## United States Court of Appeals for the Federal Circuit

04-1249, -1295

NORTHPOINT TECHNOLOGY, LTD., Plaintiff-Appellant,

v.

MDS AMERICA, INC. and MDS INTERNATIONAL, S.A.R.L., Defendants-Cross Appellants.

Michael K. Kellogg , Kellogg, Huber, Hansen, Todd & Evans, PLLC, of Washington, DC, argued for plaintiff-appel lant. With him on the brief were Richard H. Stern , J.Christopher Rozendaal , and Eugene M. Paige

. James H. Laughlin, Jr. , Swidler Berlin Shereff Fri edman, LLP, of Washington, DC, argued for defendants-cr oss appellants. With him on the brief were Edward A. Pennington , Robert C. Bertin , and Thomas S. Valente

. Appealed from: United States District C ourt for the Southern District of Florida Judge James I. Cohn

## United States Court of Appeals for the Federal Circuit

04-1249,-1295 NORTHPOINT TECHNOLOGY, LTD., Plaintiff-Appellant,

v. MDS AMERICA, INC. and MDS INTERNATIONAL, S.A.R.L., Defendants-Cross Appellants.

___________________________ DECIDED: June 28, 2005

___________________________ Before SCHALL, BRYSON, and DYK, Circuit Judges

. Opinion for the court filed by Circuit Judge BRYSON. Concurring in part and dissenting in part opinion filed by Circuit Judge DYK. BRYSON, Circuit Judge

. Northpoint Technology, Ltd., is the a ssignee of U.S. Patent No. 5,761,605 (“the ’605 patent”), entitled “Apparat us and Method for Reusing Satellite Broadcast Spectrum for Terrestrially Broadcast Signals,” and U.S. Patent No. 6,169,878 (“the ’878 patent”), entitled “Apparatus and Method for Transmi tting Terrestrial Signals on a Common Frequency with Satellite Transmissions.” No rthpoint asserted t he ’605 and ’878 patents against MDS America, Inc. (“MDSA”) and MDS International, S.A.R.L. (“MDSI”) in an action filed in the United Stat es District Court for the Southern District of Florida. Following a trial, a jury determined that MDSA had infringed claim 8 of the ’605 patent and claims 1 and 7 of the ’878 patent. The ju ry determined, however, that those three04-1249,-1295 2 claims were invalid. The district c ourt subsequently denied Northpoint’s motion for judgment as a matter of law (“JMOL”) that t he three asserted claims were not invalid, and the court denied Northpoint’s motion for a new trial. The district court entered judgment on the verdict. No rthpoint appeals from the denial of its motion for JMOL regarding validity and the denial of a new tria l. MDSA cross-appeals from the aspect of the judgment finding that it in fringed claim 8 of the ’605 pat ent and claims 1 and 7 of the ’878 patent. MDSA and MDSI jointly cross-appeal, contending that t he district court should have extended the judgment of invalidity to all the remaining claims of the two patents in suit. We affirm the judgment in all respects.
I In the early 1980s, the Federal Co mmunications Commission (“FCC”) began allowing direct broadcast satellite service (“DBS”) from satellites in geosynchronous orbit, using the frequency range from 12.2 to 12.7 Gigahertz, to provide audio and video programming to users. The FCC recognized that multiple satellites could transmit on the same frequencies if the satellites were spaced apart by at least nine degrees in longitude and if users employed highly directional antennas to receive the DBS signals. There are now multiple geosynchronous sa tellites transmitting service on the same frequencies to most geographical locations in the United States at any given time. Because of the directionality of the receiv ing antennas and the longitu dinal separation of the satellites, a user can receive a signal fr om one satellite, and avoid interference from signals transmitted by other sa tellites, by pointing a direct ional antenna at the satellite that is transmitting the desired signal.Most DBS satellites provide coverage to the entire continental United States. The satellites do not provide local television programming to most users, because each satellite can transmit only a limited number of channels, and the sa tellites therefore typically transmit only those channels that cont ain programming of national interest. As a result, most DBS users cannot receive lo cal channels that include matters of local interest, such as local news, weather, and advertising. Northpoint’s invention claims to solve th is problem by terrestrially broadcasting local programming on the same frequencies t hat are used by the DBS system in a manner that permits both signals to be received at the user location at the same time without interfering with each other. The conc ept underlying the inv ention is that the DBS satellites are in geosynchronous orbit above the equator and ther efore transmit in a northerly direction to the No rth American continent. Accord ingly, a directional antenna employed at a user location in the United States must be pointed south towards the satellite in order to receive the signal. Northpoint’s preferred embodiment of the invention transmits terrestrial signals from north of the user’s location to a second directional antenna at the user’s location that is pointed northward towards the terrestrial transmitter, as depicted below.

