Mirror Worlds, LLC v. Apple Inc.

United States Court of Appeals
for the Federal Circuit
__________________________
MIRROR WORLDS, LLC,
Plaintiff-Appellant,
v.
APPLE INC.,
Defendant-Appellee.
__________________________
2011-1392
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in Case No. 08-CV-0088, Judge
Leonard Davis.
__________________________
Decided: September 4, 2012
__________________________
DAVID BOIES, Boies, Schiller & Flexner, LLP, of
Armonk, New York, argued for plaintiff-appellant. With
him on the brief were WILLIAM D. MARSILLO; and PHILIP
C. KOROLOGOS, of New York, New York. Of counsel on the
brief were DONALD R. DUNNER, ALLEN M. SOKAL and
MOLLY R. SILFEN, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC; and JOSEPH
DIAMANTE, KENNETH L. STEIN, IAN G. DIBERNARDO and
ALEXANDER SOLO, Stroock & Stroock & Lavan LLP, of
New York, New York.
MIRROR WORLDS v. APPLE 2
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, of Boston, Massachusetts, argued for defen-
dant-appellee. With him on the brief were MARK C.
FLEMING, LAUREN B. FLETCHER and NATHAN R. SPEED. Of
counsel on the brief were WILLIAM G. MCELWAIN and
THOMAS G. SAUNDERS, of Washington, DC; GEORGE RILEY,
O’Melveny & Meyers LLP, of San Francisco, California;
ALLAN M. SOOBERT, Paul Hastings LLP, of Washington,
DC, and JEFFREY G. RANDALL, Paul Hastings LLP, of Palo
Alto, California.
__________________________
Before NEWMAN, LOURIE, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE.
Opinion dissenting in part filed by Circuit Judge PROST.
LOURIE, Circuit Judge.
This is an appeal from an infringement suit brought
by Mirror Worlds, LLC (“Mirror Worlds”), against Apple,
Inc. (“Apple”), to enforce various claims of three patents:
U.S. Patent 6,006,227 (“’227 patent”); U.S. Patent
6,638,313 (“’313 patent”); and U.S. Patent 6,725,427 (“’427
patent”). The jury returned a verdict in favor of Mirror
Worlds and awarded $208.5 million in damages. In
separate rulings—one at the end of Mirror Worlds’ case in
chief and another after the jury verdict—the district court
entered judgment as a matter of law in Apple’s favor,
finding that Apple was not liable as a matter of law for
infringement of any of the asserted patent claims and
vacating the damages verdict. See Mirror Worlds, LLC v.
Apple, Inc., 784 F. Supp. 2d 703 (E.D. Tex. 2011). Be-
cause we conclude that the district court did not err in
entering judgment as a matter of law, we affirm.
3 MIRROR WORLDS v. APPLE
BACKGROUND
Mirror Worlds brought suit against Apple, alleging di-
rect and induced infringement of twelve claims of the
three patents in suit. At the conclusion of Mirror Worlds’
case in chief, the district court granted Apple’s oral mo-
tion for judgment as a matter of law that Apple did not
induce infringement of any of the patents because Mirror
Worlds did not offer any evidence of actual performance of
the patented method by third parties. See Mirror Worlds,
784 F. Supp. 2d at 710 n.7. The issue of direct infringe-
ment by Apple was submitted to the jury, which found
Apple liable for willfully infringing all three asserted
patents and awarded $208.5 million in damages.
After the trial, the district court granted Apple’s mo-
tion for judgment as a matter of law, vacated the jury
verdict, and concluded that Mirror Worlds failed to pre-
sent substantial evidence of direct infringement and
damages. Id. at 720, 727. In particular, the district court
concluded that Mirror Worlds did not establish infringe-
ment of the asserted claims of the ’313 and ’427 patents
under the doctrine of equivalents—its only infringement
theory for those patents—because the accused products
did not have an equivalent of a “cursor or pointer.” Id. at
716–20. The district court also concluded that Mirror
Worlds failed to offer substantial evidence that Apple
performed each step of the claimed methods of the ’227
patent and that the evidence presented at trial was not
sufficient to support the damages award. Id. at 713–15,
724–27. Mirror Worlds appeals, arguing that we should
reverse each of the district court’s rulings. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
I. The Invention and the Claims
The patents in suit share a common written descrip-
tion and are generally directed to searching, displaying,
MIRROR WORLDS v. APPLE 4
and archiving computer files. The specification discloses
a “document streaming” operating system that, unlike
traditional operating systems, identifies documents with a
time stamp instead of a file name and maintains them in
chronologically ordered “streams.” “Every document
created and every document sen[t] to a person or entity is
stored in a main stream.” ’313 patent col. 4 ll. 11–13. The
documents in the stream “can contain any type of data”
including “pictures, correspondence, bills, movies, voice-
mail and software programs.” Id. col. 4 ll. 19–21. By
constantly keeping track of all the documents on the
computer in these chronologically ordered streams and
making the location and nature of file storage transparent
to the user, the invention purportedly improves filing
operations and enhances the quality of the user’s experi-
ence. The patents describe displaying the stream as
stacked images that appear to be receding and foreshort-
ened, as illustrated in Figure 1:
5 MIRROR WORLDS v. APPLE
Id. Fig.1. By sliding the cursor over any item within the
stack, the user may see a preview of the document, also
known as a “glance view.” See id. col. 15 ll. 21–22, col. 16
ll. 35–36. The documents within the stream are marked
with a time stamp, and are automatically updated and
continuously archived in chronological order.
