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nCAP Licensing, LLC v. Apple Inc.

United States District Court, D. Utah

June 6, 2019

nCAP LICENSING, LLC; nCAP TELECOMMUNICATIONS, LLC; nCAP MEDICAL, LLC; Plaintiffs,
v.
APPLE INC., Defendants.

          Brooke C. Wells Magistrate Judge.

          MEMORANDUM DECISION AND ORDER DENYING APPLE'S MOTION FOR PARTIAL SUMMARY JUDGMENT AND DENYING NCAP'S CROSS-MOTION FOR CLAIM CONSTRUCTION

          ROBERT J. SHELBY Chief United States District Judge.

         This is a patent infringement case. Plaintiffs nCAP Licensing, LLC; nCAP Telecommunications, LLC; and nCAP Medical, LLC (collectively nCAP) bring suit against Defendant Apple, Inc. nCAP alleges several of Apple's devices infringe on nCAP's patent for antennas and antenna enhancers.[1] Before the court are Apple's Motion for Partial Summary Judgment of Invalidity and Non-Infringement, as well as nCAP's Cross-Motion for Claim Construction.[2] After the benefit of oral argument and supplemental briefing, [3] the court DENIES, as premature, Apple's request that the court invalidate nCAP's patent as indefinite. Even though it adopts Apple's claim construction, it DENIES as premature Apple's request for partial summary judgment. Accordingly, the court DENIES Apple's Motion for Partial Summary Judgment, and nCAP's Cross-Motion for Claim Construction.

         BACKGROUND

         The Patent Office issued to nCAP the patent in dispute, U.S. Patent No. 9, 088, 071 (Patent #071).[4] Claims 1-11 of Patent #071 describe antennas; whereas Claims 12-15 describe antenna enhancers.[5] An antenna is a device that converts an electrical signal into electromagnetic radiation to transmit information through space, or that converts electromagnetic radiation into an electrical signal.[6] An antenna enhancer element is a device that, when placed near an antenna, enables that antenna to propagate, emit, or absorb electromagnetic radiation more efficiently than that same antenna in a stand-alone configuration.[7]

         The patented antennas and antenna enhancers use conductive particle based material (CPBM).[8] This material consists of conductive particles suspended in a semi-conductive or non-conductive binder.[9] For example, CPBM may consist of silver particles suspended in a semi-conductive or non-conductive paint or gel that cures, thus fixing the silver particles relative to each other.[10] A microscopic image of CPBM is shown in Figure A.[11]

         (Image Omitted)

         The parties dispute the proper construction of the claim term “antenna enhancer element.”[12] That disputed claim term is contained in independent Claim 12 of the #071 Patent. Claim 12 states,

What is claimed is . . . .
12. An antenna enhancer comprising:
an antenna enhancer element formed of a conductive particle based material, the antenna enhancer element being disposed at an area of an inner side of a housing of a wireless device that is adjacent to at least one of an internal radiating or receiving antenna,
wherein the housing of the device is formed of a conductive material,
wherein a non-conductive material is disposed between the antenna enhancer element and the at least one of the radiating or receiving antenna, and
wherein the conductive particle based material comprises conductive particles dispersed in a binder so that at least a majority of the conductive particles are adjacent to, but do not touch, one another.[13]

         Apple contends a limitation should be imposed on Claim 12 based on arguments nCAP made to the Patent Office during patent prosecution.[14] In essence, Apple invokes the doctrine of prosecution history disclaimer.[15] nCAP disagrees that prosecution history disclaimer applies, and rejects any proposed limitation on Claim 12.[16] Before resolving the dispute over prosecution history disclaimer, the court will first recite the law governing the dispute.

