*1 1286 States, by jury. that must found v. United “element”
active);
Simpson
also
see
Cir.2013) (conclud-
(7th
1
875,
Alleyne,
(citing
(3d Cir.2014); Kemper, In re (5th Cir.2013); Simpson, 721 F.3d at Jeanty conclude that therefore
876. We requirement. third Bryant’s
has not met satisfy
Jeanty also fails
Bryant’s requirement, fourth which is that Alleyne would application
a retroactive current sentence exceeds
mean that his statutory maximum Con authorized Bryant,
gress for his crime. See years
at 1274. He was sentenced to ten (12 months) in prison, but U.S.C. Software, APPLE and Next Inc. INC. 841(b)(1)(B)(ii) provides § the maxi (formerly Computer, known as Next Jeanty, con mum sentence who was Inc.), Plaintiffs-Appellants, conspiring possess intent victed with cocaine, grams at least 500 v. distribute forty. forty years. Ten is less than (now MOTOROLA, INC. known Mo- Alleyne retroactively, if applied Thus even Inc.) Solutions, torola and Motorola current not Jeanty’s sentence would ex Mobility, Inc., Ap- Defendants-Cross statutory ceed the maximum authorized pellants. 841(b)(1)(B). § Congress in 2012-1548, 2012-1549. Nos.
Finally, Jeanty assuming even Appeals, United States Court of satisfy Bryant’s require could all five of Federal Circuit. ments, petition his is without merit. He that he could not the man argues receive April datory jury minimum unless the —not judge qual that his 1997 conviction —found prior felony
ified as “a conviction for a
drug offense” under 21 U.S.C. 841(b)(1)(B). Alleyne
§ But Court holding pains point
took out that its did ruling in Almenda upset previous States, held
rez-Torres v. United which prior
that the fact of a conviction is not an *6 Rosenkranz, Orrick, Herring-
E. Joshua LLP, York, ton & Sutcliffe of New New York, argued for plaintiffs-appellants. himWith on the brief were Mark S. Da- vies, M. T. Rachel McKenzie and Vann Pearce, DC; Washington, Jr. of and Mat- Powers, thew D. Tensegrity Group Law LLP, Shores, of Redwood counsel CA. Of Orrick, Kopp, Herring- was Katherine M. LLP, Washington, ton & Sutcliffe DC. *7 Nelson, Quinn Urqu- David A. Emanuel Sullivan, LLP, argued hart & for defen- appellants. him dants-cross With on Swedlow; Stephen brief were A. Brian C. Cannon, Shores, CA; of Redwood Kath- Defranco, leen M. Sullivan and Edward J. York, York; of New New and Charles K. Verhoeven, Francisco, of coun- San CA. Of Raymond sel were N. Nimrod and David Elihu, York, NY; of New and Amanda Williamson, Chicago, Scott of IL. Davidow, Cuneo, LaDuca, Joel Gilbert & LLP, DC, Washington, of for amicus euri- Hunger The American Antitrust Institute. Thomas G. ae and Matthew D. Cyn- McGill, Gibson, was LLP, him on the brief Robert J. Dunn With & Crutcher of kar. Washington, DC. Shifley, Witcoff, Banner & Taffet,
Charles W. Richard Bingham McCutchen S.. Ltd., IL, Chicago, of for amicus curiae The LLP, York, NY, of New for amicus curiae Property Intellectual Law Association of Qualcomm Incorporated. With him on the Chicago. Boston, Strawbridge, brief were Patrick of Salmons, MA and David B. Washington, of McComas, Boone, Haynes Debra J. DC. LLP, Dallas, TX, for amici of curiae Altera Corporation, et al. With her on the brief Matsui, Brian R. Morrison & Foerster was David L. McCombs. Of counsel on LLP, DC, of Washington, for amicus curi- Beckwith, Sys- the brief were Marta Cisco Cotter, ae Law Professors Thomas F. et tems, Inc., Jose, CA; of San Elizabeth al. him on With the brief was Natalie R. Launer, Inc., Newark, CA; Logitech of Ram. Lutton, Jr., Labs, and Richard Nest J. Jr., Robbins, Roy Englert, Russell, T. Inc., Alto, of Palo CA. Orseck, Englert, Untereiner & Sauber Brunell, Richard M. Senior Advisor for LLP, DC, Washington, of for amicus curi- matters, competition United States Feder- ae, BSA The Software Alliance. Commission, DC, al Washington, Trade Flinn, LLP, Patrick for amicus curiae United States Federal J. Alston and Bird Atlanta, GA, Trade him Commission. With on the brief for amici curiae Nokia Shonka, Acting were David C. General Corporation, et al. With him on the brief Counsel, Cohen, Deputy William General Broyles. was Keith E. Counsel, Adkinson, Jr., F. William Attor- LLP, Brian Riopelle, C. McGuire Woods
ney Rosenchold, and Suzanne Munck af Richmond, VA, curiae Re- amicus Property. Chief Counsel for Intellectual search in Motion him Limited. With on Lancaster, Dorsey Whitney Peter M. & Tyler the brief were Robert M. and Kris- LLP, MN, Minneapolis, for amicus curi- Calleja. ten M. ae The Institute of Electrical and Elec- Trela, Jr., L. Sidley Constantine Austin Engineers, Incorporated.
tronics With LLP, IL, Chicago, for amicus curiae Lindsay, him on the brief were Michael A. Corporation. Microsoft him on the With MN, Lach, of Minneapolis, and Eileen M. brief were Richard A. Cederoth and Na- Compliance General Counsel and Chief Of- thaniel C. Love. Of counsel on the brief IEEE, York, ficer of New NY. were T. Andrew Culbert David E. Clement, PLLC, Paul D. Brancroft of Killough, Corporation, Microsoft of Red- DC, Washington, for amici curiae Verizon mond, WV. Inc., Communications et al. With him on *8 Zachary
the brief D. was Hudson. RADER, Judge, Before Chief PROST REYNA, Judges. and Circuit M. Chappell, Tina Director of Intellectu- Property Policy, al Intel Corporation, of
Chandler, AZ, Opinion by for amicus for the court filed Circuit curiae Intel Cor- poration. Judge her on REYNA. With the brief were construction, admissibility, claim by in filed Chief court’s dissenting part
Opinion injunction decisions. As de- damages, and Judge RADER. below, affirm the district court’s tailed we part in and concurring Opinion decisions, the ex- claim construction with Judge filed Circuit dissenting part '949 Apple’s of its construction of ception PROST. exception, a minor the dis- patent. With the dam- decision to exclude trict court’s
REYNA, Judge. Circuit Apple both ages presented evidence also re- and is reversed. We Motorola Software, Inc. Next and Plaintiffs summary grant court’s verse the district complaint against (“Apple”) Inc. filed infringement judgment damages of no for Motorola, Motorola Inc. and Defendants Based our rever- Apple’s patents. (“Motorola”) on October Mobility, Inc. claim of the district court’s construction sal States District Court 2010 in the United the court’s patent, of the '949 we vacate Wisconsin, District of as- for the Western summary judgment regarding Ap- grant of infringement patents. of three serting request injunction. for an The ple’s counterclaimed, asserting six of Motorola Motorola is not enti- court’s decision that its com- patents. Apple own amended injunction infringement tled to an pat- an additional twelve plaint to include patent is af- the FRAND-committed '898 declaratory sought also parties ents. Both these, address and all related firmed. We non-infringement and inval- judgments of issues, in turn. idity. began claim construction Wis- After Claim Construction consin, to the the case was transferred claim parties The raise construction District Court United States '263, '949, regarding Apple’s and issues Illinois, Judge District of Posner Northern Motorola’s '559 and '712 patents '647 and sitting by designation. The district court question construction is a patents. Claim completed claim construction. Illinois Cybor of law that we review de novo. upon its claim construction deci- Based Techs., Inc., Corp. v. FAS sions, granted summary judg- the court (Fed.Cir.1998) (en banc). 1454-55 non-infringement respect with ment of ma- claims and excluded the vast certain Apple’s patent '949 jority parties’ damages expert of both evi- lit- remaining dence for the claims. With 1, 2, court construed claims The district admissible, tle deemed expert evidence and, of the '949 based and 10 summary judgment that nei- granted court construction, granted Motorola’s upon its any damages ther side entitled to was of nonin- summary judgment motion for being injunction. Despite infringement majority for the of the accused fringement assumed, court dismissed all the district the district court mis- products. Because trial. prejudice claims with before certain limitations as takenly construed limitations, we re- means-plus-function appeal: Only patents six are at issue on claim and vacate the verse its construction 7,479,949; 6,343,- Apple’s U.S. Patent Nos. subsequent summary judgment decision. 263; 5,946,647; Motorola’s U.S. and 6,175,559; 6,359,898; the use of Patent The '949 discloses Nos. a touchscreen 5,319,712. finger contacts to control parties contest the district *9 1, 2, 9, computer. correspond Claims and 10 of the to a command to transition below, patent are recited with '949 the from displaying respective item in a emphasized. limitations at issue Claim 1 set of displaying items to a next item recites: the set of items. device,
A computing comprising: touch '949 at col. 1. 37-col. 123 1. display; processors; screen one or more added). (emphases Claim 2 recites: memory; programs, and one or more 1, The computing device of claim where- wherein the one or more programs are in the one or more heuristics include a memory stored in the configured and to heuristic for determining that the one or pro- be executed the one or more finger more contacts correspond to a cessors, programs the one or more in- command to translate content within a cluding: frame rather than translating an entire page that the includes frame. for detecting instructions one or more finger contacts with the touch screen added). Id. at col. (emphasis Ins 3-7 display; Claim 10 recites: applying instructions for one or more device of computing claim where- to finger heuristics the one or more in the first set of comprises heuristics contacts to determine a command for heuristic for determining that the one or device; the and finger more first correspond contacts a one-dimensional horizontal screen processing instructions the com- scrolling command mand; rather than the two- dimensional screen translation command wherein the one or more heuristics com- on angle based of initial movement prise: finger contact respect with to the Scrolling a vertical screen heuristic for touch display. screen determining finger that the one or more Id. at col. 11.1-7. The district court contacts correspond to a one-dimension- first found that the claim term “heuristic” al vertical screen scrolling command indefinite, was not instead construing it as rather than a two-dimensional screen “one or more rules to applied to data to translation angle command based on an in drawing assist from that inferences finger initial movement contact Next, data.” the court found that respect display; with to the touch screen 1, 2, 9, “heuristic” limitations in claims a two-dimensional screen translation 10 described describing functions “without determining heuristic for that the one or necessary perform the structure more finger contacts correspond Accordingly, functions.” the court con- two-dimensional screen com- translation cluded that claim these limitations were mand rather than the one-dimensional means-plus-function limitations under 35 scrolling vertical screen command based ¶ 112, § despite reciting U.S.C. angle on the initial movement word “means.” The court next found finger respect contact with touch specification contained sufficient “cor- display; screen responding capable structure” perform- ing a next item heuristic for determining claimed functions. 35 U.S.C. so, § the one or finger doing more contacts 112. In court limited the *10 1296 ¶ 112, § 6. The overall means- 35 in claim 1 to “a heu- U.S.C.
“next item heuristic”
analysis
two-step pro-
is a
finger
input
plus-function
a user’s
uses as one
ristic that
analytical
some
Naturally,
touch
there is
the device’s
cess.
right side
tap on the
construction,
steps.
In the
overlap
between these two
screen.” Based
summary judgment of
if the claim
step,
first
we must determine
Motorola moved for
means-plus-function
court concluded
in
noninfringement. The
limitation is drafted
that use a
must
only
products
step,
accused
of this
we
part
that the
format. As
manner are those that
if it
tap” in this
claim limitation to decide
“finger
construe the
specific program:
awith
pre-loaded
“sufficiently
come
definite structure”
connotes
The court
application.
art,
Kindle
the Amazon
in the
which
ordinary
skill
person
summary
motion for
granted Motorola’s
specification
requires us to consider
for the re-
non-infringement
evidence).
judgment of
In the second
(among other
maining
products.
accused
means-plus-
in
step,
if the limitation is
format,
specifically re-
function
we must
again argues
appeal,
On
Motorola
“corresponding
for
specification
view the
alternative,
In the
is indefinite.
“heuristic”
Thus, while these two “struc-
structure.”
cor-
argues that the district court
Motorola
related,
inherently
they
inquiries
ture”
are
that the heuristic limita-
rectly concluded
are distinct.
means-plus-function
in
tions were drafted
correctly limited the “next item
format and
concerned that we
The Dissent is
tap ges-
finger
limitation to the
heuristic”
correspond
for
impermissibly
have
looked
that the claims do
Apple points
ture.
out
ing
specification
structure in the
before
and that this
not use the word “means”
in means-plus-
that the claim is
deciding
strong presumption against
con-
creates
creating a new
thereby
function format
struing
means-plus-func-
the limitations as
“every means-plus-func
that renders
rule
limitations.
Apple argues
tion
claim term indefinite.” J. Prost Dis
tion
sufficiently
limitations connote
heuristic
in
(emphasis
original)
at 1335-36
sent
such that Motorola has
definite structure
(“Dissent”).
analysis.
This is not our
strong presumption.
not overcome this
correctly
step
that the first
*11
Linear,
that a claim lack-
that
presumption
butted the
function.”
Tech. v. Abacus 462 F.3d (Fed.Cir.2006) (“MIT’); 1355 Welker The Dissent that suggests choosing PHD, Inc., 1090, Bearing v. 550 Co. F.3d to include “means” in a claim limitation is (Fed.Cir.2008). such, 1096-97 As not “ev a “minor drafting decision” that corre ery” mean-plus-function limitation is indef spondingly weight merits little in a Section ¶ precedent; only 112, inite under our those that analysis. 6 Dissent at 1337. We means, lack the term do not connote suffi disagree. strong presumption created ciently structure, definite and lack corre by not in including means a claim limita sponding structure. We do not state or provides clarity tion predictability and apply a different rule in this case. In this public patentee helps and the alike. It case, as we find that the claims connote the public determine when claim elements sufficiently person definite structure to a are expressly limited to structures dis art, (or in ordinary skill we do not reach specification equiva closed their lents) step means-plus-function the second of the provides patentee with the analysis. reliably invoking tools for or avoiding
means-plus-function claiming.
sig
It also
recognized,
As the district court
patentee
nals
the court
has
avail,
avoid,
when a claim limitation lacks the term chosen to
the benefits of
¶
“means,”
112,
presump
recognize
creates a rebuttable
Section
6. We
¶
tion
apply.
that Section
6 does not
choice to draft a claim in “broad structural
World,
1358;
e.g., Lighting
in means-plus-func
382 F.3d at
terms” rather than
Fitness,
Corp.,
CCS
Inc. v. Brunswick
288 tion format
render the claim more
(Fed.Cir.2002).
pre
invalidity
This
vulnerable to an
attack.
