The U.S. Court of Appeals for the Federal Circuit reversed a district court’s grant of a motion for summary judgment of invalidity where the district court misconstrued the claims at issue, and based on that erroneous construction, held that claims were indefinite for claiming both an apparatus and method steps. HTC Corp. v. IPCom GmbH & Co., KG, Case No. 11-1004 (Fed. Cir., Jan. 30, 2012) (O’Malley, J.). However, the Federal Circuit declined to overturn the district court’s denial of summary judgment on an alternative indefiniteness claim because the alleged infringer never raised the argument before the district court.
The patent at issue covers a handover in a cellular telephone network wherein a mobile station switches from one base station to another. The parties disagreed as to whether it was the “mobile station” or the “network” that implemented the six functions enumerated in the claims. This was important because if the mobile station implemented the functions, the claims would be indefinite because they would be improper hybrid claims, requiring both an apparatus—i.e., the mobile station—and the recited method steps—i.e., the six functions enumerated in the claims. If the network performed the functions, the claims were not indefinite because the claims merely described the network environment in which the mobile station must be used. The district court concluded that the mobile station implemented the enumerated functions, and therefore found that the claims were indefinite. IPCom appealed.
Reversing the district court’s finding, the Federal Circuit explained that the district court misconstrued the claims by its failure to comply with the claim construction principles. Specifically, the Federal Circuit found that the district court did not adequately examine the claims set down in Phillips (IP Update, Vol. 8, No. 10) and failed to refer to the specification to understand the claims, which would have confirmed that the network performed the enumerated functions. The Federal Circuit acknowledged that the district court correctly considered the prosecution history, but concluded that the district court placed too much weight on the applicant’s use of the word “process” to distinguish the claimed invention from a prior art reference cited by the examiner. The Court finally concluded that when properly construed, the claims were definite.
The Federal Circuit rejected, as an alternative basis for invalidity, HTC’s argument that the specification failed to disclose corresponding structure sufficient to satisfy (under § 112, ¶ 2) the means-plus-function claim elements (under § 112, ¶ 6). The Federal Circuit concluded that while the district court erred in finding that a processor and transceiver alone supplied sufficient structure, HTC failed to argue before the district court that the specification did not disclose an algorithm sufficient to transform the processor and transceiver into a special-purpose computer designed to implement the claimed functions. The Federal Circuit stated that the district court failed to analyze the existence and adequacy of an algorithm because HTC never asked it to do so and thus failed to preserve the issue on appeal.