IDC actually did not "lose" the Mot trial (other than the failure of Motorola to pay licensing fees to IDC, which can be renewed later). Read the trail transcript below.
If you read the last paragraph: "In accordance with this opinion...the district court's grant of JMOL in favor of ITU on claims 8, 9, and 11 of the '089 patent. This court reverses the district court's denial of JMOL in favor of ITU with regard to the validity of claim 1 of the '705 patent and claim 178 of the '375 patent."
What is known is that (a) the patent office revalidated EACH AND EVERY CLAIM OF 089 AND 705. (b) What is being made known in the ERICY trial is that the specified claims above are in themselves a function of the entire TDMA system (signal modulation "is" TDMA); one can not operate TDMA without modulation. The entire TDMA/GSM system (technology) is dependent on the function of the above referenced claims. The coders and multiplexers which are described in conjunction with other TDMA system operations were also developed by IDC and essential to the operation of TDMA and claimed as a violation by ERICY in the current IDC/ERICY trial.
So; the judge in the case left open the possibility that IDC can come back against Motorola in reference to the above referenced claims. The Judge's comments in the case are sad. He states that because IDC didn't object to certain statements made by Dr. Cox (a Motorola expert witness) during the trial, that IDC is not allowed to object after the trial. I'm not an attorney, but clearly, justice was not served; even though this was a screw up on IDC's attorney's part - but it is fixable given current developments.
Fast forward to today. IDC has been awarded FULL PATENT REVALIDATION of 089 (in addition to two other specific patents applicable to the case describing a fully functional TDMA system from stem to stern). You can review the current objections ERICY gave to the revalidation to Judge Sanders and how that Judge Sanders denied their motions - a big plus for IDC.
The entire reading of the trial reads like a screwup from beginning to end. It is a terribly handled case. But much of it is fixable now. Any current engineer (ones I know) reading the trial transcripts would arrive at similar conclusions (if they made a full study of the Kinoshita, Motorola, and Austrailian prior art). The indivdiual at the patent office who was responsible for the patent revalidation of IDC's claims reviewed ALL of the above prior art references - everything - and concluded IDC's 089 and others should be revalidated in full.
You tell me.
2. ITC?s Challenges Concerning Specific Claim Limitations
In addition to the general challenges to the invalidity verdicts discussed above, ITC also argues that the prior art references relied upon by the jury for its anticipation and obviousness findings are missing some specific claim limitations altogether.
Synchronization means limitation. This court turns first to the jury?s finding, and the district court?s corresponding judgment, that the Kinoshita (1981 Japan) prior art reference anticipated claim 1 of the ?705 patent. ITC argues that this holding cannot stand because the prior art reference lacks the claimed ?means to determine synchronization.? The claimed means must ?utiliz[e] a code for exchanging the current state of the connection [between the base station and the subscriber stations], the link quality, and the power and timing adjustments.? ?705 patent, claim 1. Indisputably, the Kinoshita (1981 Japan) prior art reference does not describe the use of a code having these four functions.
Motorola does not point to, nor does this court discern, anything in the Kinoshita (1981 Japan) prior art reference that specifically addresses this inadequacy. Instead, Motorola relies, as did the district court, on the trial testimony of Dr. Cox:
The [Kinoshita (1981 Japan)] reference does discuss the need for synchronization. That is one of the issues that Kinoshita was concerned with and discusses in the paper. So that is in there, yes.
Trial Transcript, p. 3140. The district court recognized that Dr. Cox?s testimony lacked specificity, but it reasoned that ITC must suffer the consequences of its failure to expose that deficiency through cross-examination. Because ITC did not address the issue before the jury, the district court concluded that the jury was entitled to credit Dr. Cox?s unrebutted testimony and conclude that the prior art reference contained all claimed elements.
