NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

WI-LAN USA, INC., WI-LAN, INC.,

Plaintiffs-Appellants

v.

ERICSSON, INC., TELEFONAKTIEBOLAGET LM 

ERICSSON,

Defendants-Cross-Appellants

______________________ 

2015-1766, -1794

______________________ 

Appeals from the United States District Court for the 

Southern District of Florida in No. 1:12-cv-23569-DMM, 

Judge Donald M. Middlebrooks.

______________________ 

Decided: January 17, 2017

______________________ 

MATTHEW D. POWERS, Tensegrity Law Group, LLP, 

Redwood City, CA, argued for plaintiffs-appellants. Also 

represented by AZRA HADZIMEHMEDOVIC, AARON M.

NATHAN, PAUL EHRLICH, LITAL LEICHTAG-FUKS, YI CHEN. 

PAUL D. CLEMENT, Kirkland & Ellis LLP, Washington, 

DC, argued for defendants-cross-appellants. Also represented by GEORGE W. HICKS, JR., EDMUND GERARD 

LACOUR, JR., CHRISTOPHER GEORGE MICHEL; JOSHUA C.
2 WI-LAN USA, INC. v. ERICSSON, INC. 

KRUMHOLZ, JACOB KEVIN BARON, Holland & Knight, LLP, 

Boston, MA.

______________________ 

Before MOORE, O’MALLEY, and WALLACH, Circuit Judges.

Opinion for the court filed by Circuit Judge WALLACH. 

Concurring in part and dissenting in part opinion filed by 

Circuit Judge O’MALLEY. 

WALLACH, Circuit Judge.

The instant dispute returns to us a second time following additional district court proceedings. Initially, WiLAN USA, Inc. and Wi-LAN, Inc. (together, “Wi-LAN”) 

sued Ericsson, Inc. and Telefonaktiebolaget LM Ericsson 

(together, “Ericsson”) in the U.S. District Court for the 

Southern District of Florida (“District Court”) alleging 

infringement of various claims of U.S. Patent Nos. 

8,027,298 (“the ’298 patent”), 8,249,014 (“the ’014 patent”), and 8,229,437 (“the ’437 patent”) (collectively, “the 

Patents-in-Suit”). Ericsson argued that Wi-LAN was 

precluded from asserting infringement and moved for 

summary judgment based on the Most Favored Licensee 

Provision (“MFL Provision”) in the Patent and Conflict 

Resolution Agreement (“PCRA”) between Wi-LAN and 

Ericsson. The District Court determined on summary 

judgment that the MFL Provision was triggered, that 

Ericsson was entitled to a license, and that the claims of 

infringement were moot. On appeal, we determined that 

the “MFL Provision only applies to Wi-LAN’s patents 

owned or controlled as of the effective date of the PCRA, 

which the [Patents-in-Suit] . . . were not.” Wi-LAN USA, 

Inc. v. Ericsson, Inc., 574 F. App’x 931, 940 (Fed. Cir. 

2014). Thus, because “Ericsson’s rights under the MFL 

Provision were not triggered,” we reversed the District 

Court’s judgment and remanded the case for further 

proceedings. Id. 
WI-LAN USA, INC. v. ERICSSON, INC. 3

On remand, the District Court construed claim terms 

in the Patents-in-Suit. See Wi-LAN USA, Inc. v. Telefonaktiebolaget TM Ericsson, No. 12-cv-23569-DMM, 2015 

WL 6673742, at *3–13 (S.D. Fla. Jan. 13, 2015). Ericsson 

then moved for summary judgment of non-infringement of 

various claims (“the Asserted Claims”)1 of the ’298 patent 

and the ’014 patent (together, “the Bandwidth Patents”)

and for summary judgment of invalidity of claims 8 and 

18 of the ’437 patent. Ericsson also argued the MFL 

Provision applied despite this court’s previous decision. 

The District Court granted Ericsson’s Motion in part and 

entered summary judgment that (1) claims 8 and 18 of the 

’437 patent were invalid as anticipated and (2) Ericsson’s 

accused products did not directly infringe the Bandwidth 

Patents. J.A. 12–32. The District Court found the MFL 

Provision did not apply to the Patents-in-Suit. J.A. 11–

12, 32. 

Wi-LAN appeals the District Court’s decision granting 

summary judgment of invalidity and non-infringement. 

Ericsson cross-appeals the District Court’s decision that 

the MFL Provision does not apply to the Patents-in-Suit. 

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) 

(2012). We vacate-in-part, affirm-in-part, and remand for 

further proceedings consistent with this opinion. 

BACKGROUND

Before addressing the merits of the parties’ arguments, we provide a brief summary of the Patents-in-Suit. 

We divide our discussion of the Patents-in-Suit into two 

parts based on their subject matter.

 

1 The Asserted Claims include claims 1–2 and 4 of 

the ’298 patent and claims 1, 4, and 6 of the ’014 patent. 
4 WI-LAN USA, INC. v. ERICSSON, INC. 

I. The Bandwidth Patents

The Bandwidth Patents are entitled “Methods and 

Systems for Transmission of Multiple Modulated Signals 

Over Wireless Networks” and disclose “[a] method and 

apparatus for requesting and allocating bandwidth in a 

broadband wireless communication system,” whereby “a 

combination of bandwidth allocation techniques” are used 

to efficiently allocate physical resources. ’298 patent, 

Abstract.2 

“The broadband wireless communication system facilitates two-way communication between a plurality of base 

stations and a plurality of fixed subscriber stations or 

Customer Premises Equipment [(‘CPE’)].” Id. col. 1 ll. 62–

65. The broadband wireless communication system 

“includes a plurality of cells . . . . Each cell . . . provides 

wireless connectivity between the cell’s base station . . . and a plurality of . . . [CPEs] positioned at fixed 

customer sites . . . throughout the coverage area of the 

cell . . . .” Id. col. 2 ll. 2–8. The system is an on-demand 

system where CPEs “request bandwidth allocations from 

their respective base stations . . . based upon the type and 

 

2 Because the ’014 patent is a continuation of the 

’298 patent, the Bandwidth Patents share a common 

specification. A continuation patent application is “an 

application filed subsequently to another application, 

while the prior application is pending, disclosing all or a 

substantial part of the subject-matter of the prior application and containing claims to subject-matter common to 

both applications, both applications being filed by the 

same inventor or his legal representative.” In re Febrey, 

135 F.2d 751, 757 (CCPA 1943) (internal quotation marks 

and citation omitted). For ease of reference, discussion of 

the Bandwidth Patents will refer to the ’298 patent’s 

specification. 
WI-LAN USA, INC. v. ERICSSON, INC. 5

quality of services requested by the customers served by 

the CPEs.” Id. col. 2 ll. 16–19. “Base stations do not have 

a priori information regarding the bandwidth or quality of 

services that a selected CPE will require at any given 

time.” Id. col. 2 ll. 39–42 (italics added). Thus, “[t]he type 

and quality of services available to the customers are 

variable and selectable.” Id. col. 2 ll. 20–21. The Bandwidth Patents “reduce[] the amount of bandwidth that 

must be set aside for these bandwidth allocation requests.” Id. col. 9 ll. 38–40. 

