United States Court of Appeals
for the Federal Circuit
__________________________
ENOVSYS LLC,
Plaintiff-Appellee,
v.
NEXTEL COMMUNICATIONS, INC., NEXTEL OF
CALIFORNIA, INC.,
NEXTEL COMMUNICATIONS OF THE MID-
ATLANTIC, INC.,
NEXTEL OF NEW YORK, INC., NEXTEL SOUTH
CORPORATION,
NEXTEL OF TEXAS, INC., NEXTEL WEST CORP.,
SPRINT NEXTEL CORPORATION, SPRINT
COMMUNICATIONS COMPANY L.P.,
SPRINT SPECTRUM L.P., AND SPRINT
SOLUTIONS, INC.,
Defendants-Appellants.
__________________________
2009-1167
__________________________
Appeal from the United States District Court for the
Central District of California in case no. 06-CV-5306,
Judge Ronald S.W. Lew.
__________________________
Decided: August 3, 2010
__________________________
ENOVSYS v. NEXTEL COMMUNICATIONS 2
GREGORY S. DOVEL, Dovel & Luner LLP, of Santa
Monica, California, argued for plaintiff-appellee. With
him on the brief was JOHN JEFFREY EICHMANN.
DONALD R. DUNNER, Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P., of Washington, DC, argued for
defendants-appellants. With him on the brief was
ANDREW J. VANCE.
__________________________
Before NEWMAN, BRYSON, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST.
Opinion concurring-in-part, dissenting-in-part filed by
Circuit Judge NEWMAN.
PROST, Circuit Judge.
In this patent infringement case, we begin by deciding
the effect of a state-court divorce decree on a patent
owner’s standing to sue. Because we conclude that the
patent owner Enovsys LLC (“Enovsys”) had standing, we
reach the challenged claim constructions.
The allegations of infringement are based on two in-
ventions that use global positioning satellites (“GPS”) and
ground control stations to determine the physical location
of mobile devices, like pagers and cellular telephones.
Depending on the security settings chosen by the user,
the invention selectively discloses the physical location of
the mobile device to certain users or entities, while block-
ing disclosure to others. Entities that might request a
mobile device’s location include programs that provide
driving directions, updates on local weather, and restau-
rant suggestions. Enovsys brought this suit against
Sprint Nextel Corporation and its various subsidiaries
(collectively “Sprint Nextel”), contending that Sprint
3 ENOVSYS v. NEXTEL COMMUNICATIONS
Nextel’s iDEN and CDMA wireless networks infringed
two patents covering these inventions. After a nine-day
trial, the jury found Sprint Nextel infringed both patents
and awarded approximately $2.78 million in damages.
The district court then denied Sprint Nextel’s renewed
motion to dismiss the case for lack of standing, motions
for judgment as a matter of law (“JMOL”), and motions
for a new trial.
Sprint Nextel now appeals. According to Sprint
Nextel, this case should have ended long ago, because
Enovsys is not the sole owner of the asserted patents and
failed to join the other (alleged) part owner, Fonda Whit-
field (“Whitfield”). Whitfield is the ex-wife of Mundi
Fomukong (“Fomukong”); Fomukong is the manager of
Enovsys and one of the patents’ co-inventors. Sprint
Nextel also argues that it is entitled to JMOL under the
correct construction of various claim terms in the patents.
We affirm. The ownership issue, and thus the ques-
tion of standing, is resolved by a state-court judgment—
namely, a California divorce decree. Giving this divorce
decree the preclusive effect required, we conclude that
Whitfield had no ownership interest in the asserted
patents at the time this case was filed, or anytime there-
after. At all relevant times, Enovsys alone owned both
patents. Accordingly, Enovsys had standing to bring and
maintain this suit without joining Whitfield. On the
merits, we affirm the challenged claim constructions.
BACKGROUND
Mundi Fomukong is manager and part owner of
Enovsys. He is also the co-inventor of the two patents
asserted in this case, U.S. Patent No. 5,918,159
(“’159 patent”) and U.S. Patent No. 6,560,461 (“’461
ENOVSYS v. NEXTEL COMMUNICATIONS 4
patent”). Before conceiving of the inventions claimed in
these patents, Fomukong married a woman named Fonda
Whitfield in California. Fomukong and Whitfield were
still married in 1997, when Fomukong and his co-inventor
filed a patent application that later issued as the ’159
patent. Two years later, Fomukong and his co-inventor
filed a second patent application that issued as the ’461
patent. This second application was styled as a continua-
tion-in-part of the ’159 patent.