The asserted claims of the ’227 patent (claims 13 and
22) and ’313 patent (claims 1, 2, 3, 9, and 11) are method
claims; the asserted claims of the ’427 patent (claims 1, 8,
16, 18, and 25) are system claims. All of the asserted
claims of the ’313 and ’427 patents include a limitation for
a sliding “cursor or pointer” that relates to the glance
view. Claim 1 of the ’313 patent is exemplary of the
asserted ’313 and ’427 claims:
1. A method of utilizing a document stream oper-
ating system that in turn utilizes subsystems
from at least one other operating system, compris-
ing:
receiving documents from diverse applications in
formats that are specific to the respective ap-
plications and differ as between at least some
of said applications;
automatically associating time-based indicators
with the documents received in the receiving
step from the diverse applications;
automatically archiving the received documents;
automatically creating glance views that are ab-
breviated versions of respective ones of said
documents;
selectively displaying at least some of said docu-
ments as a receding, foreshortened stack of
partly overlapping documents so that only a
part of each of said documents in the displayed
MIRROR WORLDS v. APPLE 6
stack, after the first document in the stack, is
visible to the user;
said displaying further including displaying a cur-
sor or pointer and responding to a user sliding
the cursor or pointer over said displayed stack
to display the glance view of the document in
the stack that is currently touched by the cur-
sor or pointer, without requiring clicking on
the document; and
utilizing, in said document stream operating sys-
tem, subsystems from said at least one other
operating system for operations including
writing documents to storage media, interrupt
handling and input/output.
’313 patent col. 16 ll. 14–26.
The asserted claims of the ’227 patent (independent
claim 13 and dependent claim 22) do not contain the
“cursor or pointer” limitation. Claim 13 recites a method
for organizing documents as they are generated in and
received by the computer:
13. A method which organizes each data unit re-
ceived by or generated by a computer system,
comprising the steps of:
generating a main stream of data units and at
least one substream, the main stream for re-
ceiving each data unit received by or gener-
ated by the computer system, and each
substream for containing data units only from
the main stream;
receiving data units from other computer systems;
generating data units in the computer system;
selecting a timestamp to identify each data unit;
7 MIRROR WORLDS v. APPLE
associating each data unit with at least one
chronological indicator having the respective
timestamp;
including each data unit according to the time-
stamp in the respective chronological indicator
in at least the main stream; and
maintaining at least the main stream and the
substreams as persistent streams.
’227 patent col. 16 ll. 9–25. Claim 22, which depends from
claim 13, recites an additional limitation for “archiving
data units having timestamps older than a specified time
point.” Id. col. 16 ll. 61–64.
II. The Accused Products
Mirror Worlds accused all Apple computers and serv-
ers that run the Mac OS X operating system versions 10.4
(“Tiger”), 10.5 (“Leopard”), and 10.6 (“Snow Leopard”) of
infringement. Mirror Worlds also accused Apple’s mobile
devices that run the iOS operating system, which is based
on Mac OS X. Mirror Worlds accused, in various combi-
nations, three specific features embedded in the accused
operating systems of infringing the patents: Spotlight,
Cover Flow, and Time Machine.
Spotlight, which Apple introduced for the first time in
its Tiger operating system, is a search and indexing
application. Spotlight continuously tracks all files that
are generated in or received by the computer and collects
certain information about their content. The information
collected is used to compile both an index of all computer
data and a database of metadata information about the
content and form of each document such as the time and
date of creation, author, or the location where the docu-
ment is stored. By continuously maintaining and updat-
ing both the index and the metadata database, Spotlight
MIRROR WORLDS v. APPLE 8
enables the user to easily search and view, through a
single interface, all of the computer’s contents (including,
for example, the content of attachments to received e-
mails). The user may also organize the search results
based on various criteria, including the time that the
documents within the search results were last modified.
