United States Court of Appeals 

for the Federal Circuit 

__________________________ 

ENOVSYS LLC, 

Plaintiff-Appellee, 

v. 

NEXTEL COMMUNICATIONS, INC., NEXTEL OF 

CALIFORNIA, INC., 

NEXTEL COMMUNICATIONS OF THE MIDATLANTIC, INC., 

NEXTEL OF NEW YORK, INC., NEXTEL SOUTH 

CORPORATION, 

NEXTEL OF TEXAS, INC., NEXTEL WEST CORP., 

SPRINT NEXTEL CORPORATION, SPRINT 

COMMUNICATIONS COMPANY L.P., 

SPRINT SPECTRUM L.P., AND SPRINT 

SOLUTIONS, INC., 

Defendants-Appellants. 

__________________________ 

2009-1167 

__________________________ 

Appeal from the United States District Court for the 

Central District of California in case no. 06-CV-5306, 

Judge Ronald S.W. Lew. 

__________________________ 

Decided: August 3, 2010 

__________________________ 
ENOVSYS v. NEXTEL COMMUNICATIONS 2

GREGORY S. DOVEL, Dovel & Luner LLP, of Santa 

Monica, California, argued for plaintiff-appellee. With 

him on the brief was JOHN JEFFREY EICHMANN. 

DONALD R. DUNNER, Finnegan, Henderson, Farabow, 

Garrett & Dunner, L.L.P., of Washington, DC, argued for 

defendants-appellants. With him on the brief was 

ANDREW J. VANCE. 

__________________________ 

Before NEWMAN, BRYSON, and PROST, Circuit Judges. 

Opinion for the court filed by Circuit Judge PROST. 

Opinion concurring-in-part, dissenting-in-part filed by 

Circuit Judge NEWMAN. 

PROST, Circuit Judge. 

In this patent infringement case, we begin by deciding 

the effect of a state-court divorce decree on a patent 

owner’s standing to sue. Because we conclude that the 

patent owner Enovsys LLC (“Enovsys”) had standing, we 

reach the challenged claim constructions. 

The allegations of infringement are based on two inventions that use global positioning satellites (“GPS”) and 

ground control stations to determine the physical location 

of mobile devices, like pagers and cellular telephones. 

Depending on the security settings chosen by the user, 

the invention selectively discloses the physical location of 

the mobile device to certain users or entities, while blocking disclosure to others. Entities that might request a 

mobile device’s location include programs that provide 

driving directions, updates on local weather, and restaurant suggestions. Enovsys brought this suit against 

Sprint Nextel Corporation and its various subsidiaries 

(collectively “Sprint Nextel”), contending that Sprint 
3 ENOVSYS v. NEXTEL COMMUNICATIONS

Nextel’s iDEN and CDMA wireless networks infringed 

two patents covering these inventions. After a nine-day 

trial, the jury found Sprint Nextel infringed both patents 

and awarded approximately $2.78 million in damages. 

The district court then denied Sprint Nextel’s renewed 

motion to dismiss the case for lack of standing, motions 

for judgment as a matter of law (“JMOL”), and motions 

for a new trial. 

Sprint Nextel now appeals. According to Sprint 

Nextel, this case should have ended long ago, because 

Enovsys is not the sole owner of the asserted patents and 

failed to join the other (alleged) part owner, Fonda Whitfield (“Whitfield”). Whitfield is the ex-wife of Mundi 

Fomukong (“Fomukong”); Fomukong is the manager of 

Enovsys and one of the patents’ co-inventors. Sprint 

Nextel also argues that it is entitled to JMOL under the 

correct construction of various claim terms in the patents. 

We affirm. The ownership issue, and thus the question of standing, is resolved by a state-court judgment—

namely, a California divorce decree. Giving this divorce 

decree the preclusive effect required, we conclude that 

Whitfield had no ownership interest in the asserted 

patents at the time this case was filed, or anytime thereafter. At all relevant times, Enovsys alone owned both 

patents. Accordingly, Enovsys had standing to bring and 

maintain this suit without joining Whitfield. On the 

merits, we affirm the challenged claim constructions. 

BACKGROUND

Mundi Fomukong is manager and part owner of 

Enovsys. He is also the co-inventor of the two patents 

asserted in this case, U.S. Patent No. 5,918,159 

(“’159 patent”) and U.S. Patent No. 6,560,461 (“’461 
ENOVSYS v. NEXTEL COMMUNICATIONS 4

patent”). Before conceiving of the inventions claimed in 

these patents, Fomukong married a woman named Fonda 

Whitfield in California. Fomukong and Whitfield were 

still married in 1997, when Fomukong and his co-inventor 

filed a patent application that later issued as the ’159 

patent. Two years later, Fomukong and his co-inventor 

filed a second patent application that issued as the ’461 

patent. This second application was styled as a continuation-in-part of the ’159 patent. 

