NOTE: This opinion is nonprecedential.

United States Court of Appeals 

for the Federal Circuit

__________________________ 

HARRIS CORPORATION,

Plaintiff-Appellee,

v.

FEDERAL EXPRESS CORPORATION,

Defendant-Appellant.

__________________________ 

2012-1094

__________________________ 

Appeal from the United States District Court for the 

Middle District of Florida in No. 07-CV-1819, Judge John 

Antoon, II.

___________________________ 

Decided: January 17, 2013

___________________________ 

BRIAN R. GILCHRIST, Allen Dyer, Doppelt, Milbrath & 

Gilchrist, P.A., of Orlando, Florida, argued for plaintiffappellee. With him on the brief was RYAN T. SANTURRI. 

KARA F. STOLL, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of Washington, DC, argued for 

defendant-appellant. With her on the brief were JASON 

W. MELVIN; and JEFFREY A. BERKOWITZ, of Reston, Virgin-
HARRIS CORP v. FED EX CORP 2

ia. Of counsel on the brief was E. CHRIS CHERRY, FedEx 

Corporation, of Memphis, Tennessee. 

__________________________ 

Before LOURIE, CLEVENGER, and WALLACH, Circuit Judges. 

Dissenting opinion filed by Circuit Judge WALLACH. 

CLEVENGER, Circuit Judge. 

This is an appeal from a decision by the United States 

District Court for the Middle District of Florida in a 

patent infringement suit in which Plaintiff-Appellee 

Harris Corporation (“Harris”) asserted seven patents (“the 

Asserted Patents”) against Defendant-Appellant Federal 

Express Corporation (“FedEx”). After the court conducted 

claim construction, a jury found all asserted claims were 

not invalid and willfully infringed. FedEx then moved for 

judgment as a matter of law (“JMOL”), arguing that 

Harris failed to meet its burden of proving infringement 

and willful infringement, and that FedEx had established 

by clear and convincing evidence that the patents were 

obvious and unenforceable due to inequitable conduct. 

The district court granted the JMOL motion in part, 

finding that FedEx did not willfully infringe four of the 

seven Asserted Patents as a matter of law, but denied the 

motion in all other respects. 

FedEx appeals the district court’s claim construction 

ruling as to one term, the district court’s denial of JMOL 

of non-infringement as to certain accused systems, the 

court’s denial of JMOL as to obviousness, and the court’s 

denial of JMOL as to willfulness with respect 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-
3 HARRIS CORP v. FED EX CORP

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 patents stemming from a single parent, U.S. 

Patent No. 6,047,165 (filed Nov. 14, 1995, issued April 4, 

2000) (“the ’165 patent”), which is entitled “[w]ireless, 

frequency-agile spread spectrum ground link-based aircraft data communication system.” The ’165 patent, along 

with six of its continuations, form the Asserted Patents in 

this case.1 All seven of the Asserted Patents are directed 

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 of this field of technology is useful in 

understanding the Asserted Patents. Since the earliest 

days of commercial air travel, planes have incorporated a 

flight data recorder which monitors, collects and stores 

flight performance data. This device is commonly known 

as the plane’s “black box.” These “black boxes” are specially 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 patent”); 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 than 

simply after a mishap, to help prevent accidents. In 

response, artisans developed techniques that allowed 

airlines to retrieve flight performance data without removing 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 cartridge or floppy 

disk) that an attendant could physically carry off the 

plane upon arrival. 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 

output transmitter, so that flight data could be transmitted 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 drawbacks. For example, “sneakernet” was time and manpower intensive, and subject to error when disks or cartridges 

were erroneously associated with the wrong planes. Id. at 

col. 1 ll. 53–60. The fiber-optic cable and infrared systems, on the other hand, required the aircraft to be 

parked at or near the gate because the fiber-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 Asserted 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 a 
5 HARRIS CORP v. FED EX CORP

wireless transceiver for transmission upon arrival. In the 

Asserted Patents, the “ground data link unit” communicates wirelessly with the ground receiver via radio frequency signals—specifically, spread spectrum signals—

rather than infrared signals. ’165 patent 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 representative of the Asserted Patents’ invention: 