Cover Flow, first introduced with Leopard, is a
graphical user interface that allows a user to flip through
a stack of documents on the computer. Files viewed in
Cover Flow are displayed as a deck of album covers. A
representative preview of each file is displayed, one at a
time, in the center of the view with the rest of the files
only partially displayed (in two side stacks) to the left and
right. Unlike the patented interface, sliding a cursor over
the documents in the side stacks will not result in a
preview of the file being displayed. Rather, in Apple
computers, the user must manipulate a horizontal scroll
bar at the bottom of the application screen in order to
browse through the files. In Apple’s mobile devices, which
are equipped with a touch screen, the user may look
through the documents by swiping a finger across the
screen. A screen-shot of Cover Flow is reproduced below.
Time Machine, also first introduced with Leopard, is
an automatic backup and archiving application. When an
9 MIRROR WORLDS v. APPLE
external hard drive is connected to an Apple computer,
Time Machine will prompt the user to select whether that
device should be used to store a system backup. If a user
answers yes, Time Machine will automatically archive
and backup the user’s files. Time Machine will also allow
the user to restore and recover past versions of the files
that have been previously backed up on the external hard
drive.
DISCUSSION
We review the grant or denial of a motion for judg-
ment as a matter of law under the law of the regional
circuit. Summit Tech., Inc. v. Nidek Co., 363 F.3d 1219,
1223 (Fed. Cir. 2004). The Fifth Circuit reviews the grant
or denial of judgment as a matter of law de novo. Med.
Care Am., Inc. v. Nat'l Union Fire Ins. Co., 341 F.3d 415,
420 (5th Cir. 2003). “If there is substantial evidence
opposed to [judgment as a matter of law] ... [it] should be
denied.” Id. (citation omitted). We have interpreted the
Fifth Circuit's standard to mean that the jury’s determi-
nation must be supported by substantial evidence. ACCO
Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1312
(Fed. Cir. 2007). The jury’s determination of infringement
is a question of fact, which we review for substantial
evidence. z4 Techs., Inc. v. Microsoft Corp., 507 F.3d
1340, 1347 (Fed. Cir. 2007).
We agree with the district court that Mirror Worlds’
infringement theory for all of the asserted claims of the
’313 and ’427 patents must fail because Mirror Worlds did
not provide substantial evidence to show that the accused
products have an equivalent for the “cursor or pointer”
limitation. We also agree with the district court that
Mirror Worlds failed to introduce substantial evidence to
show that Apple itself directly infringed or induced its
customers to infringe the ’227 method claims. In view of
MIRROR WORLDS v. APPLE 10
the fact that we are affirming the district court’s grant of
judgment as a matter of law of non-infringement, we have
no need to review its judgment on damages.
I. The ’313 and ’427 Patents
The asserted claims of the ’313 and ’427 patents re-
quire a “cursor or pointer” to generate a glance view of a
particular document in the file stack. Conceding on
appeal that Cover Flow does not literally meet the “cursor
or pointer” limitation, Mirror Worlds’ theory of infringe-
ment of the ’313 and ’427 patents relies on the doctrine of
equivalents. We agree with the district court, however,
that Mirror Worlds failed to present substantial evidence
to the jury to support its infringement theory.
Under the doctrine of equivalents, “a product or proc-
ess that does not literally infringe . . . the express terms
of a patent claim may nonetheless be found to infringe if
there is ‘equivalence’ between the elements of the accused
product or process and the claimed elements of the pat-
ented invention.” Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 21 (1997). A patent is infringed
under the doctrine of equivalents if any difference be-
tween a given limitation in the asserted claim and the
corresponding element in the accused device is insubstan-
tial. Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir.
2008). Alternatively, “an element in the accused device is
equivalent to a claim limitation if it performs substan-
tially the same function in substantially the same way to
obtain substantially the same result.” Id. (citation omit-
ted). Regardless how the equivalence test is articulated,
“the doctrine of equivalents must be applied to individual
limitations of the claim, not to the invention as a whole.”
Warner-Jenkinson, 520 U.S. at 29.
Here, Mirror Worlds failed to present substantial evi-
dence to the jury to establish equivalence under either
11 MIRROR WORLDS v. APPLE
test. The cursor or pointer limitation may be parsed into
two components: 1) “a cursor or pointer” and 2) “respond-
ing to a user sliding the cursor or pointer over said dis-
played stack to display the glance view of the document . .
. without requiring clicking on the document.” In other
words, the claims require a cursor and a system that
responds to the sliding (without clicking) of the cursor
over the stack by generating a glance view of the docu-
ment. Mirror Worlds has failed to show equivalence of
the first component; thus, we need not consider the second
component.
