Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 1 of 63 PageID #: 12103
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`MOBILEMEDIA IDEAS, LLC,
`
`Plaintiff,
`
`V.
`
`APPLE INC.,
`
`Defendant.
`
`)
`)
`)
`)
`) Civ. No. 1 0-258-SLR-MPT
`)
`)
`)
`)
`
`Jack B. Blumenfeld, Esquire, Rodger D. Smith II, Esquire, and Jeremy A. Tigan,
`Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for
`Plaintiff. Of Counsel: Steven M. Bauer, Esquire, Justin J. Daniels, Esquire, Safraz W.
`Ishmael, Esquire, Kenneth Rubenstein, Esquire, Anthony C. Coles, Esquire, and Alan
`Federbush, Esquire of Proskauer Rose LLP.
`
`Richard K. Herrmann, Esquire, and Mary B. Matterer, Esquire of Morris James LLP,
`Wilmington, Delaware. Counsel for Defendant. Of Counsel: George A. Riley, Esquire,
`and Luann L. Simmons, Esquire of O'Melveny & Myers LLP.
`
`MEMORANDUM OPINION
`
`Dated: September .6 , 2013
`Wilmington, Delaware
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 2 of 63 PageID #: 12104
`
`I. INTRODUCTION
`
`Plaintiff MobileMedia Ideas, LLC ("MobileMedia") brought this patent
`
`infringement action against Apple Inc. ("Apple"), alleging in its amended complaint that
`
`various Apple products infringe sixteen patents. 1 In a memorandumopinion and order
`
`dated November 8, 2012, the court issued its claim construction and resolved several
`
`summary judgment motions. (D.I. 461; D.l. 462) A seven-day jury trial was held on
`
`December 3-11, 2012. Trial was limited to claims 5, 6, and 10 of the '075 patent,
`
`claims 23 and 24 of the '068 patent, and claim 73 of the '078 patent. Except for finding
`
`no induced infringement, the jury returned a verdict in MobileMedia's favor, finding
`
`direct infringement and validity of the '075, '068, and '078 patents. (0.1. 507) Before
`
`the court is Apple's renewed Rule 50 motion for judgment as a matter of law ("JMOL")
`
`that the asserted claims of the '075, '068, and '078 patents are invalid and not infringed
`
`or, in the alternative, for a new trial under Rule 59. (D.I. 517) The court has jurisdiction
`
`over these matters pursuant to 28 U.S.C. § 1338.
`
`II. BACKGROUND
`
`A. Procedural History
`
`MobileMedia filed this patent infringement action on March 31, 2010 against
`
`Apple and subsequently amended its complaint to assert sixteen patents in total. (D. I.
`
`1U.S. Patent Nos. 6,253,075 ("the '075 patent"), 6,070,068 ("the '068 patent"),
`6,427,078 ("the '078 patent"), RE 39,231 ("the '231 patent"), 5,737,394 ("the '394
`patent"), 6,441 ,828 ("the '828 patent"), 6,549,942 ("the '942 patent"), 6,393,430 ("the
`'430 patent"), 6,002,390 ("the '390 patent"), 6,446,080 ("the '080 patent"), 6,760,477
`("the '477 patent"), 7,313,647 ("the '647 patent"), 7,349,012 ("the '012 patent"),
`5,915,239 ("the '239 patent"), 6, 725,155 ("the '155 patent"), and 5,490,170 ("the '170
`patent"). (D.I. 8)
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 3 of 63 PageID #: 12105
`
`1; 0.1. 8) Apple answered and asserted affirmative defenses of, inter alia, non-
`
`infringement, invalidity, unenforceability, failure to state a claim, "waiver, laches and/or
`estoppel," prosecution history estoppel, and lack of standing. (0.1. 10 at mr 114-23)
`
`Apple also asserted counterclaims for declaratory judgment of non-infringement. (ld. at
`
`~~ 124-208)
`
`On April 4, 2012, the parties stipulated to dismiss the claims and counterclaims
`
`related to the '390 patent and the '647 patent. (0.1. 263) On April 25, 2012,
`
`MobileMedia deferred four more patents (the '080, '477, '012, and '239 patents) for a
`
`later phase, leaving ten patents at issue for summary judgment. On summary
