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Lucent Technologies, Inc. v. Gateway

June 19, 2008

LUCENT TECHNOLOGIES, INC. AND MULTIMEDIA PATENT TRUST CONSISTING OF MATTERS SEVERED FROM THE CONSOLIDATED CASES: PLAINTIFFS AND COUNTER-DEFENDANTS,
v.
GATEWAY, INC., ET AL. DEFENDANTS AND COUNTERCLAIMANTS.
MICROSOFT CORPORATION, INTERVENOR AND COUNTERCLAIMANT



The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court

ORDER ON POST-TRIAL MATTERS FOR UNITED STATES PATENT NUMBERS 4,439,759; 4,763,356; 4,958,226; AND 5,347,295; INCLUDING: and (1) MOTIONS FOR JUDGMENT AS A MATTER OF LAW, NEW TRIAL, OR REMITTITUR; AND (2) RULINGS ON EQUITABLE MATTERS TRIED TO THE COURT AND RELATED CLAIMS [Doc. Nos. 759, 760, 770, 772.]

This order addresses the remaining post-trial questions in this case, including motions for judgment as a matter of law ("JMOL"), motions for new trial, and rulings on equitable matters tried to the Court. The trial involved four United States Patents: 4,439,759 ("Fleming '759" or "'759"); 4,763,356 ("Day '356" or "'356"); 4,958,226 ("Haskell '226" or "'226"); 5,347,295 ("Agulnick '295" or "'295"). Lucent Technologies, Inc. ("Lucent") asserted the '356 and '295 patents against Microsoft Corporation ("Microsoft") and Dell Inc. ("Dell" and collectively with Microsoft "Defendants"). Lucent asserted the '759 patent against Microsoft only. Multimedia Patent Trust ("MPT"), a Delaware trust with Lucent as the primary beneficiary, asserted the '226 patent against Microsoft only.

The parties filed their initial briefs on these post-trial matters on May 5, 2008. MPT moved for JMOL, new trial, and entry of judgment on equitable matters related to the '226 patent. (Doc. No. 759.) Lucent moved for JMOL and new trial on the '759 and '356 patents. (Doc. No. 760.) Microsoft moved for JMOL, new trial, or remittitur on various issues related to the '356, '295, and '226 patents. (Doc. No. 770.) Dell joined in sections of Microsoft's motions applicable to it. (Doc. No. 792.) Microsoft also moved for entry of judgment on the equitable matters related to the '226 patent yet to be decided by the Court. (Doc. No. 772.)

The parties filed their responsive briefing on May 19, 2008. Dell filed an opposition to Lucent's motion regarding the '759 and '356 patents. (Doc. No. 804.) Microsoft filed an opposition to MPT's motion regarding the '226 patent. (Doc. No. 805.) MPT opposed Microsoft's combined motion to the extent that it addressed the '226 patent. (Doc. No. 808.) Lucent opposed Microsoft's combined motion to the extent that it addressed the '356 and '295 patents. (Doc. No. 809.) MPT filed an opposition to Microsoft's motion for entry of judgment on the bench trial issues. (Doc. No. 810.)

The parties filed their reply briefs on May 27, 2008. Microsoft filed replies in support of its post-trial motions and motion for entry of judgment on bench trial issues. (Doc. Nos. 826-28.) Lucent filed a reply in support of its motion regarding the '759 and '356 patents. (Doc. No. 830.) MPT filed a reply in support of its motion regarding the '226 patent. (Doc. No. 831.)

The Court held a hearing on these matters on June 13, 2008. Robert Appleby, Paul Bondor, John Desmarais, Jeanne Heffernan, James Marina, and Michael Stadnick appeared for Lucent and MPT. John Gartman, Juanita Brooks, and Roger Denning appeared for Microsoft. Joseph Micallef appeared for Dell.