1. A method of providing data from an aircraft 

comprising:

continuously monitoring the flight performance of 

the aircraft during an entire flight of the aircraft 

from at least take-off to landing;

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;

accumulating and continuously storing the generated aircraft data within a ground data link unit 

positioned within the aircraft during the entire 

flight of the aircraft from at least take-off to landing to create an archival store of such aircraft data;

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 communications signal to a ground based spread spectrum 

receiver; and
HARRIS CORP v. FED EX CORP 6

demodulating the received spread spectrum communications signal to obtain the accumulated, 

aircraft data representative of the flight performance 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 transmission 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 spread 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 transmitting recorded flight data to the ground upon arrival 

using spread spectrum signals. FedEx later learned that 

Harris had acquired certain patents related to this technology field, and so it contacted Harris in 2002 to confirm

that the TITAN system “is not and never will be in violation of” Harris’s patents. Harris responded that certain of 

its patents were licensed to Spirent, the vendor responsible for FedEx’s TITAN system. As such, FedEx had 

reason to believe that the TITAN systems 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 functionality into its fleet of older, smaller B727 aircraft. But 
7 HARRIS CORP v. FED EX CORP

instead of purchasing licensed TITAN systems for its 

B727 fleet, FedEx partnered with a different aircraft 

parts manufacturer named Avionica to build a brand new 

system according to FedEx’s specifications (“the FedEx/Avionica System”). There is no indication that FedEx 

made any effort to determine whether this new FedEx/Avionica System infringed Harris’s patents, or ever 

inquired about obtaining a license from Harris before 

installing FedEx/Avionica Systems on its 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 FedEx/Avionica System infringed Harris’s ground data link 

patents. Roughly nine months after the suit was filed, 

Avionica provided 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 minutes of the 

recorded flight data after the plane landed but before the 

data was transmitted. This new software option apparently served no functional purpose, and was incorporated 

solely to “design around” Harris’s patents. Six months 

later, FedEx removed the “design-around” systems entirely from the B727 fleet, and today no version of the FedEx/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 invalid, enforceable
HARRIS CORP v. FED EX CORP 8

and willfully infringed, and finding that Harris had 

proven the existence of secondary indicia of nonobviousness. 

FedEx moved for JMOL that Harris failed to meet its 

burden of proving both infringement and willful infringement, 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 finding 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 attorney’s fees, but was denied enhanced damages. 

FedEx has timely appealed the district court’s claim 

construction ruling, and its denial of FedEx’s JMOL 

motion as to non-infringement, invalidity, 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 court 
9 HARRIS CORP v. FED EX CORP

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 favorable to the 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. 2010) (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. Johns 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 data.”3 Before the 

2 We reject Harris’s theory that, because FedEx no 

longer uses the infringing system and the parties 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 provide 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 limitation, although the limitation is phrased slightly differently across the seven Asserted Patents. For the purposes of 

claim construction on appeal, the parties treat the phras-

 
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 “designaround” system transmits less than “all” of its accumulated data—five minutes less, to be exact—and so this 

system arguably would not literally infringe under FedEx’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 comprehensive, 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 proposed 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 representative of 

this limitation across all asserted claims, and we follow 

suit. 

 
11 HARRIS CORP v. FED EX CORP

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

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

the relevant data set by describing how it is first “generated” during an entire flight and then “accumulated” and 

“stored” in the ground data link unit between take-off and 

landing: 

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;

accumulating and continuously storing the generated aircraft data within a ground data link unit 

positioned within the aircraft during the entire 

flight of the aircraft from at least take-off to landing to create an archival store of such aircraft data;

’319 patent at col. 16 ll. 57–64 (emphasis added). The

claim’s next step, where we encounter the disputed limitation, 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 accumulated, stored 

generated aircraft data from the ground data link 

unit over a wideband spread spectrum communications 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 multiple steps within 
HARRIS CORP v. FED EX CORP 12

the same claim, it is reasonable to assume that all references 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 limitation 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 generating, accumulating and storing 

a particular set of data in the ground data link unit, it is 

entirely reasonable to interpret “transmitting the accumulated, 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 language 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 the 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 indication that some subset of the accumulated 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 reasons 
13 HARRIS CORP v. FED EX CORP

outlined above, we believe FedEx’s most naturally aligns 

with the claim language. 