II. The ’437 Patent

Entitled “Pre-Allocated Random Access Identifiers,” 

the ’437 patent generally discloses “[s]ytems and methods 

of pre-allocating identifiers to wireless devices for use in 

requesting resources over a random access channel . . . .” 

’437 patent, Abstract. The ’437 patent provides a method 

for “[a] mobile subscriber station[, e.g., cellular telephone,

to] transition from a coverage area supported by a first 

base station to a coverage area supported by a second 

base station.” Id. col. 20 ll. 1–3. The “communication link 

from the subscriber station is handed over from the first 

or serving base station to the second base station . . . .” 

Id. col. 20 ll. 4–6. 

“The use of pre-allocated codes,” i.e., random access 

identifiers, as taught by the ’437 patent, “avoids the 

collision probability[, e.g., dropped calls,] associated with 

random subscriber selected access codes . . . .” Id. col. 2 

ll. 64–66. “The base station . . . pre-allocates one or more 

codes to registered subscriber stations” in its coverage 

area, and these base stations “track[] the code allocation 

such that each of the allocatable codes are allocated to at 

most one subscriber station at a time.” Id. col. 6 ll. 20–21, 

22–24. The pre-allocated codes are then released by the 

subscriber station “when it de-registers with the base 

station” and leaves the coverage area. Id. col. 6 l. 26. 
6 WI-LAN USA, INC. v. ERICSSON, INC. 

DISCUSSION

Wi-LAN argues that (1) genuine issues of material 

fact precluded invalidity summary judgment for the ’437 

patent based on anticipation; (2) the District Court erred 

in construing “bandwidth” in the Bandwidth Patents; and 

(3) genuine issues of material fact precluded noninfringement summary judgment for the Bandwidth 

Patents. Appellants’ Br. 22–60. Ericsson argues on crossappeal that the District Court erred in finding as a matter 

of law that the PCRA’s MFL Provision was triggered in 

this case. Cross-Appellants’ Br. 59–69. We address these 

arguments in turn.

I. Standard of Review

We review the grant of summary judgment under the 

law of the regional circuit in which the district court sits. 

Classen Immunotherapies, Inc. v. Elan Pharm., Inc., 786 

F.3d 892, 896 (Fed. Cir. 2015). The Eleventh Circuit 

reviews a district court’s grant of summary judgment de 

novo. Ellis v. England, 432 F.3d 1321, 1325 (11th Cir. 

2005). Summary judgment is proper only “if the movant 

shows that there is no genuine dispute as to any material 

fact and the movant is entitled to judgment as a matter of 

law.” Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 

U.S. 317, 322–23 (1986). A genuine dispute of material 

fact exists when “the evidence is such that a reasonable 

jury could return a verdict for the nonmoving party.” 

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). 

In assessing whether summary judgment is appropriate, 

we “must view all evidence and make all reasonable 

inferences in favor of the party opposing summary judgment.” Haves v. City of Miami, 52 F.3d 918, 921 (11th 

Cir. 1995) (citation omitted).
WI-LAN USA, INC. v. ERICSSON, INC. 7

II. Wi-LAN’s Appeal

Wi-LAN’s arguments concern three separate aspects 

of the District Court’s decision under review. We address 

them in turn.

A. Anticipation of the ’437 Patent

Wi-LAN argues that the District Court erred in granting summary judgment of invalidity for the ’437 patent 

based on anticipation because there remained a genuine 

dispute over material facts that the District Court improperly decided. See Appellants’ Br. 24–44. We find the 

District Court erred in granting summary judgment and, 

thus, vacate and remand for proceedings consistent with 

this opinion. 

1. Legal Framework

Although “the anticipation inquiry first demands a 

proper claim construction,” Trintec Indus., Inc. v. TopU.S.A. Corp., 295 F.3d 1292, 1294 (Fed. Cir. 2002), WiLAN does not challenge the District Court’s claim construction as to the ’437 patent, see Appellants’ Br. 22–44. 

Thus, we begin with the prior art. A reference is anticipatory under 35 U.S.C. § 102(b) (2006)3 if “the prior art 

reference . . . disclose[s] each and every feature of the 

claimed invention, either explicitly or inherently.” Eli 

Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 

1369, 1375 (Fed. Cir. 2006) (citation omitted). 

 

3 In passing the Leahy-Smith America Invents Act 

(“AIA”), Congress amended § 102. See Pub. L. No. 112-29, 

§ 3(b), 125 Stat. 284, 285–87 (2011). However, because 

the application that led to the ’437 patent was filed before 

March 16, 2013, the pre-AIA § 102(b) applies. See id.

§ 3(n)(1), 125 Stat. at 293.
8 WI-LAN USA, INC. v. ERICSSON, INC. 

2. The Prior Art

Prior art Michel Mouly & Marie-Bernadette Pautet, 

The GSM System for Mobile Communications (Cell & Sys 

Correspondence 1992) (“Mouly”) (J.A. 789–828, 2377–414) 

discloses the global system for mobile communications 

(“GSM”) standard for cellular communications. Mouly 

discloses a “handover,” which is the process of synchronizing the timing of communications between mobile users 

and cell towers when “transferring a transaction in progress (a call in particular) from one cell to another to 

avoid the adverse effects of user movements . . . .” J.A. 

795. 

Relevant here, Mouly discloses how the timing advance is applied to communications between the mobile 

device and cellular towers. The timing advance addresses 

the overall time necessary for data bursts to travel from 

the mobile device to the cellular tower, which includes a 

time offset that is not dependent on the user’s location as 

well as a time offset that does depend on the user’s location. See J.A. 810. The timing advance issue incorporates 

both synchronous and asynchronous handovers. See 

J.A. 811, 2396.

For synchronous handovers, “the mobile station is 

able to compute the new timing advance (to be applied 

with [the new cell tower]), because the old and the new 

cells are synchronized.” J.A. 2396. For asynchronous 

handovers, “the timing advance must be initiali[z]ed both 

at the mobile station and at [the new cell tower] during 

the handover procedure.” J.A. 2396. This is accomplished 

by the mobile station sending access bursts4 to the new 

 

4 A burst is a “unit of transmission [that] is a series 

of about a hundred modulated bits” and is of “a finite 

duration . . . occupy[ing] a finite part of the radio spec-
WI-LAN USA, INC. v. ERICSSON, INC. 9

cell tower “with a null timing advance.” J.A. 2394; see 

J.A. 2409. Once the new cell tower receives this access 

burst, it “can derive the value of the timing advance, 

which it sends to the mobile station in a signaling message.” J.A. 2394. Once the mobile station “receives this 

message, [it] is able to start correctly transmitting normal 

bursts.” J.A. 2394. 

