Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 1 of 25 PageID #: 27176
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`MOBILEMEDIA IDEAS, LLC,
`
`Plaintiff,
`
`
`
`v.
`
`APPLE INC.,
`
`Civil Action No. 10-258-SLR
`
`Defendant.
`
`PUBLIC - REDACTED VERSION
`
`MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF APPLE INC.’S
`MOTION FOR JUDGMENT AS A MATTER OF LAW AND/OR MOTION FOR NEW
`TRIAL PURSUANT TO RULES 50(b) AND 59
`
`Richard K. Herrmann (# 405)
`Mary B. Matterer (# 2696)
`MORRIS JAMES LLP
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801-1494
`(302) 888-6800
`rherrmann@morrisjames.com
`mmatterer@morrisjames.com
`
`Luann L. Simmons
`Melody Drummond Hansen
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, CA 94111-3823
`(415) 984-8700
`lsimmons@omm.com
`mdrummondhansen@omm.com
`
`Joseph J. Mueller
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`(617) 526-6000
`joseph.mueller@wilmerhale.com
`
`Tara D. Elliott
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`(202) 663-6000
`tara.elliott@wilmerhale.com
`
`Attorneys for Defendant Apple Inc.
`
`Dated: October 31, 2016
`
`

`

`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 2 of 25 PageID #: 27177
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`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`
`IV.
`
`V.
`VI.
`
`INTRODUCTION ............................................................................................................. 1(cid:3)
`LEGAL STANDARDS ..................................................................................................... 3(cid:3)
`THE ASSERTED CLAIMS ARE INVALID AS A MATTER OF LAW ........................ 3(cid:3)
`A.
`The Asserted Claims Are Indefinite For Pure Functional Claiming...................... 3(cid:3)
`B.
`The Asserted Claims Are Obvious In View Of Prior Art ...................................... 6(cid:3)
`1.
`Applying “Polite Ignore” To Cellular Technology Was Obvious As
`A Matter Of Law ........................................................................................ 7(cid:3)
`There Were No Material Factual Disputes Relating To
`Obviousness ............................................................................................. 10(cid:3)
`The Asserted Claims Are Invalid For Lack Of Written Description ................... 11(cid:3)
`C.
`THE JURY’S INFRINGEMENT FINDING IS NOT SUPPORTED BY
`SUBSTANTIAL EVIDENCE ......................................................................................... 12(cid:3)
`A.
`MMI Failed To Present Sufficient Evidence That Any Accused iPhone
`Has The Claimed “Alert Sound Generator” Or “Control Means” ....................... 13(cid:3)
`For The iPhone 3G, iPhone 4 GSM, And iPhone 4 CDMA, MMI Failed
`To Present Sufficient Evidence Of Infringement ................................................. 16(cid:3)
`THE COURT SHOULD GRANT JMOL OF NO DAMAGES ...................................... 17(cid:3)
`IN THE ALTERNATIVE, APPLE SEEKS AN ALTERATION OF JUDGMENT
`AND/OR NEW TRIAL UNDER RULE 59 .................................................................... 20(cid:3)
`VII. CONCLUSION ................................................................................................................ 20(cid:3)
`
`2.
`
`B.
