Technology Patents LLC v. T-Mobile (Uk) Ltd.

United States Court of Appeals
for the Federal Circuit
__________________________
TECHNOLOGY PATENTS LLC,
Plaintiff-Appellant,
v.
T-MOBILE (UK) LTD., T-MOBILE AUSTRIA GMBH,
T-MOBILE CZECH REPUBLIC A.S., T-MOBILE
DEUTSCHLAND GMBH, T-MOBILE HUNGARY CO.
LTD., T-MOBILE NETHERLANDS B.V.,
AND T-MOBILE SLOVENSKO A.S.,
Defendants-Appellees,
AND
ADVANCED INFO SERVICE PLC, also known as
AIS, BELL MOBILITY INC., CSL NEW WORLD
MOBILITY LIMITED, CHINA MOBILE PEOPLES
TELEPHONE COMPANY LIMITED, now known as
China Mobile Hong Kong Company Limited,
KT FREETEL CO. LTD., now known as KT
Corporation, SINGAPORE TELECOM MOBILE
PRIVATE LIMITED, SINGAPORE
TELECOMMUNICATIONS LIMITED, also known as
Singtel, SINGTEL OPTUS PTY LIMITED, STARHUB
MOBILE PTE LTD., AND TELSTRA CORPORATION
LIMITED,
Defendants-Appellees,
AND
AMERICA MOVIL, S.A.B. DE C.V., CLARO, S.A.,
AMX ARGENTINA, S.A.,
TECHNOLOGY PATENTS v. DEUTSCHE 2
AND RADIOMOVIL DIPSA, S.A. DE C.V., also known
as Telcel,
Defendants-Appellees,
AND
BELGACOM MOBILE S.A., also known as Proximus,
MOBILKOM AUSTRIA AG, SFR, also known as Societe
Francaise De Radiotelephone S.A., SMARTONE
MOBILE COMMUNICATIONS LIMITED,
TANGO S.A., VODAFONE CZECH REPUBLIC A.S.,
VODAFONE D2 GMBH, also known as Vodafone
Germany, VODAFONE ESPANA S.A., VODAFONE
ESSAR LTD., VODAFONE HUNGARY MOBILE
TELECOMMUNICATIONS LTD., VODAFONE
IRELAND LTD., VODAFONE LIBERTEL B.V.,
VODAFONE LIMITED, also known as Vodafone UK,
VODAFONE NETWORK PTY. LTD., VODAFONE
NEW ZEALAND, VODAFONE OMNITEL N.V.,
VODAFONE PORTUGAL, COMUNICACOES
PESSOAIS, S.A., VODAFONE
TELEKOMUNIKASYON A.S., also known as Vodafone
Turkey, AND VODAFONE-PANAFON HELLENIC
TELECOMMUNICATIONS COMPANY S.A.,
also known as Vodafone-Panafon S.A.,
Defendants-Appellees,
AND
TNL PCS S.A., ALSO KNOWN AS OI,
Defendant-Appellee,
AND
BASE N.V./S.A., E-PLUS MOBILFUNK GMBH & CO.
KG, AND KPN B.V.,
Defendants-Appellees,
3 TECHNOLOGY PATENTS v. DEUTSCHE
AND
BERMUDA DIGITAL COMMUNICATIONS LTD.,
Defendant-Appellee,
AND
BOUYGUES TELECOM S.A.,
Defendant-Appellee,
AND
CHUNGHWA TELECOM CO. LTD.,
FAR EASTONE TELECOMMUNICATIONS CO.
LTD., AND TAIWAN MOBILE CO., LTD.,
Defendants-Appellees,
AND
CLICKATELL (PTY) LTD.,
Defendant-Appellee,
AND
FRANCE TELECOM ESPANA S.A., also known as
Orange Spain, FRANCE TELECOM S.A., MOBISTAR
N.V., ORANGE AUSTRIA TELECOMMUNICATION
GMBH, formerly known as One GmbH,
ORANGE COMMUNICATIONS S.A., also known as
Orange Switzerland, ORANGE FRANCE S.A.,
ORANGE PLC, also known as Orange U.K.,
ORANGE S.A., ORANGE SLOVENSKO A.S., AND
VOX MOBILE S.A.,
Defendants-Appellees,
AND
H3G S.P.A., also known as 3 Italia, HUTCHISON 3G
AUSTRIA GMBH, HUTCHISON 3G UK LIMITED,
TECHNOLOGY PATENTS v. DEUTSCHE 4
AND HUTCHISON TELECOMMUNICATIONS
(HONG KONG) LIMITED,
Defendants-Appellees,
AND
KDDI CORPORATION,
Defendant-Appellee,
AND
PCCW MOBILE HK LIMITED,
Defendant-Appellee,
AND
YAHOO! INC.,
Defendant-Appellee,
AND
KABUSHIKI KAISHA NTT DOCOMO AND
SOFTBANK MOBILE CORP.,
Defendants-Appellees,
AND
M3 WIRELESS LTD.,
Defendant-Appellee,
AND
NETCOM AS, NOW KNOWN AS TELIASONERA
NORGE AS
AND TELIA DANMARK A/S,
Defendants-Appellees,
AND
TMN – TELECOMUNICACOES MOVEIS
NACIONAIS, S.A.,
5 TECHNOLOGY PATENTS v. DEUTSCHE
Defendant-Appellee,
AND
TELEFONICA GERMANY GMBH & CO. OHG (for-
merly known as Telefonica O2 Germany GmbH & CO.
OHG), TELEFONICA UK LIMITED (formerly known
as O2 UK Limited), TELEFONICA IRELAND
LIMITED (formerly known as Telefonica O2 Ireland
Limited), PEGASO PCS, S.A. DE C.V., TELEFONICA
MOVILES ARGENTINA, S.A., TELEFONICA
MOVILES ESPANA, S.A.U., TELEFONICA CZECH
REPUBLIC (formerly known as Telefonica O2 Czech
Republic, A.S.), AND VIVO, S.A.,
Defendants-Appellees,
AND
PANNON GSM TELECOMMUNICATIONS LTD.,
SONOFON A/S, SWISSCOM MOBILE A.G., TDC A/S,
TDC SWITZERLAND AG, also known as Sunrise,
TELENOR MOBIL A.S., AND
TOTAL ACCESS COMMUNICATION PLC, also
known as DTAC,
Defendants-Appellees,
AND
SONAECOM-SERVICOS DE COMUNICACOES, S.A.,
Defendant-Appellee,
AND
TELECOM ITALIA S.P.A., TELECOM PERSONAL
S.A., TIM CELULAR S.A., AND TIM
PARTICIPACOES S.A., also known as Tim Brazil,
Defendants-Appellees,
AND
TECHNOLOGY PATENTS v. DEUTSCHE 6
TRUE MOVE COMPANY LIMITED,
Defendant-Appellee,
AND
WIND HELLAS TELECOMMUNICATIONS S.A.
