# United States **Court of A**  **p peals**  **for the Federal Circuit**

______________________ INTELLECTUAL VENTURES I LLC, INTELLECTUAL VENTURE S 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 1 3 , 2017

______________________

M ARC B ELLOLI , Feinberg Day Alberti & Thompson LLP, Menlo Park, CA, a r gued for plaintiffs

- appellees. Also

repr e sented by D AVID A LBERTI , E LIZABETH D AY , I AN N EVILLE F EINBERG , S AL L IM

.

D AVID A. N ELSON , Quinn Emanuel Urquhart & Sull ivan, LLP, Chicago, IL, argued for defendant

- appellant. Also represented by D AVID A NDREW P ERLSON , San Fra ncisco, CA; J OSHUA L. S OHN , Was h ington, DC; D AVID C LAY H OLLOWAY , M ITCHELL G. S TOCKWELL , Kilpatrick Tow n-2 INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C

send & Stoc kton LLP, Atlanta, GA; S TEVEN M OORE , San Francisco, CA.

______________________
Before N EWMAN , D YK , and T ARANTO , Circuit Judges.

Opinion for the court filed by Circuit Judge D YK

. Opinion concurring

- in

- part and d issenting

- in

- part filed by Circuit Judge N EWMAN

. D YK , Circuit Judge

. Intellectual Ventures I LLC and Intellectual Ve n tures II LLC (collectively “ IV ”) brought suit against Motorola Mobility LLC (“Motorola”) in the United States District Court for the District of Delaware al leging infringement of c laim 41 of U.S. Patent No. 7,810,144 (“the ’144 p atent”) 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 inv a lid . T he d istrict court denied Motorola’s motion fo r judg ment as a matter of law

. Motorola appeals

. We hold that substantial evidence supports the j u ry’s verdict regarding the validity of claim 41 of the ’144 patent and claims 1, 10, 11, and 13 of the ’462 pa tent
, but conclude that substantial evidence does not support the jury’s verdict of direct infringement of claim 41 of th e ’ 144 patent

. Since a finding of direct infringement is a pred icate to any finding of indirect infringement, we reverse all of the infringem ent fin d ings with respect to the ’144 patent. We therefore affirm the district court’s judg ment in part, reverse in part, and remand for further procee dings on the a s serted claims of the ’462 patent

. B ACKGROUND

I
The ’144 patent was issued on October 5, 2010, from a series of continuing applications first filed in 1997. SeeINTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 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 Di rect Transfer Between Com puters” 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 comp uting devices.” Id. col. 2 ll. 4

– 7.

Assert ed c laim 41 of the ’144 patent recites :

41. A communications device, comprising:
a processor; and
a memory that stores at least one program

us a ble to control the communications d evice,

wherein the communications device is co nfi g ured to:
display a collecti on of file identifiers, wherein each file identifier represents a selectable file;

receive a user selection of at least one file ident i fier representing a file selected to be transferred to a second device;
display a collection of destinations ident ifiers, wherein each destination identifier represents a remote device having a nu mbered destination address on a circuit switched or packet switched network;

receive a user selection of at least one de stin a tion identifier as selection of the se cond device; display a data entry field in which a text

me s sage can be entered;4 INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C

receiving the text message;
encapsulate the text message with the s elected file into a single combined file;
generate a unique transaction identifier that identifies a transfer of the singl e combined file; and
send the single combined file to the second de vice at its numbered destination a ddress, the second device being configured
to: receive the single combined file irrespe ctive of user action at the second device;
generate a delivery confi rmation message

co n firming reception of the single co mbined file;
transmit to an authenticating device of the communications network, the delivery confi r mation message; provide an alert indicating reception of the si n gle combined file;
display an identific ation of the commun ications device in relation to at least one of the selected file or the associated text file, wherein the ide n tification includes at least one of a communic a tions address of the communications device, a name of the communications device, or a username a ssociated with the communications device; and display at least a portion of content of the

se lected file or the text message, wherein the a u thenticating device is configured to:INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 5

generate a delivery report that indicates a de livery 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, Co mmunication and Entertainment Device with Ce n tral Processor Carried in a Detachable Handset.” In general terms, the invention of the ’ 462 patent is a laptop co mputer 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 contro lling the operation of said first circuits, and said first circuits including at least a video interface, a

co m munication interface and a data input inte rfa ce; a portable docking display unit dimensioned su bstantially larger than said detachable handset unit, said portable docking display unit including a first display and a plurality of second circuits, said pl u rality of second circuits not including a
centr al pr o cessor and including a video interface, and a data input interface, and wherein said ce ntral 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 VENTURE S I LLC v. MOTOROLA MOBILITY LL C

