Apple Inc. v. Motorola, Inc. ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC. AND NEXT SOFTWARE, INC.
(formerly known as NeXT Computer, Inc.),
Plaintiffs-Appellants,
v.
MOTOROLA, INC. (now known as Motorola Solu-
tions, Inc.) AND MOTOROLA MOBILITY, INC.,
Defendants-Cross Appellants.
______________________
2012-1548, -1549
______________________
Appeals from the United States District Court for the
Northern District of Illinois in No. 11-CV-8540, Circuit
Judge Richard A. Posner.
______________________
Decided: April 25, 2014
______________________
E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sut-
cliffe LLP, of New York, New York, argued for plaintiffs-
ppellants. With him on the brief were MARK S. DAVIES,
RACHEL M. MCKENZIE and T. VANN PEARCE, JR. of Wash-
ington, DC; and MATTHEW D. POWERS, Tensegrity Law
Group LLP, of Redwood Shores, California. Of counsel
was KATHERINE M. KOPP, Orrick, Herrington & Sutcliffe
LLP, of Washington, DC.
2 APPLE INC. v. MOTOROLA, INC.
DAVID A. NELSON, Quinn Emanuel Urquhart & Sulli-
van, LLP, argued for defendants-cross appellants. With
him on the brief were STEPHEN A. SWEDLOW; BRIAN C.
CANNON, of Redwood Shores, California; KATHLEEN M.
SULLIVAN and EDWARD J. DEFRANCO, of New York, New
York; and CHARLES K. VERHOEVEN, of San Francisco,
California. Of counsel were RAYMOND N. NIMROD and
DAVID ELIHU, of New York, New York; and AMANDA SCOTT
WILLIAMSON, of Chicago, Illinois.
JOEL DAVIDOW, Cuneo, Gilbert & LaDuca, LLP, of
Washington, DC, for amicus curiae The American Anti-
trust Institute. With him on the brief was ROBERT J.
CYNKAR.
CHARLES W. SHIFLEY, Banner & Witcoff, Ltd., of Chi-
cago, Illinois, for amicus curiae The Intellectual Property
Law Association of Chicago.
DEBRA J. MCCOMAS, Haynes and Boone, LLP, of Dal-
las, Texas, for amici curiae Altera Corporation, et al.
With her on the brief was DAVID L. MCCOMBS. Of counsel
on the brief were MARTA BECKWITH, Cisco Systems, Inc.,
of San Jose, California; ELIZABETH LAUNER, Logitech Inc.,
of Newark, California; and RICHARD J. LUTTON, JR., Nest
Labs, Inc., of Palo Alto, California.
RICHARD M. BRUNELL, Senior Advisor for competition
matters, United States Federal Trade Commission, of
Washington, DC, for amicus curiae United States Federal
Trade Commission. With him on the brief were DAVID C.
SHONKA, Acting General Counsel, WILLIAM COHEN, Depu-
ty General Counsel, WILLIAM F. ADKINSON, JR., Attorney
and SUZANNE MUNCK af ROSENCHOLD, Chief Counsel for
Intellectual Property.
PETER M. LANCASTER, Dorsey & Whitney LLP, of
Minneapolis, Minnesota, for amicus curiae The Institute
APPLE INC. v. MOTOROLA, INC. 3
of Electrical and Electronics Engineers, Incorporated.
With him on the brief were MICHAEL A. LINDSAY, of Min-
neapolis, Minnesota, and EILEEN M. LACH, General Coun-
sel and Chief Compliance Officer IEEE, of New York, New
York.
PAUL D. CLEMENT, Brancroft PLLC, of Washington,
DC, for amici curiae Verizon Communications Inc., et al.
With him on the brief was D. ZACHARY HUDSON.
TINA M. CHAPPELL, Director of Intellectual Property
Policy, Intel Corporation, of Chandler, Arizona, for amicus
curiae Intel Corporation. With her on the brief were
THOMAS G. HUNGER and MATTHEW D. MCGILL, Gibson,
Dunn & Crutcher LLP, of Washington, DC.
RICHARD S. TAFFET, Bingham McCutchen LLP, of New
York, New York, for amicus curiae Qualcomm Incorpo-
rated. With him on the brief were PATRICK STRAWBRIDGE,
of Boston, Massachusetts and DAVID B. SALMONS, of
Washington, DC.
BRIAN R. MATSUI, Morrison & Foerster LLP, of Wash-
ington, DC, for amicus curiae Law Professors Thomas F.
Cotter, et al. With him on the brief was NATALIE R. RAM.
ROY T. ENGLERT, JR., Robbins, Russell, Englert, Or-
seck, Untereiner & Sauber LLP, of Washington, DC, for
amicus curiae, BSA │The Software Alliance.
PATRICK J. FLINN, Alston and Bird LLP, of Atlanta,
Georgia, for amici curiae Nokia Corporation, et al. With
him on the brief was KEITH E. BROYLES.
BRIAN C. RIOPELLE, McGuire Woods LLP, of Rich-
mond, Virginia, for amicus curiae Research in Motion
Limited. With him on the brief were ROBERT M. TYLER
and KRISTEN M. CALLEJA.
4 APPLE INC. v. MOTOROLA, INC.
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, of
Chicago, Illinois, for amicus curiae Microsoft Corporation.
With him on the brief were RICHARD A. CEDEROTH and
NATHANIEL C. LOVE. Of counsel on the brief were T.
ANDREW CULBERT and DAVID E. KILLOUGH, Microsoft
Corporation, of Redmond, West Virginia.
______________________
Before RADER, Chief Judge, PROST and REYNA, Circuit
Judges.
Opinion for the court filed by Circuit Judge REYNA.
Opinion dissenting in part filed by Chief Judge
RADER.
Opinion concurring in part and dissenting in part
filed by Circuit Judge PROST.
REYNA, Circuit Judge
Plaintiffs Apple Inc. and Next Software, Inc. (“Apple”)
filed a complaint against Defendants Motorola, Inc. and
Motorola Mobility, Inc. (“Motorola”) on October 29, 2010
in the United States District Court for the Western Dis-
trict of Wisconsin, asserting infringement of three pa-
tents. Motorola counterclaimed, asserting six of its own
patents. Apple amended its complaint to include an
additional twelve patents. Both parties also sought
declaratory judgments of non-infringement and invalidity.
After claim construction began in Wisconsin, the case
was transferred to the United States District Court for
the Northern District of Illinois, Judge Posner sitting by
designation. The district court in Illinois completed claim
construction. Based upon its claim construction decisions,
the court granted summary judgment of non-infringement
with respect to certain claims and excluded the vast
majority of both parties’ damages expert evidence for the
remaining claims. With little expert evidence deemed
APPLE INC. v. MOTOROLA, INC. 5
admissible, the court granted summary judgment that
neither side was entitled to any damages or an injunction.
Despite infringement being assumed, the district court
dismissed all claims with prejudice before trial.
Only six patents are at issue on appeal: Apple’s U.S.
Patent Nos. 7,479,949; 6,343,263; and 5,946,647; and
Motorola’s U.S. Patent Nos. 6,359,898; 6,175,559; and
5,319,712. The parties contest the district court’s claim
construction, admissibility, damages, and injunction
decisions. As detailed below, we affirm the district court’s
claim construction decisions, with the exception of its
construction of Apple’s ’949 patent. With a minor excep-
tion, the district court’s decision to exclude the damages
evidence presented by both Apple and Motorola is re-
versed. We also reverse the district court’s grant of
summary judgment of no damages for infringement of
Apple’s patents. Based upon our reversal of the district
court’s claim construction of the ’949 patent, we vacate
the court’s grant of summary judgment regarding Apple’s
request for an injunction. The court’s decision that
Motorola is not entitled to an injunction for infringement
of the FRAND-committed ’898 patent is affirmed. We
address these, and all related issues, in turn.
CLAIM CONSTRUCTION
The parties raise claim construction issues regarding
Apple’s ’949, ’263, and ’647 patents and Motorola’s ’559
and ’712 patents. Claim construction is a question of law
that we review de novo. Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc).
Apple’s ’949 patent
The district court construed claims 1, 2, 9, and 10 of
the ’949 patent and, based upon its construction, granted
Motorola’s motion for summary judgment of non-
infringement for the majority of the accused products.
Because the district court mistakenly construed certain
6 APPLE INC. v. MOTOROLA, INC.
limitations as means-plus-function limitations, we reverse
its claim construction and vacate the subsequent sum-
mary judgment decision.
The ’949 patent discloses the use of finger contacts to
control a touchscreen computer. Claims 1, 2, 9, and 10 of
the ’949 patent are recited below, with the limitations at
issue emphasized. Claim 1 recites:
A computing device, comprising: a touch screen
display; one or more processors; memory; and one
or more programs,
wherein the one or more programs are stored in
the memory and configured to be executed by the
one or more processors, the one or more programs
including:
instructions for detecting one or more finger con-
tacts with the touch screen display;
instructions for applying one or more heuristics to
the one or more finger contacts to determine a
command for the device; and
instructions for processing the command;
wherein the one or more heuristics comprise:
a vertical screen scrolling heuristic for determin-
ing that the one or more finger contacts corre-
spond to a one-dimensional vertical screen
scrolling command rather than a two-dimensional
screen translation command based on an angle of
initial movement of a finger contact with respect to
the touch screen display;
a two-dimensional screen translation heuristic for
determining that the one or more finger contacts
correspond to the two-dimensional screen transla-
tion command rather than the one-dimensional
vertical screen scrolling command based on the
APPLE INC. v. MOTOROLA, INC. 7
angle of initial movement of the finger contact with
respect to the touch screen display; and
a next item heuristic for determining that the one
or more finger contacts correspond to a command
to transition from displaying a respective item in
a set of items to displaying a next item in the set
of items.
’949 patent at col. 122 l. 37 - col. 123 l. 2 (emphases add-
ed). Claim 2 recites:
The computing device of claim 1, wherein the one
or more heuristics include a heuristic for deter-
mining that the one or more finger contacts corre-
spond to a command to translate content within a
frame rather than translating an entire page that
includes the frame.
Id. at col. 123, lns 3-7 (emphasis added). Claim 10 recites:
The computing device of claim 9, wherein the first
set of heuristics comprises a heuristic for deter-
mining that the one or more first finger contacts
correspond to a one-dimensional horizontal screen
scrolling command rather than the two-
dimensional screen translation command based on
the angle of initial movement of the finger contact
with respect to the touch screen display.
Id. at col. 124, ll. 1-7. The district court first found that
the claim term “heuristic” was not indefinite, instead
construing it as “one or more rules to be applied to data to
assist in drawing inferences from that data.” Next, the
court found that the “heuristic” limitations in claims 1, 2,
9, and 10 described functions “without describing the
structure necessary to perform the functions.” According-
ly, the court concluded that these claim limitations were
means-plus-function limitations under 35 U.S.C. § 112,
¶6, despite not reciting the word “means.” The court next
8 APPLE INC. v. MOTOROLA, INC.
found that the specification contained sufficient “corre-
sponding structure” capable of performing the claimed
functions. 35 U.S.C. § 112. In doing so, the court limited
the “next item heuristic” in claim 1 to “a heuristic that
uses as one input a user’s finger tap on the right side of
the device’s touch screen.” Based upon this construction,
Motorola moved for summary judgment of non-
infringement. The court concluded that the only accused
products that use a “finger tap” in this manner are those
that come pre-loaded with a specific program: the Amazon
Kindle application. The court granted Motorola’s motion
for summary judgment of non-infringement for the re-
maining accused products.
On appeal, Motorola again argues that “heuristic” is
indefinite. In the alternative, Motorola argues that the
district court correctly concluded that the heuristic limita-
tions were drafted in means-plus-function format and
correctly limited the “next item heuristic” limitation to
the finger tap gesture. Apple points out that the claims
do not use the word “means” and that this creates a
strong presumption against construing the limitations as
means-plus-function limitations. Apple argues that the
heuristic limitations connote sufficiently definite struc-
ture such that Motorola has not overcome this strong
presumption.
Whether claim language invokes Section 112, ¶6 is a
question of law that we review de novo. Inventio AG v.
ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350,
1356 (Fed. Cir. 2011); Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004).
Section 112, ¶6 states:
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such
claim shall be construed to cover the correspond-
APPLE INC. v. MOTOROLA, INC. 9
ing structure, material, or acts described in the
specification and equivalents thereof.
35 U.S.C. § 112, ¶6. The overall means-plus-function
analysis is a two-step process. Naturally, there is some
analytical overlap between these two steps. In the first
step, we must determine if the claim limitation is drafted
in means-plus-function format. As part of this step, we
must construe the claim limitation to decide if it connotes
“sufficiently definite structure” to a person of ordinary
skill in the art, which requires us to consider the specifi-
cation (among other evidence). In the second step, if the
limitation is in means-plus-function format, we must
specifically review the specification for “corresponding
structure.” Thus, while these two “structure” inquiries
are inherently related, they are distinct.
The Dissent is concerned that we have impermissibly
looked for corresponding structure in the specification
before deciding that the claim is in means-plus-function
format thereby creating a new rule that renders “every
means-plus-function claim term indefinite.” J. Prost
Dissent at 3-4 (emphasis in original) (“Dissent”). This is
not our analysis. The Dissent correctly notes that the
first step in the means-plus-function analysis requires us
to determine whether the entire claim limitation at issue
connotes “sufficiently definite structure” to a person of
ordinary skill in the art. Dissent at 2-3. In so doing, we
naturally look to the specification, prosecution history,
and relevant external evidence to construe the limitation.
While this inquiry may be similar to looking for corre-
sponding structure in the specification, our precedent
requires it when deciding whether a claim limitation
lacking means connotes sufficiently definite structure to a
person of ordinary skill in the art. See, e.g., Inventio, 649
F.3d at 1357 (“It is proper to consult the intrinsic record,
including the written description, when determining if a
challenger has rebutted the presumption that a claim
lacking the term ‘means’ recites sufficiently definite
10 APPLE INC. v. MOTOROLA, INC.
structure.”); Lighting World, 382 F.3d at 1360-64 (exam-
ining the written description and external evidence); Flo
Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374
(Fed. Cir. 2012) (examining remaining claim language,
written description, and external evidence); Linear Tech.
Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed.
Cir. 2004) (examining remaining claim language and
external evidence). Because these inquiries are distinct,
it is possible to find that a claim limitation does not
connote sufficiently definite structure despite the pres-
ence of some corresponding structure in the specification.
See, e.g., Massachusetts Inst. of Tech. v. Abacus Software,
462 F.3d 1344, 1355 (Fed. Cir. 2006) (“MIT”); Welker
Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096-97 (Fed.
Cir. 2008). As such, not “every” mean-plus-function
limitation is indefinite under our precedent; only those
that lack the term means, do not connote sufficiently
definite structure, and lack corresponding structure. We
do not state or apply a different rule in this case. In this
case, as we find that the claims connote sufficiently
definite structure to a person of ordinary skill in the art,
we do not reach the second step of the means-plus-
function analysis.
As the district court recognized, when a claim limita-
tion lacks the term “means,” it creates a rebuttable pre-
sumption that Section 112, ¶6 does not apply. See, e.g.,
Lighting World, 382 F.3d at 1358; CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).
This presumption may be overcome if the claim fails to
recite “sufficiently definite structure” or merely recites a
“function without reciting sufficient structure for perform-
ing that function.” Linear, 379 F.3d at 1319 (quoting
Watts v. XL Sys. Inc., 232 F.3d 887, 880 (Fed. Cir. 2000));
see also Inventio, 649 F.3d at 1356. We have repeatedly
characterized this presumption as “strong” and “not
readily overcome” and, as such, have “seldom” held that a
limitation without recitation of “means” is a means-plus-
APPLE INC. v. MOTOROLA, INC. 11
function limitation. Lighting World, 382 F.3d at 1358,
1362; Inventio, 649 F.3d at 1356; see also Flo Healthcare,
697 F.3d at 1374 (“When the claim drafter has not sig-
naled his intent to invoke § 112, ¶ 6 by using the term
‘means,’ we are unwilling to apply that provision without
a showing that the limitation essentially is devoid of
anything that can be construed as structure.”).
The Dissent suggests that choosing to include “means”
in a claim limitation is a “minor drafting decision” that
correspondingly merits little weight in a Section 112, ¶6
analysis. Dissent at 7. We disagree. The strong pre-
sumption created by not including means in a claim
limitation provides clarity and predictability for the
public and the patentee alike. It helps the public deter-
mine when claim elements are expressly limited to struc-
tures disclosed in the specification (or their equivalents)
and provides the patentee with the tools for reliably
invoking or avoiding means-plus-function claiming. It
also signals to the court that the patentee has chosen to
avail, or avoid, the benefits of Section 112, ¶6. We recog-
nize that the choice to draft a claim in “broad structural
terms” rather than in a means-plus-function format may
render the claim more vulnerable to an invalidity attack.
Id. Whether to draft a claim in broad structural terms is
the claim drafter’s choice, and any resulting risk that
emanates from that choice is not a basis for the court to
rewrite a claim in means-plus-function format. See id.
By focusing on the claim terms the patentee chose, this
presumption also reaffirms the primacy of the claim
language during claim construction, as outlined in Phil-
lips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005). Here,
as in all aspects of claim construction, “the name of the
game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of
Protection and Interpretation of Claims–American Per-
spectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497,
499 (1990)).
12 APPLE INC. v. MOTOROLA, INC.
In this case, Motorola bears the burden of overcoming
the presumption that Section 112, ¶6 does not apply by a
preponderance of the evidence. See Apex Inc. v. Raritan
Computer, Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003). The
district court made several erroneous findings that led it
to incorrectly conclude that Motorola rebutted this strong
presumption. The district court misapplied our precedent
by requiring the claim limitations of the ’949 patent
themselves to disclose “a step-by-step algorithm as re-
quired by Aristocrat Technologies.” Aristocrat and related
cases hold that, if a patentee has invoked computer-
implemented means-plus-function claiming, the corre-
sponding structure in the specification for the computer
implemented function must be an algorithm unless a
general purpose computer is sufficient for performing the
function. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (requiring
disclosure of an algorithm when it is not disputed that
claims were drafted in means-plus-function format); WMS
Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349
(Fed. Cir. 1999) (same); ePlus, Inc. v. Lawson Software,
Inc., 700 F.3d 509, 518 (Fed. Cir. 2012); Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir.
2011). But see In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (find-
ing that disclosure of a general purpose computer is
sufficient corresponding structure for means-plus-function
claims).
