By Tony Dutra
July 14 — A stipulation in an Information Disclosure Statement submitted to the Patent and Trademark Office during a patent reexamination was a clear and unmistakable disclaimer of the broader claim scope the patentee was looking to assert in district court, the U.S. Court of Appeals for the Federal Circuit ruled on July 14.
A wireless network patent owner's infringement charges against Apple Inc. and Motorola Mobility LLC fell because the limited claim scope did not cover the way their mobile phones communicate to base stations.
The stipulation was in light of the Federal Circuit's claim construction ruling six years earlier that led it to affirm a judgment of invalidity for anticipation of claims of the original patent.
Golden Bridge Technology Inc. owns patents (U.S. Patent Nos. 6,574,267 and 7,359,427) on an improvement in communication between mobile devices and base stations in a Code Division Multiple Access (CDMA) network system. The patents claim systems and methods for reducing the risk of interference between multiple devices seeking simultaneous access to the same random access channel. The device essentially negotiates the lowest acceptable power level for communication by sending “preamble” signals at increasing power levels until receiving acknowledgment from the base station.
In a separate case with Nokia Inc. and Lucent Technologies Inc. as defendants, the Federal Circuit affirmed summary judgment of invalidity for anticipation of asserted claims of the '267 patent.
After that decision, the '427 continuation patent was granted and new claims were added to the '267 patent in a reexamination. During each proceeding, Golden Bridge submitted an IDS that disclosed the construction of the “preamble” term it had stipulated to in the Nokia litigation.
Golden Bridge then sued Apple and Motorola in the U.S. District Court for the District of Delaware for infringement of claims of the two patents issued after the first case was resolved.
Judge Sue L. Robinson adopted the same claim construction as to preamble and granted Apple's motion for summary judgment of noninfringement. Golden Bridge appealed.
Judge Kimberly A. Moore wrote the opinion of the appeals court, saying, “We conclude that GBT's submissions during prosecution of its stipulated construction for the term preamble constitute disclaimer.”
Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 2013 BL 121882, 106 U.S.P.Q.2d 1598 (Fed. Cir 2013), held that “an applicant's remarks submitted with an [IDS] can be the basis for limiting claim scope,” the court quoted. “The fact that the [Golden Bridge] stipulation was contained in documents accompanying an IDS does not change this result.”
The stipulation—and thus the disclaimer of scope—was that the claims should be construed to require applying a “spreading code” to the preamble to distinguish the sending wireless device.
Apple's “PRACH” preamble implementation relies on a signature sequence and a scrambling code. “The signature sequence is spread by the scrambling code to create the PRACH preamble,” the court said. “This step cannot constitute spreading the PRACH preamble because a preamble cannot be spread before it exists.”
Golden Bridge had also proposed a new argument at the district court in a motion for reconsideration after summary judgment was granted. The patentee now argued that the signature sequence itself was a preamble.
The appeals court agreed with the district court's refusal to consider the new argument. “Though parties can certainly argue in the alternative, their infringement contentions cannot be a moving target,” it said.
The court further rejected Golden Bridge's attempt to cast its argument as not new, pointing to testimony by Apple's expert witness that Golden Bridge's expert was inconsistent in defining the preamble. But, the court said, the record showed that the varying definitions proffered did not include one that would make the signature sequence a preamble.
The court thus affirmed summary judgment of noninfringement.
Judges Haldane Robert Mayer and Raymond T. Chen joined the opinion.
Mark D. Giarratana of McCarter & English LLP, Hartford, Conn., represented Golden Bridge. Timothy S. Teter of Cooley LLP, Palo Alto, Calif., represented Apple.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
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Text is available at http://pub.bna.com/ptcj/13149614Jul14.pdf.
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