Salazar v. At&t Mobility LLC

64 F.4th 1311

• Court: Court of Appeals for the Federal Circuit
• Decided: April 5, 2023
• Docket: 21-2320
• Status: Published

Opinion

Case: 21-2320 Document: 48 Page: 1 Filed: 04/05/2023

United States Court of Appeals for the Federal Circuit ______________________

JOE A. SALAZAR, Plaintiff-Appellant

v.

AT&T MOBILITY LLC, SPRINT UNITED MANAGE- MENT COMPANY, T-MOBILE USA, INC., CELLCO PARTNERSHIP INC., DBA VERIZON WIRELESS, INC., Defendants-Cross-Appellants

HTC CORPORATION, HTC AMERICA, INC., Defendants ______________________

2021-2320, 2021-2376 ______________________

Appeals from the United States District Court for the Eastern District of Texas in No. 2:20-cv-00004-JRG, Chief Judge J. Rodney Gilstrap. ______________________

Decided: April 5, 2023 ______________________

DARIUSH KEYHANI, Keyhani LLC, Washington, DC, ar- gued for plaintiff-appellant.

TODD ERIC LANDIS, Williams Simons & Landis PLLC, Dallas, TX, argued for defendants-cross-appellants. Also Case: 21-2320 Document: 48 Page: 2 Filed: 04/05/2023

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represented by FRED WILLIAMS, Austin, TX; JOHN WITTEN- ZELLNER, Philadelphia, PA. ______________________

Before STOLL, SCHALL, and STARK, Circuit Judges. STOLL, Circuit Judge. Joe Salazar appeals the United States District Court for the Eastern District of Texas’s judgment of noninfringe- ment, challenging the court’s claim construction. Mr. Sal- azar contends that the court erroneously construed “a microprocessor” to mean one microprocessor, contrary to this court’s precedent. AT&T Mobility LLC, Sprint United Management Company, T-Mobile USA, Inc., and Cellco Partnership Inc., dba Verizon Wireless, Inc. (collectively, “AT&T”) cross-appeal the district court’s ruling that Mr. Salazar’s claims were not precluded based on prior lit- igation and challenge the judgment that the asserted claims are not invalid as anticipated. Because we agree with the district court’s claim construction, we affirm the judgment of noninfringement. Having affirmed the judg- ment of noninfringement, we do not reach AT&T’s preclu- sion arguments. Finally, we hold that AT&T waived its challenge to the jury’s verdict on anticipation by failing to move for judgment as a matter of law under Rule 50 of the Federal Rules of Civil Procedure. BACKGROUND Mr. Salazar owns U.S. Patent No. 5,802,467. The ’467 patent describes technology for wireless and wired communications, including command, control, and sensing for two-way communication of sound, voice, and data “with any appliance and/or apparatus capable of transmitting and/or receiving compatible sound, voice and data signals.” ’467 patent col. 1 ll. 8–13. The ’467 patent expired on Sep- tember 28, 2015. Case: 21-2320 Document: 48 Page: 3 Filed: 04/05/2023

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Independent claim 1, one of several claims that contain the terms at issue, recites: 1. A communications, command, control and sens- ing system for communicating with a plurality of external devices comprising: a microprocessor for generating a plurality of con- trol signals used to operate said system, said mi- croprocessor creating a plurality of reprogrammable communication protocols, for transmission to said external devices wherein each communication protocol includes a command code set that defines the signals that are employed to communicate with each one of said external de- vices; a memory device coupled to said microprocessor configured to store a plurality of parameter sets re- trieved by said microprocessor so as to recreate a desired command code set, such that the memory space required to store said parameters is smaller than the memory space required to store said com- mand code sets; a user interface coupled to said microprocessor for sending a plurality of signals corresponding to user selections to said microprocessor and displaying a plurality of menu selections available for the user’s choice, said microprocessor generating a communi- cation protocol in response to said user selections; and an infra-red frequency transceiver coupled to said microprocessor for transmitting to said external devices and receiving from said external devices, infra-red frequency signals in accordance with said communications protocols. Id. at col. 25 l. 57–col. 26 l. 17 (emphasis added). Case: 21-2320 Document: 48 Page: 4 Filed: 04/05/2023