04-1249,-1295 304-1249,-1295 4 According to Northpoint, the terrestrial si gnal will not interfere with the DBS signal or vice versa because the terrestrial signal will be transmitted in a specific azimuth spaced away from the DBS satellite-to-user azim uth. Northpoint claims that in such a case, the signal received by each antenna at the user location will be outside the “directional reception range” of the other antenna. Claim 8 of the ’605 patent provides as follows: A method for simultaneously providi ng local originating signals on a common frequency with direct broadcast satellite signals transmitted from a satellite, where the satellite is a first satellite location in geosynchronous orbit about the earth, the method comprising the steps of: (a) at a user location, receiving direct broadcast satellite signals at a first frequency with a first antenna adapted to receive signals at the first frequency only within a first directional reception range as measured from a centerline of the first antenna; (b) transmitting terrestrial signal s at the first frequency and in a terrestrial azimuth range from a terre strial transmitter, the terrestrial azimuth range being outside of the direct ional reception range of the first antenna positioned to receive direct broadcast satellite signals from the satellite; and (c) at the user location, remote from the terrestrial transmitter, receiving the terrestrial si gnals with a second antenna adapted for receiving signals at the first frequen cy only within a second directional reception range as measured from a centerline of the second antenna, the second antenna being aligned so that t he direct broadcast satellite signals transmitted by the satellite are not transmitted within the directional reception range of the second antenna. Claim 1 of the ’878 patent recites the apparatus for transmitting the satellite and terrestrial signals, as follows: An apparatus for simultaneously trans mitting terrestrial signals on a common frequency with satellite signals tr ansmitted from a satellite, the satellite transmitting satellite signals at a first frequency to a user location for reception only within a satellite di rectional reception range about the user location, the apparatus comprising: (a) a directional terrestrial trans mitter for transmitti ng terrestrial signals at the first frequency in a lim ited azimuth range around the location of the terrestrial transmitter, the te rrestrial transmitter being located with respect to the user location such that the terrestrial trans mitter transmits to04-1249,-1295 5 the user location along a route which is outside of the satellite directional reception range. Claim 7 of the ’878 is the corresponding method claim to claim 1: A method for simultaneously providi ng terrestrial signals on a common frequency with satellite signals transmitt ed from a satellite, where the satellite is transmitting at a first frequency along a satellite transmission axis extending from the satellite to a te rrestrial user location, the method comprising the step of: (a) transmitting terrestrial signals at a first frequency in a limited azimuth range from a terrestrial trans mitter, the terrest rial transmitter being located with respect to the user loca tion so as to transmit to the user location along a transmission route which is outside of a satellite directional reception range about the user location, wherein the satellite directional reception range comprises a limited directional range substantially centered on t he satellite transmission axis. In 1999 Northpoint and two other companies applied to the FCC for permission to provide terrestrial Multichannel Video Distr ibution and Data Service (“MVDDS”) in the DBS frequency range of 12.2 to 12.7 GHz. C ongress authorized the F CC to select an independent engineering firm to determine whether terrestrial and satellite use of the same bandwidth was feasible without causing interference. The FCC hired the Mitre Corporation, a not-for-profit engineering company that studies engineering issues for the government, to make that determinati on. Mitre’s analysis concluded that “MVDDS sharing for the 12.2–12.7 GHz band currently reserved for DBS poses a significant threat to DBS operation in many realistic oper ational situations.” However, Mitre also concluded that a “wide variet y of mitigation techniques . . . if properly applied under appropriate circumstances” could possibly reduc e or eliminate inte rference, but that bandsharing appeared to be feasible “if and only if suitable mitigatory measures” were used.04-1249,-1295 6 In 2002 the FCC adopted rules based on Mitr e’s analysis to allow terrestrial MVDDS in the DBS frequency range of 12.2 to 12.7 Gigahertz. MDSA applied to the FCC for an experimental license to test and prove its MVDDS system. The FCC granted the license, and MDSA arranged for a th ird party to perform tests in Florida using equipment furnished by MDSI. Northpoint became aware of t he test in Florida and warned MDSA that performing the test w ould infringe its patents. After the conclusion of the Florida tests, Northpoint brought this action, asserting that MDSA and MDSI had infringed Northpoint’s pat ents. In the Joint Pretrial Stipulation, Northpoint limited the asserted claims to claim 8 of t he ’605 patent and claims 1 and 7 of the ’878 patent. After Northpoint presented its in fringement case, the defendants moved for JMOL of noninfringement of the unasserted cl aims in the ’605 and ’878 patents. The district court denied that moti on. After the defendants finished presenting their case, the jury found that MDSA did, and MDSI did not, infringe the three asserted claims. The jury also found, however, that each of those claims was invalid as anticipated, obvious, not enabled, and indefinite. Follo wing the denial of post-trial JMOL motions, the district court entered final judgment, from which the parties filed the inst ant appeal and crossappeal.
II We agree with the district court that s ubstantial evidence supports the jury’s verdict that the asserted claims were invalid based on anticipation. We also agree that substantial evidence supports the jury’s verd ict on enablement and that the district court therefore correctly ent ered judgment that the claims were invalid for lack of enablement. Because we uphold the judgment as to invalid ity on those grounds, it is not necessary04-1249,-1295 7 for us to reach the issues of obviousness and indefiniteness. We also do not reach the cross-appeal with respect to claim constructi on. We agree that the district court correctly denied Northpoint’s motion for a new tr ial, and we also agree that the district court correctly denied the defendants’ motion for JMOL of invalidity with respect to all the unasserted claims of the ’605 and ’878 patents.
A The defendants assert that four prior art references introduced at trial anticipate each asserted claim of the ’605 and ’878 patents. The evidence showed that each of those references teaches the importance of proper poi nting of antennas to avoid interference between satellite and terrestrial systems broadcasting on the same frequency. The strongest of t he four references is a paper entitled “Sharing the UHF Between Space and Terrestrial Services,” wr itten by John Hult and published in 1970, more than 25 years before the priority dat e of the ’605 and ’878 patents. Northpoint argued that the 1970 Hult reference did not ant icipate the asserted cl aims of the ’605 and ’878 patents because it failed to disclose the “directional reception range” limitation in all three claims. The district court construed the term “direc tional reception range” to refer to “[a] three-dimensional space about the center line of a receiving antenna within which a usable signal can be received, a usable signal being a signal from which the information carried by it can be extracted.” Thus, for a transmitted signal to be received inside the directional reception range of an antenna, as the court construed that term, the receiving antenna must be able to extract t he information carried by the signal.04-1249,-1295 8 Northpoint did not challenge the district court’s construction of the term “directional reception range” at trial, and we adopt the di strict court’s construction of that term. Northpoint argues that the Hult referenc e does not anticipate the asserted claims because nothing in Hult require s that the satellite receiving antenna and the terrestrial receiving antenna physically