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By Peter Leung
April 11 — A federal district court has rejected Apple Inc.'s argument that a patent on silencing a ringing phone without alerting the caller is invalid.
The U.S. District Court for the District of Delaware on April 11 denied Apple's motion of summary judgment on the grounds that MobileMedia Ideas LLC's patent is indefinite (MobileMedia Ideas LLC v. Apple Inc, 2016 BL 112340, D. Del., Civ. No. 10-258-SLR, 4/11/16).
The denial of the motion means MMI's claim that Apple's iPhone 3G, iPhone 3GS and iPhone 4 are infringing its patent lives on.
MMI is a patent licensor formed by MPEG LA. Its U.S. Patent No. RE39,231 is a patent with a means-plus function limitation that relates to communication equipment and a method for stopping a phone's ringing. A means-plus-function claim limitation describes a particular function and the means to achieve that function.
In this patent, the function is silencing the phone's alert sound, with the parties disagreeing as to the means described.
The trial court had previously ruled that Apple did not infringe MMI's patent, because the only means covered by the patent is reducing the volume of the sound. However, the U.S. Court of Appeals for the Federal Circuit disagreed, saying that the patent limitation also describes an alternate means, namely to use an on/off controller .
The Federal Circuit then remanded the case back to the trial court to reconsider the noninfringement ruling.
On remand, the trial court denied Apple's arguments that the patent was indefinite or that Apple's devices do not infringe.
Apple attempted to argue the patent claims were indefinite because they are means-plus-function claims that lack a sufficient structure. This is a common way to attack means-plus-function claims, because 35 U.S.C. §112(f) requires a special indefiniteness analysis for these types of claims.
The court disagreed with Apple, finding that the disputed patent claims were sufficiently definite.
First, it found that a person skilled in the art would understand the structure of the “alert sound generator” limitation in the patent specification and associate it with the claimed function.
The court also ruled that the specification relating to a means for controlling the alert sound generator sufficiently disclosed an algorithm, so it is not indefinite. It particular, the court pointed out that an algorithm can be disclosed in any format, and the patent here does so using words and figures.
Finally the court rejected Apple's summary judgment motion for a noninfringement ruling. The court explained that at the summary judgment stage, where the facts are construed in favor of the non-moving party, Apple cannot establish that its products do not meet the “alert sound generator” and “control means” limitations of the patent.
Judge Sue L. Robinson issued the ruling. Morris, Nichols, Arsht & Tunnell LLP, and Proskauer Rose LLP represented MMI. Morris James LLP and O'Melveny & Myers LLP represented Apple.
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