II IV filed suit for infringement of the ’144 and ’462 p atents in the District of Delaware. Motorola defended on the grounds of no infringement and invalidity. The di strict court bifurcated the determination of willful i nfringement and calculation of damages for separate trial. See Scheduling Order, Intellectual Ventures I LLC v. Motorola Mobility LLC , No. 1:11

- cv -0 0908 -SLR- MPT (D. Del. Jan. 13, 2012), ECF No. 16.

The district court conducted a first jury trial with r espect to claims 1, 8, 10, 11, and 13 of the ’462 pate nt 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 la ck of written description.
The parties retried infringement and validity of the ’462 patent in yet a third trial , this time with respect to claim s 1, 10, 11, and 13

. The jury found that Motorola had in fringed the asserted claims and that Motorola had failed to prove the asserted claims inv a lid as obvious. Motorola moved for judgment as a matter of law in b oth the second and third trials, challenging the jury verdict s of infringement and no invalidity. The district court denied Motorola’s motions

. See I ntellectual Ve n tures I, LLC v. Motorola Mobility LLC

, 176 F. Supp. 3d 405, 444 (D. Del. 2016). Motorola appeals

. We have jurisdic tion under 28 U.S.C. § 129 2(c )( 2 ).INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 7

D ISCUSSION
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 den ying judgment as a matter of law tha t claim 41 of the ’144 patent is invalid for lack of written descri ption. 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 ev i dence 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 constru ction based solely on intrinsic evidence , however, it is a legal question subject t o de novo review. See , e.g. , Atl. Research Mktg. Sys., Inc. v. Troy , 659 F.3d 1345, 13 53

– 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 inter vening comp u ting device . Despite this exclusion, Motorola argues that the scope of claim 41 covers embodiments that nevertheless use such long

- term or permanent sto r age , in violation of the written description requir e ment

. The words “long

- term” and “perma nent” do not a p pear in the ’144 patent. Instead, the specification of the ’ 144 patent describes that “electronic transfer mechanisms” over “interconnected networks of co m puters and teleco mmunications equipment .

. . gene r ally employ intermed iary computers in the form of e

- mail serve rs, FTP servers, or Web servers.” ’144 p a tent, col. 2 l. 31

– col. 3 l. 4 . The specification further explains that “[t] hese intermediary8 INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C

computers ” come with several drawbacks because they : (1) “ reduce the relative security and timeliness of the transfers e f fected because neither the sender nor the recipient controls the intermediary server”; (2) “ require signif i cant administration and usually require login

proc e dures and passwords in an attempt to overcome security issues, albei t at the expense of user conve nience and system complexity”; and (3) “ represent co n centrated points of possible fai lure, as well as communication ‘ bo ttlenecks’ 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 .

. . inte r connected [personal computers] .

. . and without i n termediate sto rage of files on an int ervening computer.” ’144 patent, col. 10 l. 63

– col. 11 l. 1

. Motorola principally relies on this portion of the spec i fication to argue that the invention of the ’144 patent does not employ “l ong

- term” or “perm anent storage ” because it excludes intermediate stor age, and that, consequently, claim 41 lacks written description

su p port because the claim nonetheless covers embod iments 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 co nstruction, “claim 41 does not cover file tran s fers that involve long

- term or perma nent storage.” Intellectual Ventures

, 176 F. Supp. 3d at 426. The relevant limitations of cl aim 41 recite “send[ing] the single combined file to the second device” a nd “r e ceiv[ing] the single combined file

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

– 22. This language neither plainly includes nor plainly e xc ludes long

- term or permanen t storage . T he 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.3dINTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 9

