United States: Multiplying Claim Requirements After Trial Makes Things Impermissibly Complex

Wi-LAN, Inc. v. Apple, Inc.

After a jury found non-infringement and invalidity of two asserted patent claims, the U.S. Court of Appeals for the Federal Circuit affirmed the district court's denial of the patent owner's judgment as a matter of law (JMOL) of infringement and motion for new trial under U.S. Court of Appeals for the Fifth Circuit law, but reversed the district court's JMOL that the claims were not-invalid due to improper post-verdict claim construction. Wi-LAN, Inc. v. Apple, Inc., Case Nos. 14-1437;-1485 (Fed. Cir., Jan. 8, 2016) (Reyna, J.).

The litigants' arguments relating to transmitters used in a spread-spectrum wireless communications technology hinged on the district court's claim construction. Two patent figures described two alternative embodiments of the invention. Generally, the asserted claims require three things: a converter for converting a stream of data symbols, a "computing means" that operates on the symbols to produce "modulated symbols corresponding to an invertible randomized spreading" and "a means to combine the modulated data signals for transmission." One example of a mathematical operation performed by the "computing means" was a "complex randomizer transform" depicted in patent Figure 8.

The district court construed the claim term "modulated data symbols" to mean "data symbols that have been spread by a spreading code," but rejected Apple's argument that the data symbols must be randomized. The district court adopted the parties' agreed construction that the claimed "first computing means" was means-plus-function claim element where the corresponding structure is "element 12 of Figures 1 and 4" plus other cited patent sections that did not include or refer to Figure 8. The agreed construction came from a prior case in which the court rejected Wi-LAN's attempts to have the randomizer of Figure 8 included as part of the means-plus-function structure.

Apple argued that it did not infringe because the claims require randomizing the data symbols before combining them, whereas Apple's products performed the steps in a reverse order. Apple argued that the claim requirement to "combine the modulated data signals" referred back to the language "modulated data symbols corresponding to an invertible randomized spreading," such that the data symbols must be randomized prior to combining. Apple argued that the claims were invalid because the prior art taught randomizing modulated data symbols using a "multiplier." While the parties agreed that the key prior art taught a "real multiplier" versus the "complex multiplier" described in the patent, Apple argued that the court's construction did not specify a multiplier type.

The jury found that the claims were not infringed and were invalid. Regarding infringement, the district court found that the ordering requirement was consistent with the court's claim construction and that a reasonable jury could have found non-infringement under the operative construction. On appeal, Wi-LAN argued that the district court's construction of "computing means" and its rejection of Apple's argument relating to randomization were inconsistent with the "ordering requirement." After analyzing the court's claim construction and the intrinsic evidence, the Federal Circuit agreed with both the Court's construction and Apple's analysis. The Court further held that there was substantial evidence to support the jury's verdict of non-infringement under the doctrine of equivalents.

Regarding invalidity, the district court acknowledged that its construction did not specifically provide for a complex multiplier. However, it found that a reasonable jury should have understood that the first computing means must randomize the symbols using a "complex multiplier" rather than a "real multiplier" because both sides allegedly took the positon that the complex multiplier of Figure 8 was necessarily included in the Court's construction. On appeal, the Federal Circuit agreed with Apple that the court's requirement for a complex multiplier was a new claim construction, which the district court may not issue at the JMOL stage. The Court found substantial evidence that Apple witnesses did not agree that a complex multiplier was required. The Court found that the agreed construction from the prior case, in which it was determined that Figure 8 was not part of the "first computing means," supported Apple's argument that a complex multiplier was not required.

Multiplying Claim Requirements After Trial Makes Things Impermissibly Complex

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