Harris argues that the subsequent and final element 

of Claim 1 contradicts FedEx’s construction because the 

data set is described at this “demodulation” step as “representative of the flight performance:”

demodulating the received spread spectrum communications signal to obtain the accumulated, 

aircraft data representative of the flight performance during the entire flight from take-off to 

landing. 

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

the phrase “representative of the flight performance” as 

used in this clause modifies the “accumulated, [sic] aircraft data,” not the transmitted data. This supports 

FedEx’s position that the data’s scope becomes fixed upon

termination of the in-flight accumulation 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 during 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 specification. The written description is therefore at best a neutral 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 reexamina-
HARRIS CORP v. FED EX CORP 14

tion of the ’045 patent when distinguishing 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 comprehensive long-term picture” of the flight performance, 

stating: 

[In Ng,] [t]he only data available for transmission 

is a momentary snap-shot of the continuously 

monitored operating conditions. 

Performing inspections in near real time in an automated wireless preventive maintenance monitoring system has nothing in common with 

acquiring a comprehensive long-term picture derived from the totality of the flight performance 

data in order to identify and remedy adverse 

trends.

J.A. 3424. But these statements address only the data 

“available 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 extent and type of data that is 

“accumulated” during the voyage, or to the amount of 

data that is “transmitted’ upon arrival. Even the district 

court noted that this language was “amendable to multiple reasonable interpretations.” Harris, 698 F. Supp. 2d 

at 1356. As a general rule, prosecution history cannot 

overcome the natural reading of the claim when the 
15 HARRIS CORP v. FED EX CORP

alleged disavowal is ambiguous. See Elbex Video, Ltd. v. 

Sensormatic Electronics Corp., 508 F.3d 1366, 1371 (Fed. 

Cir. 2007). Given the ambiguity of the prosecution history, 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 patent’s description of the invention will be [] the 

correct construction.”). As such, we reverse the court’s 

construction of the claim term “transmitting the accumulated, stored generated aircraft data” in favor of FedEx’s 

proposed construction: “transmitting all the aircraft data 

that has been accumulated or stored or generated.” 

VI

Next, we 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 

construction, 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 “design-around” system, arguing that “[i]t is undisputed that 

FedEx’s design-around does not transmit a five-minute 
HARRIS 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 court with no option but to also reverse the 

district court’s denial of FedEx’s JMOL motion for noninfringement. 

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 “designaround” system in a non-infringing manner, it was also 

apparently possible to use the system exactly like the 

original FedEx/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 FedEx/Avionica “design-around” system, and remand for 

further consideration consistent with our claim construction 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 our reversal of the 

district court’s claim construction. A claim construction
17 HARRIS CORP v. FED EX CORP

reversal does not, in and of itself, justify a new validity

trial; rather, there must be some showing that the erroneous 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, the 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 systems 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 embodiment, 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 receivers located at fixed stations as the train passes them 
HARRIS 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 reexamination of all seven of the Asserted Patents, and was 

specifically addressed and overcome during reexamination 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 September, 

1994, presentation given by Douglas Aircraft engineer 

Pete Hibson (“FCM-69”). The L-1011 reference essentially 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 Asserted 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 Patents’ 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 transmissions. The first page of the FCM-69 reference describes 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 then 
19 HARRIS CORP v. FED EX CORP

describes how these problems could be largely solved by 

implementing spread spectrum. For instance, it describes 

how spread spectrum offered “lower cost and increased 

functionality” and eliminated the need to tether the plane 

using the fiber-optic cable. Spread spectrum, the presentation continued, required no license from the FCC, the 

signals were largely immune to interference and had high 

transmission rates, and spread spectrum could be implemented 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 providing 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 the purportedly 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 (dependent claims 5, 15, and 

25 of the ’319 patent). And although witnesses 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 when the two references

were recited among a laundry list of prior art. 

