United States Court of Appeals 

for the Federal Circuit ______________________ 

WI-LAN, INC.,

Plaintiff-Appellant

v.

APPLE INC.,

Defendant-Cross Appellant

______________________ 

2014-1437, -2014-1485

______________________ 

Appeals from the United States District Court for the 

Eastern District of Texas in Nos. 2:11-cv-00068-JRG, 

2:12-cv-00600-JRG, Judge J. Rodney Gilstrap.

______________________ 

Decided: January 8, 2016

______________________ 

ROBERT A. COTE, McKool Smith, P.C., New York, NY, 

argued for plaintiff-appellant. Also represented by 

SAMUEL FRANKLIN BAXTER, Marshall, TX; JASON 

BLACKSTONE, RICHTER DARRYL BURKE, SETH R.

HASENOUR, ROSEMARY T. SNIDER, Dallas, TX; DIRK D.

THOMAS, Washington, DC.

MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP, 

Washington, DC, argued for defendant-cross-appellant. 

Also represented by KATHERINE M. KOPP, T. VANN 

PEARCE, JR.; BRIAN PHILIP GOLDMAN, San Francisco, CA; 

WILL MELEHANI, Irvine, CA; SIDDHARTHA M. VENKATESAN, 
2 WI-LAN, INC. v. APPLE INC. 

Menlo Park, CA; ANDREW D. SILVERMAN, New York, NY; 

ASHLEE N. LIN, MIGUEL JESUS RUIZ, MARK C. SCARSI, 

Milbank, Tweed, Hadley & McCloy, LLP, Los Angeles, 

CA. 

______________________ 

Before REYNA, WALLACH, and HUGHES, Circuit Judges.

REYNA, Circuit Judge.

Wi-LAN, Inc. (“Wi-LAN”) is the assignee of U.S. Patent No. RE37,802 (“’802 patent”), which concerns a 

wireless data communication technique called “MultiCode Direct-Sequence Spread Spectrum” (MC-DSSS). WiLAN asserts that the patented technique is embodied in 

several modern wireless communications standards. 

On February 2, 2011, Wi-LAN sued Apple Inc. (“Apple”) and other technology companies in the United States 

District Court for the Eastern District of Texas for infringing claims 1 and 10 of the ’802 patent by manufacturing and selling products complying with various widearea communication standards. A jury found that Apple 

did not infringe and that the claims are invalid. The 

district court denied Wi-LAN’s motion for judgment as a 

matter of law (“JMOL”) and for a new trial with respect to 

infringement, but it granted Wi-LAN’s motion for JMOL 

of no invalidity.

Wi-LAN appeals the trial court’s denial of JMOL and 

its motion for a new trial on infringement, and Apple 

cross-appeals the grant of JMOL of no invalidity. Because 

the jury’s verdict of non-infringement was supported by 

substantial evidence, we affirm the district court’s denial 

of JMOL as to non-infringement. Because the trial court’s 

JMOL determination of no invalidity was based on a postverdict reconstruction of the claims, we reverse the district 

court’s grant of JMOL of no invalidity.
WI-LAN, INC. v. APPLE INC. 3

I. BACKGROUND

A. The Patented Technology

Wireless communication devices use radio waves to 

communicate digital data by modulating the frequency, 

amplitude, or phase of those waves according to preestablished patterns. Each pattern communicates a 

respective “symbol” corresponding to a given combination 

of bits. J.A. 3546. Devices that detect the radio waves 

can observe and interpret the modulation patterns to 

recover the transmitted symbols. 

“Direct-Sequence Spread Spectrum” (DSSS) is a prior 

art modulation technique that prevents third parties from 

intercepting and interpreting radio communications. 

Using DSSS, a radio transmitter “spreads” a signal across 

a band of frequencies by multiplying the signal against a 

pseudo-random signal called “pseudo-noise.” The pseudonoise signal corresponds to a particular code, such that a 

receiver with a corresponding code can “invert” (i.e., 

reverse) the spreading to recover the original signal. A 

third party scanning the spectrum would detect only what 

appears to be natural ambient noise, while the intended 

recipient could use the corresponding code to detect and 

decode the communication. A drawback of DSSS is that 

each communication occupies an entire band of frequency, 

which makes it difficult for multiple users to transmit 

data simultaneously.

