Case: 20-1903 Document: 98 Page: 1 Filed: 08/31/2022
`United States Court of Appeals
`for the Federal Circuit
`Appeal from the United States International Trade
`Commission in Investigation No. 337-TA-1138.
`Decided: August 31, 2022
`JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
`DC, argued for appellant. Also represented by LUCAS M.
`CHRISTOPHER SEIDL, Robins Kaplan LLP, Minneapolis,
` RICHARD P. HADORN, Office of the General Counsel,
`United States International Trade Commission, Washing-
`ton, DC, argued for appellee. Also represented by DOMINIC


`Case: 20-1903 Document: 98 Page: 2 Filed: 08/31/2022
` CHARLES M. MCMAHON, McDermott, Will & Emery
`LLP, Chicago, IL, argued for all intervenors. Also repre-
`SCHULZ, Sheppard, Mullin, Richter & Hampton LLP, San
`Diego, CA; EDWARD V. ANDERSON, Palo Alto, CA.
` ______________________
`Before NEWMAN, TARANTO, and CHEN, Circuit Judges.
`Chen, Circuit Judge.
`Complainant INVT SPE LLC (INVT) appeals from a
`determination by the International Trade Commission
`(Commission or ITC) in Investigation No. 337-TA-1138,
`Certain LTE- and 3G-Compliant Cellular Communications
`Devices, that respondents Apple Inc., HTC Corporation,
`HTC America, Inc., ZTE Corporation, and ZTE (USA) Inc.
`did not violate 19 U.S.C. § 1337 (section 337) by the impor-
`tation and sale of personal electronic devices, such as
`smartphones, smart watches, and tablets. INVT’s com-
`plaint alleged that these devices infringed five INVT pa-
`tents, only two of which are at issue in this appeal—U.S.
`Patent Nos. 6,760,590 (’590 patent) and 7,848,439 (’439 pa-
`tent). In a final initial determination (FID), the adminis-
`trative law judge (ALJ) determined that the accused
`devices did not infringe claims 3 and 4 of the ’590 patent
`and claims 1 and 2 of the ’439 patent. In the Matter of Cer-
`tain LTE- and 3G-Compliant Cellular Communications
`Devices, Initial Determination on Violation of Section 337,
`No. 337-TA-1138, 2020 WL 1504741, at *2 (Feb. 18, 2020)
`(FID). The ALJ also determined that INVT had failed to
`meet the technical prong of the domestic industry require-
`ment as to those claims. Id. INVT petitioned the Commis-
`sion for review of those findings, J.A. 1787–1815, 1831–56,
`which the Commission decided not to review, In the Matter


`Case: 20-1903 Document: 98 Page: 3 Filed: 08/31/2022
`of Certain LTE- and 3G-Compliant Cellular Communica-
`tions Devices, Notice of a Commission Determination to Re-
`view in Part a Final Initial Determination Finding No
`Violation of Section 337 and, on Review, to Affirm the Final
`Initial Determination’s Findings of No Violation; Termina-
`tion of the Investigation, No. 337-TA-1138, 2020 WL
`4582313, at *2 (June 1, 2020) (Commission Decision). The
`Commission affirmed the ultimate finding of no violation
`of section 337. See id. at *3. INVT appeals from this final
`determination. All five respondents intervened, but Apple,
`Inc., ZTE (USA) Inc., and ZTE Corporation have since
`withdrawn as parties, leaving HTC Corporation and HTC
`America as intervenors. See ECF Nos. 67, 93 (orders grant-
`ing motions to withdraw).
`We affirm the Commission’s determination that there
`was no section 337 violation with respect to the ’439 patent
`because INVT failed to show infringement and the exist-
`ence of domestic industry. We agree with INVT’s argument
`on appeal that the asserted ’439 claims are drawn to “capa-
`bility.” However, we disagree with INVT on infringement.
`For infringement purposes, a computer-implemented claim
`drawn to a functional capability requires some showing
`that the accused computer-implemented device is pro-
`grammed or otherwise configured, without modification, to
`perform the claimed function when in operation. We affirm
`the noninfringement finding in this case because INVT
`failed to introduce any evidence to establish that the ac-
`cused devices, when put into operation, will ever perform
`the particular functions recited in the asserted claims.
`We find the Commission’s determination with respect
`to the ’590 patent moot based on the patent’s expiration,
`and thus vacate and remand as to that patent.
`A. ’590 Patent
`Before this decision issued, the ’590 patent expired on
`March 5, 2022. See Letter from the Office of the General
`Counsel Attorney for ITC, ECF No. 78; Appellant’s Suppl.


