Core Wireless Licensing S.A.R.L. v. Apple Inc.

Decision Date14 April 2017
Docket Number2015-2037
Citation853 F.3d 1360
Parties CORE WIRELESS LICENSING S.A.R.L., Plaintiff-Appellant v. APPLE INC., Defendant-Appellee
CourtU.S. Court of Appeals — Federal Circuit

Devan V. Padmanabhan , Winthrop & Weinstine, P.A., Minneapolis, MN, argued for plaintiff-appellant. Also represented by Paul J. Robbennolt ; Henry Charles Bunsow, Brian A. E. Smith , Bunsow, De Mory, Smith & Allison LLP, San Francisco, CA; Denise Marie De Mory, Craig Y. Allison , Redwood City, CA.

Joseph J. Mueller , Wilmer Cutler Pickering Hale & Dorr LLP, Boston, MA, argued for defendant-appellee. Also represented by Cynthia D. Vreeland, Richard W. O'Neill, Michael Wolin .

Before O'Malley, Bryson, and Wallach, Circuit Judges.

Bryson, Circuit Judge.

This appeal arises from a patent infringement action brought in the United States District Court for the Eastern District of Texas. The plaintiff, Core Wireless Licensing S.a.r.l., is the owner of U.S. Patent No. 6,978,143 ("the '143 patent"). Claim 17 of the patent, the only claim at issue in this appeal, recites a mobile station, such as a mobile telephone, that is connected to a cellular system or network. The claim is directed to means for sending packet data from the mobile station to the network using a selected channel.

Following trial, the jury found that the defendant, Apple Inc., did not infringe any of the asserted claims. The district court denied Core Wireless's motion for judgment as a matter of law, and Core Wireless took this appeal. We affirm.

I

Mobile stations such as cellular telephones can transmit data packets to a cellular network (known as an uplink) in one of two ways—either by using a shared "common channel," which carries transmissions from multiple mobile stations, or by using a "dedicated channel," which carries transmissions from a single mobile station without competing transmissions from other mobile stations. Dedicated channels are valuable because they permit faster and more reliable transmissions than common channels. But dedicated channels are at a premium, as there are not enough dedicated channels to carry all cellular transmissions. The industry has therefore worked to solve the problem of how to allocate dedicated channels (when the need for a dedicated channel is greatest).

One aspect of this problem is whether the network or the mobile station should select the channel for the uplink. The network initially has no information about the data packet to be sent, such as data packet size, and therefore does not have the necessary information to make a channel selection decision. In the prior art, the mobile station would send the network information about the data packet to be sent so that the network could make the channel selection decision. As noted in the '143 patent, selection by the network wastes valuable system resources, because it requires the mobile station to send a message to the network regarding the data packet the mobile station wants to transmit, and then requires the network to make the channel selection decision. See '143 patent, col. 3, ll. 41-49.

The solution provided by the '143 patent is to have the mobile station, not the network, make the uplink channel selection decision. The way that is done is for the network to provide the mobile station with certain parameters that the mobile station is directed to apply in determining whether to use a dedicated channel or a common channel. See '143 patent, col. 3, ll. 53-56; id. , col. 4, ll. 37-58. According to the patent, the described method reduces "the signaling load associated with the allocation of packet data transfer" and reduces "the delay associated with the starting of data transfer."Id. , col. 3, ll. 64-67. Because the mobile station makes the channel selection decision, it does not use up traffic capacity by sending the message about the data packet to the network so that the network may select a channel. Id. , col. 3, ll. 40-49.

Although Core Wireless initially asserted a number of claims from several different patents against Apple, this appeal involves only a single claim—claim 17 of the '143 patent. That claim reads as follows:

A mobile station connected with a cellular system, comprising means for sending uplink packet data to the system using a selected channel, wherein the selected channel is either a common channel (RACH) or dedicated channel (DCH), characterized in that it also comprises:
means for receiving a threshold value of the channel selection parameter from the system,
means for storing said threshold value of the channel selection parameter, and
means for comparing said threshold value of the channel selection parameter to a current value of the channel selection parameter for basis of said channel selection.

