By Barry HermanFurther to our October 29, 2009 post, on April 12, 2010, the Federal Circuit issued its opinion in SiRF Technology, Inc. v. ITC (2009-1262). In the opinion, the Federal Circuit affirmed the ITC’s findings that Global Locate, Inc (“GL”) had standing to assert U.S. Patent No. 6,606,346 (the ‘346 patent) and that SiRF Technology (“SiRF”) directly infringed both U.S. Patent Nos. 6,704,651 (the ‘651 patent) and 6,651,000 (the ‘000 patent), owned by GL.
By way of background, GL filed a complaint with the ITC against SiRF in 2007, alleging that SiRF’s importation and sale of certain Global Positioning System (“GPS”) chips, chipsets, products, and software infringed the ‘346 patent, the ‘651 patent, the ‘000 patent, U.S. Patent No. 6,937,187 (the ‘187 patent), U.S. Patent No. 7,158,080 (the ‘080 patent), and U.S. Patent No. 6,417,801 (the ‘801 patent). The ITC instituted an investigation (Inv. No. 337-TA-602). ALJ Carl C. Charneski issued an initial determination on August 8, 2008, concluding that all asserted claims were valid and infringed. SiRF and the Commission Investigative Staff petitioned for review of several of ALJ Charneski’s rulings, but the ITC determined to review only three: (1) whether GL had standing to assert the ‘346 patent, (2) whether SiRF directly infringed the ‘651 patent, and (3) whether SiRF directly infringed the ‘000 patent. The ITC declined to review aspects of the ALJ’s decision relating to claim construction, invalidity, and infringement. On January 15, 2009, the ITC found that GL had standing to assert the ‘346 patent and that SiRF directly infringed both the ‘651 patent and the ‘000 patent. The ITC did not address several issues raised by SiRF, including claim construction issues and whether the intervening In re Bilski decision rendered certain of the claims of the ‘187 patent and the ‘801 patent not eligible under 35 U.S.C. § 101. The ITC issued a limited exclusion order and cease-and-desist orders, prohibiting the importation and sale of covered GPS devices.
SiRF appealed the ITC decision. In its appeal, SiRF asserted that the investigation should have been terminated as to the ‘346 patent because of lack of standing due to the failure to join a co-owner of the patent. Specifically, SiRF argued that the invention was conceived while the inventor worked for another company, and that the other company should be deemed a co-owner of the patent. In reaching its decision to affirm the ITC’s finding that GL had standing, the Federal Circuit considered the language of the inventor’s employee agreement with the other company. That agreement required that employees assign “all inventions… which are related to or useful in the business” to the company. The Federal Circuit agreed with the ITC’s findings that SiRF did not prove that the ‘346 patent was “related to or useful in” the other company’s business, and thus failed to establish that the other company was a co-owner of the patent.
Regarding the ‘651 and ‘000 patents, SiRF asserted that it did not infringe the two patents because it did not perform all of the steps in the method claims since, according to SiRF, certain steps of the method claims directed to satellite communication were performed by customers and end users. The ITC found joint infringement of such method claims. However, the Federal Circuit did not address joint infringement. Instead, the Court reviewed the claim construction, and concluded that SiRF directly infringed the claims.
According to the Federal Circuit’s claim construction, the “communicating” step of claim 1 of the ‘651 patent and the “transmitting” step of the ‘000 patent are not limited to direct communication or transmission. Accordingly, SiRF performed these steps by initiating the process of communicating or transmitting, if the files are actually transmitted to the end users. No downloading - the step completed by the receiver- is required by the claim. The Federal Circuit also considered the construction of the “processing” limitation in claim 1 of the ‘651 patent, and the “representing” step in claim 1 of the ‘000 patent. The parties agreed that these steps must take place in the mobile GPS device. SiRF asserted that this meant the end users had to initiate the steps. The Federal Circuit disagreed, and found that SiRF infringed since its devices and software dictate the performance of the “processing” and representing” steps. The Federal Circuit noted that “once the GPS receiver is enabled and ready to process the data, only SiRF’s actions are involved in ‘processing’ or ‘representing’ the data.” Since SiRF performed all of the steps, the Federal Circuit found direct infringement.
The Federal Circuit found SiRF’s arguments regarding certain issues which the ITC declined to review unpersuasive, including issues regarding claim construction in the ‘080 patent, the ‘801 patent, and the ‘187 patent. However, the Federal Circuit did comment on SiRF’s In re Bilski argument. SiRF asserted that the methods of the ‘801 and ‘187 patents do not meet the “tied to a particular machine or apparatus” or “transforms a particular article into a different state or thing” tests announced in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), rendering the claims not patent-eligible under 35 U.S.C. § 101. SiRF contended that the claimed methods could be performed entirely in the human mind. The Federal Circuit disagreed. The Court noted that claim 1 of the ‘801 patent required “pseudoranges” to estimate the distance from “the GPS receiver to a plurality of GPS satellites.” Claim 1 of the ‘187 patent requires the estimation of “states” that are “associated with the satellite signal receiver, and the formation of a “dynamic model… to compute [the] position of the satellite signal receiver.” The Court found that the methods could not be performed without the use of a GPS receiver, and that the presence of the GPS receiver placed a “meaningful limit on the scope of the claims.” Thus, the Court held that the claims of the ‘801 and ‘187 patents were directed to patentable subject matter.