## United States Court of Appeals for the Federal Circuit

2009-1262

SIRF TECHNOLOGY, INC., E-TEN CORP., PHAROS SCIENCE & APPLICATIONS, INC., MITAC INTERNATIONAL CORP., and MIO TECHNOLOGY LIMITED, USA, Appellants,

v. INTERNATIONAL TRADE COMMISSION, Appellee, and BROADCOM CORPORATION and GLOBAL LOCATE, INC., Intervenors.

Gregory A. Castanias , Jones Day, of Washington, DC, argued for appellants. With him on the brief were Thomas J. Davis ; Thomas V. Heyman , Todd R. Geremia and Iman Lordgooei , of New York, New York. Daniel E. Valencia , Attorney, Office of the Gener al Counsel, United States International Trade Commission, of Washington, DC, argued for appellee. With him on the brief were James M. Lyons , General Counsel, and Andrea C. Casson , Assistant General Counsel. William F. Lee , Wilmer Cutler Pickering Ha le and Dorr LLP, of Boston, Massachusetts, argued for intervenors. With him on the brief were Michael J. Summersgill ; James L. Quarles, III , Michael D. Esch and Todd C. Zubler , of Washington, DC; S. Calvin Walden of New York, New York. Appealed from: United States International Trade Commission

## United States Court of Appeals for the Federal Circuit

2009-1262 SIRF TECHNOLOGY, INC., E-TEN CORP., PHAROS SCIENCE & APPLICATIONS, INC., MITAC INTERNATIONAL CORP., and MIO TECHNOLOGY LIMITED, USA, Appellants,

v. INTERNATIONAL TRADE COMMISSION, Appellee. and BROADCOM CORPORATION and GLOBAL LOCATE, INC., Intervenors. On appeal from the United States International Trade Commission in Investigation No. 337-TA-602.

___________________________ DECIDED: April 12, 2010

___________________________ Before MICHEL, Chief Judge , CLEVENGER, and DYK, Circuit Judges

. DYK, Circuit Judge

. SiRF Technology, Inc. (“SiRF”), E-TEN In formation Systems Co., Ltd. (“E-TEN”), Pharos Science & Applications, Inc. (“Phar os”), MiTAC Internati onal Corp. (“MiTAC”), and Mio Technology Limited, USA (“Mio”) (co llectively, “appellants”) appeal from a decision of the International Trade Co mmission (“Commission”). The Commission found that appellants violated section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337)through the unlawful importation, sale for im portation, and sale after importation of certain Global Positioning System (“GPS”) devices and products containing these devices that infringe certain patents owned by Global Locate, Inc. and Broadcom Corp. (“Broadcom”) (collectively, “Global Locate”). 1 The Commission issued a limited exclusion order and a cease and desist order. In re Certain GPS Devices & Prods. Containing Same , Inv. No. 337-TA-602 (Int’l Trade Comm’n Jan. 15, 2009) (“ Final Determination ”). We affirm. BACKGROUND Global Locate owns U.S. Patent No. 6, 417,801 (“the ’801 patent ”), U.S. Patent No. 6,606,346 (“the ’346 patent”), U.S. Patent No. 6,651, 000 (“the ’000 patent”), U.S. Patent No. 6,704,651 (“the ’651 patent”), U.S. Patent No. 6,937,187 (“the ’187 patent”), and U.S. Patent No. 7,158,080 (“t he ’080 patent”). These six pat ents are in the field of GPS technology. GPS is a satellite navigati on system comprising thirty-two satellites orbiting Earth that were placed in orbit by the United States and are operated by the United States. These satellit es and their orbits are arr anged so that at least four satellites are always in a direct line-of-si ght to any point on Ea rth. The GPS system permits a GPS-enabled receiver to detect signal s from at least f our satellites and use that information to compute its distance from each satellite, and thus its precise position on Earth, through a process known as trilaterati on. Each satellite transmits two types of information to a GPS-receiver—(1) a ps eudorandom noise (“PN” or “PRN”) code, and (2) the Navigation (“NAV”) message. PRN codes are used by the receiver to determine

1 Intervenor Broadcom Corp. acquired Global Locate in July of 2007, and was added as a complainant in this investigation on February 5, 2008.

