Gpne Corp. v. Apple Inc.

United States Court of Appeals
for the Federal Circuit
______________________

GPNE CORP.,
Plaintiff-Appellant,

v.

APPLE INC.,
Defendant-Appellee
______________________

2015-1825
______________________

Appeal from the United States District Court for the
Northern District of California in No. 5:12-cv-02885-LHK,
Judge Lucy H. Koh.
______________________

Decided: August 1, 2016
______________________

JUSTIN ADATTO NELSON, Susman Godfrey LLP, Hou-
ston, TX, argued for plaintiff-appellant. Also represented
by MAX LALON TRIBBLE, JR.; KALPANA SRINIVASAN,
FRANCES S. LEWIS, Los Angeles, CA; HOWARD JAY SUSSER,
Burns & Levinson, LLP, Boston, MA.

LAUREN B. FLETCHER, Wilmer Cutler Pickering Hale
and Dorr LLP, Boston, MA, argued for defendant-
appellee. Also represented by DANA OLCOTT BURWELL,
JOSEPH J. MUELLER; MARK D. SELWYN, Palo Alto, CA;
RUFFIN B. CORDELL, Fish & Richardson, PC, Washington,
2 GPNE CORP. v. APPLE INC.

DC; BENJAMIN C. ELACQUA, Houston, TX; CHRISTOPHER
OWEN GREEN, Atlanta, GA.
______________________

Before PROST, Chief Judge, TARANTO and CHEN, Circuit
Judges.
PROST, Chief Judge.
GPNE Corp. (“GPNE”) appeals from a final decision of
the United States District Court for the Northern District
of California. GPNE Corp. v. Apple Inc., 108 F. Supp. 3d
839 (N.D. Cal. 2015). Following a seven-day jury trial,
the district court held that the asserted claims of U.S.
Patent No. 7,570,954 (“’954 patent”) and U.S. Patent No.
7,792,492 (“’492 patent”) (collectively, “patents at issue”)
were not infringed by Apple, Inc. (“Apple”). We affirm.
BACKGROUND
The patents at issue relate to a two-way paging sys-
tem, where paging devices are capable of not only receiv-
ing messages but also sending messages back in response.
’492 patent col. 1 ll. 33–34, col 1 l. 66–col. 2 l. 17, col. 6
l. 38–col. 8 l. 61. Devices communicate through a central
control station, which receives a message from a sending
device and then passes the message on to a recipient
device. Id. at col. 3 ll. 30–50, col. 4 l. 57–col. 6 l. 37. The
central control station is also capable of receiving a mes-
sage from a telephone (such as a callback number, as in
typical one-way pager operation) and passing it on to a
recipient device. Id. at col. 5 ll. 37–48. The specification
discloses that “the invention provides a two-way paging
system which operates independently from a telephone
system for wireless data communication between users.”
Id. at col. 14 ll. 14–16.
GPNE asserts claim 44 of the ’492 patent and claims
19 and 22 of the ’954 patent. All of these claims refer to
the devices on the network as “nodes.” Id. at col. 21 ll. 8–
GPNE CORP. v. APPLE INC. 3

