Northpoint Technology, Ltd. v. MDS America, Inc.

Error: Bad annotation destination
United States Court of Appeals for the Federal Circuit

04-1249, -1295

NORTHPOINT TECHNOLOGY, LTD.,

Plaintiff-Appellant,

v.

MDS AMERICA, INC. and MDS INTERNATIONAL, S.A.R.L.,

Defendants-Cross Appellants.

Michael K. Kellogg, Kellogg, Huber, Hansen, Todd & Evans, PLLC, of
Washington, DC, argued for plaintiff-appellant. With him on the brief were Richard H.
Stern, J.Christopher Rozendaal, and Eugene M. Paige.

James H. Laughlin, Jr., Swidler Berlin Shereff Friedman, LLP, of Washington,
DC, argued for defendants-cross appellants. With him on the brief were Edward A.
Pennington, Robert C. Bertin, and Thomas S. Valente.

Appealed from: United States District Court for the Southern District of Florida

Judge James I. Cohn
 United States Court of Appeals for the Federal Circuit

04-1249,-1295

NORTHPOINT TECHNOLOGY, LTD.,

Plaintiff-Appellant,

v.

MDS AMERICA, INC. and MDS INTERNATIONAL, S.A.R.L.,

Defendants-Cross Appellants.

___________________________

DECIDED: June 28, 2005
___________________________

Before SCHALL, BRYSON, and DYK, Circuit Judges.

Opinion for the court filed by Circuit Judge BRYSON. Concurring in part and dissenting
in part opinion filed by Circuit Judge DYK.

BRYSON, Circuit Judge.

Northpoint Technology, Ltd., is the assignee of U.S. Patent No. 5,761,605 (“the

’605 patent”), entitled “Apparatus and Method for Reusing Satellite Broadcast Spectrum

for Terrestrially Broadcast Signals,” and U.S. Patent No. 6,169,878 (“the ’878 patent”),

entitled “Apparatus and Method for Transmitting Terrestrial Signals on a Common

Frequency with Satellite Transmissions.” Northpoint asserted the ’605 and ’878 patents

against MDS America, Inc. (“MDSA”) and MDS International, S.A.R.L. (“MDSI”) in an

action filed in the United States District Court for the Southern District of Florida.

Following a trial, a jury determined that MDSA had infringed claim 8 of the ’605 patent

and claims 1 and 7 of the ’878 patent. The jury determined, however, that those three
claims were invalid. The district court subsequently denied Northpoint’s motion for

judgment as a matter of law (“JMOL”) that the three asserted claims were not invalid,

and the court denied Northpoint’s motion for a new trial. The district court entered

judgment on the verdict. Northpoint appeals from the denial of its motion for JMOL

regarding validity and the denial of a new trial. MDSA cross-appeals from the aspect of

the judgment finding that it infringed claim 8 of the ’605 patent and claims 1 and 7 of the

’878 patent. MDSA and MDSI jointly cross-appeal, contending that the district court

should have extended the judgment of invalidity to all the remaining claims of the two

patents in suit. We affirm the judgment in all respects.

I

In the early 1980s, the Federal Communications Commission (“FCC”) began

allowing direct broadcast satellite service (“DBS”) from satellites in geosynchronous

orbit, using the frequency range from 12.2 to 12.7 Gigahertz, to provide audio and video

programming to users. The FCC recognized that multiple satellites could transmit on

the same frequencies if the satellites were spaced apart by at least nine degrees in

longitude and if users employed highly directional antennas to receive the DBS signals.

There are now multiple geosynchronous satellites transmitting service on the same

frequencies to most geographical locations in the United States at any given time.

Because of the directionality of the receiving antennas and the longitudinal separation of

the satellites, a user can receive a signal from one satellite, and avoid interference from

signals transmitted by other satellites, by pointing a directional antenna at the satellite

that is transmitting the desired signal.

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 Most DBS satellites provide coverage to the entire continental United States.

The satellites do not provide local television programming to most users, because each

satellite can transmit only a limited number of channels, and the satellites therefore

typically transmit only those channels that contain programming of national interest. As

a result, most DBS users cannot receive local channels that include matters of local

interest, such as local news, weather, and advertising.

Northpoint’s invention claims to solve this problem by terrestrially broadcasting

local programming on the same frequencies that are used by the DBS system in a

manner that permits both signals to be received at the user location at the same time

without interfering with each other. The concept underlying the invention is that the

DBS satellites are in geosynchronous orbit above the equator and therefore transmit in

a northerly direction to the North American continent. Accordingly, a directional antenna

employed at a user location in the United States must be pointed south towards the

satellite in order to receive the signal. Northpoint’s preferred embodiment of the

invention transmits terrestrial signals from north of the user’s location to a second

directional antenna at the user’s location that is pointed northward towards the

terrestrial transmitter, as depicted below.

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 According to Northpoint, the terrestrial signal will not interfere with the DBS signal

or vice versa because the terrestrial signal will be transmitted in a specific azimuth

spaced away from the DBS satellite-to-user azimuth. Northpoint claims that in such a

case, the signal received by each antenna at the user location will be outside the

“directional reception range” of the other antenna. Claim 8 of the ’605 patent provides

as follows:

A method for simultaneously providing local originating signals on a
common frequency with direct broadcast satellite signals transmitted from
a satellite, where the satellite is a first satellite location in geosynchronous
orbit about the earth, the method comprising the steps of:
(a) at a user location, receiving direct broadcast satellite signals at
a first frequency with a first antenna adapted to receive signals at the first
frequency only within a first directional reception range as measured from
a centerline of the first antenna;
(b) transmitting terrestrial signals at the first frequency and in a
terrestrial azimuth range from a terrestrial transmitter, the terrestrial
azimuth range being outside of the directional reception range of the first
antenna positioned to receive direct broadcast satellite signals from the
satellite; and
(c) at the user location, remote from the terrestrial transmitter,
receiving the terrestrial signals with a second antenna adapted for
receiving signals at the first frequency only within a second directional
reception range as measured from a centerline of the second antenna, the
second antenna being aligned so that the direct broadcast satellite signals
transmitted by the satellite are not transmitted within the directional
reception range of the second antenna.

