1340
`
`
`545 FEDERAL REPORTER, 3d SERIES
`
`KYOCERA WIRELESS
`CORPORATION,
`Appellant,
`and
`Qualcomm Incorporated, Appellant,
`and
`Motorola, Inc., Appellant,
`and
`Samsung Electronics Corporation,
`Ltd., Appellant,
`and
`LG Electronics Mobilecomm
`U.S.A., Inc., Appellant,
`and
`Sanyo Fisher Co., Appellant,
`and
`T–Mobile USA, Inc., Appellant,
`and
`AT & T Mobility, LLC (formerly
`known as Cingular Wireless,
`LLC), Appellant,
`and
`Sprint Nextel Corporation, Appellant,
`and
`Palm, Inc., Appellant,
`and
`Pantech Wireless, Inc., Pantech Co.,
`Ltd., and Pantech & Curitel Com-
`munications, Inc., Appellants,
`and
`UT Starcom, Inc., Appellant,
`and
`High Tech Computer Corporation,
`Appellant,
`and
`Shenzhen Huawei Communication
`Technologies Co., Ltd.,
`Appellant,
`
`and
`
`Research In Motion Limited and
`Research In Motion Corpo-
`ration, Appellants,
`and
`
`Foxconn International Holdings
`Ltd., Appellant,
`and
`
`Casio Hitachi Mobile Communications
`Company, Ltd., Appellant,
`v.
`INTERNATIONAL TRADE
`COMMISSION,
`Appellee,
`and
`
`Broadcom Corporation, Intervenor.
`Nos. 2007–1493 to 2007–1499, 2007–1514,
`2007–1573, 2008–1004, 2008–1009, 2008–
`1010, 2008–1012, 2008–1013, 2008–1015,
`2008–1018, 2008–1019.
`
`United States Court of Appeals,
`Federal Circuit.
`
`Oct. 14, 2008.
`Background: Owner of patent disclosing
`power-saving technique for wireless de-
`vices filed administrative complaint for un-
`fair acts in violation of statute, alleging
`infringement by baseband processor chips
`that were manufactured for seller and in-
`corporated
`into devices outside United
`States and imported into United States for
`sale. Importers of devices using allegedly
`infringing chips and operators of wireless
`networks intervened in remedy stage of
`administrative proceeding. The United
`States International Trade Commission is-
`sued limited exclusion order after deter-
`mining that patent had been infringed by
`imports. Parties appealed.
`Holdings: The Court of Appeals, Rader,
`Circuit Judge, held that:
`
`

`

`KYOCERA WIRELESS CORP. v. ITC
`Cite as 545 F.3d 1340 (Fed. Cir. 2008)
`
`1341
`
`(1) term, ‘‘different,’’ meant difference in
`their method of communication;
`(2) collection of technical specifications
`known as global system for mobile
`communications (GSM) standard was
`publicly available, and thus could con-
`stitute ‘‘printed publication’’ for pur-
`poses of patent anticipation;
`(3) GSM standard was several prior art
`references with separate dates of cre-
`ation, rather than single prior art ref-
`erence;
`(4) GSM standard was not coherent whole
`document that could be assigned single
`prior art date of creation;
`(5) intervening Supreme Court case law
`regarding invalidity defense of obvious-
`ness could not be invoked on appeal to
`correct procedural misstep in not rais-
`ing it before lower court in timely man-
`ner;
`(6) intent necessary for inducement to in-
`fringe patent could not be established
`on finding that competitor generally
`intended to cause acts that produced
`infringement;
`(7) ITC exceeded its statutory authority
`by
`issuing
`limited exclusion order
`(LEO) that excluded imports of down-
`stream manufacturers who were not
`named as respondents; and
`(8) LEO against importation of all down-
`stream products containing accused
`technology was ultra vires.
`Affirmed in part, vacated, and remanded
`in part.
`
`1. Patents O324.5
`Patent claim construction is reviewed
`without deference.
`2. Patents O161
`Generally patent claim terms are giv-
`en their ordinary and customary meanings,
`according to the customary understanding
`of a person of ordinary skill in the art who
`
`reads them in the context of the intrinsic
`record.
`
`3. Patents O167(1)
`The patent specification is the single
`best guide to the meaning of a disputed
`term.
`
`4. Patents O101(2)
`Term, ‘‘different,’’ in patent disclosing
`power-saving technique for wireless de-
`vices, meant difference in their method of
`communication, not simply any conceivable
`difference.
`
`5. Patents O165(3)
`Patent claim terms are not interpret-
`ed in a vacuum, devoid of the context of
`the claim as a whole.
`
`6. Patents O68
`Collection of technical specifications
`known as global system for mobile commu-
`nications (GSM) standard was publicly
`available, and thus could constitute ‘‘print-
`ed publication’’ for purposes of patent an-
`ticipation, where GSM
`specifications,
`though drafted within smaller technical
`subcommittees, were widely distributed
`before critical date of patent; although ar-
`chival paper copies of standard had been
`maintained in limited-access facility, access
`had been granted to any interested parties
`and 25,000 copies of 700 page technical
`book entitled ‘‘The GSM System for Mo-
`bile Communications’’ had been sold to
`give wider access to GSM standard. 35
`U.S.C.A. § 102.
`
`7. Patents O314(5)
`Whether an asserted anticipatory doc-
`ument qualifies as a ‘‘printed publication’’
`is a legal conclusion based on underlying
`factual determinations. 35 U.S.C.A. § 102.
`
`8. Patents O324.5, 324.55(4)
`The legal conclusion as to whether an
`asserted anticipatory document qualifies as
`a ‘‘printed publication’’ is reviewed without
`
`

