Intellectual Ventures I LLC v. Motorola Mobility LLC , 870 F.3d 1320 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES I LLC,
INTELLECTUAL VENTURES II LLC,
Plaintiffs-Appellees
v.
MOTOROLA MOBILITY LLC, FKA MOTOROLA
MOBILITY, INC.,
Defendant-Appellant
______________________
2016-1795
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:11-cv-00908-SLR-MPT,
Judge Sue L. Robinson.
______________________
Decided: September 13, 2017
______________________
MARC BELLOLI, Feinberg Day Alberti & Thompson
LLP, Menlo Park, CA, argued for plaintiffs-appellees. Also
represented by DAVID ALBERTI, ELIZABETH DAY, IAN
NEVILLE FEINBERG, SAL LIM.
DAVID A. NELSON, Quinn Emanuel Urquhart & Sulli-
van, LLP, Chicago, IL, argued for defendant-appellant.
Also represented by DAVID ANDREW PERLSON, San Fran-
cisco, CA; JOSHUA L. SOHN, Washington, DC; DAVID CLAY
HOLLOWAY, MITCHELL G. STOCKWELL, Kilpatrick Town-
2 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
send & Stockton LLP, Atlanta, GA; STEVEN MOORE, San
Francisco, CA.
______________________
Before NEWMAN, DYK, and TARANTO, Circuit Judges.
Opinion for the court filed by Circuit Judge DYK.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge NEWMAN.
DYK, Circuit Judge.
Intellectual Ventures I LLC and Intellectual Ventures
II LLC (collectively “IV”) brought suit against Motorola
Mobility LLC (“Motorola”) in the United States District
Court for the District of Delaware alleging infringement
of claim 41 of U.S. Patent No. 7,810,144 (“the ’144 pa-
tent”) and claims 1, 10, 11, and 13 of U.S. Patent No.
7,120,462 (“the ’462 patent”). A jury found the asserted
claims infringed and not invalid. The district court denied
Motorola’s motion for judgment as a matter of law.
Motorola appeals.
We hold that substantial evidence supports the jury’s
verdict regarding the validity of claim 41 of the ’144
patent and claims 1, 10, 11, and 13 of the ’462 patent, but
conclude that substantial evidence does not support the
jury’s verdict of direct infringement of claim 41 of the ’144
patent. Since a finding of direct infringement is a predi-
cate to any finding of indirect infringement, we reverse all
of the infringement findings with respect to the ’144
patent. We therefore affirm the district court’s judgment
in part, reverse in part, and remand for further proceed-
ings on the asserted claims of the ’462 patent.
BACKGROUND
I
The ’144 patent was issued on October 5, 2010, from a
series of continuing applications first filed in 1997. See
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 3
’144 patent, col. 1 ll. 8–35 (claiming benefit to a U.S.
provisional application filed on November 13, 1997). The
patent is titled “File Transfer System for Direct Transfer
Between Computers” and broadly “relates to transferring
computer files electronically from one location to another,
and more particularly to electronic transfer of computer
files directly between two or more computers or compu-
ting devices.” Id. col. 2 ll. 4–7.
Asserted claim 41 of the ’144 patent recites:
41. A communications device, comprising:
a processor; and
a memory that stores at least one program
usable to control the communications de-
vice,
wherein the communications device is con-
figured to:
display a collection of file identifiers,
wherein each file identifier represents a
selectable file;
receive a user selection of at least one file
identifier representing a file selected to be
transferred to a second device;
display a collection of destinations identi-
fiers, wherein each destination identifier
represents a remote device having a num-
bered destination address on a circuit
switched or packet switched network;
receive a user selection of at least one des-
tination identifier as selection of the sec-
ond device;
display a data entry field in which a text
message can be entered;
4 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
receiving the text message;
encapsulate the text message with the se-
lected file into a single combined file;
generate a unique transaction identifier
that identifies a transfer of the single
combined file; and
send the single combined file to the second
device at its numbered destination ad-
dress, the second device being configured
to:
receive the single combined file irrespec-
tive of user action at the second device;
generate a delivery confirmation message
confirming reception of the single com-
bined file;
transmit to an authenticating device of
the communications network, the delivery
confirmation message;
provide an alert indicating reception of the
single combined file;
display an identification of the communi-
cations device in relation to at least one of
the selected file or the associated text file,
wherein the identification includes at
least one of a communications address of
the communications device, a name of the
communications device, or a username as-
sociated with the communications device;
and
display at least a portion of content of the
selected file or the text message, wherein
the authenticating device is configured to:
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 5
generate a delivery report that indicates a
delivery event and a time of the delivery
event.
’144 patent, col. 44 l. 60–col. 46 l. 17.
The ’462 patent is titled “Portable Computing, Com-
munication and Entertainment Device with Central
Processor Carried in a Detachable Handset.” In general
terms, the invention of the ’462 patent is a laptop com-
puter formed by docking a smartphone into a “shell”
having a larger display and keyboard.
Representative claim 1 of the ’462 patent recites:
1. A portable processing device comprising:
a detachable handset unit sized for handheld
grasping and including a central processor and a
plurality of first circuits, said processor control-
ling the operation of said first circuits, and said
first circuits including at least a video interface, a
communication interface and a data input inter-
face;
a portable docking display unit dimensioned sub-
stantially larger than said detachable handset
unit, said portable docking display unit including
a first display and a plurality of second circuits,
said plurality of second circuits not including a
central processor and including a video interface,
and a data input interface, and wherein said cen-
tral processor controls the operation of at least
one of said second circuits and said first display
when said detachable handset unit is docked with
said docking display unit;
and the docking display unit is fully operable only
when the detachable handset is docked thereto.
’462 patent, col. 6 ll. 2–20.
6 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
II
IV filed suit for infringement of the ’144 and ’462 pa-
tents in the District of Delaware. Motorola defended on
the grounds of no infringement and invalidity. The dis-
trict court bifurcated the determination of willful in-
fringement and calculation of damages for separate trial.
See Scheduling Order, Intellectual Ventures I LLC v.
Motorola Mobility LLC, No. 1:11-cv-00908-SLR-MPT (D.
