# United States **Court of Appeals**  **for the Federal Circuit**

______________________
CORE WIRELESS LICENS ING S.A.R.L., Plaintiff

- Appellant

v.

APPLE INC., Defendant

- Appellee

______________________

2015

- 2037

______________________ Appeal from the United States District Court for the Eastern District of Texas in No. 6:12

- cv

- 00100

- JRG, Judge J. Rodney Gilstrap.

______________________

Decided: April 14, 2017

______________________

D EVAN V. P ADMANABHAN , Winthrop & Weinstin e, P.A.

, Minneapolis, MN, argued for plaintiff

- appellant. Also represented by P AUL J. R OBBENNOLT ; H ENRY C HARLES B UNSOW , B RIAN A. E. S MITH , Bunsow, De Mory, Smith & Allison LLP , San Francisco, CA ; D ENISE M ARIE D E M ORY , C RAIG Y. A LLISON , Redwood City, CA

.

J OSEPH J. M UELLER , Wilmer Cutler Pickering Hale & Dorr LLP , Boston, MA, argued for defendant -appellee. Also represented by C YNTHIA D. V REELAND , R ICHARD W. O'N EILL , M ICHAEL W OLIN

.

______________________CORE WIRELESS LICENS ING v. APPLE INC

. 2

Before O’M ALLEY , B RYSON , and W ALLACH , Circuit Judges.

B RYSON , Circuit Judge.

This appeal arises from a patent infringement a c tion brought in the United States District Court for the Eas tern District of Texas. The plaintiff, Core W ireless Licen sing S.a .r.l

., is the owner of U.S. Patent No. 6,978,143 (“the ’143 patent”). Claim 17 of the patent, the only claim at issue in this appeal, recites a mobile station, such as a mobile telephone, that is connected to a cellular system or network . The claim is directed to means for sending packet data from the mobile station to the ne t work using a selected channel.
Following trial, the jury found that the defendant, Apple Inc., did not infringe any of the asserted claim s

. The district court denied Core Wireless’s motion for judgment as a matter of law, and Core Wireless took this appeal. We affirm.

I
Mobile stations such as cellular telephones can transmit data packets to a cellular network (known as an uplink) in one of two ways —eit her by using a shared “common channel,” which carries transmissions from multiple mobile stations

, or by using a “dedicated cha nnel,” which carries transmissions from a single mobile station without competing transmissions from other mobile stations . Dedi cated channels are valuable because they permit faster and more reliable transmissions than common channels. But dedicated channels are at a pr emium, as there are not enough dedicated channels to carry all cellular transmissions. The industry has ther efore worked to solve the problem of how to allocate dedicated channels (when the need for a dedicated channel is greatest).CORE WIRELESS LICENS ING v. APPLE INC

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One aspect of this problem is whether the network or the mobile station should select the channel for the u plink. The network init ially has no information about the data packet to be sent, such as data packet size, and therefore does not have the necessary information to make a channel selection decision. In the prior art, the mobile station would send the network information about the data packet to be sent so that the network could make the channel selection decision. As noted in the ’143 patent, selection by the network waste s valuable system resources, because it require s the mobile station to send a message to the network regar ding the data packet the mobile station want s to transmit, and then require s the network to make the channel selection decision. See ’143 patent, col. 3, ll. 41

- 49.

The solution provided by the ’143 patent is to have the mobile station , not the network, make the uplink channel selection decision. The way that is done is for the ne twork to provide the mobile station with certain p a ram eters that the mobile station i s directed to apply in determin ing whether to use a dedicated channel or a common channel. See ’143 patent, col. 3, ll. 53

- 56 ; id.