`

`1342
`
`545 FEDERAL REPORTER, 3d SERIES
`
`deference while according substantial evi-
`dence deference to the factual components
`of the determination.
`9. Patents O68
`On a claim of anticipation, a reference
`is publicly accessible, which is the touch-
`stone in determining whether a reference
`constitutes a ‘‘printed publication,’’ upon a
`satisfactory showing that such document
`has been disseminated or otherwise made
`available to the extent that persons inter-
`ested and ordinarily skilled in the subject
`matter or art exercising reasonable dili-
`gence, can locate it. 35 U.S.C.A. § 102(b).
`10. Patents O68
`the
`is
`Public accessibility, which
`touchstone in determining whether a refer-
`ence constitutes a ‘‘printed publication,’’ is
`assessed on a case-by-case basis on a claim
`of anticipation. 35 U.S.C.A. § 102(b).
`11. Patents O72(1)
`Global system for mobile communica-
`tions (GSM) standard was several prior art
`references with separate dates of creation,
`rather than single prior art reference, on
`claim of anticipation, since different speci-
`fications that comprised GSM standard
`were authored by different subsets of au-
`thors at different times; GSM standard
`included hundreds of individual specifica-
`tions drafted by approximately ten differ-
`ent subgroups, each with its own title and
`separate page numbering, and each speci-
`fication, though part of greater GSM stan-
`dard, stood as separate document in its
`own right. 35 U.S.C.A. § 102.
`12. Patents O72(1)
`In order to anticipate a claim, a single
`prior art reference must expressly or in-
`herently disclose each claim limitation. 35
`U.S.C.A. § 102.
`13. Patents O65, 69
`On a claim of anticipation, in order for
`one document to incorporate another docu-
`ment by reference, the incorporating docu-
`
`ment must identify the incorporated docu-
`ment with detailed particularity, clearly
`indicating the specific material for incorpo-
`ration. 35 U.S.C.A. § 102.
`
`14. Patents O72(1)
`Global system for mobile communica-
`tions (GSM) standard was not coherent
`whole document that could be assigned
`single prior art date of creation, on claim
`of anticipation; although some specifica-
`tions at times cross-referenced other speci-
`fications, referencing practice was vague.
`35 U.S.C.A. § 102.
`
`15. Patents O324.1
`Intervening Supreme Court case law
`regarding invalidity defense of obviousness
`could not be invoked on appeal to correct
`procedural misstep of waiver due to not
`raising it before lower court in timely man-
`ner. 35 U.S.C.A. § 103.
`
`16. Patents O312(8)
`Intent necessary for inducement to
`infringe patent could not be established on
`finding that competitor generally intended
`to cause acts that produced infringement.
`35 U.S.C.A. § 271(b).
`
`17. Patents O259(1)
`Proof of intent to cause infringing acts
`is a necessary but not sufficient condition
`for induced infringement; inducement ad-
`ditionally requires evidence of culpable
`conduct, directed to encouraging another’s
`infringement, i.e., specific intent to encour-
`age infringement. 35 U.S.C.A. § 271(b).
`
`18. Customs Duties O22
`International
`Trade Commission
`(ITC) exceeded its statutory authority by
`issuing limited exclusion order (LEO) that
`excluded imports of downstream manufac-
`turers who were not named as respondents
`in patent owner’s
`initial administrative
`complaint alleging unfair acts; ITC could
`not expand its authority from ‘‘persons
`
`

