Addressing the application of the claim differentiation doctrine in claim construction, the US Court of Appeals for the Federal Circuit affirmed the district court’s construction, finding that the doctrine of claim differentiation cannot overcome “a contrary construction dictated by the written description or prosecution history.” Wi-LAN USA, Inc. v. Apple Inc., Case No. 15-1256 (Fed. Cir., Aug. 1, 2016) (Chen, J).
Wi-LAN filed a patent infringement suit against Apple alleging that Apple’s iPhone operating on a 4G network infringed two of Wi-LAN’s patents. The patents generally cover enhancing wireless network efficiency by utilizing intermediary nodes between network base stations and user devices. Wi-LAN argued that Apple’s iPhones were covered by the patents because the claimed “intermediary node” mapped onto the baseband processor in Apple’s phone, which handles communications with the 4G network, and the claimed “user device” mapped onto the phone’s application processor, which runs applications on the phone.
At issue was the construction of the terms “specified connection” and “UL connections.” Apple argued that these terms referred to the connection between the user devices and intermediary devices, and that the claims should be construed to only cover systems where multiple user devices were connected to a single intermediary node. Wi-LAN argued that the disputed terms either did not require multiple user devices connected to a single intermediary node or were referring to the connection between the intermediary node and the network base station, not the connection between user devices and the intermediary node. Wi-LAN also argued that the doctrine of claim differentiation precluded the district court from adopting Apple’s constructions. Ultimately, the district court adopted Apple’s constructions and granted Apple summary judgment of non-infringement. Wi-LAN appealed.
The Federal Circuit affirmed the district court’s constructions and grant of summary judgment of non-infringement. First, the Court looked to the specification of the patent to determine whether the patent covered system architectures where the intermediary node only connected to a single device. The Court noted that, according to the specification, “each [intermediary] node . . . serv[es] multiple connections for users” and that every relevant figure from the patents discloses multiple users connected to a single intermediary node. The Court also focused on the claim requirement of “allocating bandwidth based on a specified connection’s priority.” Here, the Court held that “to ‘allocate’ something is to distribute it among multiple recipients” and that “priority is a relative concept: a specified connection only has a ‘priority’ in comparison to other specified connections’ priorities.” The Court further explained that the disputed terms must necessarily refer to the connection between the user devices and intermediary nodes in order for the claims to match the “scheme” and “architecture” disclosed in the specification and prosecution history. Finally, the Court rejected Wi-LAN’s claim differentiation arguments, noting that claim differentiation cannot overcome “a contrary construction dictated by the written description or prosecution history.”