Background

I. Overview of Infringement Liability

The underlying trial concerned the alleged infringement of four patents asserted by Lucent and MPT against Microsoft and Dell.*fn1 On April 4, 2008, the jury returned a special verdict for all four patents, including advisory verdicts on certain equitable issues to be decided by the Court. (Doc. No. 735.) The jury found that Microsoft infringed the '356 patent, and that both Microsoft and Dell infringed the '295 patent. The jury found no infringement of either the '226 or '759 patents. The jury found Microsoft liable to Lucent for $357,693,056.18 based on infringement of the '356 patent. For infringement of the '295 patent, the jury found Microsoft liable to Lucent for $10,350,000 and Dell liable for $51,000.

II. Day '356

The Patent and Trademark Office ("PTO") issued the '356 patent, entitled "Touch Screen Form Entry System," on August 9, 1988, based on an application filed December 11, 1986. Only method claims 19 and 21 were at issue in this trial. Claim 19 is an independent claim, and claim 21 is a related dependent claim. Claim 19 states:

A method for use in a computer having a display comprising the steps of displaying on said display a plurality of information fields, identifying for each field a kind of information to be inserted therein, indicating a particular one of said information fields into which information is to be inserted and for concurrently displaying a predefined tool associated with said one of said fields, said predefined tool being operable to supply information of the kind identified for said one field, said tool being selected from a group of predefined tools including a tool adapted to supply an individual entry from a menu of alternatives and at least a tool adapted to allow said user to compose said information, and inserting in said one field information that is derived as a result of said user operating said displayed tool.

Claim 21 further limits the step of "displaying said pattern" to include "the step of displaying one or more of said information fields as a bit-mapped-graphics field."

For this patent, Lucent submitted evidence of indirect infringement. Lucent asserted claim 19 against Microsoft and Dell based on versions of Microsoft Money, Microsoft Outlook, and Windows Mobile. Lucent also asserted claim 19 against Dell only, based on sales of Quicken versions 2000 through 2006. Lucent asserted claim 21 against Microsoft and Dell based only on the various versions of Windows Mobile.

The jury found Microsoft liable on claim 19 as to all three products and on claim 21 as to Windows Mobile, and it returned a finding of no infringement by Dell.*fn2 The verdict did not distinguish between inducing and contributory infringement. The jury awarded a single lump sum against Microsoft for all products involved.

Defendants presented affirmative defenses of anticipation and obviousness. The jury found for Lucent on both.

III. Haskell '226

The PTO issued the '226 patent, entitled "Conditional Motion Compensated Interpolation of Digital Motion Video," on September 18, 1990, based on an application filed September 27, 1989. At trial, Lucent only asserted claim 12, a means-plus-function apparatus claim which states:

A circuit responsive to coded video signals where the video signals comprise successive frames and each frame includes a plurality of blocks and where the coded video signals comprise codes that describe deviations from approximated blocks and codes that describe deviations from interpolated blocks, comprising: means for developing block approximations from said codes that describe deviations from approximated blocks; and means responsive to said block approximations and to said codes that describe deviations from interpolated blocks to develop said interpolated blocks.

MPT introduced evidence of both direct and indirect infringement by Microsoft. The accused products included Microsoft software and hardware containing an MPEG-1, MPEG-2, or VC-1*fn3 video decoder, referring to industry standards for video compression and playback used for various products including DVDs and HD DVDs. Specifically, MPT accused Microsoft based on Windows operating system versions 95B through Vista, the Microsoft Xbox 360 video game system, and Windows Media Player versions 9 through 11.

The jury found that none of Microsoft's accused products had infringed claim 12. The jury also found that claim 12 was invalid for obviousness, though not invalid for anticipation. Furthermore, the Court asked the jury to return advisory verdicts on Microsoft's defenses of laches and inequitable conduct regarding the '226 patent. The jury recommended that Lucent be barred from obtaining pre-suit damages due to laches, but found no inequitable conduct.

