United States Court of Appeals
for the Federal Circuit
__________________________
HTC CORPORATION AND
HTC AMERICA, INC.,
Plaintiffs-Appellees,
v.
IPCOM GMBH & CO., KG,
Defendant-Appellant.
__________________________
2011-1004
__________________________
Appeal from the United States District Court for the
District of Columbia in Case No. 08-CV-1897, Judge
Rosemary M. Collyer.
__________________________
Decided: January 30, 2012
__________________________
MICHAEL A. OBLON, Perkins Coie, LLP, of Washing-
ton, DC, argued for plaintiff-appellant. With him on the
brief were JONATHAN M. JAMES and DAN L. BAGATELL, of
Phoenix, Arizona.
MITCHELL G. STOCKWELL, Kilpatrick Townsend &
Stockton, LLP, of Atlanta, Georgia, argued for defendant-
appellant. With him on the brief were GEOFFREY K.
GAVIN and LEROY M. TOLIVER.
__________________________
HTC CORP v. IPCOM GMBH 2
Before BRYSON, LINN, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
The U.S. District Court for the District of Columbia
granted HTC Corporation and HTC America, Inc.’s
(“HTC”) motion for summary judgment of invalidity of
claims 1 and 18 of U.S. Patent No. 6,879,830, owned by
IPCom GmbH & Co., KG (“IPCom”). The district court
concluded that those claims were indefinite because they
claimed both an apparatus and method steps. We reverse
the district court’s judgment because the district court
misconstrued the claims, which cover only an apparatus.
As an alternative basis for invalidating claims 1 and
18, HTC argues that the claims are indefinite because the
’830 patent’s specification fails to disclose corresponding
structure for the claims’ means-plus-function limitation.
On this point, we agree with the district court that the
specification adequately discloses a processor and trans-
ceiver for use in performing the functions recited in these
claims. Although the district court was wrong to conclude
that a processor and transceiver alone provide sufficient
structure for the asserted claims, HTC waived any other
legitimate attack on the adequacy of the disclosures with
respect to claims 1 and 18. We, thus, find that the district
court was correct to deny summary judgment on HTC’s
alternative indefiniteness claim.
I.
HTC sued IPCom in 2008 and sought a declaration
that it did not infringe a valid and enforceable claim of
one of IPCom’s patents. IPCom filed a counterclaim and
alleged infringement of two additional patents, including
the ’830 patent.
The ’830 patent covers a handover in a cellular tele-
phone network. A cellular telephone—called a “mobile
3 HTC CORP v. IPCOM GMBH
station” in the patent—maintains a link with a tower—
called a “base station.” A handover occurs when a mobile
station switches from one base station to another. This
happens, for example, when a person using a cellular
telephone travels in a car between coverage areas. The
invention, in principle, reduces the chance of interrupted
service during a handover.
Claim 1 recites:
A mobile station for use with a network in-
cluding a first base station and a second base
station that achieves a handover from the first
base station to the second base station by:
storing link data for a link in a first base sta-
tion,
holding in reserve for the link resources of the
first base station, and
when the link is to be handed over to the sec-
ond base station:
initially maintaining a storage of the link data
in the first base station,
initially causing the resources of the first base
station to remain held in reserve, and
at a later timepoint determined by a fixed pe-
riod of time predefined at a beginning of the
handover, deleting the link data from the first
base station and freeing up the resources of
the first base station, the mobile station com-
prising:
an arrangement for reactivating the link with
the first base station if the handover is unsuc-
cessful.
HTC CORP v. IPCOM GMBH 4
U.S. Patent No. 6,879,830 col.8 ll.12–32 (filed Jan. 6,
2000) (emphasis added).
Claim 18 is identical to claim 1, except that the
phrase in claim 1 that reads, “at a later timepoint deter-
mined by a fixed period of time predefined at a beginning
of the handover, deleting the link data from the first base
station and freeing up the resources of the first base
station . . . ” is modified in claim 18 to read, “at a later
timepoint determined based on a message from one of the
mobile station and the second base station regarding a
successful completion of handing over the link, deleting
the link data from the first base station and freeing up
the resources of the first base station . . . .” Id. col.10
l.61–col.12 l.6 (emphasis added). The distinction is imma-
terial to this appeal.