Claim 1 of the ’878 patent recites the apparatus for transmitting the satellite and

terrestrial signals, as follows:

An apparatus for simultaneously transmitting terrestrial signals on a
common frequency with satellite signals transmitted from a satellite, the
satellite transmitting satellite signals at a first frequency to a user location
for reception only within a satellite directional reception range about the
user location, the apparatus comprising:
(a) a directional terrestrial transmitter for transmitting terrestrial
signals at the first frequency in a limited azimuth range around the location
of the terrestrial transmitter, the terrestrial transmitter being located with
respect to the user location such that the terrestrial transmitter transmits to

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 the user location along a route which is outside of the satellite directional
reception range.

Claim 7 of the ’878 is the corresponding method claim to claim 1:

A method for simultaneously providing terrestrial signals on a common
frequency with satellite signals transmitted from a satellite, where the
satellite is transmitting at a first frequency along a satellite transmission
axis extending from the satellite to a terrestrial user location, the method
comprising the step of:
(a) transmitting terrestrial signals at a first frequency in a limited
azimuth range from a terrestrial transmitter, the terrestrial transmitter
being located with respect to the user location so as to transmit to the user
location along a transmission route which is outside of a satellite
directional reception range about the user location, wherein the satellite
directional reception range comprises a limited directional range
substantially centered on the satellite transmission axis.

In 1999 Northpoint and two other companies applied to the FCC for permission to

provide terrestrial Multichannel Video Distribution and Data Service (“MVDDS”) in the

DBS frequency range of 12.2 to 12.7 GHz. Congress authorized the FCC to select an

independent engineering firm to determine whether terrestrial and satellite use of the

same bandwidth was feasible without causing interference. The FCC hired the Mitre

Corporation, a not-for-profit engineering company that studies engineering issues for

the government, to make that determination. Mitre’s analysis concluded that “MVDDS

sharing for the 12.2–12.7 GHz band currently reserved for DBS poses a significant

threat to DBS operation in many realistic operational situations.” However, Mitre also

concluded that a “wide variety of mitigation techniques . . . if properly applied under

appropriate circumstances” could possibly reduce or eliminate interference, but that

bandsharing appeared to be feasible “if and only if suitable mitigatory measures” were

used.

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 In 2002 the FCC adopted rules based on Mitre’s analysis to allow terrestrial

MVDDS in the DBS frequency range of 12.2 to 12.7 Gigahertz. MDSA applied to the

FCC for an experimental license to test and prove its MVDDS system. The FCC

granted the license, and MDSA arranged for a third party to perform tests in Florida

using equipment furnished by MDSI. Northpoint became aware of the test in Florida

and warned MDSA that performing the test would infringe its patents. After the

conclusion of the Florida tests, Northpoint brought this action, asserting that MDSA and

MDSI had infringed Northpoint’s patents. In the Joint Pretrial Stipulation, Northpoint

limited the asserted claims to claim 8 of the ’605 patent and claims 1 and 7 of the ’878

patent. After Northpoint presented its infringement case, the defendants moved for

JMOL of noninfringement of the unasserted claims in the ’605 and ’878 patents. The

district court denied that motion. After the defendants finished presenting their case, the

jury found that MDSA did, and MDSI did not, infringe the three asserted claims. The

jury also found, however, that each of those claims was invalid as anticipated, obvious,

not enabled, and indefinite. Following the denial of post-trial JMOL motions, the district

court entered final judgment, from which the parties filed the instant appeal and cross-

appeal.

II

We agree with the district court that substantial evidence supports the jury’s

verdict that the asserted claims were invalid based on anticipation. We also agree that

substantial evidence supports the jury’s verdict on enablement and that the district court

therefore correctly entered judgment that the claims were invalid for lack of enablement.

Because we uphold the judgment as to invalidity on those grounds, it is not necessary

04-1249,-1295 6
for us to reach the issues of obviousness and indefiniteness. We also do not reach the

cross-appeal with respect to claim construction. We agree that the district court

correctly denied Northpoint’s motion for a new trial, and we also agree that the district

court correctly denied the defendants’ motion for JMOL of invalidity with respect to all

the unasserted claims of the ’605 and ’878 patents.

A

The defendants assert that four prior art references introduced at trial anticipate

each asserted claim of the ’605 and ’878 patents. The evidence showed that each of

those references teaches the importance of proper pointing of antennas to avoid

interference between satellite and terrestrial systems broadcasting on the same

frequency. The strongest of the four references is a paper entitled “Sharing the UHF

Between Space and Terrestrial Services,” written by John Hult and published in 1970,

more than 25 years before the priority date of the ’605 and ’878 patents. Northpoint

argued that the 1970 Hult reference did not anticipate the asserted claims of the ’605

and ’878 patents because it failed to disclose the “directional reception range” limitation

in all three claims.

The district court construed the term “directional reception range” to refer to “[a]

three-dimensional space about the centerline of a receiving antenna within which a

usable signal can be received, a usable signal being a signal from which the information

carried by it can be extracted.” Thus, for a transmitted signal to be received inside the

directional reception range of an antenna, as the court construed that term, the

receiving antenna must be able to extract the information carried by the signal.

04-1249,-1295 7
Northpoint did not challenge the district court’s construction of the term “directional

reception range” at trial, and we adopt the district court’s construction of that term.

Northpoint argues that the Hult reference does not anticipate the asserted claims

because nothing in Hult requires that the satellite receiving antenna and the terrestrial

receiving antenna physically point in different directions. For that reason, Northpoint

contends, Hult discloses a system in which the satellite and terrestrial signals are not

transmitted outside of the “directional reception range” of the terrestrial and satellite

receiving antennas.

Northpoint’s argument is based on a misinterpretation of the trial court’s

construction of the term “directional reception range.” Northpoint interprets that term to

be limited to an area at which a receiving antenna is physically aimed. In fact, however,

the district court did not construe the term “directional reception range” so narrowly, nor

did the evidence support such a narrow construction. Rather, the court’s construction

defined the term “directional reception range” with reference to the three-dimensional

space in which the antenna could receive a usable signal, and not solely with reference

to the physical positioning of the antenna.

