Case 1:10-cv-00258-SLR Document 745 Filed 06/12/17 Page 1 of 31 PageID #: 29943
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`IRONWORKS PATENTS, LLC,
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`Plaintiff,
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`v.
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`APPLE, INC.
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`Defendant.
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`Civ. No. 10-258-SLR
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`Brian E. Farnan, Esquire and Michael J. Farnan, Esquire of Farnan LLP, Wilmington,
`Delaware. Of Counsel: David Berten, Esquire and Alison A. Richards, Esquire of
`Global IP Law Group, LLC Counsel for Plaintiff.
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`Richard K. Herrmann, Esquire and Mary Matterer, Esquire of Morris James LLP,
`Wilmington, Delaware. Of Counsel: Tara D. Elliott, Esquire of Wilmer Cutler Pickering
`Hale and Dorr, and Melody Drummond Hansen, Esquire, Luann L. Simmons, Esquire,
`and Xin-Yi Zhou, Esquire of O'Melveny & Myers LLP Counsel for Defendant.
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`MEMORANDUM OPINION
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`ld- , 2017
`Dated: June
`Wilmington, Delaware
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`

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`Case 1:10-cv-00258-SLR Document 745 Filed 06/12/17 Page 2 of 31 PageID #: 29944
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`~~trictJudge
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`I. INTRODUCTION
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`On March 31, 2010, plaintiff MobileMedia Ideas LLC ("MMI") filed suit against
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`defendant Apple, Inc. ("defendant"), alleging infringement of a number of patents
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`including U.S. Patent No. RE 39,231 ("the '231 patent). As part of an extensive motion
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`practice, on November 8, 2012, the court-construed· the relevant claim terms of the '231
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`patent and granted summary judgment of noninfringement in favor of defendant. (D.I.
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`461 at 45) The court denied reconsideration (D.I. 539, 540), and the parties went to trial
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`on the other patents-in-suit in December 2012. (See, e.g., D.I. 506 (verdict sheet))
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`After post-trial briefing, and the court's memorandum opinion and order (D.I. 539, 540),
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`the parties appealed to the Federal Circuit. (D.I. 548, 550) The Federal Circuit
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`construed the '231 patent and vacated and remanded the court's finding of
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`noninfringement. MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1181 (Fed. Cir.
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`2015) ("Consistent with the specification, 'controlling the alert sound generator to
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`change a volume of the generated alert sound' by the 'control means' encompasses
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`both stopping and reducing the volume of the alert sound as recited in dependent
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`claims 2 and 3, respectively."). The court held a five-day jury trial from September 12-
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`18, 2016 on infringement, validity, and damages of claims 12 and 2 of the '231 patent.
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`On September 20, 2016, the jury returned a verdict that defendant's iPhone infringes
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`claims 12 and 2 of the '231 patent. (D. I. 704 at 2) The jury determined that the
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`asserted claims are not invalid as obvious or for indefiniteness. (D.I. 704 at 2-3) As a
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`consequence of this infringement, the jury awarded MMI damages of $3 million. (D.I.
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`704 at 4) After post-trial briefing was complete, Ironworks Patents LLC ("Ironworks")
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`acquired rights in the '231 patent and was substituted as the plaintiff; MMI withdrew
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`from this matter. 1 (D.I. 734)
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`Presently before the court are the following motions: (1) Ironworks' renewed
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`motion for judgment as a matter of law or motion for a new trial with respect to damages
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`(D.I. 712); (2) Ironworks' motion for an award of prejudgment and postjudgment interest
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`(D.I. 713); and (3) defendant's renewed motion for judgment as a matter of law or
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`motion for a new trial with respect to validity, infringement, and damages (D.I. 714).
