Motorola Noninfringement of Microsoft Phone Patents Upheld With Menu Design Change

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By Tony Dutra  

Oct. 3 --Certain Motorola mobile phones infringe one patent asserted by Microsoft, but Motorola's proposed alternative designs do not, the U.S. Court of Appeals for the Federal Circuit ruled Oct. 3 (Microsoft Corp. v. Int'l Trade Comm'n, Fed. Cir., No. 2012-1445, 10/3/13).

The court upheld the International Trade Commission's rulings in favor of Motorola Mobility LLC related to its Blur mobile phones and Xoom tablet, with the exception of that one patent, which covers how menus are presented to the end user. However, Motorola had asked the ITC to consider the alternative designs as a backup, and the court's different claim construction reversals did not cover those designs.

However, the ITC had found in favor of Microsoft on a patent not at issue in the instant case, which may still require an additional loss of functionality in Motorola phones to prevent an import ban.

ALJ Finds One Patent Valid, Infringed

Microsoft Corp. owns several patents (5,664,133; 5,758,352; 6,370,566; 6,578,054; 6,826,762; 6,909,910; and 7,644,376) generally related to the operating system of a mobile phone.

Microsoft filed an action at the ITC to bar imports by Motorola of Blur mobile phones--the Atrix, Backflip, Bravo, Charm, Cliq, Cliq2, CliqXT, Defy, Devour, Droid, Droid Pro, Droid X, Droid 2, Droid 2 Global, Droid X2, Flipside, Flipout and Spice--and Google Experience devices, including the Xoom tablet.

Administrative Law Judge Theodore R. Essex issued a 233-page initial determination in December 2011. He found the '352 and '910 patents invalid for obviousness, but otherwise rejected Motorola's arguments for patent invalidity.

As Motorola did not contest the ALJ's finding of infringement of four claims of the '566 patent--on scheduling a meeting from the mobile phone--and the commission did not reverse the validity judgments , Motorola filed an appeal as to that patent separately. No. 2012-1535 (Fed. Cir., oral argument Aug. 6, 2013).

Essex held the other four patents to be not directly infringed, and he found that Motorola had not induced infringement as to all seven patents. He further found that Microsoft established the domestic industry requirement for ITC actions, set forth in 19 U.S.C. §1337(a)(2) and (a)(3), only for the '133 patent, and not for the '054, '762 and '376 patents.

Those judgments formed the basis of Microsoft's appeal here.

Three Patents Knocked Off

Judge Richard G. Taranto wrote the court's opinion, beginning with a rejection of Microsoft's challenge to the ITC's '054 patent claim construction decisions.

That patent is directed to a synchronization of data, such as a calendar entry, between the mobile phone and a central server. The court agreed with the ITC that the asserted claims require passing version information from one device to the other, which the Motorola devices do not do.

The court affirmed the failure to meet the domestic industry requirement for both the '762 and '376 patents as well. The court said it would not overturn the ALJ's judgment that Microsoft's evidence was inadequate. In each case, Microsoft presented only “the source code that Microsoft provides to mobile-phone manufacturers, rather than specific code actually installed and run on a particular third-party mobile device,” the court said.

Current Design Infringing; Alternate Design Okay

Those three patents relate to the inner workings of the Microsoft operating system, but the '133 patent is directed to the user interface. The asserted claims are on displaying context- and object-sensitive menus, such as what to present to the end user who clicks on a phone number compared to clicking on a calendar entry.

The court disagreed with the ITC on two points. The first was generally related to the logic of determining which menu to display, and the court ruled that the ITC had made “unwarranted additions” to the selection criteria.

Second, Essex had determined that the positioning of the menu--in “proximity” to the object the end user is working on--on the screen must be “deliberate.” That essentially meant that the logic must make a decision on the menu's location, while the Motorola devices always positioned the menu in the center of the screen.

The court saw no support for this “deliberate” positioning requirement and concluded that the existing design of the Motorola products was infringing because the center of the screen was always in proximity to the object. “Unavoidable proximity is still proximity,” the court said.

However, the alternate design Motorola proposed was to cover over the graphical representation of the object with the menu. The court said that a menu cannot be “in proximity to something not actually seen on the screen.”

Finally, the court noted that its decision here was related to direct infringement only, and the commission had not considered ALJ Essex's findings on indirect infringement. The court thus left it to the commission to reconsider those arguments on remand.

Chief Judge Randall R. Rader and Judge Sharon Prost joined the opinion.

Constantine L. Trela Jr. of Sidley Austin LLP, Chicago, represented Microsoft. Charles K. Verhoeven of Quinn Emanuel Urquhart & Sullivan LLP, San Francisco, represented Motorola. Michael Liberman, an attorney in the ITC's Office of the General Counsel, Washington, D.C., represented the commission.


To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Naresh Sritharan at

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