1303 , 1315 (Fed. Cir. 2005) (en banc))

. The portions of the specification that Motorola relies on, excerpted above, demonstrate that storing files “inde f initely” on an inte rvening computer is not part of the claimed invention. Paradoxically, Motorola contends that these portions of the specifica tion exclude long

- term or permanent storage from the scope of the i n vention, while simultaneously arguing that claim 41 shoul d be read to cover such sto rage . The proper re sult is not that claim 41 fails for lack of written d e scription 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 contr ary to the specification, and then to hold the claims invalid be cause they are contrary to the spec i fication .”). Thus , the “send[ing]” and “receiv[ing]” limitations of claim 41 should be construed to exclude long

- term or per manent storage

. Motorola argues that other claims of the ’144 p a tent recite limitations regarding storage of the file being transferred, w hich

— according to Motorola

— suggests that claim 41’s silence broadens the claim to cover all forms of storage , including long

- term or permanent storag e

. 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 comm u nications network, to the second device .” ’ 144 patent, col. 41 l. 6 6– 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 perma nent storage. We also disagree with Motorola that the doctrine of claim differenti a tio n mil itates in Motorola’s favor

, because that “ do c trine

. . . does
not serve to broaden claims beyond their meaning in light10 INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C

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

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

. 1

S ince the asserted claim do es not cover long

- term or permanent storage, the failure of the specification to describe such an embodiment presents no written descri ption 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 pa tent.

II

Motorola next argues that it was entitled to jud g ment as a matter of law that claim 41 of the ’144 p a tent 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 .

. . co nfigured to .

. . receive the single combined file irr e spective

o f user action at the second device.” ’144 p a tent, co l. 45 ll.

1 Motorola further argues that IV’s expert test i fied that claim 41 covers long

- term or permanent storage. Assuming that this characterization of the expert’s test imony 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 testi mony 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 th e wri t ten record of the patent.” (i nternal qu otation marks omitted)).INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 11

20

– 21

. Before the jury, Motorola argued that claim 41 would have been obvious over a comb i nation of Overend and Micali . Motorola’s obviousness case depended in part on its argument that the “irr e spective of user action” limitation was taught by Overend’s disclosure of a “secure file transfer inte r face program” having a “Receive Mode” capable of receiving files “without any intervention by [the u s er].” Overend col. 20 ll. 67

– 68. The parties did no t seek a construction of the “irrespective of user action” lim i tation from the district court, and neither party ob jected to the district court’s instruc tion to the jury that the limitation was to be given its “ordinary mea n ing.” 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 disposit ive 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 act ually 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 que stion, stating that “ [t]he ‘Receive’ mode di s closed in Ove rend 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

. B ased on our review of the trial record, we conclude that there was substantial ev i dence 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 “R eceive Mode” of Overend’s software allowed a user to receive files without having to “log in” or “download” files. S ee 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. ”). But12 INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C

IV’s expert explained that this fun c tionality of “Re ceive Mode” was not equivalent to r e ceiving 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 .

. . re ceive mode .

. . will you be able to receive messages. If you select any of the other menu options . . . you will not be in r eceive 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 messa ges. 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 sof t ware for other purposes. See Overend, col. 39 ll. 14

– 15 (“To be able to receive documents, LIX must be in Receive Mode.”). Thus, f aced with competing expert testimony on the question of whether Overend’s sof t ware satisfied the “irrespective of user action” limit a tion

, “the jury was free to disbelieve [Motorola’s] expert and credit [IV’s] expert

. ” i4i Ltd. P’ship v. M i crosoft Corp. , 598 F.3d 831, 850 (Fed. Cir. 2010); see also Edwards Lifesciences AG v. CoreVal ve, 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 credibi lity of witnesses, or substitute its version of the facts for the jury’ s version” ). T he testimony of IV’s expert and the teachings of Overend itself constituted substantial ev idence supporting the jury’s conclusion that the prior art did not “receive . .

. file s irrespec tive of user action.”
Thus, because substantial evidence supports the j ury’s verdict finding claim 41 of the ’144 patent no nobvious,INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 13

the district court correctly denied Motorola judgment as a matter of law. 2

III
Having concluded that substantial evidence su p ports 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 i n fringement 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 “secon d 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 t hat 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 ne t-

2 In light of our disposition, we need not address whether substantial evidence supported IV’s altern a tive argument to the jury that Overend and Micali fai led to teach or render obvious “an authenticating device .

