601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`
`
`
`United States Court of Appeals,
`Federal Circuit.
`SIRF TECHNOLOGY, INC., E–Ten Corp., Pharos
`Science & Applications, Inc., MiTAC International
`Corp., and Mio Technology Limited, USA, Appel-
`lants,
`v.
`INTERNATIONAL TRADE COMMISSION, Ap-
`pellee.
`and
`Broadcom Corporation and Global Locate, Inc., In-
`tervenors.
`
`No. 2009–1262.
`April 12, 2010.
`
`
`
`
`
`
`
`
`Background: Alleged infringers of six patents in the
`field of global positioning system (GPS) technology
`appealed decision of the International Trade Com-
`mission (ITC), finding that they violated the Tariff Act
`through unlawful importation, sale for importation,
`and sale after importation of certain accused devices.
`
`Holdings: The Court of Appeals, Dyk, Circuit Judge,
`held that:
`(1) substantial evidence supported ITC's finding that
`patent assignee, acting alone, had standing to assert
`claims of one of the patents;
`(2) one of the alleged infringers directly infringed two
`of the patents; and
`(3) two other patents recited patentable subject matter.
`
`
`Affirmed.
`
`
`[1] Patents 291
`
`West Headnotes
`
`324.5
`
`
`
`Page 1
`
`324.55(1)
`
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.5 k. Scope and extent of review
`in general. Most Cited Cases
`
`Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.55 Questions of Fact, Verdicts,
`and Findings
` 291k324.55(1) k. In general. Most
`Cited Cases
`
`
`22
`
`The question of standing to assert a patent claim is
`jurisdictional, and is reviewed de novo; however,
`underlying factual determinations upon which the
`conclusion of standing is based are reviewed for sub-
`stantial evidence.
`
`[2] Customs Duties 114
`
`114 Customs Duties
` 114I Validity, Construction, and Operation of
`Customs Laws in General
` 114k22 k. Prohibition of importation. Most
`Cited Cases
`
`Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k286 k. Persons entitled to sue. Most
`
`286
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00001
`
`Apple Exhibit 1036
`
`

`
`
`
`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`Cited Cases
`
`Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k290 Parties
` 291k290(1) k. Complainants. Most
`Cited Cases
`
`
`290(1)
`
`Absent the voluntary joinder of all co-owners of a
`patent, a co-owner acting alone will lack standing to
`assert a patent claim; this rule applies equally in In-
`ternational Trade Commission (ITC) investigations.
`
`[3] Labor and Employment 231H
`
`231H Labor and Employment
` 231HV Intellectual Property Rights and Duties
` 231Hk308 Inventions, Discoveries, or Crea-
`tions of Employees
` 231Hk310 k. Contracts. Most Cited Cases
`
`
`310
`
`Employee-assignment agreement providing that
`“[t]he Employee assigns all of his or her right, interest,
`or title in any Invention to the Employer to the extent
`allowed by law” provided for automatic assignment;
`by using the language “Employee assigns,” the em-
`ployee-assignment agreement expressly granted rights
`with no further action needed on the part of the em-
`ployee.
`
`[4] Federal Courts 170B
`
`170B Federal Courts
` 170BXV State or Federal Laws as Rules of Deci-
`sion; Erie Doctrine
` 170BXV(B) Application to Particular Matters
` 170Bk3063 Substantive Matters
` 170Bk3078 Contracts, Sales, and As-
`
`3078(1)
`
`Page 2
`
`signments
` 170Bk3078(1) k. In general. Most
`Cited Cases
` (Formerly 170Bk412.1)
`
`
`183
`
`The question whether an agreement provides for
`automatic assignment is a matter of federal law.
`
`[5] Patents 291
`
`291 Patents
` 291X Title, Conveyances, and Contracts
` 291X(A) Rights of Patentees in General
` 291k183 k. Assignment of invention or right
`to patent. Most Cited Cases
`
`
`If a contract expressly grants rights in future in-
`ventions, no further act is required once an invention
`comes into being, and the transfer of title occurs by
`operation of law.
