Explanation of technology can impact result of patent suit
In Motorola Mobility v. ITC (Fed. Cir. 2013), the defendant (Motorola) initially argued that they were not infringing on Microsoft’s patent. They also argued that Microsoft’s patent was invalid for being anticipated or obvious in view of the prior art. However, duringthe ITC investigation, Motorola conceded infringement and pursued only the invalidity defense. The technical arguments presented for non-infringement subsequently hurt Motorola’s invalidity contentions, at least in part.
A patent infringement defendant is allowed to argue that it is not liable for its acts against the patent owner on multiple grounds such as non-infringement, invalidity and unenforceability. These different legal theories can be made even if they are inconsistent with each other. However, the technical description of the prior art and the invention should be consistent. Otherwise, the credibility of the experts describing the invention and the prior art may be at stake. The jury and/or judge will not believe your technical experts and will most likely decide against you.
Motorola had initially advanced a position that its device was not infringing Microsoft’s patent. In support, they tried to explain that server-based synchronization is fundamentally different from client-based synchronization. This may have been because the claims require one type of synchronization while Motorola’s device implemented another type of synchronization. As we will see later, this may suggest that there are multiple ways to synchronize data between two devices. As mentioned above, Motorola eventually conceded infringement and focused its efforts on attacking the validity of Microsoft’s patent instead.
In support of its invalidity defense, Motorola argued that the Apple Newton MessagePad disclosed all of the limitations recited in the claims of the patent at issue, and thus anticipated the claims. The problem with Motorola’s argument was that the prior art cited in support of this contention, the Apple Newton and its operator’s manual. never expressly stated how the synchronization function was accomplished. Instead, Motorola argued that the synchronization component as recited in the claims was inherent in the Apple Newton. To prove inherency, Motorola needed to show that the synchronization component was necessarily required by the Apple Newton.
The Federal Circuit first construed the term “synchronization component” because the administrative law judge and the commission at the International Trade Commission did not previously do so. Based on the ordinary meaning of the phrase, the Federal Circuit held that this limitation required a component that actively manages the synchronization on the mobile device (i.e., client-based synchronization).
To prove inherency of the synchronization component in the Apple Newton, Motorola argued that the patent at issue only disclosed client-based synchronization, and hence, Apple Newton must necessarily require a synchronization component as otherwise recited in the claims at issue. The Federal Circuit reasoned that although Microsoft’s patent only disclosed client-based synchronization, it did not follow that client-based synchronization is the only way and means for synchronization between devices. The Federal Circuit considered Motorola’s earlier non-infringement arguments in which it was implied that there are multiple ways of performing the synchronization. The Federal Circuit found that the patent at issue only described one of the many ways of performing synchronization.
Motorola also pointed to the testimony of its own experts and of Microsoft’s experts to prove inherency. With respect to Motorola’s experts, the Federal Circuit stated that his single sentence opinion was too conclusory to be convincing. With respect to Microsoft’s experts, the Federal Circuit held that it would not overturn the Commission’s determination that Microsoft’s expert did not admit that the Apple Newton inherently included a mobile-based synchronization. The Federal Circuit found that the Commission is in a better position to judge the credibility of Microsoft’s experts, and to the extent that there was any admission, the parties had jointly stipulated that the Apple Newton likely implemented the source code on the desktop (i.e., server).
It is difficult to foresee all of the legal and technical arguments one must make to win a patent infringement dispute because new information is discovered all of the time. However, to the best extent possible, the technical arguments should be thought through based on each of the legal theories to be presented.
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