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

Filing 628

RESPONSE to re 623 Order on Administrative Motion to File Under Seal, Apple Inc.s Responsive Claim Construction Brief, Refiled by Court Order (D.N. 623) by Apple Inc.(a California corporation). (Attachments: # 1 Declaration of Mark D. Selwyn in Support of Apple's Responsive 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, # 12 Exhibit K, # 13 Exhibit L, # 14 Exhibit M, # 15 Exhibit N, # 16 Exhibit O, # 17 Exhibit P, # 18 Exhibit Q, # 19 Exhibit R, # 20 Exhibit S)(Selwyn, Mark) (Filed on 1/13/2012)

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1 2 3 4 5 6 HAROLD J. MCELHINNY (CA SBN 66781) hmcelhinny@mofo.com MICHAEL A. JACOBS (CA SBN 111664) mjacobs@mofo.com RICHARD S.J. HUNG (CA SBN 197425) rhung@mofo.com MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: (415) 268-7000 Facsimile: (415) 268-7522 7 8 9 WILLIAM F. LEE (pro hac vice) william.lee@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, Massachusetts 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Telephone: (650) 858-6000 Facsimile: (650) 858-6100 Attorneys for Plaintiff and Counterclaim-Defendant Apple Inc. 10 11 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION 12 13 APPLE INC., a California corporation, 14 Plaintiff, 15 vs. Civil Action No. 11-CV-01846-LHK 16 17 18 19 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, 22 23 Hearing: Time: Place: Judge: January 20, 2012 10:00 a.m. Courtroom 8, 4th Floor Hon. Lucy H. Koh Defendants. 20 21 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 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, 24 Counterclaim-Plaintiffs, 25 26 27 v. APPLE INC., a California corporation, Counterclaim-Defendant. 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF Case No. 11-cv-01846 (LHK) 1 TABLE OF CONTENTS 2 I. INTRODUCTION ...............................................................................................................1 3 II. LEGAL STANDARD..........................................................................................................1 4 III. ARGUMENT.......................................................................................................................2 5 A. The Parties Have Agreed to Stipulate to the Alternate Construction for “Symbol” Proposed by Samsung .............................................................................2 B. The Term “Applet” Is “An Operating System Independent Computer Program That Runs Within An Application Module” .............................................2 6 7 8 1. Background on Samsung’s Alleged Invention in the ’711 Patent ...............2 9 2. “Applet” .......................................................................................................3 10 3. Samsung Narrowed The Claims To Distinguish The Alleged Invention Over Prior Art Systems Disclosing Mobile Phones That Played Music................................................................................................5 4. The “Applet” Must Run Within An “Application Module,” Not Merely A Program. ......................................................................................8 5. An “Applet” Is A Program That Runs Independently From The Operating System.........................................................................................8 11 12 13 14 15 a) Samsung’s Construction Ignores The File History..........................8 16 b) The Extrinsic Evidence Supports Apple’s Construction ...............10 17 IV. CONCLUSION..................................................................................................................13 18 19 20 21 22 23 24 25 26 27 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF i Case No. 11-cv-01846 (LHK) 1 TABLE OF AUTHORITIES 2 3 Elekta Instrument S.A. v. O.U.R. Sci. Int’l, 214 F.3d 1302 (Fed. Cir. 2000)................................................................................................... 9 4 5 Fromson v. Anitec Printing Plates, Inc., 132 F.3d 1437 (Fed. Cir. 1997)................................................................................................... 1 6 Gen. Am. Transp. Corp. v. Cryo-Trans, Inc., 93 F.3d 766 (Fed. Cir. 1996)....................................................................................................... 