Intellectual Ventures I, LLC v. Motorola Mobility, LLC (13 F. Supp. 3d 369, 2014)

United States District Court for the District of Delaware 2014-01-02

Citations

Full opinion text

MEMORANDUM OPINION

ROBINSON, District Judge

I. INTRODUCTION

On October 6, 2011, plaintiff Intellectual Ventures I, LLC and Intellectual Ventures II, LLC (collectively “IV”) filed suit in this district against defendant Motorola Mobility, Inc. (“Motorola”) alleging infringement of six patents: U.S. Patent Nos. 7,810,144 (the “144 patent”), 6,412,953 (the “953 patent”), 7,409,450 (the “450 patent”), 7,120,-462 (the “462 patent”), 6,557,054 (the “054 patent”), and 6,658,464 (the “464 patent”). (D.I.l) Motorola answered the complaint and asserted a counterclaim for declaratory judgment of non-infringement and invalidity of the patents-in-suit on December 13, 2011. (D.I.10) IV answered Motorola’s counterclaims on January 6, 2012. (D.I.13)

IV I and II are limited liability companies organized and existing under the laws of the State of Delaware, with their principal place of business in Bellevue, Washington. (D.I. 1 at ¶¶ 1-2) IV I owns the ’144,-’450, ’054, and ’464 patents. (Id. at ¶¶ 10, 14,18, 20) TV II is the exclusive licensee of the ’953 patent and owns the ’462 patent. (Id. at ¶¶ 12, 16) Motorola is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Libertyville, Illinois. (Id. at ¶ 3) It makes, manufactures, and/or sells the accused products. (Id. at ¶28)

Presently before the court are Motorola’s motions for summary judgment of invalidity and non-infringement of the patents-in-suit. (D.I. 230; D.I. 252) The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

II. STANDARDS OF REVIEW

A. Summary Judgment

“The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348 (1986). A party asserting that a fact cannot be — or, alternatively, is — genuinely disputed must support the assertion either by citing to “particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials,” or by “showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact.” Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then “come forward with specific facts showing that there is a genuine issue for trial.” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (internal quotation marks omitted). The court will “draw all reasonable inferences in favor of the non-moving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

To defeat a motion for summary judgment, the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita, 475 U.S. at 586-87, 106 S.Ct. 1348; see also Podobnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir.2005) (stating party opposing summary judgment “must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue”) (internal quotation marks omitted). Although the “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment,” a factual dispute is genuine where “the evidence is such that a reasonable jury could return a verdict for the nonmov-ing party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). “If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.” Id. at 249-50, 106 S.Ct. 2505 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (stating entry of summary judgment is mandated “against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial”).

B. Claim Construction

Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303, 1330 (Fed.Cir.2005) (en banc). Claim construction focuses on intrinsic evidence — the claims, specification and prosecution history — because intrinsic evidence is “the most significant source of the legally operative meaning of disputed claim language.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claims must be interpreted from the perspective of one of ordinary skill in the relevant art at the time of the invention. Phillips, 415 F.3d at 1313.

Claim construction starts with the claims, id. at 1312, and remains centered on the words of the claims throughout. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001). In the absence of an express intent to impart different meaning to claim terms, the terms are presumed to have their ordinary meaning. Id. Claims, however, must be read in view of the specification and prosecution history. Indeed, the specification is often “the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315.

C. Infringement

A patent is infringed when a person “without authority makes, uses or sells any patented invention, within the United States ... during the term of the patent.” 35 U.S.C. § 271(a). A two-step analysis is employed in making an infringement determination. See Markman, 52 F.3d at 976. First, the court must construe the asserted claims to ascertain their meaning and scope. See id. Construction of the claims is a question of law subject to de novo review. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed.Cir.1998). The trier of fact must then compare the properly construed claims with the accused infringing product. See Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998).

“Direct infringement requires a party to perform each and every step or element of a claimed method or product.” BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed.Cir.2007), overruled on other grounds by 692 F.3d 1301 (Fed.Cir.2012). “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed.Cir.2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989). However, “[o]ne may infringe an independent claim and not infringe a claim dependent on that claim.” Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed.Cir.2007) (quoting Wahpeton Canvas, 870 F.2d at 1552) (internal quotations omitted). A product that does not literally infringe a patent claim may still infringe under the doctrine of equivalents if the differences between an individual limitation of the claimed invention and an element of the accused product are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 24, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988) (citations omitted).

When an accused infringer moves for summary judgment of non-infringement, such relief may be granted only if one or more limitations of the claim in question does not read on an element of the accused product, either literally or under the doctrine of equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed.Cir.2005); see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed.Cir.2002) (“Summary judgment of noninfringement is ... appropriate where the patent owner’s proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial.”). Thus, summary judgment of non-infringement can only be granted if, after viewing the facts in the light most favorable to the non-movant, there is no genuine issue as to whether the accused product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed.Cir.1999).

“[A] method claim is not directly infringed by the sale of an apparatus even though it is capable of performing only the patented method. The sale of the apparatus is not a sale of the method. A method claim is directly infringed only by one practicing the patented method.” Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed.Cir.1993). Therefore, “an accused infringer must perform all the steps of the claimed method, either personally or through another acting under his direction or control.” Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed.Cir.2012).