`
`judgment, the court found no direct infringement and no induced infringement of claims
`
`1, 7, and 8 of the '068 patent, as well as of all asserted claims of the '231 and '394
`
`patents. (0.1. 461; 0.1. 462) In addition, the court found invalidity of all asserted claims
`
`of the '828 and '942 patents, no invalidity of the asserted claims of the '068 patent
`
`based on the asserted prior art Orbitor Video, and no anticipation of the asserted claims
`
`of the '075, '394, and '155 patents based on the asserted prior art. 2 (0.1. 461; 0.1. 462)
`
`On November 15, 2012, the court excluded from trial claim 1, as amended during
`
`reexamination, as well as claims 2 and 3, of the '078 patent. (0.1. 469) MobileMedia
`
`then chose claims of three remaining patents to assert at trial (the "asserted claims"):
`
`claims 5, 6, and 10 of the '075 patent, claims 23 and 24 of the '068 patent, and claim 73
`
`of the '078 patent. (0.1. 474; 0.1. 497 at 18:11-21:10) The products accused of
`
`2The court also resolved several motions to strike and granted MobileMedia's
`motion for partial summary judgment on several of Apple's defenses. (0.1. 461; 0.1.
`462)
`
`2
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 4 of 63 PageID #: 12106
`
`infringing the asserted claims were Apple's iPhone 3G, iPhone 3GS, and iPhone 4
`
`products (collectively, the "iPhone").
`
`Following a seven-day trial, the jury returned a verdict on December 13, 2012 of
`
`direct infringement of all asserted claims of the '075, '068, and '078 patents; validity of
`
`all asserted claims of the '075, '068, and '078 patents; and no induced infringement of
`
`any asserted claims of the '075, '068, and '078 patents. (D.I. 506) The court entered
`
`judgment accordingly on December 17, 2012. (D.I. 513) On January 14, 2013, Apple
`
`renewed its motion for JMOL pursuant to Federal Rule of Civil Procedure 50(b) and
`
`also moved for a new trial. (D.I. 517)
`
`B. Technology
`
`The '075, '068, and '078 patents relate to a variety of technologies in information
`
`processing, computing, and mobile phones. The '075 and '068 patents relate to
`
`technology for rejecting, silencing, and merging second incoming calls on mobile
`
`telephones already connected to a first call, and the '078 patent relates to cameras on
`
`mobile devices. The court discusses each patent in more detail infra.
`
`Ill. STANDARD
`
`A. Renewed Motion for Judgment as a Matter of Law
`
`To prevail on a renewed motion for judgment as a matter of law following a jury
`
`trial, the moving party '"must show that the jury's findings, presumed or express, are not
`
`supported by substantial evidence or, if they were, that the legal conclusions implied
`
`[by] the jury's verdict cannot in law be supported by those findings."' Pannu v. lolab
`
`Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (quoting Perkin-Elmer Corp. v.
`
`3
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 5 of 63 PageID #: 12107
`
`Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984)). '"Substantial' evidence is
`
`such relevant evidence from the record taken as a whole as might be acceptable by a
`
`reasonable mind as adequate to support the finding under review." Perkin-Elmer Corp.,
`
`732 F.2d at 893. In assessing the sufficiency of the evidence, the court must give the
`
`non-moving party, "as [the] verdict winner, the benefit of all logical inferences that could
`
`be drawn from the evidence presented, resolve all conflicts in the evidence in his favor,
`
`and in general, view the record in the light most favorable to him." Williamson v.
