Motorola v. ITC: Possibility that Prior Art Encompasses Claimed Feature Not Enough to Show Inherency

Category: 102 
By: Jesus Hernandez, Blog Editor/Contributor    
TitleMotorola Mobility, LLC v. ITC, No. 2012-1535 (Fed. Cir. Dec. 16, 2013).
IssueMotorola asserts that the claimed synchronization component refers to software that merely facilitates communication and synchronization, as opposed to more active management [and], with this understanding of the limitation, […] that a synchronization component must necessarily be present on both the Apple Newton MessagePad [prior art reference] and the desktop in order to accomplish synchronization.
Motorola Mobility, LLC at *6-7 (text added).
HoldingBecause substantial evidence supports the Commission’s determinations that Motorola did not show that the asserted claims are invalid [because inherency requires more than the mere possibility that the Apple Newton MessagePad encompasses the claimed "synchronization component"], and that Microsoft showed that it satisfied the domestic industry requirement, this court affirms.
Id. at *2.

Procedural HistoryThe International Trade Commission determined that Motorola Mobility LLC (Motorola) violated § 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, by importing and selling mobile devices that infringe Microsoft Corporation’s U.S. Patent No. 6,370,566 (’566 patent).
Motorola Mobility, LLC at *2.
Legal Reasoning (Rader, C.J., Prost, Taranto)
Claim 1A mobile device, comprising: an object store; an application program configured to maintain objects on the object store; a user input mechanism configured to receive user input information; a SYNCHRONIZATION COMPONENT configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store; a communications component configured to communicate with a remote device containing the remote object store; […].
Motorola Mobility, LLC at *3 (emphasis added).
102 Analysis - Inherency Requires More than Mere Possibilities
Lower Court Finding Here, the administrative law judge found that while “[i]t is certainly possible to infer that the Apple Newton contains a synchronization component, . . . the inference of a possibility does not rise to the level of clear and convincing evidence.” [...] And, in affirming, the Commission noted that Motorola had only “shown that the Apple Newton may have a synchronization function—without specifying any of the components that provide that synchronization.” Commission Opinion at 14.
Motorola Mobility, LLC at *7 (internal citations omitted).
Plain and Ordinary Meaning ControlsNeither the Commission nor its administrative law judge construed the term “synchronization component.” And, despite the earlier dispute over client-based and server-based synchronization, the parties do not appear to have proffered any construction— not even when Motorola conceded infringement. The claim phrase “synchronization component configured to synchronize” (certain objects with other objects) is there- fore left with its ordinary meaning. Given the use of an active transitive verb with the mobile-device component as the subject, that meaning requires something more than whatever software may be needed simply for the mobile device to operate at all and to act entirely under the control of another device.
Id. at *7.
Inherency: Possibility that Prior Art May Encompass Claimed feature Not Enough to Support Anticipation[T]he Newton Connection Utilities manual simply states that “[t]he Newton Connection Utilities work with the Newton 2.0 operating system,” J.A. 74174, and that synchronization may be initiated using the Apple Newton MessagePad, J.A. 74254–55. However, the manual does not identify what role, if any, the operating system has in the synchronization of the Apple Newton MessagePad and the desktop. While the operating system presumably allowed the MessagePad to operate at all (without which synchronization, or anything else, might have been impossible), substantial evidence supports the Commission’s conclusion that Motorola did not present clear and convincing evidence that the operating system necessarily required any additional capacity that would qualify it as a component “to synchronize.” Inherency requires more than probabilities or possibilities. [...]
Id. at *9.
103 Analysis - Generalized Expert Opinion Not Adequate Proof of 103
Motorola had the burden of proving that the asserted claims would have been obvious at the time of invention, including identifying the scope and content of the prior art, and the differences between the prior art and the asserted claims. But Motorola only proffered alleged admissions from Microsoft’s expert, Dr. Smith, concerning the general state of prior art desktop-based PIMs and a general desire to implement these alleged prior art features on a mobile device. Dr. Smith’s testimony was not even necessarily specific to Schedule+ or Outlook in each instance. Moreover, Motorola did not specifically explain in its briefing to the administrative law judge how the desktop-based PIMs render any particular claim obvious. Neither the administrative law judge, nor the Commission, nor this court has the task of divining an invalidity defense from the record. […] At all times, the burden of persuasion rests on the party challenging the patent. Here, substantial evidence supports the administrative law judge’s conclusion, affirmed by the Commission, that Motorola did not prove by clear and convincing evidence that the asserted claims would have been obvious to one of ordinary skill in the art.
Motorola Mobility, LLC at *10 (internal citations omitted).
Domestic Industry Analysis - Domestic Industry Showing with Investment and Employment
[N]othing in § 337 precludes a complainant from relying on investments or employment directed to significant components, specifically tailored for use in an article protected by the patent. The investments or employment must only be “with respect to the articles protected by the patent.” 19 U.S.C. § 1337(a)(3). An investment directed to a specifi- cally tailored, significant aspect of the article is still directed to the article. […] [T]he Commission provided a thorough summary of Microsoft’s investments in facilities and equipment, employment of labor and capital, and invest- ments in research and development. Commission Opinion at 9–10. The Commission concluded that “the evidence shows that Microsoft has made significant and/or sub- stantial investments . . . related to the development” of its operating systems satisfying each of § 337(a)(3)(A), (B), and (C). Id. at 9.
Motorola Mobility, LLC at *11.
The Commission’s determination that Motorola failed to prove the asserted claims of the ’566 patent are invalid is supported by substantial evidence, as is the Commission’s determination that Microsoft satisfied the domestic industry requirement with respect to the ’566 patent. Therefore, this court affirms.
Motorola Mobility, LLC at *12.
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