AND WIND TELECOMUNICAZIONI SPA,
Defendants-Appellees,
AND
AVEA ILETISIM HIZMETLERI A.S.,
Defendant-Appellee,
AND
T-MOBILE USA, INC.,
Defendant-Appellee,
AND
AT&T MOBILITY LLC,
Defendant-Appellee,
AND
TELE-MOBILE COMPANY, also known as Telus
Mobility,
Defendant-Appellee,
AND
ROGERS WIRELESS PARTNERSHIP,
Defendant-Appellee,
AND
MICROSOFT CORPORATION,
Defendant-Appellee,
AND
7 TECHNOLOGY PATENTS v. DEUTSCHE
PALM, INC.,
Defendant-Appellee,
AND
CELLCO PARTNERSHIP, doing business as Verizon
Wireless,
Defendant-Appellee,
AND
HELIO, LLC, AND SPRINT NEXTEL
CORPORATION,
Defendants-Appellees,
AND
LG ELECTRONICS MOBILECOMM U.S.A., INC.,
Defendant-Appellee,
AND
MOTOROLA, INC., now known as Motorola Solutions,
Inc.,
Defendant-Appellee,
AND
IDEA CELLULAR LIMITED,
Defendant,
AND
DEUTSCHE TELEKOM AG, MOBILEONE LTD.,
ORANGE LIMITED, ORANGE NEDERLAND N.V.,
TURKCELL ILETISIM HIZMETLERI A.S., AND
UPSIDE WIRELESS INC., also known as IPIPI,
Defendants,
AND
TECHNOLOGY PATENTS v. DEUTSCHE 8
MOTOROLA MOBILITY, INC.,
Intervenor.
__________________________
2011-1581
__________________________
Appeal from the United States District Court for the
District of Maryland in case no. 07-CV-3012, Judge Alex-
ander Williams, Jr.
_________________________
Decided: October 17, 2012
___________________________
JOESPH A. RHOA, Nixon & Vanderhye, P.C., of Arling-
ton, Virginia, argued for plaintiff-appellant. With him on
the brief were GORDON P. KLANCNIK and UNDEEP S. GILL.
IAN N. FEINBERG, Feinberg Day Albert & Thompson
LLP, of Palo Alto, California, argued for defendants-
appellees T-Mobile (UK), et al. Advanced Info Service
PLC, et al., American Movil S.A.B. de C.V., et al., Bel-
gacom Mobil S.A., et al., Basen N.V./S.A., et al., Bouygues
Telecom S.A., and Kiddi Coporation, and Bermuda Digital
Communications LTD., and Chunghwa Telecom, Co. LTD,
et al., PCCW Mobil HK Limited, and M3 Wireless LTD,
and France Telecom Espana S.A., et al., TMN- Telecomu-
nicacoes Movies Nacionais, S.A., and H3G S.P.A., et al.,
and Kabushiki Kaisha NTT DOCOMO, et al., Avea Ilet-
isim Hizmetleri A.S., and O2 (Germany) GMBH & Co.
OHG, et al., TeliaSonera Norge AS, et al., Rogers Wireless
Partnership, Pannon GSM Telecommunications LTD., et
al., Sonaecom-Servicos De Comunicacoes, S.A., and True
9 TECHNOLOGY PATENTS v. DEUTSCHE
Move Company Limited, and Telecom Italia S.PA., et al.,
Wind Hellas Telecommunications S.A. et al., Netcom AS,
et al., DEA Cellular Limited. With him on the brief were
ANDREW R. SOMMER, Winston & Strawn, LLP, of Wash-
ington, DC, for the defendants-appellees TNL PCS S.A.
and STUART J. SINDER, Kenyon & Kenyon, LLP, of New
York, New York, for defendant-appellees T-Mobile (UK),
Ltd., et al., DORIS JOHNSON HINES, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, of Washington, DC, for
defendants-appellees Advanced Info Service PLC, et al.,
STEVEN R. SELSBERG, Mayer Brown, LLP, of Houston,
Texas, for defendant-appellees America Movil, et al.,
MATTHEW J. MOORE, Latham & Watkins LLP, of Wash-
ington, DC, for defendants-appellees Base N.V./S.A., et
al., LOUIS M. SOLOMON, Cadwalader, Wickersham & Taft
LLP, of New York, New York, for defendant-appellee
Bouygues Telecom S.A., and EDWARD C. DONOVAN, D.
SEAN TRAINOR and WILLIAM H. BURGESS, Kirkland &
Ellis, LLP, of Washington, DC, for defendant-appellee
KDDI Corporation, and RODERICK R. MCKELVIE, Coving-
ton & Burling LLP, of Washington, DC, for defendant-
appellee Bermuda Digital Communications Ltd., BRIAN
WM. HIGGINS, Blank Rome, LLP, of Washington, DC, for
defendant-appellees Chunghwa Telecom Co. Ltd., et al.,
RUSSELL E. LEVINE, Kirkland & Ellis LLP, of Chicago,
Illinois, for defendant-appellee PCCW Mobile HK Lim-
ited, and ROBERT C. BERTIN and CATHERINE R. MURPHY,
Bingham McCutchen LLP, of Washington, DC, for defen-
dant-appellee M3 Wireless Ltd., and JAMES W. DABNEY,
Fried, Frank, Harris, Shriver & Jacobson LLP, of New
York, New York, for defendant-appellees France Telecom
Espana S.A., et al., and DAVID L. LEICHTMAN and BRYAN J.
VOGEL, Robins, Kaplan, Miller & Ciresi L.L.P., of New
York, New York, for defendant-appellee TMN – Tele-
comunicacoes Moveis Nacionais, S.A., and STEPHEN B.
KINNAIRD, Paul Hastings, LLP, of Washington, DC, for
TECHNOLOGY PATENTS v. DEUTSCHE 10
defendant-appellees H3G S.P.A., et al., SHERMAN W.
KAHN, Morrison & Foerster LLP, of New York, New York,
for denfendant-appellees Kabushiki Kaisha NTT
DoCoMo, et al., SCOTT R. MATTHEWS, Windels, Marx,
Lane & Mittendorf, of New York, New York, for defen-
dant-appellee Avea Iletisim Hizmetleri A.S., and STEVEN
J. YOUNG, Dewey & LeBoeuf LLP, of New York, New
York, for defendant-appellees O2 (Germany) GmbH &
Co., OHG, et al., STEPHEN S. MADSEN, Cravath Swaine &
Moore, LLP, of New York, New York, for defendant-
appellees TeliaSonera Norge AS, et al., EDWARD HAN,
Arnold & Porter, LLP, of Washington, DC, for defendant-
appellee Rogers Wireless Partnership, and ROBERT C.
NISSEN and WILLIAM T. ENOS, Nissen & Associates, of
Washington, DC, for defendant-appellees Pannon GSM
Telecommunications Ltd., et al., BRIAN C. RIOPELLE,
McGuire Woods LLP, of Richmond, Virginia, for defen-
dant-appellee Sonaecom-Services de Comunicacoes, S.A.,
and JAY F. UTLEY, W. BART RANKIN and NATHAN A.
