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

Filing 595

CLAIM CONSTRUCTION STATEMENT Samsung's Reply Claim Construction Brief filed by Samsung Electronics America, Inc.. (Attachments: #1 Declaration Briggs Declaration in Support of Samsung's Reply Claim Construction Brief, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Exhibit D, #6 Exhibit E, #7 Exhibit F, #8 Exhibit G, #9 Exhibit H, #10 Exhibit I, #11 Exhibit J)(Maroulis, Victoria) (Filed on 1/9/2012)

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TABLE OF CONTENTS

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Page

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4 I. 

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

5 II. 

LEGAL AUTHORITIES ...................................................................................................... 1 

6 III. 

ARGUMENTS ...................................................................................................................... 2 

7

A. 

The ’711 Patent ......................................................................................................... 2 

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B. 

“Applet” .................................................................................................................... 3 
1. 

Nothing in the Intrinsic Evidence Supports Apple’s “Operating
System Independent” Limitation ................................................................... 3 

2. 

Apple’s Expert Witness Testimony Cannot Overcome the Clear
Intrinsic Evidence .......................................................................................... 4 

3. 

Apple’s Cherry-Picked Extrinsic Evidence Cannot Overcome the
Clear Intrinsic Evidence ................................................................................ 5 

4. 

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Apple’s Reasoning Has Already Been Rejected by the Federal
Circuit ............................................................................................................ 5 

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15 IV. 

CONCLUSION ..................................................................................................................... 7 

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1

TABLE OF AUTHORITIES

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Page
Cases

4 Howmedica Osteonics v. Wright Medical Tech.,
540 F.3d 1337 (Fed. Cir. 2008) ....................................................................................................5
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Liquid Dynamics Corp. v. Vaughan Co., Inc.,
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355 F.3d 1361 (Fed. Cir. 2004) ....................................................................................................1
7 On-Line Tech. v. Bodenseewerk Perkin-Elmer,
386 F.3d 1133, 73 U.S.P.Q. 2d 1116 (Fed. Cir. 2004) .............................................................1, 4
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Phillips v. AWH Corp.,
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415 F.3d 1303, 75 U.S.P.Q. 2d 1321 (Fed. Cir. 2005) .............................................................1, 5
10 SuperGuide Corp. v. DirecTV Enterprises, Inc.,
358 F.3d 870 (Fed. Cir. 2004) ..............................................................................................2, 4, 6
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Vitrionics Corp. v. Conceptronic Inc.,
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90 F.3d 1576 (Fed. Cir. 1996) ......................................................................................................1
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1 I.

INTRODUCTION

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Samsung respectfully submits this reply brief regarding the disputed claim term “applet”

3 from Samsung’s 7,698,711 patent (the “’711 Patent”). Apple’s response brief (Dkt. No. 0540,
4 “Resp. Br.”) disregards well settled Federal Circuit claim construction law by ignoring the
5 intrinsic record and relying entirely on cherry-picked extrinsic evidence. The overwhelming
6 evidence demonstrates that “applet” should be construed to include both operating system
7 independent and operating system dependent applets. There is simply no basis in the intrinsic or
8 extrinsic record for limiting “applet” to one that is operating system independent. Apple’s
9 carefully selected extrinsic evidence proves unpersuasive in light of the non-limiting intrinsic
10 record, a complete view of the extrinsic evidence, and the testimony of Apple’s own expert, as
11 well as Samsung’s. Accordingly, Samsung’s construction should be adopted by the Court.
12 II.

