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

Filing 71

CLAIM CONSTRUCTION STATEMENT filed by Apple Computer Inc., Apple Computer Inc.. (Brown, Nicholas) (Filed on 12/8/2006)

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

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MATTHEW D. POWERS (Bar No. 104795) [e-mail] GARLAND STEPHENS (admitted N.D.C.A., Texas Bar No. 24053910) [e-mail] NICHOLAS A. BROWN (Bar No. 198210) [e-mail] WEIL, GOTSHAL & MANGES LLP Silicon Valley Office 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff APPLE COMPUTER, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

APPLE COMPUTER, INC., Plaintiff, v. BURST.COM, INC., Defendant.

Case No. C 06-0019 MHP APPLE'S CLAIM CONSTRUCTION BRIEF Hon. Marilyn Hall Patel Complaint Filed: January 4, 2006 Trial Date: February 26, 2008

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 II. III. I.

TABLE OF CONTENTS Page BACKGROUND ................................................................................................................ 1 A. The Burst Patents .................................................................................................... 1 B. The Asserted Claims ............................................................................................... 3 C. Apple's Accused Products ...................................................................................... 4 THE BASIC LEGAL FRAMEWORK FOR CLAIM CONSTRUCTION......................... 4 "TIME COMPRESSED REPRESENTATION HAVING AN ASSOCIATED BURST TIME PERIOD THAT IS SHORTER THAN [REAL-TIME]" ........................... 6 A. "Time Compressed Representation" ....................................................................... 8 1. There is no genuine dispute that time compression has an ordinary meaning that is not data compression. ........................................................ 8 a. Burst's expert concedes that time compression had a known meaning in 1988 that was not data compression............................. 9 b. Dictionaries, textbooks, and the cited prior art show that time compression is compressing in time, not data compression. ................................................................................. 11 2. The claim language supports giving time compression its ordinary meaning, not construing it as data compression. ...................................... 15 3. The file history precludes construing time compression as data compression .............................................................................................. 17 a. Burst has disclaimed data compression by stating that data compression is not time compression ........................................... 17 b. Burst filed and then abandoned data compression claims before introducing the term "time compression." ......................... 19 4. The specification supports giving time compression its ordinary meaning. .................................................................................................... 21 5. Burst's statements to the European Patent Office show that time compression is not data compression........................................................ 22 6. Burst's own documents confirm that time compression is not data compression. ............................................................................................. 24 7. Burst's arguments cannot justify construing time compression as data compression....................................................................................... 26 a. Burst's argument that time compression is inconsistent with the sequence required by the claims should be rejected ............... 26 b. Burst's "don't exclude the preferred embodiment" argument should be rejected.......................................................................... 27 B. "Having An Associated Burst Time Period" And "In Said Burst Time Period" .................................................................................................................. 29 1. The Ordinary Meaning Of The Claim Language Requires The Transmission Time Period To Be Known At The Time Of Compression.............................................................................................. 29

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V. IV. 2.

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Interpreting The Claims To Require A Known Time Period Is Consistent With The Specification............................................................ 31 "TRANSMISSION".......................................................................................................... 32 A. Burst disclaimed coverage of transfers through an "interface to a storage device" .................................................................................................................. 32 1. Burst's disclaimer of Izeki excludes transfers to any local storage device, whether external or internal .......................................................... 34 B. The claim language confirms that "storing" and "transmitting" are different acts. ....................................................................................................................... 36 C. The specification associates "transmission" with sending to a remote location.................................................................................................................. 36 D. There is no justification for adding the limitation "capable of playback." ........... 37 E. "Audio/Video Source Information" ...................................................................... 37 1. "Audio/video source information" refers to a complete song or video, not portions thereof ........................................................................ 38 MEANS-PLUS-FUNCTION ISSUES.............................................................................. 40 A. The legal framework of Section 112(6) ................................................................ 40 1. The choice of "means for" language creates a presumption that Section 112(6) applies............................................................................... 41 2. Burst's Opening Brief improperly downplays the significance of Burst's decision to draft its claims using classic "means for" language .................................................................................................... 41 3. Corresponding structure must be clearly linked to the claimed function by the specification. .................................................................... 43 B. "Input Means" ....................................................................................................... 44 1. "Input" does not provide sufficient structure to overcome the presumption that Section 112(6) applies................................................... 44 2. Structure corresponding to the "input means for receiving . . ."............... 45 a. "input means for receiving audio/video source information" (uncompressed) (`995 patent) ....................................................... 46 b. "input means for receiving audio/video source information as a time compressed representation thereof" (`995 patent) ......... 47 c. "input means for receiving audio/video source information" (uncompressed) `705 patent .......................................................... 48 d. "input means for receiving audio/video source information" (uncompressed) `932 patent .......................................................... 48 C. "Output Means" .................................................................................................... 49 1. Output" does not provide sufficient structure to overcome the presumption that Section 112(6) applies................................................... 50 2. Structure corresponding to the "output means" ........................................ 50 ii