`Case: 20-1903 Document: 98 Page: 4 Filed: 08/31/2022
`Br. 1, ECF No. 84. For the reasons discussed, infra, the
`appeal as it relates to the ’590 patent is moot. We vacate
`the Commission’s decision as to that patent and remand
`with instructions to dismiss as moot the relevant portion of
`the complaint.
`B. ’439 Patent
`The ’439 patent relates to wireless communication sys-
`tems, specifically an improvement to adaptive modulation
`and coding (AMC), which is a technique used to transmit
`signals in an orthogonal frequency division multiplexing
`(OFDM) system. ’439 patent col. 1 ll. 7–14.
`In an OFDM system, the frequency bandwidth is di-
`vided into subcarriers. A subcarrier is a narrow subdivi-
`sion of a communication system’s available frequency
`spectrum (bandwidth). Id. col. 1 ll. 25–26. Groups of sub-
`carriers in neighboring positions within the frequency do-
`main are referred to as subbands. Id. col. 2 ll. 18–22. AMC
`involves adjusting parameters, such as a modulation
`scheme or a coding rate, in response to changing conditions
`that impact the channel quality. Id. col. 1 ll. 34–52, 65–67.
`The prior art included AMC based on subcarrier and sub-
`bands divisions of the communication system bandwidth.
`See id. col. 1 l. 53 – col. 2 l. 49.
`The ’439 patent is directed to AMC based on subband
`groups. See id. col. 5 l. 9 – col. 6 l. 44, col. 7 l. 32 – col. 10
`l. 26. This means that that the modulation scheme and
`coding rate are determined per subband group as the min-
`imum unit of adaptivity, rather than per subcarriers or
`subbands. Id. col. 7 l. 32 – col. 12 l. 24; see id. col. 2 ll. 4–8;
`id. col. 2 ll. 12–25, col. 7 l. 65 – col. 8 l. 2, col. 8 ll. 41–48,
`col. 10 ll. 21–26. Subband groups are made up of multiple
`subbands, although not necessarily subbands in neighbor-
`ing positions. See id. col. 7 ll. 43–46; col. 10 l. 26 – col. 11
`l. 3. A subband group might consist of a plurality of neigh-
`boring subbands, id. col. 10 ll. 33–49, Fig. 8, or a plurality
`of subbands at predetermined intervals, id. col. 10 ll. 50–


`Case: 20-1903 Document: 98 Page: 5 Filed: 08/31/2022
`61, Fig. 9, or even all of the subbands as a single subband
`group, id. col. 10 l. 62 – col. 11 l. 3, Fig. 10.
`Claim 1 of the ’439 patent recites:
`1. A communication apparatus comprising:
`[a] a channel estimating section that carries out a
`channel estimation per subband;
`[b] a parameter deciding section that decides mod-
`ulation parameters and coding parameters per sub-
`band group comprised of a plurality of the
`subbands, based on a result of the channel estima-
`tion per subband;
`[c] a parameter information transmission section
`that transmits, to a communicating party, param-
`eter information indicating the modulation param-
`eters and the coding parameters decided at the
`parameter deciding section;
`[d] a receiving section that receives a signal con-
`taining data modulated and encoded on a per sub-
`band group basis at the communicating party using
`the modulation parameters and the coding param-
`eters of the parameter information transmitted at
`the parameter information transmission section;
`[e] a data obtaining section that demodulates and
`decodes the received signal received at the receiv-
`ing section on a per subband group basis using the
`modulation parameters and the coding parameters
`decided at the parameter deciding section, and ob-
`tains the data contained in the received signal; and
`[f] a pattern storage section that stores in advance
`patterns for selecting subbands constituting the
`subband groups wherein the parameter deciding
`section decides the modulation parameters and the
`coding parameters per subband group comprised of
`the subbands selected based on the patterns stored