2009-1262 2the distance to the satellite. NAV messages contain information regarding when the received signals were sent by the satellite, ephemeris data which is data regarding the location and trajectory of t he satellite, and almanac information which is information regarding the position of other satellites in the conste llation. Conventional GPS receivers depend on both the PRN code and the NAV message to calculate their position. The GPS system itself is not patented. However, t here are various patents in devices, systems, and methods for processing GPS satellite signals. It is difficult to receive the NAV message in certain environments due to poor signal reception. In order to solve this problem, Assisted-GPS (“A-GPS”) was developed. In A-GPS systems, the NAV mess age is collected by a receiving station with an unobstructed view of the sky, and then transmitt ed to GPS receivers via computer servers and over a connection such as the Internet or a wireless telephone network. The patents-in-suit are owned by Global Locate and are directed to various improvements over conventi onal A-GPS technology. T he ’346 patent is entitled “Method and Apparatus for Computing Signal Co rrelation.” It is directed to a novel method of performing signal correlation, which is the process by which GPS receivers compare incoming signals to locally generated codes in order to identify the satellite sending the signal and the “offset” between t he received signal and the stored code. The ’651 patent is entitled “Me thod and Apparatus for Locating Mobile Receivers Using a Wide Area Reference Network for Propagating Ephemeris.” The ’651 patent teaches sending satellite ephemeris to a mobile G PS receiver through an A-GPS network and using the ephemeris at the receiver to more precisely locate the satellites and narrow

2009-1262 3the search for weak signals, thereby improving the receiver’s acquisiti on sensitivity. The ’000 patent is entitled “Met hod and Apparatus for Generati ng and Distributing Satellite Tracking Information in a Compact Format.” The patent teaches the compaction of satellite ephemeris data in order for it to be received more quickly by GPS receivers than uncompacted data. The ’080 patent is entitled “Met hod and Apparatus for Using Long Term Satellite Tracking Data in a Remote Receiver.” It teaches using certain algorithms to predict ephemeris data for satellites in the future, receiving that “long term” data at a GPS receiver, and using it to locate satellites and calculate position. The ’801 patent is entitled “Method and Apparatus for Time-Free Processing of GPS Signals.” It teaches a GPS receiver that c an calculate its position without having to wait to receive time information from a satellite, thereby allo wing the receiver to calculate its position more quickly and even in weak-signal envir onments. The ’187 pa tent is entitled “Method and Apparatus for Forming a Dynamic Model to Locate Position of a Satellite Receiver.” This patent is a continuation- in-part of the ’801 pat ent. It extends the solution of the ’801 patent from the discrete calculation of a GPS receiver’s position at a particular moment to the use of a “dynamic model” that allows the improved, repeated calculation of a GPS receiver’s position as it changes over time. SiRF, which is accused of both dire ct and induced infringement, developed, manufactured, and sold certain GPS chips. SiRF’s SiRFstarIII chips are accused of being involved in the infringement of the ’000, ’080, ’651, ’801, and ’187 patents. SiRF’s InstantGPS chips are accused of being involv ed in the infringement of the ’346, ’801, and ’187 patents. These chips, when incor porated into end-user GPS devices, allow such devices to compute absolute position using the GPS system. SiRF’s

2009-1262 4SyncFreeNav is software embedded in SiRFst arIII chips that calculates current positional information for the GPS receiver. E-TEN, Pharos, MiTAC, and Mio, al so accused of direct and induced infringement, incorporate SiRF chips into end-user, consumer GPS devices, such as portable navigation devices, personal digita l assistants, and cell phones, and maintain intermediate servers. The products of thes e companies that cont ain SiRFstarIII chips are accused of being involved in the infringem ent of the ’000, ’080, ’651, ’801, and ’187 patents. The consumer devic es incorporating SiRF chips and software are imported into and sold in the United States. SiRF’s InstantFix service is an A-GPS system that provi des server-generated extended-ephemeris (“EE”) files to end-user GPS devices, which then use the EE files for signal acquisition and satellite position comput ation. The service is provided through a SiRF-operated server. 2 This server generates EE files once per day by receiving and downloading past GPS satellite information, including ephemeris data, from Jet Propulsion Laboratory (“JPL”). SiRF ’s server uses this data to predict future satellite

2 The Commission found as a factual matte r that the servers at issue were in the United States based on the Rule 30( b)(6) deposition testimony of Makarand Phatak and Peter Kuykendall. At trial, Ashutosh Pande testif ied that the servers (with the exception of the server that serves Re search in Motion (“RIM”)) were then located in the United Kingdom and in Bangalor e, India. Contrary to the suggestion in appellants’ brief, Pande did not testify t hat the servers were moved after the date of Kuykendall’s deposition. The Commission was justified in tr eating this testimony as conflicting and relying on Kuykendall’s 30(b)(6) deposition test imony. If in fact the servers are now located outside of the United States, appellants are not without a remedy as appellants may petition for a modification or a rescissi on of an exclusion or der or a cease and desist order under 19 C.F.R. § 210. 76 if appellants are “no longer in violation of [section 337].” We express no opinion as to whether the facts here would support a modification or rescission.