Although the court’s construction referred to the “centerline” of the receiving

antenna, neither the court’s construction nor the evidence at trial suggested that the

“centerline” of the antenna was a physical feature of the antenna divorced from the area

from which the antenna could receive a usable signal. The common specification of the

’605 and ’878 patents describes the “centerline” in terms of the antenna’s maximum

directional reception range, see ’605 patent, col. 4, ll. 24-30, and Northpoint’s expert

testified that the antenna’s centerline is the “center of the beam pointing towards the

04-1249,-1295 8
satellite.” Moreover, he explained that the centerline of the beam is not necessarily the

same as the physical, or “geometric center” of the receiving device, such as a parabolic

dish antenna.

Northpoint’s argument, in essence, is that the adaptive array antennas disclosed

in Hult are not directional and that they “operate in fundamentally different ways” from

the antennas of the patented invention because they reject and ignore the unwanted

satellite signal, while the claimed invention depends on preventing overlap of the

directional reception range of the terrestrial and satellite receivers by pointing the

antennas in opposite directions. However, nothing in the asserted claims requires that

the receiving antennas be physically pointed at the sources of the satellite and

terrestrial signals. Claim 8 of the ’605 patent merely requires that the two antennas be

“adapted” to receive signals within a first and second directional reception range, and

that the first be “positioned” to receive DBS signals from the satellite, while the second

is “aligned” so that the DBS signals are not within that antenna’s directional reception

range. The apparatus and method claims of the ’878 patent merely require a directional

terrestrial transmitter to transmit along a route that is outside the directional reception

range of the satellite transmissions.

The defendants’ expert, Philip Rubin, explained to the jury that an antenna’s

directionality is based on many factors, including the shape of the reflective dish, in the

case of dish-type antennas. When asked, “[n]ow, the directionality comes from the dish

itself, doesn’t it,” Mr. Rubin answered, “[f]rom the shape, from the shape of the dish.”

He stated that while he used dish-type antennas to explain how antennas work,

because most people are familiar with dish antennas, there are many other types of

04-1249,-1295 9
directional antennas in use. He then explained that antennas have varying levels of

gain in different directions and that signals arriving from directions with higher levels of

gain are detected, while signals arriving from outside those directions are not. He also

explained that although an antenna may not be physically pointed at an angle to be

aligned with a satellite, it is within the directional reception range of the satellite

transmission if the direction of greatest gain is aligned with the satellite transmission

angle. Finally, he explained that the adaptive array antenna used in Hult was “as much

of a direction[al] antenna as any antenna I’ve ever known,” and that “you could create

devices which change the beam without moving [the antenna].”

Northpoint’s expert, Dr. Edward Miller, agreed that an adaptive array antenna is

directional. He stated that “through a complex process such as the computer control of

the amplitude and phase, such an adaptive array can be made to have a gain in a

limited range of directions.” He further elaborated on how the reception range in an

adaptive array antenna was created by pointing the antenna in the desired direction

while electronically creating nulls in the directions of unwanted signals. He explained

that nonadaptive antennas have fixed directions of maximum and minimum gain based

on their physical characteristics.

Far from teaching away from the claims of the ’605 and ’878 patents, as

Northpoint argues, the Hult reference describes an antenna in which the directional

reception range is generated by creating areas of high gain in certain directions from the

antenna and areas of little or no gain in other directions. The terrestrial signal in Hult is

outside the directional reception range of the satellite receiver because there is a null in

the gain of the satellite receiving antenna in the direction of the terrestrial transmitter,

04-1249,-1295 10
which prevents the satellite antenna and receiver from receiving a signal from the

terrestrial transmitter from which usable information can be extracted. When asked if

steering nulls in the direction of an interfering signal meant that the receiving antenna

was being configured so that it would not receive those signals, Dr. Miller answered that

it did.

The electronically created null in an adaptive array antenna acts exactly like a

null in a dish-type antenna that is the product of the antenna’s shape. In both cases, an

interfering signal may reach the antenna from a particular direction, but the antenna has

no gain in that direction and hence does not receive a usable signal from which

information can be extracted (or interference created). As both experts explained, the

signal reaches the antenna, but the gain in the direction of the signal is so low that the

signal cannot be received and processed. For that reason, the Hult reference and the

expert testimony regarding it made clear that the unwanted signal in Hult is outside the

directional reception range of the antenna as that term is used in the ’605 and ’878

patents. Accordingly, there was substantial evidence from which a jury could find that

the Hult reference taught the separate “directional reception ranges” recited by

Northpoint’s patents and therefore anticipated the asserted claims.

The dissent contends that “there can be no serious contention that the adaptive

array antennas of Hult do not limit the ‘directional reception range’ using physical

pointing.” As Mr. Rubin’s testimony makes clear, however, Hult discloses the avoidance

of interference not only by steering nulls using adaptive array techniques, but also by

directional pointing of the antennas. Mr. Rubin explained that Hult discloses that if a

satellite “is more than 15 degrees above the horizon, all the interfered-with receivers

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could easily be remedied by small changes in antenna pointing.” In the same passage,

Hult refers to “the directional discrimination obtained” with the terrestrial television

receiving antennas, resulting in most of those antennas not having unacceptable

“antenna gains in the direction of the satellite.” Thus, while Hult concentrates on the

benefits to be obtained from the use of adaptive arrays, the evidence at trial made clear

that it also discloses the use of physical pointing of directional antennas to reduce

interference in the context of a dual satellite-terrestrial transmitting system.

B

The defendants’ theory of lack of enablement was that the patents do not

disclose “a way to provide an antenna that cannot receive signals from unwanted

directions” in order to meet the “directional reception range” limitation of each claim. Mr.