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`The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`II. BACKGROUND
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`The '2~1 patent, entitled "Communication Terminal Equipment and Call Incoming
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`Control Method," was filed under U.S. Application No. 09/571,650 on December 13,
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`1995, claiming priority to an application filed in Japan on December 19, 1994. The '231
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`patent originally issued on November 30, 1998 as U.S. Patent No. 5,995,852 and was
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`reissued on August 8, 2006. As part of related litigati.on against other defendants in
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`other courts, on F~bruary 10, 2011, Research In Motion, Ltd. requested an ex parle
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`reexamination of the '231 patent. 2 In a reexamination certificate that issued April 3,
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`2012, claims 1, 11, 13-16, and 18-23 were cancelled; claims 2-4, 8, 12, and 17 were
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`amended and determined to be patentable; claims 5-7, 9 and 10 were determined to be
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`patentable as dependent on an amended claim, and new claims 24-29 were determined
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`to be patentable. ('231 patent, ex parle reexamination certificate at 1 :20-29)
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`The patent teaches communication terminal equipment and a method for
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`stopping or reducing the volume of an alert sound for an incoming call on a telephone.
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`1 The court refers to MMI and Ironworks collectively as ("plaintiff") except where a
`specific reference (e.g. "an MMI employee" and "an MMI license") is necessary.
`2 See File Wrapper, U.S. Application No. 90/011,482, "Receipt of Orig. Ex Parte
`Request by Third Party" (Feb. 10, 2011).
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`2
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`('231 patent, abstract) Conventionally, a "call incoming on a telephone is informed by
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`means of an alert sound," but the alert sound "does not stop ringing before a user
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`effects [a] next operation." ('231 patent, 1 :17-20) A user who cannot, respond to a call
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`incoming has only the option to forcibly disconnect the incoming call, turn off the
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`telephone, or allow the alert sound to continue ringing. ('231 patent, 1 :20-25) The first
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`two options, forcibly disconnecting the incoming call or turning off the telephone, may
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`give the person on the call origination side an "unpleasant feeling because [he or she]
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`can notice that the circuit was broken off intentionally" or may give the person the
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`impression that the telephone network has failed. ('231 patent, 1 :26-30, 39-42)
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`Moreover, a user who turns off the power may forget to turn the power back on and
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`miss the next incoming call. ('231 patent, 1 :37-39) On the other hand, the third option,
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`allowing the alert sound to continue ringing, may disturb the user or other persons in the
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`surroundings. ('231 patent, 1 :3-33)
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`In light of these problems, the invention aims "to provide a communication
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`terminal equipment which is superior in selecting and handling properties for users .... "
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`('231 patent, 1 :43-46) It teaches a telephone in which an alert sound muting or volume
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`reducing function is allotted to a key. ('231 patent, 2:2-5; 4:40-42; 5:12-17) When the
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`telephone receives an incoming call, the user can use a predetermined operation, such
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`as depressing a key for a short time, to prompt the "alert on/off controller" to stop
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`generation of the alert sound. ('231 patent, 3:36-48) Alternatively, the alert sound may
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`be reduced. ('231 patent, 4:40-42)
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`Claims 2, 3, 4, and 12 are at issue. During reexamination, claim 12 was
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`amended to recite as follows:
`12. A communication terminal for informing a user of a received call
`from a remote caller by an alert sound, comprising:
`an alert sound generator for generating the alert sound when the call is
`received from the remote caller;
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`3
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`Case 1:10-cv-00258-SLR Document 745 Filed 06/12/17 Page 5 of 31 PageID #: 29947
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`control means for controlling said alert sound generator; and
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`means for specifying a predetermined operation by the user,
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`wherein when said alert sound generator is generating the alert sound
`. and said means for specifying said predetermined operation is
`operated by the user, said control means controls said alert sound
`generator to change a volume of the generated alert sound only for
`the received call, without affecting the volume of the alert sound for
`future received calls, while leaving a call ringing state, as perceived
`by the remote caller, of the call to the terminal from the remote caller
`unchanged,
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`further comprising:
`RF signal processing means for transmitting and/or receiving radio
`waves; and
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`an antenna for transmitting and/or receiving said radio waves, wherein
`said communication status between said apparatus and said remote
`caller is established by said transmitted and/or received radio waves.
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`('231 patent, ex parte reexamination certificate, 2: 11-39)
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`Reexamined claims 2, 3, and 4 are all dependent from claim 12. Reexamined
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`claim 2 adds the limitation that the "control means controls the state of said alert sound
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`generator to stop the sound." Reexamined claim 3 adds the limitation that the alert
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`sound generator reduces the volume of the sound. Finally, reexamined claim 4 adds
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`the limitation "where said predetermined operation is an operation depressing a
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`predetermined operation key."
