757 F.3d 1286 (Fed. Cir. 2014), 2012-1548, Apple Inc. v. Motorola, Inc.

Docket Nº:2012-1548, 2012-1549
Citation:757 F.3d 1286, 110 U.S.P.Q.2d 1695
Opinion Judge:Reyna, Circuit Judge
Party Name:APPLE INC. AND NEXT SOFTWARE, INC. (formerly known as NeXT Computer, Inc.), Plaintiffs-Appellants, v. MOTOROLA, INC. (now known as Motorola Solutions, Inc.) AND MOTOROLA MOBILITY, INC., Defendants-Cross Appellants
Attorney:E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sutcliffe LLP, of New York, New York, argued for plaintiffs-appellants. With him on the brief were MARK S. DAVIES, RACHEL M. MCKENZIE and T. VANN PEARCE, JR. of Washington, DC; and MATTHEW D. POWERS, Tensegrity Law Group LLP, of Redwood Shores, Californi...
Judge Panel:Before RADER, Chief Judge, PROST and REYNA, Circuit Judges. OPINION filed by Circuit Judge REYNA. Opinion dissenting in part filed by Chief Judge RADER. Opinion concurring in part and dissenting in part filed by Circuit Judge PROST. CONCUR BY: PROST (In Part) Rader, Chief Judge, dissenting-in-part.
Case Date:April 25, 2014
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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757 F.3d 1286 (Fed. Cir. 2014)

110 U.S.P.Q.2d 1695

APPLE INC. AND NEXT SOFTWARE, INC. (formerly known as NeXT Computer, Inc.), Plaintiffs-Appellants,

v.

MOTOROLA, INC. (now known as Motorola Solutions, Inc.) AND MOTOROLA MOBILITY, INC., Defendants-Cross Appellants

Nos. 2012-1548, 2012-1549

United States Court of Appeals, Federal Circuit

April 25, 2014

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Appeals from the United States District Court for the Northern District of Illinois in No. 11-CV-8540, Circuit Judge Richard A. Posner.

E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sutcliffe LLP, of New York, New York, argued for plaintiffs-appellants. With him on the brief were MARK S. DAVIES, RACHEL M. MCKENZIE and T. VANN PEARCE, JR. of Washington, DC; and MATTHEW D. POWERS, Tensegrity Law Group LLP, of Redwood Shores, California. Of counsel was KATHERINE M. KOPP, Orrick, Herrington & Sutcliffe LLP, of Washington, DC.

DAVID A. NELSON, Quinn Emanuel Urquhart & Sullivan, LLP, argued for defendants-cross appellants. With him on the brief were STEPHEN A. SWEDLOW; BRIAN C. CANNON, of Redwood Shores, California; KATHLEEN M. SULLIVAN and EDWARD J. DEFRANCO, of New York, New York; and CHARLES K. VERHOEVEN, of San Francisco, California. Of counsel were RAYMOND N. NIMROD and DAVID ELIHU, of New York, New York; and AMANDA SCOTT WILLIAMSON, of Chicago, Illinois.

JOEL DAVIDOW, Cuneo, Gilbert & LaDuca, LLP, of Washington, DC, for amicus curiae The American Anti-trust Institute. With him on the brief was ROBERT J. CYNKAR.

CHARLES W. SHIFLEY, Banner & Witcoff, Ltd., of Chicago, Illinois, for amicus curiae The Intellectual Property Law Association of Chicago.

DEBRA J. MCCOMAS, Haynes and Boone, LLP, of Dallas, Texas, for amici curiae Altera Corporation, et al. With her on the brief was DAVID L. MCCOMBS. Of counsel on the brief were MARTA BECKWITH, Cisco Systems, Inc., of San Jose, California; ELIZABETH LAUNER, Logitech Inc., of Newark, California; and RICHARD J. LUTTON, JR., Nest Labs, Inc., of Palo Alto, California.

RICHARD M. BRUNELL, Senior Advisor for competition matters, United States Federal Trade Commission, of Washington, DC, for amicus curiae United States Federal Trade Commission. With him on the brief were DAVID C. SHONKA, Acting General Counsel, WILLIAM COHEN, Deputy General Counsel, WILLIAM F. ADKINSON, JR., Attorney and SUZANNE MUNCK af ROSENCHOLD, Chief Counsel for Intellectual Property.

PETER M. LANCASTER, Dorsey & Whitney LLP, of Minneapolis, Minnesota, for amicus curiae The Institute of Electrical and Electronics Engineers, Incorporated. With him on the brief were MICHAEL A. LINDSAY, of Minneapolis, Minnesota, and EILEEN M. LACH, General Counsel and Chief Compliance Officer IEEE, of New York, New York.

PAUL D. CLEMENT, Brancroft PLLC, of Washington, DC, for amici curiae Verizon Communications Inc., et al. With him on the brief was D. ZACHARY HUDSON.

TINA M. CHAPPELL, Director of Intellectual Property Policy, Intel Corporation, of Chandler, Arizona, for amicus curiae Intel Corporation. With her on the brief were THOMAS G. HUNGER and MATTHEW D. MCGILL, Gibson, Dunn & Crutcher LLP, of Washington, DC.

RICHARD S. TAFFET, Bingham McCutchen LLP, of New York, New York, for amicus curiae Qualcomm Incorporated. With him on the brief were PATRICK STRAWBRIDGE, of Boston, Massachusetts and DAVID B. SALMONS, of Washington, DC.