point in different directions. For that reason, Northpoint contends, Hult discloses a system in which the satellite and terrest rial signals are not transmitted outside of the “directional recept ion range” of the terrestrial and satellite receiving antennas. Northpoint’s argument is based on a misinterpretati on of the trial court’s construction of the term “directional reception range.” Northpoint interprets that term to be limited to an area at which a receiving antenna is physically aimed. In fact, however, the district court did not c onstrue the term “directional reception range” so narrowly, nor did the evidence support such a narrow construc tion. Rather, the court’s construction defined the term “directional reception range” with reference to the three-dimensional space in which the antenna could receive a usable signal, and not solely with reference to the physical positioning of the antenna. Although the court’s construction referred to the “centerline” of the receiving antenna, neither the court’s c onstruction nor the evidence at trial suggested that the “centerline” of the antenna was a physical feat ure of the antenna divo rced from the area from which the antenna could receive a usable signal. The common s pecification of the ’605 and ’878 patents describes the “centerline” in terms of the antenna’s maximum directional reception range, see ’605 patent, col. 4, ll. 24- 30, and Northpoint’s expert testified that the antenna’s cent erline is the “center of t he beam pointing towards the04-1249,-1295 9 satellite.” Moreover, he explai ned that the centerli ne of the beam is not necessarily the same as the physical, or “geometric center” of the receiving device, such as a parabolic dish antenna. Northpoint’s argument, in essence, is that the adaptive a rray antennas disclosed in Hult are not directional and that they “operate in fundam entally different ways” from the antennas of the pat ented invention because they reject and ignore the unwanted satellite signal, while the claimed invention depends on preventi ng overlap of the directional reception range of the terrestri al and satellite receivers by pointing the antennas in opposite directions. However, nothi ng in the asserted clai ms requires that the receiving antennas be physically point ed at the sources of the satellite and terrestrial signals. Claim 8 of the ’605 patent merely requires that the two antennas be “adapted” to receive signals within a first and second directional reception range, and that the first be “positioned” to receive DBS signals from the satellite, while the second is “aligned” so that the D BS signals are not within that antenna’s directional reception range. The apparatus and method claims of the ’878 patent merely require a directional terrestrial transmitter to transmit along a rout e that is outside the directional reception range of the satellite transmissions. The defendants’ expert, Philip Rubin, expl ained to the jury that an antenna’s directionality is based on many factors, including the shape of the reflective dish, in the case of dish-type antennas. When asked, “[n] ow, the directionality comes from the dish itself, doesn’t it,” Mr. Rubin answered, “[f]rom the shape, from the s hape of the dish.” He stated that while he used dish-type antennas to explain how antennas work, because most people are familiar with dish antennas, there are many other types of04-1249,-1295 10 directional antennas in use. He then expl ained that antennas have varying levels of gain in different directions and that signals a rriving from directions with higher levels of gain are detected, while signals arriving from outside those directions are not. He also explained that although an antenna may not be physically pointed at an angle to be aligned with a satellite, it is within the directional reception range of the satellite transmission if the direction of greatest gain is aligned wit h the satellite transmission angle. Finally, he explained that the adaptiv e array antenna used in Hult was “as much of a direction[al] antenna as any antenna I’ve ever known,” and that “you could create devices which change the beam without moving [the antenna].” Northpoint’s expert, Dr. Edward Miller, agreed that an adaptive array antenna is directional. He stated that “through a complex process such as the computer control of the amplitude and phase, such an adaptive a rray can be made to have a gain in a limited range of directions.” He further elaborated on how the rec eption range in an adaptive array antenna was created by pointi ng the antenna in the desired direction while electronically creating nulls in the dire ctions of unwanted signals. He explained that nonadaptive antennas have fix ed directions of maximum and minimum gain based on their physical characteristics. Far from teaching away from the cl aims of the ’605 and ’878 patents, as Northpoint argues, the Hult reference describes an antenna in which the directional reception range is generated by cr eating areas of high gain in ce rtain directions from the antenna and areas of little or no gain in other direct ions. The terrestrial signal in Hult is outside the directional recepti on range of the satellite receiver because there is a null in the gain of the satellite receiv ing antenna in the direction of the terrestrial transmitter,04-1249,-1295 11 which prevents the satellite antenna and receiv er from receiving a signal from the terrestrial transmitter from which usable in formation can be extracted. When asked if steering nulls in the directi on of an interfering signal meant that the receiving antenna was being configured so that it would not rece ive those signals, Dr. Miller answered that it did. The electronically created null in an adapt ive array antenna acts exactly like a null in a dish-type antenna that is the product of the antenna’s shape. In both cases, an interfering signal may reach the antenna from a particular direction, but the antenna has no gain in that direction and hence does not receive a usable signal from which information can be extracted (or interference created). As both experts explained, the signal reaches the antenna, but the gain in the direction of the signal is so low that the signal cannot be received and processed. For that reason, the Hult reference and the expert testimony regarding it made clear that the unwanted si gnal in Hult is outside the directional reception range of the antenna as that term is used in the ’605 and ’878 patents. Accordingly, there was substantial evidence from which a jury could find that the Hult reference taught the separate “directional reception ranges” recited by Northpoint’s patents and therefore ant icipated the asserted claims. The dissent contends that “there can be no serious cont ention that the adaptive array antennas of Hult do not limit the ‘directional reception range’ using physical pointing.” As Mr. Rubin’s testimony makes clear, however, Hult discloses the avoidance of interference not only by steering nulls using adaptive array techniques, but also by directional pointing of the ant ennas. Mr. Rubin explained that Hult discloses that if a satellite “is more than 15 degr ees above the horizon, all t he interfered-with receivers04-1249,-1295 12 could easily be remedied by small changes in antenna pointing.” In the same passage, Hult refers to “the directional discriminat ion obtained” with the terrestrial television receiving antennas, resulting in most of those antennas not having unacceptable “antenna gains in the direction of the satellit e.” Thus, while Hult concentrates on the benefits to be obtained from the use of adaptive arrays, the ev idence at trial made clear that it also discloses the use of physical pointing of directional antennas to reduce interference in the context of a dual satellite-terrestrial transmitting system.