`
`Con sol. Rail Corp., 926 F .2d 1344, 1348 (3d Cir. 1991 ); Perkin-Elmer Corp., 732 F .2d
`
`at 893. The court may not determine the credibility of the witnesses nor "substitute its
`
`choice for that of the jury between conflicting elements of the evidence." Perkin-Elmer
`
`Corp., 732 F.2d at 893. In sum, the court must determine whether the evidence
`
`reasonably supports the jury's verdict. See Dawn Equip. Co. v. Kentucky Farms Inc.,
`
`140 F.3d 1009, 1014 (Fed. Cir. 1998).
`
`B. Motion for a New Trial
`
`Federal Rule of Civil Procedure 59( a) provides, in pertinent part:
`
`A new trial may be granted to all or any of the parties and on all or part of
`the issues in an action in which there has been a trial by jury, for any of
`the reasons for which new trials have heretofore been granted in actions
`at law in the courts of the United States.
`
`Fed. R. Civ. P. 59( a). The decision to grant or deny a new trial is within the sound
`
`discretion of the trial court and, unlike the standard for determining judgment as a
`
`matter of law, the court need not view the evidence in the light most favorable to the
`
`verdict winner. See Allied Chern. Corp. v. Dart/on, Inc., 449 U.S. 33, 36 (1980); 0/efins
`
`Trading, Inc. v. Han Yang Chern. Corp., 9 F.3d 282 (1993); LifeScan Inc. v. Home
`
`4
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 6 of 63 PageID #: 12108
`
`Diagnostics, Inc., 103 F. Supp. 2d 345, 350 (D. Del. 2000) (citations omitted); see also
`
`9A Wright & Miller, Federal Practice and Procedure§ 2531 (2d ed. 1994) ("On a motion
`
`for new trial the court may consider the credibility of witnesses and the weight of the
`
`evidence."). Among the most common reasons for granting a new trial are: (1) the
`
`jury's verdict is against the clear weight of the evidence, and a new trial must be
`
`granted to prevent a miscarriage of justice; (2) newly-discovered evidence exists that
`
`would likely alter the outcome of the trial; (3) improper conduct by an attorney or the
`
`court unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent.
`
`See Zarow-Smith v. N.J. Transit Rail Operations, 953 F. Supp. 581, 584-85 (D.N.J.
`
`1997) (citations omitted). The court must proceed cautiously, mindful that it should not
`
`simply substitute its own judgment of the facts and the credibility of the witnesses for
`
`those of the jury. Rather, the court should grant a new trial on the basis that the verdict
`
`was against the weight of the evidence only where a miscarriage of justice would result
`
`if the verdict were to stand. See Williamson, 926 F .2d at 1352; EEOC v. Del. Dep't of
`
`Health & Soc. Servs., 865 F.2d 1408, 1413 (3d Cir. 1989).
`
`IV. DISCUSSION
`
`A. Apple's Renewed JMOL Motion
`
`Apple advances several arguments in support of its renewed motion for JMOL.
`
`Regarding invalidity, Apple asserts that it "presented clear and convincing evidence
`
`identifying every limitation of the asserted claims in the prior art and establishing why
`
`one of ordinary skill would have combined these invalidity references." (D.I. 518 at 1) It
`
`asserts that MobileMedia presented no evidence of secondary indicia of
`
`5
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 7 of 63 PageID #: 12109
`
`nonobviousness and relied on conclusory expert testimony that conflicted with legal
`
`standards and the evidence. (/d.) Regarding non-infringement, Apple avers that
`
`MobileMedia presented no evidence that Apple directly infringes the '075 or '068
`
`patent, and that MobileMedia's only infringement theory for the '078 patent was neither
`
`disclosed in discovery nor supported by the evidence. (/d.)
`
`1. Standards
`
`a. Infringement
`
`A patent is infringed when a person "without authority makes, uses or sells any
`
`patented invention, within the United States ... during the term of the patent." 35
`
`U.S.C. § 271 (a). To prove direct infringement, the patentee must establish, by a
`
`preponderance of the evidence, that one or more claims of the patent read on the
`
`accused device literally or under the doctrine of equivalents. See Advanced
`
`Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir.