In its opening claim construction brief, HTC moved
for summary judgment of invalidity on the ground that
the means-plus-function limitation “arrangement for
reactivating,” found in the last paragraph of claims 1 and
18, was indefinite because the patent failed to disclose
structure corresponding to the claimed function. The
district court rejected that argument because, the court
believed, a person of skill in the art would understand
that the corresponding structure was a processor and
transceiver. HTC Corp. v. IPCom GmbH & Co., No. 08-
cv-1897 (D.D.C. Aug. 25, 2010), ECF No. 187 at 42. HTC,
however, also argued for summary judgment on the
ground that claims 1 and 18 were indefinite because they
claimed both an apparatus and method steps. The dis-
trict court agreed with that argument and granted sum-
mary judgment of invalidity of claims 1 and 18. Id. at 47.
The district court’s ruling only partially disposed of
the claims in the case. The parties stipulated, and the
district court agreed, to enter final judgment on the
5 HTC CORP v. IPCOM GMBH
summary judgment ruling and certify the matter for
immediate appeal. See Fed. R. Civ. P. 54(b). The parties
also stipulated that claim 12, in addition to claims 1 and
18, was indefinite under the district court’s reasoning.
Our opinion and judgment apply to claim 12 as well.
II.
The district court erred when it held the claims in-
definite for claiming an apparatus and method steps.
First, the district court misconstrued the claims. Then,
the district court applied to the erroneous construction
this court’s precedent prohibiting hybrid claiming of
apparatus and method steps. The prohibition on hybrid
claiming is inapplicable to claims 1 and 18 when they are
correctly construed.
A.
The district court erred in construing claims 1 and 18
because it failed to adhere to the principles of claim
construction set forth in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc). To facilitate our claim
construction analysis, we recite the relevant portion of the
claims again, annotate them with numbered paragraphs,
and emphasize key terms:
[1] A mobile station for use with a network includ-
ing a first base station and a second base station
that achieves a handover from the first base sta-
tion to the second base station by:
[2] storing link data for a link in a first base sta-
tion,
[3] holding in reserve for the link resources of the
first base station, and
[4] when the link is to be handed over to the sec-
ond base station:
HTC CORP v. IPCOM GMBH 6
[5] initially maintaining a storage of the link data
in the first base station,
[6] initially causing the resources of the first base
station to remain held in reserve, and
[7] at a later timepoint . . . deleting the link data
from the first base station and freeing up the re-
sources of the first base station, the mobile station
comprising:
[8] an arrangement for reactivating the link with
the first base station if the handover is unsuccess-
ful.
’830 patent col.8 ll.12–32, col.10 l.61–col.12 l.6 (emphases
added). The parties disagree whether the mobile station
or the network, both recited in paragraph 1, implements
the six functions enumerated in paragraphs 2–7. If the
mobile station implements the functions, the claims are
indefinite because they recite both an apparatus—the
mobile station—and method steps—the functions enu-
merated in paragraphs 2–7. If the network performs the
functions, the claims are not indefinite because the claims
merely describe the network environment in which the
mobile station must be used. The district court concluded,
without complying with Phillips’s claim construction
principles, that the mobile station implements the func-
tions recited in paragraphs 2–7.
1.
The district court did not examine adequately the
claims themselves. Phillips, 415 F.3d at 1314. Claims 1
and 18 begin by reciting, in the first paragraph, a “mobile
station” to be used with a “network.” Immediately follow-
ing “network” are the phrase “including a first base
7 HTC CORP v. IPCOM GMBH
station and a second base station” and the clause “that
achieves a handover from the first base station to the
second base station by [implementing the six enumerated
functions].” Modifiers should be placed next to the words
they modify. William Strunk, Jr. & E.B. White, The
Elements of Style 30 (4th ed. 2000). A reader, therefore,
may assume that the phrase beginning with “including”
and the clause beginning with “that achieves” modify
“network.”
Supporting that assumption, the claims re-introduce
the mobile station in paragraph 7 after the enumerated
functions. The mobile station is followed by a functional
limitation in paragraph 8: “the mobile station comprising
. . . an arrangement for reactivating the link with the first
base station if the handover is unsuccessful.” ’830 patent
col.8 ll.28–32, col.12 ll.4–6 (emphasis added). The claims
would read in a disjointed manner if they were to recite
the mobile station in the first paragraph, modify the
mobile station with the six enumerated functions, and
then, without a transition, recite the mobile station again
in paragraph 7, followed by yet another modifier. Had the
claim drafter intended that format, the drafter likely
would have followed the recitation of the mobile station in
paragraph 7 with “further comprising” instead of “com-
prising” to signal that additional modification would be
attached to the mobile station.
