Addressing issues of claim construction, the United States Court of Appeals for the Federal Circuit affirmed the district court’s narrow construction based on a disclaimer in the specification. Openwave Systems, Inc., NKA Unwired Planet, Inc. v. Apple Inc. et al., Case No. 15-1108 (Fed. Cir., Dec. 15, 2015) (O’Malley, J.).

All three patents asserted by the plaintiff, Unwired Planet, against the defendants, Apple and Research in Motion, had previously been litigated at the International Trade Commission (ITC). Both at the ITC and before the district court, the issue was whether the claimed “mobile devices” encompassed “computer modules.” Unwired Planet argued that “mobile device” should be given its plain and ordinary meaning, thereby leaving open the possibility that a “mobile device” was one that contained a computer module. However, both the ITC and the district court disagreed, concluding that the specification of the asserted patents disclaimed devices that also functioned as a “computer module.” Based on this construction, Unwired Planet conceded non-infringement and appealed the construction to the Federal Circuit.

Addressing the disavowal issue, the Federal Circuit, like the district court, found that plain and ordinary meaning should not attach, because the patentee distanced the claimed invention from a device containing a computer module. In particular, the asserted patent specifications addressed in great detail the perceived problems with prior art mobile devices, repeatedly making derogatory statements about early “intelligent communication devices”—devices that combined a mobile device with a computing module. According to the patentee’s characterizations, these devices were too large, too expensive to produce and ran on processors that could not be effectively commercialized. As the patentee explained the claimed invention was distinguishable from the prior art in that the asserted patents, the patentee devised a way to divert computing power to a remote server, thus eliminating the need for mobile devices having computing capacity on their own. Indeed, according to the specifications of the asserted patents, the cellular telephone pictured in the patents was not a combination of a computer module and a wireless communication module.

Because the common specification taught mobile devices that deliberately lacked the type of computing power that would be inherent to a computer module, the Federal Circuit concluded as a matter of law that the derogatory characterizations of the prior art implementations was a disavowal of the scope of the patent claims. Accordingly, the Federal Circuit upheld the district court’s construction.