“Code Division Multiple Access” (CDMA) is another 

prior art modulation technique that addresses the bandwidth shortcomings of DSSS by allowing multiple users to 

transmit on the same band using different spreading 

codes. Under CDMA, the signals from the multiple users 

form a combined noise-like signal, and each receiver can 

use its respective code to recover the communications

intended for it from the combined signal.
4 WI-LAN, INC. v. APPLE INC. 

The ’802 patent discloses a “multi-code” variation of 

DSSS (MC-DSSS), which enhances throughput by permitting a single transmitter to utilize multiple codes simultaneously. ’802 patent col. 1 l. 66 – col. 2 l. 5. The 

specification describes two embodiments, corresponding to 

Figures 1 and 4 respectively. 

The embodiment of Figure 1 includes: (1) a converter 10 

for converting a stream of data symbols into multiple sets
WI-LAN, INC. v. APPLE INC. 5

of N data symbols each, (2) a computing means 12 that 

operates on the sets of data symbols to produce “modulated data symbols corresponding to an invertible randomized spreading of the stream of data symbols” and (3) a 

combiner 14 for combining the modulated data symbols 

for transmission. Id. Fig. 1, col. 4 ll. 1–7. The computing 

means modulates each data symbol using a respective 

DSSS code, which may be derived using a series of mathematical transforms, as shown in Figure 3. Id. col. 4 ll. 7–

12, col. 4 ll. 29–34. The patent lists a dozen exemplary 

mathematical transforms, including the complex “randomizer transform” of Figure 8. Id. col. 4 l. 66 – col. 5 l. 

12. In the alternative embodiment of Figure 4, the computing means modulates the N data symbols by applying 

the transforms directly to the N data symbols rather than 

indirectly via the DSSS codes. Id. col. 4 ll. 38–43. 

Asserted claim 1 recites a transceiver for transmitting 

data using three components: 

1. A transceiver for transmitting a first stream 

of data symbols, the transceiver comprising:

a converter for converting the first stream of 

data symbols into plural sets of N data symbols each;

first computing means for operating on the plural sets of N data symbols to produce modulated data symbols corresponding to an 

invertible randomized spreading of the first 

stream of data symbols; and

means to combine the modulated data symbols 

for transmission. 

The claimed transceiver includes a “converter” for converting a stream of data symbols into multiple sets of data 

symbols, where each set includes N symbols. Second, the 

transceiver includes a “computing means” for operating 

on the sets to produce “modulated data symbols corre-
6 WI-LAN, INC. v. APPLE INC. 

sponding to an invertible randomized spreading” of the 

original data symbols. Finally, the transceiver includes a 

“means to combine the modulated data symbols for 

transmission.” Asserted claim 10, which depends on 

claim 1, adds means for receiving and decoding the data 

symbols.

B. Procedural History

The district court held a Markman hearing and issued 

two claim constructions relevant to this appeal. J.A. 18. 

First, the district court construed “modulated data symbols” to mean “data symbols that have been spread by a 

spreading code.” J.A. 62. In doing so, the court rejected 

Apple’s argument that the modulated data symbols must 

be randomized, explaining that “randomization is a 

desirable feature that is addressed by other claim language, such as the term ‘invertible randomized spreading,’ which appears in Claim 1 . . . .” Id. Second, the 

district court adopted the parties’ agreed construction of 

“first computing means.” The parties agreed that the 

limitation is a means-plus-function element subject to 35 

U.S.C. § 112 ¶6, and that the corresponding structure is 

“element 12 of Figures 1 and 4, columns 2:6–10, 2:36–40, 

2:58–62, 4:2–12, and 4:35–44, and equivalents thereof.” 

J.A. 73. The agreed upon construction matched the

construction of the same term issued by a different court 

in previous litigation between the parties. WI-LAN, Inc. 

v. Acer, Inc., No. 2:07-CV-473-TJW, Dkt. No. 469 (E.D. 

