Proving infringement of system patents: Court rejects jury’s infringement finding in phone case
You might think it would be easier to prove infringement of a patented system having multiple components. The more parts, the more opportunity to prove infringement. Not so. As one patentee learned the hard way, more parts means more to prove.
Intellectual Ventures LLC (IV) holds a patent related to electronic file transfers between computers or computing devices such as smartphones. It sued Motorola Mobility LLC for direct and indirect patent infringement. The direct infringement allegedly occurred when Motorola made and sold infringing devices; the indirect infringement allegedly resulted when it induced or contributed to its customers’ infringement.
After a jury found in favor of IV, Motorola asked the court to nonetheless grant it judgment “as a matter of law,” arguing that a reasonable jury couldn’t possibly have found that the company infringed the patent. The trial court rejected the request, and Motorola appealed to the Federal Circuit Court of Appeals.
District court blocked
Under the Patent Act, direct infringement includes the unauthorized “use” of a patented invention. In the case of a patent for a system, use occurs when the system as a whole is put into service. That occurs when a party exercises control of the system and obtains beneficial use of it.
To prove an infringing use of a system, a patentee must show control and benefit of the system by the accused infringer. The trial court found that it was enough for the patentee to show that the defendant derived a benefit from a single component of the patented system.
The Federal Circuit disagreed. It held that, to use a system, each element of the system must be used — meaning the patentee must demonstrate that the defendant controlled (even if indirectly) and benefited “from each and every element,” not just one.
Jury’s verdict deleted
Having defined the proper test, the Federal Circuit turned its attention to the system before it. IV’s system included a “communications device,” a “second device” and an “authenticating device configured to … generate a delivery report.” Motorola conceded that its accused phones used a communications device and a second device for sending and receiving text-plus-photo messages using a multimedia messaging service (MMS).
The critical question was whether there was substantial evidence that Motorola customers obtained a benefit from the generation of delivery reports. IV presented no evidence that the customers ever generated a delivery report, instead relying on evidence that the delivery reports were generated by MMS centers maintained or operated by the customers’ wireless service carriers when they used the phones.
The court noted that the only benefits identified in the patent as flowing from the delivery reports rested on the sending device’s ability to receive or retrieve the reports from the third-party authenticating device. The evidence, however, didn’t show that Motorola customers ever received the reports.
The phones could send and receive MMS messages, and the sending phone could display a confirmation that the message was received. IV’s expert witness admitted, though, that all but one of the MMS centers discussed at trial were technologically incapable of transmitting delivery reports to the sending phone. Moreover, Motorola phones were configured not to request delivery reports from the MMS centers.
Unless a customer affirmatively took steps to change the default configuration of his or her phone, the benefit of the delivery report couldn’t have been realized. IV presented no evidence that any customers did alter their phones to receive delivery reports or even knew the reports existed and were available.
Not enough evidence
The court concluded that IV presented insufficient evidence of benefit from the generation of a delivery report and therefore failed to prove a directly infringing use of the patented system. And, because a finding of direct infringement is a prerequisite to a finding of indirect infringement, it held that Motorola was entitled to judgment as a matter of law regarding noninfringement of the patent. •
Intellectual Ventures LLC v. Motorola Mobility LLC, No. 16-1795, Sept. 13, 2017, Fed. Cir.