The ’159 patent issued in 1999. Approximately two
years later, Fomukong and Whitfield filed for divorce in
California. There are two different ways of getting a
divorce in California, regular dissolution or summary
dissolution. In a regular dissolution, either party may
request a hearing or trial to settle disputed issues. Either
party may appeal the court’s decision or request a new
trial. Summary dissolution, by contrast, is California’s
version of a quickie divorce. In a summary dissolution,
there is no hearing or trial before a judge. Both parties
give up their right to appeal the court’s decision, although
either may later move to set aside the judgment for fraud,
duress, accident or mistake. 1 Cal. Fam. Code §§ 2400,
2403, 2405. The streamlined summary dissolution proce-
dure is only available to couples that meet certain re-
quirements. Cal. Fam. Code § 2400. As relevant here,
the couple must either (1) have no community property, or
(2) have signed a property settlement agreement listing
and dividing all community assets and liabilities. Any
1 A court may also set aside a summary dissolution
judgment for “other grounds recognized at law or in
equity.” Cal. Fam. Code § 2405; see also Cal. Civ. Proc.
Code § 473. For example, a judgment must be set aside
upon proof that the prerequisites for electing a summary
dissolution procedure were not met. Cal. Fam. Code
§ 2400.
5 ENOVSYS v. NEXTEL COMMUNICATIONS
property settlement agreement must be attached to the
couple’s petition for summary dissolution. Under Califor-
nia law, all assets acquired during a marriage are pre-
sumptively community property. Cal. Fam. Code §§ 65,
760. Assets include any income earned or property cre-
ated during the marriage.
Fomukong and Whitfield divorced by summary disso-
lution. In November 2001, they filed an official California
form titled “Joint Petition for Summary Dissolution of
Marriage” with the Los Angeles Superior Court. In
signing and filing this petition, Fomukong and Whitfield
declared that they had read and understood the booklet
California publishes on summary dissolutions, aptly titled
the “Summary Dissolution Information booklet.” In
response to the petition’s question about community
property, Fomukong and Whitfield checked the box next
to the statement, “We have no community assets or
liabilities,” certifying that the statement was true under
penalty of perjury. They left the other option unchecked.
That option read: “We have signed an agreement listing
and dividing all our community assets and liabilities and
have signed all papers necessary to carry out our agree-
ment. A copy of our agreement is attached to this peti-
tion.” Consistent with their declaration that they had no
community property, Fomukong and Whitfield did not
attach a property settlement agreement to their petition.
Under California law, the filing of Fomukong and
Whitfield’s joint petition for summary dissolution trig-
gered a six-month waiting period. Cal. Fam. Code § 2403.
During that period, either party could have stopped the
divorce. See Judicial Council of Cal., Summary Dissolu-
tion Information Booklet, Form FL-810, § III, available at
http://www.courtinfo.ca.gov/forms/documents/fl810.pdf.
To officially end the marriage, at least one of them had to
ENOVSYS v. NEXTEL COMMUNICATIONS 6
ask the court to enter judgment of dissolution after the
six-month period expired. Id.; see also Cal. Fam. Code §
2403. In October 2002, Fomukong filed the requisite
California form, titled “Request for Judgment, Judgment
of Dissolution of Marriage, and Notice of Entry of Judg-
ment” with the Los Angeles Superior Court. Whitfield’s
signature also appears on the form. Judgment was en-
tered in October 2002; notice of the judgment was mailed
to both Fomukong and Whitfield. Fomukong and Whit-
field’s divorce thus became final in October 2002.
Several months after Fomukong and Whitfield’s di-
vorce was finalized, the ’461 patent issued. Fomukong
subsequently formed Enovsys for the purpose of manag-
ing patent-related licensing and litigation. In 2006,
Fomukong and his co-inventor assigned their ownership
interests in the ’159 and ’461 patents to Enovsys. Among
the rights expressly assigned to Enovsys was the right to
sue for past infringement.
Enovsys subsequently filed this action against Sprint
Nextel Corporation. Enovsys alleged that Sprint Nextel
infringed claim 1 of the ’159 patent and claims 1, 2, 23, 25
and 28 of the ’461 patent. The ’159 patent covers a sys-
tem for determining the physical location, or global posi-
tion, of a call receiver, such as a cellular telephone or
pager, using a network of space satellites and ground
stations. ’159 patent col.1 ll.53-55; see also id. at col.5
ll.44-47. This system allows a subscriber to obtain loca-
tion information using his cellular phone or pager. Alter-
natively, the network may provide some entities with the
location of the call receiver, while blocking others from
receiving that information. Id. at col.1 ll.55-60.
The asserted claims of the ’461 patent cover systems
for disclosing a mobile device’s physical location only to
7 ENOVSYS v. NEXTEL COMMUNICATIONS
authorized requests. The invention maintains the secu-
rity of a mobile device’s location data through two au-
thorization steps, one at the network level, the other at
the individual subscriber level. First, the system verifies
that the source is “pre-authorized” to obtain location
information from the network. ’461 patent col.4 ll.49-60;
see also id. at col.11 ll.5-9. If the source is pre-authorized
to access the network, the invention then determines
whether the individual subscriber has authorized the
network to disclose the mobile device’s location. This
preference is stored on the network as a “location infor-
mation disclosure instruction.” Based on this instruction,
the invention either allows or blocks the request. If
allowed, the invention obtains and sends the mobile
device’s location. Otherwise, the invention sends a mes-
sage that the request has been blocked. Id. at col.5 ll.4-
30.