Rubin testified that the DBS satellite receiving antenna could receive signals in

directions away from where the antenna was pointed. The need to avoid interference

from those signals, he testified, was the reason that the power level of the terrestrial

transmission and the mitigation techniques described in the Mitre report were so

important. As he described the problem, if the signal power was too high, the terrestrial

signal could be received by the satellite receiving antenna even though the satellite

receiving antenna was pointed away from the terrestrial transmitter. Northpoint’s expert

agreed that DBS antennas operate in that manner.

Dr. Bahman Badipour, who conducted the allegedly infringing tests in Florida,

testified that it was important to maintain the correct flux density (electromagnetic

power) measurements at the level identified by the Mitre report. Dr. Badipour also

testified that when he conducted the tests he offset the carrier frequency of the

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terrestrial signal by more than six Megahertz from the DBS carrier frequency in order to

further reduce interference between the two signals. The defendants did not assert that

antennas with a directional reception range do not exist; rather, they asserted that

Northpoint did not disclose enough in the patent to enable one of ordinary skill in the art

to implement an antenna that would have a directional reception range as recited in the

claims.

Northpoint argues that the record contains no evidence that undue

experimentation would be necessary to practice the invention based on the disclosure in

the patents. We agree with the district court, however, that the evidence at trial,

including evidence of undue experimentation, was sufficient to sustain the jury’s verdict

on enablement. One of the inventors of the ’605 and ’878 patents, Carmen Tawil,

admitted that numerous parameter values and interference mitigation techniques were

used in the first test of Northpoint’s technology. Northpoint submitted a report of its first

test to the FCC with an attached appendix listing the techniques it used to avoid

interference. The appendix stated that Northpoint mitigated interference by using

several techniques including directional transmission, transmit antenna discrimination in

the vertical plane, beam tilting, and maximum height antenna placement. Ms. Tawil

admitted that none of those techniques were described or disclosed in the two patents,

but she insisted that one of skill in the art would know to apply them.

Ms. Tawil testified that Northpoint’s report to the FCC included specific values

used for the following parameters: polarization, antenna gain, transmit power, effective

isotropic radiated power, the transmit height above average terrain, the transmit height

above ground level, transmitter tilt above horizontal, required signal strength at edge of

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cell, cell size, receiving antenna gain, and thermal noise floor. Although none of those

parameters were discussed in the ’605 and ’878 patents, Ms. Tawil stated that a person

of skill in the art would have known all of those values without undue experimentation

when implementing the Northpoint technology. Ms. Tawil’s testimony on that point,

however, was contradicted by Mr. Rubin, who testified that the claimed system would

work only if the terrestrial signal was transmitted at a particular power level that would

depend on experimentation based on all of those parameters. Ms. Tawil’s testimony on

enablement is also contradicted by the conclusions from the Mitre report, which detailed

a very comprehensive experiment to test Northpoint’s technology. One of the

conclusions from the Mitre report was that there were three categories of techniques

that could be used to reduce interference, one being the selection of operational

parameters for: (1) lowering transmitter power; (2) using a frequency offset between the

terrestrial and DBS carriers; (3) increasing the terrestrial transmitting antenna height; (4)

adjusting the elevation tilt of the terrestrial transmitting antenna; and (5) pointing the

terrestrial transmitting antennas away from the satellites. Ms. Tawil testified that she

provided Mitre with the testing parameters as well as the mitigation techniques

Northpoint used in its test. Nonetheless, even using those parameters and techniques,

Mitre still found that the terrestrial signal interfered with the DBS signal, or that the

signals were inside the directional reception range of each receiver. Only after Mitre

performed additional experimentation and applied additional parameters and techniques

was it able to deliver the terrestrial signal outside the directional reception range of the

satellite receiving antenna, as required by the asserted claims.

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 Although Northpoint argues that the evidence showed that one could implement

the invention using a standard satellite dish purchased from Radio Shack, Dr. Miller’s

testimony does not support that assertion, and the jury heard other evidence indicating

that implementing the invention was not so straightforward. Thus, Dr. Badipour testified

about the amount of testing he performed. He explained that he first went to France to

test the defendants’ equipment parameters, that he read the Mitre report and reports

from DBS providers, and that he incorporated the results from his initial equipment

testing and the interference mitigation techniques from Mitre’s experimentation into a

test plan to submit to the FCC. Once he developed the FCC test plan, he further tested

the equipment in Virginia before taking the equipment to Florida. Based on that

evidence, the jury could properly conclude that the techniques for avoiding interference

were not so plain to a person of skill in the art so as to obviate the need for any enabling

disclosure in the patent.

Finally, Northpoint contends that Mr. Rubin testified that antennas with directional

reception range have been available since the 1940’s. What Mr. Rubin actually stated

was that directional antennas had been available for many years. The defendants’

point, however, was not that the patents failed to enable directional antennas, but that

they did not enable one of skill in the art to create the directional reception range

necessary to avoid interfering signals. In light of our review of the evidence at trial, we

agree with the district court that the jury’s finding of lack of enablement was supported

by substantial evidence. The district court therefore correctly entered judgment that the

asserted claims were invalid for lack of enablement.

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 The dissent contends that the evidence at trial was not sufficient to show that

“undue experimentation” would be required to make the patented invention function as

it was claimed to do. While determining whether the required amount of

experimentation is “undue” is an inherently imprecise undertaking, the jury was properly

instructed as to its task, and it reached a reasonable conclusion. The evidence,

including the testimony of experts about the nature of the experimentation conducted by

the defendants and others, was sufficient to show that elaborate measures, not

described or even adumbrated by the patent, were required to make the claimed

invention effective. See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1374-75

(Fed. Cir. 1999) (no enablement when “the teachings set forth in the specifications

provide no more than a ‘plan’ or ‘invitation’ for those of skill in the art to experiment”).

To be sure, no witness testified in haec verba that the experimentation was “undue.”

But we know of no principle that requires that a witness testify as to that legal

conclusion, as long as the factual showing is sufficient to justify the jury’s conclusion on

the highly factual issue of whether, under all the circumstances, more than routine

experimentation was needed to make the invention work. See PPG Indus., Inc. v.

Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1966). Because that requirement

was amply satisfied in this case, the district court properly denied Northpoint’s motion

for judgment as a matter of law on the enablement issue.

