APPLE INC. v. MOTOROLA, INC.

Nos. 2012-1548, 2012-1549.

757 F.3d 1286 (2014)

APPLE INC. and Next Software, Inc. (formerly known as Next Computer, Inc.), Plaintiffs-Appellants, v. MOTOROLA, INC. (now known as Motorola Solutions, Inc.) and Motorola Mobility, Inc., Defendants-Cross Appellants.

United States Court of Appeals, Federal Circuit.

April 25, 2014.


Attorney(s) appearing for the Case

E. Joshua Rosenkranz , Orrick, Herrington & Sutcliffe LLP, of New York, New York, argued for plaintiffs-appellants. With him on the brief were Mark S. Davies , Rachel M. McKenzie and T. Vann Pearce, Jr. of Washington, DC; and Matthew D. Powers , Tensegrity Law Group LLP, of Redwood Shores, CA. Of counsel was Katherine M. Kopp , Orrick, Herrington & Sutcliffe LLP, of Washington, DC.

David A. Nelson , Quinn Emanuel Urquhart & Sullivan, LLP, argued for defendants-cross appellants. With him on the brief were Stephen A. Swedlow ; Brian C. Cannon , of Redwood Shores, CA; Kathleen M. Sullivan and Edward J. Defranco , of New York, New York; and Charles K. Verhoeven , of San Francisco, CA. Of counsel were Raymond N. Nimrod and David Elihu , of New York, NY; and Amanda Scott Williamson , of Chicago, IL.

Joel Davidow, Cuneo , Gilbert & LaDuca, LLP, of Washington, DC, for amicus curiae ae The American Antitrust Institute. With him on the brief was Robert J. Cynkar.

Charles W. Shifley , Banner & Witcoff, Ltd., of Chicago, IL, for amicus curiae The Intellectual Property Law Association of Chicago.

Debra J. McComas , Haynes and Boone, LLP, of Dallas, TX, for amici curiae Altera Corporation, et al. With her on the brief was David L. McCombs. Of counsel on the brief were Marta Beckwith , Cisco Systems, Inc., of San Jose, CA; Elizabeth Launer , Logitech Inc., of Newark, CA; and Richard J. Lutton, Jr. , Nest Labs, Inc., of Palo Alto, CA.

Richard M. Brunell , Senior Advisor for competition matters, United States Federal Trade Commission, of Washington, DC, for amicus curiae United States Federal Trade Commission. With him on the brief were David C. Shonka , Acting General Counsel, William Cohen , Deputy General Counsel, William F. Adkinson, Jr. , Attorney and Suzanne Munck af Rosenchold, Chief Counsel for Intellectual Property.

Peter M. Lancaster , Dorsey & Whitney LLP, of Minneapolis, MN, for amicus curiae The Institute of Electrical and Electronics Engineers, Incorporated. With him on the brief were Michael A. Lindsay , of Minneapolis, MN, and Eileen M. Lach , General Counsel and Chief Compliance Officer IEEE, of New York, NY.

Paul D. Clement , Brancroft PLLC, of Washington, DC, for amici curiae Verizon Communications Inc., et al. With him on the brief was D. Zachary Hudson.

Tina M. Chappell , Director of Intellectual Property Policy, Intel Corporation, of Chandler, AZ, for amicus curiae Intel Corporation. With her on the brief were Thomas G. Hunger and Matthew D. McGill , Gibson, Dunn & Crutcher LLP, of Washington, DC.

Richard S. Taffet , Bingham McCutchen LLP, of New York, NY, for amicus curiae Qualcomm Incorporated. With him on the brief were Patrick Strawbridge , of Boston, MA and David B. Salmons , of Washington, DC.

Brian R. Matsui , Morrison & Foerster LLP, of Washington, DC, for amicus curiae Law Professors Thomas F. Cotter , et al. With him on the brief was Natalie R. Ram.

Roy T. Englert, Jr. , Robbins, Russell, Englert, Orseck, Untereiner & Sauber LLP, of Washington, DC, for amicus curiae, BSA The Software Alliance.

Patrick J. Flinn , Alston and Bird LLP, of Atlanta, GA, for amici curiae Nokia Corporation, et al. With him on the brief was Keith E. Broyles.

Brian C. Riopelle , McGuire Woods LLP, of Richmond, VA, for amicus curiae Research in Motion Limited. With him on the brief were Robert M. Tyler and Kristen M. Calleja.

Constantine L. Trela, Jr. , Sidley Austin LLP, of Chicago, IL, for amicus curiae Microsoft Corporation. With him on the brief were Richard A. Cederoth and Nathaniel C. Love. Of counsel on the brief were T. Andrew Culbert and David E. Killough , Microsoft Corporation, of Redmond, WV.

Opinion concurring in part and dissenting in part filed by Circuit Judge PROST.


REYNA, Circuit Judge.

Plaintiffs Apple Inc. and Next Software, Inc. ("Apple") filed a complaint against Defendants Motorola, Inc. and Motorola Mobility, Inc. ("Motorola") on October 29, 2010 in the United States District Court for the Western District of Wisconsin, asserting infringement of three patents. Motorola counterclaimed, asserting six of its own patents. Apple amended its complaint to include an additional twelve patents. Both parties also sought declaratory...

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