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SJ of Noninfringement of Global Paging System Patent Affirmed-in-Part and Reversed-in-Part

October 17, 2012

Decision icon Decision

Last Month at the Federal Circuit - November 2012

Judges: Bryson (author), Prost, Reyna

[Appealed from: D. Md., Judge Williams]

In Technology Patents LLC v. T-Mobile (UK) Ltd., No. 11-1581 (Fed. Cir. Oct. 17, 2012), the Federal Circuit affirmed-in-part and vacated and remanded-in-part the district court’s SJ of noninfringement of U.S. Patent No. RE39,870 (“the ’870 patent”) by the software provider defendants. The Court also declined to reinstate Technology Patents LLC’s (“TPL”) claims against the domestic carrier and foreign carrier defendants.

TPL sued more than 100 domestic carriers, software providers, and foreign carriers for infringing the ’870 patent, directed to a “global paging system utilizing a land-based packet-switched digital data network (e.g. the Internet) and a feature for permitting subscribers to remotely designate countries in which they are, or expect to be, located.” Slip op. at 13. The district court dismissed the case against the foreign carriers for lack of personal jurisdiction and granted SJ of noninfringement by the domestic carriers and the software providers. TPL appealed.

On appeal, the Federal Circuit first confirmed the district court’s constructions of the three claim terms the Court deemed relevant to the SJ orders. First, the Court affirmed the district court’s construction of “receiving user” to mean “a person or party.” The Court disagreed with TPL’s assertion that the term instead means “the combination of the person and the handset,” stating that the text of the ’870 patent makes clear that the term does not refer to a person-pager combination. Second, the Court affirmed the district court’s construction of “initiates paging operations in another country in a predetermined order,” disagreeing with TPL’s argument that the ordered list need not be “created by the receiving user.” “TPL’s argument that the order need not be determined by the receiving user ignores a substantial amount of intrinsic evidence and the very purpose of the claimed invention,” namely, allowing users to be paged only in countries that they selected. Id. at 21. Third, the Court affirmed the district court’s construction of “designated” to mean that the receiving user designates a second country. Because the Court determined that the receiving user is a person, it held that the designation must be done by a person.

Regarding SJ, the Court held that the district court correctly found that TPL’s theory of infringement failed with respect to three claim limitations: (1) the accused products do not enable a receiving user to designate a country, only to select a carrier; (2) the accused products do not enable the receiving user to create an ordered list; and (3) the accused products do not determine if the second country is currently designated by the receiving user. The Court thus affirmed SJ of noninfringement by the domestic carriers, and by the software providers as to claims containing one or more of the limitations.

The Court then turned to the claims asserted against the software providers that did not contain any of the three limitations. The Court disagreed with the district court’s conclusion that these claims presented an issue of joint or divided infringement because they did not require performance by multiple actors. The Court thus vacated and remanded the SJ with respect to those claims, stating that “[o]n remand, the court should consider whether TPL has produced sufficient evidence to create a genuine dispute as to any material fact with respect to infringement of those claims.” Id. at 36. “Moreover, unless the software providers are barred from raising the argument at the district court for some reason, the district court may also consider the software providers’ argument that ‘TPL has no evidence that Clickatell and Yahoo!’s users designate the country in which [the] receiving user [i.e., Cellular Customer] is to be paged,’” which was raised for the first time on appeal. Id. at 37 (alterations in original).

The Federal Circuit then held that it need not decide whether the district court was correct in dismissing the case against the foreign carriers for lack of personal jurisdiction, because its ruling sustaining the district court’s decision in favor of the domestic carriers “doom[ed]” TPL’s claim of infringement against the foreign carriers as well. Id. at 39.

Summary authored by Ian Y. Liu, Ph.D., Esq.