Del. Jan. 13, 2012), ECF No. 16.
The district court conducted a first jury trial with re-
spect to claims 1, 8, 10, 11, and 13 of the ’462 patent that
ended in a mistrial. See Intellectual Ventures I, LLC v.
Motorola Mobility LLC, 72 F. Supp. 3d 496, 501 (D. Del.
2014). Post-trial, the court denied Motorola’s motion for
judgment as a matter of law that the asserted claims were
invalid as obvious. See id. at 513.
The district court conducted a second trial, this time
regarding infringement and validity of claim 41 of the
’144 patent. A jury found that Motorola had directly and
indirectly infringed claim 41 and had failed to prove
obviousness of the asserted claim. The jury also found
that Motorola had failed to prove claim 41 invalid for lack
of written description.
The parties retried infringement and validity of the
’462 patent in yet a third trial, this time with respect to
claims 1, 10, 11, and 13. The jury found that Motorola had
infringed the asserted claims and that Motorola had
failed to prove the asserted claims invalid as obvious.
Motorola moved for judgment as a matter of law in
both the second and third trials, challenging the jury
verdicts of infringement and no invalidity. The district
court denied Motorola’s motions. See Intellectual Ventures
I, LLC v. Motorola Mobility LLC, 176 F. Supp. 3d 405, 444
(D. Del. 2016). Motorola appeals. We have jurisdiction
under 28 U.S.C. § 1292(c)(2).
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 7
DISCUSSION
We review the district court’s denial of a motion for
judgment as matter of law de novo. See Finjan, Inc. v.
Secure Computing Corp., 626 F.3d 1197, 1202 (Fed. Cir.
2010) (citing McKenna v. City of Philadelphia, 582 F.3d
447, 460 (3d Cir. 2009)).
I
Motorola argues that the district court erred in deny-
ing judgment as a matter of law that claim 41 of the ’144
patent is invalid for lack of written description. Whether a
patent claim is adequately supported by the written
description under 35 U.S.C. § 112 is a question of fact that
we review for substantial evidence following a jury trial.
See, e.g., Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1355 (Fed. Cir. 2010) (en banc). To the extent that
the issue of written description turns on claim construc-
tion based solely on intrinsic evidence, however, it is a
legal question subject to de novo review. See, e.g., Atl.
Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1353–54
(Fed. Cir. 2011).
Motorola contends that the specification of the ’144
patent excludes “long-term” or “permanent” storage of the
data being transmitted on an intervening computing
device. Despite this exclusion, Motorola argues that the
scope of claim 41 covers embodiments that nevertheless
use such long-term or permanent storage, in violation of
the written description requirement.
The words “long-term” and “permanent” do not appear
in the ’144 patent. Instead, the specification of the ’144
patent describes that “electronic transfer mechanisms”
over “interconnected networks of computers and telecom-
munications equipment . . . generally employ intermedi-
ary computers in the form of e-mail servers, FTP servers,
or Web servers.” ’144 patent, col. 2 l. 31–col. 3 l. 4. The
specification further explains that “[t]hese intermediary
8 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
computers” come with several drawbacks because they:
(1) “reduce the relative security and timeliness of the
transfers effected because neither the sender nor the
recipient controls the intermediary server”; (2) “require
significant administration and usually require login
procedures and passwords in an attempt to overcome
security issues, albeit at the expense of user convenience
and system complexity”; and (3) “represent concentrated
points of possible failure, as well as communication ‘bot-
tlenecks’ that set capacity limits for the collective number
and size of files transferred.” Id. col. 3 ll. 4–15.
To overcome these drawbacks, the invention of the
’144 patent is a “file transfer system” that “enables direct
transfer of electronic files between . . . interconnected
[personal computers] . . . and without intermediate stor-
age of files on an intervening computer.” ’144 patent, col.
10 l. 63–col. 11 l. 1. Motorola principally relies on this
portion of the specification to argue that the invention of
the ’144 patent does not employ “long-term” or “perma-
nent storage” because it excludes intermediate storage,
and that, consequently, claim 41 lacks written description
support because the claim nonetheless covers embodi-
ments that use long-term or permanent storage.
While there is some dispute as to whether Motorola
preserved this precise issue for appellate review, we agree
with the district court that under the proper claim con-
struction, “claim 41 does not cover file transfers that
involve long-term or permanent storage.” Intellectual
Ventures, 176 F. Supp. 3d at 426. The relevant limitations
of claim 41 recite “send[ing] the single combined file to the
second device” and “receiv[ing] the single combined file
. . . at the second device.” ’144 patent, col. 45 ll. 17–22.
This language neither plainly includes nor plainly ex-
cludes long-term or permanent storage. The limitations
must be construed “in view of the specification.” Trustees
of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1362
(Fed. Cir. 2016) (quoting Phillips v. AWH Corp., 415 F.3d
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 9
1303, 1315 (Fed. Cir. 2005) (en banc)). The portions of the
specification that Motorola relies on, excerpted above,
demonstrate that storing files “indefinitely” on an inter-
vening computer is not part of the claimed invention.
Paradoxically, Motorola contends that these portions of
the specification exclude long-term or permanent storage
from the scope of the invention, while simultaneously
arguing that claim 41 should be read to cover such stor-
age. The proper result is not that claim 41 fails for lack of
written description but that it should be construed “in
view of the specification” to be limited. Id. at 1362; C.R.
Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1360 (Fed.
Cir. 1998) (“[I]t is incorrect to construe the claims contra-
ry to the specification, and then to hold the claims invalid
because they are contrary to the specification.”). Thus, the
“send[ing]” and “receiv[ing]” limitations of claim 41 should
be construed to exclude long-term or permanent storage.
