaworski L.L.P., of Dallas, Texas.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for defendant-appellant. On the brief were Douglas A. Cawley, Mike McKool, Jr. and Theodore Stevenson, III, McKool Smith, P.C., of Dallas, Texas, and Kevin Burgess, of Austin, Texas. Of counsel on the brief were Don O. Burley, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, and Scott A. Herbst and Erik R. Puknys, of Palo Alto, California; and Monte M. Bond, Burns, Doane, Swecker & Mathis, L.L.P., of Alexandria, Virginia.

Before CLEVENGER, GAJARSA, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge PROST.

Dissenting opinion filed by Circuit Judge GAJARSA.

PROST, Circuit Judge.

Ericsson Inc. ("Ericsson") appeals from a judgment of infringement and award of damages by the United States District Court for the Northern District of Texas, Case No. 3:98-CV-2903, 2003 WL 21750710. Ericsson specifically appeals the district court's construction of claims 1, 2, 33, and 45 of U.S. Patent No. 4,365,338 ("the '338 patent"), the court's denial of its motion for judgment as a matter of law ("JMOL") of noninfringement of those claims, the jury's verdict of infringement, the amount of the remitted damages award, and the jury's verdict that Ericsson's infringement was willful. Harris Corporation ("Harris") cross-appeals the award of enhanced damages for willful infringement, characterizing it as too small. We vacate the district court's denial of JMOL of noninfringement of claims 1, 2, and 33 and remand for reconsideration of that issue in light of our interpretation of the claims. We reverse the denial of Ericsson's motion for JMOL of noninfringement of claim 45 and instruct the district court to enter judgment of noninfringement of that claim.

I. BACKGROUND

Ericsson manufactures and sells cellular communication equipment. Its products include both cellular phones and base stations, which receive, process, and transmit cellular signals. Both of these types of products are accused of infringing the '338 patent in the present case.

This patent concerns the way wireless signals are processed. Modern cellular devices transmit information in the form of bits of data grouped into packets, or "symbols." The symbols are transmitted by means of electromagnetic waves. Because the waves become distorted when they travel through the air and reflect off objects, the values of the symbols do not necessarily correspond to any of the allowed "discrete" values when they arrive at their destination. This effect is called "intersymbol interference." The receiving device typically uses a computer program to restore the symbols to their original discrete values.

The '338 patent specification describes such a program. In the disclosed process, the set of unknown symbols that represent the information to be transmitted is preceded and followed by sets of known symbols. Intersymbol interference affects all of the symbols, but since some of the symbols are known, the program can compare the received symbols to the known ones and thereby calculate the effect of the transmission medium. The program then applies what it learned about the effect of the medium to the distorted unknown symbols to derive "estimates" of their original values. The estimates are not discrete values, because the program's compensation for the effect of the medium is not perfect. Therefore, the program must convert the estimates into discrete values, which are called "decisions." The '338 patent thus discloses a two-step symbol decoding algorithm, the first step being the calculation of nondiscrete estimates and the second being the selection of discrete decisions based on the estimates.

Harris, a maker of defense communication equipment, owns the '338 patent. In the mid-1990s, Harris notified at least two cellular companies, Ericsson and Nokia, that it believed they were infringing certain Harris patents. At that time, Harris had not yet accused Ericsson of infringing the '338 patent specifically, but Nokia advised Ericsson to review that patent in late 1996. Ericsson proceeded to obtain an opinion from a patent attorney, John Lastova, that stated that Ericsson did not infringe the '338 patent. On August 17, 1998, Harris sued Ericsson for infringement of the '338 patent (among others) in the Northern District of Texas.

A special master construed terms in claims 1, 2, 33, and 45 of the '338 patent, and the district court adopted the special master's construction. Claim 1, from which claims 2 and 33 depend, reads as follows, with passages relevant to this appeal underlined:

A communication system for communicating information signals from a transmitting station to a receiving station over a dispersive medium, comprising: transmitting apparatus, disposed at said transmitting station, for transmitting information signals interleaved with known signals; and

receiving apparatus, disposed at said receiving station, for receiving the transmitted signals subject to the influence of said dispersive medium and providing estimates of the originally transmitted information signals, said receiving apparatus comprising:

means for generating a replica of said known signals,

time domain processing means for simulating the time domain effect of said dispersive medium on signals transmitted through it by deducing prescribed characteristics of said medium, and for producing estimates of said information signals in accordance with a preselected relationship between said prescribed characteristics of said simulated effect and said known and received signals, and

output conversion means, coupled to said processing means, for converting said estimates of said information signals into output signals representative of the original information signals at said transmitting station.

'338 patent, col. 17, II. 42-66 (emphasis added).

The parties disputed whether these claims were limited to a two-step process for dealing with intersymbol interference. In Ericsson's view, these claims only covered systems that performed a first step of calculating nondiscrete estimates, followed by a second step of selecting discrete decisions. Harris contended that these claims covered both one-step and two-step processes, one-step processes being those that directly obtain discrete values without an intermediate step of calculating nondiscrete estimates. This dispute was relevant to infringement, because Ericsson's accused products employ a process that does not have a step of calculating nondiscrete estimates. This process is known as Maximum Likelihood Sequence Estimation using the Viterbi Algorithm, or "Viterbi MLSE." In Viterbi MLSE, the receiving device compares distorted sequences of received symbols to hypothetical sequences of transmitted symbols to find the sequence of symbols that was most likely transmitted. The hypothetical sequences are distorted in accordance with a model of the transmission medium.

The court construed claims 1, 2, and 33 under 35 U.S.C. § 112 ¶ 6. A § 112 ¶ 6 limitation covers an accused product that has a function identical to the one recited in the claim and a structure that is identical or equivalent to the corresponding structure disclosed in the patent. 35 U.S.C. § 112 ¶ 6 (2000). The court held that the corresponding structure for the "time domain processing means" limitation was the "symbol processor 37." Accordingly, the court rejected Ericsson's contention that the claims were limited to a two-step process and instructed the jury that these claims covered "a one or two-step process." Under this claim construction and jury instruction, an infringing system need not perform two separate steps of calculating nondiscrete estimates and deriving discrete decisions; a system that compensated for intersymbol interference to produce discrete results in one step could still infringe these claims literally.

Claim 45, a method claim, was also asserted:

A communication scheme for communicating information symbols from a transmitting station to a receiving station, said information symbols being originally unknown at said receiving station over a dispersive medium, comprising the steps of:

transmitting, from said transmitting station, said information symbols interleaved with additional symbols, said additional symbols being known at the receiving station;

receiving, at said receiving station, the interleaved known and unknown symbols transmitted from said transmitting station over said dispersive medium;

generating, at said receiving station, a replica of said known symbols; and

processing the symbol values received at said receiving station by simulating the effect of said dispersive medium by generating an equalization function defining the dispersive characteristics of said medium and producing, as estimates of said information symbols, those information symbols capable of being transmitted which are closest to information symbols the values of which minimize the sum of the squares of the magnitudes of successive pluralities of noise signals corresponding to received information and known symbols, calculated in accordance with the prescribed relationship between said simulated effect and said known and received symbol values.

'338...