United States Court of Appeals 

for the Federal Circuit 

__________________________ 

TECHNOLOGY PATENTS LLC, 

Plaintiff-Appellant, 

v. 

T-MOBILE (UK) LTD., T-MOBILE AUSTRIA GMBH, 

T-MOBILE CZECH REPUBLIC A.S., T-MOBILE 

DEUTSCHLAND GMBH, T-MOBILE HUNGARY CO. 

LTD., T-MOBILE NETHERLANDS B.V., 

AND T-MOBILE SLOVENSKO A.S., 

Defendants-Appellees, 

AND

ADVANCED INFO SERVICE PLC, also known as 

AIS, BELL MOBILITY INC., CSL NEW WORLD 

MOBILITY LIMITED, CHINA MOBILE PEOPLES 

TELEPHONE COMPANY LIMITED, now known as 

China Mobile Hong Kong Company Limited,

KT FREETEL CO. LTD., now known as KT 

Corporation, SINGAPORE TELECOM MOBILE 

PRIVATE LIMITED, SINGAPORE 

TELECOMMUNICATIONS LIMITED, also known as

Singtel, SINGTEL OPTUS PTY LIMITED, STARHUB 

MOBILE PTE LTD., AND TELSTRA CORPORATION 

LIMITED, 

Defendants-Appellees, 

AND

AMERICA MOVIL, S.A.B. DE C.V., CLARO, S.A., 

AMX ARGENTINA, S.A., 
TECHNOLOGY PATENTS v. DEUTSCHE 2

AND RADIOMOVIL DIPSA, S.A. DE C.V., also known 

as Telcel,

Defendants-Appellees, 

AND

BELGACOM MOBILE S.A., also known as Proximus,

MOBILKOM AUSTRIA AG, SFR, also known as Societe 

Francaise De Radiotelephone S.A., SMARTONE 

MOBILE COMMUNICATIONS LIMITED, 

TANGO S.A., VODAFONE CZECH REPUBLIC A.S., 

VODAFONE D2 GMBH, also known as Vodafone 

Germany, VODAFONE ESPANA S.A., VODAFONE 

ESSAR LTD., VODAFONE HUNGARY MOBILE 

TELECOMMUNICATIONS LTD., VODAFONE 

IRELAND LTD., VODAFONE LIBERTEL B.V., 

VODAFONE LIMITED, also known as Vodafone UK,

VODAFONE NETWORK PTY. LTD., VODAFONE 

NEW ZEALAND, VODAFONE OMNITEL N.V., 

VODAFONE PORTUGAL, COMUNICACOES 

PESSOAIS, S.A., VODAFONE 

TELEKOMUNIKASYON A.S., also known as Vodafone 

Turkey, AND VODAFONE-PANAFON HELLENIC 

TELECOMMUNICATIONS COMPANY S.A., 

also known as Vodafone-Panafon S.A.,

Defendants-Appellees, 

AND

TNL PCS S.A., ALSO KNOWN AS OI, 

Defendant-Appellee, 

AND

BASE N.V./S.A., E-PLUS MOBILFUNK GMBH & CO. 

KG, AND KPN B.V., 

Defendants-Appellees, 
3 TECHNOLOGY PATENTS v. DEUTSCHE

AND

BERMUDA DIGITAL COMMUNICATIONS LTD., 

Defendant-Appellee, 

AND

BOUYGUES TELECOM S.A., 

Defendant-Appellee, 

AND

CHUNGHWA TELECOM CO. LTD., 

FAR EASTONE TELECOMMUNICATIONS CO. 

LTD., AND TAIWAN MOBILE CO., LTD., 

Defendants-Appellees, 

AND

CLICKATELL (PTY) LTD., 

Defendant-Appellee, 

AND

FRANCE TELECOM ESPANA S.A., also known as 

Orange Spain, FRANCE TELECOM S.A., MOBISTAR 

N.V., ORANGE AUSTRIA TELECOMMUNICATION 

GMBH, formerly known as One GmbH,

ORANGE COMMUNICATIONS S.A., also known as

Orange Switzerland, ORANGE FRANCE S.A., 

ORANGE PLC, also known as Orange U.K., 

ORANGE S.A., ORANGE SLOVENSKO A.S., AND

VOX MOBILE S.A., 

Defendants-Appellees, 

AND

H3G S.P.A., also known as 3 Italia, HUTCHISON 3G 

AUSTRIA GMBH, HUTCHISON 3G UK LIMITED, 
TECHNOLOGY PATENTS v. DEUTSCHE 4

AND HUTCHISON TELECOMMUNICATIONS 

(HONG KONG) LIMITED, 

Defendants-Appellees, 

AND

KDDI CORPORATION, 

Defendant-Appellee, 

AND

PCCW MOBILE HK LIMITED, 

Defendant-Appellee, 

AND

YAHOO! INC., 

Defendant-Appellee, 

AND

KABUSHIKI KAISHA NTT DOCOMO AND

SOFTBANK MOBILE CORP., 

Defendants-Appellees, 

AND

M3 WIRELESS LTD., 

Defendant-Appellee, 

AND

NETCOM AS, NOW KNOWN AS TELIASONERA 

NORGE AS 

AND TELIA DANMARK A/S, 

Defendants-Appellees, 

AND

TMN – TELECOMUNICACOES MOVEIS 

NACIONAIS, S.A., 
5 TECHNOLOGY PATENTS v. DEUTSCHE

Defendant-Appellee, 

AND

TELEFONICA GERMANY GMBH & CO. OHG (formerly known as Telefonica O2 Germany GmbH & CO. 

OHG), TELEFONICA UK LIMITED (formerly known 

as O2 UK Limited), TELEFONICA IRELAND 

LIMITED (formerly known as Telefonica O2 Ireland 

Limited), PEGASO PCS, S.A. DE C.V., TELEFONICA 

MOVILES ARGENTINA, S.A., TELEFONICA 

MOVILES ESPANA, S.A.U., TELEFONICA CZECH 

REPUBLIC (formerly known as Telefonica O2 Czech 

Republic, A.S.), AND VIVO, S.A., 

Defendants-Appellees, 

AND

PANNON GSM TELECOMMUNICATIONS LTD., 

SONOFON A/S, SWISSCOM MOBILE A.G., TDC A/S, 

TDC SWITZERLAND AG, also known as Sunrise, 

TELENOR MOBIL A.S., AND

TOTAL ACCESS COMMUNICATION PLC, also 

known as DTAC, 

Defendants-Appellees, 

AND

SONAECOM-SERVICOS DE COMUNICACOES, S.A., 

Defendant-Appellee, 

AND

TELECOM ITALIA S.P.A., TELECOM PERSONAL 

S.A., TIM CELULAR S.A., AND TIM 

PARTICIPACOES S.A., also known as Tim Brazil, 

Defendants-Appellees, 

AND
TECHNOLOGY PATENTS v. DEUTSCHE 6

TRUE MOVE COMPANY LIMITED, 

Defendant-Appellee, 

AND

WIND HELLAS TELECOMMUNICATIONS S.A. 