`
`2001 ). A two-step analysis is employed in making an infringement determination. See
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). First, the
`
`court must construe the asserted claims to ascertain their meaning and scope. See id.
`
`Construction of the claims is a question of law subject to de novo review. See Cybor
`
`Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The trier of fact must then
`
`compare the properly construed claims with the accused infringing product. See
`
`Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L
`
`Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
`
`"Direct infringement requires a party to perform each and every step or element
`
`6
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 8 of 63 PageID #: 12110
`
`of a claimed method or product." Exergen Corp. v. Wai-Mart Stores, Inc., 575 F.3d
`
`1312, 1320 (Fed. Cir. 2009) (internal quotation marks omitted). "If any claim limitation
`
`is absent from the accused device, there is no literal infringement as a matter of law."
`
`Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an
`
`accused product does not infringe an independent claim, it also does not infringe any
`
`claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546,
`
`1553 (Fed. Cir. 1989). However, "[o]ne may infringe an independent claim and not
`
`infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503
`
`F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton Canvas, 870 F.2d at 1552)
`
`(internal quotation marks omitted). The patent owner has the burden of proving
`
`infringement and must meet its burden by a preponderance of the evidence. See
`
`SmithKiine Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988)
`
`(citations omitted).
`
`b. Invalidity
`
`(1) Anticipation
`
`Under 35 U.S.C. § 1 02(e),
`
`a person shall be entitled to a patent unless an application for patent,
`published under section 122(b ), by another filed in the United States
`before the invention by the applicant for patent . . . or a patent granted on
`an application for patent by another filed in the United States before the
`invention by the applicant for patent.
`
`A claim is anticipated only if each and every limitation as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir.
`
`7
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 9 of 63 PageID #: 12111
`
`1987). A single prior art reference may expressly anticipate a claim where the
`
`reference explicitly discloses each and every claim limitation. However, the prior
`
`art need not be ipsissimis verbis (i.e., use identical words as those recited in the
`
`claims) to be expressly anticipating. Structural Rubber Prods. Co. v. Park
`
`Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984). A single prior art reference also
`
`may anticipate a claim where one of ordinary skill in the art would have
`
`understood each and every claim limitation to have been disclosed inherently in
`
`the reference. Cant'/ Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264, 1268
`
`(Fed. Cir. 1991 ). The Federal Circuit has explained that an inherent limitation is
`
`one that is necessarily present and not one that may be established by
`
`probabilities or possibilities. /d. That is, "the mere fact that a certain thing may
`
`result from a given set of circumstances is not sufficient." /d. The Federal
`
`Circuit also has observed that "inherency operates to anticipate entire inventions
`
`as well as single limitations within an invention." Schering Corp. v. Geneva
`
`Pharm. Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003). Moreover, recognition of an
`
`inherent limitation by a person of ordinary skill in the art before the critical date is
`
`not required to establish inherent anticipation. /d. at 1377.
`
`Even if the prior art discloses each and every limitation set forth in a claim,
`
`such disclosure will not suffice under 25 U.S.C. § 102 if it is not enabling. In re
`
`Borst, 345 F.2d 851, 855 (C. C.P.A. 1965). "Long ago our predecessor court
`
`recognized that a non-enabled disclosure cannot be anticipatory (because it is
`
`not truly prior art) if that disclosure fails to 'enable one of skill in the art to reduce
`
`8
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 10 of 63 PageID #: 12112
`
`the disclosed invention to practice.'" Amgen Inc. v. Hoechst Marion Roussel,
`
`Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003) (citations omitted). The patentee
`
`bears the burden to show that the prior art reference is not enabled and,
`
`therefore, disqualified as relevant prior art for an anticipation inquiry. /d. at 1355.
