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Intellectual Ventures I, LLC v. Motorola Mobility LLC
Citations: 176 F. Supp. 3d 405; 2016 U.S. Dist. LEXIS 43255; 2016 WL 1294440Docket: Civ. No. 11-908-SLR
Court: District Court, D. Delaware; March 31, 2016; Federal District Court
On October 6, 2011, Intellectual Ventures I, LLC and Intellectual Ventures II, LLC (collectively "IV") initiated a patent infringement lawsuit against Motorola Mobility, Inc. ("Motorola") involving six patents: U.S. Patent Nos. 7,810,144, 6,412,953, 7,409,450, 7,120,462, 6,557,054, and 6,658,464. Motorola responded by asserting defenses including failure to state a claim, non-infringement, invalidity, and equitable doctrines such as waiver and laches, while also filing counterclaims for non-infringement and invalidity. After various motions for summary judgment, the court, in a January 2, 2014 order, found no infringement of claim 26 of the '144 patent and invalidated claim 1 of the '953 patent based on prior art.
Subsequently, the court limited the trial to issues regarding the '462, '054, and '464 patents, leading to a nine-day jury trial from January 24 to February 4, 2014, resulting in a hung jury and mistrial. Motorola's renewed motion for judgment as a matter of law was granted regarding claims 1 and 8 of the '464 patent. The court later invalidated the '054 patent's asserted claims as unpatentable under 35 U.S.C. § 101.
A six-day jury trial held from March 16 to March 24, 2015, resulted in a verdict validating and finding infringement of claim 41 of the '144 patent while invalidating the '450 patent due to obviousness. A subsequent five-day trial from March 26 to March 30, 2015, resulted in a verdict affirming the validity and infringement of claims 1, 10, 11, and 13 of the '462 patent. Currently, the court is considering several motions from both parties regarding new trials and judgment as a matter of law for the '144 and '462 patents, alongside a motion from IV to strike certain exhibits. The court asserts jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).
IV I and IV II are Delaware limited liability companies based in Bellevue, Washington. IV I holds the patents '144, '450, '054, and '464, while IV II is the exclusive licensee of the '953 patent and owns the '462 patent. Motorola, a Delaware corporation with its principal place of business in Libertyville, Illinois, manufactures and sells the products in question.
The '144 patent, filed on April 7, 2009, and issued on October 5, 2010, focuses on the electronic transfer of computer files between devices. The '450 patent, filed on February 28, 2005, and issued on August 5, 2008, describes a wireless transmission system that uses a packet-centric protocol to connect multiple customer premises equipment (CPE) stations to a base station, emphasizing quality of service. The '462 patent, filed on December 19, 2005, and issued on October 10, 2006, involves a portable device system with a central processor in a detachable handset that interacts with a docking display unit.
To succeed in a renewed motion for judgment as a matter of law post-jury trial, the moving party must demonstrate that the jury's findings lack substantial evidentiary support or that the legal conclusions drawn from those findings are unsustainable. Substantial evidence is defined as relevant evidence that a reasonable mind would accept as adequate. The court must view evidence favorably toward the non-moving party, cannot assess witness credibility, and must ensure that the evidence adequately supports the jury’s verdict.
A new trial may be granted under Federal Rule of Civil Procedure 59(a) for any party involved in a jury trial, based on historical grounds for new trials in U.S. courts. The trial court has broad discretion in deciding to grant or deny such motions, and does not have to view evidence favorably for the verdict winner, as required in judgments as a matter of law. The court can assess witness credibility and evidence weight when considering a motion for a new trial. Common reasons for granting a new trial include: (1) the jury's verdict contradicts the clear weight of the evidence, necessitating a new trial to avoid a miscarriage of justice; (2) the emergence of new evidence likely to affect the trial's outcome; (3) improper conduct by attorneys or the court that may have influenced the verdict; and (4) inconsistencies in the jury's verdict. The court must exercise caution and refrain from merely substituting its judgment for that of the jury, granting a new trial only to prevent a miscarriage of justice if the verdict is against the evidence's weight.
A patent is infringed when an unauthorized individual makes, uses, or sells a patented invention in the U.S. during the patent's term (35 U.S.C. 271(a)). To prove direct infringement, the patent holder must demonstrate by a preponderance of the evidence that the claims of the patent apply to the accused device, either literally or under the doctrine of equivalents. This involves a two-step analysis: first, the court construes the asserted claims to define their meaning and scope, a legal question subject to de novo review (Markman v. Westview Instruments, Inc., 52 F.3d 967, 976). Second, the trier of fact compares these construed claims with the accused product, a factual question. Direct infringement requires that every element of a claimed method or product is performed by the accused party (Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1320). If any claim element is missing from the accused device, there is no literal infringement (Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247). If an accused product does not infringe an independent claim, it cannot infringe any dependent claims, though it is possible to infringe an independent claim without infringing a dependent one (Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359). The patent owner carries the burden of proving infringement by a preponderance of the evidence (SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889).
To establish indirect infringement, two theories exist: active inducement and contributory infringement (35 U.S.C. 271(b), (c)). For active inducement, the patent owner must show that the accused infringer knew or should have known their actions would likely induce infringement (DSU Med. Corp. v. JMS Co. Ltd., 471 F.3d 1293, 1306). For contributory infringement, the patent owner must demonstrate that the accused party sold a component specifically made for use in infringement, which is not a staple article or commodity suitable for substantial non-infringing use (Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061). Liability under either theory requires first establishing direct infringement (Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 774).