AND WIND TELECOMUNICAZIONI SPA, 

Defendants-Appellees, 

AND

AVEA ILETISIM HIZMETLERI A.S., 

Defendant-Appellee, 

AND

T-MOBILE USA, INC., 

Defendant-Appellee, 

AND

AT&T MOBILITY LLC, 

Defendant-Appellee, 

AND

TELE-MOBILE COMPANY, also known as Telus 

Mobility, 

Defendant-Appellee, 

AND

ROGERS WIRELESS PARTNERSHIP, 

Defendant-Appellee, 

AND

MICROSOFT CORPORATION, 

Defendant-Appellee, 

AND
7 TECHNOLOGY PATENTS v. DEUTSCHE

PALM, INC., 

Defendant-Appellee, 

AND

CELLCO PARTNERSHIP, doing business as Verizon 

Wireless, 

Defendant-Appellee, 

AND

HELIO, LLC, AND SPRINT NEXTEL 

CORPORATION, 

Defendants-Appellees, 

AND

LG ELECTRONICS MOBILECOMM U.S.A., INC., 

Defendant-Appellee, 

AND

MOTOROLA, INC., now known as Motorola Solutions, 

Inc., 

Defendant-Appellee, 

AND

IDEA CELLULAR LIMITED, 

Defendant, 

AND

DEUTSCHE TELEKOM AG, MOBILEONE LTD., 

ORANGE LIMITED, ORANGE NEDERLAND N.V., 

TURKCELL ILETISIM HIZMETLERI A.S., AND 

UPSIDE WIRELESS INC., also known as IPIPI,

Defendants, 

AND
TECHNOLOGY PATENTS v. DEUTSCHE 8

MOTOROLA MOBILITY, INC., 

Intervenor. 

__________________________ 

2011-1581 

__________________________ 

Appeal from the United States District Court for the 

District of Maryland in case no. 07-CV-3012, Judge Alexander Williams, Jr. 

_________________________ 

Decided: October 17, 2012 

___________________________ 

JOESPH A. RHOA, Nixon & Vanderhye, P.C., of Arlington, Virginia, argued for plaintiff-appellant. With him on 

the brief were GORDON P. KLANCNIK and UNDEEP S. GILL. 

IAN N. FEINBERG, Feinberg Day Albert & Thompson 

LLP, of Palo Alto, California, argued for defendantsappellees T-Mobile (UK), et al. Advanced Info Service 

PLC, et al., American Movil S.A.B. de C.V., et al., Belgacom Mobil S.A., et al., Basen N.V./S.A., et al., Bouygues 

Telecom S.A., and Kiddi Coporation, and Bermuda Digital 

Communications LTD., and Chunghwa Telecom, Co. LTD, 

et al., PCCW Mobil HK Limited, and M3 Wireless LTD, 

and France Telecom Espana S.A., et al., TMN- Telecomunicacoes Movies Nacionais, S.A., and H3G S.P.A., et al., 

and Kabushiki Kaisha NTT DOCOMO, et al., Avea Iletisim Hizmetleri A.S., and O2 (Germany) GMBH & Co. 

OHG, et al., TeliaSonera Norge AS, et al., Rogers Wireless 

Partnership, Pannon GSM Telecommunications LTD., et 

al., Sonaecom-Servicos De Comunicacoes, S.A., and True 
9 TECHNOLOGY PATENTS v. DEUTSCHE

Move Company Limited, and Telecom Italia S.PA., et al., 

Wind Hellas Telecommunications S.A. et al., Netcom AS, 

et al., DEA Cellular Limited. With him on the brief were 

ANDREW R. SOMMER, Winston & Strawn, LLP, of Washington, DC, for the defendants-appellees TNL PCS S.A. 

and STUART J. SINDER, Kenyon & Kenyon, LLP, of New 

York, New York, for defendant-appellees T-Mobile (UK), 

Ltd., et al., DORIS JOHNSON HINES, Finnegan, Henderson, 

Farabow, Garrett & Dunner, LLP, of Washington, DC, for 

defendants-appellees Advanced Info Service PLC, et al., 

STEVEN R. SELSBERG, Mayer Brown, LLP, of Houston, 

Texas, for defendant-appellees America Movil, et al., 

MATTHEW J. MOORE, Latham & Watkins LLP, of Washington, DC, for defendants-appellees Base N.V./S.A., et 

al., LOUIS M. SOLOMON, Cadwalader, Wickersham & Taft 

LLP, of New York, New York, for defendant-appellee 

Bouygues Telecom S.A., and EDWARD C. DONOVAN, D.

SEAN TRAINOR and WILLIAM H. BURGESS, Kirkland & 

Ellis, LLP, of Washington, DC, for defendant-appellee 

KDDI Corporation, and RODERICK R. MCKELVIE, Covington & Burling LLP, of Washington, DC, for defendantappellee Bermuda Digital Communications Ltd., BRIAN 

WM. HIGGINS, Blank Rome, LLP, of Washington, DC, for 

defendant-appellees Chunghwa Telecom Co. Ltd., et al., 

RUSSELL E. LEVINE, Kirkland & Ellis LLP, of Chicago, 

Illinois, for defendant-appellee PCCW Mobile HK Limited, and ROBERT C. BERTIN and CATHERINE R. MURPHY, 

Bingham McCutchen LLP, of Washington, DC, for defendant-appellee M3 Wireless Ltd., and JAMES W. DABNEY, 

Fried, Frank, Harris, Shriver & Jacobson LLP, of New 

York, New York, for defendant-appellees France Telecom 

Espana S.A., et al., and DAVID L. LEICHTMAN and BRYAN J.

VOGEL, Robins, Kaplan, Miller & Ciresi L.L.P., of New 

York, New York, for defendant-appellee TMN – Telecomunicacoes Moveis Nacionais, S.A., and STEPHEN B.

KINNAIRD, Paul Hastings, LLP, of Washington, DC, for 
TECHNOLOGY PATENTS v. DEUTSCHE 10

defendant-appellees H3G S.P.A., et al., SHERMAN W.

KAHN, Morrison & Foerster LLP, of New York, New York, 

for denfendant-appellees Kabushiki Kaisha NTT 

DoCoMo, et al., SCOTT R. MATTHEWS, Windels, Marx, 

Lane & Mittendorf, of New York, New York, for defendant-appellee Avea Iletisim Hizmetleri A.S., and STEVEN 

J. YOUNG, Dewey & LeBoeuf LLP, of New York, New 

York, for defendant-appellees O2 (Germany) GmbH & 

Co., OHG, et al., STEPHEN S. MADSEN, Cravath Swaine & 

Moore, LLP, of New York, New York, for defendantappellees TeliaSonera Norge AS, et al., EDWARD HAN, 

Arnold & Porter, LLP, of Washington, DC, for defendantappellee Rogers Wireless Partnership, and ROBERT C.

NISSEN and WILLIAM T. ENOS, Nissen & Associates, of 

Washington, DC, for defendant-appellees Pannon GSM 

Telecommunications Ltd., et al., BRIAN C. RIOPELLE, 

McGuire Woods LLP, of Richmond, Virginia, for defendant-appellee Sonaecom-Services de Comunicacoes, S.A., 

and JAY F. UTLEY, W. BART RANKIN and NATHAN A.

