Harris Corp. v. Federal Express Corp. , 502 F. App'x 957 ( 2013 )

NOTE: This opinion is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
HARRIS CORPORATION,
Plaintiff-Appellee,
v.
FEDERAL EXPRESS CORPORATION,
Defendant-Appellant.
__________________________
2012-1094
__________________________
Appeal from the United States District Court for the
Middle District of Florida in No. 07-CV-1819, Judge John
Antoon, II.
___________________________
Decided: January 17, 2013
___________________________
BRIAN R. GILCHRIST, Allen Dyer, Doppelt, Milbrath &
Gilchrist, P.A., of Orlando, Florida, argued for plaintiff-
appellee. With him on the brief was RYAN T. SANTURRI.
KARA F. STOLL, Finnegan, Henderson, Farabow, Gar-
rett & Dunner, LLP, of Washington, DC, argued for
defendant-appellant. With her on the brief were JASON
W. MELVIN; and JEFFREY A. BERKOWITZ, of Reston, Virgin-
HARRIS CORP v. FED EX CORP 2
ia. Of counsel on the brief was E. CHRIS CHERRY, FedEx
Corporation, of Memphis, Tennessee.
__________________________
Before LOURIE, CLEVENGER, and WALLACH, Circuit Judg-
es.
Dissenting opinion filed by Circuit Judge WALLACH.
CLEVENGER, Circuit Judge.
This is an appeal from a decision by the United States
District Court for the Middle District of Florida in a
patent infringement suit in which Plaintiff-Appellee
Harris Corporation (“Harris”) asserted seven patents (“the
Asserted Patents”) against Defendant-Appellant Federal
Express Corporation (“FedEx”). After the court conducted
claim construction, a jury found all asserted claims were
not invalid and willfully infringed. FedEx then moved for
judgment as a matter of law (“JMOL”), arguing that
Harris failed to meet its burden of proving infringement
and willful infringement, and that FedEx had established
by clear and convincing evidence that the patents were
obvious and unenforceable due to inequitable conduct.
The district court granted the JMOL motion in part,
finding that FedEx did not willfully infringe four of the
seven Asserted Patents as a matter of law, but denied the
motion in all other respects.
FedEx appeals the district court’s claim construction
ruling as to one term, the district court’s denial of JMOL
of non-infringement as to certain accused systems, the
court’s denial of JMOL as to obviousness, and the court’s
denial of JMOL as to willfulness with respect to the
remaining Asserted Patents. For the reasons outlined
below, we reverse the district court’s claim construction,
vacate and remand the court’s denial of JMOL as to non-
3 HARRIS CORP v. FED EX CORP
infringement and willfulness, and affirm its denial of
JMOL as to validity.
I
Plaintiff Harris, an international communications and
information technology company, is the assignee of a
family of patents stemming from a single parent, U.S.
Patent No. 6,047,165 (filed Nov. 14, 1995, issued April 4,
2000) (“the ’165 patent”), which is entitled “[w]ireless,
frequency-agile spread spectrum ground link-based air-
craft data communication system.” The ’165 patent, along
with six of its continuations, form the Asserted Patents in
this case. 1 All seven of the Asserted Patents are directed
to a particular technique for accumulating and storing
data reflecting aircraft performance while the plane is
airborne, and then upon arrival, transmitting that data
via spread spectrum signals to the ground for subsequent
analysis.
A brief overview of this field of technology is useful in
understanding the Asserted Patents. Since the earliest
days of commercial air travel, planes have incorporated a
flight data recorder which monitors, collects and stores
flight performance data. This device is commonly known
as the plane’s “black box.” These “black boxes” are spe-
cially designed to withstand an aircraft mishap so that
the data may be recovered and reviewed after the fact.
’165 patent, col. 1 ll. 20–34. In 1995, the Federal Aviation
1 The other six Asserted Patents are: U.S. Patent
Nos. 6,154,637 (issued Nov. 28, 2000) (“the ’637 patent”);
6,308,045 (issued Oct. 23, 2001) (“the ’045 patent”);
6,990,319 (issued Jan. 24, 2006) (“the ’319 patent”);
7,426,387 (issued Sept. 16, 2008) (“the ’387 patent”);
7,428,412 (issued Sept. 23, 2008) (“the ’412 patent”); and
7,444,146 (issued Oct. 28, 2008) (“the ’416 patent”).
HARRIS CORP v. FED EX CORP 4
Administration (“FAA”) encouraged all airlines to review
the “black box” data on a regular basis, rather than
simply after a mishap, to help prevent accidents. In
response, artisans developed techniques that allowed
airlines to retrieve flight performance data without re-
moving the “black box” from the plane. Id. at col. 1 ll. 35–
43. One such prior art solution involved equipping each
aircraft with a redundant flight-data recorder having a
removable storage medium (i.e., a cartridge or floppy
disk) that an attendant could physically carry off the
plane upon arrival. Id. at col. 1 ll. 44–52. This system
was nicknamed “sneakernet.” Later prior art systems
equipped the redundant flight-data recorder with a data
output transmitter, so that flight data could be transmit-
ted directly to a ground-based computer system via either
a fiber-optic cable or a wireless infrared link. Id. at col. 1
l. 60–col. 2 l. 6.