Mirror Worlds argued at trial that the “default” area
at the center of Cover Flow was equivalent to the “cursor
or pointer.” In support of its argument on appeal, Mirror
Worlds relies exclusively on the testimony of its expert,
Dr. John Levy. Dr. Levy’s testimony, however, is insuffi-
cient as it does not establish that Cover Flow has the
equivalent of a cursor or a pointer. In pertinent part, Dr.
Levy stated:
[Cover Flow] does not display a literal pointer, but
I believe it has the equivalent, because the user
always is looking at the center where the glance
view is going to pop up, and that is where the cur-
sor or pointer is by default.
J.A. 1588. That testimony is inadequate. Dr. Levy does
not explain why the mere fact that users look at the
center of the display, where glance views are shown,
should mean that a cursor exists there by default. Nor
does he explain what it means for a cursor to be present
“by default” in the first place. Such an assertion amounts
to an argument that the absence of a feature is equivalent
to its presence, which is a negation of the doctrine of
equivalents. Dr. Levy’s conclusory statement is thus
insufficient to allow a reasonable juror to find that Mirror
MIRROR WORLDS v. APPLE 12
Worlds has met its burden of proof in showing that Cover
Flow has the equivalent of a cursor or pointer.
Reading the “cursor or pointer” limitation out of the
claim improperly vitiates claim language by allowing the
exact opposite of what is required. See Warner-Jenkinson,
520 U.S. at 39 n.8 (“[I]f a theory of equivalence would
entirely vitiate a particular claim element, partial or
complete judgment should be rendered by the court.”).
We therefore agree with the district court that the evi-
dence was insufficient to support the jury’s finding of
infringement for all of the asserted claims of the ’313 and
’427 patents.
II. The ’227 Patent
The ’227 patent is drawn to a method of organizing
documents in a computer. To infringe a method claim, all
steps of the claimed method must be performed. See
Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317
(Fed. Cir. 2009); see also 35 U.S.C. § 271. Infringement of
claim 13 of the ’227 patent requires, at a minimum:
searching in Spotlight, receiving data units from other
computer systems (such as receiving e-mail), generating
data units (sending an e-mail or creating a document),
and generating a substream (“time-ordered” search re-
sults). ’227 patent col. 16 ll. 9–25; see also J.A. 7530–37
(Mirror Worlds’ claim chart). While Mirror Worlds also
asserted claim 22 of the ’227 patent in the district court,
Mirror Worlds’ opening brief on appeal hardly mentions
claim 22 apart from a passing reference in a footnote that
claim 22 is also infringed. Mirror Worlds Br. 21, 48 n.18.
That does not sufficiently preserve the issue for appeal;
thus we will focus on the only other asserted claim: claim
13. See Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d
1280, 1294 (Fed. Cir. 2012) (holding that issues raised
only in a footnote may be deemed waived).
13 MIRROR WORLDS v. APPLE
A. Direct Infringement
As stated above, the use of Spotlight to search for
documents on a computer that has sent and received
documents (via e-mail, for example) and generates time-
ordered search results infringes claim 13. The district
court found that Mirror Worlds failed to offer any evi-
dence that showed Apple itself infringed claim 13 of the
’227 patent. We agree that Mirror Worlds has not offered
substantial evidence that Apple directly infringed the ’227
patent.
Direct infringement of a method claim can be based
on even one instance of the claimed method being per-
formed. See Lucent, 580 F.3d at 1317. A patentee need
not always have direct evidence of infringement, as in-
fringement may be established by circumstantial evi-
dence. Id. However, Mirror Worlds, as the patentee here,
has to show that Apple performed all of the steps in the
claimed methods. Id. Mirror Worlds failed to meet that
burden.
Mirror Worlds introduced a video of a January 2005
presentation by Apple’s former CEO, Steve Jobs, during
which he demonstrated use of Tiger’s Spotlight to search
for data on a computer. The searched data included
thousands of photographs presumably received from
another computer by e-mail. Mirror Worlds also intro-
duced evidence that Apple tested the method by searching
e-mails with Spotlight in 2004. But, as Mirror Worlds
acknowledges, the cited demonstration and testing both
occurred before Tiger, the earliest accused version of the
operating system, was released to the public. Mirror
Worlds Reply Br. 13. Mirror Worlds nonetheless argues
that the jury could have reasonably inferred from that
evidence that Apple possessed an infringing copy of Tiger
before it released it to the public.
MIRROR WORLDS v. APPLE 14
Mirror Worlds’ damages expert, Walter Bratic, pro-
vided testimony that belies that position. Bratic testified
that “the only evidence of an infringing product is the
product that was released to the public in April 2005.”