9 7 8 Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575 (Fed. Cir. 1996)................................................................................................... 13 9 Howmedica Osteonics Corp. v. Wright Medical Tech., Inc., 540 F.3d 1337 (Fed. Cir. 2008)................................................................................................. 13 10 11 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)............................................................................................... 1, 2 12 Texas Instruments Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165 (Fed. Cir. 1993)................................................................................................... 3 13 14 U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir. 1997)................................................................................................... 1 15 Unique Concepts, Inc. v. Brown, 939 F.2d 1558 (Fed. Cir. 1991)................................................................................................... 9 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF ii Case No. 11-cv-01846 (LHK) 1 I. 2 3 4 INTRODUCTION Pursuant to the Court’s Case Management Order (Dkt. 187), Apple Inc. (“Apple”) submits this responsive brief in support of its construction of two claim limitations: the term “symbol” in U.S. Patent No. 7,200,792 (“’792 Patent”) and the term “applet” in U.S. Patent No. 5 7,698,711 (“’711 Patent”). 6 With respect to “symbol,” the parties have agreed to stipulate to the alternate construction 7 8 of the term proposed by Samsung in its Opening Claim Construction Brief: “a modulated signal 9 representing a number of bits specified according to the modulation technique.” With respect to 10 “applet,” Apple’s construction should be adopted as the only one consistent with the prosecution 11 history and Samsung’s use of the term to distinguish the prior art. 12 13 II. LEGAL STANDARD Claim construction is necessary where there is a dispute between the parties or “when 14 15 necessary to explain what the patentee covered by the claims, for use in the determination of 16 infringement.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). 17 “When technical or scientific terms in the claims require definition or explanation or 18 understanding in the course of deciding whether the claims are infringed, it is the judicial duty to 19 do so.” Fromson v. Anitec Printing Plates, Inc., 132 F.3d 1437, 1441-42 (Fed. Cir. 1997), 20 abrogated on other grounds, 138 F.3d 1448 (Fed. Cir. 1998). 21 The words of a claim generally should be given their “ordinary and customary meaning,” 22 23 the meaning that they would have to a person skilled in the art. In determining the meaning of a 24 disputed claim term, the Court must consider the intrinsic evidence, including the specification 25 and the prosecution history, and may also consult extrinsic evidence, such as dictionaries and 26 treatises. Phillips v. AWH Corp., 415 F.3d 1303, 1315-17 (Fed. Cir. 2005). Of particular 27 relevance to the interpretation of “applet,” the “prosecution history can often inform the meaning 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 1 Case No. 11-cv-01846 (LHK) 1 of the claim language by demonstrating how the inventor understood the invention and whether 2 the inventor limited the invention in the course of prosecution, making the claim scope narrower 3 than it would otherwise be.” Id. at 1317. 4 III. ARGUMENT 5 A. 6 7 8 The Parties Have Agreed to Stipulate to the Alternate Construction for “Symbol” Proposed by Samsung Subsequent to the filing of Samsung’s Opening Claim Construction Brief, the parties agreed to stipulate to the alternate construction of the claim term “symbol” proposed by 9 Samsung: “a modulated signal representing a number of bits specified according to the 10 11 12 modulation technique.” Accordingly, Apple requests that the Court adopt this agreed-upon construction. B. 13 14 The Term “Applet” Is “An Operating System Independent Computer Program That Runs Within An Application Module” 1. 15 Background on Samsung’s Alleged Invention in the ’711 Patent The claims of the ’711 patent are generally directed to the ability to play music on a 16 17 18 mobile device while performing other tasks and require a software application that generates a “music background play object” with a background music playing function. Such a feature was 19 well known prior to August 30, 2005, the earliest possible priority date of the ’711 patent. 