Golden Bridge Tech. v. Apple: Patentee doomed by Proposed Narrowing Construction during Prosecution, and Waiver of Alternate Arguments during Litigation

Category: Claim Construction  
By: Jesus Hernandez, Blog Editor/Contributor  
TitleGolden Bridge Tech., Inc. v. Apple Inc., No. 2013-1496 (Fed. Cir. July 14, 2014).
[1: Claim Construction] GBT disputes the portion of the district court’s construction requiring that the preamble be spread prior to transmission. It argues that […] It argues that its submission of its stipulated construction to the PTO in an IDS does not constitute a disclaimer of the broader claim scope.
Golden Bridge Tech., Inc. at *6.
[2: Waiver of Alternate Arguments] GBT also argues that the district court erred by declining to modify its judgment of noninfringement on reconsideration. GBT’s argument is two-fold. [...] [I]t contends that it did not waive its signature sequence infringement theory because that theory was not introduced for the first time in its motion for reconsideration.
Id. at *12.
[1: Claim Construction] We conclude that GBT’s submissions during prosecution of its stipulated construction for the term preamble constitute disclaimer. Although we generally construe terms according to their plain and ordinary meanings to one of ordinary skill in the art, we depart from that meaning where there is disclaimer. […] Here, GBT clearly and unmistakably limited the term preamble to “a signal used for communicating with the base station that is spread before transmission[,]” [during reexamination of the ’267 patent and prosecution of the ’427 patent].
Id. at *6 (text added).
[2: Waiver of Alternate Arguments] We conclude that GBT’s signature sequence infringe- ment theory was raised for the first time in its motion for reconsideration. Prior to its motion for reconsideration, GBT did not argue that the signature sequence alone in the accused device was itself a preamble, but instead that the PRACH preamble met the preamble limitations in the claims.
Id. at *13.

Procedural HistoryGolden Bridge Technology, Inc. (GBT) appeals from the district court’s grant of summary judgment that Apple Inc. (Apple) does not infringe the asserted claims of U.S. Patent Nos. 6,574,267 (the ’267 patent) and 7,359,427 (the ’427 patent).
Golden Bridge Tech., Inc. at *2.
Legal Reasoning (Moore, Mayer, and Chen)
Subject Matter of Patents-in-suitThe patents-in-suit disclose an improvement for a CDMA system that reduces the risk of interference be- tween the signals sent from various mobile stations. In particular, the patents-in-suit disclose that a mobile station seeking to communicate with the base station will transmit preambles at increasing power levels until it receives an acknowledgment signal from the base station indicating that the preamble was received. Id. col. 6 ll. 27–32, col. 7 ll. 47–51, 58–61. Once the mobile station receives an acknowledgment from the base station, it stops transmitting preambles and starts transmitting message information. Id. col. 7 ll. 58–61. This ensures that each data signal is transmitted at the lowest power necessary to reach the base station, thereby reducing the risk of interference.
Golden Bridge Tech., Inc. at *3.
Representative Claim 42The claims GBT asserted against Apple in this case are new claims that were either added during reexamination of the ’267 patent or during prosecution of the ’427 patent. Claim 42 of the reexamined ’267 patent is representative of the claims asserted in this litigation (emphases added):
A method of transferring packet data for a mobile station (MS) with an MS receiver and an MS transmitter comprising:

receiving at the MS receiver a broadcast common channel from a base station;

determining a plurality of parameters required for transmission to the base station;

spreading an access preamble selected from a set of predefined preambles;

transmitting from the MS transmitter the spread access preamble, at a first discrete power level;

if no layer one acknowledgment corresponding to the access preamble is detected, transmitting a spread access preamble from the MS transmitter at a second discrete power level higher than the first discrete power level; and

upon detecting a layer one acknowledgment corresponding to a transmitted access preamble, ceasing preamble transmission and transmitting the packet data from the MS transmitter.