Words of a claim “are generally given their ordinary
and customary meaning.” Vitronics Corp. v. Concep-
tronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The
plain language of claims 1 and 18 indicates that the
network, not the mobile station, performs the enumerated
functions.
HTC CORP v. IPCOM GMBH 8
2.
In addition to examining the claim language, the dis-
trict court should have referred to the specification to
understand the claims. Phillips, 415 F.3d at 1315. The
specification is in parity with the claim language, confirm-
ing that the network, rather than the base station, per-
forms the enumerated functions. As the specification
explains, the first base station, not the mobile station,
initially stores link data: “[T]he data required for the link
initially remain stored in BS 1 [the first base station], and
initially BS 1 does not reassign the resources . . . required
to maintain the link with the MS [mobile station].” ’830
patent col.5 ll.61–64. This is consistent with the claims’
first five enumerated functions in paragraphs 2–6: “[2]
storing link data for a link in a first base station,” “[3]
holding in reserve for the link resources of the first base
station,” and, “[4] when the link is to be handed over to
the second base station,” “[5] initially maintaining a
storage of the link data in the first base station” and “[6]
initially causing the resources of the first base station to
remain held in reserve.” The specification then explains
that, after a successful handover, the first base station,
not the mobile station, deletes the held resources: “BS 1
can therefore delete the information and, respectively, the
resources that were held in reserve can be assigned
elsewhere.” Id. col.6 ll.18–20. This is consistent with the
claims’ sixth condition recited in paragraph 7, in which,
“at a later timepoint,” link data are deleted “from the first
base station and free[] up the resources of the first base
station.”
HTC fails to cite any part of the specification indicat-
ing that the mobile station implements the six functions.
The mobile station, HTC argues, is the “quarterback” of
the handover because the specification speaks in terms of
the mobile station’s “performing” a handover. The specifi-
9 HTC CORP v. IPCOM GMBH
cation, however, does not suggest that the mobile station
must actually implement the six functions to perform a
handover. In one scenario described in the specification,
the mobile station sends the first base station a “Hand-
over Notify” message indicating that it is trying to per-
form a handover to another base station. ’830 patent col.5
ll.58–59. The first base station—not the mobile station—
holds resources in reserve and maintains link data while
the second base station attempts to establish a link to the
mobile station. Id. col.5 ll.60–64. Meanwhile, the first
and second base stations swap authentication parameters
for the mobile station. Id. col.6 ll.6–7. The first base
station does not delete the link data it is holding in re-
serve until it receives confirmation from the second base
station—not the mobile station—that the handover was
successful. Id. col.6 ll.15–20. Thus, although the mobile
station “performs” the handover, the base stations are
actually implementing the six functions. The specifica-
tion confirms that the six functions define the network
environment; they are not functions performed by the
mobile station.
3.
A court should also look to the prosecution history
when construing a claim. Phillips, 415 F.3d at 1317. The
district court noted that, in an office action response, the
applicants of the ’830 patent distinguished a prior art
reference that the examiner cited by arguing that “the
cited section of [the prior art reference] clearly describes a
process that is completely different from the claimed
process . . . .” App. 46 (emphasis and brackets in original).
The district court believed that the applicants’ use of the
word “process” was an acknowledgement that claims 1
and 18 recite method steps.
HTC CORP v. IPCOM GMBH 10
The district court placed too much weight on the ap-
plicants’ use of the word “process” when the claim lan-
guage and the specification indicated that the applicants
did not claim a process. Claim language and the specifi-
cation generally carry greater weight than the prosecu-
tion history. “[B]ecause the prosecution history
represents an ongoing negotiation between the PTO and
the applicant, rather than the final product of that nego-
tiation, it often lacks the clarity of the specification and
thus is less useful for claim construction purposes.”
Phillips, 415 F.3d at 1317. An attorney’s single reference
to a “process” in the office action response is unpersuasive
when weighed against the plain language of the claims
and the specification, both of which clearly indicate that
the enumerated functions are part of the network envi-
ronment.
Like the district court, HTC places too much weight
on the prosecution history. In addition to seizing on the
applicants’ use of the word “process,” HTC argues that the
applicants acquiesced when the examiner called the six
enumerated functions “steps.” That fact carries little
weight. The examiner was also referring, in most in-
stances, to a pending method claim, which the applicants
later withdrew.
