Unwired Planet, LLC v. Apple Inc. , 829 F.3d 1353 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
UNWIRED PLANET, LLC,
Plaintiff-Appellant
v.
APPLE INC.,
Defendant-Appellee
______________________
2015-1725
______________________
Appeal from the United States District Court for the
Northern District of California in No. 3:13-cv-04134-VC,
Judge Vince Chhabria.
______________________
Decided: July 22, 2016
______________________
JOHN BRUCE CAMPBELL, McKool Smith, PC, Austin,
TX, argued for plaintiff-appellant. Also represented by
KEVIN LEE BURGESS, KATHY HSINJUNG LI, JOEL LANCE
THOLLANDER; THEODORE STEVENSON, III, DOUGLAS AARON
CAWLEY, Dallas, TX.
MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP,
Washington, DC, argued for defendant-appellee. Also
represented by BRIAN BUROKER; ALEXANDER N. HARRIS,
San Francisco, CA; YU-CHIEH ERNEST HSIN, HERVEY
MARK LYON, STUART ROSENBERG, Palo Alto, CA; BROOKE
MYERS WALLACE, Los Angeles, CA.
2 UNWIRED PLANET, LLC v. APPLE INC.
______________________
Before MOORE, BRYSON, and REYNA, Circuit Judges.
MOORE, Circuit Judge.
Unwired Planet, LLC (“Unwired”) appeals the United
States District Court for the Northern District of Califor-
nia’s summary judgment of non-infringement on U.S.
Patent Nos. 6,532,446; 6,647,260; 6,317,831; and
6,321,092 in favor of Apple Inc. (“Apple”). We affirm-in-
part, vacate-in-part, and remand.
I. BACKGROUND
Unwired brought a patent infringement suit against
Apple on ten patents in the United States District Court
for the District of Nevada in September 2012. A year
later, the case was transferred to the Northern District of
California. After the transfer, Unwired dismissed without
prejudice five of the ten patents it previously asserted.
The district court construed ten claim terms from the
remaining five patents, and the parties stipulated to non-
infringement as to the asserted claims of one patent.
The district court granted summary judgment of non-
infringement with respect to the ’446, ’260, and ’831
patents. As to the ’092 patent, the district court granted
summary judgment of no indirect infringement, and
Unwired subsequently agreed to dismiss its claim for
direct infringement of the ’092 patent with prejudice. On
May 29, 2015, the district court entered its final judgment
in favor of Apple. Unwired timely appeals, arguing that
the district court erred in (i) its construction of claim
terms from the ’446 and ’260 patents, (ii) granting sum-
mary judgment of non-infringement after resolving factu-
al disputes against Unwired as to the ’446, ’260, and ’831
patents, and (iii) granting summary judgment of no
indirect infringement as to the ’092 patent after applying
UNWIRED PLANET, LLC v. APPLE INC. 3
an incorrect legal standard. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
II. STANDARD OF REVIEW
If based upon the intrinsic record, we review claim
construction de novo. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 574 U.S. ____, 135 S. Ct. 831, 841–42 (2015). We
review summary judgment decisions under regional
circuit precedent, here, the Ninth Circuit. Lexion Med.,
LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1358 (Fed.
Cir. 2011). We review the district court’s grant of sum-
mary judgment in favor of Apple de novo. Greater Yellow-
stone Coal. v. Lewis, 628 F.3d 1143, 1148 (9th Cir. 2010).
Summary judgment is appropriate when, drawing all
justifiable inferences in the nonmovant’s favor, “the
movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a); Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 255 (1986).
III. U.S. PATENT NO. 6,532,446
1. Background
Unwired challenges the district court’s (i) construction
of the claim term “voice input” and (ii) grant of summary
judgment of non-infringement based on that term.
According to the ’446 patent, there had been efforts to
equip mobile devices with speech recognition technology,
which generally required adding costly software and
hardware resources (e.g., a faster processor, additional
memory) to the mobile devices. ’446 patent, col. 2 ll. 5–21.
The ’446 patent explains that such “modifications would
add considerable cost to the final price of the mobile
device, possibly pricing them out of the target price range
usually occupied by mass-market mobile devices.” Id.,
col. 2 ll. 26–29. The claimed invention relates to extend-
ing speech recognition capabilities to mobile devices with
limited resources by relying on network-based resources.