20 Indeed, several commercial embodiments of the alleged invention were already on the mobile 21 phone market before that date. See, e.g., Nokia 3300 device and “Extended User’s Guide,” 22 Nokia Corporation (2003) (Selwyn Dec. Ex A);1 Sony W800i device and User Guide (1st ed.), 23 Sony Ericsson Mobile Comm. AB (May 2005) (Selwyn Dec. Ex B); Sony K700 device and User 24 25 26 1 27 Citations to “Selwyn Dec. Ex. __” refer to the Declaration of Mark D. Selwyn in Support of Apple Inc.’s Responsive Claim Construction Brief and the exhibits thereto. 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 2 Case No. 11-cv-01846 (LHK) 1 Guide (1st ed.), Sony Ericsson Mobile Comm. AB (March 2004) (Selwyn Dec. Ex C).2 None of 2 these devices, each of which anticipates or renders obvious the claims of the ’711 patent as 3 issued, was before the patent examiner during prosecution. 4 Moreover, to have the claims of the ’711 patent allowed over the cited prior art, Samsung 5 6 added the phrase “an application module including at least one applet” during prosecution. Yet, 7 Samsung now advocates for a construction of the claim term “applet” that is so broad that it 8 would render the term effectively meaningless and, further, fail to distinguish over any of the 9 prior art, including the art that was before the Patent Office. Texas Instruments Inc. v. United 10 11 States Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (rejecting a patentee’s proffered claim construction because it “would render the disputed claim language mere 12 13 14 surplusage”). As such, Samsung’s proposed construction is contrary to the intrinsic evidence and should be rejected by the Court. 15 By contrast, Apple’s proposed construction is consistent with the intrinsic evidence and 16 the extrinsic evidence showing how those of skill in the art at the time of the alleged invention 17 would understand the term. 18 2. “Applet” 19 Claim Term (relevant claims) 20 21 22 “applet” (claims 1, 9, 17) Samsung’s Proposed Construction Apple’s Proposed Construction “A small application designed to run within another program.” “An operating system-independent computer program that runs within an application module.” 23 Key Dispute(s) Whether an “applet” is “operating systemindependent” and runs within “an application module.” 24 25 26 27 2 Apple cited these references in its Patent L.R. 3-3 Invalidity Contentions (served on October 7, 2011) at 39-40 and 92-93. 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 3 Case No. 11-cv-01846 (LHK) 1 2 3 The parties’ dispute turns on whether the required “applet” is satisfied by any small application running within another program or, instead, is limited to an operating systemindependent program that runs within “an application module.” 4 As is well understood in the art of computer programming, an operating system (e.g., 5 6 Microsoft Windows) manages computer hardware resources and provides common services for 7 application software (e.g., Microsoft Word). Applications are the programs that are used to 8 perform specific tasks by the user. See, e.g., J. Hoskins and R. Bluethman, Exploring IBM e- 9 server pSeries (12th ed., 2004) (“Hoskins”) at 189-90 (Selwyn Dec. Ex. D).3 10 11 Typically, some of the features and functioning of an application are provided by the operating system. Id. at 199-200. For example, the operating system might provide the basic 12 13 Windows functionality of a word processing program, leaving to the application the specifics of 14 how words will appear on the screen. However, it is also possible for a program to be 15 independent of the operating system; that is, for all its functionality to be derived from either the 16 application itself or some other source. See Declaration of Tony Givargis, Ph.D. in Support of 17 Apple’s Proposed Claim Construction for U.S. Patent No. 7,698,711 (“Givargis Declaration”), ¶ 18 20 (Selwyn Dec. Ex. E). “Java applets” are the best known example of this type of program. 19 Rather than relying on the operating system for basic functionality, the applet operates within 20 21 22 and draws on resources and services provided by a separate host application, for example, applications written in “Java” language as originally provided by Sun Microsystems. Id. at ¶ 21. Samsung’s proposed construction provides no definite limitation on the word “applet.” 