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

Filing 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 filed by Apple Inc.(a California corporation). (Attachments: #1 Declaration of Erica Tierney in Support of Apple's Administrative Motion to File Documents Under Seal, #2 Declaration of Mark D. Selwyn in Support of Apple's Administrative Motion to File Documents Under Seal, #3 Proposed Order Granting Apple Inc.'s Administrative Motion to File Documents Under Seal, #4 Plaintiff and Counterclaim-Defendant Apple Inc.'s Notice of Motion and 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, #5 Declaration of Mark D. Selwyn in Support of 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, #6 Exhibit 1, #7 Exhibit 2, #8 Exhibit 3, #9 Exhibit 4, #10 Exhibit 5, #11 Exhibit 6, #12 Exhibit 7, #13 Exhibit 8, #14 Exhibit 9, #15 Exhibit 10, #16 Exhibit 11, #17 Exhibit 12, #18 Exhibit 13, #19 Exhibit 14, #20 Exhibit 15, #21 Exhibit 16, #22 Exhibit 17, #23 Exhibit 18, #24 Exhibit 19, #25 Exhibit 20, #26 Exhibit 21, #27 Exhibit 22, #28 Exhibit 23, #29 Exhibit 24, #30 Exhibit 25, #31 Exhibit 26, #32 [Proposed] Order Granting Apple Inc.'s Motion for Partial Summary Judgment)(Selwyn, Mark) (Filed on 5/17/2012) Modified on 5/21/2012 attachment #1 and 2 sealed pursuant to General Order No. 62 (dhm, COURT STAFF).

EXHIBIT 7
(Filed Under Seal)

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
APPLE INC., a California corporation,
Plaintiff,
v.
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,
Defendants.
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,
Counterclaim-Plaintiffs,
v.
APPLE INC., a California corporation,
Counterclaim-Defendant.

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Civil Action No. 11-CV-01846-LHK
EXPERT REPORT OF WAYNE
STARK REGARDING NONINFRINGEMENT OF US PATENT
NUMBER 7,362,867

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I.

Introduction
A.

Prior Reports

1. I previously submitted a report on March 22, 2012, entitled “Expert Report of Dr. Wayne
Stark Regarding Invalidity of U.S. Patent No. 7,362,867” (the “Stark Invalidity Report”).
2. I have reviewed the report dated March 22, 2012, entitled “Expert Report of Richard D.
Wesel, Ph.D. Regarding Infringement of U.S. Patent No. 7,362,867” (the “Wesel
Opening Report”).
3. I have also reviewed the report dated March 25, 2012, entitled “Samsung’s First
Supplement to the Expert Report of Richard D. Wesel, Ph.D. Regarding Infringement of
U.S. Patent No. 7,362,867” (the “Wesel Supplemental Report”).
4. I have received the report dated April 13, 2012, entitled “Samsung’s Second Supplement
to the Expert Report of Richard D. Wesel, Ph.D. Regarding Infringement of U.S. Patent
No. 7,362,867. However, because this report was submitted only three days ago, I have
not had adequate time to review it. Accordingly, I reserve the right to supplement the
material contained herein in order to address the second supplemental report submitted by
Dr. Wesel.
B.

Summary of Report

5. This report responds to the Wesel Opening and Supplemental Reports. As explained
below, in my opinion the accused products do not infringe the asserted claims of the ‘867
patent.
6. I expect to testify at trial about the matters set forth in this report, if asked about these
matters by the Court or by the parties’ attorneys.
C.

Understanding of the Law

7. I am not an attorney. I have been informed about the legal standards for patent
infringement by counsel for Apple.
8. I have been informed and understand that analyzing whether a product or process
infringes a patent is a two-step process. First, the patent claims are construed by the
Court. Second, the construed claims are compared to the allegedly infringing product or
process to determine whether the product or process falls within the scope of the claims.
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9. I have been informed and understand that, if the Court has not construed a claim term, the
term should be given the ordinary and customary meaning that a person of ordinary skill
in the art would give to the term. I have further been informed and understand that terms
should be given the same meaning when used more than once in the same claim or when
used in multiple claims of the same patent.
10. I have been informed and understand that the party asserting patent infringement bears
the burden of proof.
1.