These prior art systems suffered from several draw-
backs. For example, “sneakernet” was time and manpow-
er intensive, and subject to error when disks or cartridges
were erroneously associated with the wrong planes. Id. at
col. 1 ll. 53–60. The fiber-optic cable and infrared sys-
tems, on the other hand, required the aircraft to be
parked at or near the gate because the fiber-optic cable
was physically tethered to the ground computer system
and infrared transmission required a direct line of sight
between the plane and the ground computer. Id. at col. 1
l. 61–col. 2 l. 6.
To address these concerns, the inventors of the As-
serted Patents proposed a modification to the prior art.
Like the prior art, the Asserted Patents employ a device
(which the patent calls a “ground data link unit”) that
stores a redundant copy of the flight data information
while the plane is airborne and which is equipped with a
5 HARRIS CORP v. FED EX CORP
wireless transceiver for transmission upon arrival. In the
Asserted Patents, the “ground data link unit” communi-
cates wirelessly with the ground receiver via radio fre-
quency signals—specifically, spread spectrum signals—
rather than infrared signals. ’165 patent at col. 2 ll. 22–
33. Spread spectrum signals have certain benefits over
infrared wireless, such as the ability to communicate with
the ground receiver without a direct line of sight.
Claim 1 of the ’319 patent is representative of the As-
serted Patents’ invention:
1. A method of providing data from an aircraft
comprising:
continuously monitoring the flight performance of
the aircraft during an entire flight of the aircraft
from at least take-off to landing;
generating aircraft data representative of the con-
tinuously monitored aircraft flight performance
during an entire flight of the aircraft from at least
take-off to landing;
accumulating and continuously storing the gener-
ated aircraft data within a ground data link unit
positioned within the aircraft during the entire
flight of the aircraft from at least take-off to land-
ing to create an archival store of such aircraft da-
ta;
after the aircraft completes its flight and lands at
an airport, transmitting the accumulated, stored
generated aircraft data from the ground data link
unit over a wideband spread spectrum communi-
cations signal to a ground based spread spectrum
receiver; and
HARRIS CORP v. FED EX CORP 6
demodulating the received spread spectrum com-
munications signal to obtain the accumulated,
aircraft data representative of the flight perfor-
mance of the aircraft during an entire flight of the
aircraft from take-off to landing.
See ’319 patent at col. 16 l. 52–col. 17 l. 7. Other claims in
the Asserted Patents describe slight variations of the type
of spread spectrum transmission used to transmit the
data or the type of system used for transmission. For
instance, certain claims require storing data during two
flights rather than one, whereas others claim uploading
data to the aircraft via spread spectrum, rather than
downloading it to the ground. These are just two of the
many variations found among the patents’ claims.
II
Defendant FedEx is a global courier service that uses
a substantial fleet of aircraft for its deliveries. In 1998,
FedEx began equipping its MD-11 aircraft with a system
called “TITAN,” which was capable of wirelessly trans-
mitting recorded flight data to the ground upon arrival
using spread spectrum signals. FedEx later learned that
Harris had acquired certain patents related to this tech-
nology field, and so it contacted Harris in 2002 to confirm
that the TITAN system “is not and never will be in viola-
tion of” Harris’s patents. Harris responded that certain of
its patents were licensed to Spirent, the vendor responsi-
ble for FedEx’s TITAN system. As such, FedEx had
reason to believe that the TITAN systems in its MD-11
aircraft were licensed products, and the TITAN system
has not been accused in this case.
In 2003, FedEx decided to incorporate similar func-
tionality into its fleet of older, smaller B727 aircraft. But
7 HARRIS CORP v. FED EX CORP
instead of purchasing licensed TITAN systems for its
B727 fleet, FedEx partnered with a different aircraft
parts manufacturer named Avionica to build a brand new
system according to FedEx’s specifications (“the Fed-
Ex/Avionica System”). There is no indication that FedEx
made any effort to determine whether this new Fed-
Ex/Avionica System infringed Harris’s patents, or ever
inquired about obtaining a license from Harris before
installing FedEx/Avionica Systems on its B727 aircraft.
Nevertheless, within a few years every FedEx B727 was
equipped with a FedEx/Avionica System.
In 2007, Harris filed suit alleging that the Fed-
Ex/Avionica System infringed Harris’s ground data link
patents. Roughly nine months after the suit was filed,
Avionica provided FedEx with a new software “upgrade”
for the FedEx/Avionica System. Prior to the installation
of this new software option, the FedEx/Avionica System
downloaded all of the flight performance data recorded
during flight to the ground computer upon arrival. After
this new software option was installed, the system’s
operator could choose to exclude five minutes of the
recorded flight data after the plane landed but before the
data was transmitted. This new software option appar-
ently served no functional purpose, and was incorporated
solely to “design around” Harris’s patents. Six months
later, FedEx removed the “design-around” systems entire-
ly from the B727 fleet, and today no version of the Fed-
Ex/Avionica System is in use.
III
After extensive discovery, claim construction, and
summary judgment motions, the case was tried to a jury
in July 2010. The jury returned a special verdict finding
all of the asserted claims to be not invalid, enforceable
HARRIS CORP v. FED EX CORP 8
and willfully infringed, and finding that Harris had
proven the existence of secondary indicia of nonobvious-
ness.