The ’159 patent issued in 1999. Approximately two 

years later, Fomukong and Whitfield filed for divorce in 

California. There are two different ways of getting a 

divorce in California, regular dissolution or summary 

dissolution. In a regular dissolution, either party may 

request a hearing or trial to settle disputed issues. Either 

party may appeal the court’s decision or request a new 

trial. Summary dissolution, by contrast, is California’s 

version of a quickie divorce. In a summary dissolution, 

there is no hearing or trial before a judge. Both parties 

give up their right to appeal the court’s decision, although 

either may later move to set aside the judgment for fraud, 

duress, accident or mistake.1 Cal. Fam. Code §§ 2400, 

2403, 2405. The streamlined summary dissolution procedure is only available to couples that meet certain requirements. Cal. Fam. Code § 2400. As relevant here, 

the couple must either (1) have no community property, or 

(2) have signed a property settlement agreement listing 

and dividing all community assets and liabilities. Any 

 1 A court may also set aside a summary dissolution 

judgment for “other grounds recognized at law or in 

equity.” Cal. Fam. Code § 2405; see also Cal. Civ. Proc. 

Code § 473. For example, a judgment must be set aside 

upon proof that the prerequisites for electing a summary 

dissolution procedure were not met. Cal. Fam. Code 

§ 2400. 
5 ENOVSYS v. NEXTEL COMMUNICATIONS

property settlement agreement must be attached to the 

couple’s petition for summary dissolution. Under California law, all assets acquired during a marriage are presumptively community property. Cal. Fam. Code §§ 65, 

760. Assets include any income earned or property created during the marriage. 

Fomukong and Whitfield divorced by summary dissolution. In November 2001, they filed an official California 

form titled “Joint Petition for Summary Dissolution of 

Marriage” with the Los Angeles Superior Court. In 

signing and filing this petition, Fomukong and Whitfield 

declared that they had read and understood the booklet 

California publishes on summary dissolutions, aptly titled 

the “Summary Dissolution Information booklet.” In 

response to the petition’s question about community 

property, Fomukong and Whitfield checked the box next 

to the statement, “We have no community assets or 

liabilities,” certifying that the statement was true under 

penalty of perjury. They left the other option unchecked. 

That option read: “We have signed an agreement listing 

and dividing all our community assets and liabilities and 

have signed all papers necessary to carry out our agreement. A copy of our agreement is attached to this petition.” Consistent with their declaration that they had no 

community property, Fomukong and Whitfield did not 

attach a property settlement agreement to their petition. 

Under California law, the filing of Fomukong and 

Whitfield’s joint petition for summary dissolution triggered a six-month waiting period. Cal. Fam. Code § 2403. 

During that period, either party could have stopped the 

divorce. See Judicial Council of Cal., Summary Dissolution Information Booklet, Form FL-810, § III, available at

http://www.courtinfo.ca.gov/forms/documents/fl810.pdf. 

To officially end the marriage, at least one of them had to 
ENOVSYS v. NEXTEL COMMUNICATIONS 6

ask the court to enter judgment of dissolution after the 

six-month period expired. Id.; see also Cal. Fam. Code § 

2403. In October 2002, Fomukong filed the requisite 

California form, titled “Request for Judgment, Judgment 

of Dissolution of Marriage, and Notice of Entry of Judgment” with the Los Angeles Superior Court. Whitfield’s 

signature also appears on the form. Judgment was entered in October 2002; notice of the judgment was mailed 

to both Fomukong and Whitfield. Fomukong and Whitfield’s divorce thus became final in October 2002. 

Several months after Fomukong and Whitfield’s divorce was finalized, the ’461 patent issued. Fomukong 

subsequently formed Enovsys for the purpose of managing patent-related licensing and litigation. In 2006, 

Fomukong and his co-inventor assigned their ownership 

interests in the ’159 and ’461 patents to Enovsys. Among 

the rights expressly assigned to Enovsys was the right to 

sue for past infringement. 

Enovsys subsequently filed this action against Sprint 

Nextel Corporation. Enovsys alleged that Sprint Nextel 

infringed claim 1 of the ’159 patent and claims 1, 2, 23, 25 

and 28 of the ’461 patent. The ’159 patent covers a system for determining the physical location, or global position, of a call receiver, such as a cellular telephone or 

pager, using a network of space satellites and ground 

stations. ’159 patent col.1 ll.53-55; see also id. at col.5 

ll.44-47. This system allows a subscriber to obtain location information using his cellular phone or pager. Alternatively, the network may provide some entities with the 

location of the call receiver, while blocking others from 

receiving that information. Id. at col.1 ll.55-60. 

The asserted claims of the ’461 patent cover systems 

for disclosing a mobile device’s physical location only to 
7 ENOVSYS v. NEXTEL COMMUNICATIONS

authorized requests. The invention maintains the security of a mobile device’s location data through two authorization steps, one at the network level, the other at 

the individual subscriber level. First, the system verifies 

that the source is “pre-authorized” to obtain location 

information from the network. ’461 patent col.4 ll.49-60; 

see also id. at col.11 ll.5-9. If the source is pre-authorized 

to access the network, the invention then determines 

whether the individual subscriber has authorized the 

network to disclose the mobile device’s location. This 

preference is stored on the network as a “location information disclosure instruction.” Based on this instruction, 

the invention either allows or blocks the request. If 

allowed, the invention obtains and sends the mobile 

device’s location. Otherwise, the invention sends a message that the request has been blocked. Id. at col.5 ll.4-

30. 