BRIAN R. MATSUI, Morrison & Foerster LLP, of Washington, DC, for amicus curiae Law Professors Thomas F. Cotter, et al. With him on the brief was NATALIE R. RAM.

ROY T. ENGLERT, JR., Robbins, Russell, Englert, Orseck, Untereiner & Sauber LLP, of Washington, DC, for amicus curiae, BSA |The Software Alliance.

PATRICK J. FLINN, Alston and Bird LLP, of Atlanta, Georgia, for amici curiae Nokia Corporation, et al. With him on the brief was KEITH E. BROYLES.

BRIAN C. RIOPELLE, McGuire Woods LLP, of Richmond, Virginia, for amicus curiae Research in Motion Limited. With him on the brief were ROBERT M. TYLER and KRISTEN M. CALLEJA.

CONSTANTINE L. TRELA, JR., Sidley Austin LLP, of Chicago, Illinois, for amicus curiae Microsoft Corporation. With him on the brief were RICHARD A. CEDEROTH and NATHANIEL C. LOVE. Of counsel on the brief were T. ANDREW CULBERT and DAVID E. KILLOUGH, Microsoft Corporation, of Redmond, West Virginia.

Before RADER, Chief Judge, PROST and REYNA, Circuit Judges. OPINION filed by Circuit Judge REYNA. Opinion dissenting in part filed by Chief Judge RADER. Opinion concurring in part and dissenting in part filed by Circuit Judge PROST.

OPINION

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Reyna, Circuit Judge

Plaintiffs Apple Inc. and Next Software, Inc. (" Apple" ) filed a complaint against Defendants Motorola, Inc. and Motorola Mobility, Inc. (" Motorola" ) on October 29, 2010 in the United States District Court for the Western District of Wisconsin, asserting infringement of three patents. Motorola counterclaimed, asserting six of its own patents. Apple amended its complaint to include an additional twelve patents. Both parties also sought declaratory judgments of non-infringement and invalidity.

After claim construction began in Wisconsin, the case was transferred to the United States District Court for the Northern District of Illinois, Judge Posner sitting by designation. The district court in Illinois completed claim construction. Based upon its claim construction decisions, the court granted summary judgment of non-infringement with respect to certain claims and excluded the vast majority of both parties' damages expert evidence for the remaining claims. With little expert evidence deemed admissible, the court granted summary judgment that neither side was entitled to any damages or an injunction. Despite infringement being assumed, the district court dismissed all claims with prejudice before trial.

Only six patents are at issue on appeal: Apple's U.S. Patent Nos. 7,479,949; 6,343,263; and 5,946,647; and Motorola's U.S. Patent Nos. 6,359,898; 6,175,559; and 5,319,712. The parties contest the district court's claim construction, admissibility, damages, and injunction decisions. As detailed below, we affirm the district court's claim construction decisions, with the exception of its construction of Apple's '949 patent. With a minor exception, the district court's decision to exclude the damages evidence presented by both Apple and Motorola is reversed. We also reverse the district court's grant of summary judgment of no damages for infringement of Apple's patents. Based upon our reversal of the district court's claim construction of the '949 patent, we vacate the court's grant of summary judgment regarding Apple's request for an injunction. The court's decision that Motorola is not entitled to an injunction for infringement of the FRAND-committed '898 patent is affirmed. We address these, and all related issues, in turn.

Claim Construction

The parties raise claim construction issues regarding Apple's '949, '263, and '647 patents and Motorola's '559 and '712 patents. Claim construction is a question of law that we review de novo . Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc).

Apple's '949 patent

The district court construed claims 1, 2, 9, and 10 of the '949 patent and, based upon its construction, granted Motorola's motion for summary judgment of non-infringement for the majority of the accused products. Because the district court mistakenly construed certain limitations as means-plus-function limitations, we reverse its claim construction and vacate the subsequent summary judgment decision.

The '949 patent discloses the use of finger contacts to control a touchscreen

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computer. Claims 1, 2, 9, and 10 of the '949 patent are recited below, with the limitations at issue emphasized. Claim 1 recites:

A computing device, comprising: a touch screen display; one or more processors; memory; and one or more programs,

wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the one or more programs including: instructions for detecting one or more finger contacts with the touch screen display; instructions for applying one or more heuristics to the one or more finger contacts to determine a command for the device; and instructions for processing the command; wherein the one or more heuristics comprise: a vertical screen scrolling heuristic for determining that the one or more finger contacts correspond to a one-dimensional vertical screen scrolling command rather than a two-dimensional screen translation command based on an angle of initial movement of a finger contact with respect to the touch screen display ; a two-dimensional screen translation heuristic for determining that the one or more finger contacts correspond to the two-dimensional screen translation command rather than the one-dimensional vertical screen scrolling command based on the angle of initial movement of the finger contact with respect to the touch screen display ; and a next item heuristic for determining that the one or more finger contacts correspond to a command to transition from displaying a respective item in a set of items to displaying a next item in the set of items.

'949 patent at col. 122 l. 37 - col. 123 l. 2 (emphases added). Claim 2 recites:

The computing device of claim 1, wherein the one or more heuristics include a heuristic for determining that the one or more finger contacts correspond to a...

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