C

Northpoint contends that we should grant a new trial on two theories. First,

Northpoint claims that the evidence of invalidity was so weak that the district court

should have granted Northpoint’s motion for a new trial because the verdict was against

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the clear weight of the evidence. Because the right to a new trial is a procedural issue

not unique to patent law, the applicable law is the law of the regional circuit to which an

appeal would lie in a non-patent case. EMI Group N. Am., Inc. v. Cypress

Semiconductor Corp., 268 F.3d 1342, 1347 (Fed. Cir. 2001). In this case, that court is

in the Eleventh Circuit. The test applied in the Eleventh Circuit to an appeal from the

denial of a new trial motion is whether the trial court abused its discretion in concluding

that the verdict was not against the clear weight of the evidence. See Cleveland v.

Home Shopping Network, Inc., 369 F.3d 1189, 1196 (11th Cir. 2004); Lipphardt v.

Durango Steakhouse of Brandon, Inc., 267 F.3d 1183, 1186 (11th Cir. 2001). In light of

the evidence on anticipation and enablement discussed above, we hold that the district

court did not abuse its discretion in concluding that the verdict was not against the clear

weight of the evidence. We therefore uphold the denial of a new trial on that ground.

Northpoint next argues that it should be granted a new trial because, if alternative

theories of liability are asserted together in one jury instruction, “a new trial is to be

granted if any one of the alternatives is unsupported by substantial evidence.” Cronin v.

Wash. Nat’l Ins. Co., 980 F.2d 663, 669 n.7 (11th Cir. 1993); see also Carroll Kenworth

Truck Sales, Inc. v. Kenworth Truck Co., 781 F.2d 1520, 1529 (11th Cir. 1986); King v.

Ford Motor Co., 597 F.2d 436, 439 (5th Cir. 1979). Northpoint argues that it is entitled

to a new trial on that theory because the jury decided the issues of invalidity on “several

alternative legal theories, at least one of which in each case is defective.” In particular,

Northpoint notes that the defendants argued anticipation based on five different prior art

references; Northpoint suggests that each of those references represents a separate

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legal theory of anticipation, and that a failure of proof with regard to any one of the five

requires the grant of a new trial.

We disagree with Northpoint’s characterization of the anticipation issue at trial.

The cases on which it relies involve separate legal theories of recovery, where at least

one of the theories is legally flawed. By contrast, the five prior art references offered to

prove anticipation in this case did not represent separate legal theories, but instead

simply provided separate factual bases for the jury to consider with regard to the single

legal theory of anticipation.

As a general matter, it is not necessary for every possible factual basis for liability

to be independently sufficient in order for the evidence to be sufficient to support a jury

verdict. A failure of proof with respect to any single item of evidence does not justify a

grant of either JMOL or a new trial; even if some of the proposed factual grounds for

liability are not legally sufficient to support a verdict, that is not fatal, because the critical

question is whether the evidence, taken as a whole, was sufficient to support the jury’s

verdict. In Griffin v. United States, 502 U.S. 46 (1991), the Supreme Court explained in

the context of a criminal case the rationale behind the distinction between an invalid

legal theory of liability and an insufficient factual ground for decision:

When, therefore, jurors have been left the option of relying upon a
legally inadequate theory, there is no reason to think that their own
intelligence and expertise will save them from that error. Quite the
opposite is true, however, when they have been left the option of relying
upon a factually inadequate theory, since jurors are well equipped to
analyze the evidence . . . .

502 U.S. at 59 (emphasis in original); see also Walther v. Lone Star Gas Co., 952 F.2d

119, 126 (5th Cir. 1992) (“we will not reverse a verdict simply because the jury might

have decided on a ground that was supported by insufficient evidence”); Sandberg v.

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Va. Bankshares, Inc., 891 F.2d 1112, 1122 (4th Cir. 1989) (“the submission of both

correct and incorrect factual bases supporting a single theory of recovery is not grounds

for reversal”), rev’d on other grounds, 501 U.S. 1081 (1991); McCord v. Maguire, 873

F.2d 1271 (9th Cir. 1989) (“When a general verdict may have rested on factual

allegations unsupported by substantial evidence, we will uphold the verdict if the

evidence is sufficient with respect to any of the allegations.”); Baumler v. State Farm

Mut. Auto. Ins., 493 F.2d 130, 134 (9th Cir. 1974) (“where there are two alternative

factual theories which might support the verdict, the verdict will be upheld if there is

sufficient evidence to support either theory”).

In the context of this case, the question is whether the evidence as a whole was

sufficient to enable a reasonable jury to conclude, by clear and convincing evidence,

that the asserted claims of the ’605 and ’878 patents were anticipated. The inadequacy

of any particular item of evidence to establish anticipation, such as the failure of any

particular reference to contain all the limitations of the asserted claims, would not

undermine the verdict as a legal matter. In this case, the evidence with respect to at

least one of the prior art references was sufficient to prove anticipation of the asserted

claims. Accordingly, we uphold the district court’s order denying Northpoint’s motion for

a new trial on the issue of invalidity.

D

In their cross-appeal, the defendants argue that they are entitled to have the

judgment of invalidity as to the three asserted claims extended to all the remaining

claims in the ’605 and ’878 patents. We disagree. In the pretrial stipulation, the

plaintiffs asserted infringement only as to claim 8 of the ’605 patent and claims 1 and 7

04-1249,-1295 19
of the ’878 patent, and the defendants asserted invalidity only as to those three claims.

At trial, the parties introduced evidence of infringement and invalidity only as to those

three claims, and the jury’s verdict was limited to those claims. In accordance with the

jury’s verdict, the court entered judgment of invalidity only as to the three asserted

claims. The defendants now contend that, based on comments made by Northpoint’s

attorney at the close of the plaintiff’s case, the other claims of the ’605 and ’878 patents

should be held invalid in light of the jury’s verdict as to the three litigated claims.

