Mobilemedia Ideas LLC v. Apple Inc. ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
MOBILEMEDIA IDEAS LLC,
Plaintiff-Cross-Appellant
v.
APPLE INC.,
Defendant-Appellant
______________________
2014-1060, 2014-1091
______________________
Appeals from the United States District Court for the
District of Delaware in No. 1:10-cv-00258-SLR-MPT,
Judge Sue L. Robinson.
______________________
Decided: March 17, 2015
______________________
STEVEN M. BAUER, Proskauer Rose LLP, Boston, MA,
argued for plaintiff-cross-appellant. Also represented by
JUSTIN J. DANIELS, SAFRAZ ISHMAEL, JOHN M. KITCHURA,
JR., JOHN E. ROBERTS.
GEORGE ALFRED RILEY, O’Melveny & Myers LLP, San
Francisco. CA, argued for defendant-appellant. Also
represented by LUANN LORAINE SIMMONS, MELODY
DRUMMOND HANSEN, TIM D. BYRON; XIN-YI ZHOU, Los
Angeles, CA.
______________________
2 MOBILEMEDIA IDEAS LLC v. APPLE INC.
Before TARANTO, BRYSON, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
This is a patent infringement case relating to four pa-
tents owned by plaintiff and cross-appellant MobileMedia
Ideas LLC (MobileMedia). Defendant and appellant
Apple Inc. (Apple) appeals from a final judgment of the
United States District Court for the District of Delaware
finding claim 73 of U.S. Patent No. 6,427,078 (the ’078
patent) and claim 23 of U.S. Patent No. 6,070,068 (the
’068 patent) to be infringed and not invalid. MobileMedia
cross-appeals from the district court’s final judgment
finding claims 5, 6, and 10 of U.S. Patent No. 6,253,075(the ’075 patent) and claims 2–4 and 12 of U.S. Patent No.
RE 39,231 (the ’231 patent) not to be infringed, and
claims 5, 6, and 10 of the ’075 patent to also be invalid.
As to Apple’s appeal, we (i) affirm the district court’s
judgment that claim 73 of the ’078 patent is not invalid,
(ii) reverse the district court’s judgment that claim 73 of
the ’078 patent is infringed, and (iii) reverse the district
court’s judgment that claim 23 of the ’068 patent is not
invalid. As to MobileMedia’s cross-appeal, we (i) affirm
the district court’s judgment that claims 5, 6, and 10 of
the ’075 patent are invalid, (ii) vacate the district court’s
judgment that claims 2–4 and 12 of the ’231 patent are
not infringed because the judgment is based on an errone-
ous claim construction, and (iii) remand to the district
court for further proceedings.
I. BACKGROUND
MobileMedia is a company formed by MPEG LA, LLC,
Nokia Corporation (Nokia), and Sony Corporation of
America. MobileMedia filed suit against Apple, asserting
infringement of sixteen patents by various Apple prod-
ucts. Apple responded with several affirmative defenses,
alleging, among other things, invalidity of all sixteen
patents, and also counterclaimed for declaratory judg-
MOBILEMEDIA IDEAS LLC v. APPLE INC. 3
ments of noninfringement. The district court bifurcated
the issues of willfulness and damages for purposes of
discovery and trial. During the course of the ensuing
litigation, the parties stipulated to a dismissal of the
claims and counterclaims related to two patents, and
MobileMedia deferred the resolution of four other patents
to a later phase of the litigation. The district court then
granted Apple’s summary judgment motions of nonin-
fringement or invalidity for five of the remaining patents,
including Apple’s summary judgment motion of nonin-
fringement of claims 2–4 and 12 of the ’231 patent.
MobileMedia Ideas LLC v. Apple Inc., 907 F. Supp. 2d
570, 627–28 (D. Del. 2012) (MobileMedia SJ). Mo-
bileMedia then selected claims 5, 6, and 10 of the ’075
patent, claims 23 and 24 of the ’068 patent, and claim 73
of the ’078 patent to assert at trial against Apple and its
accused iPhone 3G, iPhone 3GS, and iPhone 4 products.
MobileMedia Ideas LLC v. Apple Inc., 966 F. Supp. 2d
439, 447 (D. Del. 2013) (MobileMedia JMOL). At trial,
Apple argued that its accused iPhones did not infringe
any of the asserted claims and that certain combinations
of prior art references rendered each of the asserted
claims invalid as obvious under 35 U.S.C. § 103. The jury
returned a verdict finding that (i) Apple’s accused prod-
ucts directly infringed the asserted claims, (ii) Apple did
not induce infringement of the asserted claims, and (iii)
none of the asserted claims were invalid as obvious. Id.After the district court entered a judgment consistent
with the jury’s verdict, Apple renewed a previously-filed
motion for judgment as a matter of law (JMOL) under
Rule 50(b) of the Federal Rules of Civil Procedure (FRCP),
and in the alternative, moved for a new trial under FRCP
59(a). Id. The district court granted Apple’s JMOL
motion of (i) noninfringement and invalidity of all assert-
ed claims of the ’075 patent, id. at 457–59, and (ii) invalid-
ity of claim 24 of the ’068 patent, id. at 464–68. The
district court denied Apple’s motion with respect to (i)
4 MOBILEMEDIA IDEAS LLC v. APPLE INC.
invalidity of claim 23 and noninfringement of claims 23
and 24 of the ’068 patent, id. at 464–68, and (ii) invalidity
and noninfringement of claim 73 of the ’078 patent, id. at
472–74. The district court also denied Apple’s motion for
a new trial, id. at 474–77, and entered a judgment con-
sistent with its partial grant of Apple’s JMOL motion.
Joint Appendix (J.A.) 1–5. Both parties agree that the
district court’s judgment is final except for an accounting,
which includes the determination of damages and willful
infringement. See Robert Bosch LLC v. Pylon Mfg. Corp.,
719 F.3d 1305, 1320 (Fed. Cir. 2013) (en banc).
Apple now appeals the district court’s denial of its
JMOL motion of noninfringement and invalidity of claim
73 of the ’078 patent and claim 23 of the ’068 patent. In
particular, Apple challenges (i) the district court’s claim
construction of two means-plus-function limitations in
claim 73 of the ’078 patent and one limitation in claim 23
of the ’068 patent, (ii) the district court’s determination
that substantial evidence supports the jury’s finding that
a person having ordinary skill in the art would not have
been motivated to combine two references to render claim
73 of the ’078 patent obvious, and (iii) the district court’s
conclusion that claim 23 of the ’068 patent would not have
been obvious in view of a prior art reference, together
with the common knowledge of one skilled in the art.
For its part, MobileMedia cross-appeals (i) the district
court’s grant of Apple’s JMOL motion of noninfringement
and invalidity of claims 5, 6, and 10 of the ’075 patent,
and (ii) the district court’s grant of summary judgment of
noninfringement of the ’231 patent. In particular, Mo-
bileMedia challenges (i) the district court’s finding that
MobileMedia failed to present evidence that Apple’s
accused iPhones met a required limitation of the asserted
claims of the ’075 patent, (ii) the district court’s conclusion
that no reasonable juror could find the asserted claims of
the ’075 patent to be nonobvious over the prior art, and
(iii) the district court’s claim construction of a means-plus-
MOBILEMEDIA IDEAS LLC v. APPLE INC. 5
function limitation in the asserted claims of the ’231
patent.
Because a party may appeal a judgment that is final
except for an “accounting,” we have jurisdiction over both
Apple’s appeal and MobileMedia’s cross-appeal under 35
U.S.C. § 1292(c)(2).
II. DISCUSSION
We review decisions on motions for summary judg-
ment and JMOL under the law of the regional circuit.
Energy Transp. Grp. Inc. v. William Demant Holding
A/S, 697 F.3d 1342, 1350 (Fed. Cir. 2012). The Third
Circuit reviews grants and denials of motions for sum-
mary judgment de novo, applying the same standard of
review as the district court. Gonzalez v. Sec’y of Dep’t of
Homeland Sec., 678 F.3d 254, 257 (3d Cir. 2012). Similar-
ly, the Third Circuit reviews district court JMOL deci-
sions de novo. Pitts v. Delaware, 646 F.3d 151, 155 (3d
Cir. 2011). We must view the record in the light most
favorable to the verdict winner, drawing all reasonable
inferences in its favor. Starceski v. Westinghouse Elec.