IV. Agulnick '295

The PTO issued the '295 patent, entitled "Control of a Computer Through a Position-Sensed Stylus," on September 13, 1994, based on an application filed October 31, 1990. At trial, Lucent only asserted claim 1, a means-plus-function apparatus claim which states:

An apparatus for controlling a computer system, the computer system comprising a screen for displaying information and a stylus having a tip for inputting information into the computer, including: first detecting means coupled to said computer for detecting a stroke of the stylus tip in contact with the screen; second detecting means coupled to said computer for detecting a departure of the stylus tip from the screen; means coupled to said computer for defining termination of a gesture comprising at least one stroke in response to said departure of the stylus tip; means coupled to said computer for recognizing a plurality of said gestures, said recognizing means including means for comparing each said gesture to at least one predefined shape; means coupled to said computer for implementing each said recognized gesture, said implementing means including means for performing a predetermined action associated with each said predefined shape, said predetermined action being determined by the context in which said gesture was used, including a first context in which said action is executed upon an operating system level object and a second context in which said action is executed upon an application level object.

Lucent introduced evidence of direct and indirect infringement by Dell, and evidence of indirect infringement by Microsoft.The accused products were Tablet PC Computers installed with the Windows XP Tablet PC Edition operating system. Lucent based its accusations against Microsoft on all sales of Windows XP Tablet PC Edition, while its accusations against Dell were limited to Dell's sales of Windows XP Tablet PCs.

The jury returned a finding that both Microsoft and Dell had infringed claim 1. The jury awarded Lucent damages of $10,350,000 from Microsoft and $51,000 from Dell.

Defendants presented affirmative defenses of anticipation and obviousness. The jury found for Lucent on both.

V. Fleming '759

The PTO issued the '759 patent, entitled "Terminal Independent Color Memory for a Digital Image Display System," on March 27, 1984, based on an application filed May 19, 1981. At trial, Lucent only asserted claim 1, a means-plus-function apparatus claim which states:

In a digital image display system: a memory for storing color data values; processing means responsive to a predetermined command and data sequence comprising at least one command, the processing means decoding the predetermined command and data sequence, the predetermined command and data sequence selecting one of a plurality of modes of access to color data values, the modes comprising: a first mode of access wherein an in-use foreground color is directly specified as a color data value; a second mode of access wherein the in-use foreground color is specified as an index into the color memory; and a third mode of access wherein the in-use foreground color and an in-use background color are specified as indexes into the color memory; and display means responsive to the processing means, the display means displaying the colors associated with the color data values accessed by the selected mode.

Lucent introduced evidence of both direct and indirect infringement by Dell. The accused products covered all computer systems sold by Dell between October 20, 1998, and May 19, 2001, that included a version of the Windows operating system. Lucent based its accusations on the presence of the Windows graphics device interface ("GDI") in these products.

The jury found that Lucent failed to prove that it had provided Dell with pre-suit notice of infringement for this patent. Significantly, the jury also returned a finding of no infringement. Dell asserted affirmative defenses of anticipation and obviousness, and the jury found for Lucent on both.Furthermore, the Court asked the jury to return advisory verdicts on Microsoft's defenses of laches and inequitable conduct regarding the '759 patent. The jury recommended that Dell should not prevail on either equitable defense.

Discussion

I. Standards for JMOL, New Trial, and Remittitur

In patent cases, the standards on motions for judgment as a matter of law or new trial are questions of regional circuit law. Finisar Corp. v. DirecTV Group, 523 F.3d 1323, 1328 (Fed. Cir. 2008). Judgment as a matter of law is available where "a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue." Fed. R. Civ. P. 50(a)(1). A party may renew the motion when not granted at trial. Fed. R. Civ. P. 50(b). A court must uphold the jury's verdict if it is supported by substantial evidence. Wallace v. City of San Diego, 479 F.3d 616, 624 (9th Cir. 2007). "Substantial evidence is evidence adequate to support the jury's conclusion, even if it is also possible to draw a contrary conclusion from the same evidence." Id. (quoting Johnson v. Paradise Valley Unified Sch. Dist., 251 F.3d 1222, 1227 (9th Cir. 2001)). Substantial evidence requires only "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Blanton v. Anzalone, 813 F.2d 1574, 1576 (9th Cir. 1987) (quoting Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1014 (9th Cir. 1985)). The court must not weigh the evidence and must "disregard all evidence favorable to the moving party that they jury is not required to believe." Wallace, 479 F.3d at 624. Furthermore, the court draws all reasonable inferences in favor of the nonmoving party. Id. Judgment as a matter of law is only appropriate if, once the court has applied this standard, it concludes that the evidence permits only one reasonable conclusion that is contrary to the jury's verdict. Id.

