Enovsys v. Sprint Nextel (CAFC 2009-1167) precedential

At trial, the dispute with respect to the '159 patent centered on whether Sprint Nextel's iDEN system contained the structure corresponding to the "means to resolve" limitation.

The district court found that "means to resolve" in [claim 1 of] the '159 patent invoked 35 U.S.C. § 112, ¶ 6. The court then proceeded to determine that the claimed function was "to resolve a global position from satellite or earth based communication means." Based on its examination of the specification, the court determined that the corresponding structure for this function was a "transceiver, connecting circuitry, CPU, satellite receiving means, terrestrial receiving means, decoders, and temporary storage." Neither party objected to how the district court construed this means-plus-function limitation, or suggested a more specific definition of its structure was necessary. Sprint Nextel's pre-trial briefs, proposed jury instructions, and pre-verdict JMOL were similarly devoid of any argument that the "connecting circuitry" portion of the structure should be limited to the specific embodiment in Figure 2 of the '159 patent. See '159 patent col.5 l.48-col.6 l.5.

Sprint Nextel waived any claimed error associated with the "connecting circuitry" structure: Here, as in Eli Lilly & Co. v. Aradigm Corp., Sprint Nextel never requested the district court construe "connecting circuitry," or offered a construction of the term. 376 F.3d 1352, 1360 (Fed. Cir. 2004). Rather, the district court's claim construction order notes that "the parties are not in dispute" as to the "means to resolve" structure, which included the now-disputed "connecting circuitry." Though it had ample opportunity to do so, at no time before or during trial did Sprint Nextel object to the district court's claim construction, request clarification, or offer the construction it now advances on appeal. Indeed, Sprint Nextel's own expert testified that the district court's claim construction was "fine." See Broadcom, 543 F.3d at 694; see also Conoco, Inc. v. Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 1358-59 (Fed. Cir. 2006).

With regards to the '461 patent, the parties disputed whether Sprint Nextel's iDEN and CDMA systems satisfied the "preauthorized" limitation in the asserted claims.

In construing "pre-authorized," the district court largely adopted Sprint Nextel's proposed construction.

The district court construed "pre-authorized" in both claims of the '461 patent to mean "authorized to submit a request in advance of determining whether the request will be granted." Sprint Nextel did not object to this definition. Similarly, at no time before or during the trial did Sprint Nextel ask the district court to clarify whether the preauthorization was for access to the network or only for access to a particular mobile device.

Sprint Nextel waived its right to argue its new claim construction of "pre-authorized" by waiting until after the jury returned its verdict. See Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1357 (Fed. Cir. 2003).

Otherwise, Sprint Nextel moved to dismiss the case for lack of standing because Enovsys pooh-bah Mundi Fomukong did not have his ex-wife join the action. Mundi was married when he filed the patents. The district court waved that off because Mundi got possession of the patents in the divorce. The CAFC agreed.

Affirmed.

Judge Newman dissented over waiver by Sprint Nextel. The majority waived too much away.

I write separately because the court, in reviewing the question of infringement, confounds "claim construction" with "infringement," and on this confusion, rules that the defendant waived critical aspects of its defense of non-infringement simply because those aspects were not raised in the guise of "claim construction." Thus the court holds that because the district court's claim construction was not specific to certain details of the defendant's system, the defendant "waived" its defense that these elements of its system are not within the scope of the claims. From this novel position I must, respectfully, dissent.

Amid the complexities of the procedures of "claim construction" as a prologue to determination of infringement, it is not unusual to see an intermingling or misplacement of the relationship between the claim as construed in light of the description of the invention in the specification, and the question of infringement by the accused device. Questions of infringement may sometimes be decided as claim construction, whereby the claim is construed with so tight a tie to the structure of the accused device that infringement vel non is immediately apparent - and summarily resolved. And questions of claim construction sometimes arise as questions of infringement, whereby the trier of fact (as distinguished from the giver of law) must decide whether the claim reads on the accused device. In either situation, any flaw is more a matter of procedural imprecision, not substantive "waiver," and any error is normally tolerable, for in either situation the decisionmaker studies the claim, understands the accused device, and decides the relationship between them as a matter of substance, not technicality.

However, as with any tolerant relationship, intolerant situations may arise. Here, for example, the defendant Nextel presented a straightforward defense to the charge of infringement, by arguing that certain aspects of the patentee's invention are not present in the accused system. Yet my colleagues on this panel hold that this defense is "waived."

A district court ordinarily does not resolve all infringement issues through a narrowly targeted claim construction focused on the accused device. Claim construction is derived from the specification of the patent, not the accused device.

The claim construction and the jury instructions correctly limited the patented structures to those described in the specification. In raising its defense that its "connecting circuitry" was different from that in the specification, Nextel conformed with law and protocol. Thus Nextel presented evidence and argument at trial that its accused iDEN system did not meet the "means to resolve" limitation because it did not have the same "connecting circuitry" described in the specification. Although the jury rejected Nextel's position, it was considered, and this issue was raised on motion for JMOL. The judge denied Nextel's JMOL motion, and disagreed with Nextel's argument that the claim construction required "the exact connecting circuitry in the '159 patent." The trial judge did not treat Nextel's argument as a "waived" claim construction argument. However, my colleagues hold that the question of infringing this claim element should have been raised as an appeal from the claim construction. Indeed, whether this question could have been raised in this manner does not mean that defense to infringement is deemed waived and cannot be presented or appealed, on the apparent theory that the defendant was required to request a claim construction in terms of its own circuitry.

Any lapse of precision between fact and law does not lead to "waiver" of the right to defend or the right to judicial review (although it may affect the standard of review). It is incorrect, and a negation of the processes of law, to hold that such a defense against infringement was waived because it was not presented, resolved, or appealed as a matter of claim construction.