4 UNWIRED PLANET, LLC v. APPLE INC.
Id., col. 1 ll. 15–18. In the disclosed system, a mobile
device sends a user’s voice input to a remote speech
recognition server. The server translates the received
voice input into a data file that can be processed by the
mobile device, and then the data file is sent back to the
mobile device. Id., col. 2 ll. 46–63. Unwired accused
Apple’s Siri service of infringing claims 15 and 35. Ap-
ple’s Siri service allows a user to speak into an iOS device
(e.g., iPhone, iPad) using server-based speech recognition.
On appeal, the parties dispute the construction of the
claim term “voice input,” which is present in both of the
asserted claims. Claim 15 is a method claim that ulti-
mately depends on claim 1, which recites “retrieving a
voice input signal.” Claim 35 is an apparatus claim that
ultimately depends on claim 31, which similarly recites
computer program code for “receiving a voice input.” Both
claims further recite converting the “voice input [signal]
into a symbolic data file.” Before the district court, Un-
wired argued that the plain and ordinary meaning should
be given to the term, requiring no construction. Alterna-
tively, Unwired proposed “speech input” as a construction.
Apple proposed construing the term to mean “speech
provided over a voice channel.” The parties’ claim con-
struction dispute is whether the “voice input” should be
limited to a voice input transmitted over a particular type
of channel, a voice channel as opposed to a data channel.
In adopting Apple’s proposed construction, the district
court relied on the summary of the invention in the ’446
specification. The summary consists of five paragraphs,
the first of which is reproduced below:
The present invention relates to a wireless com-
munication system that utilizes a remote speech
recognition server system to translate voice input
received from mobile devices into a symbolic data
file (e.g. alpha-numeric or control characters) that
can be processed by the mobile devices. The
UNWIRED PLANET, LLC v. APPLE INC. 5
translation process begins by establishing a voice
communication channel between a mobile device
and the speech recognition server. A user of the
mobile device then begins speaking in a fashion
that may be detected by the speech recognition
server system. Upon detecting the user’s speech,
the speech recognition server system translates
the speech into a symbolic data file, which is then
sent to the user through a separate data commu-
nication channel. The user, upon receiving the
symbolic data file at the mobile device, reviews
and edits the content of the symbolic data file and
further utilizes the file as desired. For example a
user could use the symbolic data file to fill in
fields in an email or a browser request field.
’446 patent, col. 2 ll. 46–63. The district court noted that
the first sentence describing “[t]he present invention” is
immediately followed by a sentence describing the partic-
ular task of “establishing a voice communication channel”
as part of the voice recognition process. Unwired Planet,
LLC v. Apple Inc, No. 13-cv-04134-VC, 2014 WL 5592990,
at *11 (N.D. Cal. Nov. 3, 2014) (claim construction order).
The district court concluded that the sentence referring to
“establishing a voice communication channel” falls within
the scope of the “present invention” language, and thus
held that the sentence limits the scope of the claims. Id.
at *12. It noted that the ’446 patent consistently main-
tained the distinction between voice input sent to a server
over a voice channel and a data file sent back to the
mobile device over a data channel, and found this use of
two separate channels to be a core feature of the inven-
tion. Id.; Unwired Planet, LLC v. Apple Inc, 106 F. Supp.
3d 1083, 1090 (N.D. Cal. 2015) (summary judgment order).
Thus, the district court concluded that the voice input
limitation should be construed as requiring that the voice
input signal be conveyed over a voice channel.
6 UNWIRED PLANET, LLC v. APPLE INC.
Apple moved for summary judgment of non-
infringement based on the construction, arguing that Siri
transmits a user’s speech to the Siri servers using the
Transmission Control Protocol / Internet Protocol
(“TCP/IP”) and that TCP/IP is not a “voice channel.”