`
`[6] Customs Duties 114
`
`114 Customs Duties
` 114I Validity, Construction, and Operation of
`Customs Laws in General
` 114k22 k. Prohibition of importation. Most
`Cited Cases
`
`
`22
`
`International
`Substantial evidence supported
`Trade Commission's (ITC) finding, in concluding that
`assignee of patent directed to signal correlation in
`global positioning system (GPS) receivers, acting
`alone, had standing to assert claims of patent, that
`there was no evidence that invention of patent was
`“related to or useful” in one of the named inventor's
`employer's business within the meaning of employ-
`ee-assignment agreement between inventor and his
`employer, so as to establish inventor's employer had a
`co-ownership interest in patent, in light of evidence
`that employer sued assignee as well as inventor per-
`sonally for trade secret misappropriation, and as part
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00002
`
`

`
`
`
`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`of the settlement agreement employer and inventor
`appeared to recognize that assignee was the owner of
`the invention in question, stating that nothing in the
`agreement precluded assignee from using the tech-
`nology involved in the asserted claims of the patent.
`
`[7] Federal Courts 170B
`
`170B Federal Courts
` 170BXV State or Federal Laws as Rules of Deci-
`sion; Erie Doctrine
` 170BXV(B) Application to Particular Matters
` 170Bk3063 Substantive Matters
` 170Bk3074 Labor and Employment
` 170Bk3074(1) k. In general. Most
`Cited Cases
` (Formerly 170Bk412.1)
`
`
`3074(1)
`
`448
`
`Question of whether invention was “related to or
`useful in the business of the Employer” within the
`meaning of employee-assignment agreement was a
`matter of state, rather than federal law.
`
`[8] Evidence 157
`
`157 Evidence
` 157XI Parol or Extrinsic Evidence Affecting
`Writings
` 157XI(D) Construction or Application of
`Language of Written Instrument
` 157k448 k. Grounds for admission of ex-
`trinsic evidence. Most Cited Cases
`
`Labor and Employment 231H
`
`231H Labor and Employment
` 231HV Intellectual Property Rights and Duties
` 231Hk313 Actions
` 231Hk323 Evidence
` 231Hk323(3) k. Admissibility. Most
`Cited Cases
`
`
`323(3)
`
`Page 3
`
`Under California law, when a contract is ambig-
`uous, extrinsic evidence is admissible to prove a
`meaning to which the contract is reasonably suscep-
`tible; such extrinsic evidence may include evidence of
`the nature of the employer's business and the nature of
`the employee's work for the employer, as well as ev-
`idence of the conduct of the parties, i.e., evidence
`probative of whether they regarded the invention as
`falling within the agreement.
`
`[9] Patents 291
`
`291 Patents
` 291X Title, Conveyances, and Contracts
` 291X(B) Assignments and Other Transfers
` 291k196 Requisites and Validity of As-
`signments and Grants
` 291k199 k. Recording. Most Cited
`Cases
`
`
`199
`
`The recording of an assignment with the Patent
`and Trademark Office (PTO) is not a determination as
`to the validity of the assignment; however, it creates a
`presumption of validity as to the assignment and
`places the burden to rebut such a showing on one
`challenging the assignment. 37 C.F.R. § 3.54.
`
`[10] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.5 k. Scope and extent of review
`in general. Most Cited Cases
`
`
`324.5
`
`Patent claim construction is an issue of law sub-
`ject to de novo review.
`
`[11] Patents 291
`
`
`101(2)
`
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`
`
`Page 00003
`
`

`
`
`
`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(2) k. Construction in general. Most
`Cited Cases
`
`
`Second step of patent teaching sending satellite
`ephemeris to a mobile global positioning system
`(GPS) receiver through an assisted-GPS (A-GPS)
`network and using the ephemeris at the receiver to
`more precisely locate the satellites and narrow the
`search for weak signals, providing for “communica-
`tion [sic] the satellite ephemeris to a mobile GPS
`receiver at a second location,” encompassed com-
`municating, whether direct or indirect.
`
`[12] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(2) k. Construction in general. Most
`Cited Cases
`
`
`101(2)
`
`235(2)
`
`Third step of patent teaching the compaction of
`satellite ephemeris data in order for it to be received
`more quickly by global positioning system (GPS)
`receivers
`that uncompacted data, providing for
`“transmitting the formatted data to a remote receiver,”
`encompassed transmitting, whether direct or indirect.