J.A. 1813. Indeed, Bratic specifically stated that an
incomplete version of Tiger that was used in another
demonstration by Jobs in 2004 was not an infringing
version. J.A. 1812–13. Mirror Worlds points to no other
evidence or testimony in the record that would justify an
assumption by the jury that the Tiger version used in
Jobs’ January 2005 presentation or Apple’s internal
testing was indeed an infringing version of the operating
system.
Mirror Worlds also relies on the testimony of Bertland
Serlet, an Apple executive, as evidence of direct infringe-
ment. Mirror Worlds Reply Br. 13. Serlet opined that
“Spotlight works well, works fast, has a nice user inter-
face” and is “especially useful in mail.” J.A. 1455–56.
That statement is at best circumstantial evidence that
Serlet knew that Spotlight could be used to search e-
mails. It says nothing, however, about whether Serlet or
anybody else at Apple used an infringing version of the
accused products to search for e-mails. Thus, Serlet’s
testimony does not provide a reasonable jury adequate
ground on which to find direct infringement by Apple.
Finally, Mirror Worlds argues that Brian Croll, an-
other Apple executive, infringed the method claims by
presenting Spotlight to the jury during the trial. But
demonstration to a jury during trial does not constitute
evidence of infringement on which a claim of infringement
can be based. Furthermore, Apple notes, and Mirror
Worlds does not dispute, that this argument was not
raised below. In view of that fact, we decline to consider
it here. See Becton, Dickinson & Co. v. Tyco Healthcare
Grp., LP, 616 F.3d 1249, 1260 (Fed. Cir. 2010).
15 MIRROR WORLDS v. APPLE
In sum, the district court correctly found that Mirror
Worlds failed to provide substantial evidence to the jury
to support a verdict of direct infringement by Apple of
claim 13 of the ’227 patent.
B. Induced Infringement
In addition to alleging direct infringement by Apple,
Mirror Worlds also alleges that Apple induced its custom-
ers to infringe claim 13. The Patent Act provides that a
party who “actively induces infringement of a patent shall
be liable as an infringer.” 35 U.S.C. § 271(b). Inducement
of infringement requires that there be a showing of an
underlying act of direct infringement. See Linear Tech.
Corp. v. Impala Linear Corp., 379 F.3d 1311, 1326 (Fed.
Cir. 2004).
After the close of evidence for Mirror Worlds, the dis-
trict court granted judgment as a matter of law that
Apple did not induce infringement, later clarifying that
Mirror Worlds did not offer any evidence of actual per-
formance of the patented method by third parties:
Mirror Worlds did not offer any evidence that
anyone, Apple’s customers or otherwise, actually
performed the patented steps. While Mirror
Worlds’ expert, Dr. Levy, testified about the at-
tributes and capabilities of the accused Spotlight,
Cover Flow, and Time Machine features, he did
not testify that anyone else performed all of the
steps in the asserted method claims. Nor did Dr.
Levy testify that he actually performed the
claimed steps. Likewise, Mirror Worlds offered no
documentary evidence (e.g., instructions, manu-
als, or user guides) that instructed others to prac-
tice the patented steps. Mirror Worlds also failed
to provide any corresponding testimony tying any
documentation to the method steps or explanation
MIRROR WORLDS v. APPLE 16
of how Apple instructed users to perform each of
the claim limitations. As such, no reasonable jury
could conclude Apple was liable for indirect in-
fringement. Accordingly, the Court ruled that, as
a matter of law, Mirror Worlds had not proven
that Apple induced or contributorily infringed any
claims.
Mirror Worlds, 784 F. Supp. 2d at 710 n.7 (citations
omitted).
As previously stated, infringement of the ’227 patent
requires at a minimum: searching in Spotlight, receiving
data units from other computer systems (such as receiv-
ing e-mail), generating data units (sending an e-mail or
creating a document), and generating a substream (“time-
ordered” search results). ’227 patent col. 16 ll. 9–25.
Mirror Worlds relies on user manuals describing the
various accused features, software reviews allegedly
showing a customer performing each step of the asserted
method claims, and Apple surveys listing Spotlight as the
“most beneficial feature” of Tiger. However, Mirror
Worlds cites no trial testimony of customers actually
using each step of the method claims or tying together the
various manuals, reviews, and surveys as evidence of
actual use of the claimed method.
It is well settled that excerpts from user manuals as
evidence of underlying direct infringement by third par-
ties of products that can be used in a non-infringing
manner are by themselves insufficient to show the predi-
cate acts necessary for inducement of infringement. E-
Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213 (Fed. Cir.