ENGELS, Baker & McKenzie LLP, of Dallas, Texas, for 

defendant-appellee True Move Limited Company, and 

MAXIMILIAN A. GRANT, Latham & Watkins LLP, of Washington, DC, for defendant-appellees Telecom Italia S.P.A., 

et al., and ADAM GAHTAN, White & Case LLP, of New 

York, New York, for defendant-appellees Wind Hellas 

Telecommuications, S.A., et al. 

BRYANT C. BOREN, JR., Baker Botts LLP, of Dallas, 

Texas, argued for defendents-appellees AT& T Mobility, 

LLC, T-Mobile, USA, Inc., Cellco, Partnership d/b/a 

Verizon Wireless, LG Electronics Mobilecomm U.S.A., 

Inc., Motorola Solutions, Inc., (f.k.s. Motorola, Inc.) Sprint 

Nextel Corporation and Helio, LLC, and Palm, Inc. With 

him on the brief were CHRISTOPHER W. KENNERLY, 

SAMARA L. KLINE, and KEVIN E. CADWELL, for defendantappellee AT&T Mobility, LLC, of counsel was JOSHUA J.
11 TECHNOLOGY PATENTS v. DEUTSCHE

PARKER. Also on the brief were RAMSEY M. AL-SALAM and 

KAUSTUV M. DAS, Perkins Coie, LLP, of Seattle, Washington, for defendant-appellee T-Mobile USA, Inc., and 

KEVIN P. ANDERSON, JAMES H. WALLACE, JR., and KARIN 

HESSLER, Wiley Rein LLP, of Washington, DC, for defendant-appellee Cellco Partnership (d/b/a/ Verizon Wireless), and MICHAEL J. MCKEON and LINDA LIU KORDZIEL, 

Fish & Richardson P.C., of Washington, DC, for defendant-appellee LG Electronics MobileComm U.S.A., Inc., 

and ANDREW R. SOMMER, CYRUS T. FRELINGHUYSEN, and 

GREGORY P. EATON, Winston & Strawn, LLP, of Washington, DC, and JONATHAN E. RETSKY, of Chicago, Illinois, for 

defendant-appellee Motorola Solutions, Inc., (f.k.a. Motorola, Inc.), and BRIAN M. KOIDE, Crowell & Moring LLP, 

of Washington, DC, for defendant-appellees, Sprint 

Nextel Corporation and Helio, LLC, and MICHAEL M.

MARKMAN and ROBERT J. WILLIAMS, Covington & Burling 

LLP, of San Francisco, California, for defendant-appellee 

Palm, Inc., 

GEORGE F. PAPPAS, Covington & Burling, LLP, of 

Washington, DC, argued for defendants-appellees 

Clickatell (PTY) LTD., Yahoo!, Inc. and Microsoft Corporation. With him on the brief were PETER A. SWANSON, 

ERICA N. ANDERSEN, for defendant-appellee, Microsoft 

Corporation, and ADAM R. ALPER, Kirkland & Ellis, LLP, 

of San Francisco, California, for defendant-appellee, 

Yahoo!, Inc. Of counsel were STEFANI E. SHANBERG and 

ROBIN L. BREWER, Wilson Sonsini Goodrich & Rosati, of 

Palo Alto, California, for defendant–appellee Clickatell 

(PTY) Ltd. 

JONATHAN E. RETSKY, Winston & Strawn LLP, of Chicago, Illinois, ANDREW R. SOMMER and CYRUS T.

FRELINGHUYSEN, of Washington, DC. for Intervenor 

Motorola Mobility, Inc. 
TECHNOLOGY PATENTS v. DEUTSCHE 12

__________________________ 

Before BRYSON, PROST, and REYNA, Circuit Judges. 

BRYSON, Circuit Judge. 

On November 8, 2007, Technology Patents LLC 

(“TPL”) sued more than 100 domestic and foreign defendants for infringement of U.S. Patents No. 6,646,542 (“the 

’542 patent”) and No. RE39,870 (“the ’870 patent”). The 

allegations concerning the ’542 patent were subsequently 

withdrawn, so only the ’870 patent is at issue in this 

appeal. The defendants can be classified into three 

groups: (1) the domestic carriers and handset companies, 

including AT&T, T-Mobile, Sprint, Motorola, and others 

(collectively, “the domestic carriers”); (2) the software 

providers, including Microsoft, Yahoo, and Clickatell 

(collectively, “the software providers”); and (3) the foreign 

carriers, including T-Mobile operating in various countries, Vodaphone operating in various countries, and 

many others (collectively, “the foreign carriers”). 

The district court dismissed the case against the foreign carriers for lack of personal jurisdiction, and it 

granted summary judgment of noninfringement in favor 

of the domestic carriers and the software providers, but 

on separate grounds. TPL appeals from all three orders. 

We reject TPL’s request that we reinstate the claims 

against the domestic carriers and the foreign carriers; as 

to the claims against the software providers, we affirm 

the district court’s order in part and vacate that order in 

part, and we remand to the district court for further 

proceedings on that aspect of the case. 
13 TECHNOLOGY PATENTS v. DEUTSCHE

I 

The ’870 patent describes a “global paging system 

utilizing a land-based packet-switched digital data network (e.g. the Internet) and a feature for permitting 

subscribers to remotely designate countries in which they 

are, or expect to be, located.” ’870 patent, col. 1, ll. 16-19. 

The patent asserts that the prior art was deficient because it did not fulfill the need for a cheap and efficient 

global paging system that allows users who expect to 

receive messages or pages abroad to “remotely input 

country designations in which they are to be paged.” Id., 

col. 2, ll. 33-35. In criticizing the prior art, the patent 

disparages automatic roaming, noting that “other than 

the roaming feature, the receiving user cannot input into 

the system designated country locations where he or she 

expects to be in the future [and] the roam feature is 

undesirable and expensive.” Id., col. 2, ll. 22-31. The 

patent further states, “[I]t would be desirable to not 

require the callee’s cellular phone to continuously have to 

update the system via roaming, for example, as to its 

location, as this is expensive and inefficient.” Id., col. 2, 

ll. 47-50. 

The district court accurately described how the invention of the ’870 patent sought to cure the deficiencies of 

the prior art: 

The ’870 Patent solved this problem by claiming a system which allows for paging of the receiving user (“RU”) in countries where the RU “may 

be located,” as per a list input by the RU. (See, 

e.g., id. at 10:14-20.) A general description of the 

system follows. The RU must set up a list of 

countries that “he or she wishes to be reachable in 

by way of the paging system,” and these are the 
TECHNOLOGY PATENTS v. DEUTSCHE 14

only countries where the RU can be paged. (Id. at 

6:22-24.) When traveling, the RU may designate 

the country where he or she is located. (Id. at 

6:29-50.) To contact the RU, the originating user 

(“OU”) contacts the “paging gateway” through the 

public-switched telephone network (“PSTN”) or 

email and inputs the RU’s “pager ID” along with a 

“paging message.” (Id. at 3:54-57.) The system 

then checks for the RU’s country designation, and 

pages the RU in that country, if access is possible. 

