Motorola loses appeal over Apple infringement

An appeals court has upheld a ruling from the US International Trade Commission (ITC) clearing Apple of infringing a patent belonging to Motorola Mobility.

The ruling, published on January 10, affirms the ITC’s 2012 decision in which it rejected Google-owned Motorola’s claims that Apple had infringed six of its patents.

Motorola’s appeal, at the US Court of Appeals for the Federal Circuit, centred on just one of the patents, US number 6,272,333.

The three-judge panel said the ITC was correct to rule that California-based Apple had used a different technique when it made its initial determination.

The patent describes “a method and apparatus in a wireless communication system for controlling a delivery of data from a fixed portion of the wireless communication system to a subscriber unit.”

“The commission’s finding that the accused devices do not infringe … Motorola’s ’333 patent is … supported by substantial evidence,” the court wrote.

The dispute highlighted claim 12 of the patent which described an application registry comprising a list of all applications available, which could then be updated following a change in accessibility, such as when an application is deleted.

Motorola said in its appeal that the accessibility updates for this (a deleted application) were due to two changes, one to communicate that the application had been deleted and one to cancel future notifications.

However, the court ruled that the change in accessibility resulting from deletion was not a change which was communicated to the fixed portion of the network.

“Rather, what is communicated … is a message indicating that push notifications for the application should be cancelled, it does not inform the fixed portion of the network that the app has been deleted.

“Motorola’s argument has failed because it has not identified a single change in accessibility in the accused Apple devices that causes both an update to the application registry and a communication of the change in accessibility … as required by the asserted claim,” the court wrote.

“The commission’s findings are therefore supported by substantial evidence,” it added.

Steve Auvil, partner at Squire Sanders LLP and leader of the firm’s IP & technology litigation practice in the Washington, DC, and Cleveland offices, said the Federal Circuit “narrowly construed” the patent claim in light of its specification.

“Motorola argued for a broader construction than what was supported by the patent’s specification and the way the claim was drafted,” Auvil said.

“The Federal Circuit construed the patent in a way that enabled Apple to avoid infringement and in a way that the patent did not even cover Motorola’s alleged patented product.”

Motorola's attempts to assert its own patents against Apple have resulted in little success. Following this ruling, all six of Motorola's claims against the firm in the US have been effectively invalidated.

Auvil added: “The lesson one can take from this case is that a patent cannot be drafted narrowly for patentability purposes and broadly for infringement purposes. The law does not enable the patent owner to have it both ways.

“I don’t believe this decision reflects a system bias against Motorola, but it should be a wakeup call to all patent holders to be realistic in evaluating the scope of their patents.”

A spokesman for Motorola said: "We're disappointed in this decision and are evaluating our options.”

Apple had not responded to immediate requests for comment.