No Express Disclaimer Necessary to Limit Means-Plus-Function Claims to Embodiments Disclosed in the Specification


MobileMedia Ideas LLC v. Apple, Inc., ___F.3d ___ (Fed. Cir. Mar. 17, 2015) (Taranto, Bryson, CHEN) (D. Del.: Robinson) (2 of 5 stars)

In a four-patent case, Federal Circuit determines that one patent is not infringed, that two others are invalid, but vacates a judgment of noninfringement on the fourth.

Affirmance of '078 validity judgment: Testimony from MobileMedia's expert that combining two references would have been beyond the technical ability of a skilled artisan was sufficient to support the jury's determination that the claim is not invalid.

Reversal of '078 infringement judgment: The district court erred in identifying structure corresponding to the claimed "means for processing and storing" image information. The surrounding claim language required these "means" be inside a device's camera unit, and the specification was consistent. That the specification did not expressly limit components in the camera unit to performing only those functions did not change this conclusion. "The scope of a means-plus-function limitation is outlined not by what the specification and prosecution history do not say, but rather by what they do say." Slip op. at 16. Because the camera modules in Apple's accused products have no internal memory, no reasonable jury could find infringement.

Reversal of '068 validity judgment: The sole distinction between the claim and prior art was that a certain action occurred after one button press instead of two. MobileMedia's expert presented only conclusory statements that a skilled artisan would not have made that modification. By contrast, Apple's expert presented detailed reasons why such a modification would have been obvious. On that record, no reasonable jury could find non-obviousness.

Affirmance of '075 obviousness JMOL: The dispute turned on whether there was a motivation to combine parts of two technical standards. Apple's expert gave detailed reasons why the skilled artisan would combine them, while MobileMedia's expert presented only conclusory testimony that focused on only one of the standards without addressing the combination of the two.

Vacatur of '231 noninfringement SJ: The district court erred in construing the phrase "to change a volume of the generated alert sound" such that it did not encompass stopping the sound entirely. The specification taught that an alert's volume could be changed either by reducing its volume or by stopping it entirely. That a dependent claim addressed "stop[ping] the sound" without referencing the "change a volume" limitation did not mean that "stopping the sound" and "changing the volume" are mutually exclusive. Further, to interpret "chang[ing] a volume" so that it did not include "stop[ping] the sound" would improperly exclude a preferred embodiment. Because the summary judgment of noninfringement was based on an erroneous claim construction, the Federal Circuit vacated.