MobileMedia Ideas LLC v. Apple Inc.
Addressing issues of obviousness and claim construction, the U.S. Court of Appeals for the Federal Circuit provided several important lessons in significantly modifying the district court judgment. MobileMedia Ideas LLC v. Apple Inc., Case Nos. 14-1060; 14-1091 (Fed. Cir., Mar. 17, 2015) (Chen, J.).
Plaintiff MobileMedia is a patent assertion entity formed by MPEG LA, Nokia and Sony Corporation of America. In 2012, MobileMedia filed a lawsuit against Apple asserting infringement of 16 patents by various Apple products. Prior to trial MobileMedia pared the case down to four patents. The district court ultimately entered judgment that Apple infringed the asserted claims of two of the four patents and that those claims were valid. The district court also concluded that the asserted claims of another patent were invalid and not infringed, and that Apple did not infringe any claim of the fourth patent. Apple appealed the validity and infringement determinations, while MobileMedia cross-appealed the invalidity and non-infringement determinations.
The Federal Circuit reversed the district court’s infringement finding with respect to one of the two patents but affirmed that this patent was not invalid and reversed the validity determination with respect to the other of the patents found to have been infringed.
Apple’s invalidity arguments were based on a theory of obviousness. For the patents found to have been infringed, MobileMedia did not dispute that the prior art contained all of the claimed features, but argued that one of ordinary skill in the art would not have been motivated to combine the references in the manner proposed by Apple. In affirming the validity of that patent, the Federal Circuit explained that “even when a technique has been used to improve a device, and a skilled artisan would recognize that it could improve other devices in the same way, using that technique may not be obvious if its actual application is beyond his or her level of skill.” Focusing on the trial record, the Federal Circuit found substantial evidence to support a conclusion that combining the prior art in the way that satisfied the explicit language of the claims would be beyond the ordinary level of skill, a level agreed to by both parties. For two of the asserted patents, however, the Federal Circuit did not find the necessary evidentiary support in the record to avoid a finding of obviousness, characterized Mobile Media’s rebuttal evidence as “conclusory” and thus concluded the patents were invalid as obvious.
The Federal Circuit also addressed the district court’s infringement conclusions in the context of claim construction and in particular the construction of certain means-plus-function claim terms. The Federal Circuit applied a de novo standard for purposes of its claim construction review because the parties cited only intrinsic evidence when presenting their claim construction arguments. In reversing the district court, the Federal Circuit focused on the explicit language of the specification. For one of the patents, MobileMedia argued that the claim should receive a broad construction, because the specification did not expressly limit the disputed structure to one specific function. The Federal Circuit was not persuaded, explaining that “[t]he 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.” In this case, MobileMedia did not establish a “clear link or association between the function or functions recited in the means-plus-function limitation and the structure or structures disclosed in the specification for carrying out those functions.”
For another of the patents, similar logic applied to the Court’s claim construction. There, the specification expressly described a structure that could perform two alternative functions. Although those functions were expressly described as alternatives, the Court adopted a sufficiently broad construction to allow for both functions, finding that any other construction would improperly exclude an embodiment of the invention from the scope of the claim. The Federal Circuit explained that the mere possibility of creating a system where the two functions were mutually exclusive was not sufficient to justify imposing a narrow construction.