NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NORTHPEAK WIRELESS, LLC,
Plaintiff-Appellant
v.
3COM CORPORATION, HEWLETT-PACKARD
COMPANY, D-LINK SYSTEMS, INC., FUJITSU
AMERICA, INC., GATEWAY, INC., ACER AMERICA
CORPORATION, ASUS COMPUTER
INTERNATIONAL CORPORATION, BELKIN
INTERNATIONAL, INC., U.S. ROBOTICS
CORPORATION, BUFFALO TECHNOLOGY (USA),
INC., BUFFALO AMERICAS, INC., DELL, INC.,
SONICWALL, INC., NETGEAR, INC., SMC
NETWORKS, INC., SONY ELECTRONICS, INC.,
SONY COMPUTER ENTERTAINMENT AMERICA
LLC, TOSHIBA AMERICA INFORMATION
SYSTEMS, INC., TRENDNET SYSTEMS, INC.,
TRENDWARE INTERNATIONAL, INC., ZONET USA
CORPORATION, VIEWSONIC CORPORATION,
ZYXEL COMMUNICATIONS, INC.,
Defendants-Appellees
INTEL CORPORATION,
Defendant-Appellee
______________________
2016-1477, 2016-1481
______________________
2 NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION
Appeals from the United States District Court for the
Northern District of California in Nos. 3:09-cv-00602-SI,
3:15-cv-05273-SI, Judge Susan Y. Illston.
______________________
Decided: December 28, 2016
______________________
CHRISTIAN JOHN HURT, Nix Patterson & Roach LLP,
Dallas, TX, argued for plaintiff-appellant. Also represent-
ed by DEREK TOD GILLILAND, Daingerfield, TX.
CHAD S. CAMPBELL, Perkins Coie LLP, Phoenix, AZ,
argued for all defendants-appellees. Defendant-appellee
Intel Corporation also represented by TYLER R. BOWEN,
AARON MATZ; DAN L. BAGATELL, Hanover, NH; NANCY
CHENG, Palo Alto, CA.
DAVID JACK LEVY, Morgan, Lewis & Bockius LLP,
Houston, TX, for defendants-appellees 3COM Corpora-
tion, Hewlett-Packard Company. Also represented by
THOMAS R. DAVIS.
DUNCAN PALMATIER, Law Offices of S.J. Christine
Yang, Fountain Valley, CA, for defendants-appellees D-
Link Systems, Inc., ZyXEL Communications, Inc. Also
represented by VICTORIA D. HAO, CHRISTINE H. YANG.
RUDOLPH KIM, Morrison & Foerster LLP, Palo Alto,
CA, for defendant-appellee Fujitsu America, Inc. Also
represented by DANIEL CLAYTON HUBIN.
MICHAEL CHAOCHA TING, TechKnowledge Law Group
LLP, Redwood City, CA, for defendants-appellees Gate-
way, Inc., Acer America Corporation.
ALFREDO A. BISMONTE, Beck, Ross, Bismonte & Finley
LLP, San Jose, CA, for defendant-appellee ASUS Com-
NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION 3
puter International Corporation. Also represented by
JEREMY DUGGAN.
RYAN KEN YAGURA, O'Melveny & Myers LLP, Los An-
geles, CA, for defendant-appellee Belkin International,
Inc. Also represented by JOHN KEVIN MURRAY, VISION
WINTER.
DAVID SPENCER BLOCH, Winston & Strawn LLP, San
Francisco, CA, for defendant-appellee U.S. Robotics
Corporation. Also represented by DAVID P. ENZMINGER,
Menlo Park, CA.
RUSSELL W. FAEGENBURG, Lerner, David, Littenberg,
Krumholz & Mentlik LLP, Westfield, NJ, for defendants-
appellees Buffalo Technology (USA), Inc., Buffalo Ameri-
cas, Inc.
JOHN D. HAYNES, Alston & Bird LLP, Atlanta, GA, for
defendants-appellees Dell, Inc., Sonicwall, Inc. Also
represented by NICHOLAS TANG TSUI; BRADY COX, Dallas,
TX; RYAN W. KOPPELMAN, East Palo Alto, CA.
RYAN R. SMITH, Wilson, Sonsini, Goodrich & Rosati,
PC, Palo Alto, CA, for defendant-appellee Netgear, Inc.