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In 2016, Mr. Salazar sued HTC Corp., alleging HTC Corp. infringed the ’467 patent by selling certain HTC One phones that allegedly embodied the asserted claims. See Compl., Salazar v. HTC Corp., No. 2:16-cv-01096, 2016 WL 11577368 (E.D. Tex. Oct. 5, 2016) (“Salazar I”). HTC Corp. raised two defenses: (1) that it did not commit any infring- ing acts in the United States; and (2) in any event, the ac- cused phones did not infringe. See Salazar I Trial Tr. 21:21–22:2. A jury ultimately returned a verdict find- ing HTC Corp. did not infringe the ’467 patent. The jury did not decide whether the ’467 patent was valid, however, instead leaving that portion of the verdict form blank. J.A. 2201. In 2019, Mr. Salazar sued AT&T, again asserting the ’467 patent against the same products he challenged in Salazar I. HTC Corp. and HTC America, Inc. (collectively “HTC”) intervened, requesting a declaratory judgment that the accused products did not infringe. The district court severed HTC’s claims and stayed that portion of the case. At claim construction, the parties disputed limitations present in multiple asserted claims, which required: “a mi- croprocessor for generating . . . , said microprocessor creat- ing . . . , a plurality of parameter sets retrieved by said microprocessor . . . , [and] said microprocessor generat- ing . . . .” The district court characterized the dispute be- tween the parties as coming down to “whether the claims require one microprocessor that is capable of performing the recited ‘generating,’ ‘creating,’ ‘retrieving,’ and ‘gener- ating’ functions.” Salazar v. AT&T Mobility LLC, No. 2:20- cv-00004, 2020 WL 5608640, at *17 (E.D. Tex. Sept. 18, 2020) (Claim Construction Op.). The district court an- swered this question in the affirmative and construed the term to mean “one or more microprocessors, at least one of which is configured to perform the generating, creating, re- trieving, and generating functions.” Id. at *19. Relying in part on our decisions in Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313 (Fed. Cir. 2016), and In re Varma, 816 Case: 21-2320 Document: 48 Page: 5 Filed: 04/05/2023

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F.3d 1352 (Fed. Cir. 2016), the district court explained that the claim term provided certain functions that the “said mi- croprocessor” must be “necessarily configured to perform as well as the structural relationship between ‘said micropro- cessor’ and other structural elements.” Claim Construction Op., 2020 WL 5608640, at *19. Thus, the district court rea- soned, “at least one microprocessor must satisfy all the functional (and relational) limitations recited for ‘said mi- croprocessor.’” Id. at *18. Prior to trial, AT&T moved for summary judgment, ar- guing that Mr. Salazar’s claims were barred under claim preclusion and the Supreme Court’s decision in Kessler v. Eldred, 206 U.S. 285 (1907), which prevents harassment of customers of an adjudged noninfringer in specific cir- cumstances. The district court denied that motion. At trial, AT&T’s technical expert opined that the as- serted claims were anticipated by Goldstein, a prior art ref- erence that was not considered by the U.S. Patent Office during prosecution. J.A. 1256–92 (Trial Tr. 91:18–127:7). At the conclusion of trial, AT&T moved for judgment as a matter of law under Federal Rule of Civil Procedure 50 re- garding “infringement, damages, and preclusion,” but not regarding invalidity. J.A. 1572 (Trial Tr. 198:16–19). The district court confirmed with AT&T’s counsel that it was not moving for judgment as a matter of law regarding an- ticipation. Id. (Trial Tr. 198:20–22). The jury thereafter returned its verdict, finding that the accused products did not infringe the ’467 patent and that the patent was not invalid. J.A. 397–98. The district court entered final judg- ment reflecting the jury’s verdict. Mr. Salazar and AT&T both appeal. We have jurisdic- tion under 28 U.S.C. § 1295(a)(1). DISCUSSION We start by addressing Mr. Salazar’s challenge to the district court’s claim construction. We then turn to AT&T’s Case: 21-2320 Document: 48 Page: 6 Filed: 04/05/2023

