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GTE WIRELESS, INC. v. QUALCOMM

February 14, 2002

GTE WIRELESS, INC., PLAINTIFF,
V.
QUALCOMM, INC, DEFENDANT. QUALCOMM, INC., COUNTERCLAIMANT, V. GTE WIRELESS, INC., COUNTERCLAIM DEFENDANT.



The opinion of the court was delivered by: Brewster, Judge.

  ORDER DENYING GTE'S MOTION FOR SUMMARY JUDGMENT ON INFRINGEMENT GRANTING QUALCOMM'S MOTION ON SUMMARY JUDGMENT OF NO INFRINGEMENT DENYING ALL OTHER PENDING MOTIONS AS MOOT

The plaintiff, GTE, filed an action against Qualcomm, Inc., asserting the Qualcomm phones that incorporate the Preferred Roaming List software*fn1 infringed the 4,916,728 patent ("728 patent"). Qualcomm counterclaimed seeking a declaratory judgment that its phones do not infringe the patent.

Qualcomm seeks summary judgment that (1) its phones do not literally infringe the 728 patent; (2) that its phones do not infringe the 728 patent under the doctrine of equivalents; (3) that Qualcomm has not actively induced infringement; (4) that Qualcomm has not engaged in contributory infringement; and (5) that claim 2 of the 728 patent is anticipated.

The Court bifurcated the summary judgment motions to first consider the issues of literal infringement and infringement under the doctrine of equivalents and then, if necessary, to adjudicate the other claims in separate proceedings. After reading the briefs, meeting with attorneys and experts on various occasions, and hearing oral arguments from both sides, the Court finds that the Qualcomm phones, as a matter of law, do not infringe the 728 patent.*fn2

I. Background

A. 728 Patent

The 728 patent deals with technology that allows a cellular telephone to choose the best system on which to provide service. Cellular telephones are wireless telephones that transmit signals over radio frequencies to engage in two-way communication through a central radio station often referred to as a cell site or "base station." In any given geographical area, one or more companies, called service providers or carriers (e.g., AT&T, Sprint, Cingular, Verizon), maintain a cellular system, which includes many base stations, on which it provides cellular service to its customers. The Federal Communications Commission ("FCC") assigns a specific set of radio frequencies, called a frequency set, to a service provider for use in an assigned geographical location, referred to as a geographical region. The same frequency set may be assigned to different carriers in different geographical regions. For example, where the FCC may assign Verizon the A frequency Set, Cingular the B frequency set, and Sprint the C frequency set in the San Diego geographical region, the FCC may give Sprint the A frequency set, Verizon the B frequency set, and Cingular the C frequency set in the Los Angeles geographical region. As a result, in border areas (called overlapping coverage areas), a San Diego Sprint customer may search the "A" frequency set and find the Verizon system, which is transmitting on the same frequencies in the Los Angeles area.

On each frequency, the service provider broadcasts a unique system identification code ("SID") that allows the cellular telephone to determine which carrier is providing service on that frequency. The service provider's SID is called a "home SID;" a different carrier's SID is called a "nonhome SID;" and a SID that the phone has been programmed to exclude is called a "negative SID." A SID that is neither home nor negative is called a "nonhome, nonnegative SID."

A carrier will maximize its earnings when its customers use its system to make a phone call because it will incur a fee if its subscribers use another's system. For example, if a Sprint user uses the AT&T system to make a call, Sprint has to pay a fee to AT&T. As a result, system selection is an important problem in cellular telephone technology.

In July 1988, Kevin Blair filed the 728 patent as an attempt to solve this system selection problem by cellular telephones. The primary function of the patent is that a phone will scan frequencies and choose the frequency on which its home SID is broadcast, and if one is not available, choose a frequency that corresponds to a nonhome, nonnegative SID. The phone can provide service on a frequency that corresponds to a negative SID only if (1) frequencies corresponding to a home SID and a nonhome, nonnegative SID are unavailable and (2) the user dials a predetermined number (i.e., 911). This patent becomes particularly important in overlapping coverage areas when the phone can detect a competing carrier's system while searching its own frequency set. The patent teaches that even if the telephone of a San Diego Sprint customer finds a Verizon system while searching the A frequency set, the phone will reject the corresponding frequency until it has determined that no Sprint system is available.