LEGAL AUTHORITIES

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It is undisputed that claims are construed as “a person of ordinary art understands a claim

14 term” because “[it] [is] well-settled [sic] that inventors are typically persons skilled in the field of
15 the invention and that patents are addressed to and intended to be read by others of skill in the
16 pertinent art.” Phillips v. AWH Corp., 415 F.3d 1303, 1313, 75 U.S.P.Q.2d 1321 (Fed. Cir. 2005)
17 (en banc), cert. denied, 546 U.S. 1170, 126 S. Ct. 1332 (2006).
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“It is well-settled that, in interpreting an asserted claim, the court should look first to the

19 intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in
20 evidence, the prosecution history. Such intrinsic evidence is the most significant source of the
21 legally operative meaning of disputed claim language.” Liquid Dynamics Corp. v. Vaughan Co.,
22 Inc., 355 F.3d 1361, 1367 (Fed. Cir. 2004) (quoting Vitrionics Corp. v. Conceptronic Inc., 90 F.3d
23 1576, 1582 (Fed. Cir. 1996)).
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Extrinsic evidence such as expert testimony and dictionaries can be helpful construing the

25 terms, but cannot overcome contradictory intrinsic evidence. The Court must ignore expert
26 testimony attempting to alter the unambiguous scope of a patent term. On-Line Tech. v.
27 Bodenseewerk Perkin-Elmer, 386 F.3d 1133, 1139, 73 U.S.P.Q.2d 1116, 1121 (Fed. Cir. 2004)
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1 (“Extrinsic evidence, however, cannot be used to alter a claim construction dictated by a proper
2 analysis of the intrinsic evidence.”).
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Further, an unmodified claim term describing a known, general area of technology cannot

4 be limited to the most popular or common mode of implementation if a person of ordinary skill in
5 the art has knowledge of other modes of implementing the technology. SuperGuide Corp. v.
6 DirecTV Enters., Inc. 358 F.3d 870, 880 (Fed. Cir. 2004) (overturning the District Court’s narrow
7 construction of “regularly received television signal” because “[a]lthough analog may have been
8 the dominant format of video data when the ’578 patent application was filed, we have little doubt
9 that those skilled in the art knew of the existence of digital video data at the time.”).
10 III.

ARGUMENTS

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A.

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As described in Samsung’s Opening Brief, one of the ’711 Patent’s inventive features is

The ’711 Patent

13 implementing multi-tasking with the music background play object. Apple appears to agree,
14 devoting a significant number of pages in its brief reinforcing what Samsung has already presented
15 to the Court. Unlike the prior art that merely used simple programs to play music files, the
16 invention’s “music background play object,” which “includes an application module including at
17 least one applet,” “provid[es] an interface for music play.” ’711 Patent Cl. 1; Resp. Br. p. 2-8.
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Apple attempts to reframe the issue—broadly grouping together all “mobile phone[s] that

19 play[] music”1 and debating if certain types of applets are or are not operating system dependent.
20 Resp. Br. p. 4-9. The record is clear, both operating system dependent and independent applets
21 existed at the time of invention, and a person of ordinary skill in the art at the pertinent time would
22 not limit the term “applet” to require operating system independence, as Apple proposes.
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Samsung notes that Apple is unlikely to take this broad stroke position if/when attempting to
assert its own, later dated, patents regarding mobile phone music players.
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B.

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“Applet”

Samsung’s Proposed Construction

3 “A small application designed to run
within another program.”
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Apple’s Proposed Construction
“An operating system-independent
computer program that runs within an
application module.”

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Although Apple makes much of minute differences between the constructions, the dispute

7 boils down to a single issue: whether the term “applet” is limited to one type of applet—the
8 operating system independent applet (as Apple asserts), or if the term can be either operating
9 system independent or operating system dependent (as Samsung asserts). Indeed, Apple’s expert
10 agreed that the two constructions, while using slightly different terminology, are otherwise
11 substantively the same. Givargis Dep. at 81:8-13 (Ex. A)2 (“[I]n the field of computer science
12 oftentimes a program is used when an application would work equally as well.”); Givargis Dec. at
13 ¶ 42 (agreeing “applets” are “small”).
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1.

