Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1052

Administrative Motion to File Under Seal Apple's Reply Brief in Support of Its Motion for Summary Judgment filed by Apple Inc.(a California corporation). (Attachments: #1 Proposed Order, #2 Reply Brief, #3 Declaration, #4 Exhibit, #5 Exhibit)(Selwyn, Mark) (Filed on 6/7/2012)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

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WILLIAM F. LEE (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, Massachusetts 02109
Telephone: [phone]
Facsimile: [phone]
MARK D. SELWYN (SBN 244180)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff and
Counterclaim-Defendant Apple Inc.

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

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APPLE INC., a California corporation,
Case No. 11-CV-01846-LHK
Plaintiff,
vs.
SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity, SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation, and SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
Defendants.

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SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity, SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation, and SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,

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APPLE INC.’S REPLY BRIEF IN
SUPPORT OF ITS MOTION FOR
SUMMARY JUDGMENT OF NONINFRINGEMENT OF U.S. PATENT
NUMBER 7,362,867 AND INVALIDITY
OF U.S. PATENT NUMBERS 7,456,893
AND 7,577,460
Date: June 21, 2012
Time: 1:30 p.m.
Place: Courtroom 4, 5th Floor
Judge: Hon. Lucy H. Koh
ORAL ARGUMENT REQUESTED
PUBLIC REDACTED COPY

Counterclaim-Plaintiffs,
v.
APPLE INC., a California corporation,
Counterclaim-Defendant.

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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TABLE OF CONTENTS

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I.

INTRODUCTION ...............................................................................................................1

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II.

NON-INFRINGEMENT OF THE ’867 PATENT ..............................................................1

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III.

INVALIDITY OF THE ’893 PATENT...............................................................................4

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IV.

INVALIDITY OF THE ’460 PATENT...............................................................................8

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A.

Samsung Does Not Dispute that the Plain Language of the Claim Is
Ambiguous...............................................................................................................8

B.

None of the Three Possible Interpretations of Claim 1 Finds Support in the
Specification ............................................................................................................8

C.

The Prosecution History also Fails to Clarify the Meaning of Claim 1.................11

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D.

Samsung Does Not Dispute the Inventors’ Inability to Understand Claim 1 ........12

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E.

Samsung and Its Experts Cannot Agree on the Interpretation of Claim 1.............13

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V.

CONCLUSION..................................................................................................................14

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

TABLE OF AUTHORITIES

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Federal Cases

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Amgen, Inc. v. Chugai Pharm. Co.,

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927 F.2d 1200 (Fed. Cir. 1991)....................................................................................... 9, 11, 12
Cat Tech LLC v. TubeMaster, Inc.,
528 F.3d 871 (Fed. Cir. 2008)................................................................................................. 2, 3
Cleveland v. Policy Mgmt. Sys. Corp.,
526 U.S. 795 (U.S. 1999)............................................................................................................ 5
Collaboration Props. v. Tandberg ASA,
No. C 05-01940 MHP, 2006 U.S. Dist. LEXIS 42465 (N.D. Cal. June 22, 2006)................. 5, 6
Collegenet, Inc. v. Xap Corp.,
442 F. Supp. 2d 1036 (D. Or. 2006) ........................................................................................... 5
CSB-Sys. Int'l, Inc. v. SAP Am., Inc., C.A. No.
C.A. No. 10-2156, 2012 U.S. Dist. LEXIS 45847 (E.D. Pa. Mar. 30, 2012) ............................. 5
Davis v. Brouse McDowell, L.P.A.,
596 F.3d 1355 (Fed. Cir. 2010)................................................................................................... 5
Freedom Wireless, Inc. v. Alltel Corp.,
No. 2:06cv504 (TJW-CE), 2008 U.S. Dist. LEXIS 82785 (E.D. Tex. Oct. 17, 2008)............... 5
In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303 (Fed. Cir. 2011)........................................................................................... 4, 6, 7
IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
430 F.3d 1377 (Fed. Cir. 2005)................................................................................................... 4
Leader Techs., Inc. v. Facebook, Inc.,
770 F. Supp. 2d 686 (D. Del. 2011)............................................................................................ 5
Ricoh Co. v. Katun Corp.,
486 F. Supp. 2d 395 (D.N.J. 2007) ............................................................................................. 5

