Review of ALJ’s ID re: ‘579 patent
First, let me say that reviewing the ALJ’s determination regarding infringement of the ‘579 patent was very unpleasant given my bias toward IDCC and the apparent bias the ALJ has against IDCC. It makes me sick to my stomach to see how far afield the ALJ goes in order to avoid a finding of infringement. Anyway, here is a review of what I saw in the ID and how the ALJ apparently erred in his decision (“erred” being a very generous way of putting it).
Claim 1: As IDCC stated in their petition for review, this was intended to be the broadest claim in the patent. IDCC’s position was that the term “apparatus”, which appears in the preamble to the claim, means “a base station and/or a User Equipment”. NOK’s position was that this term means base station only, as they knew that the only way they would avoid infringement was to convince the ALJ that this claim does not apply in this case. As we know, the ALJ sided with NOK and ruled that this claim applies only to a base station and for that reason NOK’s handsets don’t infringe.
What is amazing to me is the ALJ says in his determination that “respondents do not dispute that all elements of claim 1 are satisfied by [their] handsets under the complainants constructions”, yet the ALJ ruled against IDCC on every one of the claims construction issues (it would have looked less suspicious, IMO, if he had thrown IDCC a bone or two but he didn’t).
The construction of the “apparatus” term was the critical determination the ALJ made in his decision. The rationale he used for determining that this term needed construing in the first place was that “apparatus” is a generic term that gives no information about what function the “apparatus” is supposed to perform, so anyone reading the patent would dive into the claims language to get a definition for this term. IDCC had argued that the term was intentionally vague and required no construction – that in fact it is clear that this claim is intentionally broad, was intended to cover both the BS and the UE, and subsequent claims are narrower in scope and specifically apply to either base stations or user equipment.
The basis for the ALJ’s construction of “apparatus” was the phrase “a code used for scrambling” from the claim. The ALJ concluded that this is a functional limitation on the term “apparatus” and implies that an “apparatus” must perform scrambling, as scrambling is only performed in the base station. Therefore the entire claim was limited to base stations in his ID.
IDCC had argued that “a code used for scrambling” simply meant “a scrambling sequence”, because the same scrambling sequence is used for scrambling the data in the base station and for descrambling the data in the UE. Even NOK’s expert Kakaes testified that descrambling in the UE is performed by applying a “scrambling sequence”, which the ALJ should have taken as evidence that those skilled in the art use the term “scrambling sequence” for the code used in both the BS and the UE. NOK, on the other hand, took the position that “a code used for scrambling” should be read as a functional limitation, and IDCC’s construction would render the term meaningless since the produced code must be used for scrambling. As their own expert testified, and as the ALJ later acknowledges in the ID, the code does not have to be used for scrambling – it is also used for descrambling – so it is amazing to me that the ALJ could make the stretch that this is a functional limitation to the term “apparatus”.
The staff argued that although IDCC’s expert Gitlin testified that “a code used for scrambling” meant “a scrambling sequence”, he testified during the SAM trial that a “scrambling sequence” is a code used for “scrambling or descrambling” (not both). But it is clear from his response to IDCC’s petition that the staff doesn’t even grasp the fact that the scrambling and descrambling codes are identical – i.e., one and the same.
The ALJ even points out that the term “a code used for scrambling” only appears in claim 1. In later claims, the term “a code for use in scrambling” is used. Here the ALJ ignores the differences in the claims language, refusing to acknowledge the differences in intended meaning. In claim 1 IDCC used the past tense of the word (“used”), which means to me “the code that was used for scrambling (in the base station)”, as opposed to “a code [that is to be] used for scrambling”, which indicates a subsequent use of the generated code in later claims. He wrote,
The administrative law judge finds nothing in the claims of the ‘579 patent to indicate that the claimed phrase “a code used for scrambling… [an HS-SCCH]” in asserted claim 1 has a different meaning than the nearly identical term “code for use in scrambling… [an HS-SCCH]” in unasserted independent claims 7 and 9.
Of course, if he had looked at the specification he would find support for the use of the different terms, since IDCC makes it clear that the same “scrambling sequence” is used in the base station and UE (which is consistent with their position that claim 1 is the most broad, and applies to either a BS or UE), and “a code for use in scrambling” applies to a BS only, as they contend claims 7 and 9 apply to. Everything IDCC says is consistent, yet the ALJ goes out of his way to ignore clear differences in claims language in these claims.
The case law laid out in the beginning of the ID states that “…claim differentiation takes on relevance in the context of a claim construction that would render additional, or different, language in another independent claim superfluous.” Also, “…a claim construction that gives meaning to all the terms of a claim is preferred over one that does not do so.” It sounds to this layman as though the ALJ is ignoring these tenets of claims construction, glossing over the differences and the way they relate to the limitation he artificially creates on the term “apparatus”.
In the footnotes on page 179 and 181 are two very telling statements from the ALJ. He writes that it is undisputed that the terms “scrambling code” and “scrambling sequence” are used interchangeably. He also writes that in both the specification and the abstract the patent makes clear that the code used for both scrambling and descrambling processes is the same code. He writes:
In other words, the specification discloses that data is scrambled with the UE ID specific scrambling code or sequence prior to transmission … and subsequently descrambled at the UE using the UE ID specific scrambling code or sequence.
But the ALJ spends the next several pages of his ID on his convoluted logic that scrambling and descrambling are distinct operations, that scrambling only occurs in the base station, and finally that “a code used for scrambling” means a string of bits that is applied to scramble unscrambled data prior to transmission on the HS-SCCH. All this is fine, except that he ignores that fact that you have to generate the same code that was applied to scramble the unscrambled data prior to transmission at the UE if you want to also “descramble” the data, and therefore the “apparatus” described could be a BS or a UE!
As IDCC argues in their petition, the ALJ “grafts unjustified limitations on the claims, ignoring the plain meaning of the claim language…” Based on my reading of the ID, I agree. It seems that the ALJ goes out of his way to twist the construction of these terms to support his finding of no infringement. Fortunately, he correctly found the patent to be valid and enforceable so we should have a good chance of getting this overturned.
IDCC also makes strong points in their petition regarding NOK’s use of the ½ rate convolutional encoder. As they point out, the ALJ ignored much of the expert testimony from Gitlin and testimony from NOK’s deposed witnesses that the NOK handsets do, in fact, “implement the ½ convolutional encoder, but in a different manner than the preferred embodiment.” It is clear from anyone who understands the purpose of the HSDPA standard and the requirement for interoperability between different manufacturers’ equipment, that NOK must implement the same algorithm, or mathematical transfer function, in order for their handsets to operate in the network.
So bottom line, I think the commission will have to review this and will likely find that NOK does infringe this patent. The power ramp-up patents are more of a long shot, IMO, but this one is very clear cut if you look at how IDCC came up with their submission to the standards body, the way the scrambling and descrambling processes relate to each other and to the “scrambling sequence”, and the input/output relationship of a ½ rate convolutional encoding and puncturing process known to all skilled in the art.
JMO
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