The inference of a possibility does not rise to the level of clear and convincing evidence to demonstrate inherency

The Federal Circuit affirms ITC's determination that Motorola failed to provide clear and convincing evidence of invalidity, and that Microsoft satisfied the domestic industry requirement.

Motorola Mobility, LLC v. Int'l Trade Comm'n, __ F.3d __ (Fed. Cir. Dec. 16, 2013) (RADER, Prost, Taranto) (ITC) (2 of 5 stars)

Inherency: The Federal Circuit held that ITC correctly concluded that a prior art device did not inherently disclose the claimed "synchronization component." Because the term "synchronization component configured to synchronize" includes an active transitive verb, its plain and ordinary meaning requires "something more than whatever software may be needed simply for the mobile device to operate at all and to act entirely under the control of another device." Slip op. at 7. Under this construction, the possibility that the device included a "synchronization component" is not clear and convincing evidence that such a component is necessarily required.

Obviousness: The Federal Circuit also held that Motorola's sole reliance on the patentee's expert testimony about the general state of the art was insufficient to prove obviousness, especially where it failed to clearly identify the asserted prior art combinations, the scope and content of the prior art, and the differences between the prior art and the asserted claims.

Domestic Industry: The Federal Circuit agreed that Microsoft did not rely on separate products to satisfy the prongs of the domestic industry requirement (a mobile device for the technical prong, and the device's operating system for the economic prong), where the operating system was a significant part of the device. "Nothing in 337 precludes a complainant from relying on investments or employment directed to significant components, specifically tailored for use in an article protected by the patent.... An investment directed to a specifically tailored, significant aspect of the article is still directed to the article." Id. at 11.