With respect to apparatus claims, “to infringe a claim that recites capability and not actual operation, an accused device ‘need only be capable of operating in the described mode.’ ” Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed.Cir.2010) (citing Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed.Cir.1991). However, if an apparatus claim requires “software [to] be configured in a particular way to infringe,” infringement does not occur merely because the apparatus could be used in an infringing fashion. Finjan, 626 F.3d at 1204-05.

For there to be infringement under the doctrine of equivalents, the accused product or process must embody every limitation of a claim, either literally or by an equivalent. Warner-Jenkinson, 520 U.S. at 41, 117 S.Ct. 1040. An element is equivalent if the differences between the element and the claim limitation are “insubstantial.” Zelinski v. Brunswick Corp., 185 F.3d 1311, 1316 (Fed.Cir.1999). One test used to determine “insubstantiality” is whether the element performs substantially the same function in substantially the same way to obtain substantially the same result as the claim limitation. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). This test is commonly referred to as the “funetion-way-result” test. The mere showing that an accused device is equivalent overall to the claimed invention is insufficient to establish infringement under the doctrine of equivalents. The patent owner has the burden of proving infringement under the doctrine of equivalents and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988) (citations omitted).

D. Invalidity

1. Anticipation

Under 35 U.S.C. § 102(b), “[a] person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States.” The Federal Circuit has stated that “[t]here must be no difference between the claimed invention and the referenced disclosure, as viewed by a person of ordinary skill in the field of the invention.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed.Cir.1991). In determining whether a patented invention is explicitly anticipated, the claims are read in the context of the patent specification in which they arise and in which the invention is described. Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir.1995). The prosecution history and the prior art may be consulted if needed to impart clarity or to avoid ambiguity in ascertaining whether the invention is novel or was previously known in the art. Id. The prior art need not be ipsissimis verbis (i.e., use identical words as those recited in the claims) to be anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed.Cir.1984).

A prior art reference also may anticipate without explicitly disclosing a feature of the claimed invention if that missing characteristic is inherently present in the single anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). The Federal Circuit has explained that an inherent limitation is one that is necessarily present and not one that may be established by probabilities or possibilities. Id. That is, “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. The Federal Circuit also has observed that “[i]nherency operates to anticipate entire inventions as well as single limitations within an invention.” Schering Corp. v. Geneva Pharms. Inc., 339 F.3d 1373, 1380 (Fed.Cir.2003). Moreover, recognition of an inherent limitation by a person of ordinary skill in the art before the critical date is not required to establish inherent anticipation. Id. at 1377.

An anticipation inquiry involves two steps. First, the court must construe the claims of the patent in suit as a matter of law. Key Pharms. v. Hercon Labs Corp., 161 F.3d 709, 714 (Fed.Cir.1998). Second, the finder of fact must compare the construed claims against the prior art. Id. A finding of anticipation will invalidate the patent. Applied Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1378 (Fed.Cir.1998).

2. Obviousness

“A patent may not be obtained ... if 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.” 35 U.S.C. § 103(a). Obviousness is a question of law, which depends on underlying factual inquiries.

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or non-obviousness of the subject matter is determined.

“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Intern. Co. v. Teleflex Inc., 550 U.S. at 418, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). Likewise, a defendant asserting obviousness in view of a combination of references has the burden to show that a person of ordinary skill in the relevant field had a reason to combine the elements in the manner claimed. Id. at 418-19, 127 S.Ct. 1727. The Supreme Court has emphasized the need for courts to value “common sense” over “rigid preventative rules” in determining whether a motivation to combine existed. Id. at 419-20, 127 S.Ct. 1727. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420, 127 S.Ct. 1727. In addition to showing that a person of ordinary skill in the art would have had reason to attempt to make the composition or device, or carry out the claimed process, a defendant must also demonstrate that “such a person would have had a reasonable expectation of success in doing so.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed.Cir.2007).

A combination of prior art elements may have been “obvious to try” where there existed “a design need or market pressure to solve a problem and there [were] a finite number of identified, predictable solutions” to it, and the pursuit of the “known options within [a person of ordinary skill in the art’s] technical grasp” leads to the anticipated success. Id. at 421, 127 S.Ct. 1727. In this circumstance, “the fact that a combination was obvious to try might show that it was obvious under § 103.” Id. Federal Circuit precedent has also established that “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds,” and that particular types of structural similarity can give rise to a case of prima facie obviousness. Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1312 (Fed.Cir.2011) (citing In re Deuel, 51 F.3d 1552, 1558 (Fed.Cir.1995)).

A court is required to consider secondary considerations, or objective indi-cia of non-obviousness, before reaching an obviousness determination, as a “check against hindsight bias.” See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed.Cir.2012). “Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

“Because patents are presumed to be valid, see 35 U.S.C. § 282, an alleged infringer seeking to invalidate a patent on obviousness grounds must establish its obviousness by facts supported by clear and convincing evidence.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed.Cir.2006) (citation omitted). In conjunction with this burden, the Federal Circuit has explained that,

[w]hen no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.

PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed.Cir.2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed.Cir.1984)).

3. Enablement and written description

The statutory basis for the en-ablement and written description requirements, 35 U.S.C. § 112 ¶ 1, provides in relevant part:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same....