`
`i
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 3 of 25 PageID #: 27178
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES(cid:3)
`Al-Site Corp. v. VSI Int’l., Inc.,
`174 F.3d 1308 (Fed. Cir. 1999)............................................................................................... 15
`Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)............................................................................................. 3, 6
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249 (Fed. Cir. 2010)............................................................................................... 16
`BIC Leisure Prods., Inc. v. Windsurfing Int'l Inc.,
`1 F.3d 1214 (Fed.Cir.1993)..................................................................................................... 19
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009)......................................................................................... 4, 5, 6
`Cimline, Inc. v. Crafco, Inc.,
`413 Fed. Appx. 240 (Fed. Cir. 2011) ...................................................................................... 10
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)............................................................................. 12, 13, 15, 17
`EON Corp. IP Holdings LLC v. AT&T Mobility LLC,
`
`785 F.3d 616 (Fed. Cir. 2015)................................................................................................... 6
`
`Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 389 F.3d
`1370, 1378 (Fed. Cir. 2004) .............................................................................. 2, 12, 15, 16, 17
`Function Media, LLC v. Google Inc.,
`708 F.3d 1310 (Fed. Cir. 2013)............................................................................................. 5, 6
`Greenleaf v. Garlock, Inc.,
`174 F.3d 352 (3d Cir. 1999)...................................................................................................... 3
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 6, 7, 8, 10, 11
`Noah Sys. Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012)......................................................................................... 3, 5, 6
`Pannu v. Iolab Corp.,
`155 F.3d 1344 (Fed. Cir. 1998)................................................................................................. 3
`Prometheus Labs., Inc. v. Roxane Labs., Inc.,
`805 F.3d 1092 (Fed. Cir. 2015)............................................................................................... 10
`
`ii
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 4 of 25 PageID #: 27179
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`R+L Carriers, Inc. v. Qualcomm, Inc.,
`801 F.3d 1346 (Fed. Cir. 2015)............................................................................................... 19
`Ring & Pinion Serv. Inc. v. ARB Corp. Ltd.,
`743 F.3d 831 (Fed. Cir. 2014)............................................................................................. 6, 15
`Senju Pharm. Co. v. Lupin Ltd. & Lupin Pharm., Inc.,
`No. CV 11-271-SLR, 2013 WL 4101820 (D. Del. Aug. 9, 2013), aff’d sub
`nom. Senju Pharm. Co. v. Lupin Ltd., 780 F.3d 1337 (Fed. Cir. 2015) ............................ 19, 20
`Soverain Software LLC v. Newegg Inc.,
`705 F.3d 1333 (Fed. Cir. 2013)............................................................................................... 11
`Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335 (Fed. Cir. 2015)................................................................................................. 3
`Western Union Co. v. MoneyGram Payment Sys., Inc.,
`626 F.3d 1361 (Fed. Cir. 2010)............................................................................................. 7, 9
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010)............................................................................................... 10
`Ziarno v. Am. Nat’l Red Cross,
`55 Fed. Appx. 553 (Fed. Cir. 2003) ........................................................................................ 11
`STATUTES(cid:3)
`35 U.S.C. § 252 ............................................................................................................................. 19
`
`35 U.S.C. § 307 ............................................................................................................................. 19
`
`35 U.S.C. §112 .................................................................................................................. 2, 4, 5, 15
`
`iii
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 5 of 25 PageID #: 27180
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`I.
`
`INTRODUCTION
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`Defendant Apple Inc. renews its Rule 50 motion for judgment as a matter of law
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`(“JMOL”) that claims 12 and 2 of U.S. Patent No. RE 39,231 (the “’231 Patent”) asserted by
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`Plaintiff MobileMedia Ideas, LLC (“MMI”) are invalid and not infringed.
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`JMOL of invalidity is appropriate for at least three reasons. First, the asserted claims are
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`indefinite because they claim functions without disclosing sufficient corresponding structure.
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`For example, regarding the means-plus-function limitation “alert sound generator for generating
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`the alert sound,” MMI’s expert testified that the only disclosed structure for performing this
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`function was a box, “alert sound generator 13,” and admitted that the patent “tells us nothing
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`about what’s inside the box.” Trial Tr. at 449:11-21, 1066:13-18. Failures to disclose sufficient
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`structure for this and another limitation render the asserted claims indefinite as a matter of law.
`
`Second, Apple presented clear and convincing evidence that the asserted claims are
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`obvious—the claimed invention is the application of a concededly known technique (what MMI
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`called “polite ignore”) to an existing technology (cell phones) ready for the alleged
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`improvement. MMI was forced to characterize the invention as applying specifically to the
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`cellular context—notwithstanding that the patent itself broadly characterized the alleged
`
`invention as applying to landlines, cordless phones, and cell phones—in light of the clear and
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`convincing trial evidence that others conceived of the general concept of “polite ignore” first.
`
`MMI presented no evidence of secondary indicia of non-obviousness of the cellular application
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`of “polite ignore,” but instead relied on conclusory expert testimony in conflict with the evidence
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`and law. Moreover, the lack of any nonobvious advance is further confirmed by the absence of
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`any written description of special techniques for adapting “polite ignore” to the cellular context.
