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Judge Robinson grants-in-part motions for summary judgment of invalidity and non-infringement, construes claims

In Intellectual Ventures I, LLC, et al. v. Motorola Mobility, LLC, C.A. No. 11-908-SLR (D. Del. Jan. 2, 2014), defendant had moved for summary judgment of invalidity and non-infringement of six patents-in-suit. Judge Sue L. Robinson granted summary judgment of non-infringement as to the one of the patents-in-suit, finding that the accused product performed steps expressly prohibited by this patent. Id. at 22-24. The Court also granted summary judgment of invalidity as to a different patent because it determined that the combination of two prior art references rendered this patent obvious. Id. at 38-40. Specifically, the Court concluded that one reference’s “warning of increased costs” as to the a stated object of the patent’s invention did not teach away from combining the two references. Id. at 40.

The Court denied the remaining motions because genuine issues of material fact existed. In denying defendant’s motions, the Court, among other issues, concluded that: plaintiff was not precluded from applying the doctrine of equivalents as to a certain patent due to amendment of claims during prosecution because “the claim of equivalence are for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted,” id. at 35; defendant’s own patent was not entitled to the priority date of an abandoned “grandparent application” (and therefore did not qualify as prior art) because there were key differences between the disclosures in defendant’s patent and those of the grandparent application, id. at 46-49; one patent-in-suit was not entitled to an earlier priority date based on PowerPoint presentation by its inventor because metadata showing its creation date was insufficient to show reduction to practice, id. at 61-63.

The Court also construed the following terms:

“at the second device, [of] the single combined file irrespective of user action at the second device,” id. at 17-18;
“absent non-transient intermediate storage of the selected file on an intervening communications device of the communications network,” id.;
“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,” id. at 18-19;
“delivery report,” id. at 19;
“Authenticating device of the communications network;” id. at 19-20;
“A polarization converter … to polarize the light from the illumination uniformizing means into a polarized light,” id. at 30-31;
“A light source, comprising an ‘array of a plurality of light emitting devices,’” id. at 31-32;
“Presenting a directory of software [updates] available for installation on the user station,” id. at 41-42;
“Presenting a directory of software [updates] available for installation on the user station and not already installed on the user station,” id. at 43;
“Content,” id. at 50-51;
“Effect presentation … with a user interface that is customized to the respective publishers,” id. at 51-52;
“Allocating is responsive to at least one field in the packet header,” id. at 57-59;
“Central processor,” id. at 65-66;
“Detachable headset,” id. at 66-67.

Intellectual Ventures I, LLC, et al. v. Motorola Mobility, LLC, C.A. No. 11-908-SLR (D. Del. Jan. 2, 2014)

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