Both types of handovers involve several processes of 

transmitting an 8-bit message from the new cell tower, 

the old cell tower, and the mobile station. See J.A. 2398–

99, 2403, 2409. For synchronous handovers, “the mobile 

station first sends a few access bursts (the [8-bit] RIL3-

RR HANDOVER ACCESS message), then starts normal 

transmission by applying the computed timing advance.” 

J.A. 2409. For asynchronous handovers, “the mobile 

station continues to send access bursts [(i.e., the RIL3-RR 

HANDOVER ACCESS message)] until it has received an 

[8-bit message with physical resource information] . . . from [the new cell tower], conveying the 

actual timing advance to apply. Only then does it start 

normal transmission.” J.A. 2409. 

3. A Genuine Dispute as to Material Facts Bars Invalidity 

Summary Judgment on the ’437 Patent

Before the District Court, the parties disagreed about 

the existence of a genuine dispute as to whether Mouly 

discloses that synchronous and asynchronous handover 

access messages are sent via a dedicated channel or a 

random access channel (“RACH”). J.A. 20–21, 23. Ac-

 

trum.” J.A. 2384 (footnote omitted). The access burst is a 

short burst that “is only used in the uplink direction 

during initial phases when the propagation delay between 

the mobile station and the base station is not yet known.” 

J.A. 2386. 
10 WI-LAN USA, INC. v. ERICSSON, INC. 

cording to the District Court, although Mouly “supports 

the statement that the RIL3-RR HANDOVER ACCESS 

message is the only case where short access bursts are 

used on a dedicated channel in a synchronous handover, . . . [it] does not support that this is also true with 

asynchronous handovers.” J.A. 24 (internal quotation 

marks and emphases omitted) (citing J.A. 2394, 2396). 

The District Court further stated that, “[a]lthough 

when read in isolation, this [passage in Mouly] could be 

read to include asynchronous handovers, such a reading is 

inconsistent with the rest of Mouly (totaling 695 pages) 

and inconsistent with both [p]arties’ expert testimony.” 

J.A. 24–25 (footnote and citations omitted). Thus, the 

District Court concluded “the HANDOVER ACCESS 

message [in Mouly] is sent on a RACH” for an asynchronous handover. J.A. 25. Ultimately, the District Court 

found the claims invalid as anticipated because Wi-LAN 

failed to identify factual disputes regarding the limitations in claims 8 and 18 of the ’437 patent and Mouly 

discloses these limitations. J.A. 32. 

a. The District Court’s Errors

The District Court made two errors in its analysis, 

both involving the use of improper evidence at the summary judgment stage. First, the District Court weighed 

the evidence presented by Ericsson’s expert, Mark Lanning, and Wi-LAN’s expert, Paul Min, against the disclosures of Mouly and drew inferences from these facts. See 

J.A. 24–27 (citing Mr. Lanning’s declaration and discussing Dr. Min’s deposition and Mouly’s text and figures); see 

also J.A. 24 n.17 (“[T]his passage [in Mouly] appears to 

support Ericsson’s position . . . .”). However, when ruling 

on a motion for summary judgment, “[c]redibility determinations, the weighing of the evidence, and the drawing 
WI-LAN USA, INC. v. ERICSSON, INC. 11

of legitimate inferences from the facts are jury functions, 

not those of a judge . . . .”5 Anderson, 477 U.S. at 255. 

 

5 The dissent disagrees, saying the District Court 

relied on Dr. Min’s “admission” that “‘the mobile station is 

forbidden to transmit the data which is on a dedicated 

channel until . . . the synchronization is initiated.’” 

Dissent at 3 (quoting J.A. 1415). However, this alleged 

admission is preceded by “I mean, that’s what he [(referring to a statement previously quoted by counsel)] said.” 

J.A. 1415; see J.A. 1414, 2331. When read in toto, Dr. 

Min’s testimony is not an admission, but rather is paraphrasing what counsel quoted from Mouly.

The dissent also states this “admission” includes Dr. 

Min’s affirmance of Ericsson’s clarification “that, to the 

extent the statement refers to an access burst being sent 

on a dedicated channel in an asynchronous scenario, ‘the 

synchronization takes place prior to the access burst 

being sent[]’ . . . .” Dissent at 4 (quoting J.A. 1418). 

However, the testimony culminating in this “admission” 

was responding to questions about Mouly and the “8-bit 

handover reference.” J.A. 1416 (quoting J.A. 2409). Dr. 

Min stated the “‘8-bit handover reference’ clearly is related to a handover scenario, but the next . . . sentence said, 

‘[t]his message is the only case where short access bursts 

are used on a dedicated channel.’” J.A. 1416 (quoting J.A. 

2409). Dr. Min further said “[s]o this has more to do 

with . . . communicating over [a] dedicated channel as 

opposed to [a] Random Access Channel.” J.A. 1416. 

Following objections from Wi-LAN’s counsel, Ericsson 

further asked whether Dr. Min could “tell one way or the 

other” if Mouly was “referring to . . . a synchronous handover?” J.A. 1417. In response, Dr. Min stated that “[i]t 

can be either way” and then proceeded to discuss both 

asynchronous and synchronous handovers before making 
12 WI-LAN USA, INC. v. ERICSSON, INC. 

Next, the District Court cites to unsupported statements made by Ericsson’s counsel to reach its conclusion 

that the record does not demonstrate that the RIL3-RR 

HANDOVER ACCESS message uses short access bursts 

on a dedicated channel for asynchronous handovers. See 

J.A. 21, 24 n.17 (“As counsel for Ericsson explained during the May 13, 2015 hearing, [the new cell tower] cannot 

set up a dedicated channel until synchronization has 

occurred because it is not until then that [the new cell

tower] knows how far away the phone is, how it is moving, 

and other physical information required to set up a dedicated channel.”). These statements are attorney argument, not record evidence, and relying on these bare 

assertions was improper.6 See, e.g., Laitram Corp. v. 

 

this alleged admission. J.A. 1417. The District Court 

improperly made inferences from portions of Dr. Min’s 

testimony. The testimony leading up to this supposed 

admission of “[y]es, that’s right,” J.A. 1418, demonstrates 

this statement is far from an unequivocal admission.

6 The dissent disagrees, saying the District Court 

“included a quotation of an argument by Ericsson’s counsel in the portion of the court’s opinion where the court 

was laying out the arguments made by each party before 

making its findings in relation to which party’s arguments were well taken.” Dissent at 2. Context, however, 

demonstrates the District Court is relying on attorney 

argument in making its findings. 

Preceding the phrase at issue, the District Court said 

“the passage Wi-LAN quotes [from Mouly] supports 

Ericsson’s position that asynchronous communications 

must take place on the RACH until the mobile station 

receives . . . the actual timing advance to apply . . . .” J.A. 

24 n.17 (internal quotation marks and citation omitted). 

It further stated that “a timing adjustment is required for 
WI-LAN USA, INC. v. ERICSSON, INC. 13

Cambridge Wire Cloth Co., 919 F.2d 1579, 1583 (Fed. Cir.

