Wi-Lan, Inc. v. Apple Inc.
| Decision Date | 08 January 2016 |
| Docket Number | Nos. 2014–1437,2014–1485.,s. 2014–1437 |
| Citation | 811 F.3d 455 |
| Parties | Wi–LAN, INC., Plaintiff–Appellant v. APPLE INC., Defendant–Cross Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Robert A. Cote, McKool Smith, P.C., New York, N.Y., argued for plaintiff-appellant. Also represented by Samuel Franklin Baxter, Marshall, TX; Jason Blackstone, Richter Darryl Burke, Seth R. Hasenour, Rosemary T. Snider, Dallas, TX; Dirk D. Thomas, Washington, DC.
Mark S. Davies, Orrick, Herrington & Sutcliffe LLP, Washington, DC, argued for defendant-cross-appellant. Also represented by Katherine M. Kopp, T. Vann Pearce, Jr.; Brian Philip Goldman, San Francisco, CA; Will Melehani, Irvine, CA; Siddhartha M. Venkatesan, Menlo Park, CA; Andrew D. Silverman, New York, N.Y.; Ashlee N. Lin, Miguel Jesus Ruiz, Mark C. Scarsi, Milbank, Tweed, Hadley & McCloy, LLP, Los Angeles, CA.
Before REYNA, WALLACH, and HUGHES, Circuit Judges.
Wi–LAN, Inc. ("Wi–LAN") is the assignee of U.S. Patent No. RE37,802 ("'802 patent"), which concerns a wireless data communication technique called "MultiCode Direct–Sequence Spread Spectrum" (MC–DSSS). Wi–LAN asserts that the patented technique is embodied in several modern wireless communications standards.
On February 2, 2011, Wi–LAN sued Apple Inc. ("Apple") and other technology companies in the United States District Court for the Eastern District of Texas for infringing claims 1 and 10 of the '802 patent by manufacturing and selling products complying with various wide-area communication standards. A jury found that Apple did not infringe and that the claims are invalid. The district court denied Wi–LAN's motion for judgment as a matter of law ("JMOL") and for a new trial with respect to infringement, but it granted Wi–LAN's motion for JMOL of no invalidity.
Wi–LAN appeals the trial court's denial of JMOL and its motion for a new trial on infringement, and Apple cross-appeals the grant of JMOL of no invalidity. Because the jury's verdict of non-infringement was supported by substantial evidence, we affirm the district court's denial of JMOL as to non-infringement. Because the trial court's JMOL determination of no invalidity was based on a postverdict reconstruction of the claims, we reverse the district court's grant of JMOL of no invalidity.
Wireless communication devices use radio waves to communicate digital data by modulating the frequency, amplitude, or phase of those waves according to preestablished patterns. Each pattern communicates a respective "symbol" corresponding to a given combination of bits. J.A. 3546. Devices that detect the radio waves can observe and interpret the modulation patterns to recover the transmitted symbols.
"Direct–Sequence Spread Spectrum" (DSSS) is a prior art modulation technique that prevents third parties from intercepting and interpreting radio communications. Using DSSS, a radio transmitter "spreads" a signal across a band of frequencies by multiplying the signal against a pseudo-random signal called "pseudo-noise." The pseudonoise signal corresponds to a particular code, such that a receiver with a corresponding code can "invert" (i.e., reverse) the spreading to recover the original signal. A third party scanning the spectrum would detect only what appears to be natural ambient noise, while the intended recipient could use the corresponding code to detect and decode the communication. A drawback of DSSS is that each communication occupies an entire band of frequency, which makes it difficult for multiple users to transmit data simultaneously.
"Code Division Multiple Access" (CDMA) is another prior art modulation technique that addresses the bandwidth shortcomings of DSSS by allowing multiple users to transmit on the same band using different spreading codes. Under CDMA, the signals from the multiple users form a combined noise-like signal, and each receiver can use its respective code to recover the communications intended for it from the combined signal.
The '802 patent discloses a "multi-code" variation of DSSS (MC–DSSS), which enhances throughput by permitting a single transmitter to utilize multiple codes simultaneously. '802 patent col. 1 l. 66–col. 2 l. 5. The specification describes two embodiments, corresponding to Figures 1 and 4 respectively.