`
`An anticipation inquiry involves two steps. First, the court must construe
`
`the claims of the patent in suit as a matter of law. Key Ph arm. v. Hereon Lab.
`
`Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must
`
`compare the construed claims against the prior art to determine whether the prior
`
`art discloses the claimed invention. /d. The burden of proof rests on the party
`
`asserting invalidity and can be met only by clear and convincing evidence.
`
`Microsoft Corp. v. i4i Ltd. P'ship,- U.S.-, 131 S. Ct. 2238, 2242, 180 L. Ed. 2d
`
`131 (2011) ("We consider whether [35 U.S.C.] § 282 requires an invalidity
`
`defense to be proved by clear and convincing evidence. We hold that it does.").
`
`(2) Obviousness
`
`"A patent may not be obtained ... if the differences between the subject
`
`matter sought to be patented and the prior art are such that the subject matter as
`
`a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art." 35 U.S.C. § 1 03(a). Obviousness is a
`
`question of law, which depends on underlying factual inquiries.
`
`Under§ 103, the scope and content of the prior art are to be determined;
`differences between the prior art and the claims at issue are to be
`ascertained; and the level of ordinary skill in the pertinent art resolved.
`Against this background the obviousness or nonobviousness of the
`subject matter is determined. Such secondary considerations as
`commercial success, long felt but unsolved needs, failure of others, etc.,
`
`9
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 11 of 63 PageID #: 12113
`
`might be utilized to give light to the circumstances surrounding the origin
`of the subject matter sought to be patented.
`
`KSR lnt'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere
`
`Co., 383 U.S. 1, 17-18 (1966)).
`
`"[A] patent composed of several elements is not proved obvious merely by
`
`demonstrating that each of its elements was, independently, known in the prior art."
`
`KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a
`
`combination of references has the burden to show that a person of ordinary skill in the
`
`relevant field had a reason to combine the elements in the manner claimed. /d. at 418-
`
`19. The Supreme Court has emphasized the need for courts to value "common sense"
`
`over "rigid preventative rules" in determining whether a motivation to combine existed.
`
`/d. at 419-20. "[A]ny need or problem known in the field of endeavor at the time of
`
`invention and addressed by the patent can provide a reason for combining the
`
`elements in the manner claimed." /d. at 420. In addition to showing that a person of
`
`ordinary skill in the art would have had reason to attempt to make the composition or
`
`device, or carry out the claimed process, a defendant must also demonstrate that "such
`
`a person would have had a reasonable expectation of success in doing so."
`
`PharmaStem Therapeutics, Inc. v. ViaCe/1, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
`
`A combination of prior art elements may have been "obvious to try" where there
`
`existed "a design need or market pressure to solve a problem and there [were] a finite
`
`number of identified, predictable solutions" to it, and the pursuit of the "known options
`
`within [a person of ordinary skill in the art's] technical grasp" leads to the anticipated
`
`success. KSR, 550 U.S. at 421. In this circumstance, "the fact that a combination was
`
`10
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 12 of 63 PageID #: 12114
`
`obvious to try might show that it was obvious under§ 1 03." /d.
`
`A fact finder is required to consider evidence of secondary considerations, or
`
`objective indicia of nonobviousness, before reaching an obviousness determination, as
`
`a "check against hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-
`
`Release Capsule Patent Litig., 676 F.3d 1063, 1079 (Fed. Cir. 2012). "Such secondary
`
`considerations as commercial success, long felt but unsolved needs, failure of others,
`
`etc., might be utilized to give light to the circumstances surrounding the origin of the
`
`subject matter sought to be patented." John Deere Co., 383 U.S. at 17-18.
