IP Law Daily Asserted networking patents were limited to wired communications
Tuesday, May 31, 2016

Asserted networking patents were limited to wired communications

Asserted networking patents were limited to wired communications

By Peter Reap, J.D., LL.M.

The federal district court in San Antonio did not err in concluding that the asserted patent claims of two computer networking patents owned by Innovative Wireless Solutions (“IWS”) are limited to wired rather than wireless communications, the U.S. Court of Appeals for the Federal Circuit has decided (Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, May 31, 2016, Reyna, J.). Thus, IWS’s appeal of the district court’s construction of the claim term “communications path” was rejected and the final judgment that Ruckus Wireless and Cisco Systems (together, “Ruckus”) did not infringe the asserted claims was affirmed.

IWS owns U.S. Patent Nos. 5,912,895; 6,327,264; and 6,587,473 (the “Terry patents”). The patents are a line of continuations beginning with the ’895 patent. All share the ’895 specification.

The Terry patents concern techniques for providing access to a local area network (LAN) from a relatively distant computer. When two computers on the LAN transmit onto the medium concurrently, they create interference known as a “collision,” and the concurrent communications may be lost. To deal with these collisions, a LAN protocol may define a contention scheme. For instance, in a “collision detection” scheme, a transmitting computer that detects a collision waits for a given period before reattempting the transmission.

The Terry patents describe an approach by which a computer may communicate with a LAN over the long distances covered by telephone lines. The inventors propose using a collision avoidance scheme rather than a collision detectionscheme. Under the avoidance scheme, a “master” modem in the LAN dictates the timing of one-way communications between the master modem and a “slave” modem in the distant computer. Although the patents only describe connecting the master and slave modems over physical wires, such as a telephone line, the claims recite that the two modems are connected via a “communications path.”

IWS filed suits alleging that several hotels and coffee shops infringed the Terry patents by providing WiFi Internet access to their customers using off-the-shelf WiFi equipment sold by Ruckus. Ruckus responded by filing for declaratory judgment of invalidity and non-infringement in the Western District of Texas. Ruckus argued that its wireless equipment does not infringe the Terry patents because the Terry patents are limited to wired rather than wireless communications.

The central dispute during claim construction was whether the recited “communications path” captures wireless communications or is limited to wired communication. The district court adopted the latter view by construing “communications path” to mean “communications path utilizing twisted-pair wiring that is too long to permit conventional 10BASE-T or similar LAN (Local Area Network) interconnections.” Based on the district court’s construction, the parties stipulated jointly to a final judgment of non-infringement. IWS appealed the construction limiting the term “communications path” to wired communication.

Analysis. IWS argued on appeal that the district court erred by importing the wired limitation into the claims. IWS argued that it was improper to read a limitation into the claims on the basis that every disclosed embodiment includes that limitation. It also argued that because several dependent claims limit the communications path to “two-wire line” or “two-wire telephone line,” the unmodified “communications path” term must encompass more, including wireless communications.

IWS’s arguments relied on the assumption that “communications path” has an ordinary meaning which encompasses both wired and wireless communications, the appellate court noted. But there was no intrinsic or extrinsic evidence to support IWS’s assumption that a person of ordinary skill at the time of invention would have understood the plain and ordinary meaning of “communications path” to include wireless communications, the Federal Circuit held. Nothing in the intrinsic record would have suggested to one of ordinary skill that “communications path” refers to wireless communications. To the contrary, the intrinsic record militated powerfully against that understanding.

First, the title of the Terry patents indicated that they are directed to “Communicating Information Packets Via Telephone Lines.” Second, the specification described “[t]his invention” as one “particularly concerned” with “two wire lines such as telephone subscriber lines.” Third, every embodiment described in the specification utilizes a telephone wire, and when the specification clarified that the full breadth of the invention is not limited to the expressed embodiments, it declared only that the patents may also reach any wired connection.

There also was no evidence that the underlying purpose and disclosed solution of the Terry patents might evoke wireless communication in the mind of a skilled artisan. IWS presented no evidence that the inability to execute collision detection protocols over long distances was a problem in wireless communication or that collision detection was even used in that context.

The canons of claim construction provided additional reason to limit the scope of the claims to wired communication, according to the Federal Circuit. If, after applying all other available tools of claim construction, a claim is ambiguous, it should be construed to preserve its validity. Because the specification makes no mention of wireless communications, construing the instant claims to encompass that subject matter would likely render the claims invalid for lack of written description.

In sum, no intrinsic or extrinsic evidence suggests that “communications path” encompasses wireless communications. Accordingly, the district court’s claim constructions and final judgment of noninfringement based thereon were affirmed.

Dissent. In a dissenting opinion, Judge Stark noted that the majority emphasized that there was no extrinsic evidence to support the “assumption” of IWS that the plain and ordinary meaning of “communications path” to a person of skill in the art at the pertinent time included wireless communications. Judge Stark agreed that the record lacked this extrinsic evidence.

However, rather than supporting affirmance, the majority’s view required the court to vacate the judgment of non-infringement, and the claim construction order on which it was based, and remand for the district court to decide whether to provide the parties an opportunity to present extrinsic evidence. Because the parties below did not dispute the plain and ordinary meaning of “communications path,” but disagreed only as to whether that undisputed meaning should be adopted as the claim construction, the patentee should not be faulted for failing to come forward with extrinsic evidence, Judge Stark argued. Further, although the parties’ dispute should not now be resolved on the intrinsic evidence alone, Judge Stark disagreed with the majority’s assessment of that evidence.

The case is Nos. 2015-1425 and 2015-1438.

Attorneys: Matthew Yungwirth (Duane Morris LLP) for Ruckus Wireless, Inc. and Cisco Systems, Inc. Jonathan Daniel Baker (Farney Daniels PC) for Innovative Solutions, LLC.

Companies: Ruckus Wireless, Inc.; Cisco Systems, Inc.; Innovative Solutions, LLC.

MainStory: TopStory Patent FedCirNews

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