N OTE : This opinion is nonprecedential. 

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

__________________________ HARRIS CORPORATION, Plaintiff

- Appellee,

v. FEDERAL EXPRESS CORP ORATION, Defendant

- Appellant.

__________________________
2012

- 1094

__________________________ Appeal from the United States District Court for the Middle District of Florida in N o. 07

- CV

- 1819, Judge John Antoon, II.

___________________________

Decided: January 17, 2013

___________________________
B RIAN R. G ILCHRIST , Allen Dyer , Doppelt, Milbrath & Gilchrist, P.A., of Orlando, Florida, argued for plaintiff

appellee. With him on the brief was R YAN T. S ANTURRI

.

K

ARA F. S TOLL , Finnegan, Henderson, Farabow, Ga rrett & Dunner, LLP, of Washington, DC, argued for defendant

- appellant . With her on the brief were J ASON W. M ELVIN ; and J EFFREY A. B ERKOWITZ , of Reston, Vi r gi n-HARRIS CORP v. FED EX CORP 2

ia. Of counsel on the brief was E. C HRIS C HERRY , FedEx Corporation, of Memphis, Tennessee.

__________________________
Before L OURIE , C LEVENGER , and W ALLACH , Circui t Judges

. Dissen t ing opinion filed by Circuit Judge W ALLACH

.
C LEVENGER , Circuit Judge

. This is an appeal from a decision by the United Sta tes District Court for the Mi d dle District of Florida in a patent infringement suit in which Plaintiff -Appellee Harri s Corporation (“Harris”) asserted seven patents (“the Asserted Patents”) against Defe n dant

- Appellant Federal Express Corporation (“FedEx”). After the court conducted claim constru c tion, a jury found all asserted claims were not in valid and willfully infri nged. FedEx then moved for judgment as a matter of law (“JMOL”) , arguing that Harris failed to meet i t s burden of proving infringement and willful i n fringement, and that FedEx had established by clear and convincing evidence that the patents were obvious and unenforceable due to inequ i table conduct. The district court granted the JMOL motion in part, finding that FedEx did not willfully infringe four of the seven A sserted P atents as a matter of law , but denied the motion in all other respects.

FedEx app eals the district court’s claim constru c tion

ru l ing as to one term, the district court’s denial of JMOL of non

- infringement as to certain accused sy s tems, the court’s denial of JMOL as to obviousness, and the court’s denial of JMOL as to wil l fulness with r espect to the remaining Asserted Patents. For the reasons outlined below, we reverse the district court’s claim construction, vacate and remand the court’s denial of JMOL as to non

-HARRIS CORP v. FED EX CORP 3

infringement and willfulness, and affirm its denial of JMOL as to validity

.
I

Plaintiff Harris

, an international communications and information technology company , is the assignee of a family of patent s stemming from a single parent, U.S. Patent No. 6,047,165 (filed Nov. 14, 1995, i s sued April 4, 2000) (“the ’165 patent” ), whic h is entitled “[w]ireless, frequency

- agile spread spectrum ground link

- based ai rcraft data communication system .” The ’165 patent, along with six of its continuations

, form the Asserted Patents in this case. 1 All seven of the A sserted P atents are directe d to a particular technique for accumulating and storing data reflecting aircraft performance while the plane is airborne , and then upon arrival, transmitting that data via spread spectrum signals to the ground for subsequent analysis.

A brief overview o f t his field of technology is useful in understanding the Asserted Patents

. S ince the earliest days of commercial air travel

, planes have incorporated a flight data recorder which monitor s, collect s and store s flight performance data. Th is device is comm only known as the plane’s “black box.” These “black boxes” are sp ecially designed to withstand an aircraft mishap so that the data may be recovered and reviewed after the fact

. ’165 patent , col. 1 ll. 20

– 34. In 1995, the Federal Aviation

1 The other six Asserted Patents are: U.S. Patent Nos. 6,154,637 (issued Nov. 28, 2000) (“the ’637 patent”); 6,308,045 (issued Oct. 23, 2001) (“the ’045 patent”); 6,990,319 (issued Jan. 24, 2006) (“the ’319 patent”); 7,426,387 (issued Sept. 16, 2008) (“the ’387 patent”); 7,428,412 (issued Sept. 23, 2008) (“the ’412 pa t ent”); and 7,444,146 (issued Oct. 28, 2008) (“the ’416 patent”).HARRIS CORP v. FED EX CORP 4

Administration (“FAA”) encouraged all airlines to review the “black box” data on a regular basis, rather tha n simply after a mishap, to help prevent accidents

. In response, artisans developed techniques that allowed airlines to retrieve flight performance data without r emoving the “black box” from the plane. Id. at col. 1 ll. 35

– 43. One such prior art solution involved equipping each aircraft with a redundant flight

- data recorder having a removable storage medium (i.e., a ca r tridge or floppy disk) that an attendant cou ld physically carry off the plane upon arr i val. Id. at col. 1 ll. 44

– 52. This system was nicknamed “sneakernet.” Later prior art systems equipped the redundant flight

- data recorder with a data
out put transmitter, so that flight data could be transmi tted directly to a ground

- based computer system via either a fiber

- optic cable or a wireless infrared link. Id. at col. 1 l. 60

– col. 2 l. 6.