The cases that HTC cites do not change our view. In
Ventana Medical Systems, Inc. v. Biogenex Laboratories,
Inc., this court held that an examiner’s restriction re-
quirement and a patentee’s remarks during prosecution
were insufficient to support a finding that the patentee
disavowed a particular claim scope. 473 F.3d 1173, 1182–
83 (Fed. Cir. 2006). IPCom’s office action response, like-
wise, is insufficient to support a finding of disavowal. In
Fuji Photo Film Co. v. U.S. International Trade Commis-
sion, this court rejected a patentee’s argument that the
applicant’s failure to recite a “taking lens” as a means in a
11 HTC CORP v. IPCOM GMBH
claim was an inadvertent omission. 386 F.3d 1095, 1099
(Fed. Cir. 2004). The examiner had suggested that the
applicant omitted the taking lens—a suggestion that the
applicant never contested. Id. at 1100. The applicant’s
prosecution conduct in Fuji provided a much clearer
indication of the applicant’s understanding of the inven-
tion than in this case.
Although the district court was correct in considering
the prosecution history, the claim language and specifica-
tion in this case are better sources for the correct con-
struction.
4.
A court may also look to extrinsic evidence, such as
dictionaries and expert opinions. Phillips, 415 F.3d at
1317. The parties do not rely on extrinsic evidence in
connection with this issue. The claim language and the
specification provide ample support for the conclusion
that the six enumerated functions are part of the network
environment and are not method steps.
B.
Based on its erroneous claim construction, the district
court held that claims 1 and 18 are indefinite because
they claim an apparatus and method steps. See IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed.
Cir. 2006). The claims do not contravene IPXL when
properly construed.
The claim at issue in IPXL read as follows:
The system of claim 2 [including an input
means] wherein the predicted transaction in-
formation comprises both a transaction type
and transaction parameters associated with
that transaction type, and the user uses the
HTC CORP v. IPCOM GMBH 12
input means to either change the predicted
transaction information or accept the dis-
played transaction type and transaction pa-
rameters.
Id. (quoting U.S. Patent No. 6,149,055 col.22 ll.8–13 (filed
June 26, 1996)). We held the claim indefinite because the
claim failed to make clear whether infringement would
occur “when one creates a system that allows the user to
change the predicted transaction information or accept
the displayed transaction, or whether infringement occurs
when the user actually uses the input means to change
transaction information or uses the input means to accept
a displayed transaction.” Id. The IPXL claim, in other
words, was ambiguous because it recited both a system
that allowed a user to practice a method step and the
user’s practicing the method step. Claims 1 and 18 are
different. They do not recite a mobile station and then
have the mobile station perform the six enumerated
functions. The claims merely establish those functions as
the underlying network environment in which the mobile
station operates.
Claims 1 and 18 are similar to a claim we found defi-
nite in Microprocessor Enhancement Corp. v. Texas In-
struments, Inc., 520 F.3d 1367 (Fed. Cir. 2008) (“MEC”).
The claim structure was as follows:
A method of executing instructions in a pipelined
processor comprising: [structural limitations of
the pipelined processor]; the method further com-
prising: [method steps implemented in the pipe-
lined processor].
Id. at 1374 (quoting U.S. Patent No. 5,471,593 col.129
l.27–col.130 l.32 (filed Jan. 21, 1994)). The MEC claim
made clear that direct infringement was limited to prac-
ticing the claimed method in the pipelined processor
13 HTC CORP v. IPCOM GMBH
possessing the required structure. Id. Claims 1 and 18,
likewise, make clear that infringement occurs when one
makes, uses, offers to sell, or sells the claimed apparatus:
the mobile station—which must be used in a particular
network environment. Both the MEC claim and the
claims in this case feature what the MEC court called a
“preamble-within-a-preamble” format. Id. Although the
MEC court acknowledged that such a format is unconven-
tional, the court found the claim sufficiently clear to
apprise a person of when infringement occurs. Id. The
unconventional format of claims 1 and 18, likewise, does
not preclude the claims from being definite.
C.
Finally, IPCom moves that we take judicial notice of
several third-party wireless-technology patents that it
claims would be jeopardized if we were to hold claims 1
and 18 indefinite. Appellee’s Br. 33–34. We deny the
motion as moot because the claims are definite.
III.
