Apple Inc. v. Samsung Electronics Co. Ltd. et al
OPPOSITION to ( 532 Apple's Motion to Strike Evidence Not Disclosed as Required by Patent Local Rule 4-3(b) ) filed by Samsung Electronics Co. Ltd.. (Attachments: # 1 Declaration of Todd M. Briggs, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G)(Briggs, Todd) (Filed on 1/12/2012) Modified text on 1/13/2012 (dhm, COURT STAFF).
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
APPLE INC., a California corporation
§ CIVIL ACTION NO. 11-CV-01846-LHK
SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity, SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation, and SAMSUNG
LLC, a Delaware limited liability company
DECLARATION OF TONY GIVARGIS, PH.D.
IN SUPPORT OF APPLE’S PROPOSED CLAIM CONSTRUCTION
FOR U.S. PATENT NO. 7,698,711
I have been retained as an expert in this case by Apple Inc. (“Apple”). In this
Declaration I provide my opinions regarding the interpretation of the term
“applet” as used in the claims of U.S. Patent No. 7,698,711 to Jeong (“the ‘711
I received a Bachelor of Science degree in Computer Science from the University
of California, Riverside, in 1997. In 2001, I received my Ph.D. degree in
Computer Science, also from the University of California, Riverside. My doctoral
thesis, completed under the supervision of Professor Frank Vahid, was titled
“Design Space Exploration of Parameterized System-on-a-Chip Architectures”
and related to computer-aided design optimization of highly integrated circuits on
Since 2001, I have been a member of the Department of Computer Science
faculty at the University of California, Irvine (“UC-Irvine”). From 2001-2007, I
held the title Assistant Professor of Computer Science. I was promoted to
Associate professor, with tenure, in 2007, and to full Professor in 2011.
Beginning in 2011, in addition to my role as Professor of Computer Science, I
was appointed Associate Dean for Student Affairs in the Donald Bren School of
Information & Computer Sciences at UC-Irvine.
module includes at least one applet’ as argued during the interview to distinct
[sic] from the icon as taught by KOKUBO.” U.S. Patent Application No.
11/778,466, Examiner’s Interview Summary of December 16, 2009, see
Continuation Sheet (bold emphasis added).
“The Office did suggest, however, that the inclusion of a limitation further
defining the music background play object would distinguish over the prior art of
record, though not necessarily be allowable depending on the results of a further
search. Specifically, the Office suggested including a limitation indicating that
the music background play object includes an application module including at
least one applet. Applicant appreciates the Office’s suggestion and has amended
the independent claims as suggested.” U.S. Patent Application No. 11/778,466,
Applicant’s December 8, 2009 Arguments/Remarks Made in an Amendment at pp.
6-7 (bold emphasis added).
“For the specific invention as claimed, a music background play object, wherein
the music background play object includes an application module including at
least one applet, is included such that an MP3 file can be played in the
background while other menu tasks can be executed by the user.” Id. at p.7 (bold
“By use of the music background play object, which is an application module
including at least one applet as discussed with reference to para. , the
terminal is able to perform multi-tasking. That is, by generating the application
module of the music background play object, the music background play object
provides an interface for the playing of music, specifically the selecting of an
MP3 mode. At the same time, the user is able to execute other menu functions of
the device and thus multi-task using the device. It is Applicant's contention that
independent claims 1,9 and 17 are allowable based on the unique use of the music
background play object, wherein the music background play object includes an
application module including at least one applet, alone, and not based on the use
of the music background play object in a standby or any other mode. That is, none
of the prior art discloses a music background play object, wherein the music
background play object includes an application module including at least one
applet in any mode of a device. Accordingly, Applicant believes that the claims
are in condition for immediate allowance.” Id. at pp. 7-8 (bold emphasis added).
“As suggested by the Office during the interview, this clarifying limitation is not
disclosed, taught or suggested by Kokubo. Rather, as acknowledged by the
Office in the outstanding rejection, Kokubo merely discloses the generating of ‘an
icon corresponding to a task (application software)’ col. 2, lines 34-39; see also
col. 13, lines 8-10 (‘manually or automatically generated music [music note
symbol] icon 10f is displayed.’ The generating of the icon by Kokubo is not a
disclosure of generating a music background play object, wherein the music
background play object includes an application module including at least one
applet. That is, Kokubo makes no disclosure that the icon includes an application
module, or that the application module includes at least one applet as instantly
claimed.” Id. at pp. 9-10 (italics in original) (bold emphasis added). See also,
‘711 patent claims 1, 9, and 17.
