Lucent Technologies, Inc. v. Gateway, Inc.

Citation525 F.3d 1200
Decision Date08 May 2008
Docket NumberNo. 2007-1337.,No. 2007-1376.,No. 2007-1334.,2007-1334.,2007-1337.,2007-1376.
PartiesLUCENT TECHNOLOGIES, INC., Plaintiff/Counterclaim Defendant-Appellant, and Lucent Technologies Guardian I LLC, Counterclaim Defendant, and Multimedia Patent Trust, Plaintiff/Counterclaim Defendant, v. GATEWAY, INC., Gateway Country Stores LLC, Gateway Companies, Inc., Cowabunga Enterprises, Inc., and Gateway Manufacturing LLC, Defendants/Counterclaimants, and Dell Inc., Defendant/Counterclaimant-Appellee, and Microsoft Corporation, Defendant/Counterclaimant-Cross Appellant.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

John M. Desmarais, Kirkland & Ellis LLP, of New York, NY, argued for plaintiff/counterclaim defendant-appellant, Lucent Technologies, Inc. With him on the brief were Robert A. Appleby and Jeanne M. Heffernan, of New York, NY, Ephraim D. Starr, of Los Angeles, CA.

Joel M. Freed, McDermott Will & Emery LLP, of Washington, DC, argued for defendant/counterclaimant-appellee, Dell Inc. With him on the brief were Natalia V. Blinkova, and Leonard D. Conapinski, of Chicago, IL. Of counsel on the brief was Joseph A. Micallef, Arnold & Porter LLP, of Washington, DC. Of counsel were Matthew N. Bathon and Ali R. Sharifahmadian, Arnold & Porter LLP, of Washington, DC.

John W. Thornburgh, Fish & Richardson, P.C., of San Diego, CA, argued for defendant/counterclaimant-cross appellant, Microsoft Corporation. With him on the brief were John E. Gartman, and John A. Dragseth, of Minneapolis, MN. Of counsel was Juanita R. Brooks, of San Diego, CA. Of counsel on the brief was Stephen P. McGrath, Microsoft Corporation, of Redmond, WA.

Before LOURIE, LINN, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge PROST. Opinion dissenting-in-part filed by Circuit Judge LOURIE.

PROST, Circuit Judge.

This is a patent case pertaining to alleged infringement by Microsoft Corp. ("Microsoft") and Dell Inc. ("Dell") of two patents, U.S. Patent No. 5,649,131 ("the '131 patent") and U.S. Patent No. 4,701,954 ("the '954 patent"), owned by Lucent Technologies Inc. ("Lucent"). The United States District Court for the Southern District of California granted summary judgment of non-infringement of the '131 patent, Lucent Techs., Inc. v. Gateway, Inc., Nos. 02-C-V-2060, 03-CV-0699, 03-CV-1108, 2007 WL 925359 (S.D.Cal. Mar. 8, 2007), and the '954 patent, Lucent Techs., Inc. v. Gateway, Inc., Nos. 02-CV-2060, 03-CV-0699, 03-CV-1108, 2007 WL 925354 (S.D.Cal. Mar. 6, 2007). Lucent appeals the district court's construction of the term "terminal device" in the '131 patent and construction of the phrase "each successive iteration including the steps of" in the '954 patent, and its finding of non-infringement based thereon.1 Because we find that the district court erred in its construction of "terminal device," we vacate its grant of summary judgment of non-infringement of the '131 patent and remand for further proceedings. We affirm the court's construction of "each successive iteration including the steps of" and its grant of summary judgment of non-infringement of the '954 patent.

I

The two patents at issue relate to very different technologies. The invention disclosed in the '131 patent is a communications protocol that facilitates the exchange of information between a host processor and a terminal device. '131 patent, col. 1, ll. 4-13. A host processor is a computer that communicates with multiple users to provide services such as transaction processing (e.g., online banking services) or database access. A user accessing the services provided by the host processor communicates with that host processor through a terminal device such as a portable computer, workstation, or smart phone. The claims of the '131 patent are directed to methods for exchanging messages between a host processor and a terminal device. Claim 1 is representative:

A method of operating a host processor communicating with a terminal device, said method comprising the steps of

assigning an identifier to a respective one of a plurality of input object types, and

transmitting said identifier and its respective input object type to said device, wherein said plurality of object types includes at least two of the object types choice, entry, text, and image.

'131 patent, claim 1 (emphasis added).2

On March 2, 2004, the District Court for the Southern District of California issued an amended claim construction order, construing the claim terms in the '131 patent. Lucent Techs., Inc. v. Gateway, Inc., Nos. 02-CV-2060, 03-CV-0699, 03-CV-1108 (S.D.Cal. Mar. 2, 2004). Of relevance here, the court construed the term "terminal device" to mean:

[A] computing device such as a data terminal, workstation, portable computer, or smart phone that enables a user to communicate with a host processor. It manages its associated display itself and manages its internal memory with the assistance of the host processor.

Id., slip op. at 4 (emphasis added).