According to Enovsys, Sprint Nextel infringed these 

patents by selling “location-enabled devices and locationbased services.” Specifically, these “location-enabled 

devices and location-based services” were Sprint Nextel’s 

Integrated Digital Enhanced Network (“iDEN”) and Code 

Division Multiple Access (“CDMA”) systems. The iDEN 

and CDMA systems are separate wireless networks that 

use different technological standards to provide mobile 

devices, like cellular telephones, with a variety of services, such as voice communications, messaging, digital 

two-way radio, and data services. Sprint Nextel counterclaimed, seeking a declaratory judgment that the patents 

were invalid and unenforceable.

Sprint Nextel also moved to dismiss the case, arguing 

that Enovsys lacked standing to sue because it failed to 

join Whitfield, Fomukong’s ex-wife and co-owner of the 

patents-in-suit. According to Sprint Nextel, Whitfield 
ENOVSYS v. NEXTEL COMMUNICATIONS 8

acquired an ownership interest in the ’159 and ’461 

patents because Fomukong filed both patent applications 

during their marriage and patents are community property under California law. The district court denied 

Sprint Nextel’s motion to dismiss, concluding that 

Enovsys had full legal title to the patents and that any 

claims by Whitfield or Sprint Nextel had to be adjudicated 

first in California state court. 

After resolving the threshold question of its jurisdiction, the district court construed various terms in the ’159 

and ’461 patents. Two are relevant to this appeal: the 

“means to resolve” limitation in the ’159 patent and the 

“pre-authorized” limitation in the ’461 patent. 

In its entirety, claim 1 of the ’159 patent reads as follows: 

A satellite paging communication system with 

means to locate the global position of a call receiver unit comprising: 

space satellites and terrestrial stations, 

some of which are adapted for the purpose 

of transmitting paging information and 

some of which, are adapted for the purpose of transmitting positioning information; 

ground control stations for processing the 

said information and controlling the actions of the paging network; 

the call receiver or pager having means to 

resolve a global position from satellites or 

earth based communication means; 
9 ENOVSYS v. NEXTEL COMMUNICATIONS

the system divulging to certain or all callers the global location of a callee in possession of the said call receiver while 

blocking such information from being divulged to certain or all other callers. 

’159 patent col.8 ll.45-61 (emphasis added). 

The district court found that “means to resolve” in the 

’159 patent invoked 35 U.S.C. § 112, ¶ 6. The court then 

proceeded to determine that the claimed function was “to 

resolve a global position from satellite or earth based 

communication means.” Based on its examination of the 

specification, the court determined that the corresponding 

structure for this function was a “transceiver, connecting 

circuitry, CPU, satellite receiving means, terrestrial 

receiving means, decoders, and temporary storage.” 

Neither party objected to how the district court construed 

this means-plus-function limitation, or suggested a more 

specific definition of its structure was necessary. Sprint 

Nextel’s pre-trial briefs, proposed jury instructions, and 

pre-verdict JMOL were similarly devoid of any argument 

that the “connecting circuitry” portion of the structure 

should be limited to the specific embodiment in Figure 2 

of the ’159 patent. See ’159 patent col.5 l.48-col.6 l.5. 

The “pre-authorized” limitation appears in claims 11 

and 28 of the ’461 patent. Claim 11 reads as follows: 

A method for divulging or blocking the location information of a mobile remote receiving unit associated with a network comprising: 
ENOVSYS v. NEXTEL COMMUNICATIONS 10

i) receiving a request at the network for 

location information of the mobile remote 

receiving unit; 

ii) identifying the source of request; 

iv) verifying that the source of request is 

pre-authorized to access location information of the mobile remote receiving unit at 

the network; 

v) querying at the network for location information disclosure instruction for the 

mobile receiving unit; 

vi) using said instruction (v) to allow or 

block mobile remote receiving unit location information to the pre-authorized

source of request. 

’461 patent col.11 ll.1-16 (emphases added). 

Similarly, claim 28 reads on: 

A communication system comprising: 

a network of communication resources; 

a first communication resource able to establish its location information at the 

network; 

wherein at least a profile is maintained by 

the system, said profile containing the 

identity of a preauthorized resource, identity of the first communication resource 

and a location access field indicating 
11 ENOVSYS v. NEXTEL COMMUNICATIONS

whether said preauthorized resource identified in the profile should be allowed/disallowed to access the location 

information of the first communication resource identified in said profile; 

the system able to use the location access 

field of a first profile to deny the location 

information of the first communication resource to the preauthorized resource identified in said first profile while allowing 

another preauthorized resource identified 

in a second profile to access the location 

information of the first communication resource during the time that access is being 

denied to the preauthorized resource identified in said first profile. 

Id. at col.14 ll.6-27 (emphases added). 

The district court construed “pre-authorized” in both 

claims of the ’461 patent to mean “authorized to submit a 

request in advance of determining whether the request 

will be granted.” Sprint Nextel did not object to this 

definition. Similarly, at no time before or during the trial 

did Sprint Nextel ask the district court to clarify whether 

the preauthorization was for access to the network or only 

for access to a particular mobile device. 

