Digest of Mobilemedia Ideas LLC v. Apple Inc., No. 2014-1060, -1091 (Fed. Cir. Mar. 17, 2015) (precedential). On appeal from D. Del. Before Taranto, Bryson, and Chen.
Procedural Posture: Defendant Apple appealed from a final judgment finding claim 73 of U.S. Patent No. 6,427,078 (“the ’078 patent”) and claim 23 of U.S. Patent No. 6,070,068 (“the ’068 patent”) to be infringed and not invalid. MobileMedia cross-appealed from the final judgment finding claims 5, 6, and 10 of U.S. Patent No. 6,253,075 (“the ’075 patent”) and claims 2-4 and 12 of U.S. Patent No. RE 39,231 (“the ’231 patent”) not to be infringed, and claims 5, 6, and 10 of the ’075 patent to also be invalid. CAFC affirmed in part, reversed in part, vacated, and remanded.
- Obviousness: CAFC agreed with the district court that substantial evidence supported the jury’s finding that one of skill in the art would not have been motivated to combine the prior art references to arrive at the invention of the ’078 patent. Although Mobilemedia’s expert and Apple’s expert offered differing opinions regarding the existence of a motivation to combine, the jury was permitted to credit the testimony of Mobilemedia’s expert over the testimony of Apple’s expert.
- Means-Plus-Function: The district court erred in expanding the scope of the “means for processing and storing” in claim 73 of the ’078 patent to include any image processing unit or memory unit. The claim language indicated that the “means for processing and storing” was part of the camera unit, not the overall device. Also, the specification linked the camera unit’s processor and memory units to the claimed means for performing the function of processing and storing image information.
- Infringement: CAFC reversed the district court’s judgment that Apple infringed claim 73 of the ’078 patent because the camera module in Apple’s accused devices had no internal memory for storing image data.
- Obviousness: CAFC reversed the district court’s judgment that claim 23 of the ’068 patent was not invalid because there was no substantial evidence to support a conclusion that it would not have been obvious to configure the prior art “Hotkey” to display the “Make & Answer Calls” window after the press of one key instead of two keys.
- Obviousness: CAFC affirmed the district court’s grant of Apple’s motion for JMOL of invalidity of the asserted claims of the ’075 patent. No substantial evidence supported a determination that one of ordinary skill in the art would not have been motivated to combine the prior art protocols in the GSM. Similarly, no reasonable jury could conclude that the asserted claims of the ’075 patent were not invalid as obvious.
- Claim Construction: The district court’s claim construction of “to change a volume of the generate alert sound” of the ’231 patent as not encompassing “stopping the sound” was erroneous because the specification indicated that “controlling the alert sound generator to change a volume of the generated alert sound” encompassed both stopping and reducing the volume of the alert sound.
- Infringement: Because the district court’s grant of Apple’s motion for summary judgment of noninfringement of claims 2-4 and 12 of the ’231 patent was based on an erroneous construction, CAFC vacated the district court’s grant of this motion and remanded to the district court for further proceedings.