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Lucent Techs., Inc. v. Gateway, Inc.

Lucent Techs., Inc. v. Gateway, Inc.

United States Court of Appeals for the Federal Circuit

September 25, 2008, Decided

2007-1546, 2007-1580

Opinion

 [***1482]   [*712]  PROST, Circuit Judge.

This case involves alleged infringement by Gateway, Inc. ("Gateway"), Microsoft Corporation ("Microsoft"), and Dell Inc. ("Dell") of two patents owned by Lucent Technologies, Inc. ("Lucent"). After a jury verdict of infringement and a damages award of $ 1,538,056,702, the district court granted judgment as a matter of  [**2] law ("JMOL"), and alternatively a new trial, on infringement and damages. Lucent Techs., Inc. v. Gateway, Inc., 509 F. Supp. 2d 912 (S.D. Cal. 2007) ("Lucent"). For the reasons set forth below, we affirm the court's grant of JMOL based on lack of standing for one patent and based on non-infringement for the other patent. We need not decide the damages issues.

 [*713]  I

The patents at issue in this appeal are directed to methods of compressing digital audio files to reduce storage space without compromising the quality of sound produced from the files. The methods involve using the frequencies of the audio signals to generate frequency coefficients, and then using certain thresholds--which dictate what data can be ignored and how finely to encode the data--to assign numbers to the audio signals, i.e., to "quantize" the frequency information. For example, an "absolute hearing threshold" is an estimate of the quietest sounds a person can hear. A "masking threshold" reflects what sounds are inaudible when other sounds are present.

James Johnston and Joseph Hall are the listed inventors on the earliest application, Application No. 07/292,598 ("the '598 application"), which was filed in 1988 while  [**3] they were working at AT&T Bell Laboratories ("AT&T"). 1 They are likewise the inventors of U.S. Patent No. 5,341,457 ("the '457 patent"), which was filed in 1993 and is a continuation, through two other applications, of the '598 application. The claims of the '457 patent are directed to a method of compressing digital audio files wherein "tonality values" are used in generating masking thresholds for quantization. Claim 1 recites:

1. A method of processing an ordered time sequence of audio signals partitioned into a set of ordered blocks, each said block having a discrete frequency spectrum comprising a first set of frequency coefficients, the method comprising, for each of said blocks, the steps of:

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543 F.3d 710 *; 2008 U.S. App. LEXIS 20319 **; 88 U.S.P.Q.2D (BNA) 1481 ***

LUCENT TECHNOLOGIES, INC., Plaintiff/Counterclaim Defendant-Appellant, and LUCENT TECHNOLOGIES GUARDIAN I LLC, Counterclaim Defendant, and MULTIMEDIA PATENT TRUST, Plaintiff/Counterclaim Defendant, v. GATEWAY, INC., GATEWAY COUNTRY STORES LLC, GATEWAY COMPANIES, INC., COWABUNGA ENTERPRISES, INC., and GATEWAY MANUFACTURING LLC, Defendants/Counterclaimants, and DELL INC., Defendant, and MICROSOFT CORPORATION, Defendant/Counterclaimant-Cross Appellant.

Prior History:  [**1] Appeal from the United States District Court for the Southern District of California in consolidated case nos. 02-CV-2060, 03-CV-0699, and 03-CV-1108, Senior Judge Rudi M. Brewster.

Lucent Techs., Inc. v. Gateway, Inc., 509 F. Supp. 2d 912, 2007 U.S. Dist. LEXIS 57135 (S.D. Cal., 2007)

Disposition: AFFIRMED.

CORE TERMS

patent, infringement, coefficients, Technology, encoder, frequency, district court, threshold, quantization, invented, comprising, contends, decoding, patentee, license, masking, assign, new trial, specification, non-infringement, converting, software, domain, inventors, tonality, signals, jury's finding, subject matter, audio signal, structures

Civil Procedure, Trials, Judgment as Matter of Law, General Overview, Patent Law, Jurisdiction & Review, Standards of Review, Judgments, Relief From Judgments, Motions for New Trials, Appeals, De Novo Review, Abuse of Discretion, Justiciability, Standing, Questions of Fact & Law, Substantial Evidence, Specifications, Description Requirement, Claims & Specifications, Nonobviousness, Elements & Tests, Prior Art, Means Plus Function, Business & Corporate Compliance, Ownership, Conveyances, Assignments, Infringement Actions, Burdens of Proof