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Court Affirms Finding of Anticipation for Spectrum Sharing Patents

June 28, 2005

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Last Month at the Federal Circuit - July 2005

Judges: Bryson (author), Schall, and Dyk (concurring-in-part and dissenting-in-part)

In Northpoint Technology, Ltd. v. MDS America, Inc., No. 04-1249 (Fed. Cir. June 28, 2005), the Federal Circuit upheld a jury’s verdict that found certain claims invalid on grounds of anticipation and lack of enablement.

Northpoint Technology, Ltd. (“Northpoint”) asserted patents directed to technology that enabled transmission of terrestrial local TV signals to satellitebased Direct Broadcasting System (“DBS”) receivers. DBS satellites, which are in geosynchronous orbit above the equator, transmit in a northerly direction to North America. Thus, DBS directional antennas at a North American receiving location must be pointed southward. Northpoint’s invention allowed directed transmission of terrestrial local TV signals from north of a receiving location to a second northward pointing directional antenna at the same location, which was oriented towards the directional terrestrial transmitter.

The appeal focused on the district court’s construction of the claim term “directional reception range,” which had been construed to refer to “[a] three-dimensional space about the centerline of a receiving antenna within which a usable signal can be received.” The majority adopted the district court’s construction, interpreting the claim term broadly to refer to the three-dimensional space in which the antenna could receive a usable signal and rejecting Northpoint’s narrower interpretation, which limited the directional reception range to an area at which a receiving antenna was physically aimed. Under the broader interpretation, the majority found that there was substantial evidence from which a jury could find that a prior art reference taught the separate “directional reception ranges” recited by Northpoint’s patents and, therefore, anticipated the asserted claims.

The majority also found that there was substantial evidence from which a jury could find nonenablement based on Northpoint’s lack of disclosure of specific techniques and parameter values that were used to overcome interference between terrestrial and DBS signals.

In partial dissent, Judge Dyk argued that the claim term clearly requires that the patented device achieve noninterference as a result of a geographic orientation of the two antennas so that each is outside the range of the unwanted signal due to the limitation of the antennas, and that the expert testimony on record was legally insufficient to support a jury finding of nonenablement. Accordingly, the dissent would have found the claims infringed and not invalid.