“The enablement requirement is met where one skilled in the art, having read the specification, could practice the invention without ‘undue experimentation.’ ” Streck, Inc. v. Research & Diagnostic Systems, Inc., 665 F.3d 1269, 1288 (Fed.Cir.2012) (citation omitted). “While every aspect of a generic claim certainly need not have been carried out by the inventor, or exemplified in the specification, reasonable detail must be provided in order to enable members of the public to understand and carry out the invention.” Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed.Cir.1997). The specification need not teach what is well known in the art. Id. (citing Hybritech v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed.Cir.1986)). A reasonable amount of experimentation may be required, so long as such experimentation is not “undue.” ALZA Cory. v. Andrx Pharms., Inc., 603 F.3d 935, 940 (Fed.Cir.2010).

“Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1378 (Fed. Cir.2009) (citing In re Wands, 858 F.2d 731, 737 (Fed.Cir.1988). The Federal Circuit has provided several factors that may be utilized in determining whether a disclosure would require undue experimentation: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance disclosed in the patent; (3) the presence or absence of working examples in the patent; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d at 737. These factors are sometimes referred to as the “Wands factors.” A court need not consider every one of the Wands factors in its analysis, rather, a court is only required to consider those factors relevant to the facts of the case. See Streck, Inc., 655 F.3d at 1288 (citing Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed.Cir.1991)).

The enablement requirement is a question of law based on underlying factual inquiries. See Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1298-99 (Fed.Cir.2010) (citation omitted); Wands, 858 F.2d at 737. Enablement is determined as of the filing date of the patent application. In re ’318 Patent Infringement Litigation, 583 F.3d 1317, 1323 (Fed.Cir.2009) (citation omitted). The burden is on one challenging validity to show, by clear and convincing evidence, that the specification is not enabling. See Streck, Inc., 665 F.3d at 1288 (citation omitted).

A patent must also contain a written description of the invention. 35 U.S.C. § 112, ¶ 1. The written description requirement is separate and distinct from the enablement requirement. See Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.Cir.2011). It ensures that “the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed.Cir.2005). The Federal Cir-. cuit has stated that the relevant inquiry— “possession as shown in the disclosure” — is an “objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad, 598 F.3d at 1351.

This inquiry is a question of fact: “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citation omitted). While compliance with the written description requirement is a question of fact, the issue is “amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the non-moving party.” Id. at 1307 (citing Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1072-73 (Fed.Cir.2005)).

III. DISCUSSION

For each of the patents-in-suit, the court will discuss any necessary claim construction as it relates to those infringement and invalidity issues identified in the pending summary judgment motions.

A. The ’144 Patent

The T44 patent, entitled “File Transfer System for Direct Transfer Between Computers,” was filed on April 7, 2009 and issued on October 5, 2010. It is a continuation of application no. 10/657,221, filed on September 9, 2003, which is a continuation of application no. 10/167,697, filed on June 13, 2002, which is a continuation of application no. 09/694,472, filed on October 24, 2000, which is a continuation of application no. 09/190,219, filed on November 13, 1998, which claims priority to provisional application no. 60/065,533, filed on November 13,1997.

The ’144 patent “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.” (T44 patent, 2:4-7) IV alleges that Motorola’s products infringe independent claims 10, 26, and 41. Claim 10 teaches a method for transferring files. Claims 26 and 41 teach a communications device. Claims 10 and 26 are reproduced below.

10. A method for transferring files from a first device to a second device over a communications network, comprising:

displaying, on the first device, a collection of file identifiers, wherein each file identifier represents a selectable file;

receiving, at the first device, a user selection of at least one file identifier representing a file selected to be transferred to the second device;

displaying, on the first device, 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;

receiving, at the first device, a user selection of at least one destination identifier as selection of the second device;

displaying, on the first device, a data entry field in which a text message can be entered;

receiving, at the first device, the text message;

encapsulating, at the first device, the text message with the selected file into a single combined file;

generating, at the first device, a unique transaction identifier that identifies a transfer of the single combined file;

transferring, from the first device to the second device, the single combined file, including:

sending, to the second device at its numbered destination address, the single combined file;

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

generating, at the second device, a delivery confirmation message confirming reception of the single combined file;

transmitting, from the second device to an authenticating device of the communications network, the delivery confirmation message; and

generating, at the authenticating device, a delivery report that indicates a delivery event and a time of the delivery event;

providing, at the second device, an alert indicating reception of the single combined file;

displaying, on the second device, an identification of the first 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 first device, a name of the first device, or a username associated with the first device; and

displaying, on the second device, at least a portion of content of the selected file or the text message.

(Mat 38:46-39:25)

26. 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 transmitted to a second device, wherein each of the communications device and the second device includes functionally equivalent instruction sets that enable file transfer between the communications device and the second device;

display a collection of destinations identifiers, wherein each destination identifier represents a remote device having at least one of an Internet Protocol (IP) address or a telephone number;

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;

receive the text message;

associate the text message to the selected file as a text file; and transmit the selected file and the associated text file, absent non-transient intermediate storage of the selected file on an intervening communications device of the communications network, to the second device which is configured to:

receive the selected file and associated text file absent initiation of retrieval of the selected file from the intervening communications device by the second device and absent user action at the second device;

detect reception of the selected file and the associated text file;

provide an alert in response to the reception of the selected file and the associated text file;

display an identification of the communications device in relation to the selected file and 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 and associated text file.