`Case: 20-1903 Document: 98 Page: 6 Filed: 08/31/2022
`in the pattern storage section.
`(bold bracketed letters added).
`A “communication apparatus,” as recited in claim 1,
`can be a user device, and a “communicating party” can be
`a base station. See id. col. 2 ll. 54–60 (describing a base
`station as the transmission side and a mobile terminal as
`the receiving side). The ’439 patent describes a user device
`(receiving side) determining the adaptive parameters and
`sending the parameters to the base station (transmission
`side); the base station encoding data using those parame-
`ters and sending the encoded data back to the user device
`(receiving side); and the user device (receiving side) decod-
`ing the data using those parameters. See id. col. 9 l. 13 –
`col. 12 l. 24.
`C. LTE Standard
`The accused devices are communication devices, in-
`cluding smartphones, tablets, smart watches, and comput-
`ers, that use the 3G and LTE1 standards. FID, at *2, *9.
`INVT’s infringement theory for the ’439 patent is based in
`part on alleging that the asserted claims of the ’439 patent
`are standard essential, i.e., subject matter essential to
`practicing the LTE standard. Id. at *58.
`In the LTE standard, the smallest portion of the com-
`munications spectrum is referred to as a subcarrier, like in
`the ’439 patent. However, a group of subcarriers (sub-
`bands, in the ’439 patent) is referred to as a “resource
`block.” See Appellant’s Br. 35; Intervenors’ Br. 12. A group
`of resource blocks (subband groups, in the ’439 patent) is
`referred to as “LTE subbands.” See Appellant’s Br. 35; In-
`tervenors’ Br. 12.
`At a high level, under the LTE standard, the user
`1 LTE is an acronym for “Long-Term Evolution.”
`FID, at *22 n.14.


`Case: 20-1903 Document: 98 Page: 7 Filed: 08/31/2022
`device chooses one of 16 possible combination of modula-
`tion and coding parameters, per LTE subband, to send to
`the base station. See FID, at *67. The base station, in turn,
`selects a combination of modulation and coding parame-
`ters, but from a much greater number of possible combina-
`tions. See id. at *60–61 (noting almost 3,000 possible
`values for calculating the coding parameters). As dis-
`cussed later, there is no evidence in the record that at least
`one modulation and coding parameter combination that
`the base station can select matches a combination that the
`user device can select. See infra Part II.C.1 & C.2. After
`selecting its parameters, the base station modulates and
`encodes the data using those selected parameters and then
`sends the modulated and encoded data and its selected pa-
`rameters to the user device. FID, at *59–61. The user de-
`vice demodulates and decodes the data using the
`parameters selected by the base station. Id.
`The user device and the base station send and receive
`parameter information using values referred to as CQI,
`DCI, and TBS. See id. at *67–68 (citing J.A. 10865–66; JA
`11858; J.A. 13169–70; J.A. 1175); Appellant’s Br. 36–37;
`Intervenors’ Br. 60. The initial selection of parameters by
`the user device is transmitted to the base station as a CQI2
`index. The CQI index corresponds to one of the 16 possible
`combination of modulation and coding parameters. These
`16 possible combinations are the only combinations the
`user device can choose. FID, at *60. When the base station
`returns parameters to the user device, it does so in a DCI3
`2 CQI is an acronym for “channel quality indicator.”
`FID, at *58 n.56. The respondents’ expert explained that
`the CQI report to the base station indicates the “maximum
`rate at which the base station can send real data to the UE
`[user equipment].” Id. at *59.
`3 DCI is an acronym for a “downlink control indica-
`tor.” FID, at *67.