. . configured t o . . . generate a delivery report that indicates a delivery event and a time of the deli v ery 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 VENTURE S I LLC v. MOTOROLA MOBILITY LL C

works.” Id. at 423. Under thes e theories, when accused Motorola phones were used to send and r e ceive text

- plus

photo 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 p hones 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 a c cused direct i nfringers “used” the “ au thenticating device configured to

. . . generate a delivery report .”

A
We first address the applicable standard under Centi llion Data Systems, LLC v. Qwest Communic a tions Inte rnational, Inc. , 631 F.3d 1279 (Fed. Cir. 2011)

. Claim 41 is written to claim a “device confi g ured” 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 “sy stems co m prising” certain elements, as the governing one in this case, and for that reason we limit our consider ation 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 a d dres sing the question of “where” an infringing use of a claimed system occurs , we held that “ [t] he use of a claime d 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)

. Subs equently

, in Centillion , we applied NTP ’s situs -ofinfringement holding to resolve infringement of “ system comprising” claim s where components of the claimed system were “in the po s session of more than one actor.”INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 15

631 F.3d at 1279

. We concluded that “to ‘use’ a system for purposes of i n fringement, a party must put the invention into se r vice, i.e.

, control the system as a whole and obtain benefit from it. ” Id. at 1284. Thus, under NTP and Centi llion , 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 d e rived from

any claimed component of the claimed system would suffice to demons trate 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 e xplicitly 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 sy s tem 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 ind i rectly ) and benefi t from each claimed component.

NTP and Centillion both found control of and ben e fit from every element on their particular facts. In NTP

, customers of the accused infringer, by exchan g ing me ssages over the allegedly infringing system, controlled and benefitted from the claim

- required relay equipment at16 INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C

issue, which was part of what made the message e xchanges work. See NTP

, 418 F.3d at 1317. In Centillion

, the customers found to be d i rect infringers controlled and benefitted from back

- end processing equipment over which they exercised no physical control by requesting service and reques t ing particular reports, and because their requests produced response from the back

- end equipment on a “one request/one response basis. Centi llion , 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 demonstr ate that the direct infringer obtained “benefit” from each and ev e ry element of the claim ed system. See Centillion , 631 F.3d at 1284. In addition, the direct or indirect co n trol required “is the ability to place the system as a whole into service.” Id.

B

Under Centillion

, t he critical question here is whether there was substantial evidence that Motorola’s customers obtained a “benefit” from the generation of delivery r eports

. Neither of IV’s direct infringement theories pu rported 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 r e port.” Instead, IV relied on t estimony and evidence that the delivery reports were generated by Multim e dia Messaging Service Centers (“MMSC”) mai ntained or operated by the customers’ wireless service carriers when the customers used the accused phones

. IV’s main argument is that Centillion does not r e quire that Motorola’s cust omer benefit from the MMSCs’ gene ration of delivery reports. We have r e jected that reading of Centillion

. But IV also asserts , almost in passing, that Motorola’s customers directly benefitted from the delivery reports because “the u ser sending the MMS does benefitINTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 17

. . . from the MMSC authenticating the transfer with a delivery report noting the date and time when it is deli vered.” Here, IV’s sole record citation contains just one sentence about the delivery report, and that sentence says nothing about benef it s flowing from the delivery r e ports to the customer sending the message. See J.A. 618.

In t he ’144 patent , the only benefits identified as flo wing from the delivery reports rest on the sending device’s ability to receive or retrieve the delivery r e ports 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 authentic ation is received from the third party” (emphasis added) ); id. col . 19 ll. 4

– 9 (“The r e ceipt 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.” (e m phasis added) ). B ut 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 recei v ing MMS messages, and that the sending phone could d isplay 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 re n dered technologically incapable of transmitting deli v ery reports to the sending phone ( i.e.