In all these cases, the claims recited the term
“means,” thereby expressly invoking means-plus-function
claiming. In addition, the parties in these cases did not
dispute on appeal that these claims were drafted in
means-plus-function format. Hence, where a claim is not
drafted in means-plus-function format, the reasoning in
the Aristocrat line of cases does not automatically apply,
and an algorithm is therefore not necessarily required.
The correct inquiry, when “means” is absent from a limi-
APPLE INC. v. MOTOROLA, INC. 13
tation, is whether the limitation, read in light of the
remaining claim language, specification, prosecution
history, and relevant extrinsic evidence, has sufficiently
definite structure to a person of ordinary skill in the art.
Here, the answer is yes.
“Structure” to a person of ordinary skill in the art of
computer-implemented inventions may differ from more
traditional, mechanical structure. For example, looking
for traditional “physical structure” in a computer software
claim is fruitless because software does not contain physi-
cal structures. Indeed, the typical physical structure that
implements software, a computer, cannot be relied upon
to provide sufficiently definite structure for a software
claim lacking “means.” Rather, to one of skill in the art,
the “structure” of computer software is understood
through, for example, an outline of an algorithm, a
flowchart, or a specific set of instructions or rules. See,
e.g., Typhoon Touch, 659 F.3d at 1385 (“[T]he patent need
only disclose sufficient structure for a person of skill in
the field to provide an operative software program for the
specified function.”); Finisar Corp. v. DirecTV Grp., Inc.,
523 F.3d 1323, 1340 (Fed. Cir. 2008). 1 Requiring tradi-
tional physical structure in software limitations lacking
the term means would result in all of these limitations
being construed as means-plus-function limitations and
subsequently being found indefinite.
1 We cite these cases as examples of “structure” to a
person ordinarily skilled in the art of computer software.
We do not cite these cases for the principle that we must
review the specification, prosecution history, and relevant
external evidence when deciding if a claim limitation
connotes structure. See Dissent at fn. 2. As discussed
herein, there is ample support for that proposition else-
where. See, e.g., Inventio, 649 F.3d at 1356-57.
14 APPLE INC. v. MOTOROLA, INC.
A limitation has sufficient structure when it recites a
claim term with a structural definition that is either
provided in the specification or generally known in the
art. See, e.g., Flo Healthcare, 697 F.3d at 1374 (“We will
not apply § 112, ¶ 6 if the limitation contains a term that
‘is used in common parlance or by persons of skill in the
pertinent art to designate structure.’”) (quoting Lighting
World, 382 F.3d at 1359); Personalized Media, 161 F.3d at
704-05. In Personalized Media, we found that the claim
term “detector,” by itself, connoted sufficient structure to
a person of ordinary skill in the art. 161 F.3d at 704-05
(agreeing with ALJ that “‘detector’ had a well-known
meaning to those of skill in the electrical arts connotative
of structure”). There, we contrasted the structural term
“detector” with generic, non-structural, terms such as
“means,” “element,” and “device.” Id. at 705; see also
Apex, 325 F.3d at 1373 (finding that the term “circuit,”
coupled with identifiers such as “interface,” “program-
ming,” and “logic,” connoted sufficient structure to a
person of ordinary skill in the art).
Structure may also be provided by describing the
claim limitation’s operation, such as its input, output, or
connections. The limitation’s operation is more than just
its function; it is how the function is achieved in the
context of the invention. For example, in Linear, we
found that the claim term “circuit” has a known structural
definition and that the patent described the circuit’s
operation, including its input, output, and objective. 379
F.3d at 1320-21. Similarly, in Lighting World, we found
that “connector” had a known structural definition and
that the specification described its operational require-
ments, including which claim elements it was connected
to and how they were connected. 382 F.3d at 1361-63. In
both cases, we found the presumption against means-
plus-function claiming was unrebutted.
Even if a patentee elects to use a “generic” claim term,
such as “a nonce word or a verbal construct,” properly
APPLE INC. v. MOTOROLA, INC. 15
construing that term (in view of the specification, prosecu-
tion history, etc.) may still provide sufficient structure
such that the presumption against means-plus-function
claiming remains intact. Id. at 1360; see also Inventio,
649 F.3d at 1356-57 (“Claims are interpreted in light of
the written description supporting them, and that is true
whether or not the claim construction involves interpret-
ing a ‘means’ clause.”); MIT, 462 F.3d at 1354 (“The
generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘de-
vice,’ typically do not connote sufficiently definite struc-
ture.”). For example, in Inventio, the claim included the
generic term “device.” 649 F.3d at 1354 (reciting “at least
one modernizing device and connecting the at least one
modernizing device to said floor terminals and said at
least one computing unit.”) (emphasis added). However,
the specification described the modernizing device’s input,
output, internal components, and how the internal com-
ponents were interconnected. Id. at 1358-59. As such,
the presumption against means-plus-function treatment
was not overcome. See also Flo Healthcare, 697 F.3d at
1374-75 (noting that “mechanism” is a generic term, but
then looking to remaining claim language and written
description before finding that the full claim limitation
connoted structure). These cases teach that, if a limita-
tion recites a term with a known structural meaning, or
recites either a known or generic term with a sufficient
description of its operation, the presumption against
means-plus-function claiming remains intact.
The limitation need not connote a single, specific
structure; rather, it may describe a class of structures.
See, e.g., Personalized Media Commc’ns, LLC v. Int’l
Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) (“Even
though the term ‘detector’ does not specifically evoke a
particular structure, it does convey to one knowledgeable
in the art a variety of structures known as ‘detectors.’”);
Flo Healthcare, 697 F.3d at 1374-75 (finding that claim
term “height adjustment mechanism” designates “a class
16 APPLE INC. v. MOTOROLA, INC.
of structures that are generally understood to persons of
skill in the art”). Indeed, even if the patent describes all
structures that perform the recited function, this, by
itself, does not overcome the strong presumption that
means-plus-function claiming does not apply when the
term “means” is not recited in the claim. Lighting World,
382 F.3d at 1361-62.
By contrast, if the claim merely recites a generic
nonce word and the remaining claim language, specifica-
tion, prosecution history, and relevant external evidence
provide no further structural description to a person of
ordinary skill in the art, then the presumption against
means-plus-function claiming is rebutted. In MIT, for
example, the claims recited a “colorant selection mecha-
nism.” 462 F.3d at 1353. As noted, “mechanism” by itself
does not connote sufficient structure, and the term “color-
ant selection” was not defined in the specification or
otherwise known to a person of ordinary skill in the art.
Id. at 1353-55. Further, the patentee used the terms
“mechanism” and “means” interchangeably in the specifi-
cation. Id. at 1354; see also Mas-Hamilton Grp. v.
LaGard Inc., 156 F.3d 1206, 1214-16 (Fed. Cir. 1998)
(claim recited “element” and “member” and patent provid-
ed no further structural description of these generic
terms); Welker Bearing, 550 F.3d at 1096-97 (claim recited
a “mechanism” without further structure described in
specification). Thus, if a claim recites a generic term that,
properly construed in light of the specification, lacks
sufficiently definite structure to a person of ordinary skill
in the art, the presumption is overcome and the patentee
has invoked means-plus-function claiming.
With this precedent in mind, we turn to the claim lim-
itations at issue in the ’949 patent. We find that “heuris-
tic” has a known meaning and the ’949 patent also
describes the limitation’s operation, including its input,
output, and how its output may be achieved. Accordingly,
the heuristic claim limitations recited above have “suffi-
APPLE INC. v. MOTOROLA, INC. 17
ciently definite structure,” to a person of ordinary skill in
the art, for performing the recited functions.
Broadly speaking, the function of the recited limita-
tions is to identify a command based upon particular
finger contacts. To achieve this function, the patent
describes “heuristics.” Depending upon the circumstanc-
es, heuristic is not necessarily a generic, structureless
“nonce word or a verbal construct” without any meaning,
such as “mechanism,” “means,” “element,” or “widget.”
The district court correctly determined that a person of
ordinary skill in the art would understand “heuristic” to
mean “one or more rules to be applied to data to assist in
drawing inferences from that data.” In this sense, “heu-
ristic” is similar to words that define a class of structures,
such as “connector,” “circuit,” and “detector,” and it does
not include all means for performing the recited function.
See, e.g., Flo Healthcare, 697 F.3d at 1374 (“We will not
apply § 112, ¶ 6 if the limitation contains a term that ‘is
used in common parlance or by persons of skill in the
pertinent art to designate structure’”) (quoting Lighting
World, 382 F.3d at 1359); Personalized Media, 161 F.3d at
704-05. The fact that heuristic is defined partly in terms
of its function does not detract “from the definiteness of
[the] structure” it may connote. Personalized Media, 161
F.3d at 703-05. Indeed, “many devices take their names
from the functions they perform.” Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996);
see also MIT, 462 F.3d at 1354; Lighting World, 382 F.3d
at 1359-60.
We need not decide here whether the term “heuristic,”
by itself, connotes sufficient structure to maintain the
presumption against means-plus-function claiming be-
cause, in this case, the claims do not nakedly recite heu-
ristics without further description in the remaining claim
language and specification. To the contrary, the claim
language and specification disclose the heuristics’ opera-
18 APPLE INC. v. MOTOROLA, INC.
tion within the context of the invention, including the
inputs, outputs, and how certain outputs are achieved.
In all cases, the claimed input is a finger contact. The
specification explains that the finger contacts may be
taps, swipes, double taps, or finger rolling, and may
involve one or two fingers contacting the screen at differ-
ent initial angles. See, e.g., ’949 Patent at col. 19, ll. 30-
46; col. 65, ll. 21-24; col. 66, ll. 47-51. The claims recite
heuristics with varying objectives, including vertical
screen scrolling, two-dimensional screen translation,
moving to the next item in a list, and translating content
within a frame. The claims also explain that the inven-
tion differentiates between vertical scrolling and two-
dimensional translation based upon the angle of initial
movement of the finger contact.
The written description provides further details re-
garding the heuristics’ inputs and outputs. Regarding
one-dimensional vertical screen scrolling, the specification
explains that “in response to an upward swipe gesture
3937 by the user that is within a predetermined angle
(e.g., 27º) of being perfectly vertical, the web page may
scroll one-dimensionally upward in the vertical direc-
tion.” ’949 Patent at col. 64, ll. 21-25. Regarding two-
dimensional translation, the specification discloses that
“in response to an upward swipe gesture 3939 (FIG. 39C)
by the user that is not within a predetermined angle (e.g.,
27º) of being perfectly vertical, the web page may scroll
two-dimensionally along the direction of the swipe.” Id. at
col. 64, ll. 30-34. The specification defines two-
dimensional movement as “simultaneous movement in
both the vertical and horizontal directions.” Id. The
specification explains how a user can move to the next
item in a list via a finger tap gesture on the right side of
the screen, a right-to-left finger swipe, or by tapping a
next image icon. Id. at col. 30, ll. 42-67.
APPLE INC. v. MOTOROLA, INC. 19
The specification also discusses the structure behind
translating “content within a frame rather than translat-
ing the entire page that includes the frame.” Id. at col.
123, ll. 6-8. For performing this function, the specification
describes an “M-finger translation gesture 4214,” where
M is a number different from the number of fingers used
to translate the entire page. Id. at col. 75, ll. 18-26. The
specification also explains that the direction of translation
may be the direction of the “movement of the M-finger
translation gesture.” Id. at col. 75, ll. 34-35. Alternative-
ly, the direction of translation may be determined by the
angle of the movement of the M-finger gesture, according
to a particular rule, i.e. a specific, identifying heuristic.
Id. at col. 75, ll. 39-44.
The figures in the ’949 patent provide further struc-
tural details. Figs. 12A, 39C, 42A, 42B, and 42C illus-
trate the finger contacts described in the specification
that result in vertical scrolling (3937), two-dimensional
translation (3939), turning to the next item (1218, 1220,
and 1212), or translating within a frame (4214).
APPLE INC. v. MOTOROLA, INC. 21
number of fingers making contact, the direction of move-
ment of a finger contact, a specific swiping gesture, taping
a certain location on the screen, or the angle of movement
of a finger on the screen. See Welker Bearing, 550 F.3d at
1096-97; Inventio, 649 F.3d at 1359 (“This is not a case
where a claim nakedly recites a ‘device’ and the written
description fails to place clear structural limitations on
the ‘device.’”). Thus, the ’949 patent recites a claim term
with a known meaning and also describes its operation,
including its input, output, and how its output may be
achieved.
Accordingly, the heuristic claim limitations provide
“sufficiently definite structure,” to a person of ordinary
skill in the art, for performing the recited function, and
Motorola has not rebutted the strong presumption against
means-plus-function claiming. We reverse the district
court’s construction that the “heuristic” claim limitations
were drafted in means-plus-function format and vacate its
summary judgment of non-infringement.
Apple’s ’647 Patent
Regarding Apple’s ’647 patent, the parties dispute the
meaning of the claim terms “analyzer server” and “linking
actions to the detected structures.” The district court
construed “analyzer server” as “a server routine separate
from a client that receives data having structures from
the client” and “linking actions to the detected structures”
as “creating a specified connection between each detected
structure and at least one computer subroutine that
causes the CPU to perform a sequence of operations on
that detected structure.” Apple argues that both con-
structions are erroneous. We disagree with Apple and
affirm the district court’s claim construction.
The ’647 patent discloses a system for recognizing cer-
tain structures (such as a telephone number) on a
touchscreen and then linking certain actions (such as
calling the telephone number) to the structure. For
22 APPLE INC. v. MOTOROLA, INC.
example, a user may be able to call or save a phone num-
ber it has received via text message or email simply by
touching the number on the screen of its device. Claim 1
of the ’647 patent, with relevant claim limitations empha-
sized, recites:
A computer-based system for detecting structures
in data and performing actions on detected struc-
tures, comprising:
an input device for receiving data;
an output device for presenting the data;
a memory storing information including program
routines including an analyzer server for detecting
structures in the data, and for linking actions to
the detected structures;
a user interface enabling the selection of a detect-
ed structure and a linked action;
and an action processor for performing the select-
ed action linked to the selected structure; and a
processing unit coupled to the input device, the
output device, and the memory for controlling the
execution of the program routines.
’647 patent at col. 7, ll. 9-24 (emphasis added). The
district court agreed with Motorola that “analyzer server”
should be construed as “a server routine separate from a
client that receives data having structures from the
client.” Apple argues that the analyzer server need not be
“separate from a client.” Instead, Apple argues that
“analyzer server” should be construed as “a program
routine(s) that receives data, uses patterns to detect
structures in the data, and links actions to the detected
structures.”
We agree with the district court’s construction of “an-
alyzer server.” As the district court recognized, the plain
meaning of “server,” when viewed from the perspective of
APPLE INC. v. MOTOROLA, INC. 23
a person of ordinary skill in the art, entails a client-server
relationship. Consistent with this perspective, the speci-
fication discloses an analyzer server that is separate from
the application it serves. The analyzer server is part of
the “program 165 of the present invention.” ’647 patent at
col. 3, ll. 38-39. Fig. 1 shows the program 165 and the
application 167 as separate parts of a random-access
memory (RAM):
Id. at Fig. 1. Further, the specification states that “the
program 165 of the present invention is stored in RAM
170 and causes CPU 120 to identify structures in data
presented by the application 167.” Id. at col. 3, ll. 37-41.
Thus, the specification describes the analyzer server and
the application, which it serves, as separate structures.
Apple does not point to evidence suggesting a differ-
ent ordinary meaning, nor do we discern such evidence in
the record before this court. Indeed, Apple’s proposed
construction contradicts the claim language because it
reads “analyzer server” out of the claim. The claim recites
“routines including an analyzer server for detecting struc-
tures in the data, and for linking actions to the detected
structures.” Apple’s proposed construction recites pro-
gram routines that detect structures and links actions to
the detected structures, without any mention of “analyzer
servers.” Apple’s construction essentially takes the claim
text and removes the “analyzer server,” leaving the rest
24 APPLE INC. v. MOTOROLA, INC.
basically unchanged. Thus, Apple’s construction conflicts
with the claim language by ignoring the claim term
“server.” See, e.g., Merck & Co. v. Teva Pharms. USA,
Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim con-
struction that gives meaning to all the terms of the claim
is preferred over one that does not do so.”); Pause Tech.,
LLC v. TiVo, Inc., 419 F.3d 1326, 1334 (Fed. Cir. 2005)
(“In construing claims, however, we must give each claim
term the respect that it is due.”); Strattec Sec. Corp. v.
Gen. Auto. Specialty Co., 126 F.3d 1411, 1417 (Fed. Cir.
1997) (holding that it was legal error for the district court
to instruct the jury that the claim term “sheet” was not
properly considered part of the claim); Exxon Chem.
Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed.
Cir. 1995) (“We must give meaning to all the words in
Exxon's claims.”). By contrast, the district court’s con-
struction comports with the ordinary meaning of “server”
and is supported by the specification. Accordingly, we
affirm the district court’s construction of “analyzer serv-
er.”
The district court also agreed with Motorola that
“linking actions to the detected structures” should be
construed as “creating a specified connection between
each detected structure and at least one computer subrou-
tine that causes the CPU to perform a sequence of opera-
tions on that detected structure.” Apple argues that the
district court’s construction is erroneous for two reasons.
First, the district court incorrectly added the “specified
connection” limitation. Second, the claims require link-
ing multiple actions to each structure, rather than “at
least one.” Apple contends that the correct construction is
“associating detected structures to computer subroutines
that cause the CPU to perform a sequence of operations
on the particular structure to which they are associated.”
We agree with the district court. Apple argues that
the claims require only “associating” between the struc-
ture and the subroutines but ignores that the claims
APPLE INC. v. MOTOROLA, INC. 25
recite “linking.” From a general sense, the plain meaning
of associating relates to a mere commonality, while link-
ing infers a joining. Additionally, the specification here
demonstrates that linking is more than just associating.
The patent consistently differentiates between associating
and linking and implies that linking is a more specific
connection than merely associating. For example, the
specification explains that actions are “associated” with
specific “grammars” or “patterns,” and that “linking”
occurs only after these grammars or patterns are “detect-
ed.” See, e.g., ’647 patent at col. 5, ll. 59-61 (“upon detec-
tion of a structure based on a particular pattern, actions
associated with the particular pattern are linked 825 to
the detected structure”); col. 7, ll. 38-39 (“wherein the
analyzer server links to a detected structure the actions
associated with the grammar”); col. 3, ll. 65-67 (“analyzer
server 220 links actions associated with the responsible
pattern to the detected structure, using conventional
pointers”); col. 5, ll. 31-33 (“analyzer server 220 links the
actions associated with grammars 410 and strings 420 to
these identified structures”) (emphases added).