`Case: 20-1903 Document: 98 Page: 8 Filed: 08/31/2022
`message. Id. at *67; see Intervenor’s Br. 60; Appellant’s Br.
`37 (citing J.A. 10867). The DCI message includes an as-
`signment of resource blocks, which tells the user device
`which portions of the bandwidth to use to receive data from
`the base station. FID, at *67. The DCI message also in-
`cludes an MCS4 index—one MCS value for the entire re-
`source block assignment. Id. at *59, *68. There are 32
`possible values for the MCS index, each one associated
`with a modulation scheme (Qm)5 and a TBS6 index. Id. at
`*59. The TBS index corresponds to a TBS table, which in-
`cludes almost 3,000 entries. Id. at *60–61.7 Based on the
`resource block assignment and the TBS value, the user de-
`vice calculates the coding parameter. Id. at *60. The FID
`depicts and discusses in detail the LTE standard’s CQI,
`MCS, and TBS tables. See id. at *59–61.
`In summary, based on the DCI message, MCS index,
`TBS index, and the resource block assignment, the user de-
`vice receives information about the modulation and coding
`4 MCS is an acronym for “modulation and coding
`scheme.” FID, at *59 n.57, *68.
`5 European Telecommunications Standards Insti-
`tute (ETSI), ETSI TS 136 211 V8.4.0 (2008–11)—LTE;
`Evolved Universal Terrestrial Radio Access (E-UTRA);
`Physical channels and modulation (3GPP TS 36.211 ver-
`sion 8.4.0 Release 8) 8 (2008),
`1v080400p.pdf (“Qm Modulation order: 2 for QPSK, 4 for
`16QAM and 6 for 64QAM transmissions”).
`6 TBS is an acronym for “transport block size.” FID,
`at *59 n.58.
`“[T]he reason for so many entries is ‘to give the base
`station a great deal of flexibility in terms of the downlink
`assignment, including the assignment of the code rate to be
`used for all the resources blocks.’” FID, at *60 (quoting J.A.


`Case: 20-1903 Document: 98 Page: 9 Filed: 08/31/2022
`parameters that were selected by the base station to mod-
`ulate and encode the data that the user device receives
`from the base station. Id. at *68. The user device demod-
`ulates and decodes the received data using the modulation
`and coding parameters selected by the base station. Id.
`Regardless of the number of LTE subbands included in the
`resource block assignment, one set of modulation and cod-
`ing parameters is used to modulate and encode and demod-
`ulate and decode the data. Id. (citing J.A. 10871–74; J.A.
`11861, 11864–65, 11867). As will be discussed, the evi-
`dence does not show that the user device ever receives data
`modulated and encoded with the same parameters initially
`selected by the user device. See infra Part II.C.1 & C.2.
`D. ALJ’s Final Initial Determination (FID)
`Relevant to the disposition of this appeal, the ALJ’s
`FID found that the accused products did not infringe the
`asserted claims of the ’439 patent. FID, at *58–71. INVT
`asserted two infringement theories: (1) the ’439 claims are
`essential to the practice of the LTE standard, see id. at *58–
`63, and (2) the accused products practice the asserted
`claims, see id. at *63–71. The ALJ found that independent
`claim 1 of the ’439 patent is not essential to the LTE stand-
`ard. Id. at *63. Therefore, INVT could not show infringe-
`ment by relying on the fact that the accused products were
`LTE-compliant. Id. In addition, the ALJ found that INVT
`had failed to prove infringement under a normal infringe-
`ment analysis, which analyzes the accused products in
`view of the asserted claims. Id. at *63, *71.
`In the proceeding below, the dispute over whether the
`asserted ’439 claims are essential to practicing the LTE
`standard was limited to limitations [d] and [e]. See J.A.
`1713–14 (“Respondents do not dispute the essentiality or
`infringement of elements 1(a), 1(b), 1(c), 1(f), and 1(g). Tr.
`(Acampora) 1907:21–1908:10 (‘Q. Right. You limited your
`opinions to 1.d and 1.e in Claim 1, right? A. As far as my
`opinions on noninfringement
`[and essentiality] are