(Id. at 41:42-42:20)

1. Limitations of the ’144 patent

a. The transferring and transmitting limitations in claims 10 and 26

There are two inventive aspects of the transferring and transmitting steps of the asserted claims. One aspect (disclosed, e.g., in claims 1 and 26) requires that the communications device transfer the selected file “absent non-transient intermediate storage of the selected file on an intervening communications device of the communications network.” The second aspect (disclosed, e.g., in claims 10 and 26) requires that the step of transferring files from a first device to a second device includes the receipt, “at the second device, [of] the single combined file irrespective of user action at the second device.” Although the specification and file history distinguish the prior art on both grounds, it is not necessary for each claim to embrace all aspects of the invention. Therefore, the proper construction of the limitation at issue in claim 10 is a broad one, as suggested by IV: “Delivering the single combined filed from the first device to the second device,” as further limited by the claim language that follows, “irrespective of user action,” i.e., the user need not log-in to a server and download the selected file. The proper construction of the disputed language in claim 26 includes the above limitation, as well as that relating to “non-transient intermediate storage,” construed to mean “without permanently storing the selected file on any communications device between the first and second devices.”

b. “Receive the selected file and associated text file absent initiation of retrieval of the selected file from the intervening communications device by the second device and absent user action at the second device”

The court adopts Motorola’s construction, “the second device, i.e., the receiving device, does not request delivery from the intervening communications device nor does the user request delivery from the intervening communications device.” Claim 26, by its plain language, indicates that the second device does not initiate retrieval of the file. Direct transfer, initiated at the request of the receiving device, is disclosed in the specification at columns 28:5-29:30. The specification makes clear that transfers initiated by the receiving device are “requested” transfers. (See ’144 patent, 28:5-29:30) Claim 26 does not disclose this embodiment. Moreover, that the second device may act as the sending device with respect to the delivery confirmation, as IV contends (D.I. 235 at 5), does not preclude a construction designating the second device as the receiving device in this limitation, which contemplates transfer of a selected file.

c. “Delivery report”

The court adopts IV’s construction, “data indicating delivery of the single combined file.” This construction is consistent with the language of the claims, which recites “generating, at the authenticating device, a delivery report that indicates a delivery event and a time of the delivery event” (claim 10) and “generate a delivery report that indicates a delivery event and a time of the delivery event (claim 41).” (144 patent, 39:13-15, 46:15-16) There is no requirement that the data be available at the sending device. The court declines to read limitations from preferred embodiments into the claims. (See id. at 18:63-20:33)

d. “Authenticating device of the communications network”

The court construes this term as “a third-party authenticating device within the communications network that generates a delivery report.” This is consistent with the claims and the specification. Claim 10 requires that the second device transmit the delivery confirmation message to an authenticating device of the communications network. “[A] delivery report that indicates a delivery event” is then generated at the authenticating device. (Id. at 39:10-15) Claim 41 is also consistent with this construction as it requires that

the second device [be] configured to ... transmit to an authenticating device of the communications network, the delivery confirmation message ... display at least a portion of content of the selected file or the text message, wherein the authenticating device is configured to generate a delivery report....

(Mat 45:18-46:16)

The specification further explains that “[t]he receipt file is returned from the recipient to the sender directly or through a third party authenticator.... ” (Id. at 19:4-6) “[l]f the requested confirmation is designated by the sender to be returned through a third party authenticator, the control module on the recipient PC creates a pending event for return of the confirmation receipt file to the sending PC through the third party authenticator....” (Id. at 19:38-42)

2. Infringement

a. Claims 10 and 41

IV asserts that Motorola’s products infringe claims 10, 26, and 41 of the ’144 patent. Motorola contends that its products do not infringe claims 10 and 41 because use of the accused products to send a Multimedia Messaging Service (MMS) message does not perform the limitations of: (1) “transferring [sending], from the first device to the second device;” (2) encapsulating the message into a “single combined file;” and (3) generating a “delivery report.” (D.I. 253 at 2) With respect to the “single combined file” limitation, Motorola argues that the accused protocol data unit (PDU) created during the encapsulation process is neither a file nor the equivalent of a file and, therefore, cannot infringe this limitation. (D.I. 253 at 4) Claims 10 and 41 require that “the text message [be encapsulated] with the selected file into a single combined file.” (See ’144 patent, 38:64-65, 45:13-14)

In support of its contentions, Motorola asserts that IV’s expert agreed that the PDU is not a file (D.I. 253 at 4), but a reading of the testimony indicates he only explained that a PDU is not saved in a file directory structure. (D.I. 254, ex. 4 at IA833 at 154:24-155:2) Additionally, Motorola cites to the MMS Wireless Application Protocol to assert that the generation of a file in sending an MMS message is not mandatory, and the PDU is simply a data structure that transports the information to the MMSC. (D.I. 253 at 4; see D.I. 254, ex. 8 at IA883-85) The protocol describes the “content and encodings of the PDUs for the multimedia messaging service.” (D.I. 254, ex. 8 at IA883) It explains that “[t]he multimedia messaging PDUs consist of MMS headers and a message body,” and the “message body consists of multi-part/related structures ... including multimedia objects ... as well as optional presentation parts.” (Id. at IA884) Figure 1 depicts a conceptual model of how multimedia content and presentation information can be encapsulated into a single message. (Id.)

