Openwave Systems, Inc. v. Apple Inc. , 808 F.3d 509 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
OPENWAVE SYSTEMS, INC., NKA UNWIRED
PLANET, INC.,
Plaintiff-Appellant
v.
APPLE INC., RESEARCH IN MOTION, LTD.,
RESEARCH IN MOTION CORP.,
Defendants-Appellees
______________________
2015-1108
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:11-cv-00765-RGA, Judge
Richard G. Andrews.
______________________
Decided: December 15, 2015
______________________
THEODORE STEVENSON, III, McKool Smith, P.C.,
Dallas, TX, argued for appellant. Also represented by
MEREDITH ANNE ELKINS, JARED M. HOGGAN, NICHOLAS M.
MATHEWS; DANIEL L. GEYSER, Stris & Maher LLP, Los
Angeles, CA.
MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP,
Washington, DC, argued for appellee Apple Inc. Also
represented by BRIAN BUROKER; ALEXANDER N. HARRIS,
San Francisco, CA; JOSH KREVITT, New York, NY; HERVEY
2 OPENWAVE SYSTEMS, INC. v. APPLE INC.
MARK LYON, STUART ROSENBERG, Palo Alto, CA; BROOKE
MYERS WALLACE, Los Angeles, CA.
ALAN J. HEINRICH, Irell & Manella LLP, Los Angeles,
CA, for appellees Research in Motion, Ltd. and Research
in Motion Corp. Also represented by GAVIN SNYDER,
BRUCE A. WESSEL.
______________________
Before MOORE, O’MALLEY, and CHEN, Circuit Judges.
O’MALLEY, Circuit Judge.
Openwave Systems, Inc., NKA Unwired Planet, Inc.
(“Unwired Planet”) is the assignee of U.S. Patent Nos.
6,405,037 (“the ’037 patent”), 6,430,409 (“the ’409 pa-
tent”), and 6,625,447 (“the ’447 patent”) (collectively, the
“patents-in-suit”). The patents-in-suit share a common
specification. 1
Unwired Planet first sued Apple Inc., Research in Mo-
tion, Ltd., and Research in Motion Corp. (collectively, the
“Defendants”) on August 31, 2011, in the United States
District Court for the District of Delaware. Shortly there-
after, on October 7, 2011, Unwired Planet initiated an
action with the International Trade Commission (“ITC”).
The district court stayed its litigation pending resolution
of the ITC proceedings. After receiving an unfavorable
claim construction ruling from the Administrative Law
Judge (“ALJ”) overseeing the proceedings, Unwired
Planet sought to dismiss the ITC investigation in its
entirety. On November 13, 2012, the ITC terminated its
proceedings. The district court lifted its stay on December
28, 2012.
1 The patents-in-suit are all continuations of U.S.
Patent No. 5,808,415, which was filed on December 11,
1995.
OPENWAVE SYSTEMS, INC. v. APPLE INC. 3
Unwired Planet informed the district court that if it
adopted a construction of the disputed claim term that
matched the construction from the ITC proceedings,
Unwired Planet would concede non-infringement by
stipulation and file a motion to terminate the case. After
considering the briefing and hearing oral argument, the
district court issued an order adopting a construction that
closely tracked that employed by the ALJ. Believing one
difference between the two constructions to be material,
however, Unwired Planet did not immediately stipulate to
non-infringement. Specifically, because the district court
noted in a footnote that its construction excluding devices
employing “computer modules” did not exclude devices
employing “microprocessors,” Unwired Planet argued that
a material question regarding infringement remained
unresolved.
Given Unwired Planet’s refusal to concede non-
infringement, Defendants filed a motion for summary
judgment of non-infringement. The district court denied
the Defendants’ motion on the ground that it was unclear
from the record whether the accused products actually fell
within the claims as construed. The district court prem-
ised its summary-judgment ruling on the fact that it
found the distinction between devices operating with
microprocessors and those operating with computer
modules to be sufficiently unclear at that stage of the
proceedings to prohibit entry of a judgment of non-
infringement as a matter of law. After the district court
entered that order in favor of Unwired Planet, however,
Unwired Planet changed course and filed a stipulation of
non-infringement after all. The district court entered
final judgment of non-infringement as to all asserted
patent claims in favor of Defendants on October 14, 2014.
This appeal followed. Because we agree with the district
court’s claim construction, we affirm.