Motorola argues that other claims of the ’144 patent
recite limitations regarding storage of the file being
transferred, which—according to Motorola—suggests that
claim 41’s silence broadens the claim to cover all forms of
storage, including long-term or permanent storage. Claim
26, for example, recites “transmit[ting] the selected file
. . . absent non-transient intermediate storage of the
selected file on an intervening communications device of
the communications network, to the second device.” ’144
patent, col. 41 l. 66–col. 42 l. 2 (emphasis added). We do
not agree. The fact that other claims expressly limit the
type of storage does not mean that claim 41 extends to
long-term or permanent storage. We also disagree with
Motorola that the doctrine of claim differentiation mili-
tates in Motorola’s favor, because that “doctrine . . . does
not serve to broaden claims beyond their meaning in light
10 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
of the specification.” Toro Co. v. White Consol. Indus., Inc.,
199 F.3d 1295, 1302 (Fed. Cir. 1999). 1
Since the asserted claim does not cover long-term or
permanent storage, the failure of the specification to
describe such an embodiment presents no written descrip-
tion problem. The district court did not err in denying
Motorola’s motion for judgment as a matter of law for lack
of written description as to claim 41 of the ’144 patent.
II
Motorola next argues that it was entitled to judgment
as a matter of law that claim 41 of the ’144 patent is
invalid as obvious over the teachings of U.S. Patent No.
5,379,340 (“Overend”) and U.S. Patent No. 5,553,145(“Micali”). The ultimate determination of obviousness
presents a legal question subject to de novo review, but
“explicit and implicit” subsidiary factual determinations
made by the jury—including the scope and content of the
prior art—are reviewed for substantial evidence. See, e.g.,
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
1342, 1360 (Fed. Cir. 2012).
Claim 41 recites, inter alia, a “second device . . . con-
figured to . . . receive the single combined file irrespective
of user action at the second device.” ’144 patent, col. 45 ll.
1 Motorola further argues that IV’s expert testified
that claim 41 covers long-term or permanent storage.
Assuming that this characterization of the expert’s testi-
mony is accurate, it is irrelevant because the question of
claim construction here is resolved by intrinsic evidence.
See Phillips, 415 F.3d at 1318 (“[A] court should discount
any expert testimony that is clearly at odds with the
claim construction mandated by the claims themselves,
the written description, and the prosecution history, in
other words, with the written record of the patent.” (in-
ternal quotation marks omitted)).
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 11
20–21. Before the jury, Motorola argued that claim 41
would have been obvious over a combination of Overend
and Micali. Motorola’s obviousness case depended in part
on its argument that the “irrespective of user action”
limitation was taught by Overend’s disclosure of a “secure
file transfer interface program” having a “Receive Mode”
capable of receiving files “without any intervention by
[the user].” Overend col. 20 ll. 67–68. The parties did not
seek a construction of the “irrespective of user action”
limitation from the district court, and neither party
objected to the district court’s instruction to the jury that
the limitation was to be given its “ordinary meaning.”
Final Jury Instructions 20, Intellectual Ventures I LLC v.
Motorola Mobility LLC, No. 1:11-cv-00908-SLR-MPT (D.
Del. Mar. 24, 2015), ECF No. 407.
In this situation, the dispositive question on appeal is
“whether substantial evidence supported the verdict
under the agreed instruction.” Hewlett-Packard Co. v.
Mustek Sys., Inc., 340 F.3d 1314, 1320 (Fed. Cir. 2003);
see also id. at 1321 (“The verdict must be tested by the
charge actually given and by giving the ordinary meaning
of the language of the jury instruction.”). The district
court denied judgement as a matter of law on this ques-
tion, stating that “[t]he ‘Receive’ mode disclosed in Over-
end and the ‘irrespective of user action’ limitation are not
the same because Overend specifies that the device be
unattended in ‘Receive’ mode.” 176 F. Supp. 3d at 427.
Based on our review of the trial record, we conclude that
there was substantial evidence for the jury to find that
Overend’s “Receive Mode” did not satisfy the “irrespective
of user action” limitation of claim 41.
To be sure, Motorola’s expert testified that the “Re-
ceive Mode” of Overend’s software allowed a user to
receive files without having to “log in” or “download” files.
See J.A. 739 (“The basic idea here in the Overend patent
is, you turn on the machine. . . . You walk away and it sits
there and takes all the messages coming through it.”). But
12 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
IV’s expert explained that this functionality of “Receive
Mode” was not equivalent to receiving files “irrespective of
user action” because “[i]f you’re in any other mode or
doing any other thing on this machine, you cannot receive
messages.” J.A. 827. According to IV’s expert:
So only if you’re in . . . receive mode . . . will you
be able to receive messages. If you select any of
the other menu options . . . you will not be in re-
ceive mode. So, for example, [if] I want to send you
a message . . . while I’m ty[p]ing that message in,
I can’t receive any messages. And so going back to
that irrespective of user action does not meet
what’s happening here in [Overend].
J.A. 827–28.
There is no dispute that Overend’s software must be
in “Receive Mode” to receive files and that “Receive Mode”
precludes a user from using the prior art software for
other purposes. See Overend, col. 39 ll. 14–15 (“To be able
to receive documents, LIX must be in Receive Mode.”).
Thus, faced with competing expert testimony on the
question of whether Overend’s software satisfied the
“irrespective of user action” limitation, “the jury was free
to disbelieve [Motorola’s] expert and credit [IV’s] expert.”
i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 850 (Fed.
Cir. 2010); see also Edwards Lifesciences AG v. CoreValve,
Inc., 699 F.3d 1305, 1313 (Fed. Cir. 2012) (noting that
when “testimony at trial [is] in direct conflict, . . . the
court may not weigh the evidence, determine the credibil-
ity of witnesses, or substitute its version of the facts for
the jury’s version”). The testimony of IV’s expert and the
teachings of Overend itself constituted substantial evi-
dence supporting the jury’s conclusion that the prior art
did not “receive . . . files irrespective of user action.”
Thus, because substantial evidence supports the ju-
ry’s verdict finding claim 41 of the ’144 patent nonobvious,
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 13
the district court correctly denied Motorola judgment as a
matter of law. 2
III
Having concluded that substantial evidence supports
the jury’s verdict of no invalidity with respect to claim 41
of the ’144 patent, we turn to the question of whether
there was substantial evidence of direct infringement
under 35 U.S.C. § 271(a).