`

`KYOCERA WIRELESS CORP. v. ITC
`Cite as 545 F.3d 1340 (Fed. Cir. 2008)
`
`1343
`
`determined by the Commission to be vio-
`lating’’ to articles manufactured by per-
`sons determined by ITC to be violating.
`Tariff Act of 1930, § 337(d), 19 U.S.C.A.
`§ 1337(d).
`
`19. Customs Duties O54
`International
`Trade Commission
`(ITC) is a creature of statute, and must
`find authority for its actions in its enabling
`statute.
`
`20. Statutes O184, 205
`When expounding a statute, a court
`must not be guided by a single sentence or
`member of a sentence, but look to the
`provisions of the whole law, and to its
`object and policy.
`
`21. Customs Duties O22
`A party must meet heightened re-
`quirements before the International Trade
`Commission (ITC) has authority to issue a
`general exclusion order (GEO) against
`products of non-respondents. Tariff Act
`of
`1930,
`§ 337(d)(2),
`19 U.S.C.A.
`§ 1337(d)(2).
`
`22. Customs Duties O22
`(LEO)
`order
`Limited
`exclusion
`against
`importation of all downstream
`products containing accused technology
`was ultra vires, in response to administra-
`tive complaint by patent owner alleging
`unfair acts against component manufactur-
`er, since LEO identified excluded down-
`stream articles as, e.g., ‘‘[h]andheld wire-
`less communications devices containing
`[particular] baseband processor chips or
`chipsets that are programmed to enable
`the power saving features covered by
`claims 1, 4, 8, 9, or 11 of U.S. Patent No.
`6,714,983’’ and named manufacturer was
`not manufacturer of
`infringing pro-
`grammed chips.
`
`Patents O328(2)
`4,964,121, 5,128,938, 5,203,020. Cited
`as Prior Art.
`
`Patents O328(2)
`6,374,311, 6,583,675, 6,714,983. Cited.
`
`Kenneth W. Starr, Kirkland & Ellis
`LLP, of Los Angeles, CA, argued for
`appellants, Motorola, Inc., Samsung Elec-
`tronics Corporation, Ltd., Kyocera Wire-
`less Corporation, LG Electronics Mobile-
`comm U.S.A., Inc., and Sprint Nextel
`Corporation.
`Gregory A. Castanias, Jones Day, of
`Washington, DC, argued for appellants
`Foxconn International Holdings Ltd., Ca-
`sio Hitachi Mobile Communications Com-
`pany, Ltd., Palm Inc., Sanyo Fisher Co.,
`Pantech & Curitel Communications, et al.,
`High Tech Computer Corporation, Shen-
`zhen Huawei Communication Technologies
`Co. Ltd., and UT Starcom, Inc.
`Carter G. Phillips, Sidley Austin LLP, of
`Washington, DC, argued for appellant
`Qualcomm Incorporated. With him on the
`brief were Stephen B. Kinnaird, Robert A.
`Parker, William K. West, Jr., Cecilia H.
`Gonzalez, and Juliana M. Cofrancesco,
`Howrey LLP, of Washington, DC; Karin
`J. Kramer, Howrey LLP, of San Francis-
`co, CA; Timothy S. Teter and Lorie R.E.
`Ploeger, Cooley Godward Kronish LLP, of
`Palo Alto, CA; and Stanley J. Panikowski,
`DLA Piper U.S. LLP, of San Diego, CA.
`Of counsel was William D.A. Zerhouni,
`Covington & Burling LLP, of Washington,
`DC.
`Claudia W. Frost, Pillsbury Winthrop
`Shaw Pittman LLP, of Houston, TX, ar-
`gued for appellant T–Mobile USA, Inc.,
`AT & T Mobility LLC, Research in Motion
`Limited, et al.
`Andrea C. Casson, Assistant General
`Counsel for Litigation, Office of the Gener-
`al Counsel, United States International
`Trade Commission of Washington, DC, ar-
`
`

