January 2014
Invalidity Not Proven by Feature in Prior Art Device and Domestic Industry Requirement Satisfied by Investment in Software Specifically Tailored for Use in Patented Mobile Device
| Judges: Rader (author), Prost, Taranto |
| [Appealed from ITC] |
In Motorola Mobility, LLC v. International Trade Commission, No. 12-1535 (Fed. Cir. Dec. 16, 2013), the Federal Circuit affirmed the ITC’s determination that Motorola Mobility, LLC (“Motorola”) violated section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, holding that substantial evidence supported the ITC’s decision that the asserted claims of Microsoft Corporation’s (“Microsoft”) U.S. Patent No. 6,370,566 (“the ’566 patent”) were not invalid and that Microsoft satisfied the domestic industry requirement.
Microsoft filed a complaint in the ITC against Motorola, alleging that the importation and sale of certain Motorola mobile devices infringed nine Microsoft patents, including the ’566 patent. The ’566 patent claims a mobile device containing a personal information manager (“PIM”) to manage scheduling, communications, and similar tasks. The ALJ found that Motorola failed to prove anticipation or obviousness by clear and convincing evidence, and that Microsoft satisfied the domestic industry requirement. Upon review, the ITC affirmed the ALJ’s determinations in relevant part. Motorola appealed to the Federal Circuit.
The Federal Circuit held that Motorola failed to prove that a prior art mobile device, the Apple Newton MessagePad, anticipated the asserted claims. The claims recite a “synchronization component configured to synchronize,” a phrase not construed by the ALJ, the ITC, or the parties. The Court held that this phrase was, therefore, left with its ordinary meaning and, contrary to Motorola’s assertions, required “something more [i.e., more active management] 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” (i.e., a desktop device) to facilitate communication and synchronization. Slip op. at 7. The Court then held that Motorola failed to prove that the claimed synchronization component was inherently present in the Apple device. The Court stated that the ’566 patent did not teach that synchronization necessarily required the synchronization component be on the mobile device. The Court also concluded that the ITC did not act unreasonably in rejecting as clear and convincing evidence conclusory expert testimony that the synchronization function disclosed in the Apple MessagePad’s manual required execution on the mobile device. In sum, the Court explained, the disclosed synchronization of the prior art device did not necessarily require any additional capacity that would qualify as a component “to synchronize” as required by the claims.
“Motorola did not specifically explain in its briefing to the administrative law judge how the desktop-based PIMs render any particular claim obvious.
Neither the administrative law judge, nor the Commission, nor this court has the task of divining an invalidity defense from the record.” Slip op. at 10.
Turning to obviousness, the Federal Circuit held that Motorola had not clearly identified the scope and content of the asserted prior art, or even addressed how specific claims would have been obvious in view of the prior art. In the Court’s view, Motorola proffered only alleged admissions from Microsoft’s expert concerning the general state of the prior art and the general desire to implement the alleged prior art features on a mobile device.
Finally, the Federal Circuit held that Microsoft satisfied the domestic industry requirement. The Court rejected Motorola’s argument that by relying on the mobile device’s software operating system to show a domestic industry, Microsoft was relying on a different product than the patented mobile device. The Court stated that “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.” Id. at 11.
Accordingly, the Federal Circuit affirmed the ITC’s determination that Motorola violated section 337 of the Tariff Act of 1930.
*Adam S. Boger is a Law Clerk at Finnegan.
