Fujifilm Corp. v. Motorola Mobility LLC, 182 F. Supp. 3d 1014

Background

Fujifilm sued Motorola for infringement of five patents related to digital photography and wireless transmission; a jury trial was held April 20–May 1, 2015.
The jury found Motorola liable for infringement of claims 1, 7, and 11 of the ’763 patent and awarded $10.24 million; other asserted claims of the ’763 were found valid, one dependent claim not infringed.
The jury found the asserted face-detection patents (’285 and ’886) invalid and not infringed; it found claim 13 of the ’119 patent invalid but infringed, and claims 1 and 35 of the ’119 patent infringed and licensed under the BPLA.
Post-trial both parties moved for JMOL or a new trial on many issues; Fujifilm also moved to alter the judgment to award prejudgment interest.
The district court largely upheld the jury verdict but granted JMOL to Fujifilm that the face-detection patents’ asserted claims were not invalid, and granted JMOL that Motorola was not licensed under the BPLA as to claims 1 and 35 of the ’119 patent.
The court awarded prejudgment interest to Fujifilm at the prime rate compounded quarterly and otherwise denied the parties’ JMOL/new-trial requests.

Issues

Issue	Fujifilm’s Argument	Motorola’s Argument	Held
Validity of face-detection patents (’285, ’886) — anticipation and obviousness	Steinberg does not disclose the claimed multiple face-judgments; thus patents not anticipated or obvious	Steinberg’s “track face movement” teaches the same functionality as multiple face judgments; also relied on skill in the art for obviousness	JMOL for Fujifilm: Steinberg does not inherently disclose multiple face judgments; no sufficient evidence Motorola proved anticipation; obviousness verdict unsustainable because Motorola didn’t present an obviousness theory to jury.
Infringement of face-detection patents	Claims are infringed	Noninfringement based on alleged improper claim-construction evidence and differences between tracking and repeated detection	Denied — jury’s noninfringement finding upheld; Fujifilm not entitled to JMOL of infringement.
Validity and licensing of claims 1 and 35 of the ’119 patent	Not obvious; BPLA does not license claims 1 and 35	Claims 1 and 35 are obvious in view of Nokia 9000i and Bluetooth reference; Motorola licensed under BPLA	Mixed: Obviousness verdict upheld (jury had substantial evidence that Nokia 9000i functionality + Bluetooth paper rendered claims obvious); JMOL for Fujifilm on licensing — court held BPLA’s definition of “Necessary Claims” requires claims be necessarily infringed within the Scope, and Motorola failed to show that for claims 1 and 35.
Validity, infringement, and damages for the ’763 patent	Jury award supported	Claims obvious (Shimura) and noninfringed; damages excessive (no basis for $10.24M)	Denied — court rejected Motorola’s waived/new obviousness theory, upheld jury’s findings of validity and infringement for claims 1, 7, 11; damages award sustained as within the evidentiary range.
Prejudgment interest	Award prejudgment interest (sought CA statutory rate or prime)	Deny interest or apply low T-Bill rate given record	Court awarded prejudgment interest at the prime rate compounded quarterly (discretionary choice where record inconclusive).

Key Cases Cited

InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir. 2014) (JMOL/new-trial review principles in patent cases)
White v. Ford Motor Co., 312 F.3d 998 (9th Cir. 2002) (JMOL standard in Ninth Circuit)
Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361 (Fed. Cir. 2005) (substantial evidence standard)
Lakeside-Scott v. Multnomah Cty., 556 F.3d 797 (9th Cir. 2009) (limits on mere scintilla of evidence)
United States v. 4.0 Acres of Land, 175 F.3d 1133 (9th Cir. 1999) (new trial standard under Rule 59)
Wordtech Sys., Inc. v. Integrated Networks Sols., Inc., 609 F.3d 1308 (Fed. Cir. 2010) (Rule 59 standard and jury verdict review)
Molski v. M.J. Cable, Inc., 481 F.3d 724 (9th Cir. 2007) (district court’s duty when weighing evidence for a new trial)
E.E.O.C. v. Go Daddy Software, Inc., 581 F.3d 951 (9th Cir. 2009) (abuse of discretion standard on new trial denial)
Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341 (Fed. Cir. 2013) (anticipation requires single reference disclosing all claim elements)
Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292 (Fed. Cir. 2002) (inherent anticipation requires necessarily present disclosure)
Bettcher Indus., Inc. v. Bunzl USA Inc., 661 F.3d 629 (Fed. Cir. 2011) (inherent anticipation standard)
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186 (Fed. Cir. 2003) (reasonable understanding by skilled artisan for anticipation)
Sonoscan, Inc. v. Sonotek, Inc., 936 F.2d 1261 (Fed. Cir. 1991) (device functionality may be proved via documents/testimony)
Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341 (Fed. Cir. 2004) (use of corroborating contemporaneous evidence to prove prior art practice)
SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161 (Fed. Cir. 1991) (jury need not use parties’ expert figures for reasonable royalty)
Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336 (Fed. Cir. 2011) (jury entitled to choose award within parties’ advocated ranges)
Unisplay, S.A. v. Am. Elec. Sign Co., 69 F.3d 512 (Fed. Cir. 1995) (damages must be within range supported by record)
Gen. Motors Corp. v. Devex Corp., 461 U.S. 648 (U.S. 1983) (prejudgment interest ordinarily awarded absent justification)
Oiness v. Walgreen Co., 88 F.3d 1025 (Fed. Cir. 1996) (purpose of prejudgment interest)
Uniroyal, Inc. v. Rudkin-Wiley Corp., 939 F.2d 1540 (Fed. Cir. 1991) (prime rate may be used for prejudgment interest)
Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (district court discretion on compound vs. simple prejudgment interest)