FedEx moved for JMOL that Harris failed to meet its
burden of proving both infringement and willful in-
fringement, and that FedEx had established by clear and
convincing evidence that the patents are obvious and
unenforceable as a result of inequitable conduct. The
court agreed that the jury’s finding that FedEx willfully
infringed the ’319, ’387, ’412 and ’146 patents was not
supported by substantial evidence, but denied FedEx’s
motion in all other respects. Harris was awarded a
permanent injunction, compensatory damages, and attor-
ney’s fees, but was denied enhanced damages.
FedEx has timely appealed the district court’s claim
construction ruling, and its denial of FedEx’s JMOL
motion as to non-infringement, invalidity, and willful
infringement of the ’165, ’637, and ’045 patents. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a).
IV
Claim construction is reviewed de novo. Cybor Corp.
v. FAS Techs., Inc., 138 F.3d 1448, 1454–55
(Fed.Cir.1998) (en banc). To ascertain the scope and
meaning of the asserted claims, we look to the words of
the claims themselves, the specification, the prosecution
history, and any relevant extrinsic evidence. Phillips v.
AWH Corp., 415 F.3d 1303, 1315–17 (Fed.Cir.2005) (en
banc).
JMOL is appropriate when “a reasonable jury would
not have a legally sufficient evidentiary basis to find for
the party on that issue.” Fed.R.Civ.P. 50(a)(1). This court
9 HARRIS CORP v. FED EX CORP
reviews the denial of a motion for JMOL under the law of
the regional circuit. Orion IP, LLC v. Hyundai Motor Am.,
605 F.3d 967, 973 (Fed. Cir. 2010). Under the law of the
Eleventh Circuit, we must “consider all the evidence, and
the inferences drawn therefrom, in the light most favora-
ble to the nonmoving party ... [and] in this light, [deter-
mine whether] there was any legally sufficient basis for a
reasonable jury to find in favor of the nonmoving party.”
Advanced Bodycare Solutions, LLC v. Thione Int'l, Inc.,
615 F.3d 1352, 1360 (11th Cir. 2010) (internal citations
and quotations marks omitted)
We review the jury's conclusions on obviousness, a
question of law, without deference, and the underlying
findings of fact, whether explicit or implicit within the
verdict, for substantial evidence. Johns Hopkins Univ. v.
Datascope Corp., 543 F.3d 1342, 1345 (Fed. Cir. 2008)
(quotations omitted).
V
We turn first to the issue of claim construction, 2 and
the single limitation at issue on appeal: “transmitting the
accumulated, stored generated aircraft data.” 3 Before the
2 We reject Harris’s theory that, because FedEx no
longer uses the infringing system and the parties have
settled for a compensatory-damages sum that will not be
impacted by this appeal, claim construction is a moot
issue. FedEx is presently enjoined from further use of its
“design-around,” and reversing the district court’s claim
construction might provide FedEx with relief from this
injunction. Accordingly, this issue is not moot.
3 Each of the asserted claims includes (or depends
from a claim that includes) some variation of this limita-
tion, although the limitation is phrased slightly different-
ly across the seven Asserted Patents. For the purposes of
claim construction on appeal, the parties treat the phras-
HARRIS CORP v. FED EX CORP 10
district court, Harris argued that this term needed no
construction and submitted a proposed plain meaning of:
“transmitting aircraft data that has been accumulated,
stored, and generated.” FedEx argued that a construction
was necessary and proposed the following: “transmitting
all the aircraft data that has been accumulated or stored
or generated.” Notably, the FedEx/Avionica “design-
around” system transmits less than “all” of its accumulat-
ed data—five minutes less, to be exact—and so this
system arguably would not literally infringe under Fed-
Ex’s construction. The district court disregarded the
parties’ proposed constructions and construed the term
sua sponte to require “only the transmission of data
sufficient to provide a comprehensive, long-term picture of
the flight performance” to the ground upon arrival.
Harris Co. v. Fed. Exp. Co., 698 F. Supp. 2d 1345, 1358
(M.D. Fla. 2010) (claim construction opinion).
On appeal, FedEx again urges the construction it pro-
posed below, whereas Harris defends the district court’s
sua sponte construction. The dispute boils down to how
much of the data accumulated while the plane is in the
air must be transmitted to the ground once the plane
reaches its destination. FedEx concedes that while the
plane is airborne, the ground data link unit may collect
and store something less than “all” available data. But
FedEx insists that once the plane has landed, any and all
data accumulated and stored in the ground data link unit
must be transmitted to the ground. Harris, on the other
hand, urges a more flexible interpretation that would
permit transmission of a subset of all data stored in the
ing found in claim 1 of the ’319 patent as representative of
this limitation across all asserted claims, and we follow
suit.
11 HARRIS CORP v. FED EX CORP
ground data link unit, provided that data is representa-
tive of the plane’s performance over the entire flight.
Of the two constructions, FedEx’s interpretation re-
mains truest to the claim language. The claim introduces
the relevant data set by describing how it is first “gener-
ated” during an entire flight and then “accumulated” and
“stored” in the ground data link unit between take-off and
landing:
generating aircraft data representative of the con-
tinuously monitored aircraft flight performance
during an entire flight of the aircraft from at least
take-off to landing;
accumulating and continuously storing the gener-
ated aircraft data within a ground data link unit
positioned within the aircraft during the entire
flight of the aircraft from at least take-off to land-
ing to create an archival store of such aircraft da-
ta;
’319 patent at col. 16 ll. 57–64 (emphasis added). The
claim’s next step, where we encounter the disputed limi-
tation, describes transmitting “the” data using identical
language as the previous claim steps:
after the aircraft completes its flight and lands at
an airport, transmitting the accumulated, stored
generated aircraft data from the ground data link
unit over a wideband spread spectrum communi-
cations signal to a ground based spread spectrum
receiver;
’319 patent at col. 16 l. 65–col. 17 l. 2 (emphasis added).
