United States Court of Appeals 

for the Federal Circuit ______________________ 

INTELLECTUAL VENTURES I LLC, 

INTELLECTUAL VENTURES II LLC,

Plaintiffs-Appellees

v.

MOTOROLA MOBILITY LLC, FKA MOTOROLA 

MOBILITY, INC.,

Defendant-Appellant

______________________ 

2016-1795

______________________ 

Appeal from the United States District Court for the 

District of Delaware in No. 1:11-cv-00908-SLR-MPT, 

Judge Sue L. Robinson.

______________________ 

Decided: September 13, 2017

______________________ 

 MARC BELLOLI, Feinberg Day Alberti & Thompson 

LLP, Menlo Park, CA, argued for plaintiffs-appellees. Also 

represented by DAVID ALBERTI, ELIZABETH DAY, IAN 

NEVILLE FEINBERG, SAL LIM. 

 DAVID A. NELSON, Quinn Emanuel Urquhart & Sullivan, LLP, Chicago, IL, argued for defendant-appellant. 

Also represented by DAVID ANDREW PERLSON, San Francisco, CA; JOSHUA L. SOHN, Washington, DC; DAVID CLAY 

HOLLOWAY, MITCHELL G. STOCKWELL, Kilpatrick Town-
2 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

send & Stockton LLP, Atlanta, GA; STEVEN MOORE, San 

Francisco, CA.

______________________ 

Before NEWMAN, DYK, and TARANTO, Circuit Judges.

Opinion for the court filed by Circuit Judge DYK. 

Opinion concurring-in-part and dissenting-in-part filed by 

Circuit Judge NEWMAN. 

DYK, Circuit Judge. 

Intellectual Ventures I LLC and Intellectual Ventures 

II LLC (collectively “IV”) brought suit against Motorola 

Mobility LLC (“Motorola”) in the United States District 

Court for the District of Delaware alleging infringement 

of claim 41 of U.S. Patent No. 7,810,144 (“the ’144 patent”) and claims 1, 10, 11, and 13 of U.S. Patent No. 

7,120,462 (“the ’462 patent”). A jury found the asserted 

claims infringed and not invalid. The district court denied 

Motorola’s motion for judgment as a matter of law. 

Motorola appeals. 

We hold that substantial evidence supports the jury’s 

verdict regarding the validity of claim 41 of the ’144

patent and claims 1, 10, 11, and 13 of the ’462 patent, but 

conclude that substantial evidence does not support the 

jury’s verdict of direct infringement of claim 41 of the ’144 

patent. Since a finding of direct infringement is a predicate to any finding of indirect infringement, we reverse all 

of the infringement findings with respect to the ’144 

patent. We therefore affirm the district court’s judgment 

in part, reverse in part, and remand for further proceedings on the asserted claims of the ’462 patent. 

BACKGROUND

I 

The ’144 patent was issued on October 5, 2010, from a 

series of continuing applications first filed in 1997. See 
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 3 

’144 patent, col. 1 ll. 8–35 (claiming benefit to a U.S.

provisional application filed on November 13, 1997). The

patent is titled “File Transfer System for Direct Transfer 

Between Computers” and broadly “relates to transferring 

computer files electronically from one location to another, 

and more particularly to electronic transfer of computer 

files directly between two or more computers or computing devices.” Id. col. 2 ll. 4–7.

Asserted claim 41 of the ’144 patent recites: 

41. A communications device, comprising:

a processor; and

a memory that stores at least one program 

usable to control the communications device,

wherein the communications device is configured to:

display a collection of file identifiers, 

wherein each file identifier represents a 

selectable file;

receive a user selection of at least one file 

identifier representing a file selected to be 

transferred to a second device;

display a collection of destinations identifiers, wherein each destination identifier 

represents a remote device having a numbered destination address on a circuit 

switched or packet switched network;

receive a user selection of at least one destination identifier as selection of the second device;

display a data entry field in which a text 

message can be entered;
4 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

receiving the text message;

encapsulate the text message with the selected file into a single combined file;

generate a unique transaction identifier 

that identifies a transfer of the single 

combined file; and

send the single combined file to the second 

device at its numbered destination address, the second device being configured 

to: 

receive the single combined file irrespective of user action at the second device;

generate a delivery confirmation message 

confirming reception of the single combined file;

transmit to an authenticating device of 

the communications network, the delivery 

confirmation message;

provide an alert indicating reception of the 

single combined file;

display an identification of the communications device in relation to at least one of 

the selected file or the associated text file, 

wherein the identification includes at 

least one of a communications address of 

the communications device, a name of the 

communications device, or a username associated with the communications device; 

and

display at least a portion of content of the 

selected file or the text message, wherein 

the authenticating device is configured to:
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 5 

generate a delivery report that indicates a 

delivery event and a time of the delivery 

event. 

’144 patent, col. 44 l. 60–col. 46 l. 17.

The ’462 patent is titled “Portable Computing, Communication and Entertainment Device with Central 

Processor Carried in a Detachable Handset.” In general 

terms, the invention of the ’462 patent is a laptop computer formed by docking a smartphone into a “shell” 

having a larger display and keyboard.

Representative claim 1 of the ’462 patent recites: 

1. A portable processing device comprising:

a detachable handset unit sized for handheld

grasping and including a central processor and a 

plurality of first circuits, said processor controlling the operation of said first circuits, and said 

first circuits including at least a video interface, a 

communication interface and a data input interface;

a portable docking display unit dimensioned substantially larger than said detachable handset 

unit, said portable docking display unit including 

a first display and a plurality of second circuits, 

said plurality of second circuits not including a 

central processor and including a video interface, 

and a data input interface, and wherein said central processor controls the operation of at least 

one of said second circuits and said first display 

when said detachable handset unit is docked with 

said docking display unit;

and the docking display unit is fully operable only 

when the detachable handset is docked thereto.

’462 patent, col. 6 ll. 2–20.
6 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

II

IV filed suit for infringement of the ’144 and ’462 patents in the District of Delaware. Motorola defended on

the grounds of no infringement and invalidity. The district court bifurcated the determination of willful infringement and calculation of damages for separate trial. 

See Scheduling Order, Intellectual Ventures I LLC v. 

Motorola Mobility LLC, No. 1:11-cv-00908-SLR-MPT (D. 