         LEGAL STANDARD

         Analysis of patent infringement is a two-step process.[17] First, a court construes the meaning of a patent's contested claim terms as a matter of law.[18] This initial claim construction is necessary because claims define the invention to which the patentee owns the right to exclude.[19] Second, a factfinder compares the claims to the allegedly infringing device to determine, as a matter of fact, whether all of the limitations of at least one claim are present, either literally or by a substantial equivalent in the accused device.[20] Currently at issue is the first step: claim construction.

         Claim terms generally embrace their “ordinary and customary meaning, which is the meaning they would have to a person of ordinary skill in the art at the time of the invention.”[21]The person of ordinary skill is deemed to read claim terms in view of the entire patent, including extrinsic and intrinsic evidence.[22] Extrinsic evidence consists of expert reports, inventor testimony, dictionaries, learned treatises, and other evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.[23] For many reasons, extrinsic evidence is generally less reliable than intrinsic evidence.[24] But a court in its sound discretion may admit and rely on extrinsic evidence.[25]

         Intrinsic evidence consists of the terms of the claims themselves, the remainder of the specification, and the prosecution history.[26] Although the claim terms themselves and specification frequently serve as the Rosetta Stones of claim construction, [27] prosecution history may inform claim meaning.[28] Prosecution history may, for example, demonstrate estoppel or disclaimer.[29]

         For prosecution history disclaimer to attach, a patentee must clearly and unmistakably disavow the full scope of a claim term.[30] “A patentee could do so, for example, by clearly characterizing the invention in a way to try to overcome rejections based on prior art.”[31] “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.”[32]

         The doctrine of prosecution history disclaimer serves at least two purposes. First, it “protects the public's reliance on definitive statements made during prosecution by precluding patentees from recapturing through claim interpretation specific meanings [clearly and unmistakably] disclaimed during prosecution.”[33] Second, it preserves the Patent Office's “gatekeeping role” by preventing a patentee from “recaptur[ing] in an infringement action the very subject matter surrendered as a condition of receiving the patent.”[34]

         ANALYSIS

         nCAP clearly and unmistakably disclaimed the full scope of Claim 12. The prosecution history shows nCAP characterized Claim 12 as electrically isolated from ground to overcome any rejection based on prior art.[35] The language of Claim 12, as well as Patent #071's specification, are silent on the electrical-isolation limitation.[36] Based solely on prosecution history disclaimer, the court construes the term “antenna enhancer element” to require electrical isolation from ground. The court will elaborate on its reasoning below.

         The parties dispute whether prosecution history disclaimer applies to the claim term, “antenna enhancer element, ” which is located in Claim 12[37] Each party's proposed construction of the disputed claim term is listed below.

Disputed Term in Claim 12

wherein a non-conductive material is disposed between the antenna enhancer element and the at least one of the radiating or receiving antenna[38]

nCAP's Proposed Construction

No. construction necessary[39]

Apple's Proposed Construction

wherein a non-conductive material rendering the antenna enhancer element electrically isolated from ground is disposed between the antenna enhancer element and the at least one of the radiating or receiving antenna[40]

         The court adopts Apple's Proposed Construction because nCAP clearly and unmistakably disclaimed the full scope of the disputed claim term “antenna enhancer element.”

         By way of background, the original application for Patent #071 was rejected by the Patent Office because its claims were anticipated by a published patent application, the Aisenbrey Application.[41] In response, nCAP amended its patent application.[42] Among other changes, nCAP amended Claim 13 and added new Claim 38.[43] (Claim 38 would eventually issue as Claim 12.[44] Hereinafter, the court refers to Claim 38 as Claim 12.) Snapshots of amended Claim 13 and new Claim 12 are shown below.

Amended Claim 13

New Claim 12(38)

13. (Currently Amended) An antenna enhancer system comprising: an antenna; and an antenna enhancer comprising;

an antenna enhancer element formed of a conductive particle based material, the antenna enhancer clement being disposed adjacent to and offset from, and without encircling, at least one of a radiating or receiving the antenna element.

wherein the antenna enhancer clement is electrically isolated, and

wherein the conductive particle based material comprise conductive particle and a binder, and wherein, when the conductive particle based material is disposed adjacent to and offset from the antenna, the conductive particles are wherein the conductive particle based material comprises conductive particles dispersed in the a binder so that at least a majority of the conductive particles are adjacent to, bur do not touch, one another.