2007). When manuals only teach “customers each step of
the claimed method in isolation,” but not “all the steps of
the claimed method together,” the manuals alone cannot
support infringement. Id. at 1222. Such a manual does
17 MIRROR WORLDS v. APPLE
not show that all of the steps were performed together.
Here, the operating systems, laptops, and accused fea-
tures such as Spotlight, can be indisputably used in a
non-infringing manner. The manual entries cited by
Mirror Worlds do not directly instruct a user how to
infringe. Instead, the manuals suggest searching Mail
using Spotlight, but do not at the same time instruct a
user to receive an e-mail (receive data units), send an e-
mail or create a word document (generate data units), and
display time-ordered search results (generating a sub-
stream). Such instruction is found only elsewhere in the
manuals, and separately. The manuals teach customers
each step of the claimed method only in isolation and thus
do not suffice under E-Pass for showing inducement of
infringement.
As noted in Lucent, instruction manuals, extensive
sales, and testimony by an expert that the claimed
method was used by him, his wife, and likely others was
“barely sufficient” in that case to permit a jury to find
underlying direct infringement. 580 F.3d at 1317–18.
But here, unlike in Lucent, there was no similar testi-
mony of total use of the claimed method from Mirror
Worlds’ infringement expert, Dr. Levy. Mirror Worlds,
784 F. Supp. 2d at 710 n.7 (Dr. Levy “did not testify that
anyone else performed all of the steps in the asserted
method claims. Nor did Dr. Levy testify that he actually
performed the claimed steps.”); J.A. 2373:13–16 (THE
COURT: “I granted the JMOL with regard to the indirect
infringement, because there was no expert testimony that
I recall tying up or -- or expressing an opinion about
[indirect infringement].”). Instead, Dr. Levy’s testimony
was focused on capability, not actual use, with no discus-
sion of inducement of infringement. It is not disputed
that the Apple products could infringe. However, such
testimony alone is not sufficient to find inducement of
MIRROR WORLDS v. APPLE 18
infringement of a method patent. Evidence of actual use
of each limitation is required.
In response, Mirror Worlds contends that the software
review articles it submitted showed use of all three ac-
cused features and e-mail, thus infringing the claims. But
a close review of those articles shows that, just like the
manuals, they do not present the accused features to-
gether in an infringing manner. For example, the pas-
sage cited by Mirror Worlds from a macworld.com article
states: “the improved speed of Spotlight, which makes
searching for messages within Mail much less painful.”
J.A. 6425. At best, that means the reviewer searched his
Mail to test the speed. But it does not stand to reason
that that search was done in a manner that infringes the
claims—again, sending and receiving data units (e-mail)
and displaying results in time order. For example, the
reviewer might have only searched his existing mail,
without sending any new mail.
Each of the reviewers’ articles cited by Mirror Worlds
suffers from the same defect. Indeed, the reviewers’
articles are as minimally descriptive of actual use of the
product as the previously discussed testimony of Serlet,
an Apple executive, that “Spotlight works well” and is
“especially useful in mail” that we find inadequate to
support direct infringement. Much like the user manuals
in E-Pass, one cannot selectively piece together disparate
parts of an article to show an underlying act of infringe-
ment of a method claim. A method claim is only infringed
if all of its parts are performed.
Mirror Worlds points to the statement by the district
court that it “defies logic” that not one user has used
Spotlight and Tiger in an infringing manner as support-
ing its induced infringement theory. But the district
court did not hold that a user had used Spotlight and
19 MIRROR WORLDS v. APPLE
Tiger in an infringing way. The district court, after
hearing that evidence, actually stated: “I recall enough
circumstantial evidence, I think, in the case, although not
rising to the level of inducement or contributory [in-
fringement], that it sort of defies logic to me that the
users did not turn on these features.” J.A. 2380:22–
2381:3. What the court meant by its statement is clear:
although people may “turn on” these features (Spotlight,
Cover Flow, Time Machine), that does not mean that the
features were used to practice the claims, and thus cannot
serve as the basis for induced infringement. Indeed,
Mirror Worlds’ claims are not passive; they require addi-
tional user action beyond just turning on the tools, such
as sending and receiving e-mail and using Spotlight.
Logic in this case was defied for lack of evidence.
In short, the dispute comes down to the following ob-
servation made by the district court in relation to the lack
of evidence of direct infringement:
If it was inconceivable to Mirror Worlds that the
accused features were not practiced . . . , it should
have no difficulty in meeting its burden of proof
and introducing testimony. See E-Pass, 473 F.3d
at 1222–23. Mirror Worlds simply failed to pre-
sent sufficient evidence from which a reasonable
jury could find that Apple, or anyone else, prac-
ticed each and every step of the claimed methods
by using the Spotlight, Cover Flow, and Time Ma-
chine features in the accused Mac OS X 10.4–6.