Del. Jan. 13, 2012), ECF No. 16.

The district court conducted a first jury trial with respect to claims 1, 8, 10, 11, and 13 of the ’462 patent that 

ended in a mistrial. See Intellectual Ventures I, LLC v. 

Motorola Mobility LLC, 72 F. Supp. 3d 496, 501 (D. Del. 

2014). Post-trial, the court denied Motorola’s motion for 

judgment as a matter of law that the asserted claims were 

invalid as obvious. See id. at 513.

The district court conducted a second trial, this time

regarding infringement and validity of claim 41 of the

’144 patent. A jury found that Motorola had directly and 

indirectly infringed claim 41 and had failed to prove 

obviousness of the asserted claim. The jury also found 

that Motorola had failed to prove claim 41 invalid for lack 

of written description. 

The parties retried infringement and validity of the 

’462 patent in yet a third trial, this time with respect to 

claims 1, 10, 11, and 13. The jury found that Motorola had 

infringed the asserted claims and that Motorola had 

failed to prove the asserted claims invalid as obvious.

Motorola moved for judgment as a matter of law in 

both the second and third trials, challenging the jury 

verdicts of infringement and no invalidity. The district 

court denied Motorola’s motions. See Intellectual Ventures

I, LLC v. Motorola Mobility LLC, 176 F. Supp. 3d 405, 444 

(D. Del. 2016). Motorola appeals. We have jurisdiction 

under 28 U.S.C. § 1292(c)(2). 
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 7 

DISCUSSION

We review the district court’s denial of a motion for 

judgment as matter of law de novo. See Finjan, Inc. v. 

Secure Computing Corp., 626 F.3d 1197, 1202 (Fed. Cir. 

2010) (citing McKenna v. City of Philadelphia, 582 F.3d 

447, 460 (3d Cir. 2009)).

I 

Motorola argues that the district court erred in denying judgment as a matter of law that claim 41 of the ’144 

patent is invalid for lack of written description. Whether a 

patent claim is adequately supported by the written 

description under 35 U.S.C. § 112 is a question of fact that 

we review for substantial evidence following a jury trial. 

See, e.g., Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 

1336, 1355 (Fed. Cir. 2010) (en banc). To the extent that 

the issue of written description turns on claim construction based solely on intrinsic evidence, however, it is a 

legal question subject to de novo review. See, e.g., Atl.

Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1353–54 

(Fed. Cir. 2011).

Motorola contends that the specification of the ’144 

patent excludes “long-term” or “permanent” storage of the 

data being transmitted on an intervening computing 

device. Despite this exclusion, Motorola argues that the 

scope of claim 41 covers embodiments that nevertheless 

use such long-term or permanent storage, in violation of 

the written description requirement. 

The words “long-term” and “permanent” do not appear 

in the ’144 patent. Instead, the specification of the ’144 

patent describes that “electronic transfer mechanisms” 

over “interconnected networks of computers and telecommunications equipment . . . generally employ intermediary computers in the form of e-mail servers, FTP servers, 

or Web servers.” ’144 patent, col. 2 l. 31–col. 3 l. 4. The 

specification further explains that “[t]hese intermediary 
8 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

computers” come with several drawbacks because they: 

(1) “reduce the relative security and timeliness of the 

transfers effected because neither the sender nor the 

recipient controls the intermediary server”; (2) “require 

significant administration and usually require login 

procedures and passwords in an attempt to overcome 

security issues, albeit at the expense of user convenience 

and system complexity”; and (3) “represent concentrated 

points of possible failure, as well as communication ‘bottlenecks’ that set capacity limits for the collective number 

and size of files transferred.” Id. col. 3 ll. 4–15. 

To overcome these drawbacks, the invention of the 

’144 patent is a “file transfer system” that “enables direct 

transfer of electronic files between . . . interconnected 

[personal computers] . . . and without intermediate storage of files on an intervening computer.” ’144 patent, col. 

10 l. 63–col. 11 l. 1. Motorola principally relies on this 

portion of the specification to argue that the invention of 

the ’144 patent does not employ “long-term” or “permanent storage” because it excludes intermediate storage, 

and that, consequently, claim 41 lacks written description 

support because the claim nonetheless covers embodiments that use long-term or permanent storage.

While there is some dispute as to whether Motorola 

preserved this precise issue for appellate review, we agree 

with the district court that under the proper claim construction, “claim 41 does not cover file transfers that 

involve long-term or permanent storage.” Intellectual 

Ventures, 176 F. Supp. 3d at 426. The relevant limitations 

of claim 41 recite “send[ing] the single combined file to the 

second device” and “receiv[ing] the single combined file 

. . . at the second device.” ’144 patent, col. 45 ll. 17–22. 

This language neither plainly includes nor plainly excludes long-term or permanent storage. The limitations

must be construed “in view of the specification.” Trustees 

of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1362 

(Fed. Cir. 2016) (quoting Phillips v. AWH Corp., 415 F.3d 
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 9 

1303, 1315 (Fed. Cir. 2005) (en banc)). The portions of the 

specification that Motorola relies on, excerpted above, 

demonstrate that storing files “indefinitely” on an intervening computer is not part of the claimed invention. 

Paradoxically, Motorola contends that these portions of 

the specification exclude long-term or permanent storage 

from the scope of the invention, while simultaneously 

arguing that claim 41 should be read to cover such storage. The proper result is not that claim 41 fails for lack of 

written description but that it should be construed “in 

view of the specification” to be limited. Id. at 1362; C.R. 

Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1360 (Fed. 

Cir. 1998) (“[I]t is incorrect to construe the claims contrary to the specification, and then to hold the claims invalid 

because they are contrary to the specification.”). Thus, the 

“send[ing]” and “receiv[ing]” limitations of claim 41 should 

be construed to exclude long-term or permanent storage. 