RICHARD C. VASQUEZ, Vasquez Benisek & Lindgren,
LLP, Lafayette, CA, for defendant-appellee SMC Net-
works, Inc. Also represented by ERIC W. BENISEK,
JEFFREY T. LINDGREN, ROBERT MCARTHUR, STEPHEN C.
STEINBERG.
LIONEL M. LAVENUE, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Reston, VA, for defendants-
appellees Sony Electronics, Inc., Sony Computer Enter-
tainment America LLC. Also represented by DANIEL
CRAIG COOLEY; KARA A. SPECHT, Atlanta, GA.
4 NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION
JOHN JOSEPH FELDHAUS, Foley & Lardner LLP, Wash-
ington, DC, for defendant-appellee Toshiba America
Information Systems, Inc. Also represented by PAVAN
KUMAR AGARWAL.
JEN-FENG LEE, LT Pacific Law Group LLP, City Of
Industry, CA, for defendants-appellees Trendnet Systems,
Inc., Trendware International, Inc., Zonet USA Corpora-
tion.
DANA M. HERBERHOLZ, Parsons Behle & Latimer, Boi-
se, ID, for defendant-appellee Viewsonic Corporation.
______________________
Before PROST, Chief Judge, CLEVENGER, and CHEN,
Circuit Judges.
CLEVENGER, Circuit Judge.
In November 2008, Plaintiff NorthPeak Wireless, LLC
(“NorthPeak”) asserted U.S. Patent Nos. 4,977,577 (“the
’577 patent) and 5,987,058 (“the ’058 patent”) against a
number of accused infringers who market wireless com-
munication products supporting IEEE 802.11 (commonly
referred to as “WiFi”). Among the accused infringers were
many customers using chips designed by Intel Corpora-
tion (“Intel”), who moved successfully to intervene in the
litigation in March 2009.
In September 2009, during the pendency of the dis-
trict court litigation, Intel filed its first ex parte reexami-
nation request for both the ’577 and ’058 patents. The
U.S. Patent & Trademark Office (“PTO”) found the claims
of the ’058 patent unpatentable but upheld the patentabil-
ity of the ’577 patent claims. Intel filed a second ex parte
reexamination request for the ’577 patent in August 2013,
and the PTO again upheld the challenged claims’ patent-
ability. As such, the ’577 patent claims remained in play
at the district court.
NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION 5
On August 28, 2015, the district court issued its order
construing the disputed claims terms for the ’577 patent.
Northpeak Wireless, LLC v. 3Com Corp., No. 09-CV-
00602-SI, 2015 WL 5117020 (N.D. Cal. Aug. 28, 2015)
(“Claim Construction Order”). Following the district
court’s order, NorthPeak entered into separate stipula-
tions of non-infringement with the two groups of accused
infringers—Intel, along with the accused infringers using
Intel chips, and those not using Intel chips. The sub-
stance of both stipulations is essentially the same: under
the district court’s constructions of several terms, North-
Peak could not prove infringement of the asserted claims
of the ’577 patent. The district court entered final judg-
ment of non-infringement as to both groups of accused
infringers (now, collectively, “the Appellees”).
NorthPeak appeals the district court’s constructions of
four claim terms/groupings: (1) “register”; (2) “[pream-
ble/address/data] register”; (3) “storing/stored”; and (4)
three related means-plus-function terms. Pursuant to the
parties’ stipulations—and as confirmed during oral argu-
ment—if we affirm any one of the district court’s con-
structions for “register,” “[preamble/address/data]
register,” or “storing/stored,” we must also affirm the
judgments of non-infringement.
For the following reasons, we affirm.
I
The ’577 patent relates to “a wireless warning system
for use in a large office building, and more particularly a
wireless fire warning and detection system which employs
spread spectrum technology with high reliability for
continuously monitoring the building.” ’577 patent col. 1
ll. 5–9. “Spread spectrum” technology, in essence, allows
for improved radiofrequency (“RF”) signal transmission
between remote locations by transforming or “spreading”
the transmitted data over a broader range of RF frequen-
cies. A broader signal better resists interference and
6 NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION
interception. When the spread signal arrives at its in-
tended location, the receiver “despreads” the signal to
recover the original data. The ’577 patent is not directed
specifically to the concept of using spread spectrum tech-
nology, but describes an application of the technology for
security systems in large buildings.
