Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 1 of 43 PageID #: 15782
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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, David L. Alberti, Esquire, Clayton
`Thompson, Esquire, Marc C. Belloli, Esquire, Yakov Zolotorev, Esquire, and Nikolas
`Bohl, 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, D. Clay Holloway, Esquire, and
`Steven Moore, Esquire of Kilpatrick Townsend & Stockton LLP.
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`MEMORANDUM OPINION
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`Dated: October 28, 2014
`Wilmington, Delaware
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`
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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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`)
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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, David L. Alberti, Esquire, Clayton
`Thompson, Esquire, Marc C. Belloli, Esquire, Yakov Zolotorev, Esquire, and Nikolas
`Bohl, Esquire of Feinberg Day Alberti & Thompson, LLP.
`
`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, D. Clay Holloway, Esquire, and
`Steven Moore, Esquire of Kilpatrick Townsend & Stockton LLP.
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`MEMORANDUM OPINION
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`Dated: October 28, 2014
`Wilmington, Delaware
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`
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`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 2 of 43 PageID #: 15783
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`~O~Judge
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`I. INTRODUCTION
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`Plaintiff Intellectual Ventures I, LLC ("IV I") and Intellectual Ventures II, LLC ("IV
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`II") (collectively "IV") brought this patent infringement action against defendant Motorola
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`Mobility, Inc. ("Motorola") on October 6, 2011, alleging infringement of six patents: U.S.
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`Patent Nos. 7,810, 144 ("the '144 patent"), 6,412,953 ("the '953 patent"), 7,409,450 ("the
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`'450 patent"), 7, 120,462 ("the '462 patent"), 6,557,054 ("the '054 patent"), and
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`6,658,464 ("the '464 patent"). (D.I. 1) Motorola answered and asserted affirmative
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`defenses of, inter alia, failure to state a claim, non-infringement, invalidity, prosecution
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`history estoppel, the equitable doctrines of waiver, acquiescence, laches and unclean
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`hands, and statutory time limitation on damages. (D.I. 10) Motorola also asserted
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`counterclaims for non-infringement and invalidity. Id.
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`On August 20, 2013, Motorola filed a motion for summary judgment of invalidity
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`(D.I. 230), and on September 10, 2013, Motorola filed a motion for summary judgment
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`of non-infringement (D.I. 252). In a memorandum opinion and order dated January 2,
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`2014, the court issued its claim construction and resolved several summary judgment
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`motions, finding no infringement of claim 26 of the '144 patent and invalidity of claim 1
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`of the '953 patent based on the asserted prior art. (D.I. 284) On January 8, 2014, the
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`court limited trial to those issues related to the '462, '054 and '464 patents. (D.I. 288)
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`A nine-day jury trial was held on January 24 - February 4, 2014. The trial
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`resulted in a hung jury and a mistrial was declared. Before the court is Motorola's
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`renewed Rule 50 motion for judgment as a matter of law ("JMOL") on invalidity and non(cid:173)
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`infringement. (D.I. 320) The court has jurisdiction pursuant to 28 U.S.C. § 1338.
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`II. BACKGROUND
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`A. The Parties
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`IV I and IV II are limited liability companies organized and existing under the laws
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`of the State of Delaware, with their principal place of business in Bellevue, Washington.
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`(D.I. 1 at ,-r,-r 1-2) IV I owns the '144, '450, '054, and '464 patents. (Id. at ,-r,-r 10, 14, 18,
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`20) IV II is the exclusive licensee of the '953 patent and owns the '462 patent. (Id. at
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`,-r,-r 12, 16)
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`Motorola is a corporation organized and existing under the laws of the State of
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`Delaware, with its principal place of business in Libertyville, Illinois. (Id. at ,-r 3) It
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`makes, manufactures, and/or sells the accused products. (Id. at ,-r 28)
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`B. The Technology At Issue
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`The '462, '054 and '464 patents relate to a variety of technologies in information
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`processing, computing and mobile phones. The '462 patent involves portable
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`processor devices that provide communication and computing functionality. The '054
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`patent relates to computer-implemented methods for distributing software. The '464
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`patent describes software products for transferring data over a network. The court
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`discusses each patent in more detail infra.