1990) (criticizing the parties’ “reliance on attorney argument and counsel’s unsworn fact statements as ‘evidence’”), superseded by statute on other grounds as stated

in Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 

1259 (Fed. Cir. 2000); see also Gemtron Corp. v. SaintGobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) 

(“Saint-Gobain’s unsworn attorney argument to the 

contrary—made for the first time at oral argument on 

appeal—is not evidence and cannot rebut the video and 

other admitted evidence concerning Saint-Gobain’s manufacturing process.”).

b. Material Facts Are in Dispute

Apart from these errors, we also find that there remains a genuine dispute as to what Mouly discloses. 

Mouly is ambiguous in its explanation of whether access 

bursts in asynchronous and synchronous handovers occur 

on a RACH. When defining “access burst,” Mouly states 

“it is the only kind of burst used on the RACH.” J.A. 

2386. Additionally, an access burst “is only 

used . . . during initial phases when the . . . [timing] 

delay . . . is not yet known. This is the case with the first 

access of a mobile station on the RACH, or sometimes 

with the access of a mobile station to a new cell upon 

handover.” J.A. 2386. However, Mouly later discusses 

both synchronous and asynchronous handovers, where 

“[i]n both cases, the RIL3-RR HANDOVER ACCESS 

message . . . . is the only case where short access bursts are 

used on a dedicated channel.” J.A. 2409 (emphasis added).

 

synchronization, which in turn, is required for communication on a dedicated channel.” J.A. 24 n.17. The District 

Court was no longer restating the parties’ arguments; it 

was making findings.
14 WI-LAN USA, INC. v. ERICSSON, INC. 

Additionally, both Wi-LAN’s and Ericsson’s experts 

have provided evidence that, when viewed in favor of WiLAN, demonstrates summary judgement is improper. In 

discussing Mouly in his report to the District Court, Mr. 

Lanning relied upon the GSM standard that states the 

handover message is transmitted over a dedicated channel. See J.A. 405 (“This [handover access] message is sent 

in random mode on the main [dedicated channel] during a 

handover procedure.” (quoting GSM standard 3GPP TS 

44.018 § 9.1.14)); see also J.A. 2424 (providing in the GSM 

standard that a non-synchronized cell case operates by 

“sending continuously on the main [dedicated channel] a 

HANDOVER ACCESS message. This message is sent in 

random mode and thus does not follow the basic format.”

(emphasis added)). Dr. Min’s expert report provides 

additional support, interpreting Mouly to disclose a 

dedicated channel that is used during handover. See J.A. 

3183–84 (stating that “Mouly does not disclose receiving 

the random access identifier over a [RACH] . . . . To the 

contrary, Mouly explicitly discloses that access bursts 

containing the handover reference are used on a dedicated 

channel.” (emphases and footnote omitted)). 

Mouly’s statements are at least highly ambiguous as 

to whether synchronous or asynchronous handover messages occur on a RACH or a dedicated channel. Additionally, the parties’ experts demonstrate that there is a 

dispute as to which interpretation is correct. Such ambiguity is best left for determination by a factfinder. Because the District Court erred in finding that there was 

no genuine dispute as to any material fact, granting 

summary judgment of invalidity was improper and we 

need not address the remaining limitations of claims 8 

and 18 of the ’437 patent. We therefore vacate the District Court’s grant of summary judgment and remand for 

further proceedings consistent with this opinion. 
WI-LAN USA, INC. v. ERICSSON, INC. 15

B. Non-Infringement of the Bandwidth Patents

1. Standard of Review and Legal Framework 

A person infringes a patent if, without permission of 

the patentee, that person “makes, uses, offers to sell, or 

sells any patented invention[] within the United 

States . . . during the term of the patent therefor . . . .” 35 

U.S.C. § 271(a) (2012). Whether an accused product 

infringes a patent involves a two-step inquiry. See Glaxo, 

Inc. v. Novopharm, Ltd., 110 F.3d 1562, 1565 (Fed. Cir. 

1997). “First, the court must construe the asserted 

claim. . . . Second, the court must determine whether the 

accused product . . . contains each limitation of the 

properly construed claim[], either literally or by a substantial equivalent.” Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1356–57 (Fed. Cir. 2005) (citations 

omitted). 

The first step is a question of law reviewed de novo. 

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 

841 (2015). Claim terms “are generally given their ordinary and customary meaning” as they would be understood by a person having ordinary skill in the art at the 

“time of the invention.” Phillips v. AWH Corp., 415 F.3d 

1303, 1312, 1313 (Fed. Cir. 2005) (en banc) (internal 

quotation marks and citation omitted). “To ascertain the 

scope and meaning of the asserted claims, we look to the 

words of the claims themselves, the specification, the 

prosecution history, and, if necessary, any relevant extrinsic evidence.” Chi. Bd. Options Exch., Inc. v. Int’l Sec. 

Exch., LLC, 677 F.3d 1361, 1366 (Fed. Cir. 2012) (citation 

omitted). “[T]he specification is the single best guide to 

the meaning of a disputed term, and . . . acts as a dictionary when it expressly defines terms used in the claims or 

when it defines terms by implication.” Phillips, 415 F.3d 

at 1321 (internal quotation marks and citations omitted). 

The second step is a question of fact. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129–30 
16 WI-LAN USA, INC. v. ERICSSON, INC. 

(Fed. Cir. 2011). Thus, a court properly may enter infringement summary judgment “when no genuine issue of 

material fact exists, in particular, when no reasonable 

jury could find that every limitation recited in the properly construed claim either is or is not found in the accused 

device.” Bai v. L&L Wings, Inc., 160 F.3d 1350, 1353 

(Fed. Cir. 1998) (citation omitted). 

Wi-LAN raises arguments under each step of the infringement inquiry. Appellants’ Br. 45–60. We address 

each step in turn.

2. The District Court Did Not Err in Construing “Bandwidth”

The District Court “accept[ed] Ericsson’s proposed 

construction based on [another district court judge]’s prior 

holding” and construed “bandwidth” to mean “data 

transmission resources in a particular time period.” WiLAN, 2015 WL 6673742, at *4. Wi-LAN argues that the 

District Court improperly narrowed the construction by 

adding a time requirement that is not required in the 

disclosed embodiment of the Bandwidth Patents. Appellants’ Br. 46–47. Wi-LAN contends that “bandwidth” is 

used broadly in the Bandwidth Patents to describe “a 

quantity of data to be transmitted or . . . the units of time 

and frequency within the radio spectrum that are used to 

send that data.” Id. at 46. 

We first look to the claim language to ascertain the 

scope and meaning of “bandwidth.” Independent claims 1, 

4, and 6 of the ’014 patent disclose a system and a method 

that “detect[s] a bandwidth . . . request in the [uplink] 

traffic [or data] received from a subscriber unit” and 

“identif[ies] in the [bandwidth] request a requested 

amount of [uplink] bandwidth.” ’014 patent col. 23 ll. 13–

14, 15–16 (claim 1); see id. col. 23 ll. 45–46, 47–48 (claim 

4) (similar), col. 24 ll. 24–25, 25–27 (claim 6) (similar). 