Claims 2, 6 and & 7 of the patent are the only ones in dispute. Claim 2 states:

A cellular telephone unit including:

scanning means for sequentially monitoring a plurality of frequencies;
detection means for detecting any SID that is present on any said frequency that is monitored by said scanning means;
frequency selection means for selecting as a working frequency the frequency corresponding to a home SID if said home SID is detected by said detection means, and for selecting as a working frequency the frequency corresponding to a nonhome, a nonnegative SID if such an SID is detected by said detection means and a home SID is not detected by said detection means.

Claim 6 states:

A cellular telephone unit comprising:

scanning means for sequentially monitoring a plurality of frequencies and for detecting any SID corresponding to any frequency;
frequency selection means for selecting a working frequency from among said plurality of frequencies;
frequency control means for controlling the selection by said frequency selection means of a working frequency; said working frequency being a frequency corresponding to a home SID if said home SID is detected by said scanning means and said working frequency being a frequency corresponding to a nonnegative SID if such an SID is detected by said scanning means and a home SID is not detected by said scanning means and said working frequency being a frequency corresponding to a negative SI]) if
(i) no home SID is detected by said scanning means, and
(ii) no nonnegative SID is detected by said scanning means, and

(iii) a user dials a predetermined number.

Claim 7 says a "cellular telephone unit as defined by claim 6 wherein the predetermined number is an emergency number." Claim 7 is dependent on claim 6.

B. The Accused Device: The Qualcomm Phones

If the phone detects a SID ("initial SID") on one of the frequencies in the initial scan list, it determines whether the SID is listed in the phone's Preferred Roaming List ("PRL"). The PRL provides the SIDs of the systems all over the country which the service provider intends the phone to consider and the frequencies on which the service provider intends the phone to detect these SIDs. The PRL is broken down into smaller sets of SIDs programmed into the phone by the carrier, called geo-regions,*fn3 which rank the SIDs in order of preference within each region. The cater can program the PRL and, thus, decide how many geo-regions will exist in the PRL, the ranking of SIDs in each geo-region, and the sequence in which frequencies will be searched by the phone. if the initial SID is found in the PRL, the phone then checks the SID's preference ranking within the PRL geo-region. if it is the most preferred SID in that geographic region, the phone will choose the frequency associated with that SID as the "working frequency." If it is not the most preferred, the phone will identify all the SIDs in the geographic region that are more preferred than the initial SID and create a working list called an alternate scan list ("ASL"). The phone then tunes to the frequencies in the ASL associated with the most preferred SID and successively attempts to detect the SID on one of its frequencies. If the most preferred SID is detected, then that frequency is selected as the working frequency. if not, the phone searches the frequencies that correspond to the second most preferred SID in the particular region. If the second most preferred SID is detected, then that frequency is selected as the working frequency. if not, the phone continues the sequential process until all the entries in the ASL have been checked. If no more preferred SIDs have been found after searching all the frequencies in the ASL, the phone then reverts to using the initial SID. See 5/8/01 Steve Landauer Rept.; 10/12/01 Sorenson Decl. ¶¶ 12-20a.

A simple illustration provides an example of how the Qualcomm phone works.

Geo-Region SID Frequencies Priority
San Diego 11 50, 75 More (Home SID) Geo-Region 22 100, 125 More
33 150, 175 More
44 200, 225 More
Los Angeles 85 10 More Geo-Region
95 20, 30 More
Santa Barbara 77 35, 45 More Geo-Region
88 55, 66 Negative

When the Qualcomm phone is turned on, the phone will search the initial scan list beginning with the frequency it most recently used to try to locate a SID. Assume the phone searches frequency 150 because this was the last frequency the phone used and finds SID 33. Next, the phone determines where SID 33 is located in the PRL. In this case, the SID is located in the San Diego geo-region of the PRL. The telephone realizes it is not the most preferred SID in that region and creates an ASL that includes frequencies corresponding to the more preferred SIDs in the region. These are frequencies 50, 75, 100, and 125 which correspond to SIDs 11 and 22.

The Qualcomm phone searches for a more preferred SID, beginning with the first frequency. In this case, the phone searches frequency 50 and attempts to locate home SID 11. if it is unable to locate a SID on frequency 50, it will search frequency 75. If the phone has searched all the frequencies more preferred than the initial frequency, and has not found a SID, it will ...


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