United States District Court, D. Delaware
E. Farnan, Esquire and Michael J. Farnan, Esquire of Farnan
LLP, Wilmington, Delaware. Of Counsel: David Berten, Esquire
and Alison A. Richards, Esquire of Global IP Law Group, LLC
Counsel for Plaintiff.
Richard K. Herrmann, Esquire and Mary Matterer, Esquire of
Morris James LLP, Wilmington, Delaware. Of Counsel: Tara D.
Elliott, Esquire of Wilmer Cutler Pickering Hale and Dorr,
and Melody Drummond Hansen, Esquire, Luann L. Simmons,
Esquire, and Xin-Yi Zhou, Esquire of O'Melveny & Myers
LLP Counsel for Defendant.
ROBINSON SENIOR DISTRICT JUDGE
March 31, 2010, plaintiff MobileMedia Ideas LLC
("MMI") filed suit against defendant Apple, Inc.
("defendant"), alleging infringement of a number of
patents including U.S. Patent No. RE 39, 231 ("the
'231 patent). As part of an extensive motion practice, on
November 8, 2012, the court construed the relevant claim
terms of the '231 patent and granted summary judgment of
noninfringement in favor of defendant. (D.I. 461 at 45) The
court denied reconsideration (D.I. 539, 540), and the parties
went to trial on the other patents-in-suit in December 2012.
(See, e.g., D.I. 506 (verdict sheet)) After
post-trial briefing, and the court's memorandum opinion
and order (D.I. 539, 540), the parties appealed to the
Federal Circuit. (D.I. 548, 550) The Federal Circuit
construed the '231 patent and vacated and remanded the
court's finding of noninfringement. MobileMedia Ideas
LLC v. Apple Inc., 780 F.3d 1159, 1181 (Fed. Cir. 2015)
("Consistent with the specification, 'controlling
the alert sound generator to change a volume of the generated
alert sound' by the 'control means' encompasses
both stopping and reducing the volume of the alert sound as
recited in dependent claims 2 and 3, respectively.").
The court held a five-day jury trial from September 12-18,
2016 on infringement, validity, and damages of claims 12 and
2 of the '231 patent. On September 20, 2016, the jury
returned a verdict that defendant's iPhone infringes
claims 12 and 2 of the '231 patent. (D.I. 704 at 2) The
jury determined that the asserted claims are not invalid as
obvious or for indefiniteness. (D.I. 704 at 2-3) As a
consequence of this infringement, the jury awarded MMI
damages of $3 million. (D.I. 704 at 4) After post-trial
briefing was complete, Ironworks Patents LLC
("Ironworks") acquired rights in the '231
patent and was substituted as the plaintiff; MMI withdrew
from this matter. (D.I. 734)
before the court are the following motions: (1)
Ironworks' renewed motion for judgment as a matter of law
or motion for a new trial with respect to damages (D.I. 712);
(2) Ironworks' motion for an award of prejudgment and
postjudgment interest (D.I. 713); and (3) defendant's
renewed motion for judgment as a matter of law or motion for
anew trial with respect to validity, infringement, and
damages (D.I. 714). The court has jurisdiction pursuant to 28
U.S.C. §§ 1331 and 1338(a).
'231 patent, entitled "Communication Terminal
Equipment and Call Incoming Control Method, " was filed
under U.S. Application No. 09/571, 650 on December 13, 1995,
claiming priority to an application filed in Japan on
December 19, 1994. The '231 patent originally issued on
November 30, 1998 as U.S. Patent No. 5, 995, 852 and was
reissued on August 8, 2006. As part of related litigation
against other defendants in other courts, on February 10,
2011, Research In Motion, Ltd. requested an ex parte
reexamination of the '231 patent. In a reexamination
certificate that issued April 3, 2012, claims 1, 11, 13-16,
and 18-23 were cancelled; claims 2-4, 8, 12, and 17 were
amended and determined to be patentable; claims 5-7, 9 and 10
were determined to be patentable as dependent on an amended
claim, and new claims 24-29 were determined to be patentable.
('231 patent, ex parte reexamination certificate
patent teaches communication terminal equipment and a method
for stopping or reducing the volume of an alert sound for an
incoming call on a telephone. ('231 patent, abstract)
Conventionally, a "call incoming on a telephone is
informed by means of an alert sound, " but the alert
sound "does not stop ringing before a user effects [a]
next operation." ('231 patent, 1:17-20) A user who
cannot respond to a call incoming has only the option to
forcibly disconnect the incoming call, turn off the
telephone, or allow the alert sound to continue ringing.