A patent cannot be granted if the differences between the proposed invention and prior art render it obvious to a person of ordinary skill in the field at the time of invention, as per 35 U.S.C. 103(a). The determination of obviousness involves legal conclusions based on factual inquiries, including assessing the scope of prior art, identifying differences between the prior art and the claims, and evaluating the skill level of individuals in the relevant field. Secondary considerations such as commercial success, long-felt needs, and failures of others may inform the analysis of the invention's nonobviousness, as established in KSR Int’l Co. v. Teleflex Inc. and Graham v. John Deere Co.
A patent with multiple elements is not deemed obvious merely because each element is known in the prior art; there must be evidence that a person of ordinary skill had a rationale for combining these elements as claimed. The Supreme Court encourages the use of "common sense" over strict rules when assessing motivations to combine prior art elements. Additionally, defendants asserting obviousness must prove that a skilled person would not only have a reason to combine elements but also a reasonable expectation of success in doing so. A combination may be considered "obvious to try" if there is a design need or market pressure and a limited number of predictable solutions. Finally, objective indicators of nonobviousness must be evaluated to mitigate hindsight bias in the obviousness determination.
Patents are presumed valid under 35 U.S.C. § 282, requiring an alleged infringer to provide clear and convincing evidence to prove a patent's obviousness. In cases where the infringer relies solely on prior art already considered by the Patent and Trademark Office (PTO), they face an additional challenge. They must overcome the presumption that the PTO, as a qualified government agency, has performed its duties properly, which includes having examiners with expertise in the relevant field. These examiners are presumed to have evaluated the art effectively, ensuring that only valid patents are issued.
Enablement and written description requirements, as outlined in 35 U.S.C. § 112, mandate that a patent's specification must clearly and fully describe the invention and its use, enabling a person skilled in the relevant art to practice it without undue experimentation. The enablement standard requires that some experimentation may be necessary but not to an excessive degree, with the determination of what constitutes "undue" based on a variety of factors (known as the "Wands factors"), including the amount of experimentation needed, guidance provided in the patent, presence of working examples, the nature of the invention, prior art, skill level of practitioners, predictability of the art, and breadth of claims. This assessment is a legal question informed by factual considerations. The enablement determination is made as of the patent application’s filing date, and the burden of proving a lack of enablement falls on the challenger, who must provide clear and convincing evidence.
Separately, the written description requirement ensures that the inventor possessed the claimed invention at the time of application, evidenced by an adequate description in the specification. This requirement is distinct from enablement and is assessed through an objective inquiry that considers whether a skilled artisan would understand the invention from the specification. The level of detail necessary to satisfy this requirement varies based on the claims' nature and complexity. Defendants must also present clear and convincing evidence that the disclosure does not adequately describe the claimed invention.
Motorola's renewed judgment as a matter of law (JMOL) motion concerns the '144 patent, which pertains to the electronic transfer of computer files between devices. IV claims that Motorola’s products infringe independent claim 41 of the patent, which describes a communications device comprising a processor and memory for controlling file transfers. The claim outlines a process where the device displays file identifiers for user selection, allows selection of destination identifiers representing remote devices, and includes a data entry field for a text message. It specifies that the device encapsulates the text message with the selected file into a single combined file, generates a unique transaction identifier for the transfer, and sends it to the destination device. The destination device is required to receive the file automatically, generate a delivery confirmation message, and notify the user of the received file, while an authenticating device creates a delivery report detailing the event and its timing.
IV alleges that various Motorola products infringe claim 41 of the '144 patent, specifically targeting the multimedia messaging system (MMS) application. The accused products include models such as Atrix 2, Photon 4G, and Defy XT, among others. IV claims that Motorola infringes by promoting the sending of MMS messages via user guides and its website. The '144 patent centers on the direct transfer of information between users without requiring login or downloading, ensuring immediate delivery and billing through an authentication device. This invention, initially licensed by the U.S. Postal Service, aims to address issues of cost, security, and convenience that were prevalent with email. Maurice Haff, the patent's inventor, highlighted that the invention seeks to eliminate risks associated with long-term data storage and improve the reliability of file transfers, which were previously vulnerable to hacking. Overall, the motivation behind the invention was to enhance security and reduce costs related to data transmission. Motorola has been aware of the patent since the lawsuit commenced in October 2011.
IV presented deposition testimony from Naveen Aerrabotu, a Motorola engineer, who discussed multimedia messaging standards for U.S. carriers and confirmed tests on Motorola phones for MMS functionality with carriers like AT&T and Sprint. Aerrabotu indicated that every MMS message from a Motorola Android phone includes a transaction ID in the message header, which uniquely identifies the transaction. Andrzej Koziol, another Motorola engineer, testified about MMS application testing for additional carriers, noting that the MMSC confirms delivery of messages by sending a delivery report that encompasses various details such as message type and status.
Dr. Hugh Smith, IV’s expert on infringement, explained that claim 41 of the '144 patent necessitates three distinct devices: a communications device, a second device, and an authenticating device. He tested MMS applications on several Motorola devices across four carriers and demonstrated the MMS application in action.
Motorola contended that IV's claim of direct infringement is invalid due to "divided infringement," asserting that the claim requires actions performed by different parties on separate devices. The court defined the "authenticating device" as a third-party device, distinct from the other two. IV argued that Motorola phones were used as the communications and second devices while MMSC, operated by carriers, served as the authenticating device. However, Dr. Smith acknowledged that Motorola does not control the MMSCs, as the carriers generate the necessary delivery reports, leading Motorola to argue that IV did not provide sufficient evidence for direct infringement due to the lack of a single actor fulfilling all claim limitations.