The parties have treated claim 41 as a system claim
with limitations directed to a “communications device,” a
“second device,” and an “authenticating device configured
to . . . generate a delivery report.” At trial, IV argued that
Motorola’s customers directly infringed claim 41 by using
the accused system to send text-plus-photo messages
using a Multimedia Messaging Service (“MMS”), and that
Motorola itself directly infringed claim 41 by testing the
accused phones’ MMS functionality. See Intellectual
Ventures, 176 F. Supp. 3d at 421–23. As evidence, IV
presented consumer surveys showing that Motorola’s
customers sent MMS messages using the accused phones,
and “numerous compliance and testing documents” from
Motorola demonstrating “that sending and receiving of
MMS messages was tested on the various carrier net-
2 In light of our disposition, we need not address
whether substantial evidence supported IV’s alternative
argument to the jury that Overend and Micali failed to
teach or render obvious “an authenticating device . . .
configured to . . . generate a delivery report that indicates
a delivery event and a time of the delivery event.” ’144
patent, col. 46 ll. 1–17. See Beckman Instruments, Inc. v.
LKB Produkter AB, 892 F.2d 1547, 1550–51 (Fed. Cir.
1989); see also, e.g., Gillespie v. Sears, Roebuck & Co., 386
F.3d 21, 29 (1st Cir. 2004); E. Trading Co. v. Refco, Inc.,
229 F.3d 617, 621 (7th Cir. 2000).
14 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
works.” Id. at 423. Under these theories, when accused
Motorola phones were used to send and receive text-plus-
photo MMS messages, the devices met the limitations of
the “communications device” and the “second device” of
the asserted claim.
Motorola does not dispute that the accused phones
meet the limitations of the “communications device” and
the “second device.” Instead, Motorola contends that IV
failed to offer evidence of a directly infringing “use” of the
claimed system because none of the accused direct in-
fringers “used” the “authenticating device configured to
. . . generate a delivery report.”
A
We first address the applicable standard under Centil-
lion Data Systems, LLC v. Qwest Communications Inter-
national, Inc., 631 F.3d 1279 (Fed. Cir. 2011). Claim 41 is
written to claim a “device configured” to perform certain
operations, some of which involve communications with
other devices having certain functionality. But the parties
have treated Centillion, which addressed claims to “sys-
tems comprising” certain elements, as the governing one
in this case, and for that reason we limit our considera-
tion to what Centillion means for this case. We do not
decide what standards would govern here if claim 41 were
not treated as a system claim under Centillion.
In NTP, Inc. v. Research in Motion, Ltd., in address-
ing the question of “where” an infringing use of a claimed
system occurs, we held that “[t]he use of a claimed system
under section 271(a) is the place at which the system as a
whole is put into service, i.e., the place where control of
the system is exercised and beneficial use of the system
obtained.” 418 F.3d 1282, 1317 (Fed. Cir. 2005). Subse-
quently, in Centillion, we applied NTP’s situs-of-
infringement holding to resolve infringement of “system
comprising” claims where components of the claimed
system were “in the possession of more than one actor.”
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 15
631 F.3d at 1279. We concluded that “to ‘use’ a system for
purposes of infringement, a party must put the invention
into service, i.e., control the system as a whole and obtain
benefit from it.” Id. at 1284. Thus, under NTP and Centil-
lion, to prove an infringing “use” of a system under
§ 271(a), a patentee must demonstrate “use”—that is,
“control” and “benefit”—of the claimed system by an
accused direct infringer.
The district court held (and IV argues on appeal) that
Centillion requires only that the infringer benefit from
the “system as a whole,” such that a benefit derived from
any claimed component of the claimed system would
suffice to demonstrate an infringing “use.” The district
court concluded: “Centillion did not hold that the infringer
[must] ‘benefit’ from every single limitation. Rather
Centillion held that the user must ‘obtain benefit’ from
the ‘system as a whole’ and its analysis of . . . benefit was
not on a limitation-by-limitation basis.” Intellectual
Ventures, 176 F. Supp. 3d at 422.
We disagree. Centillion and NTP held that to “use”
something is to put it into service, which means to control
and benefit from it. And Centillion explicitly added that,
to use a claimed system, what must be “used” is each
element. Centillion, 631 F.3d at 1284 (“We agree that
direct infringement by ‘use’ of a system claim ‘requires a
party . . . to use each and every . . . element of a claim
[system].’ In order to ‘put the system into service,’ the end
user must be using all portions of the claimed invention.”
(alterations in original)). From those two propositions, it
follows that, to use a system, a person must control (even
if indirectly) and benefit from each claimed component.
NTP and Centillion both found control of and benefit
from every element on their particular facts. In NTP,
customers of the accused infringer, by exchanging mes-
sages over the allegedly infringing system, controlled and
benefitted from the claim-required relay equipment at
16 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
issue, which was part of what made the message ex-
changes work. See NTP, 418 F.3d at 1317. In Centillion,
the customers found to be direct infringers controlled and
benefitted from back-end processing equipment over
which they exercised no physical control by requesting
service and requesting particular reports, and because
their requests produced response from the back-end
equipment on a “one request/one response basis. Centil-
lion, 631 F.3d at 1285–86.
We therefore reject IV’s reading of Centillion. In an
analysis of a system claim under Centillion, proof of an
infringing “use” of the claimed system under § 271(a)
requires the patentee to demonstrate that the direct
infringer obtained “benefit” from each and every element
of the claimed system. See Centillion, 631 F.3d at 1284.
In addition, the direct or indirect control required “is the
ability to place the system as a whole into service.” Id.
B
Under Centillion, the critical question here is whether
there was substantial evidence that Motorola’s customers
obtained a “benefit” from the generation of delivery re-
ports. Neither of IV’s direct infringement theories pur-
ported to explain how Motorola’s customers satisfied this
claim limitation by using the accused phones. Indeed,
there is no evidence that the customers ever “generate[d]
a delivery report.” Instead, IV relied on testimony and
evidence that the delivery reports were generated by
Multimedia Messaging Service Centers (“MMSC”) main-
tained or operated by the customers’ wireless service
carriers when the customers used the accused phones.
