Hovsepian v. Apple, Inc.

Filing 252

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Hovsepian v. Apple, Inc. Doc. 252 1 KEKER & V AN NEST, LLP 2 DAVID J. SILBERT - #173128 DAN JACKSON - #216091 3 710 Sansome Street DARYN J. DUR - #169825 4 San Francisco, CA 94111-1704 Telephone: (415) 391-5400 5 Facsimile: (415) 397-7188 ddure~kv.com 6 dsi1bert~kv.com diackson~kv.com 7 8 Attorneys for Defendants 9 COMCAST CABLE COMMCATIONS LLC and INSIGHT COMMCATIONS, INC. 10 11 UNTED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORN - SAN JOSE DNISION 12 13 14 Case No. C-05-01114 JW 15 In re 16 ACACIA MEDIA TECHNOLOGIES CORPORATION 17 18 CABLE AND INTERNET DEFENDANTS' SUPPLEMENTAL OPPOSITION TO PLAINTIFF'S MOTION FOR RECONSIDERATION 19 OF THE COURT'S THIRD AN FOURTH CLAIM CONSTRUCTION ORDERS Date: Time: 20 21 August 17,2007 9:00 a.m. Couroom: Judge: 8, 4th Floor Honorable James Ware 22 23 24 25 26 27 28 399333.02 CABLE AN INTERNT DEFS' SUPP. OPP. TO ACACIA'S MOTION FOR RECONSIDERATION CASE NO. C-05-01114 JW Dockets.Justia.com 1 INTRODUCTION 2 The Cable and Internet Defendantsl wrte separately in order to highlight two points for 3 the Cour. First, if the Court is inclined to alter its constrctions of "transmission system" or 4 "receiving system," it should not adopt Acacia's constrctions, but should hold that those terms 5 are indefinite. Second, the Cour should reject the most recent of Acacia's several attempts to 7 ARGUMENT 6 save claims 45 and 46, which are indefinite. 8 A. 9 10 11 If the Court reconsiders its constructions of "transmission system" and "receiving system" at all, it should find those terms to be indermite. In its motion for reconsideration, Acacia asks the Cour to adopt a dictionar definition for "transmission system," and an analogous definition for "receiving system." But as the Federal Circuit held in 12 13 Philips v. AWl Corp., 415 F.3d 1303 (Fed. Cir. 2005), claim terms must be interpreted in light of the specification, and dictionar definitions should only be used to the 14 15 extent that they are consistent with the specification. ld. at 1315, 1321. Dictionar definitions are broad by natue, and their failure to "fully appreciate how the specification implicitly limits 16 17 18 that definition" leads to a constrction ofthe claim that is "unduly expansive." ld. at 1321. If there is one thing that is certain here, it is that the patentees used the terms "transmission system" and "receiving system" (and many other terms) in unconventional ways. 19 Whle Acacia proposes that the "transmission system" ofthe '992 patent is "an assembly of elements capable of 20 21 fuctioning together to transmit signal waves" (Acacia Br. at 12), the transmission system disclosed in the specification performs multiple fuctions other than 1 The following defendants join in this brief: Comcast Cable Communcations LLC; Insight Communcations, Inc.; Cox Communcations, Inc.; Hospitality Network, Inc.; Charer 22 23 24 25 Communcations, Inc.; Arstrong Group; Block Communcations, Inc.; East Cleveland Cable TV & Communcations LLC; Wide Open West Ohio LLC; Massilon Cable TV, Inc.; MidContinent Media, Inc.; US Cable Holdings LP; Savage Communcations, Inc.; Sjoberg's Cablevision, Inc.; Loretel Cablevision; Arig Communcations Systems; Canon Valley 26 27 28 Communcations, Inc.; NPG Cable, Inc.; Ademia Multimedia, LLC; AEBN, Inc.; Audio Communcations, Inc.; Cyber Trend, Inc.; Cybernet Ventues, Inc.; ACMP, LLC; Game Link, Inc.; Global A VS, Inc.; Inovative Ideas International; Lightspeed Media Group, Inc.; National A-I Advertising, Inc.; New Destiny Internet Group, LLC; VS Media, Inc. 1 399333.02 CABLE AN INTERNT DEFS' SUPP. OPP. TO ACACIA'S MOTION FOR RECONSIDERATION CASE NO. C-05-01114 JW 1 transmitting signal waves. For example, the '992 transmission system includes a storage librar 2 for physical items containing information, an identification encoder, analog-to-digital converters, 3 audio and video compressors, a compressed data librar, and a system for processing user 4 requests. See, e.g. Figs. 2a & 2b.2 Contrar to Acacia's proposed definition, those elements do 5 not "fuction() together to transmit signal waves" unless that phrase is interpreted so broadly that 6 it becomes meanngless.3 Likewise, the receiving system contains numerous elements that, 7 contrar to Acacia's definition, do not "fuction() together to receive transmitted signal waves" 8 under any meaningful interpretation of those words. See, e.g., Fig 6 (including storage, 9 decompression and user interface components in the reception system). 