IP Law Daily, PATENT—N.D. Cal.: In mobile device software spat, MobileIron’s patent survives legal challenge, (Jul 6, 2015)

By Cheryl Beise, J.D.

In a patent infringement action over mobile device software applications, Good Technology failed to show as a matter of law that MobileIron’s patent for filtering a catalog of mobile device applications was obvious or anticipated by prior art, the Federal district court in San Jose has decided (Good Technology Corp. v. MobileIron, Inc., July 1, 2015, Grewal, P.). MobileIron could pursue an infringement counterclaim, but only as to one of Good’s accused products.

Plaintiffs Good Technology Corporation and Good Technology Software, Inc. (together, “Good”) develops and sells mobile data and device management technologies. Defendant MobileIron, Inc. is an enterprise mobility management solutions provider that enables companies to secure, control, and manage mobile devices, mobile apps, and mobile content.

In 2012, Good sued MobileIron for infringing Good’s U.S. Patent Nos. 6,151,606, 7,702,322, 7,970,386 and 8,012,219. Good’s patents generally relate to methods for managing and securing data on mobile devices. In addition to defending against Good’s claims, MobileIron countersued Good for infringement of MobileIron’s U.S. Patent No. 8,359,016 (the ’016 patent). The ’016 patent teaches filtering a catalog of mobile device applications based on a set of policies applied to a user profile and a mobile device profile to select a set of applications to return to the user.

Within the past couple of months, the court has resolved various motions by the parties. On June 30, the court ruled that the ’606 patent is invalid for lack of written description. On June 25, the court held that Good was barred from seeking lost profits damages. In May, the court observed that the ’386 and ’322 patents appeared to be directed to ineligible subject matter, but the court denied MobileIron’s motion for judgment on the pleadings for failure to comply with local patent rules.

Presently before the court was Good’s motion for summary judgment that MobileIron’s ’016 patent was invalid and not infringed by Good’s accused products: Good for Enterprise, Good for Government, Good Dynamics, BoxTone, and AppCentral.

Non-infringement. The court first held that summary judgment of non-infringement of the ’016 patent was appropriate as to four of Good’s accused products: Good for Enterprise, Good for Government, Good Dynamics and BoxTone. A patentee must support its infringement contentions against certain products with actual evidence, the court noted. While MobileIron served infringement contentions as to those products, it never produced expert opinion or other evidence of infringement. MobileIron’s expert report addressed only Good’s AppCentral’s product. AppCentral allows companies to distribute mobile applications to their users.

MobileIron also argued that because AppCentral was sold in conjunction with the other products, they must remain in the case, at least for damages purposes. The court did not disagree with MobileIron on this point.

The court next determined that genuine issues of fact existed as to whether AppCentral infringed the ’016 patent. Good argued that AppCentral did not manage applications on a device, as required by the court’s construction of a key claim term. However, the court observed that a reasonable jury could just as easily rely on MobileIron’s evidence that other functionality in the AppCentral interface allowed users to select applications for installation on their devices—something the parties’ experts both agreed practiced the limitation.

Invalidity. The court also determined that there were genuine issues of fact as to whether each asserted claim of the ’016 patent was invalid as obvious and as to whether claims 1, 8, and 15 were anticipated.

Good argued that claims 1, 8, and 15 were anticipated by U.S. Patent Application No. 2002/0131404 (the “Mehta” reference) and U.S. Patent No. 7,409,208 (the “Clare” reference). Mehta describes a system for selling applications to the subscribers of a telephone carrier. Clare relates to a “software download service on a mobile network.” Each party presented evidence that a reasonable jury could find persuasive. For example, a reasonable jury could find that Mehta did not disclose the required “mobile device profile” limitation and/or that Clare used a different filtering architecture than the one required by the claims.

On the issue of obviousness, Good contended that any claim elements Mehta lacked were supplied by a combination with Clare or another prior art reference (the “Early GFE” reference). However, MobileIron presented evidence to show why it would not have been obvious to introduce the missing elements. For example, MobileIron’s expert explained that it would not have been obvious to use policy-based filtering instead of Clare’s filtering architecture, because it would have been contrary to Clare’s goal of tailoring catalogs to each customer’s preferences. There was also substantial evidence that there was no motivation to use consumer application stores like either Mehta’s or Clare’s in an enterprise context, because they did not offer the level of control that enterprises valued. In addition, MobileIron introduced evidence of secondary considerations of non-obviousness, such as the success of MobileIron’s own product, and industry praise for the importance of the patented features.

Good’s motion for summary judgment of invalidity was denied.

The case is No. 5:12-cv-05826-PSG.

Attorneys: Courtland Lewis Reichman (McKool Smith Hennigan PC) for Good Technology Corp. and Good Technology Software, Inc. Indra Neel Chatterjee (Orrick Herrington & Sutcliffe LLP) for MobileIron, Inc.

Companies: Good Technology Corp.; Good Technology Software, Inc.; MobileIron, Inc.

Cases: Patent CaliforniaNews