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

Filing 66

Brief Defendant Burst.com, Inc.'s Opening Brief on Claim Construction filed byBurst.com, Inc.. (Payne, Leslie) (Filed on 11/22/2006)

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

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PARKER C. FOLSE III (WA Bar No. 24895 ­ Admitted Pro Hac Vice) [e-mail] IAN B. CROSBY (WA Bar No. 28461 ­ Admitted Pro Hac Vice) [e-mail] FLOYD G. SHORT (WA Bar No. 21632 ­ Admitted Pro Hac Vice) [e-mail] SUSMAN GODFREY, L.L.P. 1201 Third Avenue, Suite 3800 Seattle, Washington 98101-3000 [phone] Tel [phone] Fax SPENCER HOSIE (CA Bar No. 101777) [e-mail] BRUCE WECKER (CA Bar No. 078530) [e-mail] HOSIE McARTHUR LLP One Market, 22nd Floor San Francisco, CA 94105 [phone] Tel. [phone] Fax (additional attorneys listed on signature page) Attorneys for Defendant BURST.COM, INC.

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA (SAN FRANCISCO) APPLE COMPUTER, INC., § Case No. 3:06-CV-00019 MHP § Plaintiff/Counterdefendant, § DEFENDANT BURST.COM, INC.'S § OPENING BRIEF ON § CLAIM CONSTRUCTION v. § § BURST.COM, INC., § § Defendant/Counterclaimant. § _______________________________________§

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TABLE OF CONTENTS BACKGROUND ............................................................................................................... 1 CLAIM CONSTRUCTION PRINCIPLES.................................................................... 3 PRIOR CONSTRUCTION OF THE BURST PATENTS ............................................ 5 DISPUTED "MEANS" TERMS...................................................................................... 7 35 U.S.C. § 112, ¶ 6 & Related Law ................................................................................ 7 Terms ............................................................................................................................... 12 "analog to digital converter means".......................................................................... 12 "monitor means"......................................................................................................... 15 "random access storage means" ................................................................................ 18 "storage means" .......................................................................................................... 22 "recording ... onto a removable recording medium".............................................. 25 "input means".............................................................................................................. 29 "output means" ........................................................................................................... 33 REMAINING DISPUTED TERMS.............................................................................. 35 Media Terms.................................................................................................................... 35 "audio/visual source information" & "audio/video source information".............. 35 "multiplicity" & "multiplicity of video frames in the form of one or more full

motion video programs"..................................................................................................... 39 Compression Terms ........................................................................................................ 43 Data Compression Versus Time Compression......................................................... 43 "compressing" terms .................................................................................................. 45 "time compressed representation" ............................................................................ 48

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a. b. i. ii.

The intrinsic evidence supports Burst's proposed construction......................... 51 Apple's constructions are inconsistent with the specification and the claims... 55 Apple's negative limitation excluding data compression is wrong .................... 55 the claims do not have a definite duration requirement..................................... 57

"compression means" ................................................................................................. 60 "decompression means" and "selectively decompressing" ..................................... 67 Storage Terms ................................................................................................................. 70 "recording means" ...................................................................................................... 70 Input & Output Terms ................................................................................................... 72 "transmitting," "transmission away," and "transmitting...to a selected

destination".......................................................................................................................... 72 2. "transmission means"................................................................................................. 76 Editing & Monitoring Terms......................................................................................... 77 "editing means"........................................................................................................... 77 "editing"....................................................................................................................... 81 "selectively view ... during editing" .......................................................................... 85 "visually displaying ... for selective viewing by a user during editing"................. 86 "monitoring ... during editing" ................................................................................. 87 CONCLUSION ............................................................................................................... 88

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TABLE OF AUTHORITIES Cases A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700 (Fed. Cir. 1983) ................................................ 6 Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336 (Fed. Cir. 2002) .. 9, 30, 32, 34 Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003)........................... 28 Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298 (Fed. Cir. 2003).......4 Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364 (Fed. Cir. 2001)............................. 11, 17, 72, 81 Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374 (Fed. Cir. 1999).......................... 11, 62 Bancorp Svcs, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004)......................... 58 Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341 (Fed. Cir. 2001) ............................................................................................................................ 24, 82 Budde v. Harley-Davidson, Inc., 250 F.3d 1369 (Fed. Cir. 2001).................................... 11, 67, 80 Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361 (Fed. Cir. 2005)........................................... 11 Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir. 2004) ................. 26 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 ....................................................... 10 Cellnet Data Sys., Inc. v. Itron, Inc., 17 F.Supp.2d 1100 (N.D. Cal. 1998) ................................. 30 Cole v. Kimberly-Clark Corp., 102 F.3d 524 (Fed. Cir. 1996).............................................. passim Electro Med Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048 (Fed. Cir. 1994) ........................ 28 Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360 (Fed. Cir. 2000) .................................. 9 Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996) ........................ 9, 10, 23 Hydranautics v. FilmTec Corp., 204 F.3d 880 (9th Cir. 2000)..........................................5 In re McWhorter, 887 F.2d 1564 (11th Cir.1989) .......................................................................... 7 Intel v. VIA Tech., 319 F.3d 1357 (Fed. Cir. 2003) ...................................................................... 62