IV cites to the same MMS protocol to contend that the PDU is a text message inputted by a user of an accused phone encapsulated together with a photo selected by the user, i.e., the text message and the selected file. (See D.I. 267 at 4; D.I. 268 at IVA1366-67) Both parties’ experts also cite to a book written by Motorola’s expert to come to contradictory conclusions. (D.I. 254, ex. 5 at IA837-38 at ¶ 7; D.I. 268 at IVA1290) The court concludes that, if this issue is a matter of fact, then there certainly are genuine issues of material fact. If, however, it is a matter of claim construction, the parties must submit their proposed constructions to the court before trial.

b. Claim 26

Motorola contends that when an MMS is sent to an accused phone, the second device “initiat[es] ... retrieval of the selected file from the intervening communications device” (the MMSC), which claim 26 expressly prohibits. (D.I. 275 at 6) In support of its motion, Motorola cites to documents explaining the initiation process. Specifically, upon receipt of an MMS message, the MMSC sends a notification consisting only of MMS headers to the receiving device. (D.I. 254, ex. 8 at IA885) The recipient device then initiates the process by establishing a data connection by submitting a WSP/HTTP GET.req retrieval request or postpones the retrieval to a later stage by sending a notification response indication — M-notifyresp.ind. (Id., ex. 8 at IA820-826) “The operation for retrieval of the MM message by the MMS Client from the MMS Proxy-Relay is built upon the normal WSP/HTTP GET functionality.” (Id. at IA825) Motorola’s expert opines that “the retrieval request initiated by the receiving device contains the URI that indicates the location of the Multimedia Message stored on the MM relay/server .... This is the same whether the phone is configured to automatic dowm load or not.” (D.I. 254, ex. 5 at IA842-844 at ¶¶ 30-34) (see ex. 3 at IA821, 825) (“The MMS Client SHALL initiate the retrieval activity by utilizing the URI that was delivered to it in the M.Notification.ind message ....”)

In opposing Motorola’s motion, IV argues that the initiation limitation is met because MMS devices use a push form of communications and, thus, the MM.Notifi-eatiomind step initiates retrieval. (D.I. 267 at 11-12) In support of its argument, IV cites to the Wireless Application Protocol MMS Client Transactions specification, which states “[t]he M.Notification.ind message SHALL be sent by the MMS Proxy-Relay to the MMS Client using the WAP PUSH framework....” (D.I 268 at IVA1391) This document, however, further explains that “[t]he information conveyed SHALL include an ... URI that will be used to actually retrieve the message in a subsequent operation by the MMS Client.” (Id.)

The court finds that, under its claim construction, which prohibits initiation of retrieval by the second device, IV has failed to identify a genuine issue of material fact with respect to claim 26. Motorola’s motion is granted in part and denied in part with respect to the ’144 patent.

3. Invalidity

Motorola asserts that claims 10, 14, 15, 26, 29, 30, and 41 of the ’144 patent are invalid for a number of reasons. (D.I. 231 at 1) First, Motorola contends that, if the claims are not limited to direct file transfer, the claims are invalid for failing to satisfy the written description and enablement requirements of 35 U.S.C. ¶ 112 because the ’144 patent provides no support for intermediate file storage. (Id. at 2) Motorola also contends that the ’144 patent was anticipated by U.S. Patent No. 5,379,340 (the “340 patent”) to Overend. (Id. at 5)

a. Written description

In support of its written description argument (D.I. 231 at 2; D.I. 232, ex. 1 at IA2 at ¶ 4), Motorola cites to a preferred embodiment in the specification where the file transfer system enables direct transfer of electronic files “without intermediate storage of files on an intervening computer.” (’144 patent, 10:62-11:1) Motorola also points to two communication mechanisms for file transfer — direct transfer from a sender PC to a recipient PC using UDP and TCP/IP communication mechanisms, and direct PSTN transfer from a sender PC to a recipient PC using modem protocols — arguing that intermediate storage is not mentioned at all. (D.l. 231 at 2; D.l. 232, ex. 1 at IA5-6 at ¶¶ 11-14; see ’144 patent at 13:57-18:63)

The specification, however, does contemplate file transfer using a communications pathway such as the Internet. (’144 patent, 10:25-40) Specifically,

Fig 1 shows that the PCs 10 may be connected to and may use one communications pathway (e.g., the Internet), another communications pathway (e.g., the public switched telephone network PSTN), or more than one communications pathway (e.g., Internet and PSTN), simultaneously.