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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S3 Inc. v. NVIDIA Corp.,
259 F.3d 1364 (Fed. Cir. 2001)................................................................................................... 7
Sienna, LLC v. CVS Corp.,
No. 06 Civ. 3364 (DLC), 2007 U.S. Dist. LEXIS 2 (S.D.N.Y. Jan. 3, 2007) ............................ 5
Solomon v. Kimberly-Clark Corp.,
216 F.3d 1372 (Fed. Cir. 2000)................................................................................................. 12
SynQor, Inc. v. Artesyn Techs., Inc., C.A. NO.
2:07-CV-497-TJW-CE, 2010 U.S. Dist. LEXIS 74808 (E.D. Tex. July 26, 2010).................... 5
Toshiba Corp. v. Juniper Networks, Inc., C.A. No.
03-1035-SLR, 2006 U.S. Dist. LEXIS 44348 (D. Del. June 28, 2006).................................. 5, 6
Wago Verwaltungsgesellschaft Mbh v. Rockwell Automation,
2012 U.S. Dist. LEXIS 30703 (N.D. Ohio Mar. 7, 2012) ...................................................... 5, 6
Vistan Corp. v. Fadei USA, Inc.,
No. C 10-4862 JCS, 2012 U.S. Dist. LEXIS 59348 (N.D. Cal. Apr. 27, 2012)......................... 5
Yodlee, Inc. v. Cashedge, Inc.,
No. C 05-01550 SI, 2006 U.S. Dist. LEXIS 86699 (N.D. Cal. Nov. 29, 2006) ......................... 5

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Federal Statutes

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35 U.S.C. § 11................................................................................................................................. 7

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Federal Rules

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F.R.C.P. 8(d)(2)-(3) ........................................................................................................................ 9

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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I.

INTRODUCTION
Apple Inc. (“Apple”) respectfully submits this reply brief in support of its motion for

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summary judgment of non-infringement of claims 25 and 26 of U.S. Patent No. 7,362,867 (“the

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’867 patent”) and for summary judgment of invalidity of claims 10 and 12 of U.S. Patent No.

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7,456,893 (“the ’893 patent”) and claim 1 of U.S. Patent No. 7,577,460 (“the ’460 patent”).1

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II.

NON-INFRINGEMENT OF THE ’867 PATENT

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The parties did not ask the Court to interpret any limitations of the ’867 patent. However,

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faced with the prospect of summary judgment, Samsung belatedly seeks a proposed construction

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for “scrambling code” and offers both intrinsic and extrinsic evidence in an attempt to support its

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new construction, including a further declaration from its expert (Dr. Wesel) – who now offers

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almost 16 pages of analysis in support of Samsung’s proposed construction. Putting aside the

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untimeliness of these arguments, the greater problem for Samsung is that its arguments ignore

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the plain meaning of the asserted claims. In light of the plain meaning and the undisputed facts,

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Apple is entitled to summary judgment of non-infringement of the ’867 patent.
Samsung’s newly proposed construction of “scrambling code” is not only inconsistent

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with the plain meaning, but would in fact eviscerate the meaning of the claim term “scrambling.”

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Samsung’s expert agrees that a code is not a “scrambling code” unless it can be used for

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“spreading” – put simply, to be a “scrambling” code, the code must actually be used to scramble,

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or spread, the data. (See 4/23/12 Wesel Dep. at 164:15-17 (Selwyn Decl., Ex. 5, Dkt. 925-10).)

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However, if one replaces the “scrambling code” limitation of claim 25 with Samsung’s proposed

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construction (“a code generated by adding a first m-sequence and a second m-sequence” (Opp. at

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3)), this fundamental concept of a code used to “scramble” or “spread” data disappears entirely:

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Plaintiff and Counterclaim Defendant Apple Inc.’s Notice of Motion and Motion for
Summary Judgment of Non-Infringement of U.S. Patent Number 7,362,867 and Invalidity of U.S.
Patent Numbers 7,456,893 and 7,577,460, Dkt. 925-4 will be hereinafter referred to as “Mot.”
Samsung’s Opposition to Apple’s Motion for Summary Judgment, Dkt. 1005, will be hereinafter
referred to as “Opp.”
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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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’867 Patent, Claim 25 (“Scrambling
Code” Limitation)

“Scrambling code” limitation replaced with
Samsung’s proposed construction

at least one adder for generating a … Gold
code as a … primary scrambling code by
adding a … shifted first m-sequence and
the second m-sequence

at least one adder for generating a … Gold
code as a … primary [code generated by
adding a first m-sequence and a second msequence] by adding a … shifted first msequence and the second m-sequence