`Case: 20-1903 Document: 98 Page: 10 Filed: 08/31/2022
`concerned, that’s correct.’).” (emphasis omitted)); FID, at
`*58–63 (analyzing whether limitations [d] and [e] are es-
`sential to the LTE standard).
`Prior to the evidentiary hearing, the ALJ addressed
`limitation [e], which recites a communication apparatus’s
`“data obtaining section that demodulates and decodes the
`received signal . . . using the . . . parameters decided at the
`parameter deciding section” of the communication appa-
`ratus. J.A. 252–54 (Order No. 52). Although the ALJ de-
`clined to provide an explicit construction, the ALJ
`explained that the claim limitation could be met even when
`the parameters used to demodulate and decode are decided
`by the communicating party (i.e., a base station), so long as
`the communicating party chooses “those very parameters”
`decided by the communication apparatus (i.e., a user de-
`vice) for communication between the two entities. J.A. 254
`(emphasis added). The ALJ reasoned that the plain lan-
`guage dictated the result, noting that “claim 1 does not re-
`quire the [user device’s] ‘parameter deciding section’ to
`serve as the final or ultimate decision maker with respect
`to exchanges that occur in the communication system . . .
`As INVT asserted, ‘Claim 1 is silent on the operation of the
`communicating party.’” J.A. 254 n.3.
`With this interpretation, the ALJ held that INVT failed
`to show claim 1 was essential to the LTE standard. FID,
`at *58–63. Specifically, the ALJ found that INVT “failed to
`present evidence that the modulation and coding parame-
`ters corresponding to the CQI index the [user device] ini-
`tially reports to the base station are the ‘very parameters’
`that the base station ultimately determines are appropri-
`ate” to meet limitations [d] and [e]. Id. at *58 (internal
`footnote omitted). Under the LTE standard, the CQI trans-
`mitted from an LTE user device includes only 16 possible
`modulation and coding parameter combinations, whereas
`there is a “much larger” number of possible modulation and
`coding parameter combinations from which the LTE base
`station can select and send to the user device as part of the


`Case: 20-1903 Document: 98 Page: 11 Filed: 08/31/2022
`DCI message. Id. at *60–61. The ALJ found that “even if
`the base station happens to consider the CQI reported by
`the [user device], it does not appear to be likely, must [sic]
`less required, for the base station to choose the ‘very pa-
`rameters’ initially decided by the [user device].” Id. at *61.
`The ALJ also rejected INVT’s argument that, despite
`the significant mismatch between the possible parameters
`the user device is able to select and the base station is able
`to select, the claim was standard essential because an LTE-
`compliant user device has the capability to receive data
`modulated and encoded using the parameters decided by
`the user device and to demodulate and decode that data.
`Id. at *61. The ALJ stated that “patent essentiality cannot,
`as a matter of law, be established merely by showing that
`the asserted standard is capable of meeting the claim, as
`mere capability of a claimed feature is ipso facto not tanta-
`mount to the requirement that the claimed feature must be
`mandatory.” Id. at *61. “Patent essentiality,” the ALJ ex-
`plained, requires the standard to “necessarily” meet the el-
`ements of the claim. Id. The ALJ also found that the
`language of claim 1 was not drawn to capability, as further
`support for the conclusion that “mere capability in this in-
`stance does not equate to infringement.” Id. at *61–62.
`The ALJ found claim 1 was not drawn to capability based
`on the fact that its language (“using,” “decided”) did not fol-
`low the “for performing”-type language (“for preventing,”
`“for obtaining”) of the claims in our Finjan decision. Id.
`(citing Finjan, Inc. v. Secure Computing Corp., 626 F.3d
`1197, 1204–05 (Fed. Cir. 2010)).
`Because INVT could not rely on the accused products’
`compliance with the LTE standard to establish infringe-
`ment, the ALJ stated that INVT was required to show that
`actual operation of the accused products meets every limi-
`tation of the asserted claims. Id. at *63. Under this anal-
`ysis, the respondents’ arguments were
`focused on
`limitations [d] and [e] not being met by the accused prod-
`ucts. Id. at *67; id. at *71–72 (noting parties’ agreement


