By Thomas Long, J.D
Apple Inc. did not infringe two patents related to a paging system held by GPNE Corp., the U.S. Court of Appeals for the Federal Circuit has held. The Federal Circuit affirmed a district court’s determination that a jury verdict of noninfringement was supported by the weight of the evidence. The district court did not erroneously construe a key claim term and did not improperly leave a disputed claim term unconstrued for the jury to consider (GPNE Corp. v. Apple Inc., August 1, 2016, Prost, S.).
The patents-at-issue—U.S. Patent No. 7,570,954 ("the ’954 patent") and U.S. Patent No. 7,792,492 ("the ’492 patent")—related to relate to a two-way paging system, where paging devices were capable of not only receiving messages but also sending messages back in response. GPNE alleged that certain models of Apple iPhones and iPads infringed the patents based on their compatibility with certain communications networks. The communications standards utilized by those networks allegedly relied on the two-way paging system disclosed in the patents, and the accused devices’ compatibility with these standards rendered the accused Apple devices infringing, according to GPNE.
Following a seven-day trial, a jury found that the asserted claims of the patents-at-issue were valid, but that Apple’s accused products did not infringe them. In a June 9, 2015, decision, the district court denied the parties’ post-trial motions. GPNE appealed, arguing that the district court’s noninfringement judgment should be reversed because: (1) it was based on an erroneous construction of the claim term "node" and (2) the court erred by allowing the jury to decide the meaning of the claim term "pager."
Claim construction. The asserted claims referred to devices on the system’s network as "nodes." The claims required that the "node" be "in a data network, the data network including a plurality of nodes," have "at least one processor," have "a memory providing code to the processor," and have an "interface" that transmits and receives communication signals in a particular manner. The district court construed "node" as "pager with two-way data communications capability that transmits wireless data communications on a paging system that operates independently from a telephone network."
GPNE first argued that the district court erred in classifying a "node" as a "pager" because nothing in the claims required that a "node" must be a "pager." Although the specification shared by both patents consistently referred to "nodes" as "pagers" more than 200 times, GPNE contended that the term "node" should be construed more broadly. The appellate court disagreed. According to the Federal Circuit, when a patent repeatedly and consistently characterized a claim term in a particular way, it was proper to construe that claim term in accordance with that characterization. In addition, during prosecution, disclosures filed by the inventor consistently and exclusively described the invention as a system of pagers.
Second, GPNE argued that the limitation "operates independently from a telephone network was improper because it was based only on a "single summation sentence" from the specification. Even though the phrase appeared only once, it was not improper for the district court to limit the claims in accordance with the phrase, the appellate court said. The characterization also was bolstered by the inventor’s declaration during prosecution that the invention operated independently of a telephone network.
Jury consideration of "pager." Finally, GPNE contended that it was reversible error for the court to fail to provide a construction of the term "pager" and to leave that issue for the jury. Although the Federal Circuit rejected Apple’s argument that GPNE waived its ability to raise this challenge because it never requested a construction for the term, the court rejected GPNE’s challenge on the merits. Claim construction is a legal question for the court, but the district court was obligated only to resolve the questions about claim scope that were raised by the parties. In the Federal Circuit’s view, the district court’s construction was sufficient to resolve the parties’ dispute over the scope of "node" and were sufficient to clarify that the type of "pager" a "node" must be was not a 1990s-era legacy pager.
GPNE’s appeal, the Federal Circuit said, was not ultimately based on the district court’s failure to define claim scope, but on its allowing Apple to make arguments to the jury in which Apple compared the accused iPhones and iPads to 1990s-era legacy pagers. The district court did not abuse its discretion in rejecting GPNE’s contention that Apple’s arguments required a new trial, the appellate court held. The question of whether Apple’s products could be "pagers" was extensively debated at trial, and GPNE had ample opportunity to present rebuttal evidence and argument that the products were "pagers," and in fact had done so. Given the counter-balancing testimony offered by GPNE, it was within the district court’s discretion to conclude that the jury was not misguided in carrying out its fact-finding role.
Noninfringement. GPNE did not articulate an infringement theory under the district court’s construction of "node," the appellate court noted. Accordingly, because the district court correctly construed the term, the Federal Circuit affirmed the judgment of noninfringement.
The case is No. 2015-1825.
Attorneys: Justin Adatto Nelson (Susman Godfrey LLP) for GPNE Corp. Lauren B. Fletcher (Wilmer Cutler Pickering Hale and Dorr LLP) for Apple Inc.
Companies: GPNE Corp.; Apple Inc.
MainStory: TopStory Patent FedCirNews
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