According to Enovsys, Sprint Nextel infringed these
patents by selling “location-enabled devices and location-
based services.” Specifically, these “location-enabled
devices and location-based services” were Sprint Nextel’s
Integrated Digital Enhanced Network (“iDEN”) and Code
Division Multiple Access (“CDMA”) systems. The iDEN
and CDMA systems are separate wireless networks that
use different technological standards to provide mobile
devices, like cellular telephones, with a variety of ser-
vices, such as voice communications, messaging, digital
two-way radio, and data services. Sprint Nextel counter-
claimed, seeking a declaratory judgment that the patents
were invalid and unenforceable.
Sprint Nextel also moved to dismiss the case, arguing
that Enovsys lacked standing to sue because it failed to
join Whitfield, Fomukong’s ex-wife and co-owner of the
patents-in-suit. According to Sprint Nextel, Whitfield
ENOVSYS v. NEXTEL COMMUNICATIONS 8
acquired an ownership interest in the ’159 and ’461
patents because Fomukong filed both patent applications
during their marriage and patents are community prop-
erty under California law. The district court denied
Sprint Nextel’s motion to dismiss, concluding that
Enovsys had full legal title to the patents and that any
claims by Whitfield or Sprint Nextel had to be adjudicated
first in California state court.
After resolving the threshold question of its jurisdic-
tion, the district court construed various terms in the ’159
and ’461 patents. Two are relevant to this appeal: the
“means to resolve” limitation in the ’159 patent and the
“pre-authorized” limitation in the ’461 patent.
In its entirety, claim 1 of the ’159 patent reads as fol-
lows:
A satellite paging communication system with
means to locate the global position of a call re-
ceiver unit comprising:
space satellites and terrestrial stations,
some of which are adapted for the purpose
of transmitting paging information and
some of which, are adapted for the pur-
pose of transmitting positioning informa-
tion;
ground control stations for processing the
said information and controlling the ac-
tions of the paging network;
the call receiver or pager having means to
resolve a global position from satellites or
earth based communication means;
9 ENOVSYS v. NEXTEL COMMUNICATIONS
the system divulging to certain or all call-
ers the global location of a callee in pos-
session of the said call receiver while
blocking such information from being di-
vulged to certain or all other callers.
’159 patent col.8 ll.45-61 (emphasis added).
The district court found that “means to resolve” in the
’159 patent invoked 35 U.S.C. § 112, ¶ 6. The court then
proceeded to determine that the claimed function was “to
resolve a global position from satellite or earth based
communication means.” Based on its examination of the
specification, the court determined that the corresponding
structure for this function was a “transceiver, connecting
circuitry, CPU, satellite receiving means, terrestrial
receiving means, decoders, and temporary storage.”
Neither party objected to how the district court construed
this means-plus-function limitation, or suggested a more
specific definition of its structure was necessary. Sprint
Nextel’s pre-trial briefs, proposed jury instructions, and
pre-verdict JMOL were similarly devoid of any argument
that the “connecting circuitry” portion of the structure
should be limited to the specific embodiment in Figure 2
of the ’159 patent. See ’159 patent col.5 l.48-col.6 l.5.
The “pre-authorized” limitation appears in claims 11
and 28 of the ’461 patent. Claim 11 reads as follows:
A method for divulging or blocking the location in-
formation of a mobile remote receiving unit asso-
ciated with a network comprising:
ENOVSYS v. NEXTEL COMMUNICATIONS 10
i) receiving a request at the network for
location information of the mobile remote
receiving unit;
ii) identifying the source of request;
iv) verifying that the source of request is
pre-authorized to access location informa-
tion of the mobile remote receiving unit at
the network;
v) querying at the network for location in-
formation disclosure instruction for the
mobile receiving unit;
vi) using said instruction (v) to allow or
block mobile remote receiving unit loca-
tion information to the pre-authorized
source of request.
’461 patent col.11 ll.1-16 (emphases added).
Similarly, claim 28 reads on:
A communication system comprising:
a network of communication resources;
a first communication resource able to es-
tablish its location information at the
network;
wherein at least a profile is maintained by
the system, said profile containing the
identity of a preauthorized resource, iden-
tity of the first communication resource
and a location access field indicating
11 ENOVSYS v. NEXTEL COMMUNICATIONS
whether said preauthorized resource iden-
tified in the profile should be al-
lowed/disallowed to access the location
information of the first communication re-
source identified in said profile;
the system able to use the location access
field of a first profile to deny the location
information of the first communication re-
source to the preauthorized resource iden-
tified in said first profile while allowing
another preauthorized resource identified
in a second profile to access the location
information of the first communication re-
source during the time that access is being
denied to the preauthorized resource iden-
tified in said first profile.
Id. at col.14 ll.6-27 (emphases added).
The district court construed “pre-authorized” in both
claims of the ’461 patent to mean “authorized to submit a
request in advance of determining whether the request
will be granted.” Sprint Nextel did not object to this
definition. Similarly, at no time before or during the trial
did Sprint Nextel ask the district court to clarify whether
the preauthorization was for access to the network or only
for access to a particular mobile device.