These prior art systems suffered from several dra wbacks. For example, “sneakernet” was time and ma n po wer intensive, and subject to error when disks or cartridges were erroneously associated with the wrong planes. Id. at col. 1 ll. 53

– 60. T he fiber

- optic cable and infrared sy stems , on the other hand, required the aircraft to be parked at or near the gate because the f iber- optic cable was physically tethered to the ground computer system and infrared transmission required a direct line of sight between the plane and the ground computer. Id. at col. 1 l. 61

– col. 2 l. 6.

To address these concerns, the inventors of the A sserted Patents proposed a modification to the prior art. Like the prior art, the Asserted Patents employ a device (which the patent calls a “ground data link unit”) that stores a redundant copy of the flight data information while the plane is airborne and which is equipped with aHARRIS CORP v. FED EX CORP 5

wireless transceiver for transmission upon arrival

. I n the Asserted Patents, the “ground data link unit” commun icates wirelessly with the ground receiver via radio fr equency signals

— specifically, spread spectrum signals

— rather than infrared signals. ’165 p atent at col. 2 ll. 22

– 33. Spread spectrum signals have certain benefits over infrared wireless, such as the ability to communicate with the ground receiver without a direct line of sight.

Claim 1 of the ’319 patent is rep resentative of the A sserted Patents’ invention :
1. A method of providing data from an aircraft comprising:

continuously monitoring the flight perfor m ance of the aircraft during an entire flight of the aircraft from at least take

- off to landing;

generatin g aircraft data representative of the co ntinuously monitored aircraft flight performance during an entire flight of the aircraft from at least take

- off to landing;

accumulating and continuously storing the gene rated aircraft data within a ground data link unit positioned within the aircraft du r ing the entire flight of the aircraft from at least take

- off to lan ding to create an archival store of such aircraft d ata;

after the aircraft completes its flight and lands at an airport, transmitting the accumulated, stored generated aircraft data from the ground data link unit over a wideband spread spectrum commun ications signal to a ground based spread spectrum receiver; andHARRIS CORP v. FED EX CORP 6

demodulating the received spread spectrum co mmunications signal to obtain the accum u lated, aircraft data representative of the flight perfo rm ance of the aircraft during an entire flight of the aircraft from take

- off to landing.

See ’319 patent at col. 16 l. 52

– col. 17 l. 7 . Other claims in the Asserted Patents describe slight variations of the type of spread spectrum tran s mission used to transmit the data or the type of system used for transmission. For instance

, certain claims require storing data during two flights rather than one, whereas others claim uploading data to the aircraft via sprea d spectrum, rather than downloading it to the ground. These are just two of the many variations found among the patents’ claims.

II

Defendant FedEx is a global courier service that uses a substantial fleet of aircraft for its deliveries. In 1998, FedEx began equipping its MD

- 11 aircraft with a system called “TITAN ,” which was capable of wirelessly tran smitting recorded flight data to the ground upon arrival using spread spectrum signals . FedEx later learned that Harris had acquired certain patents rela ted t o this tec hnology field

, and so it contacted Harris in 2002 to confirm that the TITAN system “is not and never will be in viol ation of” Harris ’s patents. Harris responded that certain of its patents were licensed to Spirent, the vendor respons ible fo r FedEx’s TITAN system. As such, FedEx had reason to believe that the TITAN system s in its MD

- 11 aircraft were licensed products , and the TITAN system has not been accused in this case

. In 2003, FedEx decided to incorporate similar fun ctionality into its fleet of older, smaller B727 aircraft. ButHARRIS CORP v. FED EX CORP 7

i nstead of purchasing licensed TITAN systems for its B727 fleet, FedEx par t nered with a different aircraft parts manufacturer named Avion i ca to build a brand new system according to FedEx’s specifications (“the Fe dEx/Avion i ca System”). There is no indication that FedEx made any effort to determine whether this new Fe dEx/Avionica System infringed Harris’s patents, or ever inquired about obtaining a license from Harris before installing FedEx/Avionica Systems on i ts B727 aircraft. Nevertheless, within a few years every FedEx B727 was equipped with a FedEx/ Avionica System.

In 2007, Harris filed suit alleging that the Fe dEx/ Avionica System infringed Harris’s ground data link patents . Roughly nine months after the suit was filed, Avion i ca pr o vided FedEx with a new software “upgrade” for the FedEx/Avionica System . Prior to the installation of this new software option, the FedEx/Avionica System downloaded all of the flight performance data recorded during flight to the ground computer upon arrival. After this new software option was installed, the system’s operator could choose to exclude five minute s of the recorded flight data after the plane landed but before the data was transmitted . This new software option ap parently served no functional purpose, and was incorporated solely to “design around” Harris’s patents

. Six months later, FedEx removed the “design

- around” systems entir ely from the B727 fleet, and today no version of the Fe dEx/Avionica System is in use

.
III

After extensive discovery, claim construction, and summary judgment motions, the case was tried to a jury in July 2010. The jury returned a special verdict finding all of the asserted claims to be not in valid , enforceableHARRIS CORP v. FED EX CORP 8

and willfully infringed , and finding that Harris had proven the existence of secondary indicia of nonobviou sness

.
FedEx moved for JMOL that Harris failed to meet its burden of proving both infringement and willful i nfringement, and that FedEx had established by clear and convincing evidence that the patents are obvious and unenforceable as a result of inequitable conduct. The
court agreed that the jury’s fi n ding that FedEx willfully infringed the ’319, ’387, ’412 and ’146 patents was not supported by substantial evidence, but denied FedEx’s motion in all other respects. Harris was awarded a permanent injunction, compensatory damages, and atto rney’s fees, but was denied enhanced damages.

