20 September 2017
Washington DC
Reporter: Barney Dixon

Motorola wins direct infringement challenge


Motorola has won its direct patent infringement appeal against Intellectual Ventures, but failed to secure an invalidity ruling.

The telecommunications company failed to convince the panel at the US Court of Appeals for the Federal Circuit, which upheld the validity of two Intellectual Ventures patents relating to a file transfer system and portable computing devices.

But the court did not support the district court jury’s finding of direct infringement, because Intellectual Ventures had failed to demonstrate that Motorola had obtained “benefit” from each and every element of the system.

Intellectual Ventures claimed that evidence of Motorola customers using Multimedia Messaging Services (MMS) on their Motorola phones directly infringed its patents and that Motorola had also directly infringed the patents by testing the service’s functionality.

The court said: “The critical question here is whether there was substantial evidence that Motorola’s customers obtained a ‘benefit’ from the generation of delivery reports.”

“Neither of Intellectual Ventures’s direct infringement theories purported to explain how Motorola’s customers satisfied this claim limitation by using the accused phones. Indeed, there is no evidence that the customers ever ‘generated a delivery report’.”

Instead, the court said that Intellectual Ventures had relied on testimony and evidence that delivery reports were generated by MMS Centres maintained and operated by the customers’ wireless service carriers, when the customers used the accused phones.

“Here, IV’s sole record citation contains just one sentence about the delivery report, and that sentence says nothing about the benefits flowing from the delivery reports to the customer sending the message,” the court added.

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