`

`1344
`
`545 FEDERAL REPORTER, 3d SERIES
`
`gued for appellee. With her on the brief
`were James M. Lyons, General Counsel,
`Michael Liberman, Paul M. Bartowski, and
`James A. Worth, Attorneys.
`Robert A. Van Nest, Keker & Van Nest,
`LLP, of San Francisco, California, argued
`for intervenor. With him on the brief
`were Ragesh K. Tangri, Steven Hirsh,
`Daniel E. Purcell, and Steven K. Taylor.
`Of counsel were James M. Dowd, Gregory
`H. Lantier, and William G. McElwain, Wil-
`mer Cutler Pickering Hale & Dorr, LLP,
`of Washington, DC; and Scott P. McBride,
`and Alejandro Menchaca, McAndrews,
`Held & Malloy, Ltd., of Chicago, IL.
`Don F. Livornese, Howrey LLP, of Los
`Angeles, CA, for appellant Kyocera Wire-
`less Corp. With him on the brief were
`Roman E. Darmer and Richard J. Burdge,
`Jr.
` Of counsel were Tom Crunk and
`Bradley J. Sparks.
`Russell E. Levine, Kirkland & Ellis
`LLP, of Chicago, IL, for appellant Motoro-
`la, Inc. With him on the brief were Chris-
`topher R. Liro and Nyika O. Strickland.
`Russell E. Levine, Kirkland & Ellis
`LLP, of Chicago, IL, for appellant Sam-
`sung Electronics Corporation, Ltd. With
`him on the brief were Gregory S. Arovas
`and Todd M. Friedman.
`Mark S. Zolno, Katten Muchin Rosen-
`man LLP, of Chicago, IL, for appellant
`Sanyo Fisher Co. With him on the brief
`were Michael A. Dorfman and Eric R.
`Rock, and James A. Gromada, of Washing-
`ton, DC. Of counsel was Kazumune V.
`Kano.
`Michael J. McKeon, Fish & Richardson,
`P.C., of Washington, DC, for appellant LG
`Electronics MobileComm U.S.A.,
`Inc.
`With him on the brief was Scott A. Elen-
`gold.
`Josh A. Krevitt, Gibson, Dunn &
`Crutcher LLP, of New York, NY, for ap-
`pellant T–Mobile USA, Inc. With him on
`the brief was Kevin W. Cherry. Of coun-
`
`sel were Mark A. Perry, Mathew D.
`McGill, and Minodora D. Vancea, of Wash-
`ington, DC. Of counsel was Richard M.
`Kohel.
`Kathryn L. Clune, Crowell & Moring
`LLP, of Washington, DC, for appellant
`Sprint Nextel Corporation. With her on
`the brief were Richard McMillan, Jr. and
`Lisa A. Murray.
`V. James Adduci, II, Adduci, Mastriani
`& Schaumberg, LLP, of Washington, DC,
`for appellant Palm, Inc. With him on the
`brief were Munford P. Hall, II, Patricia
`Larios, and Jamie D. Underwood.
`Adam R. Hess, Pillsbury Winthrop
`Shaw Pittman LLP, of Washington, DC,
`for appellant Casio Hitachi Mobile Com-
`munications Company Ltd.
`Hae–Chan Park, H.C. Park & Associ-
`ates, PLC, of Vienna, VA, for appellants
`Pantech & Curitel Communications, Inc.,
`et al. With him on the brief was Wayne
`M. Helge.
`Theodore T. Herhold, Townsend &
`Townsend & Crew LLP, of Palo Alto, CA,
`for appellant Shenzhen Huawei Communi-
`cation Technologies Co., Ltd.
`Robert F. Aldrich, Dickstein Shapiro
`LLP, of Washington, DC, for appellant UT
`Starcom, Inc. On the brief was Charles W.
`Saber.
`Steven E. Adkins, Jones Day, of Wash-
`ington, DC, for appellant Foxconn Interna-
`tional Holdings Ltd. With him on the
`brief was Kenneth R. Adamo, of Cleveland,
`OH.
`William S. Feiler, Morgan & Finnegan,
`LLP, of New York, NY, for appellants
`Research In Motion Corporation, et al.
`On the brief were Peter N. Fill and Eric
`G. Wright, of Washington, DC. Of counsel
`was Robert K. Goethals, of New York, NY.
`Christopher F. Corr, White & Case
`LLP, of Washington, DC, for appellant
`
`