At trial, the dispute with respect to the ’159 patent 

centered on whether Sprint Nextel’s iDEN system contained the structure corresponding to the “means to 

resolve” limitation. Enovsys presented the testimony of 

its expert, Dr. Christopher Rose (“Dr. Rose”). Dr. Rose 

opined that the handset used with the iDEN system 

contained “connecting circuitry,” which attached the 
ENOVSYS v. NEXTEL COMMUNICATIONS 12

handset’s computer to “all the various pieces,” thus allowing the handset to resolve its global position. Similarly, 

on cross-examination Sprint Nextel employee Kevin 

Butler (“Mr. Butler”) admitted that the central processing 

unit (“CPU”) in the handset had a means for receiving 

and decoding satellite signals to resolve the handset’s 

global position. Mr. Butler also testified that the handset’s CPU was connected with other circuitry in the phone 

by microscopic wires. In response, Sprint Nextel offered 

the testimony of its expert, Dr. Robert Stevenson (“Dr. 

Stevenson”). Dr. Stevenson opined that the iDEN system 

lacked connecting circuitry because it did not have the 

same circuitry shown in Figure 2 of the ’159 patent. On 

cross examination, however, Dr. Stevenson admitted that 

the district court’s claim construction was “fine” and did 

not limit “connecting circuitry” to what was shown in 

Figure 2 of the ’159 patent. 

With regards to the ’461 patent, the parties disputed 

whether Sprint Nextel’s iDEN and CDMA systems satisfied the “preauthorized” limitation in the asserted claims. 

On behalf of Enovsys, expert Dr. Rose opined that both 

systems required an entity requesting a mobile device’s 

location be “preauthorized” to submit the request because 

both the iDEN and CDMA systems require the requesting 

entity to provide a username and password to access their 

respective networks. Dr. Rose went on to explain that 

only those entities preauthorized to access the network 

could then request the location of a mobile device in that 

network. Enovsys also presented the deposition testimony of Sprint Nextel employee Thomas Moore (“Mr. 

Moore”). Mr. Moore discussed an example of an entity 

that requests users’ location data, an application called 

Location Studio. Mr. Moore testified that the iDEN 

network first checks whether Location Studio may access 

the network; only after confirming that the application is 
13 ENOVSYS v. NEXTEL COMMUNICATIONS

authorized to access the network is Location Studio then 

allowed to request a given user’s location information. 

The jury found that Sprint Nextel infringed claim 1 of 

the ’159 patent and claims 11 and 28 of the ’461 patent. 

The jury further found that both patents were not invalid. 

It awarded $1,664,036 in damages for the ’159 patent and 

$599,958 in damages for the ’461 patent. After trial, 

Sprint Nextel renewed its motion to dismiss. It also 

moved for post-verdict JMOL on the issue of infringement 

with respect to both patents. The district court denied 

Sprint Nextel’s motions and entered judgment for 

Enovsys. 

Sprint Nextel now appeals. We have jurisdiction under 28 U.S.C. § 1291. 

ANALYSIS

Whether a party has standing to bring and maintain 

suit is a question of law reviewed de novo. Labatt Food 

Serv., Inc. v. United States, 577 F.3d 1375, 1378-79 (Fed. 

Cir. 2009). Any related factual findings will be disturbed 

only if they are clearly erroneous. Id. 

Because reviewing denials of JMOL motions is an issue not unique to patent law, we apply the law of the 

regional circuit in which this appeal would otherwise lie. 

i4i Ltd. v. Microsoft Corp., 598 F.3d 831, 841 (Fed. Cir. 

2010). The Ninth Circuit reviews denial of JMOL motions 

de novo. Janes v. Wal-Mart Stores Inc., 279 F.3d 883, 886 

(9th Cir. 2002). A jury verdict “must be upheld if it is 

supported by substantial evidence . . . even if it is also 

possible to draw a contrary conclusion.” Pavavo v. Pagay, 

307 F.3d 915, 918 (9th Cir. 2002). In reviewing a verdict, 

the Ninth Circuit “disregard[s] evidence favorable to the 
ENOVSYS v. NEXTEL COMMUNICATIONS 14

moving party that the jury is not required to believe, and 

may not substitute its view of the evidence for that of the 

jury.” Id. (citing Johnson v. Paradise Valley Unified Sch. 

Dist., 251 F.3d 1222, 1227 (9th Cir. 2001)). 

In this case, whether JMOL was properly denied 

turns on whether the district court correctly construed 

certain claim terms. Claim construction is an issue of law 

we review de novo. Cybor Corp. v. FAS Techs., Inc. 138 

F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc). 

Because standing is a threshold jurisdictional issue, 

we address it first. 

I. Standing2

A party’s standing to sue for patent infringement derives from the Patent Act, which provides that “[a] patentee shall have remedy by civil action for infringement of 

his patent.” 35 U.S.C. § 281 (emphasis added). “Patentee” includes not only the party to whom the patent was 

issued, but also the successors in title to that party. 35 

U.S.C. § 100. When a patent is co-owned, a joint owner 

must join all other co-owners to establish standing. Israel 

Bio-Engineering Project v. Amgen, Inc., 475 F.3d 1256, 

1264-65 (Fed. Cir. 2007); see also Prima Tek II, LLC v. ARoo Co., 222 F.3d 1372, 1377 (Fed Cir. 2000); SiRF Tech., 

Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1325 (Fed. Cir. 