FedEx has timely appealed the district court’s claim construction ruling, and its denial of Fe dEx’s JMOL motion as to non

- infringement , in validity, and willful infringement of the ’165, ’637, and ’045 patents. We have jurisdiction pursuant to 28 U.S.C. § 1295(a).

IV

Claim construction is reviewed de novo

. Cybor Corp. v. FAS Techs. , Inc., 138 F. 3d 1448, 1454

– 55 (Fed.Cir.1998) (en banc). To ascertain the scope and meaning of the asserted claims, we look to the words of the claims themselves, the specification, the prosecution history, and any relevant extrinsic evidence. Phillips v. AWH Corp. , 415 F.3d 1303, 1315

– 17 (Fed.Cir.2005) (en banc).

JMOL is appropriate when “a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.” Fed.R.Civ.P. 50(a)(1). This courtHARRIS CORP v. FED EX CORP 9

reviews the denial of a motion for JMOL under the law of the regional circuit. Orion IP, LLC v. Hyundai Motor Am.

, 605 F.3d 967, 973 (Fed. Cir. 2010). Under the law of the Eleventh Circuit, we must “consider all the evidence, and the inferences drawn therefrom, in the light most favo r able to th e nonmoving party ... [and] in this light, [ determine whether] there was any legally sufficient basis for a reasonable jury to find in favor of the nonmoving party.” Advanced Bodycare Solutions, LLC v. Thione Int'l, Inc.

, 615 F.3d 1352, 1360 (11th Cir. 20 10) (internal citations and quotations marks omitted)

We review the jury's conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence. Jo hns Hopkins Univ. v. Datascope Corp. , 543 F.3d 1342, 1345 (Fed. Cir. 2008) (quotations omitted).

V

We turn first to the issue of claim construction

, 2 and the single limitation at issue on appeal: “transmitting the accumulated, stored generated aircraft d ata.” 3 Before the

2 We reject Harris’s theory that

, because FedEx no longer uses the infringing system and the parti es have settled for a compensatory

- damages sum that will not be impacted by this appeal , claim construction is a moot issue . FedEx is presently enjoined from further use of its “design

- around,” and reversing the district court’s claim construction might p rovide FedEx with relief from this injunction. Accordingly, this issue is not moot.
3 Each of the asserted claims includes (or depends from a claim that includes) some variation of this limit ation, although the limitation is phrased slightly diffe ren tly across the seven Asserted Patents. For the purposes of claim construction on appeal, the parties treat the phra s-HARRIS CORP v. FED EX CORP 10

district court, Harris argued that this term needed no construction and submitted a proposed plain meaning of: “transmitting aircraft data that has been accumulated, stored, and generated.” FedEx argued that a construction
was necessary and proposed the following: “transmitting all the aircraft data that has been accumulated or stored or generated.” Notably, the FedEx/Avionica “design

around” system transmits less than “all” of its accum u la ted data

— five minutes less, to be exact

— and so this system arguably would not literally infringe under Fe dEx’s construction. The district court disregarded the parties’ proposed constructions and construed the term sua sponte to require “only the transmission of data sufficient to provide a comprehens ive, long

- term picture of the flight performance” to the ground upon arrival. Harris Co. v. Fed. Exp. Co. , 698 F. Supp. 2d 1345, 1358 (M.D. Fla. 2010) (claim construction opinion)

. On appeal, FedEx again urges the construction it pr oposed below , whereas Harris defends the district court’s sua sponte construction. The dispute boils down to how much of the data accumulated while the plane is in the air must be transmitted to the ground once the plane reaches its destination. FedEx concedes that while the plane is airborne, the ground data link unit may collect and store something less than “all” available data. But FedEx insists that once the plane has landed

, any and all data accumulated and stored in the ground data link unit must be transmitted to the ground

. Harris, on the other hand, urges a more flexible interpretation that would permit transmission of a subset of all data stored in the

ing found in claim 1 of the ’319 patent as represe n tative of this limitation across all asserted claims, and we follow suit.HARRIS CORP v. FED EX CORP 11

ground data link unit, provided that data is represent ative of the plane’s performance over the entire flight.

Of the two constructions, FedEx’s interpretation remains truest to the claim language

. The claim intr oduces the relevant data set by de scribing how it is first “gene rated” during an entire flight and then “accumulated” and “stored” in the ground data link u nit between take

- off and landing :
generating aircraft data representative of the co ntinuously monitored aircraft flight pe r formance during an entire flight of the ai r craft from at least take

- off to landing;

accumulating and continuously storing the gene rat ed aircraft data within a ground data link unit positioned within the aircraft du r ing the entire flight of the aircraft from at least take

- off to lan ding to create an archival store of such aircraft d ata;

’319 patent at col. 16 ll. 57

– 64 (emphasis added). The claim’s next step, where we encounter the disputed lim itation , describes transmitting “the” data using identical language as the previous claim steps :
after the aircraft completes its flight and lands at an airport, transmitting the accum u lated, store d generated aircraft data from the ground data link unit over a wideband spread spectrum commun ications signal to a ground based spread spectrum receiver;

’319 patent at col. 16 l. 65

– col. 17 l. 2 (emphasis added). When identical language is found in mul tiple steps withinHARRIS CORP v. FED EX CORP 12

the same claim, it is reasonable to assume that all refe rences relate to the same subject matter