Motorola contends that Dr. Smith's reports do not support the claim that the user of the sending device "triggers" or "causes" the generation of a delivery report at the MMSC, nor that the user "uses" the MMSC. IV counters that Motorola only raised the issue of divided infringement during the judgment as a matter of law (JMOL) phase, despite IV's sustained theory that both Motorola and its customers infringe. IV highlights that Motorola's non-infringement expert did not address divided infringement, and Motorola did not pursue summary judgment or provide jury instructions on this issue, nor disclose a divided infringement defense in its interrogatory responses. IV asserts that Dr. Smith has consistently explained that sending an MMS from a Motorola phone triggers a sequence of events that controls both the receiving phone and the MMSC, thereby demonstrating that the sending user "puts the invention into service" and benefits from the entire system. Furthermore, IV argues that Motorola's interpretation of the requirement for user benefit is flawed; the precedent set in Centillion does not necessitate that the infringer benefits from every limitation individually, but rather that the user must "obtain benefit" from the system as a whole. IV claims that the user sending the MMS benefits from each limitation of the system, particularly through the direct transfer of messages and the MMSC's authentication via a delivery report.
Motorola's arguments about "control" lack substantive support, focusing instead on whether the user sending an MMS is essential to "put into service" the claim, as established in Centillion. IV demonstrated that sending an MMS activates processes on both the receiving phone and the MMSC. Dr. Smith's testimony aligned with his reports, indicating that Motorola and its customers directly infringed claim 41 through the MMS application, which activates the MMSC upon user action. Both Dr. Smith and Motorola engineer Andrzej Koziol confirmed that the MMSC responds to MMS transmissions from users.
Regarding the "trigger/cause" theory, Dr. Smith's report highlighted that receiving an M-Notification.ind PDU prompts the second device to send a message to the MMSC. The court found that IV presented adequate evidence for a reasonable jury to conclude that sending an MMS from one Motorola phone initiates a sequence that controls actions at the receiving phone and MMSC, following the precedent of SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp. The court must favor the prevailing party in drawing reasonable inferences and refrain from reassessing credibility or conflicting evidence.
Motorola claimed that IV's theory required MMS messages to be sent exclusively between accused Motorola phones. However, Dr. Smith's consumer survey did not inquire if users sent MMS messages between such devices. Additionally, while Dr. Smith cited compliance tests conducted by Motorola for some carriers, Motorola argued these tests did not imply that MMS messages had to be exchanged between two accused devices. Motorola also contended that IV did not provide evidence regarding the SouthernLINC device and that evidence on U.S. Cellular devices only pertained to photo transmission. IV countered that ample evidence exists of direct infringement by both Motorola and its users.
IV presented evidence of direct infringement by end-users, including a consumer survey indicating that approximately 75% of users had sent and received MMS messages using the accused products. Notably, during a month of litigation, over 14.5 million MMS messages were sent via two Motorola phones. IV's expert, Dr. Smith, demonstrated sending MMS messages between Motorola devices, supporting the claim of direct infringement.
In response to Motorola's defense regarding specific devices, IV established that all accused phones function similarly. Compliance and testing documents confirmed that multiple phone models were tested for sending and receiving MMS messages across various networks. A Motorola witness testified that all phones undergo testing prior to release, and that each MMS includes a transaction ID in its header, facilitating tracking between the sending device and the MMS server.
Dr. Smith explained that claim 41 of the ’144 patent requires three separate devices: a "communications device," a "second device," and an "authenticating device." The court clarified that the "authenticating device" must be distinct from the other two. IV argued that the direct infringement occurred when a Motorola phone sent an MMS to another Motorola phone, with the MMSC acting as the authenticating device that generates a delivery report. Despite this, Dr. Smith acknowledged that Motorola does not operate the MMSCs, which complicates the direct infringement argument.
Wireless carriers generate the delivery reports at their respective Multimedia Messaging Service Centers (MMSCs). Motorola contends that IV lacks substantial evidence of direct infringement because no single actor utilizes every limitation of the claim. Motorola asserts that Dr. Smith’s reports do not establish that a user of a sending device triggers or causes the generation of the delivery report at the MMSC. IV counters that Motorola raised the divided infringement issue only during Judgment as a Matter of Law (JMOL) and maintains its position that both Motorola and its customers infringe the claim. IV emphasizes that Motorola's noninfringement expert did not address divided infringement, and Motorola failed to present relevant jury instructions or defenses.
IV argues that Dr. Smith consistently demonstrated that when a MMS is sent from one Motorola phone to another, it initiates a sequence of events that engage both the receiving phone and the MMSC. The user sending the MMS effectively "puts the invention into service," benefiting from the system as a whole, not on a limitation-by-limitation basis, as established in Centillion Data Systems v. Qwest Communications International, Inc. IV asserts that the user benefits from the direct transfer of the MMS and the subsequent authentication and delivery reporting by the MMSC. Motorola’s claims regarding user control are deemed insufficient, as the critical question is whether the act of sending the MMS puts the entire claim into service. IV maintains that it has demonstrated that sending the MMS triggers all related functions at both the receiving phone and the MMSC. Dr. Smith's testimony, supported by evidence, confirms that Motorola and its customers directly infringe claim 41 by using the MMS application, which activates the MMSC when a user sends an MMS.
Receiving an M-Notification.ind PDU prompts a second device to send a WSP/HTTP GET.req message to the MMSC, containing a URI from the PDU. The court determined that Motorola lacks grounds to challenge the jury’s verdict regarding divided infringement, finding sufficient evidence that the process of sending an MMS from one Motorola phone triggers a series of events that control the receiving phone and the MMSC, aligning with the patent claims. The court emphasized that it must favor the prevailing party's interpretations and did not question credibility or substitute its judgment for the jury's.
