780 F.3d 1159 (Fed. Cir. 2015), 2014-1060, MobileMedia Ideas LLC v. Apple Inc.

Docket Nº:2014-1060, 2014-1091
Citation:780 F.3d 1159, 114 U.S.P.Q.2d 1001
Opinion Judge:Chen, Circuit Judge.
Party Name:MOBILEMEDIA IDEAS LLC, Plaintiff-Cross-Appellant v. APPLE INC., Defendant-Appellant
Attorney:STEVEN M. BAUER, Proskauer Rose LLP, Boston, MA, argued for plaintiff-cross-appellant. Also represented by JUSTIN J. DANIELS, SAFRAZ ISHMAEL, JOHN M. KITCHURA, JR., JOHN E. ROBERTS. GEORGE ALFRED RILEY, O'Melveny & Myers LLP, San Francisco. CA, argued for defendant-appellant. Also represented by ...
Judge Panel:Before TARANTO, BRYSON, and CHEN, Circuit Judges.
Case Date:March 17, 2015
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1159

780 F.3d 1159 (Fed. Cir. 2015)

114 U.S.P.Q.2d 1001

MOBILEMEDIA IDEAS LLC, Plaintiff-Cross-Appellant

v.

APPLE INC., Defendant-Appellant

2014-1060, 2014-1091

United States Court of Appeals, Federal Circuit

March 17, 2015

Page 1160

[Copyrighted Material Omitted]

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Appeals from the United States District Court for the District of Delaware in No. 1:10-cv-00258-SLR-MPT, Judge Sue L. Robinson.

STEVEN M. BAUER, Proskauer Rose LLP, Boston, MA, argued for plaintiff-cross-appellant. Also represented by JUSTIN J. DANIELS, SAFRAZ ISHMAEL, JOHN M. KITCHURA, JR., JOHN E. ROBERTS.

GEORGE ALFRED RILEY, O'Melveny & Myers LLP, San Francisco. CA, argued for defendant-appellant. Also represented by LUANN LORAINE SIMMONS, MELODY DRUMMOND HANSEN, TIM D. BYRON; XIN-YI ZHOU, Los Angeles, CA.

Before TARANTO, BRYSON, and CHEN, Circuit Judges.

OPINION

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Chen, Circuit Judge.

This is a patent infringement case relating to four patents owned by plaintiff and cross-appellant MobileMedia Ideas LLC (MobileMedia). Defendant and appellant Apple Inc. (Apple) appeals from a final judgment of the United States District

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Court for the District of Delaware finding claim 73 of U.S. Patent No. 6,427,078 (the '078 patent) and claim 23 of U.S. Patent No. 6,070,068 (the '068 patent) to be infringed and not invalid. MobileMedia cross-appeals from the district court's final judgment finding claims 5, 6, and 10 of U.S. Patent No. 6,253,075 (the '075 patent) and claims 2--4 and 12 of U.S. Patent No. RE 39,231 (the '231 patent) not to be infringed, and claims 5, 6, and 10 of the '075 patent to also be invalid.

As to Apple's appeal, we (i) affirm the district court's judgment that claim 73 of the '078 patent is not invalid, (ii) reverse the district court's judgment that claim 73 of the '078 patent is infringed, and (iii) reverse the district court's judgment that claim 23 of the '068 patent is not invalid. As to MobileMedia's cross-appeal, we (i) affirm the district court's judgment that claims 5, 6, and 10 of the '075 patent are invalid, (ii) vacate the district court's judgment that claims 2--4 and 12 of the '231 patent are not infringed because the judgment is based on an erroneous claim construction, and (iii) remand to the district court for further proceedings.

I. Background

MobileMedia is a company formed by MPEG LA, LLC, Nokia Corporation (Nokia), and Sony Corporation of America. MobileMedia filed suit against Apple, asserting infringement of sixteen patents by various Apple products. Apple responded with several affirmative defenses, alleging, among other things, invalidity of all sixteen patents, and also counterclaimed for declaratory judgments of noninfringement. The district court bifurcated the issues of willfulness and damages for purposes of discovery and trial. During the course of the ensuing litigation, the parties stipulated to a dismissal of the claims and counterclaims related to two patents, and MobileMedia deferred the resolution of four other patents to a later phase of the litigation. The district court then granted Apple's summary judgment motions of noninfringement or invalidity for five of the remaining patents, including Apple's summary judgment motion of noninfringement of claims 2--4 and 12 of the '231 patent. MobileMedia Ideas LLC v. Apple Inc., 907 F.Supp.2d 570, 627--28 (D. Del. 2012) ( MobileMedia SJ ). MobileMedia then selected claims 5, 6, and 10 of the '075 patent, claims 23 and 24 of the '068 patent, and claim 73 of the '078 patent to assert at trial against Apple and its accused iPhone 3G, iPhone 3GS, and iPhone 4 products. MobileMedia Ideas LLC v. Apple Inc., 966 F.Supp.2d 439, 447 (D. Del. 2013) ( MobileMedia JMOL ). At trial, Apple argued that its accused iPhones did not infringe any of the asserted claims and that certain combinations of prior art references rendered each of the asserted claims invalid as obvious under 35 U.S.C. § 103. The jury returned a verdict finding that (i) Apple's accused products directly infringed the asserted claims, (ii) Apple did not induce infringement of the asserted claims, and (iii) none of the asserted claims were invalid as obvious. Id.

