IP Law Daily SIMO’s $8M judgment for uCloudlink’s infringement of cellular roaming patent reversed
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Tuesday, January 5, 2021

SIMO’s $8M judgment for uCloudlink’s infringement of cellular roaming patent reversed

By Cheryl Beise, J.D.

The district court improperly construed a claim term to mean that an accused device was not required to have the "non-local calls database" listed in the asserted claim’s preamble.

A New York federal district court’s award of more than $8 million in damages to SIMO Holdings for uCloudlink’s willful infringement of a patent for reducing cellular roaming charges has been reversed by the U.S. Court of Appeals for the Federal Circuit. The district court erred in construing the phrase "a plurality of" in the preamble of the asserted independent apparatus claim to mean that an accused device was not required to have the listed "non-local calls database" feature. Applying the correct claim construction, uCloudlink was entitled to judgment of noninfringement (SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology Ltd., January 5, 2021, Taranto, R.).

Simo Holdings, Inc., owns U.S. Patent No. 9,736,689 (the ’689 patent), directed to apparatuses and methods for reducing roaming charges on cellular networks when a user travels outside his or her home territory. SIMO sued Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd. (collectively, uCloudlink) for infringement, alleging that four uCloudlink products—three GlocalMe WiFi hotspot devices (G2, G3, and U2 Series), and the S1 mobile phone—came within claim 8 of the ’689 patent (as well as dependent claims that presented no separate issues on appeal). In April 2019, the district court granted summary judgment of infringement to SIMO.

The case proceeded to trial on validity, willful infringement, and damages. The jury found at least one asserted claim not invalid, awarded $2,183,562.40, and found the infringement willful. The district court later enhanced the damages by 30% (an addition of $655,069). The court then amended the judgment to include pre-judgment interest and additional damages, for a total award of $8,230,654. uCloudlink appealed.

Claim construction. uCloudlink challenged the district court’s construction of claim 8. Before the district court, the parties disputed whether apparatus claim 8 requires a "non-local calls database." Siding with SIMO, the district court concluded that claim 8 does not require such a database.

Claim 8, in first part, recites:

A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database, at least one of the plurality of programs stored in the memory comprises instructions executable by at least one of the plurality of processors for: . . .(emphasis added). The parties referred to the above paragraph as the "preamble" to claim 8.

The district court first held that the preamble is limiting, i.e., what the preamble requires must be present for an apparatus to come within the claim. The Federal Circuit agreed. The subject matter of the preamble is a "wireless communications client or extension unit." The district court correctly noted that the preamble is the only part that identifies the necessary physical structure of the apparatus—a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database—whereas the so-called body of the claim describes the actions taken by the invention. These listed structural requirements must be understood as part of the claimed invention, the Federal Circuit said.

The district court next addressed whether the preamble requires, for a device to come within the claim, that the device have the "non-local calls database" listed in the preamble. Siding with SIMO, the court concluded that a "non-local calls database" is not actually required. The district court reasoned that, because "the specification indisputably states that the non-local calls database is optional," uCloudlink’s construction requiring a non-local calls database, "although grammatically appealing, would contradict the specification." The court avoided that result by treating "and" in the preamble as though it read "and/or." With this substitution, the district court determined that the accused products met all of claim 8’s limitations, as well as claim 11, which depends on claim 8.

The Federal Circuit rejected the district court’s conclusion that claim 8 does not require two or more non-local calls databases. Instead, agreeing with uCloudlink, the Federal Circuit determined that "a plurality of" requires at least two of each of the listed items in the phrase at issue in claim 8. The Federal Circuit has previously held that a phrase grammatically comparable to "a plurality of" at the start of a list of items joined together by "and" applies to each item in the list, not to the list considered as a whole. See SuperGuide Corporation v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004). SIMO offered no grammatical basis for reading a phrase like "a plurality of" to apply to some but not other items in the list.

The Federal Circuit further found that the language of claim 8 does not cover specification embodiments that lack a non-local calls database. The court noted that the ’689 patent’s specification does not designate any particular embodiment as preferred. "Simply stating that a ‘non-local calls database’ is optional does not mean that the embodiment without the database is preferred," the court said. "And the specification’s two uses of ‘preferred’ have nothing to do with a hierarchy among embodiments."

Infringement. Applying the proper claim construction, the district court’s grant of summary judgment to SIMO had to be reversed. SIMO did not identify a triable issue on the factual question of whether the accused products lacked a non- local calls database. SIMO argued for a remand if uCloudlink’s claim construction was adopted. However, SIMO made no request to the district court for further claim construction, for further discovery, or for supplementation of its expert’s report, even though the issue of whether the accused products had a non-local calls database was squarely presented by uCloudlink’s motion. The Federal Circuit held that uCloudlink was entitled to summary judgment of noninfringement.

This case is No. 19-2411.

Attorneys: Benjamin Edward Weed (K&L Gates LLP) for Simo Holdings Inc. John A. Dragseth (Fish & Richardson PC) for Hong Kong uCloudlink Network Technology Ltd. and uCloudlink [America], Ltd.

Companies: Simo Holdings Inc.; Hong Kong uCloudlink Network Technology Ltd.; uCloudlink [America], Ltd.

MainStory: TopStory Patent FedCirNews GCNNews

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