`Case: 20-1903 Document: 98 Page: 12 Filed: 08/31/2022
`and respondents’ lack of argument for limitations [a]
`through [c]); see also id. at *73–74 (noting INVT’s lack of
`evidence and argument separate from the standard-essen-
`tial ones for limitation [f]). The ALJ agreed with respond-
`ents that the accused products did not meet limitations [d]
`or [e] because they did not receive data modulated and en-
`coded “on a per subband group basis” nor demodulate and
`decode data “on a per subband group basis.” Id. at *67–69.
`Specifically, the per-subband-group limitation was not met
`because a single MCS (indicating a single modulation and
`coding scheme) was used and sent to the user device for an
`entire resource block assignment (spanning one or multiple
`LTE subbands, i.e., subband groups). Id. at *67–69. The
`ALJ also found that limitation [e] was not met based on
`INVT’s failure to show that the information in the DCI re-
`ceived and used by the user device from the base station is
`informed by the CQI that the user device previously trans-
`mitted to the base station. Id. at *69–70. The evidentiary
`failure was because of a failure to analyze source code gov-
`erning the operation of the base station (as opposed to the
`source code of the user device). Id. at *70.
`Relying on a similar analysis, the ALJ found that INVT
`failed to meet the technical prong of the domestic industry
`requirement. First, even if the representative product, a
`Samsung Galaxy S9, complies with the LTE standard,
`claim 1 is not standard essential. Id. at *73. Second, INVT
`failed to show that the S9’s actual operation meets the “on
`a per subband group basis” requirement of limitations [d]
`and [e]. Id. at *74.
`INVT appeals. We have jurisdiction under 28 U.S.C.
`§ 1295(a)(6).
`The ’590 patent expired on March 5, 2022. The ITC has
`a limited statutory mandate and can only grant prospective


`Case: 20-1903 Document: 98 Page: 13 Filed: 08/31/2022
`relief. Tessera, Inc. v. Int’l Trade Comm’n, 646 F.3d 1357,
`1371 (Fed. Cir. 2011); Tex. Instruments, Inc. v. Int’l Trade
`Comm’n, 851 F.2d 342, 344 (Fed. Cir. 1988) (citing 19
`U.S.C. § 1337(d)–(f)). “The ITC can issue only an exclusion
`order barring future importation or a cease and desist order
`barring future conduct. If the violation of section 337 in-
`volves patent infringement, neither of the above remedies
`is applicable once the patent expires.” Tex. Instruments,
`851 F.2d at 344. The expiration of the ’590 patent, there-
`fore, has rendered this appeal moot with respect to that pa-
`tent. See id.
`INVT argues that its appeal regarding the ’590 patent
`is not moot even after the patent’s expiration because of
`pending district-court litigation that was stayed in favor of
`the ITC investigation. Appellant’s Suppl. Br. 4–5, ECF No.
`84. However, we have previously held that because ITC
`decisions on patent infringement or invalidity do not have
`preclusive effect on district court litigation, a decision by
`this court does not have enough “collateral consequences”
`to avert mootness, even though a pending district court
`case involves the same issues. Hyosung TNS v. Int’l Trade
`Comm’n, 926 F.3d 1353, 1358–59 (Fed. Cir. 2019) (citing
`Bio-Technology General Corp. v. Genentech, Inc., 80 F.3d
`1553, 1563–64 (Fed. Cir. 1996); then citing Tex. Instru-
`ments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558,
`1568–69 (Fed. Cir. 1996); and then citing Tandon Corp. v.
`U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1019 (Fed. Cir.
`INVT relies on Microsoft and Powertech. Appellant’s
`Suppl. Br. 5, ECF No. 84 (quoting Microsoft Corp. v. Int’l
`Trade Comm’n, No. 2012-1445, 2014 WL 10209132 (Fed.
`Cir. Jan 3, 2014) (per curiam); and then citing Powertech
`Tech. Inc. v. Tessera, Inc., 660 F.3d 1301 (Fed. Cir. 2011)).
`Neither helps INVT avoid mootness. Microsoft is a non-
`precedential opinion, where the patent expired after the
`court’s decision on the merits, and no party raised the issue
`of the patent’s imminent expiration or mootness until after