Corp., 54 F.3d 1089, 1095 (3d Cir. 1995). Only if the
record is “critically deficient of the minimum quantum of
evidence” on which a jury could reasonably base its ver-
dict does the Third Circuit affirm a grant of JMOL. Pitts,
646 F.3d at 155 (internal citation omitted). JMOL, how-
ever, may be appropriate when there is a purely legal
basis required for reversal that does not depend on reject-
ing the jury’s findings on the evidence at trial. Acumed
LLC v. Advanced Surgical Servs., Inc., 561 F.3d 199, 211
(3d Cir. 2009).
III. APPLE’S APPEAL
A. The ’078 patent (camera phone)
The ’078 patent is directed to a “small-sized, portable
and hand-held work station,” such as a notebook comput-
er, that includes a camera unit, a data processing unit, a
6 MOBILEMEDIA IDEAS LLC v. APPLE INC.
display, a user interface, and at least one memory unit.
’078 patent, Abstract. The specification describes how
this “notebook computer” uses the attached camera unit
to take a picture of items such as business cards, hand-
written text, and figures. Id. at 5:15–21 (business cards),
5:43–45 (circles or lines), and 5:37–38 (handwritten text).
Software applications, such as graphics and optical char-
acter recognition (OCR) software, convert the captured
images into text or rudimentary graphical data for subse-
quent use by the notebook computer. Id. at 5:21–58.
According to the specification, adding a camera unit to the
notebook computer allows a user to “scan different written
and/or drawn information into the memory of the note-
book computer quickly and easily.” Id. at 6:17–20. A
“digitizer pad” may also be part of the notebook computer,
which uses “known technique[s]” to recognize input from a
pen and convert figures drawn on the digitizer pad into
bitmap images. Id. at 7:6–10.
The notebook computer can include a cellular mobile
phone unit, which uses “conventional” analog modem or
digital GSM technology. Id. at 3:37–49. Coupled with a
miniature speaker and microphone, the GSM interface
allows the notebook computer to “be used in the same way
as a conventional hand-held telephone.” Id. at 3:49–53.
The notebook computer can also transmit SMS (Short
Message Service) and e-mail messages through its GSM
interface. Id. at 8:7–17.
Although the invention is described throughout the
specification as a “notebook computer,” the specification
also contemplates that the device “may also be a radiotel-
ephone.” Id. at 8:18–20. Claim 73 of the ’078 patent
recites such an embodiment of the claimed invention:
73. A portable cellular mobile phone comprising:
a built in camera unit for obtaining image infor-
mation;
MOBILEMEDIA IDEAS LLC v. APPLE INC. 7
a user interface for enabling a user to input sig-
nals to operate the camera unit;
a display for presenting image information ob-
tained by the camera unit;
a microprocessor adapted to control the operations
of the camera unit in response to input signals
from the user interface, and to process image in-
formation received by the camera unit; and
means, coupled to said microprocessor, for trans-
mitting image information processed by said mi-
croprocessor to another location using a radio
frequency channel; and
wherein the camera unit comprises:
optics for obtaining image information;
an image sensor for obtaining image infor-
mation; and
means for processing and for storing at least a
portion of the image information obtained by the
camera unit for later recall and processing.
Id. at 16:1–19 (emphasis added).
1. Invalidity
Apple contends that the district court erred by deny-
ing its JMOL motion that the ’078 patent is invalid as
obvious over two references: Japanese patent application
publication no. H6-133081 (Kyocera) and U.S. Patent No.
5,550,646 (Lucent). Kyocera discloses a mobile phone
with a built-in camera unit, a user interface, and a view-
finder display. Kyocera, Abstract; J.A. 57596. The cam-
era unit includes an image sensor that captures image
data through a lens. Kyocera, ¶ 10; J.A. 57601. Lucent
discloses a portable phone with an integrated camera
unit, a keypad interface, and an LCD display. Lucent,
3:21–33, 4:1–31. The Lucent device includes a micropro-
8 MOBILEMEDIA IDEAS LLC v. APPLE INC.
cessor that controls camera operations, id. at 3:24–29, and
processes pictures in order to “enhance presentability,” id.at 3:47–48. The device stores these pictures in RAM
memory. Id. at 4:32–33, 4:40–42, and 6:46–62. The
device can then transmit the pictures using a “built-in
cellular telephone” and fax modem. Id. at 2:4–5, 2:61–66,
and 5:26–47.
During trial, Apple contended that the Kyocera mo-
bile phone, together with the microprocessor controlling
the Lucent device, disclose all limitations of claim 73. 1
Apple’s expert further testified that the two references
discuss similar technologies, and a person having ordi-
nary skill in the art—someone with a Bachelor of Science
degree in electrical engineering, computer engineering, or
the equivalent, and between two and four years of experi-
ence in the field 2—would have understood the benefits
and cost advantages of combining the references. Mo-
bileMedia JMOL, 966 F. Supp. 2d at 471. MobileMedia
responded with testimony from its expert that such a
skilled artisan would not have been able to combine the
Lucent microprocessor with the Kyocera mobile phone
during the relevant time frame due to the “complexity and
sophistication of software and hardware integration and
development.” Id. MobileMedia did not present evidence
of objective indicia of nonobviousness. J.A. 19477–78.
1 Apple also argued at trial that Kyocera anticipat-
ed claim 73 of the ’078 patent. MobileMedia contended
that Kyocera did not disclose a microprocessor or means
for storing captured images for later recall. The jury
found that Kyocera did not anticipate claim 73, a finding
which Apple does not appeal.
2 The parties agreed on the level of ordinary skill in
the art. Compare J.A. 20464 (testimony from Mo-
bileMedia’s expert), with J.A. 20285–86 (testimony from
Apple’s expert).
MOBILEMEDIA IDEAS LLC v. APPLE INC. 9
The district court determined that there was no mate-
rial dispute between the parties at trial that Kyocera and
Lucent together disclose all the limitations of claim 73.
MobileMedia JMOL, 966 F. Supp. 2d at 471. The district
court also found that the “jury implicitly chose to believe”
the testimony of MobileMedia’s expert instead of the
testimony of Apple’s expert regarding the alleged motiva-
tion to combine the two references. Id. at 472. Therefore,
the district court found that substantial evidence support-
ed the jury’s verdict that the ’078 patent was not invalid,
and denied Apple’s JMOL motion.
On appeal, Apple argues that the combination of the
Kyocera and Lucent references is merely the predictable
use of prior art elements according to their established
functions, and therefore would have been obvious. First,
Apple contends that Lucent discloses a microprocessor
that performs signal processing to “enhance presentabil-
ity” of captured pictures, and that its expert testified that
a skilled artisan would have recognized that modifying
Kyocera with Lucent provides the benefit of improved
picture quality. Second, Apple asserts that the Lucent
microprocessor can be programmed to provide functionali-
ty similar to that of the Kyocera mobile phone, and that
its expert testified that skilled artisans would have un-
derstood the cost advantages of using a programmable
microprocessor for the relevant operations of the Kyocera
mobile phone. Apple also notes that Lucent discloses a
commercially-available, off-the-shelf microprocessor, and
that its expert testified that disclosure of such an ordi-
nary, commercially-available processor would have moti-
vated those of skill in the art to try—and to expect success
from using—the Lucent microprocessor with the Kyocera
mobile phone.
A patent is invalid as obvious under 35 U.S.C. § 103 if
the differences between the subject matter sought to be
patented and the prior art are such that the subject
matter would have been obvious at the time the invention
10 MOBILEMEDIA IDEAS LLC v. APPLE INC.
was made to a person having ordinary skill in the art. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406–07 (2007).
Obviousness is a question of law based on underlying
facts, as set forth in Graham v. John Deere Co. of Kan.
City, 383 U.S. 1, 17 (1966). The Graham factors are (i)
the scope and content of the prior art, (ii) the differences
between the prior art and the claimed invention, (iii) the
level of ordinary skill in the field of the invention, and (iv)
any relevant objective considerations of nonobviousness.
