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 22
(Filed Under Seal)

CONTAINS INFORMATION DESIGNATED AS
SAMSUNG HIGHLY CONFIDENTIAL INFORMATION
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

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APPLE INC., a California corporation,
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Plaintiff,
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vs.

Civil Action No. 11-CV-01846-LHK

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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,

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Defendants.

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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,

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Counterclaim-Plaintiffs,
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v.
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APPLE INC., a California corporation,
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Counterclaim-Defendant.
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Expert Report of Mani Srivastava, Ph.D.
Regarding Invalidity of the Asserted Claim of U.S. Patent No. 7,577,460

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332.

For at least these reasons, Samsung's alleged secondary considerations do not

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affect my conclusion that the claims of this patent are obvious in light of the prior art I have

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discussed in detail above.

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XII.

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The Asserted Claim of the ‘460 patent is Indefinite
333.

Independent claim 1 recites, among other things, “entering a first E-mail

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transmission sub-mode upon user request for E-mail transmission while operating in a portable

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phone mode, the first e-mail transmission sub-mode performing a portable phone function,”

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“entering a second E-mail transmission sub-mode upon user request for E-mail transmission

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while operating in a display sub-mode, the second e-mail transmission sub-mode displaying an

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image most recently captured in a camera mode,” “transmitting the address of the other party and

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a message received through a user interface in the first E-mail transmission sub-mode,” and

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“transmitting the address of the other party and the message received through the user interface

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and the image displayed on the display as an E-mail in the second E-mail transmission sub-

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mode.”

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334.

It is my opinion that claim 1 of the ‘460 patent is invalid as indefinite. The

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language of the claim whether read in isolation or together with the Specification fails to clarify

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for one of ordinary skill in the art whether the claimed process (i) requires a single process for

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CONTAINS INFORMATION DESIGNATED AS
SAMSUNG HIGHLY CONFIDENTIAL INFORMATION
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sending an E-mail with a user following one sequence of steps to send the E-mail if the E-mail

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had an image attached, and a different sequence of steps if the E-mail did not have an image

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attachment, or (ii) requires two separate processes for sending E-mails, one with an attached

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image and another without an attached image.

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335.

Furthermore, the claim is indefinite about whether the first E-mail transmission

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sub-mode transmits the “address of the other party and a message received through a user

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interface” in an E-mail to a recipient or to the second E-mail transmission sub-mode. Unlike the

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last limitation, the penultimate limitation does not explicitly recite that the address and the

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message are transmitted “as an E-mail.” The indefiniteness is amplified because it is not clear

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whether “the user interface” recited in the last limitation is referring to “a user interface” recited

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in the penultimate limitation or to some other user interface.

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336.

In my opinion for the above reasons claim 1 is insolubly ambiguous and not

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capable of interpretation by one of ordinary skill in the art. Accordingly, it is my opinion that

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independent claim 1 is invalid under section 112, second paragraph because the claims do not

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apprise a person of ordinary skill in the art of their scope.

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XIII. The Asserted Claim of the ‘460 patent Lacks Support in the Written Description

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A.

Lack of support for First and Second E-mail Transmission Sub-modes

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337.

In my opinion Claim 1 of the ‘460 patent is invalid for failing to comply with the

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written description requirement of 35 U.S.C. § 112, ¶ 1, because the ‘460 patent fails to teach in

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the Specification the “first E-mail transmission sub-mode” and the “second E-mail transmission

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sub-mode” recited in claim 1 of the ‘460 patent. The patent description does not show one of

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ordinary skill in the art that the inventors possessed the invention they claimed.

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338.

The Specification does not describe a “first E-mail transmission sub-mode” and

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“second E-mail transmission sub-mode.” The Specification only describes one “E-mail

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transmission sub-mode.” The Specification states that “[u]pon request for E-mail transmission in

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the portable phone mode in step 608, the portable phone controller 32 enters an E-mail

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transmission sub-mode in step 610.” See Col. 9, ll. 42–44 & Figure 6 (emphasis added). The

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CONTAINS INFORMATION DESIGNATED AS
SAMSUNG HIGHLY CONFIDENTIAL INFORMATION
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Specification continues, in the context of discussing the play mode, that “[u]pon user request for

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the E-mail transmission, the portable controller 32 returns to the E-mail transmission sub-mode

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in step 610.” See Col. 11, ll. 4–12 & Figure 8 (emphasis added). Furthermore, Figures 6 and 8,

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which illustrate the portable phone mode and the play mode, use the same reference number, E-

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mail transmission sub-mode 610, to refer to the single E-mail transmission sub-mode. The

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figures and text of the specification do not identify any other E-mail transmission sub-mode.

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Therefore, one skilled in the art would understand that the inventors did not posses a device with

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more than one E-mail transmission submodes.

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339.

Further, the claim, if interpreted as proposed by Samsung in its infringement

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contentions, requires that two email messages are simultaneously composed and sent from a

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“first E-mail transmission sub-mode” and a “second E-mail transmission sub-mode.” In contrast,

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the patent only describes sending one email message, either having (1) a To address and message

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body, or (2) a To address, message body, and image attachment. In describing the E-mail

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transmission sub-mode, the specification discloses two alternate branches whereby one email

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message is sent from either branch but not from both. The specification discloses:
“If the E-mail transmission sub-mode is selected in the play submode of the camera mode, this implies that image data to be
enclosed in the E-mail exists . . . . However, if only the E-mail
transmission sub-mode is selected in the portable phone mode, this
implies that no image data enclosed in the E-mail exists.

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In the presence of a still image to be enclosed in the E-mail in step
914, the portable phone controller 32 transmits the received
message (title and contents) and the enclosed still image to the Email server 510 in packets, while displaying a message indicating
E-mail transmission on the color LCD 48, in step 916. In the
absence of a still image to be enclosed in the E-mail in step 914,
the portable phone controller 32 transmits the received message
(title and contents) to the E-mail server 510 in packets, while
displaying the message indicating E-mail transmission on the color
LCD 48 in step 918.” See Col. 12, ll. 30–51 & Figure 9.

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340.

Figure 9, which illustrates the E-mail transmission sub-mode, shows that the

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method proceeds along step 916 in the presence of a still image, and alternatively, proceeds
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along step 918 in the absence of a still image. That is, the portable phone controller 32 transmits
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