Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 1 of 64 PageID #: 20983
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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/Counter Defendants,
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`v.
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`MOTOROLA MOBILITY LLC,
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`Defendants/Counter Claimants.
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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 Nickolas
`Bohl, Esquire of Feinberg Day Alberti & Thompson LLP.
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`Jack B. Blumenfeld, Esquire and Stephen J. Krafschik, Esquire of Morris Nichols, Arsht
`& Tunnell LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel: Candice
`Decaire, Esquire, D. Clay Holloway, Esquire, and Steven Moore, Esquire of Kilpatrick
`Townsend & Stockton LLP, and David A. Nelson, Esquire, David A. Perlson, Esquire,
`Patrick D. Curran, Esquire and Joshua L. Sohn, Esquire of Quinn Emanuel Urquhart &
`Sullivan LLP.
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`MEMORANDUM OPINION
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`Dated: March..2l\, 2016
`Wilmington, Delaware
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`

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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 2 of 64 PageID #: 20984
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`~l.~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
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`patent"), 7, 120,462 ("the '462 patent"), 6,557,054 ("the '054 patent"), and 6,658,464
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`("the '464 patent"). (D.I. 1) Motorola answered and asserted affirmative defenses of,
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`inter alia, failure to state a claim, non-infringement, invalidity, prosecution history
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`estoppel, the equitable doctrines of waiver, acquiescence, laches and unclean hands,
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`and statutory time limitation on damages. (D.I. 10) Motorola also asserted
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`counterclaims for non-infringement and invalidity. (Id.) IV answered Motorola's
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`counterclaims on January 6, 2012. (D.I. 13)
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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 9, 2013, Motorola filed a motion for summary judgment of
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`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 issues, finding no
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`infringement of claim 26 of the '144 patent and invalidity of claim 1 of the '953 patent
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`based on the asserted prior art. 1 (D.I. 284) The court additionally denied Motorola's
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`motion for summary judgment of noninfringement of the '144, '953, '054, '464, '450, and
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`1 While the court found a genuine issue of material fact existed regarding whether
`the '911 patent discloses the conversion of the unusable light reflected by the optical
`rotation selection layer from one linear polarization to another, the court found that
`combining the Ouderkirk and Mukasa references renders the '953 patent obvious. (D.I.
`284 at 36-40)
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`

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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 3 of 64 PageID #: 20985
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`'462 patents, and denied Motorola's motion for summary judgment of invalidity of the
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`'144 '054, '464, '450, and '462 patents. (Id.) On January 8, 2014, the court limited trial
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`to those issues related to the '462, '054 and '464 patents. (0.1. 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. On March 5, 2014, Motorola filed a
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`renewed motion for judgment as a matter of law (0.1. 319), which the court granted with
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`respect to invalidity of claims 1 and 8 of the '464 patent (0.1. 349). On January 12,
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`2015, Motorola filed a supplemental brief on patent eligibility and indefiniteness
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`regarding the '054, '450 and '144 patents. (0.1. 360) The court invalidated the asserted
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`claims of the '054 patent as being directed to unpatentable subject matter under 35
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`U.S.C. § 101. (0.1. 378)
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`A six-day jury trial was held on March 16 - 24, 2015 on the infringement and
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`validity of claim 41 of the '144 patent and claims 1, 5, 8 and 9 of the '450 patent ("Trial
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`1"). On March 25, 2015, the jury returned a verdict that claim 41 of the '144 patent was
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`valid and infringed and invalidated the '450 patent based on obviousness. (0.1. 411) A
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`five-day jury trial was held on March 26 - 30, 2015 on the infringement and validity of
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`claims 1, 10, 11, and 13 of the '462 patent ("Trial 2"). On March 30, 2015, the jury
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`returned a verdict that claims 1, 10, 11, and 13 of the '462 patent were valid and
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`infringed. (0.1. 424) Presently before the court are the following motions: (1)
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`Motorola's motion for new trial on the '144 patent (0.1. 433); (2) Motorola's renewed
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`motion for judgment as a matter of law ("JMOL") on the '144 patent (0.1. 436); (3) IV's
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`renewed motion for JMOL regarding the '450 patent (0.1. 438); (4) Motorola's motion for
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`new trial on the '462 patent (0.1. 442); (5) Motorola's renewed motion for JMOL on the
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`3
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`

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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 4 of 64 PageID #: 20986
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`'462 patent (D.I. 444); and (5) IV's motion to strike improper lodging of demonstrative
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`exhibits (D.I. 449). The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and
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`1338(a).
