Ironworks Patents LLC v. Apple Inc.
1:10-cv-00258
D. Del.Jul 21, 2016Background
- MobileMedia sued Apple for infringement of multiple patents (including RE39,231 and 6,725,155); the case proceeded through claim construction, summary judgment, trial, post-trial rulings, and a Federal Circuit mandate remanding in part.
- The district court considered Apple's motion for summary judgment on damages and motions to exclude portions of MobileMedia's experts' opinions.
- Central claim-construction/prosecution-history issue: whether the term "communication status" in the '231 patent encompassed both a "received call" and a narrower "call ringing state, as perceived by the remote caller," after amendments during reexamination.
- Court analyzed intervening rights under reexamination (35 U.S.C. §§ 252, 307(b)) to determine whether reexamined claims were "substantially identical" to earlier claims.
- Apple moved for summary judgment limiting damages (arguing marking failures and intervening rights) and sought to exclude (1) a technical expert as outside the pertinent art, (2) reliance on royalty rates from prior Apple v. Samsung litigation, (3) parts of a damages survey, and (4) opinions on non-infringing alternatives.
- The court denied Apple’s summary-judgment motion on damages and denied Apple’s motions to exclude the challenged expert opinions and survey evidence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Intervening rights / claim scope ("communication status") | MobileMedia argued claims remained substantially identical; "communication status" tied to "call ringing state" as prosecuted. | Apple argued examiner interpreted "communication status" broadly to include "received call," creating substantive change and triggering intervening rights. | Court held claims substantially identical; intervening rights do not apply. |
| Marking (35 U.S.C. § 287) – burden of proof | MobileMedia implicitly contended no marketed practicing product so marking not at issue. | Apple argued MobileMedia failed to show compliance with marking; sought to limit pre-suit damages. | Court required Apple (accused infringer) to make a threshold showing of specific unmarked products; Apple failed this initial showing; summary judgment denied. |
| Expert qualification / pertinent art (Dr. Loy on '155 patent) | MobileMedia: Loy's background in embedded systems/info processing is relevant to navigation/location processing. | Apple: Loy lacks navigation-specific experience; opinions outside his field. | Court held Loy qualified; denied exclusion—field not limited to navigation only. |
| Reliance on prior-license royalties (Jarosz using Apple–Samsung rates) | MobileMedia: Jarosz reasonably selected comparable patents and adjusted rates for differences. | Apple: Prior licenses are not technologically/economically comparable; circumstances differ. | Court found methodology sufficiently reliable; admissible—differences go to weight, not exclusion. |
| Survey footprint (Dr. Erdem) | MobileMedia: Survey tied to claimed benefit (faster/more accurate location detection) and supported by technical opinions. | Apple: Survey question too broad, not tied narrowly to patented footprint. | Court found survey tied to expert testimony (Dr. Loy); question admissible. |
| Non-infringing alternatives | MobileMedia: opposed exclusion; experts can opine on commercial acceptability. | Apple: such opinions require empirical proof (surveys/market data). | Court allowed opinion evidence on alternatives; empirical proof not mandatory—weight for trial. |
Key Cases Cited
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 415 U.S. 475 (establishes summary judgment burden and standard)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (defines "genuine dispute" standard)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment entry when nonmovant lacks evidence on essential element)
- R+L Carriers, Inc. v. Qualcomm, Inc., 801 F.3d 1346 (intervening rights and substantial identity test for reexamined claims)
- i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831 (admissibility standards for expert methodologies on damages)
- LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (limits on using unrelated licenses to prove reasonable royalty)
- ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (damages evidence must tie to patented invention's market footprint)