`
`[13] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(A) What Constitutes Infringement
` 291k233 Patents for Machines or Manu-
`factures
` 291k235 Identity of Principle or Mode
`of Operation
` 291k235(2) k. Particular patents or
`devices. Most Cited Cases
`
`Page 4
`
`
`
`Alleged infringer of two patents in the field of
`global positioning system (GPS) technology indirectly
`transmitted or communicated relevant files to GPS
`receivers, as required to meet claim limitations
`providing for “communication [sic] the satellite
`ephemeris to a mobile GPS receiver at a second loca-
`tion,” and “transmitting the formatted data to a remote
`receiver,” even
`though “communicati[ng]” or
`“transmitting” could only occur if the customer for-
`warded the data to the end user and the end user
`downloaded the data; alleged infringer initiated the
`process of transmitting and communicating, and the
`files were actually transmitted to the end users.
`
`[14] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(2) k. Construction in general. Most
`Cited Cases
`
`
`101(2)
`
`“Processing” and “representing” steps of claims
`of patents in the field of global positioning system
`(GPS) technology, requiring “processing [the] satellite
`signals received at the mobile GPS receiver,” and
`“representing [the] formatted data in a second format
`supported by the remote receiver,” took place in a
`GPS receiver that was enabled and ready to process
`data.
`
`[15] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.5 k. Scope and extent of review
`in general. Most Cited Cases
`
`
`324.5
`
`Whether a patent claim is drawn to patent-eligible
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00004
`
`

`
`
`
`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`subject matter is an issue of law that is reviewed de
`novo.
`
`[16] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.11 k. Use or operation of machine or
`apparatus as affecting process. Most Cited Cases
`
`
`7.11
`
`In determining whether a claimed process is tied
`to a particular machine or apparatus, so as to be pa-
`tent-eligible, a “machine” is a concrete thing, con-
`sisting of parts, or of certain devices and combination
`of devices, which includes every mechanical device or
`combination of mechanical powers and devices to
`perform some function and produce a certain effect or
`result. 35 U.S.C.A. § 101.
`
`[17] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.14 k. Particular processes or methods
`as constituting invention. Most Cited Cases
`
`
`7.14
`
`Global positioning system (GPS) receiver was a
`“machine” integral to claims of patents in the field of
`GPS technology, expressly directed to calculating an
`absolute position of a GPS receiver, and requiring the
`estimation of “states” “associated with a satellite
`signal receiver,” and a “dynamic model . . . to compute
`[the] position of the satellite signal receiver,” for
`purposes of determining whether claims recited pa-
`tentable subject matter. 35 U.S.C.A. § 101.
`
`[18] Patents 291
`
`291 Patents
`
`7.14
`
`Page 5
`
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.14 k. Particular processes or methods
`as constituting invention. Most Cited Cases
`
`
`Presence of global positioning system (GPS) re-
`ceiver in claims of patents in the field of GPS tech-
`nology, expressly directed to calculating an absolute
`position of a GPS receiver, and requiring the estima-
`tion of “states” “associated with a satellite signal re-
`ceiver,” and a “dynamic model . . . to compute [the]
`position of the satellite signal receiver,” placed a
`meaningful limit on the scope of the claims, for pur-
`poses of determining whether the claims recited pa-
`tentable
`subject matter
`under
`the ma-
`chine-or-transformation test, absent evidence that the
`calculations could have been performed entirely in the
`human mind. 35 U.S.C.A. § 101.
`
`[19] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.11 k. Use or operation of machine or
`apparatus as affecting process. Most Cited Cases
`
`
`7.11
`
`In order for the addition of a machine to impose a
`meaningful limit on the scope of a claim, for purposes
`of determining whether a claim recites patentable
`subject matter under the machine-or-transformation
`test, 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 so-
`lution to be achieved more quickly, i.e., through the
`utilization of a computer for performing calculations.
`35 U.S.C.A. § 101.
`
`Patents 291
`
`291 Patents
` 291XIII Decisions on the Validity, Construction,
`
`328(2)
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00005
`
`

`
`
`
`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`and Infringement of Particular Patents
` 291k328 Patents Enumerated
` 291k328(2) k. Original utility. Most Cited
`Cases
`
`
`328(2)
`
`6,417,801, 6,651,000, 6,704,651. Construed and
`Ruled Infringed.
`
`Patents 291
`
`291 Patents
` 291XIII Decisions on the Validity, Construction,
`and Infringement of Particular Patents
` 291k328 Patents Enumerated
` 291k328(2) k. Original utility. Most Cited
`Cases
`
`
`6,606,346, 7,158,080. Infringed.