These passages from the file history reinforce the clear language of the claims and
specification stating that the claimed applet runs within an application module.
The McGraw-Hill Dictionary of Scientific and Technical Terms (6th Ed., 2003) at
p.124 defines “applet” as “a small program, typically written in Java.” This
definition supports Apple’s proposed construction because persons of ordinary
skill in the art in 2005 would commonly associate the term “applet” with an
application written in the Java programming language, and Java was well-known
to be operating system-independent, as described above.
The Dictionary for Library and Information Science (1st Ed., 2004) at p.34
defines “applet” as “a small application program written in the Java programming
language developed by Sun Microsystems for distribution over the Internet.
Applets run on any Java-enabled Web browser independent of platform
(Windows, Macintosh, UNIX, etc.).” This definition again supports Apple’s
proposed construction because persons of ordinary skill in the art in 2005
understood “applets” as commonly being written in the Java programming
language, which is characterized by programming independent of the platform,
including the operating system.
The Java Developer’s Resource (1997) by Eliotte Harold (“the Harold reference”)
at p.11 states that “[w]hat’s most special about Java in relation to other
programming languages is that it lets you write special programs called applets
that can be downloaded from the Internet and played safely within a Web
browser.” The discussion in this text supports Apple’s construction because it
reflects the common understanding of persons of ordinary skill in the art in 2005
that applets, typically written in the operating system-independent Java
programming language, are executed within an application module, e.g., a Web
browser. The Web browser or other application module provides the execution
environment for the applet.
The Harold reference at p.12 further explains how applets can be independent of
the host platform: “Java solves the problem of platform independence by using
byte code…. Java programs that have been compiled into byte code still need an
interpreter to execute them on any given platform. The interpreter reads the byte
code and translates it into the platform’s native language on the fly. The most
common such interpreter is Sun’s program java (with a little j). Since the byte
code is completely platform independent, only the interpreter and a few native
libraries need to be ported to get Java to run on a new computer or operating
Thus, the above excerpt in the Harold reference further supports Apple’s proposed
construction of “applet” as being “operating system-independent.” Persons of
ordinary skill in the art in 2005 would have understood Java applications,
including applets, as being processor and operating system “agnostic” or
independent. Specifically, Java applications, including applets, execute within a
standardized execution environment. An “interpreter,” designed according to the
standardized execution environment and usually a component of the host
application module, translates the instructions of the Java applications, including
applets, to those of the host platform and operating system. Thus, applets are
“independent” of the operating system because they can rely upon the interpreter
in the host application module to translate their instructions for them; they do not
interact directly with the operating system and instead, in the context of the ‘711
patent, run within the application module.
Further, the Harold reference at p.12 describes the security advantage of applets
as programs running within an application module: “Java solves this [security]
problem by severely restricting what an applet can do. A Java applet cannot write
to your hard disk without your permission. It cannot write to arbitrary addresses
in memory and thereby introduce a virus into your computer. It cannot crash your
system.” See also, e.g., Harold at pp. 9-34. Thus, persons of ordinary skill in the
art in 2005 would understand “applet” to be a program that runs in the context of
another application module, such as a Web browser. The Web browser provides
the execution environment for the applet and restricts its access to a user’s
computer resource and private data.
Java: An Introduction to Computer Science & Programming (3rd Ed., 2004) by
Walter Savitch (“the Savitch reference”) explains that “[t]he word applet sounds
as though it might refer to a small apple, but it is supposed to sound like a small
application. Thus, applets are just ‘little Java programs,’ in some sense of the
word little. However, the character of applets comes not from their size, but from
how and where they are run. Applets are Java programs that can be displayed on a
Web site and viewed over the Internet. They can also be run on your local
computer, without any connection to the Internet.” Savitch at p.797 (italics in
original). See also, e.g., Savitch at Chapter 1, pp. 3-37, and Chapter 13, pp. 795821. The Savitch reference supports Apple’s proposed construction because it
confirms that the person of ordinary skill would understand that applets have the
characteristics of Java-based programs, including running within an application
module independently of the operating system, as described in other references
cited in this declaration.
In IBM e-server pSeries (12th Ed., 2004) by Hoskins, J. and Bluethman, R.
Exploring (“the Hoskins reference”), “Java is an object-oriented programming
environment that operates independent of any operating system or microprocessor.
Java programs, called applications or applets, can be entirely developed using the
compiler, debugger, and applet viewer tools provided in IBM's implementation
for the AIX for Java development environment. (C and C++ compilers and tools
are not needed to create/run Java-based applets.) The same applets can be
dynamically transmitted over a network and run on any client that has been
enabled for Java. Because applet execution is platform independent, an applet
developed with the AIX 5L tools can be executed on any Java-enabled platform
(for example, Solaris).” Hoskins reference at p.226.
