Apple Computer Inc. v. Burst.com, Inc.

Filing 157

Declaration of Nicholas A. Brown in Support of 156 Reply Memorandum filed byApple Inc.. (Attachments: # 1 Exhibit A part 1# 2 Exhibit A part 2# 3 Exhibit A part 3# 4 Exhibit A part 4# 5 Exhibit A part 5# 6 Exhibit B part 1# 7 Exhibit B part 2# 8 Exhibit B part 3# 9 Exhibit C# 10 Exhibit D# 11 Exhibit E# 12 Exhibit F# 13 Exhibit G# 14 Exhibit H# 15 Exhibit I# 16 Exhibit J# 17 Exhibit K# 18 Exhibit L# 19 Exhibit M# 20 Exhibit N# 21 Exhibit O)(Related document(s) 156 ) (Brown, Nicholas) (Filed on 9/6/2007) Modified on 9/18/2007 (gba, COURT STAFF).

Apple Computer Inc. v. Burst.com, Inc.

Doc. 157 Att. 4

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RELYING ON OUTPUT MEANS 80 OF IZEKI. FOLLOWING THOSE REMARKS WE JUST LOOKED AT EXAMINER REPEATED THAT TEACHES OUTPUTTING AWAY FROM THE AUDIO/VIDEO APPARATUS IN IZEKI. THIS TIME BURST RESPONDED IZEKI TEACHES A COMPRESSION WITHOUT TRANSMISSION PERIOD, FLATLY STATED WHAT'S IN IZEKI IS NOT TRANSMISSION AS CLAIMED BY BURST. THE EXAMINER REPEATED THE REJECTION, REPEATED THE STATEMENT THAT OUTPUT MEANS 80 TEACHES SENDING THE INFORMATION AWAY FROM THE APPARATUS, AND BURST REITERATED THE SAME POINT DESCRIBE WHAT IZEKI DISCLOSED, SAID THAT INFORMATION CAN BE IN -- IZEKI INFORMATION CAN BE CONVEYED VIA AN INTERFACE TO A STORAGE DEVICE. AND THEN SAID IZEKI DOES NOT PROVIDE FOR BURST

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TRANSMISSION OF VIDEO PROGRAMS OVER A COMMUNICATIONS CHANNEL. ALSO, SAID VERY SIMILAR TO WHAT WE'VE ALREADY SEEN, OUTPUT MEANS OF 80 IS SIMPLY COMPRISED AS AN INTERFACE FOR TRANSFERRING EDITED FILES TO MASTER TAPE, NOT ANALOGOUS TO THE TRANSMISSION MEANS OR TRANSMISSION STEP OF THE CLAIMED INVENTION.
SO THE ISSUE IS THE SCOPE OF THE DISCLAIMER THAT IS -THE COURT:

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IF YOU BACK UP TO PAGE 12 IN YOUR

SUBMISSION, TALKS ABOUT THE EDITING CAPABILITY, APPARENTLY, OR THAT EDITING CAN OCCUR, THIS IS IN IZEKI, RIGHT?
MR. BROWN:
THE COURT:

THAT'S CORRECT. AND THEN CONVEYED VIA INTERFACE TO A

JAMES YEOMANS - OFFICIAL REPORTER - [phone]
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STORAGE DEVISE, AGAIN, TALKING ABOUT IZEKI?
MR. BROWN:

CORRECT. THAT DEVICE DOES NOT PROVIDE FOR BURST

THE COURT:

TRANSMISSION OF VIDEO PROGRAMS OVER COMMUNICATION CHANNEL?
MR. BROWN:

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EXACTLY. THAT'S BURST'S RESPONSE TO THE EXAMINER,

THE COURT:

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RIGHT?
MR. BROWN:

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CORRECT.

S O WHAT BURST IS RECOGNIZING, IS

THAT IZEKI IS A DEVICE CAPABLE OF EDITING INFORMATION AND OUTPUTTING IT ONTO A TAPE. SAID THAT DEVICE DOES NOT PROVIDE

FOR TRANSMISSION OVER COMMUNICATIONS CHANNEL DISTINGUISHED BETWEEN AN INTERFACE TO A STORAGE DEVISE AND COMMUNICATION CHANNEL.
SO THE QUESTION, IS THE SCOPE OF THE DISCLAIMER THAT

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WAS AFFECTED BY THESE STATEMENTS? BURST'S ARGUMENT IS THAT THESE STATEMENTS DISCLAIMED ONLY TRANSFERS TO STORAGE DEVICES THAT ARE INTERNAL, SO AS LONG AS YOU SEND INFORMATION OUTSIDE THE APPARATUS THAT'S STILL WITHIN THE SCOPE OF THEIR CLAIM. BURST IS WRONG FOR TWO REASONS. INDEPENDENT AND THAT'S WORTH EMPHASIZING. AND THESE REASONS ARE THE FIRST REASON IS

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THAT BURST DID NOT DISTINGUISH BETWEEN INTERNAL AND EXTERNAL TRANSFERS WHEN THEY WERE TALKING ABOUT IZEKI, SIMPLY SAID IZEKI DIDN'T INVOLVED SENDING INFORMATION TO A STORAGE DEVICE. AND THEY DISTINGUISH THAT FROM A COMMUNICATIONS JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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CHANNEL, THEY MADE NO MENTION OF INTERNAL VERSUS EXTERNAL. THE SECOND REASON, IZEKI DOES DISCLOSE EXTERNAL TRANSFERS. BUT IT'S IMPORTANT TO UNDERSTAND, THESE ARE

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INDEPENDENT REASONS TO FIND THERE WAS A DISCLAIMER OF SENDING TO A LOCAL STORAGE DEVICE. AND THE REASON THAT THEY'RE INDEPENDENT IS A CASE I PUT UP A QUOTATION FROM ON THE SCREEN HERE, WHICH SAYS, THERE'S NO PRINCIPLE OF PATENT LAW THAT THE SCOPE OF SURRENDER OF SUBJECT MATTER DURING PROSECUTION IS LIMITED TO WHAT IS ABSOLUTELY NECESSARY TO AVOID A PRIOR ART REFERENCE. IT FREQUENTLY HAPPENS THAT PATENTEE SURRENDER MORE THAN THEY HAVE TO. WHEN THAT HAPPENS WE HAVE NOT ALLOWED THEM

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TO ASSERT THE CLAIMS, SHOULD BE INTERPRETED AS IF THEY HAD SURRENDERED ONLY WHAT THEY HAD TO. THAT'S WHAT BURST'S ARGUMENT ABOUT IZEKI EFFECTIVELY DOING HERE. THEY ARE SAYING, WELL, IZEKI DOESN'T REALLY

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DISCLOSE TRANSFER TO EXTERNAL DEVICES, THEREFORE, YOU SHOULDN'T READ OUR STATEMENTS ABOUT IZEKI TO BE A DISCLAIMER OF TRANSFERS TO AN EXTERNAL DEVICE. BUT THAT IS SQUARELY CONTRADICTED BY THE LAW, BECAUSE WHAT BURST SAID WHEN THEY DISTINGUISHED IZEKI, WAS THAT THE INTERFACE, NOT MORE THAN INTERFACE TO A STORAGE DEVICE. DIDN'T SAY IT'S NOTHING MORE AN INTERFACE TO AN INTERNAL STORAGE DEVICE, WHICH IS WHAT THEY'RE NOW TRYING TO READ THE PROSECUTION HISTORY TO SAY. JAMES YEOMANS
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THEY

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THE NEXT TIME THEY DISTINGUISH IZEKI, ANOTHER STATEMENT THE SAME ISSUE, THEY COULD HAVE SAID IF THEY MEANT WHAT THEY'RE SAYING NOW, THAT IZEKI SIMPLY COMPRISES AN INTERNAL INTERFACE FOR TRANSFERRING EDITED FILES. THAT'S NOT WHAT THEY SAID. THEY SAID SIMPLY, IZEKI

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DIDN'T DISCLOSE AN INTERFACE FOR TRANSFERRING FILES, THEY SAID THE INTERFACE WAS NOT ANALOGOUS IF THE TRANSMISSION MEANS OR TRANSMISSION STEP OF THE CLAIMED INVENTION. THAT LANGUAGE IS A CLEAR DISCLAIMER OF INTERPHASES TO STORAGE DEVISES, REGARDLESS WHETHER THEY'RE INTERNAL OR EXTERNAL. WHAT BURST IS NOW TRYING TO DO, REWRITE THE

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STATEMENTS THEY MADE IN THE PUBLIC RECORD, THAT'S NOT PERMISSIBLE.
THE COURT:

14 15 16 17 18 19 20 21 22 23 24 25 CHANGE.

THE SPECIFICATION DIDN'T CHANGE, DID IT?

THAT FIGURE, WHATEVER IT IS, FIGURE 2 WHATEVER IT IS THAT SHOWS THE MEMORY OR STORAGE DEVICE.
M R . BROWN:

ABSOLUTELY.

THE SPECIFICATION DIDN'T

I THINK, I WILL TURN TO THE SPECIFICATION IN A MOMENT. IN FACT, IT SAYS IN

I THINK, THE SPECIFICATION IS VERY CLEAR.

THE ABSTRACT OF THE '932 PATENT, THE '839 PATENT WHAT TRANSMISSION IS TRANSMISSION TO A REMOTE LOCATION.

AND, I THINK, THERE'S NO QUESTION THAT WHAT BURST DESCRIBED IN THE SPECIFICATION AS TRANSMISSION, AND I'LL GET TO THAT IN JUST A SECOND, IS TRANSMISSION OVER A DISTANCE AS OPPOSED TO TRANSMISSION TO SOMETHING AS LOCAL ADJACENT TO A JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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DEVICE.

SO SPECIFICATION CONSISTENT WHAT THEY SAID IN THE FILE

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HISTORY HERE.
THE COURT:

IF YOU'RE INTERPRETATION OF IZEKI AND

BURST'S INTERPRETATION AT THIS TIME WAS THAT THE STORAGE DEVICE WAS NOT INTERNAL, RIGHT? IN OTHER WORDS, IN IZEKI COULD BE INTERNAL STORAGE DEVICE, RIGHT?
MR. BROWN:

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I DISAGREE WITH THAT.

CLEARLY DISCLOSED,

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THAT'S ABOUT -- THE POINT I'M ABOUT TO MAKE. BUT THE FIRST POINT IS, IT DOESN'T MATTER WHAT IZEKI DISCLOSES, WHETHER IT WAS INTERNAL ONLY OR INTERNAL AND EXTERNAL, EITHER WAY WHEN BURST DISTINGUISH IZEKI THEY DIDN'T MAKE THAT POINT, THEY MADE A DIFFICULT POINT. THE POINT THEY MADE, IZEKI DOESN'T PROVIDE FOR TRANSMISSION OVER COMMUNICATION CHANNEL SUCH AS FIBEROPTIC SPECIFICATION, SUCH AS A MODEM, SUCH AS MICROWAVE, THAT WAS ADDED LATER ON. THAT'S WHAT THEY SAID WAS THE DISTINCTION BECAUSE THEY DISTINGUISHED IZEKI ON THE GROUND THERE WAS NO COMMUNICATION CHANNEL AND NOT OPEN GROUND, THERE WAS NO INTERNAL INTERFACE, THAT'S WHAT THEY'RE HELD TO.
THE COURT:

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BUT TO HAVE SOME KIND OF A COMMUNICATIONS

CHANNEL GENERALLY WOULD NOT BE WITHIN THE SAME DEVICE, RIGHT?
MR. BROWN:

EXACTLY RIGHT. BUT THAT DOESN'T MEAN IT HAS TO BE MILES

THE COURT:

JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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AWAY, IT COULD IT BE RIGHT NEXT TO IT, RIGHT? COMMUNICATIONS DEVICE?
MR. BROWN:

STILL HAVE A

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I THINK, A REASONABLE INTERPRETATION OF

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COMMUNICATION CHANNEL IS NOT RIGHT NEXT TO IT, IT'S SOMETHING LIKE WAS DESCRIBED IN THE SPECIFICATION.
THE COURT:

BUT LET'S

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WOULD BEAMING BE, THE ABILITY TO BEAM

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WOULD THAT BE A COMMUNICATIONS CHANNEL?
MR. BROWN:

I GUESS, I DON'T UNDERSTAND WHAT YOU'RE -BEAMING, NOW YOU TAKE AND AIM IT AT

THE COURT:

WHATEVER DEVICE AND YOU HAVE TRAVEL ALONG A BEAM, I GATHER, YOU HAVE TO ASK YOUR EXPERTS WHAT ACTUALLY HAPPENS AS FAR AS THE PHYSICS OF IT ARE CONCERNED, BUT THAT IS A COMMUNICATIONS CHANNEL. IF YOUR ABLE TO COMMUNICATE FROM ONE DEVICE TO ANOTHER DEVICE BY AIMING IT AND BEAMING IT, AS IT'S CALLED, IS THAT A COMMUNICATIONS CHANNEL?
MR. BROWN:

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THAT TO ME DOESN'T SOUND LIKE INTERFACE TO

STORAGE DEVICE.
THE COURT:

I'M NOT ASKING THAT.