A party may also move for a new trial when requesting judgment as a matter of law following a jury trial. Fed. R. Civ. P. 50(b), 59. Whether to grant a new trial is a matter of the trial court's discretion. City Solutions, Inc. v. Clear Channel Communications, 365 F.3d 835, 843 (9th Cir. 2004). The court may grant a new trial if "the verdict is contrary to the clear weight of the evidence, or is based upon evidence which is false, or to prevent, in the sound discretion of the trial court, a miscarriage of justice." United States v. 4.0 Acres of Land, 175 F.3d 1133, 1139 (9th Cir. 1999) (quoting Oltz v. St. Peter's Cmty. Hosp., 861 F.2d 1440, 1452 (9th Cir. 1988)). To make a "clear weight of the evidence" determination, the court weighs the evidence as the court saw it. Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007) (quoting Murphy v. City of Long Beach, 914 F.2d 183, 187 (9th Cir. 1990)). If a court concludes that a new trial is appropriate due to excessive damages, the court may exercise its discretion to grant a new trial either without qualification, or conditioned on the winner's refusal to accept a reduction in damages, known as remittitur. See Gasperini v. Ctr. for Humanities, Inc., 518 U.S. 415, 433 (1996).

II. Day '356

A. Validity

1. Anticipation

Defendants seek judgment as a matter of law that a system known as the Foreign Exchange Front End ("FXFE") anticipated claim 19 under 35 U.S.C. §§ 102(b) or 102(g). Under section 102(b), patent protection may be unavailable where the invention was "in public use . . . more than one year prior to the date of the application . . . ." Under section 102(g), patent protection may be unavailable where "before . . . invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it." An anticipating public use or prior invention must include every limitation of the patented invention. Netscape Communications Corp. v. Konrad, 295 F.3d 1315, 1321 (Fed. Cir. 2002); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1379 (Fed. Cir. 1986). Anticipation, like other invalidity defenses, requires proof by clear and convincing evidence. Netscape Communications Corp. 295 F.3d at 1320.

The application for the '356 patent was filed on December 11, 1986. In January 1984, Datamation magazine published an article describing a prototype touch-screen system used by Chemical Bank, through which currency traders could fill out forms electronically. (DX AOD (Datamation article); AOE (enlargement of Datamation article's photograph).) The system was known as the Foreign Exchange Front End. The Datamation article included a single photograph of the FXFE display, with limited detail.

Judgment as a matter of law or new trial is not appropriate because the jury could have reasonably rejected the credibility of Defendants' witnesses, found that the FXFE did not include all elements of the method in claim 19, or found that the FXFE was not prior art under section 102. The evidence is sufficient to support a finding that the FXFE did not include "indicating a particular one of said information fields into which information is to be inserted ." The Datamation article did not describe this capability. (See DX AOD.) Defendants argue that a single FXFE photograph, of limited clarity, shows that a particular on-screen button is highlighted. (See DX AOE.) The jury could have concluded that this was not a "field" into which information could be entered.

Furthermore, applying the appropriate standards for these proceedings, there is a limited showing of whether the FXFE even involved "information fields" into which information was "inserted," within the meaning of the patent. The available image is limited in detail, and the text merely refers to entering information into "the system." (See, e.g., DX AOD at 148 ("For instance, when the user hits the 'broker' cell on the right, a list of brokers appears on the left; the trader then hits the name of the broker . . . and that information is entered into the system."); DX AOE.) Particularly given the standard of clear and convincing evidence, the jury could have reasonably concluded that Defendants failed to meet their burden on these elements as well. Lucent also argued that the FXFE did not have "graphical" tools or "concurrently display" a tool with an information field, though the Court concludes that there are ample other grounds to support the jury's finding of no anticipation.

