Apple, Inc. v. Motorola, Inc.
869 F. Supp. 2d 901
| N.D. Ill. | 2012Background
- The court previously excluded Apple damages testimony by Napper on several patents, narrowing viable damages to two Apple patents ('263 and '647) and one Motorola patent ('898).
- The court considered whether damages alone could sustain the case and whether injunctive relief or a FRAND-based remedy could substitute for damages.
- The court addressed whether Apple could pursue declaratory relief of invalidity/noninfringement after damages and injunctive claims were resolved or dismissed.
- Apple proposed using a design-around chip substitute as a damages measure for the '263 patent, but the court found Polish's report insufficient and Napper’s reliance on it inadmissible.
- The court rejected Apple’s proposed Clipboard Manager-based damages and HTC-based design-around as unreliable under Georgia-Pacific factors and evidentiary standards.
- Both parties failed to present a defensible damages calculation or an adequate basis for an injunction, leading to dismissal of the case with prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether damages alone can resolve the case | Apple contends damages could suffice if properly proven. | Motorola argues damages were insufficient or unrecoverable for the remaining claims. | Damages cannot sustain the case; dismissal appropriate |
| Whether a FRAND-based remedy can substitute for an injunction | Apple argues an ongoing royalty could replace an injunction if damages prove insufficient. | Motorola contends injunctive relief is appropriate under FRAND; royalty substitutes are unresolved. | FRAND and injunctive relief considerations foreclose a remedy in this record |
| Whether declaratory relief is viable after damages and injunctive relief drop out | Apple sought declaratory judgments to avoid mootness and wasteful retrials. | Motorola argues no jurisdiction if neither party can obtain monetary or injunctive relief. | Declaratory relief not warranted; dismissal with prejudice |
| Form of dismissal and jurisdiction | Apple urged continued proceedings; Motorola urged dismissal. | Motorola sought dismissal if no relief is possible; case could be appealed if moot. | Case dismissed with prejudice; no further relief available |
Key Cases Cited
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (standard of injunctive relief; likelihood of irreparable harm and public interest)
- Dow Chemical Co. v. Mee Industries, Inc., 341 F.3d 1370 (Fed. Cir. 2003) (presumption of damages; Georgia-Pacific considerations)
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (Georgia-Pacific factors; evidence for royalties)
- Telcordia Technologies, Inc. v. Cisco Systems, Inc., 612 F.3d 1365 (Fed. Cir. 2010) (district court may award running royalties or lump-sum damages; equitable remedies context)
- Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 670 F.3d 1171 (Fed. Cir. 2012) (equitable remedies; ongoing royalties and injunctions nuances)