We have examined the attorney’s comments and conclude that those comments

do not provide a basis for holding the unasserted claims of the ’605 and ’878 patents

invalid. In the colloquy to which the defendants refer, Northpoint’s attorney stated, in

response to a Rule 50 motion to hold the other claims not infringed, that “the outcome

should be determined by the claims we presented.” The attorney expressed his

understanding that the parties had agreed that “we would present representative claims

instead of every claim in the patent . . . and then the outcome as to those patents, all

claims, would be dictated by the outcome on the three [claims] we presented.” The

attorney explained that “those claims will dictate the outcome as to the complaint,”

because any further action on the unasserted claims would be barred by res judicata.

The defendants now contend that the effect of the attorney’s statements at the

time of the defendants’ Rule 50 motion on infringement was to concede that any verdict

on invalidity would apply to all the unasserted claims of the two patents in suit. We do

not interpret Northpoint’s attorney’s comments in that manner. Northpoint’s attorney

was focused on the issue of infringement and indicated that a Rule 50 judgment of

noninfringement on those claims would not be appropriate, but that because of res

04-1249,-1295 20
judicata principles there was no risk that those claims would be asserted against the

defendants in a subsequent action. Northpoint’s attorney did not address the issue of

invalidity, and neither the judge nor counsel for the defendants raised the issue of

invalidity at that time. Instead, the trial proceeded in accordance with the pretrial

stipulation, with the defendants putting on evidence as to the invalidity of the three

claims at issue. The defendants did not offer evidence as to the invalidity of any other

claims of the two patents in suit, and the court accordingly did not enter a judgment as

to those other claims. We do not regard Northpoint’s attorney as having done or said

anything that would require the district court to enter a judgment of invalidity as to the

unasserted claims. In fact, to the extent that those claims were ever asserted, the court

appears to have treated them as having been dismissed. Accordingly, the court’s

judgment of invalidity was properly limited to the three claims asserted at trial.

Each party shall bear its own costs for this appeal.

AFFIRMED.

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 United States Court of Appeals for the Federal Circuit

04-1249, -1295

NORTHPOINT TECHNOLOGY, LTD.,

Plaintiff-Appellant,

v.

MDS AMERICA, INC. and MDS INTERNATIONAL, S.A.R.L.,

Defendants-Cross Appellants.

DYK, Circuit Judge, concurring in part and dissenting in part.

The majority today invalidates claims of two significant patents in my view

utilizing a plainly incorrect claim construction. It upholds a jury verdict of anticipation

that, under a proper claim construction, has no record support in expert testimony,

much less the clear and convincing evidence necessary to invalidate the patent claims

at issue.1 The majority also finds lack of enablement in the absence of expert testimony

that the experimentation required was excessive or not routine. I respectfully dissent.2

I

First, I disagree with the majority’s conclusion that the Hult reference anticipates

claim 8 of the ’605 patent and claims 1 and 7 of the ’878 patent.

There is no question but that Northpoint’s invention constitutes a significant

contribution to the communications art. The Federal Communications Commission

1
Claim 8 of U.S. Patent No. 5,761,605 (the “’605 patent”) and claims 1 and
7 of U.S. Patent No. 6,169,878 (the “’878 patent”).
(“FCC”) found that “Northpoint has presented a creative mechanism by which to receive

greater use of a limited amount of spectrum, thus fostering spectrum efficiency.” (J.A.

at 3405.) In a joint statement, former FCC Chairman Michael Powell and Commissioner

Kathleen Q. Abernathy specifically noted that

Northpoint arrived at the Commission many years ago with a proposal for
a new and innovative way to share the DBS spectrum. Today, thanks in
large part to its fine work and diligence, that service will go forward. . . .
There is little question that had it not been for Northpoint, the MVDDS
service would not be ready to move forward today.

(J.A. at 1012.)

2
I join part II(D) of the majority opinion, which holds that the district court
properly limited its holding of invalidity to the three asserted claims.

04-1249, -1295 2
 This invention is recited in the patent claims at issue.3 They describe an

3
Claim 8 of the ’605 patent reads:

8. A method for simultaneously providing local originating signals on a
common frequency with direct broadcast satellite signals transmitted from
a satellite, where the satellite is in a first satellite location in
geosynchronous orbit about the earth, the method comprising the steps of:
(a) at a user location, receiving direct broadcast satellite signals at a
first frequency with a first antenna adapted to receive signals at the
first frequency only within a first directional reception range as
measured from a centerline of the first antenna;
(b) transmitting terrestrial signals at the first frequency and in a
terrestrial azimuth range from a terrestrial transmitter, the terrestrial
azimuth range being outside of the directional reception range of
the first antenna positioned to receive direct broadcast satellite
signals from the satellite; and
(c) at the user location, remote from the terrestrial transmitter,
receiving the terrestrial signals with a second antenna adapted for
receiving signals at the first frequency only within a second
directional reception range as measured from a centerline of the
second antenna, the second antenna being aligned so that the
direct broadcast satellite signals transmitted by the satellite are not
transmitted within the directional reception range of the second
antenna.

’605 patent, cols. 6-8 (emphases added). Claims 1 and 7 of the ’878 patent state:

1. An apparatus for simultaneously transmitting terrestrial signals on a
common frequency with satellite signals transmitted from a satellite, the
satellite transmitting satellite signals at a first frequency to a user location
for reception only within a satellite directional reception range about the
user location, the apparatus comprising:
(a) a directional terrestrial transmitter for transmitting terrestrial signals
at the first frequency in a limited azimuth range around the location
of the terrestrial transmitter, the terrestrial transmitter being located
with respect to the user location such that the terrestrial transmitter
transmits to the user location along a route which is outside the
satellite directional reception range.
....
7. A method for simultaneously providing terrestrial signals on a common
frequency with satellite signals transmitted from a satellite, where the
satellite is transmitting at a first frequency along a satellite transmission
axis extending from the satellite to a terrestrial user location, the method
comprising the step of:

04-1249, -1295 3
apparatus and method for reuse of the direct broadcast satellite (“DBS”) spectrum

between satellite and terrestrial services. In the preferred embodiment, spectrum reuse

is accomplished by the use of two directional antennas. One antenna is pointed south

to receive DBS signals, while a second antenna is pointed north to receive terrestrially

broadcast signals. Interference between the signals is avoided because the antennas

are constructed to receive a useable signal only within a narrow range, and pointed

such that undesired signals arrive at each antenna outside of that range.