The Hoskins reference as cited above supports Apple’s proposed construction of
applet because it shows that persons of ordinary skill in the art in 2005 would
define an “applet” as an application which “operates independent of any operating
system.” Further, Hoskins notes that “applet execution is platform independent,”
again supporting Apple’s proposed construction that “applet” would have been
understood to be a computer program that runs independent of the operating
system. Java applications, including applets, are designed to execute within a
standardized execution environment. A Java-enabled device provides an
environment that translates the instructions of the Java applications, including
applets, to those of the host platform and operating system.
Further academic publications prior to 2005 support Apple’s proposed
construction of “applet” as including operating system independence. See, e.g.,
“Healy, M.R., Berger, D.E., Romero, V.L., Aberson, C.L., & Saw, A. Evaluating
JAVA applets for teaching on the Internet. Proceedings of the Scuola Superiore G.
Reis Romoli Advances in Infrastructure for e-Business, e-Education, e-Science,
and e-Medicine on the Internet International Conference. (2002) at p.1: “Java
applets are computer applications designed for the Internet. Applets are platformindependent, meaning that they can run on any operating system that has a Java
Virtual Machine to translate applet bytecodes into appropriate platformdependent instructions.” See also, e.g., Healy at pp. 1-5, available online at:
Operating system-independence was an understood characteristic of applets in the
art by 2005. As a further example, “Interactive Programming with Java Applets”
(2005) by Elizabeth Boese (“the Boese reference”) at p.8 notes that “Java is
platform independent because the source code is compiled to bytecode, and it’s
the bytecode that can be used on any platform (operating system).”
The Boese reference further discusses at p.9: “There are two different types of
Java programs that we can create: applets and applications. Applets are Java
programs embedded into a web page. Applications are stand-alone programs that
can be run by themselves.” The Boese reference thus supports Apple’s proposed
construction of “applet” as a program “running within an application module”
because applets, unlike applications, are not stand-alone programs and cannot run
by themselves. See also, Boese at Chapter 1, pp. 7-20 (available online at
Apple’s proposed construction of “applet” is further supported by Web
Technologies TCP/IP Architecture, and Java Programming” (2nd Ed., 2002) by
Godbole, A. S. and Kahate, A. (“the Godbole reference”) at p.524: “[b]y virtue of
the Java heritage, applets are platform independent.” (available online at
=gbs_ge_summary_r&cad=0#v=onepage&q&f=true). Thus, a person of ordinary
skill in the art in 2005 would understand “applets” to be platform-independent,
which necessarily includes “operating system-independent.”
Based on the above intrinsic and extrinsic evidence, it is my opinion that a person
of ordinary skill in the art in 2005 would have interpreted the term “applet” in the
‘711 patent claims according to Apple’s proposed construction as “an operating
system-independent computer program that runs within an application module.”
Samsung’s Proposed Construction of “Applet”
I have reviewed Samsung’s Patent Local Rule 4-2 Disclosures, including Exhibit
A at p.51. I understand that Samsung has proposed “applet” should be construed
as “a small application designed to run within another program.”
As support for its proposed construction, Samsung cites to the Wiley Electrical
and Electronics Engineering Dictionary (2004), which offers the same definition.
Samsung further cites to the single reference to “applet” in the ‘711 patent
specification at Col. 3:10-14, as discussed above in this declaration.
It is my opinion that a person of ordinary skill in the art in 2005 would not have
construed “applet” as broadly as proposed by Samsung. As an initial matter, the
‘711 patent specification and claims explicitly require a narrower reading in
accordance with Apple’s proposed construction. For example, as discussed above,
each of claims 1, 9, and 17 requires “an application module including at least one
applet.” Based on the claim language alone it is clear that the claimed applet must
run within an application module. Furthermore, the only reference to applet in the
specification (at Col. 3:10-12) states that “[a]pplication modules of the portable
terminal include at least one applet,” confirming that the claimed applets run
specifically within “application modules” and not simply any “program” in
general as proposed by Samsung. As discussed above, the file history of the ‘711
patent also includes numerous statements reinforcing that the claimed applet runs
within an application module.
It is further my opinion that “applets” would have been understood by a person of
ordinary skill in the art in 2005 to be operating system-independent as required by
Apple’s proposed construction. As shown above in numerous supporting
references, an “applet” was widely understood as a program that runs
independently of the host operating system and within the confines of a Web
browser or other application module.
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