Apple wins non-infringement before claim construction

Takeaway: If the visible features of your accused infringing device are far enough outside a claim on its face, can you file a motion for non-infringement before claim construction? It worked for Apple, who successfully argued that "[a]ny claim construction that [patentee] might advance to attempt to cover the iPhone would render [the size limitation] both meaningless and indefinite."

Details: Back in March 2009, the Swiss holding company Monec filed a lawsuit against Apple in the Eastern District of Virginia, alleging that the iPhone infringes Monec patent U.S. 6,335,678.

Early in the case — not just before claim construction, but before any discovery other than mandated initial disclosures  — Apple filed a motion for summary judgment of non-infringement. Apple's motion first stated that these two facts are undisputed:

• The claims recite a “display [with] dimensions such that one page of a book can be displayed at a normal size”.
• The display in the Apple iPhone is 2" x3".

Apple then contended that no claim construction was necessary because "[a]ny claim construction that Monec might advance to attempt to cover the iPhone would render [the size limitation] both meaningless and indefinite."

Monec opposed Apple's motion with an affidavit from an expert, asserting that books are printed in many of different sizes, and that there is no normal size for a book page.

Apple's unconventional strategy worked: the court granted summary judgment for Apple.

Monec immediately appealed to the Federal circuit on a number of grounds. Monec's statement of issues to be raised on appeal included whether the court improperly decided a disputed question of material fact, by ignoring Monec's uncontroverted expert affidavit. Another issue for appeal was whether the district court held what amounted to an impromptu Markman hearing during oral arguments on Apple's motion, thus denying Monec notice and opportunity to conduct discovery.

Thanks to the Federal Circuit's mediation process, a settlement was reached before oral arguments before the Federal Circuit were scheduled.

If you're interested in the case, you can find a number of posts about it in the Monec v. Apple section of the Williams Mullen Rocket Docket IP Litigation blog.