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`Third, the asserted claims are invalid because they fail to satisfy the written description
`
`
`
`1
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 6 of 25 PageID #: 27181
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`requirement of 35 U.S.C. § 112, ¶ 1 for “alert sound generator” and “control means” as well as
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`the alleged cellular innovations, because the specification is devoid of implementation details for
`
`these limitations. MMI’s response—that no disclosure is required because a person of ordinary
`
`skill would have known what was being claimed—is not supported by substantial evidence. It
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`also contradicts MMI’s position that the asserted claims are inventive because the same person of
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`ordinary skill would not have known how to apply “polite ignore” to a cellular phone. MMI is
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`caught in a bind: either the cellular techniques are nonobvious (in which case they needed to be
`
`described in the specification, and the claims are invalid for lacking such description) or they are
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`self-evident to a person of ordinary skill in the art (in which case the claims are obvious).
`
`JMOL of non-infringement is proper because trial evidence demonstrated unequivocally
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`that the structures of the accused iPhones are not identical to the structure disclosed in the ’231
`
`Patent specification, and the plaintiff expressly waived all equivalents arguments. See Frank’s
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`Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 389 F.3d 1370, 1378 (Fed. Cir.
`
`2004) (“Literal infringement of a § 112, ¶ 6 limitation requires that the relevant structure in the
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`accused device perform the identical function recited in the claim and be identical or equivalent
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`to the corresponding structure in the specification.”). For example, MMI’s expert admitted at
`
`trial that the structures of the accused products are “set up differently” than the only circuit
`
`structure disclosed by the ’231 Patent. Trial Tr. at 436:20-437:7, 463:22-464:17.
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`Apple also respectfully requests JMOL of no damages. Because the asserted claims were
`
`amended during reexamination and they are not substantially identical to the original claims—
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`and MMI conceded as much at trial—Apple’s absolute and equitable intervening rights preclude
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`MMI’s recovery on all accused products.
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`Alternatively, Apple moves under Rule 59 for an alteration of judgment or a new trial on
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`
`
`2
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 7 of 25 PageID #: 27182
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`liability applying the proper claim construction.
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`II.
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`LEGAL STANDARDS
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`JMOL should be granted when “the jury’s findings … are not supported by substantial
`
`evidence or, if they were, that the legal conclusions implied [by] the jury’s verdict cannot in law
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`be supported by those findings.” Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998).
`
`Courts have discretion to grant a new trial when (i) “the verdict was against the weight of the
`
`evidence,” (ii) the verdict results from jury confusion, or (iii) improper trial conduct unfairly
`
`influenced the verdict. Greenleaf v. Garlock, Inc., 174 F.3d 352, 363-65 (3d Cir. 1999).
`
`III.
`
`THE ASSERTED CLAIMS ARE INVALID AS A MATTER OF LAW
`
`Claims 12 and 2 of the ’231 Patent are invalid as a matter of law for three independent
`
`reasons: (1) they claim functions without being limited to any structure and are therefore
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`indefinite; (2) the claimed invention applies a known solution to an existing technology and is
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`thus obvious; and (3) the patent specification fails to adequately describe the claimed invention.
`
`A.
`
`The Asserted Claims Are Indefinite For Pure Functional Claiming
`
`Indefiniteness is a question of law for the court. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
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`789 F.3d 1335, 1341 (Fed. Cir. 2015). “Means-plus-function claiming involves a quid pro quo.
`
`… In exchange for being able to draft a claim limitation in purely functional language, ‘[t]he
`
`applicant must describe in the patent specification some structure which performs the specified
`
`function.’” Noah Sys. Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012). “The point of
`
`[this] requirement … is to avoid pure functional claiming.” Aristocrat Techs. Austl. PTY Ltd. v.
`
`Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Without sufficient disclosure of
`
`structure in the patent specification to define claim scope, a means-plus-function claim is
`
`unbounded and indefinite as a matter of law. Id. Claims 12 and 2 of the ’231 Patent claim pure
`
`functions that are not limited to particular structures and are therefore invalid as a matter of law.
