• Federal Circuit to Hear Oral Argument in SiRF Technology Appeal on November 4
  • November 2, 2009 | Authors: John D. Dellinger; Barry J. Herman
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On November 4, 2009, the Federal Circuit is scheduled to hear oral argument in SiRF Technology, Inc. v. ITC (2009-1262).

    By way of background, Global Locate, Inc. ("GL") filed a complaint with the ITC against SiRF Technology ("SiRF") in April 2007, alleging violation of Section 337 by SiRF's importation and sale of certain Global Positioning System ("GPS") chips, chipsets, products, and software, which allegedly infringed certain patents owned by GL. The patents at issue included U.S. Patent No. 6,606,346 ("the `346 patent"), U.S. Patent No. 6,704,651 ("the `651 patent"), U.S. Patent No. 6,651,000 ("the `000 patent"), U.S. Patent No. 6,937,187 (`the `187 patent"), U.S. Patent No. 7,158,080 (`the 080 patent"), and U.S. Patent No. 6,417,801 ("the `801 patent"). The complaint named SiRF and four of its customers as respondents. Broadcom Corporation is also a complainant. The Commission instituted an investigation (Inv. No. 337-TA-602) and an evidentiary hearing was held. On August 8, 2008, ALJ Carl C. Charneski issued an initial determination concluding that all asserted claims were valid and infringed. SiRF and the Commission Investigative Staff petitioned for review of several of ALJ Charneski's rulings, but the ITC determined to review only 3: (1) whether GL had standing to assert the `346 patent, (2) whether SiRF directly infringes the `651 patent, and (3) whether SiRF directly infringes the `000 patent.

    On January 15, 2009, the ITC found that GL had standing to assert the `346 patent and that SiRF directly infringes both the `651 patent and the `000 patent. According to SiRF's briefs, the ITC did not address several issues raised by SiRF, including claim construction issues and whether the intervening In re Bilski decision rendered certain of the claims of two patents, the `187 patent and the `801 patent not patent-eligible. The ITC issued a limited exclusion order and cease-and-desist orders, prohibiting the importation and sale of covered GPS devices. SiRF appealed the ITC decision.

    According to SiRF's opening and reply briefs, the issues on appeal involve six patents. Regarding the `346 patent, the issue is whether the investigation should have been terminated as to this patent because of lack of standing due to the failure to join a co-owner of the patent. Specifically, SiRF argues that the invention was conceived while the inventor worked for another company, and that the other company should be deemed a co-owner of the patent. Regarding the `651 and `000 patents, there are several issues. First, SiRF questions whether the ITC erred in ruling that SiRF infringes the two patents on the ground that SiRF performs all of the steps in the method claims. SiRF argues that they do not perform all of the steps in the method claims directed to satellite communication because customers and end users perform some of the steps. Alternatively, they argue that certain of the steps of those same claims are not performed in the U.S. As a related issue, SiRF questions whether the ITC violated its duty under the Administrative Procedures Act by failing to address SiRF's argument that all of the steps of claim 1 of the `651 patent and the `000 patent are not performed in the U.S. SiRF also questions whether the ITC's infringement determination as to the `651 patent is based on an erroneous claim construction of "satellite ephemeris," whether the ITC's infringement determination as to the `000 patent is based on an erroneous claim construction of "satellite signals," and whether the ITC erred in finding that the Zhao patent did not anticipate claims in the `000 patent.

    Regarding the `080 patent, SiRF characterizes the issue as whether the ITC's infringement determination is based on an erroneous claim construction of "long-term satellite tracking data." Regarding the `801 and `187 patents, the issues on appeal include whether the ITC erred in ruling that the asserted method claims recite processes that are patent-eligible under 35 U.S.C. ยง 101. SiRF argues that the methods of the `801 and `187 patents do not meet the "tied to a particular machine or apparatus" or "transforms a particular article into a different state or thing" tests announced in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). Finally, SiRF questions whether the ITC erred in finding that SiRF meets the "dynamic model" and "sequential estimator" limitations of the `187 patent claims.

    According to the Commission's Brief in support of the ITC's final determination, the issues on appeal also involve the same six patents. Regarding the `346 patent, the Commission sees the issue as whether it properly rejected SiRF's challenge to GL's standing to assert the patent. Regarding the `651 and `000 patents, the Commission sees the issues as (1) whether it correctly construed "satellite ephemeris" in the `651 patent, consistent with the definition in the patent, (2) whether it correctly construed "satellite signals" in the `000 patent, consistent with a preferred embodiment, (3) whether it correctly found that SiRF directly infringes the two patents because SiRF controls performance of all of the claimed steps in the U.S., and (4) whether substantial evidence supports its finding that the Zhao patent did not anticipate the asserted claims of the `000 patent. Regarding the `080 patent, the Commission characterizes the issue as whether the term "long-term satellite tracking data" merely requires that the "satellite tracking data," as a whole, be "long term." Regarding the `801 and `187 patents, the Commission sees the issues on appeal as whether the process claims in the `801 and `187 patents are tied to a particular machine, such as a GPS receiver, and whether substantial evidence supported the Commission's finding that certain SiRF products infringe asserted claims of the `187 patent.

    In Broadcom and GL's (collectively "GL") Intervenor Brief, GL argues (1) that the Commission's determination of the ownership of the `346 patent was correct, (2) that the Commission properly rejected SiRF's claim of no liability due to either divided infringement, or performance of some steps outside the U.S., (3) that the Commission properly construed "satellite ephemeris" in the `651 patent and "satellite signals" in the `000 patent, (4) that the Commission correctly found that the Zhao reference did not anticipate the asserted claims of the `000 patent, (5) that the Commission properly construed "long-term satellite tracking data" in the `080 patent, (6) that the `'801 and `187 patents claim patentable subject matter, and (7) that the Commission properly found that SiRF infringes the `187 patent.