ENGELS, Baker & McKenzie LLP, of Dallas, Texas, for
defendant-appellee True Move Limited Company, and
MAXIMILIAN A. GRANT, Latham & Watkins LLP, of Wash-
ington, DC, for defendant-appellees Telecom Italia S.P.A.,
et al., and ADAM GAHTAN, White & Case LLP, of New
York, New York, for defendant-appellees Wind Hellas
Telecommuications, S.A., et al.
BRYANT C. BOREN, JR., Baker Botts LLP, of Dallas,
Texas, argued for defendents-appellees AT& T Mobility,
LLC, T-Mobile, USA, Inc., Cellco, Partnership d/b/a
Verizon Wireless, LG Electronics Mobilecomm U.S.A.,
Inc., Motorola Solutions, Inc., (f.k.s. Motorola, Inc.) Sprint
Nextel Corporation and Helio, LLC, and Palm, Inc. With
him on the brief were CHRISTOPHER W. KENNERLY,
SAMARA L. KLINE, and KEVIN E. CADWELL, for defendant-
appellee AT&T Mobility, LLC, of counsel was JOSHUA J.
11 TECHNOLOGY PATENTS v. DEUTSCHE
PARKER. Also on the brief were RAMSEY M. AL-SALAM and
KAUSTUV M. DAS, Perkins Coie, LLP, of Seattle, Washing-
ton, for defendant-appellee T-Mobile USA, Inc., and
KEVIN P. ANDERSON, JAMES H. WALLACE, JR., and KARIN
HESSLER, Wiley Rein LLP, of Washington, DC, for defen-
dant-appellee Cellco Partnership (d/b/a/ Verizon Wire-
less), and MICHAEL J. MCKEON and LINDA LIU KORDZIEL,
Fish & Richardson P.C., of Washington, DC, for defen-
dant-appellee LG Electronics MobileComm U.S.A., Inc.,
and ANDREW R. SOMMER, CYRUS T. FRELINGHUYSEN, and
GREGORY P. EATON, Winston & Strawn, LLP, of Washing-
ton, DC, and JONATHAN E. RETSKY, of Chicago, Illinois, for
defendant-appellee Motorola Solutions, Inc., (f.k.a. Mo-
torola, Inc.), and BRIAN M. KOIDE, Crowell & Moring LLP,
of Washington, DC, for defendant-appellees, Sprint
Nextel Corporation and Helio, LLC, and MICHAEL M.
MARKMAN and ROBERT J. WILLIAMS, Covington & Burling
LLP, of San Francisco, California, for defendant-appellee
Palm, Inc.,
GEORGE F. PAPPAS, Covington & Burling, LLP, of
Washington, DC, argued for defendants-appellees
Clickatell (PTY) LTD., Yahoo!, Inc. and Microsoft Corpo-
ration. With him on the brief were PETER A. SWANSON,
ERICA N. ANDERSEN, for defendant-appellee, Microsoft
Corporation, and ADAM R. ALPER, Kirkland & Ellis, LLP,
of San Francisco, California, for defendant-appellee,
Yahoo!, Inc. Of counsel were STEFANI E. SHANBERG and
ROBIN L. BREWER, Wilson Sonsini Goodrich & Rosati, of
Palo Alto, California, for defendant–appellee Clickatell
(PTY) Ltd.
JONATHAN E. RETSKY, Winston & Strawn LLP, of Chi-
cago, Illinois, ANDREW R. SOMMER and CYRUS T.
FRELINGHUYSEN, of Washington, DC. for Intervenor
Motorola Mobility, Inc.
TECHNOLOGY PATENTS v. DEUTSCHE 12
__________________________
Before BRYSON, PROST, and REYNA, Circuit Judges.
BRYSON, Circuit Judge.
On November 8, 2007, Technology Patents LLC
(“TPL”) sued more than 100 domestic and foreign defen-
dants for infringement of U.S. Patents No. 6,646,542 (“the
’542 patent”) and No. RE39,870 (“the ’870 patent”). The
allegations concerning the ’542 patent were subsequently
withdrawn, so only the ’870 patent is at issue in this
appeal. The defendants can be classified into three
groups: (1) the domestic carriers and handset companies,
including AT&T, T-Mobile, Sprint, Motorola, and others
(collectively, “the domestic carriers”); (2) the software
providers, including Microsoft, Yahoo, and Clickatell
(collectively, “the software providers”); and (3) the foreign
carriers, including T-Mobile operating in various coun-
tries, Vodaphone operating in various countries, and
many others (collectively, “the foreign carriers”).
The district court dismissed the case against the for-
eign carriers for lack of personal jurisdiction, and it
granted summary judgment of noninfringement in favor
of the domestic carriers and the software providers, but
on separate grounds. TPL appeals from all three orders.
We reject TPL’s request that we reinstate the claims
against the domestic carriers and the foreign carriers; as
to the claims against the software providers, we affirm
the district court’s order in part and vacate that order in
part, and we remand to the district court for further
proceedings on that aspect of the case.
13 TECHNOLOGY PATENTS v. DEUTSCHE
I
The ’870 patent describes a “global paging system
utilizing a land-based packet-switched digital data net-
work (e.g. the Internet) and a feature for permitting
subscribers to remotely designate countries in which they
are, or expect to be, located.” ’870 patent, col. 1, ll. 16-19.
The patent asserts that the prior art was deficient be-
cause it did not fulfill the need for a cheap and efficient
global paging system that allows users who expect to
receive messages or pages abroad to “remotely input
country designations in which they are to be paged.” Id.,
col. 2, ll. 33-35. In criticizing the prior art, the patent
disparages automatic roaming, noting that “other than
the roaming feature, the receiving user cannot input into
the system designated country locations where he or she
expects to be in the future [and] the roam feature is
undesirable and expensive.” Id., col. 2, ll. 22-31. The
patent further states, “[I]t would be desirable to not
require the callee’s cellular phone to continuously have to
update the system via roaming, for example, as to its
location, as this is expensive and inefficient.” Id., col. 2,
ll. 47-50.
The district court accurately described how the inven-
tion of the ’870 patent sought to cure the deficiencies of
the prior art:
The ’870 Patent solved this problem by claim-
ing a system which allows for paging of the receiv-
ing user (“RU”) in countries where the RU “may
be located,” as per a list input by the RU. (See,
e.g., id. at 10:14-20.) A general description of the
system follows. The RU must set up a list of
countries that “he or she wishes to be reachable in
by way of the paging system,” and these are the
TECHNOLOGY PATENTS v. DEUTSCHE 14
only countries where the RU can be paged. (Id. at
6:22-24.) When traveling, the RU may designate
the country where he or she is located. (Id. at
6:29-50.) To contact the RU, the originating user
(“OU”) contacts the “paging gateway” through the
public-switched telephone network (“PSTN”) or
email and inputs the RU’s “pager ID” along with a
“paging message.” (Id. at 3:54-57.) The system
then checks for the RU’s country designation, and
pages the RU in that country, if access is possible.