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cross-appeal, in which it argues that the district court erred both by (1) denying AT&T’s motion for summary judgment that Mr. Salazar’s claims were barred by collat- eral estoppel and the Kessler doctrine and (2) finding that claims 1–7, 27–30, and 34 were not anticipated. I On appeal, Mr. Salazar argues that he is entitled to a new jury trial because the court erred in construing “a” mi- croprocessor and “said” microprocessor. Appellant’s Br. 39. According to Mr. Salazar, the court should have inter- preted the claim terms to require one or more microproces- sors, any one of which may be capable of performing each of the “generating,” “creating,” and “retrieving” functions recited in the claims. Id. at 11–12, 32–33. Put another way, in Mr. Salazar’s view, a correct claim construction would encompass one microprocessor capable of perform- ing one claimed function and another microprocessor capa- ble of performing a different claimed function, even if no one microprocessor could perform all of the recited func- tions. Mr. Salazar maintains that the district court erred by interpreting “a” microprocessor as a single microproces- sor that is capable of performing all of the later recited “generating,” “creating,” and “retrieving” functions. Id. at 31. We review a district court’s claim construction de novo where, as here, it is decided only on the intrinsic evidence. Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). We begin, as we must, with the claim language it- self. Immunex Corp. v. Sanofi-Aventis U.S. LLC, 977 F.3d 1212, 1218 (Fed. Cir. 2020). The words of a claim are gen- erally given their ordinary meaning, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Case: 21-2320 Document: 48 Page: 7 Filed: 04/05/2023

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At issue in this appeal is the proper construction of the articles “a” and “said.” We have explained that the indefi- nite article “a” means “‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Convolve, 812 F.3d at 1321 (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). “An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a de- parture from the rule.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008). We have also explained that “[t]he use of the term ‘said’ indicates that this portion of the claim limitation is a ref- erence back to the previously claimed” term. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015); see Baldwin, 512 F.3d at 1343 (the claim term “said” is an “anaphoric phrase[], referring to the initial anteced- ent phrase”). “The subsequent use of [the] definite article[] . . . ‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but simply rein- vokes that non-singular meaning.” Baldwin, 512 F.3d at 1342. In Baldwin, for example, we considered a patent de- scribing systems for cleaning the cylinder of a printing press using cleaning fabric. 1 Id. at 1340. There, the claim

1 The claim at issue in Baldwin recited in relevant part: A pre-packaged, pre-soaked cleaning system for use to clean the cylinder of printing machines com- prising in combination: (1) a pre-soaked fabric roll saturated to equilibrium with cleaning solvent disposed around a core, said fabric roll having a sealed sleeve which can be Case: 21-2320 Document: 48 Page: 8 Filed: 04/05/2023

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recited “a pre-soaked fabric roll” and subsequently recited “said fabric roll.” Id. We held that “a pre-soaked fabric roll” meant “one or more” pre-soaked fabric rolls, and that the subsequent “said fabric roll” maintained that non-sin- gular meaning. Id. at 1342–43. But we did not hold in Baldwin that using an indefinite article somehow displaces the antecedent basis rule, as to require “said fabric roll” to refer to something other than the same earlier referenced “pre-soaked fabric roll.” See id. at 1343 (stating that the Manual of Patent Examining Procedure “describes the need, in most cases, for claim terms to have proper ante- cedent bases”). In other words, in Baldwin, the “said fabric roll” was the same “one or more” pre-soaked fabric rolls that were referred to earlier in the claim. We considered a similar claim construction dispute in Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), a case involv- ing rewritable memory chips. There, the parties disputed the terms “a bit line” and “said bit line.” 2 The relevant

opened or removed from said fabric roll for use of said fabric roll, . . . and said system including (2) means for locating said fabric roll adjacent to and operatively associated with a cylinder to be cleaned. 512 F.3d at 1340 (emphasis added). 2 The claim at issue in Harari recited in relevant part: A method of treating at least one erased EEprom cell, comprising: [(1)] accessing a number of control gates and ac- cessing a bit line, thereby activating a number of memory cells, . . . ; [and] Case: 21-2320 Document: 48 Page: 9 Filed: 04/05/2023

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claim recited a method comprising accessing a number of control gates and “a bit line” to activate a number of cells. Id. at 1341. Noting that “Baldwin . . . does not set a hard and fast rule that ‘a’ always means one or more than one,” we determined that “[t]he plain language of the claim clearly indicates that only a single bit line is used when accessing a number of cells.” Id. We thus concluded that “the correct and only reasonable construction of the claim terms ‘a bit line’ and ‘said bit line’ . . . requires that a single bit line activates multiple memory cells.” Id. at 1342. Stated otherwise, “said bit line” later in the claim must be the same, singular bit line as “a bit line” earlier in the claim. We followed similar reasoning in Convolve, which in- volved a claim element introduced with the indefinite arti- cle “a” and further defined by certain recited characteristics. 812 F.3d at 1321. Specifically, we inter- preted “[u]ser interface for . . . working with a processor . . . comprising” in claims 1, 3, and 5 to require “a single pro- cessor” having all of the subsequently recited characteris- tics. Id. (emphasis added). In reaching this conclusion, we considered the subsequent references to the initial proces- sor: Specifically, claim 1 recites “a processor” in the pre- amble before recitation of “comprising,” and the claim body uses the definite article “the” to refer to the “processor.” This reference to “the processor,” referring back to the “a processor” recited in [the] preamble, supports a conclusion that the recited user interface is “operatively working with” the