Motorola contended that IV's infringement theory necessitated the sending of MMS messages exclusively between accused Motorola devices. However, Dr. Smith’s survey did not specifically address whether users sent MMS messages to other accused devices. Motorola also claimed that compliance testing documents did not indicate a requirement for sending MMS messages between accused phones. Additionally, Motorola argued that IV failed to provide evidence for testing the accused SouthernLINC device and that evidence regarding U.S. Cellular devices was limited to picture sending, lacking proof that these devices met specific patent limitations.
IV countered with extensive evidence of direct infringement by both Motorola and its end-users, including a consumer survey indicating that a significant percentage of users sent and received MMS messages using the accused products. Moreover, evidence showed over 14,500,000 MMS messages were sent using two Motorola phones within a month during the case. Dr. Smith presented video evidence of sending MMS messages between two Motorola devices. IV demonstrated that all accused devices functioned similarly, and numerous compliance documents supported that MMS sending and receiving were tested across various networks.
Motorola presented testimony indicating that all its phones undergo testing prior to release. The court must evaluate if sufficient evidence exists for a jury to find in favor of the non-moving party, IV. After reviewing the evidence favorably towards IV, the court determined that a jury could accept IV’s expert testimony over Motorola’s and conclude that Motorola's accused products infringe claim 41 of the ’144 patent. Consequently, the court denied Motorola’s motion for judgment as a matter of law (JMOL) regarding this infringement.
Regarding contributory infringement, Motorola contended that without direct infringement, there can be no contributory infringement. Motorola argued that IV did not prove that the accused phones had components with no substantial non-infringing uses, as the phones serve various functions beyond MMS, including voice and video calls, gaming, and web browsing. IV’s focus on MMS functionality was criticized, particularly since even within that functionality, the MMS application could be used for non-infringing purposes, like sending a photo without text or sending text-only messages.
IV claimed that the contributory infringement focused on the software and hardware specific to MMS functionality, which allegedly had no substantial non-infringing uses. Nonetheless, the court noted that methods for sending text messages differ significantly from MMS sending, implying that these methods do not pertain to MMS functionality. Additionally, sending a picture alone was deemed not to satisfy the definition of a multimedia message. Motorola pointed out that MMS could be sent to licensed non-Motorola phones, but the only relevant non-Motorola devices (Apple, Samsung, HTC) are licensed.
The court affirms that IV's testimony provides adequate support for the jury's verdict on contributory infringement. The jury's finding of direct infringement remains intact, and a reasonable jury could determine that Motorola's accused products lack substantial noninfringing uses. Consequently, Motorola's motion for judgment as a matter of law (JMOL) on contributory infringement related to claim 41 of the ’144 patent is denied.
In addressing induced infringement, Motorola contends that it necessitates an underlying act of direct infringement and claims that IV did not prove indirect infringement by Motorola's customers. Specifically, Motorola argues that IV failed to present comprehensive user guides for all 14 accused devices demonstrating how to send an MMS message containing both text and a file. Instead, IV only submitted guides for two devices. IV counters that user guides are not the sole evidence of inducement, citing additional evidence such as the provision of the stock MMS application, user manuals, website advertisements, and Moto Care support.
IV asserts that Motorola was aware of the patent as of October 2011 and did not alter its conduct, continuing to promote MMS functionality and assist customers in potentially infringing activities. The court finds that IV's submission of user guides and other encouragement forms sufficiently demonstrate Motorola's inducement of infringement for claim 41 of the ’144 patent. The court concludes that a reasonable jury could credit IV's evidence, denying Motorola's motion for JMOL on this matter.
Motorola claims that claim 41 of the patent is invalid due to a lack of written description, arguing that the specification does not address file transfers involving long-term or permanent storage on an intermediary computer, which is covered by claim 41. Motorola cites testimony from inventor Maurice Haff, who expressed concerns about security and reliability, leading to a desire to eliminate long-term storage. Additionally, Motorola references testimony from Dr. Smith, an infringement expert, who indicated that claim 41 encompasses all types of storage. However, IV contends, and the court agrees, that Motorola waived this argument since it was not previously raised. The focus during litigation was on whether the patent prohibited any storage during transfer or allowed temporary storage, with no mention of long-term storage until Motorola's motion for judgment as a matter of law (JMOL). The court concludes that claim 41 does not involve long-term or permanent storage, and the relevant testimony did not pertain to transfer scenarios. Consequently, Motorola’s JMOL motion is denied.
On the issue of obviousness, Motorola asserts that claim 41 is obvious over U.S. Patent No. 6,379,340 (Overend) in combination with U.S. Patent No. 6,663,145 (Micali). Motorola's expert, Dr. Martin-Rinard, argues that Overend covers nearly all limitations of claim 41, with the exception of a third-party authenticating device found in specific limitations of claim 41. Micali is said to disclose this missing element by describing a trusted third party that certifies message transfers. IV counters that Motorola has not adequately demonstrated that Overend discloses all aspects of claim 41, particularly the requirement that the second device must receive the single combined file "irrespective of user action." Motorola claims IV's expert admitted that Overend teaches devices configured to receive files automatically without user intervention, but IV argues that Motorola misinterprets Overend, which indicates that devices can receive messages while unattended.