52, col. 22 l. 3–14; ’954 patent col. 16 l. 53–col. 17 l. 13, col.
17 ll. 27–43, col. 17 ll. 51–58. The claims require that the
“node” be “in a data network, the data network including
a plurality of nodes,” have “at least one processor,” have
“a memory providing code to the processor,” and have an
“interface” that transmits and receives communication
signals in a particular manner. See, e.g., ’492 patent col.
21 ll. 8–52. The claims are otherwise silent as to the type
of device a “node” must be. Id.
Apart from the Abstract, the specification does not use
the word “node,” but instead exclusively refers to the
devices as “pagers” or “paging units.” See, e.g., id. at col. 1
ll. 33–34, col. 1 l. 66–col. 2 l. 9, col. 3 l. 51–col. 4 l. 28, col.
5 ll. 51–63, col. 14 ll. 14–16. The specification discloses
that each “paging unit” includes a transmitter, a receiver,
a beeper, a vibrator, an LCD display, a keyboard, and a
“pager computer” which performs the processing neces-
sary for the operation of the device. Id. at col. 3 l. 51–
col. 4 l. 19, fig.2. In several instances, the specification
refers to “pagers” and “telephones” in the same sentence.
See, e.g., id. at col. 1 ll. 44–51 (describing prior art at-
tempts at two-way communication that “included efforts
to connect the pager to a telephone”); id. at col. 5 ll. 31–47
(describing differences in processing a “telephone mes-
sage” versus a “pager message”). It never refers to the
devices as “telephones.”
PROCEDURAL HISTORY
In 2012, GPNE brought this action against Apple, al-
leging direct infringement by Apple’s iPhones and iPads
that operate on the GPRS and LTE data networks.
During claim construction, the parties disputed the
meaning of “node.” GPNE proposed that a “node” should
be construed as “[a] device in a network that can transmit
and receive information.” Apple contended that “node”
should be “[a] pager in a network operating independently
of a telephone network.” In its Markman briefing and at
4 GPNE CORP. v. APPLE INC.

the Markman hearing, GPNE expressed concern that
construing a “node” as a “pager” would lead to a fight
about what “pager” meant. J.A. 510 (Markman Br. 4)
(“Defendants propose an incorrect ambiguity by inserting
the term ‘pager’ into ‘node’ as it . . . only begs the question
of what a ‘pager’ is . . . .”); J.A. 1568 (Markman Tr. 80:18–
24) (“[T]he mischief here is . . . we get into the definition
of, what is a pager?”). The court pressed Apple on this
point:
If I do say [a “node” is] “a pager that’s got this en-
hanced capability to do two-way data communica-
tion,” then I’m just kicking the can down the road
and then we’re going to have a fight as to what a
pager is . . . . So tell me, then what is a pager?
How are we going to define that? Are we going to
need to have a subsequent claim construction on
that term?
J.A. 1569–70 (Markman Tr. 81:19–82:2). Apple respond-
ed that “I don’t think we’re setting up a situation where
we construe the construction . . . because there’s more to
[‘node’] than just a pager.” J.A. 1571 (Markman Tr.
83:15–18).
On August 13, 2013, the court issued a Markman or-
der construing “node” as “pager with two-way data com-
munications capability that transmits wireless data
communications on a paging system that operates inde-
pendently from a telephone network.” J.A. 74–75. It
rejected GPNE’s position that “node” cannot be described
as a “pager,” reasoning “while the Court agrees that the
specification makes clear that the claimed invention is
distinguishable from prior art pagers in that the claimed
devices are capable of two-way communications, this does
not support the conclusion that the claimed devices are
not a type of pager.” J.A. 68.
The district court held a seven-day jury trial between
October 6 and 21, 2014. True to the concerns expressed at
GPNE CORP. v. APPLE INC. 5

Markman, the parties spent time at trial discussing
whether the accused iPhones and iPads could be “pagers.”
Apple asked GPNE’s experts, its own experts, and several
lay witnesses whether they thought an iPad or an iPhone
was a pager. E.g., J.A. 28119 (Dr. Dinan, GPNE’s tech-
nical expert), J.A. 28670–71 (Mr. Dansky, GPNE’s dam-
ages expert), J.A. 28805 (Mr. Casanova, Apple’s Senior
Director of Product Marketing), J.A. 28861–900 (Dr.
Wilson, Apple’s infringement expert), J.A. 29079–80 (Mr.
Rysavy, Apple’s invalidity expert). Apple also contrasted
the accused iPhones and iPads to characteristics of 1990s-
era pagers during opening and closing arguments. See,
e.g., J.A. 6705–10, 29488. GPNE did not object to these
questions or arguments. GPNE did, however, present
rebuttal testimony from its expert, see, e.g., J.A. 27970
(Dr. Dinan warning that Apple is “going to point you to
the same little Motorola beeper that I used to carry on my
belt” but that this is “not how we analyze patents”), and
rebuttal argument, see, e.g., J.A. 6676–78; Transcript of
Jury Trial at 1696–99, GPNE Corp. v. Apple Inc., No.
3:12-cv-02885-LHK (N.D. Cal. Jan. 22, 2015), ECF No.
590. It also cross-examined Apple’s expert, Dr. Wilson, on
this point. See, e.g., J.A. 28965.
During the second week of trial, GPNE requested an
instruction on “pager,” which read:
As to [“pager” or “paging system that operates in-
dependently from a telephone network”], you
should apply their plain and ordinary meaning to
a person of skill in the art after reading the entire
patent and file history. The court’s construction
does not prohibit a “node” from being both a pager
and a telephone. A pager could transmit certain
communications on a paging system that operates
independently from a telephone network while
engaging in other types of communication on the
telephone network.
6 GPNE CORP. v. APPLE INC.

