Wi-LAN USA, Inc. v. Apple Inc.

Wi-LAN USA, Inc. v. Apple Inc.
830 F.3d 1347 (Fed. Cir. 2016)
Authored by Bud Davis

Statement of Facts: In this infringement action, appellants Wi-LAN, Inc. and Wi-LAN USA, Inc. (“Wi-LAN”) claimed that Apple’s iPhone operating on a 4G LTE network infringed on two of Wi-LAN’s patents, Nos. 8,311,040 (“the ‘040 patent”) and 8,315,640 (“the ‘640 patent”). The patents, which Wi-LAN had previously purchased from a networking company named Ensemble, modified a typical wireless network by introducing intermediary nodes between the base station, such as a cellular tower, and user devices, such as the iPhone. In essence, the intermediary nodes function to increase a network’s overall efficiency. The ‘040 patent converts and reformats data packets received from users into a single, uniform format for easier transmission to the base station. The ‘640 patent allocates uplink bandwidth to ensure that quality-of-service (“QoS”) needs are met within the network.

Wi-LAN alleged that the patented intermediary nodes “mapped onto” the iPhone’s baseband processor, which manages communication with the 4G network. Under Wi-LAN’s theory of infringement, a user device “maps onto” the phone’s application processor, which runs the phone’s applications. Accordingly, Wi-LAN contended that Apple’s network architecture made use of its patented inventions.

Procedural History: Wi-LAN filed suit against Apple Inc. in the United States District Court for the Southern District of California. During the claim construction phase of litigation, the District Court construed several terms, including “specified connection” in the ‘040 patent and “UL connections” in the ‘640 patent. After discovery concluded, Apple moved for summary judgment based on its proposed constructions of “specific connection” and “UL connections.” Apple defined the former as “the communications link between an intermediary node and a specific end user,” id. at *4, and defined the latter as “an uplink connection between the intermediary node and its user[.]” Id. Essentially, as Apple argued, the iPhone’s broadband processor did not function as an intermediary node, and its application processor did not operate as a user device. Therefore, contrary to Wi-LAN’s claims, the iPhone contains one connection, rather than multiple, between an intermediary node and user device.

The District Court agreed with Apple’s constructions and granted Apple summary judgment for noninfringement. Wi-LAN moved for reconsideration, presenting a new infringement theory and new constructions of the two terms, which the District Court denied. Wi-LAN then appealed to the Federal Circuit, claiming that the District Court erroneously granted summary judgment by misconstruing the two terms. Apple also asserted on appeal that waiver barred Wi-LAN from changing its interpretation of “UL connection” as it did on its motion for reconsideration.

Questions Presented: There were three issues before the Federal Circuit. First, whether “specified connection” under the ‘040 patent excludes embodiments where the intermediary node can maintain only one “specified connection,” rather than multiple. Second, whether District Court abused its discretion in allowing Wi-LAN to change its claim construction position on “UL connections” after it had lost on summary judgment. Third, whether “UL connections” under the ‘640 patent refers to multiple connections between an intermediary node and a user device, rather than a connection between an intermediary node and a base station.

Holdings: As to the first issue, the Federal Circuit affirmed the District Court’s construction of “specified connection” under the ‘040 patent as excluding embodiments where an intermediary node maintains only one specified connection. The court found that the specification’s “consistent references to multiple ‘specific connections’” and the related claims’ discussion of allocating bandwidth favored Apple’s construction. The Federal Circuit therefore affirmed the District Court’s grant of summary judgment regarding the infringement claims relating to the ‘040 patent.

As to the second issue, the Federal Circuit also affirmed the District Court’s construction of “UL connections” under the ‘640 patent as referring to connections between the intermediary node and user devices. Looking to the prosecution history, the court found that the term referred to intermediary node’s connections with user devices, rather than the base station. The Federal Circuit reached this conclusion based on the patent’s allocation of bandwidth between intermediary nodes and user connections, the network architecture, and Wi-LAN’s representations made during prosecution. Accordingly, the Federal Circuit also affirmed the grant of summary judgment for Apple regarding the infringement claims relating to the ‘640 patent.

As to the third issue, the Federal Circuit concluded that waiver did not bar Wi-LAN from taking a different claim-construction position regarding “UL connections.” The District Court was within its authority to decide Wi-LAN’s motion for reconsideration on the merits, even though the District Court understood that Wi-LAN had adopted an inconsistent position.

Reasoning: The Federal Circuit applied the Teva standard of review because the issues pertained to claim construction. Under this standard, “the ultimate issue of the proper construction of a claim should be treated as a question of law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S Ct. 831, 839 (2015). Accordingly, the District Court’s findings based on the patents’ intrinsic evidence (e.g., the patents’ claims, specifications, prosecution history) were conclusions of law and subject to de novo review. Id.

Regarding “specified connection,” the Federal Circuit first asked how an “ordinary artisan” would understand the term at the time of invention. Finding that this analysis informed little as to whether the patent excluded embodiments unable to maintain multiple specified connections, the court next looked to whether the intrinsic record enlightened the term’s context. Neither Apple nor Wi-LAN, however, argued that the specification provided a definition. The court nonetheless found that the specification discussed a “plurality of user connections” and did not suggest only one specified connection. The court also found that the claims’ verbiage entailed words expressing relativity, such as “allocate,” “priority,” “high,” and “mid,” which grammatically indicated that “specified connection” referred to multiple objects and thus multiple specified connections.

Turning next to the ‘640 patent, the Federal Circuit, as an initial matter, addressed the procedural issue of waiver. The Federal Circuit first observed that district courts have the discretion to set schedules for claim construction such that parties adhere to their respective positions by a certain date. However, the Federal Circuit also noted that it has “long held that a district court may ‘engage in rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves.’” Wi-LAN USA, Inc., 2016 WL 4073324 at *7 (quoting Conoco, Inc. v. Energy & Envtl. Intern., L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006)). Therefore, the District Court did not abuse its discretion when it adjudicated Wi-LAN’s motion for reconsideration on the merits, even though Wi-LAN had failed to challenge the District Court’s construction prior to summary judgment and had failed to identify newly discovered evidence to support a shift in its position.

In interpreting “UL connections,” the Federal Circuit first noted that the term had no plain meaning. Second, the specification did not explicitly define it. Accordingly, the court examined the patent as a whole and its prosecution history to ascertain its meaning. Looking to how the patent allocates bandwidth, the court found that its allocation scheme suggested that connections exist between the intermediary node and its users, rather than the base station, and that the allocation process only made sense under Apple’s construction. Additionally, the specification described a network architecture in which intermediary nodes maintain a connection with a base station and multiple connections with user devices, which further indicated that “UL connections” referred to connections between intermediary nodes and users. Lastly, the court found that Wi-LAN’s statements made during prosecution refuted Wi-LAN’s attempt to differentiate “UL connections” as a term which referred only to a connection between an intermediary node and base station.

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