To Prove Induced Infringement, a Patentee Must Show That All Steps of the Claimed Method Are Actually Performed, Not Just That the Accused Device Could Perform the Steps
September 04, 2012
Last Month at the Federal Circuit - October 2012
Judges: Newman, Lourie (author), Prost (dissenting-in-part)
[Appealed from: E.D. Tex., Judge Davis]
In Mirror Worlds, LLC v. Apple Inc., No. 11-1392 (Fed. Cir. Sept. 4, 2012), the Federal Circuit affirmed the district court’s grant of JMOL because Mirror Worlds, LLC (“Mirror Worlds”) failed to provide substantial evidence to show that Apple Inc. (“Apple”) itself directly infringed or induced its customers to infringe the asserted patents.
Mirror Worlds sued Apple, alleging infringement of U.S. Patent Nos. 6,006,227 (“the ’227 patent”); 6,638,313 (“the ’313 patent”); and 6,725,427 (“the ’427 patent”), all generally directed to searching, displaying, and archiving computer files. Mirror Worlds accused certain versions of Apple’s Mac OS X operating system and Apple’s mobile devices running the iOS operating system of infringement. Specifically, Mirror Worlds alleged infringement based on Apple’s Spotlight, Cover Flow, and Time Machine applications. Spotlight is a search and indexing application that continuously tracks all files generated in or received by the computer and allows a user to organize these indexed results based on various criteria. Cover Flow is a graphical interface that allows a user to flip through a stack of documents by manipulating a horizontal scroll bar at the bottom of the application screen. Time Machine is a backup and archiving application that allows a user to automatically archive or backup the user’s files using an external hard drive.
At trial, the jury returned a verdict of direct infringement in favor of Mirror Worlds and awarded $208.5 million in damages. In separate rulings—one at the end of Mirror Worlds’ case-in-chief and another after the jury verdict—the district court entered JMOL in Apple’s favor, finding that Apple was not liable as a matter of law for infringement of any of the asserted patent claims because Mirror Worlds did not provide any evidence of actual performance of the patented methods by third parties.
On appeal, the Federal Circuit considered three main issues. First, the Court discussed the asserted claims of the ’313 and ’427 patents against Apple’s Cover Flow interface, for which Mirror Worlds relied solely on DOE. Noting that these asserted claims required two components (a cursor and a system that responds to the sliding of the cursor), the Court held that Mirror Worlds failed to show equivalence of the first component in Cover Flow. Specifically, the Court examined the testimony of Mirror Worlds’ expert, who opined that although Cover Flow did not display a literal cursor, it had the equivalent, because “the user always is looking at the center [of the display] . . . , and that is where the cursor or pointer is by default.” Slip op. at 11 (citation omitted). The Court determined that the testimony was inadequate because it amounted “to an argument that the absence of a feature is equivalent to its presence, which is a negation of the doctrine of equivalents.” Id. Thus, the Court agreed with the district court that the evidence was insufficient to support the jury’s finding of infringement for all of the asserted claims of the ’313 and ’427 patents.
The Court next turned to asserted method claims 13 and 22 of the ’227 patent and whether they were infringed by the Spotlight application. The Court observed that infringement of the ’227 patent requires, at a minimum, searching in Spotlight, receiving data units from other computer systems (such as receiving e-mail), generating data units (sending an e-mail or creating a document), and generating a substream (“time-ordered” search results). First, the Court declined to rule on claim 22 because it was mentioned only in a footnote and had therefore not been preserved for appeal.
Next, turning to the direct infringement theory of claim 13, the Federal Circuit held that Mirror Worlds had not offered substantial evidence that Apple directly infringed the ’227 patent. Although a patentee may establish infringement by circumstantial evidence, the Court stated that Mirror Worlds must still show that Apple performed all of the steps of the claimed method. The Court rejected all of Mirror Worlds’ proffered evidence of Apple’s performance. For example, despite evidence that Apple performed the claimed method during a demonstration of Spotlight in 2005, the evidence conflicted about whether that version of the software was infringing. The Court also rejected the testimony of an Apple executive, because the circumstantial evidence did not establish that anybody at Apple had used an infringing version of the accused products to search e-mails. Finally, the Court rejected a demonstration of Spotlight during the trial because a demonstration to a jury during trial does not constitute evidence on which a claim of infringement can be based. Thus, the Federal Circuit affirmed the district court’s determination that Mirror Worlds failed to provide substantial evidence to the jury to support a verdict of direct infringement by Apple.
Finally, the Federal Circuit turned to whether Apple had induced its customers to infringe claim 13 of the ’227 patent. The Court rejected Mirror Worlds’ reliance on user manuals, software reviews, and Apple’s surveys regarding Spotlight, stating that Mirror Worlds cited no trial testimony of customers actually using each step of the method claims or tying together the various manuals, reviews, and surveys. Specifically, the Court noted that when manuals only teach each of the claimed method steps in isolation but not all of the steps together, the manuals alone cannot support induced infringement. The Court stated that the operating system can be used in a noninfringing manner and that the cited entries do not directly instruct a user how to infringe because the instructions for each of the method steps are found separately and in isolation from the other steps, and thus do not suffice for showing inducement. The Court noted that it was not disputed that Apple’s products could infringe, but such testimony alone is not sufficient to find inducement, because evidence of actual use of each limitation is required. Thus, the Federal Circuit then held that there was a lack of substantial evidence on which a jury could render a verdict of induced infringement and affirmed the district court’s grant of JMOL that Apple did not induce infringement of the ’227 patent.
Accordingly, noting that the necessary evidence was not put before the jury to support the verdict of infringement or damages, the Court affirmed the district court’s decisions in entering judgment of noninfringement.
Judge Prost dissented-in-part from the majority opinion. According to Judge Prost, under a correct reading of claim 13 of the ’227 patent, Mirror Worlds adduced sufficient evidence to allow a reasonable jury to conclude that Apple’s customers infringed the claim. In her view, the required steps are mostly performed automatically and without any need for user interaction. Judge Prost reasoned that claim 13 simply requires that a search query be run in Spotlight on a computer that contains at least one file and has received an e-mail or other type of file from another computer, and that Spotlight filters its organized database based on an inputted query. Judge Prost specifically noted that Apple’s brochures and manuals encourage users to use Spotlight to search through their files, including e-mails, and that Apple taught its customers to use Spotlight to search through data that were both generated in and received by the computer. Thus, Judge Prost concluded that Mirror Worlds introduced sufficient evidence to allow a reasonable jury to find that Apple’s customers used Spotlight to infringe claim 13, and dissented-in-part from the majority’s opinion.
Summary authored by Kevin D. Rodkey, Esq.