Tex. May 11, 2010) (“Acer”). In that case, the court had

rejected Wi-LAN’s proposal to construe the “first computing means” as additionally encompassing the exemplary 

transforms disclosed at col. 4 l. 66 – col. 5 l. 12, including

the complex randomizer of Figure 8, because the transforms related to how the pseudo-noise is generated rather 

than to any structure in the computing means. J.A. 1362, 

1364. Wi-LAN agreed to the Acer construction of the 

“first computing means” in this case and did not seek a 
WI-LAN, INC. v. APPLE INC. 7

construction that explicitly included the additional structure. 

At trial, Apple argued that it did not infringe because 

claim 1 requires randomizing the data symbols before 

combining them, and that Apple’s products perform these 

steps in the reverse order (the “ordering requirement”). 

Claim 1 recites that the computing means must “produce 

modulated data symbols corresponding to an invertible 

randomized spreading” and that the converter must 

“combine the modulated data symbols.” Apple argued 

that because “the modulated data symbols” refers back to 

the earlier-recited “modulated data symbols corresponding to an invertible randomized spreading,” the data 

symbols to be combined must have already been randomized. J.A. 13. The parties agreed that Apple’s products 

randomize the data symbols only after combining them.

Apple also argued that claims 1 and 10 are invalid because several prior art publications, including a 1989 

paper by Sasaki,1 anticipated the asserted claims. J.A. 

10,334. The parties agreed that the prior art references 

taught randomizing the modulated data symbols using 

real multipliers (i.e., using a “real randomizer”) rather 

than using complex multipliers (i.e., using a “complex 

randomizer”).2 J.A. 1059 at 194:21–25; J.A. 1058 at 

190:21–191:4. Apple’s invalidity arguments consequently 

rested on the proposition that “the Court’s claim construc1 Shingenobu Sasaki & Gen Marubayashi, A Study 

on the Code of Sequence for Parallel Spread-Spectrum 

Data Transmission, Inst. of Electronics, Info., and 

Commc’n. Engineers (IEICE) Technical Report, Vol. 89, 

no. 265 (Oct. 1989).

2 Complex multipliers are hardware structures that 

can multiply complex numbers, whereas real multipliers 

can multiply only real numbers.

 
8 WI-LAN, INC. v. APPLE INC. 

tion told us what the first computing means is, and it 

didn’t say complex randomizer.” J.A. 1059 at 195:5–11.

The jury found claims 1 and 10 of the ’802 patent invalid and not infringed. J.A. 362, 364. Wi-LAN moved for 

JMOL on both issues, and for a new trial on noninfringement. J.A. 1197. Wi-LAN argued that the court’s 

claim constructions precluded the ordering requirement 

underlying Apple’s non-infringement defense. J.A. 11-15. 

Wi-LAN also argued that the prior art did not anticipate 

the asserted claims because the prior art did not randomize using complex multipliers, which Wi-LAN argued the 

asserted claims require. J.A. 5. 

The district court upheld the jury’s finding of noninfringement, and reversed on invalidity. J.A. 16. Regarding non-infringement, the district court held that the 

ordering requirement was consistent with the court’s 

claim constructions and that a reasonable jury could have 

found non-infringement under those constructions. J.A. 

14. Regarding invalidity, the district court determined 

that, although its construction of computing means “does 

not specifically provide for a complex multiplier,” a complex multiplier was nevertheless necessary because 

“expert witnesses from both sides agreed that complex 

multipliers are part of the structure of the ‘first computing means’ as taught by the ’802 patent.” J.A. 9–10. It 

was undisputed that such multipliers were absent from 

the prior art. 

Wi-LAN appeals the denial of JMOL on noninfringement. Apple cross-appeals the grant of JMOL on 

no invalidity.

II. STANDARDS OF REVIEW

In reviewing a district court’s rulings on motions for 

JMOL or for a new trial, we apply regional circuit law. 

Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1367–
WI-LAN, INC. v. APPLE INC. 9

68 (Fed. Cir. 2005). The district court here sits in the 

Fifth Circuit.