1 0 Faced with this unconventional usage, the Cour fashioned constrctions of the terms 11 "transmission" and "receiving" system that account for the specification's disclosures, as Federal 12 Circuit law requires. See Phillps, 415 F.3d at 1321 ("(TJhe specification is the single best guide 13 to the meanng of a disputed term, and . . . the specification acts as a dictionar when it expressly 14 defines terms used in the claims or when it defines terms by implication.") (quotation marks 15 omitted). Yet Acacia's motion for reconsideration asks the Cour to simply ignore the 16 specification in favor of a dictionar definition. That not only contravenes the teaching of 17 Phillps, but also the "purose ofthe definiteness requirement," which is to "ensure that the 18 claims delineate the scope ofthe invention using language that adequately notifies the public of 19 the patentee's right to exclude." Datamize, LLC v. Plumtree Software, lnc., 417 F.3d 1342, 1347 20 (Fed. Cir. 2005). If, as Acacia implies, any component-including ones that have nothing to do 21 with the transmission or reception of information-may be included in either the transmission or 22 receiving system, then there is no way to distinguish between the transmission system and the 23 2 References are to the '992 specification unless noted otherwise. 24 25 3 Indeed, the patentees used the term "transmit" to describe many things that fall outside any the '863 patent, the "transmitting step" is described as comprising inputting an item having information, assigning a unique ordinar usage of that word. For example, in claim 14 of 26 27 28 identifcation code to the item,formatting the item as a sequence of addressable data blocks, compressing the formatted and sequenced data blocks, storing as a file the compressed, formatted, and sequenced data blocks with the assigned ID code, and, finally, sending at least a portion of the fie. 2 399333.02 CABLE AN INTERNT DEFS' SUPP. OPP. TO ACACIA'S MOTION FOR RECONSIDERATION CASE NO. C-05-01114 JW 1 receiving system, and no way to determine what is and is not included in the combined 2 3 "transmission and receiving system." The terms mean everyhing and nothig. Numerous examples demonstrate the peril of Acacia's approach. As set forth in detail in the Round 2 Defendants' May 2006 briefing, the Yur patents are full of confusing and sometimes contradictory disclosures regarding what is meant by the terms "reception system" 4 5 6 and "receiving system." See Round 2 Defs.' Br. filed 5/8/06 (Doc. 155) at 4-12. That confusion is compounded by the addition of seemingly related but distinct terms like "subscriber receiving station," "local distrbution system," and "receiving device," all of 7 8 which the reader must tr to 9 10 11 liken to or distinguish from a "reception" and/or "receiving" system, with little or no help from the specification. See Fourh Claim Constrction Order (Doc. 220) at 7-8 and 9-10. In addition to this confusion between "reception" and "receiving" systems, it is diffcult-if not impossible-to tell where the transmission system ends and the receiving (or 12 13 reception) system begins without clear definitions that circumscribe their bounds. Indeed, the 14 15 Cour identified an instance of this confusion when it asked whether the librar access interface 121 is in the transmission system or the receiving system. Third Order at 33-34. The answer to 16 that question is unclear because the specification identifies librar access interface 121 both as par of the reception system (CoL. 17:44-45) and as par of 17 18 19 the transmission system (Fig. 2b; Col. 3:28-30; 13:29-47). Similarly, Figue Ig "shows a high level block diagram ofthe transmission. and receiving system of the present invention including transmission system 100 distrbuting to a 20 21 reception system 200, which then preferably transmits requested material over airwave