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`Ill. STANDARD
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`Judgment as a matter of law is proper "[i]f a party has been fully heard on an
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`issue during a jury trial and the court finds that a reasonable jury would not have a
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`legally sufficient evidentiary basis to find for the party on that issue." Fed. R. Civ. P.
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`50(a). "A jury's inability to reach a verdict does not necessarily preclude a judgment as
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`2
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`a matter of law." Shum v. Intel Corp., 633 F.3d 1067, 1076 (Fed. Cir. 2010) (citations
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`omitted); see Stewart v. Walbridge, Aldinger Co., 882 F. Supp. 1441, 1443 (D. Del.
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`1995) ("The fact that the jury was unable to reach a unanimous verdict does not in any
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`way affect this Court's duty to rule on the [rule 50] motion."). "[T]he standard for
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`granting summary judgment 'mirrors' the standard for judgment as a matter of law, such
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`that 'the inquiry under each is the same."' Reeves v. Sanderson Plumbing Products,
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`Inc., 530 U.S. 133, 150 (2000) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
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`250-51 (1986)).
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`"[l]n entertaining a motion for judgment as a matter of law, the court should
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`review all of the evidence in the record." Id. "In doing so, however, the court must draw
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`all reasonable inferences in favor of the nonmoving party, and it may not make any
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`credibility determinations or weigh the evidence." Id. (citations omitted). "The question
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`is 'whether the evidence, construed in the light most favorable to the non-moving party,
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`permits only one reasonable conclusion.'" Shum, 633 F.3d at 1076 (citation omitted).
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`"A mere scintilla of evidence presented by the plaintiff is not sufficient to deny a
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`motion for judgment as a matter of law.'' Stewart, 882 F. Supp. at 1443. "The Court
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`must determine not whether there is literally no evidence supporting the non-moving
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`party, but whether there is evidence upon which the jury could properly find for the
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`non-moving party.'' Id. (citing Walter v. Holiday Inns., Ins., 985 F.2d 1232, 1238 (3d Cir.
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`1993)). "The Court should grant the motion for judgment as a matter of law only if,
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`'viewing all the evidence which has been tendered and should have been admitted in
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`the light most favorable to the party opposing the motion, no jury could decide in that
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`3
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`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 5 of 43 PageID #: 15786
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`party's favor."' Id. (citation omitted)
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`IV. DISCUSSION
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`A. Standards
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`1. 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). To prove direct infringement, the patentee must establish, by a
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`preponderance of the evidence, that one or more claims of the patent read on the
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`accused device literally or under the doctrine of equivalents. See Advanced
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`Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir.
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`2001 ). A two-step analysis is employed in making an infringement determination. See
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). First, the
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`court must construe the asserted claims to ascertain their meaning and scope. See id.
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`Construction of the claims is a question of law subject to de novo review. See Cybor
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`Corp. v. FAS Techs., 138F.3d1448, 1454(Fed. Cir.1998). Thetrieroffactmustthen
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`compare the properly construed claims with the accused infringing product. See
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`Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L
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`Wings, Inc., 160 F.3d 1350, 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." Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d
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`1312, 1320 (Fed. Cir. 2009) (internal quotation marks omitted). "If any claim limitation
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`is absent from the accused device, there is no literal infringement as a matter of law."
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`4
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`Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an
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`accused product does not infringe an independent claim, it also does not infringe any
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`claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546,
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`1553 (Fed. Cir. 1989). However, "[o]ne may infringe an independent claim and not
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`infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503
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`F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton Canvas, 870 F.2d at 1552)
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`(internal quotations omitted). The patent owner has the burden of proving infringement
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`and must meet its burden by a preponderance of the evidence. See SmithKline
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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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`To establish indirect infringement, a patent owner has available two theories:
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`active inducement of infringement and contributory infringement. See 35 U.S.C. §
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`271(b) & (c). To establish active inducement of infringement, a patent owner must
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`show that an accused infringer "knew or should have known [their] actions would induce
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`actual infringements." DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed.
