INTELLECTUAL VENTURES I LLC, INTELLECTUAL VENTURES II LLC, Plaintiffs-Appellees
MOTOROLA MOBILITY LLC, FKA MOTOROLA MOBILITY, INC., Defendant-Appellant
from the United States District Court for the District of
Delaware in No. 1:11-cv-00908-SLR-MPT, Judge Sue L. Robinson.
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.
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.
Newman, Dyk, and Taranto, Circuit Judges.
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.
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.
'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.
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
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
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
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
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
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.
'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.
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
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
and the docking display unit is fully operable only when the
detachable handset is docked thereto.
'462 patent, col. 6 ll. 2-20.
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.
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