The district court?s holding misapprehends the rigors of anticipation. For a prior art reference to anticipate a claim, the reference must disclose each and every element of the claim with sufficient clarity to prove its existence in the prior art. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) (?[T]he [prior art] reference must describe the applicant?s claimed invention sufficiently to have placed a person of ordinary skill in the field of the invention in possession of it.? (citations omitted)). Although this disclosure requirement presupposes the knowledge of one skilled in the art of the claimed invention, that presumed knowledge does not grant a license to read into the prior art reference teachings that are not there. An expert?s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself. See Jamesbury Corp. v. Litton Indus. Prods., Inc., 756 F.2d 1556, 1563, 225 USPQ 253, 257-58 (Fed. Cir. 1985) (granting JNOV of validity where the record as a whole, including the apparent content of the prior art reference, did not support an expert?s conclusory testimony of anticipation); cf. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 314 (Fed. Cir. 1983) (reversing trial court?s judgment of invalidity because expert?s testimony of inherent anticipation, unsupported by the evidentiary record, cannot serve as a basis for a finding of anticipation).
Without any disclosure of the four particular synchronization functions in the Kinoshita (1981 Japan) prior art reference, the jury?s anticipation verdict cannot stand. Likewise, because no combination of prior art references for obviousness describes the four particular functions recited in the claim, the jury?s obviousness verdict must also fall. Thus, this court reverses the district court?s denial of JMOL on the invalidity of claim 1 of the ?705 patent.
Subscriber station limitation. ITC next argues that no substantial evidence supports the jury?s implicit finding that the ?mobile unit? in the Kinoshita (1981 Japan) reference meets the claimed ?subscriber station? limitations in the ?863 patent (claims 3-6) and the ?send/receive unit? limitation in the ?375 patent (claims 162 and 178). The prior art reference recites a ?mobile unit,? but does not describe the contents of the mobile unit. It does, however, describe the contents of the ?base unit.?
The district court properly found substantial evidentiary support for the anticipation verdict in the trial testimony of Dr. Cox. Dr. Cox testified that a person with ordinary skill would understand Kinoshita?s ?mobile unit? to be ?compatible with the parameters of [Kinoshita?s] base station.? If the jury credited Dr. Cox?s testimony, which it was entitled to do, it could have concluded that the undescribed contents of the mobile unit would mirror the fully-described contents of the base unit. On this basis, the record supplies adequate evidence to support the jury?s implicit finding that the Kinoshita (1981 Japan) prior art reference disclosed the claimed ?subscriber station? or ?send/receive unit.?
Moreover, an entirely independent basis also supports the district court?s ruling on these claims. The jury also found these claims obvious. For that verdict, the jury relied on another prior art reference presented by Dr. Cox, the Kinoshita (IEEE) prior art reference.[7] That reference indisputably contains a full description of the contents of Kinoshita?s mobile unit. Thus, the jury did not ignore the ?subscriber station? and ?send/receive unit? limitations.
Half-duplex limitation. Finally, ITC argues that substantial evidence does not support the jury?s verdict of obviousness on claim 178 of the ?375 patent because the prior art references identified by the jury do not disclose the claimed half-duplex operation. Under this mode of operation, the send/receive unit (i.e., the subscriber station) sends and receives RF transmissions at different times. The special verdict lists three references on which the jury purportedly relied in finding the claim obvious, the Kinoshita (1981 Japan), Kinoshita (IEEE), and the 1983 NEC prior art references. However, none of these references discloses half-duplex operation. Thus, the obviousness verdict cannot possibly rest on the references listed by the jury.
In reviewing this verdict, the district court mistakenly grouped claim 178 with the claims that the jury invalidated over combinations including the White patent and the Henry & Glance prior art reference, both of which do describe half-duplex operation. If the special verdict had listed these additional prior art references, this court could sustain the verdict. As delivered, however, the record does not support the jury?s verdict. Under the same reasoning that impelled this court to deny Motorola?s request to read missing references into the jury?s verdict on the ?089 patent, this court declines to read references into the jury?s special verdict on the ?375 patent. ITC is entitled to JMOL of validity on claim 178 of the ?375 patent.
III.
In accordance with this opinion, this court affirms the district court?s grant of JMOL in favor of ITC on claims 8, 9, and 11 of the ?089 patent. This court reverses the district court?s denial of JMOL in favor of ITC with regard to the validity of claim 1 of the ?705 patent and claim 178 of the ?375 patent. In all other respects, this court affirms the district court?s thorough and careful reasoning in denying JMOL. This court also affirms the district court?s denial of Motorola?s request for attorney fees and the district court?s denial of ITC?s request for a new trial."
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