At trial, the dispute with respect to the ’159 patent
centered on whether Sprint Nextel’s iDEN system con-
tained the structure corresponding to the “means to
resolve” limitation. Enovsys presented the testimony of
its expert, Dr. Christopher Rose (“Dr. Rose”). Dr. Rose
opined that the handset used with the iDEN system
contained “connecting circuitry,” which attached the
ENOVSYS v. NEXTEL COMMUNICATIONS 12
handset’s computer to “all the various pieces,” thus allow-
ing the handset to resolve its global position. Similarly,
on cross-examination Sprint Nextel employee Kevin
Butler (“Mr. Butler”) admitted that the central processing
unit (“CPU”) in the handset had a means for receiving
and decoding satellite signals to resolve the handset’s
global position. Mr. Butler also testified that the hand-
set’s CPU was connected with other circuitry in the phone
by microscopic wires. In response, Sprint Nextel offered
the testimony of its expert, Dr. Robert Stevenson (“Dr.
Stevenson”). Dr. Stevenson opined that the iDEN system
lacked connecting circuitry because it did not have the
same circuitry shown in Figure 2 of the ’159 patent. On
cross examination, however, Dr. Stevenson admitted that
the district court’s claim construction was “fine” and did
not limit “connecting circuitry” to what was shown in
Figure 2 of the ’159 patent.
With regards to the ’461 patent, the parties disputed
whether Sprint Nextel’s iDEN and CDMA systems satis-
fied the “preauthorized” limitation in the asserted claims.
On behalf of Enovsys, expert Dr. Rose opined that both
systems required an entity requesting a mobile device’s
location be “preauthorized” to submit the request because
both the iDEN and CDMA systems require the requesting
entity to provide a username and password to access their
respective networks. Dr. Rose went on to explain that
only those entities preauthorized to access the network
could then request the location of a mobile device in that
network. Enovsys also presented the deposition testi-
mony of Sprint Nextel employee Thomas Moore (“Mr.
Moore”). Mr. Moore discussed an example of an entity
that requests users’ location data, an application called
Location Studio. Mr. Moore testified that the iDEN
network first checks whether Location Studio may access
the network; only after confirming that the application is
13 ENOVSYS v. NEXTEL COMMUNICATIONS
authorized to access the network is Location Studio then
allowed to request a given user’s location information.
The jury found that Sprint Nextel infringed claim 1 of
the ’159 patent and claims 11 and 28 of the ’461 patent.
The jury further found that both patents were not invalid.
It awarded $1,664,036 in damages for the ’159 patent and
$599,958 in damages for the ’461 patent. After trial,
Sprint Nextel renewed its motion to dismiss. It also
moved for post-verdict JMOL on the issue of infringement
with respect to both patents. The district court denied
Sprint Nextel’s motions and entered judgment for
Enovsys.
Sprint Nextel now appeals. We have jurisdiction un-
der 28 U.S.C. § 1291.
ANALYSIS
Whether a party has standing to bring and maintain
suit is a question of law reviewed de novo. Labatt Food
Serv., Inc. v. United States, 577 F.3d 1375, 1378-79 (Fed.
Cir. 2009). Any related factual findings will be disturbed
only if they are clearly erroneous. Id.
Because reviewing denials of JMOL motions is an is-
sue not unique to patent law, we apply the law of the
regional circuit in which this appeal would otherwise lie.
i4i Ltd. v. Microsoft Corp., 598 F.3d 831, 841 (Fed. Cir.
2010). The Ninth Circuit reviews denial of JMOL motions
de novo. Janes v. Wal-Mart Stores Inc., 279 F.3d 883, 886
(9th Cir. 2002). A jury verdict “must be upheld if it is
supported by substantial evidence . . . even if it is also
possible to draw a contrary conclusion.” Pavavo v. Pagay,
307 F.3d 915, 918 (9th Cir. 2002). In reviewing a verdict,
the Ninth Circuit “disregard[s] evidence favorable to the
ENOVSYS v. NEXTEL COMMUNICATIONS 14
moving party that the jury is not required to believe, and
may not substitute its view of the evidence for that of the
jury.” Id. (citing Johnson v. Paradise Valley Unified Sch.
Dist., 251 F.3d 1222, 1227 (9th Cir. 2001)).
In this case, whether JMOL was properly denied
turns on whether the district court correctly construed
certain claim terms. Claim construction is an issue of law
we review de novo. Cybor Corp. v. FAS Techs., Inc. 138
F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc).
Because standing is a threshold jurisdictional issue,
we address it first.
I. Standing 2
A party’s standing to sue for patent infringement de-
rives from the Patent Act, which provides that “[a] pat-
entee shall have remedy by civil action for infringement of
his patent.” 35 U.S.C. § 281 (emphasis added). “Pat-
entee” includes not only the party to whom the patent was
issued, but also the successors in title to that party. 35
U.S.C. § 100. When a patent is co-owned, a joint owner
must join all other co-owners to establish standing. Israel
Bio-Engineering Project v. Amgen, Inc., 475 F.3d 1256,
1264-65 (Fed. Cir. 2007); see also Prima Tek II, LLC v. A-
Roo Co., 222 F.3d 1372, 1377 (Fed Cir. 2000); SiRF Tech.,
Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1325 (Fed. Cir.