. See Process Control Corp. v. HydReclaim Corp. , 190 F.3d 1350, 1356 (Fed. Cir. 1999) ( holding that “a discharge rate” in an earlier limitat ion refers to the same discharge rate as “the discharge rate” in a later limitation ) ; Microprocessor Enhancement Corp. v. Texas Instruments, Inc. , 520 F.2d 1367, 1375 (Fed. Cir. 2008) ( acknowledging that it is a reasonable “initial assumption” to construe a single claim term “consistently with its appearance in other places in the same claim”) (quotations omitted). Given this claim ’s prior description of generat ing, accumulating and storing a particular set of data in the ground data link unit , it is entir ely reasonable to interpret “ transmitting the acc umulated, stored generated aircraft data from the ground data link unit” as referring to that same data set . This is especially true where, as here, the later instance refers to “the” data and therefore begs for some antecedent basis.

Harris nonetheless argues that nothing in this la nguage requires that “all” of the data in the ground data link unit must be transmitted once the plane lands , and accuses FedEx of importing the word “all” into the claim in t h e absence of support for such an inclusion . We reject this argument for two reasons

. First, although the claim does not expressly require that “all” of the accumulated data must be transmitted, it similarly lacks any indic ation that some subset of the ac cumulated data should be transmitted, and if so what that subset should be. In the absence of such guidance, FedEx’s interpretation seems entirely reasonable

. Second

, Harris ’s construction would require us to interpret “the

. . . data” to mean “ a subset of the data sufficient to provide a comprehensive, long

- term picture of the flight performance .” So we have been presented with competing constructions that each import additional language into the claim. For the reasonsHARRIS CORP v. FED EX CORP 13

outlined above, we believe FedEx’ s most naturally aligns with the claim language.

Harris argues that the subsequent and final element of Claim 1 contradict s FedEx’s construction because the data set is described at th is “demodulation” step as “re presentative of the flight performance:”

demodulating the received spread spectrum co mmunications signal to obtain the accum u lated, aircraft data representative of the flight perfo rm ance during the entire flight from take

- off to lan d ing.

’319 patent at col. 17 ll. 3–7 (emphasis added)

. However,
t he phrase “representative of the flight performance” as used in this clause modifies the “accumulated, [ sic ] ai rcraft data ,” not the transmitted data. This supports FedEx’s position that the data’s scope becomes fixed upon termination of the in

- flight a ccumulation phase, and may not be further summarized after the plane lands but prior to transmission.

The specification is unhelpful in evaluating this issue. While it is true that nothing in the specification indicates that “all” data accumulated dur ing the flight must be transmitted to the ground once the plane lands, it is also true that the term “comprehensive, long

- term picture of the flight performance” is found nowhere in the specific ation. The written description is therefore at best a ne utral factor in this analysis.

We last turn to the prosecution history, from which the district court apparently derived the language used in its sua sponte construction

. In particular, the district court adopted statements Harris made during reexamin a-HARRIS CORP v. FED EX CORP 14

tion o f the ’045 patent when d istinguishing its invention from U.S. Patent No. 5,445,347 (issued Aug. 29, 1995) (“Ng”) . Ng ( discussed infra in further detail ) teaches a system for monitoring vehicle operating conditions whereby signals are transmitted from the vehicle to the ground via spread spectrum signals at intermittent times during a voyage as the vehicle passes certain ground receivers

. Harris argued that its invention did not transmit Ng’s “snapshots” of data but rather “a compr ehensive long

- term pictur e” of the flight performance

, stating :
[In Ng,] [t]he only data available for tran s mission is a momentary snap

- shot of the co n tinuously monitored operating conditions.

Performing inspections in near real time in an a utomated wireless preventive maintena nce mon itoring system has nothing in common with acquiring a comprehensive long

- term picture d erived from the totality of the flight perfor m ance data in order to identify and remedy a dverse trends.

J.A. 3424. But t he se statements address only the data “av ailable for transmission ,” comparing Ng’s “ momentary snapshot ” to Harris’s “comprehensive long

- term picture derived from the totality of the flight performance data.” It is entirely ambiguous whether the data “available for transmission” refers to the ext ent and type of data that is “accumulated” during the voyage, or to the amount of data that is “transmitted’ upon arrival. E ven the district court noted that this language was “amendable to mult iple reasonable interpretations

. ” Harris , 698 F. Supp. 2d
at 1356. As a general rule, prosecution history cannot overcome the natural reading of the claim when theHARRIS CORP v. FED EX CORP 15

alleged disavowal is ambiguous. See Elbex Video, Ltd. v. Sensormatic Electronics Corp. , 508 F.3d 1366, 1371 (Fed. Cir. 2007)

. Given t he ambiguity of the prosecution hi story, there is no basis for incorporating this language into this term’s construction.

Thus, all intrinsic evidence either supports FedEx’s construction or is neutral , and because the parties have
not provided any extrinsic evidence that sheds light on this limitation , we must return to the most reasonable interpretation of this limitation as it appears in the claim. Phillips , 415 F.3d at 1316 (“The construction that stays true to the claim language and most naturally aligns with the p atent’s description of the invention will be [] the correct construction.”). As such, we reverse the court’s construction of the claim term “transmitting the accum ulated, stored generated aircraft data” in favor of FedEx’s proposed construction: “transmit ting all the aircraft data that has been accumulated or stored or generated.”