Thus, while Apple may convey a voice input signal, the
signal is not conveyed over a voice channel and therefore
Apple does not infringe. Unwired acknowledged that Siri
sends a user’s speech using TCP/IP, but argued that Siri
uses a voice channel because the user’s speech is sent to
the Siri servers for speech recognition in a manner nearly
indistinguishable from a Voice-over-IP (“VoIP”) call,
which persons of ordinary skill in the art recognized as
using a voice channel. In response to these arguments,
the district court further clarified its construction to
require “[a] voice channel must be an actual, identifiable
type of channel, not some ambiguous channel that can be
labeled a voice channel merely because it transports
voice.” Unwired Planet, 106 F. Supp. 3d at 1090–91. It
granted summary judgment of non-infringement after
concluding that no reasonable jury could find Siri trans-
mits voice input over a “voice channel.” Id. at 1092. It
explained that a voice channel must transmit voice with-
out delays, yet Siri transmits speech using TCP/IP, which
neither distinguishes between voice and non-voice data
nor includes any of the properties needed to ensure real-
time transmission. Id. at 1092–93. It pointed out that
(i) Siri records 200 milliseconds of voice input before
transmitting it to the Siri servers, (ii) there was no evi-
dence that Siri transmits packets including errors to
ensure real-time delivery, and (iii) the Siri channel does
not receive any priority from wireless carriers or any
dedicated network resources to ensure real-time trans-
mission. Id.
2. Discussion
Unwired has appealed the district court’s construction
of “voice input.” Claim terms are generally given their
UNWIRED PLANET, LLC v. APPLE INC. 7
ordinary and customary meaning as understood by a
person of ordinary skill in the art when read in the con-
text of the specification and prosecution history. Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012). We have recognized “only two exceptions
to this general rule: 1) when a patentee sets out a defini-
tion and acts as his own lexicographer, or 2) when the
patentee disavows the full scope of a claim term either in
the specification or during prosecution.” Id. at 1365
(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1580 (Fed. Cir. 1996)).
We conclude that the district court erred in its con-
struction of “voice input.” The claims require a voice
input, not a voice channel. By its plain language, the
term “voice input” does not dictate the manner in which
voice is to be transmitted from a mobile device to a server,
and Apple does not argue otherwise. It is undisputed that
a voice input signal could be transmitted over either a
voice channel or a data channel or, as Apple itself does,
over TCP/IP. Apple does not argue that the patentee
acted as his own lexicographer and defined “voice input”
different from its plain and ordinary meaning. Thus, the
district court’s construction, adopted at Apple’s urging,
can be justified if there exists a clear and unmistakable
disclaimer in the specification or the prosecution history.
Thorner, 669 F.3d at 1367. We see no such disclaimer in
the specification.
We do not agree that the second sentence in the
summary of the invention constitutes a disclaimer that
limits the scope of every claim. A disclaimer or disavowal
of claim scope must be clear and unmistakable, requiring
“words or expressions of manifest exclusion or restriction”
in the intrinsic record. Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002). We have held
statements such as “the present invention includes . . . ,”
“the present invention is . . . ,” and “all embodiments of
the present invention are . . .” to be clear and unmistaka-
8 UNWIRED PLANET, LLC v. APPLE INC.
ble statements constituting disavowal or disclaimer. See
Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d
1343, 1353 (Fed. Cir. 2016). The summary of the inven-
tion section begins with a sentence stating that “[t]he
present invention relates to a wireless communication
system” using a remote speech recognition server. ’446
patent, col. 2 ll. 46–50. As a preliminary matter, this first
sentence does not even mention a voice communication
channel. It is true, as Apple argues, that the specification
discusses voice channels in many places. But it is certain-
ly not the case that everything in that first paragraph in
the summary of the invention constitutes a mandatory
claim limitation to be read into claims. For example, that
same paragraph describes a user receiving, using, and
editing the data file. Id., col. 2 ll. 58–61. It is not true
that because one sentence in the paragraph begins with
the “present invention” language that everything that
follows in the same paragraph limits all subsequent
claims. This should not be interpreted as any sort of hard
rule regarding claim construction. Every claim construc-
tion, and each potential disclaimer, has to be considered
in the context of each individual patent. We do not read
this specification as clearly and unmistakably requiring
that voice signals be transmitted exclusively over voice
channels. And we will thus not import any such limita-
tion into the claims at issue. In this context, we do not
think the sentences describing the translation process rise
to the level of “manifest exclusion or restriction” of the
claim scope.
Moreover, the patent contains other claims, for exam-
ple claim 21, that specifically recite “establishing a voice
communication channel,” a limitation not present in the
asserted claims. If the patentee intended to restrict the
claims-at-issue to require a voice input to travel over a
particular type of channel, it could have included that
same limitation. Claim 31, from which asserted claim 35
ultimately depends, recites “receiving a voice input”
UNWIRED PLANET, LLC v. APPLE INC. 9
without specifying any path on which the voice input
travels—a voice channel or otherwise. And claim 1, from
which asserted claim 15 ultimately depends, specifies
“retrieving a voice input signal . . . from a first communi-
cation path” without requiring that path to be a voice
channel. We see no clear disavowal in the specification to
justify importing a “voice channel” limitation into every
claim given these differences between the claims.