The Fifth Circuit “reviews a motion for judgment as a 

matter of law de novo, applying the same legal standard 

as did the trial court.” Ford v. Cimarron Ins. Co., 230 F.3d 

828, 830 (5th Cir. 2000) (internal citations omitted). The 

Fifth Circuit “grants great deference to a jury’s verdict 

and will reverse only if, when viewing the evidence in the 

light most favorable to the verdict, the evidence points so 

strongly and overwhelmingly in favor of one party that 

the court believes that reasonable jurors could not arrive 

at any contrary conclusion.” Dresser-Rand Co. v. Virtual 

Automation Inc., 361 F.3d 831, 838 (5th Cir. 2004). The 

Fifth Circuit “review[s] the district court's decision on a 

motion for a new trial for an abuse of discretion.” Hollybrook Cottonseed Processing, L.L.C. v. Am. Guarantee & 

Liab. Ins. Co., 772 F.3d 1031, 1034 (5th Cir. 2014). “The 

standard for the district court to grant a new trial is 

whether the verdict is against the great weight of the 

evidence.” Whitehead v. Food Max of Miss., Inc., 163 F.3d 

265, 270 (5th Cir. 1998). 

Anticipation and infringement (both literal and under 

the doctrine of equivalents) are questions of fact, which 

we review for substantial evidence when tried to a jury. 

TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C., 

375 F.3d 1126, 1133 (Fed. Cir. 2004). Claim construction 

is a legal issue that may be based on underlying findings 

of fact. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 

831, 841 (2015). We therefore review a court’s constructions de novo and any underlying factual findings based 

on extrinsic evidence for clear error. Id. 

III. DISCUSSION

A. Non-Infringement

On appeal, Wi-LAN challenges the district court’s denial of JMOL on non-infringement on the grounds that
10 WI-LAN, INC. v. APPLE INC. 

the district court’s claim constructions precluded the 

ordering requirement underlying Apple’s noninfringement defense. Wi-LAN argues that the district 

court expressly rejected the ordering requirement at claim 

construction when it refused to construe “modulated data 

symbols” as necessarily randomized. J.A. 62. Wi-LAN 

argues that, even with the ordering requirement, Apple’s 

products would still infringe under the doctrine of equivalents because it is undisputed that the different orderings

produce mathematically identical results. 

Claim construction begins with the words of the 

claim, which “must be read in view of the specification, of 

which they are a part.” Phillips v. AWH Corp., 415 F.3d 

1303, 1312–15 (Fed. Cir. 2005) (en banc); Vitronics Corp. 

v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). 

Although courts are permitted to consider extrinsic evidence, like expert testimony, such evidence is generally of 

less significance than the intrinsic record. Phillips, 415 

F.3d at 1317 (citing C.R. Bard, Inc. v. U.S. Surgical Corp., 

388 F.3d 858, 862 (Fed. Cir. 2004)). Extrinsic evidence 

may not be used “to contradict claim meaning that is 

unambiguous in light of the intrinsic evidence.” Id. at 

1324.

The text of the asserted claims requires randomizing 

the modulated data symbols before combining them. 

Claim 1 recites a computing means that “produce[s]

modulated data symbols corresponding to an invertible 

randomized spreading” and a means to combine that 

“combine[s] the modulated data symbols.” Subsequent 

use of the definite articles “the” or “said” in a claim refers 

back to the same term recited earlier in the claim. Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 

(Fed. Cir. 2008). The term “the modulated data symbols” 

therefore refers back to the randomized data symbols 

produced by the computing means in the second claim 

element. Because the modulated data symbols in the 

second element are randomized upon being produced, 
WI-LAN, INC. v. APPLE INC. 11

those same modulated data symbols in the third element 

have already been randomized before they are combined. 

The text of the claim thus requires producing randomized 

symbols and then combining those randomized symbols.

The ordering requirement described above is consistent with the specification. Every embodiment discussed in the specification randomizes the data symbols 

before combining them. For instance, Figures 1 and 4 

both show combining as the final step, after computing 

means 12 operates on (i.e., spreads and randomizes) the 

data symbols. No disclosure in the specification depicts or 

discusses the possibility of combining before randomizing. 

The intrinsic record is therefore clear that the asserted 

claims cover only structure that randomizes data symbols 

in parallel before combining them for transmission. 

