Apple v. Motorola: Apple Wins Motion for Summary Judgment of Non-Infringement

June 14, 2012

Apple moved for summary judgment with respect to Claim 5 of Motorola's U.S. Patent No. 6,175,559 (the '559 patent). Claim 5 of the '559 patent provides for a A method of generating preamble sequences in a CDMA system, the method comprising" steps of forming an outer code, forming an inner code and multiplying the outer code by the inner code to generate a preamble sequence.

A couple of weeks earlier, the district court interpreted the claim language to mean that the third step of multiplying the chips of the inner code by the chips of the outer code only occurs after the inner code and outer code are completed. Apple argued on summary judgment that its devices do not completely form the alleged inner and outer codes before those codes are combined to generate the preamble sequence.

The district court found that Apple's devices could not literally infringe the claimed method because the devices used an "all at once" method rather than a "one by one" method: "The preamble sequences actually used by Apple's devices involve many more chips. But it is clear they generate a single chip of the inner code and a single chip of the outer code, the combine the two chips two chips to form a single chip of the preamble sequence, before repeating the process to generate the next chip of the preamble sequence, and the next, and so on. This is chip-by-chip formation of the preamble sequence. My May 20 ruling determined that the method of '559, the method Apple is alleged to infringe, forms the preamble sequence sequentially; it forms all the chips of the inner and outer codes before multiplying them to create the entire preamble sequence. This is an "all at once" rather than "one by one" method of creating the preamble sequence. Because the preamble sequence at issue is more than one chip long, the two methods of formation are different. So, given my interpretation of the order of steps 1,2, and 3 in claim 5 of the '559 patent, Apple's devices cannot literally infringe claim 5 of '559."

After Motorola conceded that it could not establish literal infringement, it asserted that it could establish infringement under the doctrine of equivalents by "proving that chip-by-chip formation of the preamble code is equivalent to sequential formation." The district court also rejected this argument, finding the "specific exclusion principle" applied and prevented the doctrine of equivalents from vitiating a claim limitation. "Motorola requested that I decide whether claim 5 of the '559 patent described a method whereby the multiplication of the inner and outer codes could begin before the inner and outer codes were fully formed. In my May 20 ruling I determined that it did not describe suck a method; claim 5 is limited to methods in which the inner and outer codes are fully formed before being multiplied together. Deeming the two methods equivalents would nullify the limitation inherent in my May 20 ruling. It would allow Motorola to establish infringement (via the doctrine of equivalents) as if I had adopted, rather than rejected, its argument about the order of claim 5's method steps. The "specific exclusion principle" prevents "the doctrine of equivalents...[from being] employed in a way that wholly vitiates a claim limitation." SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1345-47 (2001); see also Warner Jenkinson Co. v. Hilton Davis Chemical Co., supra, 520 U.S. at 28-30. The principle bars Motorola from evading the limitation in my May 20 ruling - that the inner and outer codes must be formed prior to multiplying them together - by appealing to the doctrine of equivalents. The principle applies with as much force to limitations imposed through claims construction as to limitations that are clear on the face of the claim. Athletic Alternatives, Inc. v. Prince Manufacturing, Inc., 73 f.3d 1573, 1582 (fed. Cir 1996)."

Accordingly, the district court granted summary judgment in Apple's favor on Claim 5.

Apple Inc. and NeXT Software Inc. v. Motorola, Inc. and Motorola Mobility, Inc., Case No. 1:11-cv-08540 (N.D. Ill. June 5, 2012)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or