IV’s main argument is that Centillion does not require
that Motorola’s customer benefit from the MMSCs’ gener-
ation of delivery reports. We have rejected that reading of
Centillion. But IV also asserts, almost in passing, that
Motorola’s customers directly benefitted from the delivery
reports because “the user sending the MMS does benefit
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 17
. . . from the MMSC authenticating the transfer with a
delivery report noting the date and time when it is deliv-
ered.” Here, IV’s sole record citation contains just one
sentence about the delivery report, and that sentence says
nothing about benefits flowing from the delivery reports
to the customer sending the message. See J.A. 618.
In the ’144 patent, the only benefits identified as flow-
ing from the delivery reports rest on the sending device’s
ability to receive or retrieve the delivery reports from the
third-party authenticating device. See, e.g., ’144 patent,
col. 6 ll. 38–41 (providing that “after authentication by the
third party authenticator . . . at least one file authentica-
tion is received from the third party” (emphasis added));
id. col. 19 ll. 4–9 (“The receipt file is returned from the
recipient to the sender directly or through a third party . . .
The sender may designate whether confirmation is by
direct return or through a third party . . . common to all
users.” (emphasis added)). But the evidence does not
support an inference that Motorola’s customers ever
received the delivery reports.
IV provided expert testimony that the accused
Motorola phones were capable of sending and receiving
MMS messages, and that the sending phone could display
a confirmation that the MMS message was received. 3 IV’s
expert conceded, however, that all but one of the MMSCs
discussed at trial had been rendered technologically
incapable of transmitting delivery reports to the sending
phone (i.e., to Motorola’s customers). With respect to these
MMSCs, the expert testified that the delivery reports
were generated and stored on the MMSCs themselves.
But the mere fact that the reports were stored on the
MMSCs does not show that Motorola’s customers could
3 See J.A. 620 (“[I]f you look also at the first phone,
it actually just told me that [the] message . . . had been
received.”).
18 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
have received or, in fact, actually received delivery re-
ports. Thus, with respect to the MMSCs that were inca-
pable of transmitting or otherwise providing delivery
reports to the sending phone, the benefits identified by
the ’144 patent from receiving a delivery report never
materialized. With respect to the final carrier (which
could transmit delivery reports to the sending phone), IV’s
evidence further demonstrated that by default, the ac-
cused Motorola phones were configured not to request
delivery reports from the MMSCs. As a consequence,
unless a customer affirmatively took steps to alter the
default configuration of his or her phone, the benefit of
confirming receipt could not have been realized. Here, IV
did not produce evidence that any customers actually
altered their phones to receive delivery reports. Moreover,
there is no evidence in the record demonstrating that
customers even knew that the delivery reports existed or
could be obtained. 4
In the record below and at oral argument in this
court, IV’s counsel asserted two additional theories for
how Motorola’s customers indirectly benefitted from
delivery reports generated by the MMSCs. First, IV’s
counsel told the jury in opening argument that the deliv-
ery reports were used by the carriers to bill customers for
sending MMS messages. See J.A. 578 (“That device, the
[authentication] device, validates the delivery of the
messages and can be used for billing.”). Second, IV’s
counsel told this court at oral argument that the delivery
reports could be used as an antifraud measure. See Oral
Argument at 24:01, Intellectual Ventures I LLC v.
Motorola Mobility LLC, No. 16-1795 (Fed. Cir. Mar. 7,
2017). But IV has not pointed to any trial evidence relying
4 This case does not involve a situation where a cus-
tomer simply elects not to take advantage of a known and
available functionality.
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 19
on either theory as a basis for inferring a customer bene-
fit, and the specification of the ’144 patent provides no
suggestion that the delivery reports are used in these
manners. Thus, these theories of indirect benefit amount
to mere speculation or attorney argument and do not
provide substantial evidence supporting the jury’s verdict
of direct infringement. Thus, judgment as a matter of law
should have been granted that Motorola’s customers did
not infringe claim 41.
C
IV’s brief notably does not address the patentee’s di-
rect infringement theory that Motorola itself—as opposed
to Motorola’s customers—directly infringed claim 41 by
testing the accused phones on various carrier networks.
In fact, both in this court and before the district court, IV
has never identified any benefit flowing to Motorola above
and beyond that which would flow to its customers due to
the manufacturer’s testing. See Intellectual Ventures, 176
F. Supp. 3d at 423. Having rejected as unsupported by
substantial evidence IV’s argument that Motorola’s cus-
tomers benefitted from the delivery reports generated by
the MMSCs, the same non-infringement finding is neces-
sary as to Motorola itself.
In sum, IV failed to present substantial evidence that
the parties accused of direct infringement in this case
benefitted from the limitation of “generat[ing] a delivery
report” of the claimed system. As such, IV failed to prove
a directly infringing “use” under § 271(a). And, because a
finding of direct infringement is predicate to any finding
of indirect infringement, none of the jury’s verdicts with
respect to infringement of claim 41 of the ’144 of the
patent is supported by substantial evidence. See Lime-
light Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct.
2111, 2117 (2014). Accordingly, Motorola was entitled to
judgment as a matter of law regarding non-infringement
of claim 41 of the ’144 patent.
20 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
III
We finally address Motorola’s argument that the dis-
trict court erred in denying judgment as a matter of law
with respect to claims 1, 10, 11, and 13 of the ’462 patent.
Motorola contends that it was entitled to judgment as a
matter of law that the asserted claims were obvious over a
combination of references, U.S. Patent No. 5,436,857(“Nelson”) and U.S. Patent No. 7,549,007 (“Smith”). 5
The asserted claims of the ’462 patent are directed to
a “portable processing device” comprising a “detachable
handset unit” and a “portable docking display unit” that is
“fully operable only when the detachable handset is
docked thereto.” ’462 patent, col. 6 ll. 2–20. In other
words, the device claimed by the ’462 patent is formed by
docking a smartphone into a “shell” comprising a display
and keyboard, where the overall computing power of the
device resides in the smartphone. “When mated with [the]
docking display unit, the detachable handset becomes the
controller for the entire . . . device.” Id. col. 5 ll. 16–20
When separated, the “detachable handset unit” functions
independently with its own “video interface” (display) and
“data input interface” (keyboard). Id. col. 6 ll. 14.
