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

Filing 87

Declaration of Patrick Zhang in Support of #86 MOTION for Preliminary Injunction filed byApple Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14, #15 Exhibit 15, #16 Exhibit 16, #17 Exhibit 17, #18 Exhibit 18, #19 Exhibit 19, #20 Exhibit 20, #21 Exhibit 21, #22 Exhibit 22, #23 Exhibit 23, #24 Exhibit 24, #25 Exhibit 25, #26 Exhibit 26, #27 Exhibit 27, #28 Exhibit 28, #29 Exhibit 29, #30 Exhibit 30, #31 Exhibit 31, #32 Exhibit 32, #33 Exhibit 33, #34 Exhibit 34, #35 Exhibit 35, #36 Exhibit 36, #37 Exhibit 37, #38 Exhibit 38, #39 Exhibit 39, #40 Exhibit 40, #41 Exhibit 41, #42 Exhibit 42, #43 Exhibit 43, #44 Exhibit 44, #45 Exhibit 45, #46 Exhibit 46, #47 Exhibit 47, #48 Exhibit 48, #49 Exhibit 49, #50 Exhibit 50, #51 Exhibit 51, #52 Exhibit 52)(Related document(s) #86 ) (Bartlett, Jason) (Filed on 7/1/2011)

Exhibit 40

Case 1:09-cv-00791-GMS Document 81

Filed 08/03/10 Page 1 of 21 PageID #: 3111

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
NOKIA CORPORATION,
Plaintiff,
v.
APPLE INC.,
Defendant.

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C.A. No. 09-791 (GMS)
APPLE INC.,
Counterclaim Plaintiff,
v.
NOKIA CORPORAnON and NOKIA INC.,
Counterclaim Defendants.

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NOKIA CORPORATION'S AND NOKIA INC.'S OPENING BRIEF
IN SUPPORT OF THEIR MOTION TO STAY
APPLE INC.'S PATENT CLAIMS PENDING REEXAMINATION

OF COUNSEL:
Patrick J. Flinn
Peter Kontio
John D. Haynes
Mark A. McCarty
Adam J. Biegel
ALSTON & BIRD LLP
1201 W. Peachtree Street
Atlanta, GA 30309-3424
[phone]
August 3,2010

MORRIS, NICHOLS, ARSHT & TUNNELL LLP
Jack B. Blumenfeld (#1014)
Rodger D. Smith II (#3778)
1201 North Market Street
P.O. Box 1347
Wilmington, DE 19899
[phone]
[e-mail]
[e-mail]

Attorneys for Nokia Corporation and
Nokia Inc.

Case 1:09-cv-00791-GMS Document 81

Filed 08/03/10 Page 9 of 21 PageID #: 3119

The PTO agreed that the newly cited references create a substantial new question of
patentability, and on July 14,2010, granted Nokia's request for reexamination (Koppelman Dec.,
Ex. 7).

u.s. Patent No. 7,469,381 ("the 381 patent") generally relates to scrolling
documents on a touch screen device beyond the edge of the document then snapping the
document back to the edge of the screen. Apple accuses Nokia's N900 handset of infringing this
patent. Nokia's reexamination request explains how the 381 patent would have been obvious in
view of an article describing the Glimpse system in combination with the other newly cited
references (Koppelman Dec., Ex. 8). The PTO agreed that the newly cited references create a
substantial new question of patentability, and on July 14,2010, granted Nokia's request for
reexamination (Koppelman Dec., Ex. 9).
U.S. Patent No. 5,555,369 ("the 369 patent") is directed to a graphically-based
software development tool for developing applications on one computer for use on another
computer that has a pen or pointer-based touch screen. Apple accuses the Carbide. c++ software
development tool of infringing this patent. Nokia's reexamination request explains how the 369
patent is anticipated by Visual Basic 2.0 (Koppelman Dec., Ex. 10). The PTO initially denied
the request on July 14,2010 (Koppelman Dec., Ex. 11). Nokia filed a petition for review of this
denial on July 23, 2010 based on clear errors by the examiner in denying the request (Koppelman
Dec., Ex. 12).

u.s. Patent No. 5,634,074 ("the 074 patent") generally relates to a method of
identifying an input/output device connected to a computer through a serial cable. Apple accuses
Nokia products having USB functionality, including the E71 handset, of infringing this patent.
Nokia's reexamination request explains how the 074 patent would have been obvious in view of
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Case 1:09-cv-00791-GMS Document 81

Filed 08/03/10 Page 20 of 21 PageID #: 3130

In Magna Donnelly, the court was faced with a very similar case where the
accused infringer filed requests for reexamination for all nine of the asserted patents. Magna

Donnelly, 2007 WL 772891, at * 1. Before the PTO had ruled on the requests, the accused
infringer filed a motion to stay. Id. at * 1. The court granted the motion to stay pending
reexamination because the patents were extremely technical and it was "statistically likely that
reexamination will result in at least some modification of the claims, even if no patents are
canceled." Id. at *4. The court noted that "both discovery and trial on the matter will be greatly
simplified by having the opinion and expertise of the PTO before the Court." Id. at *4. Nokia's
motion to stay all nine Apple patents should be granted for these and the additional reasons set
out in this brief.
CONCLUSION
For the foregoing reasons, Nokia respectfully requests that the Court grant its motion to
stay proceedings on Apple's patent infringement counterclaims pending reexamination of those
patents.
OF COUNSEL:
Patrick J. Flinn
Peter Kontio
John D. Haynes
Mark A. McCarty
Adam J. Biegel
ALSTON & BIRD LLP
1201 W. Peachtree Street
Atlanta, GA 30309-3424
[phone]

Ja B. Blumenfe d (#1014)
odger D. Smith II (#3778)
1201 North Market Street
P.O. Box 1347
Wilmington, DE 19899
[phone]
[e-mail]
[e-mail]

Attorneys for Nokia Corporation and
Nokia Inc.
August 3, 2010
3697528

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Case 1:09-cv-00791-GMS Document 81

Filed 08/03/10 Page 21 of 21 PageID #: 3131

CERTIFICATE OF SERVICE
I hereby certify that on August 3,2010, I caused the foregoing to be electronically
filed with the Clerk of the Court using CM/ECF, which will send notification of such filing to:
Richard L. Horwitz, Esquire
David E. Moore, Esquire
POTTER ANDERSON & CORROON LLP
I further certify that I caused to be served copies of the foregoing document on
August 3, 2010, upon the following in the manner indicated:
Richard L. Horwitz, Esquire
David E. Moore, Esquire
POTTER ANDERSON & CORROON LLP
Hercules Plaza - 6th Floor
1313 North Market Street
Wilmington, DE 19801

VIA ELECTRONIC MAIL

William F. Lee, Esquire
Mark D. Selwyn, Esquire
WILMERHALE
60 State Street
Boston, MA 02109

VIA ELECTRONIC MAIL

Kenneth H. Bridges, Esquire
Michael T. Pieja, Esquire
Brian C. Kwok, Esquire
WONG,CABELLO,LuTSCH,RuTHERFORD
& BRUCCULERI, LLP
540 Cowper Street
Palo Alto, CA 94301

VIA ELECTRONIC MAIL

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