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Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308 (Fed. Cir. 2003)......................................................................................................................... 10 Inverness Medical v. Princeton Biomeditech Corp., 309 F.3d 1365 (Fed. Cir. 2002)................5 JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324 (Fed. Cir. 2005) ......................... 11 Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004)....................... 8 Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 131 (Fed. Cir. 2004).............. 11, 15, 20, 23 Lockheed Martin Corp. v. Space Sys/Loral, Inc., 324 F.3d 1308 (Fed. Cir. 2003) ...................... 10 Masco Corp. v. United States, 303 F.3d 1316 (Fed. Cir. 2002) ............................................. 25, 26 Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303 (Fed. Cir. 2001)............ 11 Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250 (Fed. Cir. 1999) .......................... 10 NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062 (Fed. Cir. 2002) ........................ 84 Omega Engineering Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003)............................5 Personalized Media Communications., L.L.C. v. Int'l Trade Comm'n, 161 F.3d 696 (Fed. Cir. 1998) ....................................................................................................................... 10, 13, 20, 23 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... passim Resolution Trust Corp. v. Keating, 186 F.3d 1110 (9th Cir. 1999)......................................5 RF Delaware, Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255 (Fed. Cir. 2003)...................6 Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294 (Fed. Cir. 1999)............................................. 8 Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420 (Fed. Cir. 1997) ............................................... 8 Serrano v. Telular Corp., 111 F.3d 1578 (Fed. Cir. 1997)............................................... 11, 12, 63 SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107 (Fed. Cir. 1985) (en banc)................ 84 Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)..................3, 6 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) .................................. passim Warner Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997)..........................7 Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir. 2000)..................................................................... 8
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WMS Gaming Inc. vs. International Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) ..................... 62 Statutes 35 U.S.C. § 112, ¶6................................................................................................................ passim Other Authorities AM. HERITAGE DICTIONARY 822, 1201 (2d College ed. 1982) ............................................... 31, 47 IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONIC TERMS 474, 655, 956 (4th ed. 1988) ....................................................................................................................... 16, 26, 35, 39 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS (4th ed. 1989)................... 39 MODERN DICTIONARY OF ELECTRONICS (6th ed. 1984) .............................................. 16, 32, 35, 39 WEBSTER'S NEW COLLEGIATE DICTIONARY 737, 1340 (1981) ........................................ 42, 45, 94

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LIST OF EXHIBITS U.S. Patent No. 4,963,995 (the "`995 patent"); U.S. Patent No. 5,057,932 (the "`932 patent); U.S. Patent No. 5,164,839 (the "`839 patent"); U.S. Patent No. 5,995,705 (the "`705 patent"); Claim Construction Expert Report of Dr. Sheila S. Hemami; Excerpts from Expert Report of Joel Halpern re: Claim Construction of U.S. Patent Nos. 4,963,995, 5,057,932, 5,164,839, and 5,995,705; Excerpts from the deposition transcript of Sheila Hemami dated November 14, 2006; Excerpts from the deposition transcript of Joel Halpern dated November 13, 2006; Amendment "A," `995 Patent File History (March 12, 1990); Amendment "A," `932 Patent File History (May 7, 1990); Amendment "B," `932 Patent File History (January 4, 1991); Preliminary Amendment, `705 Patent File History (August 7, 1997); Amendment and Response, `705 Patent File History (June 1, 1998); The American Heritage Dictionary (Second College Edition 1982); Exhibit Number Not Used; IEEE Standard Dictionary of Electrical and Electronics Terms (4th ed. 1988); Modern Dictionary of Electronics (6th ed. 1984); Webster's New Collegiate Dictionary (1981); List of Agreed Terms; Fibonacci Delta paper; Excerpts from Microsoft's Response Claim Construction Brief in the Burst/Microsoft case;

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22. 23. 24. 25. 26.

Excerpts from Burst's Opening Claim Construction Brief in the Burst/Microsoft case; March 12, 2004 letter from Judge Motz in the Burst/Microsoft case; June 22, 2004 letter from Judge Motz in the Burst/Microsoft case; CCITT Group IV Standard; The specification sheet on the AMD Compression Processor.

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Defendant Burst.com, Inc. ("Burst") submits this brief in support of its proposed constructions of the disputed claim terms in U.S. Patents Nos. 4,963,995 (the "`995 Patent"), 5,164,839 (the "`839 Patent"), 5,057,932 (the "`932 Patent"), and 5,995,705 (the "`705 Patent") (collectively, the "Burst patents"). The Burst patents are attached as Exhibits 1-4, respectively.1 I. BACKGROUND The Burst patents claim fundamental innovations for efficiently sharing, editing, and playing digital audio and video works by employing the technology of computers, compression, and high-speed transmission. Playing back digital audio and video works for listening and viewing requires time. Indeed, the need for and duration of playback time is an intrinsic characteristic of digital audio and video works that fundamentally distinguishes them from other sorts of digital information such as text files, still images, and spreadsheets. Burst's inventions effectively decouple the time required to transmit and receive digital audio and video works from the time required to play them back. That innovation is at the heart of Burst's patents. At the time of the application for the first Burst patent in 1988, audio and video were transmitted primarily through broadcasting in "real time." Radio and television stations

continuously transmitted programming, and listeners or viewers could tune in to the programming as it was being received. The time required for transmission of a particular program or work was no different than the time required to view or listen to it. In the broadcast paradigm, the audio and video works were transmitted and received at a steady, real-time rate to ensure correct and realistic playback, and continuously occupied a fixed portion of the limited bandwidth of the transmission channel. In order to transmit more channels of audio or video in