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"output means . . . for receiving the time compressed audio/video source information stored in said random access storage means for transmission away from said audio/video transceiver apparatus" (`995 patent) ............................................. 51 b. "output means . . . for receiving the time compressed audio/video source information stored in said random access storage means for transmission away from said audio/video transceiver apparatus" (`932 Patent) ............................................. 51 D. "Storage Means" ................................................................................................... 52 1. "Storage" does not provide sufficient structure to overcome the presumption that Section 112(6) applies................................................... 52 2. There is no disclosure of structure corresponding to the "storage means . . . for storing said digital time compressed representation"......... 53 E. Random access storage means .............................................................................. 54 1. Section 112(6) applies to "random access storage means" because "random access storage" does not provide sufficient structure to overcome the presumption ........................................................................ 54 2. There is no disclosure of structure corresponding to the "random access storage means . . . for storing the time compressed representation" .......................................................................................... 55 F. "Compression Means" .......................................................................................... 56 1. Under Burst's Proposed Construction The Only Structure Linked To Compression Is The AMD 7971 Chip Disclosed In The `995 Patent......................................................................................................... 56 a. Compressor/Decompressor 26 Does Not Constitute A Structure Under Section 112(6) .................................................... 57 b. There Is No Dispute That Besides "Compressor/Decompressor 26" The AMD Chip Is The Only Hardware Disclosed ............................................................. 58 c. Algorithms Without Hardware Are Not Structure Under Section 112(6) ............................................................................... 59 d. The AMD Chip Was Removed From The `932 and `705 Patents' Specifications Resulting In No Disclosure of Corresponding Structures.............................................................. 60 2. Under Apple's Construction, No Structure Linked To "Time Compression" Is Disclosed ....................................................................... 60 G. "Transmission Means" .......................................................................................... 61 H. Recording means................................................................................................... 62 I. Editing means........................................................................................................ 63 MINOR DISPUTES.......................................................................................................... 67 A. "Editing" ............................................................................................................... 67

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B. "Multiplicity" ........................................................................................................ 67 TERMS NO LONGER IN DISPUTE............................................................................... 68 CONCLUSION ................................................................................................................. 68

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TABLE OF AUTHORITIES Page(s) CASES AFG Industrial, Inc. v. Cardinal IG Co., 239 F.3d 1239 (Fed. Cir. 2001)......................................................................................... 26 ASM America, Inc. v. Genus, Inc., 401 F.3d 1340 (Fed. Cir. 2005)......................................................................................... 26 Acco Brands, Inc. v. Micro Security Devices, Inc., 346 F.3d 1075 (Fed. Cir. 2003)......................................................................................... 28 Al-Site Corp. v. VSI Intern., Inc., 174 F.3d 1308 (Fed. Cir. 1999)......................................................................................... 43 Allen Engineering Corp. v. Bartell Industrial, Inc., 299 F.3d 1336 (Fed. Cir. 2002)......................................................................................... 46 Atmel v. Information Storage Devices, 198 F.3d 1374 (Fed. Cir. 1999)................................................................................... 44, 58 Cole v. Kimberley Clark, 102 F.3d ........................................................................................................................... 55 Combined System v. Defense Tech. Corp. of America, 350 F.3d 1207 (Fed. Cir. 2003)......................................................................................... 30 Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (Fed.; Cir. 2005)............................................................................ 42, 45, 67 Elekta Instrument v. O.U.R. Scientific International, 214 F.3d 302 (Fed. Cir. 2000)........................................................................................... 29 Faroudja Laboratoriess, Inc. v. Dwin Electronics, Inc., 76 F. Supp. 2d 999 (N.D. Cal. 1999) ................................................................................ 58 Finance Control System Pty., Ltd. v. OAM, Inc., 265 F.3d 1311 (Fed. Cir. 2001)......................................................................................... 10 Fonar v. General Electric, 107 F.3d 1543 (Fed. Cir. 1997)................................................................................... 58, 59 Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed. Cir. 2005)......................................................................................... 23 Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996)......................................................................... 42, 43, 46, 51 In re Allapat, 33 F.3d 1526 (Fed. Cir. 1994)........................................................................................... 60

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TABLE OF AUTHORITIES (continued)

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Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004).................................................................................. passim Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533 (Fed. Cir. 1991)....................................................................... 42, 45, 54, 56 Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004)......................................................................................... 61 Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313 (Fed. Cir. 1999)......................................................................................... 30 Mantech Environmental Corp. v. Hudson Environmental Serv., Inc., 152 F.3d 1368 (Fed. Cir. 1998)................................................................................... 30, 40 Mas-Hamilton Group v. LaGard, 156 F.3d 1206 (Fed. Cir. 1998)....................................................................... 45, 51, 54, 56 Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003)................................................................................... 42, 45 Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 347 F.3d 1367 (Fed. Cir. 2003)......................................................................................... 11 Norian Corp., v. Stryker Corp., 432 F.3d 1356 (Fed. Cir. 2005)............................................................................. 18, 22, 53 North American Container v. Plastipak Packaging, 415 F.3d 1335 (Fed. Cir. 2005)....................................................................... 18, 19, 28, 29 Nystrom v. Trex Co., 424 F.3d 1136 (Fed. Cir. 2005)......................................................................................... 18 Oak Tech., Inc. v. ITC, 248 F.3d 1316 (Fed. Cir. 2001)......................................................................................... 30 Omega Engineering v. Raytek, 34 F.3d 1314 (Fed. Cir. 2004)........................................................................................... 19 Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931 (Fed. Cir. 1987)........................................................................................... 42 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).................................................................................. passim Regents of University of California v. Dako North America, Inc., 448 F. Supp. 2d 1145 (N.D. Cal. 2006) ............................................................................ 19 Research Plastics v. Federal Packing, 421 F.3d 1290 (Fed. Cir. 2005)......................................................................................... 18

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TABLE OF AUTHORITIES (continued)