To justify the district court’s construction, Apple ar-
gues that the only embodiments disclosed in the ’446
patent use a voice channel. However, we have repeatedly
held that it is “not enough that the only embodiments, or
all of the embodiments, contain a particular limitation” to
limit claims beyond their plain meaning. Thorner, 669
F.3d at 1366; GE Lighting Sols., LLC v. AgiLight, Inc.,
750 F.3d 1304, 1309 (Fed. Cir. 2014). Apple also attempts
to justify the district court’s construction by arguing that
the claims would be invalid as anticipated if the “voice
input” were construed to have its plain meaning. We
decline to address whether the asserted claims are antici-
pated because that issue is not before us and was not fully
briefed. See generally Radio Sys. Corp. v. Lalor, 709 F.3d
1124, 1132 (Fed. Cir. 2013) (“[I]nvalidity cannot be an
alternative ground for affirming a judgment of nonin-
fringement absent a cross-appeal.”).
3. Conclusion
We construe the claim term “voice input” to have its
plain meaning, which does not require the use of any
particular type of channel for its transmission. We vacate
the district court’s summary judgment of non-
infringement as to the ’446 patent because it was based
on the district court’s erroneous construction of “voice
input.”
10 UNWIRED PLANET, LLC v. APPLE INC.
IV. U.S. PATENT NO. 6,647,260
1. Background
Unwired challenges the district court’s (i) grant of
summary judgment of non-infringement based on the
“user information” limitation, and (ii) construction of the
claim term “provisioning” to mean “enabling or modifying
communication capabilities.”
The ’260 patent discloses an invention for providing
new or updated features and services to a mobile phone
through a process referred to as “provisioning.” It ex-
plains that “a number of parameters must be provisioned
into [a mobile device] in order to enable communication
services and applications and in order to distinguish the
device from others within the communications network.”
’260 patent, col. 1 ll. 33–37. The patent provides a solu-
tion that allows users to provision a mobile device them-
selves in a secure manner, without the need to visit a
physical store.
Unwired accused Apple of infringing claims 1 and its
dependent claim 16, which are reproduced below:
1. A method for provisioning a two-way mobile
communications device having a display and a us-
er interface, the method being performed by the
two-way mobile communications device and com-
prising:
receiving user information required to es-
tablish a user account;
displaying a list of selectable identifiers on
the display, each selectable identifier cor-
responding to a selectable service or fea-
ture for which the two-way mobile
communications device can be provisioned;
receiving a user’s selection of a selectable
identifier from the list;
UNWIRED PLANET, LLC v. APPLE INC. 11
generating a provisioning request compris-
ing the user information and the user’s se-
lection;
establishing a communications link with a
provisioning server;
providing authentication information to
enable a remote server to authenticate the
two-way mobile communications device;
sending the provisioning request to the
provisioning server over the communica-
tions link;
receiving a reply to the provisioning re-
quest; and
provisioning the two-way mobile commu-
nications device with a feature or service
based on the reply.
16. The method of claim 1, wherein receiving the
reply comprises receiving a notification relating to
a state of processing of the provisioning request.
Id., col. 9 ll. 15–39; col. 10 ll. 19–21 (emphases added).
The accused Apple services are Apple’s App Store and
iTunes Store. The App Store allows an iOS device user to
purchase and download applications for the device.
According to Unwired, the iTunes Store allows an iOS
device user to purchase and download music, movies, and
TV shows to the device, and both the App Store and the
iTunes Store process a user’s download requests similarly
using an iTunes account.
In order to purchase an app from Apple’s App Store or
a song from Apple’s iTunes Store, a user must first have
an iTunes account. To establish an iTunes account, a
user must select a password, which, according to Un-
12 UNWIRED PLANET, LLC v. APPLE INC.
wired, satisfies the claimed “user information required to
establish a user account” limitation.