2009-1262 5orbits and clock information for all satellites in the GPS constellation in order to generate EE files. These EE files are then ultimately transmitted to remote GPS receivers by way of SiRF’s customers’ servers via the Internet, a wireless link, or a combination of the two. The InstantFix service, in utilizing SiRF’s chips and the software that implements the In stantFix service, is alleged to infringe the ’080, ’000, and ’651 patents. On April 30, 2007, at the request of Gl obal Locate, the Commission initiated an investigation to determine whether violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) had occurred by the importation into the United States, the sale for importation, or the sale withi n the United States after impor tation of certain GPS devices that allegedly were involved in in fringing Global Locate’s patents. See In re Certain GPS Devices & Prods. Containing Same , 72 Fed. Reg. 25,777- 78 (Int’l Trade Comm’n May 7, 2007) (notice of inve stigation). SiRF, E-TEN, MiTAC, Pharos, and Mio were named as respondents. The Commission Investigat ive Staff (“Staff”) was also a party to the investigation. Global Locate alleged that appellants infri nged fifteen claims of the six asserted patents. An Administrative Law Judge (“ALJ ”) held an evidentiary hearing and issued a 216-page Initial Determination. See In re Certain GPS Devices & Prods. Containing Same , Inv. No. 337-TA-602 (Int’l Trade Comm’n Aug. 8, 2008) (“ Initial Determination ”). The ALJ found violations of section 337 by each of the respondents, and with respect to each of the six patents. Spec ifically, the ALJ found infringem ent of claims 1, 2, and 11 of the ’801 patent; claims 4 and 11 of the ’ 346 patent; claims 1, 2, and 5 of the ’000 patent; claims 1 and 2 of the ’651 patent; cl aims 1 and 9 of the ’187 patent; and claims

2009-1262 61, 2, and 22 of the ’080 patent. Id. at 213-15. The ALJ also concluded that all six patents were not invalid or unenforceable. Id. at 213-14. Appellants petitioned the Commission for review of the ALJ’s decis ion, and the Commission determined that it would review certain of the ALJ’s findings. On January 15, 2009, the Commission issued its opinion. See Final Determination . First, the Commission affirmed the ALJ’s decision that Global Locate had standing to assert the ’346 patent. Id. at 8-9. Second, the Commission concluded that SiRF infringes the ’ 651 and ’000 patents. In doing so, the Commission modified the ALJ’s findings, finding “that SiRF directly infringes” and concluded “that SiRF exercises control over end users of the GPS receivers so as to caus e infringement of the ’651 and the ’000 patents.” Id. at 13. Third, the Commission addressed the issue of patentable subject matter of certain method claims of the ’801 and ’187 patents in light of In re Bilski , 545 F.3d 943 (Fed. Cir . 2008) (en banc), cert. granted , 129 S. Ct. 2735 (2009), and affirmed the ALJ’s decision that the disputed claims recite patentable subject
matter. 3 The Commission therefore affirmed the In itial Decision of the ALJ as modified by the Commission’s opinion and adopted all findi ngs of fact and legal conclusions in the Initial Decision that were not incons istent with the Commission’s opinion. Final Determination , slip op. at 23. On January 15, 2009, the same day as it issued its opinion, the Commission issued a limited exclusion order prohibiting the entry into the United States of infringing

3 The Commission originally declined to review the ALJ’s findings on patentable subject matter but addressed th is issue on appellants’ petition for reconsideration in light of In re Bilski , ultimately denying the petition as both as untimely and as without merit. Final Determination , slip op. at 14.

2009-1262 7GPS devices that are manufac tured abroad by or on behalf o f, or imported by or on behalf of, SiRF and other respondents. T he Commission also issued a cease-anddesist order against the respondents with U.S. operations: SiRF, Pharos, and Mio. The Commission’s determination became final on Ma rch 16, 2009, at the conclusion of the sixty-day presidential review period. See 19 U.S.C. § 1337(j)(4). An appeal to this court was timely filed, and we have jurisdiction under 28 U.S.C. § 1295(a)(6). DISCUSSION This appeal challenges not only the dete rminations by the full Commission, but also aspects of the decision of the ALJ that the Commission declined to review relating to claim construction, invalidity, and infr ingement. We have considered appellants’ arguments as to the issues that the Co mmission declined to review and find them unpersuasive; we think it unnecessary to treat these issues separately in this opinion. We do however find that three issues addressed by the Commission merit further discussion. I Standing to Assert the ’346 Patent Appellants challenge the Commission’s fi nding that Global Locate had standing to assert the ’346 patent. The question of standing to assert a patent claim is jurisdictional, and we review that question de novo. Rite-Hite Corp. v. Kelley Co. , 56 F.3d 1538, 1551 (Fed. Cir. 1995). However, we review underlying factual determinations upon which a conclusion of st anding is based for substantial evidence. See Finnigan Corp. v. Int’l Trade Comm’n , 180 F.3d 1354, 1361-62 (Fed. Cir. 1999). “Absent the voluntary joinder of all co -owners of a patent, a co-owner acting alone will lack standing.” DDB Techs., L.L.C. v. MLB Advanced Media, L.P. , 517 F.3d

