Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 1 of 71 PageID #: 11463
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`INTELLECTUAL VENTURES I, LLC and
`INTELLECTUAL VENTURES II, LLC,
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`Plaintiffs,
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`v.
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`MOTOROLA MOBILITY, LLC,
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`Defendant.
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`) Civ. No. 11-908-SLR
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`Brian E. Farnan, Esquire, of Farnan LLP, Wilmington, Delaware. Counsel for Plaintiff.
`Of Counsel: Margaret Elizabeth Day, Esquire, lan N. Feinberg, Esquire, David L.
`Alberti, Esquire, Clayton Thompson, Esquire, Marc C. Belloli, Esquire, Sal Lim, Esquire,
`and Yakov Zolotorev, Esquire of Feinberg Day Alberti & Thompson, LLP.
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`Jack B. Blumenfeld, Esquire and Stephen J. Kraftschik, Esquire of Morris, Nichols,
`Arsht, & Tunnel, LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel:
`William H. Boice, Esquire, Candice Decaire, Esquire, Steven Moore, Esquire, Alton
`Absher Ill, Esquire, and Carl Sanders, Esquire of Kilpatrick Townsend & Stockton LLP.
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`MEMORANDUM OPINION
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`Dated: January 2, 2014
`Wilmington, Delaware
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 2 of 71 PageID #: 11464
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`~~udge
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`I. INTRODUCTION
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`On October 6, 2011, plaintiff Intellectual Ventures I, LLC and Intellectual
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`Ventures II, LLC (collectively "IV") filed suit in this district against defendant Motorola
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`Mobility, Inc. ("Motorola") alleging infringement of six patents: U.S. Patent Nos.
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`7,810,144 (the "144 patent"), 6,412,953 (the "953 patent"), 7,409,450 (the "450 patent"),
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`7,120,462 (the "462 patent"), 6,557,054 (the "054 patent"), and 6,658,464 (the "464
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`patent"). (D.I. 1) Motorola answered the complaint and asserted a counterclaim for
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`declaratory judgment of non-infringement and invalidity of the patents-in-suit on
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`December 13, 2011. (D.I. 1 0) IV answered Motorola's counterclaims on January 6,
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`2012. (D.I. 13)
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`IV I and II are limited liability companies organized and existing under the laws of
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`the State of Delaware, with their principal place of business in Bellevue, Washington.
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`(D.I. 1 at mf1-2) IV I owns the '144, '450, '054, and '464 patents. (/d. at~~ 10, 14, 18,
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`20) IV II is the exclusive licensee of the '953 patent and owns the '462 patent. (/d. at
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`mf12, 16) Motorola is a corporation organized and existing under the laws of the State
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`of Delaware, with its principal place of business in Libertyville, Illinois. (/d. at~ 3) It
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`makes, manufactures, and/or sells the accused products. (/d. at~ 28)
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`Presently before the court are Motorola's motions for summary judgment of
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`invalidity and non-infringement of the patents-in-suit. (D.I. 230; D.l. 252) The court has
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`jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`II. STANDARDS OF REVIEW
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`1
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 3 of 71 PageID #: 11465
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`A. Summary Judgment
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`"The court shall grant summary judgment if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law." Fed. R. Civ. P. 56( a). The moving party bears the burden of
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`demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus.
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`Co. v. Zenith Radio Corp., 415 U.S. 574, 586 n.10 (1986). A party asserting that a fact
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`cannot be-or, alternatively, is-genuinely disputed must support the assertion either
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`by citing to "particular parts of materials in the record, including depositions, documents,
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`electronically stored information, affidavits or declarations, stipulations (including those
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`made for the purposes of the motions only), admissions, interrogatory answers, or other
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`materials," or by "showing that the materials cited do not establish the absence or
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`presence of a genuine dispute, or that an adverse party cannot produce admissible
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`evidence to support the fact." Fed. R. Civ. P. 56(c)(1 )(A) & (B). If the moving party has
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`carried its burden, the nonmovant must then "come forward with specific facts showing
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`that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation
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`marks omitted). The court will "draw all reasonable inferences in favor of the
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`nonmoving party, and it may not make credibility determinations or weigh the evidence."
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`Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
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`To defeat a motion for summary judgment, the non-moving party must "do more
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`than simply show that there is some metaphysical doubt as to the material facts."