4 OPENWAVE SYSTEMS, INC. v. APPLE INC.
BACKGROUND
There are three claim terms at issue: “mobile device”
in the ’037 patent, “wireless mobile telephone” in the ’409
patent, and “two-way communication device” in the ’447
patent. Before both the ALJ and the district court, the
parties agreed that the claim terms should be analyzed
and construed together. Accordingly, we will construe
them together under the umbrella term “mobile device.”
The only relevant issue on appeal is whether the
claims should be given their ordinary meaning or wheth-
er, as the district court found, the patents, through re-
peated disparagement in the specification, disclaim
mobile devices containing “computer modules.”
The patents-in-suit address perceived problems with
the mobile device prior art. For example, the prior art
“intelligent devices” 2 could not be updated without physi-
cally changing the devices themselves because, at the
time of the invention, applications on mobile devices were
physically burned onto their read-only memories
(“ROMs”) at the factory or were present on a ROM card.
In order to install a new application, one would need to
re-burn the ROM or install a new ROM card. ’037 patent
col. 2 ll. 33–40. The “intelligent telephone” of the day,
moreover, was too big in size, too expensive to produce,
and had problems with battery life. Id. at col. 9 ll. 21–25.
At the time of the invention—1995—mobile devices did
not have processors that were both powerful enough and
small enough to operate the devices without running into
these commercialization problems.
2 The prior art “intelligent communication devic-
es . . . include both the hardware necessary for a computer
module and the hardware for a wireless communications
module.” ’037 patent col. 1 ll. 55–58.
OPENWAVE SYSTEMS, INC. v. APPLE INC. 5
To overcome these difficulties, the inventor of the pa-
tents-in-suit “devised ways to divide the computing power
between a device and its remote server,” thus “elimi-
nat[ing] the need for devices to employ full computing
capacity on their own.” Unwired Planet Op. Br. 2. At
issue is whether the claims cover only mobile devices with
small “microcontrollers”—which facilitate communica-
tions between the client device and the server—or also
cover mobile devices that contain more robust “computer
modules”—which serve to localize more of the computa-
tional processes onto the mobile device itself. 3
In answering this question, the district court found
that “the specification makes clear that the invention does
not encompass mobile devices containing computer mod-
ules.” Openwave Sys., Inc. v. Apple Inc., No. CV-11-765-
RGA, 2014 WL 651911, at *3 (D. Del. Feb. 19, 2014). The
3 The specification of the patents-in-suit specifies
that a “client module” is executed on the “microcontrol-
ler.” ’037 patent col. 6 ll. 65–66. The lightweight “client
module” and the “microcontroller” of the patents-in-suit
are distinguishable from the more robust “computer
module” in terms of relative computing power. Although
the district court noted that the distinction between
“microcontrollers” on the one hand and “computer mod-
ules” on the other is not clear (Joint Appendix (“J.A.”) 10),
we need not seek an exact dividing line where, as here,
the patentee has stipulated to noninfringement under a
claim construction that explicitly relies on this distinction.
That is, if the distinction between “microcontroller” and
“computer module” is clear enough for the patentee to
stipulate that the accused devices do not infringe because
they employ the latter, as that term was construed by the
district court, it is clear enough for this court to apply the
respective terms without the need to remand for addition-
al factual determinations.
6 OPENWAVE SYSTEMS, INC. v. APPLE INC.
district court relied upon a number of passages in the
specification that disparage the prior art implementation
of a computer module on a mobile device, finding that the
“repeated derogatory statements . . . reasonably may be
viewed as a disavowal of that subject matter from the
scope of the [p]atent’s claims.” Id. (alterations in original)
(internal quotation marks omitted) (citing Chicago Bd.
Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361,
1372 (Fed. Cir. 2012)). Accordingly, “[t]he patents dis-
claim mobile devices containing computer modules.” Id.;
see also J.A. 9 (specifying that “[t]he patents disclaimed
mobile devices containing computer modules”).
In light of this disavowal, the district court construed
the term “mobile device” as “a portable wireless two-way
communication device that does not contain a computer
module.” Openwave, 2014 WL 651911, at *3. In a foot-
note, the district court “ma[d]e clear that this construction
does not read out embodiments including microcontrol-
lers.” Id. at n.3. As noted, after some hesitation, Unwired
Planet ultimately stipulated to non-infringement under
this construction. The district court then entered final
judgment, from which Unwired Planet appeals. J.A. 17.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
“Where, as here, a plaintiff concedes noninfringement
by stipulation, we need only address the district court’s
construction of the pertinent claims” and affirm the
judgment if this court determines that the claim construc-
tion is correct under the appropriate standard. Starhome
GmbH v. AT&T Mobility LLC, 743 F.3d 849, 854 (Fed.