(Id. at 5:23-30.) If the RU’s pager cannot be accessed in the designated area, or if the RU has not 

designated a country, the originating server retrieves the previously input country list, attempts 

to page the RU at the first country on the list, and 

if unsuccessful, proceeds to attempt to page the 

RU at the second country on the list, and if unsuccessful, continues through the list, a certain number of times. (Id. at 5:53-60, col.8:13-20) Once the 

system reaches the RU, a website or server 

transmits the message through a land-based digital data network (e.g. the Internet) to the RU’s 

device. (Id. at 5:53-64.) 

Claim 4, the only independent claim asserted against 

the domestic carriers, recites: 

4. A system for paging a receiving user in a country-selective paging system, comprising: 

a paging system spanning a plurality of different countries of the world, the paging system 

including a plurality of servers, and wireless 

transmitters in different countries for transmitting paging messages to receiving users; 
15 TECHNOLOGY PATENTS v. DEUTSCHE

at least a packet-switched digital data network 

interconnecting servers so as to permit digital 

communication of signals between the plurality 

of servers via at least the packet-switched digital data network; 

a first website or server located in a first country for allowing an originating user to page the 

receiving user who may be located in a second 

country different from the first country, the 

originating user not necessarily knowing what 

country the receiving user is located in; 

wherein the paging system determines if the 

second country is currently designated by the 

receiving user as a designated country in which 

the paging system is to attempt to page the receiving user; 

when the paging system determines that the 

second country has been designated by the receiving user, means for sending a paging communication via at least the packet-switched 

digital data network to a second website or 

server, the second website or server being in 

communication with a wireless transmitter located in the second country, and wherein the 

paging communication causes the second website or server to initiate paging the receiving 

user via the wireless transmitter in the second 

country; and 

when the paging system determines that the 

second country has not been designated by the 

receiving user, the paging system initiates paging operations in another country in a prede-
TECHNOLOGY PATENTS v. DEUTSCHE 16

termined order in an attempt to page the receiving user. 

And claim 11, which is representative of the claims asserted against only the software providers, recites: 

11. A system for paging a receiving user via a 

website and a digital data network, comprising: 

a) a website for receiving a paging signal from 

an originating user, the originating user being located in a first country and the paging 

signal including a device ID of the receiving 

user and a paging message to be sent to the 

receiving user; 

b) means for designating a second country, from 

a plurality of potential countries, in which 

the receiving user is to be paged, by using 

country data; 

c) means for transmitting the paging message 

over at least a digital data network to a computer, the computer being in communication 

with a wireless transmitter that is located in 

the designated second country; 

d) the computer causing the wireless transmitter located in the second country to page the 

receiving user; 

and wherein said designating by the means for 

designating in b) is carried out by the originating user when the originating user electronically messages the website, the 

originating user inputting the country data 
17 TECHNOLOGY PATENTS v. DEUTSCHE

to the website to designate the second country. 

On August 29, 2008, the district court granted the 

foreign carriers’ motion to dismiss for lack of personal 

jurisdiction. The court found that the foreign carriers did 

not have sufficient “minimum contacts” with the State of 

Maryland or with the United States as a whole to be 

subject to personal jurisdiction in the forum. 

Almost two years later, on August 25, 2010, the district court issued a claim construction order construing 

dozens of claim terms. Several weeks later, the court 

granted summary judgment in favor of the software 

providers. The court held that TPL’s infringement contentions required multiple actors and that TPL had failed 

to produce evidence sufficient to satisfy the proof requirements for joint infringement. 

On August 4, 2011, the district court granted summary judgment of noninfringement to the domestic carriers. The court explained its ruling as follows: 

[TPL’s] description of the accused system simply 

does not even resemble [the asserted independent 

claim], much less literally match it. In all of the 

scenarios provided by [TPL], it is the receiving 

handset, not the RU, that inputs the country code 

into the Defendants’ system. In manual mode, all 

the RU does is select a carrier. In automatic 

mode, the RU does not even do this much: instead 

of selecting a particular network carrier from a 

list, the RU simply clicks “automatic,” at which 

point the handset selects a carrier without any 

further input from the RU. 
TECHNOLOGY PATENTS v. DEUTSCHE 18

On appeal, TPL presents several arguments, including: (1) the district court erroneously construed several 

claim terms; (2) the district court erroneously granted 

summary judgment of noninfringement to the domestic 

carriers; (3) the district court erroneously granted summary judgment of noninfringement to the software providers; and (4) the district court erroneously dismissed 

the foreign carriers for lack of personal jurisdiction. 

II 

TPL first takes issue with the district court’s construction of several claim limitations. We address only 

the three limitations relevant to the district court’s summary judgment orders. 

A 

The term “receiving user” appears throughout the asserted claims. The district court construed the term to 

mean a person or party. TPL argues that “receiving user” 

means “the combination of the person and the handset.” 

We disagree with TPL and affirm the district court’s 

construction. 

TPL rests its case on the distinction between an 

“originating user” and a “receiving user.” The patent 

states that “the term ‘originating user’ (OU) is used 

herein to describe the person or party who originates a 

page or cellular phone call, i.e. the one who desires to 

page or call the receiving user.” ’870 patent, col. 3, ll. 50-

52. The patent also states that “[t]he term ‘receiving user’ 

(RU) is used herein to define the recipient of a page or 

cellular phone call.” Id., col. 3, ll. 47-50. TPL argues that 

because the patent explicitly defines the originating user 

as a “person or party” but does not use that language with 
19 TECHNOLOGY PATENTS v. DEUTSCHE

respect to the receiving user, a receiving user is not so 

limited. For support, TPL relies on dictionary definitions 

for the terms “recipient” and “one,” even though those 

terms do not appear in the claim language at issue. 

The intrinsic evidence rebuts TPL’s argument. The 

text of the patent makes clear that the term “receiving 

user” does not refer to a person-pager combination. First, 

the written description repeatedly describes the “receiving 

user” as either male or female, clearly contemplating that 

the receiving user is a person. E.g., ’870 patent, col. 6, ll. 

17-19 (“When the subscriber or RU first subscribes . . . he 

or she is assigned a pager # . . . .”); col. 6, ll. 20-21 (“the 

subscriber or RU inputs his or her ‘list’ of countries”); col. 

6, ll. 28-30 (“the RU at 35 lists the countries in the order 

he or she wishes that they be accessed”). 

Second, the specification repeatedly refers to the receiving user as possessing things. In fact, the specification on numerous occasions states that the receiving user 

possesses a pager, demonstrating that the receiving user 

and the pager are distinct entities. The phrase “receiving 

user’s pager” or the equivalent appears in the specification more than a dozen times. E.g., ’870 patent, col. 6, ll. 

56-57 (“the RU’s pager . . . acknowledges receipt of a 

page”); col. 7, line 67, through col. 8, line 1 (“the RU’s 

pager indicates receipt”); col. 3, ll. 7-8 (“pager of the 

receiving user”). The claims themselves even differentiate between the receiving user and the pager. E.g., id., 

claim 1 (“transmitting a paging message to a pager of the 

receiving user”); claim 23 (referring to “a device of the 

receiving user”). Those references make clear that a 

receiving user is not a person-pager combination because, 

if it were, it would make no sense to refer to the receiving 

user as possessing a pager. 
TECHNOLOGY PATENTS v. DEUTSCHE 20

Third, the patent uses the terms “receiving user” and 

“subscriber” interchangeably. E.g., ’870 patent, col. 6, ll. 

