Enovsys Llc. v. Nextel Commc'ns Inc.

• Decision Date: 08 October 2010
• Docket Number: No. 2009-1167.,2009-1167.
• Citation: 614 F.3d 1333
• Parties: ENOVSYS LLC, Plaintiff-Appellee, v. NEXTEL COMMUNICATIONS, INC., Nextel of California, Inc., Nextel Communications of the Midatlantic, Inc., Nextel of New York, Inc., Nextel South Corporation, Nextel of Texas, Inc., Nextel West Corp., Sprint Nextel Corporation, Sprint Communications Company L.P., Sprint Spectrum L.P., and Sprint Solutions, Inc., Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

614 F.3d 1333

ENOVSYS LLC, Plaintiff-Appellee,

v.NEXTEL COMMUNICATIONS, INC., Nextel of California, Inc., Nextel Communications of the Midatlantic, Inc., Nextel of New York, Inc., Nextel South Corporation, Nextel of Texas, Inc., Nextel West Corp., Sprint Nextel Corporation, Sprint Communications Company L.P., Sprint Spectrum L.P., and Sprint Solutions, Inc., Defendants-Appellants.

No. 2009-1167.

United States Court of Appeals,Federal Circuit.

Aug. 3, 2010.

Rehearing and Rehearing En Banc Denied Oct. 8, 2010.

COPYRIGHT MATERIAL OMITTED.

Gregory S. Dovel, Dovel & Luner LLP, of Santa Monica, CA, argued for plaintiff-appellee. With him on the brief was John Jeffrey Eichmann.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for defendants-appellants. With him on the brief was Andrew J. Vance.

Before NEWMAN, BRYSON, and PROST, Circuit Judges.

PROST, Circuit Judge.

In this patent infringement case, we begin by deciding the effect of a state-court divorce decree on a patent owner's standing to sue. Because we conclude that the patent owner Enovsys LLC (“Enovsys”) had standing, we reach the challenged claim constructions.

The allegations of infringement are based on two inventions that use global positioning satellites (“GPS”) and ground control stations to determine the physical location of mobile devices, like pagers and cellular telephones. Depending on the security settings chosen by the user, the invention selectively discloses the physical location of the mobile device to certain users or entities, while blocking disclosure to others. Entities that might request a mobile device's location include programs that provide driving directions, updates on local weather, and restaurant suggestions. Enovsys brought this suit against Sprint Nextel Corporation and its various subsidiaries (collectively “Sprint Nextel”), contending that Sprint Nextel's iDEN and CDMA wireless networks infringed two patents covering these inventions. After a nine-day trial, the jury found Sprint Nextel infringed both patents and awarded approximately $2.78 million in damages. The district court then denied Sprint Nextel's renewed motion to dismiss the case for lack of standing, motions for judgment as a matter of law (“JMOL”), and motions for a new trial.

Sprint Nextel now appeals. According to Sprint Nextel, this case should have ended long ago, because Enovsys is not the sole owner of the asserted patents and failed to join the other (alleged) part owner, Fonda Whitfield (“Whitfield”). Whitfield is the ex-wife of Mundi Fomukong (“Fomukong”); Fomukong is the manager of Enovsys and one of the patents' co-inventors. Sprint Nextel also argues that it is entitled to JMOL under the correct construction of various claim terms in the patents.

We affirm. The ownership issue, and thus the question of standing, is resolved by a state-court judgment-namely, a California divorce decree. Giving this divorce decree the preclusive effect required, we conclude that Whitfield had no ownership interest in the asserted patents at the time this case was filed, or anytime thereafter. At all relevant times, Enovsys alone owned both patents. Accordingly, Enovsys had standing to bring and maintain this suit without joining Whitfield. On the merits, we affirm the challenged claim constructions.

Background

Mundi Fomukong is manager and part owner of Enovsys. He is also the co-inventor of the two patents asserted in this case, U.S. Patent No. 5,918,159 (“'159 patent”) and U.S. Patent No. 6,560,461 (“'461 patent”). Before conceiving of the inventions claimed in these patents, Fomukong married a woman named Fonda Whitfield in California. Fomukong and Whitfield were still married in 1997, when Fomukong and his co-inventor filed a patent application that later issued as the '159 patent. Two years later, Fomukong and his co-inventor filed a second patent application that issued as the '461 patent. This second application was styled as a continuation-in-part of the '159 patent.