, to Motorola’s customers) . With respect to these MMSCs, the expert testified that the delivery report s

were generated and stored on the MMSC s themselves. But t he 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 VENTURE S I LLC v. MOTOROLA MOBILITY LL C

have received or

, in fact

, actually received delivery r eports

. Thus, with respect to the MMSCs that were inc apable 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 a ccused Motorola phones were configured not to request delivery reports from the MMSC s . As a co nsequence, 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 customer s 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

cour t
, IV ’s counsel as serted 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 deli very reports were used by the carriers to b ill cu s tomers for sending MMS messages. See J.A. 578 (“That device, the [authentication] device, validates the delivery of the messages and can be used for bil l ing.”). Second , IV ’s counsel told this court at oral a r gument that the delivery reports could be used as an antifraud measure. See Oral Argument at 24:01, Inte l lectual Ventures I LLC v. Motorola Mobility LLC , No. 16

- 1795 (Fed. Cir. Mar. 7, 2017). But IV has not poin t ed to any trial evidence relying

4 This case does not involve a situation where a cu stomer simply elects not to take advantage of a known and available functionality.INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 19

on either theory as a basis for inferring a customer benefit, and the specif i cation 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 argu ment 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 custo m ers did not infringe claim 41.

C

IV’ s brief notably does not address the patentee’s d irect infringement theory that Motorola itself

— as opposed to Motorola’s customers

— directly infringed claim 41 by testing the accused phones on various carrier net works. In fact, both in this court and before the district court, IV has never identified any benefit flowing to Motorola abo ve 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 cu stomers benefitted from the de livery repo rts generated by the MMSCs, the same non

- infringement finding is nece ssary 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 w ith respect to infring e ment of claim 41 of the ’144 of the patent is supported by substantial evidence. See Lim elight 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 VENTURE S I LLC v. MOTOROLA MOBILITY LL C

III We finally address Motorola’s argument that the di strict court erred in denying judgment as a ma tter 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 “d e tachable 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” co m prising a displa y and keyboard, where the overall computing power of the device resides in the smartphone. “When mated with [the] docking display unit, the detachable handset become s 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 “ ba se unit,” where “the customary functional components of a [personal computer] are divided between the module an d 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 mo dule 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 refe rence, U.S. Patent No . 5,798,733 (“Ethridge”).INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 21

relocate, store secur e ly, or plug into a differe nt base unit. But the module is not functional as a standalone unit.” Intellectual Ve n tures , 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 i nte rface for direct connection to a portable telephone,” such that when “[p]hysically and electrically co n nect[ed] .

. . the portable telephone serves as the por t able computer’s modem.” Smith , col. 11 ll. 48

– 67

. But “ [t] he telephone in Smith has no control over the por t able computer and no way to present anything on the display of the portable computer.” Intellectual Ve n tures , 176 F. Supp. 3d at 437

. This much of the prior art is largely undisputed. What the parties dispu te is whether there was suff i cient mot ivation to modify the “portable telephone” in Smith to control Nelson’s “base unit”

— that is

, whet h er “a person of ordinary skill in the art at the time of the ’462 patent would have been motivated to use Smith’s detach able 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 disp lay unit.”
Motorola’s expert testified that there was such mot ivation because Nelson “has only a single central processor

. . . and as a consequence it is less expe n sive, it weighs less, and it consumes less power,” but “you can’t use the portable module to do anything unless it’s docked with

some thing,” 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 there22 INTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C

was no motivation because

— mirroring Motorola’s e xpert

— there was “[t]he extra cost from duplicating r esources, the keyboard [or] the display,” and that the combination would be “suboptimal.” J.A. 1043.

The jury apparently credited the testimony of IV’s e xpert over Motorola’s

. And, in denying Motorola’s motion for judgment as a matter of law, the district court o bserved that the jury reasonably did so because Motorola’s expert “ admitted he spent little time pr e paring his report, was not familiar with the accused products, and gave arguably conflicting and unclear testimony .” Int ellectual Ventures , 176 F. Supp. 3d at 439; J.A. 1029. Thus, b ecause substantial evidence supports the finding that there was no motivation to com bine Nelson and Smith , the district court correctly denied Motorola’s motion with respect to invalidity of the ’462 patent.