('231 patent, 1:2O-25) The first two options, forcibly
disconnecting the incoming call or turning off the telephone,
may give the person on the call origination side an
"unpleasant feeling because [he or she] can notice that
the circuit was broken off intentionally" or may give
the person the impression that the telephone network has
failed. ('231 patent, 1:26-3O, 39-42) Moreover, a user
who turns off the power may forget to turn the power back on
and miss the next incoming call. ('231 patent, 1:37-39)
On the other hand, the third option, allowing the alert sound
to continue ringing, may disturb the user or other persons in
the surroundings. ('231 patent, 1:3-33)
light of these problems, the invention aims "to provide
a communication terminal equipment which is superior in
selecting and handling properties for users ('231 patent,
1:43-46) It teaches a telephone in which an alert sound
muting or volume reducing function is allotted to a key.
('231 patent, 2:2-5; 4:40-42; 5:12-17) When the telephone
receives an incoming call, the user can use a predetermined
operation, such as depressing a key for a short time, to
prompt the "alert on/off controller" to stop
generation of the alert sound. ('231 patent, 3:36-48)
Alternatively, the alert sound may be reduced. ('231
2, 3, 4, and 12 are at issue. During reexamination, claim 12
was amended to recite as follows:
12. A communication terminal for informing a user of a
received call from a remote caller by an alert sound,
an alert sound generator for generating the alert sound when
the call is received from the remote caller;
control means for controlling said alert sound generator; and
means for specifying a predetermined operation by the user,
wherein when said alert sound generator is generating the
alert sound and said means for specifying said predetermined
operation is operated by the user, said control means
controls said alert sound generator to change a volume of the
generated alert sound only for the received call, without
affecting the volume of the alert sound for future received
calls, while leaving a call ringing state, as perceived by
the remote caller, of the call to the terminal from the
remote caller unchanged
, further comprising:
RF signal processing means for transmitting and/or receiving
radio waves; and an antenna for transmitting and/or receiving
said radio waves, wherein said communication status between
said apparatus and said remote caller is established by said
transmitted and/or received radio waves.
('231 patent, ex parte reexamination
claims 2, 3, and 4 are all dependent from claim 12.
Reexamined claim 2 adds the limitation that the "control
means controls the state of said alert sound generator to
stop the sound." Reexamined claim 3 adds the limitation
that the alert sound generator reduces the volume of the
sound. Finally, reexamined claim 4 adds the limitation
"where said predetermined operation is an operation
depressing a predetermined operation key."
STANDARD OF REVIEW
Renewed Motion for Judgment as a Matter of Law
Federal Circuit "review[s] a district court's denial
of judgment as a matter of law under the law of the regional
circuit. WBIP, LLC v. Kohler Co., 829 F.3d 1317,
1325 (Fed. Cir. 2016) (citation omitted). In the Third
Circuit, a "court may grant a judgment as a matter of
law contrary to the verdict only if 'the record is
critically deficient of the minimum quantum of evidence'
to sustain the verdict." Acumed LLC v. Advanced
Surgical Servs., Inc., 561 F.3d 199, 211 (3d Cir. 2009)
(citing Gomez v. Allegheny Health Servs.,
Inc., 71 F.3d 1079, 1083 (3d Cir. 1995)); see also
McKenna v. City of Philadelphia, 649 F.3d 171, 176 (3d
Cir. 2011). The court should grant judgment as a matter of
law "sparingly, " and "only if, viewing the
evidence in the light most favorable to the nonmovant and
giving it the advantage of every fair and reasonable
inference, there is insufficient evidence from which a jury
reasonably could find liability." Marra v.
Philadelphia Hous. Auth., 497 F.3d 286, 300 (3d Cir.
2007) (citing Moyerv. United Dominion Indus., Inc.,
473 F.3d 532, 545 n.8 (3d Cir. 2007)). "In performing
this narrow inquiry, [the court] must refrain from weighing
the evidence, determining the credibility of witnesses, or
substituting [its] own version of the facts for that of the
jury. Id. (citing Lightning Lube, Inc. v. Witco
Corp., 4 F.3d 1153, 1166 (3d Cir. 1993)). Judgment as a
matter of law may be appropriate when there is "a purely
legal basis" for reversal "that does not depend on
rejecting the jury's findings on the evidence at
trial." Acumed, 561 F.3d at 211.
Motion for a New Trial
Rule of Civil Procedure 59(a) provides, in pertinent part:
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 have heretofore been granted in actions at law in the
courts of the United States.