Contrary to Wi-LAN’s argument, the district court did 

not explicitly reject the ordering requirement at claim 

construction. The district court rejected only Apple’s 

argument that the unmodified term “modulated data 

symbols” must necessarily refer to randomized data 

symbols. J.A. 59–62. The district court did so only because the randomization requirement “is addressed by 

other claim language, such as the term ‘invertible randomized spreading.’” J.A. 59–62. Even though generic 

“modulated data symbols” do not have to be randomized, 

the recited “modulated data symbols corresponding to an 

invertible randomized spreading” do have be randomized. 

Because “the modulated data symbols” refers back to 

these already-randomized symbols, the claims impose the 

disputed ordering requirement. As the district court 

reiterated in its JMOL order, nothing in its construction 

precludes the ordering requirement. J.A. 14.

Wi-LAN also argues that the ordering requirement is 

inconsistent with dependent claim 4, which Wi-LAN 

contends places the “means to combine” between the
12 WI-LAN, INC. v. APPLE INC. 

spreading and the randomizing steps. We disagree. 

Claim 4 recites: 

4. The transceiver of claim 1 in which the first 

computing means comprises:

a transformer for operating on each set of data 

symbols to generate modulated data symbols as output, the modulated data symbols 

corresponding to spreading of each data 

symbol over a separate code selected from a 

set of more than one and up to M codes, 

where M is the number of chips per code; 

and

means to combine the modulated data symbols 

for transmission.

Claim 4 thus recites that the first computing means 

includes both a transformer for spreading the symbols 

and a means to combine the symbols. This configuration 

does not preclude the recited transformer, or any other 

component of the first computing means, from also randomizing the data symbols before they are combined. 

Claim 4 is therefore consistent with an interpretation of 

claim 1 that requires a structure that randomizes the 

symbols before combining them. 

In summary, the intrinsic record requires that the 

symbols be modulated according to an invertible randomized spreading before being combined for transmission. 

Because Apple’s products do not randomize the symbols 

before combining them, the structure of those products is 

not identical to the disclosed structure, and Apple therefore does not infringe the asserted claims. 

Wi-LAN argues that even if claim 1 requires a structure that randomizes before combining, structure that 

performs these steps in the reverse order nevertheless 

infringes under the doctrine of equivalents because the 
WI-LAN, INC. v. APPLE INC. 13

resulting output of the two orderings is mathematically 

identical. 

We have recognized that the doctrine of equivalents 

may be applied to a means-plus-function limitation to 

afford that limitation a somewhat broader scope of equivalents than it would otherwise receive under § 112 ¶6. 

Ring & Pinion Serv. Inc. v. ARB Corp., 743 F.3d 831, 835 

(Fed. Cir. 2014). Because the record contains no indication that the doctrine of equivalents is inapplicable here 

and because Apple has not so argued, we analyze infringement under that doctrine. 

Infringement under the doctrine of equivalents requires the patentee to prove that the accused device 

contains an equivalent for each limitation not literally 

satisfied. Catalina Mktg., 289 F.3d at 812. An element in 

the accused product is equivalent to a claimed element if 

the differences between the two elements are “insubstantial” to one of ordinary skill in the art. Warner–Jenkinson 

Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). 

Substantial evidence supports the jury’s verdict that 

the order difference between Apple’s products and the 

claimed invention is not insubstantial.3 Apple’s expert, 

Dr. Acampora, testified that the processor in Apple’s 

products is “not equivalent structure” to the recited 

“computing means.” J.A. 1052 at 167:6–7. He explained 

that the two structures are “fundamentally different 

because the order [of randomizing and combining] is 

wrong.” J.A. 1054 at 174:20–22. Dr. Acampora elaborat3 Though the verdict form did not include a separate question specific to the doctrine of equivalents, J.A. 

361, the district court instructed the jury on that doctrine, 

J.A. 384–387, and the verdict is therefore one of no infringement, either literally or under the doctrine of equivalents. 

