GOLDEN BRIDGE TECHNOLOGY, )
INC., )
)
Plaintiff, )
)
v. ) Civ. No. 1 0-428-SLR
)
APPLE INC., et al., )
)
Defendants.
BACKGROUND
A. The Patents-In-Suit and Disputed Limitations
The patents-in-suit are assigned to GBT and list the same two inventors -
Emmanuel Kanterakis and Kourosh Parsa. The '267 patent, titled "RACH Ramp-Up
Acknowledgement," originally issued on June 3, 2003 with twenty-nine claims ("the
original '267 patent"). Following ex parte reexamination, the United States Patent and
Trademark Office ("PTO") issued a reexamination certificate on December 15, 2009,
confirming the patentability of claims 1-12 and 27-29; cancelling claims 13-26; and
adding new claims 30-60. The '427 patent, also titled "RACH Ramp-Up
Acknowledgement," is a continuation of the '267 patent and issued on April 15, 2008.
Both patents-in-suit relate generally to wireless cellular networks and teach a
method for establishing a communication link between a mobile station, such as a
cellular telephone, and a base station. Rather than devoting a communication channel
to each mobile station, the system contemplates a channel that allows multiple signals
to be sent over the same channel and provides each remote station with random
access to the channel ("RACH"). ('267 patent, col. 1:19-23, 1:27-32, 1 :55-59) To
establish a communication link with a base station, a mobile station must transmit a
preamble at a power level high enough to be detected by the base station. However, if
the power is too high, it can cause interference to other mobile stations sharing the
same communication channel.
The invention teaches a "ramp-up" process to reduce the risk of interference by
ensuring the lowest detectable power level is used while providing fast communication
links. A mobile station seeking to establish a connection with a base station will
transmit preambles at increasing power levels until the signal is detected by a base
station. Once a base station detects a preamble, it sends the mobile station an
acknowledgment, after which the mobile station begins transmission of data or voice
communications.
The parties agree that the patents-in-suit share the same relevant written
description and figures and that the claim limitations have the same meaning
throughout the patents-in-suit.6 (See D. I. 193/279; D.l. 208/284 at 4; D.l. 210/286 at 2
n.1) Although the parties' joint claim construction chart identifies a number of disputed
claim limitations (see D. I. 193/279), the parties have narrowed down the claim
construction exercise, for purposes of summary judgment of the claims against Apple,
to two disputed claim limitations: (1) "access preamble"/"preamble;" and (2) "discrete
power level." "Access preamble" or "preamble" appears in claims 27-29, and 42-60 of
the '267 patent and every claim, 1-38, of the '427 patent; "discrete power level" appears
in claims 27-29,42-44,49-52, and 57-60 of the '267 patent and claims 3, 9-12, 14-30,
and 32-35 of the '427 patent.
B. Prior Litigation Over the '267 Patent
In 2005, GBT filed suit ("the Texas litigation") in the United States District Court
for the Eastern District of Texas ("the Texas court") alleging infringement of the original
'267 patent against Nokia, Inc. ("Nokia") and Lucent Technologies, Inc. ("Lucent")
6For convenience, the court will cite to the '267 specification.
(collectively, "the Texas defendants").7 The Texas court issued its claim construction
order on June 20, 2006, noting several limitations for which the parties had reached
agreement and construing four remaining disputed limitations. (D. I. 229/292, ex. 23)
As relevant to the instant cases, the parties to the Texas litigation agreed that
"preamble" means "a signal used for communication with the base station that is spread
before transmission." However, they disputed the construction of "access preamble."
GBT proposed the construction "a preamble selected for transmission from a set of
predefined preambles," while the Texas defendants argued that an "access preamble"
is "an unspread preamble." (See id. at JA 1905) In its claim construction order, the
Texas court found that "the surrounding claim language indicates that the patentee has
used 'access preamble' and 'preamble' interchangeably." (See id.) It reasoned:
Claim 27 provides for "spreading an access preamble selected from a set
of predefined preambles; transmitting from the MS transmitter the spread
access preamble." Thus, the "access preamble" is spread before it is
transmitted, which is consistent with the notion that a "preamble" is
"spread before transmission" as the agreed construction provides."