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Rheox, Inc. v. Entact, Inc., 276 F.3d 1319 (Fed. Cir. 2002)......................................................................................... 28 Schoenhaus v. Genesco, Inc., 440 F.3d 1354 (Fed. Cir. 2006)............................................................................... 5, 22, 29 Sentry Protection Products, Inc., v. Eagle Manufacturing Co., 400 F.3d 910 (Fed. Cir. 2005)........................................................................................... 18 Serrano v. Telular Corp., 111 F.3d 1578 (Fed. Cir. 1997)......................................................................................... 61 Unidynamics v. Automatic Products, 157 F.3d 1311 (Fed. Cir. 1998)............................................................................. 44, 46, 51 Unique Concepts, Inc. v. Brown, 939 F.2d 1558 (Fed. Cir. 1991)......................................................................................... 28 V-Formation, Inc. v. Benetton Group SPA, 401 F.3d 1307 (Fed. Cir. 2005)......................................................................................... 14 WMS Gaming v. International Game Tech., 184 F.3d 1339 (Fed. Cir. 1999)......................................................................................... 60 White v. Dunbar, 119 U.S. 47 (1886) .............................................................................................................. 5 STATUTES 35 U.S.C. § 112 ...................................................................................................................... passim

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1

I. BACKGROUND A. The Burst Patents Burst describes its patents as claiming "fundamental innovations" based on the "technology of computers, compression, and high-speed transmission." According to Burst, the "innovation" at "the heart of Burst's patents" is "effectively decoupl[ing] the time required to transmit and receive audio and video works from the time required to play the back," so they can be sent in less time than it takes to play them.1 However, the patents as originally filed were actually directed primarily to a more mundane product--an improved VCR. The sole named inventor, Richard Lang, testified that he conceived of the inventions claimed in the Burst patents after he left his former company, Go Video, while he was attempting to come up with a way to design around Go Video's patent on a dual deck VCR: I was thinking about the lawsuit that had been discussed as a possibility at Go Video, and I was thinking more precisely about what I would do if I were the Japanese electronics industry and if Go Video had a patent on the dual deck VCR, how might I try and get around that patent. So, my thought process began in thinking about the dual deck VCR. And from there, I went to that ­ the idea of replacing one of the decks with random access memory hard drive or some other type of memory that could be accessed, and where editing could take place and there would be an option of going back to a new tape.2 As part of his thinking, Lang claims that he also recognized his improved VCR could use digitized, compressed data, and possibly phone line or satellite transmission.3 Confirming that the Burst patents, as originally filed, were directed to an improved VCR, the abstract in each of the Burst patents describes the invention as "[a]n improved video recorder/transmitter with expanded functionality."4 The "Description of the Prior Art" section

Opening Brief at 1. 2 Kalay Decl., Exh. A [Lang 7/23/03 Depo.] at 114:17-24. 3 Kalay Decl., Exh. A [Lang 7/23/03 Depo.] at 115:2-10. 4 Brown Decl., Exh. A ['995 patent] at Abstract.
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enumerates the limitations of dual deck VCRs, which included the limitation to magnetic tape, the lack of random access during editing, and lack of transmission capabilities.5 The "Background of the Invention" section describes the state of the art for VCRs in 1988 and summarizes the "[d]esirable features that are not normally available in a VCR," including "copying recorded programs from one tape or alternative storage medium to a similar or dissimilar storage medium," "editing recorded programs," and finally "the capability for high speed, high quality transmission and reception by optical fiber using the VCR."6 The remainder of the specification of the `995 patent is also consistent with the goal of creating an improved single deck VCR. The patent describes "an improved audio/video recorder transmitter-editor 10 (the `VCR-ET')."7 The VCR-ET contains a recording unit that has "all the functions of the typical VCR including record, play, rewind, slow motion, fast-forward and single frame hold."8 In addition, the VCR-ET has features that include compatibility with a broader array of recording media, the ability to handle analog or digital input signals, data compression, random access storage, and a fiber optic port.9 In addition to the extensive description of the components of the improved VCR, the specification includes a very brief description of how the presence of the fiber-optic port enables high-speed transmission of video programs from one VCR-ET to another VCR-ET.10 Based on this very brief description--and particularly based on the single sentence "For example, a video program may be communicated at an accelerated rate from the first VCR-ET to a second VCR-ET in less time than it would take to view the program"--Burst contends that its patents enabled Lang "to shift the existing broadcast paradigm."11

5

24 25 26 27 28

Id. at 1:40-62. Id. at 1:29-37. 7 Id. at 3:29-30.
6 8

Id. at 3:43-45. 9 See generally Brown Decl., Exh. A [`995 Patent]. 10 Id. at 7:45-66. 11 Opening Brief at 1-2; Brown Decl., Exh. A ['995 patent] at 7:60-64.
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B.

The Asserted Claims The issued claims of the Burst patents claim methods and apparatuses for handling

audio/video source information, where the end result is transmitting a "time-compressed representation" of that source information faster than its "real-time" playback time. The asserted claims in all four patents are written in a consistent parallel structure that recites a series of steps that must be performed on the audio/video source information. There are two basic types of claims. Claim 1 of the `839 patent is the simplest claim, and illustrates the basic structure of the first type of claim:

