Motorola, Inc. v. Interdigital Technology Corp.

Decision Date17 June 1996
Docket Number94-73-LON.,Civil Action No. 93-488-LON
Citation930 F. Supp. 952
CourtU.S. District Court — District of Delaware





Jeffrey B. Bove of Connolly, Bove, Lodge & Hutz, Wilmington, Delaware, Kathleen Jennings of Oberly & Jennings, Wilmington, Delaware; of counsel: Barry Wm. Levine, Gary M. Hoffman, Jeffrey M. Johnson and Howard N. Feldman of Dickstein, Shapiro & Morin, L.L.P., Washington, D.C., George P. McAndrews of McAndrews, Held & Malloy, Ltd., Chicago, Illinois*, for InterDigital Technology Corporation.

Richard K. Hermann of Stradley, Ronon, Stevens & Young, Wilmington, Delaware; of counsel: Robert G. Krupka, Linda S. Resh and Jay I. Alexander of Kirkland & Ellis, Chicago, Illinois and Washington, D.C., for Motorola, Inc.


LONGOBARDI, Chief Judge.


InterDigital Technology Corporation ("ITC") is the owner of a group of patents which relate to the field of digital wireless telephony. This group of patents includes the six patents-in-suit, all of which originate from one initial patent application filed on March 20, 1985.1

ITC alleges that Motorola directly infringes, contributes to the infringement of, and/or induces the infringement of the patents-in-suit, both literally and/or under the doctrine of equivalents through its manufacture, sale, or use of its digital cellular telephone products. ITC further alleges that such infringement was and is willful. Through its declaratory judgment action Motorola denies ITC's infringement allegations and further alleges that the patents-in suit are invalid. ITC seeks monetary and injunctive relief and both sides seek attorneys' fees.

The patents-in-suit contain more than 250 claims. After numerous hearings, the number of claims to be tried was reduced to 24. In addition, ITC abandoned any claim that Motorola infringed the '024 or '391 patents, and the Court entered a judgment of noninfringement in favor of Motorola with respect to these two patents. Docket Item ("D.I.") 318.

This case was originally scheduled to be tried to a jury for fourteen days beginning February 6, 1995. At the initial pretrial conference on January 26, 1995, however, the Court determined that the parties were not prepared to go to trial. As has been amply documented, this lack of preparedness was caused in principal part by the inability of counsel2 to communicate with each other with even a semblance of the professionalism expected of members of the bar. The Court held two more pre-trial hearings in an attempt to keep the trial date, but when insufficient progress was made the trial was rescheduled for fourteen days beginning March 2, 1995. The Court and counsel then embarked upon a month long pretrial process punctuated by nine additional pretrial hearings. The Court took these unprecedented steps to bring this matter to trial because of representations by counsel regarding the importance of the case and their ability to try the case in the allotted time if only the Court could reschedule the trial with minimal delay.

Trial finally began on March 2, 1995. Due to ITC's unwillingness or inability to try their case within the time originally agreed upon, the Court extended the trial from fourteen days to seventeen days. As an additional accommodation to ITC, the Court relaxed its original ruling that the trial time would be split evenly between the parties.

On the eighteenth day, the Court gave its charge and the jury began its deliberations. After four days of deliberations the jury rendered its unanimous verdict that ITC had not proven that Motorola had infringed any of the 24 claims and that each of those claims was invalid.

ITC subsequently filed its motion to alter or amend the judgment, for judgment as a matter of law ("JMOL"), or, in the alternative, for a new trial. D.I. 303. Motorola subsequently filed a motion for an award of attorneys' fees.3 D.I. 302. This is the Court's decision on those motions.


The digital wireless telephony system claimed in the patents-in-suit is comprised of two components, a base station and a subscriber unit. The representative claims fall into three categories: base station claims, subscriber unit claims, and system claims. The Court will describe the operation of this system in very general terms only, because any level of specificity leads straight into disputed issues. The base station is connected to a public telephone system, which the parties refer to as the "Public Switch Telephone Network" ("PSTN"). The base station receives an information signal (i.e., a telephone call) from the PSTN and performs a number of functions on the signal (conversions, compression, etc.) which are required by the patent. The signal is then transmitted to the subscriber units.