2010). 

 2 Enovsys had the right to sue for infringement occurring before the 2006 assignment because the assignment agreement stated that Fomukong and his coinventor were transferring their “right to sue and collect 

for past damages.” The agreement thus sufficiently 

manifested an intent to transfer this right. Minco Inc. v. 

Combustion Eng’g, 95 F.3d 1109, 1117 (Fed. Cir. 1996). 
15 ENOVSYS v. NEXTEL COMMUNICATIONS

In this case, we must decide whether Enovsys had 

standing to bring and maintain this suit without joining 

Fomukong’s ex-wife, Whitfield. This question turns on 

whether Whitfield had any ownership interest in the 

asserted patents at the time this suit was filed. See

MyMail, Ltd. v. Am. Online, Inc., 476 F.3d 1372, 1375-76 

(Fed. Cir. 2007); Paradise Creations, Inc. v. UV Sales, 

Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003). Before the 

district court, Sprint Nextel argued that Whitfield acquired an interest in the patents during her marriage to 

Fomukong and that this interest survived their subsequent divorce because the divorce decree did not adjudicate their community property rights. Enovsys countered 

that the question of ownership was conclusively determined by a valid state-court judgment, namely, 

Fomukong and Whitfield’s California divorce decree. In 

holding that Enovsys had standing, the district court gave 

effect to the judgment of dissolution, under which Whitfield retained no community property interest in the 

patents. For the following reasons, we agree. 

Who has legal title to a patent is a question of state 

law. Akazawa v. Link New Tech., 520 F.3d 1354, 1357 

(Fed. Cir. 2008); see also Int’l Nutrition Co. v. Horphag 

Research Ltd., 257 F.3d 1324, 1329-30 (Fed. Cir. 2001); 

Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 

1571 (Fed. Cir. 1997) (“It may seem strange at first blush 

that the question of whether a patent is valid and infringed ordinarily is one for federal courts, while the 

question of who owns the patent rights and on what terms 

typically is a question exclusively for state courts. Yet 

that long has been the law.”). Accordingly, we look to 

California law to determine who had an ownership interest in the patents after Fomukong and Whitfield’s divorce 

in 2002. 
ENOVSYS v. NEXTEL COMMUNICATIONS 16

Sprint Nextel is correct that under California law, all 

property acquired by a married person during marriage is 

presumed to be community property. Weingarten v. 

Superior Court, 102 Cal. App. 4th 268, 277 (Cal. Ct. App. 

2002). This presumption applies here, because Fomukong 

filed the applications for the ’159 and ’461 patents while 

he was married to Whitfield. See Lorraine v. Lorraine, 48 

P.2d 48, 54-55 (Cal. App. 3d 1935); see also In re Marriage 

of Worth, 195 Cal. App. 3d 768, 773 (Cal. Ct. App. 1987). 

Prior to the divorce, the patents were thus presumptively 

community property in which Whitfield had an undivided 

half-interest. 

That, however, is not the end of the story. Enovsys is 

correct that this presumption was overcome by what 

Fomukong and Whitfield declared in their joint petition 

for summary dissolution. Their petition affirmatively 

states that “we [Fomukong and Whitfield] have no community assets or liabilities.” Fomukong and Whitfield 

both signed this petition, affirming under penalty of 

perjury that this statement was true and correct. On the 

basis of this petition, a California court subsequently 

entered judgment of dissolution, finalizing the divorce. 

We now turn to the thornier issue of whether this statecourt judgment is entitled to preclusive effect. 

The preclusive effect of a state-court judgment in a 

subsequent federal lawsuit is generally determined by the 

full faith and credit statute, 28 U.S.C. § 1738. See Marrese v. Am. Acad. of Orthopaedic Surgeons, 470 U.S. 373, 

380 (1985); see also In re Nourbakhsh, 67 F.3d 798, 800 

(9th Cir. 1995); cf. Taylor v. Sturgell, 128 S. Ct. 2161, 

2171 (2008) (holding that the preclusive effect of a federal-court judgment is determined by federal common 

law). Section 1738 provides that state judicial proceedings “shall have the same full faith and credit in every 
17 ENOVSYS v. NEXTEL COMMUNICATIONS

court within the United States . . . as they have by law or 

usage in the courts of such State, Territory, or Possession 

from which they are taken.” Accordingly, we look to 

California law to determine the preclusive effect of 

Fomukong and Whitfield’s judgment of dissolution. See

Matsushita Elec. Indus. Co. v. Epstein, 516 U.S. 367, 375-

76 (1996). 

California law recognizes the doctrine of collateral estoppel (issue preclusion), which bars relitigation of issues 

decided in prior proceedings. Mycogen Corp. v. Monsanto 

Co., 51 P.3d 297, 301-02 (Cal. 2002); see also Ashe v. 