J.A. 7128. The court denied this request and instructed
the jury to apply plain and ordinary meaning for terms
not otherwise construed. J.A. 26689.
On October 22, 2014, the jury issued a verdict finding
that the ’492 and ’954 patents were not invalid, but not
infringed. GPNE moved for JMOL, or, in the alternative,
a new trial. The court denied these motions.
GPNE now appeals the denial of its post-trial mo-
tions. This court has jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
On appeal, GPNE argues that the district court’s non-
infringement judgment should be reversed because (1) it
is based on an erroneous construction of “node;” and
(2) the court violated O2 Micro International Ltd. v.
Beyond Innovation Technology Co., 521 F.3d 1351, 1362
(Fed. Cir. 2008), by allowing the jury to decide the mean-
ing of “pager.” Apple responds that the district court
handled these issues correctly and also offers several
alternative grounds to affirm the district court’s non-
infringement judgment.
I
We review a district court’s claim construction under
the standard set forth in Teva Pharmaceuticals USA, Inc.
v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
The district court construed “node” as “pager with
two-way data communications capability that transmits
wireless data communications on a paging system that
operates independently from a telephone network.” J.A.
74–75. GPNE takes issue with two aspects of this con-
struction: “pager” and “operates independently of a tele-
phone network.”
GPNE CORP. v. APPLE INC. 7

A
We begin with “pager.” GPNE argues that the district
court erred in classifying a “node” as a “pager” because
nothing in the claims requires that a “node” must be a
“pager.” GPNE concedes that the specification consistent-
ly refers to “nodes” as “pagers”, but emphasizes that the
specification also contains evidence that “node” should be
construed more broadly. As examples, GPNE points to
how the specification describes “nodes” as devices that
operate on a sophisticated data network and contain
complex features like image displays and a writing pad.
GPNE also argues that claim differentiation counsels
against construing a “node” as a “pager” because the
parent patent to the ’492 and ’954 patents, U.S. Patent
No. 5,542,115 (“’115 patent”), specifically uses the terms
“paging system” and “paging unit” in its claims.
The words of a claim are generally given their ordi-
nary and customary meaning, which is the meaning that
the term would have to a person of ordinary skill in the
art at the time of the invention. Phillips v. AWH Corp.,
415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Im-
portantly, the person of ordinary skill in the art is deemed
to read the claim term not only in the context of the
particular claim in which the disputed term appears, but
in the context of the entire patent, including the specifica-
tion.” Id. at 1313. Accordingly, “the only meaning that
matters in claim construction is the meaning in the
context of the patent.” Trs. of Columbia Univ. v. Syman-
tec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016).
We have recognized that when a patent “repeatedly
and consistently” characterizes a claim term in a particu-
lar way, it is proper to construe the claim term in accord-
ance with that characterization. See, e.g., VirnetX, Inc. v.
Cisco Sys., Inc., 767 F.3d 1308, 1318 (Fed. Cir. 2014); ICU
Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374–
75 (Fed. Cir. 2009). Here, the words “pager” and “pager
8 GPNE CORP. v. APPLE INC.

