Summary: CAFC affirms Section 337 violation based on findings that the patent claims were not anticipated or obvious, and that the domestic industry requirement was met.
Case: Motorola Mobility, LLC v. Int’l Trade Comm’n, No. 2012-1535 (Fed. Cir. Dec. 16, 2013) (precedential). On appeal from U.S. International Trade Commission (“ITC”). Before Radar, Prost, and Taranto.
Procedural Posture: Respondent Motorola appealed the Commission’s determination of a Section 337 violation and findings that the asserted patent claims were not invalid and that the domestic industry requirement was met. CAFC affirmed.
- Anticipation: The CAFC affirmed the ITC’s finding that the Apple Newton MessagePad prior art did not satisfy the synchronization component limitation and, therefore, did not anticipate the asserted claims. First, the plain and ordinary meaning of the term “synchronization component configured to synchronize” requires something more than software for the synchronized component to operate and act under the control of another device. Second, Motorola did not provide clear and convincing evidence that the operating system from the prior art necessarily required some additional capacity that would qualify as a component “to synchronize” in order to prove that a synchronization component is inherently present.
- Obviousness: The CAFC affirmed the ITC’s finding that Motorola did not prove by clear and convincing evidence that the asserted claims would have been obvious to one of ordinary skill in the art. Motorola’s arguments consisted of alleged admissions by Microsoft’s expert concerning the general state of prior art desktop-based personal information managers (PIMs) and statements by the expert about a general desire to implement these prior art features on a mobile device. Motorola did not explain how the prior art references, such as the desktop-based PIMs, render any of the asserted claims obvious failing to meet its burden of persuasion. This was found to be insufficient for Motorola to carry its burden.
- Domestic Industry: The CAFC affirmed the ITC’s finding that Microsoft satisfied the economic prong of the domestic industry requirement because the operating systems it relied on were significant parts of the mobile devices running those operating systems. Section 337 does not preclude a complainant from relying on investments directed to significant components specifically tailored for use in an article protected by the patent in order to satisfy the economic prong of the domestic industry requirement.