All exhibits have been concurrently submitted as attachments to the "Declaration of Leslie V. Payne in Support of Defendant Burst.com, Inc.'s Opening Brief on Claim Construction." To authenticate the Claim
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real time over the limited available bandwidth, the telecommunications industry eventually began converting audio and video into digital bits of information and compressing them with specialized data compression techniques that preserved the temporal aspects of the audio/video source material. Yet even using these compression techniques, the time required for

transmission was not different than the time required for "playback." Against this background, the inventor of the Burst patents, Richard Lang, recognized that converging compression, transmission, and computer technologies could enable a new model for digital media delivery and a new kind of digital media device. Lang realized that compression of audio and video could be used not only to allow more channels to be broadcast in real time over a given amount of bandwidth, but also to reduce the transmission time of audio and video works. Lang saw that even though audio and video works have an associated playback time, the delivery of an audio or video work could be accomplished faster than the real-time period required for playback. Lang also recognized that the compressed audio or video work could be sent directly to consumers, and could be saved digitally in computer memory. Once saved, the audio or video could be played back, edited, or transmitted to another device. Building on his invention, Lang set out to shift the existing broadcast paradigm of delivering audio and video at a rate matching the playback speed. Lang's invention would eliminate the strict transmission time constraints found in the previous systems by transmitting audio and video faster than real time. Lang founded Burst's earliest predecessor in 1988 to develop and commercialize his ideas, and he filed the application for what became the `995 Patent in December 1988. In 1989 he secured an initial investment of $2 million from the rock band U2. The band wanted to invest in technology that would benefit fans of its music, and it

Construction Report of Burst's expert, Burst also submits the "Declaration of Dr. Sheila S. Hemami in Support of
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recognized that Lang's inventions could revolutionize the music industry by providing audio (and video) works to consumers outside of traditional delivery mechanisms. In January of 1991, Lang exhibited a pair of prototypes of his invention at the Consumer Electronics Show. Today, the key elements of Lang's invention are replicated, among other places, in miniature digital media players that can weigh as little as half an ounce and cost less than one hundred dollars.2 Burst licensed its patents and developed software to implement its technology on industry standard personal computers and servers. In 1996, Burst delivered the first experimental version of its video-streaming software called Burstware. It released the first commercial version of Burstware to the public in early 1999. By 2002, however, misappropriation of Burst's

technology by larger competitors had devastated the company. Ultimately, Burst sued Microsoft for patent infringement and antitrust violations. That suit was settled in 2005 when Microsoft agreed to pay $60 million for a license under the Burst patents. II. CLAIM CONSTRUCTION PRINCIPLES Claim construction is governed by the Federal Circuit's recent en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). There, it embraced the Vitronics hierarchical approach of focusing first on the claims, then on the patent specification, next on the file history, and finally on "extrinsic" evidence if appropriate. Phillips, 415 F.3d at 1312-18 (repeatedly citing with approval Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)). Phillips criticized the claim construction technique popularized in Texas Digital

Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), in which courts consulted dictionaries before reviewing the patent specification to determine the meaning of a disputed

Defendant Burst.com, Inc.'s Opening Brief on Claim Construction."

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claim term. Phillips, 415 F.3d at 1320-21. As stated by the en banc panel, "[t]hat approach, in our view, improperly restricts the role of the specification in claim construction," id. at 1320, and "focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent," id. at 1321. Phillips is critical to claim construction in this case because the parties have taken vastly different approaches in their adherence to the patent specification. Significantly, Phillips

reinforced the importance of the specification in claim construction, stating that "[t]he specification is . . . the primary basis for construing the claims." 415 F.3d at 1315. See also Vitronics, 90 F.3d at 1582 ("[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."). Consistent with that mandate, Burst's constructions are carefully grounded in the patent specifications. Apple in many instances completely ignores the specifications. In fact, Apple's own expert openly admits that the patent specification contains little, and in some cases no, support for Apple's claim construction positions. Apple's approach not only violates Phillips, but also fails to account for another critical principle of claim construction: a construction that excludes the preferred embodiment is

"rarely, if ever, correct." Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); see also Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003). While the prosecution history is also relevant to claim construction, it must be considered with great care. As the Phillips court cautioned, "because the prosecution history represents an

Apple's iPod shuffle, for example, has one gigabyte of memory, "weighs in at about half an ounce," and currently sells for $79.00. See http://store.apple.com/1-800-MY-APPLE/WebObjects/ AppleStore?family=iPodshuffle.
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ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Phillips, 415 F.3d at 1317. This cautionary note has special application in this case because the last Burst patent, the `705 Patent, experienced a lengthy prosecution history involving significant back-and-forth correspondence with the PTO. One last legal principle that deserves highlighting at the outset is the rule that terms used in multiple claims should be construed consistently, see Inverness Medical v. Princeton Biomeditech Corp., 309 F.3d 1365, 1371 (Fed. Cir. 2002), as should terms used in related patents, see Omega Engineering Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003). III. PRIOR CONSTRUCTION OF THE BURST PATENTS In the Microsoft case, Judge Motz of the Eastern District of Maryland entered a pair of interlocutory letter orders construing the Burst patents. Neither of these letter orders is