units” appear in the specification over 200 times, and,
apart from the Abstract, the specification repeatedly and
exclusively uses these words to refer to the devices in the
patented system. Although GPNE is correct that the
specification discloses information about the features the
devices have and the network they operate on, none of
this is inconsistent with characterizing the devices as a
type of pager. The prosecution history also supports
construing “node” as a type of “pager” because the inven-
tor’s Rule 131 declaration consistently and exclusively
describes the invention as a system of pagers. J.A. 657–
83. In light of this consistent disclosure, the district court
did not err in characterizing a “node” as a “pager.”
GPNE’s claim differentiation argument does not alter
this conclusion. Claim differentiation is “not a hard and
fast rule,” but rather a presumption that will be overcome
when the specification or prosecution history dictates a
contrary construction. Seachange Int’l, Inc. v. C-COR,
Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005). Because the
specification and the prosecution history so consistently
describe “nodes” as “pagers,” such is the case here. In
addition, the claims that GPNE contrasts differ in more
ways than just their use of “node” or “pager,” so the
inference that “different words or phrases used in sepa-
rate claims . . . indicate that the claims have different
meanings and scope,” id. at 1368, is weak at best. Accord-
ingly, we agree with the district court that “node” is
properly characterized as a “pager.”
B
Turning to “operates independently of a telephone
network,” GPNE argues that this limitation is improper
because it is based on what it contends is a “single sum-
mation sentence” from the specification. Appellant’s Br.
30. This sentence reads: “Thus, the invention provides a
two-way paging system which operates independently
from a telephone system for wireless data communication
GPNE CORP. v. APPLE INC. 9

between users.” ’492 patent col. 14 ll. 14–16 (emphasis
added).
We agree with GPNE that the phrase “operates inde-
pendently from the telephone system” appears in only one
sentence of the Detailed Description section, but disagree
that it was improper for the district court to limit the
claims in this way. “When a patent . . . describes the
features of the ‘present invention’ as a whole, this descrip-
tion limits the scope of the invention,” Verizon Servs.
Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308
(Fed. Cir. 2007). As GPNE recognizes, this is a summa-
tion sentence which describes “the invention” as a whole.
This characterization is bolstered by the prosecution
history, as the inventor’s Rule 131 declaration several
times states that the invention operates independently of
a telephone network. J.A. 657, 666. Accordingly, it was
proper for the district court to conclude that a “node”
should have the capability to “operate[] independently
from a telephone network.”
II
GPNE argues that even if we agree with the district
court’s construction, the district court nonetheless com-
mitted reversible error because it failed to provide a
construction for “pager,” which left an issue of claim
construction for the jury. See O2 Micro, 521 F.3d at 1362
(“When the parties present a fundamental dispute regard-
ing the scope of a claim term, it is the court’s duty to
construe it.”).
The potential for “pager” to create difficulties for the
jury is something that both parties and the district court
had been aware of from the outset of claim construction.
GPNE raised the concern in both its Markman briefing
and at the Markman hearing that using the word “pager”
would lead to fights about what “pager” meant. See J.A.
510, 1568. However, after the district court issued its
Markman order, GPNE did not make a formal request for
10 GPNE CORP. v. APPLE INC.

clarification until the second week at trial, when it re-
quested a jury instruction on “pager.” J.A. 7128.
On appeal, Apple argues that GPNE waived its ability
to raise an O2 Micro challenge because it never requested
a construction for “pager” and the concerns it expressed at
Markman were insufficient to put this issue in dispute.
We disagree. In general, “litigants waive their right
to present new claim construction disputes if they are
raised for the first time after trial.” Lazare Kaplan Int’l,
Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed.
Cir. 2010) (internal quotation marks omitted); Broadcom
Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed. Cir.
2008) (finding waiver where parties did not propose that a
term be construed at Markman and plaintiff argued for a
construction in its post-trial motions). As just noted, that
is not what happened here. And when GPNE sought a
clarifying instruction on “node” before the case went to
the jury, it was hardly reversing course on a point it had
“implicitly conceded” earlier. Eli Lilly & Co. v. Aradigm
Corp., 376 F.3d 1352, 1360 (Fed. Cir. 2004) (finding
implicit concession on need for construction by failure to
seek any construction before evidence closed). To the
contrary, at Markman, the parties disputed the construc-
tion of “node,” including whether “pager” would be an
appropriate word to help define the scope of “node.” The
parties presented opposing views on this point: GPNE
argued that the parties would “get into the definition of,
what is a pager?,” while Apple responded that the parties
were not “setting up a situation where we construe the
construction.” J.A. 1568, 1571. The district court was
aware of this dispute, as it itself pressed Apple on this
point. J.A. 1569–70. In these circumstances, we find no
waiver by GPNE of the objections it raised to the con-
struction of “node” before the case went to the jury.
Finding no waiver, we turn to the merits of GPNE’s
O2 Micro challenge. GPNE argues that Apple devoted a
GPNE CORP. v. APPLE INC. 11