In "Receive" mode, the device can only accept messages when unattended, establishing a distinction between "unattended" and "irrespective of user action." IV's expert clarified that when user action occurs, such as using the device's word processor, the Overend device cannot receive messages. IV contends that Overend fails to meet the "irrespective of user action" limitation because it explicitly restricts file reception to unattended situations.
Regarding the combination of teachings from Overend and Micali, Motorola argues that IV’s expert overlooked the teachings suggesting a motivation to combine the two references. Dr. Smith maintained that neither Overend nor Micali provides an authenticating device capable of receiving a delivery confirmation message or generating a delivery report, which are necessary for claim limitations 41[o] and [s]. The jury accepted Dr. Smith’s argument that the limitations could not be made obvious through a combination of the two references since both would need modification rather than mere combination.
The court concluded that Motorola failed to present adequate evidence to challenge the jury's nonobviousness verdict. It affirmed that the "Receive" mode in Overend and the "irrespective of user action" limitation are not equivalent, and the combination of Overend and Micali does not satisfy the requirements for an authenticating device. Consequently, the jury's finding that Motorola did not prove claim 41 of the T44 patent invalid due to obviousness was upheld, and Motorola's motion for judgment as a matter of law (JMOL) was denied.
Motorola seeks a new trial, claiming that its objection to the user manual for the Photon Q phone was improperly overruled. It argues that Dr. Smith’s expert report inadequately discussed this manual, merely referencing it generically among 26 different phones without substantive analysis. Motorola contends that this lack of discussion prevented it from being adequately informed about the evidence Dr. Smith would rely on during the trial. It emphasizes that the relevant materials discussed in Dr. Smith's report did not explain how to send an MMS message with both text and a file, which is central to IV's infringement theory. In contrast, the Photon Q manual did provide this information, suggesting that Dr. Smith’s trial testimony exceeded the scope of his report.
IV counters that Dr. Smith's reference to the manual occurred during rebuttal testimony and was supported by his earlier report, which included the Photon Q and its manual in a chart of accused products. IV asserts that Motorola did not object to the manual's admission into evidence, implying that the surprise argument is unfounded. The court finds that the references in Dr. Smith’s report adequately addressed the user manuals and denies Motorola's motion for a new trial.
Additionally, Motorola argues that the jury instructions on contributory infringement should have centered on the accused phones rather than the functionality of the hardware and software. The court agrees with IV that the instruction was appropriate and notes that Motorola waived this argument by failing to object explicitly during the charge conference. Motorola had only suggested modifications to the language rather than objecting to the substance of the instruction. Consequently, the motion for a new trial is denied.
The ’450 patent relates to a method for enabling wireless devices, like smartphones, to communicate with base stations while efficiently managing bandwidth allocation based on data priority. Specifically, it prioritizes data transmission, ensuring that voice call data is processed before other types of data, such as emails, to maintain service quality. Independent claim 1 outlines a method involving the connection of subscriber customer premise equipment (CPE) to a base station over shared wireless bandwidth using a packet-centric protocol, with bandwidth allocation based on packet content.
At trial, IV alleged that various Motorola products, including the Atrix series and Admiral, infringe on claims 1, 5, 8, and 9 of the ’450 patent, particularly through their push-to-talk features. IV's expert testified that Motorola's products met all limitations of the asserted claims, while Motorola's expert acknowledged that the Admiral smartphone performed nearly all required functions when the push-to-talk feature was activated. Both sides agreed that the Admiral utilizes the 3GPP2 EV-DO, Rev. A standard for communicating data in packets over shared bandwidth, with specific packet flows for different types of data.
The trial focused on whether the bandwidth and resource allocations at the MAC layer of the software were responsive to fields in the packet headers, specifically the RLPID field. IV contended that the claim's requirement for allocation to be responsive merely necessitates the presence of a value in the packet header, while Motorola argued that the allocations must actively respond to this packet header field.
The court interpreted “allocating is responsive to at least one field in the packet header” to mean assigning parts of shared wireless bandwidth and communications network resources for a specific transmission based on information from a packet header field. IV argued that Motorola’s expert, Mr. Seely, did not contest the Admiral phone's infringement due to the MAC layer allocating bandwidth based on RLPID values. However, Mr. Seely indicated that the Admiral must make an allocation decision prior to packet construction, implying that no packet header exists during bandwidth allocation. The Admiral determines bandwidth using radio conditions and application data before constructing a packet and inserting the RLP ID into the header. Motorola contended that since bandwidth allocation occurs before packet creation, it cannot be deemed “responsive to at least one field in the packet header,” as required by the ’450 patent. The court, tasked with evaluating evidence favorably for Motorola, found that a reasonable jury could conclude that the allocation process does not meet the patent's criteria, denying IV's motion for judgment as a matter of law (JMOL) on the infringement claim.
Regarding the validity of the ’450 patent, Motorola's expert, Dr. Katz, presented three combinations of prior art to support its obviousness claim: 1) U.S. Patent No. 6,463,096 in light of known industry practices, 2) Raleigh combined with Packet Shaper, and 3) Swan combined with Vetter. Specifically, Dr. Katz argued that Raleigh discusses allocating wireless bandwidth based on packet content, which includes headers and payloads. He posited that effective allocation would necessitate consideration of packet header fields, suggesting that those skilled in the art would recognize the header as the optimal focus for allocation decisions.