controlling here because collateral estoppel does not apply. Collateral estoppel applies only if "(1) the issue necessarily decided at the previous proceeding is identical to the one which is sought to be relitigated; (2) the first proceeding ended with a final judgment on the merits; and (3) the party against whom collateral estoppel is asserted was a party or in privity with a party at the first proceeding." Hydranautics v. FilmTec Corp., 204 F.3d 880, 885 (9th Cir. 2000). The Motz opinions do not meet either of the first two requirements for application of collateral estoppel. Identity of issues for purposes of collateral estoppel requires "application of the same rule of law as that involved in the prior proceeding." Resolution Trust Corp. v. Keating, 186 F.3d 1110, 1116 (9th Cir. 1999). The Federal Circuit's intervening en banc decision in the landmark Phillips case negates any identity of claim construction issues between this and the Microsoft
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lawsuit. As explained above, Phillips resolved a conflict in claim construction law against a line of cases that placed undue emphasis on dictionary definitions following the Texas Digital decision. In Phillips, the Federal Circuit affirmed the primacy of intrinsic evidence consisting of the patent claims, specification, and, to a lesser extent, prosecution history. See 415 F.3d at 1320-24. Microsoft and Burst both relied on Texas Digital throughout their claim construction briefing to Judge Motz. See Microsoft Resp. Cl. Const. Br. at 7, 10, 11, 14, 16, 30 (Exhibit 21); Burst Op. Cl. Const. Br. at 19 (Exhibit 22). The informal opinions of Judge Motz do not reject Texas Digital, nor do they identify the line of claim construction authority upon which they rely. Given the intervening decision in Phillips, there is no identity of issues between the Microsoft case and the case before this Court. The Motz opinions also cannot satisfy the final judgment prong of the collateral estoppel test. The Federal Circuit has held in similar circumstances that a claim construction order does not constitute a "final judgment on the merits" for purposes of applying collateral estoppel. In RF Delaware, Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1260-62 (Fed. Cir. 2003), the court held that a partial summary judgment order entered after claim construction in a suit that later settled before trial was not sufficiently final to establish collateral estoppel on claim construction issues in a later suit.3 The court did not find that the claim construction opinion itself was sufficiently final to establish collateral estoppel. As the Federal Circuit has stated in other circumstances, "[e]xcept in the context of validity or infringement, judicial statements regarding the scope of patent claims are hypothetical . . . ." A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700, 704 (Fed. Cir. 1983). The Microsoft case settled without any adjudication on the

The Federal Circuit applied the Eleventh Circuit's collateral estoppel standard, which is substantially the same as the Ninth's. See In re McWhorter, 887 F.2d 1564, 1566 (11th Cir.1989)
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merits, and Judge Motz's claim construction opinions were never embodied in a final judgment of any kind affecting validity or infringement that could support collateral estoppel in this case. Moreover, the letter opinions themselves indicate that they were preliminary in nature and not final even in that case. See, e.g., Burst.com v. Microsoft Corp., No. JFM-02-2952 (D. Md. March 12, 2004) (letter construing claim terms), at 3 ("When and if it is necessary for me to construe the term in order to decide summary judgment motions ... I will request further argument...") (Exhibit 23); Burst.com v. Microsoft Corp., No. JFM-02-2952 (D. Md. June 22, 2004) (letter clarifying certain claim terms), at 1 ("In making this change, I am not finally deciding ...") (Exhibit 24). Thus, it is fair to say that the Motz opinions were not viewed as final, even in the Burst.com v. Microsoft lawsuit. IV. DISPUTED "MEANS" TERMS The parties disagree whether a number of claim terms are "means-plus-function" terms subject to 35 U.S.C. § 112, ¶ 6 ("Paragraph 6"). Burst contends that Paragraph 6 does not apply to these terms because the terms themselves recite sufficient structure. Section A provides an overview of law governing the threshold issue of the application of Paragraph 6. Section B establishes that Paragraph 6 does not apply to specific terms.4 A. 35 U.S.C. § 112, ¶ 6 & Related Law Although patent claims often recite the invention's elements as physical structures (e.g., an "oar" or "brake"), the Patent Act authorizes an applicant to describe an element of the invention in terms of its function (e.g., a "means for rowing" or "means for stopping"). Warner Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997). Under the statute, a

The parties also disagree about the applicability of Paragraph 6 to the term "recording ... onto a removable recording medium." The discussion of that term in Section B below describes the law applicable to purported "step-plus-function" terms and establishes that Paragraph 6 does not apply to the term.
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limitation expressed as "a means or step for performing a specified function without the recital of structure, material, or acts in support thereof" is construed to "cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112 ¶ 6.5 Because such "means-plus-function" limitations are construed differently from other limitations, determining whether Paragraph 6 has been invoked is a threshold claim construction issue. Paragraph 6 applies "only to purely functional limitations that do not provide the structure that performs the recited function." Phillips, 415 F.3d at 1311 (emphasis added). Though use of the word "means" presumptively invokes Paragraph 6, evidence that a limitation "recites sufficient structure or material for performing [the stated] function" rebuts the presumption. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999). Thus, "[w]here a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in meansplus-function format," even if the claim uses the term "means." Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427­28 (Fed. Cir. 1997) (internal quotations omitted). The absence of the word "means" in a claim limitation creates the reverse presumption ­ namely, that Paragraph 6 does not apply. Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir. 2000). This presumption can be rebutted "by showing that the claim element recite[s] a function without reciting sufficient structure for performing that function." Id. Unlike the presumption stemming from use of the term "means," "the presumption flowing from the absence of the term `means' is a strong one that is not readily overcome." Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). As the Federal Circuit explained in Lighting World, given the