As can be seen, the four basic steps of the claim are receiving information, compressing it into a "time compressed representation," storing the "time compressed representation," and finally transmitting the "stored time compressed representation." The second type of claim shortens this sequence to three steps by requiring that the audio/video source information be received already in time-compressed form, then stored, and then transmitted. Claim 17 of the `839 patent is the simplest example of this second style. In the first type of claim, the compressing step gives the "time compressed representation" "an associated burst time period" that is "shorter" than real time. In the second type of claim, there is no compressing step, but the "time compressed representation" is received "over an associated time period" that is shorter than real time. In both types of claims, the

transmission step is required to occur in this previously defined, shorter-than-real-time "burst
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time period." C. Apple's Accused Products Burst asserts that its claims cover a variety of Apple hardware and software products that handle audio or video. The focus of Burst's allegations appears to be on Apple's iPod, iTunes, and iTunes Store products, though many other Apple products are accused of infringement.12 The iPod is a portable music player, shown to the right, that uses an intuitive user interface with a characteristic circular touchpad. iTunes is software that can be used to organize and play music on a computer, and to access the iTunes Store. The iTunes Store is essentially an electronic music and video store that is accessed through the internet using the iTunes software. Music and video sold by Apple's iTunes Store are electronically delivered to the customer using the internet. Burst's basic contention is that these products infringe because they can be used to transmit compressed music and/or video files in less time than it takes to play the music or video. II. THE BASIC LEGAL FRAMEWORK FOR CLAIM CONSTRUCTION The claim construction law most significant to the issues here is cited in the context of the issues to which it applies. This section briefly outlines the basic principles of claim construction, as set forth in the Federal Circuit's recent en banc decision in Phillips v. AWH.13 The longstanding law, restated in Phillips, is that claim construction involves considering "the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of

12

Brown Decl., Exh. B [Burst's Preliminary Infringement Contentions]. 13 415 F.3d 1303 (Fed. Cir. 2005).
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the art."14 It is "a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude."15 "The words of the claim are generally given their ordinary and customary meaning," which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention."16 The "claims must be read in view of the specification, of which they are a part."17 However, a claim is not "a nose of wax which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. . . . The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms."18 Put differently, while it is appropriate for a court to "rely heavily on the written description for guidance,"19 it cannot trump the plain language of the claims. As the Federal Circuit explained in Schoenhaus v. Genesco, "where a patent specification includes a description lacking a feature, but the claim recites that feature, the language of the claim controls."20 The claim controls even when it departs from the original written description because the patentee "is only entitled to protection of the claims as issued, not as filed."21 This is true even where the claim "excludes the described embodiment, which is deemed dedicated to the public."22 The prosecution history is significant because it "excludes any interpretation that
14 15

Id. at 1314.

Id. at 1312. 16 Id. at 1312, 1312, and 1313 respectively. 17 Id. at 1315. 18 Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (quoting White v. Dunbar, 119 U.S. 47, 51-52 (1886)). Innova's statement of "the basic principles of claim construction" was expressly reaffirmed in Phillips, 415 F.3d at 1312.
19

Phillips, 415 F.3d at 1317. 20 Schoenhaus v. Genesco, Inc., 440 F.3d 1354, 1359 (Fed. Cir. 2006). 21 Id. 22 Id.
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was disclaimed during prosecution."23 Furthermore, "the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention."24 Finally, "extrinsic evidence may be useful to the court," because it "can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean," though it "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." 25 III. "TIME COMPRESSED REPRESENTATION HAVING AN ASSOCIATED BURST TIME PERIOD THAT IS SHORTER THAN [REAL-TIME]" Apple and Burst agree that "the parties have a basic fundamental dispute regarding the type of compression covered by the Burst patent claims."26 That dispute focuses on the interpretation of the phrase "time compressed representation." Each of the independent claims requires a sequence of acts--compressing (or receiving compressed), storing, and then transmitting--that involves this "time compressed representation." For example, claim 1 of the `839 patent (selected because it is the simplest claim) reads as follows:

23

Phillips, 415 F.3d at 1317. 24 Id. at 1317. 25 Id. at 1319. 26 Opening Brief at 43.
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Each of the claims, like this claim, requires (1) compressing audio/video source information into a "time compressed representation," (2) storing the time compressed representation, and then (3) transmitting the stored time compressed representation. The claims also require the time

compressed representation to have an "associated [burst] time period" that is "shorter than a time period associated with a real time representation."27 Burst's position is that the claimed time compression should be interpreted as data compression, because data compression is the only compression described in the specification. This position cannot survive an analysis of the file history, where Burst stated clearly that "data compression" is "not the equivalent by any means of applicant's specifically claimed time compression," and is also contradicted by a host of other evidence. Apple's position is that the term "time compressed representation" must be given its ordinary meaning, which is a representation that is compressed in time, not one that is data compressed. Indeed, there can be no genuine dispute that the ordinary meaning of time

compression is compressing in time (by increasing the frequency or rate of the data), and is not data compression (which is compressing in space). Apple's position is that time compression should be given this ordinary meaning. The phrase "time compressed representation" presents an unusual claim construction situation because that phrase does not appear at all in the specification, or in the originally filed claims of either Burst's December 1988 application or its May 1989 continuationin-part application. It was only after Burst received initial rejections, and then changed patent attorneys, that the phrase "time compressed representation" and the related phrases "associated burst time period" and "shorter than a real time representation" were introduced into the Burst patents.28 In light of this, the claim construction methodology laid out in Phillips suggests that it is appropriate in this case to focus on the file history and the claim language--which actually
27

See, e.g., Brown Decl., Exh. A [`995 Patent] claims 1, 8, 9, 17; `829 Patent claim 1, 8, 9, 17, 73, 76, 77; `932 Patent claim 4, `705 Patent claim 12. Some claims omit the word "burst," reading simply "associated time period." 28 The concept of transmitting a signal faster than it would take to play is present in the original claims of the May '89 continuation-in-part, as discussed below.
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discuss time compression--rather than attempting to divine from the specification a description of something which is not there. As discussed below, interpreting time compression to have its ordinary meaning of compressing in time, rather than as data compression, is consistent with the specification and is strongly supported by the remaining claim language, the fact that Burst abandoned its original data compression claims after being confronted with prior art clearly showing data compression, by Burst's statements to the European Patent Office, and by Burst's own documents. A. "Time Compressed Representation" 1. There is no genuine dispute that time compression has an ordinary meaning that is not data compression.