, col. 4, ll. 37

- 58. According to the patent, the described method reduce s “the signaling load associated with the allocation of packet data transfer” and reduce s “the delay associated with the starting of data transfer.” Id. , col. 3, ll. 64

- 67. Because the mobile station makes the channel se lection decision, it does not use up traffic capacity by sending the message about the data packet to the network so that the network may select a channel

. Id. , col. 3, ll. 40

- 49. Although Core Wireless initially asserted a nu m ber of claims from several different patents against Apple, this appeal involves only a single claim

— claim 17 of the ’143 patent. That claim reads as follows:
A mobile station connected with a cellular sy stem, comprising means for sending uplink packetCORE WIRELESS LICENS ING v. APPLE INC

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data to the system using a selected channel, wherein the selected channel is either a common channel (RACH) or dedicated cha n nel (DCH), characterized in that it also co mprises:

means for receiving a threshold value of the channel selection parameter from the

sy s tem, means for storing said threshold value of the channel selection parameter, and
means for comparing said threshold value of the channel selection parameter to a

cu r rent val ue of the channel selection p aram e ter for basis of said channel selection.
A magistrate judge conducted the claim construction proceedings and construed the “means for comparing” limitation of claim 17 to have the function of “comparing said threshold value of the channel selection parameter to a current value of the channel selection parameter for basis of said channel selection.”

The magistrate judge construed the corresponding structure for performing that function to be
[a] control unit 803 [in the mobile station] wherein the control unit 803 is programmed to control the comparison of the threshold value of the channel selection parameter to the current value of the channel selection parameter in accordance with the algorithm shown in Fig. 6, step 6 50, and d escribed in 6:20

- 39; 7:17

- 20; and 7:24

- 28 of the ’143 specifi cation ; and statutory equivalents thereof.
At trial, Apple introduced evidence that Apple’s a ccused mobile stations lack the capa bil ity to select between common and dedicated channels fo r packet data transfer

. Instead, in systems in which Apple’s devices are used, Apple’s evidence showed that the network, not the mobileCORE WIRELESS LICENS ING v. APPLE INC

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station, i s responsible for selecting which channel to use for uplink transmissions. At the conclusion of the trial, the jury found that Apple did not infringe claim 17 of the ’143 patent

. In its post

- trial motion for judgment as a matter of law (“JMOL”) , Core Wireless argued that Apple had misapplied the court’s construction of claim 17 when it interpreted the court’s construction to mean that the “means for comparing” limitation requires the mobile station to be capable of making uplink channel decisions. The district court disagreed, holding that the claim r equires that the mobile s tation “must have the capability to perform ‘channel selection,’ even if that capability was not used during the actual alleged performance of the claimed method.” The court concluded that there was sufficient evidence from which a reasonable jury could f

ind noninfringement based on that claim construction

. II
Core Wireless does not object to the claim constru ction that was given to the jury, which was the same as the claim construction adopted by the magistrate judge. Instead, Core Wireless argues both that the district court misapplied the magistrate judge’s pretrial claim constru ction, and that the claim construction adopted by the district court was erroneous.

A
Core Wireless’s first argument is that Apple took a position at trial that was contrary to the magistrate judge’s claim construction

, and that the district court improperly upheld the jury’s verdict in favor of Apple by in effect altering the magistrate judge’s claim constru ction.
Core Wireless explains its view of the difference b etween the magistrate judge’s pretrial claim construction and Apple’s construction as follows: Under the magi s-CORE WIRELESS LICENS ING v. APPLE INC

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trate judge’s claim construction

, as Core Wireless inte rprets it, an infringing device need only be capable of performing the functions of receiv ing a threshold param eter from the cellular network, storing that threshold parameter in local memory, and then comparing a current value of that parameter to the threshold. Under Apple’s construction, in order to infringe, a mobile station must also be able to make a channel selection decision based on that comparison, rather than leaving the channel sele ction decision to the network. That is, Core Wireless contends that under the magistrate judge’s claim co nstruction the mobile station need do no more t han make a comparison, while Apple contends that the mobile station must have the capability to select a dedicated channel when the relevant threshold conditions are met.
The problem with Core Wireless’s argument is that the premise is incorrect : T he magi strate judge did not clearly reject Apple’s position and adopt Core Wireless’s position. Core Wireless bases its argument on the magi strate judge’s failure to include certain language

, proposed by Apple

, in the description of the corresponding structure f

or performing the “means for comparing” limitation. As Core Wireless points out, the magistrate judge did not include Apple’s suggested language that control unit 803 “provide[s] the comparison result to a channel selection function within the mobile stat ion” and Apple’s reference to step 660 of Figure 6 in the patent. Those exclusions, Core Wireless contends, indicate that the magistrate judge rejected Apple’s position on the construction of that limitation.
We disagree. The magistrate judge did not state at the hearing or include in his order any explanation for omitting Apple’s proposed text from the claim constru ction. Instead, he focused primarily on whether control unit 803 was a general purpose process or within the meaning of WMS Gaming Inc . v. Internationa l Game Tech nology , 184 F.3d 1339 (Fed. Cir. 1999). Significantly,CORE WIRELESS LICENS ING v. APPLE INC