Literal Infringement And Infringement Under The Doctrine Of
Equivalents

11. I have been informed and understand that a patent claim is “literally” infringed when an
accused product or process includes each and every element of a patent claim. I have
been informed and understand that the person asserting literal patent infringement has the
burden of proving that each and every element of the patent claim may be found in the
accused product or process.
12. I have been informed and understand that statements made during prosecution, including
arguments intended to distinguish the pending claims from the prior art, may limit the
scope of the issued claims.
13. If a patent claim is not literally infringed, I have been informed and understand that a
patent claim may also be infringed under the doctrine of equivalents. For example, I
have been informed and understand that if an accused product does not have a structure
or step required by a patent claim, then that product cannot literally infringe. However, if
the accused product has a structure or step that is “insubstantially different” from what is
required by the patent claim, then the product may nevertheless infringe the patent under
the doctrine of equivalents. I have been informed and understand that one test to
determine whether an accused product and patent claim are “insubstantially different” is
to evaluate whether the structure or step in the accused product performs substantially the
same function, in substantially the same way, and achieves substantially the same result
as the structure or step in the patent claim.
14. I have been informed and understand that arguments made about the scope of a patent
during its prosecution may limit the range of equivalents to a patent claim. For example,
I have been informed and understand that, during the prosecution of a patent application,
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an applicant may make amendments to narrow the scope of a patent claim. I understand
that this creates a presumption that the patent would not have been awarded unless the
claim was narrowed, and therefore the range of “equivalent” structures is likewise
narrowed. I have been informed and understand that this presumption can be rebutted
under limited circumstances, such as if the amendment only had a tangential relation to
the equivalent now accused or if the equivalent now accused could not have been
foreseen at the time of the amendment.
15. I have been informed and understand that representations made to foreign patent offices
are also relevant evidence as to whether an allegedly infringing equivalent is
insubstantially different than a patent claim.
16. I have been informed and understand that the doctrine of equivalents may not be used to
broaden the scope of a patent to encompass products or processes which are the same as
what was in the prior art (i.e., existed before the alleged invention of the patent was
conceived), and/or would have been obvious given the products or processes that existed
at the time of the patent application.
17. I have been informed and understand that each patent claim does not need to cover all the
embodiments disclosed within a patent, and that different claims may be drafted to cover
different embodiments. However, I have further been informed and understand that if a
patent discloses an embodiment that is not claimed in the patent, then the unclaimed
embodiment cannot be infringed, either literally or under the doctrine of equivalents.
18. I have been informed and understand that a “dependent” claim includes all of the
requirements of an “independent” claim, plus additional requirements of its own. As a
result, if an independent claim is not infringed, then the dependent claims are not
infringed either. On the other hand, if an independent claim is infringed, a separate
finding must still be made as to whether the additional requirements of the dependent
claims have been met.
2.

Direct Infringement

19. I have been informed and understand that a patent claim is directly infringed when a
person makes, uses, sells, or offers to sell in the United States, or imports into the United
States, a product or process that includes each element of a patent claim, either literally or
under the doctrine of equivalents.
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3.

Indirect Infringement

20. I have been informed and understand that a party may be liable for indirectly infringing a
patent claim, and that the person asserting indirect infringement has the burden of proof.
I have been informed and understand that there are two types of indirect infringement:
contributory infringement and inducing infringement. I have been informed and
understand that both types of indirect infringement require proof of direct infringement.
21. I have been informed and understand that a party attempting to prove contributory
infringement must show that a party has contributed to another’s direct infringement of
the patent. The contributory infringer must have supplied an important component of the
infringing product with knowledge that the component was especially made or adapted
for use to infringe the patent. I understand that if the component supplied to the direct
infringer had other substantial, non-infringing uses, then there was no contributory
infringement.
22. I have been informed and understand that a party attempting to prove inducement of
patent infringement must show that a party induced another to commit direct
infringement. The party who allegedly induced the infringement must have been aware
of the patent and must have believed that his or her actions would encourage
infringement.
23. I have been informed and understand that it is not enough that the accused inducer was
indifferent to the possibility that it might be encouraging patent infringement or that the
accused inducer took a substantial and unjustified risk that it would encourage patent
infringement. I have further been informed and understand that a party that believes it is
highly probable that its actions will encourage patent infringement cannot avoid liability
by being “willfully blind” to the existence of the patent or to the fact that its actions will
encourage patent infringement.
24. I have been informed and understand that if the party accused of inducing patent
infringement did not know of the patent or believed that the patent was invalid, then the
accused inducer is not liable. Similarly, I have further been informed and understand that
if the accused inducer believed the acts it was inducing were non-infringing, then it is not
liable.

