No Per Se Rule Against Injunctions For Standard-Essential Patents

In Apple Inc. v. Motorola, Inc., Nos. 12-1548, -1549 (Fed. Cir. Apr. 25, 2014), the Federal Circuit affirmed the district court's claim construction decisions, with the exception of its construction of certain "heuristic" claim limitations, reversed the district court's decision to exclude damages evidence (with a minor exception), and reversed the district court's grant of SJ of no damages for infringement of Apple Inc. and Next Software, Inc.'s (collectively "Apple") patents. Based on its reversal of the district court's construction of the "heuristic" limitations, the Court vacated the grant of SJ regarding Apple's request for an injunction. The Court also affirmed the district court's decision that Motorola, Inc. and Motorola Mobility, Inc. (collectively "Motorola") were not entitled to an injunction for infringement of its FRAND (fair, reasonable, and nondiscriminatory) committed patent.

Apple filed a complaint against Motorola, and Motorola counterclaimed. The district court, based on its claim construction decisions, granted SJ of noninfringement with respect to certain claims and excluded most of the parties' damages expert evidence for the remaining claims. With little expert evidence on damages deemed admissible, the district court granted SJ that neither party was entitled to damages or an injunction and dismissed all claims with prejudice before trial. On appeal, the parties contested the district court's claim construction, admissibility, damages, and injunction decisions for three Apple and three Motorola asserted patents.

"The framework laid out by the Supreme Court in eBay, as interpreted by subsequent decisions of this court, provides ample strength and flexibility for addressing the unique aspects of FRAND committed patents and industry standards in general." Slip op. at 71-72.

The Federal Circuit first analyzed the district court's claim construction decisions, beginning with certain "heuristic" claim limitations in Apple's U.S. Patent No. 7,479,949 ("the '949 patent"). The district court concluded that these limitations were means-plus-function limitations under 35 U.S.C. § 112, ¶ 6, despite not reciting the word "means." The Federal Circuit disagreed, holding that, when a claim limitation lacks the term "means," the determination of whether the claim limitation invokes means-plus-function claiming is based on "whether the limitation, read in light of the remaining claim language, specification, prosecution history, and...