Fed. R. Civ. P. 59(a). The decision to grant or deny a new
trial is within the sound discretion of the trial court and,
unlike the standard for determining judgment as a matter of
law, the court need not view the evidence in the light most
favorable to the verdict winner. See Allied Chem. Corp.
v. Daiflon, Inc., 449 U.S. 33, 36 (1980); Leonard v.
Stemtech Int'l Inc, 834 F.3d 376, 386 (3d Cir. 2016)
(citing Olefins Trading, Inc. v. Han Yang Chem.
Corp., 9 F.3d 282 (3d Cir. 1993)); LifeScan Inc. v.
Home Diagnostics, Inc., 103 F.Supp.2d 345, 350 (D. Del.
2000) (citations omitted); see also 9A Wright &
Miller, Federal Practice and Procedure § 2531
(2d ed. 1994) ("On a motion for new trial the court may
consider the credibility of witnesses and the weight of the
evidence."). Among the most common reasons for granting
a new trial are: (1) the jury's verdict is against the
clear weight of the evidence, and a new trial must be granted
to prevent a miscarriage of justice; (2) newly-discovered
evidence exists that would likely alter the outcome of the
trial; (3) improper conduct by an attorney or the court
unfairly influenced the verdict; or (4) the jury's
verdict was facially inconsistent. See Zarow-Smith v.
N.J. Transit Rail Operations, 953 F.Supp. 581, 584-85
(D.N.J. 1997) (citations omitted). The court must proceed
cautiously, mindful that it should not simply substitute its
own judgment of the facts and the credibility of the
witnesses for those of the jury. Rather, the court should
grant a new trial "only when the great weight of the
evidence cuts against the verdict and a miscarriage of
justice would result if the verdict were to stand."
Leonard, 834 F.3d at 386 (citing Springer v.
Henry, 435 F.3d 268, 274 (3d Cir. 2006) and
Williamson v. Consol. Rail Corp., 926 F.2d 1344,
1352-53 (3d Cir. 1991)) (internal quotation marks omitted).
Defendant's Renewed JMOL - Liability
argues that "JMOL of noninfringement should be granted
because no reasonable jury could have found that the accused
iPhones literally infringe claims 12 and 2 of the'231
patent." (D.I. 717 at 12) In support, defendant contends
that: (1)the "alert sound generator" as construed
under § 112, ¶ 6~ requires plaintiff to show
"that the accused iPhones contain structures identical
to the structure disclosed in the '231 patent;" (2)
plaintiff did not provide sufficient evidence of infringement
of the "control means" limitation; and (3)
plaintiff's expert only testified as to the iPhone 3GS
and did not present sufficient evidence of infringement by
the other accused iPhone products. (D.I. 717 at 12-13)
patent is infringed when a person "without authority
makes, uses or sells any patented invention, within the
United States . . . during the term of the patent." 35
U.S.C. § 271(a). To prove direct infringement, the
patentee must establish that one or more claims of the patent
read on the accused device literally or under the doctrine of
equivalents. Advanced Cardiovascular Sys., Inc. v. Scimed
Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir. 2001). A
two-step analysis is employed in making an infringement
determination. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517
U.S. 370 (1996). First, the court must construe the asserted
claims to ascertain their meaning and scope, a question of
law. Id. at 976-77; see also Teva Pharms. USA,
Inc. v. Sandoz, Inc., __U.S. __, 135 S.Ct. 831, 837
(2015). The trier of fact must then compare the properly
construed claims with the accused infringing product. See
Markman, 52 F.3d at 976. This second step is a question
of fact. Spectrum Pharm., Inc. v. Sandoz Inc., 802
F.3d 1326, 1337 (Fed. Cir. 2015) (citing Bai v.L&L Wings,
Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998)).
infringement requires a party to perform each and every step
or element of a claimed method or product." Exergen
Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1320
(Fed. Cir. 2009) (quoting BMC Res., Inc. v. Paymentech,
LP., 498 F.3d 1373, 1378 (Fed. Cir. 2007)). "If any
claim limitation is absent. . ., there is no literal
infringement as a matter of law." Bayer AG v. Elan
Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.
2000). If an accused product does not infringe an independent
claim, it also does not infringe any claim depending thereon.
Ferring B.V. v. Watson Labs., Inc.-Florida, 764 F.3d
1401, 1411 (Fed. Cir. 2014) (citing Wahpeton Canvas Co.,
Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir.
1989) ("One who does not infringe an independent claim
cannot infringe a claim dependent on (and thus containing all
the limitations of) that claim.")). However, "[o]ne
may infringe an independent claim and not infringe a claim
dependent on that claim." Monsanto Co. v. Syngenta
Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007)
(quoting Wahpeton Canvas, 870 F.2d at 1552)
(internal quotations omitted). The patent owner has the
burden of proving literal infringement by a preponderance of
the evidence. Octane Fitness, 134 S.Ct. at 1758.