HTC argues, as an alternative basis for invalidity,
that claims 1 and 18 fail to disclose corresponding struc-
ture sufficient to satisfy the principles governing means-
plus-function claims. Although the district court was
wrong when it found that a processor and transceiver
alone supplied sufficient structure, HTC failed to preserve
the argument that the specification fails to disclose an
algorithm sufficient to transform the processor and trans-
ceiver into a special-purpose computer designed to im-
plement the claimed functions. HTC argued only that the
specification’s reference to cellular telephones was insuffi-
cient to convey use of a processor and transceiver with
sufficiently complex hardware to perform the handover
function described in claims 1 and 18.
HTC CORP v. IPCOM GMBH 14
A.
The mobile station recited in paragraphs 7–8 of claims
1 and 18 is a “mobile station comprising . . . an arrange-
ment for reactivating the link with the first base station if
the handover is unsuccessful.” The parties agree that the
term “arrangement for reactivating” is a means-plus-
function limitation.
A patentee may express an “element in a claim for a
combination” “as a means or step for performing a speci-
fied function without the recital of structure, material, or
acts in support thereof.” 35 U.S.C. § 112 ¶ 6. When a
patentee invokes such “means-plus-function” claiming,
the “claim shall be construed to cover the corresponding
structure, material, or acts described in the specification
and equivalents thereof.” Id.
To determine whether a means-plus-function limita-
tion is definite, a court applies a two-step analysis. First,
a court identifies the particular claimed function. Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344
F.3d 1205, 1211 (Fed. Cir. 2003) (citation omitted). The
parties agree—aside from immaterial differences in their
respective articulations—that the function of the term
“arrangement for reactivating” is to reactivate the link
with the first base station if the handover is unsuccessful.
The district court conducted its analysis based on that
articulation; the parties do not ask us to disturb it.
After identifying the particular claimed function, a
court, in the second step of the analysis, looks to the
specification and identifies the corresponding structure,
material, or acts that perform that function. Id. (citation
omitted). The district court concluded that the structure
corresponding to the “arrangement for reactivating”
limitation was “a processor connected to a transceiver and
programmed to formulate and send messages to reacti-
15 HTC CORP v. IPCOM GMBH
vate the link, if the handover is unsuccessful.” Although
the specification does not literally disclose a processor and
transceiver, the district court stated that it had “no doubt
that one skilled in the art would immediately deduce that
a processor with a transceiver was the structure indicated
by the term.”
On this point, we agree with the district court.
Whether a specification adequately sets forth structure
corresponding to a claimed function is viewed from the
perspective of one skilled in the art. Budde v. Harley
Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001).
Although the specification here does not literally disclose
a processor and transceiver, a person skilled in the art
would understand that the mobile device would have to
contain a processor and transceiver. One of HTC’s own
experts, Dr. Christopher Rose, acknowledged that, at the
time of invention, a mobile station would have “to be able
to talk to the network,” which means “you’ve got to have a
transceiver” and “some sort of processor. Something has
to handle the data.” The district court relied on Dr. Rose’s
testimony.
HTC argues that the district court and IPCom placed
too much stock in Dr. Rose’s testimony. Dr. Rose, HTC
argues, merely observed during his deposition that proc-
essors and transceivers were among the components
found in mobile phones at the time of invention. Dr. Rose,
moreover, specifically opined in a declaration that the
patent did not disclose or suggest to one skilled in the art
any specific structural configuration for a processor and
transceiver to perform the recited functions.
The district court did not clearly err in relying on Dr.
Rose’s deposition testimony. Although indefiniteness is a
question of law, we review a trial court’s factual findings
in support of its legal conclusion for clear error. Tech.
HTC CORP v. IPCOM GMBH 16
Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338
(Fed. Cir. 2008) (citations omitted). HTC offers no basis,
nor can we discern one, for unsettling the district court’s
finding and placing more weight on Dr. Rose’s declaration
than his deposition testimony. Indeed, even if Dr. Rose’s
deposition testimony stands for nothing more than that
processors and transceivers were among the components
found in mobile phones at the time of invention, his
testimony is probative of the perspective of those skilled
in the art.
Another expert, Dr. Vijay Madisetti, further sup-
ported the district court’s conclusion. Dr. Madisetti
referred to one scenario, described in the specification, in
which it is determined that a handover is required be-
cause the quality of the link between the mobile station
and first base station has fallen below a certain value.
That scenario, Dr. Madisetti opined, “tells one of ordinary
skill in the art that the [mobile station] is able to receive
messages through the use of a transceiver and monitor
the link quality, which processors typically do in assess-
ing whether the quality of such signals falls below a
certain level.” Dr. Madisetti went on to explain that
various other functionalities described in the patent
conveyed to one skilled in the art that a processor was
needed for accomplishing the claimed functions. The
expert testimony supports the district court’s conclusion.