Nelson teaches a “module” and a “base unit,” where
“the customary functional components of a [personal
computer] are divided between the module and the base
unit.” Nelson col. 2 ll. 22–24 (figure numbers omitted). In
an embodiment of Nelson, the processing power of the
personal computer is allocated to the module, while the
display and keyboard are allocated to the base unit. See
id. col. 2 ll. 24–50. In Nelson’s configuration, “[t]he mod-
ule can be plugged into a base unit, and then removed to
5 With respect to claim 10 only, Motorola relied on
the combination of Nelson, Smith, with yet a third refer-
ence, U.S. Patent No. 5,798,733 (“Ethridge”).
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 21
relocate, store securely, or plug into a different base unit.
But the module is not functional as a standalone unit.”
Intellectual Ventures, 176 F. Supp. 3d at 437. Nelson does
not disclose use of a cellular phone’s processing power to
operate a computer.
Smith teaches a “portable computer having an inter-
face for direct connection to a portable telephone,” such
that when “[p]hysically and electrically connect[ed] . . .
the portable telephone serves as the portable computer’s
modem.” Smith, col. 11 ll. 48–67. But “[t]he telephone in
Smith has no control over the portable computer and no
way to present anything on the display of the portable
computer.” Intellectual Ventures, 176 F. Supp. 3d at 437.
This much of the prior art is largely undisputed. What
the parties dispute is whether there was sufficient moti-
vation to modify the “portable telephone” in Smith to
control Nelson’s “base unit”—that is, whether “a person of
ordinary skill in the art at the time of the ’462 patent
would have been motivated to use Smith’s detachable
handset with Nelson’s docking display unit.” Id. In this
scenario, the “detachable handset unit” recited in the
asserted claims would correspond to Smith’s “portable
telephone,” while Nelson’s “base unit” would correspond
to the “portable docking display unit.”
Motorola’s expert testified that there was such moti-
vation because Nelson “has only a single central processor
. . . and as a consequence it is less expensive, it weighs
less, and it consumes less power,” but “you can’t use the
portable module to do anything unless it’s docked with
something,” while with Smith, on the other hand, “you
have laptop functionality and cellphone functionality, but
you’re paying for two central processors, and that means
you dissipate more power, the system overall is heavier,
and it’s more expensive. So the combination of Nelson and
Smith has all of these advantages without a shortcoming.”
J.A. 1025. In opposition, IV’s expert testified that there
22 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
was no motivation because—mirroring Motorola’s ex-
pert—there was “[t]he extra cost from duplicating re-
sources, the keyboard [or] the display,” and that the
combination would be “suboptimal.” J.A. 1043.
The jury apparently credited the testimony of IV’s ex-
pert over Motorola’s. And, in denying Motorola’s motion
for judgment as a matter of law, the district court ob-
served that the jury reasonably did so because Motorola’s
expert “admitted he spent little time preparing his report,
was not familiar with the accused products, and gave
arguably conflicting and unclear testimony.” Intellectual
Ventures, 176 F. Supp. 3d at 439; J.A. 1029. Thus, be-
cause substantial evidence supports the finding that there
was no motivation to combine Nelson and Smith, the
district court correctly denied Motorola’s motion with
respect to invalidity of the ’462 patent.
CONCLUSION
For the reasons stated, we affirm the district court’s
denial of Motorola’s motion for judgment as a matter of
law with respect to invalidity of the asserted claims of
’144 and ’462 patents, and reverse its denial with respect
to infringement of the ’144 patent. Motorola did not
challenge on appeal infringement of the ’462 patent. The
case is remanded to the district court for further proceed-
ings on the ’462 patent with respect to damages.
AFFIRMED IN PART AND REVERSED IN PART
COSTS
Costs to neither party.
United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES I LLC,
INTELLECTUAL VENTURES II LLC,
Plaintiffs-Appellees
v.
MOTOROLA MOBILITY LLC, FKA MOTOROLA
MOBILITY, INC.,
Defendant-Appellant
______________________
2016-1795
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:11-cv-00908-SLR-MPT,
Judge Sue L. Robinson.
______________________
Newman, Circuit Judge, concurring-in-part, dissenting-
in-part.
I agree with the holding of non-infringement of the
’144 patent, and join the judgment of reversal of the
district court’s judgment of liability with respect to that
patent. 1 I respectfully dissent from my colleagues’ sus-
taining the validity of the ’144 and ’462 patents, for I
believe that the claims in suit would have been obvious to
a person of ordinary skill in the field of the invention.
1 Intellectual Ventures I, LLC v. Motorola Mobility
LLC, 176 F. Supp. 3d 405 (D. Del. 2016) (“Dist. Ct. Op.”).
2 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
THE ’144 PATENT
A. Infringement of claim 41
I agree that infringement of claim 41 of the ’144 pa-
tent was not established, in general for the reasons that
the majority explains. Thus I join the holding of non-
infringement of claim 41, for I agree that substantial
evidence did not support the jury’s verdict. I write sepa-
rately, however, to clarify the holding of Centillion Data
Systems, LLC v. Quest Communications International,
Inc., 631 F.3d 1279 (Fed. Cir. 2011).
The district court correctly stated: “Centillion did not
hold that the infringer ‘benefit’ from every single limita-
tion. Rather Centillion held that the user must ‘obtain
benefit’ from the ‘system as a whole’ and its analysis
of (and finding of) benefit was not on a limitation-by-
limitation basis.” Dist. Ct. Op. at 422. My colleagues
“disagree,” Maj. Op. 15, stating that:
Centillion and NTP held that to “‘use” something
is to put it into service, which means to control
and benefit from it. And Centillion explicitly add-
ed that, to use a claimed system, what must be
“used” is each element. From those two proposi-
tions, it follows that, to use a system, a person
must control (even if indirectly) and benefit from
each claimed component.
Id. (citations and parenthetical omitted).
With respect, my colleagues are incorrect. Centillion
does not stand for the proposition that they expound; the
district court’s statement of Centillion was not in error.