The '159 patent issued in 1999. Approximately two years later, Fomukong and Whitfield filed for divorce in California. There are two different ways of getting a divorce in California, regular dissolution or summary dissolution. In a regular dissolution, either party may request a hearing or trial to settle disputed issues. Either party may appeal the court's decision or request a new trial. Summary dissolution, by contrast, is California's version of a quickie divorce. In a summary dissolution, there is no hearing or trial before a judge. Both parties give up their right to appeal the court's decision, although either may later move to set aside the judgment for fraud, duress, accident or mistake. ¹ Cal. Fam.Code §§ 2400, 2403, 2405. The streamlined summary dissolution procedure is only available to couples that meet certain requirements. Cal. Fam.Code § 2400. As relevant here, the couple must either (1) have no community property, or (2) have signed a property settlement agreement listing and dividing all community assets and liabilities. Any property settlement agreement must be attached to the couple's petition for summary dissolution. Under California law, all assets acquired during a marriage are presumptively community property. Cal. Fam.Code §§ 65, 760. Assets include any income earned or property created during the marriage.

Fomukong and Whitfield divorced by summary dissolution. In November 2001, they filed an official California form titled “Joint Petition for Summary Dissolution of Marriage” with the Los Angeles Superior Court. In signing and filing this petition, Fomukong and Whitfield declared that they had read and understood the booklet California publishes on summary dissolutions, aptly titled the “Summary Dissolution Information booklet.” In response to the petition's question about community property, Fomukong and Whitfield checked the box next to the statement, “We have no community assets or liabilities,” certifying that the statement was true under penalty of perjury. They left the other option unchecked. That option read: “We have signed an agreement listing and dividing all our community assets and liabilities and have signed all papers necessary to carry out our agreement. A copy of our agreement is attached to this petition.” Consistent with their declaration that they had no community property, Fomukong and Whitfield did not attach a property settlement agreement to their petition.

Under California law, the filing of Fomukong and Whitfield's joint petition for summary dissolution triggered a six-month waiting period. Cal. Fam.Code § 2403. During that period, either party could have stopped the divorce. See Judicial Council of Cal., Summary Dissolution Information Booklet, Form FL-810, § III, available at http:// www. courtinfo.ca.gov/forms/documents/fl810.pdf. To officially end the marriage, at least one of them had to ask the court to enter judgment of dissolution after the six-month period expired. Id.; see also Cal. Fam.Code § 2403. In October 2002, Fomukong filed the requisite California form, titled “Request for Judgment, Judgment of Dissolution of Marriage, and Notice of Entry of Judgment” with the Los Angeles Superior Court. Whitfield's signature also appears on the form. Judgment was entered in October 2002; notice of the judgment was mailed to both Fomukong and Whitfield. Fomukong and Whitfield's divorce thus became final in October 2002.

Several months after Fomukong and Whitfield's divorce was finalized, the '461 patent issued. Fomukong subsequently formed Enovsys for the purpose of managing patent-related licensing and litigation. In 2006, Fomukong and his co-inventor assigned their ownership interests in the '159 and '461 patents to Enovsys. Among the rights expressly assigned to Enovsys was the right to sue for past infringement.

Enovsys subsequently filed this action against Sprint Nextel Corporation.

Enovsys alleged that Sprint Nextel infringed claim 1 of the '159 patent and claims 1, 2, 23, 25 and 28 of the '461 patent. The '159 patent covers a system for determining the physical location, or global position, of a call receiver, such as a cellular telephone or pager, using a network of space satellites and ground stations. '159 patent col.1 ll.53-55; see also id. at col.5 ll.44-47. This system allows a subscriber to obtain location information using his cellular phone or pager. Alternatively, the network may provide some entities with the location of the call receiver, while blocking others from receiving that information. Id. at col.1 ll.55-60.

The asserted claims of the '461 patent cover systems for disclosing a mobile device's physical location only to authorized requests. The invention maintains the security of a mobile device's location data through two authorization steps, one at the network level, the other at the individual subscriber level. First, the system verifies that the source is “pre-authorized” to obtain location information from the network. '461 patent col.4 ll.49-60; see also id. at col.11 ll.5-9. If the source is pre-authorized to access the network, the invention then determines whether the individual subscriber has authorized the network to disclose the mobile device's location. This preference is stored on the network as a “location information disclosure instruction.” Based on this instruction, the invention either allows or blocks the request. If allowed, the invention obtains and sends the mobile device's location. Otherwise, the invention sends a message that the request has been blocked. Id. at col.5 ll.4-30.

According to Enovsys, Sprint Nextel infringed these patents by selling “location-enabled devices and location-based services.” Specifically, these “location-enabled devices and location-based services” were Sprint Nextel's Integrated Digital Enhanced Network (“iDEN”) and Code Division Multiple Access (“CDMA”) systems. The iDEN and CDMA systems are...