Federal Circuit Explores Capability Claims
On August 31, 2022, the Court of Appeals for the Federal Circuit (CAFC) affirmed a determination of non-infringement by the International Trade Commission (ITC). Although the CAFC disagreed with the ITC as to whether the claims were directed towards capability, the CAFC nevertheless affirmed the finding of non-infringement because the capability had not been proven. INVT SPE LLC v. Int’l Trade Comm’n, No. 2020-1903, -- F.4th -- (Fed. Cir. Aug. 31, 2022).
This appeal comes from a 19 U.S.C. § 1337 dispute before the ITC. Complainant INVT SPE LLC alleged infringement of U.S. Patent No. 7,848,439 (“’439 patent”) and requested an injunction to stop the importation by Respondents of cellular devices that use the LTE standard, such as smartphones, smart watches, and tablets.
At issue was the mapping of claim 1 to the cellular devices’ communications with a base tower. Under the LTE standard, the cellular devices first select one of 16 possible combinations of modulation and coding parameters to be sent to the base station. The base station, in response, selects one of nearly 3,000 combinations of modulation and coding parameters to be sent to the device.
In relevant part, claim 1 of the ’439 patent requires “a parameter deciding section that decides modulation parameters and coding parameters” and “a receiving section that receives a signal containing data modulated and encoded … using [those same] modulation parameters and [those same] coding parameters.”
Per INVT, the accused devices had the capability to decide modulation and coding parameters, and then receive a signal using those same modulation and coding parameters. However, no part of the LTE standard required that these parameters be the same. Accordingly, INVT asserted that these claims were infringed by the devices’ mere capability. The ITC disagreed because the “plain language” of the claims recited actions rather than capability, i.e., the claims recited “deciding” and “using” rather than “for deciding” or “for using.”
The CAFC rejected that reasoning, noting that there is “very little” difference between a limitation that recites “for demodulating and decoding” and one that recites “demodulates and decodes.” For computer-implemented claims such as claim 1 of the ’439 patent, there is no specific grammatical format that governs whether a claim is directed towards capability.
Nevertheless, the Court affirmed the decision of non-infringement. While the record established that the cellular device would function if the base station had selected the same parameters as the device had selected in its initial decision, there was no evidence that this ever happens. Accordingly, the accused cellular device lacked the capability to receive, from the base station, the same modulation and coding parameters it selected in its initial decision.