Independent claim 1 of the ’298 patent states the same, 

’298 patent col. 23 ll. 17–19, and dependent claims 2 and 4
WI-LAN USA, INC. v. ERICSSON, INC. 17

of the ’298 patent describes “bandwidth” in a similar 

fashion, id. col. 23 ll. 30–35, 39–41. None of these claims 

contain an explicit restriction to “a particular time,” as 

Wi-LAN argues. Thus, we next turn to the specification of 

the Bandwidth Patents. 

Four separate portions of the specification inform the 

meaning of “bandwidth” in the Bandwidth Patents’

claims. All four portions discuss bandwidth with the 

addition of a time component. First, the specification 

discloses that bandwidth allocation can be structured as 

“us[ing] either time division duplexing [(‘TDD’)] or frequency division duplexing [(‘FDD’)] methods to facilitate 

the exchange of information between the base station and 

the subscriber units.” Id. col. 1 ll. 54–57. In discussing 

Figure 1 and the use of a TDD scheme, the specification 

states that the “base station . . . transmits without having 

to coordinate with other base stations, except for the 

overall time-division duplexing that divides time into 

upstream (uplink) and downstream (down-link) transmission periods.” Id. col. 6 ll. 44–49 (emphasis added). The 

specification also incorporates a prior patent that discusses why TDD systems are more advantageous. See id. col. 

7 ll. 52–57 (discussing U.S. Patent No. 6,016,311 (“Gilbert”)); see also Gilbert col. 2 ll. 7–9, 16–17 (discussing the 

disadvantages of FDD systems as being “more complex 

and therefore more costly than those used by TDD systems,” as well as having “limited flexibility and limited 

available frequency spectrum”), col. 6 ll. 45, 47–48 (discussing a “typical TDD system” that has “equal use of 

time slot allocations for the uplink and downlink transmissions”). After demonstrating the advantages of a TDD 

system over a FDD system, the specification only discusses the claimed invention within a TDD scheme. See 

generally ’298 patent. 

Next, the specification discusses the use of a TDD 

scheme for allocating bandwidth. Figure 2 shows that 

“the TDD frame is subdivided into a plurality of physical 
18 WI-LAN USA, INC. v. ERICSSON, INC. 

slots [(‘PS’)]” where “the frame is one millisecond in 

duration and includes 800 [PS].” Id. col. 7 ll. 37–38, 39–

40. “Alternatively, the present invention can be used with 

frames having longer or shorter duration and with more 

or fewer PS[]. The available bandwidth is allocated by a 

base station in units of a certain pre-defined number of 

PS[].” Id. col. 7 ll. 40–43. 

A third example of where the specification discusses 

the use of a TDD scheme for allocating bandwidth occurs 

in its discussion of downlink and uplink sub-frame maps. 

See id. col. 8 l. 6–col. 9 l. 27. In Figure 4, “[a]ll of the 

bandwidth allocated to a selected CPE within a given 

TDD frame (or alternatively an adaptive TDD frame, as 

the case may be) is grouped into a contiguous CPE scheduled data block . . . .” Id. col. 9 ll. 21–25. “The [PS] allocated for the [CPE transition gaps] . . . are included in the 

bandwidth allocation to a selected CPE . . . in the base 

station uplink sub-frame map.” Id. col. 9 ll. 25–27. 

A final example of where the specification discloses 

the use of a TDD scheme occurs during its discussion of 

the transmission of queued data and the quality of service 

for this queued data. See id. col. 19 l. 50–col. 21 l. 4. 

Fairness algorithms are used to help ensure data quality 

when there “is insufficient bandwidth to transmit all the 

queued data during the current TDD Frame.” Id. col. 19 

ll. 50–51. “For each TDD frame, the [algorithm running 

in the] base station allocates the down-link portion of the 

TDD frame and it performs an estimate of the uplink 

traffic to allocate uplink bandwidth to the CPEs.” Id. col. 

21 ll. 2–4. 

Taken together, we find that the specification demonstrates that the bandwidth requirements will vary over 

time, depending on the needs of the consumer. We therefore affirm the District Court’s claim construction of

“bandwidth” to mean “data transmission resources in a 
WI-LAN USA, INC. v. ERICSSON, INC. 19

particular time period.” We next move to the second step 

of the infringement determination.

3. The District Court Erred in Granting NonInfringement Summary Judgment

Wi-LAN argues the District Court erred in entering 

summary judgment that Ericsson did not infringe the 

Bandwidth Patents because there were genuine disputes 

of material fact. See Appellants’ Br. 50–60. We agree.

a. Ericsson’s Accused Products 

Wi-LAN accused Ericsson’s radio base station products, which practice the fourth generation telecommunications standard of Long Term Evolution (“LTE”), of 

infringing the Bandwidth Patents. The radio base stations allow subscribers to access a carrier’s LTE network

by “receiv[ing] uplink data from connected subscriber 

units and forward[ing] that data to providers’ networks 

and to the Internet. . . . The subscriber units require 

bandwidth to send the uplink data to the [radio base 

stations].” J.A. 9 (citations omitted). 

Two features of Ericsson’s accused products are relevant to this appeal—the “buffer status report[] [(‘BSR’)]

and the Scheduler”: 

A [BSR] is a report periodically sent from the subscriber unit to the [radio base station] that reports 

the amount of data presently available to be sent 

on the uplink. . . . The subscriber unit sends a 

BSR when it has no data left to send, or when it 

has a lot of data available to send. . . . The 

Scheduler allocates bandwidth by sending an individual . . . message to each subscriber unit. . . . 

That message contains all the information a subscriber unit needs to transmit its data, and also 

contains retransmission commands that the subscriber unit must follow. 
20 WI-LAN USA, INC. v. ERICSSON, INC. 

J.A. 9 (citations and footnote omitted).

b. The District Court’s Errors

The District Court’s opinion contains two errors that 

preclude the entry of summary judgment. The District 

Court determined that Wi-LAN failed to identify a genuine issue of material fact as to direct infringement and 

concluded that Ericsson’s accused products do not infringe 

the Bandwidth Patents. J.A. 17. In reaching this conclusion, the District Court stated that 

Ericsson’s [radio base station] . . . decides how 

much, if any, bandwidth to allocate to a subscriber 

unit, based in part on a report the subscriber unit 

sends it (the “BSR”). . . . The BSR contains only 

two pieces of information: (1) an identification 

number for a logical channel group, and (2) an integer that approximates the bytes of data available for uplink transmission. . . . In other words, 

the BSR merely reports an approximation of how 

much data is available for transmission on the uplink. 

