Tuesday, January 31, 2012

HTC v. IPCom: not indefinite

As to the result:

The U.S. District Court for the District of Columbia granted HTC Corporation and HTC America, Inc.’s (“HTC”) motion for summary judgment of invalidity of claims 1 and 18 of U.S. Patent No. 6,879,830, owned by IPCom GmbH & Co., KG (“IPCom”). The district court concluded that those claims were indefinite because they claimed both an apparatus and method steps. We reverse the district court’s judgment because the district court misconstrued the claims, which cover only an apparatus.

The details:

The district court erred in construing claims 1 and 18 because it failed to adhere to the principles of claim construction set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). To facilitate our claim construction analysis, we recite the relevant portion of the claims again, annotate them with numbered paragraphs, and emphasize key terms:

[1] A mobile station for use with a network includ- ing a first base station and a second base station that achieves a handover from the first base sta- tion to the second base station by:
[2] storing link data for a link in a first base sta- tion,
[3] holding in reserve for the link resources of the first base station, and
[4] when the link is to be handed over to the sec- ond base station:
5] initially maintaining a storage of the link data in the first base station,
[6] initially causing the resources of the first base station to remain held in reserve, and
[7] at a later timepoint . . . deleting the link data from the first base station and freeing up the re- sources of the first base station, the mobile station comprising:
[8] an arrangement for reactivating the link with the first base station if the handover is unsuccess- ful.
’830 patent col.8 ll.12–32, col.10 l.61–col.12 l.6 (emphases added). The parties disagree whether the mobile station or the network, both recited in paragraph 1, implements the six functions enumerated in paragraphs 2–7. If the mobile station implements the functions, the claims are indefinite because they recite both an apparatus—the mobile station—and method steps—the functions enu- merated in paragraphs 2–7. If the network performs the functions, the claims are not indefinite because the claims merely describe the network environment in which the mobile station must be used. The district court concluded, without complying with Phillips’s claim construction principles, that the mobile station implements the func- tions recited in paragraphs 2–7.

Of the law:

Words of a claim “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Concep- tronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The plain language of claims 1 and 18 indicates that the network, not the mobile station, performs the enumerated functions.

Preamble within a preamble:

Both the MEC claim and the claims ii>n this case feature what the MEC court called a “preamble-within-a-preamble” format. Id. Although the MEC court acknowledged that such a format is unconven- tional, the court found the claim sufficiently clear to apprise a person of when infringement occurs. Id. The unconventional format of claims 1 and 18, likewise, does not preclude the claims from being definite.


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