communcation chanels 200d, to a plurality of users." Col. 4:52-57. Thus, the reception system 22 23 transmits information to users, which is contrar to any normal understanding of what a reception system does, fuher blurng the boundares between what may be considered the 24 25 "transmission system" and what may be the "reception" or "receiving" system. Acacia itself canot escape the confusion that its proposed constrctions create. Applying its defintions, Acacia canot determine what is in the "transmission" system, what is in the "reception" or "receiving" system, and what is in neither. For example, in its April 26 27 28 2006 briefing on the '992 patent, Acacia identified element 200d of reception system 200 as 3 CABLE AN INTERNT DEFS' SUPP. OPP. TO ACACIA'S MOTION FOR RECONSIDERATION 399333.02 CASE NO. C-05-01114 JW 1 corresponding strctue for the "transmission means in the transmission system" even though the 2 specification states that 200d is par ofthe reception system. See Acacia Br. filed 4/17/06 (Doc. 3 145-3) at 74; Col. 4:52-57. Similarly, Acacia defined the term "intermediate storage device" as a 4 device situated between the transmission system and the receiving system. See Acacia Br. filed 5 4/17/06 (Doc. 145-2) at 44-45. But in at least some cases, the patent requires that the 6 "intermediate storage device" be included within the "receiving system"-a logical impossibility 7 under Acacia's reading. '992 Claim 53. 8 The Cour should reject Acacia's proposed constrctions because they are inconsistent 9 with the disclosures in the specification and rob the public of any way to determine the 10 boundares of the transmission and receiving systems that the '992 patentees purort to have 11 invented. The only options here are to constre the terms "transmission system" and "receiving 12 system" consistent with the way those terms are used in the specification, as the Cour has done, 13 or to declare that they canot be constred. See, e.g., Philips, 415 F.3d 1315-17; Datamize, 417 14 F.3d at 1347. Thus, if the Cour is inclined to deviate from its constrctions of "transmission 15 system" and "receiving system," it should hold that those terms are indefinite and that any claims 16 in which those terms are used are invalid. 17 B. Claims 45 and 46 are indefinite. 18 In its briefing regarding claim 45, Acacia argues that the Cour erred in stating that the 19 specification does not describe storage in multiple files and in finding the claim arguably 20 indefinite. But the specification does not describe a method that performs the steps of claim 41, 21 which result in the creation and transmission of a single file, but also, in the midst of the claim 22 41 steps, comes up with a plurality of files to store, which is what claim 45 seems to require. 23 Nor can Acacia explain away the insoluble ambiguity created by the fact that claim 45 requires 24 the separate storage of a plurality of fies, but the last step of claim 41 requires sending "the file," 25 with no way to determine which of the plurality of files is sent. 26 As for claim 46, the Cour requested fuher briefing on when the step "generating a 27 listing of available items" occurs. Neither the claim nor the wrtten description answers that 28 question. In any event, claim 46 is indefinite because it depends on claim 45, which is indefinite 4 399333.02 CASE NO. C-05-01114 JW CABLE AND INTERNT DEFS' SUPP. OPP. TO ACACIA'S MOTION FOR RECONSIDERATION 1 for the reasons stated above and in prior briefing. See, e.g., 8/14/06 Br. re Claims 45 & 46 (Doc. 2 204). 3 CONCLUSION the Cour reconsiders its constructions of 4 For the foregoing reasons, if "transmission 5 system" and "receiving system," it should find those terms to be indefinite. The Cour should 6 also reject Acacia's most recent attempt to save claims 45 and 46, which are indefinite. 7 8 Dated: July 18, 2007 KEKER & VAN NEST, LLP 9 10 11 By: /s/ Dan Jackson DAN JACKSON Attorneys for Defendants COMCAST CABLE COMMCATIONS, LLC and INSIGHT COMMCATIONS, INC. 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 399333.02 CABLE AN INTERNT DEFS' SUPP. OPP. TO ACACIA'S MOTION FOR RECONSIDERATION CASE NO. C-05-01114 JW

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