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By Tony Dutra
NorthPeak Wireless LLC had to limit its patent’s scope so much at the Patent and Trademark Office that it killed its infringement case against users of chips made by Intel Corp. and others ( NorthPeak Wireless, LLC v. 3Com Corp. , 2016 BL 432048, Fed. Cir., No. 2016-1477, 12/28/16 ).
The U.S. Court of Appeals for the Federal Circuit today affirmed a district court’s judgment in the case.
NorthPeak’s patents covered a wireless warning system for use in large office buildings. The case began in 2008, when NorthPeak alleged infringement by computers, routers and adapters made by 3Com Corp., Dell Inc. and 25 other manufacturers. Intel intervened in 2009 on behalf of the nine defendants that used its chips. Its actions also helped those that didn’t.
Intel forced two PTO reexaminations of NorthPeak’s patents. The district case was stayed for five years during the reexaminations.
Only U.S. Patent No. 4,977,577 survived. It claimed use of “spread spectrum” technology, allowing devices to use a broader range of radio frequencies to resist interference when the warning related to fire or smoke. In the second reexamination, NorthPeak escaped the examiner’s initial invalidity ruling by saying the spreading-related circuitry required using a “register,” and that standard computing dictionaries explained that the register could only be in high-speed memory.
The U.S. District Court for the Northern District of California held NorthPeak to its representations before the PTO examiner.
The wireless-related circuitry in Intel’s chips, as well as the equivalent used by the non-Intel manufacturers in the case, adhere to the 802.11(b) technology standard, using regular memory to implement the same technology. Therefore, NorthPeak had to stipulate to noninfringement under the court’s corresponding claim construction.
On appeal, NorthPeak argued that its arguments before the examiner turned on characteristics of a register, not the word “register” itself. Regular memory can sometimes exhibit the same characteristics, it said.
The Federal Circuit rejected the argument, pointing out the exact definition of “register” NorthPeak gave in reexamination, as well as the examiner’s record of an interview with NorthPeak’s attorney saying that the patentee specifically disclaimed use of regular memory.
Judge Raymond C. Clevenger III wrote the court’s nonprecedential opinion, which was joined by Chief Judge Sharon Prost and Judge Raymond T. Chen.
Nix Patterson & Roach LLP represented NorthPeak. Perkins Coie LLP represented Intel.
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