2010).
2 Enovsys had the right to sue for infringement oc-
curring before the 2006 assignment because the assign-
ment agreement stated that Fomukong and his co-
inventor were transferring their “right to sue and collect
for past damages.” The agreement thus sufficiently
manifested an intent to transfer this right. Minco Inc. v.
Combustion Eng’g, 95 F.3d 1109, 1117 (Fed. Cir. 1996).
15 ENOVSYS v. NEXTEL COMMUNICATIONS
In this case, we must decide whether Enovsys had
standing to bring and maintain this suit without joining
Fomukong’s ex-wife, Whitfield. This question turns on
whether Whitfield had any ownership interest in the
asserted patents at the time this suit was filed. See
MyMail, Ltd. v. Am. Online, Inc., 476 F.3d 1372, 1375-76
(Fed. Cir. 2007); Paradise Creations, Inc. v. UV Sales,
Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003). Before the
district court, Sprint Nextel argued that Whitfield ac-
quired an interest in the patents during her marriage to
Fomukong and that this interest survived their subse-
quent divorce because the divorce decree did not adjudi-
cate their community property rights. Enovsys countered
that the question of ownership was conclusively deter-
mined by a valid state-court judgment, namely,
Fomukong and Whitfield’s California divorce decree. In
holding that Enovsys had standing, the district court gave
effect to the judgment of dissolution, under which Whit-
field retained no community property interest in the
patents. For the following reasons, we agree.
Who has legal title to a patent is a question of state
law. Akazawa v. Link New Tech., 520 F.3d 1354, 1357
(Fed. Cir. 2008); see also Int’l Nutrition Co. v. Horphag
Research Ltd., 257 F.3d 1324, 1329-30 (Fed. Cir. 2001);
Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567,
1571 (Fed. Cir. 1997) (“It may seem strange at first blush
that the question of whether a patent is valid and in-
fringed ordinarily is one for federal courts, while the
question of who owns the patent rights and on what terms
typically is a question exclusively for state courts. Yet
that long has been the law.”). Accordingly, we look to
California law to determine who had an ownership inter-
est in the patents after Fomukong and Whitfield’s divorce
in 2002.
ENOVSYS v. NEXTEL COMMUNICATIONS 16
Sprint Nextel is correct that under California law, all
property acquired by a married person during marriage is
presumed to be community property. Weingarten v.
Superior Court, 102 Cal. App. 4th 268, 277 (Cal. Ct. App.
2002). This presumption applies here, because Fomukong
filed the applications for the ’159 and ’461 patents while
he was married to Whitfield. See Lorraine v. Lorraine, 48
P.2d 48, 54-55 (Cal. App. 3d 1935); see also In re Marriage
of Worth, 195 Cal. App. 3d 768, 773 (Cal. Ct. App. 1987).
Prior to the divorce, the patents were thus presumptively
community property in which Whitfield had an undivided
half-interest.
That, however, is not the end of the story. Enovsys is
correct that this presumption was overcome by what
Fomukong and Whitfield declared in their joint petition
for summary dissolution. Their petition affirmatively
states that “we [Fomukong and Whitfield] have no com-
munity assets or liabilities.” Fomukong and Whitfield
both signed this petition, affirming under penalty of
perjury that this statement was true and correct. On the
basis of this petition, a California court subsequently
entered judgment of dissolution, finalizing the divorce.
We now turn to the thornier issue of whether this state-
court judgment is entitled to preclusive effect.
The preclusive effect of a state-court judgment in a
subsequent federal lawsuit is generally determined by the
full faith and credit statute, 28 U.S.C. § 1738. See Mar-
rese v. Am. Acad. of Orthopaedic Surgeons, 470 U.S. 373,
380 (1985); see also In re Nourbakhsh, 67 F.3d 798, 800
(9th Cir. 1995); cf. Taylor v. Sturgell, 128 S. Ct. 2161,
2171 (2008) (holding that the preclusive effect of a fed-
eral-court judgment is determined by federal common
law). Section 1738 provides that state judicial proceed-
ings “shall have the same full faith and credit in every
17 ENOVSYS v. NEXTEL COMMUNICATIONS
court within the United States . . . as they have by law or
usage in the courts of such State, Territory, or Possession
from which they are taken.” Accordingly, we look to
California law to determine the preclusive effect of
Fomukong and Whitfield’s judgment of dissolution. See
Matsushita Elec. Indus. Co. v. Epstein, 516 U.S. 367, 375-
76 (1996).
California law recognizes the doctrine of collateral es-
toppel (issue preclusion), which bars relitigation of issues
decided in prior proceedings. Mycogen Corp. v. Monsanto
Co., 51 P.3d 297, 301-02 (Cal. 2002); see also Ashe v.