Motorola argues that other claims of the ’144 patent 

recite limitations regarding storage of the file being 

transferred, which—according to Motorola—suggests that 

claim 41’s silence broadens the claim to cover all forms of 

storage, including long-term or permanent storage. Claim 

26, for example, recites “transmit[ting] the selected file

. . . absent non-transient intermediate storage of the 

selected file on an intervening communications device of 

the communications network, to the second device.” ’144 

patent, col. 41 l. 66–col. 42 l. 2 (emphasis added). We do 

not agree. The fact that other claims expressly limit the 

type of storage does not mean that claim 41 extends to 

long-term or permanent storage. We also disagree with 

Motorola that the doctrine of claim differentiation militates in Motorola’s favor, because that “doctrine . . . does 

not serve to broaden claims beyond their meaning in light 
10 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

of the specification.” Toro Co. v. White Consol. Indus., Inc., 

199 F.3d 1295, 1302 (Fed. Cir. 1999).1

Since the asserted claim does not cover long-term or 

permanent storage, the failure of the specification to 

describe such an embodiment presents no written description problem. The district court did not err in denying 

Motorola’s motion for judgment as a matter of law for lack 

of written description as to claim 41 of the ’144 patent. 

II

Motorola next argues that it was entitled to judgment 

as a matter of law that claim 41 of the ’144 patent is 

invalid as obvious over the teachings of U.S. Patent No. 

5,379,340 (“Overend”) and U.S. Patent No. 5,553,145 

(“Micali”). The ultimate determination of obviousness 

presents a legal question subject to de novo review, but 

“explicit and implicit” subsidiary factual determinations

made by the jury—including the scope and content of the 

prior art—are reviewed for substantial evidence. See, e.g.,

Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 

1342, 1360 (Fed. Cir. 2012). 

Claim 41 recites, inter alia, a “second device . . . configured to . . . receive the single combined file irrespective 

of user action at the second device.” ’144 patent, col. 45 ll. 

 

1 Motorola further argues that IV’s expert testified 

that claim 41 covers long-term or permanent storage. 

Assuming that this characterization of the expert’s testimony is accurate, it is irrelevant because the question of 

claim construction here is resolved by intrinsic evidence. 

See Phillips, 415 F.3d at 1318 (“[A] court should discount 

any expert testimony that is clearly at odds with the 

claim construction mandated by the claims themselves, 

the written description, and the prosecution history, in 

other words, with the written record of the patent.” (internal quotation marks omitted)).
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 11

20–21. Before the jury, Motorola argued that claim 41 

would have been obvious over a combination of Overend 

and Micali. Motorola’s obviousness case depended in part 

on its argument that the “irrespective of user action”

limitation was taught by Overend’s disclosure of a “secure 

file transfer interface program” having a “Receive Mode” 

capable of receiving files “without any intervention by 

[the user].” Overend col. 20 ll. 67–68. The parties did not 

seek a construction of the “irrespective of user action” 

limitation from the district court, and neither party 

objected to the district court’s instruction to the jury that 

the limitation was to be given its “ordinary meaning.” 

Final Jury Instructions 20, Intellectual Ventures I LLC v. 

Motorola Mobility LLC, No. 1:11-cv-00908-SLR-MPT (D. 

Del. Mar. 24, 2015), ECF No. 407. 

In this situation, the dispositive question on appeal is 

“whether substantial evidence supported the verdict 

under the agreed instruction.” Hewlett-Packard Co. v. 

Mustek Sys., Inc., 340 F.3d 1314, 1320 (Fed. Cir. 2003); 

see also id. at 1321 (“The verdict must be tested by the 

charge actually given and by giving the ordinary meaning 

of the language of the jury instruction.”). The district 

court denied judgement as a matter of law on this question, stating that “[t]he ‘Receive’ mode disclosed in Overend and the ‘irrespective of user action’ limitation are not 

the same because Overend specifies that the device be 

unattended in ‘Receive’ mode.” 176 F. Supp. 3d at 427. 

Based on our review of the trial record, we conclude that 

there was substantial evidence for the jury to find that 

Overend’s “Receive Mode” did not satisfy the “irrespective 

of user action” limitation of claim 41. 

To be sure, Motorola’s expert testified that the “Receive Mode” of Overend’s software allowed a user to 

receive files without having to “log in” or “download” files. 

See J.A. 739 (“The basic idea here in the Overend patent 

is, you turn on the machine. . . . You walk away and it sits 

there and takes all the messages coming through it.”). But 
12 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

IV’s expert explained that this functionality of “Receive 

Mode” was not equivalent to receiving files “irrespective of 

user action” because “[i]f you’re in any other mode or 

doing any other thing on this machine, you cannot receive 

messages.” J.A. 827. According to IV’s expert:

So only if you’re in . . . receive mode . . . will you 

be able to receive messages. If you select any of 

the other menu options . . . you will not be in receive mode. So, for example, [if] I want to send you 

a message . . . while I’m ty[p]ing that message in, 

I can’t receive any messages. And so going back to 

that irrespective of user action does not meet 

what’s happening here in [Overend]. 

J.A. 827–28. 

There is no dispute that Overend’s software must be 

in “Receive Mode” to receive files and that “Receive Mode” 

precludes a user from using the prior art software for 

other purposes. See Overend, col. 39 ll. 14–15 (“To be able 

to receive documents, LIX must be in Receive Mode.”). 

Thus, faced with competing expert testimony on the 

question of whether Overend’s software satisfied the 

“irrespective of user action” limitation, “the jury was free 

to disbelieve [Motorola’s] expert and credit [IV’s] expert.” 

i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 850 (Fed. 

Cir. 2010); see also Edwards Lifesciences AG v. CoreValve, 

Inc., 699 F.3d 1305, 1313 (Fed. Cir. 2012) (noting that 

when “testimony at trial [is] in direct conflict, . . . the 

court may not weigh the evidence, determine the credibility of witnesses, or substitute its version of the facts for 

the jury’s version”). The testimony of IV’s expert and the 

teachings of Overend itself constituted substantial evidence supporting the jury’s conclusion that the prior art 

did not “receive . . . files irrespective of user action.”

Thus, because substantial evidence supports the jury’s verdict finding claim 41 of the ’144 patent nonobvious, 
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 13

the district court correctly denied Motorola judgment as a 

matter of law.2

III 

Having concluded that substantial evidence supports 

the jury’s verdict of no invalidity with respect to claim 41 

of the ’144 patent, we turn to the question of whether 

there was substantial evidence of direct infringement 

under 35 U.S.C. § 271(a). 