Cir. 2014); see also Altiris, Inc. v. Symantec Corp., 318
F.3d 1363, 1368 (Fed. Cir. 2003) (noting that “we need
only address the district court’s construction of the
claims” when a party stipulates to a judgment of non-
infringement following a dispositive claim construction).
OPENWAVE SYSTEMS, INC. v. APPLE INC. 7
We “review de novo the district court’s ultimate inter-
pretation of the patent claims,” but apply “clear error
review” to any necessary “subsidiary factfinding.” Teva
Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839–40
(2015). Because the construction below was based entire-
ly on intrinsic evidence, we review the issue de novo.
The proper claim construction is “the meaning that
the term would have to a person of ordinary skill in the
art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
banc). The specification “is the single best guide to the
meaning of a disputed term” and is usually “dispositive.”
Id. at 1315 (citation omitted). In particular, “the specifi-
cation may reveal an intentional disclaimer, or disavowal,
of claim scope by the inventor,” in which case “the inven-
tor’s intention, as expressed in the specification, is re-
garded as dispositive.” Id. at 1316 (citing SciMed Life
Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
1337, 1343–44 (Fed. Cir. 2001)).
“The standard for disavowal of claim scope
is . . . exacting.” Thorner v. Sony Comput. Entm’t Am.
LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Disavowal
requires that “the specification make[] clear that the
invention does not include a particular feature.” SciMed
Life Sys., Inc., 242 F.3d at 1341. To find disavowal, we
must find that the specification is “both so clear as to
show reasonable clarity and deliberateness, and so unmis-
takable as to be unambiguous evidence of disclaimer.”
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir.
2012) (internal quotation marks omitted) (quoting Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed.
Cir. 2003)).
To find disavowal of claim scope through disparage-
ment of a particular feature, we ask whether “the specifi-
cation goes well beyond expressing the patentee’s
8 OPENWAVE SYSTEMS, INC. v. APPLE INC.
preference . . . [such that] its repeated derogatory state-
ments about [a particular embodiment] reasonably may
be viewed as a disavowal.” Chicago Bd. Options Exch.,
Inc., 677 F.3d at 1372; see also SafeTCare Mfg., Inc. v.
Tele-Made, Inc., 497 F.3d 1262, 1269–70 (Fed. Cir. 2007)
(finding disclaimer where the specification repeatedly
indicated that the invention operated by “pushing (as
opposed to pulling) forces,” and then characterized the
“pushing forces” as “an important feature of the present
invention”). We note also that:
A patent that discloses only one embodiment is
not necessarily limited to that embodiment.
Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d
1326, 1332 (Fed. Cir. 2007). “[I]t is improper to
read limitations from a preferred embodiment de-
scribed in the specification—even if it is the only
embodiment—into the claims absent a clear indi-
cation in the intrinsic record that the patentee in-
tended the claims to be so limited.” Liebel–
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913
(Fed. Cir. 2004).
GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304,
1309 (Fed. Cir. 2014) (alteration in original). The disposi-
tive inquiry in this appeal, therefore, is whether and to
what extent the specification disparages mobile devices
that include “computer modules.”
The district court found that one of the most telling
examples of disclaimer was that the patents-in-suit
specify that “cellular telephone 100 is not a combination
of a computer module and a wireless communication
module as in prior art attempts to create an intelligent
telephone,” ’037 patent col. 14 ll. 52–55, and that “cellular
telephone 100 utilizes only a microcontroller found in
telephone 100 and does not require[] a separate computer
module as in the prior art,” id. at col. 15 l. 67–col. 16 l. 2.
In this embodiment, “[t]he user is utilizing cellular tele-
OPENWAVE SYSTEMS, INC. v. APPLE INC. 9
phone 100 as if cellular telephone 100 was a computer
connected to network.” Id. at col. 14 ll. 47–48 (emphasis
added). In this embodiment, cellular telephone 100 is not
a computer connected to a network and is not a combina-
tion of a mobile device with a computer module.
This single embodiment clearly describes a mobile de-
vice that does not employ a computer module and draws a
distinction between those that do and those that do not.
Unwired Planet correctly argues, however, that reference
to one embodiment—even the preferred embodiment—is
insufficient to justify finding a disavowal. And Unwired
Planet is correct that in GE Lighting Sols., LLC, 750 F.3d
1304, we said just that. This one embodiment is not,
however, the only portion of the specification upon which
the district court relied to support finding a disavowal of
claim scope.