(Id. at 5:23-30.) If the RU’s pager cannot be ac-
cessed in the designated area, or if the RU has not
designated a country, the originating server re-
trieves the previously input country list, attempts
to page the RU at the first country on the list, and
if unsuccessful, proceeds to attempt to page the
RU at the second country on the list, and if unsuc-
cessful, continues through the list, a certain num-
ber of times. (Id. at 5:53-60, col.8:13-20) Once the
system reaches the RU, a website or server
transmits the message through a land-based digi-
tal data network (e.g. the Internet) to the RU’s
device. (Id. at 5:53-64.)
Claim 4, the only independent claim asserted against
the domestic carriers, recites:
4. A system for paging a receiving user in a coun-
try-selective paging system, comprising:
a paging system spanning a plurality of differ-
ent countries of the world, the paging system
including a plurality of servers, and wireless
transmitters in different countries for transmit-
ting paging messages to receiving users;
15 TECHNOLOGY PATENTS v. DEUTSCHE
at least a packet-switched digital data network
interconnecting servers so as to permit digital
communication of signals between the plurality
of servers via at least the packet-switched digi-
tal data network;
a first website or server located in a first coun-
try for allowing an originating user to page the
receiving user who may be located in a second
country different from the first country, the
originating user not necessarily knowing what
country the receiving user is located in;
wherein the paging system determines if the
second country is currently designated by the
receiving user as a designated country in which
the paging system is to attempt to page the re-
ceiving user;
when the paging system determines that the
second country has been designated by the re-
ceiving user, means for sending a paging com-
munication via at least the packet-switched
digital data network to a second website or
server, the second website or server being in
communication with a wireless transmitter lo-
cated in the second country, and wherein the
paging communication causes the second web-
site or server to initiate paging the receiving
user via the wireless transmitter in the second
country; and
when the paging system determines that the
second country has not been designated by the
receiving user, the paging system initiates pag-
ing operations in another country in a prede-
TECHNOLOGY PATENTS v. DEUTSCHE 16
termined order in an attempt to page the re-
ceiving user.
And claim 11, which is representative of the claims as-
serted against only the software providers, recites:
11. A system for paging a receiving user via a
website and a digital data network, compris-
ing:
a) a website for receiving a paging signal from
an originating user, the originating user be-
ing located in a first country and the paging
signal including a device ID of the receiving
user and a paging message to be sent to the
receiving user;
b) means for designating a second country, from
a plurality of potential countries, in which
the receiving user is to be paged, by using
country data;
c) means for transmitting the paging message
over at least a digital data network to a com-
puter, the computer being in communication
with a wireless transmitter that is located in
the designated second country;
d) the computer causing the wireless transmit-
ter located in the second country to page the
receiving user;
and wherein said designating by the means for
designating in b) is carried out by the origi-
nating user when the originating user elec-
tronically messages the website, the
originating user inputting the country data
17 TECHNOLOGY PATENTS v. DEUTSCHE
to the website to designate the second coun-
try.
On August 29, 2008, the district court granted the
foreign carriers’ motion to dismiss for lack of personal
jurisdiction. The court found that the foreign carriers did
not have sufficient “minimum contacts” with the State of
Maryland or with the United States as a whole to be
subject to personal jurisdiction in the forum.
Almost two years later, on August 25, 2010, the dis-
trict court issued a claim construction order construing
dozens of claim terms. Several weeks later, the court
granted summary judgment in favor of the software
providers. The court held that TPL’s infringement con-
tentions required multiple actors and that TPL had failed
to produce evidence sufficient to satisfy the proof re-
quirements for joint infringement.
On August 4, 2011, the district court granted sum-
mary judgment of noninfringement to the domestic carri-
ers. The court explained its ruling as follows:
[TPL’s] description of the accused system simply
does not even resemble [the asserted independent
claim], much less literally match it. In all of the
scenarios provided by [TPL], it is the receiving
handset, not the RU, that inputs the country code
into the Defendants’ system. In manual mode, all
the RU does is select a carrier. In automatic
mode, the RU does not even do this much: instead
of selecting a particular network carrier from a
list, the RU simply clicks “automatic,” at which
point the handset selects a carrier without any
further input from the RU.
TECHNOLOGY PATENTS v. DEUTSCHE 18
On appeal, TPL presents several arguments, includ-
ing: (1) the district court erroneously construed several
claim terms; (2) the district court erroneously granted
summary judgment of noninfringement to the domestic
carriers; (3) the district court erroneously granted sum-
mary judgment of noninfringement to the software pro-
viders; and (4) the district court erroneously dismissed
the foreign carriers for lack of personal jurisdiction.
II
TPL first takes issue with the district court’s con-
struction of several claim limitations. We address only
the three limitations relevant to the district court’s sum-
mary judgment orders.
A
The term “receiving user” appears throughout the as-
serted claims. The district court construed the term to
mean a person or party. TPL argues that “receiving user”
means “the combination of the person and the handset.”
We disagree with TPL and affirm the district court’s
construction.
TPL rests its case on the distinction between an
“originating user” and a “receiving user.” The patent
states that “the term ‘originating user’ (OU) is used
herein to describe the person or party who originates a
page or cellular phone call, i.e. the one who desires to
page or call the receiving user.” ’870 patent, col. 3, ll. 50-
52. The patent also states that “[t]he term ‘receiving user’
(RU) is used herein to define the recipient of a page or
cellular phone call.” Id., col. 3, ll. 47-50. TPL argues that
because the patent explicitly defines the originating user
as a “person or party” but does not use that language with
19 TECHNOLOGY PATENTS v. DEUTSCHE
respect to the receiving user, a receiving user is not so
limited. For support, TPL relies on dictionary definitions
for the terms “recipient” and “one,” even though those
terms do not appear in the claim language at issue.
The intrinsic evidence rebuts TPL’s argument. The
text of the patent makes clear that the term “receiving
user” does not refer to a person-pager combination. First,
the written description repeatedly describes the “receiving
user” as either male or female, clearly contemplating that
the receiving user is a person. E.g., ’870 patent, col. 6, ll.
17-19 (“When the subscriber or RU first subscribes . . . he
or she is assigned a pager # . . . .”); col. 6, ll. 20-21 (“the
subscriber or RU inputs his or her ‘list’ of countries”); col.
6, ll. 28-30 (“the RU at 35 lists the countries in the order
he or she wishes that they be accessed”).
Second, the specification repeatedly refers to the re-
ceiving user as possessing things. In fact, the specifica-
tion on numerous occasions states that the receiving user
possesses a pager, demonstrating that the receiving user
and the pager are distinct entities. The phrase “receiving
user’s pager” or the equivalent appears in the specifica-
tion more than a dozen times. E.g., ’870 patent, col. 6, ll.
56-57 (“the RU’s pager . . . acknowledges receipt of a
page”); col. 7, line 67, through col. 8, line 1 (“the RU’s
pager indicates receipt”); col. 3, ll. 7-8 (“pager of the
receiving user”). The claims themselves even differenti-
ate between the receiving user and the pager. E.g., id.,
claim 1 (“transmitting a paging message to a pager of the
receiving user”); claim 23 (referring to “a device of the
receiving user”). Those references make clear that a
receiving user is not a person-pager combination because,
if it were, it would make no sense to refer to the receiving
user as possessing a pager.