The weakness of FedEx’s trial evidence troubles FedEx’s appellate reliance upon these combinations to invalidate all sixty-two claims of the Asserted Patents. FedEx 

did not at trial, and does not on appeal, set forth a claimby-claim analysis of all the asserted claims describing 

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 required by claims 3 and 

9 of the ’165 patent, and claim 39 of the ’637 patent), or 

that the system use a spread spectrum signal transmitting a “probe beacon” to select a sub-band frequency 

channel (which is required by all asserted claims in the 

’637 patent) or that the system automatically download 

the data from the aircraft to the ground upon landing 

(required by, inter alia, all asserted claims from the ’387 

patent). FedEx argues that these are “subtle variations” 

that “do not affect patentability in view of the prior art.” 

But this does not relieve FedEx of its burden to prove by 

clear and convincing evidence that these additional limitations 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 modifications. 

Although evidence of motivation to combine is not required to prove invalidity, it may nevertheless be "important to identify a reason that would have prompted a 

person of ordinary skill in the relevant field to combine 

the elements in the way 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 FedEx 
21 HARRIS CORP v. FED EX CORP

suggests without further explanation that it would have 

been obvious to re-engineer a system that periodically 

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 using impermissible hindsight. 

The limited testimony FedEx offered at trial concerning 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 discredited during cross-examination. For instance, the jury 

learned about an e-mail Mr. Hibson sent when volunteering to assist in FedEx’s defense which expressed anger at 

Harris’s licensing success because Hibson had “taught 

[Harris] everything, including wireless.” 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] best 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 proposal actually taught away from spread spectrum. We 

have held that “[a] reference may be said to teach away 

when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set 

out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In 
HARRIS 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 references were before the PTO and considered during 

prosecution of the '387 patent, the '412 patent, and the 

'146 patent, and Ng was also considered during prosecution of the '165 patent, the '319 patent. All three references were also before the PTO during the reexamination 

of the '165 and '045 patents, 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 invalidity defense has been proven by clear and convincing 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 existence of a number of secondary considerations of nonobviousness, which can buttress a court’s finding of 

nonobviousness. See Eli Lilly & Co. v. Zenith Goldline 

Pharmaceuticals, Inc., 471 F.3d 1369, 1380 (Fed. Cir. 

2006) (“Lilly proved extensive secondary considerations to 

rebut obviousness . . . these objective criteria buttressed 

the trial court's conclusion of nonobviousness.”). Harris’s 

successful licensing program is evidence of commercial 

success and acceptance by others, and the FedEx/Avionica 

System is evidence that others copied its invention. 

Moreover, Mr. Hibson testified that his 1994 presentation 
23 HARRIS CORP v. FED EX CORP

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 unsuccessfully 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 regarding 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 considerations of nonobviousness. Accordingly, we affirm the 

district court’s denial of JMOL as to invalidity. 

VIII

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 

regarding 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 despite 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 whether FedEx knew or should have known about the objectively high risk, 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 district court applied a deferential standard of review to the 

jury’s willfulness findings, stating that “[w]hether infringement 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 reviewed the Seagate “objective prong” evidence de novo

because “[t]he ultimate legal question of whether a reasonable 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. 

CONCLUSION

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 noninfringement and willfulness, and we affirm on all other 

counts. 

AFFIRMED IN PART, REVERSED IN PART, AND 

VACATED AND REMANDED IN PART

COSTS

No costs.
NOTE: This opinion is nonprecedential.

United States Court of Appeals 

for the Federal Circuit

__________________________ 

HARRIS CORPORATION,

Plaintiff-Appellee, 

v. 

FEDERAL EXPRESS CORPORATION , 

Defendant-Appellant.