The claimed anticipating reference (Hult) disclosed a method of sharing the UHF

spectrum between space and terrestrial services by using adaptive array antennas for

receiving satellite signals that “cancel[] out” the unwanted signal. (J.A. at 1931.) The

question with respect to the Hult reference is whether it disclosed the “directional

reception range” limitation. The district court construed “directional reception range” in

the ’605 and ’878 patents as follows (and so instructed the jury):

A three-dimensional space about the centerline of a receiving antenna
within which a usable signal can be received, a useable signal being a
signal from which the information carried by it can be extracted.

Northpoint Tech. v. MDS Am., Inc., No. 01-CIV-14207, slip op. at 5 (S.D. Fla. Oct. 17,

2003) (emphasis added). Neither party objected to the claim construction or to the jury

instruction. Neither party challenges the claim construction of “directional reception

(a) transmitting terrestrial signals at the first frequency in a limited
azimuth range from a terrestrial transmitter, the terrestrial
transmitter being located with respect to the user location so as to
transmit to the user location along a transmission route which is
outside of a satellite directional reception range about the user
location, wherein the satellite directional reception range comprises
a limited directional range substantially centered on the satellite
transmission axis.

04-1249, -1295 4
range” on appeal, and the majority adopts the district court’s construction. Ante at 7-8.

That claim construction, referring to a “three-dimensional space about the centerline of

a receiving antenna within which a usable signal can be received,” in my view clearly

requires that the patented device achieve non-interference as a result of the geographic

orientation of the two antennas so that each is outside the range of the unwanted signal

due to the limitation of the antennas. The majority effectively rejects the district court’s

claim construction and construes the claims so that geographic separation is

unnecessary, and the claims are satisfied if the unwanted signal is not received through

electronic canceling of the unwanted signal rather than physical pointing. Since such

electronic canceling was achievable using the adaptive array antennas of Hult, the

majority finds that the asserted claims of the patents are anticipated.

In my view the majority’s claim construction is untenable even if we were to

disregard the district court’s construction. The majority states that “nothing in the

asserted claims requires that the antennas be physically pointed at the sources of the

satellite and terrestrial signals.” Ante at 9. I disagree because the claims require that

the functionality of the receivers be geographically limited so that interference is avoided

by the geographic orientation of the receivers. This is evident from the language of the

claims themselves. For instance, claim 8 of the ’605 patent requires the directional

reception range of the first antenna to be “measured from a centerline” and that that

antenna be “positioned to receive” the signal. It also requires the second antenna to be

“aligned” so that the unwanted signal is not received.

’878 patent, cols. 6-7 (emphases added).

04-1249, -1295 5
 The necessity for geographic separation is also made clear by numerous

references in the specifications. Both patents state that “[t]he receiving antenna for

DBS signals must, therefore, be limited to receiving signals in a directional range

measuring plus or minus nine (9) degrees from a centerline of the antenna” and that

“[i]n the single antenna arrangement, the antenna is movable between a position to

receive DBS signals and another position to receive terrestrial signals.” ’605 patent, col.

1, ll. 41-44, 56-59; ’878 patent, col. 1, ll. 47-50, 62-65.4 The specifications also state:

The object of the invention is accomplished by utilizing receiving
antennas with a limited directional reception range and transmitting the
terrestrial signals in a different range of directions than those in which the
satellite signals are transmitted. . . . Both receiving antennas are adapted
to receive signals only within a particular directional range. The range is
measured from a centerline of the particular antenna.

’605 patent, col. 2, ll. 19-28; ’878 patent, col. 2, ll. 20-29.

There can be no serious contention that the adaptive array antennas of Hult do

not limit the “directional reception range” using physical pointing. Hult teaches the use

of adaptive array antennas “in a spectrum sharing or interference environment.” (J.A. at

4376.) An antenna array is an “assembly of antenna elements with dimensions,

spacing, and illumination sequence such that the fields for the individual elements

combine to produce a maximum intensity in a particular direction and minimum field

4
The patents make clear that the invention is not limited to a direction
range of nine degrees. The specifications state:

Although current regulations require a spacing of no less than nine (9)
degrees separation, the invention is not limited to this degree of
separation. However, according to the invention, the effective reception
range of each first antenna or satellite reception antenna must be less
than or equal to the minimum satellite separation angle.

’605 patent, col. 3, ll. 61-67; ’878 patent, col. 3, l. 64-col. 4, l. 3.

04-1249, -1295 6
intensities in other directions.” Info. Tech. Section, Gen. Servs. Admin.,

Telecommunications: Glossary of Telecommunications Terms A-16 (1997). A phased

array (or adaptive array) accomplishes “beam steering without the mechanical and

inertial problems of rotating” the entire antenna. John D. Kraus & Ronald J. Marhefka,

Antennas for All Applications 572 (3d ed. 2002). “[A]n adaptive array can automatically

steer its beam toward a desired signal while steering a null toward an undesired or

interfering signal.” Id. Thus, an adaptive array antenna automatically excludes (or

cancels) signals coming from a particular direction without a change in its geographic

orientation. The disclosure of an adaptive array does not anticipate.

Finally, the majority points out that Hult discloses not only the use of adaptive

array antennas but the use of conventional directional antennas pointed at the

transmitting source and the making of “small changes in antenna pointing” to reduce

interference. Ante at 12. The majority is correct that expert testimony here supports the

view that Hult made such a disclosure. What is lacking is any expert testimony that the

disclosures of Hult concerning the use of conventional directional antennas anticipate

the three claims at issue here. The only testimony that directly addresses the issue of

anticipation by Hult (and concludes that Hult anticipates) is Rubin’s cryptic and

conclusory testimony concerning the Hult disclosure of adaptive arrays. Under these

circumstances I conclude that the jury verdict of anticipation based on Hult cannot

stand.5

5
The accused infringers here relied on four other prior art references to
show anticipation. The majority focuses on the Hult reference only and does not
suggest that the other references anticipate. The other references are even weaker
than the Hult reference, and in my view none of the references can support a jury
verdict of anticipation.