23 24 Although stating that the applet must be “small” and “run within another program,” Samsung has 25 26 27 3 Apple cited the Hoskins reference in the parties’ Joint Claim Construction and Prehearing Statement Pursuant to Patent L.R. 4-3 (Dkt. 394-A) (“Joint Statement”) at 12, and it also was discussed at paragraphs 49-50 of the Givargis Declaration. 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 4 Case No. 11-cv-01846 (LHK) 1 not placed any boundaries on what these limitations would mean given the inherent ambiguities 2 of these terms themselves. For example, Samsung’s expert did not know how he or one of 3 ordinary skill in the art in 2005 would define “small” in the context of an applet. Deposition of 4 Joe Tipton Cole (“Cole Dep.”) at 57:22-58:7 (Selwyn Dec. Ex. F). Samsung instead seeks to 5 6 preserve its ability to argue that any program capable of playing music would satisfy the claimed 7 applet limitation. In contrast, Apple’s construction requires a specific type of application 8 program – one that is independent of the operating system and runs within an application module 9 – consistent with both the file history and how one of ordinary skill in the art would understand 10 11 12 13 14 15 16 the term “applet.” 3. Samsung Narrowed The Claims To Distinguish The Alleged Invention Over Prior Art Systems Disclosing Mobile Phones That Played Music The term “applet” appears in all three independent claims of the ’711 patent. Representative claim 1 is reproduced below: 1. A multi-tasking method in a pocket-sized mobile communication device including an MP3 playing capability, the multi-tasking method comprising: 17 generating a music background play object, wherein the music background play object includes an application module including at least one applet; 18 providing an interface for music play by the music background play object; 19 selecting an MP3 mode in the pocket-sized mobile communication device using the interface; 20 21 selecting and playing a music file in the pocket-sized mobile communication device in the MP3 mode; 22 switching the MP3 mode to a standby mode while the playing of the music file continues; 23 displaying an indication that the music file is being played in the standby mode; 24 selecting and performing at least one function of the pocket-sized mobile communication device from the standby mode while the playing of the music file continues; and 25 26 continuing to display the indication that the music file is being played while performing the selected function. 27 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 5 Case No. 11-cv-01846 (LHK) 1 ’711 patent, claim 1 (emphasis added) (Selwyn Dec. Ex. G). The term “applet” is also recited in 2 independent claims 9 and 17, which claim “a controller for generating a music background play 3 object, wherein the music background play object includes an application module including at 4 least one applet.” Id., claims 9, 17 (emphasis added). 5 The specification provides little assistance for the meaning of the term. The only 6 7 recitation of the term “applet” in the specification essentially mirrors the language of the claims 8 in referring to an application module including at least one applet: 9 FIG. 1 is a block diagram of a portable terminal according to an exemplary embodiment of the present invention, in which an MP3 music control processor is not included. Application modules of the portable terminal include at least one applet and each of the application modules, that is each menu of the portable terminal, independently performs multi-tasking. 10 11 12 Id. at 3:8-14 (emphasis added). 13 14 The prosecution history, in contrast, reveals that the word “applet” was specifically added to narrow the claims and thereby distinguish prior art mobile phones that could play music. 15 16 Specifically, throughout prosecution, the Patent Office maintained rejections of the claims as 17 obvious over U.S. Patent No. 7,123,945 (“Kokubo”) (Selwyn Dec. Ex. H) in view of additional 18 prior art. See ‘711 file history, 12/12/07 Office Action; 2/28/08 Office Action; 8/1/08 Office 19 Action; 1/26/09 Office Action; 5/27/09 Office Action; and 11/09/09 Office Action (Selwyn Dec. 20 Exs. I-N). The Kokubo patent discloses a portable phone that includes, among other things, a 21 program that permits the playing of music. Kokubo at 10:54-62 (Selwyn Dec. Ex. H). To obtain 22 allowance of its application, Samsung amended each independent claim to add the disputed 23 24 limitation: “wherein the music background play object includes an application module 25 including at least one applet.” ‘711 file history, 12/8/09 Amendment at 2-4 (Selwyn Dec. Ex. 26 O). 