Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.
Docket: CIVIL ACTION NO. 2:14-CV-00911-JRG LEAD CASE; CIVIL ACTION NO. 2:14-CV-00912-JRG Consolidated member case
Court: District Court, E.D. Texas; September 25, 2018; Federal District Court
Defendants LG Electronics, Inc. and LG Electronics MobileComm U.S.A. Inc. filed a Renewed Motion for Judgment as a Matter of Law and for a New Trial in the case concerning alleged patent infringement by Core Wireless Licensing S.a.r.l. The Court denied the Motion after reviewing the case's background, which included Core's allegations of infringement of U.S. Patent Nos. 6,633,536 and 7,804,850. A trial held from September 12-16, 2016, resulted in the Court's November 2, 2016, judgment that LG infringed specific claims of the patents, with findings that both claims were not invalid, and awarded Core $2,280,000 in damages, along with enhanced damages of $456,000 due to willful infringement.
The legal standards for the motions were outlined, emphasizing that a motion for judgment as a matter of law requires a lack of sufficient evidentiary basis for the jury's verdict and that all reasonable inferences must be drawn in favor of the verdict. The Court noted that it cannot revisit credibility determinations or reweigh evidence, which are solely the jury's responsibilities. Additionally, for a new trial under Rule 59, it must be clear that prejudicial error occurred or that substantial justice was not served, with the burden of proof on the party seeking the new trial. Grounds for a new trial include a verdict against the weight of the evidence, excessive damages, or unfair trial proceedings.
The specification of a patent must provide a clear and detailed written description of the invention, enabling a person skilled in the relevant field to make and use it, as mandated by 35 U.S.C. 112(a). This statute establishes two distinct but related requirements: "enablement" and "written description." The Federal Circuit has emphasized that while these doctrines are interconnected, they can be evaluated separately, often in a jury trial setting.
To invalidate a claim for lack of enablement, it must be demonstrated by clear and convincing evidence that practicing the invention requires "undue experimentation." A claim is considered enabled even if some experimentation is necessary, provided it is routine and the specification offers adequate guidance.
Inoperable inventions do not meet the enablement requirement, but the burden lies on the asserting party to show that all alternatives disclosed are inoperative. Even if some embodiments are inoperative, the claims may still be valid unless every embodiment is proven impossible or non-enabled.
The enablement requirement is a legal question, subject to review without deference, though based on factual findings that may be reviewed for clear error. The burden of proof for non-enablement rests with the challenger. The written description must convey to those skilled in the art that the inventor possessed the claimed invention at the time of filing, assessed through an objective review of the specification. This requirement is a factual determination, and a party must prove invalidity for lack of written description with clear and convincing evidence.
Anticipation in patent law refers to a situation where a claimed invention is not novel, requiring that all limitations of the claim are found in a single prior art reference. Conversely, obviousness assesses whether the claimed invention, while not precisely described, would be apparent to someone skilled in the field based on existing knowledge and factual findings. It involves determining if a skilled person would have been motivated to combine prior art sources with reasonable expectations of success.
Claim 21 of the '850 Patent describes an apparatus with specific components, including a memory, wireless transceiver, and processor, which checks transmission status and manages data packet transmission based on a "virtual transmission time interval." LG argues that this claim is not enabled due to potential negative or zero values for the integer in the "virtual transmission time interval," which would imply impossible scenarios like stopping or reversing time. LG asserts that its expert's evidence supports this claim, while Core counters that it need not prove non-operable embodiments are enabled. Core's expert contended that a skilled person would inherently understand the impossibility of time manipulation and that using large integers would hinder transmission. The Court emphasizes the importance of assessing whether undue experimentation is necessary to practice the operative embodiments of the claim.
LG's Motion lacks sufficient evidence or argument demonstrating that experimentation is necessary to practice claim 21 in accordance with the patent specification. LG merely asserts that the specification does not instruct a person skilled in the art on how to create or utilize an inoperable embodiment, claiming that no experimentation could rectify this issue. However, this assertion does not meet the legal standard for enablement, which does not invalidate a claim simply because it includes an inoperable embodiment. LG failed to provide trial evidence showing that undue experimentation would be required to ascertain which integer values—negative, zero, or excessively large—would make the embodiment inoperable. The Court notes that while some experimentation may be needed, it must not be "undue." To invalidate a claim for lack of enablement, the challenger must demonstrate by clear and convincing evidence that a skilled person cannot practice the invention without excessive experimentation. The Court finds that a reasonable jury could conclude that LG did not meet this burden regarding Claim 21 of the '850 Patent, leading to a denial of LG's Motion.