14-15 (“illustrating how a subscriber (RU) subscribes to 

the pager system”). A subscriber is a person, not a person-device combination. 

TPL argues that claims 6, 31, and 39 prove that its 

position is correct, but in fact those claims support the 

district court’s construction. Claim 6 contains the limitation “means for the receiving user confirming receipt of a 

paging message.” Claim 31 contains nearly identical 

language. The parties agree that the corresponding 

structure for that limitation is a pager. The clear implication of the claim language is that a receiving user uses a 

pager to confirm receipt of a paging message. It is unclear why TPL believes the “means for receiving” limitation supports its position, because if the receiving user 

were a person-pager combination, the combination would 

not need a “means for . . . confirming receipt.” If anything, that claim language makes clear that the pager and 

the receiving user are distinct from each other. TPL 

relies on claim 39 because it recites, “the receiving user . . 

. confirming receipt of a paging message.” Just as with 

claims 6 and 31, however, the receiving user may use a 

pager to confirm receipt. The ability of the receiving user 

to use a device to confirm receipt of a message does not 

establish that the receiving user must be a person-pager 

combination. TPL also relies on various other portions of 

the patent for support, such as references to the “device of 

the receiving user.” As discussed above, however, the fact 

that the receiving user possesses the pager tends to prove 

that the two are distinct: If the receiving user were a 

person-pager combination, there would be no need to 

reference the receiving user’s pager. Accordingly, we 

uphold the district court’s construction of the term “receiving user.” 
21 TECHNOLOGY PATENTS v. DEUTSCHE

B 

The phrase “initiates paging operations in another 

country in a predetermined order” appears in claim 4. 

The district court construed that phrase to mean “begins 

to page the receiving user in another country that is first 

in an ordered list of two or more countries created by the 

receiving user before the paging system determines 

whether any country has been designated.” The parties 

agree, and the patent makes clear, that the term “predetermined order” refers to an ordered list of countries in 

which the receiving user is to be paged if he fails to designate the country in which he is located. TPL argues that 

the ordered list need not be “created by the receiving 

user” as required by the district court’s construction. We 

disagree with TPL. 

TPL argues that the claim language itself does not require the ordered list to be created by the receiving user 

and that nothing in the specification limits the claim in 

that manner. It may be true that the “predetermined 

order” language itself does not specify who or what determines the order of the listed countries, but the claim 

language makes clear that someone or something determines that order. The only question is whether it is a 

person (the receiving user) or a device. TPL’s argument 

that the order need not be determined by the receiving 

user ignores a substantial amount of intrinsic evidence 

and the very purpose of the claimed invention. 

One of the primary purposes of the invention was to 

allow users to be paged only in countries that they selected, rather than in countries automatically selected by 

the devices they use. As noted above, in criticizing prior 

art systems, the patent states that, “other than the roaming feature, the receiving user cannot input into the 
TECHNOLOGY PATENTS v. DEUTSCHE 22

system designated country locations where he or she 

expects to be in the future; . . . the roam feature is undesirable and expensive.” ’870 patent, col. 2, ll. 22-31. The 

patent further states, “it would be desirable to not require 

the callee’s cellular phone to continuously have to update 

the system via roaming, for example, as to its location, as 

this is expensive and inefficient.” Id., col. 2, ll. 47-50. If 

the ordered list referred to by the “predetermined order” 

language of the claim did not need to be created by the 

receiving user, the claim would arguably cover the very 

roaming system that the patent criticized. 

Moreover, the patent makes clear that the ordered 

list, which dictates the “predetermined order” of the 

claim, is created by the receiving user. E.g., id., col. 6, ll. 

28-32 (“[T]he RU at 35 lists the countries in the order he 

or she wishes that they be accessed in the event that no 

country or area has been designated. In other words, in 

step 35 the RU lists his or her accessible countries in the 

order in which he or she is most likely to be in them.”); 

col. 6, ll. 20-21 (“the subscriber or RU inputs his or her 

‘list’ of countries to be serviced”); col. 2, ll. 34-37 (“receiving users . . . may remotely input a list of countries in 

which they desire paging services”). TPL’s proposed 

construction would remove the source of the predetermined order, which goes to the heart of the invention’s 

alleged improvement over the prior art. We therefore see 

no error in the district court’s construction of the term 

“predetermined order” or the phrase “initiates paging 

operations in another country in a predetermined order.” 

C 

Many of the asserted claims require the paging system to determine whether the receiving user has “designated” a country in which the system is to attempt to 
23 TECHNOLOGY PATENTS v. DEUTSCHE

page him. For example, claim 4 contains a limitation that 

recites, “wherein the paging system determines if the 

second country is currently designated by the receiving 

user.” The district court construed that limitation to 

mean, “wherein the paging system determines if the 

receiving user has input a selection of the second country.” In other words, the district court determined that a 

receiving user (i.e., a person, not a device) designates a 

second country by inputting a selection of that second 

country. TPL argues that the designation (or inputting) 

need not be done by the “person of the RU” but instead 

can be done automatically by the “pager of the RU.” In 

large part, this goes back to TPL’s contention that the 

receiving user is a person-pager combination—a contention that we have already rejected. 

On this issue, TPL points to two embodiments of the 

invention that allegedly show that the phone itself (“the 

pager of the RU”) designates a second country. First, it 

points to “an embodiment where the RU renews a designated country.” For support, TPL points to the following 

passage in the specification: 

As shown in step 39, designated country data input by the RU is automatically erased after a predetermined period of time (e.g. 30 days). When 

deletion occurs, the system automatically pages 

the RU and informs the RU that his/her designated country data has been deleted from the system. At this point in time, the RU may E-mail or 

call up any web site or server 9 in the paging system and either renew his designated country or 

enter a new designated country or coverage area. 

’870 patent, col. 7, ll. 5-13. Second, TPL relies on “an 

embodiment where the ‘RU’s designated country’ is auto-
TECHNOLOGY PATENTS v. DEUTSCHE 24

matically changed by the pager of the RU when the pager 

confirms receipt of a page.” TPL points to the following 

passage for support: 

When it is determined in step 79 that Z finally 

equals 0, the system stops attempting to page the 

RU in the designated country, and retrieves the 

RU’s list of service countries and performs pages 

therein a predetermined number of times as discussed above in step 81. In step 81, the paging 

systems [sic] continues to page the RU in his 

listed countries until either receipt of the page is 

confirmed 83, or until the process has been performed a predetermined number of times. If the 

page is confirmed, the subscriber is billed accordingly in step 75. According to certain alternative 

embodiments, if a page is confirmed 83 during the 

step 81 process, then in step 75 the RU’s designated country may be automatically changed so as 

to correspond to the country or coverage area in 

which the page was confirmed at 83. After step 

75, the transaction is ended 85. 

Id., col. 8, ll. 20-35. TPL argues that in the first embodiment (the renewal embodiment), “the person of the RU 

designates the country,” whereas in the second embodiment (the automatic embodiment), “the pager of the RU 

designates the country when sending a confirmation 

signal.” 