`

`KYOCERA WIRELESS CORP. v. ITC
`Cite as 545 F.3d 1340 (Fed. Cir. 2008)
`
`1345
`
`High Tech Computer Corporation. With
`him on the brief were Todd P. Taylor,
`Alexander W. Dennis. Of counsel on the
`brief was Warren S. Heit. Of counsel was
`Monisha Deka, of Washington, DC, and
`Farhenna Y. Rasheed, White & Case,
`LLP, of Palo Alto, CA.
`
`Before RADER, BRYSON, and LINN,
`Circuit Judges.
`
`RADER, Circuit Judge.
`The United States International Trade
`Commission (‘‘ITC’’ or ‘‘Commission’’) de-
`termined that Qualcomm Incorporated
`(‘‘Qualcomm’’) infringed Broadcom Corpo-
`ration’s (‘‘Broadcom’s’’) United States Pat-
`ent 6,714,983 (‘‘8983 Patent’’) with its im-
`ports. As a remedy, the ITC issued a
`limited exclusion order (‘‘LEO’’) against
`the importation of all downstream prod-
`ucts containing the accused technology.
`Aside from Qualcomm, the appellants in
`this action are Qualcomm’s customers.
`Some customers are wireless device manu-
`facturers whose products are subject to
`the LEO. Others are wireless network op-
`erators whose networks depend on prod-
`ucts subject to the LEO. Despite the
`broad downstream scope of the LEO,
`Broadcom named only Qualcomm as a re-
`spondent in its ITC complaint. Because
`the ITC correctly construed the critical
`disputed claim term in Broadcom’s patent,
`and because the ITC correctly rejected
`Qualcomm’s invalidity arguments under 35
`U.S.C. §§ 102 and 103, this court affirms
`the ITC’s finding that the 8983 Patent is
`not invalid. This court also affirms the
`ITC’s determination of no direct infringe-
`ment by Qualcomm. However, because
`the ITC misapplied the standard for in-
`duced infringement, this court vacates and
`remands on infringement.
` Finally, be-
`cause the ITC has no statutory authority
`to issue an LEO against downstream prod-
`ucts of non-respondents, this court vacates
`and remands the limited exclusion order.
`
`I.
`Broadcom’s 8983 patent is entitled ‘‘Mod-
`ular, portable data processing terminal for
`use in a communication network.’’ The
`patent claims a mobile computing device
`that can both communicate with wireless
`networks and operate in a reduced power
`mode to extend battery life:
`One or more circuits adapted for use in
`a mobile computing device comprising:
`a terminal adapted to receive battery
`power for at least one of the circuits;
`communication circuitry comprising a
`reduced power mode and being adapted
`to use a first wireless communication
`and a second wireless communication
`different from the first wireless commu-
`nication to transmit data to access
`points, the communication circuitry re-
`ducing power by controlling the frequen-
`cy of scanning for the access points; and
`processing circuitry arranged to process
`data received from the communication
`circuitry.
`8983 Patent col.42 l.57–col.43 l.2 (Claim 1).
`In the liability phase at the ITC, the par-
`ties vigorously contested the interpretation
`of the phrase ‘‘a first wireless communica-
`tion and a second wireless communication
`different from the first wireless communi-
`cation.’’
` The ITC administrative
`law
`judge characterized this dispute in terms
`of ‘‘how different these wireless communi-
`cations need to be.’’ In re Certain Base-
`band Processor Chips & Chipsets, Trans-
`mitter & Receiver (Radio) Chips, Power
`Control Chips, & Prod. Containing Same,
`Including Cellular Telephone Handsets,
`Inv. No. 337–TA–543, 2006 WL 3920334,
`2006 ITC LEXIS 803, at *185 (Int’l Trade
`Comm’n Oct. 10, 2006) (‘‘Initial Determi-
`nation ’’).
`Before the ITC, Qualcomm argued that
`‘‘different’’ is extremely broad and is not
`limited to any particular type of difference.
`The ITC concluded Qualcomm’s proposal
`
`