The field of the Burst patents is the communication of audio/video information.29 In this context, time compression is understood by those of skill in the art to mean compressing in time, i.e. increasing the frequency (or signaling rate) of the underlying signal, and thereby decreasing its duration. In contrast to data compression, which refers to reducing the number of "bits" used to represent particular information and thereby compressing the "space" occupied by the information, time compression does not change the "bits" themselves, only their time signature (i.e. the frequency of the signal, in the case of analog, or the digital signaling rate, in the case of digital). Conceptually, time compression is what happens when one plays a regular 33 rpm record at 45 rpm. If one recorded this playback on a standard tape recorder, the resulting recording would be a "time compressed representation" of the original recording because it would be shorter than the original song. If this time compressed tape recording were played back at 33/45ths normal tape speed, it would be then sound normal and would last its original duration. Graphically, time compression is shown in the top line of the following figure from DATA COMMUNICATIONS PRINCIPLES by Richard D. Gitlin et al. (1992). The two signals in Burst's expert states that the field of the Burst patents is the "digital communication of audio/video source information." Brown Decl. Exh. C [Hemami Depo.] at 26. Apple disagrees because many dependent claims expressly refer to analog information, and the independent claims encompass both analog and digital communication.
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the middle of the top line in the figure are time compressed versions of the signals at the outside edges. As can be seen, the "bits" are the same, they are just closer together in time:

As shown in the figure, time-compression is achieved by passing signals into a buffer at one rate, and then reading them out of the buffer at a higher rate, thereby compressing them in time30--or, as Burst's expert put it, "squashing" them in time.31 Another straightforward description from a textbook is that "[T]ime compression is an exchange of time for bandwidth. For example, if we play a record twice as fast, all audio is double in frequency and the record takes half the time to play. Twice the audio bandwidth is needed in this case."32 This ordinary meaning of time compression--compressing a signal in time by increasing its (analog) frequency or (digital) signaling rate--is recognized by both parties' experts, and is shown in dictionaries, textbooks, and the prior art cited during the prosecution of the Burst patents. a. Burst's expert concedes that time compression had a known meaning in 1988 that was not data compression.

Burst's expert, Dr. Hemami, testified that in 1988, time compression had two known meanings in the field of communication of audio/video information: (1) "reducing the
30

Brown Decl., Exh. D [DATA COMMUNICATION PRINCIPLES 607-669 (R. Gitlen, J. Hayes and S. Weinstein eds., Plenum Press 1992)] at Fig. 9.3. 31 Brown Decl., Exh. C [Hemami Depo.] at 179. 32 Brown Decl., Exh. E [Graf] at 103.
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duration of an analog signal relative to its original duration," i.e. "increasing the frequency" of the signal;33 and (2) "increasing the digital signaling rate . . . to reduce the transmission time."34 These two definitions are analog and digital expressions of the same concept: increasing the (analog) frequency or (digital) signaling rate of a signal and thereby compressing it in time. Thus, Burst's expert concedes that in 1988, the meaning of time compression to those of skill in the field of the Burst patents are the analog and digital variants of the construction advanced by Apple. Indeed, Burst's expert has conceded that these two definitions are the only meanings of time compression that she was aware of in the field of the Burst patents.35 The fact that Burst's expert acknowledged that Apple's proposed definition reflects the known meaning of time compression is particularly significant because it is an admission against interest.36 Burst attempts to avoid the impact of this admission by arguing that "the term `time compressed representation' does not have an accepted scientific or engineering meaning."37 This argument is easily rejected. The only evidence Burst has put forward for this proposition is the testimony of Dr. Hemami, and what Dr. Hemami actually testified, as explained above, is that the term had only two possible meanings in the field of the Burst patents, meanings

Payne Decl., Exh. 5 [Hemami Report] at 42 (meaning # 1); Brown Decl., Exh. C [Hemami Depo.] at 166-167. 34 Payne Decl., Exh. 5 [Hemami Report] at 43 (meaning # 4). 35 Brown Decl., Exh. C [Hemami Depo.] at 190-191 ("Q. Are you aware of any definitions that you haven't, definitions of the term time compression that would have been known in 1988 that fall within the field of the Burst patents that you haven't listed here? A. I am not aware of any that I haven't listed. I attempted to be thorough in finding the uses as I stated, it's not a term, it's a term that didn't have a single accepted use or meaning and I wanted to make sure that I cast a broad net and that I didn't miss anything."); see also Hemami Depo at 191 ("Q. You'd agree that the term time compression is used in the sense you've described as one and four in your expert report in the field of communication of audio or video information? A. Yes."). In addition to these two meanings ("one and four"), Dr. Hemami provided two other meanings for time compression in her expert report. Payne Decl., Exh. 5 [Hemami Report] at 42-43 (meaning #s 2 and 3.) But Dr. Hemami readily conceded that these two other meanings "aren't relevant to the Burst patents because they're in a different field." Brown Decl., Exh. C [Hemami Depo.] at 160, id. at 190. At her deposition, Dr. Hemami also offered a further definition for time compression, one known in the field of radar. Again, Dr. Hemami conceded that this definition was "definitely" not in the field of the Burst patents. Brown Decl., Exh. C [Hemami Depo] at 183. Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1321 (Fed. Cir. 2001) (noting that testimony by a party's expert can "constitute a fatal admission against interest"). 37 Opening Brief at 50; Payne Decl., Exh. 5 [Hemami Report] at 42-43.
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which are analog and digital expressions of the construction advanced by Apple.38 Whether or not time compression has other, potentially different meanings in other fields is irrelevant, because patents are construed by those of skill in the "field of the invention", not by those of skill in different fields.39 The ordinary meaning of time compression is also confirmed by the testimony of Mr. Halpern--a professional with more than 20 years of technical experience in the field of data communication, and Apple's expert.40 Mr. Halpern testified that "time compression is understood by those of skill in the art to mean compressing in time, that is, increasing the frequency of the underlying signal and decreasing its duration." As he explained, unlike data compression, which "reduces the number of `bits' used to represent a particular signal," "time compression does not change the "bits" themselves, only their time signature (i.e. their frequency)."41 In short, the undisputed fact is that, in the field of the Burst patents, the only known meanings of time compression are (1) "reducing the duration of an analog signal relative to its original duration," i.e. "increasing the frequency" of the signal; and (2) "increasing the digital signaling rate ... to reduce the transmission time."42 These two definitions are analog and digital expressions of the same concept: i.e. increasing the (analog) frequency or (digital) signaling rate of a signal and thereby compressing it in time.

