Intellectual Ventures II LLC v. Motorola Mobility LLC
692 F. App'x 626
| Fed. Cir. | 2017Background
- Intellectual Ventures II LLC (IV) appealed the PTAB’s final written decision in an inter partes review that invalidated IV’s patent claims as anticipated by alleged prior art.
- IV argued it conceived and reduced to practice the claimed invention before the critical date based on U.S. Patent No. 7,382,771 (MHS1) and supporting documents/testimony.
- Central contested claim limitations at issue: a "LAN routing system" (managing the data path) and a "stand-alone system" (DHCP/NAT capability).
- IV relied on pre‑critical documents (system requirements, troubleshooting guide) and testimony from an inventor (LeBlanc) and experts (Drs. Tewfik and Roy), plus Windows 98 product documentation, to corroborate conception.
- The Board rejected much of IV’s corroborating evidence, applied a narrowed corroboration standard, and found no prior conception; the Federal Circuit found the Board erred in its legal analysis and remanded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board properly required corroboration of authentication/control features as part of the LAN routing limitation | IV: Conception shown by MHS1 documents and testimony; LAN limitation does not require extra authentication/control beyond the Board’s claim construction | Board/Central: IV failed to show control/authentication functionality so conception not corroborated | Court: Board erred — it applied a stricter construction than its own claim construction and improperly required corroboration of features it had rejected |
| Whether inventor/expert testimony and Windows 98 evidence sufficiently corroborate conception of LAN routing functionality | IV: LeBlanc and Dr. Tewfik testimony (and Windows 98 capabilities) corroborate conception under rule‑of‑reason | Board: Testimony insufficient; Windows 98 evidence not shown to have been known/used by inventors | Court: Board dismissed corroborating testimony too narrowly; must consider totality of evidence and not demand definitive independent proof |
| Whether post‑critical and undated documents (Ex. 2020 troubleshooting guide) may corroborate stand‑alone DHCP/NAT conception | IV: Ex. 2020 and related testimony corroborate pre‑critical conception despite being dated shortly after critical date | Board: Ex. 2020 dated after critical date and therefore does not corroborate | Court: Board erred by refusing to consider such evidence; rule of reason permits close‑in‑time and undated documents to be considered |
| Whether Windows 98 product guides (Exs. 2036/2037) and expert testimony can corroborate stand‑alone system limitation | IV: Product guides and Dr. Roy’s testimony show Windows 98 had DHCP/NAT features and support conception | Board: LeBlanc didn’t testify he selected Windows 98 for those features; guides were last reviewed years later so entitled to little weight | Court: Board applied an overly element‑focused and unduly narrow analysis; should have considered these materials under the rule of reason |
Key Cases Cited
- In re NTP, Inc., 654 F.3d 1279 (Fed. Cir.) (rule‑of‑reason corroboration standard; evaluating corroborating documentary and testimonial evidence)
- REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954 (Fed. Cir.) (conception must include every claim limitation)
- Fleming v. Escort Inc., 774 F.3d 1371 (Fed. Cir.) (corroboration need not provide definitive proof of every claim limitation)
- Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359 (Fed. Cir.) (corroboration need not be totally independent; contemporaneous/close‑in‑time documents may corroborate)
- Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir.) (post‑critical and undated documents can corroborate inventor testimony under rule of reason)
- TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295 (Fed. Cir.) (warning against overly narrow, element‑by‑element corroboration analysis)