by Dennis Crouch
InterDigital v. USITC and Nokia (Fed. Cir. 2012)
InterDigital is a publicly traded company whose primary revenue comes from patent licenses. The majority of 3G mobile handset manufacturers pay royalties to the company. After conducting its investigation, the US International Trade Commission (USITC) found that Nokia did not infringe InterDigital’s patents. On appeal, the Federal Circuit has reversed based upon the USITC’s improper and unduly narrow construction of the claim terms “code” and “increased power level.”
The USITC was designed to protect US industry from “unfair” foreign competition. Thus, the staute includes a “domestic industry” requirement that must be satisfied as a precondition of enforcing patent rights through the USITC. In the appeal, Nokia argued that InterDigital could not satisfy the domestic industry requirement. That argument was rejected by the USITC and on appeal as well. The Federal Circuit held particularly that “patent licensing alone” can be sufficient to satisfy the US industry requirement and that the statute does not require that any actual articles covered by the patent be manufactured in this country. “That is, the domestic industry requirement is satisfied if there is a domestic industry based on substantial investment in the patent’s exploitation where the exploitation is achieved by various means, including licensing.” (internal formatting removed).
Writing in dissent, Judge Newman would have sided with the accused infringer and held the patent not-infringed. Newman writes:
The panel majority’s enlargement beyond the invention described in the patents, in disregard of the protocols of claim construction, simply adds uncertainty to the patent grant. In today’s technology-based commerce, rational economics requires that the patent provide a reliable basis for investment. The patentee is in control of the specification that describes the invention. The panel majority’s theory that “the inventors’ failure to include a reference to the alternative embodiment in the specification does not justify excluding that embodiment from the coverage of the claims” is a departure from routine rules of the meaning of legal documents, and in negation of the notice purpose of the patent claim. From this unsound approach to claim construction, and its incorrect conclusion on the facts of this case, I respectfully dissent.
Judge Newman’s suggestion here is to give claim terms a narrow definition when the patentee uses an ambiguous term and does not provide any limiting definition to that term.