In general, as described in the specification, decen-
tralized sensors (capable of detecting fire, smoke, unau-
thorized access, etc.) are located throughout a given
space—e.g., in different rooms of an office building. These
sensors are coupled to spread spectrum transmitters,
which send data to one or more spread spectrum receiv-
ers. The receivers communicate with a centralized com-
puter, which can display the data to the user.
More specifically, the sensor data are passed to the
transmitters to be sent out as part of a “packet,” compris-
ing three components: (1) a preamble, (2) an address, and
(3) the actual sensor data. The preamble acts to synchro-
nize the transmitter with the receiver (or tell the receiver
to turn on so that it can receive the signal). The address
identifies which transmitter is sending the data packet.
The data detail whatever condition the sensor may have
detected (e.g., heat or smoke). The three components are
initially stored in “registers” in the transmitter as series
of binary “bits”— “0”s or “1”s. These bits comprise the
base information to be sent. The transmitter converts
each of these bit components into broader “chips”—the
spread out signal—by applying a “chip code.” The trans-
mitter broadcasts the spread chip signal to the receiver.
The receiver contains an identical chip code that it uses to
“despread” the chip signal to recover the original bit data.
NorthPeak’s asserted claims—claims 9, 12, 13, and
14—are largely directed to the circuitry of the transmit-
ters that effects the spreading transformation.
NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION 7
II
“The ultimate construction of the claim is a legal
question and, therefore, is reviewed de novo.” Info-Hold,
Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265
(Fed. Cir. 2015); see also Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (“[W]hen the
district court reviews only evidence intrinsic to the patent
(the patent claims and specifications, along with the
patent’s prosecution history), the judge’s determination
will amount solely to a determination of law, and the
Court of Appeals will review that construction de novo.”).
We begin with the parties’ dispute regarding the term
“register.” The district court, adopting a dictionary defini-
tion cited by NorthPeak during the second ex parte reex-
amination, construed “register” to mean “a small, named
region of high speed memory located within a micropro-
cessor or any electronic device capable of storing binary
data. A register is usually large enough to hold only a few
bytes of information and is referenced in programs by a
name, rather than an address.” Claim Construction
Order at *5–6. Agreeing in large part with the Appellees’
arguments, the district court explained that this support-
ing dictionary definition—rather than the actual con-
struction NorthPeak proposed during reexamination—
was necessary to capture NorthPeak’s arguments distin-
guishing certain types of memory found in the prior art.
The district court, however, declined Appellees’ proposal
to identify and exclude the specific prior art memory types
in the formal construction, i.e., “regular memory,” random
access memory (“RAM”), or memory buffers. Claim
Construction Order at *6 (“[D]efining a term by a non-
exhaustive list of the things that it is not, is [a] clumsy
and imprecise solution.”).
NorthPeak argues that the district court misunder-
stood the reexamination statements made to the PTO.
According to NorthPeak, the prior art references failed to
8 NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION
teach “registers,” not because they relied on “regular
memory,” but, rather, because these references lacked
“designated or specific regions of memory,” a defining
characteristic of registers. Indeed, NorthPeak emphasiz-
es that its proposed construction of “register” in this
litigation is the same as that which it proposed to the
PTO during the second ex parte reexamination, and which
the PTO ultimately adopted: “a designated or specific
region of memory in a computer processor.” NorthPeak
further argues that its prosecution history statements
were not unequivocal disavowals, such that they consti-
tuted a disclaimer of the full scope of the plain and ordi-
nary meaning of “register.” See Omega Eng’g, Inc, v.
Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)
(“[W]here the patentee has unequivocally disavowed a
certain meaning to obtain his patent, the doctrine of
prosecution disclaimer attaches and narrows the ordinary
meaning of the claim congruent with the scope of the
surrender.”).
Starting with this last point, we note that, although
the district court primarily relied on prosecution dis-
claimer in reaching its construction, this case does not
require invoking the prosecution disclaimer doctrine. It is
well established that we are to give claim terms their
“ordinary and customary meaning,” with reference to the
intrinsic evidence, including the prosecution history. 1 See
Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1317 (Fed.