 
14 WI-LAN, INC. v. APPLE INC. 

ed that even though the different orderings produce

mathematically equivalent results, they require structurally different hardware pipelines to implement: 

[T]he order in which these multiplications are 

done, the spreading and the randomization, does 

matter, because it – it affects the number of – the 

number of multipliers, the number of transistors 

that are needed on the circuitry. In one case, you 

need a lot more circuitry than you need in the second case. So that order really does matter. This is 

a design consideration. And the number of – the 

amount of circuitry that is needed is important, 

because these circuits, first of all, will take up 

space on the silicon, on the chip itself, and the 

more complicated and larger that chip becomes, in 

general, the more power-hungry it becomes. And 

in the cellular field, actually two things are very 

precious: Bandwidth spectrum and battery. So 

anything you do to reduce the power drain is useful, even if it’s only a little bit. 

J.A. 1034 at 93:22–94:13.

Wi-LAN counters that the structural differences Dr. 

Acampora described were insubstantial, and it points to 

Dr. Acampora’s testimony that in a configuration such as 

that found in Apple’s products, changing the order of 

operations would save as few as twenty transistors out of 

the millions found on the chip. J.A. 1053–54. Wi-LAN 

argues that such a slight modification is insubstantial 

and therefore cannot support a finding of nonequivalence. 

Though Wi-LAN’s argument has merit, we find it insufficient to disturb the jury’s verdict on substantial 

evidence review. On cross-examination Dr. Acampora 

testified that one should not consider the magnitude of 

structural differences with respect to the entire chip, but 

only with respect to the portion of the chip used to per-
WI-LAN, INC. v. APPLE INC. 15

form the relevant functionality. J.A. 1054 at 173:10–14. 

He testified that because that portion of the chip contains 

only a few hundred transistors, a savings of “20 out of a 

few hundred transistors” is “a big deal in wireless communications.” Id. Moreover, Dr. Acampora testified that, 

as parallelism increases, the differences in hardware 

requirements between the two designs could be orders of 

magnitude greater than the twenty transistors discussed 

in his cross-examination. J.A. 1033–34 at 91:19–93:11. It 

was therefore reasonable for the jury to credit Dr. 

Acampora’s testimony and to conclude that a person of 

ordinary skill would have found the design differences not

insubstantial. 

For the foregoing reasons, the jury’s verdict is neither 

unreasonable nor against the great weight of the evidence. The district court’s denial of JMOL respecting 

non-infringement was therefore proper and its denial of a 

new trial on the issue was not an abuse of discretion. We 

affirm the district court’s denials of both motions. 

B. Invalidity 

The district court vacated the jury’s verdict of invalidity because a reasonable jury should have understood that 

the first computing means must randomize the symbols 

using complex multipliers while the prior art used only 

real multipliers. J.A. 5. While acknowledging that its 

construction “does not specifically provide for a complex 

multiplier,” the district court nevertheless found such a 

component required because “throughout the trial, both 

sides took the position that the complex multiplier found 

in Figure 8 was necessarily included in the Court’s construction.” J.A. 8–9. 

On appeal, Apple argues that the district court’s postverdict addition of a complex multiplier requirement was

a new claim construction, which the district court may not 

issue at the JMOL stage. We agree. 
16 WI-LAN, INC. v. APPLE INC. 

“[I]t is too late at the JMOL stage to argue for or 

adopt a new and more detailed interpretation of the claim 

language and test the jury verdict by that new and more 

detailed interpretation.” Hewlett-Packard Co. v. Mustek 

Sys., Inc., 340 F.3d 1314, 1321 (Fed. Cir. 2003). At the 

JMOL stage, the question for the trial court is limited to 

whether substantial evidence supports the jury’s verdict 

under the issued construction. Id. 

Here, the jury was instructed that the “first computing means” is the structure corresponding to “elements 

12 of Figures 1 and 4, columns 2:6–10, 2:36–40, 2:58–62, 

4:2–12, 4:35–44, and equivalents thereof.” J.A. 73. As the 

district court acknowledged, this construction “does not 

specifically provide for a complex multiplier.” J.A. 9. In 

fact, nothing in the cited portions of the specification 

refers to Figure 8 or even mentions complex multipliers. 

J.A. 7. Instead, the portion of the specification dealing 

with Figure 8 and the other exemplary transforms (i.e., 

col. 4 l. 66 – col. 5 l. 12) is absent from the construction. 