After the district court entered a judgment consistent with the jury's verdict, Apple renewed a previously-filed motion for judgment as a matter of law (JMOL) under Rule 50(b) of the Federal Rules of Civil Procedure (FRCP), and in the alternative, moved for a new trial under FRCP 59(a). Id. The district court granted Apple's JMOL motion of (i) noninfringement and invalidity of all asserted claims of the '075 patent, id. at 457--59, and (ii) invalidity of claim 24 of the '068 patent, id. at 464--68. The district court denied Apple's motion with respect to (i) invalidity of claim 23 and noninfringement of claims 23 and 24 of the '068 patent, id. at 464--68, and (ii) invalidity and noninfringement of

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claim 73 of the '078 patent, id. at 472--74. The district court also denied Apple's motion for a new trial, id. at 474--77, and entered a judgment consistent with its partial grant of Apple's JMOL motion. Joint Appendix (J.A.) 1--5. Both parties agree that the district court's judgment is final except for an accounting, which includes the determination of damages and willful infringement. See Robert Bosch LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1320 (Fed. Cir. 2013) (en banc).

Apple now appeals the district court's denial of its JMOL motion of noninfringement and invalidity of claim 73 of the '078 patent and claim 23 of the '068 patent. In particular, Apple challenges (i) the district court's claim construction of two means-plus-function limitations in claim 73 of the '078 patent and one limitation in claim 23 of the '068 patent, (ii) the district court's determination that substantial evidence supports the jury's finding that a person having ordinary skill in the art would not have been motivated to combine two references to render claim 73 of the '078 patent obvious, and (iii) the district court's conclusion that claim 23 of the '068 patent would not have been obvious in view of a prior art reference, together with the common knowledge of one skilled in the art.

For its part, MobileMedia cross-appeals (i) the district court's grant of Apple's JMOL motion of noninfringement and invalidity of claims 5, 6, and 10 of the '075 patent, and (ii) the district court's grant of summary judgment of noninfringement of the '231 patent. In particular, MobileMedia challenges (i) the district court's finding that MobileMedia failed to present evidence that Apple's accused iPhones met a required limitation of the asserted claims of the '075 patent, (ii) the district court's conclusion that no reasonable juror could find the asserted claims of the '075 patent to be nonobvious over the prior art, and (iii) the district court's claim construction of a means-plus-function limitation in the asserted claims of the '231 patent.

Because a party may appeal a judgment that is final except for an " accounting," we have jurisdiction over both Apple's appeal and MobileMedia's cross-appeal under 28 U.S.C. § 1292(c)(2).

II. Discussion

We review decisions on motions for summary judgment and JMOL under the law of the regional circuit. Energy Transp. Grp. Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1350 (Fed. Cir. 2012). The Third Circuit reviews grants and denials of motions for summary judgment de novo, applying the same standard of review as the district court. Gonzalez v. Sec'y of Dep't of Homeland Sec., 678 F.3d 254, 257 (3d Cir. 2012). Similarly, the Third Circuit reviews district court JMOL decisions de novo. Pitts v. Delaware, 646 F.3d 151, 155 (3d Cir. 2011). We must view the record in the light most favorable to the verdict winner, drawing all reasonable inferences in its favor. Starceski v. Westinghouse Elec. Corp., 54 F.3d 1089, 1095 (3d Cir. 1995). Only if the record is " critically deficient of the minimum quantum of evidence" on which a jury could reasonably base its verdict does the Third Circuit affirm a grant of JMOL. Pitts, 646 F.3d at 155 (internal citation omitted). JMOL, however, may be appropriate when there is a purely legal basis required for reversal that does not depend on rejecting the jury's findings on the evidence at trial. Acumed LLC v. Advanced Surgical Servs., Inc., 561 F.3d 199, 211 (3d Cir. 2009).

III. Apple's Appeal

A. The '078 patent (camera phone)

The '078 patent is directed to a " small-sized, portable and hand-held work station," such as a notebook computer, that

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includes a camera unit, a data processing unit, a display, a user interface, and at least one memory unit. '078 patent, Abstract. The specification describes how this " notebook computer" uses the attached camera unit to take a picture of items such as business cards, handwritten text, and figures. Id. at 5:15--21 (business cards), 5:43--45 (circles or lines), and 5:37--38 (handwritten text). Software applications, such as graphics and optical character recognition (OCR) software, convert the captured images into text or rudimentary graphical data for subsequent use by the notebook computer. Id. at 5:21--58. According to the specification, adding a camera unit to the notebook computer allows a user to " scan different written and/or drawn information into the memory of the notebook computer quickly and easily." Id. at 6:17--20. A " digitizer pad" may also be part of the notebook computer, which uses " known technique[s]" to recognize input from a pen and convert figures drawn on the digitizer pad into bitmap images. Id. at 7:6--10.

The notebook computer can include a cellular mobile phone unit, which uses " conventional" analog modem or digital GSM technology. Id. at 3:37--49. Coupled...

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