Cir. 2005). Although consulting the prosecution history
often serves to identify ways in which the inventor may
have narrowed a claim’s definition in order to obtain
1 Statements made during reexamination proce-
dures before the PTO are part of the prosecution history.
See Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed.
Cir. 2012) (citing Am. Piledriving Equip., Inc. v. Geoquip,
Inc., 637 F.3d 1324, 1336 (Fed.Cir.2011).
NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION 9
allowance, it may also simply “inform the meaning of the
claim language by demonstrating how the inventor un-
derstood the invention.” See id. at 1317; see also Shire
Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1366
(Fed. Cir. 2015) (explaining that prosecution history
statements “do inform the claim construction,” even when
they “do not rise to the level of unmistakable disavowal”).
In this case, contrary to NorthPeak’s unsubstantiated
assertions, there is no hint in the term “register” itself
that would suggest the plain and ordinary meaning
necessarily encompasses types of regular memory such as
RAM or buffers. Therefore, we are not faced with the
question of whether NorthPeak unambiguously dis-
claimed the full scope of the term during reexamination.
Rather, the only intrinsic evidence informing the plain
and ordinary meaning of register comes from the prosecu-
tion history—including the definition NorthPeak itself
provided during reexamination:
The term “register” should be construed as “a des-
ignated or specific region of memory in a computer
processor.” This construction is consistent with
the plain and customary meaning to one of ordi-
nary skill in the art. See, e.g., COMPUTER
DICTIONARY at 334, Microsoft Press (2d. Ed. 1994)
(defining “register” as “[a] small named region of
high-speed memory located within a microproces-
sor or any electronic device capable of storing bi-
nary data. A register is usually large enough to
hold only a few bytes of information and is refer-
enced in programs by a name such as AX or SF. It
is used as a holding area for specific, sometimes
critical, pieces of data or information related to ac-
tivities going on within the system. For example,
a register might be used to hold the results of an
addition operation or to hold the address of a par-
ticular location in the computer’s memory.”)
10 NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION
Joint Appendix at 685. NorthPeak focuses exclusively on
the text of the proposed construction, distancing itself
from the actual definition it originally cited for support.
Clearly, however, at the time of the reexamination,
NorthPeak viewed the two statements as saying essen-
tially the same thing, or at least as being “consistent.”
Moreover, as the district court correctly determined,
NorthPeak’s additional statements during the second
reexamination conclusively establish that the dictionary
definition better conveys the inventors’ understanding of
the plain and customary meaning of “register.” North-
Peak specifically addressed the term “register” in distin-
guishing the claimed invention from two prior art
publications: Kahn and Dickson. Because Kahn and
Dickson described systems where information was stored
in and outputted from regular memory, NorthPeak ar-
gued they did not contain registers as found in the claims
of the ’577 patent. We disagree with NorthPeak that the
statements merely went to whether the memory in the
prior art was “designated or specific.” The focus of the
reexamination statements was plainly on distinguishing
“registers” from regular memory. The Examiner con-
firmed this understanding in an interview summary:
[T]he term “register” has been explained to have a
specific meaning which allegedly has not been
taught by Dickson and Kahn. This term is com-
monly defined as “a small, named region of high-
speed memory located within a microprocessor or
any electronic device capable of storing binary da-
ta” (Computer Dictionary at 331, Microsoft Press
(2nd edition 1994)). Accordingly [NorthPeak’s at-
torney] submitted that register cannot be any type
of memory, hence storing information such as pre-
amble or address in a regular memory would not
anticipate claimed invention.
Joint Appendix at 934 (emphasis added).
NORTHPEAK WIRELESS, LLC v. 3COM CORPORATION 11
The intrinsic evidence fully supports the district
court’s construction as representing the plain and cus-
tomary meaning of the term “register.” Even assuming
the full scope of the plain meaning of “register” were
broader than that which we assign, we would, like the
district court, find that NorthPeak unambiguously dis-
claimed a broader scope during reexamination. The
proper construction of “register” is: “a small, named
region of high speed memory located within a micropro-
cessor or any electronic device capable of storing binary
data. A register is usually large enough to hold only a few
bytes of information and is referenced in programs by a
name, rather than an address.”
As stated above, because we affirm the district court’s
construction of “register,” we need not address the re-
maining claim terms. The judgment of the district court
is affirmed.
AFFIRMED
COSTS
No Costs.