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II.

Operation of the Accused Products
A.

Scrambling code generation in the X-GOLD 608 and X-GOLD 616 chipsets

25

26.

27.

1

The Wesel Opening Report also accuses the iPhone 4S of infringing because it accuses a baseband processor made
by Qualcomm. However, I have been informed that Judge Koh has excluded the iPhone 4S from this case.
Accordingly, I have not addressed Prof. Wesel’s accusations regarding the iPhone 4S or Qualcomm’s baseband
chip.

2

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28.

29.

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30.

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31

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32. Each scrambling code generator creates two segments of m-sequences x and y using two
shift registers of the type shown in Figure 10, reproduced below.

3GPP TS 25.213 v6.0.0 at 23.
33. As specified in the 25.213 standard, the X-GOLD 608 and 616 are able to generate both
primary and secondary scrambling codes. For example, 25.213 states:

5

Prof. Wesel apparently accuses devices compliant with either version 5.0.0 or 6.0.0 of 25.213 of infringing. In
this report, I have cited to version 6.0.0 of the standard. As regards the ‘867 patent, those two versions of the
standard are not materially different.

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3GPP TS 25.213 v6.0.0 at 22.
34. The 25.213 standard also includes a mathematical definition of the scrambling codes
generated by the X-GOLD 616 and 608. It states:

3GPP TS 25.213 v6.0.0 at 23.6
35. As described above, the nth scrambling code Sdl,n is a complex code containing a real part
Zn(i) mod (218-1), and an imaginary part Zn(i+131072) mod (218-1). The real and
imaginary parts of the nth scrambling code are sequences Zn(i) and Zn(i+131072),
respectively, each of which comprises values +1 and -1 (i.e., they are {1,-1}-valued
sequences).7
36. These {+1,-1}-valued sequences that form the real and imaginary portions of a
scrambling code are each constructed from portions of a{0,1}-valued Gold code zn(i), as
described on p. 23 of 25.213 v6.0.0, shown above.
III.

There is no infringement of claims 25-27 and 30
37. As explained below, the accused products do not infringe the asserted claims of the ’867
patent, either literally or under the doctrine of equivalents.

6

Prof. Wesel cites to this same portion of the 25.213 standard. See, e.g., Wesel Opening Report at ¶84.
In this report, I will use the term “{1,0}-valued” to describe sequences that comprise 0s and 1s, and I will use the
term “{+1,-1}-valued” to describe sequences that comprise +1s and -1s.

7

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38.

39.

40. I have reviewed the source code cited by Dr. Wesel in his Opening Report and First
Supplemental Report, and the code is consistent with the noninfringement arguments I
describe herein. I have not yet had adequate time to review the Second Supplemental
Report of Dr. Wesel, which was submitted by Samsung only three days ago, but I have
no reason to believe that any of the source code cited in that report is inconsistent with
the arguments described herein.
A.

The Asserted Claims Require the Scrambling Codes to Be Gold Codes
1.

The Claims

41. Claim 25, the only asserted independent claim, requires the primary scrambling code to
be a Gold code. Claim 25 recites:
…at least one adder for generating a ((K-1)*M+K)th Gold code as
a K th primary scrambling code by adding a (((K-1)*M+K)-1)times shifted first m-sequence and the second m-sequence, wherein
K is a natural number and M is a total number of secondary
scrambling codes per one primary scrambling code.
Claim 25 of the ‘867 patent (emphasis added).
42. That language of claim 25 requires the K th primary scrambling code to be a Gold code.
43. Similarly, claim 26 recites:

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26. The apparatus of claim 25, wherein the secondary scrambling
codes of the Kth primary scrambling codes are the ((K1)*M+K+1)th through (K*M+K)th Gold codes.
Claim 26 of the ‘867 patent (emphasis added).
44. Once again, that claim language requires the secondary scrambling codes to be Gold
codes.
2.