Centillion did not establish a new requirement for in-
fringement whereby a user must benefit from every
element of the system. Centillion held that “[b]y causing
the system as a whole to perform this processing and
obtaining the benefit of the result, the customer has ‘used’
the system under § 271(a).” 631 F.3d at 1285.
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 3
To infringe a claim, every element of the claim (or its
equivalent) must be practiced; but the benefit a user
receives flows from the claimed system as a whole. It is
not a necessary element of proof of infringement, to
require proof of benefit from each element and limitation
of the claim. The district court correctly so recognized.
It is of course required that for infringement every el-
ement of the claim must be practiced. However, Centil-
lion does not require a showing of individual benefit from
every separate element that is included in a claim. See
Centillion, 631 F.3d at 1285 (“By causing the system as a
whole to perform this processing and obtaining the benefit
of the result, the customer has ‘used’ the system under
§ 271(a).”).
This definition of “use” properly captures the scope of
infringement for which Centillion stands. It cannot be
that a person might be found liable for infringement when
the last element of the claimed system does not accom-
plish the primary purpose of the invention, that is, send-
ing a multimedia text to another. Under Centillion, “use”
by a party is properly defined as occurring when “but for
the customer’s actions, the entire system would never
have been put into service,” and each claimed component
is placed in service on the party’s behalf. Id.
Centillion conforms to precedent; the change imposed
by my colleagues is unsupported by law. Infringement in
this case is a simple determination of whether the
Motorola system practices all of the elements of claim 41,
not whether the user obtains a benefit from each of the
elements of claim 41. The discussion of whether the user
benefits from the system’s “generat[ing] a delivery re-
port,” as claim 41 requires, is not the reason infringement
is not present. The proper analysis is whether the system
is acting at the behest or control of Motorola if a delivery
report is generated.
4 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
It is not disputed that all elements of the claim are
not used by or attributable to Motorola. There was not
substantial evidence that Motorola intended the genera-
tion of the delivery report to occur, nor was there substan-
tial evidence Motorola received a benefit from the report’s
generation. Thus I concur in the holding of non-
infringement of claim 41, for it was not shown that
Motorola’s “use” of the accused system practiced every
element of claim 41.
B. Validity of claim 41
At the trial Motorola argued that claim 41 was invalid
for obviousness in view of the Overend reference taken
with the Micali reference.
The panel majority states that substantial evidence
supports the finding “that Overend’s ‘Receive Mode’ did
not satisfy the ‘irrespective of user action’ limitation of
claim 41.” Maj. Op. 11. However, the district court
correctly construed the claims to require that a file is
received “irrespective of user action,” as long as “the user
need not log-in to a server and download the selected file.”
J.A. 379. As the majority notes, “Motorola’s expert testi-
fied that the ‘Receive Mode’ of Overend’s software allowed
a user to receive files without having to ‘log in’ or ‘down-
load’ files.” Maj. Op. 11. There is no indication that IV’s
expert testified to the contrary, although IV’s expert
offered the opinion that “‘Receive Mode’ was not equiva-
lent to receiving files ‘irrespective of user action.’” Id.
IV’s argument regarding “Receive Mode” is flawed, for
claim 41 does not require the receipt of files to be instan-
taneous or as they are sent; nor does the claim exclude
queuing files in the network for later delivery. The claim
limits precisely what the district court construed the
claim to limit: a “user need not log-in to a server and
download the selected file.” It is this user action that is
not permitted to be read into the claim. Allowing the
device to receive any queued or subsequent real-time
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 5
messages is precisely within the scope of receiving files
“irrespective of user action.”
The Overend reference meets the “irrespective of user
action” limitation. Thus all of the elements of claim 41
are shown in Overend, with the exception of the authenti-
cating step. But Micali teaches the authenticating step,
describing “an electronic communications method between
a first and second party, with assistance from at least a
trusted party . . . in which the first party has a message
for the second party.” Micali, col. 3 ll. 54–58.
Micali further teaches embodiments in which the sec-
ond party sends a “receipt” to the trusted party, and
where the trusted party sends a receipt to the first party.
Id. col. 7 ll. 4–16; col. 12 ll. 5–32. Based on these teach-
ings, Motorola’s expert testified that Micali’s trusted
party and exchanging of receipts satisfied the “authenti-
cating device” limitations of claim 41. The combination of
Overend and Micali shows all of the elements of claim. A
person of skill in the field of the invention would have
found the combination obvious.
Although my colleagues state that “the jury was free
to disbelieve [Motorola’s] expert and credit [IV’s] expert,”
Maj. Op. at 12 (alterations in original), the court’s obliga-
tion is to assure that questions of law are correctly decid-
ed, and that for factual disputes, substantial evidence on
the record as a whole supports the legal conclusion. The
question of law is whether a person of ordinary skill in
this art would deem it obvious to combine an authenticat-
ing step as in Micali, with the process of Overend. See 35
U.S.C. § 103 (whether “the differences between the sub-
ject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains.”).
6 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
Obviousness is determined based on the teachings in
the prior art, and whether it would have been obvious to
select and combine these teachings. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references
individually where the rejection is based upon the teach-
ings of a combination of references.”); In re Mouttet, 686
F.3d 1322, 1333 (Fed. Cir. 2012) (“[T]he test for obvious-
ness is what the combined teachings of the references
would have suggested to those having ordinary skill in the
art.”).
Overend shows “transmit[ting] to an authenticating
device of the communications network, the delivery con-
firmation message.” ’144 patent, col. 46 ll. 1–2 (claim 41);
see Overend, col. 5 ll. 42–47. Micali shows the “authenti-
cating device of the communications network.” ’144
patent, col. 46 ll. 1–2 (claim 41); see Micali, col. 3 ll. 54–58
(providing for “an electronic communications method
between a first and second party, with assistance from at
least a trusted party . . . in which the first party has a
message for the second party”); see also Smith cross-
examination, J.A. 838, 1180:17–20 (“Q. And you agree
that the Micali reference shows a messaging system
where the desire is to authenticate messages between
parties that maybe don’t trust each other; right? A. Yes.”).