VI

Next, w e turn to the district court’s denial of FedEx’s JMOL motion on the issue of non

- infringement. When a patent infringement verdict is based on an incorrect claim

cons truction, we reverse the trial court's denial of a motion for judgment as a matter of law if no reasonable jury could have found infringement under the proper claim construction. Finisar Corp. v. DirecTV Group, Inc.

, 523 F.3d 1323, 1333 (Fed. Cir. 2008).

The jury found that both the FedEx/Avionica System and the “design around” infringed the Asserted Patents. FedEx only appeals the judgment with respect the “d esign

- around” system , arguing that “[i]t is undisputed that FedEx’s design

- around does not tra nsmit a five

- minuteHARRIS CORP v. FED EX CORP 16

segment of the data that was accumulated and stored and, accordingly, it does not transmit the same data set that was accumulated and stored.” FedEx thus contends that a reversal of the district court’s claim construction leaves this c ourt with no option but to also reverse the district court’ s denial of FedEx’s JMOL motion for non

infringement

. But the record reflects that FedEx’s “design

- around” simply provided its users with the option to delete five minutes’ worth of accumulated data prior to transmission. Trial Tr. 116:2

– 20 , July 21, 2010, ECF No. 272

. So although it might have been possible to use the “design

around” system in a non

- infringing manner, it was also apparently possible to use the system exactly like the original Fed Ex/Avionica System , i .e., in an infringing

manner. As such, use of FedEx’s “design

- around” system might nevertheless infringe an asserted method claim, such as claim 1 of the ’319 patent, if used with the “five minute” option turned off. Similarly, the “ design around” might also infringe certain asserted system claims due to its capability to behave like the original FedEx/Avionica System

.
We therefore vacate the district court’s denial of JMOL on the issue of non

- infringement as to the Fe dEx/Avionica “ design

- around” s ystem, and remand for further consideration consistent with our claim constru ction ruling.

VII

Before addressing FedEx’s validity challenges, we pause to reject FedEx’s contention that a new trial on validity is necessary as a result of ou r reversal of the district court’s claim construction

. A claim constructionHARRIS CORP v. FED EX CORP 17

reversal does not, in and of itself, justify a new validity trial; rather, there must be some showing that the err oneous construction somehow prejudiced the validity case below

. Eaton Corp. v. Rockwell Int'l Corp. , 323 F.3d 1332, 1344 (Fed. Cir. 2003) . Harris’s briefing challenged FedEx to explain how its invalidity case was prejudiced by the district court’s claim construction, and FedEx failed to do so. Indeed, t he district court’s construction was broader than the proper construction, insofar as it encompassed systems that transmitted “all” accumulated data to the ground (i.e., the FedEx/Avionica System) as well as sy stems that transmitted less than “all” such data (i.e., the FedEx /Avionica “design

- around”). So if anything, the
correct claim construction would only make proving invalidity more difficult for FedEx in a new trial

.
We therefore turn to the merits of FedEx’ s validity appeal.

A

FedEx presented a number of prior art obviousness contentions at trial, but only two are before us on appeal. The first involves the Ng reference. As discussed above, Ng teaches a system for monitoring vehicle operating conditions whereby signals are transmitted from the vehicle to the ground via spread spectrum signals at intermittent times during the voyage as the vehicle passes certain ground receivers. While primarily targeted at trains, Ng acknowledges the invention could be used in airplanes. Ng at col. 3 ll. 22

– 28. In Ng’s preferred e mbodiment, a diagnostic unit monitors the train’s operating conditions, stores a signal representing the train’s current status, and then periodically transmits a spread

- spectrum signal conveying the train’s status to ground

- based r eceivers located at fixed stations as the train passes themHARRIS CORP v. FED EX CORP 18

along its route. See id. at col. 3 ll. 17

– 31; col. 4 ll. 53

– 57; col. 4 l. 62

– col. 5 l. 5. As noted above, Ng was before the PTO at one point during either prosecution or re

examination of all seven of the Assert ed Patents, and was specifically addressed and overcome during re

examination of the ’045 patent.

FedEx’s second obviousness contention involves a 1978 publication describing the data recording systems on an L

- 1011 aircraft (“L

- 1011”) combined with a Sep tember, 1994, presentation given by Douglas Aircraft engineer Pete Hibson (“FCM

- 69”). The L

- 1011 reference esse n tia lly teaches the “sneakernet” system, i.e., a system for collecting data during aircraft flights that samples and records data onto a “Quick Access Recorder” (“QAR”) which utilized removable cassettes. QAR cassettes could be removed from an aircraft and processed to detect any potential issues on a ground

- based “playback station.” There is no dispute that L

- 1011 is prior art to the A s ser ted Patents, and it was considered during prosecution or reexamination of five of the seven Asserted Patents.