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`Ill. STANDARD OF REVIEW
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`A. Renewed Motion for Judgment as a Matter of Law
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`The Federal Circuit "review[s] a district court's denial of judgment as a matter of
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`law under the law of the regional circuit. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1325
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`(Fed. Cir. 2016) (citation omitted). In the Third Circuit, a "court may grant a judgment as
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`a matter of law contrary to the verdict only if 'the record is critically deficient of the
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`minimum quantum of evidence' to sustain the verdict." Acumed LLC v. Advanced
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`Surgical Servs., Inc., 561F.3d199, 211 (3d Cir. 2009) (citing Gomez v. Allegheny
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`4
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`Health Servs., Inc., 71F.3d1079, 1083 (3d Cir. 1995)); see also McKenna v. City of
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`Philadelphia, 649 F.3d 171, 176 (3d Cir. 2011). The court should grant judgment as a
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`matter of law "sparingly," and "only if, viewing the evidence in the light most favorable to
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`the nonmovant and giving it the advantage of every fair and reasonable inference, there
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`is insufficient evidence from which a jury reasonably could find liability." Marra v.
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`Philadelphia Hous. Auth., 497 F.3d 286, 300 (3d Cir. 2007) (citing Moyer v. United
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`Dominion Indus., Inc., 473 F.3d 532, 545 n.8 (3d Cir. 2007)). "In performing this narrow
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`inquiry, [the court] must refrain from weighing the evidence, determining the credibility of
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`witnesses, or substituting [its] own version of the facts for that of the jury. Id. (citing
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`Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993)). Judgment as a
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`matter of law may be appropriate when there is "a purely legal basis" for reversal "that
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`does not depend on rejecting the jury's findings on the evidence at trial." Acumed, 561
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`F.3d at 211.
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`B. Motion for a New Trial
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`Federal Rule of Civil Procedure 59(a) provides, in pertinent part:
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`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.
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`Fed. R. Civ. P. 59(a). The decision to grant or deny a new trial is within the sound
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`discretion of the trial court and, unlike the standard for determining judgment as a
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`matter of law, the court need not view the evidence in the light most favorable to the
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`verdict winner. See Allied Chem. Corp. v. Daif/on, Inc., 449 U.S. 33, 36 (1980); Leonard
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`v. Stemtech Int'! Inc, 834 F.3d 376, 386 (3d Cir. 2016) (citing Olefins Trading, Inc. v.
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`Han Yang Chem. Corp., 9 F.3d 282 (3d Cir. 1993)); LifeScan Inc. v. Home Diagnostics,
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`Inc., 103 F. Supp. 2d 345, 350 (D. Del. 2000) (citations omitted); see also 9A Wright &
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`Miller, Federal Practice and Procedure § 2531 (2d ed. 1994) ("On a motion for new trial
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`5
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`the court may consider the credibility of witnesses and the weight of the evidence.").
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`Among the most common reasons for granting a new trial are: (1) the jury's verdict is
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`against the clear weight of the evidence, and a new trial must be granted to prevent a
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`miscarriage of justice; (2) newly-discovered evidence exists that would likely alter the
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`outcome of the trial; (3) improper conduct by an attorney or the court unfairly influenced
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`the verdict; or (4) the jury's verdict was facially inconsistent. See Zarow-Smith v. N.J.
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`Transit Rail Operations, 953 F. Supp. 581, 584-85 (D.N.J. 1997) (citations omitted).
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`The court must proceed cautiously, mindful that it should not simply substitute its own ·
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`judgment of the facts and the credibility of the witnesses for those of the jury. Rather,
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`the court should grant a new trial "only when the great weight of the evidence cuts
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`against the verdict and a miscarriage of justice would result if the verdict were to stand."
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`Leonard, 834 F.3d at 386 (citing Springer v. Henry, 435 F.3d 268, 274 (3d Cir. 2006)
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`and Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1352-53 (3d Cir. 1991 )) (internal
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`quotation marks omitted).