One problem encountered by wireless telephony systems is that the Federal Communications Commission ("FCC") has allocated a limited number of radio frequencies for telephone transmission use. As wireless telephones become more popular, this "frequency spectrum" becomes more fully utilized and limits the further growth of the industry. Because it is unlikely that the FCC can or will substantially expand the frequencies available to wireless telephone systems, the industry has sought to develop a number of techniques for making more efficient use of the available frequency spectrum. One such technique which is utilized in the patented system and the accused products is Time Division Multiple Access ("TDMA").

TDMA makes more efficient use of the frequency spectrum by time-slotting multiple signals on each frequency channel. The patents describe a number of functions which are necessary to allow the subscriber units and the base station to communicate with each other in this time-slotted manner. For example, the base station must be able to combine multiple information signals into a single signal to be transmitted, and a given subscriber unit must be able to pick out which portion of the incoming signal is intended for it and which portion is intended for another subscriber unit.

Finally, the patent claims describe subscriber units which receive the information signal from the base station, and perform several functions so that the signal may be delivered to the human ear. The subscriber unit also must take an analog voice signal and process it and transmit it back to the base station utilizing the TDMA technique. To a large extent the functions performed by the subscriber units, and the disputes revolving around them, mirror the functions performed by the base station. Some aspects of the subscriber stations, however, are unique to the subscriber station. One such example is that the subscriber stations receive and transmit at different times, which the parties refer to as "half-duplex" operation.

The parties dispute exactly what is required in many of these steps as they are described in the patent claims and further dispute whether or not these functions are performed by Motorola's accused products.

Four groups of Motorola products are at issue in this suit. United States Digital Cellular ("USDC") products are perhaps the most familiar to the average consumer, because they are the cellular telephones which are so common in America today. ITC's infringement case with respect to USDC products involved presentation of evidence relating to their use in cellular systems with base stations manufactured by Ericsson, a third party. Motorola's Personal Digital Cellular products ("PDC"),4 which consist of both subscriber units and base stations, are made for use in Japan. Motorola's Groupe Speciale Mobile products ("GSM"), which consists of both subscriber units and base stations, are made for use in Europe. Finally, Motorola's Mobile Integrated Radio System ("MIRS")5 products, which consist of both subscriber units and base stations, is essentially a radio dispatch system with telephone system interface capability, and is used in fleet operations such as ambulance or taxi companies.


Rule 59(e) allows parties to file a motion "that questions the correctness of the judgment," New Castle County v. Hartford Accident & Indem. Co., 933 F.2d 1162, 1176 (3d Cir.1991). ITC contends that Motorola presented two alternative theories at trial: (1) ITC's patents were not infringed and valid, or (2) ITC's patents were infringed but invalid. ITC further contends that Motorola presented two distinct alternative claim interpretations in support of these two theories: a "narrow" interpretation which supported Motorola's noninfringed/valid theory, and a "broad" interpretation which supported Motorola's infringed/invalid theory. ITC now contends that the jury's verdict of noninfringement and invalidity could only have been reached by the jury if they impermissibly used Motorola's "narrow" interpretation in considering infringement and used Motorola's "broad" interpretation in considering validity. ITC requests that the Court overturn the jury's invalidity verdict. Motorola denies that it pursued two alternative theories at trial, and contends that the record supports a finding that the jury used a single claim interpretation for both noninfringement and invalidity.

There can be no doubt that a jury must use the same claim interpretation for determining issues of noninfringement and invalidity. SmithKline Diagnostics, Inc. v. Helena Lab Corp., 859 F.2d 878, 882 (Fed. Cir.1988). The Court specifically instructed the jury regarding this requirement:

4.2 Claims Construed the Same way for Validity as for Infringement:
The first step in determining if Motorola has proved any of the asserted claims of ITC's patents are invalid is to

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