Id.
sumption may
if
be overcome
the claim Whether to draft a claim broad structur
choice,
“sufficiently
fails to recite
struc
al
claim drafter’s
definite
terms is the
merely
any resulting
ture” or
from that
recites
“function without
risk
emanates
Techs.,
Dell, Inc.,
Inc. v.
for the court to re- Touch
not a basis
choice is
(Fed.Cir.2011).
re
for-
But see In
means-plus-function
claim in
write a
claim
By focusing
Processing
on the
Patent
mat. See id.
Katz Interactive Call
chose,
(Fed.Cir.2011)
presumption
patentee
Litig.,
terms
claim
primacy
general pur-
also reaffirms
of a
(finding that disclosure
construction, as out-
during claim
language
corresponding
pose computer is sufficient
Corp. 415 F.3d
Phillips
claims).
v. AWH
lined
means-plus-function
structure
(Fed.Cir.2005). Here,
in all as-
*12
construction,
name of
claim
“the
pects of
cases,
claims recit
In all these
the
Co.,
the claim.” In re Hiniker
game
is
“means,” thereby expressly
term
ed the
(Fed.Cir.1998)
1362,
(quot-
F.3d
1369
150
invoking means-plus-function claiming.
Rich, Extent
Pro-
ing Giles Sutherland
addition,
of
in
did not
parties
these cases
Interpretation
Claims-
tection and
of
dispute
appeal
on
that these claims were
In-
21 Int’l Rev.
Perspectives,
American
in
format.
means-plus-function
drafted
(1990)).
497,
L.
499
Prop. Copyright
dus.
&
Hence,
in
where a claim is not drafted
format,
reasoning
means-plus-function
case,
In this
Motorola bears the burden
in
line of cases does not
the Aristocrat
overcoming
presumption
that Sec-
automatically apply,
algorithm
and an
is
¶
112,
apply by
prepon-
6
tion
does
necessarily required. The
therefore not
Apex
See
Inc. v.
derance of
evidence.
inquiry,
correct
when “means” is absent
Inc.,
1364,
325 F.3d
Computer,
Raritan
limitation,
limitation,
from a
is whether
(Fed.Cir.2003). The
court
1372
district
light
remaining
in
claim lan
read
that led it
findings
made several erroneous
history,
guage, specification, prosecution
incorrectly
re-
conclude
Motorola
evidence,
and relevant extrinsic
has suffi
strong
The dis-
presumption.
butted this
ciently
person
definite structure to a
precedent by
trict
our
misapplied
court
Here,
ordinary skill in the art.
the answer
requiring the claim limitations of the '949
yes.
is
step-by-
themselves to disclose “a
step algorithm
required by
Aristocrat
person
to a
of ordi
“Structure”
Technologies.”
and related
Aristocrat
in
nary
computer-imple
skill
the art of
that,
invoked
patentee
cases hold
has
if
may differ from more
mented inventions
computer-implemented means-plus-func-
traditional, mechanical structure. For ex
claiming,
structure
corresponding
tion
“physical
ample,
looking for traditional
specification
computer
in the
for the
im-
computer
structure” in a
software claim is
an
plemented
algorithm
function must be
does not contain
fruitless because software
general
computer
is suffi-
purpose
unless
Indeed,
typical
physical structures.
performing
cient for
the function. Aristo-
physical
implements
structure that
soft
Pty
Techs.
Ltd. v. Int’l Game
crat
Austl.
ware,
cannot be relied
computer,
(Fed.Cir.2008)
Tech.,
1333
sufficiently definite structure for a
provide
(requiring
algorithm
disclosure of an
when
Rather,
lacking
claim
“means.”
software
disputed
it is not
that claims were drafted
art,
in the
the “structure” of
to one
skill
format);
means-plus-function
WMS
computer
through,
is understood
Tech.,
software
Gaming, Inc.
184
v. Int’l Game
(Fed.Cir.1999)
algorithm,
an outline of an
(same);
example,
F.3d
1349
flowchart,
ePlus,
Inc.,
specific
or a
set of instructions
Software,
Inc. v. Lawson
Touch,
(Fed.Cir.2012);
e.g., Typhoon
Typhoon
or rules.
(“[T]he
eration,
only
F.3d at 1385
need
dis-
input, output,
such as its
or con-
structure for a person
close sufficient
operation
nections. The limitation’s
provide
operative
in the field to
skill
function;
just
more than
its
it is how the
program
specified
software
for the
func-
function is
achieved
the context of the
tion.”);
Corp. v.
Grp.,
Finisar
DirecTV
Linear,
invention. For example, in
we
Inc.,
(Fed.Cir.2008).1
found that the claim term “circuit” has a
Requiring
physical
traditional'
structure in known structural definition and that
lacking
software limitations
the term patent described the
operation,
circuit’s
means would result
all of these limita-
including
input,
objective.
output, and
tions being
means-plus-func-
construed as
Similarly,
A limitation has sufficient struc quirements, including which claim ele- ture when it recites a claim term awith ments it was connected to and they structural how provided definition that is either *13 were in the connected. 382 F.3d at In specification generally or known in 1361-63. See, Healthcare, cases, e.g., the art. both Flo 697 we found the presumption ¶ (“We § F.3d at 1374 will apply against not 6 means-plus-function claiming was if the limitation contains a term that ‘is unrebutted. in parlance by persons
used
common
of
skill in the
art
pertinent
designate
Even if a patentee elects to use a
”)
World,
(quoting Lighting
structure.’
382
term,
“generic” claim
such as “a nonce
1359);
Media,
at
F.3d
Personalized
161
construct,”
word or a verbal
properly con
Media,
at
In
F.3d
704-05.
Personalized
(in
struing that term
specifica
view of the
“detector,”
we found that the claim term
etc.)
tion, prosecution history,
may still
itself,
connoted sufficient structure to a provide sufficient structure such that the
person
ordinary
of
skill in the art. 161 presumption against means-plus-function
F.3d at 704-05 (agreeing with ALJ that
1360;
claiming remains intact.
at
Id.
see
“
meaning
‘detector’ had a well-known
Inventio,
also
649
at
F.3d
1356-57
those of skill in the electrical arts connota
(“Claims
interpreted
are
in light of the
structure”). There,
tive of
we contrasted
them,
description supporting
written
and
the structural term
gener
“detector” with
that is true whether or not the claim con
non-structural,
ic,
“means,”
terms such as
interpreting
struction involves
a ‘means’
“element,”
705;
and “device.” Id. at
see
MIT,
(“The
clause.”);
Structure
also be
least one
by describing
ed
the claim
op-
connecting
limitation’s
device and
the at
least one
examples
deciding
1. We cite these cases as
of “struc-
evant external evidence when
aif
person ordinarily
ture'' to a
skilled in the art
claim limitation connotes structure. See Dis-
herein,
computer
software. We do not cite these
sent at fn. 2. As discussed
there is
principle
ample support
proposition
cases for the
that we must review
for that
elsewhere.
Inventio,
specification, prosecution history,
e.g.,
and rel-
F.3d at
1356-57.
remaining
language, specification,
to said floor terminals
claim
modernizing device
unit.”)
computing
one
prosecution history,
and said at least
external
and relevant
added). However,
specifica-
(emphasis
provide
evidence
de-
no further structural
in-
modernizing
tion
device’s
described
scription to a
in
person
ordinary
skill
components, and how
put, output, internal
art,
against
then the presumption
were
components
the internal
intercon- means-plus-function claiming is rebutted.
such,
pre-
at 1358-59. As
nected.
Id.
MIT,
example,
the claims recited a
means-plus-function
sumption
against
“colorant selection mechanism.” 462 F.3d
not overcome. See also Flo
treatment was
noted,
at 1353. As
“mechanism”
itself
Healthcare,
(noting
F.3d at 1374-75
structure,
does
connote sufficient
term,
generic
is a
but
that “mechanism”
the term “colorant selection” was not de-
looking
remaining
language
then
claim
specification
fined
or otherwise
description
finding
and written
before
person
ordinary
known to a
skill
limitation
the full claim
connoted struc-
Further,
paten-
art.
Id. at 1353-55.
ture).
that, if a
These cases teach
limita-
tee used the
terms “mechanism”
tion
a term with a known
recites
structural
interchangeably
specifica-
“means”
meaning, or
ge-
recites either a known or
1354;
tion. Id. at
see also Mas-Hamilton
description
neric term with
sufficient
Inc.,
Grp. v.
1214-
LaGard
operation,
presumption
against
(Fed.Cir.1998) (claim
recited “element”
means-plus-function
in-
claiming remains
patent provided
and “member” and
no fur-
tact.
ther structural description
generic
of these
terms);
Bearing,
Welker
1374-75
that claim term
turn to the claim
in
adjustment
limitations at issue
the
designates
mechanism”
“a
patent.
'949
generally
class of structures that are
un
We find that “heuristic” has
art”).
in
persons
derstood
of skill
the
meaning
known
and the '949
also
Indeed,
if the patent
even
describes all
operation,
describes the limitation’s
includ
perform
structures that
the recited func
ing its input, output,
output
and how its
tion, this,
itself,
does not overcome the may be
Accordingly,
achieved.
the heuris
strong presumption
means-plus-func
that
tic claim limitations recited above have
claiming
apply
tion
does not
when the
structure,”
“sufficiently
a per
definite
term “means” is not recited in the claim.
art,
ordinary
son of
in
per
skill
the
World,
Lighting
By Broadly if speaking, the claim mere the function the ly a generic recites nonce word and the recited identify limitations is to com- invention, particular finger including con- context of the in- upon mand based the function, puts, outputs, tacts. To achieve this and how outputs certain are Depending upon “heuristics.” describes achieved. circumstances, is not neces- heuristic cases, In all input finger claimed is a sarily generic, structureless “nonce word contact. The specification explains that any construct” without mean- or verbal finger may taps, contacts be swipes, “mechanism,” “means,” “ele- ing, such as taps, finger double or rolling, may and ment,” “widget.” or The district court involve one or fingers contacting two correctly person of ordi- determined angles. screen different initial e.g., nary in the art would understand skill 30-46; '949 Patent at col. 11. col. “heuristic” to mean “one or more rules to 21-24; 66,11. col. 47-51. The claims recite drawing to data to assist applied varying objectives, heuristics with includ- sense, inferences from that data.” ing vertical scrolling, screen two-dimen- “heuristic” is similar words that define a translation, sional screen moving to the structures, “connector,” class of such as list, translating next item in a content “detector,” “circuit,” and and it does not explain a frame. The also claims within performing all means for the recit- include the invention differentiates between Healthcare, See, e.g., ed function. Flo scrolling vertical and two-dimensional ¶ (“We § apply F.3d at 1374 will not angle translation based of initial if limitation contains a term that ‘is finger movement of the contact. parlance persons used common pertinent designate
skill
art
description provides
further
written
”)
World,
Lighting
(quoting
structure’
regarding
details
the heuristics’
inputs
Media,
1359);
F.3d at
Personalized
161 outputs. Regarding one-dimensional verti-
F.3d at 704-05. The fact that heuristic is
scrolling,
specification
cal screen
ex-
partly in terms of
does
defined
its function
“in
plains
response
upward
to an
not detract “from the definiteness of [the]
gesture
by the
user that
swipe
may
structure” it
connote. Personalized
27°)
within a
angle (e.g.,
predetermined
Media,
Indeed,
We need not decide here whether the vertical, may perfectly page the web scroll “heuristic,” itself, term connotes suffi- two-dimensionally along the direction of presump- cient structure to maintain the swipe.” at col. 11. The the Id. 30-34. against means-plus-function claiming tion specification defines two-dimensional because, case, in this the claims do not movement as “simultaneous movement in nakedly recite heuristics without further both the vertical and horizontal di- lan- description remaining claim specification explains rections.” Id. The guage specification. contrary, and To the in a how a user can move to the next item language specification the claim dis- right operation finger tap gesture close the heuristics’ within the list via a on screen, M-finger gesture.” ment of the translation right-to-left finger side of the image Alternatively, icon. at col. 11.34-35. a next Id. swipe, by tapping may 30, 11. direction of translation be determined at col. 42-67. Id. angle movement of the M- specification The also discusses finger gesture, according particular to a translating “content with- structure behind rule, specific, identifying i.e. a heuristic. translating in a frame rather than 75,11. at col. Id. 39-44. page that includes the frame.” Id. entire performing figures patent provide For the '949 at col. 6-8. 12A, 39C, function, Figs. an “M- further structural details. specification describes 42A, 42B, 4214,” finger where M and 42C illustrate the finger gesture translation specification is a number different from the number of contacts described (3937), page. scrolling the entire result in vertical two-di- fingers used to translate (3939),turning mensional specification Id. at col. 11.18-26. The translation (1218, 1220, 1212), or explains also that the direction of transla- next item trans- (4214). lating tion be the direction of the “move- within a frame *16 sum, finger the claims at issue differ from movement of a on the screen. See simply a generic those recite means 1096-97; Bearing, at In Welker mechanism, description without further (“This ventio, is not a in the claim remaining language or nakedly case where a claim recites ‘de Instead, specification. language the claim description vice’ fails to and the written specification outline the that the rules place clear structural limitations on the follow, upon, example, heuristics based ”). Thus, ‘device.’ the '949 recites contact, initial angle finger meaning claim and also term with known contact, fingers making number of the di- operation, including input, describes its contact, finger rection of movement of a *17 may output, output and how its specific swiping gesture, taping a certain achieved. screen, angle location on the of the data; input receiving limita- an device for the heuristic claim Accordingly, “sufficiently definite struc- provide tions data; for the output presenting an device ture,” in ordinary of skill the person to a memory storing including a information function, art, the recited performing for including analyzer program routines strong the has not rebutted and Motorola detecting for structures in the server means-plus-function against presumption data, linking and for actions to the de- reverse the district court’s claiming. We structures; tected claim limi- that the “heuristic” construction means-plus-func- in tations were drafted enabling a user interface the selection of summary judg- vacate its tion format and action; a linked detected structure and non-infringement. ment of processor performing and an action for the selected action linked to the selected Patent
Apple’s '647 structure; processing coupled and a unit device, device, input output to the Regarding Apple’s patent, '647 memory controlling and the for the exe- meaning parties dispute program cution of the routines. “analyzer “linking claim terms server” and to the structures.” The actions detected patent (emphasis '647 at col. 11.9-24 “analyzer district court construed server” added). agreed The district court with from a client separate as “a server routine “analyzer that Motorola server” should be having that data structures from receives separate construed as “a server routine “linking the client” and actions to the de that having from client receives data “creating specified as tected structures” from Apple argues structures the client.” connection between each detected struc analyzer that “sep- server need not be computer ture and at least one subroutine Instead, Apple arate from a client.” ar- perform a se causes the CPU gues “analyzer server” should be quence operations on that detected routine(s) program construed as “a Apple argues structure.” that both con data, patterns receives uses detect disagree structions are erroneous. We data, structures and links actions to affirm with the district court’s the detected structures.” claim construction. agree We with the district court’s con- system The '647 discloses a “analyzer struction of server.” As the dis- (such structures recognizing certain as trict recognized, plain meaning court number) telephone on a touchscreen and “server,” when perspec- viewed from the (such calling then linking certain actions art, ordinary of a person tive skill number) telephone to the structure. relationship. entails a client-server Con- example, For a user be able to call or perspective, specifica- sistent with this phone save a number it has received via analyzer tion discloses an server that message simply by touching text or email separate application from the it serves. the number on the screen of its device. analyzer part “pro- server is patent, Claim 1 of the '647 with relevant gram present 165 of the invention.” '647 emphasized, claim limitations recites: 3,11. Fig. at col. 38-39. shows the computer-based system detecting program application A 165 and the 167 as memory ac- performing separate parts structures data and random-access (RAM): structures, comprising: tions on detected *18 Further, so.”);