The parties have treated claim 41 as a system claim

with limitations directed to a “communications device,” a 

“second device,” and an “authenticating device configured 

to . . . generate a delivery report.” At trial, IV argued that 

Motorola’s customers directly infringed claim 41 by using 

the accused system to send text-plus-photo messages

using a Multimedia Messaging Service (“MMS”), and that 

Motorola itself directly infringed claim 41 by testing the 

accused phones’ MMS functionality. See Intellectual 

Ventures, 176 F. Supp. 3d at 421–23. As evidence, IV 

presented consumer surveys showing that Motorola’s 

customers sent MMS messages using the accused phones, 

and “numerous compliance and testing documents” from 

Motorola demonstrating “that sending and receiving of 

MMS messages was tested on the various carrier net-

 

2 In light of our disposition, we need not address 

whether substantial evidence supported IV’s alternative 

argument to the jury that Overend and Micali failed to 

teach or render obvious “an authenticating device . . . 

configured to . . . generate a delivery report that indicates 

a delivery event and a time of the delivery event.” ’144 

patent, col. 46 ll. 1–17. See Beckman Instruments, Inc. v. 

LKB Produkter AB, 892 F.2d 1547, 1550–51 (Fed. Cir. 

1989); see also, e.g., Gillespie v. Sears, Roebuck & Co., 386 

F.3d 21, 29 (1st Cir. 2004); E. Trading Co. v. Refco, Inc., 

229 F.3d 617, 621 (7th Cir. 2000).
14 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

works.” Id. at 423. Under these theories, when accused 

Motorola phones were used to send and receive text-plusphoto MMS messages, the devices met the limitations of 

the “communications device” and the “second device” of 

the asserted claim. 

Motorola does not dispute that the accused phones 

meet the limitations of the “communications device” and 

the “second device.” Instead, Motorola contends that IV 

failed to offer evidence of a directly infringing “use” of the 

claimed system because none of the accused direct infringers “used” the “authenticating device configured to 

. . . generate a delivery report.” 

A 

We first address the applicable standard under Centillion Data Systems, LLC v. Qwest Communications International, Inc., 631 F.3d 1279 (Fed. Cir. 2011). Claim 41 is 

written to claim a “device configured” to perform certain 

operations, some of which involve communications with 

other devices having certain functionality. But the parties 

have treated Centillion, which addressed claims to “systems comprising” certain elements, as the governing one 

in this case, and for that reason we limit our consideration to what Centillion means for this case. We do not 

decide what standards would govern here if claim 41 were 

not treated as a system claim under Centillion. 

In NTP, Inc. v. Research in Motion, Ltd., in addressing the question of “where” an infringing use of a claimed 

system occurs, we held that “[t]he use of a claimed system 

under section 271(a) is the place at which the system as a 

whole is put into service, i.e., the place where control of 

the system is exercised and beneficial use of the system 

obtained.” 418 F.3d 1282, 1317 (Fed. Cir. 2005). Subsequently, in Centillion, we applied NTP’s situs-ofinfringement holding to resolve infringement of “system

comprising” claims where components of the claimed

system were “in the possession of more than one actor.”
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 15

631 F.3d at 1279. We concluded that “to ‘use’ a system for 

purposes of infringement, a party must put the invention

into service, i.e., control the system as a whole and obtain 

benefit from it.” Id. at 1284. Thus, under NTP and Centillion, to prove an infringing “use” of a system under 

§ 271(a), a patentee must demonstrate “use”—that is, 

“control” and “benefit”—of the claimed system by an 

accused direct infringer. 

The district court held (and IV argues on appeal) that 

Centillion requires only that the infringer benefit from 

the “system as a whole,” such that a benefit derived from 

any claimed component of the claimed system would 

suffice to demonstrate an infringing “use.” The district 

court concluded: “Centillion did not hold that the infringer 

[must] ‘benefit’ from every single limitation. Rather 

Centillion held that the user must ‘obtain benefit’ from 

the ‘system as a whole’ and its analysis of . . . benefit was 

not on a limitation-by-limitation basis.” Intellectual 

Ventures, 176 F. Supp. 3d at 422. 

We disagree. Centillion and NTP held that to “use” 

something is to put it into service, which means to control 

and benefit from it. And Centillion explicitly added that, 

to use a claimed system, what must be “used” is each 

element. Centillion, 631 F.3d at 1284 (“We agree that 

direct infringement by ‘use’ of a system claim ‘requires a 

party . . . to use each and every . . . element of a claim 

[system].’ In order to ‘put the system into service,’ the end 

user must be using all portions of the claimed invention.” 

(alterations in original)). From those two propositions, it 

follows that, to use a system, a person must control (even 

if indirectly) and benefit from each claimed component.

NTP and Centillion both found control of and benefit 

from every element on their particular facts. In NTP, 

customers of the accused infringer, by exchanging messages over the allegedly infringing system, controlled and 

benefitted from the claim-required relay equipment at 
16 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

issue, which was part of what made the message exchanges work. See NTP, 418 F.3d at 1317. In Centillion, 

the customers found to be direct infringers controlled and 

benefitted from back-end processing equipment over 

which they exercised no physical control by requesting 

service and requesting particular reports, and because 

their requests produced response from the back-end 

equipment on a “one request/one response basis. Centillion, 631 F.3d at 1285–86.

We therefore reject IV’s reading of Centillion. In an 

analysis of a system claim under Centillion, proof of an 

infringing “use” of the claimed system under § 271(a) 

requires the patentee to demonstrate that the direct 

infringer obtained “benefit” from each and every element 

of the claimed system. See Centillion, 631 F.3d at 1284. 

In addition, the direct or indirect control required “is the 

ability to place the system as a whole into service.” Id.

B 

Under Centillion, the critical question here is whether 

there was substantial evidence that Motorola’s customers

obtained a “benefit” from the generation of delivery reports. Neither of IV’s direct infringement theories purported to explain how Motorola’s customers satisfied this 

claim limitation by using the accused phones. Indeed, 

there is no evidence that the customers ever “generate[d] 

a delivery report.” Instead, IV relied on testimony and 

evidence that the delivery reports were generated by 

Multimedia Messaging Service Centers (“MMSC”) maintained or operated by the customers’ wireless service 

carriers when the customers used the accused phones. 