See id. at 17–18. What a particular reference discloses is
a question of fact, as is the question of whether there was
a reason to combine certain references. Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Contractors
USA, Inc., 617 F.3d 1296, 1303 (Fed. Cir. 2010). Thus,
although we review any underlying findings of fact by the
jury—whether explicit or implicit—for substantial evi-
dence, the ultimate determination of obviousness is a
question of law we review de novo. Bos. Scientific Scimed,
Inc. v. Cordis Corp., 554 F.3d 982, 990 (Fed. Cir. 2009).
The existence of a motivation to combine the Kyocera
and Lucent references was contested by the parties at
trial. Thus, while Apple may have presented some evi-
dence to support its position that a skilled artisan would
have been motivated to combine Kyocera with Lucent,
this alone does not demonstrate that the jury’s verdict
was unsupported by substantial evidence.
At trial, MobileMedia’s expert focused on Kyocera’s
failure to teach a skilled artisan how to implement the
claimed “microprocessor adapted to control the operations
of the camera unit in response to input signals from the
user interface, and to process image information received
by the camera unit.” J.A. 20463; ’078 patent, 16:7–10.
MobileMedia’s expert acknowledged that had the claims
merely required a processor, “it [would have been] obvious
to put one there,” but testified that the surrounding claim
limitations required the microprocessor to “play[] multiple
roles” and “make [the claimed components] all work
MOBILEMEDIA IDEAS LLC v. APPLE INC. 11
together,” which was “a real challenge” in the art at the
time of the claimed invention. J.A. 20463–64, 204637.
MobileMedia’s expert noted that Nokia, which at the time
“was at the very forefront of innovation in the cellphone
industry,” needed two years to develop a product with a
microprocessor that provided the claimed functionality
between a phone and camera. J.A. 20467. In view of
these considerations, MobileMedia’s expert testified that
it would not have been obvious for one of skill in the art at
the time the invention was made (1994), even with
knowledge of the Lucent microprocessor, to combine the
Lucent microprocessor with the Kyocera mobile phone in
a manner that satisfied the limitations of claim 73 of the
’078 patent. J.A. 20466–67.
As the Supreme Court noted in KSR, even when a
technique has been used to improve a device, and a skilled
artisan would recognize that it could improve other devic-
es in the same way, using that technique may not be
obvious if its actual application is beyond his or her level
of skill. 550 U.S. at 417. Here, MobileMedia’s expert
testified that integrating the Lucent microprocessor to
control the camera of the Kyocera mobile phone in the
manner required by the asserted claims would be beyond
the technical ability of a skilled artisan. This provided
the jury with a reasonable basis for finding that the
claimed invention would not have been obvious to one of
ordinary skill in the art at the relevant timeframe. Alt-
hough Apple’s expert offered a differing opinion, when
there is conflicting testimony at trial, and the evidence
overall does not make only one finding on the point rea-
sonable, the jury is permitted to make credibility deter-
minations and believe the witness it considers more
trustworthy. See Kinetic Concepts, Inc. v. Smith & Neph-
ew, Inc., 688 F.3d 1342, 1362 (Fed. Cir. 2012). Here, the
jury credited the testimony of MobileMedia’s expert over
the testimony of Apple’s expert. MobileMedia JMOL, 966
F. Supp. 2d at 472. Where there is substantial evidence
12 MOBILEMEDIA IDEAS LLC v. APPLE INC.
for a reasonable jury finding, it is not our function to
second guess or reevaluate the weight given to that evi-
dence. See, e.g., Comark Commc’ns, Inc. v. Harris Corp.,
156 F.3d 1182, 1192 (Fed. Cir. 1998). Thus, we agree
with the district court that substantial evidence supports
the jury’s finding that one of skill in the art would not
have been motivated to combine the Lucent and Kyocera
references to arrive at the claimed invention. Conse-
quently, the district court did not err by denying Apple’s
motion for JMOL of invalidity.
2. Noninfringement
Apple also contends that the district court erred in
construing two means-plus-function limitations in claim
73. MobileMedia SJ, 907 F. Supp. 2d at 601. Apple
contends that the jury’s finding of infringement was based
on these erroneous constructions, and that when con-
strued correctly, no reasonable jury could find that Ap-
ple’s accused iPhones infringe claim 73 of the ’078 patent.
Both parties agree that claim 73 includes two limita-
tions that invoke 35 U.S.C. § 112 ¶ 6 3: a “means . . . for
transmitting image information” and a “means for pro-
cessing and for storing” this image information. Both
parties also agree that the “image information” processed
and transmitted by the two “means” must be obtained
from the camera unit. Appellant’s Reply Br. 4 n.1; see
also J.A. 28470–71.
We turn first to the “means for processing and stor-
ing.” Apple argues that the district court erred in identi-
3 Paragraph 6 of 35 U.S.C. § 112 was replaced with
newly designated § 112(f) when § 4(c) of the America
Invents Act (AIA), Pub. L. No. 112-29, took effect on
September 16, 2012. Because the applications resulting
in the patents at issue in this case were filed before that
date, we will refer to the pre-AIA version of § 112.
MOBILEMEDIA IDEAS LLC v. APPLE INC. 13
fying the structure disclosed in the ’078 patent’s specifica-
tion corresponding to the “means for processing and for
storing” an image from the camera as any image pro-
cessing unit in the overall device, rather than the pro-
cessing and memory units within the camera unit. Apple
contends that the language of the claim expressly re-
quires the storing and processing of image data by the
camera to be performed by the camera’s own processor
and memory unit, and not by the notebook computer’s
general purpose central processor. Apple also notes that
the specification only links the functions of storing and
processing images captured by the camera with the
camera’s own processor and memory units.
MobileMedia responds that the “means for processing
and storing” are not limited to the camera unit’s processor
and memory units because nothing in the specification
indicates that these separate units cannot be used for
other purposes. Although conceding that the claimed
device includes a central processor that is separate from
the processor within the camera unit, MobileMedia ar-
gues that the means for processing images captured by
the camera can be either of the disclosed processors.
Similarly, for the memory units, MobileMedia contends
that because nothing in the specification suggests that the
camera’s memory units function solely for the purpose of
the camera, the means for storing images captured by the
camera can be the memory units within the camera unit
or the device’s separate system-level memory unit.
We review the district court’s claim construction here
de novo because it relied only on evidence intrinsic to the
’078 patent. See Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 841 (2015). Under 35 U.S.C. § 112 ¶ 6, a
means-plus-function claim “shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.” A disclosed struc-
ture is a “corresponding structure” only if the specification
or prosecution history clearly links or associates that
14 MOBILEMEDIA IDEAS LLC v. APPLE INC.
structure to the function recited in the claim. B. Braun
Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.
1997).
Claim 73 recites a portable cellular mobile phone
comprising five components: (i) a built in camera unit, (ii)
a user interface, (iii) a display, (iv) a microprocessor
adapted to control the operations of the camera unit, and
(v) a means for transmitting image information over a
radio frequency channel. ’078 patent, 16:1–13. Claim 73
further recites that the camera unit comprises (i) optics
for obtaining image information, (ii) an image sensor, and
(iii) a means for processing and storing at least a portion
of the image information obtained from the camera unit
for later recall and processing. Id. at 16:14–19. In short,
the language of claim 73 makes clear that the “means for
processing and storing” is part of the camera unit, not the
overall device.
The components of the claimed device are dia-
grammed in Figure 3. Id. at 2:27–28. Figure 3 indicates
that the device includes both a “data processing unit” with
a central “processor 4” and system-level “memory unit
13.” Id. at 2:41–42, 2:66–3:5. The “camera unit 14” is a
separate and distinct component of the overall device that
communicates with the “data processing unit” via “in-
put/output controller 5.” Id. at 3:13–14. The specification
explains that the structure of the camera unit “conforms
to the block diagram shown in Fig. 5” of the ’078 patent.
Id. at 4:23–25. Figure 5 illustrates that the camera unit
includes a “camera 14a and optics 15b, image processing
unit 14c, [and] battery 21.” Id. at 4:23–28. The camera
unit’s image processing unit is a “microprocessor 23” and
“a number of memory units 24.” Id. at 4:29–31, 4:37–41.