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The weight of the intrinsic and extrinsic evidence supports Samsung’s construction—that

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Nothing in the Intrinsic Evidence Supports Apple’s “Operating System
Independent” Limitation

“applet” in the ’711 Patent is not limited to operating system independent applets. Both parties
agree:
1.

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the patent’s specification does not describe any embodiments limiting the term
“applet” to an operating system independent applet. Givargis Dep. at 36:15-23,

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39:17-40:1 (Ex. B);

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2.

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the claims do not expressly limit the term “applet” to require operating system
independence. See, e.g., Id. at 39:17-40:1 (Ex. B);

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3.

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the prosecution history does not limit “applet” to merely operating system
independent applets. Id. at 35:25-36:4 (Ex. C);

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Citations to “Ex. __” refer to the Declaration of Todd M. Briggs in Support of Samsung’s
Reply Claim Construction Brief and the exhibits thereto.
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4.

the inventor of the ’711 Patent, Moon-Sang Jeon, conceived the invention of the

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’711 Patent while working with operating system dependent applets. Id. at 40:13-

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23; 41:17-19 (Ex. D); and

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5.

at the time of the invention, there were both operating system dependent and
independent applets. Id. at 41:25-42:8 (Ex. E).

Because of this overwhelming evidence that Apple does not, and cannot dispute, Apple’s

7 brief concentrates exclusively on the mere existence of operating system independent applets and
8 argues that this mere existence somehow limits the claims to operating system independent
9 applets. Given that both types of applets existed at the time of invention, and that persons of
10 ordinarily skill in the art, like the inventor of the ’711 Patent, had knowledge of and actively
11 developed operating system dependent applets, it would be improper to limit “applet” to an
12 operating system independent type. SuperGuide, 358 F.3d at 880.
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2.

Apple’s Expert Witness Testimony Cannot Overcome the Clear
Intrinsic Evidence

Apple’s entire argument relies on carefully selected extrinsic evidence, including
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unsupported expert testimony. Such evidence “cannot be used to alter a claim construction
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dictated by a proper analysis of the intrinsic evidence.” On-Line Tech., 386 F.3d at 1139.
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Apple’s only evidence that “applet” must be limited to “operating system independent
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applets” is the testimony of its expert witness. Dr. Givargis opines, without support, that “the
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association between an applet running or an applet that is within an application module and that
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association to [him] suggests a Java-like interpreted environment.” See, e.g., Givargis Dep. at
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40:5-9 (Ex. F); Givargis Dec. ¶ 44. Dr. Givargis does not explain why this “association”
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“suggests” such a conclusion, nor does he proffer evidence supporting his conclusion. See, e.g.,
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Id. Such unsupported expert opinion cannot overcome a clear intrinsic record that places no
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operating system independent limitation on the term “applet.”
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Even if it were supported, Dr. Givargis’s opinion alone cannot overcome the clear intrinsic
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evidence, which does not in any way require that an applet be operating system independent. On27
Line Tech., 386 F.3d at 1140 (reversing a district court’s adaptation of an expert witness’
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1 narrowing construction because it contradicted the intrinsic evidence). As such, Apple’s
2 unsupported limitation proffered by an expert witness should be rejected.
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Apple’s Cherry-Picked Extrinsic Evidence Cannot Overcome the Clear
Intrinsic Evidence

Through a carefully selected set of extrinsic evidence, Apple implies that a person of
ordinary skill in the art was only aware of one type of applet, the operating system independent
variety of Java applets. However, as Dr. Givargis admitted, he chose resources that he expected to
discuss only operating system independent applets, excluding discussion of operating system
dependent applets. Givargis Dep. at 70:24-71:6 (Ex. G) (Q:…Since this particular document is
limited to Java, you personally would not expect to see discussion of operating-system dependent
applets in it, correct? A: That is correct[.]”), 73:1-11 (Ex. G); Givargis Dec. at ¶¶44-54.
Such litigation inspired selections of extrinsic evidence fails to properly inform the Court
regarding the full knowledge of the person of ordinary skill in the art. Howmedica Osteonics v.
Wright Med. Tech., 540 F. 3d 1337, 1346 (Fed. Cir. 2008)(citing Phillips, 415 F.3d at 1319
(holding that extrinsic evidence should only be “considered in the context of the intrinsic
evidence, if 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.”)).
4.