`
`"Because patents are presumed to be valid, an alleged infringer seeking to
`
`invalidate a patent on obviousness grounds must establish its obviousness by facts
`
`supported by clear and convincing evidence." Kao Corp. v. Unilever U.S., Inc., 441
`
`F.3d 963, 968 (Fed. Cir. 2006) (citation omitted). In conjunction with this burden, the
`
`Federal Circuit has explained that,
`
`[w]hen no prior art other than that which was considered by the PTO
`examiner is relied on by the attacker, he has the added burden of
`overcoming the deference that is due to a qualified government agency
`presumed to have properly done its job, which includes one or more
`examiners who are assumed to have some expertise in interpreting the
`references and to be familiar from their work with the level of skill in the art
`and whose duty it is to issue only valid patents.
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting
`
`Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984)).
`
`2. The '075 Patent
`
`The '075 patent, titled "Method and Apparatus for Incoming Call Rejection,"
`
`relates to call processing techniques for rejecting incoming calls in cellular
`
`11
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 13 of 63 PageID #: 12115
`
`telecommunications systems. ('075 patent, col. 1 :15-16) Conventionally, "wireless
`
`telecommunications systems are made up of a series of base stations connected to
`
`landline telecommunications networks .... " (/d., col. 1 :31-33) These base stations
`
`communicate by base station controllers and can establish radio frequency ("RF")
`
`communications channels with remote mobile phones (or "mobiles"). (/d., col. 1 :34-37)
`
`When a person attempts to call a mobile phone user who is in the geographic coverage
`
`area of the wireless system, "the base station acts as an intermediary by [sending a call
`
`alert to] the mobile via at least one RF channel." (/d., col. 2:1-3) Thereafter, the base
`
`station waits for a fixed time period, or a ringing cycle, to receive a response from the
`
`mobile phone. (/d., col. 2:3-6) If the mobile phone user answers the call, the mobile
`
`phone sends a response to the base station, which sets up a connection over an
`
`existing or new RF channel. (/d., col. 2:13-18) If the user does not answer the call, "the
`
`base station releases the call by terminating the call alert to the mobile and signaling to
`
`the caller that the mobile is unavailable." (/d., col. 2:7-1 0) According to the '075 patent,
`
`prior art wireless telecommunications systems did not provide users the option to reject
`
`calls immediately on demand, so a user had to either power off the mobile phone or
`
`allow it to ring through the entire ringing cycle. (/d., col. 2:36-53)
`
`To address this need, the '075 patent teaches a method and apparatus that
`
`allow a user of a mobile communications device to automatically or manually reject
`
`calls. (/d., col. 3:32-47) The reexamined patent only relates to the rejection of
`
`incoming calls while the device is "in communication with a first calling station," or
`
`already connected to a first call. (See id., claims 10, 15) Specifically, the claimed
`
`12
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 14 of 63 PageID #: 12116
`
`invention is directed to a mobile phone rejecting a second incoming call by sending a
`
`"rejection message" to the wireless system with "at least one information element
`
`indicating to the wireless system that the wireless system is to immediately release the
`
`incoming call." (/d., col. 12:31-33)
`
`The '075 patent was issued on June 26, 2001 and claims priority to a provisional
`
`application filed May 19, 1998. An ex parte reexamination certificate cancelling claims
`
`1-4, amending claims 10, 13, and 14, and confirming claims 5-9, 11-12, and 14 was
`
`issued on March 20, 2012. Claims 5, 6, and 10 were asserted at trial. Claim 5 and
`
`reexamined claim 10 are reproduced below:
`
`5. A method of rejecting an incoming call to a mobile phone, said mobile
`phone having a transceiver circuit for transmitting and receiving
`transmissions to and from a remote transceiver, said mobile phone in
`communication with a first calling station via the remote transceiver on a
`communication channel in a wireless system, said method comprising the
`steps of:
`
`receiving at the mobile phone, a transmission from the remote transceiver
`signifying that there is an incoming call;
`
`determining at the mobile phone if said incoming call is to be rejected; and
`
`transmitting from the mobile phone a rejection message to the remote
`transceiver in response to a determination being made, during said step of
`determining, that said incoming call is to be rejected, said rejection
`message comprising at least one information element indicating to the
`wireless system that the wireless system is to immediately release the
`incoming call on the communication channel between the mobile
`phone and remote transceiver.