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`Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d
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`584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more
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`2
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 4 of 71 PageID #: 11466
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`than just bare assertions, conclusory allegations or suspicions to show the existence of
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`a genuine issue") (internal quotation marks omitted). Although the "mere existence of
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`some alleged factual dispute between the parties will not defeat an otherwise properly
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`supported motion for summary judgment," a factual dispute is genuine where "the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party."
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`Anderson v. Liberty Lobby, Inc., 411 U.S. 242,247-48 (1986). "lfthe evidence is
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`merely colorable, or is not significantly probative, summary judgment may be granted."
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`/d. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 411 U.S.
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`317, 322 (1986) (stating entry of summary judgment is mandated "against a party who
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`fails to make a showing sufficient to establish the existence of an element essential to
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`that party's case, and on which that party will bear the burden of proof at trial").
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`B. Claim Construction
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`Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303,
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`1330 (Fed. Cir. 2005) (en bane). Claim construction focuses on intrinsic evidence- the
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`claims, specification and prosecution history - because intrinsic evidence is "the most
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`significant source of the legally operative meaning of disputed claim language."
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v.
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`Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S.
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`370 (1996). Claims must be interpreted from the perspective of one of ordinary skill in
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`the relevant art at the time of the invention. Phillips, 415 F.3d at 1313.
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`Claim construction starts with the claims, id. at 1312, and remains centered on
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`the words of the claims throughout. Interactive Gift Express, Inc. v. Compuserve, Inc.,
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`3
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 5 of 71 PageID #: 11467
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`256 F.3d 1323, 1331 (Fed. Cir. 2001 ). In the absence of an express intent to impart
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`different meaning to claim terms, the terms are presumed to have their ordinary
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`meaning. /d. Claims, however, must be read in view of the specification and
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`prosecution history. Indeed, the specification is often "the single best guide to the
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`meaning of a disputed term." Phillips, 415 F.3d at 1315.
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`C. Infringement
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`A patent is infringed when a person "without authority makes, uses or sells any
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`patented invention, within the United States ... during the term of the patent." 35
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`U.S.C. § 271 (a). A two-step analysis is employed in making an infringement
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`determination. See Markman, 52 F.3d at 976. First, the court must construe the
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`asserted claims to ascertain their meaning and scope. See id. Construction of the
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`claims is a question of law subject to de novo review. See Cybor Corp. v. FAS Techs.,
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`138 F.3d 1448, 1454 (Fed. Cir. 1998). The trier of fact must then compare the properly
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`construed claims with the accused infringing product. See Markman, 52 F.3d at 976.
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`This second step is a question of fact. See Bai v. L & L Wings, Inc., 160 F .3d 1350,
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`1353 (Fed. Cir. 1998).
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`"Direct infringement requires a party to perform each and every step or element
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`of a claimed method or product." BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373,
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`1378 (Fed. Cir. 2007), overruled on other grounds by 692 F.3d 1301 (Fed. Cir. 2012).
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`"If any claim limitation is absent from the accused device, there is no literal infringement
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`as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247
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`(Fed. Cir. 2000). If an accused product does not infringe an independent claim, it also
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`4
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 6 of 71 PageID #: 11468
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`does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier,
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`Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989). However, "[o]ne may infringe an
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`independent claim and not infringe a claim dependent on that claim." Monsanto Co. v.
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`Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton
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`Canvas, 870 F.2d at 1552) (internal quotations omitted). A product that does not
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`literally infringe a patent claim may still infringe under the doctrine of equivalents if the
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`differences between an individual limitation of the claimed invention and an element of
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`the accused product are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis
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`Chern. Co., 520 U.S. 17, 24 (1997). The patent owner has the burden of proving
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`infringement and must meet its burden by a preponderance of the evidence. See
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`SmithK/ine Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988)
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`(citations omitted).
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`When an accused infringer moves for summary judgment of non-infringement,
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`such relief may be granted only if one or more limitations of the claim in question does
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`not read on an element of the accused product, either literally or under the doctrine of
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`equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005);
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`see a/so Tech Search, L.L. C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002)
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`("Summary judgment of noninfringement is ... appropriate where the patent owner's
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`proof is deficient in meeting an essential part of the legal standard for infringement,
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`because such failure will render all other facts immaterial."). Thus, summary judgment
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`of non-infringement can only be granted if, after viewing the facts in the light most
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`favorable to the non-movant, there is no genuine issue as to whether the accused
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`5
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 7 of 71 PageID #: 11469
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`product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v.