(Id. at 10:30-35) Motorola asserts that no person of skill in the art would understand transfer over the Internet to mean storing files on intervening computers, and the inventors repeatedly disparaged such transfer where the file was stored on an intervening computer. (D.l. 231 at 3; see T44 patent, 2:35-44, 3:2-28) And, even so, use of the Internet only means that packets may be transiently stored during routing but has nothing to do with intermediate storage of files. (D.l. 231 at 3; T44 patent, 11:62-65,18:25-27)

IV contends that this constitutes a teaching by the specification of file transfer by temporarily allowing the storage of files on intermediate computers. (D.l. 250 at 2; D.l. 268 at IVA2-3 at ¶ 4) IV’s expert asserts that one of ordinary skill in the art would understand that transferring files over the Internet uses a method known as “packet switching” as confirmed by the recitation of a “packet switched network” in claims 10, 37, and 41 of the ’144 patent. Without citing to the specification, he further explains that “packet switching features delivery of packets through intermediate computers over a shared network, such as the Internet,” at which point the packets are “buffered and queued on intermediate computers depending on the traffic load in the network.” (D.l. 268 at IVA2-3 at ¶ 4)

There exists a genuine issue of material fact with respect to the disclosure of file transfer over the Internet and whether this constitutes an adequate disclosure to ensure that the patentee had possession of the claimed invention at the time of the application.

b. Enáblement

Motorola contends that, given the repeated disparagement of mediated file transfer, the ’144 patent does not enable the full scope of the claims, which was construed by the court to include file transfer with intermediate storage. (See D.l. 231 at 4; ’144 patent, 2:40-4:64) In support of its contentions, Motorola asserts that in the only description of file transfer using the Internet, the inventors stated the invention “enables direct transfer of electronic files between such interconnected PCs ... without intermediate storage of files on an intervening computer.” (D.I. 231 at 5; ’144 patent, 10:65-11:1) For this reason, the specification directs the skilled artisan away from intermediate file storage and does not enable the full scope of the claims. (D.I. 281 at 5)

In opposing Motorola’s motion, IV contends that the ’144 patent is enabled because both parties’ experts agree that the specification teaches file transfer systems in which the packets of the selected file are transiently stored on an intervening communications device, such as a router, as the packets travel through the Internet. (D.I. 250 at 4) In response to Motorola’s teaching away argument, IV contends that the disparaged prior art systems are those that permanently — not transiently — store files on intermediate devices. (Id. at 4; D.I. 268 at IVA3 at ¶ 5) IV argues that the key difference between the claimed invention and the prior art is that, in the patent, the selected file is sent to the receiving device, instead of an intermediary computer where the file is permanently stored and the intended recipient must retrieve the file by logging in and downloading the file. (’144 patent, 3:20-27, 4:60-64, 5:18-26, 10:25-40,10:65-67)

Although “the specification need not necessarily describe how to make and use every embodiment of the invention,” where the full scope of the claims includes multiple embodiments, one skilled in the art must be able to make and use such embodiment at the time of the patent’s effective filing date. Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed.Cir.2007) (finding that claims were invalid for lack of enablement because the specification taught away from a claimed embodiment, and testimonial evidence was given that such system could not have been produced at the time of filing) (internal citations omitted). As above, there exists a genuine issue of material fact with respect to the disclosure of file transfer over the Internet and whether this constitutes an adequate disclosure such that one skilled in the art, having read the specification, could practice the invention without undue experimentation.

c. Anticipation by the ’340 patent

Motorola contends that the prior art ’340 patent anticipates the asserted claims or, alternatively, renders certain claim limitations obvious when combined with other prior art. (D.I. 231 at 5) The ’340 patent describes a file transfer system “enabling a user to ‘post’ a text message into the system, secure in the knowledge that it will eventually be dispatched to the intended recipient and its receipt will be acknowledged.” (D.I. 232, ex. 4 at IA76 at 1:49-53) The parties dispute whether the following limitations are disclosed by the ’340 patent: 1) the “single combined file;” (2) the “authenticating device;” (3) “irrespective of user action;” and (4) the “data entry field.” (D.I. 231 at 7)

The ’340 patent does not teach “an authenticating device” under the court’s construction, which requires that the authenticator be a third-party device. The ’340 patent expressly states:

When the message is received, the CPU 10B of the receiving station IB generates an acknowledgment message which is transmitted back via the telephone line 70 through the receiving modem 60B to the transmitting modem 60A, and is logged and stored by the transmitting station CPU 10A.”

(D.I. 232, ex. 4 at IA78 at 5:42-47) As Motorola concedes, in the ’340 patent, the sending device, and not a third-party device, generates the delivery report and acts as the authenticating device. (D.I. 231 at 8) Motorola’s motion is denied.

B. The’953 Patent

The ’953 patent, “Illumination Device and Image Projection Apparatus Comprising the Device,” was filed October 1, 1999 and issued July 2, 2002. It is a divisional application of application no. 09/205,634 filed on December 3, 1998. The ’953 patent discloses “an illumination device comprising a light source and an illumination uniformizing means which uniformizes the light emitted from the light source.” (’953 patent, 3:10-12) Independent claim 1 recites:

1. An illumination device, comprising:

a light source, comprising an array of a plurality of light emitting devices;

an illumination uniformizing means disposed in front of the light source to uniformize a light emitted from the light source, the illumination uniformizing means comprising:

an incident plane, the light emitted from the light emitting device array is incident therefrom;

a bottom plane, comprising a scattering pattern thereon;

a projection plane opposite to the bottom plane, wherein:

the light incident from the incident plane being scattered by the scattering pattern, while the light incident from the incident plane being totally reflected between positions of the bottom plane other than the scattering pattern and the projection plane; and

a reflective side plane opposite to the incident plane, wherein the scattering pattern is gradually condensed from the incident plane towards the reflective side plane; and

a polarization converter, disposed between the illumination uniformizing means and a light valve, to polarize the light from the illumination uniformizing means into a polarized light.