Id. Pause Fig. specification over one that does not do Tech., TiVo, Inc., LLC v. program pres- states that “the 165 of the 419 F.3d (Fed.Cir.2005) (“In claims, in construing ent invention is stored RAM 170 and however, identify give causes 120 to structures we must each claim term the CPU due.”); Strattec Sec. presented by application respect data 167.” that it is Co., specifica- Corp. v. Auto. Specialty 3,11. Thus, Id. Gen. at col. 37-41. 126 F.3d (Fed.Cir.1997) analyzer (holding tion server and the describes it serves, separate legal which it was error for the application, district court jury instruct structures. the claim term properly “sheet” was not considered part sug- to evidence point does not Patents, Exxon Inc. claim); Chem. gesting ordinary meaning, nor different (Fed. Corp., v. Lubrizol do we discern such evidence in the record Cir.1995) (“We give meaning must to all Indeed, Apple’s pro- before this court. claims.”). By the words Exxon’s con- posed construction contradicts the claim trast, the district court’s construction com- language “analyzer because reads ser- ports ordinary with the meaning of “ser- claim ver” out the claim. The recites supported by ver” the specification. analyzer “routines server including Accordingly, we affirm the district court’s data, detecting structures and for “analyzer construction of server.” linking actions to the detected struc- Apple’s proposed agreed tures.” construction re- The district court also with Mo- routines that detect struc- program “linking cites torola that actions to the detected tures and links actions to the detected as “creat- structures” should construed structures, specified connection between each any ing without mention of “ana- structure and at least one com- lyzer Apple’s servers.” construction es- detected sentially puter takes the claim text and removes subroutine that causes the CPU server,” “analyzer operations on that leaving perform sequence the rest ba- Thus, sically unchanged. Apple’s Apple argues con- detected structure.” language struction conflicts with the claim the district court’s construction is errone- First, by ignoring the claim term “server.” ous for two reasons. the district USA, e.g., Merck & v. Teva Co. Pharms. incorrectly “specified court added the con- Inc., (Fed.Cir.2005) Second, nection” limitation. the claims re- (“A linking multiple claim actions to each gives meaning quire construction that structure, Ap- preferred to all the terms the claim is rather than “at least one.” *19 ple neering” computer contends that the correct construction that “stores a memory structures to com “associating specification explains detected address.” The pointers may that cause the to puter subroutines CPU be used link the associated perform operations on the to the sequence actions detected structures. '647 3, they patent to which are as at 11. particular (“upon structure col. 65-67 detection structure, analyzer sociated.” of a server links ac- tions with responsible pat- associated the Apple the district court. agree We with structure, tern the using detected con- require only that the claims “asso- argues 4, 5, pointers”); ventional col. 1. 1. 64—col. the ciating” between structure and the su- (“[U]pon identification of a structure in ignores that the claims re- broutines but text, parser the links the actions associated sense, “linking.” general cite From the grammar with the to the identified struc- plain meaning associating relates to a particularly, parser ture. More retrieves commonality, linking mere while infers a from grammar pointers file attached to the joining. Additionally, the specification grammar and attaches the same pointers here demonstrates that is more linking to the pointers identified structure. These just associating. than patent The consis- system direct the to the associated actions tently associating differentiates between Thus, contained associated actions file. linking implies and linking and is a structure, selection of the identified specific merely more connection than asso- user interface can locate the linked ac- ciating. example, specification For the ex- tions.”). plains that actions are “associated” with specific “grammars” “patterns,” or Although and the district court stated that that “linking” only occurs after specification these linking “makes clear that grammars patterns are “detected.” is accomplished through pointers,” it did not, e.g., '647 at col. 11. Apple argues, 59-61 as actually limit the (“upon detection Rather, structure based on a “pointers.” claims to the court particular pattern, actions interpreted associated with linking require “specified particular connection,” pattern are linked 825 to just a connection estab- structure”); the detected col. 38-39 pointers. lished with the use of speci- The (“wherein analyzer server links to a explains fication that linking may be ac- detected structure the complished actions associated through pointers the use of but 3,11. (“ana- grammar”); with the col. 65-67 require does not their use and neither did lyzer server 220 Thus, links actions associated the district court. the district responsible with the pattern to the detect- court’s construction comports with the structure, ed using conventional pointers”); specification, including repeated differ- (“analyzer col. 11.31-33 server 220 links linking entiation between associating grammars the actions with associated 410 and pointers embodiment described strings 420 to these identified struc- therein. tures”) added). (emphases Apple is also incorrect that the claims
Apple argues that requiring “specified require each structure to be linked with connection” limits the claims of multiple use actions. points to the “pointers” specifica- described plural claim’s recitation of the “actions.” (“an tion. The district court explained that a See '647 at col. 11. 17-18 pointer is “a term in computer engi- of art analyzer detecting server for structures data, linking plural to the “actions” reasonably and for actions added). structures”) (emphasis detected read action per least one structure. does not language of the claims plain fact, Fig. displays example require multiple actions for each structure only invention with one action linked to a linking multiple the claim recites because specific structure. *20 such, multiple actions to structures. As Fig. at 4. In patent Fig. '647 the “date construction reads “realtime” out of disagree the claim. We and affirm the grammar” only structure has one corre- district court’s construction. action, sponding “put electronic calen- directly Apple’s dar.” This contradicts limitation Claim with relevant em- link mul- proposal require the claims to phasized, recites: each tiple pat- actions to structure. '647 signal processing system providing A for Fig. Accordingly, ent at we affirm the services plurality realtime to and “linking district court’s construction ac- independent from a number of client tions to the detected structures.” devices, system applications and said
comprising: Apple’s '263 Patent subsystem comprising a host central (CPU) in ac- processing operating unit patent system The '263 discloses a application cordance with at least one processing for data in “realtime.” The program program, and a device handler ap parties dispute whether the “realtime subsystem comprising further said (API)” in claim plication program interface subsystem interoperating with adapter 1 must itself function in realtime or wheth device; said said host CPU and just process er must facilitate realtime signal processing subsystem a realtime ing by subsystems. other The district of data trans- performing plurality just court concluded that the API need plurality of realtime comprising forms processing facilitate realtime and con signal processing operations; “realtime API” an “API that strued interaction two or application pro- allows realtime between at one least realtime (API) subsystems.” argues gram coupled more Motorola between interface thereto, subsystem signal sponse and the realtime the API 48 which receives subsystem to allow the sub- processing supplies these commands the real-time en- said real- system interoperate gine appropriate parameters with with the time services. performing required the transforms format”). contrast, By the real-time en- (emphasis at col. 11.28-43 '263 gine performing is described as the actual added). that, gen- court noted The district processing, “text-to-speech such as conver- realtime, system erally, to be “must sat- processing.” sion” or “video '263 (bounded) isfy explicitly response-time (“a system having abst. data transmission consequences,” constraints or risk severe engine a real-time for processing isochro- degraded performance. such as data”); nous streams of col. 11.16-18 contends Motorola district (“the actual modulation and demodulation *21 court’s construction reads “realtime” out of of adapter’s the hardware interface isoch- require the claim because it does not the ronous PCM data stream is accomplished API itself to function realtime. Motoro- entirely by 9, the engine”); real-time col. 31, points independent la to claim which (“the 11.65-67 handler has no involvement recites an API without the qua- “realtime” with the isochronous data stream created lifier, that, argues by including real- Thus, engine”). the real-time although 1, in claim patentee time the intended that the API interacts with the real-time en- operate the API itself in realtime. See gine, it is the latter that actually performs Phillips, F.3d at (finding that use the time-constrained processing. of the word “steel” in the term “steel Contrary argument, to Motorola’s the “strongly implies” baffles” a difference be- district court did not read “realtime” out of baffles). tween steel baffles and non-steel the claim. The API anis “interface.” As agree We with the district court. The such, it communicates and interacts with specification describes the API as an inter- subsystems other process data in real- parameters face that sends commands and necessarily time without processing any to engine,” actually the “real-time which data itself. This is what specification performs the realtime processing. data describes and what the district court cor- specification The does not describe the rectly Further, understood. the district API meeting any itself as re- specific prevent court’s construction does not sponse-time constraints or otherwise need- realtime, API from functioning just Instead, ing functionality. realtime require does not the API to function API’s role is to send pa- commands and realtime. This is consistent with the See, engine. rameters the real-time description, only claims and written which (“each e.g., 6, patent '263 at col. 11.33-38 require the API to facilitate the functional- interface receives ap- commands from an ity of the engine. real-time affirm the We plication program, through the handler district court’s claim construction. engine carry instructs real-time necessary transforms”); out the col. 11. Motorola’s '559 Patent (“the particular 22-25 transforms to be performed are sent as commands to the Turning to Motorola’s asserted engine real-time from the adapter patents, patent handler the '559 discloses a method application via suitable programming generating “preamble sequences,” (“in 48”); interfaces col. 11. 40-44 re- which are used in communications between performance steps stations. The district of its in the order phones cell and base writ- ten, claim, language specifi- construed claim 5 of the '559 court step (“multiplying prosecution history support that the third cation and the require code”) case.”). limiting the inner take construction in this the outer code The (“form- that, correctly court only steps after the first two district noted while in place an ing “forming preferred an outer code” and inner embodiment the inner and out- code”) completed. are Based er multiplica- codes are formed before the construction, summary granted the court step begins, tion this alone does not limit non-infringement Apple. judgment e.g., Fig. claims. '559 appeals only the claim construc- Motorola acknowledged The district court also affirm. tion decision. We if likely the invention would function even multiplication step began before the limitations em- Claim with relevant full inner and outer codes were formed. phasized, recites: Notwithstanding foregoing, the court generating preamble A method for se- require construed the claims to that step quences system, in a CDMA the method only occur steps three after one and two comprising steps of: completed. are in a forming outer code mobile sta- agree with the court. We district *22 tion; multiplying claims recite “the” inner code preamble with “the” outer code to create a forming an in the mobile inner code “sequence.” Both code the inner and out- utilizing following equation: station of sequences er code are numbers. The plain meaning multiplying of “the” codes together sequences is that the entire are multiplied together they after have been formed. If claim 17 was directed to a 1, ..., are a of j=0, where M-l set only of the Sj; multiplied parts method that, P, length of orthogonal codewords where together, inner outer code it would not and positive integers; and P are and mul- M multiplying together recite “the” codes tiplying by the outer code the inner code preamble sequence. form the The more generate preamble sequence. a language sup- claim reading natural of the ports finding the district court’s patent (emphasis '559 at col. 11.20-35 fully formed inner and outer codes must be added). they multiplied together. are before Steps in claim a method need not reading. specification supports The they necessarily performed be the order discussing multiplying the inner and When Altiris, Symantec are written. Inc. v. codes, specification outer describes (Fed.Cir.2003). Corp., forming an inner and outer code and then hand, grammar, logic, the other if On together: the codes multiplying specification, prosecution history or the re present provides invention a meth- quire steps performed sequen to be The Id.; sequences in tially, generating preamble then the claims are od for so limited. system. a communication The Corp. Sony Corp., Loral Fairchild v. CDMA (Fed.Cir.1999) an outer (“Although comprises forming method inner code at a mobile every process not claim is limited to the code and an summary judgment non-infringement. multi- The station then station. mobile agree code to with the district court’s con- code the inner We plies the outer grant affirm sequence. struction and therefore preamble generate summary judgment. 52-57 (emphasis at col. 11. patent '559 added). '712 patent, Claim 17 of the with rele- emphasized, vant limitations recites: plain supported
Because it is language claim and the meaning of the system having In a communication we affirm the district court’s specification, layer, layer, link physical data claim construction. layer, providing network method protection of a data cryptographic was the basis Because this construction stream, comprising: grant summary court’s for the district judgment noninfringement, we need (a) packet assigning sequence number of “a set of reach the court’s construction packet to a derived from a data stream Accordingly, we orthogonal codewords.” layer; received from the network grant Apple’s affirm the district court’s (b) updating a transmit se- overflow summary judgment of non-in- motion for a function quence number as fringement patent of the '559 based number; sequence packet of claim steps its construction that the (c) performed sequence encrypting, prior communicating in the described and the packet packet sequence above. physical layer, packet on number packet sequence a function of the patent '712 Motorola’s the transmit overflow se- number and system The '712 discloses a quence number. encrypting data communications. The 8,1. 9,1. court found that '712 at col. 65-col. district the claimed *23 number,” that, sequence specification explains “transmit or in order to en- overflow TOSN, crypt decrypt being “never transmitted” to the re the data transmit- is ted, system. assigns “packet” ceiver in the claimed Because the the invention each counterpart “packet sequence to the TOSN the accused data both a number” and receiver, abst; products is transmitted to the overflow number. See id. at col. 5,11. granted district court Apple’s motion 13-15. 29-32; decrypt sequence number. Id. at col. “key” encrypt used to
The sequence specification col. 11.7-9. The does packet includes both the data transmitting any number. The describe TOSN number and the overflow Instead, number. Id. assigned are se- other overflow packet sequence numbers num- couples packet sequence receiver up to a maximum. Once quentially reached, generates it sequence ber receives with ROSN packet maximum is decrypt begins and uses these two numbers number count “rolls over” and example, packet. if data again from number one. For assigned maximum is after 128 is the district specification supports data, packet next packet to a that the TOSN is nev- court’s construction number of one. assigned packet sequence First, the claims recite a er transmitted. 4,11. coun- at col. 15-17. The overflow Id. TOSN, sequence generic not a overflow packet counts the number of times the ter plainly de- specification number. The over. at col. sequence number rolls Id. transmitting aspects certain scribes *24 Thus, 54-55, in as demonstrated 65-68. (the packet the se- system packet, data illustration, packet time the the above each number) suggests never quence but over, rolls the overflow sequence number part of that transmission. the TOSN is by increases one. Id. sequence number necessary for the TOSN to be Nor is were, side, If it there would be no transmitted. the transmission the overflow
On generate the receiver to a ROSN. the receiv- need for number is called the TOSN. On Further, packet side, if both the TOSN and receiving the overflow ing it is called transmitted, (“ROSN”). an sequence number were In this man- sequence number the entire eavesdropper intercept could ner, decrypt the key encrypt the This decrypt message. the key num- needed packet sequence data includes both a purpose would defeat the invention’s number. When the ber and an overflow transmitted, security by not trans- increased providing are the packets of data key. the entire packet mitting system claimed also transmits 1312 during patentee’s Motorola that the statements made dur
Statements made ing prosecution patent of a later were Japanese patent of a related prosecution an patent relevant earlier issued Before support further this construction. specification. a common shared Id. Of Office, Motorola distin- Japan Patent course, ap made in statements unrelated guished prior by explaining, art with plications are not relevant to claim con emphasis, the included that “the overflow See, e.g., Goldenberg Cyto struction. v. sequence number is never transmitted.” (Fed.Cir. Inc., 1158, gen, 373 F.3d 1167 that, explained further because Motorola 2004) that an (explaining patent unrelated transmitted, never “there is TOSN is is one that does not “have a application intercept chance to the overflow se- no relationship” patent familial with the number; thus, quence pro- [the invention] issue); L.P., Dey, Abbott Labs. v. higher security.” vides a level of Motorola (Fed.Cir.2002) 1097, 1105 (finding applica argument on more than made this one they tions unrelated when had “no formal application Japanese occasion. The claims relationship presented and were to the priority application to the PCT that issued patent patentably office as distinct inven patent. in the the '712 United States as tions”). application Japanese Both the and the '712 patent specification, have the same and the This court has also considered state Japanese application included identical foreign patent ments made before a office claim to claim 17 at the time Motorola’s construing they when claims if are rele statements. vant and unique aspects not related to See, foreign patent e.g., law. Abbott Labs. precedent precisely Our does not Sandoz, Inc., (Fed. v. 566 F.3d the impact address of statements such as Cir.2009) (“While during statements made Motorola’s here. description Motorola’s of prosecution foreign of a counterpart to a patent the TOSN came after the '712 is patent application U.S. ap have narrow foreign sued and was made in front of a plication to claim ... in U.S. construction previously office. This court has application this case the '199 part JP related, found that statements made prosecution history of the '507 later-prosecuted patents may U.S. inform itself’) (internal omitted); citations Gillette meaning of earlier issued claims. Inc., Energizer Holdings, Co. v. 405 F.3d e.g., Corp. Sys., v. Multi-Tech (Fed.Cir.2005) Microsoft (considering the Inc., (Fed.Cir.2004). patentee’s arguments European before the Microsoft, “any the court noted that (EPO) concluding Patent Office that a patentee statement of the prosecu “blatant admission this same defendant tion application scope of a related as to the clearly supported]” before the EPO of the invention would be relevant to claim construction); Co., court’s Seiyaku Tanabe construction, and the relevance Comm’n, v. U.S. Int’l Trade statement made this instance is en (Fed.Cir.1997); Caterpillar Tractor *25 hanced the fact that it in an was made Berco, S.p.A., Co. v. 714 F.2d official in proceeding patentee (Fed.Cir.1983). which the Eng’g ALA v. But see Ltd. every had incentive to exercise care in S/A, Magotteaux Int’l characterizing (Fed.Cir.2011) (“[O]ur the scope of its invention.” precedent cautions added). (emphasis Id. upon Based against pros indiscriminate reliance on the reasoning, the corresponding foreign applica- court concluded ecution of Microsoft analysis.”); granted Apple’s in claim construction The district court tions the mo- Ltd., Ranbaxy summary v. Labs. Pfizer, judgment Inc. tion for of non-in- (Fed.Cir.2006) (“[State- 1284, 1290 fringement based its construction of during prosecution foreign ments made claim 17. appeal, On Motorola does not patent to the '893 are irrele- counterparts dispute Apple that not infringe does under they to claim construction because vant this construction. Accordingly, we affirm patentability in response were made the district court’s grant summary judg- requirements unique Danish and Euro- ment of non-infringement pat- of the '712 law.”). pean ent. principles The illustrated in these Admissibility Damages Of provide ample support for hold decisions ExpeRT Evidence
ing Motorola to the statements made dur
Motorola’s
ing Japanese prosecution.
preparation
In
trial
on the
“is never trans
statements
the TOSN
issue,
infringement
par-
claims still
the
the receiver could not be clear
mitted” to
presented
testimony
ties
expert
supporting
Gillette,
(holding
er.
509 U.S. 137, methods, Carmichael, or principles 526 U.S. unreliable or v. ho Tire Co. (1999), See, 1167, the L.Ed.2d 238 143 and data. legally 119 S.Ct. insufficient facts “ga- court’s Co., that the district clarified Court 215 F.3d v. Ford Motor e.g., Smith expert to all obligation” applied tekeeping (7th Cir.2000) (“We 713, emphasize 147, at 119 S.Ct. testimony. 526 U.S. gatekeeping function fo the court’s “Rule 702 was Subsequently, 1167. expert’s on an examination of the cuses to Daubert and cases response in amended Daubert, methodology.”); 509 U.S. it, Kumho Tire.” Micro including applying (“The focus, course, must 113 S.Ct. Lextron, Inc., Chem., 317 F.3d Inc. v. methodology, and solely principles on (Fed.Cir.2003). 1387, 1391 they generate.”); on the conclusions that not Rule 702 states: Partnership v. Ltd. i i4 Microsoft expert (Fed.Cir.2010) as an qualified A is witness who Corp., 598 F.3d skill, experience, training, by knowledge, and Rule 702 are (stating that “Daubert testify in the form of may or education safeguards against or irrelevant unreliable if: opinion an or otherwise correctness”) opinions, guarantees (a) scientific, technical, or expert’s the law); Fifth Circuit Walker v. Soo (applying help knowledge will the specialized other (7th Co., R. Cir. Line the evidence trier of fact to understand 2000) (“The that Dr. Plis- point critical is issue; in a fact or to determine methodology to de employed proper kin (b) testimony based on sufficient the IQ.”). pre-incident Mr. termine Walker’s data; facts or (c) testimony product is the of reli- the judge A must be cautious not methods; and and principles able overstep gatekeeping weigh role and (d) expert reliably applied has facts, evaluate the correctness of conclu and methods to the facts of principles sions, impose preferred its own methodolo the case. gy, judge credibility, including the cred These ibility expert of one over another. 702. Rule 703 states: Fed.R.Evid. fact find solely tasks are reserved may opinion An an on facts expert base (“The Smith, 215 at 718 e.g., er. expert in the that the has or data case underpinnings of the factual personally made of or ob- soundness been aware If field experts particular analysis served. and the correctness expert’s reasonably rely on those kinds of would on that expert’s of the conclusions based forming opinion on facts or data factual to be deter analysis are matters subject, they not be admissible need fact.”); Stollings the trier of v. mined But if opinion to be admitted. (7th Techs., Inc., Ryobi otherwise be the facts or data would Cir.2013) (“An may provide expert expert inadmissible, opin- of the proponent testimony properly based on a valid and jury only them to the if ion disclose offer a con applied methodology still jury probative helping their value subject It is the clusion that is to doubt. substantially out- opinion evaluate the jury weigh these sources of role of weighs prejudicial their effect. doubt.”). noted in As the Seventh Circuit Fed.R.Evid. jury “the must still be allowed to Stollings, its essential role as the arbiter play precedent, Under these rules and credibility expert testimo- gatek- weight as a judge, acting a district court
1315 different, 765; common for to choose parties at see also Lees v. ny.” 725 F.3d (7th and, single reliable in a Coll., 516, approaches case 714 526 Cir. Carthage F.3d do, they strengths the relative when 2013). may exposed at trial or weaknesses during attacked That cross-examination. role of the gatekeeping That the account approach may one better for one excluding testimony judge is limited aspect royalty estimation does not and methods principles on unreliable based approaches make other inadmissible. For essential the context particularly is royalties example, paid actual for technolo- damages. recog This court has at gies may similar to the claims issue questions regarding which facts nized that available, inherently account for non-in- calculating are most relevant or reliable hand, fringing alternatives. On the other i4i, jury.” “for the royalty a reasonable are analytical comparison of the same non- (“When methodology at is 856 infringing may alternatives to the claims sound, upon suffi and the evidence relied directly more account for this cost. The hand, at dis ciently related to the case may fact that one of these methods be said of relevance or putes degree about the accurately aspect to more value this of a threshold) (above minimum accuracy not, royalty reasonable calculation does testimony’s weight, to the but not may go necessarily, the other approach make inad- admissibility.”); see also Micro Chemi missible. cal, F.3d at 1392. 317 legal With this framework recognized This court has also mind, we review the district court’s dam royalty” estimating a “reasonable is so, ages rulings. doing apply we Sev such, the record not an exact science. As question law the of admis enth Circuit roy may support range of “reasonable” Ethicon, See, Inc. v. sibility. e.g., U.S. alties, Like single rather than a value. (Fed. 1456, Surgical Corp., 135 F.3d 1465 wise, may there be more than one reliable Cir.1998). The Seventh Circuit reviews de estimating royal method for a reasonable court applied novo whether the district Ventures, e.g., In re Innovatio IP ty. framework; reviews deci proper legal but Litig., MDL LLC Patent WL testimony expert to admit or exclude sions (N.D.Ill. 2013) 5593609, at *30-40 Oct. under this framework for an abuse of dis (undertaking a detailed evaluation of Parra, cretion. States v. See United proposed by parties different methods Cir.2005) (7th (citing United issue). valuing patents For ex (7th Allen, v. States royalty rate ample, party use .2001)). Cir licenses, val sufficiently comparable from com infringed ue the features based Apple’s '949 Patent marketplace, in the parable features provided of the benefit estimate the value we find that patent, As to the '949 comparing infringed features Ap excluded improperly the district court al product non-infringing accused testimony on dam ple’s proposed expert All have certain approaches above, ternatives. First, the dis ages. as discussed and, depending strengths damages analysis and weaknesses on trict court based its facts, may produce This er upon the one or all an incorrect claim construction. ror, alone, reversal and re- require It would testimony single in a case. admissible erroneous claim con- similar” to the claimed features of the '949 mand because the *28 Further, patent. Napper district court’s contended that struction here tainted the See, e.g., Trackpad Cohesive the features most similar to the damages analysis. (such Techs., vertical Corp., Inc. v. Waters asserted claims as the scroll- features) (Fed.Cir.2008) (vacating ruling ing scrolling and horizontal are damages entitled to the most used touch features of the Track- patentee that was not Thus, remanding pad. Napper provided sup- reconsideration based factual construction); port Trackpad for his that a upon modified claim Texas contention Inc., Digital Sys., Telegenix, comparable Inc. v. 308 includes features to the (Fed.Cir.2002) (vacating claimed features. damages pro- award where district court In order to isolate the of value the vided erroneous claim constructions to the features, Trackpad’s touch Napper began Second, court jury). the district erred by comparing price Trackpad the of the full considering scope the the assert- that of a computer traditional mouse. claims, questioning ed the conclusions of Napper opined price difference substituting Apple’s expert, and its own products between these could be attrib- opinion, focusing rather than on the relia- uted to two differences: Trackpad’s bility principles of the and methods used touch features and its wireless connectivi- sufficiency or the of the facts and data ty, present neither of which in a is tradi- upon. require relied These errors also tional mouse. Because wireless connectiv- reversal and remand. ity claims, is not part the asserted Napper royalty discounted his based order to estimate the value of the the estimated value of wireless connectivi- patent, Apple’s asserted claims of the '949 (Brian ty in Napper this context. estimated this expert Napper) analyzed Ap- W. by comparing value price of two sets ple’s Magic Trackpad (“Trackpad”).2 The using wired and wireless mice and Trackpad touchpad is a for use with Mac midpoint price difference as a discount. computers place of a mouse. Much like touchscreen, it has tactile sensor Napper royalty further discounted his finger detects contacts and translates them Trackpad calculation to account for touch computer into A user commands. touches features that are scope outside the of the Trackpad fingers with her order to Specifically, Napper asserted claims. con- through scroll documents or translate con- cluded that a subset of the Trackpad touch computer tent on the screen. The Track- comparable” features were “similar or pad recognizes finger gestures, twelve in- Thus, the asserted features. he reduced cluding a scrolling gesture vertical and a royalty his a proportional estimate scrolling gesture. horizontal The decision amount to account for the extra features. to use the Trackpad comparable prod- as a Following procedure, Napper arrived supported by testimony uct was of one royalty. at a reasonable Apple’s experts, Stephen technical Dr. Feiner, ges- Napper compared who concluded that the touch then royalty his calcu- Trackpad “comparable royalty tures of the are paid by lation with rates Motorola Napper's expert report many supporting Because much of but cannot include confidential, providing we are limited to details. methodology application overview his narrow view of the claims led the court to touch screen tech- in licenses for related conclude, that, incorrectly, Nap- that much of concluded because nology. Napper analysis too far from per’s licenses was removed technology at issue those inferior, claims. and because asserted similar but was were not direct com- to the license parties Although nearly exclusively relied on willing have been Motorola would petitors, construction, district this narrow claim royalty for a license to the pay higher recognize Napper’s expert court did than it claims of the '949 asserted (and *29 full report proper) was focused on the had those licenses. paid this, light In of scope of the claims. alternative, Napper’s pro- court considered whether design Napper possible As a testimony a rehable basis posed provided removed that Motorola could have testified estimating single the value of another functionality prod- from its the asserted limitation, scrolling fea- create claim the “vertical Napper noted that this would ucts. not, ture.”3 The court found that did specif- touchscreen due to a functional less many that “the fact that con- concluding in Dr. Fein- ic technical reasons discussed Track- pay Magic this sumers will more for According Napper, to report. er’s nothing a mouse tells one experi- pad the user’s than for adversely impact would they to avoid occasion- pay create user about what will of the touchscreen and ence their frustration, ally swiping unsuccessfully in a de- because thereby resulting less actually to swiping finger that wasn’t vertical Napper concluded product. sirable Thus, the screen.” the court concluded produce not a rea- this alternative would comparison Trackpad to a was an any to dam- estimate which base sonable the val- “inadequate” estimating method of ages. or scrolling ue of either the vertical feature Napper’s court reviewed ex The district tap page for the next feature. pert report pro and excluded all of his an incorrect claim relying In Aside from on posed testimony patent. for the '949 construction, by the district court erred analysis incorporat the court’s large part, infringe- full of ed, considering scope upon, based its incorrect claim and was construction, At no did the court ask or point the claims to ment. which limited had used reliable Napper consider whether products containing preloaded ap Kindle data, methods, or sufficient go principles to and plication tap gesture that uses a scope the. entire of the asserted Inc. v. to value page. e.g., Apple, the next Motorola, Inc., 1:11-CV-08540, the district court Consequently, 2012 claims. WL 2012) (“At lim- (N.D.Ill. on individual claim incorrectly focused May at *7 1959560 evaluating the in isolation when dispositive itations point litigation in the It is cer- reliability Napper’s methods. is the use of a element of the '949 that an otherwise sound tainly conceivable tap righthand on the side of the screen (or, appear unreliable methodology could page next of a Kindle book switch to the irrelevant) indeed, single applied when phone”); that has loaded on the cell been limitations, limitation, rather subset (discussing design at *7-8 alterna see id. infringed claims. to the full set of overly than only tap gesture). tives to the This Hence, Napper's the asserted claims. did not consider court light scope expert testimony in of the full other, why proper inquiry evaluates non-claimed valuing This is features of expert’s methodology view of the Trackpad subtracting and this value. infringed full claims. See 35 scope of the royalty, To reach a reasonable Napper (“[D]amages adequate § U.S.C. compared resulting royalty then his to re- ... compensate infringement price lated licenses and rationalized the royalty for the use made of the reasonable Napper differences. also addressed the infringer.”) (emphasis invention possibility removing the asserted fea- added); Corp. Corp., Motors v. Devex Gen. tures from the accused devices argued and 648, 655, 461 U.S. S.Ct. this would frustrate consumers and (1983) (“Congress expressly L.Ed.2d 211 all, products. Napper’s devalue the §in the court ‘shall provided testimony product was the prin- reliable damages adequate award the claimant to ciples and methods. ”) (em- compensate infringement.’ for the Napper applied principles also these Matthews,
phasis
original);
Robert A.
way
supported
methods in a reliable
(2014)
Jr.,
§
Digest
Annotated Patent
30:6
*30
legally
them with
sufficient facts and data.
(“All claim constructions define the bounds
Napper’s
See
application
Fed.R.Evid.
infringes,
of what
and therefore also define
straightforward
was
adequately sup-
and
activity infringement
the bounds of what
ported by Apple’s technical experts and
to.”). Thus,
damages
applicable
are
the
Napper’s
experience
own
expertise,
and
proper question
compari-
is not whether a
the
disputed.
latter of which is not
For
Trackpad accurately
son to the
values one
example, Napper’s assertion that
Rather,
finger gestures.
the claimed
Trackpad’s
comparable
features are
to the
ask,
scope
we must
with the entire
asserted features is the result of reliable
asserted claims and the correct claim con-
claims,
application. Like the asserted
mind,
struction in
Napper
whether
em-
Trackpad
finger
translates
contacts into
methods,
ployed
principles
reliable
and
re-
commands,
computer
including some of the
liably
them,
applied
upon legally
and relied
finger
computer
same
contacts and
com-
sufficient facts or data. We find that he
Napper
mands asserted.
properly
also
re-
did.
upon Apple’s
expert
lied
technical
to factu-
Contrary to the district court’s determi
ally support
comparison.
To account
nation, Napper’s methodology is
inher
not
Trackpad’s
the differences between the
unsound;
ently
product
rather it is “the
claims,
features and those of the asserted
principles
reliable
and
FED.
methods.”
Napper addressed these differences and
R. EVID. 702. This court
upheld
has
royalty
discounted his
estimate.
use of similar methods involving compara
In excluding Napper’s testimony,
products
ble benchmark
past.
reasoned,
district court
“that a consumer
i4i,
853-54;
e.g.,
at
see also Vir
pay something
gestural
will
control
Inc.,
Inc. Apple
F.Supp.2d
netX
v.
not
an
does
enable
estimation of how much
(E.D.Tex.2013). Napper’s
methodolo
pay
particular improvement
he will
for a
gy focused on the
technology.
claimed
As
system
of such control.”
discussed,
The court also
Napper began
existing
with an
found that
preferable
there was more
product containing features he contended
(the
valuing
were similar to
method for
the asserted claims
the asserted features
Next,
that,
believed,
it
Trackpad).
Napper
would be used in a non-
attempted
litigation
Contrary
isolate the value of these similar features
context.
to the district
assertion,
Here,
was
information in all
Napper’s estimate
cases.
the ab-
court’s
“gestural
value of all
sence of a direct measurement of
not directed
this val-
topple
entirety
to the value of the asserted
ue does not
control” but
Napper
principles
employed by
focused on the as-
and methods
Nap-
claims because
features,
per. The
requires
as described above. See
statute
determination
serted
(describing Napper’s
royalty,”
iden- of a “reasonable
not a
supra
39-41
reasonable
features,
noted,
price.4
tification of
isolation of
consumer
As
there
mul-
similar
are
by discounting
tiple
calculating
value
for unclaimed
reasonable methods for
their
features,
comparison
royalty
royalty,
directly estimating
rate to
the value a
agreements).
places
infringing
license
While the
consumer
on the
similar
feature
summarily
requirement
admissibility.
court
concluded there
is not a
district
way
damages,
a better
to calculate
was
if
Factually,
Trackpad
is not an ac-
point
any specific
Nap-
did not
flaws
benchmark,
curate
Motorola is free to
example,
per’s Trackpad comparison. For
challenge
argue
the benchmark or
for a
testimony of
question
the court did not
more accurate benchmark. But
an
such
the Track-
Apple’s
expert
technical
argument goes
evidentiary weight,
“comparable
pad’s features are
or similar”
admissibility,
when,
here,
especially
Nor did the
to the asserted features.
expert
applied
has
reliable methods to
any
Napper’s
court
flaws in
meth-
point to
a relationship
demonstrate
between the
apportioning
od of
the cost of the relevant
benchmark and the
claims. See
infringed
Trackpad
explain why
in the
features
Lees,
(“Carthage
Consistent with Rule dam- ages experts rely exper- may often on technical have a bias or self interest towards offering he or she is All of this information would be outside of on whose behalf
party more, if generally Napper’s expertise helpful, does but not criti- testimony, without cal, expert so In- require disqualifying valuing patent. not to his task of providing deed, to be long expert appears as the if the technical information needed objective analysis. goes Bias to the expertise Apple employ- an was within the testimony, necessarily not weight ees, Apple, it would be wasteful for if not admissibility.”). Tagatz, the court rec disadvantageous, provide not to otherwise that, party in of a ognized the context and, circumstances, it in certain even de- expert, “the trier of testifying as his own Overall, litigation, ceitful. outside of it fact should be able to discount for so obvi reasonable, common, quite would be and at ous a conflict of interest.” 861 F.2d rely on technical information Napper for Here, Dr. chip if the Polish has provided by Apple experts or one of its suggested cheapest is not the best or alter design value order to the cost to around native, free to address this Motorola is Indeed, technology. an Apple’s ap- such through issue on cross examination and carry proach would the same intellectual testimony expert its own witness. rigor approach employed as the in the Walker, 589-90; e.g., at courtroom in this case. 765; at Stollings, Gayton, A rule that would exclude dam- Apple’s F.3d at 616. The issue is one of evidentia ages simply evidence it relies upon because admissibility. not ry weight and expert information from an technical implied The district court also that Dr. contrary is unreasonable and to Rules 702 particular Polish’s recommendation of a controlling precedent. and 703 and As a chip replacement type of infor result, we reverse the district court’s ex- expert mation that the field would Napper’s testimony regarding clusion of reasonably rely upon outside the context of patent grant the '263 and vacate its Inc., litigation. Apple, See 2012 WL summary judgment regarding damages. *9-10; Kumho, 1959560 at see also (noting at that an
U.S.
S.Ct. 1167
Motorola’s '898 Patent
expert
employ
must
“in the courtroom the
The district court excluded all of Moto-
rigor
same level of intellectual
that charac
proposed testimony
rola’s
to dam-
related
practice
expert
terizes
of an
field.”).
ages
infringement
of the '898
disagree.
relevant
noted
We
As
subsequently granted Apple’s
and
motion
above, Rule
requires
expert
that the
summary judgment
that Motorola was
testimony be tied to the facts of the case.
damages.
entitled to no
affirm the
153-54,
We
If Apple
See id.
expert reports of Motorola’s technical ex-
was
damages expert
Motorola’s
perts,
patent represented
that the '898
proposed
S. Mulhern. Mulhern’s
Carla
important
innovation-
“dispropor-
and was
testimony
analysis
included an
of license
tionately valuable in the context of Motoro-
and “all of
agreements between Motorola
portfolio.”
la’s overall
major”
in
phone
cellular
makers
opined
licensing
Mulhern
pat-
one
States, except
Apple.
for
While
United
large
portfolio
ent from a
SEP
a
was not
agreement vary,
gen
all
the terms of each
because,
typical industry practice
in order
erally cover Motorola’s entire standard-
standard,
to
use
license to all essential
(hun
(“SEP”) portfolio
patent
essential
patents would be needed.
In the “real
patents),
patent
dreds of
of which the '898
world,”
Mulhern,
according to
SEPs are
of
licenses
very
part.
small
Some
only
in large portfolios.
licensed
Mulhern
cross-licenses,
were
wherein Motorola ob
proposed testimony
cited
experts
other
parties’
tained a license to third
SEPs. The
experience
licensing industry
with
in the
to
royalty base
each of these licenses was
support
Despite
industry
this claim.
this
price
phone. According
the sale
of a cell
practice,
recognized
Mulhern
Mulhern,
to
these licenses show that Moto
“hypothetical negotiation construct would
previously
royalty
rola has
received a
rate
force Motorola to enter into a license for
approximately
for a
2.25%
license
just a
pat-
subset of its standard-essential
portfolio.
entire SEP
Mulhern also exam
license, according
ents.”
Such
to Mul-
portfolios covering
ined
licenses
SEP
hern,
capture a “nonlinear”
would
share of
technology”
“cellular communications
be
portfolio
rate because it would force
parties.
tween
These li
Apple
third
to, inefficiently,
pat-
Motorola
license its
typically
censes
included cross-license
also
words,
ents a few at a time.
other
agreements. Apple’s royalties under these
patents
portfo-
first few
licensed from the
agreements
range.
in a
were
similar
higher royalty
lio would command a
rate
alleged
infringe
Because
is not
than those that followed.
patents
port-
all of the
in Motorola’s SEP
reasoning,
Based
Mulhern
folio,
attempted
separate
Mulhern
out
patents
the first
would
opined
few
the value of the
from the total
'898
typically command 40%-50% of the entire
recognized
Mulhern
portfolio.
value of the
portfolio
supported
rate. Mulhern
this 40
patents
that individual
in a SEP portfolio
proposed
& % estimate with: the
testimo-
values,
upon,
have different
based
ny
licensing
ex-
another Motorola’s
example,
importance
relative
Donohoe;
perts, Charles
the statements
technology
to the standard or to the
executive;
licensing
a Motorola
the state-
Specifically,
opined
as a whole.
Mulhern
licensing
ments of a former Ericsson
exec-
pat-
that economic studies have shown that
utive;
knowledge
and her
of “IBM’s well-
many patents
ent values are skewed with
licensing policy
known
the 1980s and
having little or no value and a small minor-
Mulhern, IBM
ity having significant
early
According
value. Mulhern also
1990s.”
that,
single patent
a license to a
during
hypothetical negotia-
noted
would offer
*35
10,000
but, nevertheless,
portfolio,
pat-
gations
its
which totaled over
excluded all of
ents,
proposed testimony
Mulhern’s
royalty rate of 1% of net sale
because she
at a
range
“failed to consider the
plausible
of
price.
patent
Each
would cost
successive
... facing
alternatives
1%,
Apple.” Specifical-
up
patent
to the fifth
additional
ly, the district court
that
concluded
Mul-
Beyond
patents,
five
or a 5%
licensed.
analyze”
possibility
hern’s “failure to
royalty,
the rate
increase.
would
Apple contracting with Verizon made her
analysis,
Mulhern con-
upon
Based
appears
method unreliable.
It
the district
cluded,
estimate, that
pat-
as one
the '898
court was
with
fail-
concerned
Mulhern’s
ent was worth 40%-50% of Motorola’s
ure to specifically value the cost of con-
portfolio
SEP
rate.
tracting
place
with Verizon in
of AT & T.
As an alternative and more conservative
Inc.,
Apple,
See
(excluding patentee’s damages model be The district court assumed cause the expert not associate his “[did] royalty proposed by rates Motorola proposed royalty with value fair, all”). satisfied Here, reasonable and nondis patented method at where (“FRAND”) criminatory licensing nothing obli- Donohoe admitted that he knew
1325
therefore,
specifi-
not
option
at issue and did
this
need
be
portfolio
about
SEP
eyen
valued,
cally
Apple
to link the 40%-50% rate
this is an issue that
purport
not
patent,
invention of the '898
to the claimed
could address at trial via cross-examina-
little
whether his testi-
there can be
doubt
presentation
expert
tion and
of its own
case.5
mony
See,
Walker,
tied to the facts of this
was
e.g.,
208 F.3d at
evidence.
