Federal Circuit No 2012-1535
Microsoft filed a complaint at the International Trade Commission (“ITC”) alleging infringement of its Patent No. 6,370,566 by Motorola through importation of mobile phones and tablets. The ITC concluded that: (1) the Microsoft patent was valid, and (2) Motorola infringed the patent. Motorola then appealed to the Federal Circuit and Microsoft intervened. The Federal Circuit affirmed the ITC’s ruling.
Microsoft’s ‘566 patent relates to a "Personal Information Manager" (i.e. Microsoft Outlook Tasks & Calendar Modules for mobile devices). Motorola contended that claim 1 of ‘566 patent would have been obvious in view of a prior art device, the “Apple Newton Message Pad”.
Motorola argued that the element “a synchronization component” of claim 1 was inherently present in the Apple Newton Message Pad. However, the Federal Circuit. concluded that Motorola did not present clear and convincing evidence that the prior art necessarily required a synchronization component and reiterated that “inherency requires more than probabilities or possibilities” (Bettcher Indus. v. Bunzl USA Inc., 661 F. 3d 629 (Fed. Cir. 2011)). Here, the Federal Circuit found that the prior art did not necessarily require that the “only way” synchronization could occur was through the use of a synchronization component on the mobile device. The Federal Circuit also rejected Motorola’s reliance on expert testimony to support the presence of the claimed synchronization component on the grounds that it was conclusory.
Motorola alternatively had argued that the ‘566 patent was obvious in view of the prior art. However, the Court held that Motorola failed to meet its burden of proof because Motorola did not clearly identify the scope and content of the prior art that it was asserting, or provide any argument that certain prior art references render a specific claim obvious. Here, the Federal Circuit appeared to be unhappy with Motorola’s apparent failure to clearly articulate its position, stating that “neither the administrative law judge, nor the Commission, nor this court has the task of divining an invalidity defense from the record.”
Separately, the Federal Circuit affirmed the ITC’s finding that Microsoft satisfied the domestic industry requirement.