`
`328(2)
`
`
`Patents 291
`
`291 Patents
` 291XIII Decisions on the Validity, Construction,
`and Infringement of Particular Patents
` 291k328 Patents Enumerated
` 291k328(2) k. Original utility. Most Cited
`Cases
`
`
`6,937,187. Valid and Infringed.
`
`
`*1322 James L. Quarles III, Michael D. Esch, Todd C.
`Zubler, Wilmer Cutler Pickering Hale, Washington,
`DC, William F. Lee, Michael J. Summersgill, Wilmer
`Cutler Pickering Hale, Boston, MA, S. Calvin Wal-
`den, Wilmer Cutler Pickering Hale, New York, NY,
`for Intervenors.
`
`Gregory A. Castanias, Thomas J. Davis, Jones Day,
`Washington, DC, Thomas V. Heyman, Todd R.
`Geremia, Iman Lordgooei, Jones Day, New York, NY,
`for Appellants.
`
`Page 6
`
`
`Daniel E. Valencia, Andrea C. Casson, James M.
`Lyons, U.S. International Trade Commission, Wash-
`ington, DC, for Appellee.
`
`Before MICHEL, Chief Judge, CLEVENGER, and
`DYK, Circuit Judges.
`
`DYK, Circuit Judge.
`SiRF Technology, Inc. (“SiRF”), E–TEN Infor-
`mation Systems Co., Ltd. (“E–TEN”), Pharos Science
`& Applications, Inc. (“Pharos”), MiTAC International
`Corp. (“MiTAC”), and Mio Technology Limited,
`USA (“Mio”) (collectively, “appellants”) appeal from
`a decision of the International Trade Commission
`(“Commission”). The Commission found that appel-
`lants violated section 337 of the Tariff Act of 1930 (19
`U.S.C. § 1337) through the unlawful importation, sale
`for importation, and sale after importation of certain
`Global Positioning System (“GPS”) devices and
`products containing these devices that infringe certain
`patents owned by Global Locate, Inc. and Broadcom
`Corp.
`(“Broadcom”)
`(collectively, “Global Lo-
`cate”).FN1 The Commission issued a limited exclusion
`order and a cease and desist order. In re Certain GPS
`Devices & Prods. Containing Same, Inv. No.
`337–TA–602 (Int'l Trade Comm'n Jan. 15, 2009)
`(“Final Determination ”). We affirm.
`
`
`FN1. Intervenor Broadcom Corp. acquired
`Global Locate in July of 2007, and was added
`as a complainant in this investigation on
`February 5, 2008.
`
`
`
`BACKGROUND
`Global Locate owns U.S. Patent No. 6,417,801
`(“the '801 patent”), U.S. Patent No. 6,606,346 (“the
`'346 patent”), U.S. Patent No. 6,651,000 (“the ' 000
`patent”), U.S. Patent No. 6,704,651 (“the '651 pa-
`tent”), U.S. Patent No. 6,937,187 (“the '187 patent”),
`and U.S. Patent No. 7,158,080 (“the '080 patent”).
`These six patents are in the field of GPS technology.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00006
`
`

`
`
`
`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`GPS is a satellite navigation system comprising thir-
`ty-two satellites orbiting Earth that were placed in
`orbit by the United States and are operated by the
`United States. These satellites and their orbits are
`arranged so that at least four satellites are always in a
`direct line-of-sight to any point on Earth. The GPS
`system permits a GPS-enabled receiver to detect sig-
`nals from at least four satellites and use that infor-
`mation to compute its distance from each satellite, and
`thus its precise position on Earth, through a process
`known as trilateration. Each satellite transmits two
`types of information to a GPS-receiver—(1) a pseu-
`dorandom noise (“PN” or “PRN”) code, and (2) the
`Navigation (“NAV”) message. PRN codes are used by
`the receiver to determine the distance to the satellite.
`NAV messages contain information regarding when
`the received signals were sent by the satellite,
`ephemeris data which is data regarding the location
`and trajectory of the satellite, and almanac information
`which is information regarding the position of other
`satellites in the constellation. Conventional GPS re-
`ceivers depend on both the PRN *1323 code and the
`NAV message to calculate their position. The GPS
`system itself is not patented. However, there are var-
`ious patents in devices, systems, and methods for
`processing GPS satellite signals.