TECHNOLOGY PATENTS v. DEUTSCHE 20
Third, the patent uses the terms “receiving user” and
“subscriber” interchangeably. E.g., ’870 patent, col. 6, ll.
14-15 (“illustrating how a subscriber (RU) subscribes to
the pager system”). A subscriber is a person, not a per-
son-device combination.
TPL argues that claims 6, 31, and 39 prove that its
position is correct, but in fact those claims support the
district court’s construction. Claim 6 contains the limita-
tion “means for the receiving user confirming receipt of a
paging message.” Claim 31 contains nearly identical
language. The parties agree that the corresponding
structure for that limitation is a pager. The clear implica-
tion of the claim language is that a receiving user uses a
pager to confirm receipt of a paging message. It is un-
clear why TPL believes the “means for receiving” limita-
tion supports its position, because if the receiving user
were a person-pager combination, the combination would
not need a “means for . . . confirming receipt.” If any-
thing, that claim language makes clear that the pager and
the receiving user are distinct from each other. TPL
relies on claim 39 because it recites, “the receiving user . .
. confirming receipt of a paging message.” Just as with
claims 6 and 31, however, the receiving user may use a
pager to confirm receipt. The ability of the receiving user
to use a device to confirm receipt of a message does not
establish that the receiving user must be a person-pager
combination. TPL also relies on various other portions of
the patent for support, such as references to the “device of
the receiving user.” As discussed above, however, the fact
that the receiving user possesses the pager tends to prove
that the two are distinct: If the receiving user were a
person-pager combination, there would be no need to
reference the receiving user’s pager. Accordingly, we
uphold the district court’s construction of the term “re-
ceiving user.”
21 TECHNOLOGY PATENTS v. DEUTSCHE
B
The phrase “initiates paging operations in another
country in a predetermined order” appears in claim 4.
The district court construed that phrase to mean “begins
to page the receiving user in another country that is first
in an ordered list of two or more countries created by the
receiving user before the paging system determines
whether any country has been designated.” The parties
agree, and the patent makes clear, that the term “prede-
termined order” refers to an ordered list of countries in
which the receiving user is to be paged if he fails to desig-
nate the country in which he is located. TPL argues that
the ordered list need not be “created by the receiving
user” as required by the district court’s construction. We
disagree with TPL.
TPL argues that the claim language itself does not re-
quire the ordered list to be created by the receiving user
and that nothing in the specification limits the claim in
that manner. It may be true that the “predetermined
order” language itself does not specify who or what de-
termines the order of the listed countries, but the claim
language makes clear that someone or something deter-
mines that order. The only question is whether it is a
person (the receiving user) or a device. TPL’s argument
that the order need not be determined by the receiving
user ignores a substantial amount of intrinsic evidence
and the very purpose of the claimed invention.
One of the primary purposes of the invention was to
allow users to be paged only in countries that they se-
lected, rather than in countries automatically selected by
the devices they use. As noted above, in criticizing prior
art systems, the patent states that, “other than the roam-
ing feature, the receiving user cannot input into the
TECHNOLOGY PATENTS v. DEUTSCHE 22
system designated country locations where he or she
expects to be in the future; . . . the roam feature is unde-
sirable and expensive.” ’870 patent, col. 2, ll. 22-31. The
patent further states, “it would be desirable to not require
the callee’s cellular phone to continuously have to update
the system via roaming, for example, as to its location, as
this is expensive and inefficient.” Id., col. 2, ll. 47-50. If
the ordered list referred to by the “predetermined order”
language of the claim did not need to be created by the
receiving user, the claim would arguably cover the very
roaming system that the patent criticized.
Moreover, the patent makes clear that the ordered
list, which dictates the “predetermined order” of the
claim, is created by the receiving user. E.g., id., col. 6, ll.
28-32 (“[T]he RU at 35 lists the countries in the order he
or she wishes that they be accessed in the event that no
country or area has been designated. In other words, in
step 35 the RU lists his or her accessible countries in the
order in which he or she is most likely to be in them.”);
col. 6, ll. 20-21 (“the subscriber or RU inputs his or her
‘list’ of countries to be serviced”); col. 2, ll. 34-37 (“receiv-
ing users . . . may remotely input a list of countries in
which they desire paging services”). TPL’s proposed
construction would remove the source of the predeter-
mined order, which goes to the heart of the invention’s
alleged improvement over the prior art. We therefore see
no error in the district court’s construction of the term
“predetermined order” or the phrase “initiates paging
operations in another country in a predetermined order.”
C
Many of the asserted claims require the paging sys-
tem to determine whether the receiving user has “desig-
nated” a country in which the system is to attempt to
23 TECHNOLOGY PATENTS v. DEUTSCHE
page him. For example, claim 4 contains a limitation that
recites, “wherein the paging system determines if the
second country is currently designated by the receiving
user.” The district court construed that limitation to
mean, “wherein the paging system determines if the
receiving user has input a selection of the second coun-
try.” In other words, the district court determined that a
receiving user (i.e., a person, not a device) designates a
second country by inputting a selection of that second
country. TPL argues that the designation (or inputting)
need not be done by the “person of the RU” but instead
can be done automatically by the “pager of the RU.” In
large part, this goes back to TPL’s contention that the
receiving user is a person-pager combination—a conten-
tion that we have already rejected.
On this issue, TPL points to two embodiments of the
invention that allegedly show that the phone itself (“the
pager of the RU”) designates a second country. First, it
points to “an embodiment where the RU renews a desig-
nated country.” For support, TPL points to the following
passage in the specification:
As shown in step 39, designated country data in-
put by the RU is automatically erased after a pre-
determined period of time (e.g. 30 days). When
deletion occurs, the system automatically pages
the RU and informs the RU that his/her desig-
nated country data has been deleted from the sys-
tem. At this point in time, the RU may E-mail or
call up any web site or server 9 in the paging sys-
tem and either renew his designated country or
enter a new designated country or coverage area.
’870 patent, col. 7, ll. 5-13. Second, TPL relies on “an
embodiment where the ‘RU’s designated country’ is auto-
TECHNOLOGY PATENTS v. DEUTSCHE 24
matically changed by the pager of the RU when the pager
confirms receipt of a page.” TPL points to the following
passage for support:
When it is determined in step 79 that Z finally
equals 0, the system stops attempting to page the
RU in the designated country, and retrieves the
RU’s list of service countries and performs pages
therein a predetermined number of times as dis-
cussed above in step 81. In step 81, the paging
systems [sic] continues to page the RU in his
listed countries until either receipt of the page is
confirmed 83, or until the process has been per-
formed a predetermined number of times. If the
page is confirmed, the subscriber is billed accord-
ingly in step 75. According to certain alternative
embodiments, if a page is confirmed 83 during the
step 81 process, then in step 75 the RU’s desig-
nated country may be automatically changed so as
to correspond to the country or coverage area in
which the page was confirmed at 83. After step
75, the transaction is ended 85.
Id., col. 8, ll. 20-35. TPL argues that in the first embodi-
ment (the renewal embodiment), “the person of the RU
designates the country,” whereas in the second embodi-
ment (the automatic embodiment), “the pager of the RU
designates the country when sending a confirmation
signal.”