Three years later, the district court granted Dell and Microsoft's ("defendants") motion for summary judgment of non-infringement of the '131 patent. Lucent Techs., Inc. v. Gateway, Inc., Nos. 02-CV-2060, 03-CV-0699, 03-CV-1108, 2007 WL 925359 (S.D.Cal. Mar. 8, 2007). In its order on summary judgment, the court explained that its prior construction of the term "terminal device" was based on the specification and the prosecution history. Id. at *2. In particular, the court stated that it relied on the summary of the invention and certain statements made during prosecution distinguishing the prior art Busboom patent as the basis for its construction of the term. Id. The court went on to state that although the specification indicates that the host computer may provide attributes that control display on the terminal device, none of the attributes control the location of objects on the display. Id. After reviewing the specification and the prosecution history, the court then refined its definition of "terminal device" to "exclude[ ] arrangements where the host processor controls the positioning of objects on the display of the terminal device." Id. The court found that, in the accused devices, the host processors (web servers) participate in determining the location of objects on the display of the terminal device (computer). Id. Accordingly, the court granted the defendants' motion for summary judgment of no literal infringement.3 Id. at *3. The court also granted the defendants' motion for summary judgment of no infringement under the doctrine of equivalents because Lucent had failed to bring forth any evidence to support its infringement contentions; and, the court granted the defendants' motion for summary judgment of no indirect infringement because there was no direct infringement. Id. at *3.

The invention disclosed in the '954 patent relates to digitizing—or encoding— speech. Specifically, the claims are directed to methods of compressing speech by removing redundant pitch information. Claim 6 is representative:

A method for producing a speech message comprising:

receiving a sequence of speech message time frame[4] signals ... and

generating a speech pattern ... the first coded excitation signal for said frame being formed by the steps of: partitioning a speech pattern ... generating a set of predictive parameters ...

producing a signal ... and

generating a multipulse excitation code having a sequence of n =1, 2, ..., N pulses for each successive time frame to provide prescribed coded speech pattern quality where N is substantially independent of the pitch of the speech pattern by iteratively forming a sequence of pulses for said time frame, each pulse having a magnitude β and a location m within the frame in successive iterations and each successive iteration including the steps of:

combining said time frame predictive parameter signals with said time frame predictive residual signals to from a signal y(n) corresponding to the time frame speech pattern portion, [step 1]

combining the excitation pulse sequence of the preceding iteration with said time frame predictive parameter signals to form a signal z(n) corresponding to the contribution of the preceding iteration excitation pulse sequence to the time frame speech pattern portion, [step 2]

forming a signal representative of the differences between said signal y(n) corresponding to the time frame speech pattern portion and said signal z(n) corresponding to the contribution of the preceding iteration excitation pulse sequence to the time frame speech pattern portion, [step 3]

comparing the current time frame signal representative of the differences between said signal y(n) corresponding to the time frame speech pattern portion and said signal z(n) corresponding to the contribution of the preceding iteration excitation pulse sequence to the time frame speech pattern portion of the current time frame with the signal of prescribed preceding time frames representative of the differences between said signal y(n) corresponding to the preceding time frame speech pattern portion and said signal z(n) corresponding to the contribution of the preceding iteration excitation pulse sequence to the preceding time frame speech pattern portion to generate a signal yp(n) representative of speech pattern portions of said preceding time frames having a predetermined degree of similarity to the speech pattern portion of the time frame, [step 4] and

producing an excitation pulse of magnitude β and location m for the present iteration responsive to the differences between said speech pattern portion representative signal y(n) and the sum of said signal representative of the contribution of the preceding iteration excitation pulse sequence to the time frame speech pattern portion and said signal yp(n) representative of similar speech pattern portions of said preceding time frames. [step 5]

'954 patent, claim 6 (emphases added).

On April 15, 2004, the district court issued a claim...

To continue reading

Request your trial
114 cases
  • Ca Inc. v. Simple.Com Inc.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
    • March 5, 2009
    ...... See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed.Cir.2008) (focusing the analysis of a patent ......
  • Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • August 19, 2009
    ...the 1989 demonstration, all elements of the repair method in claim 1 of the '307 Patent were performed."); Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1214 (Fed. Cir.2008) ("This court has consistently interpreted `including' and `comprising' to have the same meaning, namely, that ......
  • Haas v. Peake
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • May 8, 2008
    ......1147, 1154, 170 L.Ed.2d 10 (2008); Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837, 842-43, ......
  • PrinterOn Inc. v. BreezyPrint Corp.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
    • March 19, 2015
    ...... need to amend the claims [as they were amended] in order to overcome the prior art.” See Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed.Cir.2008) ; see also Regents of Univ. of ......
  • Request a trial to view additional results
1 books & journal articles
  • Chapter §15.04 Canons of Patent Claim Interpretation
    • United States
    • Full Court Press Mueller on Patent Law Volume II: Patent Enforcement Title CHAPTER 15 Patent Claim Interpretation
    • Invalid date
    ...F.3d 898, 911 (Fed. Cir. 2004)).[228] Phillips, 415 F.3d at 1327.[229] Phillips, 415 F.3d at 1328.[230] Phillips, 415 F.3d at 1328.[231] 525 F.3d 1200 (Fed. Cir. 2008).[232] Lucent Techs., 525 F.3d at 1215–1216 (footnote 8 omitted, stating that "[t]he exception to this rule is when there is......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT