Docket No. 2016-1795
NEWMAN (C/D), DYK, TARANTO
September 13, 2017
Brief summary: DC denial of JMOL to Motorola affirmed with respect to invalidity but reversed as to direct infringement under 35 USC § 271(a) (e.g., “the end user must be using all portions of the claimed invention”).
Summary: A jury found Motorola infringed claim 41 of IV’s US 7,810,144 relating to “electronic transfer of computer files directly between two or more computers” and claims 1, 10, 11 and 13 of US 7,120,462 relating to “a laptop computer formed by docking a smartphone into a ‘shell’ having a larger display and keyboard”, and no invalidity, Motorola appealed the DC’s denial of its motion for JMOL (reviewed de novo, Finjan, FC 2010). Motorola argued ‘144 claim 41 was invalid for lack of written description (a question of fact reviewed for substantial evidence following a jury trial (Ariad, FC 2010), except where it turns on claim construction based solely on intrinsic evidence, however, it is a legal question subject to de novo review (Atl. Res., FC 2011)). Motorola argued “the specification…excludes ‘long-term’ or ‘permanent’ storage” but “the scope of claim 41 covers” the same, “in violation of the written description requirement.” However, the FC panel agreed with the DC “that under the proper claim construction” construed “in view of the specification” (since the claims “neither plainly include or exclude long-term or permanent storage” (Columbia Univ., FC 2016 quoting Philips, FC 2005), claim 41 does not cover “long-term or permanent storage” C.R. Bard, FC 1998 (“[I]t is incorrect to construe the claims contrary to the specification, and then to hold the claims invalid because they are contrary to the specification.”) The FC panel also explained that the doctrine of claim differentiation “does not serve the broaden claims beyong their meaning in light of the specification” (Toro, FC 1999). Motorola also argued ‘144 claim 41 is invalide for obviousness (reviewed de novo, except for subsidiary factual determinations made by the jury-including the scope and content of the prior art-are reviewed for substantial evidence (Kinetic Concepts, FC 2012)). But the FC panel agreed with the jury, concluding the prior art did not disclose the “irrespective of user action” limitation (e.g., “the jury was free to disbelieve [Motorola’s] expert and credit [IV’s] expert” (i4i, FC 2010)). The next question was direct infringement under 35 USC § 271(a). The FC panel explained that under NTP (FC 2005) and Centillion (FC 2011), “to prove an infringing ‘use’ of a system under § 2871(a), a patentee must demonstrate ‘use’-that is, ‘control’ and ‘benefit’-of the claimed system by an accused direct infringer” and “what must be ‘used’ is each element…the end user must be using all portions of the claimed invention.” Thus, “it follows that, to use a system, a person must control (even if indirectly) and benefit from each claimed component.” The FC panel found IV’s arguments of “indirect benefit” to Motorola’s customers unconvincing and concluded JMOL should have been granted to Motorola on this point. The FC panel also concluded substantial evidence supported the finding that that there was no motivation to combine the art cited against the ‘462 patent. Judge Newman wrote that the disputed claims should have been found invalid for obviousness.