IS IT A

COMMUNICATIONS CHANNEL?
MR. BROWN:
THE COURT:

I DON'T KNOW THE ANSWER TO THAT. LET'S ASK THE EXPERTS. WHEN YOU HAVE THE

ABILITY TO BEAM FROM ONE DEVICE TO ANOTHER DEVICE AND THEREBY COMMUNICATE INFORMATION FROM ONE DEVICE TO ANOTHER FROM THE BEAMER TO THE BEAMEE, I GUESS, IS THAT A COMMUNICATIONS
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CHANNEL?
DR. HEMANI:

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YES, THAT WOULD BE CONSIDERED A VERY

TRADITIONAL OVER THE AIR COMMUNICATIONS CHANNEL.
THE COURT:
MR. HALPERN:

IS IT, MR. HALPERN? I HAVE TO SAY, IT DEPENDS. FOR EXAMPLE,

I USE MY PALM PILOT, ITS INFRARED TO EXCHANGE THINGS, THAT'S COMMUNICATIONS CHANNEL. I HAVE ALSO SEEN STORAGE DEVICES THAT USE INFRARED OR RADIO AND IN THAT CASE IT'S A STORAGE INTERFACE. AND SO ONE HAS TO BE A LITTLE CAREFUL ABOUT WHAT KIND OF CHANNEL, BUT CERTAINLY WHAT YOU'RE THINKING OF BEAMING MY BUSINESS CARD TO YOU IS A COMMUNICATIONS CHANNEL.
THE COURT:

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I GUESS, WE HAVE THE ANSWER THEN.

OKAY.

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THANK YOU.

MOVING RIGHT ALONG. MOVING RIGHT ALONG.
SO THE SECOND POINT

MR. BROWN:

WHICH, I THINK, IS AN INDEPENDENT REASON TO FIND THAT BURST DISCLAIMED TRANSFERS TO STORAGE DEVICE IS IN LIMITED, WHAT THEY WERE CLAIMING TO TRANSFER TO REMOTE LOCATIONS IS THAT IZEKI, IN FACT, DOES DISCLOSE TRANSFERS TO IN -- EXTERNAL DEVICES. THE PLACE TO START WITH THIS IS THE EXAMINER'S REPEATED STATEMENTS THAT IZEKI SENDS INFORMATION AWAY FROM THE AUDIO/VIDEO APPARATUS, EVEN SAID ONCE TO ANOTHER AUDIO/VIDEO APPARATUS.
SO THAT'S A CLEAR STATEMENT THAT IZEKI IS SENDING

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SOMETHING OUTSIDE THE DEVICE, NOT JUST AN INTERNAL TRANSFER. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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AND, IN FACT, THE EXAMINER WAS RIGHT, THE EXAMINER WAS SPECIFICALLY REFERRING TO TAPE DRIVES, AS WE TALKED ABOUT BEFORE. AND IN 1988 IN ARTICLE THAT BURST SUBMITTED TO THE EXAMINER BEFORE THESE REMARKS WERE MADE A DESCRIPTION OF TAPE DRIVES WAS INCLUDED IN THAT ARTICLE AND THAT DESCRIPTION INCLUDED A REFERENCE TO AN EXTERNAL TAPE DRIVE, THE IBM 34A, WHICH WAS DESCRIBED THERE WAS EXTERNAL UNIT, THAT WAS TYPICAL OF THE TAPE DRIVES AT THE TIME IN 1988.
SO THAT TRANSFER HERE IS JUST WHAT THE EXAMINER SAID

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IT WAS, A TRANSFER AWAY FROM THE AUDIO/VIDEO APPARATUS TO ANOTHER APPARATUS TO AN EXTERNAL DEVICE. IZEKI ALSO DESCRIBES A REPRODUCTION DEVICE NUMBER 55, AND THAT DEVICE WHICH WE'LL BLOWUP, SEEMS FROM THE FIGURE TO BE A SEPARATE DEVICE AND IT SEEMS THAT WAY FOR A NUMBER OF

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1 REASONS.
FIRST, AS YOU CAN SEE IT'S GOT ITS OWN FULL SET OF COMPONENTS, IT'S GOT ITS OWN CPU, THE MAIN DEVICE ALSO HAS A CPU, IT'S DESCRIBED AS A DEVICE. IT'S GOT ITS OWN MEMORY, THE MAIN DEVICE ALSO HAS ITS OWN MEMORY, HAS ITS OWN BUS, THE MAIN DEVICE HAS ITS OWN BUS, THIS SIMPLY FROM ITS COLLECTION OF COMPONENTS, SEEMS CLEARLY TO BE A SEPARATE DEVICE. I DON'T SEE ANY REASON FOR IT TO HAVE

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ITS OWN CPU RAM AND BUS IF IT WERE SIMPLY PART OF THIS LARGER DEVICE. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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SECOND, AND I'D LIKE TO REFER YOUR HONOR TO SLIDE 62 THAT MR. FOLSE USED, I DON'T KNOW IF YOU STILL HAVE THAT IN FRONT OF YOU, BUT HE PUT UP A SLIDE WHICH IN
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WHICH HE STATED

THAT IZEKI HAD DEVISES EXTERNAL TO THE APPARATUS. AND HIS SLIDE IDENTIFIED TWO DEVICES THAT HE SAID WERE EXTERNAL TO THE APPARATUS THAT WERE DESCRIBED IN IZEKI. FIRST ONE WAS QUOTE "AN IMAGE PICK UP DEVICE SUCH AS A TELEVISION CAMERA," AN IMAGE PICK UP DEVICE. THE SECOND ONE WAS AN AUDIO REPRODUCTION DEVICE, SUCH AS A TAPE RECORDER. DEVICE HERE.
SO JUST FROM THE TERMINOLOGY, IN ADDITION TO THE

THE

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THAT SOUNDS A LOT LIKE THE REPRODUCTION

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COMPONENTS IN THAT DEVICE, THIS CERTAINLY SEEMS TO BE AN EXTERNAL DEVICE. THERE'S NO QUESTION THAT IZEKI DISCLOSES

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TRANSFERRING INFORMATION INTO THAT REPRODUCTION DEVICE. WHAT THAT REPRODUCTION DEVICE DOES FOR BACKGROUND PURPOSE, IT ALLOWS THE PERSON USING THE MAIN DEVICE IN IZEKI, THIS DEVICE HERE WHICH IS AN EDITING APPARATUS AND USED TO EDIT AUDIO/VIDEO INFORMATION, IT ALLOWS THE USER TO VIEW THE EDITED INFORMATION ONCE IT'S COMPLETE. AND IF YOU LOOK AT THIS DESCRIPTION, OPERATES SIMULATION MEANS TO CHECK THE CONTENTS OF THE EDITED AND PROCESSING INFORMATION FILE WERE CONVERTED CORRECTLY. WHAT YOU

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DO IN THE MAIN DEVICE, EDIT YOUR INFORMATION, YOU TRANSFER IT OUT TO THE REPRODUCTION DEVICE WHERE IT CAN BE REPRODUCED AND JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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YOU CAN CHECK WHETHER YOU WERE SUCCESSFUL.
SO IN SUM, IZEKI DOES DISCLOSE TRANSFERS TO EXTERNAL

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DEVICES, AND EVEN IF IT DIDN'T BURST STILL DISTINGUISHED CLEARLY IN FILE HISTORY TRANSFERS TO STORAGE DEVISES, AND IT MUST BE HELD TO THOSE STATEMENTS, DISTINGUISHED THEM FROM COMMUNICATIONS CHANNEL NOT FROM INTERNAL TRANSMISSION. TURNING NOW TO THE SPECIFICATION AS PROMISED. THE

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SPECIFICATION STATES THAT TRANSMISSION IS SENDING TO A REMOTE LOCATION. START WITH THE ABSTRACT. WHERE DOES THAT COME FROM? COMES FROM THE ABSTRACT OF THE PATENTS. RIGHT. TRANSMITTING SUCH PROGRAMS TO A

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THE COURT:

MR. BROWN:
THE COURT:

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REMOTE LOCATION.
MR. BROWN:

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SO THAT IS WHERE THE REMOTE LOCATION

LANGUAGE CAME FROM.

IT WAS THE WORDS BURST USED TO DESCRIBE

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WHERE THE INFORMATION IS SENT. AND THE REMAINDER OF THE LANGUAGE IN THE SPECIFICATION THAT DISCUSSES TRANSMISSION IS CONSISTENT WITH THAT. IT

DOESN'T REPEAT REMOTE LOCATION, BUT IT TALKS ABOUT SENDING INFORMATION OVER DISTANCES USING COMMUNICATIONS CHANNELS THAT CLEARLY OPERATE OVER DISTANCES.
SO SPECIFICALLY TALKS ABOUT FIBEROPTIC LINES, TALKS

ABOUT PHONE LINES AND TALKS ABOUT MICROWAVE TRANSMISSION.
THE COURT:

BUT DON'T YOU HAVE A PROBLEM WITH TAKING

WHAT ESSENTIALLY WOULD BE A LIMITATION AND READING IT INTO THE JAMES YEOMANS - OFFICIAL REPORTER
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CLAIM OR THE ABSTRACT?
M R . BROWN:

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I AGREE COMPLETELY, YOU CAN'T READ A

LIMITATION IN FROM THE SPECIFICATION. THE REASON IT MAKES SENSE TO USE THAT CONSTRUCTION HERE, IS BECAUSE WHAT BURST WAS DISTINGUISHING IN THE FILE HISTORY, WHICH WAS CLEARLY A BASIS FOR LIMITING THE CLAIM, WHAT THEY WERE DISTINGUISHING TRANSFERS TO STORAGE DEVICES. BUT I

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DON'T THINK IT WOULD BE FAIR SIMPLY TO EXCLUDE ALL TRANSFERS TO STORAGE DEVICES REGARDLESS WHERE THEY ARE. 10
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THAT'S BECAUSE THE SPECIFICATION, FOR EXAMPLE, TALKS ABOUT SENDING ONE VCRET AND AS BURST POINTED OUT, THE SECOND

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ONE WHICH MIGHT HAVE IT WOULD BE CAPABLE OF STORAGE AND COULD BE CONSIDERED A STORAGE DEVICE.
SO I DON'T THINK CAN YOU JUST BLANKETLY SAY THEY

EXCLUDE ALL STORAGE DEVICES, INSTEAD YOU SHOULD HOLD THEM TO WHAT THEY SAID, WHICH IS THERE'S A DIFFERENCE BETWEEN AN INTERFACE AND COMMUNICATIONS CHANNEL. AND GIVEN THAT THEY DESCRIBE IN THE SPECIFICATION THE COMMUNICATIONS CHANNEL AS TRANSMISSION TO REMOTE LOCATION, THAT'S THE REASON FOR USING THAT LANGUAGE.
SO ON THE SPECIFICATION, THE ONLY OTHER POINT AND WE