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`Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
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`"[A] method claim is not directly infringed by the sale of an apparatus even
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`though it is capable of performing only the patented method. The sale of the apparatus
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`is not a sale of the method. A method claim is directly infringed only by one practicing
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`the patented method." Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir.
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`1993). Therefore, "an accused infringer must perform all the steps of the claimed
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`method, either personally or through another acting under his direction or control."
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`Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir.
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`2012).
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`With respect to apparatus claims, "to infringe a claim that recites capability and
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`not actual operation, an accused device 'need only be capable of operating in the
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`described mode."' Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed.
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`Cir. 2010) (citing Intel Corp. v. U.S. lnt'l Trade Comm'n, 946 F.2d 821, 832 (Fed. Cir.
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`1991 ). However, if an apparatus claim requires "software [to] be configured in a
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`particular way to infringe," infringement does not occur merely because the apparatus
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`could be used in an infringing fashion. Finjan, 626 F.3d at 1204-05.
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`For there to be infringement under the doctrine of equivalents, the accused
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`product or process must embody every limitation of a claim, either literally or by an
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`equivalent. Warner-Jenkinson, 520 U.S. at 41. An element is equivalent if the
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`differences between the element and the claim limitation are "insubstantial." Zelinski v.
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`Brunswick Corp., 185 F.3d 1311, 1316 (Fed. Cir. 1999). One test used to determine
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 8 of 71 PageID #: 11470
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`"insubstantiality" is whether the element performs substantially the same function in
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`substantially the same way to obtain substantially the same result as the claim
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`limitation. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608
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`(1950). This test is commonly referred to as the "function-way-result" test. The mere
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`showing that an accused device is equivalent overall to the claimed invention is
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`insufficient to establish infringement under the doctrine of equivalents. The patent
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`owner has the burden of proving infringement under the doctrine of equivalents and
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`must meet its burden by a preponderance of the evidence. See SmithKiine
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`Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988) (citations
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`omitted).
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`D. Invalidity
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`1. Anticipation
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`Under 35 U.S.C. § 102(b), "[a] person shall be entitled to a patent unless the
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`invention was patented or described in a printed publication in this or a foreign country .
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`. . more than one year prior to the date of the application for patent in the United
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`States." The Federal Circuit has stated that "[t]here must be no difference between the
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`claimed invention and the referenced disclosure, as viewed by a person of ordinary skill
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`in the field of the invention." Scripps Clinic & Research Found. v. Genentech, Inc., 927
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`F.2d 1565, 1576 (Fed. Cir. 1991 ).
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`In determining whether a patented invention is
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`explicitly anticipated, the claims are read in the context of the patent specification in
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`which they arise and in which the invention is described. Glaverbel Societe Anonyme v.
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`Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995). The prosecution
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`7
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 9 of 71 PageID #: 11471
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`history and the prior art may be consulted if needed to impart clarity or to avoid
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`ambiguity in ascertaining whether the invention is novel or was previously known in the
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`art. /d. The prior art need not be ipsissimis verbis (i.e., use identical words as those
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`recited in the claims) to be anticipating. Structural Rubber Prods. Co. v. Park Rubber
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`Co., 749 F.2d 707, 716 (Fed. Cir. 1984).
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`A prior art reference also may anticipate without explicitly disclosing a feature of
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`the claimed invention if that missing characteristic is inherently present in the single
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`anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
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`(Fed. Cir. 1991 ). The Federal Circuit has explained that an inherent limitation is one
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`that is necessarily present and not one that may be established by probabilities or
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`possibilities.
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`/d. That is, "[t]he mere fact that a certain thing may result from a given
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`set of circumstances is not sufficient." /d. The Federal Circuit also has observed that
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`"[i]nherency operates to anticipate entire inventions as well as single limitations within
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`an invention." Schering Corp. v. Geneva Pharms. Inc., 339 F.3d 1373, 1380 (Fed. Cir.
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`2003). Moreover, recognition of an inherent limitation by a person of ordinary skill in the
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`art before the critical date is not required to establish inherent anticipation. /d. at 1377.