2009-1262 81284, 1289 (Fed. Cir. 2008) (citing Isr. Bio-Eng’g Project v. Amgen, Inc. , 475 F.3d 1256, 1264-65 (Fed. Cir. 2007) (internal quotation marks omitted). This rule applies equally in ITC investigations. 4 The ’346 patent is directed to signal correlation and the named inventors are Charles Abraham and Donald L. Fuchs. The patent names Global Locate as the assignee. At issue is whether Magellan Corporati on (“Magellan”) is a co-owner of the ’346 patent. If Magell an is a co-owner, Global Locate lacks standing to assert the ’346 patent absent joinder of Magellan. The question of whether Magellan is co-owner of the patent depends on whether one of the inventors (Abr aham) assigned his interest in the patent to Magellan. Abraham conceived of the subject matter of the ’346 patent in October of 1999 while employed at Magellan. In 1996, Abraham had entered into an employee inventions agreement with Ashtech, Inc. (“A shtech”) (a predecessor to Magellan) which assigned to Ashtech “all inventions . . . which ar e related to or useful in the business of the Employer . . . and which were . . . concei ved . . . during the per iod of the Employee’s employment, whether or not in the course of the Em ployee’s employment.” Final Determination , slip op. at 6. Appar ently, Ashtech merged with Magellan in 1997. While the record is unclear, it appears likely t hat Abraham’s agreement with Ashtech was assigned to the merged company (which retained the name Magellan). Abraham testified that at the time of conception of the invention, he wa s still subject to the original

4 See In re Certain Catalyst Components & Catalysts for the Polymerization of Olefins , Inv. No. 337-TA-307, 1990 ITC LEXIS 224, at *10, *26 (Int’l Trade Comm’n June 25, 1990) (noting that “infringement actions may onl y be brought by, or in the name of, all of the owners of the patent in suit or the exclusive licensee of all of the rights covered by the patent” because the Commission “strictly read[s] the federal standing precedent” into its rules); see also Final Determination , slip op. at 5.

2009-1262 9Ashtech agreement. Abraham separated from Magella n in February 2000 and then joined Global Locate. In May of 2001, he and his co-inventor applied for the ’346 patent, which was eventually assigned to Global Locate. Initially, we conclude that the Abr aham/Ashtech agreement provided for automatic assignment. The question of w hether or not an agreem ent provides for automatic assignment is a matter of federal law. DDB Techs. , 517 F.3d at 1290. “If the contract expressly grants rights in future inventions, ‘no further act [is] required once an invention [comes] into being,’ and ‘the transfer of title [occurs] by operation of law.’” Id. (quoting FilmTec Corp. v. Allied-Signal Inc. , 939 F.2d 1568, 1573 (Fed. Cir. 1991)). Here, the agreement provides that “[t]he Employee assigns all of his or her right, interest, or title in any Invention to the Employer to the extent allowed by law.” Final Determination , slip op. at 6. By using the language “Employee assigns,” the employeeassignment agreement expressl y grants rights with no further action needed on the part of the employee. Theref ore the provision is one of automatic assignment. See DDB Techs. , 517 F.3d at 1290 & n.3 (finding automatic assignm ent where the agreement used “the present, automatic” language “agrees to and does hereby grant and assign”). The question remains whether the inventi on is “related to or useful in the business of the Employer” within the meaning of the agr eement. That question is a matter of state law—here, California law. See id. at 1290. Neither the agreement nor the California Labor Code specifie s what it means for an invention to be “related to or useful in the business of the Employer.” The terms “related to” and “useful in” are inherently ambiguous. Under Ca lifornia law, when a contract is ambiguous, “[e]xtrinsic evidence is admissible to prove a meaning to which the contract is reasonably