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As a matter of law, because Samsung’s proposed construction would therefore eliminate the

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“scrambling” limitation of claim 25, it cannot be correct. See, e.g., Cat Tech LLC v. TubeMaster,

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Inc., 528 F.3d 871, 885 (Fed. Cir. 2008) (refusing to adopt a claim construction which would

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render a claim limitation meaningless).
Claim 25 of the ’867 patent requires “generating a … Gold code as a … primary

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scrambling code.” That portion of the claim imposes two separate requirements: (1) a Gold

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code must be generated and (2) the primary scrambling code must be a Gold code. Samsung’s

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attempt to conflate these two separate requirements of claim 25 is improper. A product cannot

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infringe simply by generating a Gold code. Similarly, a product cannot infringe simply by

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generating a scrambling code. The plain language of claim 25 requires generating a Gold code

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that is a scrambling code.

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Samsung’s opposition fails to make this showing. Samsung’s infringement argument

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hinges on the contention that

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that is insufficient under the plain meaning of claim 25. Samsung can go no further because the

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undisputed facts demonstrate that

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(See id at 5.) As detailed in Apple’s opening brief, under the standard, “scrambling codes” and

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“Gold codes” are distinct entities,
(See Mot.

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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at 5-7.2)

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Samsung’s opposition also misapprehends Apple’s view of the “plain meaning” of claim

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25. It is not Apple’s position that a “scrambling code” must be a complex code sequence or

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cannot be a sum of two m-sequences. (See Opp. at 3.) Rather, a code is not a “scrambling code”

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within the meaning of claim 25 unless the code is used for scrambling (or spreading) the data.

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(See Mot. at 6.) As explained in Apple’s opening brief,

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Finally, there is no merit to Samsung’s claim that Apple “essentially admitted

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infringement” of the ’867 patent (Opp. at 7) by arguing in its earlier motion for partial summary

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judgment that it is licensed to practice the patent under FRAND terms. The suggestion that

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Apple somehow “admitted that this patent is essential to the 3GPP standards” (id.) ignores the

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express language of Apple’s partial summary judgment motion – which Samsung omits from its

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Opposition to the present motion. As is evident on its face, Apple’s partial summary judgment

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motion was based upon Samsung’s FRAND declarations and Samsung’s own assertions that its

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(See Mot. at 6
(quoting Dr. Wesel s deposition testimony).) Notably, while Dr. Wesel submitted a 45-page
declaration in opposition to Apple’s motion for summary judgment on the ’867 patent, Dkt. 1003,
there is nothing in that new declaration that addresses this key admission.

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As set forth in Apple’s opening brief, Samsung’s expert admitted at his deposition that

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Samsung asserts only literal infringement of claim 25 of the ’867 patent. As noted in
Apple’s opening brief (Mot. at 11-12), Samsung’s Infringement Contentions did not articulate a
theory of infringement under the doctrine of equivalents, and Samsung’s expert offered no
opinion in his opening report under the doctrine of equivalents. Samsung’s opposition is
similarly devoid of any argument for infringement under the doctrine of equivalents.

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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patents are standards-essential, which Apple assumed to be true “solely for purposes of [its]

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motion.” (Apple’s Motion for Partial Summary Judgment at 3, 20-24 (Dkt. 660-3).) However,

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that motion also included an express statement that “Apple disputes that any of the declared-

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essential patents that Samsung has asserted against Apple is actually essential to the UMTS

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standard and actually embodied in the [] chipsets incorporated into Apple products.” (Id. at 3.)

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Plainly, there was no admission of infringement or that the ’867 patent is in fact essential to the

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standard.

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III.

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INVALIDITY OF THE ’893 PATENT
Samsung’s opposition fails to address or even mention the issue central to Apple’s

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motion: Apple’s and Samsung’s experts agree that claim 10 of the ’893 patent requires user

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action. (See Mot. at 15.)

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; see also IPXL

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Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); In re Katz

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Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011) (“Katz’s claims .

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. . create confusion as to when direct infringement occurs because they are directed both to

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systems and to actions performed by ‘individual callers.’”). On the point, Apple’s expert, Dr.

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Dourish opined that

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the language [of claim 10] indicates that user action is required by the claim. Thus
it is unclear to me whether the language of claim 10 is met when one creates an
apparatus that allows the user to switch from the stored-image display mode to the
photographing mode and back to the stored image display mode, or when the user
actually switches from the stored-image display mode to the photographing mode
and back to the stored-image display mode.
(Dourish ’893 Invalidity Report ¶ 204 (Selwyn Decl., Ex. 10, Dkt. 925-15); Mot. at 15.)