`
`
`
`3
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 8 of 25 PageID #: 27183
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`The Court found and the parties agreed that the term “an alert sound generator for
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`generating the alert sound” is a means-plus-function term. D.I. 630 at 11 (“The court concludes
`
`that the [alert sound generator] limitation is subject to § 112, ¶ 6.”); D.I. 691 at 2, 4-5. The Court
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`also found and the parties also agreed that the only disclosure provided by the ’231 Patent for the
`
`recited function is a box labeled “alert sound generator 13” in Figure 2. Trial Tr. at 449:11-21;
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`D.I. 630 at 10. Moreover, MMI’s expert, Dr. Sigurd Meldal, admitted during trial that the ’231
`
`Patent specification does not disclose the structure of “alert sound generator 13”:
`
`Box 13 is referenced once in a patent, and it really tells us nothing about
`what’s inside the box. It says it’s an alert sound generator in the context
`of the patent. That’s all that it says. It adds nothing more.
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`Id. at 1066:13-18. Morihiko Hayashi, a co-inventor of the ’231 Patent, also testified that the
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`patent does not disclose the structure of the claimed alert sound generator: “I don’t think this
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`patent touches on the content of the alert sound generator.” Id. at 751:19-752:2. And Apple’s
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`expert, Dr. Ravin Balakrishnan, agreed that the patent specification lacks any disclosure of
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`structure for “alert sound generator.” Id. at 945:13-18. Thus, there can be no dispute that the
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`’231 Patent claims a function without describing its corresponding structure.
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`Evidently recognizing the lack of disclosed structure in the ’231 Patent, MMI attempted
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`to fill in the blank box labeled “alert sound generator 13” with the knowledge of those skilled in
`
`the art. See Trial Tr. at 1067:24-1068:2 (Dr. Meldal testifying that “a person of ordinary skill
`
`would have known how to implement an alert sound generator” and characterizing it as “off-the-
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`shelf technology”); 1066:13-1067:1 (“[T]he engineer looking at it would say, oh, it’s an alert
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`generator, and they’re supposed to know what it is, and they do.”). Section 112, however,
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`prohibits a patentee from claiming a function without disclosing sufficient corresponding
`
`structure even when a person of ordinary skill would have known ways to implement that
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`function. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1383-85 (Fed. Cir. 2009).
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`4
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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 9 of 25 PageID #: 27184
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`In Blackboard, the Federal Circuit found the claim term “access control manager” to be
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`indefinite because the patent specification discloses only “a black box that performs a recited
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`function” without specifying its actual structure. Id. at 1383. And like MMI in this case, the
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`patent owner in Blackboard attempted to fill in this “black box” with the knowledge of a skilled
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`person by arguing that “a person skilled in the art could readily fashion a computer-based means
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`for performing” the claimed function. Id. at 1385. The Federal Circuit rejected this argument,
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`explaining that “[a] patentee cannot avoid providing specificity as to structure simply because
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`someone of ordinary skill in the art would be able to devise a means to perform the claimed
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`function. To allow that form of claiming under section 112, paragraph 6, would allow the
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`patentee to claim all possible means of achieving a function.” Id. Similarly, MMI’s reliance on
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`the knowledge of a skilled person should be rejected because “the testimony of one of ordinary
`
`skill in the art cannot supplant the total absence of structure from the specification.” Noah, 675
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`F.3d at 1312; see also, Function Media, LLC v. Google Inc., 708 F.3d 1310, 1319 (Fed. Cir.
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`2013) (finding term indefinite for lacking disclosure of structure and holding that patentee
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`“cannot rely on the knowledge of one skilled in the art to fill in the gaps”).
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`MMI is attempting to do exactly what the Federal Circuit prohibited in Blackboard—it
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`wants to “claim all possible means of achieving [the] function” of generating an alert sound. See
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`574 F.3d at 1385. This became clear during the cross-examination of Dr. Meldal, when he
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`conceded his interpretation could be applied to anything from 1970s-vintage computer circuitry
`
`to modern super-computers, because the structure of an “alert sound generator” is unbounded
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`and can be “satisfied by any computer circuitry in the world connected to a speaker that can
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`generate a sound.” Trial Tr. at 1101:22-1105:14, 1112:7-21 (emphasis added). Dr. Meldal
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`treated this limitation as purely functional by arguing that its structure “is really not material as
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`5
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 10 of 25 PageID #: 27185
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`long as it generates an alert sound.” Id. at 392:22-393:8. MMI’s counsel underscored this point
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`in closing, arguing that “a sound generator is something that generates sound. No more, no less.