TPL’s argument is not persuasive. It is clear in both
embodiments that the receiving user (the person, not the
device) must designate a country in order for anything to
happen. Nothing in either of those passages suggests
that the receiving user is a device, rather than a person.
TPL admits as much with respect to the first embodi-
25 TECHNOLOGY PATENTS v. DEUTSCHE
ment. Appellant’s Br. at 49 (“In the renewal embodiment,
the person of the RU designates the country . . . .”). With
respect to the second embodiment, TPL claims that the
“pager of the RU” designates the country. In order to
receive a page in the first place, however, the receiving
user must have created an ordered list or manually
designated a country. Figure 5 of the ’870 patent con-
firms that requirement:
TECHNOLOGY PATENTS v. DEUTSCHE 26
The figure shows that the automatic updating of block 75
occurs only after (1) the receiving user has designated a
country (block 65); (2) the paging system cannot find the
receiving user in that designated country (blocks 73, 77,
79); (3) the paging system retrieves the receiving user’s
27 TECHNOLOGY PATENTS v. DEUTSCHE
list of service countries (block 81); and (4) the paging
system receives a confirmation that the page was received
in one of the countries that the user had previously input
when he created his ordered list (block 83). ’870 patent,
col. 7, line 54, through col. 8, line 2. Nothing in the figure
suggests that the receiving user can be a device rather
than a person. It is thus clear that to reach a point at
which anything happens automatically, the receiving user
(the person) has to input (designate) a country.
In any event, even if the specification described a sys-
tem in which the device could designate the country, the
claims do not cover such a system. The claim limitation
at issue expressly recites “designated by the receiving
user.” Because, as we have determined, the receiving
user is a person, and not a person-pager combination, it is
clear that the designation must be done by a person. For
those reasons, we affirm the district court’s construction.
III
TPL next argues that the district court erred in grant-
ing summary judgment of noninfringement to the domes-
tic carriers and to the software providers.
A
TPL asserted independent claim 4 and dependent
claims 5-8 of the ’870 patent against the domestic carri-
ers. TPL contends that the domestic carriers infringe
those claims even if we affirm the district court’s claim
construction, as we have done. We disagree with TPL.
The district court found that “[TPL’s] description of
the accused system simply does not even resemble Claim
4, much less literally match it.” As described above, the
TECHNOLOGY PATENTS v. DEUTSCHE 28
claims asserted against the domestic carriers require that
a receiving user designate a second country. If the system
determines that no second country has been designated, it
initiates paging operations in a predetermined order,
based on an ordered list created by the receiving user of
other countries in which the receiving user might be
located.
TPL’s theory of infringement relies heavily on the fol-
lowing image that TPL introduced into the summary
judgment record:
The image shows what happens in the accused systems
when, for example, an American cell phone user takes a
phone to Europe. The person (the receiving user) must
select a carrier. The top of the image is clearly labeled
“Carrier” (not “Country” or “Location”). Below “Carriers,”
several options are listed. The receiving user can choose
“Automatic,” which allows the phone to automatically
choose a carrier. Otherwise, the receiving user can choose
a specific carrier such as Swisscom, orange CH, etc.
TPL’s theory of infringement is that when a receiving
user selects one of the carriers, he has “designated” a
second country, as required by the claims. Furthermore,
29 TECHNOLOGY PATENTS v. DEUTSCHE
TPL asserts that when the receiving user selects a car-
rier, he also creates an ordered list because the selected
carrier becomes the first country in the list, and the
receiving user’s home country (i.e., the United States)
becomes the second country in the list, thereby satisfying
the “predetermined order” requirement of the claims. The
district court correctly found that TPL’s theory of in-
fringement failed with respect to three claim limitations.
First, the district court found that the accused prod-
ucts do not enable the receiving user to designate a coun-
try. It is clear that the accused products enable a
receiving user to select only a carrier. The image pro-
vided by TPL shows that it is a carrier and not a country
that is selected by the receiving user. It is true that some
of the carriers have a country label within the name (e.g.,
“orange CH,” where CH represents Switzerland; “O2 – de”
where de represents Germany, etc.). But others do not
(e.g., “E-Plus”). It is undisputed that the accused prod-
ucts do not allow a receiving user to select a country apart
from a carrier.
TPL argues that the carrier/country distinction is in-
significant. The district court disagreed, and so do we.
The specification and the claims make clear that the
invention is concerned with the country in which the
receiving user is located, not with the receiving user’s
carrier. For instance, the abstract of the patent states
that “the receiving user inputs a designated country . . . .”
The patent notes that the “invention relates to [a system]
. . . for permitting subscribers to remotely designate
countries in which they are, or expect to be, located.” ’870
patent, col. 1, ll. 15-19. The specification repeatedly
makes references to the receiving user’s location. E.g.,
id., col. 1, ll. 59-61 (prior art systems “do not permit the
subscriber to remotely select or designate countries in
TECHNOLOGY PATENTS v. DEUTSCHE 30
which he or she will most likely be”); col. 2, ll. 32-37 (“It is
apparent from the above that there exists a need in the
art for a more efficient global paging system in which
potential receiving users or subscribers may remotely
input country designations in which they are to be paged,
and/or may remotely input a list of countries in which
they desire paging services.”). The claim language itself
makes clear that it is the country in which the receiving
user is located, not the carrier he is using, that is impor-
tant: “A system for paging a receiving user in a country-
selective paging system . . . knowing what country the
receiving user is located in . . . .” Id., claim 4.
If a receiving user were limited to selecting a carrier
corresponding to the country in which he was located,
TPL’s argument that the carrier/country distinction is
insignificant would be stronger. However, the image
provided by TPL shows multiple carriers and at least
three different country abbreviations: orange CH and
Swisscom correspond to Switzerland; O2 – de, T-Mobile D,
and Vodaphone.de correspond to Germany; and F-
Bouygues corresponds to France. The image thus demon-
strates that a carrier based in one country can serve a
receiving user in another. The receiving user could be
located in, for example, France, but nevertheless select a
carrier with a German or Swiss country code. That
possibility reveals that the accused systems allow a
receiving user to designate a carrier based on which
carriers provide service at the receiving user’s location,
regardless of what country that happens to be. The
accused systems do not care where the receiving user is
located, and they do not enable the receiving user to
designate the country in which he is located, as contem-
plated by the claims; they only allow the receiving user to
select a carrier. Therefore, the accused systems do not
31 TECHNOLOGY PATENTS v. DEUTSCHE
satisfy the claim limitations requiring that a second
country be “designated by the receiving user.”
Second, the accused systems do not meet the “prede-
termined order” limitation of claim 4 because the accused
systems do not enable the receiving user to create an
ordered list. TPL argues that the receiving user creates
an ordered list when the receiving user selects a carrier.
Essentially, TPL claims that when the receiving user
selects a carrier, the system will page the user first in the
home country of the selected carrier, and then in the
United States. According to TPL, that constitutes the
creation of an ordered list of two countries. We reject that
argument.