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The embodiment of Figure 1 includes: (1) a converter 10 for converting a stream of data symbols into multiple sets of N data symbols each, (2) a computing means 12 that operates on the sets of data symbols to produce "modulated data symbols corresponding to an invertible randomized spreading of the stream of data symbols" and (3) a combiner 14 for combining the modulated data symbols for transmission. Id. Fig. 1, col. 4 ll. 1–7. The computing means modulates each data symbol using a respective DSSS code, which may be derived using a series of mathematical transforms, as shown in Figure 3. Id. col. 4 ll. 7–12, col. 4 ll. 29–34. The patent lists a dozen exemplary mathematical transforms, including the complex "randomizer transform" of Figure 8. Id. col. 4 l. 66–col. 5 l. 12. In the alternative embodiment of Figure 4, the computing means modulates the N data symbols by applying the transforms directly to the N data symbols rather than indirectly via the DSSS codes. Id. col. 4 ll. 38–43.
Asserted claim 1 recites a transceiver for transmitting data using three components:
The claimed transceiver includes a "converter" for converting a stream of data symbols into multiple sets of data symbols, where each set includes N symbols. Second, the transceiver includes a "computing means" for operating on the sets to produce "modulated data symbols corresponding to an invertible randomized spreading" of the original data symbols. Finally, the transceiver includes a "means to combine the modulated data symbols for transmission." Asserted claim 10, which depends on claim 1, adds means for receiving and decoding the data symbols.
The district court held a Markman hearing and issued two claim constructions relevant to this appeal. J.A. 18. First, the district court construed "modulated data symbols" to mean "data symbols that have been spread by a spreading code." J.A. 62. In doing so, the court rejected Apple's argument that the modulated data symbols must be randomized, explaining that "randomization is a desirable feature that is addressed by other claim language, such as the term invertible randomized spreading,' which appears in Claim 1...." Id. Second, the district court adopted the parties' agreed construction of "first computing means." The parties agreed that the limitation is a means-plus-function element subject to 35 U.S.C. § 112 ¶ 6, and that the corresponding structure is "element 12 of Figures 1 and 4, columns 2:6–10, 2:36–40, 2:58–62, 4:2–12, and 4:35–44, and equivalents thereof." J.A. 73. The agreed upon construction matched the construction of the same term issued by a different court in previous litigation between the parties. Wi–Lan, Inc. v. Acer, Inc., 712 F.Supp.2d 549 (E.D.Tex.2010) ("Acer "). In that case, the court had rejected Wi–LAN's proposal to construe the "first computing means" as additionally encompassing the exemplary transforms disclosed at col. 4 l. 66–col. 5 l. 12, including the complex randomizer of Figure 8, because the transforms related to how the pseudo-noise is generated rather than to any structure in the computing means. J.A. 1362, 1364. Wi–LAN agreed to the Acer construction of the "first computing means" in this case and did not seek a construction that explicitly included the additional structure.
At trial, Apple argued that it did not infringe because claim 1 requires randomizing the data symbols before combining them, and that Apple's products perform these steps in the reverse order (the "ordering requirement"). Claim 1 recites that the computing means must "produce modulated data symbols corresponding to an invertible randomized spreading" and that the converter must "combine the modulated data symbols." Apple argued that because "the modulated data symbols" refers back to the earlier-recited "modulated data symbols corresponding to an invertible randomized spreading," the data symbols to be combined must have already been randomized. J.A. 13. The parties agreed that Apple's products randomize the data symbols only after combining them.
Apple also argued that claims 1 and 10 are invalid because several prior art publications, including a 1989 paper by Sasaki,1 anticipated the asserted claims. J.A. 10,334. The parties agreed that the prior art references taught randomizing the modulated data symbols using real multipliers (i.e., using a "real randomizer") rather than using complex multipliers (i.e., using a "complex randomizer").2 J.A. 1059 at 194:21–25; J.A. 1058 at 190:21–191:4. Apple's invalidity arguments consequently rested on the proposition that "the Court's claim construction told us what the first computing means is, and it didn't say complex randomizer." J.A. 1059 at 195:5–11.
The jury found claims 1 and 10 of the '802 patent invalid and not infringed. J.A. 362, 364. Wi–LAN moved for JMOL on both issues, and for a new trial on noninfringement. J.A. 1197. Wi–LAN argued that the court's claim constructions precluded the ordering requirement underlying Apple's non-infringement defense.
J.A. 11–15. Wi–LAN also argued that the prior art did not anticipate the asserted claims because the prior art did not randomize using complex multipliers, which Wi–LAN argued the asserted...
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Case Comments
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