589-90; Gayton,
the fact finder must determine what
*38
ty
supported by
is
the record.
Norian
See
Apple’s '647 Patent
1321,
Corp. Stryker
v.
Corp., 363 F.3d
1333
summary judgment
for
Motorola moved
(Fed.Cir.2004) (holding
jury’s
that “the
that,
was
assuming
patent
even
the '647
finding
damages
sup
of no
cannot be
any
to
infringed, Apple was not entitled
ported”
requires
because “the statute
a nominal reasonable
damages, including
damages to a
in a pat
successful claimant
royalty.
argued
Apple
Motorola
was
infringement
not
than
ent
suit shall
be less
damages because there was
not entitled to
Riles,
royalty”);
a reasonable
at
298 F.3d
rely
Apple may
“no evidence
which
(“The
guarantees patentees
1311
statute
a
any
measure
amount
reliably establish or
royalty
they
reasonable
even when
are
the '647
damages”
infringement
prove
profits
unable to
entitlement to lost
patent.
rate.”);
royalty
or an established
Linde
mann
GmbH v. Am.
Maschinenfabrik
and con
agreed
The district court
Co.,
Hoist & Derrick
895 F.2d
any
not
Apple
cluded that
was
entitled
(Fed.Cir.1990) (“In
law,
the fact of
damages
because
had
measure
infringement establishes the fact
dam
damages
failed to show that its measure of
age
patentee’s right
because the
to exclude
disagree and hold that a
was correct. We
violated.”);
Patent
has been
Annotated
finding
royalty
may
that a
estimate
suffer
(“When
Digest,
patentee
§
a
shows
30:7
not,
itself,
by
sup
factual flaws does
from
infringement,
presumption arises
port
legal
conclusion that zero is a
to some form of
patentee
is entitled
royalty.
Co. v.
reasonable
See Dow Chem.
damages. The Federal Circuit has ex
Indus., Inc.,
1370, 1382, n. 4
Mee
341 F.3d
from
plained
presumption
that this
arises
(Fed.Cir.2003) (“However, the fact that the
infringement
the statute once
is admitted
agreement
support
specific
did
proven.”).
by
not there
requested
amount
Dow does
any
support
mean that
it does not
fails
patentee’s
If a
evidence
all.”).
award at
estimate,
royalty
support
specific
required to determine
fact finder is still
procedural
Due to the
posture
case,
royalty
supported by the record.6
patents
that the
at what
is
we must assume
Chem.,
infringed.
in-
Dow
termination of a reasonable
how
At summary judgment, as is
*39
ever,
indeed,
need not be supported, and
here,
the case
a judge may only
a
award
frequently
supported by
is not
the specific
royalty
zero
for infringement if there is no
figures
by
party....
advanced
either
genuine issue of material fact that zero is
reject
district court
the ex
[T]he
only
Thus,
royalty.
if
reasonable
a
figures proffered by
litigants
treme
as patentee raises a
regarding
factual issue
incredible and
an
substitute
intermediate
any
whether
it is due
royalty,
non-zero
figure as a matter of
judgment
its
from all
summary judgment must be denied.
evidence.”).
if
Certainly,
paten-
any event, simply
a patentee
because
fails
weak,
proof
tee’s
is
the court is free to
to show that its royalty estimate is correct
low,
nominal,
award a
perhaps
royalty, as
not,
itself,
by
does
justify awarding
roy
a
long
royalty
as that
supported
alty
summary
of zero at
judgment, as the
record. See Lindemann
Chem.,
court
district
did here. See Dow
Maschinenfa
brik,
patentee failed
provide
to
sufficient evi
appeal,
On
Apple points out that
award).
support
greater
dence to
a
not all
damages expert testimony
of its
proof,
awarding
royalty);
(finding
but
reasonable
jury royalty
Gus
award inconsistent
0%
Prods., Inc.,
tafson,
Intersystem
Inc. v.
Indus.
finding
infringement
jury
with
instruc
508,
(1990) (finding,
509-10
in the
jury
tion that the
choose
rate between 6%
context,
profits
lost
"no reversible error in the
15%).
Corp.
But see Devex
v. Gen. Motors
awarding
damages
district court’s ...
no
to
347,
(3d Cir.1981) ("In
Corp., 667 F.2d
proven”).
Gustafson because none were
This
any
the absence of
evidence as to what would
profits
is because a lost
award is above and
royalty
given
constitute a reasonable
in a
beyond
royalty
required
the reasonable
floor
case, a fact finder would have no means of
by the statute.
arriving
royalty,
at a reasonable
and none
awarded.”),
grounds,
could be
on other
affd
7. We note that we know of no case where we
461 U.S.
103 S.Ct.
month
before the exclusion
incorrectly
Other than
asserting that
this,
upon
Nap-
took effect.
order
Based
evidence,
Apple
expert
has no admissible
per concluded that four months was
rele- Motorola itself provides no evidence or
designing
vant timeframe for
around the
argument
support
royalty.
a zero
For
patent. Napper
'647
that
noted
HTC and example,
nothing
there is
in the record
likely
Motorola would
have
re-
similar
suggesting
would have been
to develop design
Nap-
sources
around.
willing
accept
no payment for Motoro-
per estimated that Motorola would lose
infringement.
la’s
Nor
any
is there
evi-
that,
dence
at the
operating profit
infringement,
million
based
time of
$52
Motorola
concluded
the '647
products
the removal of its accused
from
had no value.
contrary, Apple
To the
has
the market
four-month period.
expert
indicating
evidence on record
that it
Accordingly,
Napper concluded
Moto-
design
would take four months to
around
rola
willing
pay
would be
million
$52
patent. Apple’s expert
the '647
estimated
royalty.
*40
profit
lost
during
Motorola
this
The district court noted that it did not
design
period
upon
around
based
Motoro-
aspect
Napper’s proposed
exclude this
of
figures
la’s sales
for the accused devices.
Nevertheless,
testimony.
the court dis-
evidence,
Apple
presented
arguing
also
testimony
credited the
because the ITC’s
injunction,
for an
that the claimed features
claim construction differed from
patent
of the '647
drive consumer demand
products.
specific
for its
The
reasonable
Napper
court’s and because
failed to suffi-
royalty
any
this—and
other record evi-
ciently
any
address
differences between
supports
a factual question
is
re-
the two companies, HTC and Motorola. dence—
jury.
served for the
not, however, identify any
The court did
differences between HTC and Motorola
problems
The
that
the district court
Napper’s royalty
that undermined
esti-
Apple’s
royalty
identifies with
HTC-based
Apple
mate. The court determined that
(a
estimate
different claim construction be-
not
any
was
entitled to
measure of dam-
potential
fore the ITC and
differences be-
it
ages
proven
Motorola)
because
had not
its HTC-
only
tween HTC and
serve
royalty
based
estimate was correct. See
disputes
illustrate that
factual
remain.8
Motorola,
Inc.,
Hence,
Apple,
Inc.
v.
that
district court’s conclusion
missible,
tacitly acknowledges
by argu-
factually
8. Motorola
flawed.
that
is
ing
appeal
Apple’s
on
that
evidence is inad-
sum,
In
Motorola has not demonstrated
estimate was flawed
Apple’s HTC-based
law,
establish, as a matter of
genuine
does not
that there is no
issue of material
Norian,
at
royalty.9 See
zero
fact
whether
a reason-
regarding
zero is
Chem,.,
4;
1333;
F.3d at 1382 n.
Dow
royalty
infringement
able
for
of the '647
(“The
Mar,
at
trial
Del
presented
Motorola
no
patent.
evidence
if
required
approximate,
neces-
court is
royalty.
zero was
reasonable
sary, the amount to which
own-
contrast, Apple presented admissible evi-
entitled.”).
Apple
Even if
had not
er is
roy-
dence that it is entitled to a non-zero
evidence,
expert
this alone
submitted
alty.
Apple’s royalty
That
estimate
that zero is a
support
finding
would not
not, by
suffer from factual
it-
flaws does
Chem.,
royalty. See Dow
reasonable
self, support
legal
conclusion that zero
(reversing
award of no
1381-82
royalty.
Accordingly,
is
reasonable
we
upon
based
a lack of
damages, which was
grant
reverse the district court’s
of sum-
evidence,
expert
remanding
admissible
mary judgment.
royalty);
for
of
7 Donald S.
determination
§
Chisum,
Patents
Chisum on
20.07[3][a]
Injunction
Apple’s Request for
(2011) (“In
considering
question
evi-
certainty
proof required
dence and
granted
The district court
Moto
justify
royalty,
an award of a reasonable
summary
motion
judgment
rola’s
(1)
distinguish
should
between
the ex-
one
injunction
was not entitled to an
damage to a
which will
patentee
istence of
'949,
infringement of the
and '647
'263
(2)
support any
evidentiary
award and
patents
Apple had failed to show a
because
or quantity
for a
rate
particular
support
any alleged irrepara
causal nexus between
issue,
royalty. As to the first
a reasonable
harm
infringement.
ble
and Motorola’s
required.
The
specific proof
no
should
analysis
The district court’s
necessarily re
premise
royalty
measure
the reasonable
overly
lied
narrow construction of
infringed
is that a holder of a valid and
patent.
the claims of the '949
We have
inherently
legal
suffered
dam-
has
reversed the court’s claim construction de
age at least to the extent of a lost license
cision,
altering
potential scope
thus
royalty opportunity.”); Annotated Patent
infringement
injunction
underlying Apple’s
(“The
Digest,
expert
§ 44:79
use of
testi-
request.
scope
infringement per
Thus,
mony
permissive.
patentee’s
if a
injunction analysis.
e.g.,
meates an
excluded,
fact
damage expert is
does
*41
Co.,
Apple Inc. v. Samsung
Elecs.
automatically deny
patentee
right
a
a
(Fed.Cir.2013) (“[T]he
purpose
1363
damages.”);
to recover
Fed.R.Evid.
of the causal
requirement
nexus
is to show
(“A
qualified
expert
witness who is
as an
patentee
irreparably
by
that the
is
harmed
skill,
by knowledge,
experience, training,
infringement.”)
in
(emphasis
original).
may
(emphasis
or education
testify.”)
add-
example,
considering
For
when
whether to
(“The
ed);
may
§
court
U.S.C.
enjoin product,
a
it
proper
is
for the court
expert testimony
receive
an
to the
aid
aggregate
by
to consider the
harm caused
damages
roy-
determination of
of
or what
features,
infringing
all of the
rather than
alty would be
under the cir-
reasonable
cumstances.”)
added).
a
(emphasis
requiring
patentee
pat-
to address each
situation,
answering
question
pointing
9. We would be
a different
law.
In that
to flaws in
Napper's
Napper’s analysis
enough
justify
if
had
Motorola
moved that
HTC-
could be
summary judgment.
based calculation was incorrect as a matter of
individually.
permanent
injunction,
claim
See id. at 1365 an
stating
ent or
that “a
(“We
(1)
plaintiff
there
be circumstances
believe
must demonstrate:
that it has
(2)
logical
equitable
and
to view
an irreparable injury;
where it is
suffered
law,
patents
aggregate.”).
remedies available at
such as mone
tary damages, are inadequate
compen
of
a
Infringement
multiple patents
(3) that,
injury;
sate for that
considering
single
may strengthen
patentee’s
device
hardships
balance of
between the
argument
injunction by,
for an
for exam-
plaintiff
defendant,
remedy
and
in equity
in-
ple, supporting
argument
its
that the
(4)
warranted;
is
public
that the
inter
fringed features drive consumer demand
est
would not be disserved
a permanent
causing irreparable
By
or are
harm.
Id.
injunction.”
388, 391,
547 U.S.
126 S.Ct.
token,
we
im-
same
also consider the
(2006).
1837, 164L.Ed.2d 641
pact
general public
injunction
on the
of an
product
many non-infringing
and,
on a
with
thus,
The '898
is a SEP
(“We
features. See id. at
see no
agreed
fair,
1372-73
Motorola has
to license it on
decision,
reasonable,
problem with the district court’s
nondiseriminatory
licens-
(“FRAND”)
determining
injunction
whether
an
ing
terms. The district court
interest,
public
granted
motion,
Apple’s
would disserve
con-
stating:
scope
Apple’s
sider the
of
in-
requested
how,
FRAND,
I
given
don’t see
I would
junction
pat-
relative to the
scope
justified in enjoining Apple
be
from in-
prospect
ented features and the
that an
fringing
Apple
the '898 unless
refuses to
injunction
depriv-
would have the effect of
pay
royalty
that meets the FRAND
ing
public
large
of access to a
number
requirement. By committing to license
features.”).
non-infringing
terms,
patents
on FRAND
Motorola
anyone
committed to license the '898 to
Accordingly, because we have reversed
willing
pay
a FRAND royalty and
the district court’s construction of the '949
implicitly acknowledged
roy-
thus
patent, we
grant
summary
vacate its
alty
adequate compensation
for a li-
judgment regarding Apple’s request for an
patent.
cense to use that
How could it
injunction.
do otherwise? How could it
permit-
enjoin Apple
using
ted to
from
an inven-
Request
Injunction
Motorola’s
for an
tion that it
if
Apple
contends
must use
summary
for
judg
moved
phone
wants to make a cell
with UMTS
ment that Motorola was not entitled to an
capability
telecommunications
—without
injunction
infringement
pat
of the '898
which
phone.
it would not be cell
ent. While we review the district court’s
(em-
Inc.,
Apple,
F.Supp.2d
at 913-14
grant
deny
injunction
decision to
an
phases
original).
discretion,
Corp.
abuse
Lab.
Am.