Apple's purported identifications of corresponding structures uniformly omit the language "plus equivalents" required by the statute. Should the Court adopt any of Apple's identifications of structures, its order should include this qualification.
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strength of the presumption, "it is not surprising that we have seldom held that a limitation not using the term `means' must be considered to be in means-plus-function form." Id. at 1362. A common principle guides both presumptions about the presence or absence of the word "means": recitation of sufficient structure to perform any stated function precludes application of Paragraph 6. In Cole v. Kimberly-Clark Corp., 102 F.3d 524, 526­31 (Fed. Cir. 1996), for example, the Federal Circuit concluded that the limitation "perforation means . . . for tearing the outer impermeable layer means for removing the training brief in case of an accident by the user" did not invoke Paragraph 6 because the "perforation" connoted adequate structure to perform the recited function. The court reached the same result regarding the term "baffle means" in Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000). In Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002), the Federal Circuit found that Paragraph 6 was not invoked by any of a host of terms that appended "means" to a number of readily identifiable mechanical parts. In each of these cases, the "perfunctory addition" of the term "means" did not subject the terms to Paragraph 6. See Cole, 102 F.3d at 531.6 Recitation of structure that precludes application of Paragraph 6 need not be specific to a single structure; it need only convey a family or group of structures to those of skill in the art: [T]he term "detector" is a sufficient recitation of structure. "Detector" is not a generic structural term such as "means," "element," or "device"; nor is it a coined

As Cole and Allen Engineering make explicit, the mere fact that an applicant is "enamored" of the term "means" and makes "perfunctory" use of it repeatedly does not justify a conclusion that Paragraph 6 was invoked. Cole, 102 F.3d at 531 ("The drafter of claim 1 in the `239 patent was clearly enamored of the word `means'. . . . [T]he claim drafter's perfunctory addition of the word `means' did nothing to diminish the precise structural character of this element. It definitely did not somehow magically transform this element into a § 112, ¶ 6, `means-plus-function' element."); Allen Eng'g, 299 F.3d at 1348 (recognizing that "[a]s in Cole, the drafter of the `220 patent was clearly enamored of the word `means,'" but refusing to apply Paragraph 6 to most of the "means" limitations) (internal quotation omitted); see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583-84 (Fed. Cir. 1996) ("The drafter of the application that matured into the `501 patent appears to have been enamored of the word `means,' as the word is used repeatedly in the summary of the invention. A close reading of the specification reveals, however, that the term is used in that portion of the patent simply as a shorthand way of referring to each of the key structural elements of the invention.").
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term lacking a clear meaning, such as "widget" or "ram-a-fram." Instead, as noted by the ALJ by reference to dictionary definitions, "detector" had a wellknown meaning to those of skill in the electrical arts connotative of structure, including a rectifier or demodulator. . . . [N]either the fact that a "detector" is defined in terms of its function, nor the fact that the term "detector" does not connote a precise physical structure in the minds of those of skill in the art detracts from the definiteness of structure. Even though the term "detector" does not specifically evoke a particular structure, it does convey to one knowledgeable in the art a variety of structures known as "detectors." We therefore conclude that the term "detector" is a sufficiently definite structural term to preclude the application of § 112, ¶ 6. Personalized Media Communications., L.L.C. v. Int'l Trade Comm'n, 161 F.3d 696, 704­05 (Fed. Cir. 1998) (emphasis added). Thus, recitation of a term that connotes structure but is generic to a family of structures is adequate to preclude application of Paragraph 6. Dictionaries can be proper aids in determining whether a given term (e.g., analog digital converter, monitor, input or output) "denotes a type of device with a generally understood meaning in the [relevant art]" so as to preclude application of Paragraph 6. Greenberg, 91 F.3d at 1583; see also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (dictionary definition established that term "member" connotes structure to an artisan of ordinary skill). Once a court determines that a term invokes Paragraph 6, two further steps are required to construe it as a means-plus-function term. First, the Court must identify the claimed function. See Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1319 (Fed. Cir. 2003). Second, the Court must determine what structure disclosed in the specification corresponds to the claimed function. Id. The claim limitation is then construed to mean the corresponding structure as well as statutory "equivalents." 35 U.S.C. § 112, ¶6. When identifying the function, the Court must not "adopt[] a function different from that explicitly recited in the claim." Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). Nor may the Court narrow or broaden the claimed function. Lockheed
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Martin Corp. v. Space Sys/Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003). Finally, as with terms not subject to Paragraph 6, the Court may not "import[] the functions of a working device into the specific claims, rather than reading the claims for their meaning independent of any working embodiment." JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1331 (Fed. Cir. 2005). The Court undertakes the next step of identifying the structure corresponding to the properly construed function from the perspective of a person of ordinary skill in the art. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir. 1999). The corresponding structure identified must not only perform the claimed function, but also should be linked to the performance of the function in the patent specification. Medtronic, Inc. v. Advanced

Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). The corresponding structure need not include all things necessary to enable the claimed invention to work but instead should be limited to the structure that actually performs the recited function. Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1371 (Fed. Cir. 2001). To the extent that the patent discloses multiple embodiments that link different structures to the claimed function, the corresponding structure of the means-plus-function limitation encompasses all alternative structures disclosed in the patent. Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1369 (Fed. Cir. 2005); Serrano v. Telular Corp., 111 F.3d 1578, 1583 (Fed. Cir. 1997). Structure can be viewed at many levels of abstraction ranging from the very general (e.g., an automobile) to the very specific (e.g., a Toyota Camry V6 XLE). Accused infringers