When an iOS device user with an iTunes account
wants to purchase an app or a song, the user first enters
his Apple ID and password to the iOS device, which sends
them to Apple’s servers. Second, Apple’s servers respond
with an “X-token,” which contains a hashed version of the
user’s password and a timestamp generated by the serv-
ers. Third, the iOS device sends a “buyProduct request,”
which includes the X-token and the user’s selection of
content. Because an X-token is valid for 15 minutes, if a
user wishes to purchase another app or song in the next
15 minutes, the iOS device simply sends a buyProduct
request, bypassing the first two steps, namely, the user
entering his password and Apple’s servers responding
with an X-token.
Before the district court, Unwired argued that the
buyProduct request satisfies the “provisioning request
comprising the user information and the user’s selection”
limitation. Specifically, Unwired argued that the hashed
version of a user’s password in the X-token, which is
included in the buyProduct request, corresponds to the
claimed “user information,” and the user’s selection of
content (e.g., a song, an app) in the buyProduct request
corresponds to the claimed “user’s selection.” The district
court disagreed, noting that claim 1 requires “the user
information” in the provisioning request to be the same
“user information required to establish a user account,”
recited earlier in the claim. The district court held that a
hash of the password in the buyProduct request (as part
of the X-token) cannot be “the user information” recited in
the claim, because a hashed password is different from
the password itself, which corresponds to the claimed
“user information required to establish a user account,”
recited earlier.
UNWIRED PLANET, LLC v. APPLE INC. 13
2. Discussion
Unwired argues that a hashed password is merely a
mathematical function applied to the user’s password. It
argues the district court improperly resolved on summary
judgment whether merely hashing the user information
along with a time stamp transforms it into something
non-infringing. It argues the district court erred in re-
solving this fact issue because the X-token contains the
same substantive content, only in a different (i.e., hashed)
format.
We agree with Unwired that the district court erred
in granting summary judgment of non-infringement. The
district court correctly noted that “the user information”
in claim 1 refers to the same “user information” recited
earlier in the claim as part of the “receiving user infor-
mation required to establish a user account” step. How-
ever, in granting summary judgment of non-infringement,
the district court essentially required the claimed “user
information” to be in a particular format. We do not agree
with such a reading of the term. While “user information”
refers to some information, knowledge, or data on a user,
the plain meaning of the term does not require that
information to be in any specific format or form. For
example, the English word “apple” and the Russian word
for “apple” contain the same information to the extent
that they both refer to the round fruit of a tree of the rose
family, despite their differences in form. We think a
reasonable jury could find that a hashed password in the
X-token contains the same information as in the user’s
unmodified password, albeit in a different form.
Apple argues the hashed password cannot contain the
same substantive content as the password because Un-
wired’s expert admitted that it is impossible to determine
from the hashed password what the password is. It
argues the hashed password is not simply the password in
a different form, citing its expert’s report for support. J.A.
14 UNWIRED PLANET, LLC v. APPLE INC.
10251 (“[A] hash is designed so that the original input
into the hash function cannot be derived from the hash
value, and thus can be used for validation only.”).
We are not convinced by Apple’s argument. We do not
think the non-reversibility of a hash function—i.e., that a
hashed password cannot be decrypted into the password—
is determinative of the relevant inquiry. Whether the
hashed password in Apple’s X-token contains the same
“user information” as in a user’s password is a fact ques-
tion properly left to the jury. See Acumed LLC v. Stryker
Corp., 483 F.3d 800, 806 (Fed. Cir. 2007). The claims do
not dictate a particular form in which “user information”
exists, and we decline to adopt interchangeability or
reversibility as the essential characteristic in determining
whether multiple forms of expression have the same
underlying information.
3. Conclusion
We vacate the district court’s summary judgment of
non-infringement as to claims 1 and 16 of the ’260 pa-
tent. 1
V. U.S. PATENT NO. 6,317,831
1. Background
Unwired challenges the district court’s grant of sum-
mary judgment of non-infringement, which was based on
the claim term “narrowband channel.”
1 Because we vacate the district court’s summary
judgment based on the “user information” limitation, we
do not consider the district court’s rejection of Unwired’s
alternative infringement analysis that does not rely on
the hashed password for the claim limitation “the user
information.”
UNWIRED PLANET, LLC v. APPLE INC. 15
The ’831 patent is related to secure data transmis-
sions over wireless networks. ’831 patent, col. 1 ll. 21–23.