B The defendants’ theory of lack of enabl ement was that the patents do not disclose “a way to provide an antenna that cannot receive signals from unwanted directions” in order to meet the “directional reception range” limitation of each claim. Mr. Rubin testified that the DBS satellite receiving antenna could receive signals in directions away from wher e the antenna was pointed. The need to avoid interference from those signals, he testifi ed, was the reason that the po wer level of the terrestrial transmission and the mitigation techniques de scribed in the Mitre report were so important. As he described the problem, if t he signal power was too high, the terrestrial signal could be received by the satellit e receiving antenna even though the satellite receiving antenna was pointed away from the terre strial transmitter. Northpoint’s expert agreed that DBS antennas oper ate in that manner. Dr. Bahman Badipour, who conducted the a llegedly infringing tests in Florida, testified that it was import ant to maintain the correct flux density (electromagnetic power) measurements at the le vel identified by the Mitre report. Dr. Badipour also testified that when he conduc ted the tests he offset the carrier frequency of the04-1249,-1295 13 terrestrial signal by more than six Megahertz fr om the DBS carrier fr equency in order to further reduce interference between the two si gnals. The defendants di d not assert that antennas with a directional reception range do not exist; rather, they asserted that Northpoint did not disclose enough in the patent to enable one of ordi nary skill in the art to implement an antenna that would have a direct ional reception range as recited in the claims. Northpoint argues that the record contains no evidence that undue experimentation would be necessary to practi ce the invention based on the disclosure in the patents. We agree with t he district court, however, th at the evidence at trial, including evidence of undue experimentation, was sufficient to sustain the jury’s verdict on enablement. One of the inventors of the ’605 and ’878 pat ents, Carmen Tawil, admitted that numerous paramet er values and interference mitigation techniques were used in the first test of Nort hpoint’s technology. Northpoint s ubmitted a report of its first test to the FCC with an attached appendix lis ting the techniques it used to avoid interference. The appendix st ated that Northpoint mitigat ed interference by using several techniques including directional tr ansmission, transmit antenna discrimination in the vertical plane, beam tilting, and maximum height antenna placement. Ms. Tawil admitted that none of those techniques were described or disclosed in the two patents, but she insisted that one of skill in the art would know to apply them. Ms. Tawil testified that No rthpoint’s report to the FCC included specific values used for the following parameter s: polarization, antenna gain, transmit power, effective isotropic radiated power, the transmit height above average terrain, the transmit height above ground level, transmitter tilt above horiz ontal, required signal strength at edge of04-1249,-1295 14 cell, cell size, receiving antenna gain, and t hermal noise floor. Although none of those parameters were discussed in the ’605 and ’878 patents, Ms. Tawil stated that a person of skill in the art would have known all of those values without undue experimentation when implementing the Northpoi nt technology. Ms. Tawil’s testimony on that point, however, was contradicted by Mr. Rubin, who testified that the claimed system would work only if the terrestrial signal was transmitted at a particular power level that would depend on experimentation based on all of those parameters. Ms. Tawil’s testimony on enablement is also contradicted by the conclusions from t he Mitre report, which detailed a very comprehensive experiment to test Northpoint’s technology. One of the conclusions from the Mitre r eport was that there were three categories of techniques that could be used to reduce interferenc e, one being the select ion of operational parameters for: (1) lowering transmitter pow er; (2) using a frequency offset between the terrestrial and DBS carriers; (3) increasing the terrestrial transmitting antenna height; (4) adjusting the elevation tilt of the terrest rial transmitting antenna; and (5) pointing the terrestrial transmitting antennas away from t he satellites. Ms. Tawil testified that she provided Mitre with the test ing parameters as well as the mitigation techniques Northpoint used in its test. Nonetheless, even using those parameters and techniques, Mitre still found that the terre strial signal interfered with the DBS signal, or that the signals were inside the directional reception range of each receiver. Only after Mitre performed additional experimentation and appli ed additional parameters and techniques was it able to deliver the terre strial signal outside the directional reception range of the satellite receiving antenna, as required by the asserted claims.04-1249,-1295 15 Although Northpoint argues t hat the evidence showed t hat one could implement the invention using a standard satellite dish purchased from Radio Shack, Dr. Miller’s testimony does not support that assertion, and the jury heard other evidence indicating that implementing the invention was not so straightforward. Thus, Dr. Badipour testified about the amount of test ing he performed. He explained that he first went to France to test the defendants’ equipment parameters, that he read t he Mitre report and reports from DBS providers, and that he incorporated the results from his initial equipment testing and the interference mitigation techni ques from Mitre’s experimentation into a test plan to submit to the FCC. Once he developed the FCC test plan, he further tested the equipment in Virginia before taking the equipment to Florida. Based on that evidence, the jury could properly conclude that the techniques for avoiding interference were not so plain to a person of skill in t he art so as to obviate the need for any enabling disclosure in the patent. Finally, Northpoint contends that Mr. Rubi n testified that antennas with directional reception range have been available since the 1940’s. What Mr. Rubin actually stated was that directional antennas had been availabl e for many years. The defendants’ point, however, was not that the patents fail ed to enable directional antennas, but that they did not enable one of skill in the art to create the directional reception range necessary to avoid interfering signals. In light of our review of the evidence at trial, we agree with the district court that the jury ’s finding of lack of enablement was supported by substantial evidence. The district cour t therefore correctly ent ered judgment that the asserted claims were invalid for lack of enablement.04-1249,-1295 16 The dissent contends that t he evidence at trial was not sufficient to show that “undue experimentation” would be required to make the patented invention function as it was claimed to do. While determi ning whether the required amount of experimentation is “undue” is an inherently imprecise undertaki ng, the jury was properly instructed as to its task, and it reached a reasonable conclusion. The evidence, including the testimony of ex perts about the natur e of the experimentation conducted by the defendants and others, was sufficient to show that elaborate measures, not described or even adumbrated by the patent, were required to make the claimed invention effective. See Enzo Biochem, Inc. v. Calgene, Inc. , 188 F.3d 1362, 1374-75 (Fed. Cir. 1999) (no enablement when “the teachings set forth in the specifications provide no more than a ‘plan’ or ‘invitation’ fo r those of skill in the art to experiment”). To be sure, no witness testified in haec verba that the experiment ation was “undue.” But we know of no principle that requires that a witness testify as to that legal conclusion, as long as the factual showing is sufficient to justify the jury’s conclusion on the highly factual issue of whether, under all the circumstances, more than routine experimentation was needed to ma ke the invention work. See PPG Indus., Inc. v. Guardian Indus. Corp. , 75 F.3d 1558, 1564 (Fed. Cir. 1966). Because that requirement was amply satisfied in this case, the dist rict court properly denied Northpoint’s motion for judgment as a matter of law on the enablement issue. C Northpoint contends that we should grant a new trial on two theories. First, Northpoint claims that the ev idence of invalidity was so weak that the district court should have granted Northpoint’s motion for a new trial because the verdict was against04-1249,-1295 17 the clear weight of the evidence. Because the right to a new trial is a procedural issue not unique to patent law, the applicable law is the law of the regional circuit to which an appeal would lie in a non-patent case. EMI Group N. Am., Inc. v. Cypress Semiconductor Corp. , 268 F.3d 1342, 1347 (Fed. Cir. 2001). In this case, that court is in the Eleventh Circuit. The test applied in the Eleventh Circuit to