Apple argues that requiring a “specified connection”
limits the claims to the use of the “pointers” described in
the specification. The district court explained that a
pointer is “a term of art in computer engineering” that
“stores a computer memory address.” The specification
explains that pointers may be used to link the associated
actions to the detected structures. ’647 patent at col. 3, ll.
65-67 (“upon detection of a structure, analyzer server
links actions associated with the responsible pattern to
the detected structure, using conventional pointers”); col.
4, l. 64 – col. 5, l. 5 (“[U]pon identification of a structure in
the text, parser links the actions associated with the
grammar to the identified structure. More particularly,
parser retrieves from grammar file pointers attached to
the grammar and attaches the same pointers to the
identified structure. These pointers direct the system to
26 APPLE INC. v. MOTOROLA, INC.
the associated actions contained in associated actions file.
Thus, upon selection of the identified structure, user
interface can locate the linked actions.”).
Although the district court stated that the specifica-
tion “makes clear that linking is accomplished through
pointers,” it did not, as Apple argues, actually limit the
claims to “pointers.” Rather, the court interpreted linking
to require a “specified connection,” not just a connection
established with the use of pointers. The specification
explains that linking may be accomplished through the
use of pointers but does not require their use and neither
did the district court. Thus, the district court’s construc-
tion comports with the specification, including the repeat-
ed differentiation between linking and associating and the
pointers embodiment described therein.
Apple is also incorrect that the claims require each
structure to be linked with multiple actions. Apple points
to the claim’s recitation of the plural “actions.” See ’647
patent at col. 7, ll. 17-18 (“an analyzer server for detecting
structures in the data, and for linking actions to the
detected structures”) (emphasis added). The plain lan-
guage of the claims does not require multiple actions for
each structure because the claim recites linking multiple
actions to multiple structures. As such, the plural “ac-
tions” may be reasonably read as at least one action per
structure. In fact, Fig. 4 displays an example of the
invention with only one action linked to a specific struc-
ture.
APPLE INC. v. MOTOROLA, INC. 27
‘647 patent at Fig. 4. In Fig. 4, the “date grammar”
structure only has one corresponding action, “put in
electronic calendar.” This directly contradicts Apple’s
proposal to require the claims to link multiple actions to
each structure. ’647 patent at Fig. 4. Accordingly, we
affirm the district court’s construction of “linking actions
to the detected structures.”
Apple’s ’263 Patent
The ’263 patent discloses a system for processing data
in “realtime.” The parties dispute whether the “realtime
application program interface (API)” in claim 1 must itself
function in realtime or whether it must just facilitate
realtime processing by other subsystems. The district
court concluded that the API need just facilitate realtime
processing and construed “realtime API” as an “API that
allows realtime interaction between two or more subsys-
tems.” Motorola argues that this construction reads
“realtime” out of the claim. We disagree and affirm the
district court’s construction.
Claim 1, with the relevant limitation emphasized, re-
cites:
28 APPLE INC. v. MOTOROLA, INC.
A signal processing system for providing a plurali-
ty of realtime services to and from a number of
independent client applications and devices, said
system comprising:
a subsystem comprising a host central processing
unit (CPU) operating in accordance with at least
one application program and a device handler
program, said subsystem further comprising an
adapter subsystem interoperating with said host
CPU and said device;
a realtime signal processing subsystem for per-
forming a plurality of data transforms comprising
a plurality of realtime signal processing opera-
tions; and
at least one realtime application program inter-
face (API) coupled between the subsystem and the
realtime signal processing subsystem to allow the
subsystem to interoperate with said realtime ser-
vices.
’263 patent at col. 11, ll. 28-43 (emphasis added). The
district court noted that, generally, to be realtime, a
system “must satisfy explicitly (bounded) response-time
constraints or risk severe consequences,” such as degrad-
ed performance.
Motorola contends that the district court’s construc-
tion reads “realtime” out of the claim because it does not
require the API itself to function in realtime. Motorola
points to independent claim 31, which recites an API
without the “realtime” qualifier, and argues that, by
including realtime in claim 1, the patentee intended that
the API itself operate in realtime. See Phillips, 415 F.3d
at 1314 (finding that use of the word “steel” in the term
“steel baffles” “strongly implies” a difference between
steel baffles and non-steel baffles).
APPLE INC. v. MOTOROLA, INC. 29
We agree with the district court. The specification
describes the API as an interface that sends commands
and parameters to the “real-time engine,” which actually
performs the realtime data processing. The specification
does not describe the API itself as meeting any specific
response-time constraints or otherwise needing realtime
functionality. Instead, the API’s role is to send commands
and parameters to the real-time engine. See, e.g., ’263
patent at col. 6, ll. 33-38 (“each interface receives com-
mands from an application program, through the handler
44, and instructs the real-time engine to carry out the
necessary transforms”); col. 5, ll. 22-25 (“the particular
transforms to be performed are sent as commands to the
real-time engine from the adapter handler 44 via suitable
application programming interfaces 48”); col. 10, ll. 40-44
(“in response thereto, the API 48 which receives these
commands supplies the real-time engine with the appro-
priate parameters for performing the transforms in the
required format”). By contrast, the real-time engine is
described as performing the actual processing, such as
“text-to-speech conversion” or “video processing.” ’263
patent at abst. (“a data transmission system having a
real-time engine for processing isochronous streams of
data”); col. 10, ll. 16-18 (“the actual modulation and
demodulation of the hardware interface adapter’s isoch-
ronous PCM data stream is accomplished entirely by the
real-time engine”); col. 9, ll. 65-67 (“the handler has no
involvement with the isochronous data stream created by
the real-time engine”). Thus, although the API interacts
with the real-time engine, it is the latter that actually
performs the time-constrained processing.
Contrary to Motorola’s argument, the district court
did not read “realtime” out of the claim. The API is an
“interface.” As such, it communicates and interacts with
other subsystems that process data in realtime without
necessarily processing any data itself. This is what the
specification describes and what the district court correct-
30 APPLE INC. v. MOTOROLA, INC.
ly understood. Further, the district court’s construction
does not prevent the API from functioning in realtime, it
just does not require the API to function in realtime. This
is consistent with the claims and written description,
which only require the API to facilitate the functionality
of the real-time engine. We affirm the district court’s
claim construction.
Motorola’s ’559 Patent
Turning to Motorola’s asserted patents, the ’559 pa-
tent discloses a method for generating “preamble se-
quences,” which are used in communications between cell
phones and base stations. The district court construed
claim 5 of the ’559 patent to require that the third step
(“multiplying the outer code by the inner code”) take place
only after the first two steps (“forming an outer code” and
“forming an inner code”) are completed. Based upon this
construction, the court granted summary judgment of
non-infringement to Apple. Motorola appeals only the
claim construction decision. We affirm.
Claim 5, with relevant limitations emphasized, re-
cites:
A method for generating preamble sequences in a
CDMA system, the method comprising the steps
of:
forming an outer code in a mobile station;
forming an inner code in the mobile station utiliz-
ing the following equation:
𝑀−1
𝑐𝑐 𝑖 (𝑘𝑘) = � 𝑠𝑠 𝑗 (𝑘𝑘 − 𝑗𝑗 𝑗𝑗)
𝑗=0
where sj, j=0,1, . . . , M−1 are a set of orthogonal
codewords of length P, where M and P are positive
integers; and
APPLE INC. v. MOTOROLA, INC. 31
multiplying the outer code by the inner code to
generate a preamble sequence.
’559 patent at col. 5, ll. 20-35 (emphasis added).
Steps in a method claim need not necessarily be per-
formed in the order they are written. Altiris, Inc. v.
Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). On
the other hand, if grammar, logic, the specification, or the
prosecution history require the steps to be performed
sequentially, then the claims are so limited. Id.; Loral
Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed.
Cir. 1999) (“Although not every process claim is limited to
the performance of its steps in the order written, the
language of the claim, the specification and the prosecu-
tion history support a limiting construction in this case.”).
The district court correctly noted that, while in a pre-
ferred embodiment the inner and outer codes are formed
before the multiplication step begins, this alone does not
limit the claims. See, e.g., ’559 patent at Fig. 4. The
district court also acknowledged that the invention would
likely function even if the multiplication step began before
the full inner and outer codes were formed. Notwith-
standing the foregoing, the court construed the claims to
require that step three occur only after steps one and two
are completed.
We agree with the district court. The claims recite
multiplying “the” inner code with “the” outer code to
create a preamble “sequence.” Both the inner code and
outer code are sequences of numbers. The plain meaning
of multiplying “the” codes together is that the entire
sequences are multiplied together after they have been
formed. If claim 17 was directed to a method that multi-
plied only parts of the inner and outer code together, it
would not recite multiplying “the” codes together to form
the preamble sequence. The more natural reading of the
claim language supports the district court’s finding that
32 APPLE INC. v. MOTOROLA, INC.
the inner and outer codes must be fully formed before
they are multiplied together.
The specification supports this reading. When dis-
cussing multiplying the inner and outer codes, the specifi-
cation describes forming an inner and outer code and then
multiplying the codes together:
The present invention provides a method for gen-
erating preamble sequences in a CDMA communi-
cation system. The method comprises forming an
outer code and an inner code at a mobile station.
The mobile station then multiplies the outer code
by the inner code to generate a preamble se-
quence.
’559 patent at col. 2, ll. 52-57 (emphasis added).
Because it is supported by the plain meaning of the
claim language and the specification, we affirm the dis-
trict court’s claim construction.
Because this construction was the basis for the dis-
trict court’s grant of summary judgment of non-
infringement, we need not reach the court’s construction
of “a set of orthogonal codewords.” Accordingly, we affirm
the district court’s grant of Apple’s motion for summary
judgment of non-infringement of the ’559 patent based
upon its construction that the steps of claim 17 be per-
formed in the sequence described above.
Motorola’s ’712 patent
The ’712 patent discloses a system for encrypting data
communications. The district court found that the
claimed “transmit overflow sequence number,” or TOSN,
is “never transmitted” to the receiver in the claimed
system. Because the counterpart to the TOSN in the
accused products is transmitted to the receiver, the dis-
trict court granted Apple’s motion for summary judgment
of non-infringement. We agree with the district court’s
APPLE INC. v. MOTOROLA, INC. 33
construction and therefore affirm its grant of summary
judgment.
Claim 17 of the ’712 patent, with relevant limitations
emphasized, recites:
In a communication system having a physical lay-
er, data link layer, and a network layer, a method
for providing cryptographic protection of a data
stream, comprising:
(a) assigning a packet sequence number to a pack-
et derived from a data stream received from the
network layer;
(b) updating a transmit overflow sequence number
as a function of the packet sequence number; and
(c) encrypting, prior to communicating the packet
and the packet sequence number on the physical
layer, the packet as a function of the packet se-
quence number and the transmit overflow se-
quence number.
’712 patent at col. 8, l. 65 - col. 9, l. 12. The specification
explains that, in order to encrypt and decrypt the data
being transmitted, the invention assigns each “packet” of
data both a “packet sequence number” and an overflow
number. See id. at abst; col. 5, ll. 13-15.
34 APPLE INC. v. MOTOROLA, INC.
The “key” used to encrypt and decrypt the data in-
cludes both the packet sequence number and the overflow
number. The packet sequence numbers are assigned
sequentially up to a maximum. Once the maximum is
reached, the packet sequence number count “rolls over”
and begins again from number one. For example, if the
maximum is 128, after 128 is assigned to a packet of data,
the next packet is assigned a packet sequence number of
one. Id. at col. 4, ll. 15-17. The overflow counter counts
the number of times the packet sequence number rolls
over. Id. at col. 3, ll. 54-55, 65-68. Thus, as demonstrated
in the above illustration, each time the packet sequence
number rolls over, the overflow sequence number increas-
es by one. Id.On the transmission side, the overflow number is
called the TOSN. On the receiving side, it is called the
receiving overflow sequence number (“ROSN”). In this
manner, the key to encrypt and decrypt the data includes
both a packet sequence number and an overflow number.
When the packets of data are transmitted, the claimed
APPLE INC. v. MOTOROLA, INC. 35
system also transmits the packet sequence number. Id. at
col. 5, ll. 29-32; col. 9, ll. 7-9. The specification does not
describe transmitting the TOSN or any other overflow
number. Id. Instead, the receiver couples the packet
sequence number it receives with a ROSN it generates
and uses these two numbers to decrypt the data packet.
The specification supports the district court’s con-
struction that the TOSN is never transmitted. First, the
claims recite a TOSN, not a generic overflow sequence
number. The specification plainly describes transmitting
certain aspects of the system (the data packet, the packet
sequence number) but never suggests that the TOSN is
part of that transmission. Nor is it necessary for the
TOSN to be transmitted. If it were, there would be no
need for the receiver to generate a ROSN. Further, if
both the TOSN and packet sequence number were trans-
mitted, an eavesdropper could intercept the entire key
needed to decrypt the message. This would defeat the
invention’s purpose of providing increased security by not
transmitting the entire key.
Statements made by Motorola during prosecution of a
related Japanese patent further support this construction.
Before the Japan Patent Office, Motorola distinguished
the prior art by explaining, with the included emphasis,
that “the overflow sequence number is never transmit-
ted.” Motorola further explained that, because the TOSN
is never transmitted, “there is no chance to intercept the
overflow sequence number; thus, [the invention] provides
a higher level of security.” Motorola made this argument
on more than one occasion. The Japanese application
claims priority to the PCT application that issued in the
United States as the ’712 patent. Both the Japanese
application and the ’712 patent have the same specifica-
tion, and the Japanese application included an identical
claim to claim 17 at the time of Motorola’s statements.
36 APPLE INC. v. MOTOROLA, INC.
Our precedent does not precisely address the impact
of statements such as Motorola’s here. Motorola’s de-
scription of the TOSN came after the ’712 patent issued
and was made in front of a foreign patent office. This
court has previously found that statements made in
related, later-prosecuted U.S. patents may inform the
meaning of earlier issued claims. See, e.g., Microsoft
Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed.
Cir. 2004). In Microsoft, the court noted that “any state-
ment of the patentee in the prosecution of a related appli-
cation as to the scope of the invention would be relevant
to claim construction, and the relevance of the statement
made in this instance is enhanced by the fact that it was
made in an official proceeding in which the patentee had
every incentive to exercise care in characterizing the
scope of its invention.” Id. (emphasis added). Based upon
this reasoning, the Microsoft court concluded that the
patentee’s statements made during the prosecution of a
later patent were relevant to an earlier issued patent that
shared a common specification. Id. Of course, statements
made in unrelated applications are not relevant to claim
construction. See, e.g., Goldenberg v. Cytogen, Inc., 373
F.3d 1158, 1167 (Fed. Cir. 2004) (explaining that an
unrelated patent or application is one that does not “have
a familial relationship” with the patent at issue); Abbott
Labs. v. Dey, L.P., 287 F.3d 1097, 1105 (Fed. Cir. 2002)
(finding applications unrelated when they had “no formal
relationship and were presented to the patent office as
patentably distinct inventions”).
This court has also considered statements made be-
fore a foreign patent office when construing claims if they
are relevant and not related to unique aspects of foreign
patent law. See, e.g., Abbott Labs. v. Sandoz, Inc., 566
F.3d 1282, 1290 (Fed. Cir. 2009) (“While statements made
during prosecution of a foreign counterpart to a U.S.
patent application have a narrow application to U.S.
claim construction . . . in this case the JP ’199 application
APPLE INC. v. MOTOROLA, INC. 37
is part of the prosecution history of the ’507 patent itself”)
(internal citations omitted); Gillette Co. v. Energizer
Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005)
(considering the patentee’s arguments before the Europe-
an Patent Office (EPO) and concluding that a “blatant
admission by this same defendant before the EPO clearly
support[ed]” the court’s construction); Tanabe Seiyaku
Co., v. U.S. Int’l Trade Comm’n, 109 F.3d 726, 733 (Fed.
Cir. 1997); Caterpillar Tractor Co. v. Berco, S.p.A., 714
F.2d 1110, 1116 (Fed. Cir. 1983). But see AIA Eng’g Ltd.
v. Magotteaux Int’l S/A, 657 F.3d 1264, 1279 (Fed. Cir.
2011) (“[O]ur precedent cautions against indiscriminate
reliance on the prosecution of corresponding foreign
applications in the claim construction analysis.”); Pfizer,
Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1290 (Fed. Cir.
2006) (“[S]tatements made during prosecution of foreign
counterparts to the ‘893 patent are irrelevant to claim
construction because they were made in response to
patentability requirements unique to Danish and Europe-
an law.”).
The principles illustrated in these decisions provide
ample support for holding Motorola to the statements
made during Japanese prosecution. Motorola’s state-
ments that the TOSN “is never transmitted” to the receiv-
er could not be clearer. See Gillette, 405 F.3d at 1374(holding party to “blatant admission” in argument made
to EPO). Motorola also explained, more than once, that
not transmitting the TOSN improves the security of the
claimed system. This explanation is consistent with the
claims and the invention described in the specification.
See AIA, 657 F.3d at 1279 (noting concerns regarding
differences in foreign patent law). Thus, as in Microsoft,
the statements were “made in an official proceeding in
which the patentee had every incentive to exercise care in
characterizing the scope of its invention.” 357 F.3d at
1350. Further, the two patents are related and share a
familial relationship. They both claim priority to the
38 APPLE INC. v. MOTOROLA, INC.
same PCT application. Both specifications are the same.
And, at the time Motorola made its statements to the
Japanese patent office, the Japanese application con-
tained a claim identical to claim 17. Thus, the construc-
tion supported by the specification is also supported by
Motorola’s statements before the Japan patent office. We
hold that it was not error for the district court to rely
upon Motorola’s statements to the Japan Patent Office.
As such, we affirm the district court’s construction.
The district court granted Apple’s motion for sum-
mary judgment of non-infringement based upon its con-
struction of claim 17. On appeal, Motorola does not
dispute that Apple does not infringe under this construc-
tion. Accordingly, we affirm the district court’s grant of
summary judgment of non-infringement of the ’712 pa-
tent.
ADMISSIBILITY OF DAMAGES EXPERT EVIDENCE
In preparation for trial on the patent infringement
claims still at issue, the parties presented expert testimo-
ny supporting their damages calculations. Both parties
challenged the admissibility of the other side’s expert
evidence. The district court held a Daubert hearing at
which the experts testified and the parties presented oral
arguments regarding admissibility. Subsequently, the
district court excluded nearly all of both parties’ expert
evidence relating to damages for infringement. Not all of
these decisions are before us. On appeal, Apple argues
that the proposed testimony of its damages expert regard-
ing the ’949 and ’263 patents is admissible. Motorola
argues that the proposed testimony of its damages expert
for the ’898 patent is admissible. Because the district
court erred in its decision to exclude the parties’ expert
evidence, we reverse.