The FCM

- 69 reference is a slideshow from a public presentation given by Douglas Aircraft engineer Pete Hibson three months before the Asserted Paten ts’ earliest priority date. Mr. Hibson, working with spread

- spectrum expert Dr. Darius Modarress, recognized that many of the problems caused by infrared or fiber optic cables could be resolved by replacing these with spread

- spectrum tran smissions. The f irst page of the FCM

- 69 reference d escribes the purpose of the presentation: to set forth a “novel concept of using Spread Spectrum technology to interface a PMAT system to an airplane in place of a direct connection to the aircraft.” The document begins with an overview of the downsides of presently available fiber

- optic and infrared systems. The document thenHARRIS CORP v. FED EX CORP 19

describes how these problems could be largely solved by implementing spread spectrum. For instance, it describes how spread spectrum offered “low er cost and increased functionality” and eliminated the need to tether the plane using the fiber

- optic cable. Spread spectrum, the prese ntation continued, required no license from the FCC, the signals were largely immune to interference and had high
trans mission rates, and spread spectrum could be impl emented using commercially

- available products rather than costly specialized devices. But FCM

- 69 also notes that data rates for spread spectrum were, on average, 100 times slower than infrared.

B

FedEx contends that both of its contentions present a clear and convincing case for obviousness. As for Ng, FedEx contends that the this system could be easily adapted to behave like the Harris invention by merely adding extra memory to Ng’s data recorder , thus pr ovi ding the system with sufficient capacity to store an entire trip’s worth of data. As for the second contention , FedEx
argues that L

- 1011 generally teaches transferring data collected during a flight to the ground for analysis, whereas FCM

- 69 teaches th e purported ly novel aspect of Harris’s invention

, which is transmitting the accumulated flight data using spread spectrum signals.

Harris argues, in response, that FedEx provided the jury with insufficient evidence to support its obviousness contentions, and that the jury heard convincing evidence that undermines FedEx’s contentions. We agree with Harris. FedEx’s expert opined on the Ng reference only in the context of three claims ( depende nt claims 5, 15, and 25 of the ’319 patent)

. And although witne sses testified regarding the L- 1011 and FCM

- 69 references separately

,HARRIS CORP v. FED EX CORP 20

FedEx apparently only proposed this combination to the jury during its closing argument w hen the two references were recited among a laundry list of prior art.

The weakness of FedEx’s trial evidence troubles Fe dEx’s appellate reliance upon these combinations to inval idate all sixty

- two claims of the Asserted Patents. FedEx did not at trial, and does not on appeal, set forth a claim

by

- claim analysis of all the asserted claims descri b in g which elements can be found in which reference. The asserted claims include many variations on claim 1 of the ’319 patent, such as requiring that the spread spectrum signal use the “S band” (which is r e quired by claims 3 and 9 of the ’165 patent, and cl aim 39 of the ’637 patent), or that the system use a spread spectrum signal transmi tting a “probe beacon” to select a sub

- band frequency channel (which is r e quired by all asserted claims in the ’637 patent) or that the system automatically download the dat a from the aircraft to the ground upon landing (required by, inter alia , all asserted claims from the ’387

pa t ent). FedEx argues that these are “subtle variations” that “do not affect patentability in view of the prior art.” But this does not relieve Fed Ex of its burden to prove by clear and convincing evidence that these additional lim itations actually were known in the prior art, which it has failed to do.

FedEx also failed to explain why an artisan would be motivated to make its suggested prior art mo difications

. Although evidence of motivation to combine is not required to prove invalidity, it may nevertheless be "i mpo r tant to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the wa y the claimed new invention does." KSR Int'l Co. v. Teleflex Inc. , 550 U.S. 398, 418

- 22 (2007)

. This is particularly true in the case of Ng, where FedExHARRIS CORP v. FED EX CORP 21

suggests without further explanation that it would have been obvious to re -engineer a system that peri odically transmits mid

- voyage status updates so that it instead accumulates an entire trip’s worth of data and transmits all of the accumulated data at once upon arrival

. Absent any explanation to the contrary, one suspects FedEx reached this conclusion u sing impermissible hindsight.

The limited testimony FedEx offered at trial concer ning its obviousness contentions suffered from other deficiencies. During cross

- examination, Dr. Helfrick was unable to speak to certain aspects of the Ng reference such as whether the Ng system recorded data over the entire life of the train’s voyage or how much information the Ng system transmitted to a station when the train passed by. Meanwhile, Mr. Hibson

— FedEx’s primary witness concerning the FCM

- 69 reference

— was disc re di ted during cross

- examination. For instance, the jury learned about an e

- mail Mr. Hibson sent when voluntee ring to assist in FedEx’s defense which expressed anger at Harris’s licensing success because Hibson had “taught [Harris] everything, including w ireless.” J.A. 2704

– 05; Trial Tr. 136:21

– 142:13, July 26, 2010, ECF No. 275. Moreover, when asked during cross

- examination why he agreed to testify on FedEx’s behalf, Mr. Hibson responded that he was a Boeing employee and FedEx was “one of [Boeing’s] bes t customers, [so] we want to keep them happy." Trial Tr. 141:6

– 17, July 26, 2010, ECF No. 275.

The jury also heard testimony that the FCM

- 69 pr oposal actually taught away from spread spectrum. We have held that “[a] reference may be said to teach away wh en a person of ordinary skill, upon reading the refe rence, would be discouraged from follo w ing the path set out in the reference, or would be led in a direction dive rgent from the path that was taken by the applicant.” InHARRIS CORP v. FED EX CORP 22

re Gurley , 27 F.3d 551, 553 (Fed. Cir. 1994). Although FCM

- 69 largely encourages the use of spread spectrum, the presentation also included certain facts that might have discouraged an artisan from using spread spectrum. For instance, the presentation acknowledged that spread spectrum had slower data transfer rate than infrared, and too many planes using spread spectrum at once could result in higher error rates or dropped connections.