When identical language is found in multiple steps within
HARRIS CORP v. FED EX CORP 12
the same claim, it is reasonable to assume that all refer-
ences relate to the same subject matter. See Process
Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1356
(Fed. Cir. 1999) (holding that “a discharge rate” in an
earlier limitation refers to the same discharge rate as “the
discharge rate” in a later limitation); Microprocessor
Enhancement Corp. v. Texas Instruments, Inc., 520 F.2d
1367, 1375 (Fed. Cir. 2008) (acknowledging that it is a
reasonable “initial assumption” to construe a single claim
term “consistently with its appearance in other places in
the same claim”) (quotations omitted). Given this claim’s
prior description of generating, accumulating and storing
a particular set of data in the ground data link unit, it is
entirely reasonable to interpret “transmitting the accu-
mulated, stored generated aircraft data from the ground
data link unit” as referring to that same data set. This is
especially true where, as here, the later instance refers to
“the” data and therefore begs for some antecedent basis.
Harris nonetheless argues that nothing in this lan-
guage requires that “all” of the data in the ground data
link unit must be transmitted once the plane lands, and
accuses FedEx of importing the word “all” into the claim
in the absence of support for such an inclusion. We reject
this argument for two reasons. First, although the claim
does not expressly require that “all” of the accumulated
data must be transmitted, it similarly lacks any indica-
tion that some subset of the accumulated data should be
transmitted, and if so what that subset should be. In the
absence of such guidance, FedEx’s interpretation seems
entirely reasonable. Second, Harris’s construction would
require us to interpret “the . . . data” to mean “a subset of
the data sufficient to provide a comprehensive, long-term
picture of the flight performance.” So we have been
presented with competing constructions that each import
additional language into the claim. For the reasons
13 HARRIS CORP v. FED EX CORP
outlined above, we believe FedEx’s most naturally aligns
with the claim language.
Harris argues that the subsequent and final element
of Claim 1 contradicts FedEx’s construction because the
data set is described at this “demodulation” step as “rep-
resentative of the flight performance:”
demodulating the received spread spectrum com-
munications signal to obtain the accumulated,
aircraft data representative of the flight perfor-
mance during the entire flight from take-off to
landing.
’319 patent at col. 17 ll. 3–7 (emphasis added). However,
the phrase “representative of the flight performance” as
used in this clause modifies the “accumulated, [sic] air-
craft data,” not the transmitted data. This supports
FedEx’s position that the data’s scope becomes fixed upon
termination of the in-flight accumulation phase, and may
not be further summarized after the plane lands but prior
to transmission.
The specification is unhelpful in evaluating this issue.
While it is true that nothing in the specification indicates
that “all” data accumulated during the flight must be
transmitted to the ground once the plane lands, it is also
true that the term “comprehensive, long-term picture of
the flight performance” is found nowhere in the specifica-
tion. The written description is therefore at best a neu-
tral factor in this analysis.
We last turn to the prosecution history, from which
the district court apparently derived the language used in
its sua sponte construction. In particular, the district
court adopted statements Harris made during reexamina-
HARRIS CORP v. FED EX CORP 14
tion of the ’045 patent when distinguishing its invention
from U.S. Patent No. 5,445,347 (issued Aug. 29, 1995)
(“Ng”). Ng (discussed infra in further detail) teaches a
system for monitoring vehicle operating conditions
whereby signals are transmitted from the vehicle to the
ground via spread spectrum signals at intermittent times
during a voyage as the vehicle passes certain ground
receivers. Harris argued that its invention did not
transmit Ng’s “snapshots” of data but rather “a compre-
hensive long-term picture” of the flight performance,
stating:
[In Ng,] [t]he only data available for transmission
is a momentary snap-shot of the continuously
monitored operating conditions.
Performing inspections in near real time in an au-
tomated wireless preventive maintenance moni-
toring system has nothing in common with
acquiring a comprehensive long-term picture de-
rived from the totality of the flight performance
data in order to identify and remedy adverse
trends.
J.A. 3424. But these statements address only the data
“available for transmission,” comparing Ng’s “momentary
snapshot” to Harris’s “comprehensive long-term picture
derived from the totality of the flight performance data.”
It is entirely ambiguous whether the data “available for
transmission” refers to the extent and type of data that is
“accumulated” during the voyage, or to the amount of
data that is “transmitted’ upon arrival. Even the district
court noted that this language was “amendable to multi-
ple reasonable interpretations.” Harris, 698 F. Supp. 2d
at 1356. As a general rule, prosecution history cannot
overcome the natural reading of the claim when the
15 HARRIS CORP v. FED EX CORP
alleged disavowal is ambiguous. See Elbex Video, Ltd. v.
Sensormatic Electronics Corp., 508 F.3d 1366, 1371 (Fed.
Cir. 2007). Given the ambiguity of the prosecution histo-
ry, there is no basis for incorporating this language into
this term’s construction.
