SIRF Technology v. ITC and Broadcom (Fed. Cir. 2010)
In a 2009 decision, the International Trade Commission (ITC) ruled that SIRF and four others were violating Section 337 of the US Tariff Act of 1930 by importing and selling products with GPS devices that infringe patents owned by Broadcom (via a 2007 acquisition of Global Locate). See U.S. Patent Nos. 6,417,801, 6,606,346, 6,651,000, 6,704,651, 6,937,187, and 7,158,080. The patents claim various forms of “assisted-GPS” that improve GPS signal reliability and location calculation speed.
Patent Ownership and Standing: One of the inventors conceived of the invention while an employee of Magellan (another GPS company) and while under an employee agreement that operated as an effective assignment of “all inventions . . . which are related to or useful in the business of the Employer . . . and which were . . . conceived . . . during the period of the Employee’s employment, whether or not in the course of the Employee’s employment.” Magellan was aware of the inventions, but never pursued ownership rights. Here, in an effort to disrupt Broadcom’s standing to sue, the defendants asserted that Magellan should be considered a co-owner of the patent rights.
Many patent assignment issues are determined under the appropriate state law. However, federal patent law is used to determine whether an assignment is an automatic assignment or only an agreement to later assign rights. Applying federal law, the Federal Circuit interpreted this agreement as an automatic assignment that effectively assigns rights to inventions automatically upon their invention.
Also as a matter of federal patent law, the court held that recordation of an assignment creates a rebuttable presumption that the assignment is valid. Here, the appellate panel agreed that the defendants had not provided sufficient evidence to rebut that presumption. In particular, the defendants had failed to prove that the prior-employer Magellan was the true owner.
“If Magellan and Abraham recognized that Global Locate was the owner of the trade secret rights to the invention, it logically follows that Magellan and Abraham did not think that Magellan was the owner of similar rights that eventually became the subject of the ’346 patent.”
Patentable Subject Matter: The asserted claims included several methods of calculating position. On appeal, the Federal Circuit confirmed that those methods fit within the machine-or-transformation test of Bilski and therefore are patentable. In Bilski, the court held that the a patentable method claim must be either (a) implemented using particular machine or (b) transform an article from one state to another. In addition, the machine-or-transformation must create a “meaningful limit on the scope of the claims.” Here, the court held that the methods as claimed “could not be performed without the use of a GPS receiver.” And that limits were meaningful because the GPS receiver is not simply “an obvious mechanism for permitting a solution to be achieved more quickly.”
We also think that the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims. In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. We are not dealing with a situation in which there is a method that can be performed without a machine. Contrary to appellants’ contention, there is no evidence here that the calculations here can be performed entirely in the human mind. Here, as described, the use of a GPS receiver is essential to the operation of the claimed methods.
Comment: I certainly believe that the patents are directed toward the type of subject matter that should be patentable. However, the Federal Circuit’s analysis here is not convincing. Rather, the fact that “a GPS receiver is essential to the operation of the claimed methods” indicates that inclusion of the “GPS receiver” limitation is not meaningful.
The question of whether the inventions were “related to or useful in the business” of Magellan was a matter of California state law.
Divided Infringement: An portion of the decision that will be interesting for patent prosecutors is directed toward joint infringement. Here, the court upheld the patentee’s efforts to direct claims toward certain particular actors and therefore avoid the Muniauction problem. Here, the steps of “communicating” and “transmitting” to a user-device were interpreted as steps that did not require end-user action even though the actual process involves end-user devices downloading the transmitted data. Thus, despite what your speech teachers taught, communication can be one-way.