27 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 6 Case No. 11-cv-01846 (LHK) 1 2 3 In amending the claims, Samsung expressly referenced the suggestion of the Patent Office that the claims include a “limitation indicating that the music background play object includes an application module including at least one applet.” Id. at 7 (emphasis added). 4 Samsung then argued that “Kokubo makes no disclosure that the icon [denoting a specific task, 5 6 such as the playing of music] includes an application module, or that the application module 7 includes at least one applet as instantly claimed.” Id. at 10. After these amendments were made, 8 the Patent Office withdrew the rejections and issued a Notice of Allowance. ‘711 file history, 9 1/13/10 Notice of Allowance (Selwyn Dec. Ex. P). Thus, it is clear that during prosecution 10 11 Samsung added the “applet” limitation to distinguish the ’711 patent claims from the Kokubo patent, a fact admitted by Samsung’s expert. See Declaration of Joe Tipton Cole (“Cole 12 13 Declaration”), ¶¶ 33-34 (“The claim language that includes the term ‘applet’ was added at the 14 request of the patent examiner… As a result of this request, the claims were amended to include 15 the language suggest [sic] by the patent examiner. The language added to claims 1, 9, and 17 16 was ‘wherein the music background play object includes an application module including at least 17 one applet.’” (citations to the file history omitted)).4 See also ‘711 file history, 12/16/09 18 Examiner’s Interview Summary (Continuation Sheet) (examiner noting her “suggest[ion] to 19 further include the definition of ‘a music background play object’ as ‘wherein the music 20 21 background play objects including an application module includes at least one applet’ as 22 argued during the interview to distinct [sic] from the icon as taught by KOKUBO”) (Selwyn 23 Dec. Ex. Q). 24 25 26 27 4 The Cole Declaration is attached as Ex. 4 to the Declaration of Brett Arnold in Support of Samsung’s Administrative Motion to File Documents Under Seal (Dkt. 468-6). 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 7 Case No. 11-cv-01846 (LHK) 1 4. The “Applet” Must Run Within An “Application Module,” Not Merely A Program. 2 3 The language of the claims, the specification and the prosecution history mandate the 4 portion of Apple’s proposed construction stating that the applet runs “within an application 5 module.” Throughout the intrinsic evidence, there is repeated reference to an “application 6 module including at least one applet.” ‘711 file history, 12/16/09 Examiner’s Interview 7 Summary (Continuation Sheet) (Selwyn Dec. Ex. Q); ‘711 file history, 12/8/09 Amendment at 6- 8 10 (Selwyn Dec. Ex. O). In contrast, neither the specification nor the file history mentions an 9 applet running within “another program,” more generally, as in Samsung’s proposed 10 11 12 13 14 15 construction. Therefore, only Apple’s construction is consistent with the intrinsic evidence. 5. An “Applet” Is A Program That Runs Independently From The Operating System. a) Samsung’s Construction Ignores The File History Samsung criticizes Apple’s construction for including the phrase “operating system independent” when “the specification does not even use the term operating system.” Samsung’s 16 17 Opening Claim Construction Brief (Dkt. 466-1) (“Samsung Br.”) at 14. At the same time, 18 Samsung curiously suggests that the specification’s lone statement that “[a]pplication modules of 19 the portable terminal include at least one applet” (’711 patent at 3:10-12 (Selwyn Dec. Ex. G)) 20 somehow “closely tracks Samsung’s proposed construction,” despite the fact that Samsung’s 21 construction adds the word “small” and substitutes “program” for “application module,” both 22 without explanation. Samsung Br. at 14. In truth, other than making clear that the applet runs 23 within an application module, not just any program, the specification provides little help to either 24 25 party in construing the claim. 