`
`
`It is difficult to receive the NAV message in cer-
`tain environments due to poor signal reception. In
`order to solve this problem, Assisted–GPS (“A–GPS”)
`was developed. In A–GPS systems, the NAV message
`is collected by a receiving station with an unobstructed
`view of the sky, and then transmitted to GPS receivers
`via computer servers and over a connection such as the
`Internet or a wireless telephone network.
`
`
`The patents-in-suit are owned by Global Locate
`and are directed to various improvements over con-
`ventional A–GPS technology. The '346 patent is enti-
`tled “Method and Apparatus for Computing Signal
`Correlation.” It is directed to a novel method of per-
`forming signal correlation, which is the process by
`which GPS receivers compare incoming signals to
`
`Page 7
`
`locally generated codes in order to identify the satellite
`sending the signal and the “offset” between the re-
`ceived signal and the stored code. The '651 patent is
`entitled “Method and Apparatus for Locating Mobile
`Receivers Using a Wide Area Reference Network for
`Propagating Ephemeris.” The '651 patent teaches
`sending satellite ephemeris to a mobile GPS receiver
`through an A–GPS network and using the ephemeris
`at the receiver to more precisely locate the satellites
`and narrow the search for weak signals, thereby im-
`proving the receiver's acquisition sensitivity. The '000
`patent is entitled “Method and Apparatus for Gener-
`ating and Distributing Satellite Tracking Information
`in a Compact Format.” The patent teaches the com-
`paction of satellite ephemeris data in order for it to be
`received more quickly by GPS receivers than un-
`compacted data. The '080 patent is entitled “Method
`and Apparatus for Using Long Term Satellite Track-
`ing Data in a Remote Receiver.” It teaches using cer-
`tain algorithms to predict ephemeris data for satellites
`in the future, receiving that “long term” data at a GPS
`receiver, and using it to locate satellites and calculate
`position. The '801 patent is entitled “Method and
`Apparatus for Time–Free Processing of GPS Signals.”
`It teaches a GPS receiver that can calculate its position
`without having to wait to receive time information
`from a satellite, thereby allowing the receiver to cal-
`culate
`its position more quickly and even
`in
`weak-signal environments. The '187 patent is entitled
`“Method and Apparatus for Forming a Dynamic
`Model to Locate Position of a Satellite Receiver.” This
`patent is a continuation-in-part of the '801 patent. It
`extends the solution of the '801 patent from the dis-
`crete calculation of a GPS receiver's position at a
`particular moment to the use of a “dynamic model”
`that allows the improved, repeated calculation of a
`GPS receiver's position as it changes over time.
`
`
`SiRF, which is accused of both direct and induced
`infringement, developed, manufactured, and sold
`certain GPS chips. SiRF's SiRFstarIII chips are ac-
`cused of being involved in the infringement of the
`'000, '080, '651, '801, and ' 187 patents. SiRF's In-
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00007
`
`

`
`
`
`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`stantGPS chips are accused of being involved in the
`infringement of the '346, '801, and '187 patents. These
`chips, when incorporated into end-user GPS devices,
`allow such devices to compute absolute position using
`the GPS system. SiRF's SyncFreeNav is software
`embedded in SiRFstarIII chips that calculates current
`positional information for the GPS receiver.
`
`
`E–TEN, Pharos, MiTAC, and Mio, also accused
`of direct and induced infringement, incorporate SiRF
`chips into end-user, consumer GPS devices, such as
`portable*1324 navigation devices, personal digital
`assistants, and cell phones, and maintain intermediate
`servers. The products of these companies that contain
`SiRFstarIII chips are accused of being involved in the
`infringement of the '000, '080, '651, '801, and '187
`patents. The consumer devices incorporating SiRF
`chips and software are imported into and sold in the
`United States.
`
`
`SiRF's InstantFix service is an A–GPS system
`that provides server-generated extended-ephemeris
`(“EE”) files to end-user GPS devices, which then use
`the EE files for signal acquisition and satellite position
`computation. The service is provided through a
`SiRF-operated server.FN2 This server generates EE
`files once per day by receiving and downloading past
`GPS satellite information, including ephemeris data,
`from Jet Propulsion Laboratory (“JPL”). SiRF's server
`uses this data to predict future satellite orbits and clock
`information for all satellites in the GPS constellation
`in order to generate EE files. These EE files are then
`ultimately transmitted to remote GPS receivers by
`way of SiRF's customers' servers via the Internet, a
`wireless link, or a combination of the two. The In-
`stantFix service, in utilizing SiRF's chips and the
`software that implements the InstantFix service, is
`alleged to infringe the '080, '000, and '651 patents.