substantial amount of time at trial to comparing the
accused iPhones and iPads to 1990s-era legacy pagers,
effectively “using [legacy pagers] to define the terms
‘pager’ and ‘paging systems.’” Appellant’s Br. 42. Accord-
ing to GPNE, because the district court allowed these
arguments, the jury was left to determine the meaning of
“pager,” which violated O2 Micro.
We disagree. In O2 Micro, we held that “[w]hen the
parties present a fundamental dispute regarding the
scope of a claim term, it is the court’s duty to resolve it.”
521 F.3d at 1362. This is because “the ultimate question
of construction [is] a legal question,” which “is for the
judge and not the jury.” Teva Pharm. USA, Inc., 135 S.
Ct. at 838, 842. This duty, however, is not without limit.
Where a district court has resolved the questions about
claim scope that were raised by the parties, it is under no
obligation to address other potential ambiguities that
have no bearing on the operative scope of the claim. Eon
Corp. IP Holdings v. Silver Spring Networks, 815 F.3d
1314, 1318 (Fed. Cir. 2016) (“[A] court need not attempt
the impossible task of resolving all questions of meaning
with absolute, univocal finality.”); see also Function
Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1326 (Fed.
Cir. 2013) (“Nearly every patent case will involve some
amount of ‘word games,’ because claims and claim con-
structions are, after all, just words.”); Acumed LLC v.
Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007) (“[A]
sound claim construction need not always purge every
shred of ambiguity.”); Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
those terms need be construed that are in controversy,
and only to the extent necessary to resolve the controver-
sy.”). This is because “[s]uch an endeavor could proceed
ad infinitum, as every word—whether a claim term itself,
or the words a court uses to construe a claim term—is
susceptible to further definition, elucidation, and explana-
tion.” Eon Corp. IP Holdings, 815 F.3d at 1318.
12 GPNE CORP. v. APPLE INC.

Here, the district court’s construction was sufficient to
resolve the parties’ dispute over the scope of “node.” Its
construction specifies that “node” is not simply any “pag-
er,” but one that must be capable of “two-way communica-
tions,” “transmit[ting] wireless data communications on a
paging system,” and functioning on a “paging system that
operates independently from a telephone network.” J.A.
74–75. These requirements were sufficient to clarify that
the type of “pager” a “node” must be is not a 1990s-era
legacy pager, which is the post-hoc O2 Micro challenge
that GPNE raises here.
At bottom, then, GPNE’s complaint rests not with the
district court’s failure to define claim scope, but with its
allowing Apple to make certain arguments to the jury.
The focus of GPNE’s argument is that Apple allegedly
devoted a substantial amount of time at trial to compar-
ing the accused iPhones and iPads to 1990s-era legacy
pagers. Accurately characterized, this is an argument
about whether Apple’s arguments to the jury were im-
proper by “offering the jury appealingly simplifying ways
to determine . . . infringement thus inviting the jury to
shirk its key factfinding function.” Verizon Servs. Corp. v.
Cox Fibernet Va., Inc., 602 F.3d 1325, 1334 (Fed. Cir.
2010) (internal quotation marks omitted).
For this issue, we turn to the law of the regional cir-
cuit. See id. In the Ninth Circuit, “[a] federal judge has
broad discretion in supervising a trial, and his or her
behavior during trial justifies reversal only if it abuses
that discretion.” United States v. Laurins, 857 F.2d 529,
537 (9th Cir. 1988). This discretion extends to the super-
vision of attorney arguments; the Ninth Circuit “will not
reverse a judgment because of statements made in the
arguments of counsel unless they were so prejudicial that
a failure to declare a mistrial was an abuse of discretion.”
Guam v. Ignacio, 852 F.2d 459, 462 (9th Cir. 1988).
GPNE CORP. v. APPLE INC. 13