On top of all this, the jury learned that all three re ferences were before the PTO and considered dur ing prosecution of the '387 patent, the '412 patent, and the '146 patent, and Ng was also considered during prosec ution of the '165 patent, the '319 patent. All three refe rences were also before the PTO during the reexamination of the '165 and '045 patent s , and as noted above, Harris directly addressed and overcame a challenge based upon Ng during the latter patent’s reexamination. Although none of these facts impact FedEx’s burden of proof, they are reasonable considerations when determining whether an i nvalidity defense has been proven by clear and co nvincing evidence. Microsoft Corp. v. i4i Ltd. P’ship , 131 S. Ct. 2238, 2251, 180 L. Ed. 2d 131 (2011).

Finally, the jury found that Harris had proven the e xistence of a number of secondary consideration s of nono bviousness , which can buttress a court’s finding of nonobviousness. See Eli Lilly & Co. v. Zenith Goldline Pharm a ceuticals, Inc. , 471 F.3d 1369, 1380 (Fed. Cir. 2006) (“Lilly proved extensive secondary considerations to rebut obv i ousness . . . th ese objective criteria buttressed the trial court's conclusion of nonobviousness.”)

. Harris’s

succes s ful licensing program is evidence of commercial success and acceptance by others, and the FedEx/Avionica System is evidence that others copied its inventi on. Moreover, Mr. Hibson testified that his 1994 presentationHARRIS CORP v. FED EX CORP 23

was rejected because his colleagues at the time were focused upon using fiber

- optic and infrared transmissions

. Harris submitted this as evidence of skepticism by other experts, and also that others had tried unsucc essfully to solve the problem. FedEx has not appealed any of these findings.

FedEx bears the burden to demonstrate invalidity by clear and convincing evidence. Yet the evidence regar ding the scope and content of these references and the differences between the references and the asserted claims fail to satisfy this standard of proof, and FedEx does not contest the existence of Harris’s secondary co nsiderations of nonobviousness. Accordingly, we affirm the district court’s denial of JMOL as to invalidity

.
VI II

Finally, we address FedEx’s appeal of the district court’s denial of JMOL on the issue of willfulness as to certain of the Asserted Patents. In its JMOL motion, FedEx argued that it had raised substantial questions regardi ng infringement and validity throughout the litigation, and that this precluded a finding that it met the first prong of the analysis set forth in In re Seagate Tech., LLC , 497 F.3d 1360, 1366 (Fed. Cir. 2007), which requires that the infringer acted despi te an objectively high likelihood that its actions constituted infringement of a valid patent

. FedEx also argued that Harris failed to introduce clear and convincing evidence regarding whet her FedEx knew or should have known about the objectiv ely high ris k, which is the second Seagate prong. The district court granted FedEx’s motion as to four of the Asserted Patents, but denied the motion as to the other three

.HARRIS CORP v. FED EX CORP 24

Citing Metabolite Labs., Inc., v. Lab. Corp. of Am. Holdings , 370 F.3d 1354, 1359 (Fed. Cir. 2004), the di strict court applied a deferential standard of review to the jury’s willfulness findings , stating that “[w]hether i nfringement was willful is a question of fact reviewed for substantial evidence.” But this court has since held in Bard Peripheral Vascular, inc. v. W.L. Gore & Associates, Inc. , that “simply stating that willfulness is a question of fact oversimplifies this issue.” 682 F.3d 1003, 1006 (Fed. Cir. 2012)

. As such, the district court should have r eviewed the Seagate “objective prong” evidence de novo because “ [t] he ultimate legal question of whether a re asonable person would have considered there to be a high likelihood of infringement of a valid patent should always be decided as a matter of law by the judge.” Id. at 1008.

In view of this, and also in light of our above claim construction and noninfrignement rulings, we vacate the JMOL order as to the willfulness issue and remand for further consideration in accordance with this opinion

.
C ONCLUSION

For the foregoing reasons, we reverse the district court’s order on claim construction, we vacate and remand the district’s court’s denial of JMOL as to non

infringement and willfulness, and we affirm on all other
counts.

AFFIRMED IN PART, REVERSED IN PART, AND VACATED AND REMANDED IN PART

C OSTS

No costs.N OTE : This opinion is nonprecedential. 

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

__________________________ HARRIS CORPORATION, Plaintiff

- Appellee,

v. FEDERAL EXPRESS CORP ORATION , Defendant

- Appellant.

__________________________
2012

- 1094

__________________________ Appeal from the United States District Court for the Middle Distr ict of Florida in No. 07

- CV

- 1819, Judge John Antoon, II.

__________________________
W ALLACH , Circuit Judge , dissenting in part. I do not agree that the “transmitting data” terms require transmission of all of the accumulated data . R ather, because I conclude that the terms require transmission of only such data sufficient to provide a representative picture of the aircraft flight perfor m ance , I dissent in part

. The majority relies upon the rule: “The constru ction that stays true to the claim language and most naturally aligns with the patent’s descri ption of the invention will be . . . the correct construction. ” Phillips v. AWH Corp.