Swenson, 397 U.S. 436, 443 (1970); United States v.
Bhatia, 545 F.3d 757, 759 (9th Cir. 2008). The doctrine of
collateral estoppel applies if (1) the issue sought to be
precluded from relitigation is identical to the issue de-
cided in the earlier proceeding; (2) the issue was actually
litigated in the former proceeding; (3) the issue was
necessarily decided in the former proceeding; and (4) the
person against whom collateral estoppel is asserted was a
party, or in privity with a party, to the earlier proceeding.
Lucido v. Superior Court, 795 P.2d 1223, 1225-26 (Cal.
1990); see also Sutphin v. Speik, 99 P.2d 652, 655-56 (Cal.
1940). In other words, a divorce decree is res judicata
with respect to the issues that were adjudicated. Callnon
v. Callnon, 46 P.2d 988, 990 (Cal. Dist. Ct. App. 1935).
We hold that Fomukong and Whitfield’s California di-
vorce decree is entitled to res judicata effect. 3 Sprint
Nextel seeks to relitigate Whitfield’s property rights in
the patents, the same issue resolved by the state-court
3 The related doctrines of claim and issue preclu-
sion are collectively referred to as res judicata. Taylor,
128 S. Ct. at 2171.
ENOVSYS v. NEXTEL COMMUNICATIONS 18
judgment of dissolution. Fomukong and Whitfield’s
property rights were adjudicated by their summary
dissolution because their joint petition put their property
rights at issue. In a divorce proceeding, property rights
are put at issue by (1) specific allegations describing such
property, or by (2) an allegation that no community
property existed. Callnon, 46 P.2d at 990 (citing Allen v.
McCrary, 31 P.2d 388, 389 (Cal. 1934)). Fomukong and
Whitfield alleged that they had no community property.
The judgment of dissolution entered by the California
court was based on this admission; under California
Family Code § 2404, the judgment constituted a complete
and final adjudication of Fomukong and Whitfield’s
property rights. See Cal. Fam. Code §§ 2404 (providing
that entry of judgment of dissolution “constitutes . . . [a]
final adjudication of the rights and obligations of the
parties with respect to the status of the marriage and
property rights”); see also id. § 2406(b)(6). As the Califor-
nia Supreme Court explained in Brown v. Brown, 147 P.d
1168 (Cal. 1915), a judgment based on parties’ admissions
constitutes a “complete adjudication of all the rights of
the parties embraced in the prayer for relief and arising
from the facts stated in the complaint.” Id. at 1170.
Accordingly here, as in Brown, although the final divorce
decree was silent as to particular property, it nevertheless
adjudicated the parties’ rights with respect to that prop-
erty because it was based on an uncontested complaint
which alleged that there was no community property. See
id.
The final requirement under California law for collat-
eral estoppel is met because Sprint Nextel is in privity
with Whitfield. See Citizens Suburban Co. v. Rosemont
Dev. Co., 244 Cal. App. 2d 666, 680-81 (Cal. App. Ct.
1966). In this case, privity arose from Whitfield’s express
assignment of any property interest she had in the pat-
19 ENOVSYS v. NEXTEL COMMUNICATIONS
ents to Sprint Nextel. Cf. Vallely Invests., L.P. v. Ban-
cAmerica Commercial Corp., 106 Cal. Rptr. 2d 689, 694-
95 (Cal. Ct. App. 2001); Gulf Ins. Co. v. TIG Ins. Co., 103
Cal. Rptr. 2d 305, 309-10 (Cal. Ct. App. 2001). Sprint
Nextel is thus barred from relitigating Whitfield’s prop-
erty rights in this case. 4 Pursuant to the California
divorce decree, Whitfield retained no property rights in
the patents, so Enovsys had standing to bring and main-
tain this suit. 5
II. Claim Construction and Infringement
We turn next to Sprint Nextel’s argument that under
the correct claim constructions, its systems do not in-
fringe the ’159 or ’461 patents. 6
4 Sprint Nextel also argues that we should not give
preclusive effect to the California divorce decree because
the judgment was obtained by fraud. Cf. Matsushita
Elec., 516 U.S. at 375 (holding that the federal court must
decide whether “as an exception to § 1738, it should
refuse to give preclusive effect to the state court judg-
ment” (citations omitted)). We decline to do so. No fed-
eral law modifies the operation of 28 U.S.C. § 1738, and
we lack jurisdiction to set aside this state-court judgment.
See Miagra v. Warren City Sch. Dist. Bd. of Ed., 465 U.S.
75, 80 (1984). Only a California state court may set aside
a judgment of dissolution, after one of the parties to the
judgment has filed a motion to do so. Cal. Fam. Code §
2405.
5 Because Whitfield had no property interest to as-
sign, Sprint Nextel has no interest in the asserted pat-
ents. Accordingly, the district court did not abuse its
discretion in denying Sprint Nextel’s request to present
evidence of the assignment at trial.