`
`
`FN2. The Commission found as a factual
`matter that the servers at issue were in the
`United States based on the Rule 30(b)(6)
`deposition testimony of Makarand Phatak
`
`Page 8
`
`and Peter Kuykendall. At trial, Ashutosh
`Pande testified that the servers (with the ex-
`ception of the server that serves Research in
`Motion (“RIM”)) were then located in the
`United Kingdom and in Bangalore, India.
`Contrary to the suggestion in appellants'
`brief, Pande did not testify that the servers
`were moved after the date of Kuykendall's
`deposition. The Commission was justified in
`treating this testimony as conflicting and re-
`lying on Kuykendall's 30(b)(6) deposition
`testimony. If in fact the servers are now lo-
`cated outside of the United States, appellants
`are not without a remedy as appellants may
`petition for a modification or a rescission of
`an exclusion order or a cease and desist order
`under 19 C.F.R. § 210.76 if appellants are
`“no longer in violation of [section 337].” We
`express no opinion as to whether the facts
`here would support a modification or rescis-
`sion.
`
`
`
`On April 30, 2007, at the request of Global Lo-
`cate, the Commission initiated an investigation to
`determine whether violations of section 337 of the
`Tariff Act of 1930 (19 U.S.C. § 1337) had occurred by
`the importation into the United States, the sale for
`importation, or the sale within the United States after
`importation of certain GPS devices that allegedly were
`involved in infringing Global Locate's patents. See In
`re Certain GPS Devices & Prods. Containing Same,
`72 Fed.Reg. 25,777–78 (Int'l Trade Comm'n May 7,
`2007) (notice of
`investigation). SiRF, E–TEN,
`MiTAC, Pharos, and Mio were named as respondents.
`The Commission Investigative Staff (“Staff”) was also
`a party to the investigation.
`
`
`Global Locate alleged that appellants infringed
`fifteen claims of the six asserted patents. An Admin-
`istrative Law Judge (“ALJ”) held an evidentiary
`hearing and issued a 216–page Initial Determination.
`See
`In re Certain GPS Devices & Prods.
`http://www.westlaw.com/Find/Default.wl?rs=d
`
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`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`
`fa1.0&vr=2.0&DB=0001032&DocName=USITCIN
`VNO337‐TA‐602&FindType=YContaining
`Same,
`Inv. No. 337–TA–602 (Int'l Trade Comm'n Aug. 8,
`2008) (“Initial Determination ”). The ALJ found vi-
`olations of section 337 by each of the respondents, and
`with respect to each of the six patents. Specifically, the
`ALJ found infringement of claims 1, 2, and 11 of the
`'801 patent; claims 4 and 11 of the '346 patent; claims
`1, 2, and 5 of the ' 000 patent; claims 1 and 2 of the
`'651 patent; claims 1 and 9 of the ' 187 patent; and
`claims 1, 2, and 22 of the '080 patent. Id. at 213–15.
`The ALJ also concluded that all six patents were not
`invalid or unenforceable. Id. at 213–14. Appellants
`petitioned*1325 the Commission for review of the
`ALJ's decision, and the Commission determined that it
`would review certain of the ALJ's findings.
`
`
`On January 15, 2009, the Commission issued its
`opinion. See Final Determination. First, the Com-
`mission affirmed the ALJ's decision that Global Lo-
`cate had standing to assert the '346 patent. Id. at 8–9.
`Second, the Commission concluded that SiRF in-
`fringes the '651 and '000 patents. In doing so, the
`Commission modified the ALJ's findings, finding
`“that SiRF directly infringes” and concluded “that
`SiRF exercises control over end users of the GPS
`receivers so as to cause infringement of the '651 and
`the '000 patents.” Id. at 13. Third, the Commission
`addressed the issue of patentable subject matter of
`certain method claims of the '801 and '187 patents in
`light of In re Bilski, 545 F.3d 943 (Fed.Cir.2008) (en
`banc), cert. granted, 556 U.S. 1268, 129 S.Ct. 2735,
`174 L.Ed.2d 246 (2009), and affirmed the ALJ's de-
`cision that the disputed claims recite patentable sub-
`ject matter. FN3 The Commission therefore affirmed
`the Initial Decision of the ALJ as modified by the
`Commission's opinion and adopted all findings of fact
`and legal conclusions in the Initial Decision that were
`not inconsistent with the Commission's opinion. Final
`Determination, slip op. at 23.
