SIMO HOLDINGS INC. v. HONG KONG UCLOUDLINK NETWORK

On January 5, 2021, the Federal Circuit rejected the district court’s claim construction in favor of SIMO. Because the Federal Circuit found that SIMO’s patent requires a plurality of “non-local calls database”, the court found that uCloudlink is entitled to summary judgment of noninfringement. SIMO did not identify a triable issue on the factual question of whether the accused products lack a nonlocal calls database. In particular, the preamble of SIMO’s claim recites:

A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database, at least one of the plurality of programs stored in the memory comprises instructions executable by at least one of the plurality of processors for: [a series of steps]

First the Federal Circuit found that the preamble was limiting because the claim was not a method claim but an apparatus claim and that the preamble supplied the only structure for the claimed apparatus. Second, the court found that the list (memory, processors, programs, communication circuitry, authentication data and/or in memory and non-local calls database) was not a conjunctive list to be modified by the series modifier “a plurality of”. Rather, “a plurality of” applied to each of the listed components individually because of the language “and/or” (instead of just “and”) preceding “memory.” That is, the claim required a plurality of memory, a plurality of processors, etc., and a plurality of non-local calls database. Therefore, a “non-local calls database” was not an optional limitation but a required limitation. Notably, the court found that there is no article preceding “non-local calls database.” If the series modifier (“a plurality of”) did not apply to all members of the group, a relevant artisan would expect an “a” before “non-local calls database”. Thus, the court concluded that SIMO’s claim requires a plurality of non-local calls databases in the claimed device and uCloudlink is entitled to a judgment of noninfringement.