an appeal from the denial of a new trial motion is whether the tr ial court abused its discretion in concluding that the verdict was not against the clear weight of the evidence. See Cleveland v. Home Shopping Network, Inc. , 369 F.3d 1189, 1196 (11th Cir. 2004); Lipphardt v. Durango Steakhouse of Brandon, Inc. , 267 F.3d 1183, 1186 (11th Cir. 2001). In light of the evidence on anticipation and enablement discu ssed above, we hold that the district court did not abuse its discretion in concluding that the verdict was not against the clear weight of the evidence. We therefore uphol d the denial of a new trial on that ground. Northpoint next argues that it should be gr anted a new trial because, if alternative theories of liability are asserted together in one jury instructi on, “a new trial is to be granted if any one of the al ternatives is unsupported by substantial evidence.” Cronin v. Wash. Nat’l Ins. Co. , 980 F.2d 663, 669 n.7 (11th Cir. 1993); see also Carroll Kenworth Truck Sales, Inc. v. Kenworth Truck Co. , 781 F.2d 1520, 1529 (11th Cir. 1986); King v. Ford Motor Co. , 597 F.2d 436, 439 (5th Cir. 1979). Northpoint argues that it is entitled to a new trial on that theory because the jury decided the issues of invalidity on “several alternative legal theories, at least one of which in each case is defective.” In particular, Northpoint notes that the defendants argued anticipation bas ed on five different prior art references; Northpoint suggests that each of those references represents a separate04-1249,-1295 18 legal theory of anticipation, and that a failure of proof with regard to any one of the five requires the grant of a new trial. We disagree with Northpoint’s characterizati on of the anticipation issue at trial. The cases on which it relies involve separate legal theories of recovery, where at least one of the theories is legally flaw ed. By contrast, the five prior art references offered to prove anticipation in this case did not r epresent separate legal theories, but instead simply provided separate factual bases for the jury to consider with regard to the single legal theory of anticipation. As a general matter, it is not necessary fo r every possible factual basis for liability to be independently sufficient in order for the evidence to be sufficient to support a jury verdict. A failure of proof with respect to any single item of evidence does not justify a grant of either JMOL or a new trial; even if some of the proposed factual grounds for liability are not legally sufficient to support a verdict, that is not fatal, because the critical question is whether the evidence, taken as a whole, was sufficient to support the jury’s verdict. In Griffin v. United States , 502 U.S. 46 (1991), the Supr eme Court explained in the context of a criminal case the rati onale behind the distinction between an invalid legal theory of liability and an insuffi cient factual ground for decision: When, therefore, jurors have been left the option of relying upon a legally inadequate theory, there is no reason to think that their own intelligence and expertise will save them from that error. Quite the opposite is true, however, when they have been left the option of relying upon a factually inadequate theory, since jurors are well equipped to analyze the evidence . . . . 502 U.S. at 59 (emphasis in original); see also Walther v. Lone Star Gas Co. , 952 F.2d 119, 126 (5th Cir. 1992) (“we will not reverse a verdict simply because the jury might have decided on a ground that was suppor ted by insufficient evidence”); Sandberg v.04-1249,-1295 19 Va. Bankshares, Inc. , 891 F.2d 1112, 1122 (4th Cir. 1989 ) (“the submission of both correct and incorrect factual bases supporting a single theory of recovery is not grounds for reversal”), rev’d on other grounds , 501 U.S. 1081 (1991); McCord v. Maguire , 873 F.2d 1271 (9th Cir. 1989) (“W hen a general verdict may have rested on factual allegations unsupported by substantial ev idence, we will uphold the verdict if the evidence is sufficient with respect to any of the allegations.”); Baumler v. State Farm Mut. Auto. Ins. , 493 F.2d 130, 134 (9th Cir. 1974) (“w here there are two alternative factual theories which might support the verd ict, the verdict will be upheld if there is sufficient evidence to support either theory”). In the context of this case, the question is whether the evidence as a whole was sufficient to enable a reasonable jury to c onclude, by clear and convincing evidence, that the asserted claims of the ’605 and ’878 patents were anticipated. The inadequacy of any particular item of evi dence to establish anticipation, such as the failure of any particular reference to contai n all the limitations of t he asserted claims, would not undermine the verdict as a legal matter. In this case, the evidence with respect to at least one of the prior art references was suffi cient to prove anticipation of the asserted claims. Accordingly, we uphold the district court’s order denying Northpoint’s motion for a new trial on the issue of invalidity.
D In their cross-appeal, t he defendants argue that they are entitled to have the judgment of invalidity as to the three a sserted claims extended to all the remaining claims in the ’605 and ’878 patents. We dis agree. In the pretrial stipulation, the plaintiffs asserted infringement only as to claim 8 of the ’605 patent and claims 1 and 704-1249,-1295 20 of the ’878 patent, and the defendants asserted inva lidity only as to those three claims. At trial, the parties introduced evidence of infringement and invalidity only as to those three claims, and the jury’s verdict was limit ed to those claims. In accordance with the jury’s verdict, the court entered judgment of invalidity only as to the three asserted claims. The defendants now contend that, based on comments made by Northpoint’s attorney at the close of the plaintiff’s case, the other claims of the ’605 and ’878 patents should be held invalid in light of the jury’s verdict as to the three litigated claims. We have examined the attorney’s co mments and conclude that those comments do not provide a basis for holding the unasserted claims of the ’605 and ’878 patents invalid. In the colloquy to which the defendant s refer, Northpoint’s attorney stated, in response to a Rule 50 motion to hold the other claims not infringed, that “the outcome should be determined by the claims we pr esented.” The attorney expressed his understanding that the parties had agreed that “we would pres ent representative claims instead of every claim in the patent . . . and then the outcome as to those patents, all claims, would be dictated by the outcome on the three [claims] we presented.” The attorney explained that “those claims will di ctate the outcome as to the complaint,” because any further action on the unasserted claims would be barred by res judicata. The defendants now contend that the effect of the atto rney’s statements at the time of the defendants’ Rule 50 motion on infr ingement was to concede that any verdict on invalidity would apply to all the unasserted cl aims of the two patents in suit. We do not interpret Northpoint’s attorney’s comments in that manner. Northpoint’s attorney was focused on the issue of infringement and indicated that a Rule 50 judgment of noninfringement on those claims would not be appropriate, but that because of res04-1249,-1295 21 judicata principles there was no risk that those claims would be asserted against the defendants in a subsequent action. Northpoint’s attorney did not address the issue of invalidity, and neither the judge nor counsel for the def endants raised the issue of invalidity at that time. Instead, the tr ial proceeded in accordanc e with the pretrial stipulation, with the defendants putting on evidence as to the invalidity of the three claims at issue. The defendants did not offer evidence as to the in validity of any other claims of the two patents in suit, and the cour t accordingly did not enter a judgment as to those other claims. We do not regard Northpoint’s atto rney as having done or said anything that would require the district court to enter a judgment of invalidity as to the unasserted claims. In fact, to the extent that those claims were ev er asserted, the court appears to have treated them as having been di smissed. Accordingly, the court’s judgment of invalidity was pr operly limited to the three cl aims asserted at trial. Each party shall bear its own costs for this appeal.
AFFIRMED