The legal framework for admission of expert testimo-
ny is provided by the Federal Rules of Evidence, along
with Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579APPLE INC. v. MOTOROLA, INC. 39
(1993) and its progeny. See FED. R. EVID. 702, 703. In
Daubert, the Court addressed the proper standard for
admitting expert testimony and emphasized that the
focus “must be solely on principles and methodology, not
on the conclusions that they generate.” 509 U.S. at 595.
In Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999),
the Court clarified that the district court’s “gatekeeping
obligation” applied to all expert testimony. 526 U.S. at
147. Subsequently, “Rule 702 was amended in response
to Daubert and cases applying it, including Kumho Tire.”
Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1391
(Fed. Cir. 2003).
Rule 702 states:
A witness who is qualified as an expert by
knowledge, skill, experience, training, or educa-
tion may testify in the form of an opinion or oth-
erwise if:
(a) the expert’s scientific, technical, or other spe-
cialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in
issue;
(b) the testimony is based on sufficient facts or da-
ta;
(c) the testimony is the product of reliable princi-
ples and methods; and
(d) the expert has reliably applied the principles
and methods to the facts of the case.
FED. R. EVID. 702. Rule 703 states:
An expert may base an opinion on facts or data in
the case that the expert has been made aware of
or personally observed. If experts in the particular
field would reasonably rely on those kinds of facts
or data in forming an opinion on the subject, they
need not be admissible for the opinion to be ad-
40 APPLE INC. v. MOTOROLA, INC.
mitted. But if the facts or data would otherwise be
inadmissible, the proponent of the opinion may
disclose them to the jury only if their probative
value in helping the jury evaluate the opinion
substantially outweighs their prejudicial effect.
FED. R. EVID. 703.
Under these rules and precedent, a district court
judge, acting as a gatekeeper, may exclude evidence if it is
based upon unreliable principles or methods, or legally
insufficient facts and data. See, e.g., Smith v. Ford Motor
Co., 215 F.3d 713, 718 (7th Cir. 2000) (“We emphasize
that the court’s gatekeeping function focuses on an exam-
ination of the expert’s methodology.”); Daubert, 509 U.S.
at 595 (“The focus, of course, must be solely on principles
and methodology, not on the conclusions that they gener-
ate.”); i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d
831, 854 (Fed. Cir. 2010) (stating that “Daubert and Rule
702 are safeguards against unreliable or irrelevant opin-
ions, not guarantees of correctness”) (applying Fifth
Circuit law); Walker v. Soo Line R. Co., 208 F.3d 581, 587
(7th Cir. 2000) (“The critical point is that Dr. Pliskin
employed a proper methodology to determine Mr. Walk-
er’s pre-incident IQ.”).
A judge must be cautious not to overstep its gatekeep-
ing role and weigh facts, evaluate the correctness of
conclusions, impose its own preferred methodology, or
judge credibility, including the credibility of one expert
over another. These tasks are solely reserved for the fact
finder. See, e.g., Smith, 215 F.3d at 718 (“The soundness
of the factual underpinnings of the expert’s analysis and
the correctness of the expert’s conclusions based on that
analysis are factual matters to be determined by the trier
of fact.”); Stollings v. Ryobi Techs., Inc., 725 F.3d 753, 766
(7th Cir. 2013) (“An expert may provide expert testimony
based on a valid and properly applied methodology and
still offer a conclusion that is subject to doubt. It is the
APPLE INC. v. MOTOROLA, INC. 41
role of the jury to weigh these sources of doubt.”). As the
Seventh Circuit noted in Stollings, “the jury must still be
allowed to play its essential role as the arbiter of the
weight and credibility of expert testimony.” 725 F.3d at
765; see also Lees v. Carthage Coll., 714 F.3d 516, 526 (7th
Cir. 2013).
That the gatekeeping role of the judge is limited to ex-
cluding testimony based on unreliable principles and
methods is particularly essential in the context of patent
damages. This court has recognized that questions re-
garding which facts are most relevant or reliable to calcu-
lating a reasonable royalty are “for the jury.” i4i, 598
F.3d at 856 (“When the methodology is sound, and the
evidence relied upon sufficiently related to the case at
hand, disputes about the degree of relevance or accuracy
(above this minimum threshold) may go to the testimony’s
weight, but not its admissibility.”); see also Micro Chemi-
cal, 317 F.3d at 1392.
This court has also recognized that estimating a “rea-
sonable royalty” is not an exact science. As such, the
record may support a range of “reasonable” royalties,
rather than a single value. Likewise, there may be more
than one reliable method for estimating a reasonable
royalty. See, e.g., In re Innovatio IP Ventures, LLC Patent
Litig., MDL 2303, 2013 WL 5593609, at *30-*40 (N.D. Ill.
Oct. 3, 2013) (undertaking a detailed evaluation of the
different methods proposed by the parties of valuing the
patents at issue). For example, a party may use the
royalty rate from sufficiently comparable licenses, value
the infringed features based upon comparable features in
the marketplace, or estimate the value of the benefit
provided by the infringed features by a comparing the
accused product to non-infringing alternatives. All ap-
proaches have certain strengths and weaknesses and,
depending upon the facts, one or all may produce admis-
sible testimony in a single case. It is common for parties
to choose different, reliable approaches in a single case
42 APPLE INC. v. MOTOROLA, INC.
and, when they do, the relative strengths and weaknesses
may be exposed at trial or attacked during cross-
examination. That one approach may better account for
one aspect of a royalty estimation does not make other
approaches inadmissible. For example, actual royalties
paid for technologies similar to the claims at issue may
inherently account for available, non-infringing alterna-
tives. On the other hand, an analytical comparison of the
same non-infringing alternatives to the claims may more
directly account for this cost. The fact that one of these
methods may be said to more accurately value this aspect
of a reasonable royalty calculation does not, necessarily,
make the other approach inadmissible.
With this legal framework in mind, we review the dis-
trict court’s damages rulings. In doing so, we apply
Seventh Circuit law to the question of admissibility. See,
e.g., Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456,
1465 (Fed. Cir. 1998). The Seventh Circuit reviews de
novo whether the district court applied the proper legal
framework; but reviews decisions to admit or exclude
expert testimony under this framework for an abuse of
discretion. See United States v. Parra, 402 F.3d 752, 758
(7th Cir. 2005) (citing United States v. Allen, 269 F.3d
842, 845 (7th Cir. 2001)).
Apple’s ’949 Patent
As to the ’949 patent, we find that the district court
improperly excluded Apple’s proposed expert testimony on
damages. First, as discussed above, the district court
based its damages analysis on an incorrect claim con-
struction. This error, alone, would require reversal and
remand because the erroneous claim construction here
tainted the district court’s damages analysis. See, e.g.,
Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1373
(Fed. Cir. 2008) (vacating ruling that patentee was not
entitled to damages and remanding for reconsideration
based upon modified claim construction); Texas Digital
APPLE INC. v. MOTOROLA, INC. 43
Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1216 (Fed. Cir.
2002) (vacating damages award where district court
provided erroneous claim constructions to the jury).
Second, the district court erred by not considering the full
scope of the asserted claims, questioning the conclusions
of Apple’s expert, and substituting its own opinion, rather
than focusing on the reliability of the principles and
methods used or the sufficiency of the facts and data
relied upon. These errors also require reversal and re-
mand.
In order to estimate the value of the asserted claims
of the ’949 patent, Apple’s expert (Brian W. Napper)
analyzed Apple’s Magic Trackpad (“Trackpad”). 2 The
Trackpad is a touchpad for use with Mac computers in
place of a mouse. Much like a touchscreen, it has a tactile
sensor that detects finger contacts and translates them
into computer commands. A user touches the Trackpad
with her fingers in order to scroll through documents or
translate content on the computer screen. The Trackpad
recognizes twelve finger gestures, including a vertical
scrolling gesture and a horizontal scrolling gesture. The
decision to use the Trackpad as a comparable product was
supported by the testimony of one of Apple’s technical
experts, Dr. Stephen Feiner, who concluded that the touch
gestures of the Trackpad are “comparable or similar” to
the claimed features of the ’949 patent. Further, Napper
contended that the Trackpad features most similar to the
asserted claims (such as the vertical scrolling and hori-
zontal scrolling features) are the most used touch features
of the Trackpad. Thus, Napper provided factual support
2 Because much of Napper’s expert report is confi-
dential, we are limited to providing an overview of his
methodology and application but cannot include many of
the supporting details.
44 APPLE INC. v. MOTOROLA, INC.
for his contention that a Trackpad includes features
comparable to the claimed features.
In order to isolate the value of the Trackpad’s touch
features, Napper began by comparing the price of the
Trackpad to that of a traditional computer mouse. Nap-
per opined that the price difference between these prod-
ucts could be attributed to two differences: the Trackpad’s
touch features and its wireless connectivity, neither of
which is present in a traditional mouse. Because wireless
connectivity is not part of the asserted claims, Napper
discounted his royalty based upon the estimated value of
wireless connectivity in this context. Napper estimated
this value by comparing the price of two sets of wired and
wireless mice and using the midpoint price difference as a
discount.
Napper further discounted his royalty calculation to
account for Trackpad touch features that are outside the
scope of the asserted claims. Specifically, Napper con-
cluded that a subset of the Trackpad touch features were
“similar or comparable” to the asserted features. Thus, he
reduced his royalty estimate by a proportional amount to
account for the extra features. Following this procedure,
Napper arrived at a reasonable royalty.
Napper then compared his royalty calculation with
royalty rates paid by Motorola in licenses for related
touch screen technology. Napper concluded that, because
the technology at issue in those licenses was similar but
inferior, and because the parties to the license were not
direct competitors, Motorola would have been willing to
pay a higher royalty for a license to the asserted claims of
the ’949 patent than it had paid in those licenses.
As a possible design alternative, Napper testified that
Motorola could have removed the asserted functionality
from its products. Napper noted that this would create a
less functional touchscreen due to specific technical
reasons discussed in Dr. Feiner’s report. According to
APPLE INC. v. MOTOROLA, INC. 45
Napper, this would adversely impact the user’s experience
of the touchscreen and create user frustration, thereby
resulting in a less desirable product. Napper concluded
that this alternative would not produce a reasonable
estimate upon which to base damages.
The district court reviewed Napper’s expert report
and excluded all of his proposed testimony for the ’949
patent. In large part, the court’s analysis incorporated,
and was based upon, its incorrect claim construction,
which limited the claims to products containing a pre-
loaded Kindle application that uses a tap gesture to go to
the next page. See, e.g., Apple, Inc. v. Motorola, Inc., 1:11-
CV-08540, 2012 WL 1959560 at *7 (N.D. Ill. May 22,
2012) (“At this point in the litigation the dispositive
element of the ’949 patent is the use of a tap on the right-
hand side of the screen to switch to the next page of a
Kindle book that has been loaded on the cell phone”); see
id. at *7-8 (discussing design alternatives only to the tap
gesture). This overly narrow view of the claims led the
court to conclude, incorrectly, that much of Napper’s
analysis was too far removed from the asserted claims.
Although it nearly exclusively relied on this narrow
claim construction, the district court did recognize that
Napper’s expert report was focused on the full (and prop-
er) scope of the claims. In light of this, the court consid-
ered whether Napper’s proposed testimony provided a
reliable basis for estimating the value of another single
claim limitation, the “vertical scrolling feature.” 3 The
court found that it did not, concluding that “the fact that
many consumers will pay more for a Magic Trackpad than
for a mouse tells one nothing about what they will pay to
avoid occasionally swiping unsuccessfully because their
swiping finger wasn’t actually vertical to the screen.”
3 Hence, the court did not consider Napper’s expert
testimony in light of the full scope of the asserted claims.
46 APPLE INC. v. MOTOROLA, INC.
Thus, the court concluded that any comparison to a
Trackpad was an “inadequate” method of estimating the
value of either the vertical scrolling feature or the tap for
the next page feature.
Aside from relying on an incorrect claim construction,
the district court erred by not considering the full scope of
infringement. At no point did the court ask or consider
whether Napper had used reliable principles and meth-
ods, or sufficient data, to value the entire scope of the
asserted claims. Consequently, the district court incor-
rectly focused on individual claim limitations in isolation
when evaluating the reliability of Napper’s methods. It is
certainly conceivable that an otherwise sound methodolo-
gy could appear unreliable (or, indeed, irrelevant) when
applied to a single limitation, or a subset of limitations,
rather than to the full set of infringed claims. This is why
the proper inquiry evaluates the expert’s methodology in
view of the full scope of the infringed claims. See 35
U.S.C. § 284 (“[D]amages adequate to compensate for the
infringement . . . a reasonable royalty for the use made of
the invention by the infringer.”) (emphasis added); Gen.
Motors Corp. v. Devex Corp., 461 U.S. 648, 655 (1983)
(“Congress expressly provided in § 284 that the court
‘shall award the claimant damages adequate to compen-
sate for the infringement.’”) (emphasis in original); Robert
A. Matthews, Jr., Annotated Patent Digest § 30:6 (2014)
(“All claim constructions define the bounds of what in-
fringes, and therefore also define the bounds of what
activity infringement damages are applicable to.”). Thus,
the proper question is not whether a comparison to the
Trackpad accurately values one of the claimed finger
gestures. Rather, we must ask, with the entire scope of
the asserted claims and the correct claim construction in
mind, whether Napper employed reliable principles and
methods, reliably applied them, and relied upon legally
sufficient facts or data. We find that he did.
APPLE INC. v. MOTOROLA, INC. 47
Contrary to the district court’s determination, Nap-
per’s methodology is not inherently unsound; rather it is
“the product of reliable principles and methods.” FED. R.
EVID. 702. This court has upheld the use of similar meth-
ods involving comparable benchmark products in the past.
See, e.g., i4i, 598 F.3d at 853-854; see also VirnetX Inc. v.
Apple Inc., 925 F. Supp. 2d 816, 839 (E.D. Tex. 2013).
Napper’s methodology focused on the claimed technology.
As discussed, Napper began with an existing product
containing features he contended were similar to the
asserted features (the Trackpad). Next, Napper attempt-
ed to isolate the value of these similar features by valuing
other, non-claimed features of the Trackpad and subtract-
ing this value. To reach a reasonable royalty, Napper
then compared his resulting royalty to related licenses
and rationalized the price differences. Napper also ad-
dressed the possibility of removing the asserted features
from the accused devices and argued that this would
frustrate consumers and devalue the products. In all,
Napper’s testimony was the product of reliable principles
and methods.
Napper also applied these principles and methods in a
reliable way and supported them with legally sufficient
facts and data. See FED. R. EVID. 702. Napper’s applica-
tion was straightforward and adequately supported by
Apple’s technical experts and Napper’s own experience
and expertise, the latter of which is not disputed. For
example, Napper’s assertion that the Trackpad’s features
are comparable to the asserted features is the result of
reliable application. Like the asserted claims, the Track-
pad translates finger contacts into computer commands,
including some of the same finger contacts and computer
commands asserted. Napper also properly relied upon
Apple’s technical expert to factually support this compari-
son. To account for the differences between the Track-
pad’s features and those of the asserted claims, Napper
48 APPLE INC. v. MOTOROLA, INC.
addressed these differences and discounted his royalty
estimate.
In excluding Napper’s testimony, the district court
reasoned, “that a consumer will pay something for gestur-
al control does not enable an estimation of how much he
will pay for a particular improvement in a system of such
control.” The court also found that there was a more
preferable method for valuing the asserted claims that, it
believed, would be used in a non-litigation context. Con-
trary to the district court’s assertion, Napper’s estimate
was not directed to the value of all “gestural control” but
to the value of the asserted claims because Napper fo-
cused on the asserted features, as described above. See
supra at 39-41 (describing Napper’s identification of
similar features, isolation of their value by discounting for
unclaimed features, and comparison of royalty rate to
similar license agreements). While the district court
summarily concluded there was a better way to calculate
damages, it did not point to any specific flaws in Napper’s
Trackpad comparison. For example, the court did not
question the testimony of Apple’s technical expert that
the Trackpad’s features are “comparable or similar” to the
asserted features. Nor did the court point to any flaws in
Napper’s method of apportioning the cost of the relevant
features in the Trackpad or explain why its preferred
method of valuation was superior. Simply because other
reliable methods of estimating a reasonable royalty may
exist does not, by itself, render Napper’s approach inad-
missible.
The district court also faulted Napper for not directly
estimating what a consumer “will pay to avoid occasional-
ly swiping unsuccessfully because their swiping finger
wasn’t actually vertical to the screen.” But Napper’s
methodology did estimate what consumers will pay for the
infringed features by evaluating what consumers have
actually paid for comparable features. More generally,
the value a consumer attributes to the infringing feature
APPLE INC. v. MOTOROLA, INC. 49
may be an important data point for estimating a royalty,
but it is not a required piece of information in all cases.
Here, the absence of a direct measurement of this value
does not topple the entirety of the principles and methods
employed by Napper. The statute requires determination
of a “reasonable royalty,” not a reasonable consumer
price. 4 As noted, there are multiple reasonable methods
for calculating a royalty, and directly estimating the value
a consumer places on the infringing feature is not a
requirement of admissibility.
Factually, if the Trackpad is not an accurate bench-
mark, Motorola is free to challenge the benchmark or
argue for a more accurate benchmark. But such an
argument goes to evidentiary weight, not admissibility,
especially when, as here, an expert has applied reliable
methods to demonstrate a relationship between the
benchmark and the infringed claims. See Lees, 714 F.3d
at 596 (“Carthage is free to argue [for] . . . a preferable
benchmark, but that again is a matter of evidentiary
weight, not admissibility.”). Motorola may address any
technical differences between the Trackpad and the
asserted features, Napper’s analysis thereof, or the cor-
rectness of Napper’s conclusions, during cross-
examination. See Smith v. Ford Motor Co., 215 F.3d 713,
718 (7th Cir. 2000) (explaining that disagreements about
the factual underpinnings of an expert’s analysis go to
4 Depending upon the case, the price a consumer
would pay for an infringing feature may not, by itself,
shed much light on what an infringer would pay to license
that feature. For example, if we assume that a consumer
is willing to pay $5.00 for a certain feature, an infringer
may want to retain some of that as profit (and pay only a
$3.00 royalty), but, depending upon the circumstances, it
may be willing to sacrifice all of that gain (by paying a
$5.00 royalty) and make its profit elsewhere.