Thus, all intrinsic evidence either supports FedEx’s
construction or is neutral, and because the parties have
not provided any extrinsic evidence that sheds light on
this limitation, we must return to the most reasonable
interpretation of this limitation as it appears in the claim.
Phillips, 415 F.3d at 1316 (“The construction that stays
true to the claim language and most naturally aligns with
the patent’s description of the invention will be [] the
correct construction.”). As such, we reverse the court’s
construction of the claim term “transmitting the accumu-
lated, stored generated aircraft data” in favor of FedEx’s
proposed construction: “transmitting all the aircraft data
that has been accumulated or stored or generated.”
VI
Next, we turn to the district court’s denial of FedEx’s
JMOL motion on the issue of non-infringement. When a
patent infringement verdict is based on an incorrect claim
construction, we reverse the trial court's denial of a
motion for judgment as a matter of law if no reasonable
jury could have found infringement under the proper
claim construction. Finisar Corp. v. DirecTV Group, Inc.,
523 F.3d 1323, 1333 (Fed. Cir. 2008).
The jury found that both the FedEx/Avionica System
and the “design around” infringed the Asserted Patents.
FedEx only appeals the judgment with respect the “de-
sign-around” system, arguing that “[i]t is undisputed that
FedEx’s design-around does not transmit a five-minute
HARRIS CORP v. FED EX CORP 16
segment of the data that was accumulated and stored
and, accordingly, it does not transmit the same data set
that was accumulated and stored.” FedEx thus contends
that a reversal of the district court’s claim construction
leaves this court with no option but to also reverse the
district court’s denial of FedEx’s JMOL motion for non-
infringement.
But the record reflects that FedEx’s “design-around”
simply provided its users with the option to delete five
minutes’ worth of accumulated data prior to transmission.
Trial Tr. 116:2–20, July 21, 2010, ECF No. 272. So
although it might have been possible to use the “design-
around” system in a non-infringing manner, it was also
apparently possible to use the system exactly like the
original FedEx/Avionica System, i.e., in an infringing
manner. As such, use of FedEx’s “design-around” system
might nevertheless infringe an asserted method claim,
such as claim 1 of the ’319 patent, if used with the “five
minute” option turned off. Similarly, the “design around”
might also infringe certain asserted system claims due to
its capability to behave like the original FedEx/Avionica
System.
We therefore vacate the district court’s denial of
JMOL on the issue of non-infringement as to the Fed-
Ex/Avionica “design-around” system, and remand for
further consideration consistent with our claim construc-
tion ruling.
VII
Before addressing FedEx’s validity challenges, we
pause to reject FedEx’s contention that a new trial on
validity is necessary as a result of our reversal of the
district court’s claim construction. A claim construction
17 HARRIS CORP v. FED EX CORP
reversal does not, in and of itself, justify a new validity
trial; rather, there must be some showing that the erro-
neous construction somehow prejudiced the validity case
below. Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332,
1344 (Fed. Cir. 2003). Harris’s briefing challenged FedEx
to explain how its invalidity case was prejudiced by the
district court’s claim construction, and FedEx failed to do
so. Indeed, the district court’s construction was broader
than the proper construction, insofar as it encompassed
systems that transmitted “all” accumulated data to the
ground (i.e., the FedEx/Avionica System) as well as sys-
tems that transmitted less than “all” such data (i.e., the
FedEx/Avionica “design-around”). So if anything, the
correct claim construction would only make proving
invalidity more difficult for FedEx in a new trial.
We therefore turn to the merits of FedEx’s validity
appeal.
A
FedEx presented a number of prior art obviousness
contentions at trial, but only two are before us on appeal.
The first involves the Ng reference. As discussed above,
Ng teaches a system for monitoring vehicle operating
conditions whereby signals are transmitted from the
vehicle to the ground via spread spectrum signals at
intermittent times during the voyage as the vehicle
passes certain ground receivers. While primarily targeted
at trains, Ng acknowledges the invention could be used in
airplanes. Ng at col. 3 ll. 22–28. In Ng’s preferred em-
bodiment, a diagnostic unit monitors the train’s operating
conditions, stores a signal representing the train’s current
status, and then periodically transmits a spread-spectrum
signal conveying the train’s status to ground-based re-
ceivers located at fixed stations as the train passes them
HARRIS CORP v. FED EX CORP 18
along its route. See id. at col. 3 ll. 17–31; col. 4 ll. 53–57;
col. 4 l. 62–col. 5 l. 5. As noted above, Ng was before the
PTO at one point during either prosecution or re-
examination of all seven of the Asserted Patents, and was
specifically addressed and overcome during re-
examination of the ’045 patent.
FedEx’s second obviousness contention involves a
1978 publication describing the data recording systems on
an L-1011 aircraft (“L-1011”) combined with a September,
1994, presentation given by Douglas Aircraft engineer
Pete Hibson (“FCM-69”). The L-1011 reference essential-
ly teaches the “sneakernet” system, i.e., a system for
collecting data during aircraft flights that samples and
records data onto a “Quick Access Recorder” (“QAR”)
which utilized removable cassettes. QAR cassettes could
be removed from an aircraft and processed to detect any
potential issues on a ground-based “playback station.”
There is no dispute that L-1011 is prior art to the Assert-
ed Patents, and it was considered during prosecution or
reexamination of five of the seven Asserted Patents.
