April 2015
Means-Plus-Function Terms Are Defined by What the Specification and Prosecution History Say, Rather Than What They Do Not Say
| Judges: Taranto, Bryson, Chen (author) |
| [Appealed from D. Del., Judge Robinson] |
In MobileMedia Ideas LLC v. Apple Inc., Nos. 14-1060, -1091 (Fed. Cir. Mar. 17, 2015), the Federal Circuit affirmed-in-part, reversed-in-part, and vacated-in-part the district court’s finding of infringement, invalidity, and claim construction with respect to the patents-in-suit and remanded to the district court for further proceedings.
MobileMedia Ideas LLC (“MobileMedia”) owns U.S. Patent Nos. 6,427,078 (“the ’078 patent”) related to camera phones; 6,070,068 (“the ’068 patent”) related to call handling; 6,253,075 (“the ’075 patent”) related to call rejection; and RE 39,231 (“the ’231 patent”) related to call alerts (collectively “the
patents-in-suit”). MobileMedia sued Apple Inc. (“Apple”) for infringement of the patents-in-suit and other patents not at issue on appeal. Prior to trial, the district court granted SJ of noninfringement of claims 2-4 and 12 of the ’231 patent. After trial, a jury returned a verdict finding that Apple’s accused products directly infringed the asserted claims of the ’075 patent, the ’068 patent, and the ’078 patent; that Apple did not induce infringement of the asserted claims; and that none of the asserted claims were invalid as obvious.
After the district court entered a judgment consistent with the jury’s verdict, Apple renewed a previously filed motion for JMOL and, in the alternative, moved for a new trial. The district court granted Apple’s JMOL motion of noninfringement and invalidity of the asserted claims of the ’075 patent and invalidity of claim 24 of the ’068 patent, but denied Apple’s JMOL motion of invalidity of claim 23 and noninfringement of claims 23 and 24 of the ’068 patent, and invalidity and noninfringement of claim 73 of the ’078 patent.
Apple appealed the district court’s claim construction related to the ’078 and ’068 patents, the district court’s determination that substantial evidence was presented supporting the jury’s finding of lack of motivation to combine references to render claim 73 of the ’078 patent obvious, and the district court’s conclusion that claim 23 of the ’068 patent would not have been obvious. MobileMedia cross-appealed the district court’s grant of JMOL of noninfringement and invalidity of the asserted claims of the ’075 patent and of SJ of noninfringement of the ’231 patent.
“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.
On appeal, the Federal Circuit determined that substantial evidence supported the jury’s finding that claim 73 of the ’078 patent was nonobvious over two prior art references, but agreed with Apple that the jury’s finding of infringement was based on the district court’s erroneous claim construction. On invalidity, the Court observed that the existence of a motivation to combine the prior art references was contested by the parties at trial. The Court stated that, although Apple presented evidence that a skilled artisan would have been motivated to combine the prior art references, that alone did not demonstrate that the jury’s verdict of nonobviousness was unsupported by substantial evidence. The Court observed that MobileMedia’s expert provided a reasonable basis for the jury finding that combining the references would have been beyond the technical ability of a skilled artisan at the relevant time frame due to the “complexity and sophistication of software and hardware integration and development.” Slip op. at 8 (quoting MobileMedia Ideas LLC v. Apple Inc., 966 F. Supp. 2d 439, 471 (D. Del. 2013)). In particular, the Court noted that MobileMedia’s expert provided evidence showing that it took Nokia Corporation two years to develop a product that provided the claimed functionality between a phone and camera. Although Apple’s expert provided a differing opinion, the Court held that the jury was permitted to make credibility determinations and believe the witness it considered more trustworthy. Accordingly, the Court held that substantial evidence supported the jury’s finding that claim 73 was nonobvious over the cited prior art.
The Court then considered the district court’s constructions of means-plus-function terms in claim 73 of the ’078 patent, finding the construction of “means for processing and for storing” erroneous. The Court disagreed with the district court that the “means for processing and for storing” could cover any image processing unit in a device. After examining the plain language of claim 73 and the ’078 patent’s specification, the Court concluded that the function is performed by a processor and memory unit of a camera unit of a device, and not by the device’s general purpose central processor. Because Apple’s accused products did not have a processor or internal memory for storing image data in the camera unit, the Court concluded that the accused products did not infringe and reversed the district court’s finding of infringement.
Turning next to the ’068 patent, the Court also found that substantial evidence did not support the jury’s finding that claim 23 was not obvious based on U.S. Patent No. 5,754,636 (“Bayless”). The Court noted that, during trial, Apple’s expert explained why a skilled artisan would have found it obvious to modify Bayless’s teaching of displaying a call handling options window after a user presses two keys in a serial sequence to use a single predetermined selection operation, as recited in claim 23, using common knowledge possessed by those of skill in the art. The Court then observed that MobileMedia’s expert provided only conclusory opinions to rebut Apple’s obviousness assertion. Accordingly, the Court held that “there [was] no substantial evidence to support a conclusion that a skilled artisan would not have found it obvious” to modify Bayless in the manner claimed in claim 23. Id. at 21. Because the Court did find the claim obvious, it did not reach Apple’s argument that the accused products did not infringe claim 23 of the ’068 patent.
The Court then turned to MobileMedia’s cross-appeals. The Court first considered and affirmed the district court’s grant of JMOL of invalidity of the asserted claims of the ’075 patent, finding that the claims of the ’075 patent were obvious over Global System for Mobile communications (“GSM”) protocols GSM 04.08 and GSM 04.83. The Court noted that there was no dispute that GSM 04.08 and GSM 04.83 disclosed every limitation of the asserted claims, but the parties disputed whether one of ordinary skill in the art would have been motivated to combine the two GSM standards at the time of the alleged invention. The Court found that Apple’s expert provided several reasons why a skilled artisan would have combined the two protocols, including that the two protocols were part of the same standard, that GSM 04.83 expressly referenced GSM 04.08 “in numerous places,” and that the referenced sections of the publications of the two protocols were labeled in a “similar” manner. Id. at 28. The Court noted that MobileMedia’s expert had provided only conclusory opinions about why GSM 04.08 alone did not render the asserted claims obvious. Accordingly, the Court agreed with the district court that “no substantial evidence supports a determination that one of ordinary skill in the art would not have been motivated to combine . . . GSM 04.83 and . . . GSM 04.08,” and affirmed the district court’s grant of JMOL of invalidity. Id. at 32. The Court then declined to decide MobileMedia’s appeal from the district court’s grant of JMOL of noninfringement.
Turning next to the ’231 patent, the Court agreed with MobileMedia that the district court’s grant of SJ of noninfringement was based on an erroneous construction of the claim. The Court considered the construction of the “control means” and “to change a volume of the generated alert sound,” which are means-plus-function terms under 35 U.S.C. § 112, sixth paragraph. The Court also noted that the only structure recited in the specification to perform the claimed function is a phone’s CPU and an alert sound generator on/off controller, which “controls the alert sound generator to change a volume of the generated alert sound by either stopping the alert sound or reducing a volume of the alert sound.”
Id. at 35. The Court disagreed with the district court’s conclusion that reducing the sound and stopping the sound were mutually exclusive, and concluded that the claimed “chang[ing] a volume” encompasses both “stop[ping] the sound” and “reduc[ing] the volume of the sound.” Id. (alterations in original) (citation omitted). Based on this analysis, the Court vacated the district court’s grant of SJ of noninfringement because it was based on the erroneous construction and remanded to the district court for further proceedings.