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COULD MOVE THROUGH IT FAIRLY QUICKLY, IS THAT IN EACH INSTANCE WHERE THE PATENT TALKED ABOUT TRANSMISSION, IT'S TALKING ABOUT TRANSMISSION IN THE CONTEXT OF SENDING IT OVER A DISTANCE.
SO HERE WE HAVE A DISCUSSION OF TRANSMITTING OVER

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FIBEROPTIC LINES WHICH CARRIES IT OVER GREAT DISTANCES, SAME THING IN THE SUMMARY OF THE INVENTION. TALKS ABOUT TELEPHONE

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LINES, MICROWAVE TRANSCEIVERS, ALL WHICH CARRY INFORMATION OVER DISTANCES, ALL WHICH ARE COMMUNICATIONS CHANNELS. TRANSMISSION CONVENTIONAL PHONE LINES, TRANSMIT VIA MICROWAVE, ALL THE REFERENCE IN THE SPECIFICATION TO WHAT TRANSMISSION IS AND THEY ARE ABOUT SENDING OVER DISTANCE. THERE'S ONE EXCEPTION AND IMPORTANT TO POINT THIS OUT. IN ONE PLACE IN THE SPECIFICATION IT DISCUSSES TRANSMITTING INTERNAL TO THE DEVICE, TALKS ABOUT TRANSMITTING VIA BUS TO MEMORY 13, THAT'S CLEARLY AN INTERNAL TRANSFER. THAT ONE USE DOESN'T APPLY HERE BECAUSE BOTH PARTIES HAVE AGREED THE CLAIM LANGUAGE TRANSMISSION MEANS SENDING IT OUTSIDE THE DEVICE. AND SO WITH THAT ONE EXCEPTION ALL THE USE

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IN THE SPECIFICATION TRANSMISSION REFERS TO SENDING IT OVER A DISTANCE TO REMOTE LOCATION USING A COMMUNICATIONS CHANNEL. NOW, IF YOU HAVE ANY QUESTIONS ABOUT THAT PORTION OF THE ARGUMENT, I'M HAPPY TO TAKE THEM.
THE COURT:

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THE TERM REMOTE SHOWS UP IN THE '932, DOES

IT SHOW UP ELSEWHERE? DOESN'T SHOW UP IN THE '995, DOES IT?
MR. BROWN:
THE COURT:

THAT'S CORRECT, THEY AMENDED SHOWS UP IN THE '839.

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MR. BROWN:

IT'S IN THE THREE ABSTRACTS OTHER THAN THE

'995, WHICH ARE THE PATENTS THAT FOLLOW THE CONTINUATION IN JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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PART APPLICATION, SO THAT LANGUAGE TO A REMOTE LOCATION WAS ADDED IN THE CIP.
THE COURT:

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IS THERE ANYTHING IN THE PROSECUTION

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HISTORY THAT TERM WAS ADDED?
MR. BROWN:

WHY THAT TERM WAS ADDED, NO.

BUT THE

PROSECUTION HISTORY TELLS YOU, IS THAT TRANSMISSIONS SOMETHING OVER COMMUNICATIONS CHANNEL AND IS DIFFERENT FROM A TRANSFER THROUGH AN INTERFACE TO A STORAGE DEVICE.
THE COURT:

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YES. BUT NOT THE WORD REMOTE, NO. THE SECOND

MR. BROWN:

DISPUTE, YOUR HONOR, IS THE LIMITATION THAT BURST IS SEEKING TO ADD HERE TO A DEVICE CAPABLE OF PLAYBACK. AND HERE I WOULD RETURN TO WHAT YOUR HONOR SAID A FEW MINUTES AGO, WHICH IS YOU NEED A VERY COMPELLING REASON TO IMPORT A LIMITATION FROM THE SPECIFICATION INTO THE CLAIMS. AND GOOD EXAMPLE OF THE COMPELLING REASON LIKE THAT, IS A CLEAR STATEMENT IN FILE HISTORY, WHICH WE CLEARLY HAVE IN THE CONTEXT OF IZEKI, WHICH WE DON'T HAVE HERE, THERE SIMPLY ISN'T JUSTIFICATION FOR ADDING A LIMITATION TO A DEVICE CAPABLE OF PLAYBACK TO THE TRANSMISSION. REASONS. FIRST PLAYBACK TRANSMISSION ARE CLEARLY DIFFERENT FUNCTIONS, THEY'RE SEPARATELY CLAIMED. CLAIM 3, FOR EXAMPLE, THAT'S TRUE FOR AT LEAST TWO

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ADD THE FUNCTION OF PLAYBACK TO THE DEVICE. THE SECOND REASON IS THAT THE CLAIMS, AND AS I THINK JAMES YEOMANS - OFFICIAL REPORTER
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YOUR HONOR RECOGNIZED THIS MORNING ARE ABOUT TRANSCEIVERS, THEY'RE ABOUT A PARTICULAR APPARATUS, THE APPARATUS THAT DOES THE TRANSMITTING, THEY'RE NOT ABOUT THE APPARATUS THAT DOES THE RECEIVING AND THE LIMITATION. A DEVICE CAPABLE OF PLAYBACK IS ATTEMPTING TO ADD A LIMITATION OF
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ABOUT THE FUNCTIONALITY OF DEVICE THAT

RECEIVES THE TRANSMISSION, WHICH IS NOT THE DEVICE THAT'S CLAIMED.
THE COURT:

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THAT WE KNOW. WE DO.

MR. BROWN:

TURNING TO THE TERM AUDIO/VIDEO SOURCE INFORMATION, YOUR HONOR. THERE ARE TWO DISPUTES ABOUT THIS TERM. THE FIRST

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IS THE DISPUTE ABOUT WHETHER OR NOT THE INFORMATION HAS TO BE COMPLETE WORK OR WHETHER IT CAN BE SEGMENTS OR PORTIONS OF THAT WORK. AND THE SECOND DISPUTE WHETHER THE
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A SINGLE WORK THERE'S NO

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HAS TO BE RECEIVED FROM ONE OR MORE SOURCES. DISPUTE
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THE COURT:

WHETHER IT CAN BE? WHETHER IT CAN BE, THAT'S RIGHT. THERE'S

MR. BROWN:

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NO DISPUTE THAT THE PATENT DESCRIBES RECEIVING WORKS FROM A VARIETY OF SOURCES.
SO ONE WORK COULD COME FROM A TAPE,

ANOTHER COULD COME FROM AN OPTICAL DRIVE, THAT'S CLEARLY DISCLOSED. THE QUESTION WHETHER A SINGLE WORK CAN COME FROM

MULTIPLE SOURCES? JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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START BY ADDRESSING THE FIRST QUESTION, WHICH IS THE 2 3
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QUESTION OF WHETHER THE AUDIO/VIDEO SOURCE INFORMATION HAS TO BE A COMPLETE WORK.
SO THIS ISSUE WAS SQUARELY BRIEFED AND DECIDED BY

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JUDGE MOTZ IN THE MARYLAND CASE.
THE COURT:

ONLY ANOTHER DISTRICT COURT JUDGE, YOU

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KNOW.
MR. BROWN:
THE COURT:

THAT'S TRUE. DIFFERENT DISTRICT. A VERY DIFFERENT DISTRICT. AS MR. POWERS

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MR. BROWN:

SAID, WE'RE NOT ARGUING FOR ESTOPPEL HERE.

THE POINT HERE

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THOUGH, IS DIFFERENT FROM TIME DEPRESSION BECAUSE THIS WAS EXACTLY THE SAME DISPUTE THAT IS PRESENT HERE. AND AS YOU CAN TELL FROM THE FACT I'M RAISING THIS, JUDGE MOTZ REJECTED BURST'S POSITION IN THAT CASE, AND HELD THAT THE SOURCE INFORMATION WAS NOT SEGMENTS OF THE DATA. HE HAD A GOOD REASON FOR DOING THAT. FIRST OF ALL, AND I PUT UP A SLIDE HERE FROM DR. HEMAMI'S TUTORIAL FROM, YOUR HONOR, A WEEK AGO, AS DR. HEMAMI EXPLAINED, THERE'S NO DISPUTE THAT WHAT THE AUDIO/VIDEO SOURCE INFORMATION IS A WORK AND WHEN SHE DESCRIBED WHAT A WORK WAS SHE DESCRIBED A SONG, PROMOTIONAL VIDEO, AND A TV SHOW, SHE DIDN'T TALK ABOUT A SEGMENT, A STRIP OF FRAMES, WHICH IS WHAT BURST IS ASKING FOR HERE.
THE COURT:

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AND

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WHAT DO YOU MEAN BY THAT?

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I MEAN, WOULD IT HAVE TO BE THE ENTIRE, YOU KNOW, AN ENTIRE WAGNERIAN OPERA OR JUST ACT I? IT IS.
MR. BROWN:

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WHICH IS LONG ENOUGH AS

THAT'S A GOOD QUESTION. I'M TRYING TO FIGURE OUT WHAT YOU REALLY

THE COURT:

MEAN BY THAT.
MR. BROWN:

I THINK, THE BEST ANSWER IS, LET'S TALK I THINK, THERE

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ABOUT WHAT WE'RE TRYING TO MAKE CLEAR IT'S NOT.

WAS NO DISPUTE FROM BURST, AS YOU'LL RECALL, THAT THEIR INVENTION ISN'T TIME COMPLEX MULTIPLEXING. YOU'LL RECALL I PUT UP A SLIDE FROM THE FILE HISTORY WHERE THEY SAY VERY CLEARLY WE'RE NOT, HASKELL TEACHES TIME-COMPRESSION MULTIPLEXING, IT HAPPENS IN REAL TIME. TO WALK-THROUGH AND EXPLAIN WHY THIS MATTER IS HERE.
SO IF WHAT HASKELL DID, AND YOU MAY RECALL THE

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I WANT

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ANIMATION IS HASKELL WOULD TAKE MULTIPLE DIFFERENT SIGNALS AND MULTIPLEX THEM OVER A SINGLE LINE, SO YOU CAN GET MULTIPLE SIGNALS TRANSFERRING OVER A SINGLE LINE IN REAL TIME. AND THE WAY IT DID THAT WAS BY TAKING PIECES OF THE SIGNAL, COMPRESS THEM IN TIME, SO THEY COULD ALL BE PUT ONTO THE LINE IN THEIR OWN SLOT ONE AFTER ANOTHER. IF YOU LOOK AT ANY OF THOSE PIECES, ANY ONE OF THOSE PIECES GOES OVER THAT COMMUNICATIONS LINE MUCH FASTER THAN REAL TIME. THE ENTIRE WORK THAT'S BEING SENT GOES IN REAL TIME, AND

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THE REASON IS THAT THE LINES BEING SHARED BY MULTIPLE JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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TRANSMISSIONS. AND BURST CLEARLY IN THE FILE HISTORY DISTINGUISHED THEIR INVENTION FROM THAT TYPE OF SITUATION. THEY TOLD YOU AND YET IF

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HERE THAT THAT'S NOT WHAT THEIR INVENTION IS ABOUT.

YOU LOOK AT THE CLAIMS, IF THE AUDIO/VIDEO SOURCE INFORMATION IS JUST A FEW FRAMES OR JUST A PORTION OF A WORK, THEN WATCH WHAT CAN HAPPEN. YOU CAN COMPRESS A PORTION OF THE WORK, YOU CAN STORE THAT, YOU CAN TRANSMIT THAT PORTION OF THE WORK BECAUSE WHAT YOU'RE TRANSMITTING IS STORED TIME-COMPRESSED REPRESENTATION, IF THAT'S -- AND WHAT THE TIME-COMPRESSED REPRESENTATION IS A REPRESENTATION OF SOURCE INFORMATION.
SO IF YOU CAN SEND JUST A PIECE OF A WORK FASTER THAN

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REAL TIME AND PRACTICE THIS CLAIM, THEN YOU'RE DOING EXACTLY WHAT THEY SAID THEY WEREN'T DOING. BECAUSE HASKELL SENDS LITTLE PIECE OF PIECES OF A WORK FASTER THAN REAL TIME, BUT IT SENDS ONLY EACH PIECE FASTER, IT THEN WAITS AFTER IT SEND ONE LITTLE PIECE FOR ALL THE OTHER PEOPLE SHARING THE LINE WITH TO SEND THEIR OWN LITTLE PIECES.
SO THE REAL ANSWER TO YOUR HONOR'S QUESTION IS FOR

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WAGNER, I THINK, ACT I WOULD BE ENOUGH.