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`Cir. 2006). To establish contributory infringement, a patent owner must show that an
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`accused infringer sells "a component of a patented machine ... knowing the same to be
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`especially made or especially adapted for use in an infringement of such patent, and
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`not a staple article or commodity of commerce suitable for substantial noninfringing
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`use." Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061 (Fed. Cir.
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`2004) (quoting 35 U.S.C. § 271(c)). Liability under either theory, however, depends on
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`the patent owner having first shown direct infringement. Joy Technologies, Inc. v. Flakt,
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`5
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`Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).
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`2. Invalidity
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`a. Anticipation
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`Under 35 U.S.C. § 102(e),
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`a person shall be entitled to a patent unless an application
`for patent, published under section 122(b ), by another filed
`in the United States before the invention by the applicant for
`patent . . . or a patent granted on an application for patent
`by another filed in the United States before the invention by
`the applicant for patent.
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`A claim is anticipated only if each and every limitation as set forth in the claim is
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`found, either expressly or inherently described, in a single prior art reference.
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`Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). A single
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`prior art reference may expressly anticipate a claim where the reference explicitly
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`discloses each and every claim limitation. However, the prior art need not be ipsissimis
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`verbis (i.e., use identical words as those recited in the claims) to be expressly
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`anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed.
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`Cir. 1984 ). A single prior art reference also may anticipate a claim where one of
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`ordinary skill in the art would have understood each and every claim limitation to have
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`been disclosed inherently in the reference. Cont'/ Can Co. USA Inc. v. Monsanto Co.,
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`948 F.2d 1264, 1268 (Fed. Cir. 1991). The Federal Circuit has explained that an
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`inherent limitation is one that is necessarily present and not one that may be
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`established by probabilities or possibilities. Id. That is, "the mere fact that a certain
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`thing may result from a given set of circumstances is not sufficient." Id. The Federal
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`Circuit also has observed that "inherency operates to anticipate entire inventions as well
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`6
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`as single limitations within an invention." Schering Corp. v. Geneva Pharm. Inc., 339
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`F.3d 1373, 1380 (Fed. Cir. 2003). Moreover, recognition of an inherent limitation by a
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`person of ordinary skill in the art before the critical date is not required to establish
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`inherent anticipation. Id. at 1377.
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`Even if the prior art discloses each and every limitation set forth in a claim, such
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`disclosure will not suffice under 25 U.S.C. § 102 if it is not enabling. In re Borst, 345
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`F.2d 851, 855 (C.C.P.A. 1965). "Long ago our predecessor court recognized that a
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`non-enabled disclosure cannot be anticipatory (because it is not truly prior art) if that
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`disclosure fails to 'enable one of skill in the art to reduce the disclosed invention to
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`practice.'" Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir.
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`2003) (citations omitted). The patentee bears the burden to show that the prior art
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`reference is not enabled and, therefore, disqualified as relevant prior art for an
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`anticipation inquiry. Id. at 1355.
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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 Pharm. v. Hereon Lab. 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 to determine whether the prior art discloses the claimed
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`invention. Id. The burden of proof rests on the party asserting invalidity and can be
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`met only by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, - U.S.-,
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`131 S. Ct. 2238, 2242, 180 L. Ed. 2d 131 (2011) ("We consider whether [35 U.S.C.] §
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`282 requires an invalidity defense to be proved by clear and convincing evidence. We
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`hold that it does.").
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`7
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`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 9 of 43 PageID #: 15790
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`b. Obviousness
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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. § 103(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; differences between the prior art and the claims
`at issue are to be ascertained; and the level of ordinary skill
`in the pertinent art resolved. Against this background the
`obviousness or nonobviousness of the subject matter is
`determined. Such secondary considerations as commercial
`success, long felt but unsolved needs, failure of others, etc.,
`might be utilized to give light to the circumstances
`surrounding the origin of the subject matter sought to be
`patented.