26 The prosecution history of the ’711 patent, on the other hand, confirms that, at a 27 minimum, the term “applet” cannot be broadly construed as proposed by Samsung. The 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 8 Case No. 11-cv-01846 (LHK) 1 examiner correctly found that the prior art before the Patent Office taught how to “generate a 2 music background play object.” ‘711 file history, 11/9/09 Office Action at p. 3 (Selwyn Dec. 3 Ex. N). The term “applet” must be clearly limited as proposed by Apple, or it would do nothing 4 to distinguish over the cited prior art. 5 6 Apple’s interpretation of the claim language comports with the claim construction maxim 7 that “[a]ll the limitations of a claim must be considered meaningful.” Unique Concepts, Inc. v. 8 Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991) (citing Perkin-Elmer Corp. v. Westinghouse Elec. 9 Corp., 822 F.2d 1528, 1532-33 (Fed. Cir. 1987)). Indeed, Samsung appears poised to argue that 10 “applet” is so broad as to make the limitation meaningless. Construing “applet” as proposed by 11 Samsung must be rejected because it “would render meaningless [an] express claim limitation.” 12 13 14 Unique Concepts, 939 F.2d at 1563. Prior to amendment, the claims required “generating a music background play object.” 15 However, according to the ’711 patent inventor Dr. Jeong, using Samsung’s construction, it 16 would not be possible to generate a “music background play object” with an application that 17 does not include “at least one applet.” See Deposition of Moon-Sang Jeong (“Jeong Dep.”) at 18 44:21-45:16 (testifying that every application would include at least one applet) (Selwyn Dec. 19 Ex. R). But the Patent Office only allowed the ’711 patent to issue after Samsung added this 20 21 very limitation. See supra Part III.B.3. Consistent with the file history, the word “applet” must 22 therefore be construed in a manner that gives meaning to this limitation of the claims. See Elekta 23 Instrument S.A. v. O.U.R. Sci. Int’l, 214 F.3d 1302 (Fed. Cir. 2000) (construing claim to avoid 24 rendering the 30 degree claim limitation superfluous); Gen. Am. Transp. Corp. v. Cryo-Trans, 25 Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (reversing district court’s construction where it 26 “obliterated” claim limitation “each of”). 27 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 9 Case No. 11-cv-01846 (LHK) b) 1 2 3 4 The Extrinsic Evidence Supports Apple’s Construction In support of its construction, Apple has submitted the Declaration of Professor Tony Givargis of the University of California, Irvine, who explained that the plain meaning of “applet” to one of ordinary skill in the art in 2005 is consistent with Apple’s construction, including both 5 the operating system independence and running within an application module aspects of the 6 7 construction. Givargis Declaration, ¶ 32 (Selwyn Dec. Ex. E). Professor Givargis cites 8 numerous publications supporting the proposition that applets are understood to be commonly 9 Java-based programs that are executed within another application, such as a web browser, 10 independent of the platform or operating system. Id., ¶¶ 42-55. The publications address the 11 ability of applets to be widely distributed to diverse users, for example, over the Internet, and the 12 security advantage of having the applets execute within another application. Id. Professor 13 14 Givargis also explains, with support from the literature, how applets are understood to be 15 translated by an interpreter, allowing them to be executed within a host application independent 16 of the operating system. Id., ¶¶ 45-46. Even Samsung’s expert agreed that one skilled in the art 17 in 2005 would have understood that applets are commonly portable between operating systems, 18 and that Java applets are almost always operating system independent. See Cole Dep. at 69:6- 19 71:8 (Selwyn Dec. Ex. F). Furthermore, Mr. Cole was unwilling to adopt the entirety of 20 Samsung’s construction. He admitted that “small” was not an absolute requirement of an applet 21 22 and testified that he had no opinion as to whether “small” should properly be included in the 23 definition of applet. Id. at 57:9-21; 95:13-96:3. Likewise, consistent with Apple’s proposed 24 construction, Mr. Cole agreed that it would be more precise to state that an applet runs within an 25 “application module” rather than within a “program.” Id. at 65:3-12. Thus, the extrinsic 26 evidence (including the testimony of Samsung’s own expert) squarely supports Apple’s 27 construction. 