While it is important to persuade a jury, it is im-
perative to present a “legally sufficient eviden-
tiary basis” to support that persuasion.
Mirror Worlds, 784 F. Supp. 2d at 715. That same rea-
soning applies here to inducement of infringement. There
was a lack of substantial evidence on which a jury could
MIRROR WORLDS v. APPLE 20
render a verdict for inducement of infringement. We
therefore affirm the district court’s grant of judgment as a
matter of law that Apple did not induce infringement of
the ’227 method patent.
CONCLUSION
The necessary evidence was not put before the jury to
support the verdict of infringement or damages. We
therefore affirm the district court’s decisions in entering
judgment of non-infringement.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
__________________________
MIRROR WORLDS, LLC,
Plaintiff-Appellant,
v.
APPLE INC.,
Defendant-Appellee.
__________________________
2011-1392
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in case no. 08-CV-0088, Judge
Leonard Davis.
__________________________
PROST, Circuit Judge, dissenting in part.
Without justification, the majority reads two new
limitations into claim 13—one of which is not even urged
by either party—and then holds that Mirror Worlds’
evidence does not show that those limitations are met. I
cannot agree. I believe that under the correct reading of
the claim Mirror Worlds adduced sufficient evidence to
allow a reasonable jury to conclude that Apple’s custom-
ers infringed (and continue to infringe) claim 13 of the
’227 patent. Thus, with respect, I dissent from the major-
ity’s conclusion that the district court did not err in grant-
ing judgment as a matter of law that Apple did not induce
infringement of the ’227 method patent.
MIRROR WORLDS v. APPLE 2
I
There is no dispute that the use of Spotlight would in-
fringe claim 13 if four things occur: 1) a search, 2) receiv-
ing data units from other computer systems, 3)
generating data units, and 4) generating a substream.
What the majority fails to note, however, is that for the
most part, these four steps are performed automatically
and without any need for user interaction. The first step
(searching) occurs even when the user is not using Spot-
light. Indeed, that is precisely what enables Spotlight to
return search results quickly. Spotlight continuously
combs through every file or document that exists on the
computer and collects certain information from the file
such as creation time, content, and owner. This informa-
tion is then immediately incorporated into an all-inclusive
index akin to a look up table. By having this comprehen-
sive look up table ready at hand, Spotlight is able to
return search results almost immediately upon request.
As Mirror Worlds’ expert explained, this constant moni-
toring of computer data reduces the search operation to a
simple filtering of the already organized data based on
the user’s search query. In sum, Spotlight’s search engine
never sleeps.
The next two steps (generating and receiving data
units) are so common to any computer operation that is
hard to imagine one can do anything with a computer
without also performing these steps. The user “generates
data” every time she creates a file or document, such as a
letter, a drawing, a photograph, a calendar entry, a shop-
ping list, or anything of that sort. The computer “receives
data” whenever the user receives an e-mail, an online
instant message, or even a file while visiting a webpage.
Simply put, chances are much better than 50/50 that
3 MIRROR WORLDS v. APPLE
every time an Apple computer has been used, data have
been generated and received.
That leaves creating a substream. Under the district
court’s undisputed claim construction, a substream is “a
subset of data units, or documents, yielded by a filter on a
stream.” J.A. 103. A “main stream” is on the other hand
"inclusive of every data unit, or document, received by or
generated by the computer system." Id. at 102. In plain
English, a substream is generated whenever the user
runs a search query in Spotlight, which query is then
used to filter the main stream (encompassing all the data)
and generate a sub-stream (the search result).
Putting it all together, claim 13 simply requires that a
search query be run in Spotlight on a computer (that at
least contains one file and also that at some point has
received one e-mail or other type of file from another
computer), and that Spotlight filter its organized data-
base based on the inputted query (return search results).
That’s it.
II
Mirror Worlds introduced ample evidence to allow a
reasonable jury to determine that the required steps were
performed. This court has consistently held that circum-
stantial evidence suffices to prove infringement. Lucent
Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed.
Cir. 2009); Moleculon Research Corp. v. CBS, Inc., 793
F.2d 1261, 1272 (Fed. Cir. 1986). If that is true, then
Mirror Worlds’ evidence should have sufficed. The evi-
dence includes Apple brochures and manuals that en-
couraged users to use Spotlight to search through their
files, including their e-mails. For example, one manual
MIRROR WORLDS v. APPLE 4
states that “Mail [(Apple’s e-mail interface)] uses the
power of Spotlight for faster, more accurate searching.”