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Similarly, Samsung's expert, Dr. Yang, testified:
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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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(5/9/12 Yang Rough Dep. at 80:25-81:12 (Selwyn Decl., Ex. 12, Dkt. 925-17); Mot. at 15.) The

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parties’ experts therefore agree that user action is required to practice claim 10.4

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While Samsung cited a litany of cases in support of its Opposition, those cases are readily

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distinguishable, as in none of those cases did the parties’ experts agree (as they do here) that user

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Although Dr. Yang testified under oath as quoted above, Samsung submitted a further
declaration from Dr. Yang with its Opposition, in which he seemingly recants or contradicts his
sworn testimony. (Yang Decl. at 3-6 (Dkt. 1001).) Apparently realizing that it would be
improper (or at least unconvincing) to rely on a declaration that contradicts sworn testimony, in
its Opposition, with respect to the ’893 patent, Samsung only cites the Yang Declaration for a
description of the ’893 patent. (Opp. at 7.) However, to the extent Samsung seeks to rely on the
Yang Declaration more broadly, Apple respectfully requests that ¶¶ 20-23 of the Yang
Declaration be struck or otherwise disregarded by the Court. Paragraphs 20 and 23 contain new
opinion that could have been and should have been stated in Dr. Yang’s rebuttal report, but were
not. (Compare Yang Decl., Dkt. 1001, ¶¶ 20-23 with Yang Validity Report, Declaration of Peter
Kolovos in Support of Apple’s Motion for Summary Judgment (“Kolovos Decl.”) Ex. 1, at ¶
142.) Further, paragraphs 20-22 of Dr. Yang’s new declaration contradict his prior deposition
testimony and are therefore improper. See Cleveland v. Policy Mgmt. Sys. Corp., 526 U.S. 795,
806-07 (1999) (requiring an explanation when affidavits submitted with summary judgment
oppositions contradict earlier sworn deposition testimony); Davis v. Brouse McDowell, L.P.A.,
596 F.3d 1355, 1362 (Fed. Cir. 2010) cert. denied, 131 S. Ct. 118, 178 (2010) (“In view of
[plaintiff’s expert’s] inconsistent deposition testimony and his failure to include the patentability
opinion of paragraph 5 in his expert report, the court did not abuse its discretion in striking
paragraph 5.”).

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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action was required to practice the claim.5 Moreover, unlike the cases on which Samsung relies,

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claim 10 of the ’893 patent clearly implicates user action.6 Therefore, on this record, granting

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summary judgment of indefiniteness in favor of Apple would not disturb precedent that the

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holding of IPXL is limited and narrow.

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Samsung’s attempt to distinguish In re Katz, 639 F.3d at 1318, is similarly unavailing, as

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a side-by-side comparison of the claim at issue in that case and claim 10 of the ’893 patent

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demonstrates:

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See Vistan Corp. v. Fadei USA, Inc., No. C 10-4862 JCS, 2012 U.S. Dist. LEXIS 59348,
at *25 (N.D. Cal. Apr. 27, 2012) (no agreement between experts that claim required user action
to be practiced); Yodlee, Inc. v. Cashedge, Inc., No. C 05-01550 SI, 2006 U.S. Dist. LEXIS
86699, at *6-19 (N.D. Cal. Nov. 29, 2006) (same); Collaboration Props. v. Tandberg ASA, No.
C 05-01940 MHP, 2006 U.S. Dist. LEXIS 42465, at *19-20 (N.D. Cal. June 22, 2006) (same);
Collegenet, Inc. v. Xap Corp., 442 F. Supp. 2d 1036, 1062 (D. Or. 2006) (same); Toshiba Corp. v.
Juniper Networks, Inc., C.A. No. 03-1035-SLR, 2006 U.S. Dist. LEXIS 44348, at *13-14 (D.
Del. June 28, 2006) (same); SynQor, Inc. v. Artesyn Techs., Inc., C.A. NO. 2:07-CV-497-TJWCE, 2010 U.S. Dist. LEXIS 74808, at *96 (E.D. Tex. July 26, 2010) (same); CSB-Sys. Int’l, Inc.
v. SAP Am., Inc., C.A. No. 10-2156, 2012 U.S. Dist. LEXIS 45847, at *40 (E.D. Pa. Mar. 30,
2012) (same); Wago Verwaltungsgesellschaft Mbh v. Rockwell Automation, 2012 U.S. Dist.
LEXIS 30703, at *19 (N.D. Ohio Mar. 7, 2012) (same); Leader Techs., Inc. v. Facebook, Inc.,
770 F. Supp. 2d 686, 710 (D. Del. 2011) (same); Freedom Wireless, Inc. v. Alltel Corp., No.
2:06cv504 (TJW-CE), 2008 U.S. Dist. LEXIS 82785, at *40-41 (E.D. Tex. Oct. 17, 2008) (same);
Ricoh Co. v. Katun Corp., 486 F. Supp. 2d 395, 403 (D.N.J. 2007) (same); Sienna, LLC v. CVS
Corp., No. 06 Civ. 3364 (DLC), 2007 U.S. Dist. LEXIS 2, at *22 (S.D.N.Y. Jan. 3, 2007) (same).
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Compare the language in claim 10 of the ’893 patent requiring extensive user
involvement (“A digital image processing apparatus comprising: … wherein upon a user
performing a mode-switching operation defined by switching from the stored-image display
mode to the photographing mode and back to the stored image display mode…) with the claims
at issue in cases cited by Samsung where summary judgment has been denied. See, e.g.,
Collaboration Properties, 2006 U.S. Dist LEXIS 42465 at *1 (“A teleconferencing system for
conducting a teleconference among a plurality of participants, comprising: … wherein, the
system is configured to reproduce images, based on data signals shared along the data path…”)
(emphasis added); Toshiba, 2006 U.S. Dist. LEXIS 44348 at *11 n.1 (“A network
interconnection apparatus for transferring packets at a boundary of a plurality of networks, the
apparatus comprising: a control message processing unit configured to communicate with a
previous hop node…”) (emphasis in original); Wago Verwaltungsgesellschaft, 2012 U.S. Dist.
LEXIS 30703 at *2, *15-16 (“An input/output device for a data bus, said device being located on
a support rail and being adapted to be positioned adjacent other such devices, said device
comprising: … configuring the device with other such devices as series terminals …) (emphasis
added).

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

’893 Patent, Claim 10
10. A digital image processing apparatus
comprising:
an optical system for receiving a light
reflected from a subject;
…
wherein upon a user performing a modeswitching operation defined by switching
from the stored-image display mode to the
photographing mode and back to the stored
image display mode the controller causes the
display screen to first display a single image
file that was most recently displayed before the
mode-switching operation, the single image
file being different from a most recently stored
image file, and the single image file being first
displayed irrespective of a duration that the
camera was used in the photographing mode
during the mode switching operation.

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In re Katz Interactive Call Processing Claim
1. An interface control system for use with,
(1) a communication facility including remote
terminals for individual callers to make calls,
wherein said remote terminals comprise a
telephone capability including voice
communication means and some of said
remote terminals comprise digital input means
for providing data, (2) a multiple port, multiple
format processor for concurrently processing
data from a substantial number of callers in
anyone of a plurality of formats, said
communication facility automatically
providing call data signals, as to indicate called
data (DNIS), to select a specific format from
said plurality of formats, and (3) a plurality of
live operator attended terminals, for a plurality
of formats, said interface control system
comprising:
…
interface means for providing automated
voice messages relating to said specific format
to certain of said individual callers, wherein
said certain of said individual callers digitally
enter data, including at least caller
information data, through said digital input
means;
…
(Kolovos Decl. Ex. 2, U.S. Patent No.
5,917,893, claim 1, cited in In re Katz, 639
F.3d at 1308, 1318.7)

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The Federal Circuit found that the claims in Katz fell under the rationale of IPXL because “Katz's

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claims … create confusion as to when direct infringement occurs because they are directed both

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to systems and to actions performed by ‘individual callers.’” In re Katz, 639 F.3d at 1318. In

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both the claim at issue in Katz and the asserted Samsung claim, the user is the subject performing

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the action. (Compare the In re Katz claim language “wherein said certain of said individual

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callers … enter data…” to Samsung’s ’893 Patent’s requirement of a “user performing a mode-

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switching operation defined by switching from the stored-image display mode to the

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(Samsung’s ’893 Patent (Selwyn Decl., Ex. 2,
925-7).)

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Coincidentally and confusingly, the patent in issue in In re Katz and Samsung’s patent
both end in “’893.”