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 10 Case No. 11-cv-01846 (LHK) 1 2 3 4 In response, Samsung cites to various pieces of extrinsic evidence that allegedly show that “there were many different types of applets written in many different types of languages [besides Java] and that those applets may be operating system dependent or independent.” Samsung Br. at 15.5 But, in fact, as Apple’s expert explained, with one unusual exception, every 5 6 example cited by Samsung supports the “operating system-independent” nature of an 7 “applet.” See Deposition of Tony Givargis (“Givargis Dep.”) at 52:3-24; 82:16-84:6, 96:3-8; 8 97:8-14 (testifying that AppleScript applets, Linux applets, Ruby applets, Flash applets, Visual 9 basic applets, and Python applets are all based on an interpreted language and, like Java applets, 10 are portable across Operating Systems) (Selwyn Dec. Ex. S).6 11 Professor Givargis further explained that the only arguable counter-example— 12 13 Microsoft’s control panel applet—was an outlier that did not represent the common 14 understanding of the term “applet” to a person of ordinary skill in the art at the relevant time and 15 would not be covered by Samsung’s own claim interpretation. Id. at 31:16-25; 32:9-14. In 2005, 16 “applets” were almost always considered to be interpreted programs running within another 17 application. In contrast, the Microsoft control panel applets were utilities that ran directly on the 18 processor. Id. at 29:20-30:16. The unusual nature of the Microsoft control panel applets is 19 underscored by the fact that they would not even fall within Samsung’s proposed construction of 20 5 21 22 23 24 25 26 27 While Samsung’s expert discusses over twenty pieces of extrinsic evidence in his declaration, Samsung only disclosed one piece of extrinsic evidence in the parties' Patent L.R. 4-3 claim construction statement. See Joint Statement (Dkt. 394-A) at 12 (designating only a definition in Wiley Electrical and Electronics Engineering Dictionary, 2004, and column 3, lines 10-14, of the ‘711 patent as support for Samsung's proposed construction). As set forth in Apple’s Motion to Strike, the Court should reject any attempt by Samsung to rely upon evidence in support of its proposed construction that it did not timely disclose in accordance with the Patent Local Rules. See Apple’s Motion to Strike Evidence Not Disclosed As Required By Patent Local Rule 4-3(b) (Dkt 532-1). 6 Samsung also cites the testimony by Professor Givargis that non-Java applets existed in 2005. Samsung Br. at 15. But this is not disputed. As Professor Givargis explained, Java is not the only example of an Operating System-Independent environment in programming language paradigm. See Givargis Dep. at 85:3-8 (Selwyn Dec. Ex. S). 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 11 Case No. 11-cv-01846 (LHK) 1 the term “applet” because, as confirmed by Samsung’s expert, they do not “run within another 2 program.” Cole Dep. at 89:20-91:7 (unable to identify a Microsoft control panel applet that 3 “runs within another program” as required by Samsung’s construction) (Selwyn Dec. Ex. F). 4 Samsung further attempts to support its improperly broad proposed construction by 5 6 pointing to contemporaneous notes and testimony from Dr. Jeong, the named inventor of the 7 ’711 patent. Samsung Br. at 15. Dr. Jeong testified that in the 2005 time frame, he participated 8 in developing the Qualcomm platform, which used only Qualcomm chipsets, and that the term 9 “applet” was used in that context to describe applications developed in the chipsets. Jeong Dep. 10 at 35:4-36:3 (Selwyn Dec. Ex. R). According to Samsung, Dr. Jeong “was using ‘applet’ in an 11 operating system-dependent fashion based on his development of the ’711 invention in the 12 13 context of his development of the Qualcomm platform. . . . ” Samsung Br. at 15. Aside from Dr. Jeong’s testimony, however, Samsung has provided no evidence of any 14 15 use of the term “applet” within the context of the Qualcomm platform. Indeed, Samsung has 16 pointed to no evidence suggesting that a person of ordinary skill in the art would even have been 17 aware of “applets” in the context of Qualcomm chipsets. Samsung’s own expert admitted he