Thus, consistent with the express language of the claim,
the specification indicates that the camera unit’s “micro-
processor 23” and “memory units 24” are different than
and separate from the device’s central “processor 4” and
system level “memory unit 13.” Id. at 2:41–42, 2:66–3:5.
MOBILEMEDIA IDEAS LLC v. APPLE INC. 15
A picture taken by the camera unit is “transferred to
[its] image processing unit 14c and through its micropro-
cessor 23 to [its] memory unit 24.” Id. at 4:53–54. When
a user wishes to view the picture, the image information
is read from the camera unit’s “memory unit 24” by the
camera unit’s “microprocessor 23,” and is then transmit-
ted to the notebook computer’s “processor 4” for display.
Id. at 4:54–62. The specification emphasizes that it is the
camera unit’s “[i]mage processing unit 14c [which] pro-
cesses the image information into a suitable form” to be
displayed by the notebook computer. Id. at 4:62–63.
The specification thus clearly links two structures to
the claimed means for performing the function of pro-
cessing and storing image information obtained by the
camera for later recall: “microprocessor 23” and “memory
unit 24,” the processor and memory units within the
camera unit. Nowhere in the specification is the claimed
function of processing and storing an image captured by
the camera unit performed by the device’s separate “pro-
cessor 4” or system-level “memory unit 13.” See id. at
3:18–21, 4:57–62, and 5:17–21 (explaining that later
recall of image information captured by the camera unit
requires transfer of image information from the camera
unit’s memory to the device’s separate central processor
and system-level memory). In addition, the specification
does not suggest that the camera unit’s processor and
memory perform functions beyond the processing and
storing of image information for later recall. Indeed, the
specification indicates that software for controlling the
notebook computer’s other functionality—telephone and
facsimile services, e-mail, SMS, and calendar programs—
resides in the system-level “memory unit 13,” not the
camera unit’s “memory unit 24.” Id. at 3:54–62.
MobileMedia’s contention that the specification does
not expressly limit the function of the camera unit’s
microprocessor and memory to processing and storing
image information for later recall does not justify the
16 MOBILEMEDIA IDEAS LLC v. APPLE INC.
district court’s construction, which erroneously expands
the scope of the “means for processing and storing” to
include any image processing unit or memory unit. The
scope of a means-plus-function limitation is outlined not
by what the specification and prosecution history do not
say, but rather by what they do say. As we noted in
Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc.,
the fact that “a structure may perform two functions and
that a function may be performed by two structures” is
“irrelevant in the context of a § 112, paragraph 6 analysis
without a clear link or association between the function or
functions recited in the means-plus-function limitation
and the structure or structures disclosed in the specifica-
tion for carrying out those functions.” 248 F.3d 1303,
1313 (Fed. Cir. 2001) (emphasis added). And Mo-
bileMedia identifies no portion of the specification or
prosecution history that clearly links any structure to the
claimed function of processing and storing image infor-
mation for later recall other than the camera unit’s “mi-
croprocessor 23” and “memory units 24.”
Accordingly, the structures corresponding to the
claimed function of the “means for processing and storing”
encompass only “microprocessor 23” and “memory unit
24,” the camera unit’s processor and memory units.
Correctly construed, no reasonable jury could conclude
that Apple’s accused products literally infringe the
“means for processing and storing” limitation of claim 73.4
Literal infringement of a § 112 ¶ 6 limitation requires
that the relevant structure in the accused device perform
the identical function recited in the claim and be identical
or equivalent to the corresponding structure in the speci-
4 MobileMedia did not contend that Apple’s accused
iPhones infringe the ’078 patent under the doctrine of
equivalents before the district court, J.A. 8302, and does
not do so here on appeal.
MOBILEMEDIA IDEAS LLC v. APPLE INC. 17
fication. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d
1259, 1267 (Fed. Cir. 1999). Here, the parties do not
dispute that the camera module in Apple’s accused
iPhones has no internal memory for storing image data.
J.A. 5970–71; J.A. 8914. Thus, the camera module of
Apple’s iPhones has no structure corresponding to the
function of storing at least a portion of processed image
information. Although MobileMedia contends that the
“main memory of the iPhone” is the camera unit’s means
for storing, J.A. 19632, this “main memory” is not located
within the iPhone camera module, which is what claim 73
requires.
Therefore, we reverse the district court’s judgment
that Apple infringes claim 73 of the ’078 patent. We need
not reach Apple’s alternative noninfringement argument
that the district court erred in its construction of the
“means . . . for transmitting” limitation in claim 73.
B. The ’068 patent (call handling)
The ’068 patent is directed to the display of call han-
dling options in a menu on a mobile phone’s display
screen. ’068 patent, Abstract. Examples of call handling
options include “hold” and “disconnect.” Id. at 6:14–30.
According to the ’068 patent, at the time of the claimed
invention, users were required to memorize specific
sequences of keys in order to execute call handling options
on a mobile phone. Id. at 1:29–39. The ’068 patent’s
method for displaying a menu of options on the phone’s
display screen allows users to select an option from a
menu instead of needing to remember different key se-
quences. See id. at Figs. 6, 8–11, and 1:62–67. The
specification explains that the mobile phone either dis-
plays this menu automatically when it receives an incom-
ing call, or waits to display the menu until the user
performs an action, such as when the user presses a key.
Id. at Fig. 6 and 7:33–37, Figs. 8–9 and 12:42–44 (auto-
18 MOBILEMEDIA IDEAS LLC v. APPLE INC.
matic); id. at Fig. 10 and 12:45–52, Fig. 11 and 14:19–38
(user action). Claim 23 of the ’068 patent recites:
23. A communicating method for controlling a
connecting state of a call into a desired connecting
state upon a predetermined operation by a user,
comprising the steps of:
displaying processing items [i.e., call handling op-
tions] available to the user relative to the call on a
display;
selecting and determining a desired processing
item out of said processing items displayed on said
display by the user operating an input unit; and
controlling the processing items being displayed
on said display and controlling the call into a con-
necting state corresponding to the processing item
selected and determined by the operation of said
input unit by the user,
wherein said step of controlling the processing
items includes displaying said processing items
[i.e., call handling options] on said display when
only a single predetermined selection operation is
made by the user,
wherein said step of controlling the processing
items includes listing said processing items avail-
able to the call on said display for each call.
’068 patent (reexamination certificate), 4:17–37 (emphasis
added).
In more plain language, claim 23 recites a method re-
quiring (i) a mobile phone to display call handling options
on a menu screen, (ii) the user to select one of these
options, and (iii) the mobile phone to execute the call
handling option selected by the user. Claim 24 of the ’068
patent is identical to claim 23 for most of its limitations,
except that it requires the “processing items” to be dis-
MOBILEMEDIA IDEAS LLC v. APPLE INC. 19
played in response to “a predetermined selection opera-
tion” instead of “only a single predetermined selection
operation.” Id. at 4:37–61 (emphasis added).
We turn first to Apple’s JMOL motion of invalidity.
Although the district court granted Apple’s motion in
part, finding that no reasonable jury could conclude that
claim 24 of the ’068 patent was not invalid as anticipated
by U.S. Patent No. 5,754,636 (Bayless), the district court
denied Apple’s motion as to claim 23, rejecting Apple’s
argument that claim 23 is anticipated by or rendered
obvious over the same reference. MobileMedia JMOL,
966 F. Supp. 2d at 461–65. Apple contends that the
district court erred as to claim 23.
Bayless discloses a telecommunications system that
allows users to make and receive phone calls from a
computer. Bayless, 1:58–62. Bayless’ system has a
graphical user interface that can display call handling
options available to the user in a “Make & Answer Calls”
window. Id. at Fig. 41. The user prompts the Bayless
system to display this call handling options window by
activating what Bayless describes as a “Hotkey.” Id. at
Fig. 42. Figure 42 provides one exemplary configuration
for this “Hotkey,” showing that the Bayless “Make &
Answer Calls” window is displayed when a user presses
the keyboard’s “Ctrl” and “0” keys. Id.
The district court determined that because Bayless’
call handling options window is displayed only after a
user presses two keys in a serial sequence, the jury could
reasonably find that Bayless’ “Hotkey” constituted “mul-
tiple ‘predetermined selection operations’ [] rather than
one [such operation].” MobileMedia JMOL, 966 F. Supp.