Motorola argues that the limited alternatives available justify the jury's finding of invalidity. Dr. Katz provided evidence that the Packet Shaper reference teaches bandwidth allocation based on packet header fields using a wired device, supported by a 1997 Packet Shaper Data Sheet. The inventor of the ’450 patent, Dr. Jorgensen, confirmed that IP addresses are indeed found in packet headers, a point not disputed by IV's expert, who based their infringement argument on the RLP ID as a similar packet header field. Dr. Katz testified that a skilled practitioner would combine the teachings of Raleigh (wireless) and Packet Shaper (wired) for bandwidth allocation, noting that Raleigh states applicability to both network types. IV attempted to counter Dr. Katz’s testimony using deposition from Brett Galloway, who, despite not recalling specific deployments of Packet Shaper with wireless networks, expressed surprise that such testing might not have occurred. IV's expert, Dr. Hu, mentioned a separate patent reviewed by the Patent Office, acknowledging similarities with the information Dr. Katz relied on. IV claims Motorola did not sufficiently corroborate its evidence, particularly criticizing Dr. Katz's reliance on an advertisement-like data sheet that lacks specific details on wireless bandwidth allocation. Motorola contends this criticism is a collateral attack insufficient for judgment as a matter of law (JMOL) and asserts that Galloway’s testimony authenticated the Packet Shaper documents.
Both the Data Sheet (DTX 490) and the Patent Application (DTX 126) are recognized as independent prior art references to the ’450 patent. Dr. Katz described SWAN in a trade magazine as addressing the quality of service in a network involving wireless connections to multimedia terminals, emphasizing its aim to implement Internet Protocol (IP) over wireless ATM, which is a packet-centric protocol. He explained that SWAN meets the limitations of the first claim of the ’450 patent, specifically regarding the connection of subscriber premise equipment to a base station using a packet-centric protocol and the allocation of wireless bandwidth based on packet content.
Dr. Katz referenced Vetter as a technical publication detailing the ATM networking standard, identifying key components such as the format of an ATM cell, including its headers. He argued that together, SWAN and Vetter establish the foundational elements necessary to deem claim 1 of the ’450 patent obvious. IV contested this by asserting that neither SWAN nor Vetter employs a packet-centric protocol, as both rely on ATM architecture, and argued that these references teach away from the claimed invention, which disclaims ATM architecture.
Motorola countered that SWAN discusses challenges in applying ATM in mobile and wireless environments while illustrating a wireless ATM system. The court found that Motorola provided sufficient evidence to support the jury's verdict of obviousness, affirming the credibility of Dr. Katz's testimony over Dr. Hu's. Consequently, IV’s motion for judgment as a matter of law regarding the obviousness of the ’450 patent was denied.
Additionally, the court reviewed Motorola's renewed motion for judgment on the ’462 patent, which claims a system featuring a detachable handset with a central processor and a docking display unit without a central processor. The central processor in the detachable handset controls the system when docked.
The processor manages the functions of the first circuits, which encompass a video interface, communication interface, and data input interface. A larger portable docking display unit, which includes a primary display and several secondary circuits (excluding a central processor), becomes fully operational only when the detachable handset is docked. The infringement claim pertains to the ’462 Patent, focusing on whether the Lapdock contains a central processor, as stipulated in the patent's claims 1, 10, 11, and 13.
The court defined "central processor" as a component that primarily executes computational functions and oversees various circuits. It clarified that the docking display unit lacks its own processor, a critical point in the infringement analysis. Motorola contended that the Lapdock's scaler and MSP430 microprocessor served as processors controlling circuit operations, but IV countered that the Lapdock does not possess a central processor and that the handset's central processor manages the display and runs applications.
Evidence presented included admissions from Motorola’s witnesses acknowledging the presence of a central processor in Motorola smartphones, while the Lapdock was characterized merely as a peripheral. The scaler chip in the Lapdock is incapable of running an operating system or applications, merely potentially displaying a battery-charging icon. Testimony indicated that the MSP430 chip was not identified as a central processor, and expert opinions supported the notion that the handset's central processor governs the display operations.
Ultimately, the court found Motorola's arguments for judgment as a matter of law unsubstantiated and upheld the jury's infringement verdict based on the evidence presented.
IV's testimony provides sufficient evidence to conclude that the Lap-docks lack a central processor and that the MPS430 is not a central processor; the handset's central processor operates the display. In accordance with SIBIA, the court must favor the prevailing party's reasonable inferences without making credibility determinations or substituting its judgment for that of the jury. A reasonable jury could find that the accused products infringe the asserted claims of the '462 patent, leading to the denial of Motorola’s motion for judgment as a matter of law (JMOL) regarding infringement.
Regarding contributory and induced infringement, IV claims that Motorola phones contribute to the infringement of claim 1 and argues that these phones lack substantial non-infringing uses. Motorola contends that both a phone and a Lapdock are needed for infringement, asserting that the Lapdock products were not the accused items. However, the court ruled that the Lapdock products are not staple items and lack substantial non-infringing uses, supported by Dr. Alpert’s testimony that the Lapdock is essentially useless without a phone. Consequently, the court finds that IV met its burden of proving contributory infringement.
For inducement, Motorola argues insufficient evidence of intent to encourage infringement. IV provides evidence of Dr. Alpert discussing Motorola's instructions to users, which the court finds adequate for a reasonable jury to determine that Motorola induced infringement. Thus, Motorola’s JMOL motion on induced infringement of the '462 patent is denied.
On the invalidity of the '462 patent, Motorola claims that claim 1 is invalid under 35 U.S.C. § 103 based on U.S. Patent Nos. 5,436,857 (Nelson) and 7,549,007 (Smith). Motorola argues these references meet the limitations of claim 1 regarding the detachable handset and docking display unit. The court's interpretation defines the detachable handset as a device that can be attached to and detached from the docking unit and must include a central processor, which is critical for performing primary computational functions. Nelson describes a computer system that includes a module and a base unit, relevant to the court's analysis of the patent's validity.