TPL’s argument is not persuasive. It is clear in both 

embodiments that the receiving user (the person, not the 

device) must designate a country in order for anything to 

happen. Nothing in either of those passages suggests 

that the receiving user is a device, rather than a person. 

TPL admits as much with respect to the first embodi-
25 TECHNOLOGY PATENTS v. DEUTSCHE

ment. Appellant’s Br. at 49 (“In the renewal embodiment, 

the person of the RU designates the country . . . .”). With 

respect to the second embodiment, TPL claims that the 

“pager of the RU” designates the country. In order to 

receive a page in the first place, however, the receiving 

user must have created an ordered list or manually 

designated a country. Figure 5 of the ’870 patent confirms that requirement: 
TECHNOLOGY PATENTS v. DEUTSCHE 26

The figure shows that the automatic updating of block 75 

occurs only after (1) the receiving user has designated a 

country (block 65); (2) the paging system cannot find the 

receiving user in that designated country (blocks 73, 77, 

79); (3) the paging system retrieves the receiving user’s 
27 TECHNOLOGY PATENTS v. DEUTSCHE

list of service countries (block 81); and (4) the paging 

system receives a confirmation that the page was received 

in one of the countries that the user had previously input 

when he created his ordered list (block 83). ’870 patent, 

col. 7, line 54, through col. 8, line 2. Nothing in the figure 

suggests that the receiving user can be a device rather 

than a person. It is thus clear that to reach a point at 

which anything happens automatically, the receiving user 

(the person) has to input (designate) a country. 

In any event, even if the specification described a system in which the device could designate the country, the 

claims do not cover such a system. The claim limitation 

at issue expressly recites “designated by the receiving 

user.” Because, as we have determined, the receiving 

user is a person, and not a person-pager combination, it is 

clear that the designation must be done by a person. For 

those reasons, we affirm the district court’s construction. 

III 

TPL next argues that the district court erred in granting summary judgment of noninfringement to the domestic carriers and to the software providers. 

A 

TPL asserted independent claim 4 and dependent 

claims 5-8 of the ’870 patent against the domestic carriers. TPL contends that the domestic carriers infringe 

those claims even if we affirm the district court’s claim 

construction, as we have done. We disagree with TPL. 

The district court found that “[TPL’s] description of 

the accused system simply does not even resemble Claim 

4, much less literally match it.” As described above, the 
TECHNOLOGY PATENTS v. DEUTSCHE 28

claims asserted against the domestic carriers require that 

a receiving user designate a second country. If the system 

determines that no second country has been designated, it 

initiates paging operations in a predetermined order, 

based on an ordered list created by the receiving user of 

other countries in which the receiving user might be 

located. 

TPL’s theory of infringement relies heavily on the following image that TPL introduced into the summary 

judgment record: 

The image shows what happens in the accused systems 

when, for example, an American cell phone user takes a 

phone to Europe. The person (the receiving user) must 

select a carrier. The top of the image is clearly labeled 

“Carrier” (not “Country” or “Location”). Below “Carriers,” 

several options are listed. The receiving user can choose 

“Automatic,” which allows the phone to automatically 

choose a carrier. Otherwise, the receiving user can choose 

a specific carrier such as Swisscom, orange CH, etc. 

TPL’s theory of infringement is that when a receiving 

user selects one of the carriers, he has “designated” a 

second country, as required by the claims. Furthermore, 
29 TECHNOLOGY PATENTS v. DEUTSCHE

TPL asserts that when the receiving user selects a carrier, he also creates an ordered list because the selected 

carrier becomes the first country in the list, and the 

receiving user’s home country (i.e., the United States) 

becomes the second country in the list, thereby satisfying 

the “predetermined order” requirement of the claims. The 

district court correctly found that TPL’s theory of infringement failed with respect to three claim limitations. 

First, the district court found that the accused products do not enable the receiving user to designate a country. It is clear that the accused products enable a 

receiving user to select only a carrier. The image provided by TPL shows that it is a carrier and not a country 

that is selected by the receiving user. It is true that some 

of the carriers have a country label within the name (e.g., 

“orange CH,” where CH represents Switzerland; “O2 – de” 

where de represents Germany, etc.). But others do not 

(e.g., “E-Plus”). It is undisputed that the accused products do not allow a receiving user to select a country apart 

from a carrier. 

TPL argues that the carrier/country distinction is insignificant. The district court disagreed, and so do we. 

The specification and the claims make clear that the 

invention is concerned with the country in which the 

receiving user is located, not with the receiving user’s 

carrier. For instance, the abstract of the patent states 

that “the receiving user inputs a designated country . . . .” 

The patent notes that the “invention relates to [a system] 

. . . for permitting subscribers to remotely designate 

countries in which they are, or expect to be, located.” ’870 

patent, col. 1, ll. 15-19. The specification repeatedly 

makes references to the receiving user’s location. E.g., 

id., col. 1, ll. 59-61 (prior art systems “do not permit the 

subscriber to remotely select or designate countries in 
TECHNOLOGY PATENTS v. DEUTSCHE 30

which he or she will most likely be”); col. 2, ll. 32-37 (“It is 

apparent from the above that there exists a need in the 

art for a more efficient global paging system in which 

potential receiving users or subscribers may remotely 

input country designations in which they are to be paged, 

and/or may remotely input a list of countries in which 

they desire paging services.”). The claim language itself 

makes clear that it is the country in which the receiving 

user is located, not the carrier he is using, that is important: “A system for paging a receiving user in a countryselective paging system . . . knowing what country the 

receiving user is located in . . . .” Id., claim 4. 

If a receiving user were limited to selecting a carrier 

corresponding to the country in which he was located, 

TPL’s argument that the carrier/country distinction is 

insignificant would be stronger. However, the image 

provided by TPL shows multiple carriers and at least 

three different country abbreviations: orange CH and 

Swisscom correspond to Switzerland; O2 – de, T-Mobile D, 

and Vodaphone.de correspond to Germany; and FBouygues corresponds to France. The image thus demonstrates that a carrier based in one country can serve a 

receiving user in another. The receiving user could be 

located in, for example, France, but nevertheless select a 

carrier with a German or Swiss country code. That 

possibility reveals that the accused systems allow a 

receiving user to designate a carrier based on which 

carriers provide service at the receiving user’s location, 

regardless of what country that happens to be. The 

accused systems do not care where the receiving user is 

located, and they do not enable the receiving user to 

designate the country in which he is located, as contemplated by the claims; they only allow the receiving user to 

select a carrier. Therefore, the accused systems do not 
31 TECHNOLOGY PATENTS v. DEUTSCHE

satisfy the claim limitations requiring that a second 

country be “designated by the receiving user.” 

Second, the accused systems do not meet the “predetermined order” limitation of claim 4 because the accused 

systems do not enable the receiving user to create an 

ordered list. TPL argues that the receiving user creates 

an ordered list when the receiving user selects a carrier. 

Essentially, TPL claims that when the receiving user 

selects a carrier, the system will page the user first in the 

home country of the selected carrier, and then in the 

United States. According to TPL, that constitutes the 

creation of an ordered list of two countries. We reject that 

argument. 