50 APPLE INC. v. MOTOROLA, INC.
weight, not admissibility). But the district court’s deci-
sion on the value estimated by Napper short-circuited
Motorola’s opportunity to rebut Napper’s opinion through
presentation of its own evidence. See Gayton v. McCoy,
593 F.3d 610, 616 (7th Cir. 2010) (“Determinations on
admissibility should not supplant the adversarial process;
‘shaky’ expert testimony may be admissible, assailable by
its opponent through cross-examination.”) (citing Daubert,
509 U.S. at 596). Whether Napper’s testimony was the
product of reliable principles and methods is the focus of
admissibility; whether the testimony produced a correct
degree of estimation of the value of the ’949 patent is a
factual consideration reserved for the fact finder. Here,
the district court resolved admissibility based upon its
own view on the correct estimate of value for the ‘949
patent, a question that should have been reserved for the
jury.
In sum, the majority of the district court’s analysis re-
lied upon its incorrect claim construction and is therefore
in error. The district court also erred by not considering
the full scope of infringement, and by questioning the
factual underpinnings and correctness of Napper’s testi-
mony, rather than the reliability of his principles and
method and the sufficiency of the data upon which he
relied. The district court’s exclusion of Napper’s expert
testimony regarding the ’949 patent is therefore reversed.
Apple’s ’263 Patent
The district court also excluded Apple’s damages evi-
dence related to the ’263 patent because Apple’s expert
relied upon information provided by a technical expert
hired by Apple. The district court subsequently granted
Motorola’s motion for summary judgment that Apple was
entitled to no damages for infringement of the ’263 pa-
tent. We reverse the district court’s decision to exclude
Apple’s expert testimony and therefore vacate the court’s
grant of summary judgment regarding the ’263 patent.
APPLE INC. v. MOTOROLA, INC. 51
Apple’s damages expert, again Dr. Napper, opined
that there were two approaches for designing around the
asserted claims of the ’263 patent. The first approach
would require Motorola to redesign the computer chip in
its phones and also require the application providers (the
companies behind products such as Facebook and
YouTube) to redesign the applications that utilize stream-
ing video or audio content. Napper estimated the cost of
this approach at the time of infringement but concluded
that this design around would have been practically
unworkable for technical reasons unimportant here. The
other design around option identified by Napper involved
Motorola replacing a chip on its phones or adding an
additional chip. To estimate this cost, Napper used a chip
identified by one of Apple’s technical experts, Dr. Nathan
Polish. Based upon facts and data made available to
Napper by Polish, Napper concluded that it would have
been more expensive to design around via this second
option. Faced with these choices, Napper arrived at a set
figure which he concluded Motorola would have been
willing to pay as a reasonable royalty because it repre-
sented the lesser of the two options.
The district court excluded Napper’s proposed testi-
mony for the sole reason that Napper relied upon an
expert hired by Apple, Dr. Polish, for the identity of the
replacement chip. The district court concluded that, had
Polish been the only person competent to opine on the
proper substitute chip, then Napper’s testimony would
have been admissible. The court reasoned:
imagine [a] . . . conversation between Napper and
Motorola, which I’ll pretend hired Napper to ad-
vise on how at lowest cost to duplicate the patent’s
functionality without infringement: Motorola:
‘What will it cost us to invent around, for that will
place a ceiling on the royalty we’ll pay Apple?’
Napper: ‘Brace yourself: $35 million greenbacks.’
Motorola: ‘That sounds high; where did you get
52 APPLE INC. v. MOTOROLA, INC.
the figure?’ Napper: ‘I asked an engineer who
works for Apple.’ Motorola: ‘Dummkopf! You’re
fired.’
Apple, Inc., 2012 WL 1959560 at *9. Based on this hypo-
thetical conversation, the district court excluded all of
Napper’s proposed testimony. Id.The district court’s exclusion of Napper’s proposed
testimony was erroneous. The district court’s decision
states a rule that neither exists nor is correct. Experts
routinely rely upon other experts hired by the party they
represent for expertise outside of their field. See, e.g.,
Dura Automotive Sys. of Ind., Inc. v. CTS Corp., 285 F.3d
609, 609-613 (7th Cir. 2002) (“[I]t is common in technical
fields for an expert to base an opinion in part on what a
different expert believes on the basis of expert knowledge
not possessed by the first expert.”); Monsanto Co. v.
David, 516 F.3d 1009, 1015 (Fed. Cir. 2008) (“Numerous
courts have held that reliance on scientific test results
prepared by others may constitute the type of evidence
that is reasonably relied upon by experts for purposes of
Rule of Evidence 703.”). Rule 703 explicitly allows an
expert to rely on information he has been made aware of
“if experts in the particular field would reasonably rely on
those kinds of facts or data in forming an opinion on the
subject.” FED. R. EVID. 703; see also Monsanto, 516 F.3d
at 1016. This Rule does not predicate admissibility on the
source of the facts or data or, in particular, on whether
the source is employed by either of the parties.
Consistent with Rule 703, patent damages experts of-
ten rely on technical expertise outside of their field when
evaluating design around options or valuing the im-
portance of the specific, infringing features in a complex
device. Monsanto, 516 F.3d at 1015. For example, a
party may want to explain, from a technical perspective,
why one potential design alternative is less expensive in
order to justify a lower royalty calculation. Patent dam-
APPLE INC. v. MOTOROLA, INC. 53
ages calculations are often intertwined with highly tech-
nical issues precisely because damages must be based on
the scope of infringement, often an involved technical
question. Despite this precedent, the district court errone-
ously found that Apple cannot support its damages calcu-
lation with information from a technical expert it has
hired.
In particular, the district court expressed concern that
Dr. Polish’s technical advice was incurably biased because
he was hired by Apple. See Apple, Inc., 2012 WL 1959560at *9 (Napper “obtained essential information, namely the
identity of the chip that would avoid infringement, from
an agent of the party rather than a disinterested
source.”). While it may be true that the potential for bias
is an inherent concern with respect to all hired experts,
this concern is addressed by the weight given to the
expert’s testimony, not its admissibility. See, e.g., Tagatz
v. Marquette Univ., 861 F.2d 1040, 1042 (7th Cir. 1988)
(“Hired experts, who generally are highly compensated –
and by the party on whose behalf they are testifying – are
not notably disinterested.”); Ethicon, 135 F.3d at 1465(“Furthermore, a witness’s pecuniary interest in the
outcome of a case goes to the probative weight of testimo-
ny, not its admissibility.”). To the extent bias exists,
cross-examination and the testimony of an opposing
expert may be used to “expose” it. Id.; see also Annotated
Patent Digest, at § 44:43.150 (“That an expert may have a
bias or self interest towards a party on whose behalf he or
she is offering testimony, without more, generally does
not require disqualifying the expert so long as the expert
appears to be providing an objective analysis. Bias goes
to the weight of the testimony, not necessarily its admis-
sibility.”). In Tagatz, the court recognized that, in the
context of a party testifying as his own expert, “the trier
of fact should be able to discount for so obvious a conflict
of interest.” 861 F.2d at 1042. Here, if the chip Dr. Polish
has suggested is not the best or cheapest alternative,
54 APPLE INC. v. MOTOROLA, INC.
Motorola is free to address this issue on cross examination
and through the testimony of its own expert witness. See,
e.g., Walker, 208 F.3d at 589-90; Stollings, 725 F.3d at
765; Gayton, 593 F.3d at 616. The issue is one of eviden-
tiary weight and not admissibility.
The district court also implied that Dr. Polish’s rec-
ommendation of a particular replacement chip is not the
type of information that an expert in the field would
reasonably rely upon outside the context of litigation.
See Apple, Inc., 2012 WL 1959560 at *9-*10; see also
Kumho, 526 U.S. at 152 (noting that an expert must
employ “in the courtroom the same level of intellectual
rigor that characterizes the practice of an expert in the
relevant field.”). We disagree. As noted above, Rule 703
requires that the expert testimony be tied to the facts of
the case. See id. at 153-54. If Apple hired Napper to
value the asserted claims of the ’263 patent outside of
litigation and there was technical issue Napper did not
understand, it would be reasonable for Napper to ask a
technical expert hired by Apple. For example, it would be
reasonable for an Apple expert to explain the background
of Apple’s patent, how the claimed invention fits into a
larger product, or the key advances over the prior art. All
of this information would be outside of Napper’s expertise
but helpful, if not critical, to his task of valuing the pa-
tent. Indeed, if the technical information needed was
within the expertise of Apple employees, it would be
wasteful for Apple, if not otherwise disadvantageous, not
to provide it and, in certain circumstances, even deceitful.
Overall, outside of litigation, it would be reasonable, and
quite common, for Napper to rely on technical information
provided by Apple or one of its experts in order to value
the cost to design around Apple’s technology. Indeed,
such an approach would carry the same intellectual rigor
as the approach employed in the courtroom in this case.
A rule that would exclude Apple’s damages evidence
simply because it relies upon information from an Apple
APPLE INC. v. MOTOROLA, INC. 55
technical expert is unreasonable and contrary to Rules
702 and 703 and controlling precedent. As a result, we
reverse the district court’s exclusion of Napper’s testimo-
ny regarding the ’263 patent and vacate its grant of
summary judgment regarding damages.
Motorola’s ’898 Patent
The district court excluded all of Motorola’s proposed
testimony related to damages for infringement of the ’898
patent and subsequently granted Apple’s motion for
summary judgment that Motorola was entitled to no
damages. We affirm the exclusion of the testimony that
relied on Motorola’s licensing expert, Charles Donohoe.
The district court erred, however, when it excluded the
remainder of Motorola’s proposed expert testimony be-
cause Motorola’s analysis of comparable licenses used
“reliable principles and methods,” and Motorola reliably
applied them to sufficient facts and data to estimate the
overall value of the ’898 patent. Accordingly, we reverse
the court’s exclusion of the remainder of Motorola’s dam-
ages expert testimony and vacate the court’s grant of
summary judgment.
Motorola’s damages expert was Carla S. Mulhern.
Mulhern’s proposed testimony included an analysis of
license agreements between Motorola and “all of the
major” cellular phone makers in the United States, except
for Apple. While the terms of each agreement vary, all
generally cover Motorola’s entire standard-essential
patent (“SEP”) portfolio (hundreds of patents), of which
the ’898 patent is a very small part. Some of the licenses
were cross-licenses, wherein Motorola obtained a license
to third parties’ SEPs. The royalty base in each of these
licenses was the sale price of a cell phone. According to
Mulhern, these licenses show that Motorola has previous-
ly received a royalty rate of approximately 2.25% for a
license to its entire SEP portfolio. Mulhern also examined
licenses for SEP portfolios covering “cellular communica-
56 APPLE INC. v. MOTOROLA, INC.
tions technology” between Apple and third parties. These
licenses also typically included cross-license agreements.
Apple’s royalties under these agreements were in a simi-
lar range.
Because Apple is not alleged to infringe all of the pa-
tents in Motorola’s SEP portfolio, Mulhern attempted to
separate out the value of the ’898 patent from the total
value of the portfolio. Mulhern recognized that individual
patents in a SEP portfolio may have different values,
based upon, for example, the relative importance of the
patent to the standard or to the technology as a whole.
Specifically, Mulhern opined that economic studies have
shown that patent values are skewed with many patents
having little or no value and a small minority having
significant value. Mulhern also noted that, during a
hypothetical negotiation, a licensee would expect to pay
less for a license to a few patents than for an entire port-
folio of standard-essential patents. Mulhern concluded,
based upon the expert reports of Motorola’s technical
experts, that the ’898 patent represented an important
innovation and was “disproportionately valuable in the
context of Motorola’s overall portfolio.”
Mulhern opined that licensing one patent from a large
SEP portfolio was not a typical industry practice because,
in order to use a standard, a license to all essential pa-
tents would be needed. In the “real world,” according to
Mulhern, SEPs are only licensed in large portfolios.
Mulhern cited proposed testimony of other experts with
experience in the licensing industry to support this claim.
Despite this industry practice, Mulhern recognized that
the “hypothetical negotiation construct would force
Motorola to enter into a license for just a subset of its
standard-essential patents.” Such a license, according to
Mulhern, would capture a “nonlinear” share of the portfo-
lio rate because it would force Motorola to, inefficiently,
license its patents a few at a time. In other words, the
APPLE INC. v. MOTOROLA, INC. 57
first few patents licensed from the portfolio would com-
mand a higher royalty rate than those that followed.
Based upon this reasoning, Mulhern opined that the
first few patents would typically command 40%-50% of
the entire portfolio rate. Mulhern supported this 40%-
50% estimate with: the proposed testimony of another of
Motorola’s licensing experts, Charles Donohoe; the state-
ments of a Motorola licensing executive; the statements of
a former Ericsson licensing executive; and her knowledge
of “IBM’s well-known licensing policy in the 1980s and
early 1990s.” According to Mulhern, IBM would offer a
license to a single patent in its portfolio, which totaled
over 10,000 patents, at a royalty rate of 1% of net sale
price. Each successive patent would cost an additional
1%, up to the fifth patent licensed. Beyond five patents,
or a 5% royalty, the rate would not increase. Based upon
this analysis, Mulhern concluded, as one estimate, that
the ’898 patent was worth 40%-50% of Motorola’s SEP
portfolio rate.
As an alternative and more conservative estimate,
Mulhern opined that the ’898 patent represented 5% of
the “actually-essential” patents in Motorola’s portfolio.
This estimate did not rely upon Mulhern’s “non-linear”
valuation theory, but rather was based upon a linear
“modified patent counting method.” Under this approach,
Mulhern concluded that Apple would have been willing to
pay 5% of the entire SEP portfolio rate for a license to
the ’898 patent.
Mulhern also recognized that Apple could have avoid-
ed infringement by introducing an iPhone only on the
Verizon network, which did not use the GMS/UTMS
networks. Mulhern addressed Apple’s design around cost
at the time of the hypothetical negotiation by first con-
cluding that the ’898 patent was essential to the
GMS/UTMS mobile networks and that, therefore, Apple
could not use these networks without a license. Mulhern
58 APPLE INC. v. MOTOROLA, INC.
outlined purported impracticalities with the Verizon
option, including confidential details we decline to recite
here. Stopping there, Mulhern did not specifically esti-
mate the cost to Apple of pursuing a Verizon phone in
place of an AT&T phone.
The district court assumed that the royalty rates pro-
posed by Motorola satisfied its fair, reasonable and non-
discriminatory (“FRAND”) licensing obligations but,
nevertheless, excluded all of Mulhern’s proposed testimo-
ny because she “failed to consider the range of plausible
alternatives . . . facing Apple.” Specifically, the district
court concluded that Mulhern’s “failure to analyze” the
possibility of Apple contracting with Verizon made her
method unreliable. It appears the district court was
concerned with Mulhern’s failure to specifically value the
cost of contracting with Verizon in place of AT&T. See
Apple, Inc., 2012 WL 1959560 at *11 (“Mulhern offers no
evidence that it would have been $347 million more costly
to Apple” to contract with Verizon over AT&T.). Regard-
ing Donohoe’s proposed testimony, the district court noted
that his declaration did not offer any basis for selecting
the correct nonlinear royalty rate. In addition, Donohoe
“admitted that he knows nothing about the portfolio that
includes the ’898 patent; his 40-to-50 percent figure is a
statement about portfolios of standards-essential tele-
communications patents in general.”
We agree with the district court that Donohoe’s testi-
mony is insufficient to support an award of damages.
Indeed, the district court would have been justified in
excluding Donohoe’s testimony as inherently unreliable
based on his failure to tie the 40%-50% rate to the techno-
logical contribution of the patent to the standard-essential
patent portfolio. We have consistently explained that
proof of damages must be carefully tied to the claimed
invention itself. See ResQNet.com, Inc. v. Lansa, Inc., 594
F.3d 860, 869 (Fed. Cir. 2010); Riles v. Shell Exploration
& Prod. Co., 298 F.3d 1302, 1312 (Fed. Cir. 2002) (exclud-
APPLE INC. v. MOTOROLA, INC. 59
ing patentee’s damages model because the expert “[did]
not associate his proposed royalty with the value of the
patented method at all”). Here, where Donohoe admitted
that he knew nothing about the SEP portfolio at issue and
did not even purport to link the 40%-50% rate to the
claimed invention of the ’898 patent, there can be little
doubt whether his testimony was tied to the facts of this
case. 5
Mulhern incorporated Donohoe’s testimony into her
own when she relied on his proposed testimony to opine
that the first few patents from a given portfolio would
typically command 40%-50% of the entire portfolio rate.
The substance of Donohoe’s testimony is no more reliable
when admitted through Mulhern than through Donohoe
himself. We note that the general theory that Donohoe
and Mulhern relied upon, that the first patent from a
larger portfolio may, in practice, garner a larger royalty
than later patents from the same portfolio, is not inher-
ently unreliable. Testimony based upon this theory may
be admissible if properly tied to the claimed invention.
But here, where a potentially reliable theory is not tied to
the facts of the case, the expert testimony is inadmissible.
See, e.g., Kumho, 526 U.S. at 154-55. For these reasons,
we affirm the district court’s exclusion of that portion of
Mulhern’s testimony that was based on Donohoe’s decla-
ration.
We disagree with the district court regarding the re-
mainder of Mulhern’s testimony. Although Mulhern did
not directly estimate the cost to Apple of choosing AT&T
over Verizon, Mulhern did “consider” and “analyze” the
5 Indeed, as Apple points out, Motorola did not ad-
just its 40%-50% rate when the ’559 patent dropped out of
the case on summary judgment, further suggesting that
the rate was never tied to the specific patents at issue.
See Apple Reply Br. 38-39.
60 APPLE INC. v. MOTOROLA, INC.
possibility of Apple overcoming the difficulties of contract-
ing with Verizon and releasing an iPhone on a different
network. While the district court may disagree with
Mulhern’s conclusions that contracting with Verizon was
not desirable or practical and that, therefore, this option
need not be specifically valued, this is an issue that Apple
could address at trial via cross-examination and presenta-
tion of its own expert evidence. See, e.g., Walker, 208 F.3d
at 589-90; Gayton, 593 F.3d at 616. That a party may
choose to pursue one course of proving damages over
another does not render its expert’s damages testimony
inadmissible. Nor is there a requirement that a patentee
value every potential non-infringing alternative in order
for its damages testimony to be admissible.