(Mat 9:38-10:8)

1. Limitations of the ’953 patent

a. “A polarization converter ... to polarize the light from the illumination uniformizing means into a polarized light”

The court adopts Motorola’s construction, “an element that allows light of only one polarization to pass through and transforms the polarization of the residual light to obtain the one polarization that may pass through.” This construction is consistent with the plain language of the claim and the specification. Although the term polarization converter is found in the third, fourth and fifth embodiments, these are the only instances that the term is discussed in the patent. (Id. at 5:36-8:21)

Specifically, the description of the third embodiment indicates that “[t]he additional element is a polarization converter 410 disposed between the light valve 320 and the illumination uniformizing means 310.” (Id. at 5:42-45) This is consistent with the claim language which requires that the polarization converter be “disposed between the illumination uniformizing means and a light valve.” (Id. at 10:5-8) The description of the third embodiment further explains that “the light unacceptable to the light valve 320 is converted into an acceptable type of polarized light to the light valve 320, so that the light emitted from the light source can be fully utilized.” (Id. at 5:45-48) Where the light valve only accepts a P-polarized light, and the scattered light comprises both P- and S-polarized light, the S-polarized light cannot be utilized at all. (Id. at 5:63-6:1) The polarization converter, therefore, converts the unusable S-polarized light into P- polarized light to be accepted by the light valve and fully utilized. (Id. at 6:1-15)

b. A light source, comprising an “array of a plurality of light emitting devices”

The court construes this term as an “arrangement of a plurality of adjacent light emitting devices.” This construction is consistent with the intrinsic evidence. Although the specification indicates that “[t]he light source comprises ... field emission display (FED), and cold cathode fluorescence lamp (CCEL)” — singular light sources — this language is concerned with the types of elements in the light source and does not limit an array of such elements to mean one light emitting device. (See ’953 patent, 3:12-15) Claim 2, not currently at issue but similarly telling as to the correct construction of the term, also recites the types of “light emitting devices” that may be employed. (See Id. at 10:9-13)

During prosecution, the examiner found that U.S. Patent No. 5,828,488 (the “488 patent”) to Ouderkirk anticipated original claim 1. (D.I. 215 at JA1204) The examiner cited the light source of Ouderkirk, “Fig 2, 30” as comprising “an array of a plurality of light emitting devices ‘Fig 3, 21.’ ” (Id.) Figure 2, element 30 is a lamp and Figure 3, element 21 is a field emission display. (Id.) To distinguish from Ouderkirk and overcome the rejection, applicants amended the claims to add the “gradually condensed” limitation. (Id. at JA1358-59) Neither the specification nor the prosecution history, however, would indicate to one of ordinary skill in the art that any one single device of the types listed in the specification or claim 2 would constitute an “array of a plurality of light emitting devices.”

2. Infringement

a. The limitation “disposed between the illumination uniformizing means and a light valve”

Motorola contends that the rear polarizer in its devices is part of the light valve itself and, thus, cannot be “disposed between the illumination uniformiz-ing means and a light valve” as required by the claim. (D.I. 253 at 23-24) In support of its contention, Motorola cites to its Materials or Methods Specification for an Active Matrix Liquid Crystal Display (LCD), which describes the LCD as being constructed of a top glass plate, top and bottom polarizers.... ” (D.I. 254, ex. 20 at IA961) IV’s expert, Dr. Cairns, admitted that all of the components of the light valve, including the rear polarizer, are packaged together as a single unit. (See D.I. 254, ex. 18 at IA944 at 169:6-25, 172:4-13,173:16-24)

In opposing Motorola’s motion, IV asserts that each of Motorola’s accused phones has a rear or bottom polarizer located between the LCD panel and its light guide (the illumination uniformizing means). (D.I. 267 at 22; D.I. 268 at IVA1399-1400 at ¶¶ 14-16) To come to this conclusion, Dr. Cairns disassembled each of the 14 accused phones. (D.I. 268 at IVA1433-1446, ex. D) Additionally, the Director of Motorola’s Display Design Center confirmed that the rear or bottom polarizer is between the TFT glass (LCD panel) and the light guide. (D.I. 268 at IVA 1463-1473) Although Motorola contends that the rear polarizer is in fact beneath the TFT glass but within the light valve (D.I. 275 at 12), its non-infringement argument raises genuine issues of material fact, in particular with respect to the proper characterization of “light valve” vis a vis the components of an LCD.

b. The limitation “polarization converter”

Motorola asserts that the rear po-larizer of an LCD panel alleged to infringe does not transform the polarization of residual light and, therefore, cannot meet this limitation. (D.I. 253 at 22) In support of its contention, Motorola cites to deposition testimony and a declaration of its expert, Dr. Timothy J. Drabik, to state that rear polarizers are typically polyvinyl alcohol absorptive polarizers that simply absorb light of the unwanted polarization, and that IV did not attempt to establish otherwise. (Id. at 23) Dr. Drabik’s report, however, only generally discusses what is typical in the industry and does not support a conclusion that Motorola’s products do not contain a polarization converter as required by the asserted claim. (D.I. 254, ex. 19 at IA951-52 at ¶¶4-7) Motorola, therefore, has failed to meet its burden on summary judgment to demonstrate that there are no genuine issues of material fact.

c. Doctrine of equivalents

Motorola contends that IV’s attempt to use the doctrine of equivalents is improper because the all-limitations rule would be violated by TV’s vitiation of the “disposed between” limitation which requires three separate components — an illumination uni-formizing means, a polarization converter, and a light valve. (D.I. 275 at 14) As above, there similarly exist genuine issues of material fact regarding whether the claimed “polarization converter” is considered “disposed between the illumination uniformizing means and a light valve” even if, as Motorola contends, the polarizer is a component of the claimed light valve.