`

`1346
`
`545 FEDERAL REPORTER, 3d SERIES
`
`was too broad and would ‘‘include any
`slight difference in wireless communica-
`tions, without regard to the context of the
`claim.’’ Id. The ITC construed the term
`as ‘‘refer[ring] to two different methods of
`communication.’’ Id. at *186. In this ap-
`peal, Qualcomm challenges the ITC’s con-
`struction as too narrow and argues instead
`for its originally proffered broad interpre-
`tation.
`This action began on May 19, 2005, when
`Broadcom filed a complaint in the ITC
`alleging unfair acts
`in violation of 19
`U.S.C. § 1337 (Section 337 of the Tariff
`Act of 1930, or ‘‘Section 337’’). Broadcom
`named Qualcomm, and only Qualcomm, as
`a respondent. Broadcom alleged that thir-
`teen Qualcomm chips and chipsets infringe
`several Broadcom patents. The adminis-
`trative law judge bifurcated the ITC’s pro-
`ceedings into separate liability and remedy
`proceedings.
`On liability, the ITC determined that
`Qualcomm had not infringed two of Broad-
`com’s patents (U.S. Patent Nos. 6,374,311
`and 6,583,675). These aspects of the ITC’s
`rulings were the subject of a separate,
`recently decided appeal. See Broadcom
`Corp. v. ITC, No.2007–1164 (Fed.Cir. Sep.
`19, 2008).
`With regard to the 8983 Patent, howev-
`er, the ITC determined that Qualcomm’s
`chips, when programmed to enable certain
`battery-saving features, infringe the 8983
`patent. Moreover, the ITC found Qual-
`comm liable for inducing third party manu-
`facturers to
`incorporate battery-saving
`software and Qualcomm’s chips into their
`mobile devices. Further, the Commission
`rejected Qualcomm’s anticipation and obvi-
`ousness arguments under 35 U.S.C. §§ 102
`and 103.
`With regard to remedy, the ITC issued
`an LEO excluding ‘‘[h]andheld wireless
`communications devices, including cellular
`telephone handsets and PDAs, containing
`Qualcomm baseband processor chips or
`
`chipsets that are programmed to enable
`the power saving features covered by
`claims 1, 4, 8, 9, or 11 of U.S. Patent No.
`6,714,983, wherein the chips or chipsets
`are manufactured abroad by or on behalf
`of Qualcomm Incorporated.’’ In re Cer-
`tain Baseband Processor Chips & Chip-
`sets, Transmitter & Receiver (Radio)
`Chips, Power Control Chips, & Prod. Con-
`taining Same, Including Cellular Tele-
`phone Handsets, Inv. No. 337–TA–543 3–4
`(Int’l Trade Comm’n June 7, 2007) (‘‘Lim-
`ited Exclusion Order ’’).
`Qualcomm appeals both the liability and
`remedy findings. Kyocera and other wire-
`less device manufacturers—non-respon-
`dents to Broadcom’s ITC complaint—are
`subject to the LEO because they purchase
`and incorporate Qualcomm chips into their
`mobile wireless devices outside the United
`States, and then import them into the
`United States for sale. AT & T and other
`wireless network carriers—also not named
`as respondents to Broadcom’s complaint—
`deploy networks which depend on devices
`that include Qualcomm chips. This appeal
`consolidates the several appeals of Qual-
`comm and these third-party manufacturers
`and carriers. This court has jurisdiction
`to review ITC determinations under 28
`U.S.C.
`§ 1295(a)(6)
`and
`19 U.S.C.
`§ 1337(c).
`
`A.
`[1–3] This court reviews claim con-
`struction without deference. Cybor Corp.
`v. FAS Techs., Inc., 138 F.3d 1448, 1451
`(Fed.Cir.1998) (en banc). Generally this
`court gives claim terms their ordinary and
`customary meanings, according to the cus-
`tomary understanding of a person of ordi-
`nary skill in the art who reads them in the
`context of the intrinsic record. See Phil-
`lips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed.Cir.2005) (en banc). The specifica-
`tion ‘‘is the single best guide to the mean-
`
`