IV’s main argument is that Centillion does not require 

that Motorola’s customer benefit from the MMSCs’ generation of delivery reports. We have rejected that reading of 

Centillion. But IV also asserts, almost in passing, that 

Motorola’s customers directly benefitted from the delivery 

reports because “the user sending the MMS does benefit 
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 17

. . . from the MMSC authenticating the transfer with a 

delivery report noting the date and time when it is delivered.” Here, IV’s sole record citation contains just one 

sentence about the delivery report, and that sentence says 

nothing about benefits flowing from the delivery reports

to the customer sending the message. See J.A. 618.

In the ’144 patent, the only benefits identified as flowing from the delivery reports rest on the sending device’s 

ability to receive or retrieve the delivery reports from the 

third-party authenticating device. See, e.g., ’144 patent, 

col. 6 ll. 38–41 (providing that “after authentication by the 

third party authenticator . . . at least one file authentication is received from the third party” (emphasis added)); 

id. col. 19 ll. 4–9 (“The receipt file is returned from the 

recipient to the sender directly or through a third party . . . 

The sender may designate whether confirmation is by 

direct return or through a third party . . . common to all 

users.” (emphasis added)). But the evidence does not 

support an inference that Motorola’s customers ever 

received the delivery reports.

IV provided expert testimony that the accused 

Motorola phones were capable of sending and receiving 

MMS messages, and that the sending phone could display

a confirmation that the MMS message was received.3 IV’s 

expert conceded, however, that all but one of the MMSCs 

discussed at trial had been rendered technologically 

incapable of transmitting delivery reports to the sending 

phone (i.e., to Motorola’s customers). With respect to these 

MMSCs, the expert testified that the delivery reports 

were generated and stored on the MMSCs themselves. 

But the mere fact that the reports were stored on the 

MMSCs does not show that Motorola’s customers could 

 

3 See J.A. 620 (“[I]f you look also at the first phone, 

it actually just told me that [the] message . . . had been 

received.”).
18 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

have received or, in fact, actually received delivery reports. Thus, with respect to the MMSCs that were incapable of transmitting or otherwise providing delivery 

reports to the sending phone, the benefits identified by 

the ’144 patent from receiving a delivery report never 

materialized. With respect to the final carrier (which 

could transmit delivery reports to the sending phone), IV’s 

evidence further demonstrated that by default, the accused Motorola phones were configured not to request 

delivery reports from the MMSCs. As a consequence, 

unless a customer affirmatively took steps to alter the 

default configuration of his or her phone, the benefit of 

confirming receipt could not have been realized. Here, IV 

did not produce evidence that any customers actually 

altered their phones to receive delivery reports. Moreover, 

there is no evidence in the record demonstrating that 

customers even knew that the delivery reports existed or 

could be obtained.4 

In the record below and at oral argument in this 

court, IV’s counsel asserted two additional theories for 

how Motorola’s customers indirectly benefitted from 

delivery reports generated by the MMSCs. First, IV’s 

counsel told the jury in opening argument that the delivery reports were used by the carriers to bill customers for 

sending MMS messages. See J.A. 578 (“That device, the 

[authentication] device, validates the delivery of the 

messages and can be used for billing.”). Second, IV’s 

counsel told this court at oral argument that the delivery 

reports could be used as an antifraud measure. See Oral 

Argument at 24:01, Intellectual Ventures I LLC v. 

Motorola Mobility LLC, No. 16-1795 (Fed. Cir. Mar. 7, 

2017). But IV has not pointed to any trial evidence relying 

 

4 This case does not involve a situation where a customer simply elects not to take advantage of a known and 

available functionality.
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 19

on either theory as a basis for inferring a customer benefit, and the specification of the ’144 patent provides no 

suggestion that the delivery reports are used in these 

manners. Thus, these theories of indirect benefit amount 

to mere speculation or attorney argument and do not 

provide substantial evidence supporting the jury’s verdict 

of direct infringement. Thus, judgment as a matter of law 

should have been granted that Motorola’s customers did 

not infringe claim 41. 

C 

IV’s brief notably does not address the patentee’s direct infringement theory that Motorola itself—as opposed 

to Motorola’s customers—directly infringed claim 41 by 

testing the accused phones on various carrier networks.

In fact, both in this court and before the district court, IV 

has never identified any benefit flowing to Motorola above 

and beyond that which would flow to its customers due to 

the manufacturer’s testing. See Intellectual Ventures, 176 

F. Supp. 3d at 423. Having rejected as unsupported by 

substantial evidence IV’s argument that Motorola’s customers benefitted from the delivery reports generated by 

the MMSCs, the same non-infringement finding is necessary as to Motorola itself.

In sum, IV failed to present substantial evidence that 

the parties accused of direct infringement in this case 

benefitted from the limitation of “generat[ing] a delivery

report” of the claimed system. As such, IV failed to prove 

a directly infringing “use” under § 271(a). And, because a 

finding of direct infringement is predicate to any finding 

of indirect infringement, none of the jury’s verdicts with 

respect to infringement of claim 41 of the ’144 of the 

patent is supported by substantial evidence. See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 

2111, 2117 (2014). Accordingly, Motorola was entitled to 

judgment as a matter of law regarding non-infringement 

of claim 41 of the ’144 patent.
20 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

III

We finally address Motorola’s argument that the district court erred in denying judgment as a matter of law 

with respect to claims 1, 10, 11, and 13 of the ’462 patent.

Motorola contends that it was entitled to judgment as a 

matter of law that the asserted claims were obvious over a 

combination of references, U.S. Patent No. 5,436,857 

(“Nelson”) and U.S. Patent No. 7,549,007 (“Smith”).5

The asserted claims of the ’462 patent are directed to 

a “portable processing device” comprising a “detachable 

handset unit” and a “portable docking display unit” that is 

“fully operable only when the detachable handset is 

docked thereto.” ’462 patent, col. 6 ll. 2–20. In other 

words, the device claimed by the ’462 patent is formed by 

docking a smartphone into a “shell” comprising a display 

and keyboard, where the overall computing power of the 

device resides in the smartphone. “When mated with [the] 

docking display unit, the detachable handset becomes the 

controller for the entire . . . device.” Id. col. 5 ll. 16–20 

When separated, the “detachable handset unit” functions 

independently with its own “video interface” (display) and 

“data input interface” (keyboard). Id. col. 6 ll. 14.