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the magistrate judge included in his construction refe rences to Figure 6, step 650, and to column 7, lines 17

- 20, of the ’143 patent. As discussed below in further detail, both of those references indicate that channel selection can be performed by the mobile station, consistent with the district court’s discussion of the claim construction issue in its JMOL order.

Core Wireless did not raise the issue of Apple’s alle gedly improper interpretation of the magistrate judge’s claim construction during trial, when it had the oppo rtunity to do so. Core Wireless contends that Apple i mproperly offered evidence and argument to the jury that C ore Wireless was required to prove that Apple’s accused devices had the capa bil ity to make channel selection decisions. In fact, Core Wireless states that Apple’s noninfringement position at trial was based exclusively on that theory. But Core Wireless did not object to Apple’s evidence on that ground, nor did it object to Apple’s argument to the jury as contrary to the proper claim construction. Moreover, although Core Wireless contends that the magistrate judge’s pretrial claim construction did not req uire a showing that the mobile station was capable of making channel selection decisions, Core Wireless did not seek a clarification of the claim construction on that ground either during the trial or before the jury was instructed.

Based on Core Wireless’s failure to seek clarification of the pretrial claim construction, Apple argues that Core Wireless has waived its claim construction argument. Citing Moba, B.V. v. Diamond Automat i on, Inc. , 325 F.3d 1306, 1314 (Fed. Cir. 2003), Cor e Wireless responds that it made its position known by moving for judgment of infringement as a matter of law under Fed. R. Civ. P. 50(a) at the close of the evidence, and thereby preserved its claim construction argument for review.CORE WIRELESS LICENS ING v. APPLE INC

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We find it unnecessary to decide whether C ore Wir eless waived its claim construction argument by failing to seek clarification of the pretrial claim construction at trial. That is because we do not agree that the magistrate judge adopted Core Wireless’s position on claim const ruction and because

, for the reasons discussed below, Core Wireless’s claim construction argument is erroneous on the merits.

B

Core Wireless argues that the district court erred in its JMOL order, where it explicitly construed the “means for comparing” limitation of claim 17 of the ’143 patent to require that the mobile station have the capa bil ity to make channel selections. We conclude that the district court was correct, as it stated in its JMOL order, that claim 17 of the ’143 patent require s a showing that the accused mobile stations were capable of making channel

se le ction decisions.

The invention disclosed in t he ’143 patent is a system in which the mobile station gathers and analyzes appr opriate information and makes a channel selection dec ision. The basic architecture of the system depicted in the ’143 specification is depicted in F igure 6 of the patent

. The patent characterizes Figure 6, which is set forth below, as “a flow chart of a method according to the inve ntion for transferring packet data in the uplink direction.” ’143 patent, col. 5, ll. 58

- 59.CORE WIRELESS LICENS ING v. APPLE INC

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Figure 6 shows that “threshold values are determined for the channel selection parameters and stored in the mobile station’s memory,” as depicted at step 620. ’143 patent, col. 5, ll. 60

- 62. At step 630, the base station sends to the mobile station “one or more of sai d channel selection parameters ,” i.e., the factors on which the cha nnel selection is based. Id. , col. 6, ll. 1

- 9. Once the mobile station receives a request to send a data packet, as d e-CORE WIRELESS LICENS ING v. APPLE INC

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picted at step 640, “the (RLC /)MAC layer [of the mobile station] either makes an autonomous decision on the use of a common channel vs. dedicated channel on the basis of parameters received from the system or requests the RRC layer [of the mobile station] to determine the appropriate channel type.” Id. , col. 6, ll. 14

- 19. The description of Figure 6 set forth in the specification thus makes clear that the channel selection process occurs in the mobile station and is not made by the network

, although if the mobile station selects a dedicated channel, the mobile station may need to then request that the network all ocate the dedicated channel (step 680) before the mobile station can actually transmit on that channel

. See id. , col. 3, ll. 10

- 30. Core Wireless’s position is that Figure 6, as well as other portions of the specification that describe the pr ocess by which the mobile station makes the channel selection decision, all simply describe preferred embod iments of the invention. According to Core Wireless, claim 17 recites a different process in which the mobile station is not required to perform the channel selection. The problem with Core Wireless’s theory is that the entire point of the invention is to enable the mobile station to make the channel selection decision in order to minimize traffic between the mobile station and the network.