The district court failed to recognize that Mulhern did
construct a cost estimate typically relied upon when
calculating patent damages – the cost to license the
technology. See, e.g., Riles, 298 F.3d at 1313; Studieng-
esellschaft Kohle, m.b.H. v. Dart Indus., Inc., 862 F.2d
1564, 1568 (Fed. Cir. 1988) (“The patentee’s usual licens-
ing approach should be considered in assessing a reason-
able royalty.”). As we have held many times, using
sufficiently comparable licenses is a generally reliable
method of estimating the value of a patent. See, e.g.,
ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694
F.3d 1312, 1333 (Fed. Cir. 2012); Lucent Techs., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1325 (Fed. Cir. 2009) (“The
second Georgia-Pacific factor is ‘[t]he rates paid by the
licensee for the use of other patents comparable to the
patent in suit.’”) (citing Georgia-Pac. Corp. v. U.S. Ply-
wood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970));
Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1110 (Fed. Cir.
1996) (“This rate is supported by evidence that Maxwell
entered into agreements with other licensees at a royalty
rate of $.10 per pair of shoes.”); Nickson Indus., Inc. v. Rol
Mfg. Co., 847 F.2d 795, 798 (Fed. Cir. 1988) (“Where an
APPLE INC. v. MOTOROLA, INC. 61
established royalty exists, it will usually be the best
measure of what is a ‘reasonable’ royalty.”).
This approach is generally reliable because the royal-
ty that a similarly-situated party pays inherently ac-
counts for market conditions at the time of the
hypothetical negotiation, including a number of factors
that are difficult to value, such as the cost of available,
non-infringing alternatives. See LaserDynamics, Inc. v.
Quanta Computer, Inc., 694 F.3d 51, 79 (Fed. Cir. 2012)
(“Actual licenses to the patented technology are highly
probative as to what constitutes a reasonable royalty for
those patent rights because such actual licenses most
clearly reflect the economic value of the patented technol-
ogy in the marketplace.”). For example, in this case,
Motorola’s other licensees would have had the option of
only releasing a phone on the Verizon network. Thus, the
royalty rate agreed to in these licenses, assuming the
overall licensing situation is factually comparable, would
necessarily account for the cost of this non-infringing
alternative.
Here, whether these licenses are sufficiently compa-
rable such that Motorola’s calculation is a reasonable
royalty goes to the weight of the evidence, not its admissi-
bility. See ActiveVideo, 694 F.3d at 1333. Mulhern’s
analysis of comparable licenses used “reliable principles
and methods,” and reliably applied them to sufficient
facts and data on the record to calculate the overall value
of the ’898 patent, including the cost of non-infringing
alternatives. FED. R. EVID. 702. With the aid of Apple’s
cross-examination and expert testimony, the jury is
capable of assigning the appropriate weight to Mulhern’s
testimony based upon their judgment of her credibility,
factual analysis, and conclusions.
In sum, with the exception of the testimony that re-
lied upon Donohoe’s declaration, we reverse the district
court’s exclusion of Mulhern’s proposed testimony. Con-
62 APPLE INC. v. MOTOROLA, INC.
sequently, we vacate the court’s grant of summary judg-
ment regarding damages for infringement.
SUMMARY JUDGMENT
After the district court excluded the majority of the
damages expert testimony, both parties moved for sum-
mary judgment regarding damages and injunctive relief.
Having excluded their damages evidence, the court found
that neither party was entitled to any damages or an
injunction and granted the motions. As noted above, on
the basis of our reversal of the district court’s admissibil-
ity decisions, we vacate the court’s grant of summary
judgment regarding damages for Apple’s ’949 and ’263
patents and for Motorola’s ’898 patent. All that remains
is the district court’s grant of summary judgment that
Apple was not entitled to any damages for infringement of
the ’647 patent and that neither party was entitled to an
injunction. As discussed below, we reverse the court’s
decision that Apple was not entitled to any damages for
infringement of the ’647 patent, vacate its decision that
Apple was not entitled to an injunction, and affirm its
decision that Motorola is not entitled to an injunction.
Summary judgment is appropriate “if the pleadings,
depositions, answers to interrogatories, and admissions
on file, together with the affidavits, if any, show that
there is no genuine issue as to any material fact and that
the moving party is entitled to a judgment as a matter of
law.” FED. R. CIV. P. 56(c). We review the district court’s
grant of summary judgment under regional circuit law,
which is that of the Seventh Circuit. See, e.g., Mi-
croStrategy, Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1349
(Fed. Cir. 2005). The Seventh Circuit reviews a grant of
summary judgment de novo. See, e.g., Feliberty v. Kemper
Corp., 98 F.3d 274, 276 (7th Cir. 1996) (“When we review
a district court's grant of summary judgment, we consider
the record according to the same standards employed by
the district court.”).
APPLE INC. v. MOTOROLA, INC. 63
Apple’s ’647 Patent
Motorola moved for summary judgment that, even as-
suming the ’647 patent was infringed, Apple was not
entitled to any damages, including a nominal reasonable
royalty. Motorola argued that Apple was not entitled to
damages because there was “no evidence upon which
Apple may rely to reliably establish or measure any
amount of damages” for infringement of the ’647 patent.
The district court agreed and concluded that Apple
was not entitled to any measure of damages because
Apple had failed to show that its measure of damages was
correct. We disagree and hold that a finding that a
royalty estimate may suffer from factual flaws does not,
by itself, support the legal conclusion that zero is a rea-
sonable royalty. See Dow Chem. Co. v. Mee Indus., Inc.,
341 F.3d 1370, 1382, n.4 (Fed. Cir. 2003) (“However, the
fact that the agreement did not support the specific
amount requested by Dow does not thereby mean that it
does not support any award at all.”).
Due to the procedural posture in this case, we must
assume that the patents at issue are valid and infringed.
With infringement assumed, the statute requires the
court to award damages “in no event less than a reasona-
ble royalty.” 35 U.S.C. § 284; see also Dow Chemical Co.,
341 F.3d at 1381-82 (noting that a district court is obli-
gated to award damages once infringement is found, and
reversing a finding of no damages that was based upon a
lack of expert evidence). Because no less than a reasona-
ble royalty is required, the fact finder must determine
what royalty is supported by the record. See Norian Corp.
v. Stryker Corp., 363 F.3d 1321, 1333 (Fed. Cir. 2004)
(holding that “the jury’s finding of no damages cannot be
supported” because “the statute requires that damages to
a successful claimant in a patent infringement suit shall
not be less than a reasonable royalty”); Riles, 298 F.3d at
1311 (“The statute guarantees patentees a reasonable
64 APPLE INC. v. MOTOROLA, INC.
royalty even when they are unable to prove entitlement to
lost profits or an established royalty rate.”); Lindemann
Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 895
F.2d 1403, 1406 (Fed. Cir. 1990) (“In patent law, the fact
of infringement establishes the fact of damage because
the patentee’s right to exclude has been violated.”); Anno-
tated Patent Digest, § 30:7 (“When a patentee shows
infringement, a presumption arises that the patentee is
entitled to some form of damages. The Federal Circuit
has explained that this presumption arises from the
statute once infringement is admitted or proven.”).
If a patentee’s evidence fails to support its specific
royalty estimate, the fact finder is still required to deter-
mine what royalty is supported by the record. 6 See Dow
Chem., 341 F.3d at 1381-82 (“The statute is unequivocal
that the district court must award damages in an amount
no less than a reasonable royalty.”); Norian, 363 F.3d at
1333; Lindemann Maschinenfabrik, 895 F.2d at 1406; Del
Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d
1320, 1327 (Fed. Cir. 1987) (“The requirement to deter-
mine actual damages is not diminished by difficulty of
determination.”). Indeed, if the record evidence does not
fully support either party’s royalty estimate, the fact
6 By contrast, if a patentee seeks lost profits and
fails to meet its burden, then an award of no lost profits is
justified. See R.R. Dynamics, Inc. v. A. Stucki Co., 727
F.2d 1506, 1520 (Fed. Cir. 1984) (affirming district court
decision awarding no lost profits, due to lack of proof, but
awarding reasonable royalty); Gustafson, Inc. v. Intersys-
tem Indus. Prods., Inc., 897 F.2d 508, 509-10 (1990)
(finding, in the lost profits context, “no reversible error in
the district court’s . . . awarding no damages to Gustafson
because none were proven”). This is because a lost profits
award is above and beyond the reasonable royalty floor
required by the statute.
APPLE INC. v. MOTOROLA, INC. 65
finder must still determine what constitutes a reasonable
royalty from the record evidence. See SmithKline Diag-
nostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161, 1167-68
(Fed. Cir. 1991) (“[T]he factual determination of a reason-
able royalty, however, need not be supported, and indeed,
frequently is not supported by the specific figures ad-
vanced by either party. . . . [T]he district court may reject
the extreme figures proffered by the litigants as incredible
and substitute an intermediate figure as a matter of its
judgment from all of the evidence.”). Certainly, if the
patentee’s proof is weak, the court is free to award a low,
perhaps nominal, royalty, as long as that royalty is sup-
ported by the record. See Lindemann Machinenfabrik,
895 F.2d at 1407-08 (affirming $10,000 reasonable royalty
award because patentee failed to provide sufficient evi-
dence to support a greater award).
Thus, a fact finder may award no damages only when
the record supports a zero royalty award. For example, in
a case completely lacking any evidence on which to base a
damages award, the record may well support a zero
royalty award. Also, a record could demonstrate that, at
the time of infringement, the defendant considered the
patent valueless and the patentee would have accepted no
payment for the defendant’s infringement. Of course, it
seems unlikely that a willing licensor and willing licensee
would agree to a zero royalty payment in a hypothetical
negotiation, where both infringement and validity are
assumed. 7
7 We note that we know of no case where we found
that the record supported an infringement award of a zero
royalty. Id.; see also DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1334 (Fed. Cir. 2009)
(finding 0% jury royalty award inconsistent with finding
of infringement and jury instruction that the jury choose
a rate between 6% and 15%). But see Devex Corp. v. Gen.
66 APPLE INC. v. MOTOROLA, INC.
At summary judgment, as is the case here, a judge
may only award a zero royalty for infringement if there is
no genuine issue of material fact that zero is the only
reasonable royalty. Thus, if a patentee raises a factual
issue regarding whether it is due any non-zero royalty,
summary judgment must be denied. In any event, simply
because a patentee fails to show that its royalty estimate
is correct does not, by itself, justify awarding a royalty of
zero at summary judgment, as the district court did here.
See Dow Chem., 341 F.3d at 1382 n.4.
On appeal, Apple points out that not all of its damag-
es expert testimony for the ’647 patent was excluded.
Specifically, Apple’s expert report, prepared by Napper,
estimated a royalty based upon the time it allegedly took
another smartphone manufacturer, HTC Corporation
(“HTC”), to design around the same patent. The United
States International Trade Commission (“ITC”) issued an
exclusion order against HTC based upon infringement of
the ’647 patent, the same patent Apple asserts here. The
ITC gave HTC a four-month grace period before the
exclusion order took effect. Based upon this, Napper
concluded that four months was a relevant timeframe for
designing around the ’647 patent. Napper noted that
HTC and Motorola would likely have similar resources to
develop a design around. Napper estimated that Motorola
would lose $52 million in operating profit based upon the
removal of its accused products from the market for this
four-month period. Accordingly, Napper concluded that
Motorola would be willing to pay a $52 million royalty.
Motors Corp., 667 F.2d 347, 361 (3d Cir. 1981) (“In the
absence of any evidence as to what would constitute a
reasonable royalty in a given case, a fact finder would
have no means of arriving at a reasonable royalty, and
none could be awarded.”), aff’d on other grounds, 461 U.S.
648 (1983).
APPLE INC. v. MOTOROLA, INC. 67
The district court noted that it did not exclude this
aspect of Napper’s proposed testimony. Nevertheless, the
court discredited the testimony because the ITC’s claim
construction differed from the court’s and because Napper
failed to sufficiently address any differences between the
two companies, HTC and Motorola. The court did not,
however, identify any differences between HTC and
Motorola that undermined Napper’s royalty estimate.
The court determined that Apple was not entitled to any
measure of damages because it had not proven its HTC-
based royalty estimate was correct. See Apple, Inc. v.
Motorola, Inc., 869 F. Supp. 2d 901, 911 (N.D. Ill. 2012)
(“Apple has not presented admissible evidence that the
Georgia Pacific factors support its damages claim.”).
The record before us does not support granting sum-
mary judgment of no damages. Motorola has not met its
burden of demonstrating, as the party who moved for
summary judgment, that the record is uncontroverted
that zero is the only reasonable royalty.
Other than incorrectly asserting that Apple has no
admissible expert evidence, Motorola itself provides no
evidence or argument to support a zero royalty. For
example, there is nothing in the record suggesting that
Apple would have been willing to accept no payment for
Motorola’s infringement. Nor is there any evidence that,
at the time of infringement, Motorola concluded that
the ’647 patent had no value. To the contrary, Apple has
expert evidence on record indicating that it would take
four months to design around the ’647 patent. Apple’s
expert estimated the profit lost by Motorola during this
design around period based upon Motorola’s sales figures
for the accused devices. Apple also presented evidence, in
arguing for an injunction, that the claimed features of
the ’647 patent drive consumer demand for its products.
The specific reasonable royalty this – and any other
record evidence – supports is a factual question reserved
for the jury.
68 APPLE INC. v. MOTOROLA, INC.
The problems that the district court identifies with
Apple’s HTC-based royalty estimate (a different claim
construction before the ITC and potential differences
between HTC and Motorola) only serve to illustrate that
factual disputes remain. 8 Hence, the district court’s
conclusion that Apple’s HTC-based estimate was flawed
does not establish, as a matter of law, a zero royalty. 9 See
Norian, 363 F.3d at 1333; Dow Chem., 341 F.3d at 1382
n.4; Del Mar, 836 F.2d at 1327 (“The trial court is re-
quired to approximate, if necessary, the amount to which
the patent owner is entitled.”). Even if Apple had not
submitted expert evidence, this alone would not support a
finding that zero is a reasonable royalty. See Dow Chem.,
341 F.3d at 1381-82 (reversing award of no damages,
which was based upon a lack of admissible expert evi-
dence, and remanding for determination of royalty); 7
Donald S. Chisum, Chisum on Patents § 20.07[3][a] (2011)
(“In considering the question of evidence and certainty of
proof required to justify an award of a reasonable royalty,
one should distinguish between (1) the existence of dam-
age to a patentee which will support any award and (2)
the evidentiary support for a particular rate or quantity
as a reasonable royalty. As to the first issue, no specific
proof should be required. The premise of the reasonable
royalty measure is that a holder of a valid and infringed
patent has inherently suffered legal damage at least to
the extent of a lost license royalty opportunity.”); Anno-
tated Patent Digest, § 44:79 (“The use of expert testimony
8 Motorola tacitly acknowledges this by arguing on
appeal that Apple’s evidence is inadmissible, not that it is
factually flawed.
9 We would be answering a different question if
Motorola had moved that Napper’s HTC-based calculation
was incorrect as a matter of law. In that situation, point-
ing to flaws in Napper’s analysis could be enough to
justify summary judgment.
APPLE INC. v. MOTOROLA, INC. 69
is permissive. Thus, if a patentee’s damage expert is
excluded, that fact does not automatically deny a patentee
a right to recover damages.”); FED. R. EVID. 702 (“A wit-
ness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify.”) (emphasis
added); 35 U.S.C. § 284 (“The court may receive expert
testimony as an aid to the determination of damages or of
what royalty would be reasonable under the circumstanc-
es.”) (emphasis added).
In sum, Motorola has not demonstrated that there is
no genuine issue of material fact regarding whether zero
is a reasonable royalty for infringement of the ’647 patent.
Motorola presented no evidence that zero was a reasona-
ble royalty. In contrast, Apple presented admissible
evidence that it is entitled to a non-zero royalty. That
Apple’s royalty estimate may suffer from factual flaws
does not, by itself, support the legal conclusion that zero
is a reasonable royalty. Accordingly, we reverse the
district court’s grant of summary judgment.
Apple’s Request for an Injunction
The district court granted Motorola’s motion for
summary judgment that Apple was not entitled to an
injunction for infringement of the ’949, ’263 and ’647
patents because Apple had failed to show a causal nexus
between any alleged irreparable harm and Motorola’s
infringement. The district court’s analysis necessarily
relied upon its overly narrow construction of the claims of
the ’949 patent. We have reversed the court’s claim
construction decision, thus altering the potential scope of
infringement underlying Apple’s injunction request. The
scope of infringement permeates an injunction analysis.
See, e.g., Apple Inc. v. Samsung Elecs. Co., 735 F.3d 1352,
1363 (Fed. Cir. 2013) (“[T]he purpose of the causal nexus
requirement is to show that the patentee is irreparably
harmed by the infringement.”) (emphasis in original). For
example, when considering whether to enjoin a product, it
70 APPLE INC. v. MOTOROLA, INC.
is proper for the court to consider the aggregate harm
caused by all of the infringing features, rather than
requiring a patentee to address each patent or claim
individually. See id. at 1365 (“We believe there may be
circumstances where it is logical and equitable to view
patents in the aggregate.”).
Infringement of multiple patents by a single device
may strengthen a patentee’s argument for an injunction
by, for example, supporting its argument that the in-
fringed features drive consumer demand or are causing
irreparable harm. Id. By the same token, we also consid-
er the impact on the general public of an injunction on a
product with many non-infringing features. See id. at
1372-73 (“We see no problem with the district court’s
decision, in determining whether an injunction would
disserve the public interest, to consider the scope of
Apple’s requested injunction relative to the scope of the
patented features and the prospect that an injunction
would have the effect of depriving the public of access to a
large number of non-infringing features.”).
Accordingly, because we have reversed the district
court’s construction of the ’949 patent, we vacate its grant
of summary judgment regarding Apple’s request for an
injunction.
Motorola’s Request for an Injunction
Apple moved for summary judgment that Motorola
was not entitled to an injunction for infringement of
the ’898 patent. While we review the district court’s
decision to grant or deny an injunction for an abuse of
discretion, Lab. Corp. of Am. Holdings v. Chiron Corp.,
384 F.3d 1326, 1331 (Fed. Cir. 2004), we review the
district court’s grant of summary judgment de novo,
Feliberty, 98 F.3d at 276. The Supreme Court in eBay Inc.
v. MercExchange, L.L.C. outlined the factors a district
court should consider before issuing an permanent injunc-
tion, stating that “a plaintiff must demonstrate: (1) that it
APPLE INC. v. MOTOROLA, INC. 71
has suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are inade-
quate to compensate for that injury; (3) that, considering
the balance of hardships between the plaintiff and de-
fendant, a remedy in equity is warranted; and (4) that the
public interest would not be disserved by a permanent
injunction.” 547 U.S. 388, 391 (2006).