WHAT WOULDN'T BE

ENOUGH IS SENDING FIVE-SECOND CLIP OR A 15-SECOND CLIP OF A FIRST MOVEMENT OF ACT I.
THE COURT:

WELL, BUT SURELY THERE'S GOT TO BE A I'M NOT

BETTER WAY, IF IN FACT THAT POSITION IS CORRECT.

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SAYING IT IS, BUT IF IT IS, THERE'S CERTAINLY HAS TO BE A BETTER WAY OF EXPRESSING THAT AND REFERRING TO IT AS A WORK, AS IF IT HAD A COMPLETE WORK. I MEAN, I THINK, THAT THAT REALLY IS, YOU KNOW, THERE'S NOT A VERY GOOD WAY TO EXPRESS IT.
MR. BROWN:

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YOUR HONOR, I THINK, THE WORD WORK ITSELF I THINK, WHEN WE WERE TALKING ABOUT

DOES THE JOB FAIRLY WELL.

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WORKS, WHAT WE THINK OF IS A SONG, A VIDEO, A TV PROGRAM. THE REASON FOR THE DISPUTE IS BECAUSE, AND FRANKLY, I HAD A CONVERSATION WITH BURST'S ATTORNEYS THE OTHER DAY, JUST A FEW DAYS AGO TO SEE IF WE COULD RESOLVE THIS DISPUTE, WE ADDRESSED THE QUESTION WHETHER OR NOT WE COULD AGREE IT COULDN'T JUST BE SEGMENTS OF A WORK. WE COULDN'T REACH AGREEMENT ON THAT, YOU HEARD THEM ARGUE IT WOULD BE SEGMENTS OF A WORK, THAT'S WHERE WE'RE STANDING HERE, I THINK, THE WORD WORK ITSELF IS ENOUGH TO MAKE CLEAR WHAT'S BEING TRANSMITTED IS NOT JUST A PIECE OF THAT WORK.
THE COURT:

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BUT WHAT YOU'RE CONTEMPLATING IT WOULD BE

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TRANSMITTED IN FRAGMENTS, RIGHT?
MR. BROWN:
THE COURT:

WHAT I'M SAYING

--

IN OTHER WORDS, A WHOLE WORK, BUT WOULD BE

TRANSMITTED IN FRAGMENTS.
MR. BROWN:

THAT S WHAT THEY CAN'T CLAIM, THAT'S WHAT

THEY SAID THEIR INVENTION WASN'T BECAUSE THEY DISTINGUISHED
~~~

_________

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FROM THIS INVENTION FROM SEGMENTS OF A WORK GOING FASTER THAN REAL TIME, WHEREAS THE ENTIRE THING DOES NOT.
THE COURT:

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BUT -- BUT, SEGMENTS COULD, IN FACT, BE

TRANSFERRED WITHOUT TRANSFERRING THE ENTIRE WORK, HAPPENS ALL THE TIME.
MR. BROWN:
THE COURT:

THAT'S TRUE. AND YOU DON'T -- YOU'RE NOT STRINGING THEN

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THOSE SEGMENTS ESSENTIALLY HAVING TO, WHETHER IT'S BY VIRTUE OF MULTIPLEXING OR SOME OTHER MEANS, WITH OTHER WORKS THAT ARE BEING TRANSMITTED OR JOINING UP WITH, I GUESS, OTHER FRAGMENTS OF THE SAME WORK THAT COME FROM OTHER SOURCES, SOURCES OF INFORMATION, RIGHT? I MEAN, COULD YOU JUST SEND A FRAGMENT AND THAT'S IT, THAT'S ALL YOU'RE GOING TO SEND BECAUSE FOR SOME REASON THAT'S ALL YOU WANT TO SEND?
MR. BROWN:

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YOUR HONOR, THAT'S CLEARLY POSSIBLE AND

THE ARGUMENT AND, I THINK, THE REALITY WHAT THEY SAID, IS THAT THAT'S NOT WHAT THEIR INTENTION WAS. THAT'S WHAT HASKELL DID.

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IT TOOK LITERALLY, THAT'S WHAT HASKELL DID, IT TOOK A PROGRAM AND BROKE IT DOWN INTO PIECES.
THE COURT:

BUT I'M NOT TALKING ABOUT BREAKING IT DOWN

INTO PIECES.

YOU CAN JUST SEND A SEGMENT OF SOMETHING AND NOT

SEND THE REST OF IT, THAT'S WHY I THINK THE TERM WORK IS MISLEADING. BECAUSE SUGGESTED, IN FACT, YOU ARE SENDING THE ENTIRE JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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WORK, BUT YOUR -- BUT YOU'RE SAYING THAT -- AND BUT YOU'RE SENDING IT IN FRAGMENTS AND, THEREFORE, YOU'RE ESSENTIALLY READING ON HASKELL. BUT THAT I'M NOT TALKING ABOUT THAT, I'M TALKING ABOUT SENDING WHATEVER YOUR SENDING, THAT'S WHY THIS BIT OF INFORMATION I DON'T KNOW WHY THAT'S SO.
MR. BROWN:

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I HAVE A SUGGESTION. WHY THAT'S AMBIGUOUS. I THINK, IT'S

THE COURT:

PERFECTLY CLEAR, THE SOURCE OF INFORMATION COULD BE PART OF A WORK, COULD BE A WHOLE WORK, WHATEVER, THERE HAS TO BE A BETTER WAY OF GETTING AT WHAT YOU'RE TRYING TO GET AT WITHOUT THAT MISLEADING LANGUAGE.
MR. BROWN:

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I HAVE AN ALTERNATIVE SUGGESTION.

IN

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FACT, THE CONSTRUCTION WE ORIGINALLY PROPOSED. IF YOU GO TO SLIDE 40. BEFORE WE -- BEFORE I CHANGE

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IT ON THE SCREEN, THE REASON I THINK THE SOLUTION IS THAT WHAT IS BEING SENT IS THE SOURCE INFORMATION, IS WHAT IS ULTIMATELY TRANSMITTED IN TIME-COMPRESSED FORM. YOU CAN TELL THAT FROM

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THE CLAIM LANGUAGE YOU START WITH SOURCE INFORMATION, YOU COMPRESS IT, YOU STORE IT AND YOU TRANSMIT IT.
THE COURT:
MR. BROWN:

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SO YOU KNOW -- RIGHT.
S O KNOW FROM CLAIM CHANGING WHAT YOUR

SENDING -THE COURT:
MR. BROWN:

IS WHAT YOU GOT. YOU KNOW, FROM THAT CLAIM LANGUAGE YOU'RE

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NOT DOING WHAT HASKELL DID.

YOUR TAKING THIS THING YOU MEAN TO

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SEND, BREAKING IT UP INTO MANY PIECES AND SENDING EACH PIECE FASTER THAN REAL TIME.
SO IF WE COULD GO BACK TO SLIDE 40.

THE CONSTRUCTION PROPOSED ATTEMPTED TO CAPTURE EXACTLY THAT. THE ENTIRETY OF THE DATA INTENDED TO BE TRANSMITTED, NOT WE TOOK THAT LANGUAGE FROM JUDGE MOTZ

SEGMENTS OF THE DATA.

AND I THINK THAT LANGUAGE CAPTURES WHAT YOUR HONOR IS SAYING.
THE COURT:

HE HAD A HARD TIME WITH IT, THE COMPLETE

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WORK LANGUAGE AS WELL.
MR. BROWN:

THE WORK LANGUAGE WASN'T IN FRONT OF HIM,

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YOUR HONOR.

THE WORK LANGUAGE WAS AN ATTEMPT TO REACH

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AGREEMENT BETWEEN US, BUT THAT CONSTRUCTION WHICH WE PROPOSED, I BELIEVE, CAPTURES THE CONCEPT YOU'RE TRYING TO ARTICULATE.
THE COURT:

WHY NOT JUST SAY THE SOURCE INFORMATION

TRANSMITTED, RECEIVED?
MR. BROWN:

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RIGHT, THAT -THE ENTIRETY OF THE SOURCE INFORMATION

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THE COURT:

RECEIVED.
MR. BROWN:

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THAT IS THE CONCEPT WE'RE TRYING TO

CONVEY, YOUR HONOR, EXACTLY THAT.
THE COURT:
MR. BROWN:

OKAY. THE ENTIRETY OF THE DATA IS TO BE SENT OR

IS RECEIVED, THAT'S EXACTLY RIGHT.
THE COURT:
MR. POWERS:

OKAY.

GO AHEAD.

SO I'M GOING TO LEAVE THAT ISSUE. WE

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DON'T NEED TO DISCUSS THIS.

I'LL NOTE IN PASSING THAT THE

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SPECIFICATION CONSISTENTLY REFERS TO WHAT IS SENT AS A PROGRAM.
THE COURT:

YES, COULD WE GET TO THE BUT NOT A PLAY

LIST LANGUAGE?
MR. BROWN:

LET'S GET TO NOT A PLAY LIST.

I THINK, I

DON'T HAVE MUCH TO SAY ABOUT THIS MULTIPLE SOURCES OTHER THAN I -THE COURT:

NO, I DON'T THINK YOU NEED TO SAY

ANYTHING.
MR. BROWN:
THE COURT:

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WE'LL TALK ABOUT THE PLAY LIST. THOROUGHLY BRIEFED. MORE THAN THOROUGHLY

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BRIEFED.

MY LAW CLERK WILL READ IT.
MR. BROWN:
S O THE ISSUE HERE, YOUR HONOR, IS THE

MEANING OF EDITING.

I THINK, MORE IMPORTANTLY WE SHOULD TALK

ABOUT WHAT WE AGREE ABOUT. WHAT WE AGREE, EDITING MEANS MODIFYING SOMETHING. WE

AGREE WHAT IS MODIFIED IS THE TIME-COMPRESSED REPRESENTATION.
SO I PUT A QUOTE ON THE SCREEN FROM BURST'S BRIEF WHERE THEY

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CLEARLY STATE THAT EVERY ONE OF THE ASSERTED CLAIMS THAT USES THE TERM EDITING ALREADY EXPRESSLY STATES SOME TYPE OF TIME-COMPRESSED REPRESENTATION BEING EDITED. THERE'S NO DISPUTE WHAT'S BEING EDITED IS THE REPRESENTATION OF THE AUDIO/VIDEO INFORMATION.
SO THE DISPUTE

ABOUT PLAY LIST IS FAIRLY SUMMARIZED, AS CAN YOU CALL A PLAY LIST A REPRESENTATION OF AUDIO/VIDEO SOURCE INFORMATION AND -JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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THE COURT:

WELL, IS THE TERM EDITING USED SEPARATE

AND APART FROM OR THAT CONTEXT? IN OTHER WORDS, FOR EXAMPLE, WHERE IT SAYS IN CLAIM 2 OF THE '995, EDITING THE TIME-COMPRESSED REPRESENTATION, IT TELLS YOU WHAT'S BEING EDITED.
MR. BROWN:

EXACTLY. EVERY TIME THE TERM EDITING BEING USED, IT

THE COURT:

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DOES ESSENTIALLY HAVE THAT MODIFIER.
MR. BROWN:

YES, THAT WAS UNDISPUTED.

THAT'S WHAT I

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PUT ON THIS SLIDE, SLIDE 56.

THE PARTIES AGREE EDITING ALWAYS

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APPLIES, THAT WHAT'S BEING EDITED IS ALSO THE TIME-COMPRESSED REPRESENTATION. AND SO THE QUESTION AT THAT POINT IS WHETHER INFORMATION ABOUT HOW VARIOUS SONGS, LET'S JUST USE SONGS, CAN BE ARRANGED, WHICH IS WHAT A PLAY LIST IS, WHETHER THAT IS A REPRESENTATION OF AUDIO/VIDEO SOURCE INFORMATION OR WHETHER IT'S SOMETHING ELSE.
THE COURT:
MR. BROWN:

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THAT'S -METADATA OR CATALOGUING, THAT'S EXACTLY

RIGHT.
THE COURT:

M-E-T-A-D-A-T. D-A-T-A, THAT'S RIGHT. METADATA, BUT I THOUGHT YOU USED THE INK,

MR. BROWN:
THE COURT:

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METADATA, WHATEVER, YOU'RE RIGHT, OF THE METADATA MAKES IT EASIER, WE ALL KNOW HOW TO SPELL THAT ONE. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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MR. BROWN:

SO THE POINT WHICH, I THINK, EXACTLY WHAT

YOUR HONOR JUST SAID, IS THE INFORMATION THAT ABOUT THE ORDER IN WHICH YOU PLAY SONGS IS CATALOGUING INFORMATION AND IT IS NOT THE SONG INFORMATION, THE AUDIO/VIDEO INFORMATION ITSELF. YOU CAN CHANGE THE ORDER IN WHICH YOU PLAY SONGS WITHOUT CHANGING THE REPRESENTATIONS OF THE SONGS AND BECAUSE OF THAT WE THINK THAT THE CLAIM LANGUAGE MAKES VERY CLEAR THAT EDITING CAN'T INCLUDE CREATING A PLAY LIST ABOUT THE ORDER IN WHICH YOU PLAY REPRESENTATIONS BECAUSE WHAT YOU EDIT HAS TO BE THE TIME-COMPRESSED REPRESENTATION.
THE COURT:

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WHAT IF ALL THAT YOU HAVE IS THE TITLE OF

THE SONG AND THE TIME COMPRESSED REPRESENTATION DOESN'T INCLUDE THE TITLE, NOT TALKING ABOUT THEN ORDERING IT AS IN A PLAY LIST, BUT JUST HAS A BUNCH OF TITLES, THEY'RE ALL ESSENTIALLY IN THE ORDER IN WHICH THE SONGS ARE TRANSMITTED, JUST YOU KNOW, IDENTICAL ORDER.
MR. BROWN:
SO,

FOR EXAMPLE, I THINK WHAT YOUR HONOR

IS TALKING ABOUT IS EDITING A PLAY LIST AND THERE'S NO QUESTION THAT YOU CAN EDIT A PLAY LIST. I'VE DONE THAT ON MY COMPUTER,

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I DECIDE I WANT TO PLAY SONGS IN A DIFFERENT ORDER.
THE COURT:

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I'M TALKING ABOUT ORDER THEM NOW, I'M JUST
--

TALKING ABOUT THEY APPEAR ON THE

WHEN THEY'RE RECEIVED

THROUGH THE TRANSMISSION THEY APPEAR IN THE SAME ORDER, WITH THE SAME TITLE AS DESCRIBED TO THEM IN THE REPRESENTATION, TIME-COMPRESSED REPRESENTATION IN THE TRANSMISSION, I SHOULD JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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SAY

e

OKAY.

THE TRANSMISSION GIVES YOU A CERTAIN NUMBER OF

SONGS AND IT GIVES YOU THOSE SONGS IN A PARTICULAR ORDER AND THEY HAVE TITLES ATTACHED TO THEM.
MR. BROWN:
THE COURT:

OKAY.

YES. IF YOUR JUST LISTING THE TITLES IN THE

VERY SAME ORDER IN WHICH YOU RECEIVED THEM, IS THAT EDITING?
MR. BROWN:
THE COURT:

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LISTING TITLES? UH-HUH.
I DON'T SEE HOW LISTING THE TITLES IS

MR. BROWN:

EDITING.

I ALSO DON'T THINK THAT'S THE ISSUE, BECAUSE THE

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ISSUE THE PARTIES HAVE AGREED WHAT IS EDITED IS A REPRESENTATION. THE CLAIMS ARE VERY CLEAR, IN EVERY CLAIM THAT'S AT ISSUE WHAT IS BEING REPRESENTED IS AUDIO/VIDEO SOURCE INFORMATION, SO WHAT THIS BOILS DOWN TO IS WHETHER TITLES ARE AUDIO, WHICH ARE WORDS ARE AUDIO/VIDEO SOURCE INFORMATION
THE COURT:
--

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IN OTHER WORDS, THEY'RE JUST EXTRACTED

FROM THE TRANSMISSION WITHOUT THE SONG, THEN THEY APPEAR ON A LIST, BUT ALL ON THE SAME ORDER IN WHICH THEY'RE RECEIVED, IT DOES THAT AMOUNT TO EDITING.