Overend similarly teaches “wherein the authenticat-
ing device is configured to: generate a delivery report that
indicates a delivery event and a time of the delivery
event,” with Micali teaching the authenticating device in
the claim element. ’144 patent, col. 46 ll. 13–16; see
Overend, col. 5 ll. 42–47; Micali, col. 3 ll. 54–58; see also
J.A. 1219, Fig. 7b (Overend teaching a “transfer log” with
date/time stamps of transmission and receipt of a file);
J.A. 741, 796:9–797:4 (Overend also teaching a “delivery
report[,] the delivery event[,] and the time of the delivery
event”). The testimony of Dr. Martin Rinard, that “the
only limitation that Overend does not disclose is the
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 7
third-party authenticating device,” and that “Micali
discloses the third-party authenticating device missing
from Overend” remains undisputed. Dist. Ct. Op. at 429
(characterizing Rinard’s testimony).
Applying law and precedent, the combination of Over-
end and Micali renders claim 41 obvious. First, “when a
patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for
another known in the field, the combination must do more
than yield a predictable result.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). And second, “[w]hen a
patent simply arranges old elements with each perform-
ing the same function it had been known to perform and
yields no more than one would expect from such an ar-
rangement, the combination is obvious.” Id. at 417 (in-
ternal quotation marks and citation omitted). The Court
explained that “a court must ask whether the improve-
ment is more than the predictable use of prior art ele-
ments according to their established functions.” Id.In light of the evidence, no reasonable jury could have
found claim 41 to be nonobvious. There is not substantial
evidence that a receipt confirming delivery is not a deliv-
ery confirmation message as in the prior art, especially
given the express teachings of Micali’s authenticating
device. A “patent for a combination which only unites old
elements with no change in their respective func-
tions . . . obviously withdraws what already is known into
the field of its monopoly and diminishes the resources
available to skillful men.” Id. at 415–16 (quoting Great
Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S.
147, 152-153 (1950)).
Thus I must, respectfully, dissent from my colleagues’
ruling sustaining the validity of claim 41.
8 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
THE ’462 PATENT
On the evidence presented, no reasonable jury should
have found the claimed subject matter of the ’462 patent
nonobvious. The claims are for a portable telephone
handset combined with a docking station, for which the
computer functions are provided by the handset. My
colleagues agree that the issue is “whether a person of
ordinary skill in the art at the time of the ’462 patent
would have been motivated to use Smith’s detachable
handset with Nelson’s docking display unit.” Maj. Op. 21.
This motivation is provided in the cited references them-
selves.
The ’462 patent explains that its inventors did not in-
vent portable telephone handsets, did not invent comput-
erized portable telephone handsets, and did not invent
docking stations for computer-bearing or computer-
directed modules. See ’462 patent, col. 1 l. 40–col. 2 l. 8.
The ’462 patent further states that “components used in
device 10 can be similar to those employed by traditional
computing devices, communication devices, and enter-
tainment devices.” See ’462 patent, col. 5 ll. 38–40.
The combination of a portable telephone with a dock
is shown by Smith, and the combination of a dock with a
computer module is shown by Nelson. The combination
that is described and claimed in the ’462 patent is a
portable telephone having a computer, and when docked,
the docking station uses the telephone’s computer. Nel-
son shows a portable computer, and a docking station that
uses the PC’s computer. Smith shows a portable tele-
phone that docks with a docking station that provides the
computer module. The ’462 patent shows a portable
telephone having a computer, that docks with a docking
station that uses the telephone’s computer.
As computer-fitted telephones became available, it
was obvious to combine that telephone with the dock of
Nelson, recognizing Smith’s combination of telephone and
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 9
dock. Nelson discusses the “certain advantages over the
other” of portable and desktop PCs, “past” “attempts to
combine the functions” of both, and states the “need for a
system which provides the advantages of both portable
PCs and desktop PCs.” Col. 1 ll. 5–35. Smith remarks
that “[t]he demands of modern life require . . . people to
carry at least one electronic device to perform their daily
work.” Col. 2 ll. 15–18. Smith refers to the “dual prob-
lems of mobility and portability associated with using a
portable telephone in combination with a portable com-
puter.” Abstract.
The ’462 patent, benefitting from the discovery by
others of a telephone that is also a portable computer,
simply combines this device with a docking station, as
shown by Nelson for docking a computer module. The
’462 combination of a portable telephone/computer with a
docking station is the obvious combination of known
devices for their known purposes. See, e.g., J.A. 1025
(Motorola’s expert discussing the advantages and disad-
vantages of Nelson and Smith, individually, and conclud-
ing that “the combination of Nelson and Smith has all of
these advantages without a shortcoming”).
The majority observes that the parties’ expert wit-
nesses offered conflicting opinions as to what was obvious,
and the majority states that “[t]he jury apparently credit-
ed the testimony of IV’s expert over Motorola’s.” Maj. Op.
22. Perhaps so. However, the issue is not credibility of
witnesses; the issue is whether substantial evidence
supports the jury’s decision, taking into account the
entirety of the record, and evidence that both supports
and detracts from the decision. Universal Camera Corp.
v. NLRB, 340 U.S. 474, 487–88 (1951).
The question of obviousness is “whether a person of
ordinary skill in the art at the time of the ’462 patent
would have been motivated to use Smith’s detachable
handset with Nelson’s docking display unit.” Maj. Op. 21
10 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC
(internal quotation marks omitted). This ultimate inquiry
is a question of law, and requires objective determination.
The record does not contain substantial evidence sup-
porting the majority's conclusion that it would not have
been obvious to use the known computerized handset in
the known docking station. The combination of the Nel-
son and Smith references shows every element of the
claims at issue in the ’462 patent, used in the same man-
ner, for the same purpose, as in the ’462 patent. See In re
Mouttet, 686 F.3d at 1333 (“[T]he test for obviousness is
what the combined teachings of the references would have
suggested to those having ordinary skill in the art.”). The
motivation to combine the known portable computerized
telephone with the known docking station is provided by
the references themselves, as discussed above. The
court’s contrary conclusion is not supported by evidence.
Thus I respectfully dissent from the ruling that the
’462 patent is not invalid on the ground of obviousness.