Monday, April 12, 2010

Fed. Cir.: "Direct" Action Not Implied When Method Step is Performed

SIRF Technology v. ITC, No. 09-1262 (April 12, 2010)

SiRF Technology, Inc. (“SiRF”) and other defendants appealed the decision of the ITC finding that certain GPS devices infringed patents owned by Global Locate.  One of the claims-at-issue recited

 A method of receiving global positioning system (GPS) satellite signals comprising:

receiving satellite ephemeris at a first location;
communicating the satellite ephemeris to a mobile GPS receiver at a second location; and
processing satellite signals received at the mobile GPS receiver using the ephemeris to reduce code and frequency uncertainty in the mobile GPS receiver to improve acquisition sensitivity of the mobile GPS receiver.
During the ITC proceeding, the Commission found joint infringement, where the steps of "communicating" and "processing" were found to be performed by one party, under the control and direction of another party.
Appellants argue that the performance of these steps necessarily involves actions by SiRF’s customers and by the end users of the GPS devices. They argue that in order for the data to be “communicat[ed]” or “transmit[ed]” to the GPS receiver, the data must travel first from SiRF’s server to the servers of its customers (the intermediate distributors and GPS product manufacturers). Then, SiRF’s customers must forward this data to the mobile GPS receivers, and the end users of the GPS devices must download the data from the customers’ servers.
After construing the claims, the Fed. Cir. rejected this argument:
Neither the claim language nor the patent specification requires that the communication/transmission be direct. In fact, indirect communication is specifically contemplated. See ’651 patent col.3 ll.42-48 (“The link may be a landline, or other direct communications path . . . . Alternatively, this link may have several parts . . . .”). Therefore, we construe these limitations as encompassing “communicating, whether direct or indirect” and “transmitting, whether direct or indirect.”

With respect to infringement, under this construction it is clear that SiRF performs the step of communicating/transmitting the files to the end users’ devices because SiRF initiates the process of transmitting and communicating, and the files are actually transmitted to the end users. The entire “end-to-end service,” as SiRF’s marketing describes it, was designed by SiRF so that the EE ["extended-ephemeris"] files would be transmitted to end-user GPS devices containing SiRF chips and software. Indeed, the EE files generated by SiRF only work in the end-user devices of those devices containing SiRF chips and SiRF software. Here, it is true that the “communicati[ng]” or “transmitting” can only occur if the customer forwards the data to the end user and the end user downloads the data. However, the actions of “forwarding” or “downloading” are not required by the claims, and, therefore, the fact that other parties perform these actions does not preclude a finding of direct infringement. By analogy, if a claim for a method of making a telephone call included the limitation: “placing a telephone call to a telephone at a second location,” the fact that the call must first be routed through a switched telephone network, and then eventually to the eventual recipient, would not prevent this claim limitation from being satisfied. Therefore, we conclude SiRF indirectly transmits or communicates the files to the GPS receivers and thereby meets these claim limitations.
PATENTABLE SUBJECT MATTER
A GPS receiver is a machine and is integral to each of the claims at issue . . . [the claim] also refers to “computing absolute position” by updating an “estimate of position of the GPS receiver,” providing an estimate of the time at which a GPS receiver receives a plurality of satellite signals, and computing the position “of the GPS receiver.”  Further, claim 1 requires “pseudoranges” that estimate the distance from “the GPS receiver to a plurality of GPS satellites.” Pseudoranges, which are the distances or estimated distances between satellites and a GPS receiver, can exist only with respect to a particular GPS receiver that receives the satellite signals . . . It is clear that the methods at issue could not be performed without the use of a GPS receiver; indeed without a GPS receiver it would be impossible to generate pseudoranges or to determine the position of the GPS receiver whose position is the precise goal of the claims.
 
We also think that the presence of the GPS receiver in the claims places a meaningful limit on the scope of the claims . . . 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 . . . we hold that the claims at issue are properly directed to patentable subject matter as they explicitly require the use of a particular machine (a GPS receiver) and could not be performed without the use of such a receiver.
CHALLENGING A PATENT ASSIGNMENT (BURDEN OF PROOF)
The recording of an assignment with the PTO is not a determination as to the validity of the assignment. See 37 C.F.R. § 3.54. However, we think that it creates a presumption of validity as to the assignment and places the burden to rebut such a showing on one challenging the assignment. Such an understanding is consistent with and supported by the provisions of 35 U.S.C. § 261.
Read/download a copy of the opinion here (link)

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