In HTC Corp. v. IPCom GmbH & Co., KG, No. 2011-1004 (Fed. Cir. Jan 30, 2012), the Federal Circuit reversed the district court’s grant of summary judgment of invalidity, finding that the lower court incorrectly construed key claim terms. It also affirmed the district court’s finding that a means-plusfunction limitation was not indefinite, further holding that HTC Corp. (“HTC”) waived a new challenge to the limitation’s definiteness by not raising it below.
The Federal Circuit first considered the district court’s holding that two patent claims asserted against HTC were indefinite because they claimed both an apparatus and method steps. The Federal Circuit found that, although the claims featured the unconventional “preamble-within-a-preamble” format first reciting components of a mobile station and then reciting several functions to be performed by the mobile station, the district court erred in finding that type of claim indefinite. According to the Federal Circuit, the district court did not adequately examine the claim language, leading to an inaccurate conclusion regarding which claim term was subject to a key modifier. The Federal Circuit also found that when properly considering the specification, the patent supported a different construction than the one reached by the district court. Moreover, in examining the prosecution history, the Federal Circuit determined that the district court inappropriately focused on a single point in a response to an office action. In sum, the Federal Circuit found that the prohibition on hybrid claiming of apparatus and method steps did not apply to the claims presented in the patent at issue when the claims were properly construed.
The Federal Circuit then reviewed the district court’s holding that a means-plus-function limitation was not indefinite because the specification disclosed a structure corresponding to the claimed function, as required by 35 U.S.C. § 112 ¶ 6. The Federal Circuit agreed that, although the specification did not explicitly disclose a processor and transceiver as the corresponding structure, one skilled in the art would deduce that both were required, and the district court had properly relied on the testimony of expert witnesses to buttress its finding. The Federal Circuit noted, however, that a processor and transceiver amounted to a general-purpose computer, which is an insufficient structure without an algorithm that would transform it into a specific-purpose computer. Nonetheless, the Federal Circuit upheld the conclusion that the means-plus-function claims had not been proven indefinite on summary judgment because the defendant waived its challenge to the adequacy of a qualifying algorithm by failing to raise that issue in the summary judgment proceedings before the district court.