regularly seek to relegate patentees to very specific and narrow structures. However, the law is clear that "generic" structure can be perfectly adequate structure under Paragraph 6 provided it refers to a "class of structures [that are] identifiable by a person of ordinary skill in the art."
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Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1321­22 (Fed. Cir. 2004); see also Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1381-82 (Fed. Cir. 2001) (holding that a generic reference in the specification to "commercially available" "vacuum sensors" provided adequate structure because vacuum sensors were well known in the art at the time); Serrano, 111 F.3d at 1583 (general reference to a microprocessor programmed to perform a specific function was adequate to treat microprocessor as corresponding structure). B. Terms 1. "analog to digital converter means"
BURST'S CONSTRUCTION "analog to digital converter means" ­ Not subject to §112 ¶6, and no construction necessary. Alternatively, "a circuit that changes analog information into digital information" Although Burst does not believe "analog to digital converter means" is subject to § 112 ¶6, Burst provides the following description of the corresponding structure if the terms were interpreted as subject to § 112 ¶6. "analog to digital converter means" ­ Corresponding structure: an analog to digital converter, plus equivalents. APPLE'S CONSTRUCTION "analog to digital converter means for converting said analog audio/video source information to corresponding digital audio/video source information" - Limited to structures disclosed under §112 ¶6: Burr-Brown ADC 600.

CLAIM TERMS "analog to digital converter means" `995: 8 "analog to digital converter means for converting said analog audio/video source information to corresponding digital audio/video source information" `995: 8.

Claim 8 of the `995 Patent recites an "analog to digital converter means." Claim 8 defines the pertinent function as "converting [] analog audio/video source information . . . to corresponding digital audio/video source information." The term "analog to digital converter" recites sufficient structure for performing the function of converting analog information into digital information. At the time the `995 Patent was filed and prosecuted, analog to digital converters constituted a well known class of circuits that perform precisely the function recited in claim 8. For example, technical dictionaries
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recognized that analog to digital converters were specific circuits used to convert analog information to digital information. See IEEE STANDARD DICTIONARY
OF

ELECTRICAL

AND

ELECTRONICS TERMS (4th ed. 1988) (defining an "analog-to-digital converter" as "[a] circuit whose input is information in analog form and whose output is the same information in digital form") (Exhibit 16); MODERN DICTIONARY OF ELECTRONICS (6th ed. 1984) (defining an "analogto-digital converter" as "[a] circuit that changes a continuously varying voltage or current (analog) into a digital output") (Exhibit 17). Similarly, Burst's expert Dr. Hemami has opined that "[t]he term `analog to digital converter' connotes a physical device [and] would have been well known in 1988 to one of ordinary skill in the art." See Hemami Report at 57 (Exhibit 5).7 Because the term "analog to digital converter" refers to a "variety of structures" known to perform a specific function, it describes sufficient structure. Personalized Media, 161 F.3d at 704­05. Additional evidence that the words "analog to digital converter" represent sufficient structure can be found in claim 73 of the `995 Patent. That claim, which also requires an "analog to digital converter means," specifies that the "analog to digital converter" is coupled to the "random access storage means" via the "high speed bus means." This specification of a

particular location for the analog to digital converter connotes structure. See Cole v. KimberlyClark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (refusing to apply Paragraph 6, in part because "[t]he claim describes not only the structure that supports the [stated] function, but also its location . . . and extent"). The prosecution history of the `995 Patent further demonstrates that the term "analog to digital converter" represents structure. In a March 12, 1990 Response, Burst characterized certain claims as requiring "an analog to digital converter for converting analog audio/video

7

The expert report of Dr. Sheila Hemami provides support for each and every construction
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source information to a corresponding digital format." Amendment "A," `995 PH, at 19 (March 12, 1990) (Exhibit 9). This characterization, which uses the term "analog to digital converter" as a noun, makes clear that the analog to digital converter is the specific structure performing the conversion function. Adding the term "means" in the claims was simply perfunctory. Because the term "analog to digital converter means" provides sufficient structure to perform the recited function, it is not subject to Paragraph 6. Moreover, because the term "analog to digital converter" is sufficiently descriptive, no construction is necessary. To the extent the Court deems one necessary, the customary and ordinary meaning of the term-- namely, a circuit that changes analog information into digital information ­ should apply. If the Court determines that "analog to digital converter means" is subject to Paragraph 6, Burst would identify the corresponding structure as "an analog-to-digital converter, plus equivalents." Burst's position is supported by several passages in the patent specification. See `995 Patent, 4:19-20; 4:34-37; 4:54-62. In contrast, Apple's proposed identification of

corresponding structure as a single model of chip ­ the "Burr-Brown ADC 600" ­ is overly restrictive, given that the specification identifies "commercially available analog to digital converter integrated circuits" in the plural form and mentions the Burr-Brown converter as just one of several different types. See `995 Patent, 4:56-62. Apple's position also contains the flaw common to every one of Apple's identifications of corresponding structure: the omission of the language "plus equivalents" that is required by Paragraph 6. Burst will provide further explanation of its alternative construction under Paragraph 6, if necessary, in its reply brief.

proposed by Burst and addressed in this brief.
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2.

"monitor means"
BURST'S CONSTRUCTION "monitor means" ­ Not subject to §112 ¶6, and no construction necessary. Alternatively, "a display" Although Burst does not believe "monitor means" is subject to § 112 ¶6, Burst provides the following description of the corresponding structure if the terms were interpreted as subject to § 112 ¶6. "monitor means" ­ Corresponding structure: a flat panel video display, a television, or a computer monitor, plus equivalents. APPLE'S CONSTRUCTION "monitor means for enabling the user to selectively identify the time compressed representation..." Limited to structures disclosed under §112 ¶6: flat panel video display built into the VCR-ET, television coupled to an RF modulator, or a computer monitor. "monitor means...for enabling the user to selectively view..." - Limited to structures disclosed under §112 ¶6: (1) flat panel video display built into the VCR-ET, television coupled to an RF modulator, or a computer monitor and (2) user interface control panel, light pen or mouse.

