In Golden Bridge Technology, Inc. v. Apple Inc., No. 13-1496 (Fed. Cir. July 14, 2014), the Federal Circuit affirmed the district court's grant of SJ that Apple Inc. ("Apple") did not infringe U.S. Patent Nos. 6,574,267 ("the '267 patent") and 7,359,427 ("the '427 patent").

The '267 and '427 patents are directed to improvements to Code Division Multiple Access ("CDMA") cellular systems and reducing the risk of interference between signals sent from various mobile cellular stations.  The '267 and '427 patents disclose that mobile stations seeking to communicate with a base station can transmit preambles at increasing power levels until the mobile station receives an acknowledgement signal from the base station.  According to the '267 and '427 patents, this ensures that each data signal from the mobile station is transmitted at the lowest power level necessary, thereby reducing the risk of interference.  Golden Bridge Technology, Inc. ("GBT") had previously asserted the '267 patent in the Eastern District of Texas ("the Texas litigation"), in which the district court granted SJ of anticipation and, in accordance with the parties' stipulation, construed the claim terms "preamble" and "access preamble" (collectively "preamble") to mean "a signal used for communicating with the base station that is spread before transmission."  Slip op. at 3 (citation omitted).  The Federal Circuit affirmed this decision. 

While the appeal of the Texas litigation was pending, GBT sought new claims in reexamination of the '267 patent and pursued a pending continuation application at the PTO, which issued as the '427 patent.  During reexamination of the '267 patent and prosecution of the '427 patent, GBT submitted the claim construction order from the Texas litigation as part of an IDS to the PTO, including GBT's stipulated construction of "preamble."  New claims issued for the '267 patent, and the '427 patent also issued. 

GBT then asserted these new claims against Apple in Delaware.  The district court issued a claim construction order and Apple moved for SJ of noninfringement and invalidity.  The district court granted Apple's motion for SJ of noninfringement and denied Apple's motion for SJ of invalidity.  GBT filed an emergency motion for reconsideration, which the district court denied.  GBT filed the instant appeal.

"On the facts of this case, we see no meaningful difference between limiting claim scope based on an applicant's stipulations contained in IDS documents and an applicant's remarks contained in the IDS itself.  GBT's stipulation tells the PTO how preamble should be construed, and we conclude that GBT is bound by this representation."  Slip op. at 7.

On appeal, the Federal Circuit first reviewed the district court's claim construction, which concluded that the Texas litigation's construction "was 'still applicable insofar as [it] include[s] spreading prior to transmission.'"  Id. at 5 (alterations in original) (citation omitted).  The Court rejected GBT's argument that it was not bound by the stipulated construction in the Texas litigation and that submission of the stipulated construction to the PTO in an IDS did not constitute disclaimer of broader claim scope.  The Court concluded that GBT's submissions "clearly and unmistakably limited the term preamble to 'a signal used for communicating with the base that is spread before transmission.'"  Id. at 6 (citation omitted).  The Court noted that when GBT submitted the IDS, it requested that the PTO "expressly consider[]" the stipulated construction of "preamble."  Id. (alteration in original) (citation omitted).  The Court thus concluded that it would have been natural for the PTO and the public to rely upon the stipulated construction in determining the claim scope. 

The Court also observed that GBT's IDS was "not a typical IDS" because it did more than disclose potentially material prior art.  Id. at 7.  GBT had submitted its own stipulated construction of a claim term in the context of the patents being reexamined and prosecuted, which the Court determined was "a clear and unmistakable assertion by the patentee to the PTO of the meaning and scope of the term preamble."  Id.  The Court determined that GBT's stipulation told the PTO how the term "preamble" should be construed and concluded that GBT was bound by that representation.  The Court also observed that GBT did not seek to rescind its disclaimer during prosecution and did not notify the PTO that it sought a construction different from the stipulated construction.  The Court then held that GBT's submission constituted a clear and unmistakable disclaimer of broader claim scope.

The Court next considered the district court's grant of SJ of noninfringement.  The Court observed that, throughout the case, GBT relied exclusively on a Physical Random Access Channel ("PRACH") to meet the preamble limitation of the asserted claims.  The Court stated that a PRACH preamble consists of scrambling code and a signature sequence, and that the signature sequence was created first and then spread using the scrambling code to create the PRACH preamble.  The Court agreed with the district court that the PRACH preamble was not spread because the signature sequence was spread to create the PRACH preamble and "a preamble cannot be spread before it exists."  Id. at 12.  

The Court then considered whether GBT waived the argument that the signature sequence alone satisfied the preamble limitation.  After reviewing the history of the case, the Court determined that GBT had not argued that the signature sequence alone was itself a preamble until GBT filed a request for reconsideration.  The Court explained that it would be "fundamentally unfair" to allow GBT to change its infringement theory "after losing the claim construction arguments at issue and the summary judgment on its infringement contentions."  Id. at 14.  The Court examined GBT's infringement contentions and found that they identified only the PRACH preamble, which was always identified as the combination of the preamble spreading code and the preamble signature sequence.   For these reasons, the Court held that GBT had waived its signature sequence argument.

Accordingly, the Court affirmed the district court's grant of SJ of noninfringement.

Judges:  Moore (author), Mayer, Chen

[Appealed from D. Del., Judge Robinson]

This article previously appeared in Last Month at the Federal Circuit, August, 2014.

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