04-1249, -1295 7
 II

I suggest that the majority also errs in sustaining the jury’s finding of lack of

enablement because, again, the expert testimony is legally insufficient. The majority

relies on four pieces of evidence to establish the quantity of experimentation required to

practice the Northpoint patents: (1) Mr. Rubin’s testimony regarding the importance of

maintaining the correct power level of the terrestrial transmission; (2) Dr. Badipour’s

testimony regarding the experimentation performed leading up to and during MDS’

infringing test in Florida; (3) Northpoint’s report to the FCC detailing various interference

mitigation techniques and Ms. Tawil’s testimony regarding the report; and (4) the Mitre

report. Ante at 12-15. Based upon this evidence, the majority concludes that the jury

correctly found the quantity of experimentation undue, apparently primarily with respect

to the required power level.6

The testimony on which the majority relies to sustain the verdict does no more

than establish that experimentation was required to determine the required power level.

Rubin’s testimony plainly supports the assertion that power is very important, but it says

nothing about whether or not undue experimentation was required to determine power.7

6
The majority lists a variety of other parameters required to practice the
patents. Ante at 13-14. There is simply no testimony at all that undue experimentation
was necessary with respect to these, and I understand the majority to rely primarily on
the power level.
7
Mr. Rubin testified:

Northpoint’s proposal has no mention of power. That’s the one ingredient
that determines whether people can coexist or not coexist. Northpoint’s
patents is simply directional antennas. There’s no power in it whatsoever.
It’s the power that everybody’s being – transmitting that makes it work or
not work. There’s – in the Northpoint patents there is not one word, not
one number about power.

04-1249, -1295 8
 Neither does the remainder of the evidence relied on by the majority address the

question of undue experimentation. Dr. Badipour said nothing about what

experimentation one of ordinary skill in the art might consider excessive or not routine,

nor did Northpoint’s FCC report. Ms. Tawil’s testimony regarding the FCC report does

not support a conclusion that the techniques described therein would constitute undue

experimentation to one of skill in the art. The Mitre report is also silent on undue

experimentation. The only testimony as to whether an expert would consider the

experimentation required to be excessive or not routine was presented by Northpoint,

and it supported the view that the amount of experimentation was not undue.

Northpoint’s expert, Dr. Miller, testified that the amount of experimentation was routine

and not excessive.8 Ms. Tawil, one of the inventors, also testified regarding the various

(J.A. at 1976-77.) He further testified:

I would say power makes a big difference. That’s what counts here, not
anything else. The amount of power can destroy a broadcast receiver or it
can allow it to operate. And there is nothing, nothing in the patent that
says anything about power, nothing at all. The most critical factor is
omitted.

(J.A. at 1990 (emphasis added).)
8
Northpoint’s expert, Dr. Edward F. Miller, testified:

Q Was there enough information in the specification of the patents to
enable that person of ordinary skill in the art to make and use a system of
the type that’s described in the claims?
A Yes, I think after reading the claims, reading the patents, one of
ordinary skill in the art would have been able to construct what’s described
in the patent
....
Q Well, that process you’ve just described of setting the transmitter up
to some reasonable maximum power and dialing it back down to find the
power level that you wanted to use, is that something that takes a lot of
specialized knowledge and experimentation to accomplish?

04-1249, -1295 9
interference mitigation techniques documented in the Mitre report and stated that “[a]ll

of those techniques a person would know who’s skilled in the art would be necessary in

order to stay out of the directional reception range and not cause interference with the

satellite receiver.” (J.A. at 1603.) Thus, MDS presented no evidence showing that the

experimentation conducted on the Northpoint system was anything but routine, or would

be considered undue by one of skill in the art.

Undue experimentation is a matter of law based on underlying fact. Johns

Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1354 (Fed. Cir. 1998). Merely listing a

quantity of experimentation is not sufficient to prove undue experimentation because

“[t]he determination of what level of experimentation is ‘undue,’ so as to render a

disclosure non-enabling, is made from the viewpoint of persons experienced in the field

of the invention.” Elan Pharm., Inc. v. Mayo Found. for Med. Educ. & Research, 346

F.3d 1051, 1055 (Fed. Cir. 2003). Similarly, we have held that

routine experimentation does not constitute undue experimentation: The
test [for undue experimentation] is not merely quantitative, since a
considerable amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a reasonable amount of
guidance with respect to the direction in which the experimentation should
proceed to enable the determination of how to practice a desired
embodiment of the claimed invention.

A No, not really. Basically, one could do it with one person at the
transmitter to control the power, another at the receiver and a cellular
phone link between them so that their communication could be
established to say, yes, the signal is being received, and the person
adjusting the power could turn the knob or whatever other mechanism
there is for changing the power level.

(J.A. at 2017-19.)

04-1249, -1295 10
Johns Hopkins, 152 F.3d at 1360 (quotations omitted) (brackets in original and

emphasis added). Therefore, the evidence presented by MDS was legally insufficient to

establish lack of enablement.

The majority asserts that there is no principle that requires that a witness testify

as to whether experimentation was “undue.” Ante at 16. I agree that expert testimony

need not use the word “undue” but it must do more than talk about the absolute quantity

of experimentation. It must suggest that the amount of experimentation would be

considered excessive or not routine by one of ordinary skill in the art. Enzo Biochem,

Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999) (reasonable amount of

routine experimentation); Bruning v. Hirose, 161 F.3d 681, 686 (Fed. Cir. 1998)

(excessive); In re Wands, 858 F.2d 731, 740 (Fed. Cir. 1988) (excessive); United States

v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) (excessive).

In my view the majority errs in sustaining the jury’s findings of anticipation and

lack of enablement. I would hold Northpoint’s patents not invalid and infringed.9

9
The jury also found Northpoint’s patents obvious and indefinite. The
majority did not reach these other issues. I would reverse the district court’s
conclusions as to obviousness and indefiniteness.

04-1249, -1295 11