(/d.) (citation omitted) (footnote omitted) The Texas court rejected the Texas
defendants' proposed construction, finding that it rested on the unsupported
assumption that, before a preamble is "spread," it is necessarily "un-spread." Rather,
the Texas court found that the claim language and specification "emphasize that the
preamble is spread before transmission, but do not explicitly differentiate between
'spread' and 'un-spread' signals." (/d. at JA-1906)
7GBT
On January 29, 2007, the Texas court found the asserted claims of the original
'267 patent to be invalid as anticipated under 35 U.S.C. ยง 102(b) by two prior art
publications: (1) the Mobile Station-Base Station Compatibility Standard for Dual-Mode
Wideband Spectrum Cellular System IS-95A ("the IS-95A Standard"); and (2) Nokia
Telecommunication's Patent Cooperative Treaty publication No. W09746041 by
Hakkinen, et al. Golden Bridge Tech., Inc. v. Nokia, Inc., Civ. No. 2:05cv151, 2007 WL
294176, at *4 n.1 (E.D. Tex. Jan. 29, 2007). The Federal Circuit affirmed the invalidity
decision on May 21, 2008, on grounds that GBT's sole challenge was barred for being
raised, without justification, for the first time on appeal. Golden Bridge Tech., Inc. v.
Nokia, Inc., 527 F.3d 1318, 1324 (Fed. Cir. 2008). The Federal Circuit did not consider
or address claim construction.
Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303,
1330 (Fed. Cir. 2005) (en bane). Claim construction focuses on intrinsic evidence- the
claims, specification and prosecution history- because intrinsic evidence is "the most
significant source of the legally operative meaning of disputed claim language."
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v.
West":"iew Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S.
370 (1996). Claims must be interpreted from the perspective of one of ordinary skill in
the relevant art at the time of the invention. Phillips, 415 F.3d at 1313.
Collateral estoppel
The court first examines, as a threshold matter, what effect the Texas litigation
should have on claim construction in the instant cases. Defendants argue that,
because the original '267 patent was asserted in the Texas litigation and the Texas
court construed "access preamble," GBT is estopped from relitigating its meaning in this
court. Regional circuit law applies to the determination of whether collateral estoppel
applies. See Applied Med. Res. Corp. v. U.S. Surgical Corp., 435 F.3d 1356, 1359-60
(Fed. Cir. 2008). In the Third Circuit, collateral estoppel requires: (1) the "identical"
issue (2) was "actually litigated," (3) was "necessary to the decision," and (4) the party
"was fully represented in the prior action." See Howard Hess Dental Labs. Inc. v.
Dentsply Intern. Inc., 602 F.3d 237, 247 (3d Cir. 2010); see also Biovail Labs. tnt'/ SRL
v. lntelgenx Corp., Civ. No. 09-605, 2010 WL 5625746, at *4 (D. Del. Dec. 27, 2010).
Here, GBT, with representation, litigated the construction of "access preamble" in the
~he parties agree that "spreading" a preamble means increasing the bandwidth
of the preamble. (D.I. 193/279)
Texas court, and construction of the limitation was necessary to the invalidity decision.
GBT's only argument against collateral estoppel is that the issue is not identical
because "the '427 patent is a different patent, the reexamined '267 patent has different
claims from those asserted in the Texas litigation, and the reexamined '267 patent has
additional prosecution history that is necessarily relevant to claim construction." (D.I.
208/284 at 19; D.l. 212/288 at 1-3)
The court agrees with GBT that collateral estoppel is not applicable because the
issue decided by the Texas court is not identical to that being litigated in the instant
cases. The '427 patent and the reexamined '267 patent were issued on April 15, 2008
and December 25, 2009, respectively, after the conclusion of the Texas litigation
(including the appeal). Neither prosecution history file was of record during that case.
That additional prosecution history, before the court in the instant cases, does not
necessarily mean that the scope of any disputed limitations changed. However, the
court cannot simply ignore new prosecution history that was not of record in the Texas
litigation. See Power Integrations, Inc. v. Fairchild Semiconductor lnt'l, Inc., Civ. No.
08-309, 2009 WL 4928029, at *16-17 & n.1 (D. Del. Dec. 19, 2009) (citing Hawksbi/1
Sea Turtle v. FEMA, 126 F.3d 461, 477 (3d Cir. 1977)) (finding that collateral estoppel
does not apply where subsequent "reexamination history needs to be considered in
connection with construing the claims"). Therefore, collateral estoppel does not apply,
and the court is not bound by the Texas court's construction of "access preamble" or
the stipulated construction of "preamble" from the Texas litigation.