C ONCLUSION 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 patent s , 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 procee dings on the ’462 patent with respect to damages

. AFFIRMED IN PART AND REVERSED IN PART

C OS TS Costs to neither party.

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ INTELLECTUAL VENTURES I LLC, INTELLECTUAL VENTURE S 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, dissenting

in

- 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 patent s , for I believe that the claims in suit would have been obvious to a person of ordinary skill in the field of the invent i on.

1 Intellectual Ventures I, LLC v. Motorola Mobility LLC

, 176 F. Supp. 3d 405 (D. Del. 2016) (“Dist . Ct

. Op. ”)

.2 INTELLECT UAL VENTURES I LLC v. MOTOROLA MOBILITY LL C

T HE ’ 144 P ATENT A. Infringement of claim 41
I agree that i nfringement of claim 41 of the ’ 144 p atent was not established

, in general for the reasons that the majority explains. Thus I join the holding of non

infringement of claim 41, for I agree that substantial evidence did n ot suppor t the jury ’ s verdict. I write sep arately, 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 limit ation. Rather Centillion held that the user must ‘ obtain benefit’ from the ‘ system as a whole ’ and its analy sis of (and finding of) benefit was not on a limitation

- by

limitation basis. ” Dis t. Ct. O p. at 422

. My co lleagues

“ disagree ,” Maj. O p. 15
, stat ing 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 ad ded that, to use a claimed system, what must be

“ used ” is each element. From those two propos itions, 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 d id not establish a new requirement for i nfringe ment 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 VENTURE S I LLC v. MOTOROLA MOBILITY LL C 3

T o infringe a claim, every element of the c laim (or its equivalent) must be practiced; but the benefit a user receives flows from the claimed system as a whole. It is

n ot a necessary element of proof of infringement, to require proof of benefit from each element and limitation of the claim. The d istrict court correctly so recognized.

It is of cour se required that for infringement every e lement of the claim must be practiced. However, Centi llion does not require a showing of individual benefit from

every separate element that is included in a claim

. S ee 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 in fringement 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 acco mplish the primary purpose of the invention, that is, sen ding a multimedia text to another. U nder 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 un supported by law. I nfringement 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 eac h of the elements of claim 41. The discussion of whether the user benefits from the system ’s “ generat[ing] a delivery r eport ,” 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 INTELLECT UAL VENTURES I LLC v. MOTOROLA MOBILITY LL C

It is not disputed that all elements of the claim are not used by or attributable to Motorola. There was not

s ubstantial evidence that Motorola intended the gener ation of the delivery report to occur, nor was there substa ntial evidence Motorola received a benefit from the report ’ s generation. Thus I concur in the holding of non

infringement of claim 41 , for it was not shown that Motorola’ s “ use ” of the accused syst em practice d every element of claim 4 1.

B . Validity of claim 41

A t the trial Motorola argued that c laim 41 was invalid for obvious ness in view of the Overend reference taken with the Micali reference.

T he 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, t he 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 test ified that the ‘ Receive Mode ’ of Overend ’ s software allo wed a user to receive files without having to ‘l og in ’ or ‘ dow nload’ 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 equiv alent to receiving files ‘irrespective of user action

. ’” I d.

IV’ s argu ment regarding “ Receive M ode” is flawed, for claim 41 do es not require the receipt of files to be insta ntaneous or as they are sent ; nor do es the claim exclude queuing files in the network for later delivery. The claim limit s 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 th is user action that is not permitted to be read into the claim. Allowing the device to receive any queued or subsequent real

- timeINTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 5

messages is precisely within the scope of receiving files “irrespective of user action.”