Nelson teaches a “module” and a “base unit,” where 

“the customary functional components of a [personal 

computer] are divided between the module and the base 

unit.” Nelson col. 2 ll. 22–24 (figure numbers omitted). In 

an embodiment of Nelson, the processing power of the 

personal computer is allocated to the module, while the 

display and keyboard are allocated to the base unit. See 

id. col. 2 ll. 24–50. In Nelson’s configuration, “[t]he module can be plugged into a base unit, and then removed to 

 

5 With respect to claim 10 only, Motorola relied on 

the combination of Nelson, Smith, with yet a third reference, U.S. Patent No. 5,798,733 (“Ethridge”).
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 21

relocate, store securely, or plug into a different base unit. 

But the module is not functional as a standalone unit.” 

Intellectual Ventures, 176 F. Supp. 3d at 437. Nelson does 

not disclose use of a cellular phone’s processing power to 

operate a computer.

Smith teaches a “portable computer having an interface for direct connection to a portable telephone,” such 

that when “[p]hysically and electrically connect[ed] . . . 

the portable telephone serves as the portable computer’s 

modem.” Smith, col. 11 ll. 48–67. But “[t]he telephone in 

Smith has no control over the portable computer and no 

way to present anything on the display of the portable 

computer.” Intellectual Ventures, 176 F. Supp. 3d at 437. 

This much of the prior art is largely undisputed. What 

the parties dispute is whether there was sufficient motivation to modify the “portable telephone” in Smith to 

control Nelson’s “base unit”—that is, whether “a person of 

ordinary skill in the art at the time of the ’462 patent 

would have been motivated to use Smith’s detachable 

handset with Nelson’s docking display unit.” Id. In this 

scenario, the “detachable handset unit” recited in the 

asserted claims would correspond to Smith’s “portable 

telephone,” while Nelson’s “base unit” would correspond 

to the “portable docking display unit.” 

Motorola’s expert testified that there was such motivation because Nelson “has only a single central processor 

. . . and as a consequence it is less expensive, it weighs 

less, and it consumes less power,” but “you can’t use the 

portable module to do anything unless it’s docked with 

something,” while with Smith, on the other hand, “you 

have laptop functionality and cellphone functionality, but 

you’re paying for two central processors, and that means 

you dissipate more power, the system overall is heavier, 

and it’s more expensive. So the combination of Nelson and 

Smith has all of these advantages without a shortcoming.” 

J.A. 1025. In opposition, IV’s expert testified that there 
22 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

was no motivation because—mirroring Motorola’s expert—there was “[t]he extra cost from duplicating resources, the keyboard [or] the display,” and that the 

combination would be “suboptimal.” J.A. 1043.

The jury apparently credited the testimony of IV’s expert over Motorola’s. And, in denying Motorola’s motion 

for judgment as a matter of law, the district court observed that the jury reasonably did so because Motorola’s 

expert “admitted he spent little time preparing his report, 

was not familiar with the accused products, and gave 

arguably conflicting and unclear testimony.” Intellectual 

Ventures, 176 F. Supp. 3d at 439; J.A. 1029. Thus, because substantial evidence supports the finding that there 

was no motivation to combine Nelson and Smith, the 

district court correctly denied Motorola’s motion with 

respect to invalidity of the ’462 patent.

CONCLUSION

For the reasons stated, we affirm the district court’s 

denial of Motorola’s motion for judgment as a matter of 

law with respect to invalidity of the asserted claims of 

’144 and ’462 patents, and reverse its denial with respect 

to infringement of the ’144 patent. Motorola did not 

challenge on appeal infringement of the ’462 patent. The 

case is remanded to the district court for further proceedings on the ’462 patent with respect to damages. 

AFFIRMED IN PART AND REVERSED IN PART

COSTS

Costs to neither party.
United States Court of Appeals 

for the Federal Circuit ______________________ 

INTELLECTUAL VENTURES I LLC, 

INTELLECTUAL VENTURES II LLC,

Plaintiffs-Appellees

v.

MOTOROLA MOBILITY LLC, FKA MOTOROLA 

MOBILITY, INC.,

Defendant-Appellant

______________________ 

2016-1795

______________________ 

Appeal from the United States District Court for the 

District of Delaware in No. 1:11-cv-00908-SLR-MPT, 

Judge Sue L. Robinson.

______________________ 

Newman, Circuit Judge, concurring-in-part, dissentingin-part. 

I agree with the holding of non-infringement of the 

’144 patent, and join the judgment of reversal of the 

district court’s judgment of liability with respect to that 

patent.1 I respectfully dissent from my colleagues’ sustaining the validity of the ’144 and ’462 patents, for I 

believe that the claims in suit would have been obvious to 

a person of ordinary skill in the field of the invention.

 

1 Intellectual Ventures I, LLC v. Motorola Mobility 

LLC, 176 F. Supp. 3d 405 (D. Del. 2016) (“Dist. Ct. Op.”). 
2 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

THE ’144 PATENT

A. Infringement of claim 41

I agree that infringement of claim 41 of the ’144 patent was not established, in general for the reasons that 

the majority explains. Thus I join the holding of noninfringement of claim 41, for I agree that substantial 

evidence did not support the jury’s verdict. I write separately, however, to clarify the holding of Centillion Data 

Systems, LLC v. Quest Communications International, 

Inc., 631 F.3d 1279 (Fed. Cir. 2011). 

The district court correctly stated: “Centillion did not 

hold that the infringer ‘benefit’ from every single limitation. Rather Centillion held that the user must ‘obtain 

benefit’ from the ‘system as a whole’ and its analysis 

of (and finding of) benefit was not on a limitation-bylimitation basis.” Dist. Ct. Op. at 422. My colleagues 

“disagree,” Maj. Op. 15, stating that:

Centillion and NTP held that to “‘use” something 

is to put it into service, which means to control 

and benefit from it. And Centillion explicitly added that, to use a claimed system, what must be 

“used” is each element. From those two propositions, it follows that, to use a system, a person 

must control (even if indirectly) and benefit from 

each claimed component.

Id. (citations and parenthetical omitted). 

With respect, my colleagues are incorrect. Centillion 

does not stand for the proposition that they expound; the 

district court’s statement of Centillion was not in error. 