J.A. 14 (footnote and citations omitted). The District 

Court further stated that “[a]ll of the [A]sserted [C]laims 

[of the Bandwidth Patents] require that Ericsson’s [radio 

base stations] identify in the bandwidth request a requested amount of bandwidth[.]” J.A. 15 (emphasis 

added) (internal quotation marks and citations omitted). 

In light of this evidence, the District Court held that 

Ericsson could not infringe the Wi-LAN patents because 

the Ericsson products do not request bandwidth as 

claimed in the Bandwidth Patents; rather the accused 

product calculates an amount of bandwidth to allocate. 

See J.A. 15 (“The [radio base stations] . . . use the bytes of 

data reported in the BSR, along with other information to 

calculate an amount of bandwidth to allocate. In other 

words, there is no ‘requested amount of bandwidth’ in the 

BSR for a[] [radio base station] to ‘identify.’” (citations 
WI-LAN USA, INC. v. ERICSSON, INC. 21

omitted)). Additionally, the District Court noted that 

“LTE subscriber units send BSRs to [radio base stations]

even when they have no need for bandwidth.” J.A. 17 

(citation omitted). The District Court found that this 

further supported its conclusion that no bandwidth is 

requested by the Ericsson products. 

The District Court erred in entering summary judgment because it ignored conflicting evidence in the record 

and placed greater weight on Ericsson’s evidence. As to 

the conclusion that a BSR is not a request for bandwidth, 

Wi-LAN had argued to the District Court that “[t]he base 

station treats each BSR as a request and identifies in it a 

requested amount of bandwidth because of its purpose, 

contents, and context.” J.A. 2246 (Wi-LAN’s Opposition to 

Ericsson’s Motion for Summary Judgment). In this 

Opposition, Wi-LAN further stated that “Dr. Min explains[] ‘all understand that the BSR is sent for the 

purpose of requesting bandwidth from the base station to 

transmit the uplink data and to clear its buffers . . . and 

[thus] . . . the base station will respond by granting bandwidth in response to the BSR.” J.A. 2246 (citation omitted); see J.A. 2245 (Dr. Min stating “[t]he entire purpose 

of the BSR is to inform the base station, which would 

otherwise have no way of knowing the amount of bandwidth [the user equipment] requires at a particular 

[transition time interval].”). Rather than acknowledge 

the dispute about this fact, the District Court determined 

this evidence did not support Wi-LAN’s arguments. J.A. 

15. The District Court rejected Wi-LAN’s evidence because “it merely indicates that the number of bytes of 

data reported in a BSR is a factor [that radio base stations] use in calculating the number of [physical resource 

blocks] to allocate to subscriber units.” J.A. 15.

Taken together, we find that the District Court 

weighed conflicting evidence and improperly credited 

Ericsson’s evidence when reaching its conclusion that the 

accused products do not request bandwidth. See Ander-
22 WI-LAN USA, INC. v. ERICSSON, INC. 

son, 477 U.S. at 255. We vacate the grant of summary 

judgment and remand for further proceedings consistent 

with this opinion. 

III. Ericsson’s Cross-Appeal

In its cross-appeal, Ericsson challenges only one aspect of the District Court’s decision—i.e., whether the 

District Court erred by finding that the MFL Provision 

did not apply to the Patents-in-Suit. We agree with the 

District Court that the MFL Provision does not apply. 

A. Legal Framework

The PCRA is “governed in all respects in accordance 

with the laws of the state of New York.” J.A. 1766. 

Under New York law, “[t]he fundamental, neutral precept 

of contract interpretation is that agreements are construed in accord with the parties’ intent.” Greenfield v. 

Philles Records, Inc., 780 N.E.2d 166, 170 (N.Y. 2002)

(citation omitted). “[T]he construction of a plain and 

unambiguous contract is for the court to pass on, 

and . . . circumstances extrinsic to the agreement will not 

be considered when the intention of the parties can be 

gathered from the instrument itself.” West, Weir & Bartel, Inc. v. Mary Carter Paint Co., 255 N.E.2d 709, 711–12

(N.Y. 1969) (citation omitted). “In interpreting a contract[,] the court should examine the entire agreement 

and consider the relation of the parties and the circumstances under which it was executed.” William C. Atwater & Co. v. Pan. R.R. Co., 159 N.E. 418, 419 (N.Y. 1927). 

Additionally, “[p]articular words should be considered, not 

as if isolated from the context, but in the light of the 

obligation as a whole and the intention of the parties as 

manifested thereby.” Id. “Where the document makes 

clear the parties’ over-all intention, courts examining 

isolated provisions should then choose that construction 

which will carry out the plain purpose and object of the 

agreement.” Kass v. Kass, 696 N.E.2d 174, 181 (N.Y. 

1998) (internal quotation marks, brackets, and citation 
WI-LAN USA, INC. v. ERICSSON, INC. 23

omitted). 

B. The District Court Did Not Err in Finding the MFL

Provision Does Not Apply to the 

Patents-In-Suit

The District Court concluded that the PCRA’s MFL 

Provision did not apply to the Patents-in-Suit. J.A. 32. In 

reaching this determination, the District Court applied 

this court’s previous holding regarding the PCRA between 

Ericsson and Wi-LAN. The District Court stated that the 

“‘MFL Provision only applies to Wi-LAN’s patents owned 

or controlled as of the effective date of the PCRA, which 

the [Patents-in-Suit] were not.’” J.A. 12 (alteration omitted) (quoting Wi-LAN, 574 F. App’x at 940). “Ericsson 

does not contend that the [Patents-in-Suit] were owned or 

controlled by Wi-LAN as of the effective date of the 

PCRA.” J.A. 12. Rather, the District Court found that “it 

is undisputed that Wi-LAN acquired [the Patents-in-Suit] 

after the execution of the PCRA” and, thus, the MFL 

Provision does not apply to the Patents-in-Suit. J.A. 12. 

On cross-appeal, Ericsson argues that the PCRA was 

triggered by Wi-LAN’s assertion of U.S. Patent No. 

6,549,759 (“the ’759 patent”)7 against unrelated third 

parties’ products (i.e., products under the Universal 

Mobile Telecommunications System (“UMTS”) or High 

Speed Packet Access (“HSPA”) standards, collectively 

“UMTS/HSPA products”).8 Once the PCRA was triggered, 

 

7 Wi-LAN owned or controlled the ’759 patent before the November 1, 2007 effective date of the PCRA. 

See J.A. 1756 (effective date of the PCRA); J.A. 1789 

(assignment history of the ’759 patent). 

8 The UMTS “standard broadly defines third generation cellular network specifications and protocols—more 

commonly known as ‘3G.’ The UMTS standard consists of 
24 WI-LAN USA, INC. v. ERICSSON, INC. 