`
`10. In a mobile communications device, apparatus in communication with
`a first calling station for selectably rejecting an incoming call, said
`apparatus comprising:
`
`13
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 15 of 63 PageID #: 12117
`
`a transceiver operable to send and receive transmissions to and from a
`remote transceiver in a wireless system on a communication channel,
`said transceiver for receiving a transmission signifying that an incoming
`call is being attempted; and
`
`a control processor coupled to said transceiver, said control processor for
`determining if said incoming call is to be rejected and, in response to a
`positive determination, said control processor for outputting a rejection
`message to said transceiver for transmission to said remote transceiver,
`wherein said rejection message comprises at least one information
`element indicating to the wireless system that the wireless system is to
`immediately release the incoming call on the communication
`channel between the mobile communications device and remote
`transceiver.
`
`(Emphasis added) Dependent claim 6 teaches the method of claim 5, "wherein the
`
`mobile phone includes an actuator operable by a user for inputting a manual input to
`
`the mobile phone."
`
`a. Invalidity of the '075 patent
`
`(1) Apple's evidence
`
`At trial, Apple asserted that the claims of the '075 patent are obvious based on
`
`combinations of (1) Global System for Mobile Communications standard ("GSM") 04.833
`
`and GSM 04.084 (collectively, "GSM 04.83/04.08"), and (2) the '068 patent with GSM
`
`04.83/04.08. Apple presented evidence that these references are prior art and that,
`
`together, they disclose all limitations of the asserted claims of the '075 patent. (See D.l.
`
`534 at 1099:6-11 00:8) Specifically, GSM 04.08 discloses the messages exchanged
`
`3GSM 04.83 refers to European Telecommunication Standard- ETS 300 567:
`European Digital Cellular Telecommunications System (Phase 2), Call Waiting (CW)
`and Call Hold (HOLD) Supplementary Services- Stages 3. (DTX 41)
`
`4GSM 04.08 refers to European Telecommunication Standard- ETS 300 557:
`European Digital Cellular Telecommunications System (Phase 2), Mobile Radio
`Interface Layer 3 Specification. (DTX 40)
`
`14
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 16 of 63 PageID #: 12118
`
`between a mobile phone and a base station to establish and release a single call.
`
`(DTX 40 § 5.2.2.1; D.l. 534 at 1102:14-16, 1108:3-5, 1108:18-20, 1152:8-20) GSM
`
`04.83 discloses call handling for second incoming calls (or "call waiting" calls). (DTX 41
`
`§§ 1.1, 1.3.1; D.l. 534at 1102:13-14,1104:15-19, 1108:1-2)
`
`Apple's expert, Dr. Robert Akl ("Dr. Akl"), testified at trial that it would have been
`
`obvious for a person of ordinary skill to combine GSM 04.83 and GSM 04.08 to reject a
`
`second incoming call for several reasons. (D.I. 534 at 1107:9-11 09:6) GSM
`
`04.83/04.08 are parts of Phase 2 of the GSM standard, published by one standards
`
`body, the European Telecommunications Standards Institute ("ETSI") in 1995. (/d. at
`
`1108:6-1 0; DTX 40; DTX 41) He also pointed to GSM 04.83's express instruction to an
`
`engineer to use GSM 04.08 and averred that one of ordinary skill could easily locate the
`
`relevant portions of GSM 04.08 by using, for instance, the table of contents and
`
`recognizing that the relevant sections of GSM 04.83 and GSM 04.08 share "very
`
`similar'' titles - "[w]aiting call indication and confirmation" (GSM 04.83 § 1.1) vs. "[c]all
`
`indication" and "[c]all confirmation" (GSM 04.08 §§ 5.2.2.1, 5.2.2.3). (D. I. 534 at
`
`1107:15-11 09:6; see also id. at 1152:8-20) Another Apple witness, engineer Matthew
`
`Klahn ("Klahn"), also testified that it would be "trivial" for an engineer to find the relevant
`
`portions of GSM 04.08 by referring to the index, which lists sections by functionality.