HTC also contends that, even if one skilled in the art
would know that use of a processor and transceiver were
needed, one would not understand exactly how that
processor and transceiver would be configured—e.g., what
its precise “circuitry,” “components,” or “schematics”
would be or what “controllers” would be employed. HTC
Corp. v. IPCom GmbH & Co., No. 08-cv-1897 (D.D.C. Nov.
24, 2009), ECF No. 132 at 17-18 (“HTC’s Opening Mark-
man Br.”); ECF No. 180 at 155 (“Markman Hr’g Tr.”).
17 HTC CORP v. IPCOM GMBH
Our case law does not require that level of hardware
disclosure, however. As long as a sufficient algorithm
describing how a general-purpose computer will perform
the function is disclosed, reference to such general-
purpose processors will suffice to overcome an indefinite-
ness challenge. See Intel Corp. v. VIA Techs., Inc., 319
F.3d 1357, 1366-67 (Fed. Cir. 2003).
Contrary to HTC’s view, examination of the specifica-
tion from the perspective of a skilled artisan does not
convert an indefiniteness inquiry into an enablement
inquiry. We are not analyzing whether a skilled artisan
could have devised a processor and transceiver—with all
necessary component parts—but whether a skilled artisan
would have understood the specification as requiring a
processor and transceiver. This approach is consistent
with our precedent. Tech. Licensing Corp., 545 F.3d at
1338 (citations omitted).
The district court, in sum, did not err in finding that
the specification disclosed a processor and transceiver to
one of skill in the art, and that no additional hardware
disclosure was needed.
B.
The district court misstated the law, however, when it
stated that disclosure of a processor and transceiver alone
was sufficient to provide structure to these claims. The
processor and transceiver amount to nothing more than a
general-purpose computer. We have “consistently re-
quired that the structure disclosed in the specification be
more than simply a general purpose computer or micro-
processor.” Aristocrat Techs. Austl. PTY Ltd. v. Int’l
Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Gen-
eral-purpose “computers” or “processors” can be “pro-
grammed to perform very different tasks in very different
ways.” Id. Accordingly, “simply disclosing a computer as
HTC CORP v. IPCOM GMBH 18
the structure designated to perform a particular function
does not limit the scope of the claim to ‘the corresponding
structure, material, or acts’ that perform the function, as
required by section 112 paragraph 6.” Id.
Rather than relying on the processor and transceiver,
IPCom had to identify an algorithm that the processor
and transceiver execute. Id. at 1333 (citing WMS Gam-
ing, Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir.
1999)). The specification had to disclose that algorithm to
one of skill in the art. Id. And, it had to do more than
parrot the recited function; it had to describe a means for
achieving a particular outcome, not merely the outcome
itself. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d
1371, 1382-85 (Fed. Cir. 2009). While IPCom maintained
that the ’830 patent contains such a qualifying algorithm,
the district court never analyzed whether that claim was
true. There is, thus, no finding in the record specifically
addressing whether the structure actually needed for the
type of functional claiming at issue here can be found in
the ’830 patent’s specification.
C.
The district court failed to analyze the existence and
adequacy of an algorithm in the ’830 patent because HTC
never asked it to do so. HTC never attacked the adequacy
of the algorithm to which IPCom pointed before the
district court. HTC consistently focused on the lack of
hardware rather than the lack of an algorithm. In its
opening claim construction brief, for example, HTC ar-
gued that the “recited means-plus-function limitations
[are] indefinite for failure to disclose . . . corresponding
structure . . .” because “nowhere in the ’830 patent is
there any disclosure of any circuitry, structure, compo-
nents or schematics of a mobile phone for performing the
recited functions.” HTC’s Opening Markman Br. 17.
19 HTC CORP v. IPCOM GMBH
HTC mentioned nothing about an algorithm in its indefi-
niteness argument. Although HTC cited Aristocrat, that
case appeared only in a string citation as an example of a
case supporting the general proposition that a patent is
invalid for “failure to disclose structure corresponding to
[a] means-plus-function limitation.” Id. at 19. In its
responsive claim construction brief, HTC again focused on
the lack of hardware, arguing that the “complete absence
of structure in the patent” should not be “excused” based
on IPCom’s argument that “several patents and articles
that pre-date the ’830 patent show that mobile phones
typically include a ‘processor’ and receiver.” HTC, No. 08-
cv-1897 (D.D.C. Dec. 23, 2009), ECF No. 151 at 6.