__________________________ 

2012-1094

__________________________ 

Appeal from the United States District Court for the 

Middle District of Florida in No. 07-CV-1819, Judge John 

Antoon, II. 

__________________________ 

WALLACH, Circuit Judge, dissenting in part.

I do not agree that the “transmitting data” terms require transmission of all of the accumulated data. Rather, because I conclude that the terms require 

transmission of only such data sufficient to provide a 

representative picture of the aircraft flight performance, I 

dissent in part. 

The majority relies upon the rule: “The construction 

that stays true to the claim language and most naturally 

aligns with the patent’s description 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. 2005) (en banc) (quoting 

Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 

1243, 1250 (Fed. Cir. 1998)). However, the new construction the majority adopts, requiring “transmitting all of 

the aircraft data that has been accumulated or stored or 

generated,” Maj. Op. at 15 (emphasis in original), is not 

supported by the claim language, specification, or prosecution history. 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) (quoting 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 demonstrated a clear intention to limit the 

claim scope using ‘words or expressions of manifest exclusion or restriction.”’). 

The majority determines that it is reasonable that 

“the” data set transmitted must be “all” the data that was 

accumulated and stored on the basis that “identical 

language is found in multiple steps within the same 

claim” which “begs for some antecedent basis.” Maj. Op. at 

12. Claim 1 of the ’319 patent states, in part: 

A method of providing data from an aircraft comprising:

. . . 

[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 data; 
3 HARRIS CORP v. FED EX CORP

[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 performance of the aircraft during an entire flight of the 

aircraft from take-off to landing.

’319 patent col. 16 l. 52–col. 17 l. 7 (emphases and paragraphing 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 flight performance” in 

limitation [d].1 

1 The majority opinion cites to Process Control to 

support its reasoning. Maj. Op. at 12 (Process Control 

Corp. v. HydReclaim Corp., 190 F.3d 1350 (Fed. Cir. 

1999). However, in that case the language provided 

meaning to an otherwise indefinite term, whereas here

FedEx did not challenge Harris’s expert opinion that one 

skilled in the art would understand how much data would 

be required to provide a comprehensive long-term picture 

of flight performance. See J.A.1599-1602. Here the only 

identical language used throughout the claim is “aircraft 

data,” thus the antecedent basis the majority references 

should be to limitation [a] where “aircraft data” is first 

modified. Accordingly, the antecedent basis for each of 

the remaining limitations is to “aircraft data” which 

would provide “aircraft data representative of . . . flight 

performance.” Furthermore, this court has since provided 

additional guidance on Process Control, explaining that 

the construction of “discharge rate” was supported by, not 

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 Enhance-

 
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 

representative of . . . aircraft flight performance.” The 

way “aircraft data” is described in the various limitations 

of the claims implies discretion to generate, store, transmit, and demodulate only such data necessary to be 

“representative” 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 representative of the aircraft flight performance. In fact, the 

term “all” is nowhere to be found in the claim language. 

See Maj. Op. at 12–13. Accordingly, defining limitation [c] 

to require transmitting “all” of the flight performance 

data accumulated is counterintuitive within the context of 

the claims. See Hockerson-Halberstadt, Inc. v. Converse 

Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim 

construction . . . demands interpretation of the entire 

claim in context, 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 invention to create a comprehensive picture representative of 

an entire flight—likewise does not require a more restrictive 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 invention 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 accumulating 

data to gain a comprehensive picture representative of an 

entire flight. Harris’s representations during reexamination reveal nothing that limits the scope of transmitting 

data to all of the accumulated and stored data. The 

 
5 HARRIS CORP v. FED EX CORP

reason to limit the data accumulated, stored, or transmitted to anything but that which would be representative of 

flight performance. See Liebel-Flarsheim, 358 F.3d at 906. 

Because the majority’s construction unnecessarily restricts the claim terms without support from the claim 

language, specification, or prosecution history, I respectfully dissent.

majority holds that the prosecution history cannot overcome the natural reading of the claim, but because its 

reading of the claim unnecessarily adopts a limitation, it 

cannot be the most reasonable interpretation.