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`An anticipation inquiry involves two steps. First, the court must construe the
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`claims of the patent in suit as a matter of law. Key Pharms. v. Hereon Labs Corp., 161
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`F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the construed
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`claims against the prior art. /d. A finding of anticipation will invalidate the patent.
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`Applied Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1378 (Fed. Cir. 1998).
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`2. Obviousness
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`8
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 10 of 71 PageID #: 11472
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`"A patent may not be obtained ... if the differences between the subject matter
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`sought to be patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a person having
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`ordinary skill in the art." 35 U.S.C. § 1 03(a). Obviousness is a question of law, which
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`depends on underlying factual inquiries.
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`Under§ 103, the scope and content of the prior art are to be determined;
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`differences between the prior art and the claims at issue are to be ascertained; and the
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`level of ordinary skill in the pertinent art resolved. Against this background the
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`obviousness or non-obviousness of the subject matter is determined.
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`"[A] patent composed of several elements is not proved obvious merely by
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`demonstrating that each of its elements was, independently, known in the prior art."
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`KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a
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`combination of references has the burden to show that a person of ordinary skill in the
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`relevant field had a reason to combine the elements in the manner claimed. /d. at 418-
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`19. The Supreme Court has emphasized the need for courts to value "common sense"
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`over "rigid preventative rules" in determining whether a motivation to combine existed.
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`/d. at 419-20. "[A]ny need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent can provide a reason for combining the
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`elements in the manner claimed." /d. at 420. In addition to showing that a person of
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`ordinary skill in the art would have had reason to attempt to make the composition or
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`device, or carry out the claimed process, a defendant must also demonstrate that "such
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`a person would have had a reasonable expectation of success in doing so."
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`PharmaStem Therapeutics, Inc. v. ViaCe/1, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
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`9
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 11 of 71 PageID #: 11473
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`A combination of prior art elements may have been "obvious to try" where there
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`existed "a design need or market pressure to solve a problem and there [were] a finite
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`number of identified, predictable solutions" to it, and the pursuit of the "known options
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`within [a person of ordinary skill in the art's] technical grasp" leads to the anticipated
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`success. /d. at 421. In this circumstance, "the fact that a combination was obvious to
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`try might show that it was obvious under§ 1 03." /d. Federal Circuit precedent has also
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`established that "[s]tructural relationships may provide the requisite motivation or
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`suggestion to modify known compounds to obtain new compounds," and that particular
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`types of structural similarity can give rise to a case of prima facie obviousness.
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`Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1312
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`(Fed. Cir. 2011) (citing In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995)).
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`A court is required to consider secondary considerations, or objective indicia of
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`non-obviousness, before reaching an obviousness determination, as a "check against
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`hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
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`Patent Litig., 676 F .3d 1063 (Fed. Cir. 2012). "Such secondary considerations as
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`commercial success, long felt but unsolved needs, failure of others, etc., might be
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`utilized to give light to the circumstances surrounding the origin of the subject matter
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`sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18
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`(1966).
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`"Because patents are presumed to be valid, see 35 U.S.C. § 282, an alleged
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`infringer seeking to invalidate a patent on obviousness grounds must establish its
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`obviousness by facts supported by clear and convincing evidence." Kao Corp. v.
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`10
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 12 of 71 PageID #: 11474
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`Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006) (citation omitted). In conjunction
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`with this burden, the Federal Circuit has explained that,
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`[w]hen no prior art other than that which was considered by
`the PTO examiner is relied on by the attacker, he has the
`added burden of overcoming the deference that is due to a
`qualified government agency presumed to have properly
`done its job, which includes one or more examiners who are
`assumed to have some expertise in interpreting the
`references and to be familiar from their work with the level of
`skill in the art and whose duty it is to issue only valid patents.
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting
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`Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984)).
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`3. Enablement and written description
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`The statutory basis for the enablement and written description requirements, 35
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`U.S.C. § 112 ~1, provides in relevant part:
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`The specification shall contain a written description of the
`invention, and of the manner and process of making and
`using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or
`with which it is most nearly connected, to make and use the
`same ....
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`"The enablement requirement is met where one skilled in the art, having read the
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`specification, could practice the invention without 'undue experimentation."' Streck, Inc.
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`v. Research & Diagnostic Systems, Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012) (citation
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`omitted). "While every aspect of a generic claim certainly need not have been carried
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`out by the inventor, or exemplified in the specification, reasonable detail must be
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`provided in order to enable members of the public to understand and carry out the
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`invention." Genentech, Inc. v. Novo Nordisk A!S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 13 of 71 PageID #: 11475
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`The specification need not teach what is well known in the art. /d. (citing Hybritech v.