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`II. BACKGROUND
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`A. The Parties
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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. 1at1[1[ 1-2) IV I owns the '144, '450, '054, and '464 patents. (Id. at 1[1[ 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 1[1[
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`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 1f 3) It
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`makes, manufactures, and/or sells the accused products. (Id. at 1f 28)
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`B. The Patents
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`1. The '144 Patent
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`The '144 patent, titled "File Transfer System for Direct Transfer Between
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`Computers," was filed on April 7, 2009 and issued on October 5, 2010. 2 The '144
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`patent "relates to transferring computer files electronically from one location to another,
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`and more particularly to electronic transfer of computer files directly between two or
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`more computers or computing devices." ('144 patent at 2:4-7)
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`2 The '144 patent is a continuation of application no. 10/657,221 filed on September
`9, 2003, which is a continuation of application no. 10/167,697 filed on June 13, 2002,
`which is a continuation of application no. 09/694,472 filed on October 24, 2000, which is
`a continuation of application no. 09/190,219 filed on November 13, 1998, which claims
`priority to provisional application no. 60/065,533 filed on November 13, 1997.
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`4
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`

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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 5 of 64 PageID #: 20987
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`2. The '450 Patent
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`The '450 patent, titled "Transmission Control Protocol/Internet Protocol (TCP/IP)
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`Packet-Centric Wireless Point to Multi-Point (PTMP) Transmission System
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`Architecture," was filed February 28, 2005 and issued August 5, 2008. 3 The '450 patent
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`claims a system and method for "coupling one or more subscriber customer premise
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`equipment (CPE) stations with a base station over a shared wireless bandwidth using a
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`packet-centric protocol; and allocating the wireless bandwidth and system resources
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`based on contents of packets." ('450 patent, Abstract) The invention specifically relates
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`to "a system and method for implementing a QoS [quality of service] aware wireless
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`point-to-multi-point transmission system." (Id. at 3:27-30)
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`3. The '462 Patent
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`The '462 patent, titled "Portable Computing, Communication and Entertainment
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`Device with Central Processor Carried in a Detachable Handset," was filed December
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`19, 2005 and issued October 10, 2006. 4 It claims a system that involves: (1) a portable
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`device referred to in the claims as a "detachable handset" that has a central processor;
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`and (2) a "docking display unit" that lacks a central processor. ('462 patent at 1: 19-30,
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`6:2-20) The detachable handset can be docked with the docking display unit and, when
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`docked, the central processor in the detachable handset controls the entire system. (Id.)
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`Ill. STANDARDS
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`3 The '450 patent is a continuation of application no. 09/349,477 filed on July 9,
`1999, which claims priority from provisional application no. 60/092,452 filed on July 10,
`1998.
`4 The '462 patent is a continuation of application no. 09/719,290 filed on April 7,
`2000, which claims priority from provisional application no. 60/128,138 filed on April 7,
`1999.
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`5
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`

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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 6 of 64 PageID #: 20988
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`A. Renewed Motion for Judgment as a Matter of Law
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`To prevail on a renewed motion for judgment as a matter of law following a jury
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`trial, the moving party "'must show that the jury's findings, presumed or express, are not
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`supported by substantial evidence or, if they were, that the legal conclusions implied
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`[by] the jury's verdict cannot in law be supported by those findings."' Pannu v. lo/ab
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`Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (quoting Perkin-Elmer Corp. v.
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`Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984)). '"Substantial' evidence is
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`such relevant evidence from the record taken as a whole as might be acceptable by a
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`reasonable mind as adequate to support the finding under review." Perkin-Elmer Corp.,
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`732 F.2d at 893. In assessing the sufficiency of the evidence, the court must give the
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`non-moving party, "as [the] verdict winner, the benefit of all logical inferences that could
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`be drawn from the evidence presented, resolve all conflicts in the evidence in his favor,
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`and in general, view the record in the light most favorable to him." Williamson v.
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`Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir. 1991); Perkin-Elmer Corp., 732 F.2d at
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`893. The court may not determine the credibility of the witnesses nor "substitute its
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`choice for that of the jury between conflicting limitations of the evidence." Perkin-Elmer
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`Corp., 732 F.2d at 893. In sum, the court must determine whether the evidence
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`reasonably supports the jury's verdict. See Dawn Equip. Co. v. Kentucky Farms Inc.,
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`140 F.3d 1009, 1014 (Fed. Cir. 1998).