C laim 17 is a means

- plus

- function claim and thus is controlled by 35 U.S.C. § 112, ¶6 ( now codified as section 112(f) under the America Invents Act, which does not apply to this case) . As such, claim 17 covers any device that performs the function recited in the claim with structure described in the specification or its equivalents. Pennwalt Corp

. v. Durand

- Wayland, Inc. , 833 F.2d 931, 934 (Fed. Cir. 1987) (en banc).

The function recited in claim 17 is “comparing said threshold value of the channel selection parameter to a current value of the channel selection parameter for basisCORE WIRELESS LICENS ING v. APPLE INC

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of said channel selection.” ’143 patent, col. 9, ll. 14

- 16. The structure that performs that function is the structure des cribed in Figure 6 and the accompanying text, as well as elsewhere in the specification

. As stated in the magistrate judge’s claim construction, adopted by the district court

, th e recited structure i ncludes the algorithm shown in Figure 6 and described i n the specification, and in particular in column 6, lines 20

- 39, and column 7, lines 17

- 20 and 24

- 28. See WMS Ga ming, Inc. v. Int’l Game Tech. , 184 F.3d 1339 , 1349 (Fed. Cir. 1999) (“In a means

- plus

- function claim in which the disclosed structure is a com puter, or microprocessor,

p rogrammed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”) ; see also Ergo Licensing, LLC v. CareFusion 303, Inc ., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (“Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional clai ming.”). Th e recited portions of the specification describe an algorithm in which th e threshold value for the channel selection parameter is provided to the mobile station

, the mobile station compares that threshold value with the current value of the channel selection paramet er, and the mobile station then uses the result of that compari son as the basis for the channel selection decision.
In addition to the portion s of the specification that describ e the algorithm depicted in Figure 6, each descri ption of the structure that performs the recited function depicts the mobile station as ma king the channel selection decision. Beginning with the A bstract, the patent describe s a structure in which “[t]he decision about the channel used for the transfer of packet data is made based on a channel selection parameter and values of the parameters needed in the decision

- making are sent to the mobile station.”CORE WIRELESS LICENS ING v. APPLE INC

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The summary of the invention describ e s th e “method according to the invention for the uplink transfer of packet data from a mobile station to the system in such a manner that . . . [the] cha nnel selection parameter is sent fr om the system to the mobile station, and said selection is made on the basis of said value of the channel selection parameter.” ’143 patent, col. 4, ll. 38

- 51.

In one embodiment , a threshold value of the channel selection parameter is stored at the mobile station . The current value of the channel selection parameter is sent to the mobile station . And that current value “is compared to said threshold value of the channel selection param eter, and said selection is made on the basis of said co mparison.” Id. , col. 4, ll. 52

- 58.

In a nother embodiment, a value corresponding to the channel selection parameter is calculated at the mobile station on the basis of the parameters of the data packet to be transferred . The last current value of the channel selection parameter that was sent to the mobile station is then compared to the calculated value of the channel selection parameter . And a channel selection is made on the basis of that co mparison. Id. , col. 4, ll. 60

- 67. Significantly, in each of the embodiments the compa rison between the threshold value of the channel selection parameter and the current value is made at the mobile station, and the clear implication is that the channel selection decision, which is based on that comparison, is also made at the mobile station. Meanwhile , nowhere does the patent describe an embodiment in which the network expressly, or by clear implication, makes the channel selection decision.
Other portions of the specification support that inte rpretation. The specification describes the “cellular system according to the invention” as having “means for sending the value of said channel selection parameter from the system to the mobile station in order to make said sele c-CORE WIRELESS LICENS ING v. APPLE INC

