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Intellectual Ventures I LLC v. Motorola Mobility LLC

United States Court of Appeals, Federal Circuit

September 13, 2017

INTELLECTUAL VENTURES I LLC, INTELLECTUAL VENTURES II LLC, Plaintiffs-Appellees
v.
MOTOROLA MOBILITY LLC, FKA MOTOROLA MOBILITY, INC., Defendant-Appellant

         Appeal from the United States District Court for the District of Delaware in No. 1:11-cv-00908-SLR-MPT, Judge Sue L. Robinson.

          Marc Belloli, Feinberg Day Alberti & Thompson LLP, Menlo Park, CA, argued for plaintiffs-appellees. Also represented by David Alberti, Elizabeth Day, Ian Neville Feinberg, Sal Lim.

          David A. Nelson, Quinn Emanuel Urquhart & Sullivan, LLP, Chicago, IL, argued for defendant-appellant. Also represented by David Andrew Perlson, San Francisco, CA; Joshua L. Sohn, Washington, DC; David Clay Holloway, Mitchell G. Stockwell, Kilpatrick Town- send & Stockton LLP, Atlanta, GA; Steven Moore, San Francisco, CA.

          Before Newman, Dyk, and Taranto, Circuit Judges.

          OPINION

          DYK, CIRCUIT JUDGE

         Intellectual Ventures I LLC and Intellectual Ventures II LLC (collectively "IV") brought suit against Motorola Mobility LLC ("Motorola") in the United States District Court for the District of Delaware alleging infringement of claim 41 of U.S. Patent No. 7, 810, 144 ("the '144 patent") and claims 1, 10, 11, and 13 of U.S. Patent No. 7, 120, 462 ("the '462 patent"). A jury found the asserted claims infringed and not invalid. The district court denied Motorola's motion for judgment as a matter of law. Motorola appeals.

         We hold that substantial evidence supports the jury's verdict regarding the validity of claim 41 of the '144 patent and claims 1, 10, 11, and 13 of the '462 patent, but conclude that substantial evidence does not support the jury's verdict of direct infringement of claim 41 of the '144 patent. Since a finding of direct infringement is a predicate to any finding of indirect infringement, we reverse all of the infringement findings with respect to the '144 patent. We therefore affirm the district court's judgment in part, reverse in part, and remand for further proceedings on the asserted claims of the '462 patent.

         Background

         I

         The '144 patent was issued on October 5, 2010, from a series of continuing applications first filed in 1997. See '144 patent, col. 1 ll. 8-35 (claiming benefit to a U.S. provisional application filed on November 13, 1997). The patent is titled "File Transfer System for Direct Transfer Between Computers" and broadly "relates to transferring computer files electronically from one location to another, and more particularly to electronic transfer of computer files directly between two or more computers or computing devices." Id. col. 2 ll. 4-7.

         Asserted claim 41 of the '144 patent recites:

41. A communications device, comprising:
a processor; and
a memory that stores at least one program usable to control the communications device,
wherein the communications device is configured to:
display a collection of file identifiers, wherein each file identifier represents a selectable file;
receive a user selection of at least one file identifier representing a file selected to be 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.

'144 patent, col. 44 l. 60-col. 46 l. 17.

         The '462 patent is titled "Portable Computing, Communication and Entertainment Device with Central Processor Carried in a Detachable Handset." In general terms, the invention of the '462 patent is a laptop computer formed by docking a smartphone into a "shell" having a larger display and keyboard.

         Representative claim 1 of the '462 patent recites:

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 docked with said docking display unit;
and the docking display unit is fully operable only when the detachable handset is docked thereto.

'462 patent, col. 6 ll. 2-20.

         II

         IV filed suit for infringement of the '144 and '462 patents in the District of Delaware. Motorola defended on the grounds of no infringement and invalidity. The district court bifurcated the determination of willful infringement and calculation of damages for separate trial. See Scheduling Order, Intellectual Ventures I LLC v. Motorola Mobility LLC, No. 1:11-cv-00908-SLR-MPT (D. Del. Jan. 13, 2012), ECF No. 16.

         The district court conducted a first jury trial with respect to claims 1, 8, 10, 11, and 13 of the '462 patent that ended in a mistrial. See Intellectual Ventures I, LLC v. Motorola Mobility LLC, 72 F.Supp.3d 496, 501 (D. Del. 2014). Post-trial, the court denied Motorola's motion for ...


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