2009-1262 10susceptible.” Founding Members of the Newport Beac h Country Club v. Newport Beach Country Club, Inc. , 109 Cal. App. 4th 944, 955 (Ct. App. 2003). Such extrinsic evidence may include evidence of the nature of the employer’s business and the nature of the employee’s work for the employer, as well as evidence of the conduct of the parties, i.e., evidence probative of whether or not they regarded the inv ention as falling within the agreement. See DDB Techs. , 517 F.3d at 1292; see also 11 Samuel Williston & Richard A. Lord, A Treatise on the Law of Contracts § 32:14 (4th ed. 1999) (“[T]he parties’ own practical interpretation of the c ontract—how they act ually acted, thereby giving meaning to their contract during the course of performing it—can be an important aid to the court.”). Here, as in DDB Technologies , “resort to extrinsi c evidence . . . is necessary to determine whether the [contract] provision applies.” DDB Techs. , 517 F.3d at 1292. The Commission, in concluding that Gl obal Locate has standing to assert the ’346 patent, found that there was “no evidence that the invent ion of the ’346 patent was ‘related to or useful in’ its business.” Final Determination , slip op. at 8-9. In reaching this conclusion, the Commission pointed out that “none of the evidence to which [appellants] have cited relates the specific in vention of the ’346 patent to any particular aspects of Magellan’s business.” Id. at 7. The Commission also relied on the fact that “[i]n light of Magellan’s awar eness of the invention of the ’346 patent and its failure to assert ownership of the invention at any time , . . . Magellan itself did not consider the invention of the ’346 patent ‘rel ated to or useful in’ its busi ness within the meaning of . . . the employee inventions agreement.” Id. at 8.

2009-1262 11All parties agree that Global Locate had t he burden to establish standing. Global Locate attempted to satisfy this burden by showing that Abraham and Fuchs, the inventors, had assigned the patent to Global Loc ate, and that Global Locate is shown as the assignee of the patent as issued. 5 The question is whether Global Locate also had the burden of establishing t hat an interest in the patent had not been previously assigned by Abraham to Magellan. We th ink that that the Commission properly found that that burden rest s with the appellants. 6 The recording of an assignment with the PTO is not a determination as to the validity of the assignment. See 37 C.F.R. § 3.54. However, we think that it creates a presum ption of validity as to the assignment and places the burden to rebut such a showi ng on one challenging the assignment. Such

5 “The inventor is presumed to be t he owner of a patent application, and any patent that may issue therefro m, unless there is an assignmen t.” 37 C.F.R. § 3.73(a); see also Isr. Bio-Eng’g Project v. Amgen, Inc. , 475 F.3d 1256, 1263 (Fed. Cir. 2007); Arachnid, Inc. v. Merit Indus., Inc. , 939 F.2d 1574, 1578 n.2 (Fed. Cir. 1991); 8 Donald S. Chisum, Chisum on Patents § 22.01 (2006) (“The presum ptive owner[s] of the property right in a pat entable invention [are] . . . the several human inventors, in the case of a joint invention.”). The statute provides that “[p]atents may be granted to the assignee of the inventor of record in the Patent and Trademark Office, upon the application made and the specificati on sworn to by the inventor.” 35 U.S.C. § 152.

6 Appellants argue that the burden rest s with Global Locate as a matter of California law because under Calif ornia law, the burden falls on “the employee” to prove that “[an] agreement does not apply to an invention which qualifies fully [to be retained by the employer] under the pr ovisions of Section 2870.” Appellants’ Br. 19-20 (citing Cal. Lab. Code § 2872). Sect ion 2870 provides that empl oyee-invention assignment agreements may not provide for t he assignment of certain inv entions that “the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret informati on.” Section 2870 allows an employee who claims the benefit of that se ction to render unenforceable an agreement that attempts to provide for such an assignment. Section 2872 provides that “[i]n any suit or action arising [under section 2870], the burden of proof shall be on the employee claiming the benefits of its provisions.” As this is not a suit ar ising under section 2870 of the California Labor Code to render the contra ct unenforceable, th is provision is inapplicable.

2009-1262 12an understanding is consistent wit h and supported by the provisio ns of 35 U.S.C. § 261. That section provides that the recordation of an assignm ent with the PTO can be the basis for a bona fide purchaser defense (“An a ssignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademar k Office within three months from its date or prior to the dat e of such subsequent purchase or mortgage.”). Given that the burden of proof on this i ssue rested with appellant s, we think that the Commission’s determination that appell ants have not sustained their burden is supported by substantial evidence. Because the phrase “related to or us eful in” is inherently ambiguous, the Commission was correct in looking to the par ties’ own interpretation of this language as being determinative. Here, there is evidenc e that the parties indeed interpreted the agreement in a way that is fa tal to appellants’ interpretation. In June of 2000, Magellan sued Global Locate as well as Abraham pers onally (one of the nam ed inventors of the ’346 patent) for trade secret misappropriation. At the time of the lit igation, Abraham had already commenced working for Global Locate, and apparently had assigned his rights to the ’346 invention to Global Locate. T he litigation was concluded by settlement in March of 2001. At the time of settlement, the application for the ’346 patent had not been filed, and the rights to t he patent were not directly involved in the trade secret action. Abraham’s agreement with Magellan or Ashtec h covered not only patented inventions, but also inventions that were not patented (including in ventions represented by trade secrets) that were “re lated to or useful in the business of the Employer.” See Final Determination , slip op. at 6. During the liti gation, Magellan was provided with