During the Markman hearing, HTC once more fo-
cused on what it perceived as gaps in the hardware de-
scribed, arguing that the patent should have explained
how the hardware was structured and which piece of the
hardware accomplished the base station handover.
Markman Hr’g Tr. 155. Thus, in comparing the text of
the ’830 patent to other patents describing processors,
HTC’s counsel noted that, in those other disclosures,
“[t]here’s a codec for coding and decoding. There’s ana-
logue to digital converters, there’s all these controllers. . .
. Sometimes they’re bundled up into different units in
some ways. Sometimes they are separate. There’s lots of
different ways to do this and the patent has to set forth
something to tell you how to do it.” Id. Notably, despite
IPCom’s citation to WMS Gaming and its assertion that
the patent’s disclosed algorithm completed the allegedly
missing structure, HTC argued that disclosure of an
algorithm was inadequate in the absence of a more de-
tailed description of the computer hardware into which
the algorithm would be programmed. Id. at 151. And,
when the district court later asked about “the argument
that . . . the algorithm itself . . . is the structure,” HTC’s
HTC CORP v. IPCOM GMBH 20
counsel stated that the argument was irrelevant because
the ’830 patent is not a “software patent.” Id. at 172.
The argument that the ’830 patent failed to disclose
an adequate algorithm did not emerge until HTC filed its
responsive brief on appeal. Even then, moreover, HTC
tied its attack on the algorithm to its attack on the ge-
neric nature of the hardware disclosure. Thus, HTC
acknowledged for the first time that “the corresponding
‘structure’ may take the form of a particular software
program or algorithm that converts a disclosed general-
purpose processor into a machine that performs the
specific function claimed.” Appellee’s Br. 46. HTC then
argued that “the patent [in suit] does not describe how the
mobile station generates those messages—just the results
of some undescribed algorithms operating on some unde-
scribed hardware. It is not enough merely to describe ‘the
results of the operation of an unspecified algorithm.’” Id.
at 47 (quoting Aristocrat, 521 F.3d at 1334–35). That
argument was too little and too late. 1
As a general rule, an appellate court does not consider
an issue not passed upon below. Singleton v. Wulff, 428
U.S. 106, 120 (1976); Interactive Gift Express, Inc. v.
Compuserve, Inc., 256 F.3d 1323, 1344 (Fed. Cir. 2001).
This rule fosters sound policies. It ensures finality in
litigation by limiting the appealable issues to those a
lower court had an opportunity to, and did, address. The
rule also conserves judicial resources because it prevents
parties from undoing a lower court’s efforts—sometimes
1 When asked at oral argument before this court
where HTC had challenged the adequacy of the algorithm
in the ’830 patent when before the district court, HTC’s
counsel pointed to a footnote in its opening Markman
brief. That footnote, however, again only focused on the
alleged lack of “schematics[,] . . . components or circuitry .
. . .” HTC’s Opening Markman Br. 18 n.3.
21 HTC CORP v. IPCOM GMBH
spanning years of litigation—based on an error that a
lower court could have considered and corrected. In the
same regard, the rule discourages parties from inviting an
alleged error below only to raise it on appeal. Many of our
sister circuits have recognized the importance of this rule
and the policies it fosters. See, e.g., Nat’l Ass’n of Social
Workers v. Harwood, 69 F.3d 622, 627 (1st Cir. 1995);
Lavoie v. Pac. Press & Shear Co., 975 F.2d 48, 56-57 (2d
Cir. 1992); Webb v. City of Philadelphia, 562 F.3d 256,
263 (3d Cir. 2009); Wheatley v. Wicomico County, 390 F.3d
328, 334-35 (4th Cir. 2004); Payne v. McLemore’s Whole-
sale & Retail Stores, 654 F.2d 1130, 1144-45 (5th Cir.
1981); Sigmon Fuel Co. v. Tenn. Valley Auth., 754 F.2d
162, 164-65 (6th Cir. 1985); Strauss v. Stratojac Corp.,
810 F.2d 679, 683 (7th Cir. 1987); United States v.
Whitten, 706 F.2d 1000, 1012 (9th Cir. 1983); Lyons v.
Jefferson Bank & Trust, 994 F.2d 716, 721 (10th Cir.
1993); Ferrill v. Parker Group, Inc., 168 F.3d 468, 475
(11th Cir. 1999).
An appellate court, however, has discretion to con-
sider an issue for the first time on a case-by-case basis.