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`That’s what it covers.” Id. at 1318:5-23. Applying this functional interpretation, MMI even
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`argued that the literal scope of the limitation encompasses Apple’s technology developed after
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`the ’231 Patent. Id. at 1077:18-1078:10; 1318:12-14. As a matter of law, the literal scope of a
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`means-plus-function term excludes “after-arising technology.” Ring & Pinion Serv. Inc. v. ARB
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`Corp. Ltd., 743 F.3d 831, 835 (Fed. Cir. 2014). MMI’s attempt to claim all past, current, and
`
`future structures for performing a function violates the fundamental prohibition against “pure
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`functional claiming” and renders the asserted claims indefinite. Aristocrat, 521 F.3d at 1331.1
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`For the same reasons, the term “control means for controlling said alert sound generator”
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`is indefinite. The only disclosed structure for “controlling the alert sound generator to change a
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`volume of the generated alert sound” is a CPU and an on/off controller. Trial Tr. at 1338:13-18.
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`“[W]hen a patentee invokes means-plus-function claiming to recite a software function, it
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`accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding
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`structure.” EON Corp., 785 F.3d at 623. During trial, MMI did not identify any computer
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`algorithm disclosed by the specification, instead relying exclusively on the recited function. See
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`Trial Tr. at 412:18-413:23, 1081:11-24, 1210:1-1211:12. Because the ’231 Patent fails to
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`disclose an algorithm for the claimed function, the “control means” term is indefinite.
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`B.
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`The Asserted Claims Are Obvious In View Of Prior Art
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`“The ultimate judgment of obviousness is a legal determination.” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 417 (2007). During trial, Dr. Meldal repeatedly conceded that the
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`essence of the alleged invention—what MMI called “polite ignore”—was taught by the prior art.
`
`1 See also Blackboard, 574 F.3d at 1385 (“[§ 112, ¶ 6] is intended to prevent … pure functional
`claiming.”); Noah, 675 F.3d at 1318 (same); Function Media, 708 F.3d at 1319 (same); EON
`Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (same).
`
`
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`6
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 11 of 25 PageID #: 27186
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`Trial Tr. at 1157:24-1158:8, 1163:16-20. He further admitted that the obviousness dispute boils
`
`down to whether it would have been obvious to implement “polite ignore” in a cellular phone:
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`Q. And we can boil it down to this. Panasonic and Motorola taught polite
`ignore, and as I understand your position, the invention here is taking
`polite ignore and bringing it over to cellular; is that correct?
`A. Right. So the Panasonic introduced -- I don’t know if it’s first, but it
`introduced the polite ignore generally. The Motorola invention introduced
`it to cordless handsets, and it’s fair to say that the ’231, then the
`invention here was put it on the cellphone. That’s a fair characterization.
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`Id. at 1157:24-1158:8 (emphasis added). Because this modification involves “the mere
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`application of a known technique to a piece of prior art ready for the improvement,” the claimed
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`invention is obvious as a matter of law. KSR, 550 U.S. at 417.
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`1.
`
`Applying “Polite Ignore” To Cellular Technology Was Obvious As A
`Matter Of Law
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`Courts have consistently held that applying a known technique to the next-generation
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`technology is obvious and unpatentable. See, e.g., Western Union Co. v. MoneyGram Payment
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`Sys., Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010) (finding use of computer instead of fax machine
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`“an unpatentable improvement at a time when such a transition was commonplace in the art”).
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`Therefore, when combined with the knowledge of a person of ordinary skill in the art, Panasonic
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`(DTX-271, DTX-272, and PTX-272A) and Motorola (DTX-260) each renders obvious claims 12
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`and 2 as a matter of law. See Trial Tr. at 864:3-874:3, 894:19-897:12.
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`Undisputed trial evidence showed that, at the time of the alleged invention, the industry
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`was transitioning from landline and cordless phones to cellular phones. Id. at 872:24-873:6,
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`890:23-891:8, 892:11-894:4. Trial evidence also established that the “problem” of undesired
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`telephone rings was known, and that multiple companies arrived at the “polite ignore” approach.