Ericsson contends that it has the right to “a license on the 

same terms as” unrelated third party BelAir Networks 

Inc.’s license with Wi-LAN (“the BelAir License”). CrossAppellants’ Br. 61 (capitalization modified). Ericsson

contends the scope of the future license under the MFL 

Provision “is not tied to the patent that triggers the MFL 

Provision[] [(i.e., the ’759 patent,)] for while only patents 

allegedly infringed by [the unrelated third parties’] 

UMTS/HSPA [p]roducts can trigger Ericsson’s right to a 

license, that license necessarily and explicitly extends 

beyond [the unrelated third parties’] UMTS/HSPA 

[p]roducts.” Id. at 62 (citation omitted). Because the

terms of the BelAir License “extend . . . to the [Patents-inSuit], the [c]ourt should hold that Ericsson is entitled to 

judgment on its counterclaims.” Id. at 63. 

We agree with the District Court’s conclusion that Ericsson is not entitled to a most favored licensee status as 

to the Patents-in-Suit, but for different reasons than those 

articulated by the District Court. We find that Ericsson is 

entitled to a most favored licensee status only for the 

patent or patents that trigger the MFL provision—i.e., the 

’759 patent.

The MFL Provision is provided in Article VII of the 

PCRA. In relevant part, Article VII, § 1 states:

In the event that Wi-LAN owns or controls the licensing of patents not already addressed under 

this Agreement and which are infringed or alleged 

to be infringed by UMTS/HSPA PRODUCTS, 

W[i]-LAN hereby agrees that[,] . . . at [Ericsson’s] 

 

a number of narrower standards, including . . . []HSPA[].” 

Wi-LAN, 574 F. App’x at 933. “HSPA is a wireless standard that specifically relates to the transfer of data between the network and a mobile device.” Id. 
WI-LAN USA, INC. v. ERICSSON, INC. 25

request, W[i]-LAN will grant . . . a non-exclusive 

license to make, have made, use, sell, offer for 

sale, lease or otherwise dispose of, and import [Ericsson’s] PRODUCTS including UMTS/HSPA 

PRODUCTS and Wi-LAN agrees to grant such a 

license at most-favored licensee status as compared to any future licensee of W[i]-LAN.

J.A. 1760. 

Under New York law, courts “should . . . choose that 

construction which will carry out the plain purpose and 

object of the agreement.” Kass, 696 N.E.2d at 181 (internal quotation marks, brackets, and citation omitted). “[A] 

court should not adopt an interpretation which will operate to leave a provision of a contract without force and 

effect.” Corhill Corp. v. S. D. Plants, Inc., 176 N.E.2d 37, 

38 (1961) (internal quotation marks, citations, and alteration omitted). Thus, in interpreting the relevant passage

of the MFL Provision, we must consider the entire contract and choose the interpretation “which best accords 

with the sense of the remainder of the contract.” Rentways, Inc. v. O’Neill Milk & Cream Co., 126 N.E.2d 271, 

273 (N.Y. 1955) (citations omitted). 

We previously concluded that the first clause of the 

relevant section is triggered when patents that Wi-LAN 

owned or controlled as of the PCRA’s effective date are 

asserted against Ericsson’s alleged infringing products. 

See Wi-LAN, 574 F. App’x at 940. Ericsson’s interpretation of the second clause of the relevant section—i.e., that 

it is entitled to a license on the same terms as the BelAir 

License—divorces the second clause from the previously 

interpreted first clause. The section discusses the rights 

extended to Ericsson in terms of patents, not products. 

By its terms, the section addresses the “licensing of patents not already addressed under this Agreement,” 

“which are infringed or alleged to be infringed by 

UMTS/HSPA PRODUCTS.” J.A. 1760. Within the same 
26 WI-LAN USA, INC. v. ERICSSON, INC. 

sentence, the section further states that, “during the 

TERM of this Agreement,” Wi-LAN will grant a “nonexclusive license” that covers the alleged infringing 

“PRODUCTS including UMTS/HSPA PRODUCTS.” J.A. 

1760. Reading the sentence in its entirety, the scope of 

the license would cover the patent or patents asserted by 

Wi-LAN against Ericsson for infringement, which is 

limited to pre-PCRA patents, such as the ’759 patent. 

And reading the scope of the section to apply to any postPCRA patent would result in an unreasonable interpretation of the MFL Provision as a whole. 

Granting a license to Ericsson on the same terms as 

the BelAir License would grant Ericsson significantly 

broader rights than those contractually agreed to in the 

PCRA. We previously held that the MFL Provision is 

triggered by the assertion of only pre-PCRA patents. See 

Wi-LAN, 574 F. App’x at 939–40. Today we determine 

that once the MFL Provision is triggered, the scope of that 

license is limited to the patent that triggered the MFL 

Provision. The Patents-in-Suit are excluded by this

analysis. We conclude that the District Court did not err 

in finding the MFL Provision does not apply to the Patents-in-Suit.

CONCLUSION

We have considered the parties’ remaining arguments 

and find them unpersuasive. Accordingly, the final judgment of the U.S. District Court for the Southern District 

of Florida is 

VACATED-IN-PART, AFFIRMED-IN-PART, AND 

REMANDED

COSTS

Each party shall bear its own costs.
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

WI-LAN USA, INC., WI-LAN, INC.,

Plaintiffs-Appellants

v.

ERICSSON, INC., TELEFONAKTIEBOLAGET LM 

ERICSSON,

Defendants-Cross-Appellants

______________________ 

2015-1766, -1794

______________________ 

Appeals from the United States District Court for the 

Southern District of Florida in No. 1:12-cv-23569-DMM, 

Judge Donald M. Middlebrooks.

______________________ 

O’MALLEY, Circuit Judge, concurring in part, dissenting 

in part.

Respectfully, I must disagree with two of the conclusions the majority reaches: (1) that the district court erred 

in granting summary judgment of invalidity with respect 

to the asserted claims of the ’437 patent; and (2) that the 

MFL provision in the PCRA, once triggered, is limited to 

the patent or patents that triggered the provision. I agree 

with all other aspects of the majority’s thoughtful analysis, including the ultimate conclusion that the MFL 

provision of the PCRA does not bar suit with respect to 

the products at issue in this proceeding.
2 WI-LAN USA, INC. v. ERICSSON, INC. 

I.

On my first point of disagreement, I believe that, 

when considered in its entirety, Mouly unambiguously 

teaches that its handover reference is sent over a RACH 

during asynchronous handover and, thus, anticipates that 

aspect of the asserted claims of the ’437 patent. The 

majority points to two errors it says the district court 

made—relying on arguments of Ericsson’s counsel and 

weighing the expert testimony from both parties against 

the teachings of Mouly to draw inferences therefrom. 

Maj. Op. at 10–14. While I do not dispute that a trial 

court would err if it predicated summary judgment on 

such findings, I do not believe the district court relied on

such findings here. 

The district court included a quotation of an argument 

by Ericsson’s counsel in the portion of the court’s opinion 

where the court was laying out the arguments made by 

each party before making its findings in relation to which 

party’s arguments were well taken. In this portion of the 

opinion, the district court also laid out all of Wi-LAN’s 

arguments to the contrary. The district court did not 

directly rely on these statements when making its final 

determination as to what the Mouly reference discloses, 

which comes well after the court’s references to statements made by counsel. 

