In SiRF Technology, Inc v. International Trade Commission and Broadcom, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the United States International Trade Commission’s (“Commission”) ruling that (1) Broadcom Corporation and Global Locate, Inc. (collectively, “Global Locate”) had standing to sue SiRF Technology, Inc., E-TEN Information Systems Co., Ltd., Pharos Science & Applications, Inc., MiTAC International Corp., and Mio Technology Limited, USA (collectively, “SiRF”); (2) SiRF infringed Global Locate’s patents; and (3) Global Locate’s patents claimed patentable subject matter.

Global Locate owns six patents covering GPS technology: U.S. Patent No. 6,417,801 (“the ’801 patent”), U.S. Patent No. 6,606,346 (“the ’346 patent”), U.S. Patent No. 6,651,000 (“the ’000 patent”), U.S. Patent No. 6,704,651 (“the ’651 patent”), U.S. Patent No. 6,937,187 (“the ’187 patent”), and U.S. Patent No. 7,158,080 (“the ’080 patent”). In April 2007, Global Locate filed suit against SiRF, claiming patent infringement. In January 2009, the Commission issued an order prohibiting SiRF from importing infringing GPS devices and ruled that (1) Global Locate had standing to assert the ’346 patent, (2) SiRF infringed the ’651 and ’000 patents, and (3) the ’801 and ’187 patents claimed patentable subject matter. On appeal, the CAFC affirmed the Commission’s rulings.

The first issue was whether Global Locate had standing to assert the ’346 patent. SiRF claimed that Global Locate lacked standing because Magellan Corporation (“Magellan”) was a co-owner of the ’346 patent and failed to join Global Locate as a plaintiff. In 1996, Charles Abraham, the inventor, entered into an employee inventions agreement (“Abraham/Ashtech agreement”) with Ashtech, Inc. The Abraham/Ashtech agreement provided that Abraham assign “all of his … interest … in any Invention to the Employer” for “all inventions . . . which are related to or useful in the business of the Employer.” In 1996, Ashtech merged into Magellan, and in 1999, Abraham conceived of the invention that later turned into the ’346 patent. In 2000, Abraham left Magellan and joined Global Locate, where he applied for the ’346 patent and assigned his patent rights to Global Locate. SiRF claimed that, under the Abraham/Ashtech agreement, Abraham had assigned his interests to the ’346 patent to Magellan, and therefore, Magellan was a co-owner of the ’346 patent.

The CAFC held that Global Locate had standing because Magellan was not a co-owner of the ’346 patent. The CAFC found that Global Locate recorded the assignment it received from Abraham for the ’346 patent (“the ’346 assignment”) with the United States Patent and Trademark Office. Therefore, the CAFC ruled that the recording “create[d] a presumption of validity as to the assignment and place[d] the burden to rebut” upon SiRF, the challenger to the ’346 assignment. To uphold its burden, SiRF had to prove that the technology covered by the ’346 patent was “related to or useful in” Magellan’s business, under the Abraham/Ashtech agreement.

The CAFC found no relation between the ’346-patent technology and Magellan’s business. The CAFC found that Magellan sued Global Locate and Abraham for trade secret misappropriation involving the ’346-patent technology, and as part of the settlement agreement, the parties agreed that Global Locate was the owner of the trade secret rights. The CAFC reasoned that if Global Locate was the owner of the trade secret rights, then it logically followed that Global Locate was the owner of the ’346-patent rights.

The second issue is whether SiRF infringed the ’651 and ’000 patents. At issue were claims covering a method of communicating and transmitting satellite-positioning data (“the ’651 claims”) and a method of processing and representing data within the GPS receiver (“the ’000 claims”). SiRF argued that it did not infringe the ’651 claims because its customers forwarded and downloaded the data and that SiRF had no control over these third parties. Likewise, SiRF argued that it did not infringe the ’000 claims because customers must initiate the data processing by enabling a feature on the GPS receiver.

The CAFC disagreed with SiRF’s arguments and held that SiRF infringed the patents. The CAFC interpreted the ’651 claims as only requiring actions performed by a single party and that the “forwarding” and “downloading” of data by customers are not required by the ’651 claims. The CAFC found that SiRF initiated the data transmission and that this data could only work on devices running SiRF software. The CAFC also declined to limit the ’000 claims by requiring that an end user must enable the processing. The CAFC found that SiRF’s software both processed and represented the data.

The third issue is whether the ’801 and ’187 patents claimed patentable subject matter. The ’801 patent claims a method of calculating a GPS receiver’s position discretely, whereas, the ’187 patent calculates the receiver’s position dynamically. The CAFC ruled that under In re Bilski, 545 F.3d 954 (Fed. Cir. 2008), a process is patentable if “(1) it is tied to a particular machine …. or (2) it transforms a particular article into a different state or thing.” Moreover, a machine includes every mechanical device that “perform[s] some function and produce[s] a certain effect or result” and “impose[s] meaningful limits on the claim’s scope.” Id. at 961. In order for a machine to impose limits on a claim’s scope, “it must play a significant part” in performing the method, “rather than function solely as an obvious mechanism” so that the method performs more efficiently.

Applying the Bilski test, the CAFC held that both the ’801 and ’187 patents claimed patentable subject matter. The CAFC found that both patents were tied to a GPS receiver and that a GPS receiver was a machine. The GPS receiver was a machine because it performed several functions, including, calculating the receiver’s position, estimating the time when the receiver would receive satellite signals, and estimating the distance between the receiver and satellite signals. Because these calculations could not be performed without a GPS receiver and because it played a significant part in calculating the receiver’s position, the CAFC ruled that the receiver placed a meaningful limit on the scope of the claims.