Centillion did not establish a new requirement for infringement whereby a user must benefit from every 

element of the system. Centillion held that “[b]y causing 

the system as a whole to perform this processing and 

obtaining the benefit of the result, the customer has ‘used’ 

the system under § 271(a).” 631 F.3d at 1285.
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 3 

To infringe a claim, every element of the claim (or its 

equivalent) must be practiced; but the benefit a user 

receives flows from the claimed system as a whole. It is 

not a necessary element of proof of infringement, to 

require proof of benefit from each element and limitation 

of the claim. The district court correctly so recognized.

It is of course required that for infringement every element of the claim must be practiced. However, Centillion does not require a showing of individual benefit from 

every separate element that is included in a claim. See

Centillion, 631 F.3d at 1285 (“By causing the system as a 

whole to perform this processing and obtaining the benefit 

of the result, the customer has ‘used’ the system under 

§ 271(a).”).

This definition of “use” properly captures the scope of 

infringement for which Centillion stands. It cannot be 

that a person might be found liable for infringement when 

the last element of the claimed system does not accomplish the primary purpose of the invention, that is, sending a multimedia text to another. Under Centillion, “use” 

by a party is properly defined as occurring when “but for 

the customer’s actions, the entire system would never 

have been put into service,” and each claimed component 

is placed in service on the party’s behalf. Id.

Centillion conforms to precedent; the change imposed 

by my colleagues is unsupported by law. Infringement in 

this case is a simple determination of whether the 

Motorola system practices all of the elements of claim 41, 

not whether the user obtains a benefit from each of the 

elements of claim 41. The discussion of whether the user 

benefits from the system’s “generat[ing] a delivery report,” as claim 41 requires, is not the reason infringement 

is not present. The proper analysis is whether the system

is acting at the behest or control of Motorola if a delivery 

report is generated.
4 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

It is not disputed that all elements of the claim are

not used by or attributable to Motorola. There was not

substantial evidence that Motorola intended the generation of the delivery report to occur, nor was there substantial evidence Motorola received a benefit from the report’s 

generation. Thus I concur in the holding of noninfringement of claim 41, for it was not shown that 

Motorola’s “use” of the accused system practiced every 

element of claim 41. 

B. Validity of claim 41

At the trial Motorola argued that claim 41 was invalid 

for obviousness in view of the Overend reference taken 

with the Micali reference. 

The panel majority states that substantial evidence

supports the finding “that Overend’s ‘Receive Mode’ did 

not satisfy the ‘irrespective of user action’ limitation of 

claim 41.” Maj. Op. 11. However, the district court 

correctly construed the claims to require that a file is 

received “irrespective of user action,” as long as “the user 

need not log-in to a server and download the selected file.” 

J.A. 379. As the majority notes, “Motorola’s expert testified that the ‘Receive Mode’ of Overend’s software allowed 

a user to receive files without having to ‘log in’ or ‘download’ files.” Maj. Op. 11. There is no indication that IV’s 

expert testified to the contrary, although IV’s expert 

offered the opinion that “‘Receive Mode’ was not equivalent to receiving files ‘irrespective of user action.’” Id.

IV’s argument regarding “Receive Mode” is flawed, for 

claim 41 does not require the receipt of files to be instantaneous or as they are sent; nor does the claim exclude

queuing files in the network for later delivery. The claim

limits precisely what the district court construed the 

claim to limit: a “user need not log-in to a server and 

download the selected file.” It is this user action that is 

not permitted to be read into the claim. Allowing the 

device to receive any queued or subsequent real-time 
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 5 

messages is precisely within the scope of receiving files 

“irrespective of user action.”

The Overend reference meets the “irrespective of user 

action” limitation. Thus all of the elements of claim 41 

are shown in Overend, with the exception of the authenticating step. But Micali teaches the authenticating step, 

describing “an electronic communications method between 

a first and second party, with assistance from at least a 

trusted party . . . in which the first party has a message 

for the second party.” Micali, col. 3 ll. 54–58.

Micali further teaches embodiments in which the second party sends a “receipt” to the trusted party, and 

where the trusted party sends a receipt to the first party. 

Id. col. 7 ll. 4–16; col. 12 ll. 5–32. Based on these teachings, Motorola’s expert testified that Micali’s trusted 

party and exchanging of receipts satisfied the “authenticating device” limitations of claim 41. The combination of 

Overend and Micali shows all of the elements of claim. A 

person of skill in the field of the invention would have 

found the combination obvious.

Although my colleagues state that “the jury was free 

to disbelieve [Motorola’s] expert and credit [IV’s] expert,” 

Maj. Op. at 12 (alterations in original), the court’s obligation is to assure that questions of law are correctly decided, and that for factual disputes, substantial evidence on 

the record as a whole supports the legal conclusion. The 

question of law is whether a person of ordinary skill in 

this art would deem it obvious to combine an authenticating step as in Micali, with the process of Overend. See 35 

U.S.C. § 103 (whether “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 to which said subject 

matter pertains.”).
6 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

Obviousness is determined based on the teachings in 

the prior art, and whether it would have been obvious to 

select and combine these teachings. See In re Merck & 

Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Nonobviousness cannot be established by attacking references 

individually where the rejection is based upon the teachings of a combination of references.”); In re Mouttet, 686 

F.3d 1322, 1333 (Fed. Cir. 2012) (“[T]he test for obviousness is what the combined teachings of the references 

would have suggested to those having ordinary skill in the 

art.”). 

Overend shows “transmit[ting] to an authenticating 

device of the communications network, the delivery confirmation message.” ’144 patent, col. 46 ll. 1–2 (claim 41); 

see Overend, col. 5 ll. 42–47. Micali shows the “authenticating device of the communications network.” ’144 

patent, col. 46 ll. 1–2 (claim 41); see Micali, col. 3 ll. 54–58 

(providing for “an electronic communications method 

between a first and second party, with assistance from at 

least a trusted party . . . in which the first party has a 

message for the second party”); see also Smith crossexamination, J.A. 838, 1180:17–20 (“Q. And you agree 

that the Micali reference shows a messaging system 

where the desire is to authenticate messages between 

parties that maybe don’t trust each other; right? A. Yes.”).