TPL’s own theory proves that the receiving user does 

not create anything, much less an ordered list of countries. As described above, the receiving user selects a 

carrier—nothing more. The patent provides a detailed 

description of how the ordered list is created: 

Then, or at the same time, the RU at 35 lists the 

countries in the order he or she wishes that they 

be accessed in the event that no country or area 

has been designated. In other words, in step 35 

the RU lists his or her accessible countries in the 

order in which he or she is most likely to be in 

them. For example, if the RU spends most of his 

time in the U.S. and Japan, the next most amount 

of time in France, some time in the U.K., Spain, 

Brazil, and Australia, and very little time in Mexico, the RU would likely, in step 35, list his/her 

countries in the following order: 

1. United States 

2. Japan 

3. France 
TECHNOLOGY PATENTS v. DEUTSCHE 32

4. Spain 

5. United Kingdom 

6. Brazil 

7. Australia 

8. Mexico 

Given such a list, the RU may only be paged in 

these eight countries. 

’870 patent, col. 6, ll. 28-49. TPL has provided no evidence that the accused systems follow a procedure resembling that description in any way. 

Even if the accused systems can be viewed as creating 

an ordered list of two countries when the receiving user 

selects a carrier, it is undisputed that the receiving user 

cannot predetermine the order or the content of the list. 

The receiving user has no control over the fact that the 

United States is the second country in the list. Yet, as the 

patent makes clear, the essential purpose of the ordered 

list is to allow the receiving user to list countries of his 

choice in which he can be paged: “the RU lists his or her 

accessible countries in the order in which he or she is 

most likely to be in them. . . . Given such a list, the RU 

may only be paged in [the listed] countries.” ’870 patent, 

col. 6, ll. 31-49. Indeed, the patent implies that being able 

to choose the countries in which the receiving user would 

like to be paged, and to exclude those in which he does not 

wish to be paged, is an important feature of the claimed 

invention: “In other words, the RU may not be paged in a 

country or coverage area unless that country is listed in 

step 33.” Id., col. 6, ll. 24-25. In the accused systems, the 

receiving user has no control over the selection of the 

United States as a country in the alleged list, nor does he 

have control over the order of the alleged list. Accordingly, we agree with the district court that the accused 
33 TECHNOLOGY PATENTS v. DEUTSCHE

systems do not satisfy the “predetermined order” requirement of the asserted claims. 

Third, we agree with the district court’s conclusion 

that the accused systems do not “determine[] if the second 

country is currently designated by the receiving user,” as 

required by the asserted claims. As noted, the claimed 

invention contemplates two methods by which the receiving user can be contacted: a primary and a fallback. The 

primary method involves designation of the receiving 

user’s country by the receiving user. If the claimed invention “determines” that a country has been designated by 

the receiving user, it contacts the user in that country. If 

the claimed invention “determines” that a second country 

has not been designated, it resorts to the second method, 

which involves paging the receiving user according to an 

ordered list. Which method the system uses depends on 

whether the receiving user has “designated” a country. 

The system must therefore “determine” whether such a 

designation has been made before deciding how to page 

the receiving user. 

As described above, however, the accused systems allow the receiving user to perform only a single action: 

selecting a carrier. TPL’s theory requires the selection of 

the carrier to constitute both the act of designating the 

second country and the act of creating the ordered list, as 

TPL’s expert acknowledged: 

Q. So there’s no—just so I understand, there’s no 

difference that you can identify between the 

act of designating and the act of creating the 

ordered list? 

A: Off the top of my head, I don’t—I don’t think I 

can think of any, no. 
TECHNOLOGY PATENTS v. DEUTSCHE 34

If the act of selecting a carrier constitutes both designating a country and creating an ordered list, then the accused systems have nothing to determine; they have only 

one way to page the receiving user. Put simply, TPL has 

failed to show that the accused systems “determine” 

which of two methods should be used to contact the receiving user because TPL has not shown that the accused 

systems are capable of using alternative methods. Based 

on the evidence presented, it appears that the accused 

systems page the receiving user by a single method; there 

is no “determination” to be made. Accordingly, we affirm 

the district court’s finding that the accused products do 

not literally infringe the asserted claims. 

We also reject TPL’s doctrine of equivalents argument. As described above, the distinction between selecting a carrier and selecting a country is not insignificant in 

the context of this patent. The patent is concerned with 

allowing the receiving user to select a country in which he 

is located or to create a list of countries in which he 

expects to be located. In contrast, the accused systems do 

not provide for designation of the country in which the 

receiving user is located; they provide only for designation 

of the carrier serving the receiving user’s location. That is 

a fundamental difference between the accused systems 

and the claimed invention that goes to the heart of the 

claimed invention. Applying the doctrine of equivalents 

would bypass each of the claim limitations described 

above, i.e., “second country . . . designated by the receiving user,” “predetermined order,” and “determines if the 

second country is currently designated by the receiving 

user.” In sum, as the district court observed, the accused 

systems “do[] not even resemble” the claimed invention, 

so the doctrine of equivalents has no application in this 

case. 
35 TECHNOLOGY PATENTS v. DEUTSCHE

A final, related issue concerns the district court’s denial of TPL’s motion to amend its claim charts “as futile.” 

TPL argues that “[t]he district court’s denial . . . should be 

reversed/vacated as a function of the reversal/vacation of 

summary judgment in favor of AT&T et al.” Because we 

have affirmed the judgment in favor of the domestic 

carriers, we need not address that issue. 

B 

TPL asserted claims 4-6, 8-9, 11-18, and 21-35 against 

the software providers. The district court granted summary judgment of noninfringement to the software providers with respect to all the asserted claims. 

Claims 4-6, 8-9, 13, 15-18, 25, and 29-35 all contain 

one or more of the claim limitations discussed above with 

respect to the domestic carriers (i.e., “second country 

. . . designated by the receiving user,” “predetermined 

order,” and “determines if the second country is currently 

designated by the receiving user”). Because TPL has not 

produced sufficient evidence that the accused systems are 

even capable of meeting those limitations, the software 

providers cannot infringe them. With respect to those 

claims, we affirm the district court’s grant of summary 

judgment of noninfringement on that basis. 

Claims 11, 12, 14, 21-24, and 26-28 do not contain 

those claim limitations. The district court found that 

TPL’s contentions with respect to those claims failed 

because those claims require multiple actors and TPL 

failed to show that the defendants have direction or 

control over the end users. In so ruling, the district court 

relied on this court’s cases involving “joint” or “divided” 

infringement. See BMC Resources, Inc. v. Paymentech, 

L.P., 498 F.3d 1373 (Fed. Cir. 2007); Muniauction, Inc. v. 
TECHNOLOGY PATENTS v. DEUTSCHE 36

Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). Although 

this court has recently revisited the issue of divided 

infringement in the en banc decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372 et al. 

(Fed. Cir. Aug. 31, 2012), that decision does not affect our 

analysis because claims 11, 12, 14, 21-24, and 26-28 do 

not present an issue of joint or divided infringement. 