`

`KYOCERA WIRELESS CORP. v. ITC
`Cite as 545 F.3d 1340 (Fed. Cir. 2008)
`
`1347
`
`ing of a disputed term.’’ Vitronics Corp.
`v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed.Cir.1996).
` This court recognizes,
`however, ‘‘there is sometimes a fine line
`between reading a claim in light of the
`specification, and reading a limitation into
`the claim from the specification.’’ Comark
`Commcns., Inc. v. Harris Corp., 156 F.3d
`1182, 1186 (Fed.Cir.1998).
`[4] The disputed claim term in this
`case—‘‘different’’—appears in the follow-
`ing claim phrase: ‘‘[A] second wireless
`communication different from the first.’’
`This phrase does not, in and of itself,
`suggest any limitation on the degree of
`difference between the two wireless com-
`munications. The phrase merely requires
`that the communications be ‘‘different,’’
`without suggesting any manner or degree
`of difference.
`[5] However, this court does not inter-
`pret claim terms in a vacuum, devoid of
`the context of the claim as a whole. See
`Hockerson–Halberstadt, Inc. v. Converse
`Inc., 183 F.3d 1369, 1374 (Fed.Cir.1999)
`(‘‘proper claim construction TTT demands
`interpretation of the entire claim in con-
`text, not a single element in isolation.’’);
`ACTV, Inc. v. Walt Disney Co., 346 F.3d
`1082, 1088 (Fed.Cir.2003) (‘‘While certain
`terms may be at the center of the claim
`construction debate, the context of the sur-
`rounding words of the claim also must be
`consideredTTTT’’). Claim 1 requires ‘‘com-
`munication circuitry’’ ‘‘being adapted’’ to
`use the two different wireless communica-
`tions. Communications circuitry capable
`of using a ‘‘first wireless communication’’
`need not be ‘‘adapted’’ to use a ‘‘second
`wireless communication different from the
`first’’ unless the difference between the
`first and second communications is some-
`how significant. In this context, the dis-
`puted claim term suggests that the two
`claimed wireless communications are not
`merely ‘‘different’’ in any way, but in such
`a way that requires adaptations in ‘‘com-
`
`munication circuitry’’ to facilitate both
`wireless uses.
`With this introduction, this court con-
`sults the specification to determine the
`nature of the potential differences in wire-
`less communications. See V–Formation,
`Inc. v. Benetton Group SpA, 401 F.3d
`1307, 1311 (Fed.Cir.2005) (‘‘In most cases,
`the best source for discerning this proper
`context is the patent specification wherein
`the patent applicant describes the inven-
`tion.’’). In the background section, the
`inventors explain that the prior art used
`different
`communication modules
`to
`achieve different methods of communica-
`tion: ‘‘Communications supported by com-
`puter modules may include wired connec-
`tion, such as over phone lines for a modem
`or through a wired local area network
`(LAN), and wireless communication such
`as a wireless LAN, a wide area network
`(WAN), or infrared.’’ 8983 Patent col.4
`ll.52–56. The number of different commu-
`nication methods in one device depended
`on the number of module slots in that
`computer. Therefore, ‘‘there is a need for
`a multipurpose computer module that can
`provide more than one peripheral function
`and control switching between those func-
`tions in a single module.’’ Id. col.5 ll.4–7.
`The specification explains further that
`the invention addresses this need with a
`portable device adapted to accommodate
`different communications methods. The
`invention is a ‘‘portable data terminal’’
`with ‘‘at least two communication trans-
`ceivers having different operating charac-
`teristics for conducting data communica-
`tions on TTT different subnetworks.’’ Id.
`col.5 ll.23–36. The specification supplies ex-
`amples of different possible operating
`characteristics of these transceivers: ‘‘nar-
`rowband radio frequency, frequency-hop-
`ping or direct-sequence spread spectrum
`radio frequency, modem or other wired
`network communication,
`infrared, etc.’’
`
`

`

`1348
`
`545 FEDERAL REPORTER, 3d SERIES
`
`Id. col.9 ll.46–49. Moreover, the specifica-
`tion explains that the transceivers included
`in the invention’s mobile devices are ‘‘oper-
`able on any number of communication me-
`diums, since the differences in their oper-
`ating characteristics are isolated from the
`base module of the MCDs 1606 by a com-
`munication processor.’’ Id. col.42 ll.25–29.
`Thus, the specification consistently teaches
`
`that the relevant difference between the
`two claimed wireless communications is
`their method of communication.
`
`Qualcomm argues that reading ‘‘differ-
`ent’’ to mean different methods of commu-
`nication would impermissibly exclude pre-
`ferred embodiments, specifically the one
`outlined in Figure 11:
`
`Figure 11 and its accompanying descrip-
`tion describe the way a mobile communica-
`tion device (‘‘MCD’’) can ‘‘roam’’ between
`base stations while connected to one or
`more networks. The MCD communicates
`with an ‘‘access point’’ in a ‘‘structured
`manner,’’ sending several messages such
`as ‘‘request-for-poll’’ messages, ‘‘data mes-
`sage[s],’’
`‘‘acknowledge’’
`signals,
`and
` Id. col.30
`‘‘POLL–DATA sequences.’’
`ll.15–24. According to Qualcomm, these
`structured messages use the same method
`of wireless communication.
` Therefore,
`Qualcomm contends, a first wireless com-
`munication (e.g., a request for poll mes-
`sage) and a second wireless communication
`(e.g., a data message) do not necessarily
`
`mean two methods of wireless communica-
`tion within the context of the patent.
`To the contrary, claim 1 of the 8983
`Patent may require a device capable of
`using two different wireless communica-
`tion methods and still fall within the terms
`of Figure 11. Figure 11 describes commu-
`nication with a device through one access
`point with just one of those methods. The
`8983 Patent’s inventors were clear that
`different access points could employ differ-
`ent communications methods:
` ‘‘[A]ccess
`point 1409 provides for communication via
`one type of radio communication while ac-
`cess point 1403 provides for another. For
`example, access point 1409 may provide a
`long-distance digital cellular link while ac-
`cess point 1413 provides for local spread
`
`

