The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending December 20, 2013. Shri Abhyankar and Mike Connor prepared this edition.
Patentable Invention: Anticipation: Inherency
ITC Practice and Procedure: Domestic Industry
Motorola Mobility, LLC v. Microsoft Corp., No. 12-1535 (Fed. Cir. (U.S.I.T.C.) Dec. 16, 2013). Opinion by Rader, joined by Prost and Taranto.
In affirming the International Trade Commission’s (“ITC”) determination that Motorola Mobility, LLC (“Motorola”) violated § 337 of the Tariff Act by importing and selling infringing devices, the Federal Circuit held that proving anticipation through inherency requires more than probabilities or possibilities that the prior art practices a claimed feature. The court also affirmed the ITC’s findings that Motorola had failed to show that the asserted claims were obvious. Finally, the court affirmed the ITC’s determination that investments as to the operating system of a mobile device, as opposed to the mobile device itself, may satisfy the economic prong of the domestic industry requirement when the operating system is a specifically tailored, significant aspect of an article protected by a patent.
Microsoft Corp. (“Microsoft”) filed a complaint in the ITC naming Motorola as the respondent and alleging that Motorola’s importation and sale of certain mobile devices infringed nine Microsoft patents, including U.S. Patent No. 6,370,566 (“the ’566 patent”). The ’566 patent, the only patent at issue on appeal, claims a mobile device containing a personal information manager (“PIM”), which is an application typically used to manage scheduling, communications, and similar tasks. Although Motorola initially contested infringement, it later abandoned that defense and instead alleged that the asserted claims were invalid as anticipated and/or obvious, and that Microsoft did not satisfy the economic prong of the domestic industry requirement.
With regard to anticipation, Motorola argued that the prior art Apple Newton MessagePad device inherently disclosed the “synchronization component” of the patent claims. The administrative law judge (“ALJ”) disagreed, noting that while it was “certainly possible to infer” that the prior art device contained the claimed feature, “evidence of a possibility does not rise to the level of clear and convincing evidence.” With regard to obviousness, the ALJ found that Motorola’s analysis was nothing more than “conclusory and generalized sentences” and rejected Motorola’s obviousness defense. The ITC affirmed on both issues.
The ALJ also concluded that Microsoft had satisfied the economic prong of the domestic industry requirement. Microsoft relied on mobile devices for the technical prong of the domestic industry requirement but only pointed to its significant investments in the mobile devices’ operating systems for the economic prong. Motorola argued that the reliance on different products for the two prongs was improper. The ALJ rejected this argument, finding that the operating systems and mobile devices running such operating systems are a single product for purposes of the domestic industry requirement. The ITC affirmed, concluding that the operating system is merely a part of the entire mobile device, rather than a distinct product.
The Federal Circuit affirmed on all issues. First, the court held that for purposes of anticipation, evidence of only probabilities or possibilities that the prior art practiced a claimed feature is insufficient to establish that the prior art inherently disclosed the feature. With regard to obviousness, the court noted that substantial evidence supported the ALJ’s conclusion, affirmed by the ITC, that Motorola had failed to prove by clear and convincing evidence that the asserted claims would have been obvious to a person of skill in the art, because Motorola failed to clearly identify the scope and content of the prior art or to provide any argument that certain references render a specific claim obvious. Last, with regard to the domestic industry requirement, the court held that nothing in Section 337 precludes a complainant from relying on investments or employment directed to significant components, such as operating systems, that are specifically tailored for use in an article protected by the patent, such as mobile devices, to satisfy the economic prong.
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