Swenson, 397 U.S. 436, 443 (1970); United States v. 

Bhatia, 545 F.3d 757, 759 (9th Cir. 2008). The doctrine of 

collateral estoppel applies if (1) the issue sought to be 

precluded from relitigation is identical to the issue decided in the earlier proceeding; (2) the issue was actually 

litigated in the former proceeding; (3) the issue was 

necessarily decided in the former proceeding; and (4) the 

person against whom collateral estoppel is asserted was a 

party, or in privity with a party, to the earlier proceeding. 

Lucido v. Superior Court, 795 P.2d 1223, 1225-26 (Cal. 

1990); see also Sutphin v. Speik, 99 P.2d 652, 655-56 (Cal. 

1940). In other words, a divorce decree is res judicata 

with respect to the issues that were adjudicated. Callnon 

v. Callnon, 46 P.2d 988, 990 (Cal. Dist. Ct. App. 1935). 

We hold that Fomukong and Whitfield’s California divorce decree is entitled to res judicata effect.3 Sprint 

Nextel seeks to relitigate Whitfield’s property rights in 

the patents, the same issue resolved by the state-court 

 3 The related doctrines of claim and issue preclusion are collectively referred to as res judicata. Taylor, 

128 S. Ct. at 2171. 
ENOVSYS v. NEXTEL COMMUNICATIONS 18

judgment of dissolution. Fomukong and Whitfield’s 

property rights were adjudicated by their summary 

dissolution because their joint petition put their property 

rights at issue. In a divorce proceeding, property rights 

are put at issue by (1) specific allegations describing such 

property, or by (2) an allegation that no community 

property existed. Callnon, 46 P.2d at 990 (citing Allen v. 

McCrary, 31 P.2d 388, 389 (Cal. 1934)). Fomukong and 

Whitfield alleged that they had no community property. 

The judgment of dissolution entered by the California 

court was based on this admission; under California 

Family Code § 2404, the judgment constituted a complete 

and final adjudication of Fomukong and Whitfield’s 

property rights. See Cal. Fam. Code §§ 2404 (providing 

that entry of judgment of dissolution “constitutes . . . [a] 

final adjudication of the rights and obligations of the 

parties with respect to the status of the marriage and 

property rights”); see also id. § 2406(b)(6). As the California Supreme Court explained in Brown v. Brown, 147 P.d 

1168 (Cal. 1915), a judgment based on parties’ admissions 

constitutes a “complete adjudication of all the rights of 

the parties embraced in the prayer for relief and arising 

from the facts stated in the complaint.” Id. at 1170. 

Accordingly here, as in Brown, although the final divorce 

decree was silent as to particular property, it nevertheless 

adjudicated the parties’ rights with respect to that property because it was based on an uncontested complaint 

which alleged that there was no community property. See

id. 

The final requirement under California law for collateral estoppel is met because Sprint Nextel is in privity 

with Whitfield. See Citizens Suburban Co. v. Rosemont 

Dev. Co., 244 Cal. App. 2d 666, 680-81 (Cal. App. Ct. 

1966). In this case, privity arose from Whitfield’s express 

assignment of any property interest she had in the pat-
19 ENOVSYS v. NEXTEL COMMUNICATIONS

ents to Sprint Nextel. Cf. Vallely Invests., L.P. v. BancAmerica Commercial Corp., 106 Cal. Rptr. 2d 689, 694-

95 (Cal. Ct. App. 2001); Gulf Ins. Co. v. TIG Ins. Co., 103 

Cal. Rptr. 2d 305, 309-10 (Cal. Ct. App. 2001). Sprint 

Nextel is thus barred from relitigating Whitfield’s property rights in this case.4 Pursuant to the California 

divorce decree, Whitfield retained no property rights in 

the patents, so Enovsys had standing to bring and maintain this suit.5 

II. Claim Construction and Infringement 

We turn next to Sprint Nextel’s argument that under 

the correct claim constructions, its systems do not infringe the ’159 or ’461 patents.6 

 4 Sprint Nextel also argues that we should not give 

preclusive effect to the California divorce decree because 

the judgment was obtained by fraud. Cf. Matsushita 

Elec., 516 U.S. at 375 (holding that the federal court must 

decide whether “as an exception to § 1738, it should 

refuse to give preclusive effect to the state court judgment” (citations omitted)). We decline to do so. No federal law modifies the operation of 28 U.S.C. § 1738, and 

we lack jurisdiction to set aside this state-court judgment. 

See Miagra v. Warren City Sch. Dist. Bd. of Ed., 465 U.S. 

75, 80 (1984). Only a California state court may set aside 

a judgment of dissolution, after one of the parties to the 

judgment has filed a motion to do so. Cal. Fam. Code § 

2405. 

5 Because Whitfield had no property interest to assign, Sprint Nextel has no interest in the asserted patents. Accordingly, the district court did not abuse its 

discretion in denying Sprint Nextel’s request to present 

evidence of the assignment at trial. 