2009-1262 13documents prepared by Abraham while at Magellan relating to the conception of the subject matter of the '346 patent. As part of the settlem ent agreement, although there was no compensation flowing from Magell an to Global Locate, Magellan and Abraham appeared to recognize that Global Locate was the owner of the in vention in question, stating that “nothing in this Agreement shall preclude Global Locate from using any of the following technical concepts: . . . (vi) S hortening the signal shi ft register (with the number of bits being divisible into 1023).” Initial Determination , slip op. at 39. The parties agree that this is t he technology involved in the asserted claims of the ’346 patent. Id. If Magellan and Abraham recognized t hat Global Locate was the owner of the trade secret rights to the invention, it logically follo ws that Magellan and Abraham did not think that Magellan was the owner of similar rights that eventually became the subject of the ’346 patent. Further, followi ng the settlement, Magellan informed one of its customers that after “a diligent examination of information produced during discovery,” there was no evidence of trade secret misappropriation by Global Locate and Abraham. J.A. 13,516. If Magellan had owned the inventi on, the disclosure of its trade secrets by Abraham to Global Locat e would have been misappropriation. It is therefore reasonable to conc lude that during the trade se cret litigation, Magellan determined that it was not t he owner of the invention. In sum, we find that there is subst antial evidence to support the Commission’s finding that Global Locate had standing to assert the ’346 patent.

2009-1262 14II Infringement of the ’651 and ’000 Patents Appellants contend that the Commission err ed in concluding that SiRF directly infringes claims 1 and 2 of the ’651 patent 7 and claims 1, 2, and 5 of the ’000 patent. 8 The resolution of this issue depends in part on claim construction, which is an issue of law and is subject to de novo review. See Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). Appellants argue that the cl aims are only infringed when actions are taken by SiRF’s customers and by the end users of t he GPS devices; that SiRF accordingly can infringe the patents only when it is a joint infringer toget her with the customers and the

7 Claim 1 of the ’651 patent reads as follows: 1. A method of receiving global positioning system (GPS) satellite signals comprising: receiving satellite ephemeris at a first location; communication [sic] the satellite ephemer is to a mobile GPS receiver at a second location; and processing satellite signals received at the mobile GPS receiver using the ephemeris to reduce code and frequency uncertainty in the mobile GPS receiver to improve ac quisition sensitivity of the mobile GPS receiver.

8 Claim 1 of the ’000 patent reads as follows: 1. A method of creating and di stributing compact satellite orbit models comprising: receiving satellite signals from at least one satellite and at least one receiving station; extracting at least a portion of t he satellite tracking data from said satellite signal, representing said data in a first format; transmitting the formatted data to a remote receiver; and at the remote receiver, representi ng said formatted data in a second format supported by the remote receiver.

2009-1262 15end users; and that the requirements for join t infringement are not satisfied because SiRF does not control or direct the customers or end users. See Muniauction, Inc. v. Thomson Corp. , 532 F.3d 1318, 1329 (Fed. Cir. 2008). The Commission found joint infringement. We do not reach the question of joint infringement because we do not read the relevant claims as requiring that any of the specified actions be taken by SiRF’s customers or by the end users of the GPS devices. Th is is not a situation where a method claim specifies performance of a step by a third party, or in which a third party actually performs some of the designated steps, and thus control or direction of the performance of that step by the accused infringer is required. 9 Rather, the method claims at issue here are drawn to actions which can be performed and are performed by a single party. As they do not require that any of the steps be performed here by the customers or the end users, and the disputed steps are not in fact performed by third parties, we conclude that SiRF directly infringes. First, at issue are the second, “comm unicati[ng]” step of cl aim 1 of the ’651 patent and the third, “transmitti ng” step of the ’000 patent. The second step of claim 1 of the ’651 patent provides fo r “communication [sic] the satellite ephemeris to a mobile GPS receiver at a second loca tion.” ’651 patent col.10 ll.64-65. The third step of claim 1 of the ’000 patent provides for “transmitting the formatted data to a remote receiver.” ’000 patent col.6 l.47. Appellants argue that the perform ance of these steps necessarily

9 For example, in Muniauction , the method at issue required actions to be taken by both a “bidder” and an “issuer.” See 532 F.3d at 1322. In BMC Resources, Inc. v. Paymentech, L.P. , 498 F.3d 1373, 1378 (Fed. Cir. 2007) , the parties “agree[d] [that] Paymentech [the accused infringer] does not perform every step of the method at issue in this case.”