The jury also could have concluded that the FXFE did not meet the requirements of section 102(b) or 102(g) prior art. Viewed under the applicable standards, the evidence indicates that the FXFE was developed mostly or entirely outside the United States, and still in a developmental or prototype form. Furthermore, the nature and circumstances of the demonstration are unclear in many respects.The jury could have reasonably concluded that the use was not sufficiently public or that any prior invention was abandoned. Public use is determined under the totality of the circumstances, and the Court concludes that this demonstration does not constitute clear and convincing evidence of public use as a matter of law. Cf. Harrington Mfg. Co. v. Powell Mfg. Co., 815 F.2d 1478, 1480-81 (Fed. Cir. 1986) (demonstration to reporter was sufficiently public use where evidence included "clear indication of . . . commercial motive," and indication that device operated "flawlessly"). The jury could draw many inferences against Defendants sufficient to conclude that the use was not public. For example, even if made to a reporter, it is unclear to what extent the demonstration was completely functional.

Also, there is no dispute that the touch-screen FXFE, as demonstrated, was not commercialized. "[A] first inventor may seek to avoid a determination of abandonment by showing that he or she marketed or sold a commercial embodiment of the invention or described the invention in a publicly disseminated document." Checkpoint Sys., Inc. v. U.S. Int'l Trade Comm'n, 54 F.3d 756, 762 (Fed. Cir. 1995). The ambiguities surrounding the FXFE demonstration, however, cast serious doubt on whether it preserved sufficient information about the system in the public domain to avoid a finding of abandonment. See id. (citing Palmer v. Dudzik, 481 F.2d 1377, 1387 (C.C.P.A. 1973), for the proposition that "to negate a finding of suppression or concealment, the public must have gained knowledge of the invention which will insure its preservation in the public domain").In summary, there is substantial evidence in the record to support the jury's determination of no anticipation. Furthermore, the Court concludes that the jury's finding is not against the clear weight of the evidence.

2. Obviousness

Defendants challenge the jury's finding that the '356 patent was not obvious. As prior art, they assert both the Datamation article and the FXFE system described above, along with J.K. Lasser's Your Money Manager software ("YMM") and the Windows 1.01 calculator. The obviousness defense requires proof by clear and convincing evidence. Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed. Cir. 2007) "The ultimate judgment of obviousness is a legal determination." KSR Int'l Co. v. Teleflex Inc., 550 U.S. ___, 127 S.Ct. 1727, 1745 (2007) (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966)). While courts therefore need not give deference to the jury's ultimate legal determination, courts still give deference to the jury's underlying findings of fact. See Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1338 (Fed. Cir. 2008) ("[T]his court reviews a jury's conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence.") (quoting Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007)). These underlying findings include "the scope and content of the prior art, the differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art . . . ." Id. at 1338-39.*fn4

When determining obviousness, "neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co., 127 S.Ct. at 1741-42. Instead, courts should determine whether the "objective reach of the claim" encompasses obvious subject matter. Id. at 1742. This may include "noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims." Id. "[T]he results of ordinary innovation are not the subject of exclusive rights under the patent laws." Id. at 1746. However, courts must avoid "falling prey to hindsight bias," "ex post reasoning," and "[r]igid preventative rules that deny factfinders recourse to common sense." Id. at 1742-43. Furthermore, "when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious." Id. at 1740.

"A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'l Co., 127 S.Ct. at 1741. A combination is likely nonobvious if the elements work together "in an unexpected and fruitful manner." Id. at 1740. In contrast, a patent is likely to be obvious if it merely yields a predictable result by substituting one element for another known in the field. Id.

