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Intellectual Ventures I LLC v. Motorola Mobility LLC

No Infringement Where Operator Obtained No Benefit From Invention

Intellectual Ventures I LLC v. Motorola Mobility LLC, 2017 U.S. App. LEXIS 17666 (Fed. Cir. Sept. 13, 2017) (Newman (CIP/DIP), DYK, Taranto) (D. Del.: Robinson) (4 of 5 stars)

Fed Cir part-affirms, part-reverses judgment of liability for infringement. The case involved two patents from IV—the ’144 patent (relating to file transfer between computers) and the ’462 patent (relating to a laptop formed by docking a smartphone into a “shell”).

Written description (’144 patent): The district court did not err in denying Motorola’s motion for JMOL on invalidity for lack of written description. While the specification made clear that the claimed invention would not cover long-term storage of files on an intermediate computer, the proper result was to construe the claim as limited by such teaching—not to construe it as covering such a technique, then invalidating for lack of written description.

Obviousness (’144 patent): The district court did not err in denying JMOL of invalidity for obviousness. The trial record contained sufficient evidence to support the jury’s rejection of this defense.

Direct infringement (’144 patent): The district court erred in failing to grant JMOL that neither Motorola nor its customers directly infringed. Applying Centillion, 631 F.3d 1279 (Fed. Cir. 2011), to show “use” of the patented system it was necessary for IV to show that an accused infringer both “control” the system in question and obtain “benefit” from it. The infringement read required that the system generate delivery reports upon the sending of MMS messages; the record indicated that while reports of this kind were stored on users’ phones, they were not accessible, and there was no evidence of a user ever accessing such reports. Nor had IV developed any argument that Motorola itself accessed or otherwise benefited from such reports (e.g., in internal testing of the accused feature).

Obviousness (’462 patent): The district court did not err in denying JMOL of invalidity for obviousness. The record included sufficient evidence for the jury to side with IV’s expert over Motorola’s as to whether a motivation to combine references existed.

Dissent-in-part: In Judge Newman’s view, no reasonable jury could have held either patent nonobvious.

KEYWORDS: WRITTEN DESCRIPTION (YES); OBVIOUSNESS (NO); INFRINGEMENT (NO)