CLAIM TERMS "monitor means" `995: 3, 22, 24, 25, 27, 28. "monitor means for enabling the user to selectively identify the time compressed representation..." `995: 3.

"monitor means...for enabling the user to selectively view..." `995: 24, 25, 27, 28.

The term "monitor means" appears in several `995 Patent claims. See `995 Patent, claims 3, 22, 24, 25, 27, and 28. Each of those claims describes a monitor that can be used while editing to enable the user to "selectively identify the time compressed representation ... during editing" (claim 3), "view the selectively decompressed time compressed representation" (claim 22), or "selectively view the decompressed digital time compressed representation" (claims 24, 25, 27, and 28). Apple has taken the position that "monitor means" is subject to Paragraph 6. Apple's position is incorrect because the word "monitor" recites sufficient structure for performing the stated functions of selectively identifying and viewing. First, the term "monitor" plainly denotes a monitor or display. Second, the claim language ­ which provides that the monitor allows the user to identify and view representations of audio/video source information ­ reinforces that common understanding. Third, the specification precisely identifies examples of monitors: "a flat-panel video display," "a television," and "computer monitors and similar display devices." `995 Patent, 6:39-40, 6:49-52, 8:24-26; 10:25-28. These all belong to a "class of structures [that
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are] identifiable by a person of ordinary skill in the art." Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1322 (Fed. Cir. 2004). One skilled in the art would clearly understand "monitor means" to be a monitor or display. See Hemami Report at 54-55 (Exhibit 5). Fourth, it is apparent that the term "monitor" constitutes sufficient structure because nothing is lost in the claims when the term "means" is deleted. See, e.g., `995 Patent, claim 24 ("monitor [] for enabling the user to selectively view the decompressed time compressed representation"). Fifth, the claims treat "monitor means" as structure by describing it as "coupled to" the decompression means. See `995 Patent, claims 25 & 28. That description indicates that a claim term is structural in nature. See Cole, 102 F.3d at 531. Burst's position is that "monitor means" does not need construction. If, however, the Court determines that it is necessary to construe the term, Burst's construction is "a display." That term accurately and sufficiently captures the examples provided in the specification recited above. See `995 Patent, 6:39-40, 6:49-52, 8:24-26; 10:25-28. If the Court were to conclude that "monitor means" is subject to Paragraph 6, Burst would identify the corresponding structure as: "a flat panel video display, a television, or a computer monitor, plus equivalents." As set forth above, the specification identifies each of these types of monitors or displays as performing the cited function of enabling the user to "selectively identify the time compressed representation ... during editing" (claim 3), "view the selectively decompressed time compressed representation" (claim 22), or "selectively view the decompressed digital time compressed representation" (claims 24, 25, 27, and 28). See also Hemami Report at 55 (one of ordinary skill in the art would recognize these displays as "easily fulfilling any of the functions associated with the `monitor means'") (Exhibit 5).

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Apple offers two different identifications of corresponding structure. Both include "flat panel video display built into the VCR-ET, television coupled to an RF modulator, or a computer monitor." One identification, which Apple applies to claims 24, 25, 27, and 28 of the `995 Patent ("monitor means ... for enabling the user to selectively view"), includes the additional structure of "user interface control panel, light pen or mouse." Both of Apple's identifications of corresponding structure suffer from major infirmities. First, they include structure that does not itself perform the recited functions of identifying and viewing. Thus, it is not necessary that the display structure be "built into the VCR-ET," nor is it necessary to the structure for the television to be "coupled to an RF modulator." Second, the structures of "user interface control panel, light pen or mouse" do not perform the recited function of enabling the user to "selectively identify" or "view." The corresponding structure should include only that which is necessary to perform the recited function. It should not include everything necessary to enable the claimed invention to work. Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1370-71 (Fed. Cir. 2001). Finally, Apple's identification omits the legally required language "plus equivalents." For all of these reasons, if the Court concludes that Paragraph 6 applies to "monitor means," the Court should adopt Burst's alternative identification of corresponding structure. Burst will provide further explanation of its alternative construction under Paragraph 6, if necessary, in its reply brief.

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3.

"random access storage means"
BURST'S CONSTRUCTION "random access storage means" - Not subject to §112 ¶6: "storage that provides for random access to any given segment of stored audio/video source information" Although Burst does not believe "random access storage means" is subject to § 112 ¶6, Burst provides the following description of the corresponding structure for the `995 Patent claims if the terms were interpreted as subject to § 112 ¶6. "random access storage means" ­ Corresponding structure: DRAM, SRAM, CMOS, or optical disk memories, plus equivalents. APPLE'S CONSTRUCTION `995 PATENT: "random access storage means...for storing the time compressed representation..."
AND

CLAIM TERMS "random access storage means" `995: 1, 2, 3, 7, 8, 9, 17, 20, 21, 22, 23, 25, 26, 28, 44, 47, 80; `932: 4. "random access storage means...for storing the recompressed..." `995: 21.

"random access storage means...for storing the recompressed..." - Limited to structures disclosed under §112 ¶6: DRAM, SRAM, CMOS memory, or optical disc memory.