`Case: 20-1903 Document: 98 Page: 14 Filed: 08/31/2022
`the petition for rehearing en banc was denied and two days
`before the mandate was set to issue. 2014 WL 10209132,
`at *2; see Hyosung, 926 F.3d at 1359 n.3; Microsoft Corp.,
`No. 2012-1445, ECF. No. 104. Powertech did not involve
`mootness. It addressed the fact that a Federal Circuit de-
`cision on an appeal from the ITC can have precedential ef-
`fect on district courts as to certain other issues but also
`reaffirmed that ITC determinations of patent infringement
`and validity do not have preclusive effect on district courts,
`even when affirmed by the Federal Circuit. 660 F.3d at
`1307–08 (explaining that district courts were bound by the
`legal precedent set forth in the prior decision Tessera, that
`a licensed sale does not become unauthorized and infring-
`ing merely because the licensee falls behind on royalty pay-
`ments). Here, like in Hyosung, we see no “potential for
`collateral consequences resulting from the possible stare
`decisis effect of our decision, if precedential” that prevents
`the appeal from becoming moot. 926 F.3d at 1359.
`Because the ’590 patent portion of this appeal is
`mooted due to the intervening happenstance of the patent’s
`expiration, we vacate the ITC’s decision as to that patent
`and remand with instructions to dismiss as moot the rele-
`vant portion of the complaint. See Tessera, 646 F.3d at
`1371; U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513
`U.S. 18, 25 & n.3 (1994); United States v. Munsingwear,
`Inc., 340 U.S. 36, 39–40 (1950); see also Oral Arg. 48:48–
`On appeal, INVT argues that the ALJ erred in finding
`that the accused products do not infringe claim 1 of the ’439
`patent based on a combination of misinterpreting the
`claim, to require performance by (not merely capability of)
`an accused product, and misapplying law on standard es-
`sential patents. Appellant’s Br. 59–67. INVT also chal-
`lenges the ALJ’s “actual operation” noninfringement
`findings, specifically that the “per subband group basis”