The ’898 patent is a SEP and, thus, Motorola has
agreed to license it on fair, reasonable, and non-
discriminatory licensing (“FRAND”) terms. The district
court granted Apple’s motion, stating:
I don’t see how, given FRAND, I would be justified
in enjoining Apple from infringing the ’898 unless
Apple refuses to pay a royalty that meets the
FRAND requirement. By committing to license
its patents on FRAND terms, Motorola committed
to license the ’898 to anyone willing to pay a
FRAND royalty and thus implicitly acknowledged
that a royalty is adequate compensation for a li-
cense to use that patent. How could it do other-
wise? How could it be permitted to enjoin Apple
from using an invention that it contends Apple
must use if it wants to make a cell phone with
UMTS telecommunications capability—without
which it would not be a cell phone.
Apple, Inc., 869 F. Supp. 2d at 913-14 (emphases in orginal).
To the extent that the district court applied a per se
rule that injunctions are unavailable for SEPs, it erred.
While Motorola’s FRAND commitments are certainly
criteria relevant to its entitlement to an injunction, we
see no reason to create, as some amici urge, a separate
rule or analytical framework for addressing injunctions
for FRAND-committed patents. The framework laid out
by the Supreme Court in eBay, as interpreted by subse-
quent decisions of this court, provides ample strength and
flexibility for addressing the unique aspects of FRAND
72 APPLE INC. v. MOTOROLA, INC.
committed patents and industry standards in general.
547 U.S. at 391-94. A patentee subject to FRAND com-
mitments may have difficulty establishing irreparable
harm. On the other hand, an injunction may be justified
where an infringer unilaterally refuses a FRAND royalty
or unreasonably delays negotiations to the same effect.
See, e.g., U.S. Dep’t of Justice and U.S. Patent and
Trademark Office, Policy Statement on Remedies for
Standard-Essential Patents Subject to Voluntary
F/RAND Commitments, at 7-8 (Jan. 8, 2013). To be clear,
this does not mean that an alleged infringer’s refusal to
accept any license offer necessarily justifies issuing an
injunction. For example, the license offered may not be on
FRAND terms. In addition, the public has an interest in
encouraging participation in standard-setting organiza-
tions but also in ensuring that SEPs are not overvalued.
While these are important concerns, the district courts
are more than capable of considering these factual issues
when deciding whether to issue an injunction under the
principles in eBay.
Applying those principles here, we agree with the dis-
trict court that Motorola is not entitled to an injunction
for infringement of the ’898 patent. Motorola’s FRAND
commitments, which have yielded many license agree-
ments encompassing the ’898 patent, strongly suggest
that money damages are adequate to fully compensate
Motorola for any infringement. Similarly, Motorola has
not demonstrated that Apple’s infringement has caused it
irreparable harm. Considering the large number of
industry participants that are already using the system
claimed in the ’898 patent, including competitors,
Motorola has not provided any evidence that adding one
more user would create such harm. Again, Motorola has
agreed to add as many market participants as are willing
to pay a FRAND royalty. Motorola argues that Apple has
refused to accept its initial licensing offer and stalled
negotiations. However, the record reflects that negotia-
APPLE INC. v. MOTOROLA, INC. 73
tions have been ongoing, and there is no evidence that
Apple has been, for example, unilaterally refusing to
agree to a deal. Consequently, we affirm the district
court’s grant of summary judgment that Motorola is not
entitled to an injunction for infringement of the ’898
patent.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED
COSTS
Each party shall bear its own costs.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC. AND NEXT SOFTWARE, INC.
(formerly known as NeXT Computer, Inc.),
Plaintiffs-Appellants,
v.
MOTOROLA, INC. (now known as Motorola Solu-
tions, Inc.) AND MOTOROLA MOBILITY, INC.,
Defendants-Cross Appellants.
______________________
2012-1548, -1549
______________________
Appeals from the United States District Court for the
Northern District of Illinois in No. 11-CV-8540, Circuit
Judge Richard A. Posner.
______________________
RADER, Chief Judge, dissenting-in-part.
I join the court’s opinion in its entirety, except for the
affirmance of the district court’s denial of Motorola’s
request for an injunction. To my eyes, the record contains
sufficient evidence to create a genuine dispute of material
fact on Apple’s posture as an unwilling licensee whose
continued infringement of the ’898 patent caused irrepa-
rable harm. Because of the unique and intensely factual
circumstances surrounding patents adopted as industry
standards, I believe the district court improperly granted
summary judgment. Therefore, on this narrow point, I
respectfully dissent in part.
2 APPLE INC. v. MOTOROLA, INC.
At the outset, a patent adopted as a standard un-
doubtedly gains value by virtue of that adoption. This
enhancement complicates the evaluation of the technology
independent of the standardization. By the same token,
the standardization decision may also simply reflect and
validate the inherent value of the technology advance
accomplished by the patent. Untangling these value
components (at the heart of deciding whether a putative
licensee was “unwilling” to license, and thus irreparable
harm and other injunction factors) requires intense
economic analysis of complex facts. In sum, right from
the theoretical outset, this question is not likely to be
susceptible to summary adjudication.
In reciting the legal principles for an injunction, this
court accurately states the inquiries. Those principles
supply no per se rule either favoring or proscribing in-
junctions for patents in any setting, let alone the height-
ened complexity of standardized technology. This court
notes that a patent owner in a standard context “may
have difficulty establishing irreparable harm . . . . [but] an
injunction may be justified where an infringer unilateral-
ly refuses a FRAND royalty or unreasonably delays
negotiations to the same effect.” Majority Op. 72 (citing
U.S. Dep’t of Justice and U.S. Patent and Trademark
Office, Policy Statement on Remedies for Standard-
Essential Patents Subject to Voluntary F/RAND Com-
mitments, at 7–8 (Jan. 8, 2013)).
Market analysts will no doubt observe that a “hold
out” (i.e., an unwilling licensee of an SEP seeking to avoid
a license based on the value that the technological ad-
vance contributed to the prior art) is equally as likely and
disruptive as a “hold up” (i.e., an SEP owner demanding
unjustified royalties based solely on value contributed by
the standardization). These same complex factual ques-
tions regarding “hold up” and “hold out” are highly rele-
vant to an injunction request. In sum, differentiating
“hold up” from “hold out” requires some factual analysis of
APPLE INC. v. MOTOROLA, INC. 3
the sources of value—the inventive advance or the stand-
ardization.
The record in this case shows evidence that Apple
may have been a hold out. See, e.g., Apple, Inc. v.
Motorola, Inc., 869 F. Supp. 2d 901, 914 (N.D. Ill. 2012);
Appellees’ Br. 64–65, 72–73; Appellees’ Reply Br. 26–27;
J.A. 118884–86. This evidence alone would create a
dispute of material fact.
More important, the district court made no effort to
differentiate the value due to inventive contribution from
the value due to standardization. Without some attention
to that perhaps dispositive question, the trial court was
adrift without a map, let alone a compass or GPS system.
In fact, without that critical inquiry, the district court
could not have properly applied the eBay test as it should
have.
Instead of a proper injunction analysis, the district
court effectively considered Motorola’s FRAND commit-
ment as dispositive by itself: “Motorola committed to
license the ’898 to anyone willing to pay a FRAND royalty
and thus implicitly acknowledged that a royalty is ade-
quate compensation for a license to use that patent. How
could it do otherwise?” Apple, 869 F. Supp. 2d at 914. To
the contrary, Motorola committed to offer a FRAND
license, which begs the question: What is a “fair” and
“reasonable” royalty? If Motorola was offering a fair and
reasonable royalty, then Apple was likely “refus[ing] a
FRAND royalty or unreasonably delay[ing] negotiations.”
See Majority Op. 72. In sum, the district court could not
duck the question that it did not address; was Motorola’s
FRAND offer actually FRAND?
Furthermore, the district court acknowledged the con-
flicting evidence about Apple’s willingness to license
the ’898 patent: “Apple’s refusal to negotiate for a license
(if it did refuse—the parties offer competing accounts,
unnecessary for me to resolve, of why negotiations broke
4 APPLE INC. v. MOTOROLA, INC.
down) was not a defense to a claim by Motorola for a
FRAND royalty.” Apple, 869 F. Supp. 2d at 914. Yet this
scenario, adequately presented by this record, is precisely
one that the court today acknowledges may justify an
injunction.
In my opinion, the court should have allowed
Motorola to prove that Apple was an unwilling licensee,
which would strongly support its injunction request. The
court states that “the record reflects that negotiations
have been ongoing,” Majority Op. 72–73; but, as the
district court even acknowledged, Motorola asserts other-
wise—that Apple for years refused to negotiate while
nevertheless infringing the ’898 patent, see, e.g., Appel-
lees’ Br. 64–65, 72–73; Appellees’ Reply Br. 26–27.
Motorola should have had the opportunity to prove its
case that Apple’s alleged unwillingness to license or even
negotiate supports a showing that money damages are
inadequate and that it suffered irreparable harm. The
district court refused to develop the facts necessary to
apply eBay as it should have. Consequently, the case
should be remanded to develop that record. For these
reasons, I respectfully dissent in part.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC. AND NEXT SOFTWARE, INC.
(formerly known as NeXT Computer, Inc.),
Plaintiffs-Appellants,
v.
MOTOROLA, INC. (now known as Motorola Solu-
tions, Inc.) AND MOTOROLA MOBILITY, INC.,
Defendants-Cross Appellants.
______________________
2012-1548, -1549
______________________
Appeals from the United States District Court for the
Northern District of Illinois in No. 11-CV-8540, Circuit
Judge Richard A. Posner.
______________________
PROST, Circuit Judge, concurring-in-part and dissenting-
in-part.
I join the majority opinion with respect to many of the
issues discussed therein. However, I respectfully dissent
with respect to the proper construction of the “heuristic”
claim terms in the ’949 patent. Additionally, I dissent
from the majority’s decision to vacate the district court’s
grant of summary judgment regarding Apple’s request for
an injunction, as I would affirm that decision. As I also
depart from the majority’s reasoning while reaching the
same result on several other issues, I write separately to
explain my views.
2 APPLE INC. v. MOTOROLA, INC.
I. CLAIM CONSTRUCTION OF THE ’949 PATENT
A. “Means-Plus-Function”
The majority concludes that the “heuristic” claim
terms in the ’949 patent have sufficiently definite struc-
ture to avoid means-plus-function treatment. Majority
Op. 21. I disagree.
As an initial matter, the majority misstates our law
on means-plus-function claiming. Generally speaking, a
means-plus-function analysis proceeds in two phases:
first, the court must determine whether the claim term is
drafted in means-plus-function format such that 35
U.S.C. § 112 ¶ 6 applies. See Kemco Sales, Inc. v. Control
Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000) (“Before
a court attempts to analyze what appears to be a means-
plus-function claim limitation, it must first assure itself
that such a claim limitation is at issue.”). Only then
should the court undertake to construe the disputed claim
term by identifying the “corresponding structure, materi-
al, or acts described in the specification” to which the
claim term will be limited. Welker Bearing Co. v. PHD,
Inc., 550 F.3d 1090, 1097 (Fed. Cir. 2008) (“Because
‘mechanism for moving said finger’ is a means-plus-
function limitation, this court must next examine the trial
court’s identification of ‘the corresponding structure,
material, or acts described in the specification and equiva-
lents thereof.’”).
Although the majority accurately states these legal
principles, see Majority Op. 9, it fails to faithfully apply
them. Rather, the majority’s analysis collapses these two
steps into one, and in doing so, it effectively renders the
category of non-indefinite means-plus-function claim
terms a null set.
The majority correctly states that the proper inquiry
in determining whether a claim term is drafted in means-
plus-function format is whether the limitation has “suffi-
APPLE INC. v. MOTOROLA, INC. 3
ciently definite structure.” Majority Op. 10-11. The
majority then identifies several ways in which a term may
be deemed to have such structure, such as when it has “a
structural definition that is either provided in the specifi-
cation or generally known in the art,” when it “outlin[es]
an algorithm, a flowchart, or a specific set of instructions
or rules,” or when the specification “describ[es] the claim
limitation’s operation, such as its input, output, or con-
nections.” Id. at 13-14. By contrast, the majority states,
“if the claim merely recites a generic nonce word and the
remaining claim language, specification, prosecution
history, and relevant external evidence provide no further
structural description to a person of ordinary skill in the
art, then the presumption against means-plus-function
claiming is rebutted.” Id. at 16.
In effect, what the majority has done is imported the
second step of the analysis (where you define the scope of
a means-plus-function claim term based on the corre-
sponding structure in the specification) into the first step
(where you identify whether the term is drafted in means-
plus-function format). The majority’s analysis implies
that so long as a claim term has corresponding structure
in the specification, it is not a means-plus-function limita-
tion. 1 But such a rule would render every means-plus-
function claim term indefinite. Under the majority’s
approach, a term would only be deemed a means-plus-
function limitation if it has no corresponding structure—
1 Admittedly, the majority suggests that “it is pos-
sible to find that a claim limitation does not connote
sufficiently definite structure despite the presence of some
corresponding structure in the specification.” Majority
Op. 10. But the majority’s actual analysis of how to
identify a sufficiently definite structure to avoid means-
plus-function treatment suggests that the opposite is true.
4 APPLE INC. v. MOTOROLA, INC.
an absurd result that would eviscerate means-plus-
function claiming. 2
Applying the proper legal analysis, there can be little
doubt that the heuristic limitations are means-plus-
function limitations.
2 Nothing so clearly demonstrates the majority’s
confusion on this issue as the cases on which it relies. In
support of its view that a court must scour the specifica-
tion for corresponding structure in order to save a claim
term from means-plus-function treatment, the majority
cites several cases that were attempting to identify the
corresponding structure of undisputedly means-plus-
function claim terms. For example, the majority cites
Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d
1376, 1385 (Fed. Cir. 2011), for the proposition that a
claim may contain sufficient structure to avoid means-
plus-function claiming by reciting an algorithm. Majority
Op. 13. However, the claim term at issue in that case was
“means for cross-referencing,” which no one disputed was
a means-plus-function limitation. This court’s search for
an algorithm to support that claim term was merely an
attempt to save the means-plus-function term from indef-
initeness. See Typhoon Touch, 659 F.3d at 1385-86. The
same is true of Finisar Corp. v. DirecTV Group, Inc., 523
F.3d 1323 (Fed. Cir. 2008), on which the majority also
relies. Id. at 1340 (evaluating whether “computer-
implemented means-plus-function claims” disclosed
enough of an algorithm to provide the necessary structure
under § 112, ¶ 6). The majority’s misreading of these
cases is all the more striking because it is the same error
the majority accuses the district court of committing in its
reading of Aristocrat Technologies Australia Party Ltd. v.
International Game Technology, 521 F.3d 1328, 1333
(Fed. Cir. 2008). Majority Op. 12.
APPLE INC. v. MOTOROLA, INC. 5
To begin with, it is true that the absence of the word
“means” in the disputed claim terms creates a presump-
tion that these are not means-plus-function limitations.
See Inventio AG v. ThyssenKrupp Elevator Ams. Corp.,
649 F.3d 1350, 1356 (Fed. Cir. 2011). However, it is
undisputed that the heuristics limitations recite functions
performed by the heuristics (e.g., “determining that the
one or more finger contacts correspond to a command to
transition from displaying a respective item in a set of
items to displaying a next item in the set of items”). The
relevant question therefore is whether the claim fails to
recite sufficient structure for performing those functions,
in which case the presumption against means-plus-
function treatment would be overcome. See id.As we have previously explained:
What is important is whether the term is one that
is understood to describe structure, as opposed to
a term that is simply a nonce word or a verbal
construct that is not recognized as the name of
structure and is simply a substitute for the term
“means for.” The court in Personalized Media
Communications drew the pertinent distinction in
holding that the term “detector,” although broad,
is still structural for purposes of section 112 ¶ 6
because it “is not a generic structural term such
as ‘means,’ ‘element,’ or ‘device’; nor is it a coined
term lacking a clear meaning such as ‘widget’ or
‘ram-a-fram.’”
Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d
1354, 1360 (Fed. Cir. 2004) (quoting Personalized Media
Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 704
(Fed. Cir. 1998)). Following this, we have found that
terms such as “computing unit,” Inventio, 649 F.3d at
1359-60, and “soft start circuit,” Power Integrations, Inc.
v. Fairchild Semiconductor International, Inc., 711 F.3d
1348, 1365 (Fed. Cir. 2013), connote sufficient structure to
6 APPLE INC. v. MOTOROLA, INC.
avoid means-plus-function treatment. On the other hand,
terms such as “colorant selection mechanism,” Massachu-
setts Institute of Technology v. Abacus Software, 462 F.3d
1344, 1353-54 (Fed. Cir. 2006), and “mechanism for
moving said finger,” Welker Bearing, 550 F.3d at 1095-97,
have failed to recite sufficient structure to avoid means-
plus-function treatment.
The term heuristic, which the district court construed
as “rules to be applied to data to assist in drawing infer-
ences from that data,” is a vague concept that does not
connote known, physical structure in the same way as the
terms “computing unit” or “circuit.” Rather, the term
heuristic is much more similar to the imprecise terms
“mechanism,” “means,” and “element.” Therefore, I would
affirm the district court’s conclusion that the heuristic
limitations are subject to means-plus-function treatment.
If, as the majority concludes—in my view incorrect-
ly—our precedent dictates that the “heuristic” limitations
in the ’949 patent are not subject to means-plus-function
treatment, then perhaps it is time to revisit the issue of
when claim language invokes § 112 ¶ 6, particularly for
computer-implemented inventions. As explained above, I
see no real difference between the following two claim
limitations:
a next item means for determining that the one or
more finger contacts correspond to a command to
transition from displaying a respective item in a
set of items to displaying a next item in the set of
items; and
a next item heuristic for determining that the one
or more finger contacts correspond to a command
to transition from displaying a respective item in
a set of items to displaying a next item in the set
of items.
APPLE INC. v. MOTOROLA, INC. 7
The first limitation would surely be construed as a means-
plus-function limitation. Yet, although the second limita-
tion provides no more real structure than the first, the
majority concludes that it is outside the realm of § 112
¶ 6.