Motorola also argues that IV cannot assert infringement under the doctrine of equivalents because IV narrowed the claim during prosecution of the ’953 patent. Applicants received a § 112, second paragraph rejection for failing to particularly point out and distinctly claim the subject matter regarded as the invention. (D.I. 254, ex. 21 at IA962, ex. 22 at IA978) In response to the rejection, applicants added the words “uniformizing” and deleted the words “acceptable for the light means:”

[A] polarization converter, disposed between the illumination uniformizing means and a light valve, to polarize the light from the illumination uniformizing means into a polarized light [acceptable for the light means].

(D.I. 254, ex. 22 at IA0978) Motorola contends that this additional language narrowed the claim and, therefore, prosecution history estoppel applies such that IV cannot raise an infringement argument under the doctrine of equivalents. (D.I. 275 at 15)

Prosecution history estoppel may apply to an amendment under § 112 if the “amendment is necessary and narrows the patent’s scope — even if only for the purpose of better description.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 737, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002). The Court, in Festo, cautioned that the subject matter surrendered by the narrowing amendment must be examined, and rejected adopting a complete bar to a patent holder asserting infringement under the doctrine of equivalents. Id. at 737-38, 122 S.Ct. 1831 (explaining that “[t]he Court has consistently applied the doctrine in a flexible way, considering what equivalents were surrendered during a patent’s prosecution, rather than imposing a complete bar that resorts to the very literalism the equivalents rule is designed to overcome.”). As the “claims of equivalence [are] for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted,” IV is not barred from asserting infringement under the doctrine of equivalents. See id. at 738, 122 S.Ct. 1831. Motorola’s motion is denied as to the ’953 patent.

3. Invalidity

Motorola argues that the ’953 patent’s asserted claim 1 is invalid as either: (1) anticipated by U.S. Patent No. 6,559,911 (the “911 patent”) to Arakawa; (2) obvious by combining the ’911 patent with Kawai and/or Mizayaki; or (3) obvious by combining Ouderkirk with Mukasa. (D.I. 231 at 13-21)

a. Anticipation by the ’911 patent

The ’911 patent is directed to a back light for use in an LCD-type display. (See D.I. 232, ex. 7 at IA127 at 1:14-16) IV contends that the ’911 patent fails to disclose the following four limitations and, therefore, cannot anticipate claim 1: (1) “a light source comprising an array of a plurality of light emitting devices;” (2) “a polarization converter,” (3) a scattering pattern “gradually condensed from the incident plane towards the reflective side plane;” and (4) the claimed “reflective side plane.” (D.I. 250 at 12-16)

The court finds a genuine issue of material fact regarding the disclosure of the claimed polarization converter. The ’911 patent discloses a polarization light splitting film that includes an optical rotation selection layer that reflects one of the right and left circular polarization components of incident light and transmits the other component of the light. The film also includes a quarter-wave plate. The transmitted light is converted into linearly polarized light at the quarter-wave plate and is emitted from the polarization light splitting film as linearly polarized light. (,See D.I. 232, ex. 7 at IA128 at 4:10-4:29) Motorola cites to columns 6:32-40 to support its assertion that the polarization converter is in fact disclosed by the ’911 patent. (D.I. 261 at 6)

When an unpolarized light beam is incident on the optical rotation selection layer 1 from below, one of the right and left circularly polarized components of the incident light beam is reflected and the other component is transmitted through the optical rotation selection layer 1. The circularly polarized light transmitted through optical rotation selection layer 1 becomes a linearly polarized light beam through the quarter-wave layer 2 and is emitted from the polarization light splitting film 10.

(D.I. 232, ex. 7 at IA129 at 6:32-40)

IVs expert explains that the film does not meet the dual functions of the polarization converter, because it does not change the “unusable” polarized light into the polarization that can be used, rather it reflects the “unusable” polarized light and converts it into unpolarized light in the diffusion layer. (D.I. 268 at IVA640-41 at ¶¶ 15-16) Columns 8:47-58 of the ’911 patent state:

In addition, with the diffusion layer 5, reflected light can be re-used in the polarization light splitting film itself.... The reflected circularly polarized wave is scattered in the diffusion layer and changed into unpolarized light, and the unpolarized light returns to the optical rotation selection layer.

(D.I. 232, ex. 7 at IA130 at 8:47-58)

The court concludes that, under its construction of a polarization converter, IV has raised a genuine issue of material fact as to whether the ’911 patent discloses the conversion of the unusable light reflected by the optical rotation selection layer from one linear polarization to another. Accordingly, the court does not address whether the ’911 patent, when combined with Kawai and/or Miyazaki, renders the ’953 patent obvious as Motorola does not contend that either Kawai or Miyazaki disclosed the claimed polarization converter. (See D