2d at 463–64. Thus, because claim 23 requires call han-
dling options to be displayed in response to “only a single
predetermined selection operation”—unlike claim 24,
which allowed these options to be displayed after any
number of “predetermined selection operation[s]”—the
20 MOBILEMEDIA IDEAS LLC v. APPLE INC.
district court denied Apple’s motion for JMOL as to claim
23, while granting it as to claim 24. Id.; compare ’068
patent (reexamination certificate), 4:31–34 (emphasis
added), with id. at 4:51–54.
Apple contends that the unrebutted testimony at trial
demonstrated that using one key instead of two keys to
activate a window was well within the common knowledge
of those with skill in the art. See J.A. 20044–45. For
example, Apple’s expert explained that in the industry, an
“operation” would have been understood to include “one or
more physical keys that result in a single action,” such as
to bring up and display Bayless’ “Make & Answer Calls”
window. J.A. 20026, 20043. Apple’s expert further ex-
plained that a skilled artisan “would know that [the
“Hotkey” operation of Bayless] does not have to be two
keys,” and that the “Hotkey” could easily be programmed
as a single key. J.A. 20022–23, 20045. In addition,
Apple’s expert testified that the inclusion of “pull-down”
selection boxes on the “Hotkey” menu would have explicit-
ly signaled to one of skill in the art that the “Ctrl” and “0”
key sequence could be changed to a different key se-
quence, such as to the single “F1” function key. J.A.
20044. Apple’s expert concluded that it would have been
obvious to one of skill in the art to implement the Bayless
“Hotkey” operation with a single key. J.A. 20045. Mo-
bileMedia’s expert did not rebut this testimony, offering
only the conclusory statement that “I don’t see evidence
for that.” J.A. 20506. Conclusory statements by an
expert, however, are insufficient to sustain a jury’s ver-
dict. See Krippelz v. Ford Motor Co., 667 F.3d 1261,
1268–69 (Fed. Cir. 2012).
While Apple’s expert provided specific reasons why a
skilled artisan would have found claim 23 to be obvious in
view of Bayless and common knowledge possessed by
those of skill in the art, MobileMedia’s expert provided
only testimony unrelated to the actual limitations of claim
23. For example, MobileMedia’s expert asserted that it
MOBILEMEDIA IDEAS LLC v. APPLE INC. 21
would not have been obvious to a skilled artisan to use a
single key as Bayless’ “Hotkey” because the designer of
the Bayless user interface for a computer faced different
challenges than the designer of the mobile phone interface
of the ’068 patent. J.A. 20491–92. MobileMedia’s expert
sought to justify his assertion by explaining that Bayless
“is talking about keyboards and PCs, whereas [claim 23 of
the ’068 patent] has a different set of engineering
tradeoffs,” relating to “cellphones” and “ease of use.” Id.In a similar vein, MobileMedia’s expert also testified that
the 16 months between Bayless’ and the ’068 patent’s
filing date suggests that claim 23 was inventive because
Apple “could not point to [] a single person that ever did
use a single button on a cellphone” during this timeframe.
J.A. 20653 (emphasis added). Claim 23, however, recites
only a “communicating method for controlling a connect-
ing state of a call,” and includes no limitation that con-
fines the claimed method to a cell phone or computer.
’068 patent (reexamination certificate), 4:17–37. And
during cross-examination, MobileMedia’s expert conceded
that “the fact that Bayless was implemented on a PC
instead of on a cellphone [wa]sn’t relevant” to the “com-
municating method” recited in the preamble of the claim.
J.A. 20494.
In short, there is no substantial evidence to support a
conclusion that a skilled artisan would not have found it
obvious to take the straightforward and commonsensical
step to configure the Bayless “Hotkey” to display the
“Make & Answer Calls” window after the press of one key
instead of two keys. No reasonable jury could conclude
that claim 23 of the ’068 patent would not have been
obvious in view of Bayless and the common knowledge of
a person with ordinary skill in the art. Thus, the district
court erred by denying Apple’s motion for JMOL of inva-
lidity and we therefore reverse the district court’s judg-
ment that claim 23 of the ’068 patent is not invalid. We
need not reach Apple’s argument that its accused iPhones
22 MOBILEMEDIA IDEAS LLC v. APPLE INC.
do not infringe the “listing said processing items” limita-
tion of claim 23.
IV. MOBILEMEDIA’S CROSS-APPEAL
A. The ’075 patent (call rejection)
The ’075 patent describes a method for allowing a us-
er to reject an incoming call when the user is already
active on another call. In particular, the ’075 patent
describes a cell phone that allows a user, by pressing a
key, to reject the incoming call. ’075 patent, 3:24–47.
According to the ’075 patent, pressing this key sends a
“rejection message” to the applicable cell tower, indicating
that the mobile telecommunications network should
immediately release (i.e., drop) the second incoming call
because the receiving phone is “unavailab[le].” Id. at
3:63–4:21.
MobileMedia asserts that Apple’s accused iPhones in-
fringe apparatus claim 10, as well as method claims 5 and
6. For the purposes of this appeal, claim 10 of the ’075
patent is representative:
10. In a mobile communications device, apparatus
in communication with a first calling station for
selectably rejecting an incoming call, said appa-
ratus comprising:
a transceiver operable to send and receive trans-
missions to and from a remote transceiver in a
wireless system on a communications channel,
said transceiver for receiving a transmission sig-
nifying that an incoming call is being attempted;
and
a control processor coupled to said transceiver,
said control processor for determining if said in-
coming call is to be rejected, and, in response to a
positive determination, said control processor for
MOBILEMEDIA IDEAS LLC v. APPLE INC. 23
outputting a rejection message to said transceiver
for transmission to said remote transceiver,
wherein said rejection message comprises at least
one information element indicating to the wireless
system that the wireless system is to immediately
release the incoming call on the communication
channel between the mobile communications
device and remote transceiver.
’075 patent (reexamination certificate), 1:26–45 (emphasis
added). The parties agree that the asserted claims re-
quire a mobile phone, which is already active on a call (“in
communication with a first calling station”), to receive an
incoming second call, and send a “rejection message” to a
cell tower (“remote transceiver”) in the mobile network.
The “rejection message” notifies the wireless system to
immediately release the incoming call. Id. at 1:40–42.
The district court construed the term “immediately re-
lease” to require that “the wireless system must, without
requiring any additional action by or communication from
the mobile phone, ‘release the incoming call on the com-
munication channel between the mobile phone and re-
mote transceiver.’” MobileMedia SJ, 907 F. Supp. 2d at
591. Thus, the district court determined that the term
“immediately” did not refer to a time period, but to an
action, and specifically, to the absence of an action. Nei-
ther party disputes the district court’s construction on
appeal.
Both parties agree that Apple’s accused iPhones allow
users to reject an incoming call while active on a first call
by tapping an “ignore” icon on the iPhone’s screen, or
alternatively, by pressing the power key twice. Id. at 592.
The parties focused their arguments for infringement and
invalidity on the contents of a comprehensive set of inter-
related technical protocols developed by the European
Telecommunications Standards Institute that together
implement the Global System for Mobile communications
24 MOBILEMEDIA IDEAS LLC v. APPLE INC.
(GSM) standard for cellular networks. See, e.g., J.A.
57185. Apple’s accused iPhones, which operate on GSM
networks, were designed to comply with this GSM stand-
ard. Appellant’s Reply Br. 41. Relevant here, GSM
24.008 provides “core network protocols” that describe
how mobile phones communicate with cell towers in a
GSM network in order to make and receive calls and send
and receive data. See generally J.A. 56260–56785. GSM
24.083 provides more specific protocols for implementing
call waiting and call holding functions. See J.A. 56242–
59. These two protocols of the GSM standard supply the
technical information necessary to implement the particu-
lar call waiting function at issue in MobileMedia’s cross-
appeal.
Before the district court, Apple filed a motion for
summary judgment of noninfringement on the ground
that its accused iPhones do not practice the “rejection
message” limitation of the asserted claims. In its motion,
Apple did not contest that its accused iPhones imple-
mented the relevant sections of the GSM 24.083 and GSM
24.008 protocols, but argued that these sections were
outside the scope of the asserted claims of the ’075 patent.