A magistrate judge conducted the claim construction proceedings and construed the "means for comparing" limitation of claim 17 to have the function of "comparing said threshold value of the channel selection parameter to a current value of the channel selection parameter for basis of said channel selection."

The magistrate judge construed the corresponding structure for performing that function to be

[a] control unit 803 [in the mobile station] wherein the control unit 803 is programmed to control the comparison of the threshold value of the channel selection parameter to the current value of the channel selection parameter in accordance with the algorithm shown in Fig. 6, step 650, and described in 6:20-39; 7:17-20; and 7:24-28 of the '143 specification; and statutory equivalents thereof.

At trial, Apple introduced evidence that Apple's accused mobile stations lack the capability to select between common and dedicated channels for packet data transfer. Instead, in systems in which Apple's devices are used, Apple's evidence showed that the network, not the mobile station, is responsible for selecting which channel to use for uplink transmissions. At the conclusion of the trial, the jury found that Apple did not infringe claim 17 of the '143 patent.

In its post-trial motion for judgment as a matter of law ("JMOL"), Core Wireless argued that Apple had misapplied the court's construction of claim 17 when it interpreted the court's construction to mean that the "means for comparing" limitation requires the mobile station to be capable of making uplink channel decisions. The district court disagreed, holding that the claim requires that the mobile station "must have the capability to perform ‘channel selection,’ even if that capability was not used during the actual alleged performance of the claimed method." The court concluded that there was sufficient evidence from which a reasonable jury could find noninfringement based on that claim construction.

II

Core Wireless does not object to the claim construction that was given to the jury, which was the same as the claim construction adopted by the magistrate judge. Instead, Core Wireless argues both that the district court misapplied the magistrate judge's pretrial claim construction, and that the claim construction adopted by the district court was erroneous.

A

Core Wireless's first argument is that Apple took a position at trial that was contrary to the magistrate judge's claim construction, and that the district court improperly upheld the jury's verdict in favor of Apple by in effect altering the magistrate judge's claim construction.

Core Wireless explains its view of the difference between the magistrate judge's pretrial claim construction and Apple's construction as follows: Under the magistrate judge's claim construction, as Core Wireless interprets it, an infringing device need only be capable of performing the functions of receiving a threshold parameter from the cellular network, storing that threshold parameter in local memory, and then comparing a current value of that parameter to the threshold. Under Apple's construction, in order to infringe, a mobile station must also be able to make a channel selection decision based on that comparison, rather than leaving the channel selection decision to the network. That is, Core Wireless contends that under the magistrate judge's claim construction the mobile station need do no more than make a comparison, while Apple contends that the mobile station must have the capability to select a dedicated channel when the relevant threshold conditions are met.

The problem with Core Wireless's argument is that the premise is incorrect: The magistrate judge did not clearly reject Apple's position and adopt Core Wireless's position. Core Wireless bases its argument on the magistrate judge's failure to include certain language, proposed by Apple, in the description of the corresponding structure for performing the "means for comparing" limitation. As Core Wireless points out, the magistrate judge did not include Apple's suggested language that control unit 803 "provide[s] the comparison result to a channel selection function within the mobile station" and Apple's reference to step 660 of Figure 6 in the patent. Those exclusions, Core Wireless contends, indicate that the magistrate judge rejected Apple's position on the construction of that limitation.

We disagree. The magistrate judge did not state at the hearing or include in his order any explanation for omitting Apple's proposed text from the claim construction. Instead, he focused primarily on whether control unit 803 was a general purpose processor within the meaning of WMS Gaming Inc. v. International Game Technology , 184 F.3d 1339 (Fed. Cir. 1999). Significantly, the magistrate judge included in his construction references to Figure 6, step 650, and to column 7, lines 17-20, of the '143 patent. As discussed below in further detail, both of those references indicate that channel selection can be performed by the mobile station, consistent with the district court's discussion of the claim construction issue in its JMOL order.

Core Wireless did not raise the issue of Apple's allegedly improper interpretation of the magistrate...

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