had 18 not heard of applets in the context of Qualcomm chipsets in 2005 – or at all outside of this 19 litigation. Cole Dep. at 53:8-11; 97:9-17 (Selwyn Dec. Ex. F). As such, there is no evidence that 20 21 22 the idiosyncratic use of the term now proposed by Samsung was even known to a person of skill in the art in the 2005 (or any) time frame.7 23 24 25 26 27 7 Contrary to Samsung’s assertion, Professor Givargis did not “admit[] that the applets that Mr. Jeong was working with . . . were system dependent.” Samsung Br. at 15-16. Instead, Professor Givargis was stating his understanding of Dr. Jeong’s testimony in which Dr. Jeong claimed “applets” in the context of the Qualcomm platform were Operating System-dependent. See Givargis Dep. at 40:24-42:17 (further testifying that the term “applet” within that context was unusual and inconsistent with the common understanding of the term); 46:23-48:5 (Selwyn Dec. Ex S). 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 12 Case No. 11-cv-01846 (LHK) 1 2 3 In short, Samsung would have the Court ignore the common understanding of the term “applet” in the 2005 timeframe because the named inventor allegedly had a subjective (but completely undisclosed) understanding of the term based on the unique (again undisclosed) 4 platform on which he was working. This is not proper. See Howmedica Osteonics Corp. v. 5 6 Wright Medical Tech., Inc., 540 F.3d 1337, 1346 (Fed. Cir. 2008) (inventor testimony “cannot be 7 relied on to change the meaning of the claims”); Hoechst Celanese Corp. v. BP Chems. Ltd., 78 8 F.3d 1575, 1580 (Fed. Cir. 1996) (“Markman requires [the court] to give no deference to the 9 testimony of the inventor about the meaning of the claims”).8 The most relevant testimony from 10 Dr. Jeong is not his description of the undisclosed Qualcomm platform, but his concession that 11 he was aware of no other instance in which an “applet” was not operating system independent. 12 13 Jeong Dep. at 36:4-37:8 (Selwyn Dec. Ex. R). In sum, the weight of the extrinsic evidence clearly supports Apple’s construction. 14 15 Samsung’s extrinsic evidence is, at best, an unsuccessful attempt to undermine Apple’s 16 construction, while providing no affirmative support for Samsung’s own construction. Apple’s 17 construction should therefore be adopted by the Court. 18 IV. 19 CONCLUSION For the foregoing reasons, Apple requests that the Court adopt its proposed construction 20 of “applet” and the agreed-upon construction of “symbol.” 21 22 23 24 25 26 27 8 In addition to the inventor notes being legally irrelevant because they were not included in the ‘711 patent or otherwise accessible to one of ordinary skill in the art, Samsung’s expert admitted that he could not tell from that single page of inventor notes whether any applets were operating system independent or not. Cole Dep. at 98:19-99:13 (Selwyn Dec. Ex. F). 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 13 Case No. 11-cv-01846 (LHK) 1 Dated: December 22, 2011 /s/ Mark D. Selwyn Mark D. Selwyn (SBN 244180) (mark.selwyn@wilmerhale.com) WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Telephone: (650) 858-6000 Facsimile: (650) 858-6100 2 3 4 5 6 William F. Lee (admitted pro hac vice) (william.lee@wilmerhale.com) WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, Massachusetts 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 7 8 9 10 Harold J. McElhinny (SBN 66781) (HMcElhinny@mofo.com) Michael A. Jacobs (SBN 111664) (MJacobs@mofo.com) Richard S.J. Hung (CA SBN 197425) rhung@mofo.com MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105 Telephone: ( 415) 268-7000 Facsimile: (415) 268-7522 11 12 13 14 15 16 17 Attorneys for Plaintiff and Counterclaim-Defendant Apple Inc. 18 19 20 21 22 23 24 25 26 27 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 14 Case No. 11-cv-01846 (LHK) 1 2 3 4 5 CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the above and foregoing document has been served on December 22, 2011 to all counsel of record who are deemed to have consented to electronic service via the Court’s CM/ECF system per Civil Local Rule 5.4. Any other counsel of record will be served by electronic mail, facsimile and/or overnight delivery. 6 7 /s/ Mark. D Selwyn Mark D. Selwyn 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF 15 Case No. 11-cv-01846 (LHK)

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