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tion on the basis of the value of the channel selection parameter.” ’143 patent, col. 5, ll. 1- 15. And the specification describe s the “mobile station according to the invention” as having “means for receiving a channel selection parameter value from the system, and means for making said selection dependent on said channel selection parameter value.” Id. , col. 5, ll. 16

- 25. Once again, the description of the structure that perform s the claimed function contemplate s a mobile s tation that has the means to make the channel selection decision

. Column 7 of the patent describes Figure 8, which is a schematic drawing of the mobile station of the invention. The specification explains that the control unit 803 in the mobile station “ controls the reception blocks in such a manner that the parameters relating to the selection of the uplink channel are received from a common channel in accorda nce with the invention. Channel selection is advantageously performed in the control unit 803 which also controls the transmission blocks such that the packet data are transmitted on the selected channel.” ’143 patent, col. 7, ll. 14

- 20. The specificati on then states that the base station “ sends the parameters associated with the selection of the packet data transfer channel to the mobile station in accordance with the invention and receives the packet data sent by the mobile station through a channel se lected by the mobile station .” Id. , col. 7, ll. 37

- 42 (emphasis added)

. Although that passage from the specification would seem to be dispositive, Core Wireless argues that the description of the mobile station selecting the channel to be used for the uplink transmission is only a preferred embodiment, and that other aspects o f the ’143 patent support Core Wireless’s position that claim 17 does not require that the mobile station be capable of making the channel selection decision

.CORE WIRELESS LICENS ING v. APPLE INC

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In particular, Core Wireless points to the language at column 7, lines 17

- 20, which states: “Ch annel selection is advantageously performed in the control unit 803 which also controls the transmission blocks such that the packet data are transmitted on the selected channel.” The use of the term “advantageously,” according to Core Wireless

, shows tha t the patent may prefer embodiments in which the mobile s tation ma kes the channel selections, but that the patent is not limited to such embodiments.
The more natural reading of the passage in question is that the function of channel selection is “advanta geou sly” performed in the control unit 803 of the mobile station, as opposed to in some other component of the mobile station that is controlled by control unit 803

. The prev ious sentence states that “control unit 803 controls the reception blocks [in the mobile station] in such a manner that the parameters relating to selection of the uplink channel are received from a common channel in accor dance with the invention.” ’143 patent, col. 7, ll. 14

- 17. The rest of the sentence in question refers to the con trol unit 803 as also controlling the transmission blocks so as to enable the transmission of the data packets on the selected channel. Id. , col. 7, ll. 18

- 20. That suggests that the term “advantageously” alludes to the advantage of having one component with all the necessary info rmation— the control unit 803, which controls both the reception blocks (incoming information) and transmission blocks (outgoing information)

— mak e the channel sele ction decisions. The language of that passage thus su pport s the in ference that the mobile station must be capable of channel selection , particularly in light of the unambiguous statement a few lines f a rther down in the same column that the “packet data [is] sent by the mobile station through a channel selected by the mobile station.” Id. , col. 7, ll. 40

- 42. Core Wireless next points to claim 18 of the ’143 patent, which depends from claim 17 but adds “means forCORE WIRELESS LICENS ING v. APPLE INC

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making said channel selection on the basis of the result of said comparison.” According to Core Wireless, the added language in the dependent claim indicates that claim 17 does not speak to the structure that makes the channel selection decisio n. The language of the dependent claim does not support Core Wireless’s claim construction argument

. The d ependent claim does not focus on the performance of the channel selection process in the mobile station, but i nstead focuses on the fact that the ch annel selection pr ocess is based on the result of the comparison between the threshold value of a channel selection parameter and the current value of the channel selection parameter. The comparison in independent claim 17 is performed “for basis of said channel selection” but is not necessarily the actual basis of the subsequent channel selection, which may be based on other parameters. In contrast, the comparison in dependent claim 18 must in fact be the basis of the subsequent channel selection. Thus, under claim 17

, the channel selection process is not strictly tied to the result of the comparison of those values, while under claim 18

, it is. For that reason, nothing in claim 18 suggests that the only limitation added in that claim

— and thus absent fr om claim 17

— is the requirement that the mobile station be capable of channel selection.