Different components of a complete computer system are partitioned between a module and a base unit, as explained by IV's expert, Dr. Alpert. The module, which includes essential components like a processor, memory, and disk drive, must connect to a base unit to function as a complete system. Although portable and easy to move, the module cannot operate independently. In contrast, the base unit provides additional components, including communication interfaces.
Motorola's expert, Dr. Drabik, testified that a person skilled in the art would find it obvious to combine the detachable handset from Smith's reference with Nelson’s docking unit, thereby rendering claim 1 of the ’462 patent obvious. Motorola argued that IV failed to analyze this combination effectively or present evidence to the jury against it, merely evaluating the references in isolation.
Dr. Drabik demonstrated that when combined, the elements from Smith and Nelson create a device that is operable, compact, and designed for handheld use, containing a central processor and essential interfaces. Dr. Alpert acknowledged that Smith's detachable handset met the requirements of claim 1 but did not counter Dr. Drabik's analysis. Additionally, Mr. Kumar, the named inventor, indicated that LCD displays were known at the time of the invention, supporting the claim regarding video interface requirements.
Dr. Drabik testified that Figure 12 of Smith includes a display. Expert testimony from IV supports the assertion that Smith's detachable handset, functioning as a standalone computer system with a central processor and display, demonstrates obviousness. Dr. Alpert explained that typical computer systems use an interface circuit to connect the central processor to peripheral devices, identifying that if the peripheral is a display, the interface acts as a video interface, facilitating communication between the processor and the display.
IV's expert noted that Nelson's portable module does not operate independently, failing to disclose a key limitation of claim 1A. Dr. Alpert did not contest Motorola’s evidence of video interfaces in both Nelson's portable module and the docking display unit, which lacks its own processor. IV claims the court has previously ruled on this matter in summary judgment and a Rule 50(b) motion, arguing that both Nelson and Smith fail to disclose a handset with a central processor that manages interfaces with the base unit and display.
IV contends that the Smith handset cannot control the laptop, contradicting the requirements of the ’462 patent, which specifies that the handset must include a central processor that controls certain circuits and the display. Evidence indicated that Smith's design is such that the laptop controls the handset, contrary to Mr. Kumar's invention, with Dr. Drabik admitting that the Smith processor does not manage the laptop's functions. When asked about evidence showing the cellphone in Smith controlling the laptop, Dr. Drabik acknowledged he did not provide any specific evidence to that effect.
Smith's handset does not control the laptop's circuits or display, thus failing to meet the requirements of claim 1 regarding a handset that includes a central processor to control these components when docked. Motorola contends that Nelson and Smith render claims 11 and 13 obvious, arguing that IV did not adequately rebut this claim and acknowledged that clamshell devices with docking features were known before the '462 patent.
For claim 10, Motorola argues that combining the teachings of Nelson, Smith, and Ethridge makes the inclusion of a GPS receiver in the detachable handset obvious, supported by IV's admission of the prior art of portable GPS devices. Motorola claims it is logical to include GPS functionality to enhance user navigation. However, IV counters that dependent claim 10 is not obvious for the same reasons as claim 1, arguing that Ethridge's addition does not fulfill the missing limitations of the claims and that there was no motivation to combine Ethridge with the other references.
The court concludes that IV presented sufficient evidence for the jury's verdict of nonobviousness, with a reasonable jury favoring Dr. Alpert’s testimony over Dr. Drabik’s, who had limited preparation and familiarity with the products in question. The court declines to reassess the jury's credibility determinations and denies Motorola's motion for judgment as a matter of law (JMOL) regarding the obviousness of the '462 patent.
Additionally, Motorola seeks a new trial based on claims that Dr. Alpert's testimony exceeded the scope of his expert reports by not addressing the obviousness of combining Smith’s handset with Nelson’s docking unit, which Motorola claims was the primary focus of its argument.
Dr. Alpert's trial testimony indicated that a skilled person would not be motivated to replace Nelson's portable module with a cellular telephone, a point that was not covered in his expert reports that merely stated Nelson does not disclose a handset. Motorola contended that a new trial was warranted based on this testimony, arguing it was outside the scope of his reports. Motorola also claimed Dr. Alpert's statements regarding the central processor of the accused phones controlling the Lapdock display exceeded his report's focus, which was limited to the data input and video interfaces. Despite these claims, IV countered that Dr. Alpert consistently maintained in both his reports and at trial that the central processor does control the Lapdock display. IV further argued that Motorola waived its right to contest this point by failing to object during the trial. Dr. Alpert verified that the Lapdocks are incapable of independent operation and rely on the handset processor for their functionality. The court concluded that Dr. Alpert's testimony was not beyond the scope of his expert reports, as it addressed the key issue of whether it would have been obvious to combine functions from the base unit to the module as described by Nelson.
The report indicates that duplicating functions for desktop and portable PCs within the module contradicts the advantages outlined in Nelson’s disclosure due to increased system costs. A key dispute in the infringement case was whether the Lapdocks have a central processor, which was adequately addressed in the report. Motorola contends that a new trial is necessary due to IV introducing irrelevant facts about the 2001 award received by patent inventor Mr. Kumar, which was presented to highlight his industry recognition and innovation. Kumar acknowledged the risk of copying his invention, suggesting that Motorola could not have imitated it better. IV argues this testimony merely explained why patent protection was sought, and asserts that Motorola introduced the copying issue through its own questioning of witnesses and did not object to Kumar's statements. The court finds that the evidence regarding the award was insufficient to influence the case improperly, and that copying was not emphasized by IV in its closing arguments but was instead addressed by Motorola's counsel. Therefore, the court concludes that a new trial is not justified based on these arguments. Additionally, the court clarified its interpretation of "central processor" as the component of a computer that performs primary computational functions, as supported by the claim language in claim 1, which specifies that a detachable handset contains a central processor and multiple circuits controlled by it.