The Specification

45. The specification of the ‘867 patent also explains that the scrambling codes of the alleged
invention are Gold codes. It recites:
A gold code used herein as a scrambling code is generated through
binary adding of two distinct m-sequences.
‘867 patent at 6:23-24 (emphasis added).
First, when a gold sequence is selected from 218-1 length gold
sequences, the first 38400 chips are used as a primary scrambling
code…
‘867 patent at 6:64-7:32 (emphasis added).
Referring to FIG. 9, when M secondary scrambling codes
correspond to one primary scrambling code, the first (M+2)-th,
(2M+3)-th, . . . , ((K-1)*M+K)-th, . . . , and (511M+512)-th gold
codes are used as primary scrambling codes. The secondary
scrambling codes corresponding to the ((K-1)*M+K)-th gold code
used as the (K)-th primary scrambling code are composed of M
gold codes8, i.e., ((K-1)*M+(K+1)), ((K-1)*M+(K+2)) . . . , and
(K*M+K)-th gold codes.
‘867 patent at 10:40-48 (emphasis added).
46. The final quote above makes it particularly clear that the scrambling codes are Gold
codes.
3.

The File History

8
In this and similar quotes, the ‘867 patent and file history clarify that each of the M secondary scrambling codes is
a single Gold code. In the ‘867 patent, there is a one-to-one correspondence between scrambling codes and Gold
codes.

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47. During prosecution of the ‘867 patent, Samsung confirmed that the claimed scrambling
codes are Gold codes. For example, Samsung stated:
Regarding new [pending] Claim 599, new Claim 59 recites, “an
apparatus for generating scrambling codes in mobile
communication system having a scrambling code generator”, “a
first m-sequence generator to generate a first m-sequence”, and “a
second m-sequence generator to generate a second m-sequence”.
In this context, the description on page 7 discloses in lines 14 and
15 that a Gold code used herein as a scrambling code is generated
through binary adding of two distinct m-sequences.
Moreover, new Claim 59 recites, “at least one adder for generating
a ((K-1)*M+K)-th gold code as a K-th primary scrambling code by
adding a ((K-1)*M+K-1)-times shifted first m-sequence and the
second m-sequence”. The description on page 12, lines 24 to 26
discloses, referring to Fig. 9, that when M secondary scrambling
codes correspond to one primary scrambling code, the first,
(M+2)'th, (2M+3)'th, ... , ((K-l)*M+K),th, …, and (511M+512)'th
Gold codes are used as primary scrambling codes. The
description also discloses on page 7, lines 23 to 25, that for the
purpose of the present invention, the sum of the m-sequence m1(t)
cyclically shifted time and the m-sequence m2(t) will be
designated as a Gold code g, that is, g (t) = m1(t + )+m2(t).
Finally, new Claim 59 recites, “wherein K is a natural number and
M is a total number of secondary scrambling codes per one
primary scrambling code”. The description on page 12, lines 26 to
29 discloses that the secondary scrambling codes corresponding
to the (((K-1)*M+K)'th Gold code used as the (K)'th primary
scrambling code are composed of M Gold codes, i.e.,
((K1)*M+(K+1)), ((K-1)*M+(K+2))..., and (K*M+K)'th Gold
codes.
April 28, 2006, response at 15 (emphasis added).
The present invention discloses:
1) generating a primary scrambling code and secondary scrambling
codes with predetermined 2 m sequences;
2) using the sum of the first m sequence shifted (L-l) times and the
first m sequence as Lth gold code; and
3) using ((K-l)*M+K)-th gold code as a K-th primary scrambling
code (See claims 54, 59, and 65), and using ((K-l)*M+K+l)-

9

Pending claim 59 corresponds to issued claim 25.