That one minor drafting decision greatly expands the
scope of the claim limitation because the claim is not
limited to the corresponding structure disclosed in the
patent specification. Indeed, under the majority’s view,
this case provides a stark example of how patent appli-
cants are able to claim broad functionality without being
subject to the restraints imposed by § 112 ¶ 6. As inter-
preted by the majority, the “next item heuristic” limita-
tion in claim 1 covers any heuristic used by a touch-screen
device to determine that “one or more finger contacts
correspond to a command to transition from displaying a
respective item in a set of items to displaying a next item
in the set of items.” And yet, it is undisputed that the
patent specification discloses only two such heuristics: a
swipe from right to left and a tap on the right side of the
screen. In fact, the majority relied on exactly those two
heuristics as the necessary “structure” that removed this
claim term from the means-plus-function realm altogeth-
er. Majority Op. 18. 3
Professor Lemley has recently written on the issue of
functional claiming in software patents. Mark A. Lemley,
Software Patents and the Return of Functional Claiming,
2013 WIS. L. REV. 905 (2013). He acknowledges this
court’s recent case law in which we have been “vigilant in
3 Oddly, in defining “heuristic,” the majority states
that it “does not include all means for performing the
recited function.” Majority Op. 17. But of course, once
this court has ruled that the term is not a means-plus-
function limitation, that term can indeed be construed so
broadly.
8 APPLE INC. v. MOTOROLA, INC.
limiting software patentees who write claims in means-
plus-function format to the particular algorithms that
implement those claims.” Id. at 926. However, he notes
that in many cases involving software patents, we have
not treated claims as means-plus-function claims at all,
leading to problems of overbroad patents:
The presence of structure in the form of “a com-
puter” or “a processor” or even “the Internet” has
led the Federal Circuit to give these claims control
over the claimed function however implemented.
As a result, software patents have circumvented
the limits the 1952 Act places on functional claim-
ing. The result has been a plethora of software
patents claimed not on the basis of the technology
the patentee actually developed, but on the basis
of the function that technology performs. Those
claims aren’t limited to or commensurate with
what the patentee invented, and they are accord-
ingly the ones that patent plaintiffs tend to assert
against defendants whose systems bear little re-
semblance to what the patentee actually invent-
ed. . . . [U]nder this functional claiming rubric the
software patents with the least actual technical
content end up with the broadest claims: “Its mo-
nopoly breadth is a function of its lack of technical
specification.”
Id. at 926-28 (footnotes omitted) (quoting Christina Bo-
hannan & Herbert Hovenkamp, Creation Without Re-
straint: Promoting Liberty and Rivalry in Innovation 125
(2012)); see also id. at 905 (“[P]atentees claim to own not a
particular machine, or even a particular series of steps for
achieving a goal, but the goal itself. The resulting over-
broad patents overlap and create patent thickets.”). I
believe Professor Lemley raises valid concerns about this
court’s means-plus-function jurisprudence as it relates to
computer-implemented inventions. Although the majority
here did not base its conclusion on such generic structural
APPLE INC. v. MOTOROLA, INC. 9
terms as “a computer” or “a processor,” the end result is
the same: Apple’s ’949 patent is construed broadly to
cover the function performed by the heuristics, not the
specific heuristics disclosed in the specification. This
outcome should compel our court to reconsider when we
treat functional claims as means-plus-function claims.
B. Corresponding Structure
Because I would affirm the district court’s conclusion
that the heuristics limitations are means-plus-function
limitations, I would therefore reach Apple’s alternative
argument regarding the corresponding structure for the
term “next item heuristic.”
The ’949 patent specification contains two examples of
a next item heuristic: a tap on the right side of the
touchscreen and a right-to-left horizontal swipe. See,
e.g., ’949 patent col. 34 ll. 12-16 (“In some embodiments,
the user can also initiate viewing of the next image by
making a tap gesture 1620 on the right side of the image.
In some embodiments, the user can also initiate viewing
of the next image by making a swipe gesture 1616 from
right to left on the image.” (emphases added)). Neverthe-
less, the district court rejected the horizontal swipe as
corresponding structure for the claimed next item heuris-
tic. The district court reasoned that a horizontal finger
swipe fell within the scope of another claimed heuristic—
namely the “two-dimensional screen translation heuristic”
in the prior claim limitation. The district court did not
see how “the same user finger movement [could be] un-
derstood to communicate two separate commands.” J.A.
93. Therefore, the court limited the next item heuristic’s
corresponding structure to “a heuristic that uses as one
input a user’s finger tap on the right side of the device’s
touch screen.” J.A. 94.
Apple argues—and I agree—that the district court
failed to consider that the heuristics might apply in
different scenarios. For example, in describing the photo
10 APPLE INC. v. MOTOROLA, INC.
album application depicted in Figure 16A of the ’949
patent, the specification explains that the user can “initi-
ate viewing of the next image by making a swipe gesture
1616 from right to left on the image.” ’949 patent col. 34
ll. 14-16. The specification goes on to explain, however,
that “if just a portion of image 1606 is displayed, in re-
sponse to detecting a finger drag or swipe (e.g., 1626), the
displayed portion of the image is translated in accordance
with the direction of the drag or swipe gesture (e.g.,
vertical, horizontal, or diagonal translation).” Id. at col.
35 ll. 19-24. In other words, a horizontal swipe will be
treated differently depending on whether a full image is
displayed or the user has zoomed in on a portion of the
image. There is nothing in the claim language that
requires that the “two-dimensional screen translation
heuristic” and “next item heuristic” apply in the same
context. Therefore, I would reverse the district court’s
decision to limit the corresponding structure to a finger
tap on the right side of the screen, and would reverse the
grant of summary judgment of non-infringement for the
accused products that use a “swipe” gesture as a next
item heuristic.
II. ADMISSIBILITY OF EXPERT TESTIMONY RELATING TO
THE ’949 PATENT
While I concur in the judgment reversing and re-
manding the district court’s exclusion of the testimony of
Apple’s expert, Brian Napper, based on his erroneous
claim construction, I write separately to note my agree-
ment with the district court that Napper’s reliance on the
Magic Trackpad was inherently unreliable.
The majority concludes that the district court erred in
excluding the testimony of Apple’s expert, Brian Napper,
for two reasons. First, the district court’s analysis was
based on an incorrect claim construction. Majority Op.
42-43. Specifically, the district court criticized Napper for
failing to isolate the value to consumers of the “tap for
APPLE INC. v. MOTOROLA, INC. 11
next item” functionality, and for failing to consider alter-
natives to a $35 million royalty that would enable
Motorola to provide this functionality. See J.A. 112-14.
These criticisms were based on the district court’s conclu-
sion that the ’949 patent’s claimed “next item heuristic”
was a means-plus-function claim that was limited to a tap
on the right-hand side of the screen to turn to the next
item. See J.A. 112. The majority determined that this
claim construction was erroneous because the “next item
heuristic” was not a means-plus-function limitation.
Majority Op. 21. As explained above, I would affirm the
district court’s construction of the “heuristic” claim terms
as means-plus-function limitations, but would reverse the
court’s ruling that the scope of the corresponding struc-
ture for the “next item heuristic” is limited to a tap on the
right-hand side of the screen. Thus, although I arrive at
the outcome in a different way, I concur in the majority’s
conclusion that the district court’s exclusion of Napper’s
testimony must be reversed and remanded on the basis of
its erroneous claim construction.
However, unlike the majority, I do not believe the dis-
trict court abused its discretion in excluding Napper’s
testimony as unreliable. The district court determined
that Napper’s reliance on the Magic Trackpad to calculate
the value of the claimed functionality was unreliable
because that product was not a sufficiently comparable
benchmark. Specifically, the court said:
Napper’s proposed testimony does not provide a
reliable basis for inferring the value even of the
vertical scrolling feature. The fact that many con-
sumers will pay more for a Magic Trackpad than
for a mouse tells one nothing about what they will
pay to avoid occasionally swiping unsuccessfully
because their swiping finger wasn’t actually verti-
cal to the screen. Maybe consumers would pay $2,
but there is no evidence they would, or at least
none furnished by Napper.
12 APPLE INC. v. MOTOROLA, INC.
J.A. 115.
It is true that our precedent supports looking to the
cost of benchmark commercial products in determining
the value of a defendant’s infringement. See, e.g., i4i Ltd.
P’ship v. Microsoft Corp., 598 F.3d 831, 853-56 (Fed. Cir.
2010). However, as even Apple concedes, the Trackpad
“contains none of the function asserted from the ’949
patent.” Motorola Response Br. 39; see also Apple Reply
Br. 70 (acknowledging that “[t]hat is true”). Napper
therefore began his analysis from a highly questionable
starting point. And because the Trackpad does not con-
tain any of the claimed functionality, the discounts Nap-
per applied to get from $20 to $2 (supposedly because the
Trackpad contains more features than those claimed by
the ’949 patent) appear to be completely arbitrary. Ac-
cordingly, I do not believe the district court abused its
discretion in concluding that Napper’s proposed testimony
failed to provide a reliable basis for inferring the value of
the claimed functionality. On remand, I do not think it
would be reversible error for the district court to again
prohibit Apple from relying on such unreliable testimony.
III. APPLE’S REQUEST FOR INJUNCTIVE RELIEF
The district court granted summary judgment that
Apple was not entitled to an injunction for infringement of
the ’949, ’263, and ’647 patents. The majority vacates the
grant of summary judgment—apparently for all three
patents—because of its reversal of the claim construction
for the ’949 patent. Majority Op. 69-70. I respectfully
dissent, and would affirm the grant of summary judgment
for all three patents.
Apple argues that it presented ample evidence with
respect to the eBay factors outlined above to survive
summary judgment. I will only address the first injunc-
tion factor—irreparable harm—because I view it as
dispositive.
APPLE INC. v. MOTOROLA, INC. 13
Apple argues that it is being irreparably harmed by
Motorola’s infringement because sales of Motorola’s
infringing products are causing Apple to lose market
share and downstream sales. 4 But in order to rely on lost
market share and downstream sales to show irreparable
harm, Apple must provide more than evidence showing
merely that Motorola is taking market share from Apple.
Rather, Apple must be able to show a causal nexus be-
tween the inclusion of the allegedly infringing features in
Motorola’s phones and the alleged harm to Apple. See
Apple III, 735 F.3d at 1360-61; Apple Inc. v. Samsung
Elecs., 678 F.3d 1314, 1324 (Fed. Cir. 2012) (Apple I)
(“Sales lost to an infringing product cannot irreparably
harm a patentee if consumers buy that product for rea-
sons other than the patented feature. If the patented
feature does not drive the demand for the product, sales
would be lost even if the offending feature were absent
from the accused product.”).
The district court found that Apple had no evidence
linking Apple’s lost market share and downstream sales
to the inclusion of the allegedly infringing features in
Motorola’s phones. See J.A. 152 (“Apple’s ‘feel good’
theory does not indicate that infringement of these claims
(if they were infringed) reduced Apple’s sales or market
4 Apple also argues that a finding of irreparable
harm is supported by evidence showing that Apple has a
policy against licensing competitors to practice the three
asserted patents. Apple’s willingness to license the as-
serted patents is, of course, relevant to the second injunc-
tion factor—the inadequacy of legal remedies to
compensate for irreparable harm. See, e.g., Apple Inc. v.
Samsung Elecs. Co., 735 F.3d 1352, 1369-71 (Fed. Cir.
2013) (Apple III). However, I am not aware of any cases
establishing that a policy against licensing patents can
show irreparable harm in the first place.
14 APPLE INC. v. MOTOROLA, INC.
share, or impaired consumer goodwill toward Apple
products.”). Rather, the district court found that “Apple is
complaining that Motorola’s phones as a whole ripped off
the iPhone as a whole,” which the court explained was
insufficient because “Motorola’s desire to sell products
that compete with the iPhone is a separate harm—and a
perfectly legal one—from any harm caused by patent
infringement.” Id. at 153.
Apple contends that its evidence raises a genuine is-
sue as to whether the allegedly infringing features are
drivers of consumer demand for Motorola’s products. I
disagree. First, with respect to the ’949 patent, Apple
cites consumer survey evidence purporting to show that
“having a superior touchscreen interface—as opposed to a
physical keyboard—drives consumers demand for
smartphones.” Apple Br. 65. This evidence, however,
says nothing about the specific features claimed in
the ’949 patent. See, e.g., Apple Inc. v. Samsung Elecs.
Co., 695 F.3d 1370, 1376 (Fed. Cir. 2012) (Apple II). The
only evidence Apple cites that allegedly relates specifical-
ly to “the scrolling heuristics claimed by the ’949 patent”
is testimony from Motorola executives about what they
thought would be important to consumers. Apple Br. 66.
However, we found similar evidence, standing alone, to be
insufficient to establish a causal nexus in Apple I, ex-
plaining:
While the evidence that Samsung’s employees be-
lieved it to be important to incorporate the pa-
tented feature into Samsung’s products is
certainly relevant to the issue of nexus between
the patent and market harm, it is not dispositive.
That is because the relevant inquiry focuses on
the objective reasons as to why the patentee lost
sales, not on the infringer’s subjective beliefs as to
why it gained them (or would be likely to gain
them).
APPLE INC. v. MOTOROLA, INC. 15
678 F.3d at 1327-28. Accordingly, I agree with the dis-
trict court that Apple’s evidence fails to raise a genuine
issue as to whether the features accused of infringing
the ’949 patent drive consumer demand for Motorola’s
phones.
As for the ’263 patent, Apple cites studies and surveys
purporting to show that the claimed invention facilitated
the development of popular apps for the iPhone and iPad,
which in turn helped make Apple’s devices so popular.
But Apple does not cite any similar studies for consumers
of Motorola’s products. Even assuming the evidence
shows that the ’263 patent is a driver of demand for
Apple’s products, that does not mean the ’263 patent is a
driver of demand for Motorola’s products. See Apple II,
695 F.3d at 1376. Apple’s only other evidence for the ’263
patent allegedly shows Motorola’s subjective beliefs that
using “Apple’s simplification of streaming technology”
would help it gain sales. Apple Br. 67. Again, however,
this evidence, standing alone, is insufficient to establish a
causal nexus between Motorola’s incorporation of the
allegedly infringing feature and the alleged harm suffered
by Apple. See Apple I, 678 F.3d at 1327-28.
Similarly, with respect to the ’647 patent, Apple cites
evidence that “Motorola itself” identified the patent’s
“structure-detection feature” as “a high priority and a
‘differentiating’ feature.” Apple Br. 68 (quoting J.A.
29,857). Apple also cites a newspaper article describing
the feature as a “cool[] new feature[]” in Apple’s products.
J.A. 29,893. As with the ’263 patent, this evidence is
insufficient to establish the requisite nexus.
For these reasons, I agree with the district court that
Apple’s evidence fails to raise a genuine issue as to
whether the allegedly infringing features are drivers of
consumer demand for Motorola’s products. As a result,
Apple cannot show that Motorola’s infringement has
caused it irreparable harm. Apple therefore cannot meet
16 APPLE INC. v. MOTOROLA, INC.
the eBay standard for injunctive relief. Accordingly, I
would affirm the district court’s grant of summary judg-
ment of no injunctive relief.
IV. MOTOROLA’S REQUEST FOR INJUNCTIVE RELIEF
RELATING TO THE ’898 PATENT
I concur in the majority’s judgment that Motorola is
not entitled to an injunction for infringement of the ’898
patent. Majority Op. 71-73. However, I write separately
to note my disagreement with the majority’s suggestion
that an alleged infringer’s refusal to negotiate a license
justifies the issuance of an injunction after a finding of
infringement.
As an initial matter, I agree with the majority that
there is no need to create a categorical rule that a patent-
ee can never obtain an injunction on a FRAND-committed
patent. 5 Id. at 71-72. Rather, FRAND commitment
should simply be factored into the consideration of the
eBay framework. Moreover, I agree that a straightfor-
ward application of the eBay factors does not necessarily
mean that injunctive relief would never be available for a
FRAND-committed patent. However, I disagree as to the
circumstances under which an injunction might be appro-
priate.
Motorola argues—and the majority agrees—that an
injunction might be appropriate where an alleged infring-
er “unilaterally refuses a FRAND royalty or unreasonably
5 For what it’s worth, I would note that the district
court did not apply a per se rule that injunctions are
unavailable for SEPs. Rather, Judge Posner expressly
noted that injunctive relief might have been appropriate if
Apple had “refuse[d] to pay a royalty that meets the
FRAND requirement.” J.A. 140. Thus, the majority need
not have suggested that the district court erred insofar as
it applied such a categorical rule. See Majority Op. 71.
APPLE INC. v. MOTOROLA, INC. 17
delays negotiations to the same effect.” Id. Motorola
insists that in the absence of the threat of an injunction,
an infringer would have no incentive to negotiate a license
because the worst-case scenario from a patent infringe-
ment lawsuit is that it would have to pay the same
amount it would have paid earlier for a license.
I disagree that an alleged infringer’s refusal to enter
into a licensing agreement justifies entering an injunction
against its conduct, for several reasons. First, as Apple
points out, an alleged infringer is fully entitled to chal-
lenge the validity of a FRAND-committed patent before
agreeing to pay a license on that patent, and so should not
necessarily be punished for less than eager negotiations.
Second, there are many reasons an alleged infringer
might prefer to pay a FRAND license rather than under-
going extensive litigation, including litigation expenses,
the possibility of paying treble damages or attorney’s fees
if they are found liable for willful infringement, and the
risk that the fact-finder may award damages in an
amount higher than the FRAND rates. Indeed, as
Motorola itself pointed out, we have previously acknowl-
edged that a trial court may award an amount of damages
greater than a reasonable royalty if necessary “to compen-
sate for the infringement.” Stickle v. Heublein, Inc., 716
F.2d 1550, 1563 (Fed. Cir. 1983). Thus, if a trial court
believes that an infringer previously engaged in bad faith
negotiations, it is entitled to increase the damages to
account for any harm to the patentee as a result of that
behavior.
But regardless, none of these considerations alters the
fact that monetary damages are likely adequate to com-
pensate for a FRAND patentee’s injuries. I see no reason,
therefore, why a party’s pre-litigation conduct in license
negotiations should affect the availability of injunctive
relief.
18 APPLE INC. v. MOTOROLA, INC.
Instead, an injunction might be appropriate where,
although monetary damages could compensate for the
patentee’s injuries, the patentee is unable to collect the
damages to which it is entitled. For example, if an al-
leged infringer were judgment-proof, a damages award
would likely be an inadequate remedy. Or, if a defendant
refused to pay a court-ordered damages award after being
found to infringe a valid FRAND patent, a court might be
justified in including an injunction as part of an award of
sanctions.
But regardless, these circumstances are not present in
this case, and I agree with the district court that under
the facts here, Motorola cannot show either irreparable
harm or inadequacy of damages. I would therefore affirm
the district court’s denial of Motorola’s claim for injunc-
tive relief for the ’898 patent.
CONCLUSION
For the reasons above, I concur in part and dissent in
part.