HTC Corp. v. IPCom

The oral argument in HTC Corp. v. IPCom, App. No. 2011-1004 (Fed. Cir. 2012) is an interesting oral argument that focuses on claim construction issues.  The case is also a good example of how the word “that” can be dangerous in drafting claims.

An exemplary claim at issue was claim 1:

A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

storing link data for a link in a first base station, holding in reserve for the link resources of the first base station, and

when the link is to be handed over to the second base station:

initially maintaining a storage of the link data in the first base station,

initially causing the resources of the first base station to remain held in reserve, and

at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

The point of contention was whether the word “that” referred back to “mobile station” or referred back to “network.” 

For clarity, the court enumerated the claim elements as follows:

[1] A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

[2] storing link data for a link in a first base station,

[3] holding in reserve for the link resources of the first base station, and

[4] when the link is to be handed over to the second base station:

[5] initially maintaining a storage of the link data in the first base station,

[6] initially causing the resources of the first base station to remain held in reserve, and

[7] at a later timepoint . . . deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

[8] an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

The court concluded that the word “that” referred back to the word network and that the six functions in paragraphs 2-7 merely define the environment in which the mobile station operates.  

I’m left wondering if the patent owner won the battle but lost the war.  It strikes me that the claim now boils down to:

A mobile station … comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

As you can see, the newly construed claim is a single means plus function claim.  (And, if you had any doubt, the opinion notes that the parties agreed that the claim element is a means plus function element.)  Section 112, paragraph 6 permits combination claims to use means plus function language; but, the court recognized in In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983)  that single means claims are invalid under section 112, paragraph 6.

You can listen to the oral argument [here].

You can read the court’s opinion here: [Read].

Comments are closed.