,HARRIS CORP v. FED EX CORP 2

415 F.3d 1303, 1316 (Fed. Cir. 2 005) (en banc) (quoting Renishaw PLC v. Marposs Societa’ per Azioni , 158 F.3d 1243, 1250 (Fed. Cir. 1998) )

. However, t he new construction the majority adopts, requiring “transmitting all of the aircraft data that has been acc u mulated or stored or generate d,” Maj. Op. at 15 (emphasis in original)

, is not supported by the claim language, specification, or pros ecution hist o ry. Moreover, it improperly narrows the claim language, limiting an otherwise broadly drafted claim

. See Liebel

- Flarsheim Co. v. Medrad, Inc. , 358 F.3d 898, 906 (Fed. Cir. 2004) (quo t ing Teleflex, Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 1327 (Fed. Cir. 2002) ) (“[T]he claims of a patent will not be read restrictively unless the patentee has demonstra t ed a clear intention to limit the cla im scope using ‘words or expressions of manifes t excl usion or restri c tion.”’). The majority determines that it is reasonable that “the” data set transmitted must be “all” the data that was

acc u mulated and stored on the basis that “identical language is found in multiple steps within the same claim” which “begs for some a ntecedent basis.” Maj. Op. at 12

. C laim 1 of the ’319 patent states, in part : A method of providing data from an aircraft co mprising:

. . . [a] generating aircraft data representative of the continuously monitored aircraft flight performance during an entire flight of the aircraft from at least take

- off to landing; [b] accumulating and continuously storing the generated aircraft data . . . to create an archival store of such aircraft da ta;HARRIS CORP v. FED EX CORP 3

[c] after the aircraft completes its flight and lands at an airport, transmitting the accumulated, stored generated aircraft data

. . . ; and [d] demodulating the received spread spectrum communications signal to obtain the accumulated, aircraft data representative of the flight perfo rmance of the aircraft during an entire flight of the aircraft from take

- off to landing.

’3 19 patent col. 16 l. 52

– col. 17 l. 7 (emphase s and par agraphing added)

. The majority refers to “the” data set, but “the” data set is not consistently defined throughout

. Instead, “data” is modified as “generated aircraft data” in limitation [b]; as “accumulated, stored generated aircraft data” in limitation [c]; and finally, as “accumulated, aircraft data representative of the flig ht performance” in limitation [d]. 1

1 The majority opinion cites to Process Control to suppo rt its reasoning. Maj. Op. at 12 ( Process Control Corp. v. HydReclaim Corp. , 190 F.3d 1350 (Fed. Cir. 1999) . Ho w ever, in that case the language provided meaning to an otherwise indef inite term, whereas here FedEx did not cha l lenge Harris’s expert opinion that one skilled in the art would understand how much data would be r e quired to provide a comprehensive long

- term picture of flight pe r formance. See J.A.1599

- 1602. Here the only iden tical language used throughout the claim is “aircraft data,” thus the antece d ent basis the major ity references should be to limitation [a] where “aircraft data” is first modi fied. Accordingly, the antecedent basis for each of the remain ing limitation s is to “aircraft data” which would provide “aircraft data representative of . . . flight perfo r mance.” Furthermore, this court has since provided additional guidance on Process Control , explaining that the constru c tion of “discharge rate” was supported by, no t reliant upon, the antecedent basis; a “patentee’s mere use of a term with an antecedent does not require that both terms have the same meaning.” Microprocessor Enhanc e-HARRIS CORP v. FED EX CORP 4

The only consistent term in each limitation is “aircraft data” which is defined in limitation [a] to mean “data

repr e sentative of . . . aircraft flight performance.” T he way “aircraft data” is described in the various limitation s of the claims implies discretion to generate, store, tran smit, and demodulate only such data necessary to be “repr e sentative” of flight performance. Thus, the claim does not require that “all” of the accumulated, stored data be transmitted, as long as the transmitted data is repr esentative of the aircraft flight performance. In fact, the term “all” is nowhere to be found in the claim language. See Maj. Op. at 1 2– 13

. Accordingly, defining limitation [c] to require transmitting “all” of the fli ght performance data accum u lated is counterintuitive within the context of the claims. See Hockerson

- Halberstadt, Inc. v. Converse Inc. , 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“P roper claim
constru c tion . . . demands interpretation of the entire claim in co ntext, not a single element in isolation

. ”). Additionally, the majority concedes that nothing in the specification indicates how much data should be accumulated, stored, or transmitted

. The prosecution history

— which suggests that Harris intended his inv e ntion to create a comprehensive picture representative of an entire flight

— likewise does not require a more restri ctive reading

. 2 See Maj. Op. at 14

– 15

. Thus, there is no

ment Corp. v. Texas Instruments Inc. , 520 F.3d 1367, 1375 (Fed. Cir. 2008).
2 Before the PTO, Harris distinguished its inve ntion from prior art by addressing the difference between sending real

- time data at various intervals (as was done in Ng by a train transmitting data as it traveled past fixed locations), J.A.3272

- 74, as opposed to ac cumulating data to gain a comprehensive picture representative of an entire flight. Harris’s representations during reexamin ation reveal nothing that limit s the scope of transmitting data to all of the accumulated and stored data. TheHARRIS CORP v. FED EX CORP 5

reason to limit the data accumulated, stored, or transmi tted to anything but that w hich would be representative of flight performance. See Liebel

- Flarsheim , 358 F.3d at 906. Because t he majority’s construction unnecessarily r estricts the claim terms without support from the claim language, specification, or prosecution history

, I respec tfully dissent.

majority holds that the prosecution history cannot ove rcome the natural reading of the claim, but because its reading of the claim unnecessarily adopts a limitation, it cannot be the most reasonable inte r pretation.