`Case: 20-1903 Document: 98 Page: 15 Filed: 08/31/2022
`requirement of limitations [d] and [e] and the “pattern stor-
`age section” of limitation [f] are not met by the accused
`products. Appellant’s Br. 67–72.
`INVT’s arguments do not prevail. We agree with INVT
`that the asserted ’439 claims are drawn to “capability,” and
`not to actual operation as the ALJ found. However, INVT
`has failed to show that the accused LTE-compliant devices
`have the capability required by the claims. Therefore,
`whether under a theory of the claims being standard essen-
`tial or the claims being met by the accused devices, INVT
`has not proven infringement.
`According to INVT, claim 1 of the ’439 patent requires
`only that the accused LTE-compliant devices are capable of
`receiving, from a base station, data modulated and encoded
`with the same parameters decided by the user device, and
`capable of demodulating and decoding that data using
`those parameters. See Appellant’s Br. 62–65.
`Our cases have held that sometimes a device only
`needs to be “capable of operating” according to a claimed
`limitation, for a finding of infringement. See Finjan, 626
`F.3d at 1204. Other times, a device does not infringe unless
`it actually operates as claimed. See ParkerVision, Inc. v.
`Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018) (dis-
`cussing Ball Aerosol & Specialty Container, Inc. v. Ltd.
`Brands, Inc., 555 F.3d 984 (Fed. Cir. 2009)). Whether in-
`fringement requires actual performance of the recited func-
`tions by the accused device depends on the claim language.
`See Finjan, 626 F.3d 1204 (citing Fantasy Sports Props. v.
`, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002));
`see also ParkerVision, Inc., 903 F.3d at 1361 (articulating
`a distinction between configuration-type and capability-
`type claims).
`Possibly the most straightforward example of this is
`the common distinction between method claims and


`Case: 20-1903 Document: 98 Page: 16 Filed: 08/31/2022
`apparatus claims. See, e.g., Finjan, 626 F.3d at 1203–05.
`In Finjan, this court held that Finjan’s “non-method claims
`describe capabilities without requiring that any software
`components be ‘active’ or ‘enabled.’” Id. at 1204–05. The
`court, therefore, upheld a finding of infringement for prod-
`ucts in which the accused proactive-scanning software
`module was locked when sold by the defendants. Id. at
`1205; see also id. at 1203–04 (distinguishing Southwest
`Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1291 (Fed.
`Cir. 2000), in which the accused software product required
`a manual step to activate the patented feature, but the
`claim at issue was a method claim). In contrast, Finjan’s
`method claims were not infringed by the accused products
`because those claims required actual performance of each
`claimed step; there was no evidence that proactive scan-
`ning was performed in the United States. Id. at 1206 (“To
`infringe a method claim, a person must have practiced all
`steps of the claimed method.” (quoting Lucent Techs. V.
`Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009))). Cf.
`ParkerVision, Inc., 903 F.3d at 1363 (similarly differentiat-
`ing apparatus claims and method claims in the patent in-
`validity context).
`However, differences exist between apparatus claims
`as well, depending on the claim language. We have con-
`strued some apparatus claims to require an infringing de-
`vice to actually perform and operate according to the
`functional terms recited in the claim. The intervenors cite
`two such cases, Cross Medical and Ball Aerosol. See Inter-
`venors’ Br. 64, 67–68. We have construed other apparatus
`claims to require only capability, such as in Finjan and Sil-
`icon Graphics.
`Ball Aerosol and Cross Medical both involve mechani-
`cal apparatus claims. According to these two cases, inter-
`venors argue, the ’439 claims should be construed to
`require actual operation of the functions recited in limita-
`tions [d] and [e] in order for there to be infringement. In-
`tervenors’ Br. 64–69. In Cross Medical, we rejected the


`Case: 20-1903 Document: 98 Page: 17 Filed: 08/31/2022
`argument that the limitation “anchor seat means which
`has a lower bone interface operatively joined to said bone
`segment” could be met merely by an interface that was ca-
`pable of contacting bone. Cross Med. Prods., Inc. v. Med-
`tronic Sofamor Danek, Inc., 424 F.3d 1293, 1305–06 (Fed.
`Cir. 2005). Instead, the claim language “operatively
`joined” required that the interface and the bone segment
`be connected and in contact such that the device effectively
`performed posterior stabilization. Id. at 1306. Direct in-
`fringement did not occur until the device was connected to
`the bone, which a surgeon performed, not the allegedly in-
`fringing device maker. Id. at 1310–14.
`In Ball Aerosol, the apparatus claim recited a specific
`physical relationship between elements of a candle holder,
`in which protrusions in the bottom of a candle holder are
`resting upon the cover of the candle tin, t

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