Core Wireless makes much of the fact that claim 17 has four “means” clauses, none of which expressly refer s to the means for selecting the channel to be used for parti cular uplink transmissions. But that argument overlooks the full text of the “means for comparing” limitation. That limitation provides “means for compa ring said threshold value of the channel selection param eter to a current value of the channel selection parameter for basis of said channel selection .” ’143 patent, col. 9, ll. 14

- 16 (emphasis added). Given that the function of that limitation is to compare the values for the purpose of channel selection, the corresponding structure must beCORE WIRELESS LICENS ING v. APPLE INC

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the structur e that compares those values for the subs equent channel selection. And the only structure in the specification that compares values for the purpose of channel selection is the structure that performs both the comparison and the selection in the mobile sta tion.
In addition to the textual support in the patent, both the prosecution history and the extrinsic evidence confirm that the district court was correct in construing claim 17 to require that the mobile station have uplink channel selection capabilities

. In a brief filed with the Board of Patent Appeals and Interferences in connection with an appeal from an examiner’s rejection, the applicant d escribed “the present invention” as comprising a system in which “a channel selection threshold value is sent from the system to the mobile station,” and “[a]t the mobile station the received threshold value is compared with a current value (650), and then a channel selection decision is made (660, page 10, lines 3

- 6 [of the specification] ). ” Appellants’ Br. Serial No. 09/507,804 (July 24, 2003), at 3. That the brief describes the channel selection as being made by the mobile station is confirmed by the citation to the specification, which refers to the statement ( found at column 6, lines 14

- 19 of the issued ’143 patent) that “ the ( RLC/)MAC layer [of the mobile station] either makes an autonomous decision on the use of the a common channel vs. dedicated channel on t he basis of parameters received fr om the system or requests the RRC layer [of the mobile station] to determine the appropriate channel type.” That reference makes clear that during the prosecution the applicant ’s position was that channel selection would be performed in the mobile station.
With regard to extrinsic evidence, the applicant was even more explicit on this point in the invention discl osure for the ’143 patent. He stated that the “(RLC/)MAC layer [in the mobile station], upon reception of a re quest to send a data packet, makes a decision between common and dedicated channel by using the information receivedCORE WIRELESS LICENS ING v. APPLE INC

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and information of the data pack et to be sent.” The applicant added that the network supplies information “that MS [mobile station] uses to make decisions whether to send uplink packet data on common channels or on dedicated physical channel,” and that the decision to use either common channel or dedicated channel . . . will be done in (RLC/)MAC layer [in the mobile station] .” Those statements unambiguously describe a system in which the mobile station is capable of making channel selection decisions , contrary to the way the evidence showed the accused Apple devices operate

. Similarly, in a contemporaneous presentation made to the European Telecommunications Standards Institute, the inventor described his proposal as one in which the mobile station “itself should be able to make decision whether to send data packets on [th e common channel] or whether to reques t a [dedicated channel]. Otherwise there will be unnecessary signalling [sic] . . . before [ the mobile station] can send a data packet on the [common] channel.” Although Core Wireless argues that th e pr oposal represents only a “subset” of the invention d isclosed in the ’143 patent, the proposal

— like the patent

— is clear that the invention requires the mobile station to make the selection decision in order to solv e the prior art problem. The language of that proposal provides further support for the distri ct court’s ruling in the JMOL opinion that claim 17 of the ’143 patent requires that the mobile station must have the capability to make channel selection dec ision s.
C
Core Wireless also argues in the alternative that Apple’s devices infringe even if claim 17 requires the mobile station to be capable of channel selection. Core Wireless points to the Event 4a measurement report , a traffic volume report that Apple’s devices generate and send to the network. Apple, however, introduced testimo-CORE WIRELESS LICENS ING v. APPLE INC

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ny from its expert and an engineer that the network may choose not to use the report in its channel selection decision or even use the report at all , and that the mobile station has no further input beyond merely sending the report

. Thus, sending t he report i s not a channel sele ction decision by the mobile station be cause it i s up to the network to decide what to do with the transmitted info rmation , if anything. We agree with the district court that a reasonable jury could find Apple’s devices noni nfringing based on th at evidence.
We conclude that the district court correctly denied Core Wireless’s motion for judgment as a matter of law and properly upheld the jury’s verdict of noninfringement

. AFFIRMED