In particular, Apple argued that a user’s rejection of an
incoming call did not “immediately release” the call
because additional action by and communication from the
accused iPhone was required in order to actually termi-
nate and release the call. Id. Apple explained that ac-
cording to the GSM 24.083 and GSM 24.008 protocols,
when a user elects to “ignore” an incoming call, the mobile
phone transmits a “DISCONNECT” message to the mo-
bile network. J.A. 56250 (GSM 24.083, § 1.3.1). After
receipt of this “DISCONNECT” message, the mobile
network enters into a “release request” state for the call,
and waits for further response from the mobile phone.
J.A. 56455 (GSM 24.008, § 5.4.3.2); J.A. 56429 (GSM
24.008 § 5.1.2.2.13). The mobile phone then responds
with a “RELEASE COMPLETE” message, and it is only
MOBILEMEDIA IDEAS LLC v. APPLE INC. 25
after the mobile network receives this message that it
releases the incoming call. J.A. 56455 (GSM 24.008
§§ 5.4.3.3, 5.4.3.4).
MobileMedia responded that the entire exchange of
messages should be considered to be “rejection messages.”
MobileMedia SJ, 907 F. Supp. 2d at 592. MobileMedia
also pointed to an “abnormal case” in the GSM 24.008
protocol, in which the “ignored” call is released after
receipt of the “DISCONNECT” message without the usual
exchange of further messages between the mobile phone
and mobile network described above. Id. at 592. Mo-
bileMedia contended that in this “abnormal case,” the
mobile network can release the call if no further commu-
nication from the mobile phone is received for the dura-
tion of two successive timer periods. Id.; see also J.A.
56455–56 (GSM 24.008, § 5.4.3.5).
The district court granted Apple’s motion for sum-
mary judgment of noninfringement in part. MobileMedia
SJ, 907 F. Supp. 2d at 593. It found that in the normal
case, there was no genuine dispute that Apple’s iPhones
did not meet the “immediately release” limitation of the
asserted claims. Id. The district court determined,
however, that there was still a question of fact as to
whether the accused iPhones infringed under the GSM
24.008 protocol’s “abnormal case.” Id.
Apple also filed a motion for summary judgment of in-
validity based on obviousness, relying on disclosures in
two different sections of prior versions of the same proto-
cols in the GSM standard that MobileMedia relied on for
evidence of infringement. Id. Specifically, GSM 04.08
and GSM 04.83—earlier versions of GSM 24.008 and
GSM 24.083, respectively—were published more than
three years before the earliest priority date of the ’075
26 MOBILEMEDIA IDEAS LLC v. APPLE INC.
patent. Id. 5 Further, MobileMedia agreed, and does not
dispute here, that the prior art GSM 04.83 and GSM
04.08 protocols are identical in all relevant aspects to
their later-version counterparts (GSM 24.083 and GSM
24.008). Id. at 594.
Whereas MobileMedia relied on Apple’s alleged im-
plementation of GSM 24.008, § 5.4 (entitled “Call clear-
ing”) for its infringement theory, Apple based its
invalidity challenge on GSM 04.08, § 5.2.2 (entitled “Mo-
bile terminating call establishment”). Id. Apple asserted
that this section discloses a “RELEASE COMPLETE”
message transmitted from a mobile phone to the mobile
network that, unlike the “DISCONNECT” message relied
on by MobileMedia to allege infringement, can release an
incoming call without any further communication be-
tween the mobile phone and the network. Id. Apple
contended that this message, in combination with GSM
04.83, §§ 1.1 and 1.3.1, which provide instructions for
implementing call waiting functionality—including the
treatment of incoming calls when a user is already active
on a call, J.A. 57583—discloses every limitation of the
’075 patent’s asserted claims. MobileMedia SJ, 907 F.
Supp. 2d at 595.
The district court agreed that MobileMedia had not
raised any genuine dispute that GSM 04.83 and GSM
04.08 disclose all limitations of the ’075 patent’s asserted
5 Before the district court (and here on appeal), Ap-
ple also contended that (i) the GSM 04.08 and GSM 04.83
standards should be treated as a single document, and
thus anticipate the asserted claims, and (ii) the asserted
claims of the ’075 patent were rendered obvious by the
GSM 04.08 and GSM 04.83 standards in combination
with the ’068 patent. MobileMedia SJ, 907 F. Supp. 2d at
595; Cross-Appellee’s Br. 67–69. We need not reach
either of these issues to resolve this appeal.
MOBILEMEDIA IDEAS LLC v. APPLE INC. 27
claims. Id. at 594. The district court, however, denied
Apple’s summary judgment motion of invalidity because it
found that a genuine dispute of material fact existed as to
whether a person having ordinary skill in the art would
have been motivated to combine the two protocols in the
GSM standard to arrive at the asserted claims. Id. at
595–96. At trial, the jury found that Apple’s accused
iPhones infringed the asserted claims of the ’075 patent
under the “abnormal” case described in GSM 24.008,
§ 5.4.3.5. MobileMedia JMOL, 966 F. Supp. 2d at 457.
The jury also found that the asserted claims of the ’075
patent were not invalid. Id. at 455. The district court,
however, granted Apple’s renewed motion for JMOL as to
noninfringement and invalidity for obviousness. Id. at
457, 459. In its cross-appeal, MobileMedia contends that
the district court erred in granting Apple’s JMOL motions
because substantial evidence supports the jury’s verdict of
both infringement and nonobviousness.
We turn first to the district court’s grant of Apple’s
JMOL motion of invalidity, which we review de novo.
Bos. Scientific, 554 F.3d at 990. In evaluating that JMOL
motion, the district court first noted that MobileMedia did
not dispute that the GSM 04.08 and GSM 04.83 protocols
disclose every limitation of the asserted claims. Mo-
bileMedia JMOL, 966 F. Supp. 2d at 454. Nor did Mo-
bileMedia offer any evidence of objective indicia of
nonobviousness. Id. Thus, as on summary judgment, the
parties’ dispute centered on whether one with ordinary
skill in the art would have been motivated to combine the
two GSM standards at the time of the alleged invention.
The district court found that Apple’s expert provided
several reasons that a skilled artisan would have com-
bined the two relevant protocols of the GSM standard. Id.
at 453. Apple’s expert explained that the GSM 04.08
(fundamental interactions between mobile phones and the
mobile network) and 04.83 (specific call waiting and call
holding functions) protocols were both part of the same
28 MOBILEMEDIA IDEAS LLC v. APPLE INC.
comprehensive GSM standard published by the European
Telecommunications Standards Institute in 1995. Id. An
Apple engineer testified that engineers routinely refer-
ence different “portions of the GSM standard[]” and that if
an engineer needed to implement a particular mobile
phone function according to the GSM standard, it was
“trivial” to find the relevant sections in the GSM protocols
because each protocol includes a detailed table of contents
and index. Id.; J.A. 19941. Apple’s expert also explained
that GSM 04.83 expressly references GSM 04.08 in nu-
merous places, instructing that mobile phones “shall act
in accordance with GSM 04.08” to implement the specific
call waiting and call clearing functions relevant here, and
that the referenced sections of the GSM 04.08 and GSM
04.83 protocols are labeled in a “similar” manner. Mo-
bileMedia JMOL, 966 F. Supp. 2d at 453; J.A. 20185–86.
Specifically, GSM 04.83, § 1.1 is titled “Waiting call
indication and confirmation” in the index, and the com-
panion sections in GSM 04.08 are titled “Call indication”
(§ 5.2.2.1) and “Call confirmation” (§ 5.2.2.3). Compare
J.A. 57577 (table of contents for GSM 04.83), with J.A.
57175 (same for GSM 04.08).
In contrast, MobileMedia’s expert testified that a per-
son having ordinary skill in the art would have been
discouraged from using GSM 04.08 to implement the
rejection of an incoming call in a call waiting context
because GSM 04.08 only describes how to handle a single
call, not multiple calls. MobileMedia JMOL, 966 F. Supp.
