CAFC Overturns Ruling in HTC Case in Favor of IPCom
February 7, 2012 – The Court of Appeals for the Federal Circuit (CAFC) overturned a district court decision granting summary judgment of invalidity on claims 1 and 18 of the 6,879,830 patent in HTC v. IPCom. (HTC filed the complaint for declaratory judgment in November 2008. The complaint referenced the German suit that NPE, IPCom filed against HTC in April of the same year. HTC indicated that IPCom indicated intent to enforce the US counterparts of the German patent-in-suit.) IPCom subsequently countersued adding two patents to the suit including the ’830 patent. (The patents-in-suit were transferred by Bosch to IPCom in 2009.) In it’s decision, the CAFC held that the district court judge, after interpreting the disputed claims as containing both apparatus and method steps, incorrectly invalidated the claims (in a ruling made in 2010) under the principles of Phillips v. AWH Corp. The CAFC stated the district court’s construction failed to adequately examine the language of the claims themselves, failed to refer to the specification in order to better understand the claims, and assigned too much weight to the applicant’s use of the word “process” during a prosecution dispute. According to the CAFC’s order relating to the ’830 patent, “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 functions recited in paragraphs 2–7.” The CAFC also held against HTCs other invalidly argument because, even though the district court wrongly found that disclosure of a processor and transceiver alone supplied sufficient structure for the claimed mobile apparatus, HTC failed to preserve an argument that a failure to disclose an algorithm sufficient to transform the device into one capable of implementing the claimed functions. After the district court ruling, at the stipulation of both parties, the judge made the summary judgment final and certified the matter for immediate appeal.