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`IV. DISCUSSION
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`A. Defendant's Renewed JMOL - Liability
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`Defendant argues that "JMOL of noninfringement should be granted because no
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`reasonable jury could have found that the accused iPhones literally infringe claims 12
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`and 2 of the '231 patent." (D.I. 717 at 12) In support, defendant contends that: (1) the
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`"alert sound generator" as construed under§ 112, ~ 6~ requires plaintiff to show "that
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`the accused iPhones contain structures identical to the structure disclosed in the '231
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`patent;" (2) plaintiff did not provide sufficient evidence of infringement of the "control
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`means" limitation; and (3) plaintiff's expert only testified as to the iPhone 3GS and did·
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`not present sufficient eviden_ce of infringement by the other accused iPhone products.
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`(D.I. 717 at 12-13)
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`6
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`1. Standard
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`A patent is infringed when a person "without authority makes, uses or sells any
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`patented invention, within the United States ... during the term of the patent." 35
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`U.S.C. § 271 (a). To prove direct infringement, the patentee must establish that one or
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`more claims of the patent read on the accused device literally or under the doctrine of
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`equivalents. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d
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`1329, 1336 (Fed. Cir. 2001). A two-step analysis is employed in making an
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`infringement determination. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
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`(Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). First, the court must construe the asserted
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`claims to ascertain their meaning and scope, a question of law. Id. at 976-77; see also
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`Teva Pharms. USA, Inc. v. Sandoz, Inc.,_ U.S._, 135 S. Ct. 831, 837 (2015). The
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`trier of fact must then compare the properly construed claims with the accused infringing
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`product. See Markman, 52 F.3d at 976. This second step is a question of fact.
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`Spectrum Pharm., Inc. v. Sandoz Inc., 802 F.3d 1326, 1337 (Fed. Cir. 2015) (citing Bai
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`v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998)).
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`"Direct infringement requires a party to perform each and every step or element
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`of a claimed method or product." Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d
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`1312, 1320 (Fed. Cir. 2009) (quoting BMC Res., Inc. v. Paymentech, L.P., 498 F.3d
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`1373, 1378 (Fed. Cir. 2007)). "If any claim limitation is absent ... , there is no literal
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`infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d
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`1241, 1247 (Fed. Cir. 2000). If an accused product does not infringe an independent
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`claim, it also does not infringe any claim depending thereon. Ferring B. V. v. Watson
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`Labs., lnc.-Florida, 764 F.3d 1401, 1411 (Fed. Cir. 2014) (citing Wahpeton Canvas Co.,
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`Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989) ("One who does not infringe
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`an independent claim cannot infringe a claim dependent on (and thus containing all the
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`limitations of) that claim.")). However, "[o]ne may infringe an independent claim and not
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`infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503
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`F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton Canvas,,870 F.2d at 1552)
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`(internal quotations omitted). The patent owner has the burden of proving literal
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`infringement by a preponderance of the evidence. Octane Fitness, 134 S. Ct. at 1758.
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`2. All accused iPhone products
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`Defendant argues that plaintiff "presented no evidence at trial that the accused
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`products perform the claimed functions of generating an alert sound and stopping the
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`alert sound using structures identical to any structure disclosed in the '231 Patent
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`specification." (D.I. 717 at 13, citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
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`1345-46 (Fed. Cir. 2016))
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`a. "Alert sound generator"
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`Defendant argues that plaintiff "presented no evidence that the iPhone's
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`components are identical to the 'alert sound generator 13' in Figure 2 of the '231
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`patent." (D.I. 717 at 13) The court construed "an alert sound generator for generating
`the alert sound when the call is received from the remote caller" under§ 112, 1f 6, and
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`identified that "[t]he function is generating the alert sound when the call is received from
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`the remote caller" and "[t]he structure is an alert sound generator (such as the alert
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`sound generator 13 in the '231 patent." (D.I. 703 at 19 (emphasis omitted)) Defendant
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`repeatedly sought to limit the construction to item 13 in figure 2, and the court
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`disagreed. (See, e.g., D.I. 739 at 941 :4-23) This motion is essentially a request for
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`reconsideration.
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`i. Standard
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`A motion for reconsideration is the "functional equivalent" of a motion to alter or
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`amend judgment under Federal Rule of Civil Procedure 59(e). See Jones v. Pittsburgh
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`Nat'/ Corp., 899 F.2d 1350, 1352 (3d Cir. 1990) (citing Fed. Kemper Ins. Co. v.
