Motorola, Inc. v. Agence Spatiale Europeenne, Alcatel Space Industries

Motorola, Inc. (defendant) obtained a patent from the European Patent Office for a satellite cellular system. The satellites were able to switch telephone calls on earth. Because the satellites were constantly moving, a communications link between two users usually needed to be redefined during the call. This dynamic-rerouting process was called handing-off. The handing-off could occur within one satellite or between two satellites. Motorola’s patent specification did not describe any switching control besides the satellites. Agence Spatiale Europeenne and Alcatel Space Industries (collectively, the space organizations) (plaintiffs) alleged that a document published before Motorola’s patent-application filing included Motorola’s claimed invention. This prior-art document dealt with a multiple-satellite system (MSS) that used packet-switching technology. The document contained two statements regarding handing-off. First, the document stated that when “a cell passes over, the user’s receiving/transmitting antenna would adjust to its new frequency and an on-board computer in the satellite, perhaps under the direction of a traffic routing . . . ground station, would ensure that communication is not interrupted.” Second, the document stated that “satellite changeover is required” as satellites move. Subsequently, the Opposition Division revoked Motorola’s patent. Motorola appealed, arguing that its claimed invention was new. Motorola asserted that its use of the term handing-off not only implied that the physical switching occurred in the satellites but also that the complete control of the handing-off process took place in the satellites. The space organizations argued that Motorola’s patent specification did not address the type of handing-off control used or where the control might be located.