No builder would try to construct a house without a proper foundation, as such a house would likely collapse. Similarly, no lawyer should try a lawsuit without laying a proper foundation for a favorable decision, as a judgment found to be lacking foundation will not survive a challenge. (Mirror Worlds LLC v. Apple Inc.)
Mirror Worlds sued Apple for allegedly infringing three patents directed to a document stream operating system and method. A jury found all three of the patents-in-suit valid and infringed and determined the damages to be $208.5 million for each patent. They also found the infringement to be willful. Undaunted, Apple moved for judgment as a matter of law (JMOL), arguing first that Mirror Worlds had failed to introduce evidence supporting its allegations that Apple had infringed the method claims of the subject patents.
In response, Mirror Worlds asserted that the trial evidence established that Apple had advertised and sold certain products capable of performing the claimed methods and that “Apple’s offers for sale were for the infringing applications, not a computer or software, that was merely capable of infringement” and that “Apple’s advertisements highlighting the accused features is also legally sufficient evidence for the jury to have found direct infringement of the method claims.” Moreover, Mirror Worlds asserted, “it is undisputed that Apple developed and sold the accused products; therefore, it was reasonable for the jury to infer that Apple necessarily tested the accused products and performed the patented steps.”
Not good enough! “[A] method claim is not directly infringed by the sale of an apparatus even though it is capable of performing only the patented method. The sale of the apparatus is not a sale of the method. A method claim is directly infringed only by one practicing the patented method.” Mirror Worlds’ attempts to skirt this precedent by alleging that Apple specifically offered the methods for sale – citing Apple’s marketing materials and user manuals, which highlighted some of the steps required by the method claims – were insufficient as a matter of law.
Similarly, “it is insufficient to merely assume that Apple conducted tests that performed the method while the accused features were under development. Mirror Worlds did not present any evidence of testing. Mirror Worlds’ arguments that it is reasonable to infer that testing occurred during development of the accused features does not replace the evidence required to prove infringement … direct infringement of a method claim cannot be determined on speculation, assumptions, or inferences. If it was inconceivable to Mirror Worlds that the accused features were not practiced by Apple, it should have had no difficulty in meeting its burden of proof and in introducing testimony of such use.”
In its efforts to establish infringement of the asserted system claims, Mirror Worlds had relied on the doctrine of equivalents. To support a finding of infringement under the doctrine of equivalents, Mirror Worlds had the burden of presenting, on a limitation-by-limitation basis, “particularized testimony and linking argument as to the ‘insubstantiality of the differences’ between the claimed invention and the accused device or process … [g]eneralized testimony as to the overall similarity between the claims and the accused infringer’s product or process will not suffice.”
Here too, the Court found Mirror Worlds’ evidence insufficient. “Viewing the record in the light most favorable to Mirror Worlds, Mirror Worlds did not present sufficient evidence to allow a reasonable jury to conclude that the asserted [system] claims … were infringed under the doctrine of equivalents … contrary to Mirror Worlds’ arguments, [its witness] failed to specifically describe the ‘insubstantial differences’ to the jury. [He] offered no substantive explanation for how or why [the accused product] operates in a similar way to the asserted claims. Instead, [he] merely repeated the claim language when testifying about the accused [product’s] features and summarily considered them equivalent. [His] bald recitation of … features and references to pictures and demonstratives without supportive reasoning of why the accused devices are substantially similar to the claim limitation is simply legally insufficient.”
Although at this point it was moot, the judge also went on to hold that the jury’s finding of willfulness lacked sufficient evidentiary support. Making a clean sweep of the verdict, the judge further held that the jury’s damages award was unsupported, noting that “[d]espite Mirror Worlds’ representation to the jury that it was only entitled to approximately $300 million, Mirror Worlds now asserts it is entitled to aggregate the $208.5 million answer for each patent, totaling $625.5 million.”
So, Mirror Worlds goes home empty-handed. As summed up by the judge, “[i]n this case, Mirror Worlds may have painted an appealing picture for the jury, but it failed to lay a solid foundation sufficient to support important elements it was required to establish under the law.”
THE LESSON TO BE LEARNED: There is more to patent litigation than an understanding of the relevant technology; when you’re in a courtroom, you’ve got to know the applicable LAW!