.

## United States Court of Appeals for the Federal Circuit

04-1249, -1295 NORTHPOINT TECHNOLOGY, LTD., Plaintiff-Appellant,

v.

MDS AMERICA, INC. and MDS INTERNATIONAL, S.A.R.L., Defendants-Cross Appellants.

DYK, Circuit Judge , concurring in part and dissenting in part. The majority today invalidates claims of two significant patents in my view utilizing a plainly incorrect claim construction. It upholds a jury verdict of anticipation that, under a proper claim construction, has no record support in expert testimony, much less the clear and convincing evidence nec essary to invalidate the patent claims at issue. 1 The majority also finds lack of enabl ement in the absence of expert testimony that the experimentation requir ed was excessive or not routine. I respectfully dissent. 2
I First, I disagree with the majority’s conclu sion that the Hult re ference anticipates claim 8 of the ’605 patent and claims 1 and 7 of the ’878 patent. There is no question but t hat Northpoint’s invention constitutes a significant contribution to the communications art. The Federal Communications Commission

1 Claim 8 of U.S. Pat ent No. 5,761,605 (the “’605 patent”) and claims 1 and 7 of U.S. Patent No. 6,169,878 (the “’878 patent”).(“FCC”) found that “Northpoint has presented a creative mechanism by which to receive greater use of a limited amount of spectrum, thus fostering spectrum efficiency.” (J.A. at 3405.) In a joint statement, former F CC Chairman Michael Powell and Commissioner Kathleen Q. Abernathy specifically noted that Northpoint arrived at the Commission many years ago with a proposal for a new and innovative way to share the DBS spectrum. Today, thanks in large part to its fine work and diligence, that service will go forward. . . . There is little question that had it not been for Northpoint, the MVDDS service would not be ready to move forward today. (J.A. at 1012.)

2 I join part II(D) of the majority opini on, which holds that the district court properly limited its holding of invalid ity to the three asserted claims.

04-1249, -1295 2This invention is recited in the patent claims at issue. 3 They describe an

3 Claim 8 of the ’605 patent reads: 8. A method for simultaneously provid ing local originating signals on a common frequency with direct broadcast satellite signals transmitted from a satellite, where the satellite is in a first satellite location in geosynchronous orbit about the earth, t he method comprising the steps of: (a) at a user location, receiving direct broadcast satellite signals at a first frequency with a first antenna adapt ed to receive signals at the first frequency only within a first directional reception range as measured from a centerline of the first antenna ; (b) transmitting terrestrial signal s at the first frequency and in a terrestrial azimuth range from a terre strial transmitter, the terrestrial azimuth range being outside of the directional reception range of the first antenna positioned to receive direct broadcast satellite signals from the satellite; and (c) at the user location, remote from the terrestrial transmitter, receiving the terrestrial si gnals with a second antenna adapted for receiving signals at the firs t frequency only within a second directional reception range as measured from a centerline of the second antenna, the second antenna being aligned so that the direct broadcast satellite signals tr ansmitted by the satellite are not transmitted within the directional reception range of the second antenna. ’605 patent, cols. 6-8 (emphases added). Cla ims 1 and 7 of the ’878 patent state: 1. An apparatus for simultaneously transmitting terrestrial signals on a common frequency with satellite signals tr ansmitted from a satellite, the satellite transmitting satellite signals at a first frequency to a user location for reception only within a satellite directional reception range about the user location, the apparatus comprising: (a) a directional terrest rial transmitter for trans mitting terrestrial signals at the first frequency in a limited azimuth range around the location of the terrestrial transmitter, the terrestrial transmitter being located with respect to the user location such that the terrestrial transmitter transmits to the user location al ong a route which is outside the satellite directional reception range

.