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`Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)). A reasonable
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`amount of experimentation may be required, so long as such experimentation is not
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`"undue." ALZA Corp. v. Andrx Pharms., Inc., 603 F.3d 935, 940 (Fed. Cir. 2010).
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`"Whether undue experimentation is needed is not a single, simple factual
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`determination, but rather is a conclusion reached by weighing many factual
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`considerations." Martek Biosciences Corp. v. Nutrinova, Inc., 579 F .3d 1363, 1378
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`(Fed. Cir. 2009) (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Federal
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`Circuit has provided several factors that may be utilized in determining whether a
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`disclosure would require undue experimentation: (1) the quantity of experimentation
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`necessary; (2) the amount of direction or guidance disclosed in the patent; (3) the
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`presence or absence of working examples in the patent; (4) the nature of the invention;
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`(5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability
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`of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d at 737. These
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`factors are sometimes referred to as the "Wands factors." A court need not consider
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`every one of the Wands factors in its analysis, rather, a court is only required to
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`consider those factors relevant to the facts of the case. See Streck, Inc., 655 F.3d at
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`1288 (citing Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir.
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`1991 )).
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`The enablement requirement is a question of law based on underlying factual
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`inquiries. See Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287,
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`1298-99 (Fed. Cir. 2010) (citation omitted); Wands, 858 F.2d at 737. Enablement is
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 14 of 71 PageID #: 11476
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`determined as of the filing date of the patent application. In re '318 Patent Infringement
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`Litigation, 583 F.3d 1317, 1323 (Fed. Cir. 2009) (citation omitted). The burden is on
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`one challenging validity to show, by clear and convincing evidence, that the
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`specification is not enabling. See Streck, Inc., 665 F.3d at 1288 (citation omitted).
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`A patent must also contain a written description of the invention. 35 U.S.C. §
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`112, ~ 1. The written description requirement is separate and distinct from the
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`enablement requirement. See Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336,
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`1351 (Fed. Cir. 2011 ). It ensures that "the patentee had possession of the claimed
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`invention at the time of the application, i.e., that the patentee invented what is claimed."
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`LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir.
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`2005). The Federal Circuit has stated that the relevant inquiry- "possession as shown
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`in the disclosure" - is an "objective inquiry into the four corners of the specification from
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`the perspective of a person of ordinary skill in the art. Based on that inquiry, the
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`specification must describe an invention understandable to that skilled artisan and show
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`that the inventor actually invented the invention claimed." Ariad, 598 F.3d at 1351.
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`This inquiry is a question of fact: "the level of detail required to satisfy the written
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`description requirement varies depending on the nature and scope of the claims and on
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`the complexity and predictability of the relevant technology." /d. (citation omitted).
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`While compliance with the written description requirement is a question of fact, the
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`issue is "amenable to summary judgment in cases where no reasonable fact finder
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`could return a verdict for the non-moving party." /d. at 1307 (citing Invitrogen Corp. v.
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`Clontech Labs., Inc., 429 F.3d 1052, 1072-73 (Fed. Cir. 2005)).
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`13
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 15 of 71 PageID #: 11477
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`Ill. DISCUSSION
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`For each of the patents-in-suit, the court will discuss any necessary claim
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`construction as it relates to those infringement and invalidity issues identified in the
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`pending summary judgment motions.
`
`A. The '144 Patent
`
`The '144 patent, entitled "File Transfer System for Direct Transfer Between
`
`Computers," was filed on April 7, 2009 and issued on October 5, 2010. It is a
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`continuation of application no. 10/657,221, filed on September 9, 2003, which is a
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`continuation of application no. 10/167,697, filed on June 13, 2002, which is a
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`continuation of application no. 09/694,472, filed on October 24, 2000, which is a
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`continuation of application no. 09/190,219, filed on November 13, 1998, which claims
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`priority to provisional application no. 60/065,533, filed on November 13, 1997.
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`The '144 patent "relates to transferring computer files electronically from one
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`location to another, and more particularly to electronic transfer of computer files directly
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`between two or more computers or computing devices." ('144 patent, 2:4-7) IV alleges
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`that Motorola's products infringe independent claims 10, 26, and 41. Claim 10 teaches
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`a method for transferring files. Claims 26 and 41 teach a communications device.