38. (New) An antenna enhancer comprising:

an antenna enhancer element formed of a conductive particle based material, the antenna enhancer clement being disposed at an area of an inner side of a housing of a wireless device that is adjacent to at least one of an internal radiating or receiving antenna,

wherein the housing of a wireless device is formed of a conductive material,

wherein a non-conductive material is disposed between the antenna antenna element and the at least one of the radiating or receiving antenna, and

wherein the conductive particle based material comprises conductive particles dispersed in a binder so that at least a majority of the conductive particles are adjacent to, hut do not touch, one another.

         Claim 13 Disclaimer

         As these snapshots demonstrate, nCAP intended to overcome the Patent Office's rejection by inserting a limitation within amended Claim 13.[45] That limitation disclaims antenna enhancer elements connected to ground, stating “the antenna enhancer element is electrically isolated.”[46] Moreover, in correspondence with the Patent Office, nCAP clarified its construction of Claim 13, stating “[nCAP's] claimed antenna enhancer element is electrically isolated.”[47]nCAP stressed the limitation differentiates its “antenna enhancer element” from the Aisenbrey Application because the putative enhancer in the Aisenbrey Application was “electrically connected to ground” whereas nCAP's “antenna enhancer is electrically isolated.”[48]

         Claim 12 Disclaimer

         In correspondence with the Patent Office, nCAP also sent an anticipatory disclaimer for Claim 12.[49] In doing so, nCAP hitched Claim 13's electrical-isolation limitation to Claim 12. The anticipatory disclaimer states,

Regarding new independent claim [12], this claim recited subject matter related to claim 13. Thus, the arguments set forth above with respect to claim 1[3] may be applicable to claim [12]. Accordingly, it is respectfully submitted that Claim [12] is allowable over AISENBREY.[50]

         At first blush, nCAP's disclaimer in favor of Claim 12's approval seems ambiguous because the disclaimer does not articulate how Claim 12 is “related” to amended Claim 13. But the prosecution history answers the question of how Claim 12 relates to Claim 13-both claims are electrically isolated. The disclaimer's very first sentence clearly indicates the paragraph pertains to the relationship between claim 12 and 13, i.e., the only two independent antenna enhancer claims in the patent application at that time.[51] Building on that starting point, nCAP connected the next sentence with the very first sentence by stating: “Thus, the arguments set forth above with respect to claim 1[3] may be applicable to claim [12].” In the final sentence, nCAP invokes a continued logical progression from the previous sentences and reaffirms the paragraph pertains to Claim 12 and 13 by stating: “Accordingly, it is respectfully submitted that Claim [12] is allowable over AISENBREY.” Based on the grammar and logic, a person skilled in the art would understand nCAP's disclaimer, in substance, to provide, “Claim 13 recites an electrical-isolation limitation applicable to Claim 12 . . . Accordingly, it is respectfully submitted that Claim [12] is allowable over AISENBREY.”

         Critically, nCAP articulates no other plausible reason a patent officer could allow Claim 12 over the Aisenbrey Application, nor a plausible, alternative understanding of its anticipatory disclaimer.[52]

         nCAP's four arguments opposing the court's construction suffer from fatal legal flaws. First, nCAP argues that because the literal wording of the term “antenna enhancer element” does not expressly memorialize the disclaimed scope-lack of electrical connection to ground-Claim 12 should not be limited consistent with nCAP's disclaimer.[53] But that argument reflects a misunderstanding of prosecution history disclaimer: the doctrine prevents patentee's from “recapturing through claim interpretation specific meanings [clearly and unmistakably] disclaimed during prosecution.”[54] Because nCAP clearly ...


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