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`Rauscher, 807 F.2d 345, 348 (3d Cir. 1986)). The standard for obtaining relief under
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`Rule 59(e) is difficult to meet. The purpose of a motion for reconsideration is to "correct
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`manifest errors of law or fact or to present newly discovered evidence." Max's Seafood
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`Cafe ex rel. Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). A court
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`should exercise its discretion to alter or amend its judgment only if the movant
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`demonstrates one of the following: (1) a change in the controlling law; (2) a need to
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`correct a clear error of law or fact or to prevent manifest injustice; or (3) availability of
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`new evidence not available when the judgment was granted. See id. A motion for
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`reconsideration is not properly grounded on a request that a court rethink a decision
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`already made and may not be used "as a means to argue new facts or issues that
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`inexcusably were not presented to the court in the matter previously decided."
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`Brambles USA, Inc. v. Blocker, 735 F. Supp. 1239, 1240 (D. Del. 1990); see also
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`Glendon Energy Co. v. Borough of Glendon, 836 F. Supp. 1109, 1122 (E.D. Pa. 1993).
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`ii. Analysis
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`Defendant argues that plaintiff "can establish infringement only by proving that
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`the accused iPhones contain structures identical to the structure disclosed in the '231
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`patent specification. (D.I. 717 at 12) Defendant presents no new evidence to support
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`its argument, identifies no changes in the law, and addresses no clear errors of law or
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`fact in the court's construction. Max's Seafood Cafe, 176 F.3d at 677. Therefore, the
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`court denies defendant's motion for reconsideration.
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`b. "Control means"
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`Plaintiff presented testimony from Sigurd Melda!, PhD ("Dr. Meldal") in which he
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`opined that, in the accused iPhone products, the "control means" limitation is met by the
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`CPU running software and the "L61" audio interface. (D.I. 737 at412:18-413:23; see
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`also D.I. 740 at 1080:8-1081:10, 1134:1-10) Defendant's expert, Ravin Balakrishnan,.
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`9
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`PhD ("Dr. Balakrishnan"), opined that "the accused iPhones do not have the control
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`means element." (D.I. 739 at 842:2-8)
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`Defendant argues that "[w]ith respect to the 'control means,' [plaintiff] failed to
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`present any evidence that the accused iPhones include a structure identical to the
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`structure disclosed in the specification-a CPU and an alert sound generator on/off
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`controller." (D.I. 717 at 14) The jury was instructed that "control means for controlling
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`said alert soun~ generator" is construed under§ 112, ~ 6, "[t]he function is controlling
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`the alert sound generator to change a volume of the generated alert sound.'' and "[t]he
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`structure is CPU and alert sound generator on/off controller." (D.I. 703 at 19 (emphasis
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`omitted)) Dr. Meldal expressed the opinion that the CPU, software, and the L61 audio
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`is the structure that performs the identified function. Dr. Balakrishnan disagreed. The
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`jury credited the testimony of Dr. Meldal over that of Dr. Balakrishnan. The court
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`declines to re-weigh the evidence or the credibility of the witnesses. Viewing the record
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`in the light most favorable to plaintiff, substantial evidence supports the jury's verdict.
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`For these reasons, defendant's renewed motion for JMOL is denied.