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`
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`7
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`

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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 12 of 25 PageID #: 27187
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`Trial Tr. at 1157:24-1158:8, 1163:16-20.2 Apple’s expert Dr. Balakrishnan explained, “as
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`engineers and companies were developing the next generation of mobile telephony, they were
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`taking the features and functionalities of what is available in the earlier generation and
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`essentially adding the mobile technology part.” Id. at 890:23-891:8. Dr. Balakrishnan further
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`testified that “[f]unctionalities such as stopping the ringtone and so forth were things that equally
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`were applicable to all … types of telephony.” Id. at 891:9-16; see also id. at 434:12-435:12,
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`1160:4-20. There were a finite number of telephone technologies available, and applying “polite
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`ignore” to cellular technology was obvious because it resulted in a predictable outcome without
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`any surprising result. Id. at 891:17-892:4.
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`The ’231 Patent does not disclose anything beyond the application of “polite ignore” to
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`an otherwise unmodified cellular phone. During trial, Apple presented evidence demonstrating
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`the PTO found Motorola disclosed all claim elements except the use of radio waves to establish a
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`call ringing state. Id. at 877:5-879:16, 887:18-889:12 (discussing file history, JTX-2).
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`Dr. Meldal admitted that using radio waves to establish telephone calls—by practicing the GSM
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`cellular standard—was known years before the ’231 Patent. Id. at 1168:9-1169:2. He further
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`admitted that the relevant “claim limitation doesn’t refer to anything special or different about
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`setting up a cell connection” because it simply uses the GSM standard “[w]ithout modification.”
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`Id. at 1171:15-1172:9. Thus, applying “polite ignore” to a cellular phone required nothing new.
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`“[I]f a technique has been used to improve one device, and a person of ordinary skill in
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`the art would recognize that it would improve similar devices in the same way, using the
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`technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at
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`417. When asked to identify challenges associated with adding “polite ignore” to cellular
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`2 The full translation of Panasonic, which is part of the file history, also explains that Panasonic
`solved the same problem addressed by the ’231 Patent with the same solution. JTX-2 at 2946-50.
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`
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`8
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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 13 of 25 PageID #: 27188
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`phones, Dr. Meldal described the supposed need for “changes [to] the user interface” and related
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`CPU programming. Trial Tr. at 1165:25-1167:8. Nothing identified by Dr. Meldal is beyond the
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`capability of a person of ordinary skill. First, no change to the user interface is required because
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`Panasonic and Motorola disclose the same user interface for “polite ignore”—a ringtone
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`stoppage button—as claimed by the ’231 Patent. Id. at 863:2-16; 878:19-24. Second, Dr.
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`Meldal testified that even his students, who had not completed their degrees and would not have
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`qualified as persons of ordinary skill, “would probably be able to” perform the necessary
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`programming because the ’231 Patent requires the CPU to execute just “a number of tasks …
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`that each is fairly simple.” Id. at 1129:3-1130:15. Third, Dr. Meldal conceded that “the ’231
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`patent does not tell us to do anything special or different in terms of setting up [a] call ringing
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`state” (id. at 1171:15-1172:9) and thus is well within the capability of a person skilled in the
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`art—i.e., someone with an engineering degree and at least two years of experience in telephone
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`technology. Id. at 1083:19-1084:10.
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`Moreover, none of Dr. Meldal’s supposed challenges for applying “polite ignore” to
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`cellular phones is actually described by the ’231 Patent. The patent says not one word about
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`supposed challenges or solutions associated with adapting “polite ignore” to cellular phone. To
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`the contrary, the patent treats the alleged invention as equally applicable to cellular, landline, and
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`cordless phones, without any discrimination among categories. JTX-1 at 1:11-15, 5:25-30.
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`Indeed, the essence of “polite ignore” is to shut off the ringer for an incoming call but do
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`nothing to disturb the incoming phone connection—and doing nothing is an approach that
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`applies equally to all phone connections. See Trial Tr. at 1165:18-24.