. . . . 7. A method for simultaneously provid ing terrestrial signals on a common frequency with satellite signals transmitt ed from a satellite, where the satellite is transmitting at a first frequency along a satellite transmission axis extending from the satellite to a te rrestrial user location, the method comprising the step of:
04-1249, -1295 3apparatus and method for reuse of the dire ct broadcast satellite (“DBS”) spectrum between satellite and terrestrial services. In the preferred embodiment, spectrum reuse is accomplished by the use of two direct ional antennas. One antenna is pointed south to receive DBS signals, while a second antenna is pointed north to receive terrestrially broadcast signals. Interference between t he signals is avoided because the antennas are constructed to receive a useable si gnal only within a narrow range, and pointed such that undesired signals arrive at each antenna outside of that range. The claimed anticipating reference (Hul t) disclosed a method of sharing the UHF spectrum between space and terrestrial serv ices by using adaptive array antennas for receiving satellite signals that “cancel[] out ” the unwanted signal. (J.A. at 1931.) The question with respect to the Hult reference is whether it disclosed the “directional reception range” limitation. The district court construed “d irectional reception range” in the ’605 and ’878 patents as follows ( and so instructed the jury):
A three-dimensional space about the c enterline of a receiving antenna within which a usable signal can be received , a useable signal being a signal from which the information carried by it can be extracted. Northpoint Tech. v. MDS Am., Inc. , No. 01-CIV-14207, slip op. at 5 (S.D. Fla. Oct. 17, 2003) (emphasis added). Neither party objected to the claim construction or to the jury instruction. Neither party challenges the claim construction of “directional reception

(a) transmitting terrestrial signals at the first frequency in a limited azimuth range from a terrestrial transmitter, the terrestrial transmitter being located with respect to t he user location so as to transmit to the user location along a transmission route which is outside of a satellite directional reception range about the user location, wherein the satellite directional reception range comprises a limited directional range subst antially centered on the satellite transmission axis.

04-1249, -1295 4range” on appeal, and the majority adopts the district court’s construction. Ante at 7-8. That claim construction, referring to a “thr ee-dimensional space about the centerline of a receiving antenna within which a usable signal can be received,” in my view clearly requires that the patented devic e achieve non-interference as a result of the geographic orientation of the tw o antennas so that each is outsi de the range of the unwanted signal due to the limitation of the antennas. The majority effectively rejects the district court’s claim construction and construes the cl aims so that geographic separation is unnecessary, and the claims are satisfied if the unwanted signal is not received through electronic canceling of the unwanted signal ra ther than physical pointing. Since such electronic canceling was achievable using the adaptive array antennas of Hult, the majority finds that the asserted cl aims of the patents are anticipated. In my view the majority’s claim cons truction is untenable even if we were to disregard the district court’s construction. The majority states that “nothing in the asserted claims requires that the antennas be physically point ed at the sources of the satellite and terrestrial signals.” Ante at 9. I disagree becaus e the claims require that the functionality of the receiv ers be geographically limited so t hat interference is avoided by the geographic orientation of the receivers. This is ev ident from the language of the claims themselves. For instance, claim 8 of the ’605 patent requires the directional reception range of the first antenna to be “m easured from a center line” and that that antenna be “positioned to receive” the signal. It also requires the second antenna to be “aligned” so that the unwanted signal is not received.

’878 patent, cols. 6-7 (emphases added).
04-1249, -1295 5The necessity for geographic separati on is also made clear by numerous references in the specifications. Both pat ents state that “[t]he receiving antenna for DBS signals must, therefore, be limited to receiving signals in a directional range measuring plus or minus nine (9) degrees fr om a centerline of t he antenna” and that “[i]n the single antenna arrangement, the ant enna is movable between a position to receive DBS signals and another position to receiv e terrestrial signals.” ’605 patent, col. 1, ll. 41-44, 56-59; ’878 paten t, col. 1, ll. 47-50, 62-65. 4 The specifications also state: The object of the invention is accomplished by utilizing receiving antennas with a limited directional re ception range and transmitting the terrestrial signals in a different range of directions than those in which the satellite signals are transmitted. . . . Both receiving antennas are adapted to receive signals only within a particu lar directional range. The range is measured from a centerline of the particular antenna. ’605 patent, col. 2, ll. 19-28; ’878 patent, col. 2, ll. 20-29. There can be no serious contention that the adaptive array antennas of Hult do not limit the “directional rec eption range” using physical poin ting. Hult teaches the use of adaptive array antennas “in a spectrum shari ng or interference environment.” (J.A. at 4376.) An antenna array is an “assembly of antenna elements with dimensions, spacing, and illumination sequence such that the fields for the individual elements combine to produce a maximum intensity in a particular direction and minimum field

4 The patents make clear that the inv ention is not limited to a direction range of nine degrees. The specifications state: Although current regulations require a spacing of no less than nine (9) degrees separation, the invention is not limited to this degree of separation. However, according to t he invention, the effective reception range of each first antenna or satellit e reception antenna must be less than or equal to the minimum satellite separation angle. ’605 patent, col. 3, ll. 61-67; ’878 paten t, col. 3, l. 64-col. 4, l. 3.
04-1249, -1295 6intensities in other directions.” Info . Tech. Section, Gen. Servs. Admin., Telecommunications: Glossary of Telecommunications Terms A-16 (1997). A phased array (or adaptive array) accomplishes “ beam steering without the mechanical and inertial problems of rotating” the entire antenna. John D. Kraus & Ronald J. Marhefka, Antennas for All Applications 572 (3d ed. 2002). “[A]n adaptive array can automatically steer its beam toward a des ired signal while steering a null toward an undesired or interfering signal.” Id. Thus, an adaptive array antenna automatically excludes (or cancels) signals coming from a particular direction without a change in its geographic orientation. The disclosure of an adaptive array does not anticipate. Finally, the majority points out that Hult discloses not only the use of adaptive array antennas but the use of conventi onal directional antennas pointed at the transmitting source and the making of “sma ll changes in antenna pointing” to reduce interference. Ante at 12. The majority is correct t hat expert testimony here supports the view that Hult made such a disclosure. What is lacking is any exper t testimony that the disclosures of Hult concerning the use of conventional directional antennas anticipate the three claims at issue here. The only te stimony that directly addresses the issue of anticipation by Hult (and c oncludes that Hult anticipat es) is Rubin’s cryptic and conclusory testimony concerning the Hult disclosure of adaptive arrays. Under these circumstances I conclude that the jury ve rdict of anticipation based on Hult cannot stand. 5