2009-1262 16involves actions by SiRF’s customers and by the end users of the GPS devices. They argue that in order for the data to be “co mmunicat[ed]” or “trans mit[ed]” to the GPS receiver, the data must travel first from SiRF’s server to the servers of its customers (the intermediate distributors and GPS product manufacturers). Then, SiRF’s customers must forward this data to the mobile GPS receivers, and the en d users of the GPS devices must download the data fr om the customers’ servers. Neither the claim language nor the patent specificat ion requires that the communication/transmission be dire ct. In fact, indirect co mmunication is specifically contemplated. See ’651 patent col.3 ll.42-48 (“The lin k may be a landline, or other direct communications path . . . . Alternativel y, this link may have several parts . . . .”) (label numbers omitted). Ther efore, we construe these limitations as encompassing “communicating, whether direct or indirect” and “t ransmitting, whether direct or indirect.” With respect to infringement, under this cons truction it is clear that SiRF performs the step of communicating/trans mitting the files to the end users’ devices because SiRF initiates the process of transmitting and communicating, and the files are actually transmitted to the end users. The entire “end-to-end service,” as SiRF’s marketing describes it, J.A. 16,206, was designed by SiRF so that the EE files would be transmitted to end-user GPS devices contai ning SiRF chips and software. Indeed, the EE files generated by SiRF only work in the end-user devices of those devices containing SiRF chips and SiRF software. Here , it is true that the “communicati[ng]” or “transmitting” can only occur if the customer forwards the data to the end user and the end user downloads the data. However, the actions of “forwarding” or “downloading” are not required by the claims , and, therefore, the fact t hat other parties perform these

2009-1262 17actions does not preclude a finding of direct infringement. By analogy, if a claim for a method of making a telephone call included the limitation: “placing a telephone call to a telephone at a second location,” the fact that the call must first be routed through a switched telephone network, and t hen eventually to the eventual recipient, would not prevent this claim limitation from being satisfi ed. Therefore, we c onclude SiRF indirectly transmits or communicates the files to the GPS receivers and thereby meets these claim limitations. Second, at issue are the third step of cl aim 1 of the ’651 patent, which requires “processing [the] satellite signals received at the mobile GPS receiver,” ’651 patent col.10 ll.66-67 and the fourth step of claim 1 of the ’000 patent, which requires “representing [the] formatted data in a second format supported by the remote receiver,” ’000 patent col.6 ll.48-49. With respect to the ’651 patent, the ALJ noted that the processing “occurs at the mobile GPS receiver.” Initial Determination , slip op. at 140- 42. With respect to the ’000 patent, the AL J noted that “[t]he parti es are in agreement that [this limitation] is to be construed as ‘converting the data received in the first format to a second format supported by the remote receiver.’” Id. at 125-26. The parties agree that the “processing” and “repr esenting” steps must take place in the mobile GPS device. Appellants argue that SiRF does not perform this step because though the GPS receivers employ SiRF chips and InstantFix so ftware, end users must actually initiate the process of downloading the EE data by connecting the device to the Internet and activating the InstantFix functionality. Then, the end user must either enable the “auto update” feature or enabl e the “manual update” feature in order for EE files to be

2009-1262 18transmitted to the receiver. Appellants ar gue that this action by an end user negates performance by SiRF of the “processing” or “representing” claim limitations. Appellants’ argument misreads the claim limitations. There exists no method step in any of the disputed clai ms that requires “enabling” or “activating” the devices that perform these claim limitations. Nor is t here a step which requires “downloading” the data into the GPS receiver. Appellants, in e ssence, ask us to read such limitations into the claims. We decline to do so. See, e.g. , Burke, Inc. v. Bruno Indep. Living Aids, Inc. , 183 F.3d 1334, 1340-41 (Fed. Cir. 1999). We t herefore construe the “processing” and “representing” steps of the asserted claims as taking place in a G PS receiver that is enabled and ready to process data. When properly construed, it is clear that SiRF infringes as its devices and software dictate the performance of the “p rocessing” and “representing” steps. Once the technology is enabled, SiRF’s SiRFstar III chip and software, designed and built by SiRF, automatically perform the disputed st eps of the claims at issue because the SiRFstarIII chips are programmed by SiRF to use the InstantFix ephemeris data automatically if it has been trans mitted to the remote device. Neither SiRF’s customers (the equipment manufacturers and software developers) nor the end users of the GPS receivers can modify the use of the EE files by SiRF’s softwar e or the functionality of the SiRFstarIII chip. Once the GPS receiver is enabled and ready to process the data, only SiRF’s actions are involved in “proce ssing” or “representing” the data. SiRF performs all of the claim limitations of claim 1 of the ’ 651 patent and claim 1 of the ’000 patent, and therefore directly infringes the asserted claims. III Patentable Subject Matter of the A sserted Claims of the ’801 and ’187 Patents