6 The dissent is correct that Sprint Nextel styled 

these arguments as defenses of non-infringement and 
ENOVSYS v. NEXTEL COMMUNICATIONS 20

A. The ’159 Patent 

Sprint Nextel argues that it is entitled to JMOL on infringement because the iDEN system does not include the 

same connecting circuitry shown in Figure 2 of the ’159 

patent. Enovsys urges us to hold that Sprint Nextel 

waived this argument. In denying Sprint Nextel’s motion 

for post-verdict JMOL on this issue, the district court 

noted that it “never limited” its construction of connecting 

circuitry to the exact configuration shown in Figure 2 of 

the ’159 patent. 

We agree that Sprint Nextel waived any claimed error 

associated with the “connecting circuitry” structure: 

Here, as in Eli Lilly & Co. v. Aradigm Corp., Sprint 

Nextel never requested the district court construe “connecting circuitry,” or offered a construction of the term. 

376 F.3d 1352, 1360 (Fed. Cir. 2004). Rather, the district 

court’s claim construction order notes that “the parties 

are not in dispute” as to the “means to resolve” structure, 

which included the now-disputed “connecting circuitry.” 

Though it had ample opportunity to do so, at no time 

before or during trial did Sprint Nextel object to the 

district court’s claim construction, request clarification, or 

 

presented them to the jury. As Sprint Nextel makes 

clear in its briefs on appeal, however, the issue is whether 

the district court’s claim constructions were erroneous. 

Consistent with circuit precedent, we apply the doctrine 

of waiver when the party failed to raise the claim construction argument until after trial. See, e.g., Broadcom 

Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed. Cir. 

2008); Conoco, Inc. v. Energy & Envt’l Int’l, L.C., 460 F.3d 

1349, 1359 (Fed. Cir. 2006); Eli Lilly & Co. v. Aradigm 

Corp., 376 F.3d 1352, 1360 (Fed. Cir. 2004); Interactive 

Gift Express, Inc. v. COmpuserve Inc., 256 F.3d 1323, 

1346-48 (Fed. Cir. 2001). 
21 ENOVSYS v. NEXTEL COMMUNICATIONS

offer the construction it now advances on appeal. Indeed, 

Sprint Nextel’s own expert testified that the district 

court’s claim construction was “fine.” See Broadcom, 543 

F.3d at 694; see also Conoco, Inc. v. Energy & Envtl. Int’l, 

L.C., 460 F.3d 1349, 1358-59 (Fed. Cir. 2006). 

B. The ’461 Patent 

Sprint Nextel similarly argues that it is entitled to 

JMOL on infringement with respect to the ’461 patent 

because its accused systems do not satisfy the “preauthorized” limitation. In construing “pre-authorized,” 

the district court largely adopted Sprint Nextel’s proposed 

construction. Sprint Nextel had argued that the term 

meant “[p]ermission to submit a request has been granted 

in advance of determining whether the request will be 

authorized.” The district court construed “preauthorized” 

to mean “authorized to submit a request in advance of 

determining whether the request will be granted.” On 

appeal, Sprint Nextel argues that any pre-authorization 

must be with respect to a particular mobile device, not 

just with respect to the network. Enovsys again urges us 

to hold that Sprint Nextel waived this argument. In 

denying Sprint Nextel’s motion for post-verdict JMOL, 

the district court found that Sprint Nextel had never 

previously requested the court to determine whether preauthorization was for only one mobile device. The district 

court accordingly declined to address Sprint Nextel’s postverdict objection to the claim construction. 

As with the ’159 patent, we hold that Sprint Nextel 

waived its right to argue its new claim construction of 

“pre-authorized” by waiting until after the jury returned 

its verdict. See Abbott Labs. v. Syntron Bioresearch, Inc., 

334 F.3d 1343, 1357 (Fed. Cir. 2003). Significantly, 

Sprint Nextel never objected to the district court’s claim 
ENOVSYS v. NEXTEL COMMUNICATIONS 22

construction or requested clarification as to whether “preauthorized” pertained to the network or a particular 

mobile device. Id. 

CONCLUSION

We hold that the district court correctly denied Sprint 

Nextel’s motion to dismiss for lack of subject matter 

jurisdiction. On the merits, we affirm the denial of Sprint 

Nextel’s post-verdict JMOL motions. 

AFFIRMED
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

ENOVSYS LLC, 

Plaintiff-Appellee, 

v. 

NEXTEL COMMUNICATIONS, INC., NEXTEL OF 

CALIFORNIA, INC., 

NEXTEL COMMUNICATIONS OF THE MIDATLANTIC, INC., 

NEXTEL OF NEW YORK, INC., NEXTEL SOUTH 

CORPORATION, 

NEXTEL OF TEXAS, INC., NEXTEL WEST CORP., 

NEXTEL NEXTEL CORPORATION, NEXTEL 

COMMUNICATIONS COMPANY L.P., 

NEXTEL SPECTRUM L.P., AND NEXTEL 

SOLUTIONS, INC., 

Defendants-Appellants. 

__________________________ 

2009-1167 

__________________________ 

Appeal from the United States District Court for the 

Central District of California in case no. 06-CV-5306, 

Judge Ronald S.W. Lew. 