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`KSR Int'/ Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere
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`Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).
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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. Id. at
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`418-19. The Supreme Court has emphasized the need for courts to value "common
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`sense" over "rigid preventative rules" in determining whether a motivation to combine
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`existed. Id. at 419-20. "[A]ny need or problem known in the field of endeavor at the
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`time of invention and addressed by the patent can provide a reason for combining the
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`8
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`elements in the manner claimed." Id. 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. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
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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. Id. 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§ 103." Id.
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`A fact finder is required to consider secondary considerations, or objective indicia
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`of nonobviousness, 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, 1079 (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 giv.e light to the circumstances surrounding the origin of the subject matter
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`sought to be patented." Graham, 383 U.S. at 17-18.
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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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`Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006) (citation omitted). In conjunction
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`9
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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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`c. Enablement and written description
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`The statutory basis for the enablement and written description requirements, §
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`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 AIS, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
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`10
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`The specification need not teach what is well known in the art. Id. (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 Pharmaceuticals, Inc., 603 F.3d 935, 940 (Fed. Cir.
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`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." The fact finder need not
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`consider every one of the Wands factors in its analysis, rather, a fact finder is only
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`required to consider those factors relevant to the facts of the case. See Streck, Inc.,
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`655 F.3d at 1288 (citing Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213
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`(Fed. Cir. 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 Enterprises, LLC v. Rubber Mulch Etc., LLC, 620 F.3d
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`11
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`1287, 1298-99 (Fed. Cir. 2010) (citation omitted); Wands, 858 F.2d at 737.
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`Enablement is determined as of the filing date of the patent application. In re '318
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`Patent Infringement Litigation, 583 F.3d 1317, 1323 (Fed. Cir. 2009) (citation omitted).
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`The burden is on one challenging validity to show, by clear and convincing evidence,
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`that the specification is not enabling. See Streck, Inc., 665 F.3d at 1288 (citation
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`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 Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d
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`1336, 1351 (Fed. Cir. 2011 ).
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`It ensures that "the patentee had possession of the
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`claimed invention at the time of the application, i.e., that the patentee invented what is
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`claimed." LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45
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`(Fed. Cir. 2005). The Federal Circuit has stated that the relevant inquiry - "possession
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`as shown in the disclosure" - is an "objective inquiry into the four corners of the
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`specification from the perspective of a person of ordinary skill in the art. Based on that
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`inquiry, the specification must describe an invention understandable to that skilled
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`artisan and show that the inventor actually invented the invention claimed." Ariad, 598
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`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." Id. (citation omitted). In
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`this regard, defendants must provide clear and convincing evidence that persons skilled
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`12
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`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 14 of 43 PageID #: 15795
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`in the art would not recognize in the disclosure a description of the claimed invention.
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`See PowerOasis, 522 F.3d at 1306-17 (citation omitted).
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`B. The '462 Patent
`
`The '462 patent, "Portable Computing, Communication and Entertainment
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`Device with Central Processor Carried in a Detachable Handset," was filed December
`
`19, 2005 and issued October 10, 2006. It is a continuation of application no.
`
`09/719,290 filed on April 7, 2000, which claims priority from provisional application no.
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`60/128, 138 filed on April 7, 1999. It claims a system that involves: (1) a portable device
`
`referred to in the claims as a "detachable handset" that has a central processor; and (2)
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`a "docking display unit" that lacks a central processor. (See '462 patent, col. 1: 19-30,
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`6:2-20) The detachable handset can be docked with the docking display unit and,
`
`when docked, the central processor in the detachable handset controls the entire
`
`system. (Id.) Independent claim 1 and dependent claims 8, 10, 11 and 13 are
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`reproduced below.