2009-1262 19Appellants also challenge the Commission’s finding that the asserted claims of the ’801 and ’187 patents recite patentable subjec t matter. Whether a claim is drawn to patent-eligible subject matter is an iss ue of law that we review de novo. Bilski , 545 F.3d at 951. At issue are claim 1 of the ’801 patent, as well as claims 2 and 11, both of which depend from claim 1. Claim 1 recites: 1. A method for calculating an absol ute position of a GPS receiver and an absolute time of reception of satellite signals comprising: providing pseudoranges that estimate the range of the GPS receiver to a plurality of GPS satellites; providing an estimate of an absolute ti me of reception of a plurality of satellite signals; providing an estimate of a position of the GPS receiver; providing satellite ephemeris data; computing absolute position and absolute time using said pseudoranges by updating said estima te of an absolute time and the estimate of position of the GPS receiver. Also at issue is Claim 1 of the ’187 patent. That claim recites: 1. A method, comprising: estimating a plurality of states associated with a satellite signal receiver, the plurality of states in cluding a time tag error state, the time tag error state relating a local time associated with said satellite signal receiver and an absolute time associated with signals from a plurality of satellites; and forming a dynamic model relating the plurality of states, the dynamic model operative to compute position of the satellite signal receiver. The ’187 patent is a continuation-in-part of the ’801 patent. The ALJ held that the asserted method claims are “tied to a spec ific machine—a GPS receiver” and therefore found them directed to patentable subject matter. See Initial Determination , slip op. at 174-75, 205-06.

2009-1262 20After the Initial Determination, but befor e review by the Commission, this court decided In re Bilski . In Bilski , we held that “[a] claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a di fferent state or thing.” 545 F.3d at 954. We also held that the machine-or-transformation test has a further aspect: “the use of a specific machine or transformation of an article must impose m eaningful limits on the claim’s scope to impart patent-eligibility.” Id. at 961 ( see also Prometheus Labs., Inc. v. Mayo Collaborative Servs. , 581 F.3d 1336, 1342-43 (Fed. Cir . 2009). We agree with the Commission that the claims in question satisfy this test. 10
We have defined a “machine” as “a concre te thing, consisting of parts, or of certain devices and combination of devices. This includes every mechanical device or combination of mechanical powers and devic es to perform some function and produce a certain effect or result.” In re Ferguson , 558 F.3d 1359, 1364 (Fed. Cir. 2009) (quoting In re Nuijten , 500 F.3d 1346, 1355 (Fed. Cir. 2007)) (int ernal quotation marks omitted). A GPS receiver is a machine and is integral to each of the claims at issue. Claim 1 of the ’801 patent is expressly directed in its preamble to “calculating an absolute position of a GPS receiver.” ’801 patent co l.12 ll.28-29. It also refers to “computing absolute position” by updating an “estimate of position of t he GPS receiver,” providing

10 The Commission originally declined to review the ALJ’s decision on this issue, but after our decision in Bilski addressed the issue, appellants sought reconsideration. The Commission’s decis ion with respect to timeliness does not present an independent ground for affirmance of the ALJ’s decision with respect to patentable subject matter since that issue would be properly before us even if the Commission had declined to review the issue at all. The Commission, like this court, is bound to apply the current law. Therefore, it is appropriate to address this issue on the merits.

2009-1262 21an estimate of the time at which a GPS receiv er receives a plurality of satellite signals, and computing the position “o f the GPS receiver.” Id. col.12 ll. 28-40. Further, claim 1 requires “pseudoranges” that estimate the distanc e from “the GPS receiver to a plurality of GPS satellites.” Id. col.12 ll.31-32. Pseudoranges, wh ich are the distances or estimated distances between satellites and a GPS receiver, can exist only with respect
to a particular GPS receiver that receives the sate llite signals. Claim 1 of the ’187 patent is similarly tied to a G PS receiver. It requires the estimation of “states” that are “associated with a satellite signal receiver,” and the formation of a “dynamic model . . . to compute [the] position of t he satellite signal receiver.” See ’187 patent col.20 ll.46- 54. It is clear that the methods at iss ue could not be performed without the use of a GPS receiver; indeed without a GPS receiver it would be impossible to generate pseudoranges or to determi ne the position of the GPS receiver whose position is the precise goal of the claims. We also think that the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims. In order for the additi on of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitti ng a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. We ar e not dealing with a situation in which there is a method that can be performed wit hout a machine. Contrary to appellants’ contention, ther e is no evidence here that t he calculations here can be performed entirely in the human mi nd. Here, as described, the use of a GPS receiver is essential to the operation of the claimed methods.

2009-1262 222009-1262 23 In conclusion, we hold that the claims at issue are pr operly directed to patentable subject matter as they explicit ly require the use of a particular machine (a GPS receiver) and could not be performed without the use of such a receiver.
AFFIRMED COSTS No costs.