Appeal from the United States District Court for the District of Delaware in No. 10-CV-0428, Judge Sue L. Robinson.
MARK D. GIARRATANA, McCarter & English, LLP, of Hartford, Connecticut, argued for plaintiff-appellant. With him on the brief were ERIC E. GRONDAHL; MICHAEL P. KELLY and DANIEL M. SILVER, of Wilmington, Delaware; and STEPHEN A. SALTZBURG, George Washington University, School of Law, of Washington, DC.
TIMOTHY S. TETER, Cooley LLP, of Palo Alto, California, argued for defendant-appellee. With him on the brief were BENJAMIN G. DAMSTEDT, LORI R. MASON, and LOWELL D. MEAD.
Before MOORE, MAYER, and CHEN, Circuit Judges.
Moore, Circuit Judge.
Golden Bridge Technology, Inc. (GBT) appeals from the district court's grant of summary judgment that Apple Inc. (Apple) does not infringe the asserted claims of U.S. Patent Nos. 6,574,267 (the '267 patent) and 7,359,427 (the '427 patent). We affirm .
GBT accused Apple of infringing the patents-in-suit, which describe and claim an improvement to a Code Division Multiple Access (CDMA) system. '267 patent, Abstract. A CDMA wireless cellular network consists of a base station and multiple mobile stations, such as cellular telephones. Golden Bridge Tech., Inc. v. Apple Inc., 937 F.Supp.2d 504, 508 (D. Del. 2013) ( Summary Judgment Order ). To establish communication between
a mobile station and a base station, the mobile station transmits a known signal called a preamble over a random access channel (RACH). Id. The CDMA system allows multiple signals to be sent over the same RACH by using different numerical spreading codes in transmitting each signal. Spreading codes enable the mobile stations and the base station to distinguish a particular wireless communication from other concurrent communications. See '267 patent col. 5 ll. 4-7, ll. 28-30. However, if too many mobile stations are transmitting simultaneously at high power levels, the signals from mobile stations can interfere with each other.
The patents-in-suit disclose an improvement for a CDMA system that reduces the risk of interference between the signals sent from various mobile stations. In particular, the patents-in-suit disclose that a mobile station seeking to communicate with the base station will transmit preambles at increasing power levels until it receives an acknowledgment signal from the base station indicating that the preamble was received. Id. col. 6 ll. 27-32, col. 7 ll. 47-51, 58-61. Once the mobile station receives an acknowledgment from the base station, it stops transmitting preambles and starts transmitting message information. Id. col. 7 ll. 58-61. This ensures that each data signal is transmitted at the lowest power necessary to reach the base station, thereby reducing the risk of interference.
Relevant to this appeal, GBT previously asserted the '267 patent in the Eastern District of Texas (Texas Litigation). In accordance with the parties' stipulation, the Texas district court construed preamble and access preamble (collectively referred to as preamble) as " a signal used for communicating with the base station that is spread before transmission." J.A. 3228. The district court subsequently granted summary judgment of anticipation, which we affirmed. Golden Bridge Tech. Inc. v. Nokia, Inc., 527 F.3d 1318 (Fed. Cir. 2008). While the appeal of the Texas Litigation was pending before our court, GBT sought new claims (1) during a reexamination of the '267 patent and (2) in a pending continuation application, which issued as the '427 patent. During prosecution of the '427 patent and reexamination of the '267 patent, GBT submitted to the United States Patent and Trademark Office (PTO) as part of an Information Disclosure Statement (IDS) the claim construction order from the Texas Litigation and various filings setting forth GBT's stipulated definition of preamble. J.A. 1680, 1808-10, 2008, 2127, 2639, 2641, 2679, 3228. The claims GBT asserted against Apple in this case are new claims that were either added during reexamination of the '267 patent or during prosecution of the '427 patent.
Claim 42 of the reexamined '267 patent is representative of the claims asserted in this litigation (emphases added):
A method of transferring packet data for a mobile station (MS) with an MS receiver and an MS transmitter comprising:
receiving at the MS receiver a broadcast common channel from a base station;
determining a plurality of parameters required for transmission to the base station;
spreading an access preamble selected from a set of predefined preambles ;
transmitting from the MS transmitter the spread access preamble, at a first ...