According to the ’831 patent, to securely transfer data, a
sender and a receiver must first exchange security infor-
mation, referred to as “cryptographic handshake opera-
tions,” which require the use of a two-way channel. Id.,
col. 3 ll. 28–33. The ’831 patent explains that even
though wideband channels are usually two-way and
capable of transferring data more quickly, it is often more
expensive to use than a narrowband channel, which is
usually a one-way channel from the server to client. Id.,
col. 3 ll. 6–9, col. 8 ll. 14–19. It discloses improved tech-
niques for facilitating secure data transfer using narrow-
band channels. Id., col. 3 ll. 25–27. Unwired asserted
claims 17, 23, and 25, all of which require a wideband
channel to first exchange security information, and a
narrowband channel to then transmit encrypted data.
The parties agreed that a “narrowband channel” means a
“channel with a meaningfully lower data transfer rate or
bandwidth than the wideband channel.” For the purposes
of this appeal, claim 17 is exemplary, which is a method
claim that depends on claim 14:
14. A method for transmitting data in a secure
manner from a server to a client, said method
comprising the acts of:
exchanging security information between
the client and the server over a two-way
channel between the client and the server;
encrypting data to be transmitted from
the server to the client based on the secu-
rity information; and
transmitting the encrypted data from the
server to the client over a one-way channel
between the client and the server that
carries data from the server to the client,
16 UNWIRED PLANET, LLC v. APPLE INC.
wherein the two-way channel is a wide-
band channel, and the one-way channel is
a narrowband channel.
17. A method as recited in claim 14, wherein at
least a portion of the narrowband channel and the
wideband channel are wireless.
Id., col. 19 ll. 34–46, col. 19 ll. 52–54 (emphases added).
The accused feature is Apple’s Push Notification Ser-
vice (“APNS”), which is a service that allows app provid-
ers to send push notifications to iOS devices via APNS
servers. An iOS device may have a number of apps that
receive notifications (e.g., Facebook, Twitter, ESPN).
Rather than connecting with multiple app provider serv-
ers, the iOS device only needs to connect to APNS servers,
because the multiple app providers all send messages to
APNS servers, which then send messages to the iOS
devices. It is undisputed that the exchange of security
information and the transmission of push notifications
occur over TCP/IP.
2. Discussion
Apple moved for summary judgment of non-
infringement, arguing that APNS does not meet the
“narrowband channel” limitation. 2 Unwired’s infringe-
ment theory is that the “narrowband channel” extends
from an app provider (i.e., a push notification sender) to
an iOS device, whereas the “wideband channel” is the
channel that carries the communications between the
APNS and the iOS device. It argues that the channel that
2 Apple also argued it was entitled to summary
judgment because it uses a single channel rather than
two different channels as required by the claims. In light
of our conclusion regarding the narrowband channel, we
need not reach this argument.
UNWIRED PLANET, LLC v. APPLE INC. 17
carries communications between an app provider server
and an iOS device is a narrowband channel because it is
at a meaningfully lower data transfer rate. According to
Unwired, APNS places a 256-byte data limit on the size of
a push notification from an app provider to an iOS device.
Unwired argues that this limit results in 124 bytes of
total overhead for a single 256-byte notification, which
represents 32.6% of the total size of the transmission. It
reasons that this overhead is much larger than the mini-
mal percentage of overhead for standard TCP/IP traffic in
the case of a wideband channel, and thus the channel for
notifications in APNS is a narrowband channel. Unwired
argues that APNS’s data-size restriction is similar to the
data-size restriction on SMS messages discussed in the
’831 patent, which is a narrowband channel.
Apple argues that we should affirm the district court’s
grant of summary judgment of non-infringement because
there is no genuine issue of fact; APNS does not use a
narrowband channel. The stipulated construction of the
narrowband channel requires “a meaningfully lower data
transfer rate or bandwidth than the wideband channel.”
Apple argues that there is no dispute that APNS uses the
same TCP/IP connection, with the bits traveling at the
same speed, for both the exchange of security information
and the transmission of the push message. We agree with
Apple that the characteristics of the data being transmit-
ted by APNS cannot transform the wideband channel
based on TCP/IP into a narrowband channel. Under the
agreed upon construction, Apple has met its burden of
proving that there is no genuine issue of material fact.
3. Conclusion
We affirm the district court’s summary judgment of
non-infringement of claims 17, 23, and 25 of the ’831
patent.