Regarding the written description argument, LG contends that the claim is invalid under 35 U.S.C. 112, 1 due to undisputed facts that the inventor did not consider negative or zero integers or excessively large integers as part of the invention. Core counters that prior rulings by Magistrate Judge Payne established that skilled artisans would recognize these inoperable scopes and would have no reason to pursue them further. Testimony from LG’s expert, Mr. Lanning, confirmed that skilled individuals would know time cannot move backwards or stand still without undue experimentation. Lanning also admitted he had not researched integer values above 4.
A skilled individual can practice Claim 21 of the '850 patent with a VTTI of 4, as this is the highest number mentioned in the patent examples. The patent must provide clear notice of its claims to the public, as established in Nautilus, Inc. v. Biosig Instruments, emphasizing that patents are directed to those skilled in the art, not the general public. Expert testimony indicated that time cannot reverse or stop, and the expert did not evaluate integers above 4, which the court found sufficient for a jury to conclude that Claim 21 does not encompass time travel. The court ruled that there was adequate evidence to support that LG did not meet the burden of proving that Claim 21 was inadequately described under 35 U.S.C. § 112, and thus denied related motions.
Regarding anticipation, LG claimed Claim 21 was invalid due to "admitted prior art," asserting that it anticipated itself when the integer multiple is 1, as acknowledged by the inventor. Core countered that LG failed to demonstrate that any single prior art reference disclosed every aspect of the claimed invention. The court clarified that LG's argument for anticipation was based solely on admissions within the '850 patent and not multiple references. Under 35 U.S.C. § 102(a), a patent cannot anticipate itself, leading to the court's decision to strike LG's expert's opinion on this matter and deny its motion.
Mr. Lanning's testimony asserts that Claim 21 of the '850 Patent is rendered obvious by the Samsung and Willars references, claiming that these references disclose all necessary limitations, including a "virtual transmission time interval." He argues that the Willars reference teaches the "check to determine" step and posits that a person of ordinary skill would find it obvious to combine these references due to their shared technology in cellular networks. In contrast, Core contends that Lanning's analysis is conclusory, lacking detailed support for how Willars teaches the "check to determine" limitation, and fails to adequately justify the motivation to combine the two references without hindsight bias.
At trial, LG bore the burden of proving the invalidity of Claim 21 by clear and convincing evidence. Lanning's discussion of the Willars patent described its functionality concerning mobile phone operations, but he never specifically compared it to Claim 21 or used the term "check to determine." Consequently, a reasonable jury could have dismissed Lanning's claims as unconvincing. His assertions that engineers would naturally combine the two patents based merely on their common technology were deemed insufficient for the Court to rule that no reasonable jury could disagree. The Court ultimately concluded that LG did not meet its burden of proof regarding the obviousness claim, denying the motion on that argument.
Claim 21 of the '850 patent is contested by LG as being directed to unpatentable subject matter under 35 U.S.C. 101. Despite earlier denial of LG's summary judgment motion regarding this claim, LG reiterates its legal argument, which the Court finds to be merely a restatement of previously rejected claims. Consequently, the Court denies LG's motion concerning the eligibility of Claim 21.
In regard to Claim 19 of the '536 Patent, LG alleges that the IS-54 reference anticipates or renders obvious each limitation of the claim. LG cites testimony from Dr. Fuja, asserting that all cell phones since 1991 incorporate the claim's elements. The primary novelty of Claim 19 is identified as the two-step method for detecting a stolen frame. LG claims that IS-54 teaches that a frame can be marked as 'bad', prompting the receiver to check for messages within it. However, Core counters that there is insufficient evidence demonstrating that IS-54 discloses the "predetermined threshold" limitation of Claim 19, which is essential for anticipation. Core also argues that Dr. Fuja's assertions regarding the obviousness of Claim 19 over IS-54 lack substantiation, dismissing them as conclusory.
Dr. Fuja confirmed during cross-examination that he did not discuss a "pre-determined threshold value" in his testimony, and he reiterated this on re-cross and redirect examination. The Court concluded that Dr. Fuja's lack of testimony on this claim element allowed a reasonable jury to find that LG failed to demonstrate that the IS-54 reference anticipated Claim 19 of the '536 Patent, resulting in the denial of LG's motion on this issue. Regarding obviousness, LG argued that Claim 19 is obvious when considering the IS-54 reference in combination with Brolin and Davis references. However, LG's arguments were limited to the suggestions that Brolin teaches a method for distinguishing transmission modes and that Davis involves switching between data and speech modes. The Court found that, because Dr. Fuja did not testify about the "pre-determined threshold value," there was insufficient evidence for a reasonable jury to conclude that all elements of Claim 19 were present in the prior art. Consequently, the Court denied LG's motion in its entirety. The decision aligns with established precedents regarding the review of motions for judgment as a matter of law within the regional circuit's legal framework.