6 The dissent is correct that Sprint Nextel styled
these arguments as defenses of non-infringement and
ENOVSYS v. NEXTEL COMMUNICATIONS 20
A. The ’159 Patent
Sprint Nextel argues that it is entitled to JMOL on in-
fringement because the iDEN system does not include the
same connecting circuitry shown in Figure 2 of the ’159
patent. Enovsys urges us to hold that Sprint Nextel
waived this argument. In denying Sprint Nextel’s motion
for post-verdict JMOL on this issue, the district court
noted that it “never limited” its construction of connecting
circuitry to the exact configuration shown in Figure 2 of
the ’159 patent.
We agree that Sprint Nextel waived any claimed error
associated with the “connecting circuitry” structure:
Here, as in Eli Lilly & Co. v. Aradigm Corp., Sprint
Nextel never requested the district court construe “con-
necting circuitry,” or offered a construction of the term.
376 F.3d 1352, 1360 (Fed. Cir. 2004). Rather, the district
court’s claim construction order notes that “the parties
are not in dispute” as to the “means to resolve” structure,
which included the now-disputed “connecting circuitry.”
Though it had ample opportunity to do so, at no time
before or during trial did Sprint Nextel object to the
district court’s claim construction, request clarification, or
presented them to the jury. As Sprint Nextel makes
clear in its briefs on appeal, however, the issue is whether
the district court’s claim constructions were erroneous.
Consistent with circuit precedent, we apply the doctrine
of waiver when the party failed to raise the claim con-
struction argument until after trial. See, e.g., Broadcom
Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed. Cir.
2008); Conoco, Inc. v. Energy & Envt’l Int’l, L.C., 460 F.3d
1349, 1359 (Fed. Cir. 2006); Eli Lilly & Co. v. Aradigm
Corp., 376 F.3d 1352, 1360 (Fed. Cir. 2004); Interactive
Gift Express, Inc. v. COmpuserve Inc., 256 F.3d 1323,
1346-48 (Fed. Cir. 2001).
21 ENOVSYS v. NEXTEL COMMUNICATIONS
offer the construction it now advances on appeal. Indeed,
Sprint Nextel’s own expert testified that the district
court’s claim construction was “fine.” See Broadcom, 543
F.3d at 694; see also Conoco, Inc. v. Energy & Envtl. Int’l,
L.C., 460 F.3d 1349, 1358-59 (Fed. Cir. 2006).
B. The ’461 Patent
Sprint Nextel similarly argues that it is entitled to
JMOL on infringement with respect to the ’461 patent
because its accused systems do not satisfy the “pre-
authorized” limitation. In construing “pre-authorized,”
the district court largely adopted Sprint Nextel’s proposed
construction. Sprint Nextel had argued that the term
meant “[p]ermission to submit a request has been granted
in advance of determining whether the request will be
authorized.” The district court construed “preauthorized”
to mean “authorized to submit a request in advance of
determining whether the request will be granted.” On
appeal, Sprint Nextel argues that any pre-authorization
must be with respect to a particular mobile device, not
just with respect to the network. Enovsys again urges us
to hold that Sprint Nextel waived this argument. In
denying Sprint Nextel’s motion for post-verdict JMOL,
the district court found that Sprint Nextel had never
previously requested the court to determine whether pre-
authorization was for only one mobile device. The district
court accordingly declined to address Sprint Nextel’s post-
verdict objection to the claim construction.
As with the ’159 patent, we hold that Sprint Nextel
waived its right to argue its new claim construction of
“pre-authorized” by waiting until after the jury returned
its verdict. See Abbott Labs. v. Syntron Bioresearch, Inc.,
334 F.3d 1343, 1357 (Fed. Cir. 2003). Significantly,
Sprint Nextel never objected to the district court’s claim
ENOVSYS v. NEXTEL COMMUNICATIONS 22
construction or requested clarification as to whether “pre-
authorized” pertained to the network or a particular
mobile device. Id.
CONCLUSION
We hold that the district court correctly denied Sprint
Nextel’s motion to dismiss for lack of subject matter
jurisdiction. On the merits, we affirm the denial of Sprint
Nextel’s post-verdict JMOL motions.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
__________________________
ENOVSYS LLC,
Plaintiff-Appellee,
v.
NEXTEL COMMUNICATIONS, INC., NEXTEL OF
CALIFORNIA, INC.,
NEXTEL COMMUNICATIONS OF THE MID-
ATLANTIC, INC.,
NEXTEL OF NEW YORK, INC., NEXTEL SOUTH
CORPORATION,
NEXTEL OF TEXAS, INC., NEXTEL WEST CORP.,
NEXTEL NEXTEL CORPORATION, NEXTEL
COMMUNICATIONS COMPANY L.P.,
NEXTEL SPECTRUM L.P., AND NEXTEL
SOLUTIONS, INC.,
Defendants-Appellants.
__________________________
2009-1167
__________________________
Appeal from the United States District Court for the
Central District of California in case no. 06-CV-5306,
Judge Ronald S.W. Lew.
__________________________
NEWMAN, Circuit Judge, concurring in part, dissenting in
part.