This absence is particularly conspicuous given that in 

Acer, Wi-LAN had sought and failed to obtain a construction that included the omitted material, and that it subsequently consented to the omission in this case. When 

tested by the construction the court provided, it was 

reasonable for the jury to conclude that the “first computing means” need not include the complex multiplier of 

Figure 8. 

Wi-LAN argues that the trial court’s JMOL order was 

based, not on an impermissible reconstruction, but on a 

permissible clarification of the existing construction. WiLAN echoes the district court’s conclusion that expert 

testimony from both sides established that the complex 

multiplier of Figure 8 was implicit within the construction. Wi-LAN notes that Apple’s expert, Dr. Acampora, 

agreed that “the randomizer transform in Figure 8 is part 

of the transforms that are in Figure 4 and Figure 1 of the 

patent.” Therefore, Wi-LAN argues, the district court’s 
WI-LAN, INC. v. APPLE INC. 17

clarification at JMOL only made explicit what was already implicit in the original construction. 

We have recognized that a trial court may “adjust 

constructions post-trial if the court merely elaborates on a 

meaning inherent in the previous construction.” Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 

1392, 1397 (Fed. Cir. 2014). For example, in Cordis Corp. 

v. Boston Scientific, the district court construed the term 

“undulating” to mean “rising and falling in waves,” but 

clarified in granting JMOL that the plural “waves” could 

not be met by a single “U” shape. 658 F.3d 1347, 1355–57

(Fed. Cir. 2011) (emphasis added). We held that clarification permissible because it only “made plain . . . what 

should have been obvious to the jury.” Id. at 1356. 

This is not a case, however, where the inclusion of an 

implicit component should have been obvious to the jury. 

Contrary to the district court’s characterizations of the 

expert testimony, the parties clearly did not agree that 

the claims required complex randomization. Dr. Acampora made clear that “the Court’s claim construction told us 

what the first computing means is, and it didn’t say 

complex randomizer.” J.A. 1059 at 195:9–11. Dr. 

Acampora’s entire invalidity theory rested on the premise 

that the claims do not require complex randomization. He 

testified that, “Sasaki does not show complex randomizing, just randomizing.” J.A. 1059 at 196:4–5; see also J.A. 

1059 at 194:21–25 (“[Sasaki] does not use a complex 

randomizer.”); J.A. 1058 at 190:21–191:4. Despite the 

absence of the complex randomizer, Dr. Acampora testified repeatedly that the Sasaki reference discloses the 

first computing means because it discloses invertible 

randomized spreading using real randomizers. J.A. 1037 

at 106:19–21; J.A. 1037 at 107:10–12; J.A. 1038 at 111:11-

13. The district court’s characterization of Dr. Acampora’s testimony as requiring a complex randomizer is 

clearly at odds with that witness’s testimony. And even 

had Dr. Acampora opined that the invention’s computing 
18 WI-LAN, INC. v. APPLE INC. 

means required a complex multiplier, the jury was instructed that it was “not required to accept that opinion,” 

and that “it is solely up to you to decide whether to rely 

upon that opinion or not.” J.A. 373. Dr. Acampora’s 

testimony did not require a reasonable jury to conclude 

that a complex multiplier was necessary. 

In sum, the district court’s JMOL of no invalidity was 

based on a reconstruction of the claims that went far 

beyond clarifying a meaning inherent in the construction

or making plain what should have been obvious to the 

jury. Instead, the post-verdict reconstruction altered the 

scope of the original construction and undermined Apple’s 

invalidity case post-verdict. 

The only other argument Wi-LAN raised at JMOL respecting invalidity was that Apple’s expert had failed to 

perform a structural comparison of the claimed structure 

and the prior art. J.A. 5, 1197. The district court rejected 

that argument, and Wi-LAN has not appealed that rejection. J.A. 7. Because the complex multiplier requirement 

was the only other basis on which the district court could 

have vacated the jury’s invalidity verdict, and because we 

reject that basis here, we reverse. 

IV. CONCLUSION

For the reasons stated above, we affirm the district 

court’s denial of JMOL and of a new trial with respect to 

non-infringement, and we reverse the district court’s 

grant of JMOL of no invalidity. 

AFFIRMED-IN-PART AND REVERSED-IN-PART

COSTS

No costs.