The Overend reference meets the “irrespective of user action” limitation. T hus all of the elements of claim 41 are shown in Overend, with the except ion of the authent icating 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 se cond 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 teac hings, Motorola’ s expert testified that Micali ’ s trusted party and exchanging of receipts satisfied the “ authent icating device ” limitations of claim 41. The combination of Over end 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 1 2 (alterations in original)

, the court ’s oblig atio n is to assure that questions of law are corr e ctly deci ded, and that for factual disputes, substantial evidence on the re cord as a whole supports the legal conclusion. The question of law is whether a person of ordinary skill in th is art would de em it obvious to combine an authentica ting step as in Micali, with the process of Overend. See 35 U.S.C. § 103 ( whether “ the differences between the su bject matter sought to be patented and the prior art are such that the subject matter as a whole would h ave 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 INTELLECT UAL VENTURES I LLC v. MOTOROLA MOBILITY LL C

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 teac hings of a combination of references. ” ); In re Mouttet , 686 F.3d 1322, 1333 (Fed. Cir. 2012) ( “ [T]he test for obviou sness 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 co nfirmation message .” ’144 patent, col. 46 ll. 1

– 2 (claim 41);

see Overend, c ol. 5 ll. 42

– 47

. Micali shows the “ authent icating device of the communications net work. ” ’144 patent, col. 46 ll. 1

– 2 (claim 41) ; s ee 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 f or the second party ” ); see also Smith cross

examination, 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. Ye s.”).
Overend similarly teaches “ wherein the authentica ting 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 pa tent, 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 teach ing a “ deliv ery report [,] the delivery event [,] and the time of the delivery event” ). T he testimony of Dr. Martin Rinard, that “ the only limitation that Overend does not disclose is theINTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 7

third

- party authenticating device ,” and that “ Micali discloses the third

- par ty authenticating device missing from Overend ” remains undisputed. Dist. Ct. Op. at 429 (characterizing Rinard ’ s testimony).
Applying law and precedent, the combination of Ove rend and Micali renders c laim 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 perfor ming the same function it had been known to perform and yields no more than one would expect from such an a rrangement, the combination is obvious.” Id. at 417 (i nternal quotation marks and citation omitted). The Court explained that “a court must ask whether the improv ement is more than the predictable use of prior art el ements according to their established functions.” Id. In light of the evidence, no reasonable jury c ould have found c laim 41 to be nonobvious. There is not substantial evidence that a receipt confirming delivery is not a deli very confirmation message as in the prior art, especially given the express teachings of Micali ’ s authenticating device. A “ patent for a combinat ion which only unites old elements with no change in their respective fun ctions

. . . 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 INTELLECT UAL VENTURES I LLC v. MOTOROLA MOBILITY LL C

T HE ’ 462 P ATENT
On the evidence presented, no reasonable jury should have found the cla imed subject matter of the ’462 patent

non obvious. 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

o rdinary 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 the mselves.

The ’ 462 patent explains that its inventors did not i nvent portable telephone handsets, did not invent compu terized portable telephone handsets, and did not invent docking stations for computer

- bearing or computer

directed 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 ente rtainment 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. Ne lson shows a portable computer, and a d ocking station that uses the PC ’ s computer. Smith shows a portable tel ephone that docks with a dockin g station th at 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 andINTELLECTUAL VENTURE S I LLC v. MOTOROLA MOBILITY LL C 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 pro blems of mobility and portability associated with using a portable telephone in combination with a portable co mputer. ” 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 d ocking 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 purpos es. See, e.g. , J.A. 1025 (Motorola’ s expert discussing the advantages and disa dvantages of Nelson and Smith, individually, and conclu ding that “ the combination of Nelson and Smith has all of these advantages without a shortcoming ” ).
The maj ority observes that the parties ’ expert wi tnesses offered conflicting opinions as to what was obvious, and the majority states that “ [t]he jury apparently credi ted the testimony of IV ’ s expert over Motorola ’ s. ” Maj. Op. 22

. P erhaps so. However, the issue is not credib ility 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 –8 8 (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. 2110 INTELLECT UAL VENTURES I LLC v. MOTOROLA MOBILITY LL C

( internal quotation marks omitted). This ultimate inquiry is a question of law, and requires objective determination.

The record does not contain substantial evidence su pporting 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 Ne lson and Smith references shows every element of the claims at issue in the ’ 462 patent , used in the same ma nner, f or the same purpose, as in the ’ 462 patent. See In re Mouttet , 686 F.3d at 1333 ( “ [T]h e 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 th e reference s themselves , as discussed above

. The court’ s contrary conclusion is not supported by evidence. Thus I respectfully dissent from t he ruling that the

’ 462 patent is no t invalid on the ground of obviousness.