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

Filing 1150

MOTION for Extension of Time and to Seal Documents re #1024 Administrative Motion to File Under Seal Documents Re Apples Opposition To Samsungs Motion For Summary Judgment, #1022 Administrative Motion to File Under Seal Documents Re Apples Opposition To Samsungs Motion For Summary Judgment, #1020 Administrative Motion to File Under Seal Documents Under Seal Re Apples Opposition To Samsungs Motion For Summary Judgment, #1023 Administrative Motion to File Under Seal Documents Re Apples Opposition To Samsungs Motion For Summary Judgment, #925 Administrative Motion to File Under Seal Apple's 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, #1013 Administrative Motion to File Under Seal Documents Under Seal Re Apples Opposition To Samsungs Motion For Summary Judgment filed by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC(a Delaware limited liability company). Responses due by 7/2/2012. (Attachments: #1 Exhibit 1 to Samsung's Motion, #2 Declaration of Anthony P. Alden in Support of Samsung's Motion, #3 Exhibit 1 to the Alden Declaration, #4 Declaration of Hankil Kang in Support of Samsung's Motion, #5 Exhibit 1 to the Kang Declaration, #6 Exhibit 2 to the Kang Declaration, #7 Exhibit 3 to the Kang Declaration, #8 Exhibit 4 to the Kang Declaration, #9 Exhibit 5 to the Kang Declaration, #10 Exhibit 6 to the Kang Declaration, #11 Exhibit 7 to the Kang Declaration, #12 Exhibit 8 to the Kang Declaration, #13 Exhibit 9 to the Kang Declaration, #14 Exhibit 10 to the Kang Declaration, #15 Exhibit 11 to the Kang Declaration, #16 Exhibit 12 to the Kang Declaration, #17 Exhibit 13 to the Kang Declaration, #18 Exhibit 14 to the Kang Declaration, #19 Exhibit 15 to the Kang Declaration, #20 Exhibit 16 to the Kang Declaration, #21 Exhibit 17 to the Kang Declaration, #22 Exhibit 18 to the Kang Declaration Pt. 1 of 5, #23 Exhibit 18 to the Kang Declaration Pt. 2 of 5, #24 Exhibit 18 to the Kang Declaration Pt. 3 of 5, #25 Exhibit 18 to the Kang Declaration Pt. 4 of 5, #26 Exhibit 18 to the Kang Declaration Pt. 5 of 5, #27 Exhibit 19 to the Kang Declaration, #28 Exhibit 20 to the Kang Declaration, #29 Exhibit 21 to the Kang Declaration, #30 Exhibit 22 to the Kang Declaration, #31 Exhibit 23 to the Kang Declaration, #32 Exhibit 24 to the Kang Declaration, #33 Exhibit 25 to the Kang Declaration, #34 Exhibit 26 to the Kang Declaration, #35 Exhibit 27 to the Kang Declaration, #36 Exhibit 28 to the Kang Declaration, #37 Proposed Order Granting Samsung's Miscellaneous Administrative Request)(Maroulis, Victoria) (Filed on 6/28/2012)

KANG DECLARATION
EXHIBIT 3

EXHIBIT 22
PUBLIC REDACTED
VERSION

CONTAINS INFORMATION DESIGNATED AS
SAMSUNG HIGHLY CONFIDENTIAL INFORMATION
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

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APPLE INC., a California corporation,
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Plaintiff,
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vs.

Civil Action No. 11-CV-01846-LHK

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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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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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Counterclaim-Plaintiffs,
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v.
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APPLE INC., a California corporation,
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Counterclaim-Defendant.
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Expert Report of Mani Srivastava, Ph.D.
Regarding Invalidity of the Asserted Claim of U.S. Patent No. 7,577,460

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332.

For at least these reasons, Samsung's alleged secondary considerations do not

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affect my conclusion that the claims of this patent are obvious in light of the prior art I have

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discussed in detail above.

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XII.

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The Asserted Claim of the ‘460 patent is Indefinite
333.

Independent claim 1 recites, among other things, “entering a first E-mail

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transmission sub-mode upon user request for E-mail transmission while operating in a portable

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phone mode, the first e-mail transmission sub-mode performing a portable phone function,”

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“entering a second E-mail transmission sub-mode upon user request for E-mail transmission

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while operating in a display sub-mode, the second e-mail transmission sub-mode displaying an

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image most recently captured in a camera mode,” “transmitting the address of the other party and

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a message received through a user interface in the first E-mail transmission sub-mode,” and

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“transmitting the address of the other party and the message received through the user interface

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and the image displayed on the display as an E-mail in the second E-mail transmission sub-

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mode.”

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334.