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(K*M+K)-th gold codes as secondary scrambling code corresponding
to the K-th primary scrambling code (e.g., claim 54).

December 11, 2006, response at 16 (emphasis original).
The invention as recited in Claim 59 relates to an apparatus for
generating scrambling codes in mobile communication system
having a scrambling code generator. The apparatus includes a first
m-sequence generator to generate a first m-sequence.
(Specification at page 1, line 18 to page 20, line 23, FIG. 10). The
apparatus further includes a second m-sequence generator to
generate a second m-sequence. (Specification at page 19, line 18
to page 20, line 23, FIG. 10). The apparatus still further includes
at least one adder for generating a ((K−1)*M+K)th Gold code as a
Kth primary scrambling code by adding a ((K-1)*M+K-1)-times
shifted first m-sequence and the second m-sequence.
(Specification at page 18, line 25 to page 19, line 18, and page 11,
lines 6-15). Finally, in the apparatus K is a natural number and M
is a total number of secondary scrambling codes per one primary
scrambling code. (Specification at page 18, line 25 to page 19, line
18).
September 13, 2007, appeal brief at 4 (emphasis added).
Claim 59 recites an apparatus for generating scrambling codes in
mobile communication system having a scrambling code generator.
The apparatus includes a first m-sequence generator to generate a
first m-sequence. The apparatus further includes a second msequence generator to generate a second m-sequence. The
apparatus still further includes at least one adder for generating a
((K−l)*M+K)th Gold code as a Kth primary scrambling code by
adding a ((K-l)*M+K-I)-times shifted first m-sequence and the
second m-sequence. Finally, in the apparatus K is a natural
number and M is a total number of secondary scrambling codes per
one primary scrambling code.
September 13, 2007, appeal brief at 20 (emphasis added).
Thus in Claim 59 a K-th primary scrambling code is generated. A
specific gold code is used as the K-th primary scrambling code.
The specific gold code is the ((K-l)*M+K)-th gold code. The ((Kl)*M+Kth gold code is generated by adding a ((K-l)*M+K-l)-times
shifted first m-sequence and the second m-sequence. The K-th
primary scrambling code is directly related to the total number of
secondary scrambling codes per one primary scrambling code.
September 13, 2007, appeal brief at 21 (emphasis added).

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48. Summarizing, during prosecution, Samsung repeatedly said that the claimed scrambling
codes are Gold codes.
4.

Summary

49. The language in the asserted claims is clear: the claimed scrambling codes must be Gold
codes. The specification of the ‘867 patent also explains that the scrambling codes of the
invention are Gold codes. Finally, during prosecution, Samsung repeatedly explained
that the scrambling codes of the asserted claims are Gold codes.
50. Therefore, as explained below, the asserted claims cannot cover processors like Intel’s in
which the scrambling codes are not Gold codes.
B.

The Accused Products Do Not Infringe Because Their Scrambling Codes are
Not Gold Codes

51. As described above, the scrambling code generators of the accused products implement
§5.2.2 of the 3GPP TS 25.213 standard. According to this section of the 25.213 standard,
the nth scrambling code Sdl,n(i) is a complex number, comprising a real part Zn(i) and an
imaginary part jZn(i+131072 (modulo 218-1)), as shown below:

25.213v6.0.0 at 23.
52.

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53.

a)

No Literal Infringement

b)

No Infringement Under the Doctrine of Equivalents

54

55.

56.

57. Even though Prof. Wesel was clearly on notice of this position, he failed to provide any
analysis regarding infringement under the doctrine of equivalents. That reinforces my
view that Samsung has failed to carry its burden to establish infringement under the
doctrine of equivalents.

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58.

59.

60.
61. Therefore, the asserted claims of the ‘867 patent cannot be infringed under the doctrine of
equivalents.
(i)

Claim 30

62. Claim 30 reads,
30. The apparatus as claimed in claim 25, wherein the primary
scrambling code and secondary scrambling code are I-channel
components and the apparatus further comprises a means for
delaying at least one of the primary scrambling codes and
secondary scrambling code to produce Q-channel components.
63. Although Prof. Wesel has not argued that claim 30 affects the interpretation of
independent claim 25 such that it can be infringed, either literally or under the doctrine of
equivalents, I note that nothing about claim 30 changes my opinion expressed above
regarding claim 25.
64.