Holdings
Corp.,
*42
v. Chiron
To
that
the extent
district court
(Fed.Cir.2004),
applied
per
injunctions
we review the district
rule that
se
are
SEPs,
grant
summary judgment
court’s
it
de unavailable for
erred. While Mo-
novo, Feliberty,
lytical
already
that
patents.
industry participants
tions for FRAND-committed
are
Supreme
laid out
Court
in
using
system
pat-
framework
claimed
the '898
interpreted by subsequent de-
eBay,
ent,
in
as
including competitors, Motorola has
court, provides ample
cisions of this
provided any
adding
evidence that
one
flexibility
addressing
for
strength and
more user would create
such harm.
pat-
FRAND committed
unique aspects of
Again,
agreed
Motorola has
to add as
industry
general.
ents and
standards
many
participants
willing
market
as are
to
391-94,
A
the license offered not be FRAND Costs addition, an in- public terms. has Each party shall bear its own costs. in encouraging participation terest in stan- dard-setting organizations but also in en- RADER, Judge, dissenting-in- Chief
suring that are SEPs not overvalued. part. concerns, important are While these capable district courts are more than join I opinion entirety, the court’s considering factual these issues when de- except for the affirmance of the district injunction ciding whether to issue an under request court’s denial of Motorola’s for an principles eBay. injunction. my eyes, To the record con- genu- tains sufficient evidence to create a here,
Applying principles agree those we dispute Apple’s ine of material fact on with the district court that Motorola is not posture unwilling an as licensee whose injunction infringement entitled to infringement continued of the '898 patent. of the '898 Motorola’s FRAND irreparable caused harm. Because of the commitments, yielded many which have intensely factual unique circumstances agreements encompassing license the '898 surrounding patents adopted industry patent, strongly suggest money dam- standards, I im- believe the district court ages adequate fully compensate are Mo- properly granted summary judgment. any infringement. Similarly, torola for Therefore, I point, respect- on this narrow Ap- Motorola has not demonstrated that ple’s infringement irrepara- fully part. dissent in has caused *43 standardization). outset, adopted complex as a These same a At the questions up” factual “hold by regarding value vir- undoubtedly gains standard injunc- highly “hold out” are relevant to an enhancement adoption. This tue of sum, request. differentiating tion In “hold of the technolo- the evaluation complicates up” requires from “hold out” some factual By of the standardization. gy independent analysis of the sources of value—the inven- token, deci- the standardization the same tive advance or the standardization. and validate simply also reflect sion technology ad- the inherent value The record in this case shows evidence patent. Untan- accomplished vance Apple may have been a hold out. (at components the heart gling these value Motorola, Inc., Inc. v. e.g., Apple, putative a licensee was deciding whether (N.D.Ill.2012); Appel F.Supp.2d license, irreparable and thus “unwilling” to 64-65, 72-73; Br. Appellees’ Reply lees’ factors) injunction re- harm and other 26-27; This Br. J.A. 118884-86. evidence com- analysis economic quires intense material dispute alone would create a sum, theoret- right In from the plex facts. fact. outset, likely to be question is not ical More the district court made adjudication. important, summary to susceptible the value due to no effort differentiate an legal principles In for reciting from value inventive contribution due accurately injunction, this court states to standardization. some atten- Without principles supply per no inquiries. Those perhaps dispositive question, tion to that in- favoring proscribing rule either or se map, the trial court was adrift without any setting, let junctions patents system. In compass let alone a or GPS of stan- heightened complexity alone the fact, inquiry, without that critical the dis- technology. This court notes dardized properly applied trict court could not have in a context that a owner standard eBay test as it should have. “may difficulty establishing irrepara- have proper injunction analysis, of a Instead injunction may harm .... an [but] ble effectively the district court considered infringer unilaterally re- justified where an FRAND commitment as dis- Motorola’s unreasonably royalty a FRAND or fuses by itself: “Motorola committed to positive delays negotiations to the same effect.” anyone willing pay license '898 Dep’t of Majority Op. (citing U.S. implicitly ac- royalty FRAND and thus Patent and Trademark Justice and U.S. knowledged royalty adequate that a is Office, Policy on Remedies Statement pat- a license to use that compensation for Subject Patents Standard Essential Apple, ent. How could it do otherwise?” Commitments, at Voluntary 7-8 F/RAND contrary, F.Supp.2d at 914. To 2013)). (Jan. 8, a FRAND Motorola committed to offer analysts Market will no doubt observe license, is begs question: which What (i.e., unwilling that a “hold out” an licensee If Mo- royalty? and “reasonable” “fair” to avoid a license based seeking offering of an SEP a fair and reasonable torola was technological likely “refusing] advance royalty, on the value that the then was art) unreasonably prior equally royalty as de- contributed to the FRAND (i.e., Majority Op. up” laying] negotiations.” See likely disruptive “hold sum, court could not unjustified royal- the district demanding owner SEP address; that it did not question duck the solely based on value contributed ties *44 1334 However, actually respectfully FRAND offer I
was Motorola’s dissent with re- spect proper to the construction of the FRAND? “heuristic” claim terms in the '949 patent. Furthermore, the district court acknowl- I Additionally, majority’s dissent from the conflicting Ap- edged the evidence about to vacate the district court’s grant decision ple’s willingness patent: to license '898 summary judgment regarding Apple’s negotiate to for a license “Apple’s refusal request injunction, for an Ias would affirm (if parties compet- it did refuse —the offer I depart that decision. As also from the accounts, unnecessary for me to re- ing majority’s reasoning reaching the while down) solve, why negotiations broke was issues, same result on several other I write claim by not a defense to a Motorola for a separately explain my to views. royalty.” Apple, F.Supp.2d FRAND scenario, adequately pre- at 914. Yet this I. Claim Construction record, precisely sented one that of The '949 Patent today court acknowledges may justify injunction. an A. “Means-Plus-Function” my opinion, the court should have majority The concludes that the “heuris- prove allowed Motorola to that was tic” claim terms the '949 have licensee, unwilling strongly which would sufficiently definite structure to avoid support injunction request. court means-plus-function Majority treatment. negoti- states “the record reflects that Op. I disagree. ongoing,” Majority Op. ations have been 1332; but, as the district court ac- even matter, majority As an initial mis- knowledged, Motorola asserts otherwise— states our means-plus-function law on years that Apple negotiate refused to claiming. Generally speaking, means- infringing while nevertheless pat- '898 plus-function analysis proceeds two ent, see, 64-65, 72-73; e.g., Appellees’ Br. first, phases: the court must determine Appellees’ Reply Br. 26-27. Motorola whether the claim term is drafted in should opportunity prove have had the to means-plus-function format such that 35 its case that Apple’s alleged unwillingness ¶ § 112 applies. U.S.C. See Kemco negotiate supports license or even a Sales, Co., Papers Inc. v. Control showing money damages are inade- (Fed.Cir.2000) (“Before a court quate it irreparable suffered attempts analyze appears what to be a harm. The district court refused to devel- limitation, means-plus-function claim op the necessary apply eBay facts as it must first assure itself that such claim Consequently, should have. the case issue.”). Only limitation is at then should should be remanded to develop that rec- the court disput- undertake to construe the reasons, ord. For these I respectfully dis- ed claim term identifying the “corre- sent in part. structure, material, sponding or acts de- specification”
scribed in the
to which the
claim term will be limited. Welker Bear-
PROST,
Judge,
Circuit
concurring-in-
PHD, Inc.,
ing
v.Co.
part and dissenting-in-part.
(Fed.Cir.2008) (“Because ‘mechanism for
join
I
majority opinion
respect
with
moving
finger’
said
means-plus-func-
is a
many
limitation,
of the issues discussed therein.
tion
this court must next exam-
put,
By
ine the trial court’s identification
‘the
or connections.” Id. at 1298-99.
*45
structure, material,
contrast,
states,
majority
or
the
“if
corresponding
acts
the claim
merely
generic
recites a
nonce word and
specification
equiva-
described in the
”).
the
claim
remaining
language, specifica-
lents thereof.’
tion, prosecution history, and relevant ex-
Although
majority accurately states
the
ternal
provide
evidence
no further struc-
Majority Op.
see
legal principles,
these
description
person
tural
to a
ordinary
faithfully apply
it
them.
fails
art,
skill in
presumption
the
then the
Rather,
majority’s analysis collapses
the
against means-plus-function claiming is re-
one,
so,
steps
doing
these
into
and in
it
two
butted.” Id. at 1300.
effectively
category
the
of non-
renders
effect,
In
majority
what the
has done is
claim
means-plus-function
indefinite
terms
imported
step
the second
analysis
the
a null set.
(where you
scope
define the
of a means-
majority correctly
The
states that
the
plus-function claim term based on the cor-
in
proper inquiry
determining whether a
responding
specification)
structure
the
claim
in means-plus-func-
term is drafted
(where
step
into the first
you identify
tion format is whether the limitation has whether the term is drafted in means-plus-
“sufficiently
Majority
definite structure.”
format).
function
majority’s analysis
The
majority
The
then
Op. 1297-98.
identifies
implies
long
that so
as a claim term has
ways in
may
several
which
term
corresponding
specifica-
structure
the
structure,
deemed to have such
such as
tion,
means-plus-function
it is not a
limita-
“a
when
has
structural definition that is
tion.1 But such a rule would
every
render
either
provided
specification
gen-
the
means-plus-function claim term indefinite.
art,”
erally
in the
when it “out-
known
majority’s approach,
Under
a term
flowchart,
algorithm,
spe-
an
or a
lin[es]
only
a means-plus-func-
would
be deemed
rules,”
cific set of instructions or
or when
if it
corresponding
tion limitation
has no
lim-
specification
the claim
“describ[es]
structure —an absurd result
that would
operation,
input,
means-plus-function claiming.2
itation’s
such as its
out-
eviscerate
(Fed.Cir.2011),
Admittedly, majority suggests
1.
that "it is
659 F.3d
for the
possible
proposition
to find that a claim limitation does
that a claim
contain suffi-
sufficiently
means-plus-function
not connote
definite structure de-
cient structure to avoid
claiming by reciting
algorithm. Majority
spite
presence
corresponding
an
of some
However,
Op.
term at
specification.”
Op.
1298-99.
claim
Majority
structure in the
in that case was "means for cross-refer-
issue
majority’s
analysis
1297. But the
actual
encing,”
disputed
which no one
was a means-
sufficiently
identify
how to
definite structure
plus-function limitation. This court's search
means-plus-function
sug-
to avoid
treatment
algorithm support
for an
that claim term
gests
opposite
that the
is true.
merely
attempt
was
to save the means-
Nothing
clearly
majori-
so
demonstrates the
plus-function term from indefiniteness. See
ty's confusion on this issue
cases on
Touch,
Typhoon
659 F.3d at
The
1385-86.
support
which it relies.
of its view that a
Corp.