5 The accused infringers here relied on f our other prior art references to show anticipation. The majority focu ses on the Hult reference only and does not suggest that the other references anticipate. The other referenc es are even weaker than the Hult reference, and in my view none of the references can support a jury verdict of anticipation.
04-1249, -1295 7II I suggest that the majority also errs in sustaining the jury’s finding of lack of enablement because, again, the ex pert testimony is legally insufficient. The majority relies on four pieces of evidence to establis h the quantity of experim entation required to practice the Northpoint patents: (1) Mr. R ubin’s testimony regardi ng the importance of maintaining the correct power level of the terrestrial transmission; (2) Dr. Badipour’s testimony regarding the ex perimentation performed leading up to and during MDS’ infringing test in Florida; (3) Northpoint’s r eport to the FCC detailing various interference mitigation techniques and Ms. Tawil’s testim ony regarding the report; and (4) the Mitre report. Ante at 12-15. Based upon this evidence, the majority concludes that the jury correctly found the quantity of experimentation undue, apparently primarily with respect to the required power level. 6 The testimony on which the majority relie s to sustain the verdict does no more than establish that ex perimentation was required to determi ne the required power level. Rubin’s testimony plainly supports the asserti on that power is very important, but it says nothing about whether or not undue experimentation was required to determine power. 7

6 The majority lists a variety of other parameters required to practice the patents. Ante at 13-14. There is simply no test imony at all that undue experimentation was necessary with respect to these, and I under stand the majority to rely primarily on the power level. 7 Mr. Rubin testified: Northpoint’s proposal has no mention of power. That’s the one ingredient that determines whether people can coex ist or not coexist. Northpoint’s patents is simply directional antennas. There’s no power in it whatsoever. It’s the power that every body’s being – transmitting that makes it work or not work. There’s – in the Northpoi nt patents there is not one word, not one number about power.

04-1249, -1295 8Neither does the remainder of the evi dence relied on by the majority address the question of undue experimentation. Dr. Badipour said nothing about what experimentation one of ordinary sk ill in the art might consider excessive or not routine, nor did Northpoint’s FCC r eport. Ms. Tawil’s testimony regarding the FCC report does not support a conclusion that the techniques described therein would constitute undue experimentation to one of skill in the art. The Mitre report is also silent on undue experimentation. The only te stimony as to whether an ex pert would consider the experimentation required to be excessive or not routine was presented by Northpoint, and it supported the view t hat the amount of experim entation was not undue. Northpoint’s expert, Dr. Miller, testified that the amount of experimentation was routine and not excessive. 8 Ms. Tawil, one of the inventors, also testif ied regarding the various

(J.A. at 1976-77.) He further testified: I would say power makes a big differenc e. That’s what counts here, not anything else . The amount of power can destroy a broadcast receiver or it can allow it to operate. And there is nothing, not hing in the patent that says anything about power, nothing at all. The most critical factor is omitted. (J.A. at 1990 (emphasis added).) 8 Northpoint’s expert, Dr. Edwa rd F. Miller, testified: Q Was there enough information in the specification of the patents to enable that person of ordinary skill in t he art to make and use a system of the type that’s described in the claims? A Yes, I think after reading the cl aims, reading the patents, one of ordinary skill in the art would have been able to construct what’s described in the patent

. . . . Q Well, that process you’ve just described of setting the transmitter up to some reasonable maximum power and dialing it back down to find the power level that you wanted to use, is that something that takes a lot of specialized knowledge and experimentation to accomplish?
04-1249, -1295 9interference mitigation techniques documented in the Mitre report and stated that “[a]ll of those techniques a person would know who’ s skilled in the art would be necessary in order to stay out of the di rectional reception range and not cause interference with the satellite receiver.” (J.A. at 1603.) Thus , MDS presented no evidence showing that the experimentation conducted on the Northpoint system was anythi ng but routine, or would be considered undue by one of skill in the art. Undue experimentation is a matter of law based on underlying fact. Johns Hopkins Univ. v. CellPro, Inc. , 152 F.3d 1342, 1354 (Fed. Cir. 19 98). Merely listing a quantity of experimentation is not sufficient to prove undue experimentation because “[t]he determination of what level of exper imentation is ‘undue,’ so as to render a disclosure non-enabling, is made from the viewpoint of pers ons experienced in the field of the invention.” Elan Pharm., Inc. v. Mayo F ound. for Med. Educ. & Research , 346 F.3d 1051, 1055 (Fed. Cir. 2003). Si milarly, we have held that routine experimentati on does not constitute undue experimentation: The test [for undue experimentation] is not merely quantitative , since a considerable amount of ex perimentation is permissibl e, if it is merely routine, or if the specif ication in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the claimed invention.

A No, not really. Basically, one could do it with one person at the transmitter to control the power, anot her at the receiver and a cellular phone link between them so that their communication could be established to say, yes, the signal is being received, and the person adjusting the power could turn the knob or whatever other mechanism there is for changing the power level. (J.A. at 2017-19.)
04-1249, -1295 10Johns Hopkins , 152 F.3d at 1360 (quotations omitt ed) (brackets in original and emphasis added). Therefore, t he evidence presented by MDS wa s legally insufficient to establish lack of enablement. The majority asserts that there is no pr inciple that requires that a witness testify as to whether experim entation was “undue.” Ante at 16. I agree that expert testimony need not use the word “undue” but it must do more than talk about the absolute quantity of experimentation. It must suggest that the amount of experimentation would be considered excessive or not routine by one of ordinary skill in the art. Enzo Biochem, Inc. v. Calgene, Inc. , 188 F.3d 1362, 1371 (Fed. Cir. 1999) (reasonable amount of routine experimentation); Bruning v. Hirose , 161 F.3d 681, 686 (Fed. Cir. 1998) (excessive); In re Wands , 858 F.2d 731, 740 (Fed. Cir. 1988) (excessive); United States v. Telectronics, Inc. , 857 F.2d 778, 785 (Fed. Cir. 1988) (excessive). In my view the majority errs in sustai ning the jury’s findings of anticipation and lack of enablement. I would hold Northpoint ’s patents not invalid and infringed. 9

9 The jury also found Northpoint’s pat ents obvious and indefinite. The majority did not reach these other issues . I would reverse the district court’s conclusions as to obviousness and indefiniteness.

04-1249, -1295 11