38

Brown Decl., Exh. C [Hemami Depo.] at 160 (conceding that the two other meanings "aren't relevant to the Burst patents because they're in a different field"); id. at 190. 39 Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 347 F.3d 1367, 1370 (Fed. Cir. 2003) (emphasis added).
40 41

See Halpern Decl., Exh. 1 [Halpern Report] at Exh. A. Id. at 8-9. 42 Dr. Hemami takes the position that none of the understood meanings of "time compression" in the art is actually applicable to the Burst patents, and argues that "time compression" should be read as meaning data compression. Payne Decl. Exh 5 [Hemami Report] at 42.
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43

b.

Dictionaries, textbooks, and the cited prior art show that time compression is compressing in time, not data compression.

There is extensive evidence, both intrinsic and extrinsic, that in the field of data communication at the time of the alleged invention,43 time compression means increasing the (analog) frequency or (digital) signaling rate of a signal and thereby compressing it in time. This evidence also shows that the concept of time compression is frequently referred to in the art in conjunction with the use of the term "burst," just as is done in the Burst patents. The following quotations and figures, taken from textbooks and a dictionary, are extrinsic evidence: · The 1992 "Data Communication Principles" textbook by Gitlin describes "time compression multiplexing" as a technique that "alternates fast transmission bursts in each direction, saving up data (submitted to each transmitter at a lower rate) in buffers ... [so that in ideal circumstances for a duplex line] the burst transmission rate required would be exactly twice the average data rate of each terminal."44 Figure 9.3 is of the Gitlin, reproduced below, illustrates time compression:

·

The 1988 "Digital Communication" textbook by Lee & Messerschmit--which Burst's

The Burst patents were filed in December 1988 and May 1989. 44 Brown Decl., Exh. D [Gitlin] at 609.
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expert used in one of her graduate school courses--states that "time-compression refers to the fact that a bit-stream in one direction is divided into traffic bursts and transmitted at a speed at least twice as high as its average bit rate."45 · The 1988 "Digital Communications" textbook by Sklar describes "bursting [a] transmission at a much faster rate than the rate at which it is generated,"46 and provides the example of "INTELSAT digital transmission standards" where a signal with a bit rate of 2.048 Mbits/s "is compressed (by a factor of 59) and transmitted ... at a burst rate" of 120.832 Mbits/s. This compresses a 2 millisecond frame of data into 33.9 microseconds (the same factor of 59)--without changing the bits--as illustrated in the following figure:47

The Sklar textbook also describes the "burst compression and expansion buffers" which are used to accomplish this.48

Brown Decl., Exh. F [Lee & Messerschmitt] at 598. 46 Brown Decl., Exh. G [Sklar] at 519 (emphasis in original). 47 Brown Decl., Exh. G [Sklar] at 519-523, Fig. 9.36. 48 Id. at 523, Fig. 9.37.
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49

·

The 1984 edition of the Modern Dictionary Of Electronics defines a "burst transmission" as a "radio transmission in which messages are stored and then released at 10 to 100 or more times the normal speed. The received signals are recorded and returned to the normal rate for the user."49 As Burst's expert has testified, this releasing of signals at "10 to 100 or more times the normal speed" is the same thing as "increasing the frequency" of the transmitted signal.50 The following quotations, taken from the cited prior art to the Burst patents, are

intrinsic evidence:51 · The 1982 Arnon patent, entitled "Time Compression Multiplex Digital Transmission System," which is cited prior art to the Burst patents, describes a "time compression multiplex (TCM) technique" as one in which "the digital information signal to be transmitted is divided into discrete portions and each portion compressed with respect to time to form a so-called `burst', occupying less than one half the time of the original portion. The transmitter at each terminal alternately transmits the burst onto the path... On receipt, each burst is expanded to occupy its original time span." 52 · The 1985 Abraham patent, which is also cited prior art, describes a system in which video signals are sent "within a time compressed transmission period."53 Specifically, the

Abraham patent describes "video/audio content" of a "program library" that is "digitized and compressed time-wise for transmission ... during time compressed transmission periods of relatively short duration as compared to the real time duration."54 The

information sent in this manner is decompressed by being recorded at "a relatively high recording speed corresponding to the signal time compression associated with the

Brown Decl., Exh. H [Modern Dictionary of Electronics] at 122. 50 Brown Decl., Exh. C [Hemami Depo.] 161-162. 51 "Prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence." V-Formation, Inc. v. Benetton Group SPA, 401 F.3d 1307, 1311 (Fed. Cir. 2005).
52 53