Id. at *4.
1. Claim Construction
Legal StandardClaim terms are generally given their plain and ordinary meanings to one of skill in the art when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Prosecution disclaimer or disavowal must be clear and unmistakable. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003).
Golden Bridge Tech., Inc. at *5.
Submitted Proposed ConstructionDuring reexamination of the ’267 patent and prosecution of the ’427 patent, GBT submitted and requested that the PTO “expressly consider[]” its stipulated construction of preamble from the Texas Litigation. J.A. 1674, 1680, 1808–10, 2007–08, 2127, 2639, 2641, 2679. The stipulation required the preamble to be spread before transmission. Id. It would have been natural for both the PTO and the public to rely upon the stipulation in determining the scope of the claimed invention.
Id. at *6-7.
Effect of SubmissionIt is correct that “mere disclosure of potentially material prior art to the [PTO] does not automatically limit the claimed invention.” Abbott Labs., 334 F.3d at 1279. However, this is not a typical IDS, and GBT did more than simply disclose potentially material prior art. It submitted its own stipulated construction of a claim term in the context of the particular patents being reexamined (’267 patent) and prosecuted (’427 patent). This is a clear and unmistakable assertion by the patentee to the PTO of the meaning and scope of the term preamble. The fact that the stipulation was contained in documents accompanying an IDS does not change this result. We have held that “an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope.” Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013); see also Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1303 (Fed. Cir. 1997) (“An IDS is part of the prosecution history on which the examiner, the courts, and the public are entitled to rely.”).
Id. at *7.
No Rescission of Proposed ConstructionAlthough our precedent allows applicants to rescind a disclaimer during prosecution, GBT did not avail itself of this route and never notified the PTO that it sought a meaning of preamble that was different from its stipulated construction. See, e.g., Hakim v. Cannon Avent Grp., 479 F.3d 1313, 1317–18 (Fed. Cir. 2007); Spring Window Fashions L.P. v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003) (holding the applicant to the “restrictive claim construction that was argued during prosecution” where he “never retracted any of his statements”).
Id. at *8.
[T]he district court properly granted summary judgment of noninfringement. The preamble must be “spread prior to transmission.” The PRACH preamble is not spread. The signature sequence is spread by the scrambling code to create the PRACH preamble. See Appellant’s Br. 63–64. This step cannot constitute spreading the PRACH preamble because a preamble cannot be spread before it exists. Because there is no dispute that the PRACH preamble is not spread, it cannot meet the preamble limitations in the asserted claims. The district court properly granted summary judgment of noninfringement on this basis.
Golden Bridge Tech., Inc. at *12.
[2] Waiver of Alternate Arguments
GBT's expert opinion did not encompass alternate argumentWe see no error in the district court’s interpretation of GBT’s expert testimony. We have reviewed the opinion cited by GBT and agree with the district court that GBT’s expert did not opine that the signature sequence alone constituted the accused preamble. The expert opinion repeatedly characterized the preamble as containing two codes (signature and scrambling). Though the expert referred to the “preamble signature,” he also referred throughout to the “preamble scrambling code.” See, e.g., J.A. 213–15, ¶¶48–49; J.A. 225–26, ¶¶74–76; J.A. 240, ¶107. GBT’s expert opined that these two codes (signature and scram- bling), which constitute the PRACH preamble in the accused device, together satisfy the preamble term. Though GBT’s expert was at times inconsistent with his nomenclature, he did not make the alternative argument that the signature sequence of the accused device alone satisfies the preamble term.
Golden Bridge Tech., Inc. at *15.
Apple's expert opinion did not encompass alternate argumentApple’s expert did not opine that the signature sequence constitutes the preamble. At most, he noted in multiple places that GBT’s expert was inconsistent in his use of the term preamble. J.A. 635, ¶154; J.A. 638, ¶162. He stated: “Dr. Vojcic’s absence of a clear and consistent identification of what he considers to be meeting the claimed ‘preamble’ is of critical importance.” J.A. 639, ¶162. Apple’s expert addressed all the possible ways that GBT’s expert could be arguing that the preamble term is met in the accused device: (1) each signature, (2) the 256-fold repetition of these signatures, and (3) the combination of the signature sequence and the scrambling code. J.A. 637–40. Apple’s expert opined that under any of those interpretations Apple’s device does not meet the preamble limitation. This testimony by Apple’s expert, about GBT’s expert’s confusing and inconsistent nomenclature, does not establish that GBT’s signature sequence theory was not new.
Id. at *16.
We affirm the district court’s grant of summary judgment of noninfringement.
Golden Bridge Tech., Inc. at *17.

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