IP Law Daily Apple granted reversal of district court’s finding of patent validity
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Friday, January 8, 2016

Apple granted reversal of district court’s finding of patent validity

By Jody Coultas, J.D.

The U.S. Court of Appeals for the Federal Circuit has affirmed a district court’s denial of judgment as a matter of law and of a new trial with respect to non-infringement by Apple Inc. of a wireless data communications technique patent held by Wi-LAN, Inc. (Wi-LAN, Inc. v. Apple Inc., January 8, 2016, Reyna, J.). However, the appellate court held that the district court erred in granting the patent holder’s motion for judgment as a matter of law and vacating a jury verdict of invalidity.

Patent-in-suit. U.S. Patent No. RE37,802 (the ’802 patent) covers a wireless data communication technique called “Multi-Code Direct-Sequence Spread Spectrum” (MC-DSSS), and is embodied in several modern wireless communications standards. Claim 1 recites a computing means that “produce[s] modulated data symbols corresponding to an invertible randomized spreading” and a means to combine that “combine[s] the modulated data symbols.”

Jury verdict. A jury found that Apple did not infringe claims 1 and 10 of the ’802 patent; the jury also found the claims to be invalid. The district court granted Wi-LAN’s motion for judgment as a matter of law of no invalidity, but it denied the motion with respect to infringement. Both parties appealed.

Non-infringement. In denying JMOL on non-infringement, the district court held that the ordering requirement was consistent with the claim constructions and that a reasonable jury could have found non-infringement under those constructions. Wi-LAN argued that the district court expressly rejected the ordering requirement at claim construction when it refused to construe “modulated data symbols” as necessarily randomized. Even with the ordering requirement, Wi-LAN argued Apple’s products would still infringe under the doctrine of equivalents because the different orderings produced mathematically identical results.

The claims require randomizing the modulated data symbols before combining them, and the district court did not explicitly reject the ordering requirement at claim construction. The intrinsic record requires that the symbols be modulated according to an invertible randomized spreading before being combined for transmission. Because Apple’s products did not randomize the symbols before combining them, the structure of those products was not identical to the disclosed structure, and Apple therefore did not infringe the asserted claims. Therefore, the jury’s verdict was neither unreasonable nor against the great weight of the evidence, and the district court properly denied a new trial on the infringement issue.

Doctrine of equivalents. Substantial evidence supported the jury’s verdict that the order difference between Apple’s products and the claimed invention was not insubstantial. Infringement under the doctrine of equivalents requires the patentee to prove that the accused device contains an equivalent for each limitation not literally satisfied. Wi-LAN argued that the structural differences pointed to by Apple were insubstantial and could not support a finding of nonequivalence. Though Wi-LAN’s argument had merit, it was insufficient to disturb the jury’s verdict. It was reasonable for the jury to credit Apple’s expert and to conclude that a person of ordinary skill would have found the design differences not insubstantial.

Invalidity. The district court found that a reasonable jury should have understood that the first computing means must randomize the symbols using complex multipliers while the prior art used only real multipliers. On appeal, Apple argued that the district court’s addition of a complex multiplier requirement was a new claim construction, which the district court may not issue at the JMOL stage.

The district court’s ruling was based on a reconstruction of the claims that went far beyond clarifying a meaning inherent in the construction, and instead altered the scope of the original construction. A trial court may “adjust constructions post-trial if the court merely elaborates on a meaning inherent in the previous construction.” Here, the district court concluded that expert testimony from both sides established that the complex multiplier of Figure 8 was implicit within the construction. The parties, however, did not agree that the claims required complex randomization, and the district court’s characterization of expert testimony as requiring a complex randomizer was clearly at odds with that witness’s testimony. Therefore, the court reversed the ruling vacating the jury’s finding of invalidity.

The cases are Nos. 2014-1437 and 2014-1485.

Attorneys: Robert A. Cote (McKool Smith, P.C.) for Wi-LAN, Inc. Mark S. Davies (Orrick, Herrington & Sutcliffe LLP) for Apple Inc.

Companies: Wi-LAN, Inc.; Apple Inc.

MainStory: TopStory Patent FedCirNews

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