same is true of Finisar
v. DirecTV
specification
court must scour the
for corre-
Inc.,
(Fed.Cir.2008),
Group,
items to recently Lemley Professor has written items; in claiming on the issue of functional soft- determining a next item heuristic Lemley, patents. ware Mark A. Software finger or more contacts the one Patents and the Return Functional to transition correspond to command Claiming, 2013 Wis. L.Rev. 905 (2013). He item in a displaying respective from case law acknowledges this court’s recent item in displaying items to next “vigilant limiting set of have been which we patentees the set of items. software who write claims means-plus-function particu- format to the surely would be con- The first limitation algorithms implement lar those limitation. means-plus-function as a strued *47 However, he notes claims.” Id. at 926. Yet, pro- second limitation although the many involving pat- that in cases software first, than the no more real structure vides ents, we have not treated claims as means- that it is outside majority the concludes all, plus-function leading prob- claims at to ¶ §of 112 6. the realm patents: lems of overbroad drafting greatly minor decision That one in form presence The of structure the of the claim limitation expands scope the computer” processor” “a or “a or even limited to the because the claim is not Federal “the Internet” has led the Cir- in structure disclosed the corresponding cuit claims control over the give to these Indeed, the under patent specification. implemented. function claimed however view, provides a stark majority’s this case result, have cir- patents As a software applicants are able example patent of how Act places cumvented the limits the 1952 functionality being without to claim broad has claiming. on functional The result § 112 subject imposed to the restraints plethora patents a of software been ¶ majority, interpreted by 6. As of the technolo- claimed not on the basis limitation in claim “next item heuristic” actually developed, but gy patentee heuristic used a touch- any covers function that technol- on the basis of the “one or screen device to determine that lim- Those claims aren’t ogy performs. correspond to a com- finger more contacts or commensurate with what the ited to displaying from a re- mand to transition invented, they patentee are accord- displaying in to spective item a set of items patent plaintiffs tend ingly the ones yet, items.” And a next item the set of sys- whose against to assert defendants undisputed patent specification that the to bear little resemblance what tems swipe only discloses two such heuristics: actually [UJnder invented.... patentee tap right on the rubric the soft- right claiming from to left and functional fact, actual tech- majority patents ware with the least side of the screen. up with the broadest as nical content end exactly relied on those two heuristics “heuristic,” means-plus-func- the term is majority Oddly, defining ruled that 3. limitation, means for states that it “does not include all can indeed be con- tion term Majority performing function.” the recited broadly. so strued course, Op. this court has 1301. But of once viewing image by func- initiate of the next mak- breadth is a monopoly claims: “Its right from left ing swipe gesture specification.” tion of lack of technical added)). image.” (emphases on the Never- (footnotes omitted) (quoting Id. at 926-28 theless, rejected the district court the hori- & Herbert Hoven- Christina Bohannan swipe corresponding zontal structure Pro- Restraint: kamp, Creation Without claimed next item heuristic. The for the Liberty Rivalry in Innovation moting that a horizontal district court reasoned (“[Platen- (2012)); also id. at 905 see scope fell within the of anoth- finger swipe machine, particular claim to own not a tees namely heuristic the “two-di- er claimed steps particular or even a series mensional screen translation heuristic” goal but the achieving goal, itself. prior claim limitation. The district patents overlap and resulting overbroad court did not see how “the same user thickets.”). I create believe Profes- finger movement understood [could be] Lemley sor raises valid concerns about separate communicate two commands.” means-plus-function jurispru- this court’s Therefore, the court limited the J.A. computer-implement- dence as it relates to corresponding next item heuristic’s struc- majority Although ed inventions. here input ture to “a heuristic that uses as one generic did not base its conclusion on such finger tap right a user’s on the side of the computer” structural terms as “a or “a device’s touch screen.” J.A. 94. processor,” the end result is the same: Apple’s broadly '949 is construed Apple argues agree I —and —that performed by cover the the heu- court district failed consider function *48 ristics, specific not the heuristics disclosed in might apply heuristics different scenar- in specification. the This outcome should example, describing in photo ios. For the compel court to reconsider we our when application Figure depicted album 16A means-plus-func- treat functional claims as patent, specification of the '949 the ex- tion claims. plains viewing that the user can “initiate of image by making swipe gesture
the next Corresponding B. Structure right image.” 1616 from to left on the specifica- '949 col. 3411.14-16. The Because I would affirm the district however, goes explain, tion on to that “if court’s that the limi- conclusion heuristics just portion image displayed, of 1606 is limitations, means-plus-function tations are response detecting finger drag or I Apple’s would therefore reach alternative 1626), swipe (e.g., portion displayed of argument regarding corresponding image is translated accordance with structure for the term “next item heuris- drag swipe gesture the direction of the or tic.” vertical, horizontal, (e.g., diagonal trans- lation).” Id. at col. 11.19-24. patent specification The '949 contains other words, examples swipe two of a next item heuristic: a a horizontal will be treated tap right differently depending on the side of the touchscreen on whether a full a right-to-left swipe. image displayed and horizontal is or the user has zoomed (“In e.g., image. '949 col. 3411. in on a of There portion 12-16 some embodiments, nothing language requires the user can also initiate in the claim that viewing image by of the next that making tap the “two-dimensional screen transla- gesture right image. on the of the tion heuristic” “next item heuristic” side embodiments, Therefore, In some can also in the same context. I apply user ruling scope reverse the district court’s decision court’s that the of would the corre- corresponding structure to a sponding to limit the structure for the “next item heu- screen, right finger tap on the side ristic” is limited to a tap right-hand on the summary- grant reverse the and would Thus, side although of the screen. I arrive the ac- judgment non-infringement at the outcome in a way, different I concur products “swipe” gesture that use a cused in the majority’s conclusion that the dis- as a next item heuristic. trict court’s exclusion of Napper’s testimo-
ny must be reversed and remanded on the basis of its claim erroneous construction. ExpeRT Admissibility Testimony II. RELATING TO THE '949 PATENT However, majority, unlike the I do not believe the district court abused its discre- judgment I concur in the revers- While in excluding Napper’s tion testimony as ing remanding the district court’s ex- unreliable. The district court determined testimony Apple’s expert, clusion of the Napper’s Magic reliance on the Napper, Brian based on his erroneous Trackpad to calculate the value of the construction, separately claim I write functionality claimed was unreliable be- my agreement note with the district court product cause that sufficiently was not a Napper’s Magic reliance on the comparable Specifically, benchmark. Trackpad inherently was unreliable. court said: majority The concludes the district Napper’s proposed testimony does not in excluding testimony court erred provide a reliable for inferring basis Brian Apple’s expert, Napper, for two rea- value even of the scrolling vertical fea- First, analysis sons. district court’s ture. fact that many consumers was based on an incorrect claim construc- pay Magic will more for a Trackpad Majority Op. tion. 1315-16. Specifically, nothing than for a mouse tells one about court for fail- Napper district criticized they pay occasionally what will to avoid ing to isolate the value to consumers of the unsuccessfully swiping because their “tap functionality, for next item” and for *49 swiping finger actually wasn’t vertical to failing to consider alternatives to a $35 Maybe the screen. consumers would royalty million that would enable Motorola $2, pay they but there is no evidence provide functionality. this See J.A. 112- would, by or at least none furnished 14. These criticisms were based on the Napper. district court’s conclusion that the '949
patent’s claimed “next item heuristic” was J.A. 115. claim means-plus-function that was limit- precedent It is true that our supports to a on tap right-hand
ed side of the looking to the cost of benchmark commer screen to turn to the next item. See J.A. products determining cial the value of a majority 112. The determined that infringement. e.g., defendant’s claim construction was erroneous because i4i P’ship Corp., Ltd. v. the “next item heuristic” was not means- Microsoft (Fed.Cir.2010). However, 853-56 plus-function Majority Op. limitation. concedes, Apple Trackpad even “con above, explained 1304. As I would affirm tains of the function from none asserted the district court’s construction of the Response the '949 Motorola Br. means-plus- patent.” “heuristic” claim terms as limitations, (acknowl- 39; Apple Reply function but would reverse the Br. 70 see also true”). Napper argues being is that it edging Apple irreparably “[t]hat began analysis highly therefore his from harmed infringement Motorola’s be starting point. And because questionable infringing prod cause sales Motorola’s any of Trackpad does not contain causing ucts are Apple to lose market functionality, Nap- claimed the discounts share and downstream sales.4 But in or per applied get (suppos- from $20 $2 rely der to on lost market share and down edly Trackpad contains more because the harm, irreparable stream sales to show than those claimed the '949 features Apple provide must than more evidence completely arbitrary. patent) appear to be showing merely taking that Motorola is I the district Accordingly, do believe Rather, Apple. market share from Apple in concluding court abused its discretion must be able to show a causal nexus be testimony that Napper’s proposed failed to tween the allegedly inclusion of the in provide inferring a reliable basis for fringing phones features Motorola’s functionality. value of the claimed On re- III, alleged Apple. harm to See mand, I do not think it would be reversible Samsung 1360-61; 735 F.3d at Apple Inc. v. prohib- error for the district court to again (Fed.Cir. ecs., El it Apple relying from on such unreliable 2012) I) (“Sales (Apple infring lost to an testimony. ing product irreparably cannot harm pat- if buy entee consumers that product for Apple’s Request III. FOR patented reasons other than the feature. Injunctive Relief If patented feature does not drive the demand for the product, sales would be granted summary The district court lost even if offending feature were judgment Apple was not entitled to an absent from the product.”). accused injunction infringement '949, '263, patents. majority and '647 va- The district court that Apple found had grant summary cates the judgment— no linking Apple’s evidence lost market all apparently patents three —because share and downstream sales to the inclu- of its reversal of the claim construction for allegedly sion of the infringing features in patent. Majority the '949 Op. 1330-31. I phones. Motorola’s J.A. 152 (“Apple’s See dissent, respectfully affirm would good’ theory ‘feel does not indicate that grant summary judgment for all three (if infringement they of these claims were patents. infringed) Apple’s reduced sales or market share, impaired goodwill consumer to-
Apple argues
presented
ample
Rather,
Apple products.”).
ward
the dis-
respect
eBay
evidence with
to the
factors
*50
trict court
“Apple
complain-
found that
is
summary
outlined above to survive
judg-
ing that
I
Motorola’s
as a
only
injunc-
phones
ment. will
address the first
whole
whole,”
irreparable
ripped
tion
I
off the
harm —because
iPhone as a
which
factor—
view it
dispositive.
explained
the court
was insufficient be-
Apple
argues
finding
irrepara-
4.
also
compensate
irreparable
that a
edies to
harm.
See,
Co.,
supported by
showing
ble
is
e.g., Apple
Samsung
harm
evidence
Inc. v.
Elecs.
Apple
(Fed.Cir.2013)
policy against licensing
that
has a
com-
(Apple
1369-71
However,
petitors
practice
III).
patents.
to
any
the three asserted
I am not aware of
cases
Apple's willingness
pat-
establishing
against
to license the asserted
policy
licensing
that a
is,
course,
patents
ents
relevant
irreparable
to the second in-
can show
harm in the first
junction
inadequacy
legal
place.
factor—the
rem-
accused of
products
infringing
sell
whether the features
desire to
cause “Motorola’s
patent
the '949
drive consumer demand for
separate
iPhone
with the
is
compete
that
phones.
Motorola’s
legal one—from
perfectly
harm —and
infringement.”
patent
harm caused
any
patent, Apple
for the '263
cites stud-
As
153.
Id. at
surveys purporting to
ies and
show
the claimed invention facilitated the devel-
that its evidence raises
Apple contends
opment
popular apps for the iPhone and
allegedly
as to whether the
genuine issue
iPad,
helped
Apple’s
in turn
make
which
of consumer
features are drivers
infringing
popular.
Apple
devices so
But
does not
I dis
products.
for Motorola’s
demand
any
studies for consumers of
cite
similar
First,
respect
to the '949
agree.
with
assuming
products.
Motorola’s
Even
survey
cites consumer
evi
patent, Apple
that the '263
is a
patent
evidence shows
“having a
to show that
purporting
dence
Apple’s products,
driver of demand for
op
touchscreen interface —as
superior
patent
mean the
is a
does not
'263
keyboard
con
posed
physical
to a
—drives
products.
driver of demand for Motorola’s
Apple
smartphones.”
demand for
sumers
II,
Apple
Apple’s
See
to establish respect pat- to the '647 Similarly, with explaining: ent, that “Motorola Apple cites evidence patent’s “structure- itself’ identified the Samsung’s the evidence that em- While high “a and a priority detection feature” as important it to be to ployees believed Br. ‘differentiating’ feature.” into incorporate patented feature 29,857). Apple also cites a (quoting J.A. Samsung’s products certainly relevant describing the feature as newspaper article of nexus between the issue Apple’s prod- harm, feature[ ]” new dispositive. “cool[] it is not and market 29,893. pat- As with the '263 fo- ucts. J.A. inquiry That the relevant is because ent, is insufficient to estab- this evidence objective why as to cuses on the reasons nexus. requisite lish the sales, in- lost not on the patentee subjective why fringer’s beliefs as reasons, agree I with the dis- For these (or likely gain gained them would be Apple’s trict court evidence fails them). to whether the genuine raise a issue as *51 I features are drivers of Accordingly, agree allegedly infringing at 1327-28. products. evi- demand for Motorola’s Apple’s the district court that consumer with result, Moto- cannot show that Apple as to As a genuine dence fails to raise a issue infringement irrepara- infringer nego- has caused it would have no incentive to rola’s harm. therefore cannot meet ble tiate a license because the worst-case sce- eBay injunctive standard for relief. nario from a patent infringement lawsuit is Accordingly, I would affirm the district pay that it would have to the same amount grant summary judgment court’s of no paid it would have earlier for a license. injunctive relief. I that an disagree alleged infringer’s licensing agreement refusal enter into a to. Injunctive Request MOTOROLA’S FOR IV. justifies entering injunction an against its Relating to the '898 Patent Relief conduct, First, for several reasons. out, Apple points alleged infringer an majority’s judgment I concur in the fully challenge validity entitled to of a injunction to an Motorola is entitled agree- FRAND-committed before infringement patent. for of the '898 Ma- However, ing pay a license on that jority patent, I and so Op. sep- 1381-32. write arately my disagreement to note with the necessarily punished should not be for majority’s suggestion alleged that an in- Second, eager negotiations. less than fringer’s negotiate jus- a refusal to license many alleged there are an in- reasons injunction tifies the issuance of an after a fringer might prefer pay a FRAND finding infringement. undergoing license rather than extensive litigation, including litigation expenses, the matter, agree As an initial I with the possibility paying damages treble or at- majority that there is no need to create a torney’s they fees if are found liable for categorical patentee rule a can never infringement, willful and the risk that the injunction an obtain on a FRAND-commit- may damages fact-finder award in an Rather, patent.5 ted Id. at 71-72. higher amount than FRAND rates. FRAND commitment simply should Indeed, out, pointed as Motorola itself we factored into the eBay consideration of the previously have acknowledged a trial Moreover, I agree framework. that a damages court award an amount of straightforward application of eBay greater royalty than reasonable if neces- necessarily factors does not mean that in- sary compensate “to infringe- for junctive relief would never be for available Heublein, Inc., ment.” Stickle v. However, patent. FRAND-committed I (Fed.Cir.1983). Thus, if a trial disagree as to the circumstances under infringer court believes that an previously injunction might which an be appropriate. engaged negotiations, in bad faith it is en- argues Motorola majority —and titled to damages increase the to account agrees injunction an might be appro- —that any patentee for harm to the as a result priate alleged infringer where an “unilater- of that behavior. ally royalty refuses a FRAND or unrea- regardless, But none of these sonably delays negotiations consider- to the same effect.” monetary Id. Motorola insists that in the ations alters the fact that dam- injunction, absence of the threat ages likely adequate of an are compensate worth, pay royalty For what it’s I would note that the had "refuse[d] to that meets Thus, apply per requirement.” district court did not se rule that FRAND J.A. 140. Rather, injunctions majority suggested are unavailable SEPs. need not have that the Judge expressly injunctive applied Posner noted that district court erred insofar as it such might appropriate Apple categorical Majority Op. relief have been if rule. See 1331-32. *52 injuries. I see no patentee’s FRAND therefore, reason, why party’s pre-litiga- should negotiations conduct in license
tion availability injunctive relief.
affect the
Instead, injunction might appro- an be where, although monetary damages
priate inju- compensate patentee’s for the
could
ries, patentee is unable to collect entitled. For ex-
damages which judg-
ample, alleged infringer if an were likely
ment-proof, damages award would Or, remedy. if a defen- inadequate
be an dam- pay
dant refused to court-ordered infringe
ages being award after found patent, might FRAND a court
valid
justified including injunction part an sanctions. award of these circumstances are regardless,
But case, I present agree in this with here,
the district court under the facts irreparable
Motorola cannot show either I inadequacy damages.
harm or would affirm the district court’s denial
therefore injunctive
of Motorola’s claim for relief for patent.
the '898
Conclusion above, part I concur in
For the reasons in part.
and dissent
In re Mark T. DINSMORE
and David J. Caruso.
No. 2013-1637. Appeals,
United States Court
Federal Circuit. 10, 2014.
June En Banc
Rehearing Rehearing Aug.
Denied Dissent notes means-plus-function analysis re in the language claim invokes Whether whether the entire quires us determine ¶ question 6 is a of law that Section limitation at issue connotes “suffi claim Thys v. we review de novo. Inventio AG ciently person definite structure” to senKrupp Corp., Elevator Americas in at 1334- ordinary skill the art. Dissent (Fed.Cir.2011); Lighting naturally look to the doing, so we Inc., World, Lighting, Inc. v. Birchwood history, and rele specification, prosecution (Fed.Cir.2004). Sec lim evidence to construe the vant external ¶ tion 6 states: inquiry may be similar itation. While this structure in looking corresponding An element a claim for a combination precedent requires our specification, expressed step as a means or a claim limitation deciding whether when without performing specified function sufficiently connotes defi lacking means structure, material, or acts the recital ordinary skill person structure to a thereof, nite claim shall support such Inventio, See, e.g., 649 F.3d at in the art. corresponding be construed to cover (“It consult the intrinsic structure, material, proper or acts described record, including description, the written thereof. specification equivalents determining challenger reciting if a has re- performing when sufficient structure for