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REPLY IN SUPPORT OF APPLE INC.’S MOTION
FOR SUMMARY JUDGMENT
Case No. 11-cv-01846 (LHK)

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photographing mode and back to the stored image display mode”.) Both claims require the user

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to perform an action. For the reasons stated herein and in Apple’s opening brief, Dkt. 925-4 at

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12-16, independent claim 10 and dependent claim 12 are invalid under 35 U.S.C. § 112, ¶ 2,

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because the claims do not apprise a person of ordinary skill in the art of their scope.

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IV.

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INVALIDITY OF THE ’460 PATENT
A.
Samsung Does Not Dispute that the Plain Language of the Claim Is
Ambiguous

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Samsung does not dispute that the plain language of claim 1 of the ’460 patent has no

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clear meaning. Unlike the S3 case cited by Samsung – where the court found that the

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specification and figures “explain[] and illustrate[]” the contested interaction between claim

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terms (see S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1368–369 (Fed. Cir. 2001)) – here Samsung

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attempts to manufacture “support” in the specification and file history for its current

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interpretation of claim 1 where none exists. Rather, as described below, the specification and file

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history provide no support for Samsung’s (or any other) interpretation of claim 1. Because claim

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1 is insolubly ambiguous to a person of ordinary skill in the art, the Court should find it invalid

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as indefinite.

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B.

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None of the Three Possible Interpretations of Claim 1 Finds Support in the
Specification

Even when read in light of the specification, claim 1 does not reasonably apprise those
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skilled in the art of the scope of the invention. Contrary to Samsung’s assertions, the first
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interpretation of claim 1 identified by Apple and adopted by Samsung as its interpretation
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(sending two separate email messages from two separate email transmission sub-modes) finds no
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support in the specification or file history.8

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As set forth in Apple’s opening brief, the specification only describes one “E-mail
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transmission sub-mode.” (Mot. at 16-17.) Apparently acknowledging this, Samsung does not
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even assert that the ’460 patent discloses two
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Samsung also attempts to concoct “support” for the first interpretation

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through its submission of the Yang Declaration. (See Yang Decl. ¶¶ 27–28 (Dkt. 1001).9)

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However, the new arguments raised in the Yang Declaration ignore the fact that the specification

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only ever refers to a single E-mail transmission sub-mode, denoted consistently by the single

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reference number 610 in Figs. 6, 8, and 9 (and throughout the specification) of the patent.

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10
FIG. 6 (excerpt)

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FIG. 8 (excerpt)

FIG. 9 (excerpt)

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In paragraph 27 of his Declaration, Dkt. 1001, Dr. Yang unsuccessfully attempts to find

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support for Samsung’s interpretation in FIG. 9 and the related detailed description, i.e., “[u]pon

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selection of the E-mail transmission sub-mode, the portable phone controller 32 controls the

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OSD 40 to display a message requesting entry of the address of the other party on the color LCD

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48 in step 900 of FIG. 9.” (’460 patent at 12:4–7 (Selwyn Decl. Ex. 3, Dkt. 925-8) (emphasis

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added); Srivastava Invalidity Report ¶ 338 (Selwyn Decl. Ex. 22, Dkt. 925-27).) Tellingly, Dr.

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Yang chooses to omit the entirety of FIG. 9 in his declaration, deleting the depiction of “E-mail

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transmission sub-mode 610,” the single and only E-mail transmission sub-mode disclosed in the

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specification, at the top of FIG. 9.
Put simply, there is no support in the specification for a “first” and a “second” E-mail

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transmission sub-mode, let alone for how to practice the claimed method.

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9

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Apple objects to Paragraphs 27-34 of the Yang Declaration as untimely expert opinions
under Fed. R. Civ. P. 26(a)(2). These paragraphs contain new opinions that could have been and
should have been stated in Dr. Yang’s rebuttal report, but were not. (Compare Yang Decl. ¶¶
27–34, Dkt. 1001, with Yang Validity Report, Declaration of Peter Kolovos in Support of
Apple’s Motion for Summary Judgment (“Kolovos Decl.”) Ex. 1, at ¶¶ 103–111.) See also
supra n.4.

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Samsung also incorrectly asserts that because Apple’s expert argued that certain prior art

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references anticipate claim 1, the claim cannot be indefinite. This argument is contrary to

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common sense, legal precedent, and the Federal Rules of Civil Procedure, which expressly allow

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parties to argue in the alternative. F.R.C.P. 8(d)(2)-(3). See also Amgen, Inc. v. Chugai Pharm.