TPL’s own theory proves that the receiving user does
not create anything, much less an ordered list of coun-
tries. As described above, the receiving user selects a
carrier—nothing more. The patent provides a detailed
description of how the ordered list is created:
Then, or at the same time, the RU at 35 lists the
countries in the order he or she wishes that they
be accessed in the event that no country or area
has been designated. In other words, in step 35
the RU lists his or her accessible countries in the
order in which he or she is most likely to be in
them. For example, if the RU spends most of his
time in the U.S. and Japan, the next most amount
of time in France, some time in the U.K., Spain,
Brazil, and Australia, and very little time in Mex-
ico, the RU would likely, in step 35, list his/her
countries in the following order:
1. United States
2. Japan
3. France
TECHNOLOGY PATENTS v. DEUTSCHE 32
4. Spain
5. United Kingdom
6. Brazil
7. Australia
8. Mexico
Given such a list, the RU may only be paged in
these eight countries.
’870 patent, col. 6, ll. 28-49. TPL has provided no evi-
dence that the accused systems follow a procedure resem-
bling that description in any way.
Even if the accused systems can be viewed as creating
an ordered list of two countries when the receiving user
selects a carrier, it is undisputed that the receiving user
cannot predetermine the order or the content of the list.
The receiving user has no control over the fact that the
United States is the second country in the list. Yet, as the
patent makes clear, the essential purpose of the ordered
list is to allow the receiving user to list countries of his
choice in which he can be paged: “the RU lists his or her
accessible countries in the order in which he or she is
most likely to be in them. . . . Given such a list, the RU
may only be paged in [the listed] countries.” ’870 patent,
col. 6, ll. 31-49. Indeed, the patent implies that being able
to choose the countries in which the receiving user would
like to be paged, and to exclude those in which he does not
wish to be paged, is an important feature of the claimed
invention: “In other words, the RU may not be paged in a
country or coverage area unless that country is listed in
step 33.” Id., col. 6, ll. 24-25. In the accused systems, the
receiving user has no control over the selection of the
United States as a country in the alleged list, nor does he
have control over the order of the alleged list. Accord-
ingly, we agree with the district court that the accused
33 TECHNOLOGY PATENTS v. DEUTSCHE
systems do not satisfy the “predetermined order” re-
quirement of the asserted claims.
Third, we agree with the district court’s conclusion
that the accused systems do not “determine[] if the second
country is currently designated by the receiving user,” as
required by the asserted claims. As noted, the claimed
invention contemplates two methods by which the receiv-
ing user can be contacted: a primary and a fallback. The
primary method involves designation of the receiving
user’s country by the receiving user. If the claimed inven-
tion “determines” that a country has been designated by
the receiving user, it contacts the user in that country. If
the claimed invention “determines” that a second country
has not been designated, it resorts to the second method,
which involves paging the receiving user according to an
ordered list. Which method the system uses depends on
whether the receiving user has “designated” a country.
The system must therefore “determine” whether such a
designation has been made before deciding how to page
the receiving user.
As described above, however, the accused systems al-
low the receiving user to perform only a single action:
selecting a carrier. TPL’s theory requires the selection of
the carrier to constitute both the act of designating the
second country and the act of creating the ordered list, as
TPL’s expert acknowledged:
Q. So there’s no—just so I understand, there’s no
difference that you can identify between the
act of designating and the act of creating the
ordered list?
A: Off the top of my head, I don’t—I don’t think I
can think of any, no.
TECHNOLOGY PATENTS v. DEUTSCHE 34
If the act of selecting a carrier constitutes both designat-
ing a country and creating an ordered list, then the ac-
cused systems have nothing to determine; they have only
one way to page the receiving user. Put simply, TPL has
failed to show that the accused systems “determine”
which of two methods should be used to contact the re-
ceiving user because TPL has not shown that the accused
systems are capable of using alternative methods. Based
on the evidence presented, it appears that the accused
systems page the receiving user by a single method; there
is no “determination” to be made. Accordingly, we affirm
the district court’s finding that the accused products do
not literally infringe the asserted claims.
We also reject TPL’s doctrine of equivalents argu-
ment. As described above, the distinction between select-
ing a carrier and selecting a country is not insignificant in
the context of this patent. The patent is concerned with
allowing the receiving user to select a country in which he
is located or to create a list of countries in which he
expects to be located. In contrast, the accused systems do
not provide for designation of the country in which the
receiving user is located; they provide only for designation
of the carrier serving the receiving user’s location. That is
a fundamental difference between the accused systems
and the claimed invention that goes to the heart of the
claimed invention. Applying the doctrine of equivalents
would bypass each of the claim limitations described
above, i.e., “second country . . . designated by the receiv-
ing user,” “predetermined order,” and “determines if the
second country is currently designated by the receiving
user.” In sum, as the district court observed, the accused
systems “do[] not even resemble” the claimed invention,
so the doctrine of equivalents has no application in this
case.
35 TECHNOLOGY PATENTS v. DEUTSCHE
A final, related issue concerns the district court’s de-
nial of TPL’s motion to amend its claim charts “as futile.”
TPL argues that “[t]he district court’s denial . . . should be
reversed/vacated as a function of the reversal/vacation of
summary judgment in favor of AT&T et al.” Because we
have affirmed the judgment in favor of the domestic
carriers, we need not address that issue.
B
TPL asserted claims 4-6, 8-9, 11-18, and 21-35 against
the software providers. The district court granted sum-
mary judgment of noninfringement to the software pro-
viders with respect to all the asserted claims.
Claims 4-6, 8-9, 13, 15-18, 25, and 29-35 all contain
one or more of the claim limitations discussed above with
respect to the domestic carriers (i.e., “second country
. . . designated by the receiving user,” “predetermined
order,” and “determines if the second country is currently
designated by the receiving user”). Because TPL has not
produced sufficient evidence that the accused systems are
even capable of meeting those limitations, the software
providers cannot infringe them. With respect to those
claims, we affirm the district court’s grant of summary
judgment of noninfringement on that basis.
Claims 11, 12, 14, 21-24, and 26-28 do not contain
those claim limitations. The district court found that
TPL’s contentions with respect to those claims failed
because those claims require multiple actors and TPL
failed to show that the defendants have direction or
control over the end users. In so ruling, the district court
relied on this court’s cases involving “joint” or “divided”
infringement. See BMC Resources, Inc. v. Paymentech,
L.P., 498 F.3d 1373 (Fed. Cir. 2007); Muniauction, Inc. v.
TECHNOLOGY PATENTS v. DEUTSCHE 36
Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). Although
this court has recently revisited the issue of divided
infringement in the en banc decision in Akamai Technolo-
gies, Inc. v. Limelight Networks, Inc., No. 2009-1372 et al.
(Fed. Cir. Aug. 31, 2012), that decision does not affect our
analysis because claims 11, 12, 14, 21-24, and 26-28 do
not present an issue of joint or divided infringement.