It is my opinion that claim 1 of the ‘460 patent is invalid as indefinite. The

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language of the claim whether read in isolation or together with the Specification fails to clarify

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for one of ordinary skill in the art whether the claimed process (i) requires a single process for

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CONTAINS INFORMATION DESIGNATED AS
SAMSUNG HIGHLY CONFIDENTIAL INFORMATION
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sending an E-mail with a user following one sequence of steps to send the E-mail if the E-mail

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had an image attached, and a different sequence of steps if the E-mail did not have an image

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attachment, or (ii) requires two separate processes for sending E-mails, one with an attached

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image and another without an attached image.

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335.

Furthermore, the claim is indefinite about whether the first E-mail transmission

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sub-mode transmits the “address of the other party and a message received through a user

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interface” in an E-mail to a recipient or to the second E-mail transmission sub-mode. Unlike the

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last limitation, the penultimate limitation does not explicitly recite that the address and the

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message are transmitted “as an E-mail.” The indefiniteness is amplified because it is not clear

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whether “the user interface” recited in the last limitation is referring to “a user interface” recited

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in the penultimate limitation or to some other user interface.

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336.

In my opinion for the above reasons claim 1 is insolubly ambiguous and not

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capable of interpretation by one of ordinary skill in the art. Accordingly, it is my opinion that

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independent claim 1 is invalid under section 112, second paragraph because the claims do not

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apprise a person of ordinary skill in the art of their scope.

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XIII. The Asserted Claim of the ‘460 patent Lacks Support in the Written Description

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A.

Lack of support for First and Second E-mail Transmission Sub-modes

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337.

In my opinion Claim 1 of the ‘460 patent is invalid for failing to comply with the

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written description requirement of 35 U.S.C. § 112, ¶ 1, because the ‘460 patent fails to teach in

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the Specification the “first E-mail transmission sub-mode” and the “second E-mail transmission

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sub-mode” recited in claim 1 of the ‘460 patent. The patent description does not show one of

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ordinary skill in the art that the inventors possessed the invention they claimed.

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338.

The Specification does not describe a “first E-mail transmission sub-mode” and

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“second E-mail transmission sub-mode.” The Specification only describes one “E-mail

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transmission sub-mode.” The Specification states that “[u]pon request for E-mail transmission in

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the portable phone mode in step 608, the portable phone controller 32 enters an E-mail

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transmission sub-mode in step 610.” See Col. 9, ll. 42–44 & Figure 6 (emphasis added). The

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CONTAINS INFORMATION DESIGNATED AS
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Specification continues, in the context of discussing the play mode, that “[u]pon user request for

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the E-mail transmission, the portable controller 32 returns to the E-mail transmission sub-mode

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in step 610.” See Col. 11, ll. 4–12 & Figure 8 (emphasis added). Furthermore, Figures 6 and 8,

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which illustrate the portable phone mode and the play mode, use the same reference number, E-

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mail transmission sub-mode 610, to refer to the single E-mail transmission sub-mode. The

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figures and text of the specification do not identify any other E-mail transmission sub-mode.

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Therefore, one skilled in the art would understand that the inventors did not posses a device with

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more than one E-mail transmission submodes.

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339.

Further, the claim, if interpreted as proposed by Samsung in its infringement

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contentions, requires that two email messages are simultaneously composed and sent from a

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“first E-mail transmission sub-mode” and a “second E-mail transmission sub-mode.” In contrast,

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the patent only describes sending one email message, either having (1) a To address and message

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body, or (2) a To address, message body, and image attachment. In describing the E-mail

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transmission sub-mode, the specification discloses two alternate branches whereby one email

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message is sent from either branch but not from both. The specification discloses:
“If the E-mail transmission sub-mode is selected in the play submode of the camera mode, this implies that image data to be
enclosed in the E-mail exists . . . . However, if only the E-mail
transmission sub-mode is selected in the portable phone mode, this
implies that no image data enclosed in the E-mail exists.

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In the presence of a still image to be enclosed in the E-mail in step
914, the portable phone controller 32 transmits the received
message (title and contents) and the enclosed still image to the Email server 510 in packets, while displaying a message indicating
E-mail transmission on the color LCD 48, in step 916. In the
absence of a still image to be enclosed in the E-mail in step 914,
the portable phone controller 32 transmits the received message
(title and contents) to the E-mail server 510 in packets, while
displaying the message indicating E-mail transmission on the color
LCD 48 in step 918.” See Col. 12, ll. 30–51 & Figure 9.

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340.

Figure 9, which illustrates the E-mail transmission sub-mode, shows that the

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method proceeds along step 916 in the presence of a still image, and alternatively, proceeds
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along step 918 in the absence of a still image. That is, the portable phone controller 32 transmits
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