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Co., 927 F.2d 1200, 1204 (Fed. Cir. 1991) (affirming finding of indefiniteness where defendant

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argued non-infringement in the alternative). Indeed, Samsung ignores Dr. Srivastava’s explicit

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statement in his expert report that his primary opinion is that claim 1 is indefinite. (Srivastava

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Invalidity Report ¶ 61 (Stake Decl., Ex. 3, Dkt. 1002-3) (“Likewise, it is my opinion that the

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claims of the ’460 patent are indefinite, for the reasons articulated below. Nothing stated here or

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in the attached claims charts should be construed as an admission or suggestion that I believe the

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claims of the ’460 patent are not indefinite. I offer these opinions as alternative grounds for

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invalidating the ’460 patent, if the fact finder were to disagree with my opinion that the claims

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are indefinite.”).) The deposition testimony of Dr. Srivastava cited by Samsung underscores this

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point:
Q:

Can we agree that at the very least this claim requires the three core functions that
Dr. Yang opined on? . . .

A:

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I do find the claim overall confusing as to what method it is citing. Whether
there are two E-mail sub-modes or not, the claim language does use the first Email and the second E-mail sub-mode. As I alluded to in my report, the
specification is at variance with that. But in terms of does [claim 1] talk about
sending an E-mail text alone, an E-mail with text and image and sequentially
scrolling through the images, yes, the claim does talk about these three things.

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(Srivastava Dep. at 76:4-24 (Stake Decl. Ex. 2, Dkt. 1002-2) (emphasis added).10)
Finally, Samsung asserts – in another newly offered argument by Dr. Yang – that the

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second and third possible interpretations identified by Apple (resulting in sending a single E-mail

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message) do not require performance of all claimed functions. (Yang Decl. ¶ 34 (Dkt. 1001).)

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This is a red herring. Samsung seems to be arguing that because the first interpretation is correct

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Further, whether or not claim 1 refers to certain “core functions” does not clarify what
those functions mean, how those functions must be performed, and even whether all of them
must be performed in order to infringe claim 1.

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(which it is not), the second and third interpretations are necessarily incorrect because they do

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not require all the functions required by the first interpretation. In addition, although a person of

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ordinary skill in the art would not be able to determine whether claim 1 requires sending one or

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two E-mail messages, each of the three possible interpretations identified by Apple includes the

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recited “first” and “second” E-mail transmission sub-mode and sequentially displaying “other”

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images through the use of scroll keys. Claim 1’s insoluble ambiguity lies in how the “first” and

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“second” E-mail transmission sub-modes are used to carry out the claimed data transmission

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method. For example, even accepting for the sake of argument that claim 1 recites Samsung’s

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three “core functions,” it is impossible to determine whether the claimed method requires that

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emailing text, and emailing text and an image, are performed together, separately, or as

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alternatives, and whether the result is one or two E-mail messages. The specification simply

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provides no description that helps to clarify this insoluble ambiguity.

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C.

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Samsung places undue weight on the prosecution history. Contrary to Samsung’s

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assertions, the Examiner’s mere repetition of the claim limitations in rejecting the claims

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provides no information about whether the Patent Office “readily understood” or “readily

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recognized” any aspect of claim 1. (Opp. at 17; Yang Decl. ¶ 30 (Dkt. 1001).) The prosecution

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history similarly does not provide any guidance as to which of the three possible interpretations

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should be attributed to the claimed method as a whole. The Examiner’s identification of certain

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individual claim limitations in the prior art does not favor any one of the three interpretations or

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shed light on how to practice the claim.

The Prosecution History also Fails to Clarify the Meaning of Claim 1

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Apple does not dispute that the prior art teaches a “first” and “second” E-mail

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transmission sub-mode. However, the prosecution history (like the specification) is silent on

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how the first and second E-mail transmission sub-modes are related to one another and/or to the

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claimed sequential display of “other” images, and on what exactly is required to practice the

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claimed method. As set forth in Apple’s opening brief, a person of ordinary skill in the art would

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not understand whether claim 1 is infringed by: (1) transmission of an E-mail message from the

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first E-mail transmission sub-mode and transmission of another E-mail from the second E-mail

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transmission sub-mode; (2) transmission of a text E-mail from the first E-mail transmission sub-

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mode or transmission of an E-mail with an image from the second E-mail transmission sub-

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mode; or (3) transmission of information from the first E-mail transmission sub-mode to the

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second E-mail transmission sub-mode, followed by transmission of an E-mail with an image

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from the second E-mail transmission sub-mode. Therefore, claim 1 is invalid as indefinite.

