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Ironworks Patents, LLC v. Apple, Inc.

United States District Court, D. Delaware

June 14, 2017

IRONWORKS PATENTS, LLC, Plaintiff,
v.
APPLE, INC. Defendant.

          Brian 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.

          MEMORANDUM OPINION

          ROBINSON SENIOR DISTRICT JUDGE

         I. INTRODUCTION

         On 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.[1] (D.I. 734)

         Presently 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).

         II. BACKGROUND

         The '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.[2] 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 at 1:20-29)

         The 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)

         In 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 patent, 4:40-42)

         Claims 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, comprising:
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 certificate, 2:11-39)

         Reexamined 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."

         III. STANDARD OF REVIEW

         A. Renewed Motion for Judgment as a Matter of Law

         The 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.

         B. Motion for a New Trial

         Federal 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).

         IV. DISCUSSION

         A. Defendant's Renewed JMOL - Liability

         Defendant 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)

         1. Standard

         A 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)).

         "Direct 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.

         2. All accused iPhone products

         Defendant 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))

         a. "Alert sound generator"

         Defendant 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 for reconsideration.

         i. Standard

         A 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).

         ii. Analysis

         Defendant 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.

         b. "Control means"

         Plaintiff 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)

         Defendant 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.

         3. iPhone 3G, iPhone 4 ...


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