MR. BROWN:

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NOT IN MY MIND, YOUR HONOR.

BUT ALSO

DOESN'T HAVE ANYTHING TO DO WITH THE CLAIM.

THE CLAIMS ARE

ABOUT AUDIO/VIDEO SOURCE INFORMATION, NOT THE TITLES OF THE SONGS.
SO WHAT MATTERS TO THE CLAIM IS THAT YOU COMPRESS,

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STORE, TRANSMIT AUDIO, A REPRESENTATION OF AUDIO/VIDEO SOURCE INFORMATION.
THE COURT:

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OKAY.

RIGHT.

OKAY.

BUT WHAT IS BEING I ASSUME, IT'S

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DISCUSSED IS A PLAY LIST, NOT THE WHOLE SONG.

THE ORDER IN WHICH THEY'RE PLAYED, BUT THEY HAVE TITLES, OR AM I JUST TALKING ABOUT WHAT APPEARS ON THE DISPLAY?
MR. BROWN:

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I THINK YOU'RE RIGHT, THAT'S WHAT A PLAY

LIST IS.

AND, I THINK, WHAT WE'RE TRYING TO MAKE CLEAR BECAUSE

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THE CLAIMS SAY EDITING TIME-COMPRESSED REPRESENTATION.
THE COURT:
MR. BROWN:

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ON THE SOURCE INFORMATION. RIGHT, THAT'S NOT EDITING A PLAY LIST.

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RECEIVING A LIST OF SONGS WOULDN'T BE EDITING A PLAY LIST, BUT ONCE YOU RECEIVED THEM, IF YOU MOVED THE SONGS AROUND THAT WOULD BE EDITING THE PLAY LIST.
THE COURT:

THAT'S DIFFERENT.
SO WHAT'S THE REASON FOR

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I UNDERSTAND.

INCLUDING THIS LANGUAGE OF PLAY LIST? MR. BROWN: THE REASON, YOUR HONOR, IS TO MAKE CLEAR

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THAT WHEN YOU EDIT A PLAY LIST YOU'RE NOT EDITING SOURCE INFORMATION. FRANKLY, I THINK, IT'S CLEAR FROM THE CLAIM LANGUAGE ITSELF, BUT BURST OBVIOUSLY DISAGREES. THEY'RE SAYING A PLAY

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LIST AND EDITING A PLAY LIST COULD BE INCLUDED WITHIN THE CLAIM LANGUAGE, SO WE HAVE A DISPUTE ABOUT THE ISSUE. THE FINAL TERM, YOUR HONOR, MULTIPLICITY, I WON'T SAY MUCH ABOUT THIS. OUR CONSTRUCTION, TWO OR MORE FAIRLY LARGE

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NUMBER IS DRAWN STRAIGHT FROM THE ORDINARY MEANING OF THAT TERM IN PATENT DRAFTED WE PUT IT UP HERE FROM CLAIM DRAFTING. LITERALLY THE DEFINITION IN LANDIS THE TERM MULTIPLICITY WE'VE INCLUDED IT.
THE COURT:

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THANK YOU. THANK YOU, YOUR HONOR. NOW, THE NEXT SERIES THE FUN BEGINS,

MR. BROWN:
THE COURT:

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RIGHT?

IF YOU WEREN'T ALREADY HAVING FUN.
MR. PAYNE:

GOOD AFTERNOON. THE

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MY NAME IS LES PAYNE, I REPRESENT BURST.

MATERIALS -- IF YOU LOOK IN THE BINDER MR. FOLSE HANDED UP TO YOU, I BELIEVE, IT'S TAB FOUR IN THE MATERIALS. THESE ARE EIGHT TERMS IN DISPUTE. I'M GOING TO

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ADDRESS EACH OF THESE TERMS, WITH ONE CAVEAT, WHICH IS MR. HEIM WILL ADDRESS THE LAST TERM.
THE COURT:

COMPRESSION MEANS.

IS THERE ANYTHING YOU WANT TO SAY ABOUT,

IN ADDITION THERE'S ANY NEED TO SAY ANYTHING DO YOU THINK ABOUT
1126 ITSELF?
MR. PAYNE:
THE COURT:

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YES. SOMETHING YOU WANT TO SAY ABOUT THAT OR

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COULD WE JUST LIVE WITH WHAT EVERYBODY HAS BRIEFED ON THAT AND ASSUME WE KNOW WHAT THE CONSEQUENCES OF INCLUDING OR NOT INCLUDING STRUCTURE IN THE CLAIM MEAN?
M R . PAYNE:

THE MAJORITY OF OUR PRESENTATION IS

DEVOTED TO THE THRESHOLD ISSUE, WHICH IS WHETHER 1126 APPLIES. JAMES YEOMANS - OFFICIAL REPORTER
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THE COURT:

AS TO EACH OF THESE TERMS THEN? NO, ACTUALLY ONLY AS TO 1, 2, 3 AND 4, THE PARTIES AGREE 5, 6, 7 AND 8 BECAUSE BUT AS

2 3 4 5 6 7 8
9

MR. PAYNE:

WHICH IS GOOD POINT.

THEY'RE NOT STRUCTURAL IN NATURE ARE SUBJECT TO 1126. TO ITEMS 1, 2, 3 AND 4 THE PARTIES DISAGREE, IT'S OUR

CONTENTION THAT BECAUSE THOSE TERMS HAVE STRUCTURE THAT 1126 DOES NOT APPLY. THAT THE PRESUMPTION IS REBUTTED, IT'S APPLE'S CONTENTION THAT 1126 DOES APPLY TO THE FIRST TERMS. MAJORITY OF MY PRESENTATION TODAY. THE FIRST SLIDE REALLY POINTS OUT THE VERY SIGNIFICANT POINT, WHICH IS THAT THE FIRST FOUR TERMS ARE STRUCTURAL IN NATURE. IN FACT, THERE'S REALLY NO DISPUTE ABOUT THAT. APPLE AGREES, CONNOTES SOME STRUCTURE. THAT'S WHY BURST HAS AS THAT'S THE

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BURST HAS SAID THOSE TERMS ARE NOT SUBJECT TO 1126.

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TAKEN A VERY FAIR-MINDED REASONABLE APPROACH TO THIS ISSUE.

TO THE LATTER TERMS 5, 6, 7 AND 8 WHERE THERE IS NO STRUCTURE BURST AGREES THAT 1126 APPLIES. BUT WHERE THERE IS STRUCTURE ITEMS 1, 2, 3 AND 4, 1126 DOES NOT APPLY. ON THE OTHER HAND, APPLE HAS TAKEN A VERY

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AGGRESSIVE APPROACH AS TO ALL OF THESE MEANS TERMS, EVEN THE ONES THAT INCLUDE STRUCTURE THEY SAY 1126 APPLIES. WE'LL SEE IN A MINUTE THAT AS TO THE FIRST FOUR TERMS THERE IS A FUNDAMENTAL DISPUTE ON THE LAW AS TO THE THRESHOLD ISSUE. I'LL GET TO THAT IN A MINUTE. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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IF THERE ARE FOUR CRITICAL POINTS I CAN MAKE TODAY IT'S, NUMBER ONE, THAT THE FIRST FOUR TERMS ARE STRUCTURAL IN NATURE AND THERE IS NO DISPUTE ABOUT THAT. NUMBER TWO, THOSE FIRST FOUR TERMS VERY WELL UNDERSTOOD MEANINGS IN THE ART IN THE RELEVANT TIME FRAME. WE

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HAVE PRESENTED EVIDENCE TO THAT EFFECT, THERE IS NO EVIDENCE THAT APPLE'S PRESENTED TO THE CONTRARY. WE'LL SEE THAT'S VERY

IMPORTANT UNDER THE GUIDING LEGAL PRINCIPLES. NUMBER THREE, WE'LL ALSO SEE THAT THE BURST PATENT DRAFTER, WAS QUOTE "ENAMORED" OF USING THE WORDS MEANS. HE

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USED THE WORD MEANS WITH STRUCTURE REPEATEDLY OVER AND OVER AND OVER, WE'LL GET TO THAT SLIDE IN A MINUTE. THE CASE LAW SAYS WHEN THAT HAPPENS, WHEN THE PATENT DRAFTER IS A ENAMORED OF USING THE WORD MEANS OF STRUCTURE, IT'S STRONG EVIDENCE THAT THE 1126 PRESUMPTION IS REBUTTED. AND, FOURTH, AS I MENTIONED, APPLE JUST HAS THE LAW ON THEIR THRESHOLD ISSUE WRONG.
SO THE THRESHOLD ISSUE RANDOM ACCESS, RANDOM ACCESS

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STORAGE, STORAGE INPUT OUTPUT, THOSE TERMS HAVE SUFFICIENT STRUCTURE IN AND OF ITSELF. APPLE'S POSITION IS THAT THE 1126 APPLIES BECAUSE STRUCTURE -- BECAUSE LISTED IS NOT DEFINITE ENOUGH, THE BASIC UNDERPINS 1126, YOU KNOW THIS LAW, I COULD GO OVER QUICKLY? 1126 ALLOWS THE CLAIM DRAFTER, WITHOUT RECITING ANY STRUCTURE IN THE MEANS PORTION OF THAT LIMITATION. IT'S

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CONSTRUED TO COVER ONLY THE CORRESPONDING STRUCTURE IN THE SPEC 2 3 4 5 6 7 8 9
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AND EQUIVALENCE THEREOF. I'M GIVING AN EXAMPLE OF A MEANS PLUS FUNCTION ELEMENT. THE BOTTOM OF THE SLIDE MEANS FOR CALCULATING, YOU'LL THAT'S WHAT THE STATUTE TEACHES

SEE THAT'S PURELY FUNCTIONAL.

DRAFT CLAIMS THAT ARE PURELY FUNCTIONAL, AND IN SHORT CONTRAST THE FIRST FOUR CLAIMS IN THE DISPUTE HERE IN TERMS IN DISPUTE ARE STRUCTURAL IN NATURE. THEY ARE NOT IN THE CLASSIC 1126 PARADIGM, THAT'S BECAUSE THEY INCLUDE STRUCTURE AND THAT IS VERY TELLING. THE

LAW SAYS THAT WHEN THEY INCLUDE STRUCTURE THE 1126 PRESUMPTION IS REBUTTED AND 1126 DOES NOT APPLY. HERE THE KEY LEGAL PRINCIPLES, NUMBER ONE, THE PARTIES AGREE THAT WHEN THE WORD MEANS IS USED A PRESUMPTION ARISES THAT 1126 APPLIES, BUT THE PARTIES ALSO AGREE THAT PRESUMES A REBUTTABLE. TWO, THE PARTIES AGREE WHEN CONSIDERING THE THRESHOLD ISSUES THE REAL FOCUS IS THE UNDERSTANDING OF ONE OF ORDINARY SKILL IN THE ART. THREE, THE THREE CASES WE CITED IN OUR BRIEF ALLEN ENGINEERING, COLON AND BERRY COULD STAND FOR THE PROPOSITION THE PRESUMPTION IS REBUTTED IF THE TERM RECITES A SUFFICIENT STRUCTURE FOR PERFORMING THE CLAIM FUNCTION. FOUR, THIS IS VERY IMPORTANT POINT, THE TERM RECITES SUFFICIENT STRUCTURE TO REBUT THE PRESUMPTION IF IT HAS A JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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REASONABLY WELL UNDERSTOOD MEANING IN THE ART. ENGINEERING CASE.

THAT'S THE ALAN

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THAT'S THE VERY IMPORTANT CASE BECAUSE IT SETS FORTH ONE OF THE LITMUS TESTS, DOES THE STRUCTURE HAVE A REASONABLY WELL UNDERSTOOD MEANING OF ART IN THE RELEVANT TIME FRAME? LAW ALSO SAYS WE CAN LOOK AT DICTIONARIES TO DETERMINE WHETHER THE TERM CONNOTES STRUCTURE. PHILLIPS IS AN

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INSTRUCTIVE CASE, WE TALKED ABOUT THAT, AND IN THAT CASE THE FEDERAL CIRCUIT EN BANC SAID MEANS PLUS FUNCTION CLAIM APPLIES ONLY TO PURELY FUNCTIONAL LIMITATIONS THAT DO NOT PROVIDE THE STRUCTURE. THE COURT IS EMPHASIZING 1126 APPLIES TO PURELY FUNCTIONAL LIMITATIONS. NOT LIMITATIONS LIKE OURS THAT

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INCLUDES STRUCTURE, INPUT, OUTPUT, STORAGE, RANDOM ACCESS STORAGE. THE COLE CASE INSTRUCTIVE, IN THAT CASE THE FEDERAL CIRCUIT HELD THAT THE PATENTEE SUCCESSFULLY REBUTTED THE 1126 PRESUMPTION. THE TERM THERE WAS PERFORATION MEANS. THE COURT

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SAID 1126 WAS NOT APPLICABLE BECAUSE PERFORATION CONNOTE SUFFICIENT STRUCTURE. THE COURT REACHED ITS RULING ON SEVERAL

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GROUNDS, HAD LOOKED AT DICTIONARY DEFINITION. TWO, WE'LL SEE THEM THROUGHOUT THE CASE LAW AND THE

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COURT FOUND THE PRESUMPTION WAS WEAKENED BECAUSE THE CLAIM DRAFTER THERE WAS ENAMORED OF USING THE WORD MEANS. THAT IS AN EXTREMELY IMPORTANT PRINCIPLE IN OUR CASE JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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BECAUSE AS WELL SEE THE BURST PATENT CLAIM DRAFTER WAS ENAMORED OF USING THE WORD MEANS WITH STRUCTURE OVER AND OVER AND OVER AND IN THAT CONTEXT THE CASE LAW SAYS THE PRESUMPTION CAN BE REBUTTED. FINALLY, THE COURT RELIED ON THE FACT THE STRUCTURE PERFORATION HAD A LOCATION RECITED CLAIMS. THAT'S THE PLAY IN

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OUR CASE, TOO, BECAUSE THE TERMS, THE FIRST FOUR TERMS FOCUSING ON HAVE LOCATION IN THE CLAIMS. I MENTIONED THE ALAN ENGINEERING CASE BEFORE, IN THIS