On this record, the jury could have reasonably concluded that Defendants failed to provide clear and convincing evidence that the '356 patent is invalid for obviousness. First, there are factual problems with treating the FXFE as prior art. There were factual questions with whether the FXFE constitutes a prior public use or prior invention under sections 102(b) or 102(g). In this context the scope of prior art for obviousness purposes implicates the same considerations as section 102 prior art. Lucent Techs., Inc. v. Gateway, Inc., 537 F. Supp. 2d 1095, 1110 n.4 (S.D. Cal. 2008). Therefore, the jury was not required to accept the FXFE as prior art for the obviousness analysis. Also, with regard to the Datamation article, there were substantial uncertainties about the capabilities of the system described. The jury could have reasonably taken a narrow view of the descriptions offered by the article and its single photograph, which lacked any fine detail or portrayal of the FXFE interface at different steps in the process.

Regarding the YMM software, Lucent argued that it does not involve "graphical" tools, since its display is composed of text and symbols. It also argued that YMM does not permit "pointing" to the display keys of any tool, since the user controls Your Money Manager only using the keyboard, without aid of a mouse, touch pad, or similar device. Around the time of the Day '356 patent, the personal computer industry was undergoing a change from text-based, keyboard-only operation to operation using a keyboard and mouse to control graphical user interfaces. Based on the evidence, the jury could have concluded that there was insufficient evidence of obviousness.

The Court concludes that substantial evidence supports the jury finding of no obviousness. Lucent introduced evidence, including its expert's opinion and testimony from the designer of YMM, that adapting YMM to a mouse-driven graphical interface would not have been an obvious or trivial undertaking. For example, the designer of YMM stated that "from a technical and business standpoint, it made no sense to even consider" this adaptation to an interface like Windows 1.01. (Trial Tr. XII 215:13-216:16.) The jury could reasonably have accepted this testimony, and the corresponding opinion of Lucent's technical expert, while rejecting that of Defendants' expert. The patented technology is more than 20 years old, the patent term having expired in 2006. While users of today's computers may find many graphical interfaces intuitive, and hardware advances have eased the implementation of more sophisticated controls, the obviousness analysis must avoid hindsight bias, as the jury did here. Neither JMOL or a new trial is appropriate on the jury's finding that the '356 patent is not invalid for obviousness.

B. Infringement

1. The Jury's Finding of Infringement by Microsoft

a. Whether Outlook Contains a Composition Tool

A finding of infringement requires that every limitation of a claim be present, either literally or by the doctrine of equivalents. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1268 (Fed. Cir. 1999). "A determination of non-infringement, either literal or under the doctrine of equivalents, is a question of fact." Miken Composites, L.L.C. v. Wilson Sporting Goods, Co., 515 F.3d 1331,1336 (Fed. Cir. 2008).

Microsoft challenges the jury's finding of infringement for Microsoft Outlook ("Outlook"), contending that Outlook does not contain a "composition tool," within the meaning of the claims.*fn5 A composition tool is one limitation in the third step of method claim 19, which requires: indicating a particular one of said information fields into which information is to be inserted and for concurrently displaying a predefined tool associated with said one of said fields, said predefined tool being operable to supply information of the kind identified for said one field, said tool being selected from a group of predefined tools including a tool adapted to supply an individual entry from a menu of alternatives and at least a tool adapted to allow said user to compose said information.

The Court concludes that substantial evidence supports the jury's finding that Outlook infringes claim 19. Outlook is a software product that provides the user with a number of services including e-mail, calendar and appointment management, and management of contact information. Microsoft's documentation describes form entry as a central aspect of Outlook's user interface. (See, e.g., PX 1138B (Outlook help file stating that "Every Outlook item . . . is based on a form.").) Outlook includes a calendar tool to assist the user in entering dates on its form for specifying appointment information. The tool displays a monthly calendar as a grid of numbered dates, along with graphical controls that allow the user to scroll to adjacent months or skip directly to a different month and year. Within the currently displayed month, the user can select a particular date. Once the user defines a date with this tool, the software enters the numerical day, month, and year into the corresponding field in the appointments form. (See, e.g., PX 697 (screenshot); Trial Tr. VI 117:11-118:12 (testimony accompanying video demonstration).)