[(2)] subsequent to accessing said bit line, sensing the presence of at least one activated cell from said number of memory cells . . . Harari, 626 F.3d at 1340 (emphasis added). Case: 21-2320 Document: 48 Page: 10 Filed: 04/05/2023

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same processor to perform all of the recited steps. In other words, the claim language requires a pro- cessor associated with the user interface to issue the shaped commands of the claims. Given this claim language, which contrasts with the claims described above that allow for multiple processors, we conclude that claims 1, 3, and 5 require the user interface to work with a single processor in per- forming all of the claim steps. Id. at 1321. Claim 9, however, had no subsequent reference to “the” or “said” processor. Because that claim did not reference a single processor, we interpreted “a processor” to mean “one or more processors” in the context of that claim. See id. Finally, in Varma, we considered claims directed to performing statistical analyses of investment data. 816 F.3d at 1355. There, the disputed claim limitation was “a statistical analysis request corresponding to two or more selected investments.” Id. at 1362. The Patent Trial and Appeal Board held that the limitation could be satisfied even if two statistical analysis requests were required to analyze the “two or more selected investments.” Id. We reversed the Board’s decision, explaining that: [T]he question is not whether there can be more than one request in a claim-covered system: there can. Rather, the question is whether “a” can serve to negate what is required by the language follow- ing “a”: a “request” (a singular term) that “corre- spond[s]” to “two or more selected investments.” It cannot. For a dog owner to have “a dog that rolls over and fetches sticks,” it does not suffice that he have two dogs, each able to perform just one of the tasks. In the present case, no matter how many requests there may be, no matter the variety of the requests the system may receive, the system must Case: 21-2320 Document: 48 Page: 11 Filed: 04/05/2023

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be adapted to receive a request that itself corre- sponds to at least two investments. Id. at 1362–63. Varma thus dealt with claim language that introduces a claim element using an indefinite article and further de- fines the element with subsequently recited functionality. While this structure may allow for more than a single in- stance of the claim element, it may nonetheless require that a single instance of the element be capable of perform- ing all the recited functionality. With this precedent in mind, we agree that the district court correctly construed the claim term Mr. Salazar chal- lenges on appeal. Specifically, the district court properly interpreted “a microprocessor for generating . . . , said mi- croprocessor creating . . . , a plurality of parameter sets re- trieved by said microprocessor . . . , said microprocessor generating . . .” to mean “one or more microprocessors, at least one of which is configured to perform the generating, creating, retrieving, and generating functions.” Claim Construction Op., 2020 WL 5608640, at *19. We agree with the district court that while the claim term “a microproces- sor” does not require there be only one microprocessor, the subsequent limitations referring back to “said microproces- sor” require that at least one microprocessor be capable of performing each of the claimed functions. This approach is entirely consistent with our precedent. Like the claim language in Convolve and Varma, the claim language here requires a singular element—“a mi- croprocessor”—to be capable of performing all of the recited functionality. See Convolve, 812 F.3d at 1321 (requiring “a processor” and “the processor” in claims 1, 3, and 5 to “per- form all of the recited steps”); Varma, 816 F.3d at 1362–63 (finding “a statistical analysis request corresponding to two or more selected investments” requires a single request to correspond to at least two investments where the subse- quent language “makes it unmistakable that at least two Case: 21-2320 Document: 48 Page: 12 Filed: 04/05/2023

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investments must be the subject of each statistical analy- sis”). This conclusion is bolstered when we consider Con- volve’s claim 9, which had no subsequent reference to “the” or “said” processor, and thus did not require a single pro- cessor. 812 F.3d at 1321. Here, the claim language “a mi- croprocessor,” read in the context of the full claim, aligns more closely with Convolve’s claims 1, 3, and 5—which re- quired “a processor” and “the processor” to perform the re- cited functionality—and, like those claims, should be construed to require at least one microprocessor capable of performing the recited functions. Mr. Salazar would have us read the phrase “one or more” in the district court’s claim construction to mean “any one of the one or more” when referring to the later- recited functions. Appellant’s Br. 35. We decline to do so. Although Mr. Salazar insists that the phrase “said micro- processor” “simply reinvokes th[e] non-singular meaning,” Id. at 22 (quoting Baldwin, 512 F.3d at 1342), the claim’s use of “said” does not negate what is required by the lan- guage that follows “said”: a “microprocessor” that “gen- erat[es],” “creat[es],” and “retriev[es].” As we stated in Varma, “[f]or a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.” 816 F.3d at 1363. Here, it does not suffice to have multiple micropro- cessors, each able to perform just one of the recited func- tions; the claim language requires at least one microprocessor capable of performing each of the recited functions. Because we agree with the district court’s claim con- struction, we affirm its judgment of noninfringement. II We now turn to AT&T’s cross-appeal challenging (1) the district court’s ruling that Mr. Salazar’s claims were not barred by claim preclusion or the Kessler doctrine; and Case: 21-2320 Document: 48 Page: 13 Filed: 04/05/2023