`
`1. A portable processing device comprising:
`
`a detachable handset unit sized for handheld grasping and
`including a central processor and a plurality of first circuits,
`said processor controlling the operation of said first circuits,
`and said first circuits including at least a video interface, a
`communication interface and a data input interface;
`
`a portable docking display unit dimensioned substantially
`larger than said detachable handset unit, said portable
`docking display unit including a first display and a plurality of
`second circuits, said plurality of second circuits not including
`a central processor and including a video interface, and a
`data input interface, and wherein said central processor
`controls the operation of at least one of said second circuits
`and said first display when said detachable handset unit is
`
`13
`
`
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`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 15 of 43 PageID #: 15796
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`docked with said docking display unit;
`
`and the docking display unit is fully operable only when the
`detachable handset is docked thereto.
`
`8. A device, as set forth in claim 1, Wherein said detachable
`handset unit includes a connection for an external
`headphone.
`
`10. A device, as set forth in claim 1, Wherein said
`detachable handset unit includes a Global Positioning
`System receiver.
`
`11 . The device of claim 1, Wherein the docking display is
`configured as a clamshell unit with first and second portions,
`having the said auxiliary display in the first portion and an
`auxiliary keyboard in the second portion.
`
`13. The device of claim 11, Wherein the docking display
`includes a recessed portion in which the handset is docked,
`wherein the handset when docked, is positioned on the back
`of one of the portions of the clam shell unit.
`
`(Id. at col. 6:2-64)
`
`1. Obviousness in view of Nelson and Smith
`
`At trial, Motorola asserted that claims 1, 11 and 13 of the '462 patent are obvious
`
`in view of (1) U.S. Patent No. 5,436,857 ("Nelson") and (2) U.S. Patent No. 7,549,007
`
`("Smith").
`
`a. Claim 1
`
`i. Motorola's evidence
`
`Motorola sub-divides claim 1 into three elements: (1) element 1A refers to the
`
`14
`
`
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`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 16 of 43 PageID #: 15797
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`"detachable handset" limitation; (2) element 1 B refers to the "portable docking display"
`
`limitation; and (3) element 1 C refers to the limitation that the docking display unit be
`
`fully operable "only when the detachable handset is docked thereto." (D.I. 320 at 2-6)
`
`Motorola argues that Smith discloses element 1 A, Nelson discloses element 1 B, and
`
`Nelson and Smith both disclose element 1 C. (Id.)
`
`With respect to element 1 A, Motorola argues that the portable telephone in
`
`Smith, on its own, meets every limitation of the claimed detachable handset unit. (Id. at
`
`3) Under the court's construction, the detachable handset is "a device that can be
`
`attached to and detached from the portable docking display unit and is small enough to
`
`be held in one hand." (D.I. 284 at 67) Element 1A additionally requires that the
`
`detachable handset include a central processor, which was construed by the court as
`
`"the part of a computer system that performs the primary computational functions, e.g.,
`
`to control the operation of various circuits." (Id. at 65)
`
`At trial, Motorola's expert, Dr. Timothy Drabik ("Dr. Drabik"), identified the
`
`"detachable handset" in Smith as "the cellphone that you can dock with ... the laptop."
`
`(D.I. 337 at 955:17-18) Dr. Drabik testified that the abstract of Smith claims that "the
`
`portable telephone serves as the portable computer's modem and functions while
`
`installed in the computer." (Id. at 955:23-24; see DTX 3, abstract) To support his
`
`assertion that the cellphone in Smith is "detachable" and "sized for handheld grasping,"
`
`two limitations of the claimed handset, Dr. Drabik pointed to figure 12, which "shows
`
`[the cellphone] is in somebody's left hand." (D.I. 337 at 956:8-11) Dr. Drabik testified
`
`that the "central processor" limitation is disclosed in figure 13 of Smith, which shows
`
`that the handset contains a microprocessor associated with RAM and ROM. (Id. at
`
`15
`
`
`
`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 17 of 43 PageID #: 15798
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`956:17-19; see DTX 3, fig. 13) Dr. Drabik opined that figures 12 and 13 of Smith
`
`illustrate that the detachable handset has a video interface, a communications
`
`interface, and a data input interface. (Id. at 957:2-22; see DTX 3, fig. 12-13)
`
`On cross-examination, IV's expert, Dr. Donald Alpert ("Dr. Alpert"), admitted that
`
`"whatever is described in element 1 A of [the '462 patent] ... was known" prior to the
`
`filing date of the '462 patent. (D.I. 340at1613:18-22; see also id. at 1616:24-1617:1)
`
`Dr. Alpert also agreed that element 1 A describes "any number of cellphones that
`
`existed in the mid to late nineties." (Id. at 1614:10-15) Dr. Alpert was impeached with
`
`his deposition testimony, in which he agreed that "Smith discloses all of [element] 1A."