Singleton, 428 U.S. at 120. We have described the cir-
cumstances in which an appellate court might excuse a
party’s failure to preserve an issue, as where: (i) the issue
involves a pure question of law and refusal to consider it
would result in a miscarriage of justice; (ii) the proper
resolution is beyond any doubt; (iii) the appellant had no
opportunity to raise the objection at the district court
level; (iv) the issue presents significant questions of
general impact or of great public concern; or (v) the inter-
est of substantial justice is at stake. L.E.A. Dynatech, Inc.
v. Allina, 49 F.3d 1527, 1531 (Fed. Cir. 1995) (citations
omitted).
None of those circumstances exists here. The neces-
sity of an algorithm has been well established at least
HTC CORP v. IPCOM GMBH 22
since WMS Gaming, a 1999 case. This case does not alter
that doctrine. HTC had an opportunity to argue the
algorithm issue—at IPCom’s invitation—during briefing
on claim construction and HTC’s summary judgment
motion, and at oral argument before the district court.
Because the parties have not developed the algorithm
issue, moreover, we cannot resolve that issue now on the
theory that its proper resolution is beyond any doubt.
Indeed, if we were to remand the issue, the district court
would have to conduct additional fact finding, and the
parties potentially would have to conduct additional
expert discovery. Remand, in sum, would stymie judicial
economy because it would require the district court and
the parties to invest resources in an issue that could have
been raised for the first time below.
This waiver case is distinct from another involving al-
gorithmic structure corresponding to a means-plus-
function limitation decided by this court. In Harris Corp.
v. Ericsson Inc., Ericsson argued to the district court and
this court that the claim should be construed to require a
two-step algorithm of “producing nondiscrete estimates
and deriving discrete decisions therefrom.” 417 F.3d
1241, 1251 (Fed. Cir. 2005). In the district court, Ericsson
argued that the claimed process required “selecting dis-
crete decisions” as a separate step from the function of the
“time domain processing means,” which was to produce
“nondiscrete ‘estimates of the originally transmitted
information signals.’” Id. Ericsson also argued to the
district court, as an alternative claim construction, that
the function of the “time domain processing means” was
to implement the two-step algorithm. Id. What Ericsson
failed to do in the district court—but did on appeal—was
to characterize the two steps as part of the corresponding
structure of the “time domain processing means” limita-
tion. Id. After analyzing the difference between the two
23 HTC CORP v. IPCOM GMBH
positions, this court concluded that those differences were
more of form than substance and that Ericsson had pre-
sented the essence of its position to the district court. Id.
In refusing to find waiver in Harris, we focused on the
fact that Ericsson had asserted throughout the litigation
that the claims required a two-step algorithm: the very
point on which the case ultimately turned. There, we
concluded that Ericsson’s modified articulation of its
claim construction yielded nothing more than an “infini-
tesimal tweak in scope, devoid of any practical conse-
quence.” Id. at 1252 n.3. Here, by contrast, HTC
emphasized the absence of circuitry, structure, and proc-
essor components in the district court, but now asserts the
absence of any disclosure of a pertinent algorithm. HTC’s
argument on appeal is a concept distinct from what it
argued below; there is no way we legitimately could
characterize HTC’s course change as a mere “tweak,”
infinitesimal or otherwise, to the position it took in the
trial court.
We agree that the structure necessary to support the
functional claiming in claims 1 and 18 of the ’830 patent
must include an adequate algorithm describing how a
processor and transceiver can perform the claimed func-
tion. Because HTC never attacked the adequacy of the
algorithm in the ’830 patent when given an opportunity to
do so before the district court, however, HTC cannot lodge
that attack for the first time here.
IV.
We reverse the district court’s grant of summary
judgment to HTC on the ground that claims 1 and 18
cover hybrid subject matter. We hold, moreover, that the
district court correctly concluded that the ’830 patent’s
specification adequately disclosed a processor and trans-
ceiver for use in performing the function claimed in claims
HTC CORP v. IPCOM GMBH 24
1 and 18. Although the district court was incorrect to
assume that a processor and transceiver are alone suffi-
cient under 35 U.S.C. § 112 ¶ 6 to provide structure for a
functional claim such as that at issue here, HTC failed to
preserve any attack on the algorithm that IPCom as-
serted provided additional needed structure. We, there-
fore, decline to overturn the district court’s denial of
summary judgment on the alternative ground of indefi-
niteness or to order that the record be reopened on that
motion.
REVERSED