`
`(D.I. 533 at 863:15-25) Apple further pointed out that the inventors explicitly
`
`recognized, in their provisional application for the '075 patent, that "GSM has a feature
`
`like this." (JTX 11 at 2; D.l. 534 at 1100:4-11 02:3)
`
`In addition, Apple argues that the opinion of MobileMedia's expert, Dr. Sigurd
`
`15
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 17 of 63 PageID #: 12119
`
`Meldal ("Dr. Meldal"), that a person of ordinary skill would not be motivated to combine
`
`GSM 04.83 and GSM 04.08 contradicts MobileMedia's infringement theory, which
`
`depends on the combination of two later GSM documents: GSM 24.083 and GSM
`
`24.008 (collectively, "GSM 24.083/24.008"). (D.I. 532 at 587:25-599:3; D. I. 535 at
`
`1437:9-1438:18) Dr. Akl testified that GSM 24.083/24.008 are "very similar" to GSM
`
`04.83/04.08 and that the relevant GSM functionality (regarding the "disconnect,"
`
`"release," and "release request" messages) has not changed in the 20 years since the
`
`GSM 4.83 and GSM 4.08 standards were published. (D.I. 534 at 1097:23-1 099:3)
`
`Furthermore, in response to MobileMedia's suggestion that going from a first call
`
`rejection to a second call rejection required an inventive leap, Apple submitted the '068
`
`patent as another prior art reference to supply this inventive leap. The '068 patent
`
`teaches a user interface that provides an option to reject a second incoming call and
`
`states that rejection of the second incoming call may be performed using standards in
`
`the GSM system. ('068 patent, Figs. 6A, 68, 6D, 7, col. 1:8-13, 1 :17-28; D.l. 534 at
`
`1114:14-1123:18, 1156:4-22)
`
`(2) MobileMedia's evidence
`
`Mobile Media did not dispute that GSM 04.83 and GSM 04.08, together with or
`
`without the '068 patent, disclose every limitation of the asserted claims. (See D.l. 534
`
`at 1102:9-12; D.l. 535 at 1394:10-21, 1403:22-1404:10; see also D.l. 520 at 14-15)
`
`MobileMedia also did not offer any evidence of secondary considerations of
`
`nonobviousness, and the jury was not instructed on such considerations. (See D. I.
`
`505) Instead, MobileMedia focused on showing that one of ordinary skill could not
`
`16
`
`

`
`Case 1:10-cv-00258-SLR-MPT Document 541 Filed 09/05/13 Page 18 of 63 PageID #: 12120
`
`"putO rejection from [GSM] 04.08 onto call waiting [from GSM 04.83]." (D.I. 536 at
`
`1564:15-17) In post-trial briefing, it argues that the court's denial of summary judgment
`
`of obviousness based on this combination supports the verdict of validity because
`
`whether GSM 04.08 teaches away from combinations with references that teach call
`
`handling of second incoming calls, such as GSM 4.83 or the '068 patent, was an issue
`
`of material fact for the jury. 5 (D.I. 520 at 14)
`
`MobileMedia's expert, Dr. Meldal, opined at trial that his engineering students6
`
`would have been "discouraged" from using GSM 04.08 to handle a second call because
`
`it only related to handling a single call. (D.I. 535 at 1395:15-1396:16) Dr. Meldal also
`
`testified that GSM 04.08 disclosed sending Cause No. 21, or a "busy" signal, in
`
`response to a second incoming call and, thus, taught away from the invention claimed
`
`in the '075 patent. (/d. at"1397:1