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`Claims 1 0 and 26 are reproduced below.
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`10. A method for transferring files from a first device to a
`second device over a communications network, comprising:
`
`displaying, on the first device, a collection of file identifiers,
`wherein each file identifier represents a selectable file;
`
`receiving, at the first device, a user selection of at least one
`file identifier representing a file selected to be transferred to
`the second device;
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`14
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 16 of 71 PageID #: 11478
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`displaying, on the first device, a collection of destinations
`identifiers, wherein each destination identifier represents a
`remote device having a numbered destination address on a
`circuit switched or packet switched network;
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`receiving, at the first device, a user selection of at least one
`destination identifier as selection of the second device;
`
`displaying, on the first device, a data entry field in which a
`text message can be entered;
`
`receiving, at the first device, the text message;
`
`encapsulating, at the first device, the text message with the
`selected file into a single combined file;
`
`generating, at the first device, a unique transaction identifier
`that identifies a transfer of the single combined file;
`
`transferring, from the first device to the second device, the single
`combined file, including:
`
`sending, to the second device at its numbered destination address,
`the single combined file;
`
`receiving, at the second device, the single combined file
`irrespective of user action at the second device;
`
`generating, at the second device, a delivery confirmation message
`confirming reception of the single combined file;
`
`transmitting, from the second device to an authenticating device of
`the communications network, the delivery confirmation message;
`and
`
`generating, at the authenticating device, a delivery report that
`indicates a delivery event and a time of the delivery event;
`
`providing, at the second device, an alert indicating reception of the
`single combined file;
`
`displaying, on the second device, an identification of the first device
`in relation to at least one of the selected file or the associated text
`file, wherein the identification includes at least one of a
`communications address of the first device, a name of the first
`device, or a username associated with the first device; and
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`15
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 17 of 71 PageID #: 11479
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`displaying, on the second device, at least a portion of content of the
`selected file or the text message.
`
`(ld. at 38:46-39:25)
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`26. A communications device, comprising:
`a processor; and
`a memory that stores at least one program usable to control
`the communications device,
`wherein the communications device is configured to:
`display a collection of file identifiers, wherein each file
`identifier represents a selectable file;
`receive a user selection of at least one file identifier
`representing a file selected to be transmitted to a second
`device, wherein each of the communications device and the
`second device includes functionally equivalent instruction
`sets that enable file transfer between the communications
`device and the second device;
`display a collection of destinations identifiers, wherein each destination
`identifier represents a remote device having at least one of an Internet
`Protocol (IP) address or a telephone number;
`receive a user selection of at least one destination identifier as selection
`of the second device;
`display a data entry field in which a text message can be entered;
`receive the text message;
`associate the text message to the selected file as a text file; and transmit
`the selected file and the associated text file, absent non-transient
`intermediate storage of the selected file on an intervening
`communications device of the communications network, to the second
`device which is configured to:
`receive the selected file and associated text file absent initiation of
`retrieval of the selected file from the intervening communications device
`by the second device and absent user action at the second device;
`detect reception of the selected file and the associated text file;
`provide an alert in response to the reception of the selected file and the
`associated text file;
`display an identification of the communications device in relation to the
`selected file and associated text file, wherein the identification includes at
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`16
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`Case 1:11-cv-00908-SLR-MPT Document 284 Filed 01/02/14 Page 18 of 71 PageID #: 11480
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`least one of a communications address of the communications device, a
`name of the communications device, or a username associated with the
`communications device; and display at least a portion of content of the
`selected file and associated text file.
`
`(/d. at 41 :42-42:20)
`
`1. Limitations of the '144 patent1
`a. The transferring and transmitting limitations in claims 10
`and 26
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`There are two inventive aspects of the transferring and transmitting steps2 of the
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`asserted claims. One aspect (disclosed, e.g., in claims 1 and 26) requires that the
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`communications device transfer the selected file "absent non-transient intermediate
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`storage of the selected file on an intervening communications device of the
`
`communications network." The second aspect (disclosed, e.g., in claims 10 and 26)
`
`requires that the step of transferring files from a first device to a second device includes
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`the receipt, "at the second device, [of] the single combined file irrespective of user
`
`action at the second de