That is because, contrary to the district court’s ruling,
those claims do not require performance by multiple
actors. Representative claim 11 requires action only by
the originating user, and TPL’s claim charts for each of
the listed claims do not require multiple actors. Fur-
thermore, TPL appears to have raised a single-actor
theory in an August 4, 2008, opposition to a motion to
dismiss. In that pleading, TPL argued that “[t]he sender
puts the invention into action or service, and controls the
transmission of messages.” TPL cited NTP, Inc. v. Re-
search in Motion, Ltd., 418 F.3d 1282, 1313-17 (Fed. Cir.
2005), for support. In that case, we noted that “[t]he
ordinary meaning of ‘use’ is to ‘put into action or service.’”
Id. at 1317. And in Centillion Data Sys., LLC v. Qwest
Communications International, Inc., 631 F.3d 1279, 1284
(Fed. Cir. 2011), we held that “to ‘use’ a system for pur-
poses of infringement, a party must put the invention into
service, i.e., control the system as a whole and obtain
benefit from it.” Importantly, we noted that the user does
not necessarily need to “have physical control over” all
elements of a system in order to “use” a system. Id. at
1284. Accordingly, we vacate the district court’s judg-
ment with respect to claims 11, 12, 14, 21-24, and 26-28.
On remand, the court should consider whether TPL has
produced sufficient evidence to create a genuine dispute
as to any material fact with respect to infringement of
those claims.
37 TECHNOLOGY PATENTS v. DEUTSCHE
Moreover, unless the software providers are barred
from raising the argument at the district court for some
reason, the district court may also consider the software
providers’ argument that “TPL has no evidence that
Clickatell and Yahoo!’s users designate the country ‘in
which [the] receiving user [i.e., the Cellular Customer] is
to be paged.” That argument was raised for the first time
on appeal as an alternative ground of affirmance. Be-
cause it was not raised previously, we decline to address
it. The issue is most appropriately considered in the first
instance by the district court.
IV
The district court dismissed the claims against the
foreign carriers for lack of personal jurisdiction. The
court held that it lacked personal jurisdiction over the
foreign carriers under Fed. R. Civ. P. 4(k)(1) because
Maryland’s long-arm statute does not confer jurisdiction
over the foreign carriers. It further held that even if
Maryland’s long-arm statute conferred personal jurisdic-
tion over the foreign carriers, personal jurisdiction could
not be exercised over those defendants consistent with
due process because the foreign carriers do not have
sufficient “minimum contacts” with the State of Mary-
land. The district court also held that it lacked personal
jurisdiction over the foreign carriers under Fed. R. Civ. P.
4(k)(2), referred to as the “federal long-arm statute,”
Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip.
Medico, 563 F.3d 1285, 1290 (Fed. Cir. 2009), because the
foreign carriers do not have sufficient contacts with the
United States as a whole such that the exercise of per-
sonal jurisdiction over them would comport with due
process.
TECHNOLOGY PATENTS v. DEUTSCHE 38
TPL argues that the district court’s ruling on personal
jurisdiction was erroneous and that, in any event, the
court should have permitted TPL to conduct jurisdictional
discovery. In light of our ruling on the summary judg-
ment granted to the domestic carriers, it is unnecessary
for us to reach the question whether the foreign carriers
were properly before the district court under either sub-
section of Fed. R. Civ. P. 4(k). The allegations against the
foreign carriers in the complaint make clear that TPL’s
theory of infringement with respect to the U.S. activities
of the foreign carriers depends on the foreign carriers’
“roaming agreement” contracts with domestic carriers.
TPL alleges that those agreements enable the customers
of the foreign carriers to use the services of the domestic
carriers to send and receive messages in the United
States, “thereby infringing the patents in suit,” and that
the roaming agreements make the foreign carriers jointly
liable for infringement with the domestic carriers. TPL
acknowledges in its brief that the foreign carriers’ liability
for infringement “arises directly from these messaging
agreements/contracts” (TPL Br. at 14), which enable
foreign carrier customers to use domestic carrier net-
works while traveling in the United States. That is, the
infringement case against the foreign carriers necessarily
depends on proof that the messaging services provided by
the domestic carriers are infringing. As the foreign
carriers put it in their brief, “the foreign carriers’ alleged
infringement ‘piggybacks’ the U.S. carriers’ alleged in-
fringement and occurs when the foreign carriers’ foreign
subscribers travel to the United States and send a mes-
sage.” TPL does not take issue with that characterization
of its theory of infringement in its briefs, and it conceded
at oral argument that there is “much overlap” between
the claims against the domestic carriers and the claims
against the foreign carriers; TPL added that depending on
the rationale for the court’s ruling, a decision in favor of
39 TECHNOLOGY PATENTS v. DEUTSCHE
the domestic carriers would dispose of the case against
the foreign carriers as well.
The rationale of the ruling in favor of the domestic
carriers is that the messaging services that the domestic
carriers offer (and that the customers of the foreign
carriers are able to use pursuant to the roaming agree-
ments) do not infringe. Based on TPL’s theory of in-
fringement and the ground on which the district court
ruled in favor of the domestic carriers, the district court’s
determination that the domestic carriers do not infringe
the ’870 patent necessarily means that the foreign carri-
ers also do not infringe. Our ruling sustaining the district
court’s decision in favor of the domestic carriers thus
dooms TPL’s claim of infringement against the foreign
carriers as well. For that reason, it is unnecessary for us
to decide whether the district court was correct in dis-
missing the case against the foreign carriers for lack of
personal jurisdiction. 1
1 A federal court generally may not rule on the mer-
its of a case without first determining that it has jurisdic-
tion over the subject matter and the parties. Sinochem
Int’l Co. v. Malaysian Int’l Shipping Co., 549 U.S. 422,
430-31 (2007). In a case such as this one, however, where
the court plainly has subject matter jurisdiction and has
personal jurisdiction over the domestic carriers, and
where the merits issues are the same for both the domes-
tic and foreign carriers, it is permissible for the court to
address the merits of the claims against the foreign
carriers before addressing the issue of personal jurisdic-
tion as to those defendants. See Chevron Corp. v. Na-
ranjo, 667 F.3d 232, 246 n.17 (2d Cir. 2012). We have
already ruled in favor of the domestic carriers on the
merits, so even if we were to hold that the district court
has personal jurisdiction over the foreign carriers, the
consequence would be to reinstate the plaintiff’s claims
against those defendants only to have them promptly
dismissed on the merits.
TECHNOLOGY PATENTS v. DEUTSCHE 40
V
In sum, we hold that the district court properly
granted summary judgment of noninfringement to the
domestic carriers and that the judgment against the
domestic carriers applies equally to the foreign carriers;
we affirm the district court’s grant of summary judgment
of noninfringement to the software providers with respect
to claims 4-6, 8-9, 13, 15-18, 25, and 29-35, but we vacate
the district court’s grant of summary judgment of nonin-
fringement to the software providers with respect to
claims 11, 12, 14, 21-24, and 26-28 and remand those
claims for proceedings consistent with this opinion.
Costs are awarded to the domestic carriers and the
foreign carriers. As to the claims against the software
providers, all parties shall bear their own costs for this
appeal.
AFFIRMED IN PART and VACATED AND
REMANDED IN PART