All accused iPhone products
argues that plaintiff "presented no evidence at trial
that the accused products perform the claimed functions of
generating an alert sound and stopping the alert sound using
structures identical to any structure disclosed in the
'231 Patent specification." (D.I. 717 at 13, citing
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1345-46 (Fed. Cir. 2016))
"Alert sound generator"
argues that plaintiff "presented no evidence that the
iPhone's components are identical to the 'alert sound
generator 13' in Figure 2 of the '231 patent."
(D.I. 717 at 13) The court construed "an alert sound
generator for generating the alert sound when the call is
received from the remote caller" under § 112,
¶ 6, and identified that "[t]he function is
generating the alert sound when the call is received from the
remote caller" and "[t]he structure is an alert
sound generator (such as the alert sound generator 13 in
the'231 patent." (D.I. 703 at 19 (emphasis omitted))
Defendant repeatedly sought to limit the construction to item
13 in figure 2, and the court disagreed. (See, e.g.,
D.I. 739 at 941:4-23) This motion is essentially a request
motion for reconsideration is the "functional
equivalent" of a motion to alter or amend judgment under
Federal Rule of Civil Procedure 59(e). See Jones v.
Pittsburgh Nat'l Corp., 899 F.2d 1350, 1352 (3d Cir.
1990) (citing Fed. Kemper Ins. Co. v. Rauscher, 807
F.2d 345, 348 (3d Cir. 1986)). The standard for obtaining
relief under Rule 59(e) is difficult to meet. The purpose of
a motion for reconsideration is to "correct manifest
errors of law or fact or to present newly discovered
evidence." Max's Seafood Cafe exrel. Lou-Ann,
Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). A
court should exercise its discretion to alter or amend its
judgment only if the movant demonstrates one of the
following: (1) a change in the controlling law; (2) a need to
correct a clear error of law or fact or to prevent manifest
injustice; or (3) availability of new evidence not available
when the judgment was granted. See Id. A motion for
reconsideration is not properly grounded on a request that a
court rethink a decision already made and may not be used
"as a means to argue new facts or issues that
inexcusably were not presented to the court in the matter
previously decided." Brambles USA, Inc. v.
Blocker, 735 F.Supp. 1239, 1240 (D. Del. 1990); see
also Glendon Energy Co. v. Borough of Glendon, 836
F.Supp. 1109, 1122 (E.D. Pa. 1993).
argues that plaintiff "can establish infringement only
by proving that the accused iPhones contain structures
identical to the structure disclosed in the '231 patent
specification. (D.I. 717 at 12) Defendant presents no new
evidence to support its argument, identifies no changes in
the law, and addresses no clear errors of law or fact in the
court's construction. Max's Seafood Cafe,
176 F.3d at 677. Therefore, the court denies defendant's
motion for reconsideration.
presented testimony from Sigurd Meldal, PhD ("Dr.
Meldal") in which he opined that, in the accused iPhone
products, the "control means" limitation is met by
the CPU running software and the "L61" audio
interface. (D.I. 737 at 412:18-413:23; see also D.I.
740 at 1080:8-1081:10, 1134:1-10) Defendant's expert,
Ravin Balakrishnan, .PhD ("Dr. Balakrishnan"),
opined that "the accused iPhones do not have the control
means element." (D.I. 739 at 842:2-8)
argues that "[w]ith respect to the 'control means,
' [plaintiff] failed to present any evidence that the
accused iPhones include a structure identical to the
structure disclosed in the specification-a CPU and an alert
sound generator on/off controller." (D.I. 717 at 14) The
jury was instructed that "control means for controlling
said alert sound generator" is construed under §
112, ¶ 6, "[t]he function is controlling the alert
sound generator to change a volume of the generated alert
sound, " and "[t]he structure is CPU and alert
sound generator on/off controller." (D.I. 703 at 19
(emphasis omitted)) Dr. Meldal expressed the opinion that the
CPU, software, and the L61 audio is the structure that
performs the identified function. Dr. Balakrishnan disagreed.
The jury credited the testimony of Dr. Meldal over that of
Dr. Balakrishnan. The court declines to re-weigh the evidence
or the credibility of the witnesses. Viewing the record in
the light most favorable to plaintiff, substantial evidence
supports the jury's verdict. For these reasons,
defendant's renewed motion for JMOL is denied.
iPhone 3G, iPhone 4 ...