Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jan. 16, 2012) (Posner, J. sitting by designation).

In light of the upcoming trial of this case – in stages beginning with liability on June 11, 2012 – and the interest because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June.

Judge Posner granted in part and deferred portions of plaintiffs (collectively “Apple”) and defendants (collectively “Motorola) motions for summary judgment in this patent dispute involving various cell phone technologies.  Here are key rulings:

  • Apple granted summary judgment of noninfringement re U.S. Patent No. 5,319,712.  The ‘712 patent taught WPA encryption methods.  Apple’s accused devices are complied with the relevant standard, IEEE 802.11x, and Motorola argued that they, therefore infringed.  However, Judge Crabb (the case was in the W.D. Wisconsin prior to transfer) construed the terms of the patent to require that a “transmit overflow sequence number” was never transmitted to the receiver phone, which is contrary to the 802.11x standard.  Judge Crabb properly relied upon Motorola’s statements to the Japanese Patent Office in limiting this claim term.  Motorola’s statements were made to avoid prior art and secure its related Japanese patent.
  • Apple granted summary judgment of invalidity re U.S. Patent No. 5,572,193.  The ‘193 patent taught WPA2 encryption methods which allegedly also allegedly read upon the 802.11x standard.  But the asserted claims were anticipated by a reference.  To overcome the reference, Motorola attempted to add a limitation to a claim element, but the Court held that it was incumbent upon the patentee to describe all elements of the invention in the claims.  Because the patentee had not described the extra term, the Court would not add it.
  • Motorola denied summary judgment of noninfringement and invalidity re U.S. Patent No. 7,479,949.  The ‘949 patent taught the use of finger gestures on touchscreens.  The term “heuristic” was not indefinite, despite the fact that most of Apple’s inventors could not define it clearly during depositions.  And there was a question of fact as to whether the ‘949 sufficiently described the claimed functionality without providing specific source code.  Whether Motorola’s vertical scroll tolerance of 33.7° was sufficiently close to the 27° example offered by Apple was a question of fact for the jury.    
  • Motorola granted (and Apple denied) summary judgment of invalidity re U.S. Patent No. 5,455,599.  The ‘599 patent taught rendering images on a screen using objects.  The parties disputed what structure performed the rendering.  The Court held that the ‘599 patent did not sufficiently describe the structure that performed the rendering and that, therefore, the ‘599 patent claims were invalid.
  • Apple denied summary judgment of noninfringement and invalidity re U.S. Patent No. 5,311,516.  The ‘516 patent taught a system of transmitting longer wireless messages in multiple packets.  Whether Apple’s prior art inherently anticipated Motorola’s patent claims was a question of fact.  And Motorola had put forth evidence of infringement, making infringement a question of fact for the jury.
  • Apple denied summary judgment of noninfringement and invalidity re U.S. Patent No. 6,359,898.  The ‘898 patent teaches allocation of channels in a wireless system.  Apple’s Nortel reference did not invalidate the asserted claims of the ‘898 patent because it failed to specifically teach a single element of the claims.  And Motorola had created at least a question of fact regarding Apple’s alleged infringement.
  • Motorola denied summary judgment of noninfringement re U.S. Patent No. 6,343,263 as premature.  The ‘263 patent taught real-time processing of serially transmitted data.  Motorola’s motion was premature because neither party had sought construction of a key claim term.  The Court, therefore, ordered claim construction on the term.
  • Motorola denied summary judgment of noninfringement re U.S. Patent No. 5,566,337.  The ‘337 patent taught distributing events (such as key strokes) within an operating system.  Apple and its expert had provided sufficient evidence of infringement to withstand summary judgment and to submit a question of fact to the jury.
  •  U.S. Patent No. 6,175,559 . The ‘559 patent teaches methods for generating numbers that identify a particular phone in CDMA cell phone systems.  Motorola raised sufficient questions of fact regarding whether Apple’s prior art preliminary application anticipated the ‘559 patent.  And Motorola may be able to swear behind the application.  There were also questions of fact regarding Apple’s noninfringement argument.  And the Court deferred considering summary judgment of noninfringement regarding Motorola’s contributory infringement claims until Motorola had the opportunity to perform limited additional discovery.