The majority claims that the context provided by footnote 17 shows that the district court relied on the argument of counsel to make findings. Maj. Op. at 12–13 n.6. 

But the district court’s analysis as to the meaning of 

Mouly’s statement that the handover access message “is 

the only case where short access bursts are used on a 

dedicated channel” does not rely on statements by counsel. Instead, the district court finds Wi-LAN’s argument 

“inconsistent with the rest of Mouly (totaling 695 pages) 

and inconsistent with both Parties’ expert testimony.” 

J.A. 24–25. The district court then identifies the admis-
WI-LAN USA, INC. v. ERICSSON, INC. 3

sions of Dr. Min, Wi-LAN’s expert, as support for its 

holding. J.A. 25 n.18.

Complaints about the district court’s reference to expert testimony are also misplaced. The district court cited 

an admission by Wi-LAN’s own expert as a key piece of 

expert testimony. There is nothing improper about predicating summary judgment on binding admissions.

Specifically, counsel asked Dr. Min about the teachings of Mouly. The portion of Mouly counsel referred to 

states:

At initial assignment, or at handover between two 

cells which are not synchronised, no information 

can be used by either side to predict the timing 

advance. Signalling messages are different, but 

the timing advance initialisation process is very 

similar in both cases. The mobile station is forbidden to transmit normal bursts until it knows 

the new timing advance to apply.

J.A. 2394. Counsel then asked Dr. Min whether that 

language indicated to Dr. Min that “the communication 

between the mobile station and the target base station 

will not be on a dedicated channel until there has been a 

synchronization of the timing?” J.A. 1415. Dr. Min 

admitted that Mouly included this teaching, stating “I 

mean, that’s what he [Mouly] said, the mobile station is 

forbidden to transmit the data which is on a dedicated 

channel until . . . the synchronization is initiated.” J.A. 

1415.

Counsel then turned Dr. Min’s attention to the statement from Mouly on which Wi-LAN based its argument 

against anticipation, and on which the majority relies. In 

addressing the RIL3-RR HANDOVER ACCESS message, 

Mouly states, “[t]his message is the only case where short 

access bursts are used on a dedicated channel.” J.A. 826. 
4 WI-LAN USA, INC. v. ERICSSON, INC. 

Counsel asked Dr. Min whether this statement applied to

only synchronous handover, and Dr. Min replied:

It can be either way. You just have to—if it’s an 

asynchronous handover, then you have to obtain 

the synchronization and then you can use it afterward. So if it’s for the synchronous handover 

then it’s easier, clearly, you know, you haven’t lost 

your synchronization. But if it’s asynchronous, 

then you obtain the synchronization first and then 

you can use it on a dedicated channel.

J.A. 1417–18. Counsel then clarified with Dr. Min that, to 

the extent the statement refers to an access burst being 

sent on a dedicated channel in an asynchronous scenario, 

“the synchronization takes place prior to the access burst 

being sent,” and Dr. Min stated, “[y]es, that’s right.” J.A. 

1418.

Wi-LAN’s attempts to dismiss these statements as 

ambiguous testimony about obtaining synchronization on 

the dedicated channel in asynchronous handover misunderstand its place in the analysis. Dr. Min admits that a 

mobile device cannot transmit data on a dedicated channel until after synchronization has been completed. The 

mobile device therefore must transmit on the RACH prior 

to synchronization.

Although Dr. Min does not specifically state that the 

handover reference is transmitted prior to synchronization, his testimony can only support that result given the 

teachings of Mouly. Figure 6.37 of Mouly shows that the 

RIL3-RR HANDOVER ACCESS message is sent prior to 

the mobile device receiving the RIL3-RR PHYSICAL 

INFORMATION message that has the timing advance 

from the new base station, and therefore prior to synchronization. J.A. 826. Dr. Min admitted Mouly teaches that 

a mobile device “is forbidden to transmit data which is on 

a dedicated channel until . . . the synchronization is 

initiated.” J.A. 1415; see also J.A. 1417–18. If the mobile 
WI-LAN USA, INC. v. ERICSSON, INC. 5

device cannot transmit over a dedicated channel prior to 

synchronization, as admitted by Dr. Min, J.A. 1415, 1417–

18, then the teaching of Mouly that “[t]his message is the 

only case where short access bursts are used on a dedicated channel,” J.A. 826, must apply only to synchronized 

handovers. In asynchronous scenarios, the RIL3-RR 

HANDOVER ACCESS message sent prior to synchronization, as shown in Figure 6.37, cannot be sent over a 

dedicated channel—because synchronization has not been 

established yet—and therefore must be sent over the 

RACH. 

In the absence of material errors by the district court, 

the majority ultimately predicates its conclusion that 

Mouly’s teaching is ambiguous on one oddly phrased 

sentence in the entire reference, which encompasses 

hundreds of pages and includes at least seventeen pages 

dedicated specifically to handover execution. As explained above, however, Mouly’s teachings and Dr. Min’s 

admissions show that this sentence cannot apply to 

asynchronous handovers. Because no reasonable juror 

could read Mouly other than the way the district court 

did, or conclude that the one grammatically confusing 

phrase to which Wi-LAN and the majority point is enough 

to offset the otherwise clear teachings of Mouly, I do not 

find that Wi-LAN’s dispute predicated on that phrasing 

raises a genuine dispute of material fact to preclude 

summary judgment.

II.

With respect to the MFL provision of the PCRA, I 

agree with the majority that our prior opinion, Wi-LAN 

USA, Inc. v. Ericsson, Inc., 574 F. App’x 931 (Fed. Cir. 

2014), only decided whether the assertion of afteracquired patents triggers the MFL provision. Importantly, in that set of companion opinions, we affirmed a Texas 

judgment that rested only on a determination of what 

could trigger the MFL provision and reversed a Florida 
6 WI-LAN USA, INC. v. ERICSSON, INC. 

judgment, finding it erred in its assessment of that same 

predicate issue. We expressly refused to determine the 

scope of the MFL provision once triggered.

Now that the MFL provision has been triggered, we 

must decide that reserved question. Like the majority, I 

do not believe our earlier decision compels the conclusion 

the district court reached here. Unlike the majority, 

however, I believe the MFL provision defines the products 

as to which most favored licensee status would apply, not 

the patents. I conclude that the reasoning of our earlier 

decision as well as basic rules of grammar both limits and 

extends (depending on one’s perspective) the MFL provision to products which incorporate the type of technology 

at issue in the triggering patents—all UMTS technology. 

Because the products at issue in this action do not incorporate UMTS technology, I agree with the majority that 

the MFL provision does not bar Wi-LAN’s action; I just do 

so for slightly different reasons.

III.

Finally, I agree that the district court properly interpreted the term Bandwidth and that, based on that 

construction, the trial court erred in entering summary 

judgment of non-infringement of the ’298 and ’014 patents.

IV.

For these reasons, I concur-in-part and dissent-inpart.