Brown Decl., Exh. I [U.S. Patent No. 4,467,473] at 1:29-43 (emphasis added). Brown Decl., Exh. J [U.S. Patent No. 4,521,806] at Abstract. 54 Id. at 4:24-30.
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incoming signal." "At the end of such recording operation," the recording drive is switched "to the playback mode," in which the drive advances at "a relatively low speed for signal pickup by the head 44 in real time."55 The 1981 Haskell patent, entitled "Time Compression Multiplexing of Video Signals," is cited prior art to the Burst patents.56 It describes a system of multiplexing video signals through time compression: "In time compression multiplexing, the signal from each input channel is stored for a short period of time. The signals from all channels are then read from the store, compressed in time, and transmitted sequentially, one after the other, over the communication path."57 "The signal of each channel occupies the communication path only for a fraction of the time, i.e., during its time slot, but during that fraction of time the whole bandwidth is available to the signal."58 Significantly, Burst acknowledged during prosecution that the Haskell patent "teach[es] a system for time compression multiplexing."59 All of these references show that time compression was well understood in the art to involve compressing information in time, i.e. by increasing the rate or frequency of the data. This is an operation that is completely different compressing data by reducing the number of "bits" required to represent the data. 2. The claim language supports giving time compression its ordinary meaning, not construing it as data compression.

The context provided by the claim language as a whole is a critical factor in claim construction. Here, the claim language makes several important points about the proper

construction of the phrase "time compressed representation." First, and most obvious, is the presence of the word "time" in "time compressed representation." Burst is effectively asking this phrase to be read as if it said "compressed
55 56

Id. at 3:43-60.

Brown Decl., Exh. K [U.S. Patent No. 4,300,161]. 57 Id. at 1:62-66 (emphasis added). 58 Id. at 1:55-59. 59 Brown Decl., Exh. L [`705 File History] at APBU 0620 (emphasis added).
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representation." This violates the basic axiom that all of the words of the claims should be given effect.60 Confirming the significance of the word "time," when Burst amended its claims in Europe to make it "clear that the claims relate to the data compression as described on page 7 of the description," Burst did so by removing the word "time" from "time compressed representation."61 Thus, Burst has publicly conceded that the word "time" needs to be removed from "time compressed representation" for it to refer to a data compressed representation. Second, the "time compressed representation" has an "associated burst time period." As shown by the examples above, the word "burst" is commonly used in the art to refer to a segment of data that has been compressed in time.62 The claim language uses the word "burst" in exactly this way: the "burst time period" is the time period that is associated with the time compressed data. The presence of the term "burst" in the claims, and its use to describe something about the time-compressed data, is consistent with how the term is used in the art in conjunction with "time compression." Thus, the presence of the term "burst" supports giving the term "time compressed" its ordinary meaning in the art. Third, the "burst time period" is "associated" with the "time compressed representation," and this is done as part of the compressing step: "compressing ... source information into a time compressed representation having an associated burst time period..." As shown by the examples above, when data is compressed in time, the rate (or frequency) associated with it necessarily changes, becoming higher as the data is compressed in time. Correspondingly, the time period of the data necessarily gets smaller. This is part and parcel with time compression. Indeed, the "burst time period" of the data is essentially the "key" that allows See, e.g., Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (rejecting an interpretation that "largely reads the term `operatively' out of the phrase `operatively connected'" because "all claim terms are presumed to have meaning in a claim."). Innova was expressly reaffirmed in Phillips, 415 F.3d at 1312. 61 Burst's representations to the European Patent Office are discussed in Section III.A.5 below. 62 E.g. Brown Decl., Exh. F [Lee & Messerschmitt textbook] at 598 ("time-compression refers to the fact that a bit-stream in one direction is divided into traffic bursts and transmitted at a speed at least twice as high as its average bit rate"); Brown Decl., Exh. G [Sklar Textbook] at 519 (describing a signal with a bit rate of 2.048 Mbits/s that "is compressed (by a factor of 59) and transmitted ... at a burst rate" of 120.832 Mbits/s); Brown Decl., Exh. I [Arnon Patent] at 1:32-36 (describing a "portion compressed with respect to time to form a so-called `burst', occupying less than one half the time of the original portion").
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decompression of time-compressed data. One needs to know by what factor the data must be expanded in order to return it to real time. There is thus no question that time compressed data has an "associated burst time period." Moreover, in time compression this "burst time period" exists even if the data is never transmitted. The 33 rpm record playing at 45 rpm has a "burst time period" that is 33/45ths of its original time period, regardless of whether a telephone transmits that compressed signal or not. In contrast, data-compression is itself completely divorced from time. Data compression reduces the amount of "bits" the data occupies, for example by encoding a longer bit sequence with a shorter one. Without a transmission, data compression does not create or change any associated time period. Of course, during transmission, if all else is equal, a data-compressed representation will be transmitted in less time than an uncompressed representation because fewer bits need to be transmitted, and transmitting fewer bits takes less time when the transmission rate is constant. It is this shorter transmission time period that Burst's construction refers to: "a reduced number of bits that allows transfer over an external communications link in a time period that is shorter than [real time]." But in this case the shorter "time period" is associated with the compressed data as part of the transmission, not as part of the compression. The language of the claims clearly shows that this is not correct: The burst time period of the claims is something the time compressed representation acquires in the compressing step, before transmission, not something it acquires as part of transmission.63 When the claimed transmission occurs, it occurs in the already-established "said burst time period." construction, and not Burst's. 3. The file history precludes construing time compression as data compression. a. Burst has disclaimed data compression by stating that data compression is not time compression. This claim language fits with Apple's