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D.

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Despite downplaying the importance of inventor testimony, Samsung attempts to use it to

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Samsung Does Not Dispute the Inventors’ Inability to Understand Claim 1

salvage claim 1. (See Opp. at 18.) According to Samsung, the inventor testimony
As an initial matter, whether or not claim 1

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discloses three functions is irrelevant to whether a person of ordinary skill in the art would

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understand whether and how the claim requires performance of all or some subset of those

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functions. Further, Mr. Oh’s testimony,

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see Oh Dep. 35:9-36:16 (Stake Decl., Ex. 10, Dkt. 1002-10),

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(See Mot. at

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19.)
Moreover, as Samsung recognizes, inventor testimony can support an indefiniteness

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finding when the specification and prosecution history shed no light on the claim language. See,

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e.g., Amgen v. Chugai Pharm. Co., 927 F.2d 1200, 1218 (Fed. Cir. 1991).12 As discussed above

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Incredibly,

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(Oh Dep. at 47:7-13 (Stake Decl., Ex. 10, Dkt. 1002-10).)
This testimony sheds no light on the proper interpretation of claim 1.
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Samsung’s reliance on Solomon v. Kimberly-Clark Corp. is inapposite. In Solomon, the
inventor testified about her subjective understanding of her invention which defendants
interpreted to be different from what was claimed. 216 F.3d 1372, 1376 (Fed. Cir. 2000). In
contrast, the inventors here cannot even understand what was claimed.

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and in Apple’s opening brief, that is the case here. With one exception, Samsung does not

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dispute that its inventors could not explain or define what claim 1 means, including whether

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claim 1 requires sending two E-mail messages. (Mot. at 18-19.)

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This testimony speaks for itself, despite Samsung’s attempts to

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devalue it by denigrating the question. At bottom, the inventors’ inability to understand their

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own patent claim underscores the insoluble ambiguity of claim 1 to those skilled in the art.

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E.

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Samsung does not dispute that its infringement contentions describe performing the

Samsung and Its Experts Cannot Agree on the Interpretation of Claim 1

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claimed steps in order by first opening the Mail application, returning to the Home screen to

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open the Photos application, navigating between image files, opening the Mail application again,

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and opening the Photos application again. (Mot. at 19-20.)

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Neither of these two interpretations bears any relation to Samsung counsel’s description to Dr.

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Sukumar of the patented feature as the transmission of a single email message with an image in

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the body and not as an attachment. Samsung suggests that Dr. Sukumar had focused on only the

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final limitation of claim 1 because that was the “inventive aspect[] of the ’460 patent.” (Opp. at

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20.) But as Samsung itself has admitted, the final limitation already existed in the prior art, and

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it was not until the applicants added two other limitations during prosecution that claim 1 was

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allowed. (Opp. at 16-18.) Curiously, Dr. Sukumar does not even address those limitations in his

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expert report. Ultimately, Samsung and its experts have advanced interpretations of claim 1 that

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are inconsistent with one another, let alone with any “clear meaning” of the claim, which only

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further underscores the indefiniteness of claim 1. (Mot. at 19-21.)

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Apple has moved to strike the new infringement theory, among others, from Dr. Yang’s
expert report as untimely disclosed pursuant to Patent Local Rule 3-1. (See Apple’s Motion to
Strike Portions of Samsung’s Expert Reports (Dkt. 939-1).)

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V.

CONCLUSION
For the foregoing reasons, as well as the reasons stated in its Opening Brief, Dkt. 925-4,

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Apple respectfully requests that the Court grant its motion for summary judgment of non3
infringement of the ’867 patent, and for summary judgment of invalidity of claims 10 and 12 of
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the ’893 patent and claim 1 of the ’460 patent.
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Dated: June 7, 2012

/s/ Mark D. Selwyn
Mark D. Selwyn (SBN 244180)
([e-mail])
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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William F. Lee (admitted pro hac vice)
([e-mail])
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, Massachusetts 02109
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiff and
Counterclaim-Defendant Apple Inc.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing

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document has been served on June 7, 2012, to all counsel of record who are deemed to have

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consented to electronic service via the Court’s CM/ECF system per Civil Local Rule 5.4. Any

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other counsel of record will be served by electronic mail, facsimile and/or overnight delivery.

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/s/ Mark D. Selwyn
Mark D. Selwyn

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