Indeed, the specification of the patents-in-suit is rife
with remarks that disparage and, therefore, disclaim
mobile devices that incorporate computer modules. Such
remarks permeate the specification. Unwired Planet
concedes as much. Unwired Planet Op. Br. 16 (“[I]t is
assuredly true that the specification disparaged (repeat-
edly) devices with ‘computer modules’ . . . .”); id. at 23 (“It
is absolutely true that the specification ‘disparaged’ the
use of computer modules . . . .”); id. at 32 (“[T]he specifica-
tion does indeed disparage the prior art . . . .”).
The Background of the Invention defines the problems
that accompanied the prior art, which the invention
purported to solve:
For at least the last five years, the wireless com-
munication industry has tried to merge computing
with wireless communications. . . .
After years of research and development, and
hundreds of millions of dollars’ investment by
some of the largest companies in the field such as
10 OPENWAVE SYSTEMS, INC. v. APPLE INC.
Motorola, AT&T, Sony, Matsushita, Phillips and
IBM, the results have been nothing but disap-
pointing. Typically, the intelligent communication
devices resulting from these efforts include both
the hardware necessary for a computer module
and the hardware for a wireless communications
module. Examples of such products are Simon
from IBM and Bell South, MagicLink from Sony,
and Envoy from Motorola.
Fundamental design and cost problems arising di-
rectly from the approach taken by the designers of
these intelligent communication devices have lim-
ited widespread market acceptance of these devic-
es. The combination of a wireless communication
module with a computing module leads to a device
that is too bulky, too expensive, and too inflexible
to address the market requirements.
The combination of the two modules is too large
and too heavy to fit in a user’s pocket. Pocket size
is a key requirement of the mobile communication
market which remains unmet by these devices.
In addition, the cost of these devices is close to the
sum of the cost of the computer module and of the
communications module, which is around a one
thousand dollar end-user price. Market research
indicates that the market for intelligent wireless
communications devices is at prices around $300.
Even with a 20% compound cost decline, it would
take five years for the combination units to meet
today’s customers’ price requirements. It is there-
fore unlikely that devices designed by combining a
computer and a wireless module, no matter how
miniaturized and cost reduced, can satisfy the cost
requirement of the market during this decade.
....
OPENWAVE SYSTEMS, INC. v. APPLE INC. 11
. . . [T]he current crop of intelligent communica-
tion devices run only the few applications which
were burned into their ROMs at the factory or
which are contained in a ROM card plugged into a
slot designed for this purpose. This scheme lacks
the flexibility needed to run the thousands of ap-
plications required to address the fragmented re-
quirements of the market and provides no simple
method for updating the applications after the de-
vice has been sold.
’037 patent col. 1 l. 44–col. 2 l. 40 (emphases added). The
import of this section of the specification could not be
clearer: the perceived problem with the prior art “intelli-
gent devices” was the attempt to combine mobile devices
with computer modules, resulting in a device that was too
expensive, too bulky, too inflexible, and, therefore, com-
mercially infeasible.
This section similarly makes clear that any solution to
this problem requires movement away from the prior art’s
attempt to combine a computer module with a mobile
device:
Up to now, intelligent communication devices
have combined a computing module with a wire-
less communications module. However, to gain
widespread acceptance, a two-way data communi-
cation device with processing capability and the
ability to run a wide variety of differing user ap-
plications is needed. In addition, such a device
should be comparable in size, cost, and weight to a
cellular telephone.
Id. at col. 3 ll. 29–35. The Summary of the Invention
begins by continuing along these lines, distinguishing the
invention of the patents-in-suit from the prior art devices
that include computer modules:
12 OPENWAVE SYSTEMS, INC. v. APPLE INC.
According to the principles of this invention, the
prior art limitations of combining a computer
module with a wireless communication module
have been overcome. In particular, a two-way data
communication device of this invention, such as a
cellular telephone, two-way pager, or telephone
includes a client module that communicates with
a server computer over a two-way data communi-
cation network.
Id. at col. 3 ll. 38–44 (emphasis added). The summary
continues, indicating that “the two-way data communica-
tion device of this invention utilizes a client module to
transmit a message including a resource locator selected
by the user over the two-way data communication net-
work to a server on a server computer on the computer
network.” Id. at col. 4 ll. 40–44 (emphasis added). In this
way, the patents-in-suit specify that the solution to the
problems with the prior art is to employ a “client module”
executed on a “microcontroller”—rather than a “computer
module.”