2d at 454; J.A. 20482. The district court found, however,
that this testimony could only support a jury verdict that
the GSM 04.08 protocol in isolation did not render the
asserted claims anticipated or obvious. MobileMedia
JMOL, 966 F. Supp. 2d at 455. As to whether a skilled
artisan, in view of both the GSM 04.08 and GSM 04.83
protocols in the GSM standard, would have been motivat-
ed to combine them, the district court noted that Mo-
bileMedia’s expert offered only conclusory testimony that
MOBILEMEDIA IDEAS LLC v. APPLE INC. 29
“[GSM 04.83] is small, [GSM 04.08] is big.” Id.; J.A.
20482. But as the district court found, the fact that one
protocol is “big” and one protocol is “small” in terms of its
number of pages provides no counter to the testimony of
Apple’s expert that it would have been obvious to a person
of ordinary skill in the art to consult both GSM protocols
to implement the claimed call waiting functionality by
following the express references to GSM 04.08 within
GSM 04.83 and using the detailed table of contents in
GSM 04.08 to locate the relevant “Call indication” and
“Call confirmation” sections within that document. Mo-
bileMedia JMOL, 966 F. Supp. 2d at 455.
MobileMedia also argues that the rejection message
disclosed in the GSM 04.08 protocol—which includes
several fields providing information about the mobile
phone sending the message to the mobile network—has
one informational field suggesting that the mobile phone
is not busy, and thus the skilled artisan would have been
discouraged from combining GSM 04.08 with GSM 04.83,
which addresses scenarios where the mobile phone is
busy. Specifically, MobileMedia points to where GSM
04.08 indicates that the RELEASE COMPLETE message
includes an informational field stating “cause #21 ‘call
rejected.’” J.A. 57262 (GSM 04.08, § 5.2.2.3.1). Mo-
bileMedia’s expert testified that one of skill in the art, to
understand the meaning of that text field, would have
used the table of contents to locate the “Annex H” section
of GSM 04.08 (which includes “GSM specific cause values
for call control”), and find that “cause #21” indicates that
“the equipment sending this cause does not wish to accept
this call although it could have accepted the call because
the equipment sending the cause is neither busy nor in-
compatible.” J.A. 20474–76; J.A. 57559–60 (GSM 04.08,
30 MOBILEMEDIA IDEAS LLC v. APPLE INC.
Annex H and Annex H.1.9) (emphasis added). 6 Mo-
bileMedia’s expert testified that “this message means I’m
[not] busy” and that “to a person of ordinary skill, this
message is sent only if [the mobile phone] is not busy.”
J.A. 20476–77.
The district court, however, correctly found that this
testimony again failed to consider that the skilled artisan
would be aware of both the GSM 04.08 and GSM 04.83
protocols. MobileMedia JMOL, 966 F. Supp. 2d at 456.
The trial record shows that MobileMedia sought testimo-
ny from its expert only on “the ability of [GSM] 04.08 to
be used to reject [a] second call.” J.A. 20474 (emphasis
added). Thus, MobileMedia’s expert testified merely that
a skilled artisan looking at this “cause value” would have
“been discouraged from using this document [GSM 04.08]”
and would have been “discouraged [after] looking at the
document [GSM 04.08] and finding no help” for imple-
menting the claimed invention. Id (emphases added). As
the district court found, “MobileMedia’s validity theories
did not address the fact that one of ordinary skill also
knew the contents of GSM 04.83 and could start there.”
MobileMedia JMOL, 966 F. Supp. 2d at 456 (emphasis
added).
And Apple demonstrated that after starting with
GSM 04.83, a skilled artisan would have been led to GSM
04.08. In particular, GSM 04.83, § 1.1 (entitled “Waiting
call indication and confirmation”) expressly instructs that
a mobile phone and the mobile network should interact in
6 MobileMedia’s expert did not explain why one of
skill in the art would allegedly rely on the indices provid-
ed in GSM 04.08 to locate more detailed definitions of
certain terms, while at the same time ignoring the indices
for the purpose of locating the similarly-titled call waiting
protocol sections in GSM 04.08 expressly referenced by
GSM 04.83.
MOBILEMEDIA IDEAS LLC v. APPLE INC. 31
accordance with GSM 04.08 if a user receives an incoming
call when the user is already active on a call. J.A. 57583.
To release the incoming call, the mobile phone, inter alia,
sends a “[call] clearing message” to the mobile network
indicating that the user is busy. J.A. 57585 (GSM 04.83,
§ 1.3.1). GSM 04.08 discloses several types of “call clear-
ing” messages and procedures for handling those messag-
es. See J.A. 57174–75. One type of “call clearing”
message is the “DISCONNECT” message that Mo-
bileMedia relied on as evidence of infringement, which is
described in §§ 5.4.2, 5.4.3.1, and 5.4.3.2, among others.
Section 5.2.2.3.1 describes another type of “call clearing”
message—a “RELEASE COMPLETE” message—that in
some circumstances can be sent by the mobile phone
instead of the “DISCONNECT” message, and is “pro-
cessed” by the mobile network “in accordance with section
5.4.” J.A. 57262. 7 Relevant here, upon receipt of a
“RELEASE COMPLETE” message, the mobile network
releases the incoming call without waiting for additional
communication from the mobile phone. J.A. 57273 (GSM
04.08, § 5.4.3.4). Thus, as Apple notes, it is the message
(i.e., RELEASE COMPLETE), and not the text field
within that message (e.g., “cause #21”), that prompts the
mobile network to release the call. Indeed, the GSM
standard requires that the mobile network “shall accept
an incoming RELEASE COMPLETE message used to
initiate the [call] clearing even though the cause infor-
mation is not included.” J.A. 57272 (GSM 04.08, § 5.4.2)
(emphasis added).
On the basis of these findings, the district court con-
cluded that even when resolving all disputed facts in
MobileMedia’s favor, no reasonable jury could conclude
that the asserted claims of the ’075 patent are not invalid
7 According to Apple, its accused iPhones do not
implement this particular GSM protocol. J.A. 20185.
32 MOBILEMEDIA IDEAS LLC v. APPLE INC.
as obvious over the GSM 04.08 and GSM 04.83 protocols
in the GSM standard. MobileMedia JMOL, 966 F. Supp.
2d at 457. After careful examination of the record, we
agree with the district court’s finding that no substantial
evidence supports a determination that one of ordinary
skill in the art would not have been motivated to combine
§§ 1.1 and 1.3 of GSM 04.83 and § 5.2.2 of GSM 04.08.
Similarly, we find no error in the district court’s ultimate
conclusion that no reasonable jury could conclude that
claims 5, 6, and 10 of the ’075 patent are not invalid as
obvious in view of those two protocols in the GSM stand-
ard.
We therefore affirm the district court’s grant of Ap-
ple’s motion for JMOL of invalidity of the asserted claims
of the ’075 patent. We need not reach MobileMedia’s
appeal from the district court’s grant of Apple’s motion for
JMOL of noninfringement of those same claims.
B. The ’231 patent (call alerts)
The ’231 patent discloses a communication device,
such as a mobile phone, that permits a user to stop a
ringtone alert for an incoming call without notifying the
caller. ’231 patent, Abstract. According to the ’231 pa-
tent, when a user received an unwanted call, the prior art
provided several options for silencing the ringtone trig-
gered by receipt of that call: (i) answering but then quick-
ly “hang[ing] up,” thus “forcibly disconnecting” the call, or
(ii) turning off the phone. Id. at 1:17–25. Forcibly dis-
connecting the call, however, left the caller with “an
unpleasant feeling” because the caller “c[ould] notice that
the circuit was broken off intentionally.” Id. at 1:26–29.
Turning off the phone was not preferable because the user
could forget to turn the phone on again, “possib[ly] miss-
ing the next incoming call.” Id. at 1:37–42. The ’231
patent provides several alternatives to silence a ringtone
without these drawbacks. Id. at 4:66–5:17.