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`3. iPhone 3G, iPhone 4 GSM, and iPhone 4 CDMA
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`Defendant presents numerous overlapping arguments as to liability on the
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`iPhone 3G, iPhone 4 GMS, and iPhone 4 CDMA. (D.I. 717 at 16-17) With respect to
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`the "alert sound generator" term, the court declines to reconsider defendant's
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`duplicative arguments as to these three accused devices. Defendant argues that "for
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`the limitation '[wherein] said call ringing state between said apparatus and said remote
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`caller is established by said transmitted and/or received radio waves.' Dr. Meldal relied
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`exclusively on the iPhone 3GS's practice of the GSM standard." (D.I. 717 at 17 (citing
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`D.I. 737 at 424:20-425:4)) Defendant contends that plaintiff "presented no infringement
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`evidence for any CDMA product." (D.I. 717 at 17) Dr. Meldal _expressed the opinion
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`that, for limitation "F.'' the iPhone 3G and the iPhone 4 (CDMA and GSM) contain the
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`10
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`same limitation "for the same reasons if not exactly the same hardware."3 (D.I. 737 at
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`426:6-10) Dr. Meldal performed a limitation-by-limitation analysis of the iPhone 3GS as
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`compared to claims 12 and 2 of the '231 patent. (D:I. 737 at 407:21-408:22, 410:2-21,
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`411 :1-412:2, 412:18-413:23, 416:17-417:18, 418:2-421 :16, 421:20-422:20, 423:3-425:4,
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`426:11-20) Dr. Meldal addressed the comparisons between the iPhone 3GS and the
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`other accused iPhone products on a limitation-by-limitation basis. (D.I. 737 at 409:1-3,
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`412:13-17, 416:13-16, 417:19-23, 421:17-19, 422:21-423:2, 426:6-10, 426:21-23) The
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`jury credited the testimony of Dr. Meldal and concluded that the iPhone 3G, iPhone 4
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`GSM, and iPhone 4 CDMA infringe the claims. The court declines to re:.weigh the
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`evidence or the credibility of the witnesses. Viewing the record in the light most
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`favorable to plaintiff, substantial evidence supports the jury's verdict. For these
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`reasons, defendant's renewed motion for JMOL is denied.
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`4. New trial - liability
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`In the alternative, defendant requests a new trial on liability should the court deny
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`the renewed motion for JMOL. (D.I 717 at 20) Defendant's request is premised on the
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`same arguments as its renewed motion for JMOL with respect to liability. (Id.)
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`Defendant asks the court to exercise its own judgment in assessing the evidence, and
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`reach the opposite conclusion as the jury. (Id.) For the reasons discussed above, the
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`jury's verdict is not against the clear weight of the evidence, therefore, the court denies
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`defendant's request for a new trial on liability.
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`8. Defendant's Renewed JMOL - Validity
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`Defendant has moved for a JMOL that the '231 patent is invalid on three
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`grounds: indefiniteness, obviousness, and lack of written description. (D.1717 at 3)
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`3 Defendant argues that this type of opinion testimony is insufficient evidence of
`infringement. (D.I. 717 at 16-17)
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`11
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`Plaintiff responds that defendant is "reargu[ing] the myriad of issues it has lost
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`throughout the case." (D.I. 724 at 1)
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`1. Indefiniteness
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`Defendant argues that claims 12 and 2 of the '231 patent are indefinite.
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`Defendant contends that plaintiff's evidence of infringement with respect to the "alert ·
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`sound generator for generating the alert sound" term was an "attempt to claim all past,
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`current, and future structures for performing a function [, which] violates the
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`fundamental prohibition against 'pure functional claiming' and renders the asserted
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`claims indefinite." (D.I. 717 at 6) As to the "control means for controlling said alert
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`sound generator" term, defendant asserts that "[d]uring trial, [plaintiff] did not identify
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`any computer algorithm disclosed by the specification, instead relying exclusively on the
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`recited function., Because the '231 Patent fails to disclose an algorithm for the claimed
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`function, the 'control means' term is indefinite." (D.I. 717 at 6 (citation omitted)) These
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`are re-arguments of positions that defendant lost at summary judgment, therefore, the
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`court treats these as motions for reconsideration.
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`a. "Alert sound generator"
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`Defendant argued at summary judgment that "the '231 Patent specification fails
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`to disclose structure corresponding to the 'alert sound generator' term's claimed
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`functions" and the term, therefore, is indefinite. (D.I. 578 at 9) "Consistent with Dr.
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`Meldal's opinion, the court conclude[d] that those of skill in the art would recognize the
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`structure in the specification and associate it with the corresponding functions of the
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`claim." (D.I. 630 at 13) Defendant contends that, in light of plaintiff's infringement
`
`evidence, the claims are indefinite, but defendant fails to identify any factors that would
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`assist the court in reconsidering its summary judgment opinion. (D.I._ 717 at 3-6)
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`Therefore, the court denies defendant's motion for reconsideration. Max's Seafood
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`Cafe, 176 F.3d at 677.