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`B. Motion for a New Trial
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`Federal Rule of Civil Procedure 59(a) provides, in pertinent part:
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`A new trial may be granted to all or any of the parties and on
`all or part of the issues in an action in which there has been
`a trial by jury, for any of the reasons for which new trials
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`6
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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 7 of 64 PageID #: 20989
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`have heretofore been granted in actions at law in the courts
`of the United States.
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`Fed. R. Civ. P. 59(a). The decision to grant or deny a new trial is within the sound
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`discretion of the trial court and, unlike the standard for determining judgment as a
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`matter of law, the court need not view the evidence in the light most favorable to the
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`verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980); Olefins
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`Trading, Inc. v. Han Yang Chem. Corp., 9 F.3d 282 (3d Cir. 1993); LifeScan Inc. v.
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`Home Diagnostics, Inc., 103 F. Supp. 2d 345, 350 (D. Del. 2000) (citations omitted); see
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`also 9A Wright & Miller, Federal Practice and Procedure§ 2531 (2d ed. 1994) ("On a
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`motion for new trial the court may consider the credibility of witnesses and the weight of
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`the evidence."). Among the most common reasons for granting a new trial are: (1) the
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`jury's verdict is against the clear weight of the evidence, and a new trial must be granted
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`to prevent a miscarriage of justice; (2) newly-discovered evidence exists that would
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`likely alter the outcome of the trial; (3) improper conduct by an attorney or the court
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`unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent. See
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`Zarow-Smith v. N.J. Transit Rail Operations, 953 F. Supp. 581, 584-85 (D.N.J.1997)
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`(citations omitted). The court must proceed cautiously, mindful that it should not simply
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`substitute its own judgment of the facts and the credibility of the witnesses for those of
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`the jury. Rather, the court should grant a new trial on the basis that the verdict was
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`against the weight of the evidence only where a miscarriage of justice would result if the
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`verdict were to stand. See Williamson, 926 F.2d at 1352; EEOC v. Del. Dep't of Health
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`& Soc. Servs., 865 F.2d 1408, 1413 (3d Cir. 1989).
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`C. Infringement
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`7
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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 8 of 64 PageID #: 20990
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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., 261F.3d1329, 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., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The trier of fact must then
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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 is
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`absent from the accused device, there is no literal infringement as a matter of law."
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`Bayer AG v. Etan 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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`8
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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 9 of 64 PageID #: 20991
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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 show
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`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 not
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`a staple article or commodity of commerce suitable for substantial noninfringing use."
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`Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061 (Fed. Cir. 2004)
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`(quoting 35 U.S.C. § 271 (c)). Liability under either theory, however, depends on the
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`patent owner having first shown direct infringement. Joy Technologies, Inc. v. Flakt,
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`Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).
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`D. Invalidity
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`1. 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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`9
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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 10 of 64 PageID #: 20992
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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 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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`Id. 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 elements
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`in the manner claimed." Id. at 420. In addition to showing that a person of ordinary skill
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`in the art would have had reason to attempt to make the composition or device, or carry
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`out the claimed process, a defendant must also demonstrate that "such a person would
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`have had a reasonable expectation of success in doing so." PharmaStem
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`Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
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`10
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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 11 of 64 PageID #: 20993
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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 give 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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`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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`11
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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 12 of 64 PageID #: 20994
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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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`2. Enablement and Written Description
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`The statutory basis for the enablement and written description requirements, §
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`112 ,-i1, 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. NovoNordiskAIS, 108F.3d1361, 1366 (Fed. Cir.1997).
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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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`12
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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 13 of 64 PageID #: 20995
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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 1287,
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`1298-99 (Fed. Cir. 2010) (citation omitted); Wands, 858 F.2d at 737. Enablement is
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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 Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d
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`1336, 1351 (Fed. Cir. 2011 ). It ensures that "the patentee had possession of the
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`Case 1:11-cv-00908-SLR-MPT Document 484 Filed 03/31/16 Page 14 of 64 PageID #: 20996
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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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`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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`IV. MOTOROLA'S RENEWED JMOL MOTION ON THE '144 PATENT (TRIAL 1)
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`As noted, the '144 patent "relates to transferring computer files electronically from
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`one location to another, and more particularly to electronic transfer of computer files
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`directly between two or more computers or computing devices" ('144 patent at 2:4-7) IV
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`alleges that Motorola's products infringe independent claim 41 which teaches a
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`communications device as reproduced below:
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`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:
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`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 transferred to a second device;
`display 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;
`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;
`receiving the text message;
`encapsulate the text message with the selected file into a single
`combined file;
`generate a unique transaction identifier that identifies a transfer of
`the single combined file; and
`send the single combined file to the second device at its numbered
`destination address, the second device being configured to:
`receive the single combined file irrespective of user action at the
`second device;
`generate a delivery confirmation message confirming reception of
`the single combined file;
`transmit to an authenticating device of the communications
`network, the delivery confirmation message;
`provide an alert indicating reception of the single combined file;
`display an identification of the communications 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
`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 or the text
`message, wherein the authenticating device is configured to:
`generate a delivery report that indicates a delivery event and a time
`of the delivery event.