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65.

2.

The Scrambling Codes Generated by the Accused Products are Not
{0,1}-Valued Sequences, as Required by the ’867 Claims

66.

67.

68. Claim 25, the only asserted independent claim, recites:
…at least one adder for generating a ((K-1)*M+K)th Gold code as
a K th primary scrambling code by adding a (((K-1)*M+K)-1)times shifted first m-sequence and the second m-sequence, wherein
K is a natural number and M is a total number of secondary
scrambling codes per one primary scrambling code.
Claim 25 of the ‘867 patent (emphasis added).
69. Claim 26 has a similar requirement for secondary scrambling codes.
70. That is, the asserted claims require the scrambling codes to be Gold codes, each of which
is generated by binary adding together two m-sequences. The ‘867 patent makes clear
that the m-sequences and Gold codes are {0,1}-valued sequences, i.e., each element of
the Gold code is either a “0” or a “1.” See, e.g., the ‘867 patent at 4:3-4 (“Referring to
FIG. 5, a gold sequence is normally generated through binary adding to two distinct msequences”) (emphasis added), 6:23-24 (“A gold code used herein as a scrambling code is
generated through binary adding of two distinct m-sequences”) (emphasis added).
Moreover, the shift registers described in the ’867 patent contain values comprising 0s
and 1s, and these values are read out of the shift register and added together using
modulo 2 arithmetic to form Gold codes. See, e.g., Figure 10 of the ’867 patent,
reproduced below, showing shift registers 1040 and 1045, and binary adders 1010, 1015,
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1030, 1032, 1034, all of which are depicted using the same symbol. See also the ’867
patent at 11:23-27 (“The first m-sequence generator 1050 generates the first m-sequence
using the register memory 1040 and the adder 1010 which is a binary adder that adds the
{1,0} values from the registers 0 and 7 of the register memory 1040 and outputs the sum
into the register 17.”) (emphasis added).

71. One of ordinary skill in the art would understand that these operations can only be
performed using binary arithmetic, which operates on {0,1}-valued sequences containing
0s and 1s. This is consistent with the understanding of those of ordinary skill that Gold
codes are {0,1}-valued sequences.
72.

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73.

a)

No Literal Infringement

b)

No Infringement under the Doctrine of Equivalents

74.

75.

76.

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C.

The Accused Products do Not Use the Indexing Required by the Asserted
Claims

77. The asserted claims of the ‘867 patent require a specific indexing, or numbering, of the
scrambling codes. The indexing required by the claims is illustrated in the drawing
below, for the case in which there are fifteen secondary codes for every primary code and
there are a total of 512 primary codes.10 Claim 25 specifies only the indexing used for
the primary codes (illustrated in red in the drawing below). Dependent claim 26 specifies
the indexing used for the secondary codes (illustrated in green in the drawing below).
Together, claims 25 and 26 require the indexing illustrated in the drawing.

78. Of particular interest, in the asserted claims, the indexing begins with the 1th code, i.e.,
there is no 0th code. That the asserted claims exclude a 0th code can be shown in a variety
of ways. First, the wherein clause of claim 25 recites that “K is a natural number.”
Natural numbers are positive integers. The smallest natural number is one. If the value
of K=1 is plugged into claim 25, it yields,

10

By making M, i.e., the number of secondary codes per primary code, be 15, and by using 512 primary codes, I
have made the figure be as similar as possible to the indexing of 25.213.

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at least one adder for generating a 1th Gold code as a 1th primary
scrambling code by adding a 0-times shifted first m-sequence and the
second m-sequence…
79. In other words, plugging K=1 into claim 25 results in the 1th primary scrambling code
being the 1th Gold code, which is exactly what is illustrated in the drawing.
80.

81.

82. The drawing below shows the indexing specified by 25.213 v6.0.0.

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83. The portion of the 25.213 standard that requires the indexing specified in the drawing
above is copied below.