On the record before us, we conclude that the district
court did not abuse its discretion when it found that
Apple’s arguments did not require a new trial. Whether
Apple’s accused iPhones and iPads could be “pagers” was
extensively debated at trial. GPNE had ample opportuni-
ties to present rebuttal testimony and argument that the
iPhones and iPads were “pagers,” and it took advantage of
these opportunities on a number of occasions. For exam-
ple, GPNE had its expert, Dr. Dinan, warn the jury dur-
ing his direct examination that Apple is “going to point
you to the same little Motorola beeper that I used to carry
on my belt” and explain that this was a red herring be-
cause this is “not how we analyze patents.” J.A. 27970.
GPNE also cross-examined Apple’s expert, Dr. Wilson, on
this point, see, e.g., J.A. 28965, and addressed whether
iPhones and iPads could be “pagers” in both its opening
statement and closing argument. See, e.g., J.A. 6676–78;
Transcript of Jury Trial at 1696–99, GPNE Corp. v. Apple
Inc., No. 3:12-cv-02885-LHK (N.D. Cal. Jan. 22, 2015),
ECF No. 590. Given this counter-balancing testimony
and argument, it was within the district court’s discretion
to conclude that the jury was not misguided in carrying
out its role as infringement factfinder and that a new trial
was not warranted.
One final aspect of the district court’s conduct at trial
which GPNE’s arguments call into question is its refusal
to issue a clarifying instruction on “pager.” As discussed
above, in the second week of trial, GPNE requested that
the jury be instructed:
As to [“pager” or “paging system that operates in-
dependently from a telephone network”], you
should apply their plain and ordinary meaning to
a person of skill in the art after reading the entire
patent and file history. The court’s construction
does not prohibit a “node” from being both a pager
and a telephone. A pager could transmit certain
communications on a paging system that operates
14 GPNE CORP. v. APPLE INC.

independently from a telephone network while
engaging in other types of communication on the
telephone network.
J.A. 7128. The district court did not abuse its discretion
in refusing to give this instruction. The plain words of the
district court’s construction direct that “operat[ing] inde-
pendently from a telephone network” is a “capability.”
GPNE’s proposed instruction merely restates this point,
although in more words and with language that directly
draws from non-infringement arguments made at trial.
In light of this, the district court was entitled to conclude
that its given construction sufficiently clarified this point
and no further explanation was needed.
In sum, none of the arguments that GPNE raises with
respect to claim scope compel us to remand for a new
trial. The district court correctly construed the terms and
instructed the jury to apply its constructions. It also
sufficiently resolved questions regarding the scope of
“node” such that no O2 Micro problems are present here.
We also discern no abuse of discretion in the district
court’s rejection of GPNE’s proposed jury instruction or
refusal to grant a new trial on the basis of Apple’s pager-
based arguments; thus, the district court properly rejected
GPNE’s request for a new trial on these grounds.
III
GPNE does not appear to articulate an infringement
position under the district court’s construction of “node.” 1

1 In particular, GPNE has not developed any argu-
ment for why the following evidence fails to support the
jury’s non-infringement verdict. All of the accused devices
operate on either the GPRS or LTE networks. At trial,
GPNE’s expert conceded that both of these networks
become inoperable without GSM resources, J.A. 28417,
and that the GSM system is a “telephone network.” J.A.
GPNE CORP. v. APPLE INC. 15

Accordingly, because we affirm the district court’s con-
struction and find no basis under which GPNE is entitled
to a new trial, we affirm the district court’s judgment of
non-infringement. We need not reach Apple’s alternative
grounds for affirmance, and provide no opinion on these
issues.
AFFIRMED

28413. Apple’s expert testified to the same. See J.A.
28901–03, 28906. Linking these statements together
yields the conclusion that the accused devices do not
“operate independently of a telephone network.”