Mobilemedia Ideas LLC v. Apple Inc.
780 F.3d 1159
| Fed. Cir. | 2015Background
- MobileMedia sued Apple for infringing multiple patents related to camera phones and call-handling features; parties tried various claims and narrowed the trial to select claims of four patents (’078, ’068, ’075, ’231).
- A jury found Apple’s iPhones infringed asserted claims and that those claims were not obvious; the district court granted JMOL or summary judgment on several issues for Apple and denied others; both parties appealed or cross-appealed.
- Disputed legal issues at appeal included means‑plus‑function claim construction for the ’078 and ’231 patents, obviousness (motivation to combine) for the ’078, ’068, and ’075 patents, and infringement under GSM protocols for the ’075 patent.
- Key factual technical record involved (i) prior art Kyocera and Lucent references for the ’078 patent; (ii) Bayless GUI for call‑handling for the ’068 patent; and (iii) GSM protocol documents (GSM 04.08/04.83 and later 24.008/24.083) for the ’075 patent and for Apple’s implementation.
- The Federal Circuit affirmed in part, reversed in part, vacated one summary judgment, and remanded: notable holdings reversed infringement of ’078 claim 73, reversed non‑invalidity of ’068 claim 23, affirmed invalidity of asserted ’075 claims, and vacated summary judgment on the ’231 claim construction.
Issues
| Issue | Plaintiff's Argument (MobileMedia) | Defendant's Argument (Apple) | Held |
|---|---|---|---|
| 1) Obviousness of ’078 claim 73 (Kyocera + Lucent) | Skilled artisan would not have been able to integrate Lucent microprocessor into Kyocera camera unit given integration complexity; jury credited this. | Combination is predictable use of prior art elements; Lucent microprocessor would motivate one to combine for improved image processing. | Affirmed denial of JMOL of invalidity — substantial evidence supported jury that there was no motivation/success to combine. |
| 2) Infringement of ’078 claim 73 (means‑plus‑function “processing and storing”) | Broader structure in specification allows system processor/memory to perform processing/storing, so iPhone infringes. | Spec clearly links processing/storing function to camera unit’s internal microprocessor 23 and memory 24; iPhone camera module lacks internal memory. | Reversed judgment of infringement — corresponding structure limited to camera’s processor and memory; no literal infringement. |
| 3) Obviousness of ’068 claim 23 (Bayless) | Claim 23 not obvious because Bayless displays menu after two-key sequence and mobile phone UI tradeoffs differ from PC. | A skilled artisan would convert Bayless’s two-key Hotkey into a single operation; common knowledge supports single‑key implementation. | Reversed denial of JMOL — no reasonable jury could find claim 23 nonobvious in view of Bayless and common knowledge. |
| 4) Invalidity of ’075 claims 5,6,10 (GSM 04.08 + 04.83) | MobileMedia disputed motivation to combine the two GSM protocol sections and argued cause fields would discourage combining. | The GSM sections are part of the same standard; 04.83 expressly refers to 04.08 and would lead a skilled artisan to combine; 04.08 discloses release messages that meet claim elements. | Affirmed JMOL of invalidity — no reasonable jury could find asserted claims nonobvious over the GSM protocols. |
| 5) Claim construction of ’231 claim 12 (“change a volume of the generated alert sound”) | "Change a volume" should encompass stopping or reducing alert sound (embodiments); dependent claims 2–3 are within scope. | District court properly read independent claim to exclude ‘‘stop the sound’’; dependent claims separate. | Vacated summary judgment of noninfringement and remanded — specification shows "change a volume" includes stopping or reducing the sound. |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (predictable use and motivation-to-combine principles in obviousness analysis)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) (framework for obviousness: scope of prior art, differences, skill level, objective indicia)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (deference framework for factual findings in claim construction)
- Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303 (Fed. Cir. 2001) (§112 ¶6 requires clear link between function and structure in specification)
- Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259 (Fed. Cir. 1999) (literal infringement of §112 ¶6 requires corresponding structure in accused device identical or equivalent to disclosed structure)
- Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009) (obviousness is a legal conclusion based on underlying facts)