Overend similarly teaches “wherein the authenticating device is configured to: generate a delivery report that 

indicates a delivery event and a time of the delivery 

event,” with Micali teaching the authenticating device in 

the claim element. ’144 patent, col. 46 ll. 13–16; see 

Overend, col. 5 ll. 42–47; Micali, col. 3 ll. 54–58; see also

J.A. 1219, Fig. 7b (Overend teaching a “transfer log” with 

date/time stamps of transmission and receipt of a file); 

J.A. 741, 796:9–797:4 (Overend also teaching a “delivery 

report[,] the delivery event[,] and the time of the delivery 

event”). The testimony of Dr. Martin Rinard, that “the 

only limitation that Overend does not disclose is the 
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 7 

third-party authenticating device,” and that “Micali 

discloses the third-party authenticating device missing 

from Overend” remains undisputed. Dist. Ct. Op. at 429 

(characterizing Rinard’s testimony).

Applying law and precedent, the combination of Overend and Micali renders claim 41 obvious. First, “when a 

patent claims a structure already known in the prior art 

that is altered by the mere substitution of one element for 

another known in the field, the combination must do more 

than yield a predictable result.” KSR Int’l Co. v. Teleflex 

Inc., 550 U.S. 398, 416 (2007). And second, “[w]hen a 

patent simply arranges old elements with each performing the same function it had been known to perform and 

yields no more than one would expect from such an arrangement, the combination is obvious.” Id. at 417 (internal quotation marks and citation omitted). The Court 

explained that “a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id.

In light of the evidence, no reasonable jury could have 

found claim 41 to be nonobvious. There is not substantial 

evidence that a receipt confirming delivery is not a delivery confirmation message as in the prior art, especially 

given the express teachings of Micali’s authenticating 

device. A “patent for a combination which only unites old 

elements with no change in their respective functions . . . obviously withdraws what already is known into 

the field of its monopoly and diminishes the resources 

available to skillful men.” Id. at 415–16 (quoting Great 

Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 

147, 152-153 (1950)).

Thus I must, respectfully, dissent from my colleagues’ 

ruling sustaining the validity of claim 41. 
8 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

THE ’462 PATENT

On the evidence presented, no reasonable jury should 

have found the claimed subject matter of the ’462 patent 

nonobvious. The claims are for a portable telephone 

handset combined with a docking station, for which the 

computer functions are provided by the handset. My 

colleagues agree that the issue is “whether a person of 

ordinary skill in the art at the time of the ’462 patent 

would have been motivated to use Smith’s detachable 

handset with Nelson’s docking display unit.” Maj. Op. 21. 

This motivation is provided in the cited references themselves.

The ’462 patent explains that its inventors did not invent portable telephone handsets, did not invent computerized portable telephone handsets, and did not invent 

docking stations for computer-bearing or computerdirected modules. See ’462 patent, col. 1 l. 40–col. 2 l. 8. 

The ’462 patent further states that “components used in 

device 10 can be similar to those employed by traditional 

computing devices, communication devices, and entertainment devices.” See ’462 patent, col. 5 ll. 38–40. 

The combination of a portable telephone with a dock 

is shown by Smith, and the combination of a dock with a 

computer module is shown by Nelson. The combination 

that is described and claimed in the ’462 patent is a 

portable telephone having a computer, and when docked, 

the docking station uses the telephone’s computer. Nelson shows a portable computer, and a docking station that 

uses the PC’s computer. Smith shows a portable telephone that docks with a docking station that provides the 

computer module. The ’462 patent shows a portable 

telephone having a computer, that docks with a docking 

station that uses the telephone’s computer.

As computer-fitted telephones became available, it 

was obvious to combine that telephone with the dock of 

Nelson, recognizing Smith’s combination of telephone and 
INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC 9 

dock. Nelson discusses the “certain advantages over the 

other” of portable and desktop PCs, “past” “attempts to 

combine the functions” of both, and states the “need for a

system which provides the advantages of both portable 

PCs and desktop PCs.” Col. 1 ll. 5–35. Smith remarks 

that “[t]he demands of modern life require . . . people to 

carry at least one electronic device to perform their daily 

work.” Col. 2 ll. 15–18. Smith refers to the “dual problems of mobility and portability associated with using a 

portable telephone in combination with a portable computer.” Abstract.

The ’462 patent, benefitting from the discovery by 

others of a telephone that is also a portable computer, 

simply combines this device with a docking station, as 

shown by Nelson for docking a computer module. The 

’462 combination of a portable telephone/computer with a 

docking station is the obvious combination of known 

devices for their known purposes. See, e.g., J.A. 1025 

(Motorola’s expert discussing the advantages and disadvantages of Nelson and Smith, individually, and concluding that “the combination of Nelson and Smith has all of 

these advantages without a shortcoming”).

The majority observes that the parties’ expert witnesses offered conflicting opinions as to what was obvious, 

and the majority states that “[t]he jury apparently credited the testimony of IV’s expert over Motorola’s.” Maj. Op. 

22. Perhaps so. However, the issue is not credibility of 

witnesses; the issue is whether substantial evidence

supports the jury’s decision, taking into account the 

entirety of the record, and evidence that both supports 

and detracts from the decision. Universal Camera Corp. 

v. NLRB, 340 U.S. 474, 487–88 (1951). 

The question of obviousness is “whether a person of 

ordinary skill in the art at the time of the ’462 patent 

would have been motivated to use Smith’s detachable 

handset with Nelson’s docking display unit.” Maj. Op. 21
10 INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC

(internal quotation marks omitted). This ultimate inquiry 

is a question of law, and requires objective determination.

The record does not contain substantial evidence supporting the majority's conclusion that it would not have 

been obvious to use the known computerized handset in

the known docking station. The combination of the Nelson and Smith references shows every element of the 

claims at issue in the ’462 patent, used in the same manner, for the same purpose, as in the ’462 patent. See In re 

Mouttet, 686 F.3d at 1333 (“[T]he test for obviousness is 

what the combined teachings of the references would have 

suggested to those having ordinary skill in the art.”). The 

motivation to combine the known portable computerized 

telephone with the known docking station is provided by 

the references themselves, as discussed above. The 

court’s contrary conclusion is not supported by evidence.

Thus I respectfully dissent from the ruling that the 

’462 patent is not invalid on the ground of obviousness.