The FCM-69 reference is a slideshow from a public
presentation given by Douglas Aircraft engineer Pete
Hibson three months before the Asserted Patents’ earliest
priority date. Mr. Hibson, working with spread-spectrum
expert Dr. Darius Modarress, recognized that many of the
problems caused by infrared or fiber optic cables could be
resolved by replacing these with spread-spectrum trans-
missions. The first page of the FCM-69 reference de-
scribes the purpose of the presentation: to set forth a
“novel concept of using Spread Spectrum technology to
interface a PMAT system to an airplane in place of a
direct connection to the aircraft.” The document begins
with an overview of the downsides of presently available
fiber-optic and infrared systems. The document then
19 HARRIS CORP v. FED EX CORP
describes how these problems could be largely solved by
implementing spread spectrum. For instance, it describes
how spread spectrum offered “lower cost and increased
functionality” and eliminated the need to tether the plane
using the fiber-optic cable. Spread spectrum, the presen-
tation continued, required no license from the FCC, the
signals were largely immune to interference and had high
transmission rates, and spread spectrum could be imple-
mented using commercially-available products rather
than costly specialized devices. But FCM-69 also notes
that data rates for spread spectrum were, on average, 100
times slower than infrared.
B
FedEx contends that both of its contentions present a
clear and convincing case for obviousness. As for Ng,
FedEx contends that the this system could be easily
adapted to behave like the Harris invention by merely
adding extra memory to Ng’s data recorder, thus provid-
ing the system with sufficient capacity to store an entire
trip’s worth of data. As for the second contention, FedEx
argues that L-1011 generally teaches transferring data
collected during a flight to the ground for analysis,
whereas FCM-69 teaches the purportedly novel aspect of
Harris’s invention, which is transmitting the accumulated
flight data using spread spectrum signals.
Harris argues, in response, that FedEx provided the
jury with insufficient evidence to support its obviousness
contentions, and that the jury heard convincing evidence
that undermines FedEx’s contentions. We agree with
Harris. FedEx’s expert opined on the Ng reference only in
the context of three claims (dependent claims 5, 15, and
25 of the ’319 patent). And although witnesses testified
regarding the L-1011 and FCM-69 references separately,
HARRIS CORP v. FED EX CORP 20
FedEx apparently only proposed this combination to the
jury during its closing argument when the two references
were recited among a laundry list of prior art.
The weakness of FedEx’s trial evidence troubles Fed-
Ex’s appellate reliance upon these combinations to invali-
date all sixty-two claims of the Asserted Patents. FedEx
did not at trial, and does not on appeal, set forth a claim-
by-claim analysis of all the asserted claims describing
which elements can be found in which reference. The
asserted claims include many variations on claim 1 of the
’319 patent, such as requiring that the spread spectrum
signal use the “S band” (which is required by claims 3 and
9 of the ’165 patent, and claim 39 of the ’637 patent), or
that the system use a spread spectrum signal transmit-
ting a “probe beacon” to select a sub-band frequency
channel (which is required by all asserted claims in the
’637 patent) or that the system automatically download
the data from the aircraft to the ground upon landing
(required by, inter alia, all asserted claims from the ’387
patent). FedEx argues that these are “subtle variations”
that “do not affect patentability in view of the prior art.”
But this does not relieve FedEx of its burden to prove by
clear and convincing evidence that these additional limi-
tations actually were known in the prior art, which it has
failed to do.
FedEx also failed to explain why an artisan would be
motivated to make its suggested prior art modifications.
Although evidence of motivation to combine is not re-
quired to prove invalidity, it may nevertheless be "im-
portant to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine
the elements in the way the claimed new invention does."
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-22 (2007).
This is particularly true in the case of Ng, where FedEx
21 HARRIS CORP v. FED EX CORP
suggests without further explanation that it would have
been obvious to re-engineer a system that periodically
transmits mid-voyage status updates so that it instead
accumulates an entire trip’s worth of data and transmits
all of the accumulated data at once upon arrival. Absent
any explanation to the contrary, one suspects FedEx
reached this conclusion using impermissible hindsight.
The limited testimony FedEx offered at trial concern-
ing its obviousness contentions suffered from other defi-
ciencies. During cross-examination, Dr. Helfrick was
unable to speak to certain aspects of the Ng reference
such as whether the Ng system recorded data over the
entire life of the train’s voyage or how much information
the Ng system transmitted to a station when the train
passed by. Meanwhile, Mr. Hibson—FedEx’s primary
witness concerning the FCM-69 reference—was discredit-
ed during cross-examination. For instance, the jury
learned about an e-mail Mr. Hibson sent when volunteer-
ing to assist in FedEx’s defense which expressed anger at
Harris’s licensing success because Hibson had “taught
[Harris] everything, including wireless.” J.A. 2704–05;
Trial Tr. 136:21–142:13, July 26, 2010, ECF No. 275.
Moreover, when asked during cross-examination why he
agreed to testify on FedEx’s behalf, Mr. Hibson responded
that he was a Boeing employee and FedEx was “one of
[Boeing’s] best customers, [so] we want to keep them
happy." Trial Tr. 141:6–17, July 26, 2010, ECF No. 275.
