Wi-LAN, Inc., v. Apple Inc., No. 2014-1437, 1485 (Fed. Cir. 2016)

Written By: John Kirkpatrick

Wi-LAN sued Apple alleging infringement of U.S. Patent No. RE37,802 (the ’802 patent) concerning a wireless data communication technique.  The jury found no infringement and that the infringing claims were invalid as anticipated by prior art that disclosed a randomizer using real multipliers.  The district court denied Wi-LAN’s motion for judgment as a matter of law and for a new trial regarding infringement, but overruled the jury’s verdict regarding invalidity by ruling that the ’802 patent required complex multipliers.  Wi-LAN appealed the denial of JMOL and its motion for a new trial.  Apple appealed the district court’s ruling of validity.

Claim 1 of the ’802 patent describes producing “modulated data symbols corresponding to an invertible randomized spreading of the first stream of data symbols; and means to combine the modulated data symbols.”  Wi-LAN, INC. at *5.  Apple argued for non-infringement because Apple combines the data symbols before randomizing whereas the ’802 patent describes the opposite.  Specifically, Apple asserted that the data symbols of the ’802 patent are randomized prior to being combined because the phrase “the modulated data symbols” in the combining step must refer to the previously recited “modulated data symbols corresponding to an invertible randomized spreading of the first stream of data symbols.”  Id. at *7.  The Court (REYNA, Wallach, Hughes) agreed, noting that “subsequent use of the definite articles ‘the’ or ‘said’ in a claim refers back to the same term recited earlier in the claim.”  Id. at *8.  “Because ‘the modulated data symbols’ refers back to these already-randomized symbols, the claims impose the disputed ordering requirement.” Id. at *11 (emphasis removed).  The Court also noted that the ordering requirement is consistent with the specification. 

Wi-LAN countered that performing the functional steps described in claim 1 in reverse still infringes under the doctrine of equivalents because the output is identical regardless of the order in which the steps are performed.  In other words, a means-plus-function limitation may have a broader scope when “[a]n element in the accused product is equivalent to a claimed element if the differences between the two elements are ‘insubstantial’ to one of ordinary skill in the art.” Wi-LAN at *13 (text added).  However, Apple’s expert testified that differences are not insubstantial because the different orders affect the number of transistors required.  Wi-LAN countered that the differences are insubstantial when saving only a few transistors as compared to the total number of transistors on a chip.  The Court found that Apple’s expert testimony that one should only consider the differences with respect to the portion of the chip that performs the functionality was substantial evidence for the jury to reasonably conclude that “a person of ordinary skill would have found the design differences not insubstantial.” Wi-LAN at *15

In addition, Apple argued that the district court improperly added a complex multiplier requirement to the claim construction to reverse the jury’s determination of invalidity.  The Court found nothing in the structure that describes the “first computing means” of claim 1 as including complex multipliers.  Notably, Wi-LAN failed to obtain a construction including complex multipliers in a previous case and consented to the omission in this case.  Id. at *16.  Therefore, “it was reasonable for a jury to conclude that the ‘first computing means’ need not include the complex multiplier.”  Id.  Further, the court’s JMOL order was not a permissible clarification of the existing construction by making explicit what is implicit in the original construction because “this is not a case where the inclusion of an implicit component should have been obvious to the jury.”  Id. at *17.  Although a trial court may “adjust constructions post-trial if the court merely elaborated on a meaning inherent in the previous construction,” the district court’s inclusion of a complex randomizer conflicts with the testimony of the expert witness whose invalidity theory was based on the notion that the claim does not require a complex randomizer.  Further, the jury was instructed that it did not have to accept an opinion that a complex randomizer was required.  Thus, the district court’s post-verdict construction “went far beyond clarifying a meaning inherent in the construction or making plain what should have been obvious to the jury.”  Id. at *18.

Thus, the Court affirmed the district court’s denial of Wi-LAN’s motion for JMOL and a new trial regarding non-infringement and reversed the district court’s determination of invalidity.
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