The lightweight “client module” and “microcontroller”
solve these problems, moreover, precisely because they
differ from the bulky, prior art “intelligent devices.” “The
client module of this invention is lightweight, and thus
requires only lightweight resources in a two-way data
communication device.” Id. at col. 6 ll. 34–36 (emphasis
added); see also id. at col. 9 ll. 16–24 (“The client module
is small, e.g., under 64 KByte, and requires only low
processing power congruent with the memory chips and
built-in microcontrollers in two-way data communication
devices such as cellular telephone 100, two-way pager
101, and telephone 102. Thus, unlike the prior art at-
tempts at an intelligent telephone, the cost, size, and
battery life of either cellular telephones, two-way pagers,
or telephones that incorporate this invention are not
adversely affected.” (emphases added)).
OPENWAVE SYSTEMS, INC. v. APPLE INC. 13
In the Detailed Description section of the specifica-
tion, the patents-in-suit disclose that prior art computer
networks already were dividing computing power between
a client and a remote server. The patents-in-suit extend
this same concept to mobile devices: “[w]hile client/server
architectures have been used extensively in computer
networks, a client/sever [sic] architecture implements [sic]
using two-way communication data devices such as cellu-
lar telephone 100, two-way pager 101, or telephone 102
yields new and unexpected results.” Id. at col. 9 ll. 25–29.
Because client/server architectures in computer net-
works were in the prior art, Unwired Planet’s argument
must be that, by employing a microprocessor it invented
the combination of the prior art “computer module” with a
mobile device. Yet that combination constitutes the very
embodiment that gives rise to the problems the invention
purports to solve (namely, the bulk, cost, inflexibility, and
short battery life of intelligent devices).
It is the lightweight nature of the patents’ “client
module,” run on the “microcontroller,” that gives rise to
the benefits of the claimed invention, avoiding the prob-
lems identified with the prior art “intelligent devices”:
Despite the robustness of the client module in in-
terpreting a wide variety of application [sic], typi-
cally, the client process is lightweight and thus
requires only lightweight resources, e.g., 60
Kbytes of read-only memory (ROM) for the client
module, 10 Kbytes of random access memory
(RAM), and less than one million instructions per
second (MIPS) of processing power. Since the cli-
ent process needs only these lightweight resources
in a two-way data communication device, the cli-
ent can use existing resources in such a device
and therefore does not add to the cost of the two-
way data communication device such as data ca-
pable cellular telephone 100.
14 OPENWAVE SYSTEMS, INC. v. APPLE INC.
Id. at col. 16 ll. 24–36 (emphases added). The specifica-
tion continues: “Again, note that this invention does not
require a separate processor and instead can utilize the
processing power that already exists in cellular telephone
600, because as described above, the client process of this
invention is so lightweight.” Id. at col. 20 ll. 56–60 (em-
phasis added). The specification repeatedly and clearly
distinguishes the invention of the patents-in-suit from
more powerful—and therefore more costly—mobile devic-
es in combination with “computer modules.” Such mobile
devices being more powerful and more costly, the patents-
in-suit repeatedly disparage them for their failure to meet
the demands of the market. 4
There is no doubt a high bar to finding disavowal of
claim scope through disparagement of the prior art in the
specification. In this case, however, it is difficult to envis-
age how, in light of the repeated disparagement of mobile
devices with “computer modules” discussed above, one
could read the claims of the patents-in-suit to cover such
devices. We agree with the district court that they do not.
We affirm the district court’s claim construction that
a “mobile device” is “a portable wireless two-way commu-
4 Unwired Planet argues that the repeated dispar-
agement of mobile devices with “computer modules” in the
specification is meant only to denigrate those devices as
“commercially infeasible, not technically infeasible.”
Unwired Planet Op. Br. 32. But we see no reason to
conclude that a specification’s repeated recitation of
marketing deficiencies cannot give rise to a finding of
claim scope disavowal. The fact that a combination
product—one with both a microprocessor and a computer
module—might work does not mean that the invention
claimed encompassed such a product, particularly where
that product would retain all the deficiencies of the prior
art.
OPENWAVE SYSTEMS, INC. v. APPLE INC. 15
nication device that does not contain a computer module”
and that “this construction does not read out embodi-
ments including microcontrollers.” Openwave, 2014 WL
651911, at *3 & n.3. On this ground, we affirm the judg-
ment of non-infringement premised on that construction.
CONCLUSION
For the foregoing reasons, and because we find that
Unwired Planet’s remaining arguments are without
merit, we conclude that the district court properly con-
strued the claim terms at issue and properly entered
judgment of non-infringement. Accordingly, the district
court’s judgment is affirmed.
AFFIRMED