The jury also heard testimony that the FCM-69 pro-
posal actually taught away from spread spectrum. We
have held that “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the refer-
ence, would be discouraged from following the path set
out in the reference, or would be led in a direction diver-
gent from the path that was taken by the applicant.” In
HARRIS CORP v. FED EX CORP 22
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Although
FCM-69 largely encourages the use of spread spectrum,
the presentation also included certain facts that might
have discouraged an artisan from using spread spectrum.
For instance, the presentation acknowledged that spread
spectrum had slower data transfer rate than infrared, and
too many planes using spread spectrum at once could
result in higher error rates or dropped connections.
On top of all this, the jury learned that all three ref-
erences were before the PTO and considered during
prosecution of the '387 patent, the '412 patent, and the
'146 patent, and Ng was also considered during prosecu-
tion of the '165 patent, the '319 patent. All three refer-
ences were also before the PTO during the reexamination
of the '165 and '045 patents, and as noted above, Harris
directly addressed and overcame a challenge based upon
Ng during the latter patent’s reexamination. Although
none of these facts impact FedEx’s burden of proof, they
are reasonable considerations when determining whether
an invalidity defense has been proven by clear and con-
vincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S.
Ct. 2238, 2251, 180 L. Ed. 2d 131 (2011).
Finally, the jury found that Harris had proven the ex-
istence of a number of secondary considerations of nonob-
viousness, which can buttress a court’s finding of
nonobviousness. See Eli Lilly & Co. v. Zenith Goldline
Pharmaceuticals, Inc., 471 F.3d 1369, 1380 (Fed. Cir.
2006) (“Lilly proved extensive secondary considerations to
rebut obviousness . . . these objective criteria buttressed
the trial court's conclusion of nonobviousness.”). Harris’s
successful licensing program is evidence of commercial
success and acceptance by others, and the FedEx/Avionica
System is evidence that others copied its invention.
Moreover, Mr. Hibson testified that his 1994 presentation
23 HARRIS CORP v. FED EX CORP
was rejected because his colleagues at the time were
focused upon using fiber-optic and infrared transmissions.
Harris submitted this as evidence of skepticism by other
experts, and also that others had tried unsuccessfully to
solve the problem. FedEx has not appealed any of these
findings.
FedEx bears the burden to demonstrate invalidity by
clear and convincing evidence. Yet the evidence regard-
ing the scope and content of these references and the
differences between the references and the asserted
claims fail to satisfy this standard of proof, and FedEx
does not contest the existence of Harris’s secondary con-
siderations of nonobviousness. Accordingly, we affirm the
district court’s denial of JMOL as to invalidity.
VIII
Finally, we address FedEx’s appeal of the district
court’s denial of JMOL on the issue of willfulness as to
certain of the Asserted Patents. In its JMOL motion,
FedEx argued that it had raised substantial questions
regarding infringement and validity throughout the
litigation, and that this precluded a finding that it met
the first prong of the analysis set forth in In re Seagate
Tech., LLC, 497 F.3d 1360, 1366 (Fed. Cir. 2007), which
requires that the infringer acted despite an objectively
high likelihood that its actions constituted infringement
of a valid patent. FedEx also argued that Harris failed to
introduce clear and convincing evidence regarding wheth-
er FedEx knew or should have known about the objective-
ly high risk, which is the second Seagate prong. The
district court granted FedEx’s motion as to four of the
Asserted Patents, but denied the motion as to the other
three.
HARRIS CORP v. FED EX CORP 24
Citing Metabolite Labs., Inc., v. Lab. Corp. of Am.
Holdings, 370 F.3d 1354, 1359 (Fed. Cir. 2004), the dis-
trict court applied a deferential standard of review to the
jury’s willfulness findings, stating that “[w]hether in-
fringement was willful is a question of fact reviewed for
substantial evidence.” But this court has since held in
Bard Peripheral Vascular, inc. v. W.L. Gore & Associates,
Inc., that “simply stating that willfulness is a question of
fact oversimplifies this issue.” 682 F.3d 1003, 1006 (Fed.
Cir. 2012). As such, the district court should have re-
viewed the Seagate “objective prong” evidence de novo
because “[t]he ultimate legal question of whether a rea-
sonable person would have considered there to be a high
likelihood of infringement of a valid patent should always
be decided as a matter of law by the judge.” Id. at 1008.
In view of this, and also in light of our above claim
construction and noninfrignement rulings, we vacate the
JMOL order as to the willfulness issue and remand for
further consideration in accordance with this opinion.
CONCLUSION
For the foregoing reasons, we reverse the district
court’s order on claim construction, we vacate and remand
the district’s court’s denial of JMOL as to non-
infringement and willfulness, and we affirm on all other
counts.
AFFIRMED IN PART, REVERSED IN PART, AND
VACATED AND REMANDED IN PART
COSTS
No costs.
NOTE: This opinion is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
HARRIS CORPORATION,
Plaintiff-Appellee,
v.
FEDERAL EXPRESS CORPORATION ,
Defendant-Appellant.
__________________________
2012-1094
__________________________
Appeal from the United States District Court for the
Middle District of Florida in No. 07-CV-1819, Judge John
Antoon, II.
__________________________
WALLACH, Circuit Judge, dissenting in part.
I do not agree that the “transmitting data” terms re-
quire transmission of all of the accumulated data. Ra-
ther, because I conclude that the terms require
transmission of only such data sufficient to provide a
representative picture of the aircraft flight performance, I
dissent in part.