Apple’s Reasoning Has Already Been Rejected by the Federal Circuit

The Federal Circuit has already rejected Apple’s claim construction reasoning. Apple
reasons that those of ordinary skill in the art may have assumed that the term “applet” meant Java
applet, that a Java applet is commonly operating system independent, and therefore all applets
must be operating system independent. See, e.g., Givargis Dep. at 53:10-11 (Ex. H) (in response
to being asked if an applet must always be operating system independent, “it is not universally the
case but commonly the case”), 94:3-4 (Ex. H) (“applets are commonly[,] usually assumed to be
operating-system independent”) ; Givargis Dec. at ¶ 42 (defining “applet” as “a small program
typically written in Java”), ¶ 45 (“applets can be independent of the host platform”).

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1

Even taken at face value, Apple’s evidence contradicts its construction, that an “applet”

2 must be operating system independent. Apple offers no evidence that a person of ordinary skill in
3 the art understood “applet” to be exclusively an operating system independent applet.
4

Similar reasoning was rejected by the Federal Circuit in SuperGuide. There, the Federal

5 Circuit overturned a narrow construction of “regularly received television signal.” SuperGuide,
6 358 F.3d at 880. According to the Federal Circuit, the lower court improperly limited the term to
7 analog signals, the only commercially used signals at the pertinent time, because a person of
8 ordinary skill in the art had knowledge of digital signals as well. Id. The Federal Circuit held that
9 the lower court’s approach, which mirrors Apple’s in this case, was improper because not even the
10 dominance of analog signals at the time of invention warranted importing a limitation not found in
11 the intrinsic record. Id. The pertinent inquiry is the knowledge of the person of ordinary skill in
12 the art, not commonality. Id. As in that case, here, the record establishes that a person of ordinary
13 skill in the art had knowledge of both types of applets, and the unmodified term should not be
14 limited.
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Lastly, Apple’s assertion that AppleScript applets are operating system independent lacks

16 credibility. According to Dr. Givargis’s interpretation, all programs, applets, apps, indeed any
17 computer software is “operating system independent.” Givargis Dep. at 86:12-25; 87:21-88:2 (Ex.
18 I). Dr. Givargis testified that AppleScript applets, which are operating system dependent, could
19 be operating system independent because he could write his own, custom computer program that
20 allows an AppleScript applet to run on a Windows computer or a Linux computer.3 Id. Even if
21 true, this assertion supports Samsung’s construction that the term “applet” encompasses both
22 operating system dependent and independent applets. Further, adapting this reasoning would
23 remove any meaning to the phrases “operating system dependent” and “operating system
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Thus, under Dr. Givargis’s definition, AppleScript applets are simultaneously operating
system independent and operating system dependent. Givargis Dep. at 86:4-17 (Ex. J) (Tipton
27 Cole’s characterization of AppleScript as operating system dependent does not eliminate the
possibility of it being operating system independent.).
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1 independent,” both of which were known and used by a person of ordinarily skill in the art at the
2 time of the invention.
3 IV.

CONCLUSION

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Nothing in the intrinsic or extrinsic record limits the term “applet” to “operating system

5 independent” applets. Consequently, the Court should reject Apple’s construction and adopt
6 Samsung’s construction.
7 DATED: December 29, 2011

Respectfully submitted,

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QUINN EMANUEL URQUHART &
SULLIVAN, LLP

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By/s/ Victoria F. Maroulis
Charles K. Verhoeven
Kevin P.B. Johnson
Victoria F. Maroulis
Michael T. Zeller
Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

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