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CASE THE FEDERAL CIRCUIT ALSO HELD THE 1126 PRESUMPTION REBUTTED. YOU CAN SEE THE TERMS IN THE FIRST BULLET CABLE

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MEANS, CRANK MEANS, VERY BROAD TERMS THOSE TERMS WERE HELD NOT TO BE SUBJECT TO 1126, THE PRESUMPTION WAS REPEATED IN THIS CASE. THE FEDERAL CIRCUIT SAID A TERM RECITES SUFFICIENT STRUCTURE TO REBUT THE PRESUMPTION QUOTE "IF THE TERM AS THE NAMED FOR STRUCTURE HAS A REASONABLY WELL UNDERSTOOD MEANING IN THE ART.'' AND THAT IS A CRITICAL TEST, EACH OF THE FOUR TERMS I'M TALKING ABOUT HERE, RANDOM ACCESS STORAGE, STORAGE, INPUT AND OUTPUT, BACK IN THE RELEVANT TIME FRAME, EACH HAVE A WELL UNDERSTOOD MEANING. WE'VE PRESENTED EVIDENCE ON THAT POINT,

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THERE IS NO EVIDENCE, YOUR HONOR, TO THE CONTRARY.
THE COURT:

LET'S GO, IN FACT, TO THE TERMS THEMSELVES

NOW.

IF YOU CAN, PLEASE. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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MR. PAYNE:

OKAY.

THE LEGAL POINT I WANT TO MAKE,

COULD I JUST MAKE THIS POINT ABOUT THIS, REALLY GOES TO THE HEART OF THE DISPUTE?
THE COURT:

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OF COURSE.

MR. PAYNE:

THE FRAMEWORK WE'VE TALKED ABOUT.

THE

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FRAMEWORK WE'VE TALKED ABOUT HAS ESSENTIALLY BEEN BY APPLE. WHAT THEY RE TRYING TO DO, THEY'RE TRYING TO ARGUE, EVEN THOUGH THE TERMS MIGHT HAVE AN UNDERSTOOD MEANING, IT'S JUST TOO BROAD, IT BRINGS IN TOO MUCH STRUCTURE. AND THERE'S TWO BIG PROBLEMS WITH THAT, YOUR HONOR. FIRST THEY IGNORED -THE COURT:

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BRINGS IN TOO MUCH STRUCTURE OR NOT

ENOUGH?
MR. PAYNE:

THEY SAY, IT BRINGS IN TOO MUCH, IT'S TOO

BROAD, COVERS TOO MANY CLASSES OF STRUCTURES. THE FIRST PROBLEM WITH THAT, IT IGNORES THE REASONABLY WELL UNDERSTOOD MEANING STANDARD WE JUST TALKED ABOUT. BUT THE OTHER BIG PROBLEM, WHAT THEY'RE DOING IS THEY'RE EFFECTIVELY IMPORTING A CONSTRAINT FROM SECTION 1126 FOR TERMS THAT ARE ACTUALLY SUBJECT TO THAT STATUTE, AND TAKING IT OVER INTO THE THRESHOLD ISSUE. THE BEST WAY I KNOW HOW TO EXPLAIN THIS PRINCIPLE TO THE COURT, IS TO LOOK AT 1126 ONE SIDE AND LOOK AT THE THRESHOLD ISSUE ON THE OTHER SIDE. THE COURT'S FAMILIAR WITH 1126, THAT APPLIES WHEN THE JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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TERM IS PURELY FUNCTIONAL. AND THE STATUTE SAYS THE MEANS PORTION OF A PURELY FUNCTIONAL TERM IS LIMITED TO THE CORRESPONDING STRUCTURE IN THE SPEC. IN OTHER WORDS, IT CAN'T COVER EVERY CONCEIVABLE STRUCTURE THAT PERFORMS THE CLAIM FUNCTION BY STATUTE, IT IS LIMITED TO THE CORRESPONDING STRUCTURE. WHAT APPLE HAS DONE, IS THEY BORROWED THAT CONCEPT WITH THE CONSTRAINT BEING LIMITED TO THE CORRESPONDING STRUCTURE, THEY IMPORTED IT INTO THE THRESHOLD ISSUE. THE TEST FOR THE THRESHOLD ISSUE IS WHETHER THERE'S A REASONABLY WELL UNDERSTOOD MEANING WITH RESPECT TO THE STRUCTURE. IF THAT MEANING IS BROAD, THAT'S FINE, IT CAN COVER ONE STRUCTURE, IT CAN COVER A THOUSAND STRUCTURES, AS LONG AS THERE IS A WELL UNDERSTOOD MEANING. THE THRESHOLD QUESTION COMES OUT IN FAVOR OF THE PATENTEE, THE 1126 PRESUMPTION HAS BEEN REBUTTED. THE BIG

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PICTURE IN THE CLAIMS HERE, IF YOU LOOK AT THE PATENTS YOU'LL SEE THAT THE BURST PATENT DRAFTER INCLUDED THE WORD MEANS IN ALL OF THE STRUCTURAL APPARATUS CLAIM LIMITATION. IN FACT, IF YOU LOOK AT THE '96 APPARATUS CLAIMS, HE USED THE WORD MEANS 316 TIMES, THE '995 PATENT ALONE HE USED THE WORD MEANS 224 TIMES, IN '80 APPARATUS CLAIMS THAT'S WHAT THE FEDERAL CIRCUIT IS TELLING US WHEN A PATENT DRAFTER, ENAMORED OF THE WORD MEANS AND USES IT OVER AND OVER AND OVER JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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AGAIN.
THE COURT:

DON'T BECOME ENAMORED OF THAT PHRASE.

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LET'S MOVE ON.

OKAY. FAIR ENOUGH. THE FIRST TERM IS RANDOM

MR. PAYNE:

ACCESS STORAGE.
THE COURT:

WITH RESPECT TO EACH OF THESE TERMS, IT

YOUR CONTENTION THAT THE VERY TERM ITSELF DEFINES THE STRUCTURE, ESSENTIALLY?
MR. PAYNE:

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CORRECT. IS THERE ANYTHING AT ALL IN ANY OF THE

THE COURT:

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CLAIMS WHERE THAT THESE FOUR, LET'S TAKE THE FIRST TWO FOR ACCESS -- FOR EXAMPLE, RANDOM ACCESS STORAGE, LET'S TAKE JUS THAT ONE, IS THERE ANY PLACE IN ANY OF THESE PATENTS WHERE T CLAIM LANGUAGE ACTUALLY DESCRIBES OR DEFINES THE STRUCTURE 0 RANDOM ACCESS STORAGE?
MR. PAYNE:

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IT DESCRIBES THE FUNCTION BUT THE -I'M TALKING ABOUT STRUCTURE NOW. YOU MEAN, THE STRUCTURAL COMPONENTS? YES. WHAT THE CLAIM LANGUAGE DOES, IT WILL

THE COURT:
MR. PAYNE:

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THE COURT:
MR. PAYNE:

PROVIDE THE LOCATION OF THE STRUCTURE IN TERMS OF WHERE THE STRUCTURE IS LOCATED RELATIVE TO OTHER STRUCTURES. BUT IF YOUR HONOR IS ASKING ME WHETHER THE ACTUAL STRUCTURE OF A MEMORY CHIP, FOR EXAMPLE, AS DESCRIBED IN THE CLAIM LANGUAGE, NO, I DON'T SEE THAT. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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THE COURT:

IN OTHER WORDS, YOUR -- IT'S YOUR POSITION

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EACH OF THESE TERMS HAS INHERENT IN IT THE STRUCTURE? WITHOUT REFERENCE TO AND, INDEED, THERE IS NO REFERENCE TO ANY STRUCTURE OF THAT PARTICULAR TERM OR PHRASE IN THE CLAIM LANGUAGE.
MR. PAYNE:

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YES, THAT'S OUR POSITION, IT'S STRUCTURE.

IN FACT, APPLE DOES NOT DISAGREE WITH THAT.
THE COURT:
MR. PAYNE:

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OKAY. THEY ADMIT THAT THESE TERMS ARE STRUCTURAL THEY SAY WE

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IN NATURE, BUT THEY SAY THEY'RE JUST TOO BROAD.

VIOLATED WHAT THEY THINK THE PRINCIPLE IS, WHICH IS THAT IF THE STRUCTURE EFFECTIVELY COVERS EVERY SINGLE STRUCTURE THAT CAN PERFORM THAT FUNCTION, THEN THE THRESHOLD ISSUE SHOULD COME OUT IN THEIR FAVOR. BUT, IN FACT, THAT'S ONLY A REQUIREMENT UNDER 1126. WE'RE ONLY TALKING ABOUT TERMS THAT ARE SUBJECT TO 1126, WHEN WE TALK ABOUT CONSTRUING THE CLAIMS TO BE LIMITED TO THE CORRESPONDING STRUCTURE.
SO THE FIRST TERM HERE IS RANDOM ACCESS STORAGE.

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THIS

SHOWS THE PARTYS' PERSPECTIVE POSITIONS. WE DO NOT THINK IT'S SUBJECT TO 1126. WE PROVIDED A DEFINITION OF STORAGE THAT

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PROVIDES FOR RANDOM ACCESS TO ANY GIVEN SEGMENT OF STORED AUDIO OR VIDEO SOURCE INFORMATION. WE'LL SEE ON THE RIGHT APPLE HAS NOT PRESENTED THE

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COURT WITH ALTERNATIVE CONSTRUCTION.

IF, IN FACT, THE COURT

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RULES IN THEIR FAVOR ON THE THRESHOLD ISSUE, AND IF THE COURT RULES AGAINST US ON THE THRESHOLD ISSUE, THE PARTIES ARE PRETTY MUCH IN AGREEMENT ON THE CORRESPONDING STRUCTURE.
SO, THE REAL ISSUE HERE, IS WHETHER 1126 APPLIES OR

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AND WE SAY IT DOESN'T APPLY. YOU HAVE TO START WITH THE CLAIM LANGUAGE, RANDOM

ACCESS STORAGE MEANS.

AND IF I COULD, FOR JUST ONE MINUTE, I

HEARD MR. POWERS SAY THAT THIS CLAIM, THE CLAIMS IN THE '995 ARE NOT LIMITED TO DIGITAL SIGNALS. YOUR HONOR, THE ONLY TYPE OF SIGNAL THAT IS STORED IN RANDOM ACCESS STORAGE IS A DIGITAL SIGNAL. THAT CLAIM THESE CLAIMS

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LIMITATION APPEARS IN EVERY SINGLE '995 CLAIM.

ARE CLEARLY LIMITED TO DIGITAL SIGNALS, AT LEAST, AT THE STORAGE STEP. LET'S LOOK AT THIS RANDOM ACCESS STORAGE MEANS COUPLED
TO SAID COMPRESSION MEANS FOR STORING THE TIME-COMPRESSED

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REPRESENTATION OF SAID AUDIO/VIDEO SOURCE INFORMATION. WE SEE IMMEDIATELY THAT'S NOT IN THE CLASSIC 1126 FORMAT, IT HAS STRUCTURE RANDOM ACCESS STORAGE. IN FACT, IN

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FACT, IF WE TAKE THE WORD "MEANS" OUT THE LIMITATION, STILL READS PERFECTLY. RANDOM ACCESS STORAGE COUPLED TO SAID COMPRESSION MEANS FOR STORING THE TIME-COMPRESSED REPRESENTATION. THAT SHOWS THE BURST PATENT DRAFTER WAS -- SIMPLY USED THE WORD MEANS IN A PERFUNCTORY MANNER, NOT IN A MANNER WHERE JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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HE INTENDED TO INVOKE 1126. FIGURE 2 GIVE SOME PERSPECTIVE. THE PARTIES AGREE

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THAT MEMORY 12 IS WHERE THE RANDOM ACCESS STORAGE IS, IT STORES THE COMPRESSED REPRESENTATION. NUMEROUS REASONS. ONE, THE TERM ITSELF IS STRUCTURE. TWO, APPLE AGREES THAT RANDOM ACCESS STORAGE IS STRUCTURE. THREE, LET'S LOOK AT THE PROSECUTION HISTORIES. IN THOSE PROSECUTION HISTORY THE PATENT DRAFTER, FIRST PATENT ATTORNEY USED THE WORDS RANDOM ACCESS STORAGE WITHOUT THE WORD MEANS WHEN DESCRIBING THE CLAIMS. FOR EXAMPLE, THIS IS A PAGE FROM THE '995 FILE WRAPPER MARCH 12, 1990 OFFICE ACTION RESPONSE. YOU SEE THAT THE WORDS THE PRESUMPTION REBUTTED FOR

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RANDOM ACCESS STORAGE APPEAR FIVE TIMES IN THE SINGLE PAGE, BUT NOT IN CONNECTION WITH THE WORD MEANS. THE PATENT DRAFTER DID NOT USE THE WORD MEANS IN THE OFFICE ACTION RESPONSE WHEN HE'S DESCRIBING THE CLAIMED INVENTIONS. LOOK AT DR. HEMAMI'S REPORT, THAT'S EXHIBIT 5, AND ALSO SOME ADMISSIONS FROM MR. HALPERN, WHICH I'LL GET TO IN A MINUTE, TAKEN TOGETHER THAT SHOWS CONNOTES SUFFICIENT STRUCTURE AND DOES HAVE A REASONABLY WELL UNDERSTOOD MEANING. WE NEED TO LOOK AT THE LOCATION OF THE STRUCTURE, AND I WON'T TALK ABOUT BEING ENAMORED BY THAT ANYMORE. DR.

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HEMAMI'S REPORT EXHIBIT 5, REFER YOU TO PAGES 43 AND 44.

SHE

FOUND THAT ONE OF ORDINARY SKILL WOULD LOOK AT THIS TERM RANDOM ACCESS STORAGE AND KNOW THAT IT HAD A REASONABLY WELL UNDERSTOOD MEANING. MEANING, STORAGE THAT PROVIDES FOR RANDOM ACCESS TO ANY GIVEN SEGMENT OF STORED AUDIO/VIDEO INFORMATION. NOW, THAT'S REALLY ONE OF THE LITMUS TESTS, DOES THE TERM, STRUCTURAL TERM HAVE A WELL UNDERSTOOD MEANING?
THE COURT:

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DID MR. HALPERN DISAGREE WITH THAT? THERE'S BEEN NO EVIDENCE TO THE CONTRARY IN FACT, HERE'S WHAT I ASKED MR. HALPERN ON

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MR. PA=:

ON THE OTHER SIDE.

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HIS DEPOSITION. I ASKED HIM ABOUT THIS PARTICULAR TERM RANDOM ACCESS STORAGE. HE ADMITTED IT'S A GENERAL CLASS OF STRUCTURE.

AGAIN, THEY HAVE NOT OFFERED AN ALTERNATIVE DEFINITION, WHICH I TAKE AS AN ADMISSION THEY AGREE WITH OUR DEFINITION.
THE COURT:

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HE SAYS IT'S NOT SUFFICIENTLY SPECIFIC. RIGHT, THAT GOES BACK TO MY LEGAL POINT THEY ARE TRYING TO TAKE A

MR. PAYNE:

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HERE, WHICH IS CRITICAL HERE.

CONSTRAINT FROM SECTION 1126 THAT APPLIES ONLY TO 1126 TERMS AND IMPORT IT INTO THE THRESHOLD ISSUE AND THAT'S IMPROPER.
THE COURT:

I GATHER, THE AGREED UPON DEFINITION

--

WELL, THE DEFINITION IS, FOR THE MOST PART, AGREED UPON, EXCEPT FOR THAT EQUIVALENCE LANGUAGE THAT BURST HAS PUT IN, THAT EVERYBODY AGREES THAT IS ESSENTIALLY MEMORY. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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MR. PA=:

ACTUALLY, THE EQUIVALENCE LANGUAGE GOES TO WE'RE SAYING --

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THE ALTERNATIVE 1126 CONSTRUCTION.
THE COURT:

GOING BACK TO YOUR EARLIER CHART WHICH HAD

WHAT YOU -- RIGHT HERE.
MR. PA=:

RIGHT, SO THE FIRST ROW OF THE

CONSTRUCTIONS THAT APPLIED IF WE WENT ON TO WIN ON THE THRESHOLD ISSUE, THE COURT FINDS 1126 DOES NO APPLY. WE'VE GIVEN A DEFINITION THERE THAT'S THE WELL UNDERSTOOD MEANING BACK IN THE RELEVANT TIME FRAME, THE LATE 80's. THAT'S WHAT ONE OF ORDINARY SKILL WOULD THINK ABOUT RANDOM ACCESS STORAGE. THERE'S NO EVIDENCE TO THE CONTRARY. YOU CAN SEE THEY

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HAVEN'T EVEN OFFERED AN ALTERNATIVE DEFINITION THERE. LAST POINT, MR. HALPERN'S DEPOSITION, YOUR HONOR, I GO BACK TO THIS ARGUMENT THAT APPLE REPEATEDLY MAKES IN THEIR BRIEF, THEY SAY THAT THE PRESUMPTION IS NOT OVERCOME BECAUSE THESE TERMS ARE JUST TOO BROAD. THERE'S TOO MANY STRUCTURES.

WE'VE TRIED TO COVER EVERY SINGLE STRUCTURE UNDER THE SUN, THAT'S FACTUALLY INACCURATE. BUT I ASKED MR. HALPERN ABOUT ALL OF THE DIFFERENT STRUCTURES THAT HE THOUGHT EXISTED BACK IN THE LATE 80's FOR RANDOM ACCESS STORAGE AND HE COULDN'T IDENTIFY A SINGLE RANDOM ACCESS STORAGE STRUCTURE OTHER THAN THE ONES CITED IN THE BURST PATENTS. IN OTHER WORDS, THE BURST PATENTS PRESENTS A LIMITED SET OF STRUCTURES. AND THAT'S ALL WE'RE TRYING TO COVER. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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THERE AREN'T THESE THOUSANDS DIFFERENT STRUCTURES, A MILLION DIFFERENT STRUCTURES THAT APPLE TRYING TO PAINT THE PICTURE OF, IT'S ACTUALLY FAIRLY LIMITED. IF YOU LOOK AT OUR DEFINITION WE'VE, IN FACT, LIMITED THE STRUCTURES TO THOSE THAT PROVIDE FOR RANDOM ACCESS STORAGE. THAT'S A SPECIAL TYPE OF STORAGE. ACCESS.
THE COURT:

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IT HAS TO HAVE RANDOM

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WELL, ONCE AGAIN, WHETHER YOU WANT TO LOOK

AT IT AS MEANS PLUS FUNCTION OR NOT, YOU STILL AGREE ON WHAT THE DEFINITION IS, FOR ALL INTENTS AND PURPOSES, GOING BACK TO THAT DEFINITION?
MR. PAYNE:
THE COURT:

THERE'S -- NO, THEY HAVE NOT PROPOSED

--

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ESSENTIALLY, THOSE THE TYPES OF DRAM AND

SRAM AND SO FORTH, THOSE ARE THE ONLY THING THAT IT COULD BE -MR. PAYNE:
THE COURT:

THOSE ARE EXAMPLES. BUT I THOUGHT I JUST UNDERSTOOD YOU TO

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SAY, THESE WERE THE ONLY ONES THAT ESSENTIALLY YOU COULD COME UP WITH. THESE ARE THE EXAMPLES. ARE THERE ANY DIFFERENT

EXAMPLES IN THE SPECIFICATION?
MR. PAYNE:

FOR EXAMPLE, HARD DRIVE THAT CAME LATER.

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AND HE MENTIONED THAT AS WELL, BUT THAT'S IN THE PAST AS WELL.
SO THE POINT HERE, THOUGH, IS THAT IF MEANS PLUS

FUNCTION APPLIES, THAT CORRESPONDING STRUCTURES IN THE SPEC HAVE TO BE PART OF THE CONSTRUCTION. BUT IF MEANS PLUS FUNCTION DOES NOT APPLY, IT CAN BE JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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BROADER THAN THAT, IT CAN BE DEFINITIONAL, THAT'S WHAT -THE COURT:

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I UNDERSTAND THAT.

THAT HELPS US SORT OF

GET AN IDEA WHAT THEY HAVE IN MIND AND WHAT YOU HAVE IN MIND, IN TERMS OF A DEFINITION FOR IT, IF IT'S NOT MEANS PLUS FUNCTION.
MR. PAYNE:

I MENTIONED BEFORE, THE CASE LAW ALSO

CONSIDERS WHETHER THERE'S DECIDED LOCATION DECIDED IN THE CLAIMS STRUCTURE. HERE IF YOU LOOK AT CLAIM 1 OF THE '995, THE RANDOM ACCESS STORAGE IS LOCATED NEXT TO THE COMPRESSION MEANS AND THE OUTPUT MEANS AND THAT'S A FACTOR TO CONSIDER.
SO WE'VE TALKED ABOUT THE BURST CONSTRUCTION THAT'S

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FOUND DIRECTLY IN THE SPEC WHERE IT SAYS IN COLUMN 2: "THAT A STILL FURTHER OBJECT OF THIS INVENTION IS TO PROVIDE AN IMPROVED AUDIO/VIDEO RECORDER WHICH PROVIDES FOR RANDOM ACCESS TO ANY GIVEN SEGMENT OF THE SELF-STORED AUDIO/VIDEO PROGRAM." THAT IS ALMOST IDENTICAL TO OUR CONSTRUCTION. THE NEXT TERM IS STORAGE MEANS. MY ANALYSIS IS VERY

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SIMILAR THERE, SO I DON'T WANT TO BELABOR THIS, BUT I'LL CUT STRAIGHT TO THE CHASE.
THE COURT:

BACK UP THERE FOR A MOMENT.

I GUESS, I

COULD DO THIS IN MY BOOK.
M R . PAYNE:

THIS, AGAIN, CHART SHOWS THE RESPECTIVE

PARTYS' POSITION, POSITIONS, AND WE SAY THAT THE PRESUMPTION IS JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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OVERCOME, THAT 1126 DOES NOT APPLY. WE ALSO SAY SOMETHING A LITTLE BIT DIFFERENT HERE, IN THE SENSE WE DON'T THINK THE COURTS NEEDS TO CONSTRUE THIS WORD. WE THINK IT'S WELL UNDERSTOOD. BUT IF THE COURT DECIDES TO CONSTRUE IT, THAT THE CORRECT DEFINITION IS A MEDIUM IN WHICH DATA RETAINED FOR SUBSEQUENT RETRIEVAL, AND APPLE HAS NOT OFFERED AN ALTERNATIVE CONSTRUCTION FOR THAT. IF WE GET TO THE MEANS PLUS FUNCTION ISSUE, WE'LL SEE THAT THE PARTIES ARE, AGAIN, PRETTY SIMILAR IN THEIR DEFINITIONS. SO I'LL JUST CUT TO THE CHASE ON THIS ONE. IT'S THE SAME LOGIC HERE, THE PRESUMPTION REBUTTED BECAUSE STORAGE IS STRUCTURE. THEY AGREE IT'S STRUCTURE. IF

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YOU LOOK AT DR. HEMAMI'S REPORT YOU'LL SEE ONE OF ORDINARY SKILL WOULD HAVE KNOWN THAT THE STORAGE, A SPECIFIC DEFINITION BACK IN THE LATE 80'S, THE CLAIM RECITE LOCATION OF THAT STRUCTURE, WHICH IS ANOTHER FACTOR. AND HERE THE BURST DRAFTER

CLEARLY USED THE WORD MEANS OVER AND OVER AGAIN IN A NON-1126 MANNER.
THE COURT:

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DID MR. HALPERN DISAGREE WITH DEFINITION

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OF WHAT ONE OF ORDINARY SKILL IN THE ART WOULD HAVE INTERPRETED STORAGE TO MEAN DURING THAT PERIOD OF TIME 1988, ET CETERA? THEY PRETTY MUCH IN AGREEMENT.?
M R . PA=:

I DON'T THINK THERE'S A DISAGREEMENT

THERE, BUT I MAY BE MISTAKEN ABOUT THAT. JAMES YEOMANS - OFFICIAL REPORTER - [phone]

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THE COURT:
MR. PAYNE:

IF THERE IS, WE'LL HEAR ABOUT IT. BUT I HAVE NOT SEEN ANY ARGUMENT FROM

APPLE TO THE EFFECT THAT OUR DEFINITION OR OUR POINT THAT THERE WAS A REASONABLY WELL UNDERSTOOD MEANING DID NOT, IN FACT, EXIST.
SO INPUT MEANS IS THE NEXT SECTION. AND, AGAIN,

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THERE'S A DISPUTE ABOUT THE THRESHOLD ISSUE. WE DON'T THINK
1126 APPLIES.

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AND WE'VE DEFINED INPUT MEANS TO MEAN AN INPUT

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PORT OR TERMINAL CAPABLE OF RECEIVING AUDIO/VIDEO INFORMATION. AGAIN, THEY HAVE NOT PROPOSED AN ALTERNATIVE CONSTRUCTION HERE. I'LL JUST CUT STRAIGHT ON THE CHASE. IT'S

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REALLY THE SAME FIVE REASONS WHY THE PRESUMPTION IS REBUTTED: IT'S STRUCTURE, THEY ADMIT IT'S STRUCTURE, IT HAD A WELL-KNOWN DEFINITION BACK IN THE LATE 80's. THERE'S LOCATION OF STRUCTURAL CLAIMS AND THE BURST DRAFTER USED MEANS OVER AND OVER. IT'S THE SAME LOGIC FOR OUTPUT MEANS, THAT IT'S STRUCTURE
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THE COURT:

RIGHT. NOW, THAT CONCLUDES THE PORTION OF MY

MR. PAYNE:

PRESENTATION ON THE THRESHOLD ISSUE, SO LET'S MOVE TO INPUT MEANS IF, IN FACT, APPLE'S CORRECT THAT 1126 APPLIES. THERE'S A BIG DEBATE HERE ABOUT THE CORRESPONDING STRUCTURE THAT YOU HAVE TO BRING IN UNDER THE STATUTE 1126, I DON'T HAVE TIME TO GO OVER ALL OF IT, BUT I DO WANT TO FOCUS ON JAMES YEOMANS - OFFICIAL REPORTER
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[phone]

Case 3:06-cv-00019-MHP

Document 157-5

Filed 09/06/2007

Page 45 of 51

198

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THIS ONE RIGHT HERE, THE AUXILIARY DIGITAL INPUT. YOU CAN SEE THAT OUR CONSTRUCTION FOR 1126 IF IT APPLIES AND WE SAY IT DOESN'T APPLY INCLUDES AN AUXILIARY DIGITAL INPUT PORT, THEY SAY IT DOESN'T INCLUDE THAT. YOU KNOW THE MEANS PLUS FUNCTION
THE COURT:
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THAT'S BECAUSE IT'S NOT IN THE

SPECIFICATION.
MR. PAYNE:

NO.

CLEARLY IN THE SPECIFICATION, THERE'S

NO DEBATE ABOUT THAT.

THE FUNCTION THERE IS RECEIVING

COMPRESSED AUDIO/VIDEO INFORMATION FASTER THAN REAL TIME. IT'S FOUND IN FIGURE 2, ITEM 17, RIGHT THERE, NO DEBATE ABOUT THAT. THERE'S NO DISPUTE AMONG THE PARTIES THAT

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IT RECEIVES DIGITAL/AUDIO INFORMATION. THE REAL DEBATE WHETHER IT COULD RECEIVE THAT INFORMATION FASTER THAN REAL TIME, THEY SAY IT CAN'T, WE SAY CAN. TO ANSWER THAT QUESTION WE GO STRAIGHT TO DR. HEMAMI REPORT EXHIBIT 5. LOOK AT PAGES 11 AND 31. IT'S VERY CLEAR

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THERE THAT ONE OF ORDINARY SKILL WOULD KNOW IN THE LATE 80'S, THAT THAT TYPE OF PORT HAD SUFFICIENT BANDWIDTH TO, IN FACT, HAVE AUDIO/VIDEO INFORMATION FASTER THAN REAL TIME.
SO THAT PARTICULAR STRUCTURE AUXILIARY DIGITAL INPUT

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PORT SHOULD BE INCLUDED AS PART OF THE CONSTRUCTION FOR INPUT MEANS, IF THE COURT FIND THAT 1126 APPLIES TO THAT TERM. LET ME GO QUICKLY TO OUTPUT MEANS. IF 1126 APPLIES,

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JAMES YEOMANS - OFFICIAL REPORTER