The majority relies upon the rule: “The construction
that stays true to the claim language and most naturally
aligns with the patent’s description of the invention will
be . . . the correct construction.” Phillips v. AWH Corp.,
HARRIS CORP v. FED EX CORP 2
415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1250 (Fed. Cir. 1998)). However, the new construc-
tion the majority adopts, requiring “transmitting all of
the aircraft data that has been accumulated or stored or
generated,” Maj. Op. at 15 (emphasis in original), is not
supported by the claim language, specification, or prose-
cution history. Moreover, it improperly narrows the claim
language, limiting an otherwise broadly drafted claim.
See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
906 (Fed. Cir. 2004) (quoting Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)) (“[T]he
claims of a patent will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the
claim scope using ‘words or expressions of manifest exclu-
sion or restriction.”’).
The majority determines that it is reasonable that
“the” data set transmitted must be “all” the data that was
accumulated and stored on the basis that “identical
language is found in multiple steps within the same
claim” which “begs for some antecedent basis.” Maj. Op. at
12. Claim 1 of the ’319 patent states, in part:
A method of providing data from an aircraft com-
prising:
...
[a] generating aircraft data representative of the
continuously monitored aircraft flight performance
during an entire flight of the aircraft from at least
take-off to landing;
[b] accumulating and continuously storing the
generated aircraft data . . . to create an archival
store of such aircraft data;
3 HARRIS CORP v. FED EX CORP
[c] after the aircraft completes its flight and lands
at an airport, transmitting the accumulated,
stored generated aircraft data . . . ; and
[d] demodulating the received spread spectrum
communications signal to obtain the accumulated,
aircraft data representative of the flight perfor-
mance of the aircraft during an entire flight of the
aircraft from take-off to landing.
’319 patent col. 16 l. 52–col. 17 l. 7 (emphases and para-
graphing added). The majority refers to “the” data set,
but “the” data set is not consistently defined throughout.
Instead, “data” is modified as “generated aircraft data” in
limitation [b]; as “accumulated, stored generated aircraft
data” in limitation [c]; and finally, as “accumulated,
aircraft data representative of the flight performance” in
limitation [d]. 1
1 The majority opinion cites to Process Control to
support its reasoning. Maj. Op. at 12 (Process Control
Corp. v. HydReclaim Corp., 190 F.3d 1350 (Fed. Cir.
1999). However, in that case the language provided
meaning to an otherwise indefinite term, whereas here
FedEx did not challenge Harris’s expert opinion that one
skilled in the art would understand how much data would
be required to provide a comprehensive long-term picture
of flight performance. See J.A.1599-1602. Here the only
identical language used throughout the claim is “aircraft
data,” thus the antecedent basis the majority references
should be to limitation [a] where “aircraft data” is first
modified. Accordingly, the antecedent basis for each of
the remaining limitations is to “aircraft data” which
would provide “aircraft data representative of . . . flight
performance.” Furthermore, this court has since provided
additional guidance on Process Control, explaining that
the construction of “discharge rate” was supported by, not
reliant upon, the antecedent basis; a “patentee’s mere use
of a term with an antecedent does not require that both
terms have the same meaning.” Microprocessor Enhance-
HARRIS CORP v. FED EX CORP 4
The only consistent term in each limitation is “aircraft
data” which is defined in limitation [a] to mean “data
representative of . . . aircraft flight performance.” The
way “aircraft data” is described in the various limitations
of the claims implies discretion to generate, store, trans-
mit, and demodulate only such data necessary to be
“representative” of flight performance. Thus, the claim
does not require that “all” of the accumulated, stored data
be transmitted, as long as the transmitted data is repre-
sentative of the aircraft flight performance. In fact, the
term “all” is nowhere to be found in the claim language.
See Maj. Op. at 12–13. Accordingly, defining limitation [c]
to require transmitting “all” of the flight performance
data accumulated is counterintuitive within the context of
the claims. See Hockerson-Halberstadt, Inc. v. Converse
Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim
construction . . . demands interpretation of the entire
claim in context, not a single element in isolation.”).
Additionally, the majority concedes that nothing in
the specification indicates how much data should be
accumulated, stored, or transmitted. The prosecution
history—which suggests that Harris intended his inven-
tion to create a comprehensive picture representative of
an entire flight—likewise does not require a more restric-
tive reading. 2 See Maj. Op. at 14–15. Thus, there is no
ment Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375
(Fed. Cir. 2008).
2 Before the PTO, Harris distinguished its inven-
tion from prior art by addressing the difference between
sending real-time data at various intervals (as was done
in Ng by a train transmitting data as it traveled past
fixed locations), J.A.3272-74, as opposed to accumulating
data to gain a comprehensive picture representative of an
entire flight. Harris’s representations during reexamina-
tion reveal nothing that limits the scope of transmitting
data to all of the accumulated and stored data. The
5 HARRIS CORP v. FED EX CORP
reason to limit the data accumulated, stored, or transmit-
ted to anything but that which would be representative of
flight performance. See Liebel-Flarsheim, 358 F.3d at 906.
Because the majority’s construction unnecessarily re-
stricts the claim terms without support from the claim
language, specification, or prosecution history, I respect-
fully dissent.
majority holds that the prosecution history cannot over-
come the natural reading of the claim, but because its
reading of the claim unnecessarily adopts a limitation, it
cannot be the most reasonable interpretation.