IP Law Daily, PATENT—D. Del.: Apple unable to limit damages before MobileMedia infringement trial, (Jul 22, 2016)

By Cheryl Beise, J.D.

As MobileMedia Ideas’ suit against Apple for infringement of a patent for suppressing an incoming call signal nears trial, the federal district court in Wilmington, Delaware, has rejected Apple’s requests to limit damages and exclude exert testimony relating to damages (MobileMedia Ideas, LLC v. Apple Inc., July 21, 2015, Robinson, S.).

MobileMedia Ideas, LLC ("MobileMedia") owns U.S. Patent No. RE 39,231 ("the ’231 patent"), titled "Communication Terminal Equipment and Call Incoming Control Method," and disclosing a communication device, such as a mobile phone, that permitted a user to stop a ringtone alert for an incoming call without notifying the caller. In one embodiment, a user can press the phone’s power key for some amount of time in order to stop the ringtone sound without ending the call. In another embodiment, pressing the phone’s power key reduces the volume of the ringtone sound.

MobileMedia field suit against Apple Inc. on March 31, 2010, alleging infringement of 16 patents, including U.S. Patent No. RE 39,231 (the ’231 patent). MobileMedia contended that Apple’s iPhone 3G, iPhone 3GS, and iPhone 4 infringes claims 2-4 and 12 of the ’231 patent. The district court granted Apple's motion for summary judgment of noninfringement, finding that under its construction of the claim term "to change a volume of the generated alert sound," the accused iPhones did not practice the limitation of "said control means controls said alert sound generator to change a volume of the generated sound." The Federal Circuit held that the district court’s claim construction was erroneous and vacated the judgment of noninfringement. On remand, Apple moved for summary judgment of invalidity and noninfringement of the ’231 patent. The court denied that motion in April 12, 2016.

Presently before the court was Apple’s motion for summary judgment regarding damages and both sides’ motions to exclude certain expert opinions.

Damages. Apple sought to limit MobileMedia’s potential damages from when the claims reexamined claims of the ’231 patent were issued. Pursuant to 35 U.S.C. §§ 252 and 307(b), a patentee of a reexamined patent may only recover infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and the reexamined claims are "substantially identical." To determine whether substantive changes have been made, a court must consider "whether the scope of the claims are identical, not merely whether different words are used."

The parties disputed whether "communication status" was meant to embrace both "call ringing state" and "received call" as suggested by the examiner during reexamination. The examiner's conclusion that "call ringing state" should be interpreted more narrowly follows from his explanation that a "received call" is also a communication status. After reviewing the prosecution history, the court disagreed with the examiner and declined to interpret "communication status" more broadly in the first instance. The court determined that the claims remained substantially identical in scope, and the defense of intervening rights did not apply.

The court also found that Apple failed to come forth with any evidence that MobileMedia had sold any products that were not properly marked, allegedly triggering § 287.

Expert testimony. The court denied both sides’ motions to exclude expert testimony, including Apple’s request to exclude MobileMedia’s expert testimony regarding a reasonable royalty rate based on presenting a hypothetical negotiation using Samsung’s license from Apple in prior litigation as an example.

The case is No. 1:10-cv-00258-SLR.

Attorneys: Jack B. Blumenfeld, Rodger D. Smith II, and Jeremy A. Tigan (Morris, Nichols, Arsht & Tunnell LLP) for MobileMedia Ideas, LLC. Richard K. Herrmann and Mary B. Matterer (Morris James LLP) for Apple Inc.

Companies: MobileMedia Ideas, LLC; Apple Inc.

Cases: Patent TechnologyInternet DelawareNews