That is because, contrary to the district court’s ruling, 

those claims do not require performance by multiple 

actors. Representative claim 11 requires action only by 

the originating user, and TPL’s claim charts for each of 

the listed claims do not require multiple actors. Furthermore, TPL appears to have raised a single-actor 

theory in an August 4, 2008, opposition to a motion to 

dismiss. In that pleading, TPL argued that “[t]he sender 

puts the invention into action or service, and controls the 

transmission of messages.” TPL cited NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1313-17 (Fed. Cir. 

2005), for support. In that case, we noted that “[t]he 

ordinary meaning of ‘use’ is to ‘put into action or service.’” 

Id. at 1317. And in Centillion Data Sys., LLC v. Qwest 

Communications International, Inc., 631 F.3d 1279, 1284 

(Fed. Cir. 2011), we held that “to ‘use’ a system for purposes of infringement, a party must put the invention into 

service, i.e., control the system as a whole and obtain 

benefit from it.” Importantly, we noted that the user does 

not necessarily need to “have physical control over” all 

elements of a system in order to “use” a system. Id. at 

1284. Accordingly, we vacate the district court’s judgment with respect to claims 11, 12, 14, 21-24, and 26-28. 

On remand, the court should consider whether TPL has 

produced sufficient evidence to create a genuine dispute 

as to any material fact with respect to infringement of 

those claims. 
37 TECHNOLOGY PATENTS v. DEUTSCHE

Moreover, unless the software providers are barred 

from raising the argument at the district court for some 

reason, the district court may also consider the software 

providers’ argument that “TPL has no evidence that 

Clickatell and Yahoo!’s users designate the country ‘in 

which [the] receiving user [i.e., the Cellular Customer] is 

to be paged.” That argument was raised for the first time 

on appeal as an alternative ground of affirmance. Because it was not raised previously, we decline to address 

it. The issue is most appropriately considered in the first 

instance by the district court. 

IV 

The district court dismissed the claims against the 

foreign carriers for lack of personal jurisdiction. The 

court held that it lacked personal jurisdiction over the 

foreign carriers under Fed. R. Civ. P. 4(k)(1) because 

Maryland’s long-arm statute does not confer jurisdiction 

over the foreign carriers. It further held that even if 

Maryland’s long-arm statute conferred personal jurisdiction over the foreign carriers, personal jurisdiction could 

not be exercised over those defendants consistent with 

due process because the foreign carriers do not have 

sufficient “minimum contacts” with the State of Maryland. The district court also held that it lacked personal 

jurisdiction over the foreign carriers under Fed. R. Civ. P. 

4(k)(2), referred to as the “federal long-arm statute,” 

Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. 

Medico, 563 F.3d 1285, 1290 (Fed. Cir. 2009), because the 

foreign carriers do not have sufficient contacts with the 

United States as a whole such that the exercise of personal jurisdiction over them would comport with due 

process. 
TECHNOLOGY PATENTS v. DEUTSCHE 38

TPL argues that the district court’s ruling on personal 

jurisdiction was erroneous and that, in any event, the 

court should have permitted TPL to conduct jurisdictional 

discovery. In light of our ruling on the summary judgment granted to the domestic carriers, it is unnecessary 

for us to reach the question whether the foreign carriers 

were properly before the district court under either subsection of Fed. R. Civ. P. 4(k). The allegations against the 

foreign carriers in the complaint make clear that TPL’s 

theory of infringement with respect to the U.S. activities 

of the foreign carriers depends on the foreign carriers’ 

“roaming agreement” contracts with domestic carriers. 

TPL alleges that those agreements enable the customers 

of the foreign carriers to use the services of the domestic 

carriers to send and receive messages in the United 

States, “thereby infringing the patents in suit,” and that 

the roaming agreements make the foreign carriers jointly 

liable for infringement with the domestic carriers. TPL 

acknowledges in its brief that the foreign carriers’ liability 

for infringement “arises directly from these messaging 

agreements/contracts” (TPL Br. at 14), which enable 

foreign carrier customers to use domestic carrier networks while traveling in the United States. That is, the 

infringement case against the foreign carriers necessarily 

depends on proof that the messaging services provided by 

the domestic carriers are infringing. As the foreign 

carriers put it in their brief, “the foreign carriers’ alleged 

infringement ‘piggybacks’ the U.S. carriers’ alleged infringement and occurs when the foreign carriers’ foreign 

subscribers travel to the United States and send a message.” TPL does not take issue with that characterization 

of its theory of infringement in its briefs, and it conceded 

at oral argument that there is “much overlap” between 

the claims against the domestic carriers and the claims 

against the foreign carriers; TPL added that depending on 

the rationale for the court’s ruling, a decision in favor of 
39 TECHNOLOGY PATENTS v. DEUTSCHE

the domestic carriers would dispose of the case against 

the foreign carriers as well. 

The rationale of the ruling in favor of the domestic 

carriers is that the messaging services that the domestic 

carriers offer (and that the customers of the foreign 

carriers are able to use pursuant to the roaming agreements) do not infringe. Based on TPL’s theory of infringement and the ground on which the district court 

ruled in favor of the domestic carriers, the district court’s 

determination that the domestic carriers do not infringe 

the ’870 patent necessarily means that the foreign carriers also do not infringe. Our ruling sustaining the district 

court’s decision in favor of the domestic carriers thus 

dooms TPL’s claim of infringement against the foreign 

carriers as well. For that reason, it is unnecessary for us 

to decide whether the district court was correct in dismissing the case against the foreign carriers for lack of 

personal jurisdiction.1

 1 A federal court generally may not rule on the merits of a case without first determining that it has jurisdiction over the subject matter and the parties. Sinochem 

Int’l Co. v. Malaysian Int’l Shipping Co., 549 U.S. 422, 

430-31 (2007). In a case such as this one, however, where 

the court plainly has subject matter jurisdiction and has 

personal jurisdiction over the domestic carriers, and 

where the merits issues are the same for both the domestic and foreign carriers, it is permissible for the court to 

address the merits of the claims against the foreign 

carriers before addressing the issue of personal jurisdiction as to those defendants. See Chevron Corp. v. Naranjo, 667 F.3d 232, 246 n.17 (2d Cir. 2012). We have 

already ruled in favor of the domestic carriers on the 

merits, so even if we were to hold that the district court 

has personal jurisdiction over the foreign carriers, the 

consequence would be to reinstate the plaintiff’s claims 

against those defendants only to have them promptly 

dismissed on the merits. 
TECHNOLOGY PATENTS v. DEUTSCHE 40

V 

In sum, we hold that the district court properly 

granted summary judgment of noninfringement to the 

domestic carriers and that the judgment against the 

domestic carriers applies equally to the foreign carriers; 

we affirm the district court’s grant of summary judgment 

of noninfringement to the software providers with respect 

to claims 4-6, 8-9, 13, 15-18, 25, and 29-35, but we vacate 

the district court’s grant of summary judgment of noninfringement to the software providers with respect to 

claims 11, 12, 14, 21-24, and 26-28 and remand those 

claims for proceedings consistent with this opinion. 

Costs are awarded to the domestic carriers and the 

foreign carriers. As to the claims against the software 

providers, all parties shall bear their own costs for this 

appeal. 

AFFIRMED IN PART and VACATED AND 

REMANDED IN PART