The term "random access storage means" appears in independent claims 1 and 17 and several dependent claims in the `995 Patent.8 This term is not subject to Paragraph 6 of Section 112 because the words "random access storage" recite sufficient structure for performing the stated function of "storing" audio/video source information in the form of a time compressed representation (`995 Patent claims 1, 8, 9, and 17), a recompressed selectively decompressed time compressed representation (`995 Patent claim 21), or an edited decompressed digital time compressed representation (`995 Patent claim 26). The function performed by the random access storage means is fundamentally the same in each of these variations: storing compressed audio and/or video. The words "random access storage" define a particular type of memory structure for performing that function and thus convey sufficient structure to preclude application of Paragraph 6. The term "random access

The term also appears in `932 claim 4, but the parties agree that the proper construction for that term is "one or more magnetic disks."
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storage" was known to one of ordinary skill in the art in 1988. See Hemami Report at 43-44 (Exhibit 5). Indeed, the term would be "self-descriptive to such an individual," conveying the meaning within the context of the Burst patents of "storage that provides for random access to any given segment of stored audio/video source information." Id. It is also clear that "random access storage" constitutes sufficient structure based on the claim language. For example, the relevant limitation from a representative claim requires: "random access storage [means], coupled to said compression means, for storing the time compressed representation of said audio/video source information." (brackets added around term "means"). `995 Patent claim 1

With or without the term "means" included, this

limitation has exactly the same meaning. The word "means" is perfunctory and superfluous. Moreover, the limitation treats "random access storage" as structure by giving it a particular location, "coupled to" the compression means. See Cole, 102 F.3d at 531. Apple's contention that "random access storage means" is subject to Paragraph 6 is not supported. Apple's expert opined that "random access storage" does not connote sufficient structure because there are a "wide variety of very different classes of structures" that provide random access storage. See Halpern Report at 34 (Exhibit 6). But in his deposition, Mr. Halpern conceded that he could not identify any type of random access storage in 1988 not listed in the patent specifications. See Halpern Dep. at 259-62 (Exhibit 8). That short list hardly represents a "wide variety of very different classes of structures." Moreover, as Mr. Halpern also conceded in his deposition, the term "random access storage" represents a "general class of structure." Id. at 253. A term need not be limited to a single, specific structure to preclude application of Paragraph 6. To the contrary, "generic" structure is perfectly sufficient if it refers to a "class of structures [that are] identifiable by a
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person of ordinary skill in the art." Linear Tech., 379 F.3d at 1322; see also Personalized Media, 161 F.3d at 704-05 (finding a term encompassing a variety of structures not subject to Paragraph 6 where that term had a well-known meaning to those of skill in the art). Mr. Halpern's concession and Dr. Hemami's opinion confirm that the term "random access storage means" conveys sufficiently definite structure under these cases to avoid Paragraph 6. The prosecution histories of the Burst patents further demonstrate that the term "random access storage" is structure and that the addition of the word "means" was purely perfunctory. In a March 12, 1990 Response in the `995 prosecution, Burst used the words "random access storage" as a noun more than ten times to describe the location where certain information is stored. Amendment "A", `995 PH at 18-20 (March 12, 1990) (Exhibit 9); see also Amendment "A", `932 PH at 5-6 (May 7, 1990) (using "random access storage" as noun and structure) (Exhibit 10); Amendment "B", `932 PH at 7 (January 4, 1991) (using "random access storage" as noun and structure) (Exhibit 11). This use of the term "random access storage" as a noun makes clear that the random access storage is the specific structure performing the storing function. In fact, Apple's expert conceded that Burst used the phrase random access storage as structure in the prosecution histories. See Halpern Dep. at 261:5-264:4 (Exhibit 8). Burst's proposed construction of the term "random access storage means" is "storage that provides for random access to any given segment of stored audio/video source information." The claims make clear that this term defines storage for the time-compressed representation of audio/video source information, allowing random access to selected segments or portions. For example, `995 claim 20 provides that audio/video source information stored in random access storage means can be "selectively decompress[ed]." That functionality requires that segments of the stored information can be accessed randomly in order for selective decompression to occur.
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The specification also provides unambiguous support for Burst's construction. It is a stated object of the invention to provide for "random access to any given segment of a self-stored audio/video program so that the desired segment may be accessed and viewed without the timeconsuming delays normally involved in fast-forward or fast-reverse searching procedures employed in present state-of-the-art VCRs." `995 Patent, 2:59-66. The specification states further that audio/video source information that has been digitized and stored in the random access memory can be viewed or transferred "either in its entirety or in random segments, based on user preference." `995 Patent, 10:1-5. The specification describes particular types of random access memory, such as DRAM (Dynamic Random Access Memory), SRAM (Static Random Access Memory), CMOS (Complimentary Metal Oxide Semiconductor), optical disc memories, and magnetic disks, all of which are identified as examples of memory 13 in Figure 2. See `995 Patent, Fig. 2; 6:8-19; `932 Patent, 6:37-39; see also `995 Patent, 5:38-40 (describing DRAM and SRAM); `995 Patent, 3:59-4:16 (describing optical disc memories such as WORM (Write Once Read Many) and erasable optical discs, which have "random access capabilities"). The common feature of all these memory types is random access capability. See Hemami Report at 44 (Exhibit 5). It was clear to one of ordinary skill in the art in 1988 that any form of memory or media that provided random access to segments of stored audio/video source information would be acceptable. Id. If the Court concludes that "random access storage means" as used in the `995 Patent is subject to the means plus function analysis of Section 112, ¶ 6, Burst identifies the corresponding structure as: DRAM, SRAM, CMOS, or optical disk memories, plus equivalents. Claims 6 and 7 of the `995 Patent plainly establish these forms of memory as types of random access storage means. See `995 Patent, claim 6 ("said random access storage means comprises an