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`In similar situations, the Federal Circuit has routinely found the application of a known
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`technique to existing technology to be obvious as a matter of law. In Western Union, the court
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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 14 of 25 PageID #: 27189
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`invalidated a patent claiming a monetary transaction system that uses a computer in place of a
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`prior art fax machine. 626 F.3d at 1370. In Cimline, Inc. v. Crafco, Inc., the court held that
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`applying a technique known for “a manual conveyor belt” to “a powered conveyor belt
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`require[d] nothing more than common sense to appreciate the resultant advantage.” 413 Fed.
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`Appx. 240, 246 (Fed. Cir. 2011). And in Wyers v. Master Lock Co., the court held that applying
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`an external seal previously known for padlocks to a “barbell-shaped lock” was obvious because
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`it “would work the same way.” 616 F.3d 1231, 1245 (Fed. Cir. 2010). The asserted claims of
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`the ’231 Patent are invalid for the same reason—applying “polite ignore” to cellular phones
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`during a time when the telephone industry was transitioning to cellular technology was “the
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`product not of innovation but of ordinary skill and common sense.” KSR, 550 U.S. at 421.
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`2.
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`There Were No Material Factual Disputes Relating To Obviousness
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`Obviousness is a question of law based on underlying facts, which include “(1) the level
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`of ordinary skill in the art; (2) the scope and content of the prior art; (3) the differences between
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`the claims and the prior art; and (4) secondary considerations of nonobviousness.” Prometheus
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`Labs., Inc. v. Roxane Labs., Inc., 805 F.3d 1092, 1097 (Fed. Cir. 2015). At trial, there were no
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`material disputes regarding these facts. The parties agreed on the level of ordinary skill in the
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`art. Trial Tr. at 866:22-867:12; 1083:15-1084:10. The parties also agreed that the Panasonic and
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`Motorola references constitute prior art. Id. at 1035:8-19. The parties further agreed that
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`Panasonic and Motorola disclose “polite ignore” for landline and cordless phones. Id. at 988:24-
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`989:6; 1157:24-1158:8; 1163:16-20. And MMI did not present any evidence relating to
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`secondary considerations of non-obviousness. Id. at 1172:10-1173:17; 1184:25-1185:10.
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`All elements of the asserted claims were individually known by those skilled in the art
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`before the priority date of the ’231 Patent. MMI argued that Panasonic and Motorola lacked two
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`features: (1) applying “polite ignore” to a cellular phone, and (2) using a “CPU” as part of the
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`Case 1:10-cv-00258-SLR Document 718 Filed 11/07/16 Page 15 of 25 PageID #: 27190
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`phone’s “control means.” Id. at 1095:6-15; 1097:3-11. But the parties agreed that neither
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`cellular phones nor CPUs were new. Id. at 1168:9-1169:2, 1092:21-1093:7. Moreover,
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`Dr. Meldal admitted that Motorola discloses a programmable processor for running software. Id.
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`at 1089:12-21. Thus, none of the individual claim elements was novel.
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`In the absence of material factual disputes, the question of obviousness must be treated as
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`“a legal determination” without deference to the verdict. See KSR, 550 U.S. at 427; Soverain
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`Software LLC v. Newegg Inc., 705 F.3d 1333, 1337 (Fed. Cir. 2013). Because, as discussed
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`above, applying “polite ignore” to cellular phones is obvious, JMOL of invalidity is proper.
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`C.
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`The Asserted Claims Are Invalid For Lack Of Written Description
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`A claim is invalid for lack of written description when “the specification does not
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`‘indicate to persons skilled in the art that as of the [filing] date the applicant had invented what is
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`now claimed.’” Ziarno v. Am. Nat’l Red Cross, 55 Fed. Appx. 553, 555 (Fed. Cir. 2003).
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`Apple presented clear and convincing evidence that the ’231 Patent lacks sufficient
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`written description for “alert sound generator” and “control means” as well as the purported
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`cellular innovations. E.g., Trial Tr. at 853:24-854:22, 983:6-14. The parties agreed that the ’231
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`Patent discloses the application of “polite ignore” to a cellular phone that practices the GSM
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`standard “[w]ithout modification,” and that the patent specification does not disclose
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`implementation details of any circuit structure. Id. at 1171:15-1172:9, 1066:13-1068:2.
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`Nevertheless, MMI argued that no such disclosure is required because a person of ordinary skill
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`would have known how to implement the claimed invention