Claim 1 of the 462 patent describes a portable docking display unit that includes a first display and multiple second circuits, explicitly stating that these circuits do not incorporate a central processor. The central processor is responsible for controlling the operation of at least one second circuit and the first display when a detachable handset unit is docked. The court clarified that the docking display unit lacks its own processor, which is critical to understanding the patent's scope. Motorola contends that this construction indicates that a component controlling various circuits meets the patent's definition of performing primary computational functions. They argue that the plaintiffs' interpretation misled the jury by introducing limitations not present in the patent. During opening statements, IV’s counsel explained the distinction between the hardware (central processing units or CPUs) and software (operating systems like Android and iOS) in smartphones. IV’s expert, Dr. Alpert, affirmed that each phone operates on a central processor running the Android operating system and application software, using the WEBtop application as an example. He clarified that the scaler chip does not function as a central processor, as it does not run applications or an operating system. Dr. Alpert further defined primary computational functions as those necessary for the system's intended use, involving the execution of applications and the operating system.
Central processors perform primary computational functions, which include running an operating system and applications. Motorola claims that the scaler and MSP430 microprocessor in the Lapdock qualify as central processors because they control various circuits. However, Motorola argues that the introduction of evidence by IV, which stated that a central processor must run an operating system and user applications, misled the jury and improperly narrowed the definition of "central processor." IV contends that it accurately applied the court’s definition, demonstrating that the Lapdocks lack a central processor while the accused phones possess one that performs essential computational functions.
IV asserts that Motorola did not object to its trial arguments regarding the definition of "central processor" and thus waived any claims related to this issue. The expert testimony presented by IV illustrated that the processor in the accused phones executes primary computational functions, such as running an operating system and applications, which are necessary for the docking system comprising the phone and Lapdock. The Lapdock alone cannot perform these functions without the handset.
The court agrees with IV, noting that its expert did not impose additional limitations on the court’s definition. Instead, the expert applied the definition to the accused products, maintaining that merely controlling circuits does not qualify as being a central processor. The court finds Motorola's arguments to be conclusory and concludes that its interpretation would eliminate the significance of the term "central" from the claim. Consequently, Motorola's motion for a new trial is denied, and the court rejects both parties' post-trial motions.
An order was issued on March 31, 2016, as follows: Motorola's motions for a new trial and renewed judgment as a matter of law regarding the ’144 and ’462 patents were denied. Similarly, IV's renewed motion for judgment on the ’450 patent was also denied, while IV's motion to strike improper lodging of demonstrative exhibits was granted. The court identified a genuine issue of material fact regarding the '911 patent's disclosure but ruled that the combination of Ouderkirk and Mukasa references made the '953 patent obvious.
The '144 patent is linked to several prior applications dating back to 1997, while the '450 and '462 patents trace their origins to applications filed in 1999 and 2000, respectively. During the trial, Motorola acknowledged selling multiple products in the U.S., and IV referred to a Multimedia Message Service Center (MMSC) related to tracking delivery and billing. The '144 patent derives from U.S. Patent No. 6,219,669.
The court rejected Motorola's attempts to argue a "divided infringement" theory for summary judgment and denied requests for a new trial based on similar evidence, citing that new trials are warranted only in cases of miscarriage of justice. IV argued that the jury could infer that MMS messages were exchanged between Motorola devices, but the court maintained its stance on denying Motorola's motions.
The court denied Motorola's request for a new trial, citing insufficient presentation of relevant evidence by Motorola's expert, who failed to show the jury critical specifications from the Overend system. This included relevant flow diagrams and user login processes, which contradict Motorola's claims. The court clarified that certain claim limitations regarding message transmission and delivery reports were not met, emphasizing that indirect infringement claims are dependent on proof of direct infringement, which was lacking. Additionally, Motorola's arguments related to the Raleigh reference were dismissed because they were not adequately introduced during the trial, nor were they sufficiently discussed by Motorola's expert or included in jury instructions. The jury was instructed on specific references concerning the ’450 patent, and the court noted that Raleigh should be considered under anticipation rather than obviousness, as this argument was not raised during trial. Furthermore, the court rejected objections regarding the expert's scope of testimony related to Raleigh. Various technical publications and patent references were cited to support the court's decisions.
Dr. Hu referenced a table from the PacketShaper that indicated specific fields in the packet header relevant to asynchronous transfer mode. The court denied Motorola's request for a new trial based on the same evidence previously presented. It was noted that the central processor in the detachable handset controls operations of the associated circuits and display when docked, as detailed in claim 1 of the '462 patent. The court upheld an objection against the introduction of licenses, allowing the claim to proceed to a jury due to the presence of a genuine issue of material fact. The docking display is described as a clamshell unit with distinct sections, one housing an auxiliary display and the other an auxiliary keyboard, with a recessed area for docking the handset. The patent in question was filed on January 21, 1997, and issued on August 25, 1998, concerning an interactive guidance system. The court reaffirmed its denial of Motorola's new trial request and noted that IV had sufficiently demonstrated Motorola’s infringement, despite Motorola's lack of citations for its claims. Furthermore, IV's motion to strike Motorola's demonstrative exhibits was granted, as those exhibits were not entered into evidence.