Much like the number pad tool shown in the patent, the calendar tool in Outlook allows the user to select a series of numbers, corresponding to the day, month, and year, using graphical controls. (Cf. '356 4:18-21 ("The number entry tool . . . operates similar to a standard hand-held calculator in which the user composes a string of numbers by touching individual ones of the displayed buttons . . . .").) Both competing experts testified that the normal definition of "composition" includes combining or putting together different parts. (See Trial Tr. VI 111:5-112:11 (Mr. Tognazzini, for Lucent); Trial Tr. XII 174:18-175:9 (Mr. Buscaino, for Microsoft).)

The jury rejected Microsoft's argument that the Outlook calendar tool is instead a "menu of alternatives." The number of possible dates in the Outlook calendar exceeds one million. (Trial Tr. V 135:17-136:6.) The patent states that, with a menu of alternatives, "all that the user needs to do is point to one of the entries . . . ." ('356 3:55-56.) With the calendar tool, however, the user may change the various elements of the date before settling on a final entry. The user cannot reach all options without making multiple selections. The Court concludes that there was substantial evidence permitting the jury to conclude that the Outlook calendar tool allowed the user to compose the date. Viewing all the evidence from the trial, the jury could have reasonably concluded that the calendar tool allowed the separate selection and combination of day, month, and year, thus making it a composition tool.

b. Whether Windows Mobile Contains a Composition Tool

Microsoft also argues that there can be no infringement of Windows Mobile because the Windows Mobile keyboard is not a composition tool that is "a predefined tool associated with said one of said fields." The Court disagrees. First, contrary to Microsoft's argument, the keyboard tool was not the only alleged composition tool offered by Lucent for Windows Mobile. The passage of Lucent's expert testimony cited by Microsoft for this supposed limitation clearly asserts that the expert "found several tools that allow you to compose information," not just the keyboard tool. (See Trial Tr. V 155:24-156:4.) Lucent also introduced evidence of both a Windows Mobile calendar tool, similar to that already discussed for Microsoft Outlook, and a Windows Mobile number pad tool. (See, e.g., PX 832A (screenshots of Windows Mobile tools).)

Microsoft further argues that the keyboard tool is not "associated with said one of said fields," as required by claim 19, because it is an operating system level tool that may be used by a variety of applications. Though the jury could have relied on one of the other asserted composition tools, the Court also concludes that there was substantial evidence to support the conclusion that the keyboard tool was a composition tool "associated with said one of said fields." Microsoft does not dispute that the keyboard tool may be used by various applications running on a Windows Mobile system. (See, e.g., Microsoft's Mem. P. & A. Supp. Combined Mot. JMOL, New Trial, Remittitur, at 17 ("[Windows Mobile keyboard] is provided at the operating system level for use across many different applications . . . .").) Lucent introduced substantial evidence that the keyboard tool is used by these applications to input information directly into active fields, sufficient for the jury to conclude that it is "associated with said one of said fields." (See, e.g., Trial Tr. V 154:20-156:4, XVII 107:18-108:23.)

Finally, Microsoft challenges the credibility of Lucent's expert, Mr. Tognazzini, regarding the keyboard tool. The jury also assessed his credibility and rendered its verdict. Viewed under the standards for post-trial motions, there is substantial evidence to support Mr. Tognazzini's testimony.

c. Proof of Specific Acts of Infringement

Microsoft seeks judgment as a matter of law based on Lucent's purported failure to introduce evidence of specific acts of direct infringement. Proof of indirect infringement by inducement requires, in part, that the plaintiff prove there has been direct infringement. Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1292 (Fed. Cir. 2008). Since the asserted claims are method claims, proof of direct infringement requires a showing that the claimed process was performed, not merely ...


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