The simplest evidence that the time compression of the claims is not data compression is Burst's direct statement in the file history that "data compression" is "not the
63

28

Burst itself emphasizes the fact that the claim language makes clear that its steps are performed in order. Opening Brief at 56 (describing the "sequence mandated by the claim language itself.") 17

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equivalent by any means of applicant's specifically claimed time compression."64 Burst made this statement in order to distinguish U.S. Patent No. 4,974,178 to Izeki et al. ("Izeki"), which had been cited by the examiner in rejecting Burst's claims. Izeki, which is titled "Editing Apparatus for Audio and Video Information," describes a device for editing audio/video programs and then creating an edited "master tape" from the audio/video data. Izeki describes using data compression to reduce the number of bits used to represent "the inputted video and/or audio data," using algorithms such as those described in the classical paper "Scene Adaptive Coder" by Chen and Pratt for "real-time color television transmission."65 In response to the examiner's rejection, Burst declared: While Izeki et al. mentions data compression as one type of conversion process, this is not the equivalent by any means of applicant's specifically claimed time compression.66 The Federal Circuit has repeatedly held that an applicant must be held to the statements it makes during prosecution to distinguish the prior art.67 Thus, Burst's unequivocal statement that "data compression" is "not the equivalent" of "time compression" is binding on Burst, and excludes data compression from the meaning of time compression.68 The Federal Circuit put this principle particularly succinctly in North American Container v. Plastipak Packaging, explaining that the "inescapable consequence" of distinguishing a prior art reference to overcome a rejection is that "the scope of applicant's claims

64 65

Brown Decl., Exh. L [`705 File History] at APBU 551. Exh. M [Izeki patent] at 2:47-56; Brown Decl., Exh. N ["Scene Adaptive Coder"] at 225; Brown Decl., Exh. C [Hemami Depo.] at 52-53 (describing "Scene Adaptive Coder" as a "classical" paper.) Brown Decl., Exh. L [`705 File History] at APBU 551. Nystrom v. Trex Co., 424 F.3d 1136, 1144 (Fed. Cir. 2005); Research Plastics v. Federal Packing, 421 F.3d 1290 (Fed. Cir. 2005); Norian Corp., v. Stryker Corp., 432 F.3d 1356, 1361-62 (Fed. Cir. 2005); Sentry Protection Products, Inc., v. Eagle Manufacturing Co., 400 F.3d 910, 916 (Fed. Cir. 2005).

66 67

It is worth noting that in Izeki, the disclosed data compression would have allowed faster-thanreal-time transfer to a hard drive of the video data described in the Burst patents. However, without the disclosed data compression, this would not have been possible. See Halpern Decl. Exh. 1 [Halpern Report] at 14-15 (explaining that the data rate of the SCSI interface is higher than the data rate for full motion video described in the "Scene Adaptive Coder" paper, but is slower than the data rate of the uncompressed video in the Burst patents).
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cannot cover" what was distinguished.69 In Plastipak, the issue was the interpretation of the "generally convex" inner walls of the claimed plastic bottle. During prosecution, the applicant distinguished a prior art reference on the basis that it disclosed inner walls that were "slightly concave." The Federal Circuit found this argument required the term "generally convex" to be construed to exclude inner walls that were concave in any part. The Federal Circuit reasoned that "that the scope of applicant's claims cannot cover inner walls that are `slightly concave,'" and that "it logically follows ... that the scope of applicant's claims is also limited to inner walls ... with no concavity." The Federal Circuit reached this conclusion even though the applicant did not need to make the distinguishing statement in the prosecution history in order to distinguish the art,70 and even though this conclusion excluded the preferred embodiment from the scope of the claims in that case.71 Here, as in Plastipak, the "inescapable consequence" of Burst's decision to distinguish the Izeki reference on the grounds that "data compression" is "not the equivalent" of "time compression" is that time compression cannot encompass data compression. b. Burst filed and then abandoned data compression claims before introducing the term "time compression."

The terms "time compressed" and "associated burst time period" do not appear in the specification or the originally filed claims of either Burst's December 1988 application or its May 1989 continuation-in-part application. However, the file history shows that Burst originally claimed both data compression and faster-than-real-time transmission (its current proposed construction), and then abandoned its claims to data compression after the Patent Office found prior art showing data compression in the context of transmitting video information. The law requires claims to be "read and interpreted with reference to claims that have been cancelled or rejected, and the claims allowed cannot by construction be read to cover what was thus eliminated by the patent."72 The fact that Burst filed and then abandoned its data compression claims
69 70 71

415 F.3d 1335, 1345 (Fed. Cir. 2005).

Id. at 1345-46. Id. at 1346. 72 Omega Engineering v. Raytek, 334 F.3d 1314, 1323 (Fed. Cir. 2004); Regents of University of California v. Dako North America, Inc., 448 F. Supp. 2d 1145, 1153 (N.D. Cal. 2006).
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contradicts Burst's argument that time compression should be interpreted as data compression. The original claims of the May 1989 continuation-in-part application distinguish between data compression and faster-than-real-time transmission. Some of these original claims, such as claim 9, appear to describe data compression. Claim 9 describes an apparatus where audio data is received, digitized, and then "compressed"--not time compressed--before being stored and then transmitted: 9. Apparatus comprising: means for receiving an analog audio signal; means for digitizing said analog audio signal, thereby generating digital data corresponding to said audio signal and for compressing said digitized data; means for storing said compressed digital data; and transceiver means for transmitting said compressed digital data.73 The compression of this claim seems to be data compression because "compression" alon