Openwave Systems v. Apple Inc.: Disparagement of prior art in the specification can disavow claimed subject matter

3 min

In Openwave Systems, Inc., NKA Unwired Planet, Inc. v. Apple Inc., Research in Motion, Ltd. Research in Motion Corp., Slip Op. 2015-1108 (Fed. Cir., Dec. 15, 2015), the Federal Circuit upheld the district court’s finding that a patent specification disparaging a prior art embodiment constituted a disavowal sufficient to exclude that embodiment from the scope of the claims.


In Openwave, three related patents with the same specification were at issue, U.S. Patent Nos. 6,405,037, 6,430,409, and 6,625,447 (“the ’037 patent”, “the ’409 patent” and “the ’447 patent,” respectively)[1]. Openwave Systems, Inc., NKA Unwired Planet, Inc. (“Unwired Planet”) filed suit in the District of Delaware, and also initiated an action with the International Trade Commission (“ITC”). The Delaware district court stayed the suit in light of the ITC action. After Unwired Planet received an unfavorable claim construction ruling from the ITC, Unwired Planet informed the Delaware district court that, if the same construction were adopted by the district court, Unwired Planet would concede noninfringement of its patents.

District Court Claim Construction

The Delaware district court construed three claim terms: “mobile device” in the ’037 patent, “wireless mobile telephone” in the ’409 patent, and “two-way communication device” in the ’447 patent. As agreed by the parties, these terms were construed together. The issue was whether the disputed terms, when properly construed, cover mobile devices that contain a “small microcontroller” in order to facilitate communications between a server and a user device, or whether the claims are broader and encompass mobile devices including a “computer module.”

The Delaware district court determined that statements in the specification clearly disparaged mobile devices containing computer modules and thus found that there was a disavowal of such subject matter by the patentee. In particular, the district court noted that “repeated derogatory statements . . . reasonably may be viewed as a disavowal of that subject matter from the scope of the [p]atent’s claims.”[2] The terms at issue therefore were construed to mean a “portable wireless two-way communication device that does not contain a computer module.” Unwired Planet thereafter filed a stipulation of non- infringement. The district court entered final judgment of non-infringement, and Unwired Planet appealed that judgment to the Federal Circuit.

Federal Circuit Opinion

The Federal Circuit reviewed the district court’s claim construction de novo, as that construction was based entirely on intrinsic evidence. In so doing, the Federal Circuit noted its precedent that the specification is usually dispositive in determining proper claim construction. The Court further noted generally that the description in a patent specification of a preferred embodiment is not sufficient to constitute disavowal of subject matter, even if it is the only embodiment described.[3] The Court then focused on determining “whether and to what extent the specification disparages mobile devices that include ‘computer modules.’”

The Federal Circuit observed that the specification was “rife” with “remarks that disparage and, therefore, disclaim mobile devices that incorporate computer modules.” The Court pointed to several examples throughout the specification of such remarks. Moreover, the Court held that it was clear from the specification that combining mobile devices with computer modules was itself the problem with the prior art, and that solution to the problem required movement away from that combination. While the Federal Circuit said that there was a “high bar to finding disavowal of claim scope through disparagement of the prior art in the specification,” the Federal Circuit concluded that, in light of the repeated disparagement of the prior art “computer module” embodiment in the specification, the patents-in-suit could not be read to cover mobile devices containing “computer modules.” The Federal Circuit thus affirmed the district court’s claim construction.