25.213v6.0.0 at 22.
84. The drawing below compares the indexing required by the asserted claims and that of
25.213.11 As shown, they are not identical.

11
Again, by making M, i.e., the number of secondary codes per primary code, be 15, and by using 512 primary
codes, I have made the indexing required by the asserted claims appear as similar as possible to the indexing of
25.213.

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1.

No Literal Infringement

2.

No Infringement Under the Doctrine of Equivalents

85.

86.

87.

88.

89. The prosecution of the ‘867 patent took almost eight years.12 After the examiner had
finally rejected the claims, Samsung filed an appeal brief. In that appeal brief, Samsung
distinguished the cited prior art as follows:
Claim 59 [which corresponds to asserted claim 25] recites an
apparatus for generating scrambling codes in mobile
communication system having a scrambling code generator. The
apparatus includes a first m-sequence generator to generate a first
m-sequence. The apparatus further includes a second m-sequence

12

The application that led to the ‘867 patent was filed on Jul. 7, 2000, and the patent issued on Apr. 22, 2008.

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generator to generate a second m-sequence. The apparatus still
further includes at least one adder for generating a ((K−l)*M+K)th
Gold code as a Kth primary scrambling code by adding a
((K−l)*M+K−1)-times shifted first m-sequence and the second msequence. Finally, in the apparatus K is a natural number and M is
a total number of secondary scrambling codes per one primary
scrambling code…
Since neither Dahlman et al. nor Dahlman nor Bums teach or
disclose at least one adder for generating a ((K−l)*M+K)th Gold
code as a Kth primary scrambling code by adding a
((K−l)*M+K−1)-times shifted first m-sequence and the second msequence, wherein K is a natural number and M is a total number
of secondary scrambling codes per one primary scrambling code,
neither reference, nor any combination thereof, can be used to
render obvious Claim 59
September 13, 2007, appeal brief at 20-21 (emphasis added).
90. That is, Samsung distinguished the prior art by arguing that it did not teach the equations
embedded in claim 25 that specify the claim’s indexing. Having distinguished the prior
art by arguing the importance of those limitations (i.e., the importance of the indexing),
Samsung cannot now argue that those limitations are infringed under the doctrine of
equivalents. Also, Samsung’s argument regarding the required indexing was not limited
to the material quoted above. Samsung went on to argue:
Thus in Claim 59 a K-th primary scrambling code is generated. A
specific gold code is used as the K-th primary scrambling code.
The specific gold code is the ((K−l)*M+K)-th gold code. The
((K−l)*M+K)th gold code is generated by adding a
((K−l)*M+K−l)-times shifted first m-sequence and the second msequence. The K-th primary scrambling code is directly related to
the total number of secondary scrambling codes per one primary
scrambling code.
The Examiner alleges that generating a ((K−l)*M+K)-th gold code
as a K-th primary scrambling code of Claim 59 is disclosed by
Dahlman et al. [footnote omitted]
As stated above in section 2C, neither Dahlman et al., Dahlman or
Burns teach or disclose an adder for adding two m-sequences to
generate a scrambling code, namely, at least one adder for
generating a ((K−l)*M+K)th Gold code as a Kth primary
scrambling code by adding a ((K−1)*M+K−1)-times shifted first
m-sequence and the second m-sequence…

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Therefore, neither Dahlman et aI., Dahlman nor Burns, or any
combination thereof, teaches of discloses at least one adder for
generating a ((K−1)*M+K)th Gold code as a Kth primary
scrambling code by adding a ((K−l)*M+K−l)-times shifted first msequence and the second m-sequence, wherein K is a natural
number and M is a total number of secondary scrambling codes per
one primary scrambling code.
Since neither Dahlman et al., Dahlman nor Burns, either alone or
in combination, teaches or discloses at least this recitation of Claim
59 of the present application, of at least one adder for generating a
((K−l)*M+K)th Gold code as a Kth primary scrambling code by
adding a ((K−l)*M+K−l)-times shifted first m-sequence and the
second m-sequence, wherein K is a natural number and M is a total
number of secondary scrambling codes per one primary scrambling
code, Claim 59 cannot be rendered unpatentable over Dahlman et
al., Dahlman nor Burns.
September 13, 2007, appeal brief at 21-22 (emphasis added).
91. As shown by the quote above, Samsung again distinguished pending claim 59 (which
corresponds to asserted independent claim 25), by arguing that the claimed indexing was
not taught in the prior art. In the above argument, Samsung made the indexing argument
by describing the “specific Gold code” required by the claims. After Samsung presented
these arguments, the examiner allowed the claims. Again, having obtained its claims by
specifically arguing the importance of the required indexing, Samsung cannot now argue
that the indexing requirements of the claims are infringed under the doctrine of
equivalents.
3.