`

`KYOCERA WIRELESS CORP. v. ITC
`Cite as 545 F.3d 1340 (Fed. Cir. 2008)
`
`1349
`
`spectrum link.’’ 8983 patent col.39 ll.31–36.
`Further, ‘‘[t]he present invention contem-
`plates various combinations of communica-
`tion technologies, all accommodated by
`communication modules of MCD 1606.’’
`Id. col.42, ll.22–26.
`Thus, read in the context of the entire
`specification, Figure 11 merely provides
`exemplary details of a claimed device com-
`municating with a particular access point
`using a particular method of communica-
`tion. This Figure does not change claim
`1’s requirement for a device ‘‘adapted’’ to
`use two different communications. The
`specification provides the necessary con-
`text for the difference between the claimed
`first and second wireless communications.
`The difference envisioned by the claim is a
`difference in their method of communica-
`tion. In other words, the ITC properly
`construed the meaning of the term ‘‘differ-
`ent.’’
`this
`that
`Qualcomm also contends
`court’s construction of the same claim term
`in Sorensen v. ITC, 427 F.3d 1375 (Fed.
`Cir.2005), mandates a broad construction
`of ‘‘different’’ in this different patent. The
`patent in Sorensen pertained to a method
`of spacing plastic mold sections during se-
`quential steps of plastic injection molding.
`Id. at 1377. The claim in question re-
`quired ‘‘injecting a second plastic material
`having different characteristics than the
`first plastic materialTTTT’’ Id. at 1378.
`This court construed ‘‘different character-
`istics’’ to mean ‘‘any difference in charac-
`teristics between the two injected materi-
`als,’’ including a difference in color alone.
`Id. at 1379. Qualcomm reads that particu-
`lar holding to create a rule that use of the
`claim term
`‘‘different’’ without further
`qualification must mean ‘‘any difference.’’
`Sorensen created no such categorical
`rule. In Sorensen, this court only dis-
`cerned a broad meaning for the term ‘‘dif-
`ferent’’ after concluding that a) the claim
`term in the context of the entire claim
`
`connoted that ‘‘different’’ implied any dif-
`ference in characteristics and b) the speci-
`fication and
`the prosecution history
`showed ‘‘no disavowal of claim scope in
`relation to material characteristics.’’ Id.
`at 1379. This court’s analysis of the con-
`text of this different claim as a whole, as
`well as the intrinsic record for this differ-
`ent patent, to arrive at the proper context
`for the term ‘‘different’’ is thus not incon-
`sistent with Sorensen. In sum, the specifi-
`cation and context of the claim term in
`Sorensen did not qualify or limit the na-
`ture of the ‘‘different’’ characteristics of
`the plastic; the specification and context in
`this case show that the ‘‘different’’ wireless
`communications means a difference in the
`method of communication, not simply any
`conceivable difference. Accordingly, this
`court sustains the ITC determination that
`‘‘different’’ first and second wireless com-
`munications refers to two different meth-
`ods of communication.
`
`B.
`
`Qualcomm argues the ITC erred by con-
`cluding the 8983 Patent claims are not
`anticipated by three pieces of prior art:
`U.S. Patent Nos. 4,964,121 (‘‘Moore’’);
`5,128,938
`(‘‘Borras’’);
` and
`5,203,020
`(‘‘Sato’’). Qualcomm does not contest the
`ITC’s findings that each of Moore, Borras,
`and Sato discloses communication via a
`single
`communication method.
` Thus,
`Qualcomm’s argument on appeal depends
`entirely on this court disturbing the ITC’s
`claim construction in favor of a broader
`understanding of the word ‘‘different.’’
`
`Because this court affirms the ITC’s
`claim construction and rejects Qualcomm’s
`broader understanding of ‘‘different’’ in
`the context of claim 1 of the 8983 patent,
`this court affirms the ITC’s finding that
`the Moore, Borras, and Sato references do
`not anticipate under 35 U.S.C. § 102.
`
`

`

`1350
`
`545 FEDERAL REPORTER, 3d SERIES
`
`C.
`[6] Qualcomm
`the
`further appeals
`ITC’s finding that a collection of technical
`specifications known as the Global System
`for Mobile Communications (‘‘GSM’’) stan-
`dard does not anticipate the asserted 8983
`claims. The GSM standard is a compre-
`hensive set of specifications for a second
`generation (‘‘2G’’) mobile network. The
`European Telecommunications Standards
`Institute (‘‘ETSI’’), an independent stan-
`dards organization comprised of telecom-
`munications manufacturers and carriers,
`devised this standard. The standards are
`technical specifications that describe one
`aspect of the technology for inter-operable
`GSM-compliant equipment.
`The ITC determined Qualcomm did not
`show that the GSM standard was a ‘‘print-
`ed publication’’ under 35 U.S.C. § 102.
`Specifically, Qualcomm did not show that
`the GSM standard was publicly available.
`In ad