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(2) the district court’s finding that the asserted claims were not invalid as anticipated. At oral argument, AT&T agreed that we need not reach its preclusion arguments if we affirm the district court’s judgment of noninfringement. See Oral Arg. at 9:46–10:10, https://oralarguments.cafc.uscourts.gov/default.aspx?fl=21 -2320_11072022.mp3. As explained above, we affirm the district court’s judgment and, accordingly, do not address this issue. Finally, we turn to AT&T’s anticipation argument. The jury found that the asserted claims were not anticipated, and the district court subsequently entered judgment con- sistent with that finding. On appeal, AT&T argues that “[i]t was reversible error for the district court to hold that asserted claims 1–7, 27–30, and 34[] are not anticipated” because AT&T “presented substantial, clear and convinc- ing evidence” that the asserted claims are anticipated. Cross-Appellants’ Br. 49–50. But AT&T failed to move for judgment as a matter of law under Federal Rule of Civil Procedure 50. Its failure to do so dooms this argument. A party must make proper motions under Rule 50 in order to appeal an adverse verdict on grounds relating to the sufficiency of the evidence. See Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1308 (Fed. Cir. 2011) (“Rule 50(a)(2) requires the moving party” to make its motion for judgment as a matter of law “to preserve the issue.”); Feld Motor Sports, Inc. v. Traxxas, L.P., 861 F.3d 591, 596 (5th Cir. 2017) (“[T]his court has jurisdiction to hear an appeal of the district court’s legal conclusions . . . , but only if it is sufficiently preserved in a Rule 50 motion.”). Here, AT&T did not move under Rule 50 regarding any va- lidity ground, including anticipation. As a result, it never challenged the sufficiency of the evidence with respect to anticipation before the district court, and it has therefore waived its anticipation challenge on appeal. Case: 21-2320 Document: 48 Page: 14 Filed: 04/05/2023

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Hoping to correct its error, AT&T requests we “liberally constru[e]” Rule 50(a) to require parties to move under that Rule only if “‘the court [or opposing] attorneys needed any more enlightenment about [the appellant’s] position on those issues.’” Cross-Appellants’ Reply Br. 19–20 (quoting Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1380 (Fed. Cir. 2009)). But AT&T’s reliance on Blackboard is misplaced. In Blackboard, the defendant made “cursory” Rule 50(a) motions regarding anticipation and obvious- ness, and the district court acknowledged those motions. 574 F.3d at 1379. We held that “in light of the Fifth Cir- cuit’s practice of liberally construing the rule,” the cursory motions and “the district judge’s prompt statement that he would take both motions under advisement, made clear that no more was necessary to serve the purposes of Rule 50(a).” Id. at 1379–80. That was not the case here. In contrast to the defend- ant in Blackboard, AT&T explicitly expressed to the dis- trict court that it would not move under Rule 50(a) regarding anticipation: THE COURT: Let me hear from Defendants. What matters do Defendants seek relief on under Rule 50(a)? [COUNSEL FOR AT&T]: Your Honor, we intend to seek relief on issues of infringement, damages, and preclusion. THE COURT: Not on anticipation under Rule 102? [COUNSEL FOR AT&T]: We are not moving un- der Rule 50(a) for anticipation. J.A. 1572 (Trial Tr. 198:16–22). In other words, AT&T clearly disavowed any intention to move for judgment as a matter of law regarding anticipation. Accordingly, even under the most liberal construction of the requirements of Case: 21-2320 Document: 48 Page: 15 Filed: 04/05/2023

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Rule 50(a), AT&T has nevertheless waived its anticipation argument. CONCLUSION We have considered the parties’ remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm the judgment of noninfringement. AFFIRMED COSTS No costs.