Invalidity

92. In the Stark Invalidity Report, I explained (e.g., in connection with Figure I) that the
difference between the ‘867 patent’s organization of codes and the prior art’s
organization is trivial and not patentable.
93. The difference described above between the indexing of the asserted claims and the
indexing of the 25.213 standard (and the accused products) may also be a minor one.
However, that difference relates to the indexing limitations (i.e., the equations embedded
in claim 25, which require a particular indexing), which Samsung used during

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prosecution to distinguish the prior art that was before the examiner.13 The end result is
that the ‘867 patent is both not infringed and invalid (e.g., over Ericsson).14
IV.

Secondary Considerations of Non-Obviousness
94.

95. Scrambling codes were widely known in the prior art, as were ways of generating
them. As explained in my invalidity report, specifying a particular organization of
scrambling codes was a trivial implementation detail needing only to be agreed upon
before the technology could be specified in the standard. See, e.g., the Stark Invalidity
Report at paras. 12-13.
96. Ericsson proposed a solution to the problem of generating and organizing scrambling
codes shortly before Samsung made its own proposal. Ericsson solved the problem of
organizing scrambling codes in a way that was different than, but as good as, Samsung’s
method. See my invalidity report at paras. 11-13 and Fig. 1, and Ericsson’s proposal at
APLNDC- WH0000013868-73.
97.
98.

V.

Alternative Technology
99. In the Stark Invalidity Report, I reviewed alternative technology that could have been
adopted by the 3GPP committee. See, e.g., Stark Invalidity Report at ¶188.
100.

Another alternative to the ‘867 patent is to avoid use of the m-sequence

generators required by claim 25, i.e., the only asserted independent claim. As an

13

As explained in my invalidity report, the prior art that was before the examiner is inferior to the prior art on
which my invalidity opinions are based, such as Ericsson.
14
I note that like the prior art, the indexing of 25.213 (and the accused products) begins at zero, not at one as is
done in the asserted claims.

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example, instead of using m-sequence generators, the two m-sequences used in 25.213
could be stored in advance in memory and then read out of the memory as needed. Such
an implementation would avoid all the asserted claims of the ‘867 patent, and would not
incur any significant loss of performance or additional cost. Each of the two msequences is 218-1 bits long, so storing both of them would require a total of 219-2 bits
(i.e., 64 kilobytes) of memory. In practical terms, 64kB is a negligible amount of data;
many common mobile devices, including the Accused Products, have storage capacities
more than 100,000 times this size. Thus, this approach would be at least as feasible and
cost-efficient as the approach described in the '867 claims.
Trial Exhibits
101.

I may rely on visual aids and demonstrative exhibits that demonstrate the bases of

my opinions. Examples of these visual aids and demonstrative exhibits may include, for
example, claim charts, patent drawings, excerpts from patent specifications, file histories,
interrogatory responses, deposition testimony and deposition exhibits, as well as charts,
diagrams, videos and animated or computer-generated video.
102.

Other than as referred to in this report, I have not yet prepared any exhibits for use

at trial as a summary or support for the opinions expressed in this report, but I expect to
do so in accordance with the Court’s scheduling order.
VI.

Supplementation of opinions
103.

I reserve the right to supplement my opinions after I have and the opportunity to

review expert reports or other materials from Samsung or other additional documents or
materials that are brought to my attention.

Date: April 16
Wayne E. Stark

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