__________________________ 

NEWMAN, Circuit Judge, concurring in part, dissenting in 

part. 
ENOVSYS v. NEXTEL COMMUNICATIONS 2

I join the court’s ruling with respect to standing. I 

write separately because the court, in reviewing the 

question of infringement, confounds “claim construction” 

with “infringement,” and on this confusion, rules that the 

defendant waived critical aspects of its defense of noninfringement simply because those aspects were not 

raised in the guise of “claim construction.” Thus the court 

holds that because the district court’s claim construction 

was not specific to certain details of the defendant’s 

system, the defendant “waived” its defense that these 

elements of its system are not within the scope of the 

claims. From this novel position I must, respectfully, 

dissent. 

Amid the complexities of the procedures of “claim construction” as a prologue to determination of infringement, 

it is not unusual to see an intermingling or misplacement 

of the relationship between the claim as construed in light 

of the description of the invention in the specification, and 

the question of infringement by the accused device. 

Questions of infringement may sometimes be decided as 

claim construction, whereby the claim is construed with 

so tight a tie to the structure of the accused device that 

infringement vel non is immediately apparent – and 

summarily resolved. And questions of claim construction 

sometimes arise as questions of infringement, whereby 

the trier of fact (as distinguished from the giver of law) 

must decide whether the claim reads on the accused 

device. In either situation, any flaw is more a matter of 

procedural imprecision, not substantive “waiver,” and any 

error is normally tolerable, for in either situation the 

decisionmaker studies the claim, understands the accused 

device, and decides the relationship between them as a 

matter of substance, not technicality. 
3 ENOVSYS v. NEXTEL COMMUNICATIONS

However, as with any tolerant relationship, intolerant 

situations may arise. Here, for example, the defendant 

Nextel presented a straightforward defense to the charge 

of infringement, by arguing that certain aspects of the 

patentee’s invention are not present in the accused system. Yet my colleagues on this panel hold that this 

defense is “waived.” 

For example, the court holds that Nextel is precluded 

from arguing that its circuitry does not infringe claim 1 of 

the ’159 patent. Nextel argued non-infringement on the 

ground that its circuitry differs from the “connecting 

circuitry” identified in the patent as structure corresponding to the “means to resolve” limitation. My colleagues 

hold that this argument cannot be raised, although Nextel 

presented evidence at trial that its circuitry differed from 

the circuitry shown in the ’159 patent. The court now 

rules that Nextel waived this non-infringement argument 

because Nextel did not “object to the district court’s claim 

construction, request clarification, or offer the construction it now advances on appeal.” Maj. Op. at 20–21. 

However, the question is not of claim construction, but of 

infringement of the claim as construed. 

A district court ordinarily does not resolve all infringement issues through a narrowly targeted claim 

construction focused on the accused device. Claim construction is derived from the specification of the patent, 

not the accused device. Here, the district court’s claim 

construction order stated that 

the structures disclosed in the specification that 

perform [the function of the “means to resolve”] 

are transceiver, connecting circuitry, CPU, satellite receiving means, terrestrial receiving means, 
ENOVSYS v. NEXTEL COMMUNICATIONS 4

decoders, and temporary store. The parties are 

not in dispute as to these structures. 

Enovsys LLC v. Nextel Commc’ns., Inc., No. 06-CV-5306, 

slip op. at 6 (C.D. Cal. Feb. 26, 2008) (emphasis added to 

the term at issue for infringement). The district court, 

instructing the jury on infringement, explained the following regarding the “means to resolve” limitation: 

The words of the clause do not cover all means 

that perform the recited function of “resolving a 

global position from the satellites or earth-based 

communication means.” They cover only the structure described in the patent specification and 

drawings that perform that function or an equivalent of that structure. 

J.A. 2488 (emphasis added). The district court then listed 

the structures as it had done in its claim construction 

order. The claim construction and the jury instructions 

correctly limited the patented structures to those described in the specification. In raising its defense that its 

“connecting circuitry” was different from that in the 

specification, Nextel conformed with law and protocol. 

Thus Nextel presented evidence and argument at trial 

that its accused iDEN system did not meet the “means to 

resolve” limitation because it did not have the same 

“connecting circuitry” described in the specification. 

Although the jury rejected Nextel’s position, it was considered, and this issue was raised on motion for JMOL. 

The judge denied Nextel’s JMOL motion, and disagreed 

with Nextel’s argument that the claim construction 

required “the exact connecting circuitry in the ’159 patent.” The trial judge did not treat Nextel’s argument as a 

“waived” claim construction argument. However, my 

colleagues hold that the question of infringing this claim 
5 ENOVSYS v. NEXTEL COMMUNICATIONS

element should have been raised as an appeal from the 

claim construction. Indeed, whether this question could 

have been raised in this manner does not mean that 

defense to infringement is deemed waived and cannot be 

presented or appealed, on the apparent theory that the 

defendant was required to request a claim construction in 

terms of its own circuitry. 

Any lapse of precision between fact and law does not 

lead to “waiver” of the right to defend or the right to 

judicial review (although it may affect the standard of 

review). It is incorrect, and a negation of the processes of 

law, to hold that such a defense against infringement was 

waived because it was not presented, resolved, or appealed as a matter of claim construction.