Means-Plus-Function Terms Are Defined By What The Specification And Prosecution History Say, Rather Than What They Do Not Say

In MobileMedia Ideas LLC v. Apple Inc., Nos. 14-1060, -1091 (Fed. Cir. Mar. 17, 2015), the Federal Circuit affirmed-in-part, reversed-in-part, and vacated-in-part the district court's finding of infringement, invalidity, and claim construction with respect to the patents-in-suit and remanded to the district court for further proceedings.

MobileMedia Ideas LLC ("MobileMedia") owns U.S. Patent Nos. 6,427,078 ("the '078 patent") related to camera phones; 6,070,068 ("the '068 patent") related to call handling; 6,253,075 ("the '075 patent") related to call rejection; and RE 39,231 ("the '231 patent") related to call alerts (collectively "the patents-in-suit"). MobileMedia sued Apple Inc. ("Apple") for infringement of the patents-in-suit and other patents not at issue on appeal. Prior to trial, the district court granted SJ of noninfringement of claims 2-4 and 12 of the '231 patent. After trial, a jury returned a verdict finding that Apple's accused products directly infringed the asserted claims of the '075 patent, the '068 patent, and the '078 patent; that Apple did not induce infringement of the asserted claims; and that none of the asserted claims were invalid as obvious.

After the district court entered a judgment consistent with the jury's verdict, Apple renewed a previously filed motion for JMOL and, in the alternative, moved for a new trial. The district court granted Apple's JMOL motion of noninfringement and invalidity of the asserted claims of the '075 patent and invalidity of claim 24 of the '068 patent, but denied Apple's JMOL motion of invalidity of claim 23 and noninfringement of claims 23 and 24 of the '068 patent, and invalidity and noninfringement of claim 73 of the '078 patent.

Apple appealed the district court's claim construction related to the '078 and '068 patents, the district court's determination that substantial evidence was presented supporting the jury's finding of lack of motivation to combine references to render claim 73 of the '078 patent obvious, and the district court's conclusion that claim 23 of the '068 patent would not have been obvious. MobileMedia cross-appealed the district court's grant of JMOL of noninfringement and invalidity of the asserted claims of the '075 patent and of SJ of noninfringement of the '231 patent.

"The scope of a means-plus-function limitation is outlined not by what the specification and prosecution history do not say, but rather by what they do say." Slip op. at 16.

On appeal, the...