ENOVSYS v. NEXTEL COMMUNICATIONS 2
I join the court’s ruling with respect to standing. I
write separately because the court, in reviewing the
question of infringement, confounds “claim construction”
with “infringement,” and on this confusion, rules that the
defendant waived critical aspects of its defense of non-
infringement simply because those aspects were not
raised in the guise of “claim construction.” Thus the court
holds that because the district court’s claim construction
was not specific to certain details of the defendant’s
system, the defendant “waived” its defense that these
elements of its system are not within the scope of the
claims. From this novel position I must, respectfully,
dissent.
Amid the complexities of the procedures of “claim con-
struction” as a prologue to determination of infringement,
it is not unusual to see an intermingling or misplacement
of the relationship between the claim as construed in light
of the description of the invention in the specification, and
the question of infringement by the accused device.
Questions of infringement may sometimes be decided as
claim construction, whereby the claim is construed with
so tight a tie to the structure of the accused device that
infringement vel non is immediately apparent – and
summarily resolved. And questions of claim construction
sometimes arise as questions of infringement, whereby
the trier of fact (as distinguished from the giver of law)
must decide whether the claim reads on the accused
device. In either situation, any flaw is more a matter of
procedural imprecision, not substantive “waiver,” and any
error is normally tolerable, for in either situation the
decisionmaker studies the claim, understands the accused
device, and decides the relationship between them as a
matter of substance, not technicality.
3 ENOVSYS v. NEXTEL COMMUNICATIONS
However, as with any tolerant relationship, intolerant
situations may arise. Here, for example, the defendant
Nextel presented a straightforward defense to the charge
of infringement, by arguing that certain aspects of the
patentee’s invention are not present in the accused sys-
tem. Yet my colleagues on this panel hold that this
defense is “waived.”
For example, the court holds that Nextel is precluded
from arguing that its circuitry does not infringe claim 1 of
the ’159 patent. Nextel argued non-infringement on the
ground that its circuitry differs from the “connecting
circuitry” identified in the patent as structure correspond-
ing to the “means to resolve” limitation. My colleagues
hold that this argument cannot be raised, although Nextel
presented evidence at trial that its circuitry differed from
the circuitry shown in the ’159 patent. The court now
rules that Nextel waived this non-infringement argument
because Nextel did not “object to the district court’s claim
construction, request clarification, or offer the construc-
tion it now advances on appeal.” Maj. Op. at 20–21.
However, the question is not of claim construction, but of
infringement of the claim as construed.
A district court ordinarily does not resolve all in-
fringement issues through a narrowly targeted claim
construction focused on the accused device. Claim con-
struction is derived from the specification of the patent,
not the accused device. Here, the district court’s claim
construction order stated that
the structures disclosed in the specification that
perform [the function of the “means to resolve”]
are transceiver, connecting circuitry, CPU, satel-
lite receiving means, terrestrial receiving means,
ENOVSYS v. NEXTEL COMMUNICATIONS 4
decoders, and temporary store. The parties are
not in dispute as to these structures.
Enovsys LLC v. Nextel Commc’ns., Inc., No. 06-CV-5306,
slip op. at 6 (C.D. Cal. Feb. 26, 2008) (emphasis added to
the term at issue for infringement). The district court,
instructing the jury on infringement, explained the follow-
ing regarding the “means to resolve” limitation:
The words of the clause do not cover all means
that perform the recited function of “resolving a
global position from the satellites or earth-based
communication means.” They cover only the struc-
ture described in the patent specification and
drawings that perform that function or an equiva-
lent of that structure.
J.A. 2488 (emphasis added). The district court then listed
the structures as it had done in its claim construction
order. The claim construction and the jury instructions
correctly limited the patented structures to those de-
scribed in the specification. In raising its defense that its
“connecting circuitry” was different from that in the
specification, Nextel conformed with law and protocol.
Thus Nextel presented evidence and argument at trial
that its accused iDEN system did not meet the “means to
resolve” limitation because it did not have the same
“connecting circuitry” described in the specification.
Although the jury rejected Nextel’s position, it was con-
sidered, and this issue was raised on motion for JMOL.
The judge denied Nextel’s JMOL motion, and disagreed
with Nextel’s argument that the claim construction
required “the exact connecting circuitry in the ’159 pat-
ent.” The trial judge did not treat Nextel’s argument as a
“waived” claim construction argument. However, my
colleagues hold that the question of infringing this claim
5 ENOVSYS v. NEXTEL COMMUNICATIONS
element should have been raised as an appeal from the
claim construction. Indeed, whether this question could
have been raised in this manner does not mean that
defense to infringement is deemed waived and cannot be
presented or appealed, on the apparent theory that the
defendant was required to request a claim construction in
terms of its own circuitry.
Any lapse of precision between fact and law does not
lead to “waiver” of the right to defend or the right to
judicial review (although it may affect the standard of
review). It is incorrect, and a negation of the processes of
law, to hold that such a defense against infringement was
waived because it was not presented, resolved, or ap-
pealed as a matter of claim construction.