MOBILEMEDIA IDEAS LLC v. APPLE INC. 33
In one embodiment, a user can press the phone’s pow-
er key for some amount of time in order to stop the ring-
tone sound without ending the call. Id. at 2:57–3:6; see
also id. at Fig. 3 (“stop alert sound”). In another embodi-
ment, pressing the phone’s power key reduces the volume
of the ringtone sound. Id. at 4:40–47; see also id. at Fig. 4
(“reduce volume of alert sound”). Asserted claim 12 is
excerpted below:
12. A communication terminal for informing a us-
er of a received call from a remote caller by an
alert sound, comprising:
an alert sound generator for generating the alert
sound when the call is received from the remote
caller;
control means for controlling said alert sound
generator;
...;
wherein said alert sound generator is generating
the alert sound and . . . , said control means con-
trols said alert sound generator to change a vol-
ume of the generated alert sound only for the
received call, without affecting the volume of the
alert sound for future received calls, while leaving
a call ringing state, as perceived by the remote
caller, of the call to the terminal from the remote
called unchanged . . . .
’231 patent (reexamination certificate), 2:11–39 (emphasis
added). Asserted claim 2, which depends from claim 12,
recites:
2. The communication terminal according to claim
12, wherein said control means controls the state
of said alert sound generator to stop the sound.
Id. at 1:31–34 (emphasis added). Asserted claim 3, which
also depends from claim 12, recites:
34 MOBILEMEDIA IDEAS LLC v. APPLE INC.
3. The communication terminal according to
claim 12, wherein said control means controls the
state of said alert sound generator to reduce the
volume of the sound.
Id. at 1:35–39 (emphasis added).
Relevant to MobileMedia’s cross-appeal, the district
court construed the term “to change a volume of the
generated alert sound” in claim 12 as “to alter the degree
of loudness of the alert sound that is being generated
without cutting off the telephone circuit.” MobileMedia
SJ, 907 F. Supp. 2d at 598. Further, the district court
interpreted the “stop[ping] the sound” limitation in de-
pendent claim 2 as not encompassed by the “chang[ing] a
volume” limitation in independent claim 12. Id. Thus,
rather than narrowing the scope of claim 12’s “change a
volume” limitation, the district court appears to have
interpreted dependent claim 2’s “stop the sound” limita-
tion as providing an additional, separate function to the
claimed communication terminal recited in independent
claim 12. In support of its construction, the district court
reasoned that “chang[ing] a volume” and “stop[ping] the
sound” were described in the specification as “alterna-
tives, not interchangeable terms.” Id.
Under this construction, the district court determined
Apple did not infringe any asserted claim of the ’231
patent. Id. at 599. In particular, while Apple’s accused
iPhones include a control means that can stop the sound
of a ringtone, the district court found that Apple’s iPhones
do not “reduce, increase, mute, or otherwise change the
volume of the audio [alert sound] playback [as required by
claim 12].” Id. at 598. MobileMedia contends that the
district court erred by construing this limitation of the
independent claim to exclude both the narrower “stop the
sound” and “reduce the volume of the sound” embodi-
ments disclosed in the ’231 patent’s specification and
recited in asserted dependent claims 2 and 3, respectively.
MOBILEMEDIA IDEAS LLC v. APPLE INC. 35
Because the district court’s construction relies only on
intrinsic evidence, we review its construction de novo.
Teva, 135 S. Ct. at 841. Neither party disputes that the
“control means” invokes 35 U.S.C. § 112 ¶ 6. Thus, this
means-plus-function limitation covers the corresponding
structure described in the specification for performing the
claimed function, and equivalents thereof. Saffran v.
Johnson & Johnson, 712 F.3d 549, 561 (Fed. Cir. 2013).
The language of the claims indicates that the function
performed by the “control means” is “controlling the alert
sound generator to change a volume of the generated alert
sound.” See ’231 patent (reexamination certificate), 2:26–
27. The only structure disclosed in the specification for
performing this claimed function is the phone’s CPU and
alert sound generator on/off controller. Id. at 2:49–52. In
response to depression of the phone’s power key, the
specification indicates that the CPU and on/off controller
can “stop the generation of the alert sound.” Id. at 3:3–6;
see also id. at 2:53–55. As an alternative, the specifica-
tion indicates that depression of the power key can in-
stead result in the “volume of an alert sound [being]
reduced.” Id. at 4:37–43, 5:7–11. Compare id. at Fig. 3
(stopping a sound), with id. at Fig. 4 (reducing a volume).
In short, the specification indicates that the “control
means” controls the alert sound generator to change a
volume of the generated alert sound by either stopping
the alert sound or reducing a volume of the alert sound.
In the context of the specification, “chang[ing] a volume”
encompasses both “stop[ping] the sound” and “reduc[ing]
the volume of the sound.” See id. Further, neither party
has identified anything in the prosecution history or
extrinsic evidence that would suggest otherwise.
Apple contends that dependent claim 2 does not ex-
plicitly tie the “stop the sound” limitation to the “change a
volume” limitation in claim 12. In essence, Apple defends
the district court’s construction on the ground that it is
possible to construe claim 12 and claim 2 in a manner
36 MOBILEMEDIA IDEAS LLC v. APPLE INC.
such that “stop[ping] the sound” and “chang[ing] a vol-
ume” are mutually exclusive. Apple speculates that a
device could practice both by “dialing down the audio level
to alter the degree of loudness . . . and then stopping the
generation of the sound.” Cross-Appellee’s Br. 75. Apple,
however, provides no support in the specification or
prosecution history for its example. Regardless, Apple’s
construction ignores that claim 2 ties “stop[ping] the
sound” to the control means—the CPU and alert sound
on/off controller. And as discussed supra, the specifica-
tion describes this control means structure as stopping or
reducing the volume of the alert sound.
Finally, Apple contends that MobileMedia seeks to
improperly use the doctrine of claim differentiation in
order to broaden the scope of independent claim 12 be-
yond what is supported by the specification. While we
agree with Apple that “[t]he dependent claim tail cannot
wag the independent claim dog,” N. Am. Vaccine, Inc. v.
Am. Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993), no
such concern is present here. Rather, it is Apple that
urges us to affirm a claim construction that would exclude
a preferred embodiment of the invention disclosed in the
specification. Such a construction is rarely correct with-
out any persuasive evidentiary support. Adams Respira-
tory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290
(Fed. Cir. 2010) (citing Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)).
Consistent with the specification, “controlling the
alert sound generator to change a volume of the generated
alert sound” by the “control means” encompasses both
stopping and reducing the volume of the alert sound as
recited in dependent claims 2 and 3, respectively. Be-
cause the district court’s grant of Apple’s motion for
summary judgment of noninfringement of claims 2–4 and
12 of the ’231 patent was based on an erroneous construc-
tion, we vacate the district court’s grant of this motion
and remand to the district court for further proceedings.
MOBILEMEDIA IDEAS LLC v. APPLE INC. 37
***
We have considered the parties’ remaining arguments
and find them unpersuasive.
V. CONCLUSION
For the foregoing reasons, we conclude that (i) sub-
stantial evidence supports the jury’s determination that
claim 73 of the ’078 patent is not invalid, (ii) no reasona-
ble jury could find that claim 73 of the ’078 patent is
infringed by Apple’s accused iPhones, (iii) no reasonable
jury could conclude that claim 23 of the ’068 patent is not
invalid as obvious under 35 U.S.C. § 103, (iv) no reasona-
ble jury could conclude that claims 5, 6, and 10 of the ’075
patent are not invalid as obvious in view of the GSM
04.08 and GSM 04.83 protocols, and (v) that the district
court’s claim construction of “to change a volume of the
generate alert sound” was erroneous. Therefore, we (i)
affirm the district court’s denial of Apple’s motion for
JMOL of invalidity of claim 73 of the ’078 patent, (ii)
reverse the district court’s denial of Apple’s motion for
JMOL of noninfringement of claim 73 of the ’078 patent,
(iii) reverse the district court’s denial of Apple’s motion for
JMOL of invalidity of claim 23 of the ’068 patent, (iv)
affirm the district court’s grant of Apple’s motion for
JMOL of invalidity of claims 5, 6, and 10 of the ’075
patent, (v) vacate the district court’s grant of summary
judgment of noninfringement of claims 2–4 and 12 of the
’231 patent, and (vi) remand for further proceedings. In
view of these holdings, we need not resolve any of the
parties’ remaining appeals or cross-appeals.
AFFIRMED IN PART, REVERSED IN PART,
VACATED, AND REMANDED
COSTS
No costs.