`
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`Case 1:10-cv-00258-SLR Document 745 Filed 06/12/17 Page 14 of 31 PageID #: 29956
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`b. "Control means"
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`At summary judgment, defendant argued that "all asserted claims are invalid as
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`indefinite" for failing "to disclose sufficient structure," such as an algorithm, for the
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`"control means for controlling said alert sound generator" term. (D.I. 578 at 14) "The
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`court disagree[d]. As explained [in the memorandum opinion], an algorithm may be
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`disclosed in any format. At bar, the ['231 patent] specification discloses (using words
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`and figures) the process by which the corresponding structure performs the given
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`function." (D.I. 630 at 14) Defendant articulates no basis upon which the court should
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`reconsider its summary judgment opinion, therefore, the court denies defendant's
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`motion for reconsideration. Max's Seafood Cafe, 176 F.3d at 677.
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`2. Obviousness
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`Defendant contends that Dr. Melda! "admitted that the obviousness dispute boils
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`down to whether it would have been obvious to implement 'polite ignore'4 in a cellular
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`phone" and that, therefore, "the claimed invention is obvious as a matter of law." (D.I.
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`717 at 7, citing KSR Int'/ Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also D.I.
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`740 at 1157:24-1158:8) Defendant argues that "[t]he '231 patent does not disclose
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`anything beyond the application of 'polite ignore' to an otherwise unmodified cellular
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`phone." (D.I. 717 at 8) Plaintiff contends that defendant's "obviousness arguments
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`wrongly characterize the 'essence of the alleged invention' as 'polite ignore"' and
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`substantial evidence in the record demonstrated that the '231 patent is not obvious in
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`light of the Motorola and Panasonic references, either individually or in combination.
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`(D.I. 724 at 7)
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`4 Despite defendant's repeated use of this term, the intrinsic record is devoid of it.
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`Case 1:10-cv-00258-SLR Document 745 Filed 06/12/17 Page 15 of 31 PageID #: 29957
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`a. Standard
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`"A patent may not be obtained ... if the differences between the subject matter
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`sought to be patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a person having
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`ordinary skill in the art." 35 U.S.C. § 103(a). Obviousness is a question of law, which
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`depends on underlying factual inquiries.
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`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.,
`might be utilized to give light to the circumstances surrounding the origin
`of the subject matter sought to be patented.
`
`KSR, 550 U.S. at 406 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
`
`18 (1966)).
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`"[A] patent composed of several elements is not proved obvious merely by
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`demonstrating that each of its elements was, independently, known in the prior art."
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`KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a
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`combination of references has the burden to show that a person of ordinary skill in the
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`relevant field had a reason to combine the elements in the manner claimed. Id. at 418-
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`19. The Supreme Court has emphasized the need for courts to value "common sense"
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`over "rigid preventative rules" in determining whether a motivation to combine existed.
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`Id. at 419-20. "[A]ny need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent can provide a reason for combining the elements
`
`in the manner claimed." Id. 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
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`Case 1:10-cv-00258-SLR Document 745 Filed 06/12/17 Page 16 of 31 PageID #: 29958
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`have had a reasonable expectation of success in doing so." PharmaStem
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`Therapeutics, Inc. v. ViaCel/, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
`
`A combination of prior art elements may have been "obvious to try" where there
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`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
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`within [a person of ordinary skill in the art's] technical grasp" leads to the anticipated
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`success. Id. at 421. In this circumstance, "the fact that a combination was obvious to
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`try might show that it was obvious under § 103." Id.
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`A fact finder is required to consider secondary considerations, or objective indicia
`
`of nonobviousness, before reaching an obviousness determination, as a "check against
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`hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Re/ease 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:" Graham, 383 U.S. at 17-18.
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`"Patents are presumed to be valid, and overcoming that presumption requires
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`clear and convincing evidence." 35 U.S.C. § 282; Spectrum Pharm., Inc. v. Sandoz
`
`Inc., 802 F.3d 1326, 1333 (Fed. Cir. 2015) (citing Microsoft Corp. v. i4i Ltd. P'ship., 564
`
`U.S. 91, 95 (2011) (holding that an invalidity defense must be proved by clear and
`
`convincing evidence)). In conjunction with this burden, the Federal Circuit has
`
`explained that,
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`[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.
`
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`Case 1:10-cv-00258-SLR Document 745 Filed 06/12/17 Page 17 of 31 PageID #: 29959
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`PowerOasis, Inc. v. T-Mobile