`
`
`FN3. The Commission originally declined to
`review the ALJ's findings on patentable
`
`Page 9
`
`subject matter but addressed this issue on
`appellants' petition for reconsideration in
`light of In re Bilski, ultimately denying the
`petition as both as untimely and as without
`merit. Final Determination, slip op. at 14.
`
`
`
`On January 15, 2009, the same day as it issued its
`opinion, the Commission issued a limited exclusion
`order prohibiting the entry into the United States of
`infringing GPS devices that are manufactured abroad
`by or on behalf of, or imported by or on behalf of,
`SiRF and other respondents. The Commission also
`issued a cease-and-desist order against the respond-
`ents with U.S. operations: SiRF, Pharos, and Mio. The
`Commission's determination became final on March
`16, 2009, at the conclusion of the sixty-day presiden-
`tial review period. See 19 U.S.C. § 1337(j)(4). An
`appeal to this court was timely filed, and we have
`jurisdiction under 28 U.S.C. § 1295(a)(6).
`
`
`DISCUSSION
`This appeal challenges not only the determina-
`tions by the full Commission, but also aspects of the
`decision of the ALJ that the Commission declined to
`review relating to claim construction, invalidity, and
`infringement. We have considered appellants' argu-
`ments as to the issues that the Commission declined to
`review and find them unpersuasive; we think it un-
`necessary to treat these issues separately in this opin-
`ion. We do however find that three issues addressed
`by the Commission merit further discussion.
`
`
`I Standing to Assert the '346 Patent
`[1] Appellants challenge the Commission's find-
`ing that Global Locate had standing to assert the '346
`patent. The question of standing to assert a patent
`claim is jurisdictional, and we review that question de
`novo. Rite–Hite Corp. v. Kelley Co., 56 F.3d 1538,
`1551 (Fed.Cir.1995). However, we review underlying
`factual determinations upon which a conclusion of
`standing is based for substantial evidence. See Fin-
`nigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354,
`1361–62 (Fed.Cir.1999).
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`601 F.3d 1319, 94 U.S.P.Q.2d 1607
`(Cite as: 601 F.3d 1319)
`
`
`[2] “Absent the voluntary joinder of all co-owners
`of a patent, a co-owner acting alone will lack stand-
`ing.” DDB Techs., L.L.C. v. MLB Advanced Media,
`L.P., 517 F.3d 1284, 1289 (Fed.Cir.2008) (citing Isr.
`Bio–Eng'g Project v. Amgen, Inc., 475 F.3d 1256,
`1264–65 (Fed.Cir.2007)) (internal*1326 quotation
`marks omitted). This rule applies equally in ITC in-
`vestigations. FN4 The '346 patent is directed to signal
`correlation and the named inventors are Charles
`Abraham and Donald L. Fuchs. The patent names
`Global Locate as the assignee. At issue is whether
`Magellan Corporation (“Magellan”) is a co-owner of
`the '346 patent. If Magellan is a co-owner, Global
`Locate lacks standing to assert the '346 patent absent
`joinder of Magellan. The question of whether Magel-
`lan is co-owner of the patent depends on whether one
`of the inventors (Abraham) assigned his interest in the
`patent to Magellan.
`
`
`FN4. See In re Certain Catalyst Components
`& Catalysts for the Polymerization of Ole-
`fins, Inv. No. 337–TA–307, 1990 ITC LEXIS
`224, at *10, *26 (Int'l Trade Comm'n June
`25, 1990) (noting that “infringement actions
`may only be brought by, or in the name of, all
`of the owners of the patent in suit or the ex-
`clusive licensee of all of the rights covered by
`the patent” because the Commission “strictly
`read[s] the federal standing precedent” into
`its rules); see also Final Determination, slip
`op. at 5.
`
`
`
`Abraham conceived of the subject matter of the
`'346 patent in October of 1999 while employed at
`Magellan. In 1996, Abraham had entered into an em-
`ployee inventions agreement with Ashtech, Inc.
`(“Ashtech”) (a predecessor to Magellan) which as-
`signed to Ashtech “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.” Final Determination,
`
`Page 10
`
`slip op. at 6. Apparently, Ashtech merged with Ma-
`gel