J.A. 5449. Even more specifically mirroring the claim
language, Apple taught its customers to use Spotlight to
search through data that are both generated in and
received by the computer. For example, one document
explained that Spotlight could “search e-mail archives;”
another taught users to use Spotlight to search their
“entire system from anywhere to find documents, email,
contacts, calendars, music, movies, photos, bookmarks,
and applications.” J.A. 5461 (emphasis added). But the
evidence of infringement is not limited to manuals and
brochures. Mirror Worlds also introduced a mac-
world.com review article that states, “the improved speed
of Spotlight, which makes searching for messages within
Mail much less painful.” J.A. 6425. This evidence
strongly suggests that at least one individual ran a search
in Spotlight on a computer that had received data (e-
mails). Surely, it would not have been unreasonable for a
jury to also assume that the author of the article had at
some point saved a single file on his computer too, so that
the data generation requirement would be satisfied.
Based on all this evidence, the jury could have reasonably
found that at least one Apple customer, more likely than
not, infringed claim 13—indeed, one would think it
unlikely that the jury would arrive at the opposite conclu-
sion.
But the majority is not satisfied. It casually brushes
the manuals and the review article aside, reasoning that
they do not show that the Spotlight search was performed
in a manner that would infringe claim 13. The majority’s
objection to the evidence appears to be based on two
erroneous assumptions about what claim 13 requires: 1)
that the search results be displayed in chronological
order, and 2) that data be generated and received either
5 MIRROR WORLDS v. APPLE
while the user performs the search or at some point in
time sufficiently close to the search. Neither assumption
finds any support in the claim language, the district
court’s claim construction, or anywhere else in the record.
Take the macworld.com article as an example. The
majority first complains that the article does not show
that the search results were displayed chronologically.
Majority Op. 17. Where does that requirement come
from? Citing the claim language, the majority notes that
the claim requires “‘time-ordered’ search results.” Id. at
11 (citing ’227 patent col.16 ll.9–25). From that, the
majority simply assumes that the search results should be
displayed chronologically. But the claim language and
the district court’s claim construction (or anything else in
the record for that matter) do not justify this logical leap.
To begin with, claim 13 does not even include the word
“display.” That sets it apart from other claims involved in
this litigation that do expressly address how search
results should be displayed. See J.A. 116. And, although
claim 13 requires that data units be both associated with
a “chronological indicator” and accordingly included in the
main stream, see ’227 patent col.16 ll.19-23, it never
recites a similar requirement for a substream. Moreover,
there is no reason to believe that bearing a chronological
indicator or being “time-ordered” is the same thing as
being displayed chronologically. Nor is there anything in
the district court’s claim construction that supports the
majority’s theory. The only requirement set by the dis-
trict court is that the data units within the main stream
bear a time-stamp, not that they be ordered chronologi-
cally. Indeed, the district court did not even address
whether the search results should be displayed chrono-
logically; it only addressed (and rejected) Apple’s argu-
ment that the main stream data units should be
chronologically stored. See J.A. 103. And, Apple does not
MIRROR WORLDS v. APPLE 6
even whole-heartedly press the chronological display
argument on appeal, apart from making two passing
remarks neither one of which bears a helpful citation to
the record. See Appellee’s Br. 8, 30 (citing J.A. 101, 6420).
In similar conclusory fashion, the majority has endorsed
Apple’s unsupportable argument.
The majority’s second reason for disregarding the
macworld.com review article is even more fragile than the
first. The objection is that “the reviewer might have only
searched his existing mail, without sending any new
mail.” Majority Op. 17. To try to understand this objec-
tion is to undermine it. It is not clear what the majority
means by existing e-mail. If existing means “already
searched,” then infringement has already occurred. If it
means “unread,” then the majority’s reasoning has no
basis in the claim language at all. At any rate, claim 13
does not have a temporal limitation; there is no require-
ment that the generated and received data be fresh. As
long as the user at some point has created and received
some data on her computer, the pertinent claim limitation
is satisfied. And, as already explained, it goes without
saying that any computer user has at some point gener-
ated and received data on her computer. After all, all
computer data are either generated or received, and there
would be nothing to search on a computer without data.
Finally, and perhaps most remarkably, Apple has not
even urged us to read a temporal requirement into claim
13.
In sum, it does not take much user interaction to in-
fringe claim 13 with Spotlight; Mirror Worlds has offered
sufficient evidence to allow a reasonable jury to find that
Apple’s customers used Spotlight to infringe claim 13; and
the majority’s reasons for discounting Mirror Worlds’
evidence are wholly unconvincing. I respectfully dissent.