18 UNWIRED PLANET, LLC v. APPLE INC.
VI. U.S. PATENT NO. 6,321,092
1. Background
Unwired challenges the district court’s grant of sum-
mary judgment of no indirect infringement. The ’092
patent discloses an improved technology for identifying
the location of a wireless station, such as a cell phone or
pager. In order to more accurately locate a wireless
station, the invention gathers inputs about the location of
the wireless station from multiple location finding equip-
ment (“LFE”) such as handset global positioning system
(“GPS”), time difference of arrival, and the use of
cell/sector location. It then responds to a location request
by providing the location information. Unwired alleged
that the location-finding technology of iOS devices in-
fringes claim 20, which is a method claim comprising, in
relevant part, “receiving a plurality of device dependent
location inputs provided by said location finding equip-
ment.” ’092 patent, col. 16 ll. 19–20 (emphasis added).
The district court denied Apple’s motion for summary
judgment of no direct infringement, which was based on
Apple’s argument that the iOS devices only use a single
“location input.” The district court, however, granted
Apple’s motion for summary judgment of no induced or
contributory infringement. It reasoned that Apple’s non-
infringement argument—i.e., that iOS devices only use
one “location input”—is strong enough that no reasonable
juror could conclude that Apple acted with actual
knowledge that it was inducing or contributing to in-
fringement. The court concluded that no reasonable juror
could conclude that Apple was willfully blind because of
“the strength of Apple’s noninfringement argument.” The
district court erred by basing summary judgment on its
own estimation of the objective strength of Apple’s non-
infringement defense. The proper focus of indirect in-
fringement analysis is on the subjective knowledge of the
accused infringer, and the district court’s conclusion that
UNWIRED PLANET, LLC v. APPLE INC. 19
Apple’s non-infringement defenses were strong at most
created a factual question as to Apple’s own subjective
beliefs.
2. Discussion
On appeal, Apple argues that Unwired presented no
evidence that Apple knew or was willfully blind to the fact
that the induced acts were infringing the asserted claims
of the ’092 patent. Apple is correct that indirect in-
fringement requires knowledge of the underlying direct
infringement—not merely the knowledge of the existence
of the patent. Global-Tech Appliances, Inc. v. SEB S.A.,
563 U.S. 754, 765–66 (2011); Commil USA LLC v. Cisco
Systems, Inc., 575 U.S. ____, 135 S. Ct. 1920, 1926 (2015).
This knowledge requirement may be satisfied under the
doctrine of willful blindness. Global-Tech Appliances, 563
U.S. at 768. The Supreme Court cautioned that the
accused’s deliberate indifference to a known risk of in-
fringement alone is not sufficient. Rather, the doctrine of
willful blindness requires the patentee to show not only
that the accused subjectively believed that there was a
high risk of infringement, but also that the accused took
deliberate actions to avoid confirming infringement.
Global-Tech Appliances, 563 U.S. at 769–70. Apple
argues that Unwired’s evidence at most creates a question
of fact regarding Apple’s knowledge of the patent but that
none of the evidence supports an inference that Apple
knew or was willfully blind to any infringing acts. If
correct, this would be a basis for summary judgment. We
defer to the district court to make this determination in
the first instance. Because the district court’s grant of
summary judgment was based exclusively on its view of
the strength of Apple’s non-infringement argument, we
vacate. The Supreme Court’s Global-Tech Appliances and
Commil decisions require a showing of the accused in-
fringer’s subjective knowledge as to the underlying direct
infringement. The district court’s reliance on the objec-
tive strength of Apple’s non-infringement arguments as
20 UNWIRED PLANET, LLC v. APPLE INC.
precluding a finding of induced or contributory infringe-
ment was erroneous. In this case, we conclude only that
summary judgment is inappropriate on the basis the
district court decided, and we pass no judgment on how
the factual issues ought to be resolved by a fact finder.
The district court is not precluded from considering
Apple’s alternative summary judgment argument regard-
ing knowledge.
3. Conclusion
We therefore vacate the district court’s summary
judgment of no indirect infringement as to claim 20 of the
’092 patent. On remand, the district court may reconsider
Apple’s motion for summary judgment of no indirect
infringement consistent with this opinion.
VII. CONCLUSION
We vacate the district court’s summary judgment of
non-infringement as to the asserted claims of the ’446,
’260, and ’092 patents. We affirm the district court’s
summary judgment of no infringement as to the asserted
claims of the ’831 patent.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
COSTS
No costs.