`
`(D. I. 340 at 1615:2-1)
`
`Motorola then turns to element 1 B of claim 1 , arguing that the "portable docking
`
`station" limitation is fully disclosed in Nelson. (D.I. 320 at 3) Specifically, element 1 B
`
`requires that the portable docking display unit be: (1) "dimensioned substantially larger
`
`than [the] detachable handset unit;" (2) have a first display; and (3) have a plurality of
`
`second circuits including a video interface and a data input interface, but no central
`
`processor. ('462 patent, col. 6:9-18) In its memorandum regarding claim construction,
`
`the court noted that the "patent prosecution history makes clear that the docking display
`
`unit does not have a processor of its own." (D.I. 284 at 66) Element 1 B also requires
`
`that, when docked, the central processor in the detachable handset control the display
`
`and at least one of the second circuits. Id.
`
`At trial, Dr. Drabik testified that figure 2 of Nelson discloses a "smaller" module
`
`relative to the docking station, a first display, a video interface, and a data input
`
`16
`
`
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`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 18 of 43 PageID #: 15799
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`interface, but no central processor. 1 (D.I. 337 at 968:22-969:20; see DTX-60, fig. 2)
`
`With respect to the "control" limitation, Dr. Drabik testified that the central processor in
`
`the Nelson handset "controls the operation of at least one of [the] second circuits and
`
`[the] first display when the module is docked." (Id. at 970:6-8)
`
`Motorola next argues that both Nelson and Smith disclose element 1 C of claim
`
`1, which requires that the docking display unit be "fully operable only when the
`
`detachable handset is docked thereto." ('462 patent, col. 6:19-20) Motorola submits -
`
`and on cross-examination, IV's expert Dr. Alpert testified - that there is no "other
`
`processor in Nelson other than the one that was in the detachable handset." (D.I. 340
`
`at 1623:2-5; D.I. 337 at 971 :17-21) The absence of any processor, Motorola argues,
`
`renders the uncoupled docking display unit inoperable. (See D.I. 320 at 6; D.I. 337 at
`
`971: 16-20) Motorola also argued at trial that the Smith docking display unit is not fully
`
`operable in the absence of the detachable handset unit. (D.I. 337 at 973:1-3)
`
`Specifically, Dr. Drabik testified that the docking display unit in Smith "can't connect to
`
`the Internet using the wireless of the phone unless the phone is docked." (Id. at 972:1-
`
`5)
`
`Finally, Motorola argues that there is a motivation to combine a detachable
`
`handset, such as the one in Smith, with a "dumb" portable docking display unit, such as
`
`the one in Nelson. Dr. Drabik testified at trial that because "the module of Nelson didn't
`
`have a ... modem in it,'' a person having ordinary skill in the art "would want to adopt
`
`the cellphone module of Smith ... into Nelson." (Id. at 937:9-18) Dr. Drabik testified
`
`1IV's expert, Dr. Alpert, testified on cross-examination that the docking station in
`Nelson has a video interface and lacks a central processor. (D.I. 340 at 1616:2-10)
`
`17
`
`
`
`Case 1:11-cv-00908-SLR-MPT Document 349 Filed 10/28/14 Page 19 of 43 P
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