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`('144 patent at 44:61-46:16)
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`A. Infringement
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`At trial, IV asserted that the following Motorola products infringe claim 41 of the
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`'144 patent: Atrix 2, Atrix 4G, Atrix HD, Admiral Electrify, Electrify 2, Electrify M, Photon
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`4G, Photon Q 4G L TE, Defy XT, XT 886, XPRT, Titanium, Triumph, Rambler, Bali, i576,
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`Quantico, Brute i680, Brute i686, Clutch i457, 1412, i886, Milestone X, Theory, and the
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`i867 ("the accused products"). 5 (D.I. 473 at 140:25-141:4, 141:10-12) IV specifically
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`accuses the multimedia message system ("MMS") application6 of the accused products.
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`(D.I. 473 at 153:5-7) A multimedia message is a combination of text with a photo or text
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`with video that IV asserts Motorola infringes by encouraging users to send MMS
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`messages through its user guides and website. (D.I. 473 at 152:18-153:5)
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`As to the overall inventive concept of the '144 patent, the "invention is about
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`sending information from one person to another without either the person sending the
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`information or the person receiving the information needing to log in or download the
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`information. [Instead, t]he information is sent directly from point A to point B." (D.I. 473
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`at 155:22-156:2) Further, the "invention allows for direct transfer of files from user to
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`user, and it eliminates the cost issues and security risks associated with long term
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`storage. By including the authentication device ... the fact that a message gets
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`delivered is not only confirmed, but it allows for billing." (D.I. 473 at 159:25-160:6) The
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`invention was originally licensed by the U.S. Postal Service (D.I. 473 at 158:23-25), and
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`IV asserts Motorola has been aware of the patents since the lawsuit was filed in
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`Octoberof2011. (D.I. 473at161:1-3; 299:14-24)
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`5 During trial, the parties stipulated that Motorola has sold the following products in
`the United States: The Atrix 2, the Atrix 4G, the Atrix HD, the Electrify, the Electrify 2,
`the Electrify M, the D5XT, the Admiral, the Photon 4G, the Photon Q, 4G LTE, the
`XPRT, the titanium, the i886 and the i867. (D.I. 474 at 300:13-17)
`6 IV later refers to this application as the Multimedia Message Service Center
`("MMSC"), which "tracks delivery, confirms delivery, and is used for billing." (D.I. 473 at
`161:14-18)
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`When asked about the focus of the '144 patent,7 named inventor Maurice Haff
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`responded "it's really focused on direct transfer of files between computers." (D.I. 473
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`at 210:9-10) At the time he began to conceive of the invention, e-mail was
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`inconvenient, cumbersome, unreliable, and insecure. (D.I. 473 at 211 :20-25)
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`Transferring files from one computer to another through e-mail involved the file
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`potentially being stored on the sender's computer, the sender's server, the recipient's
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`server, and the recipient's computer, all of which were targets for hacking and did not
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`provide authentication that the recipient received the file. (D.I. 473 at 213:17-21) In
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`sum, the motivation was to eliminate the "long term storage issue because of the
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`security concerns and the costs associated with it." (D.I. 473 at 220:22-24)
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`IV then presented the deposition testimony of Naveen Aerrabotu, a Motorola
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`software and smartphone development engineer who was unavailable for trial. (D.I. 473
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`at 240: 15-241: 18) During his deposition, Mr. Aerrabotu was presented with several
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`documents detailing multimedia messaging standards in U.S. carriers (D.I. 242:1-4,
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`244:8-256: 19), and later testified regarding tests conducted on various Motorola phones
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`to ensure MMS functionality with U.S. carriers including AT&T and Sprint. (D.I. 474 at
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`267:5-274:7) He additionally testified that every MMS message sent by a Motorola
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`Android-based phone would include a transaction l.D. as part of the message header,
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`"a unique identifier of the transaction between the originating MMS client an