Intellectual Ventures I LLC v. Motorola Mobility LLC
870 F.3d 1320
| Fed. Cir. | 2017Background
- Intellectual Ventures (IV) sued Motorola for infringement of claim 41 of U.S. Patent No. 7,810,144 ("'144") and claims 1, 10, 11, 13 of U.S. Patent No. 7,120,462 ("'462"). Juries found infringement and no invalidity; Motorola appealed denials of JMOL.
- The '144 patent claims a file-transfer system enabling direct transfer of a file plus text, with a generated transaction ID and an authenticating device that generates delivery reports indicating delivery events and times.
- The '462 patent claims a portable processing device formed by docking a detachable handset (with central processor) into a larger portable docking display unit; the docking unit is fully operable only when the handset is docked.
- At trial IV relied on consumer use of MMS and carrier Multimedia Messaging Service Centers (MMSCs) and Motorola testing to prove direct infringement of claim 41; IV relied on combination of Nelson and Smith references to defend validity of the '462 claims.
- The Federal Circuit affirmed denial of JMOL as to invalidity (written description and obviousness) for both patents but reversed as to infringement of claim 41 of the '144 patent, holding IV failed to show direct infringement under Centillion/NTP because users did not obtain benefit from the authenticating device’s delivery-report limitation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Written description for claim 41 ('144) | Claim 41 covers transfers generally; specification need not explicitly use "long-term" storage | Spec excludes intermediate long-term/permanent storage, so claim scope would lack written description if read to cover such storage | Claim 41 construed in view of specification to exclude long-term/permanent intermediate storage; JMOL denial on written-description upheld |
| Obviousness of claim 41 ('144) over Overend + Micali | Prior art does not teach "receive ... irrespective of user action"; jury could credit IV’s expert | Overend’s Receive Mode allows unattended receipt (no login/download) and Micali supplies authenticating/reporting functionality | Substantial evidence supports jury that Overend did not meet "irrespective of user action"; JMOL denial on obviousness upheld |
| Direct infringement of claim 41 ('144) (system claim under Centillion/NTP) | Users of accused phones (and Motorola via testing) used the system when sending/receiving MMS; users benefitted from delivery reports | Users did not control or benefit from the authenticating device’s generation of delivery reports because reports were stored on MMSCs and typically not delivered to or requested by senders | Reversed: IV failed to show a directly infringing "use" because users did not obtain benefit from the delivery-report element; JMOL for noninfringement granted |
| Obviousness of asserted claims of '462 (Nelson + Smith) | The jury could credit IV’s expert that no motivation existed to combine Nelson and Smith (duplication/suboptimal) | A person of ordinary skill would be motivated to combine Nelson’s docking concept with Smith’s phone-as-modem to reduce duplication, weight, cost | Substantial evidence supports jury verdict of nonobviousness; JMOL denial on '462 obviousness affirmed |
Key Cases Cited
- Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir.) (en banc) (written-description is a factual inquiry reviewed for substantial evidence)
- Philips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (en banc) (claims construed in view of the specification)
- Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc., 631 F.3d 1279 (Fed. Cir. 2011) (for system claims, direct infringement requires putting the system into service—control and benefit)
- NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (situs-of-use: use occurs where system as a whole is put into service)
- Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314 (Fed. Cir. 2003) (verdict tested against the jury instruction given; substantial evidence under agreed instruction)
- i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir.) (jury may disbelieve one expert and credit another; credibility for jury)
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (obviousness principles regarding predictable combinations of prior-art elements)
- Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (U.S. 2014) (direct infringement is predicate for indirect infringement)