Ironworks Patents LLC v. Apple Inc.

Filing 470

MEMORANDUM ORDER, claims 1-3 of the '078 patent are to be excluded at trial. Signed by Judge Sue L. Robinson on 11/15/2012. (nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MOBILEMEDIA IDEAS, LLC,
Plaintiff,

v.
APPLE INC.,
Defendant.

)
)
)
)
) Civ. No. 10-258-SLR
)
)
)
)

MEMORANDUM ORDER

At Wilmington this 15th day of November, 2012, having reviewed the materials
regarding reexamined claims 1-3 of U.S. Patent No. 6,427,078 ("the '078 patent") (D.I.
465; D.l. 466);
IT IS ORDERED that claims 1-3 of the '078 patent are to be excluded at trial, for
the reasons that follow:
1. Background. Plaintiff MobileMedia Ideas, LLC ("MobileMedia") filed a patent
infringement complaint against Apple Inc. ("Apple") on March 31, 2010, alleging
infringement of, among other patents, the '078 patent. (D.I. 1) Specifically,
Mobile Media alleged certain Apple products of infringing claims 1, 2, 3, 8, and 73, as
originally issued, of the '078 patent. (Id.) Apple has asserted affirmative defenses of,
inter alia, non-infringement and invalidity. (D.I. 10)
2. Fact discovery closed October 31, 2011, and expert discovery closed May 4,
2012. (D.I. 135; D.l. 225) The parties filed their joint claim construction chart on March
23, 2012, and Apple moved for summary judgment of invalidity and non-infringement on

May 14,2012 and June 4, 2012, respectively. (D.I. 239; D.l. 305; D.l. 328)
3. During the pendency of this case, the U.S. Patent & Trademark Office ("PTO")
conducted an ex parte reexamination of the '078 patent. Neither party moved to stay
proceedings, pending reexamination, with respect to the '078 patent. On September 4,
2012, a reexamination certificate for the '078 patent issued, determining claim 1 to be
patentable as amended and claims 2 and 3 to be patentable as dependent from
amended claim 1. 1 (D.I. 444-1)
4. The parties have identified a remaining substantive issue not addressed in the
court's summary judgment memorandum opinion and order dated November 8, 2012.
(D.I. 461; D.l. 462) Apple requests that the court exclude reexamined claims 1-3 ("the
reexamined claims") of the '078 patent from trial or, in the alternative, permit Apple to
supplement its expert opinions regarding the '078 patent. (D. I. 465) MobileMedia
requests that the court allow substitution of the reexamined claims at trial. 2 (D.I. 466) A
jury trial for the case is scheduled to begin on December 3, 2012. (D.I. 17)
5. As amended, claim 1 provides:

1

Claims 2 and 3 of the '078 patent provide:

2. A device according to claim 1, wherein said means for transmitting
image information comprises a cellular mobile phone unit.
3. A device according to claim 2, wherein the cellular mobile phone unit
comprises equipment required by speech communications, such as a
microphone and a loudspeaker, wherein said equipment is fitted in the
housing of the device.
2

MobileMedia also alleged infringement of claims 8 and 73 of the '078 patent.
Claim 8 was cancelled in the reexamination and has been withdrawn from the litigation.
As claim 73 is independent and remains unchanged after reexamination, MobileMedia
may continue to assert infringement of that claim.

2

1. A [device] portable cellular mobile phone 3 for personal
communication, data collection and data processing, which is a smallsized, portable and hand-held work station including a housing and
comprising
a data processing unit comprising a microprocessor,
a display,
a user interface,
a number of peripheral device interfaces,
at least one memory unit;
a power source, and
application software,
wherein the device also comprises:
a camera unit for obtaining and outputting image information comprising:
a camera for receiving image information;
optics connected to said camera for passing said image information to the
camera;
means for processing and for storing at least a portion of said image
information obtained by said camera unit for later recall and
processing;
at least one memory unit for storing said image information; and
an output coupled to said data processing unit for outputting image
information from said memory unit to the processing unit; and
wherein at least a portion of said camera unit is located within said
housing, and said data processing unit processes image information
output by said camera unit,

3

Matters enclosed in brackets appeared in the patent but have been deleted and
are no longer a part of the patent; matters in bold indicate additions made to the patent.

3

wherein said display presents image information obtained by said
camera unit, and

wherein said device further comprises means for transmitting image
information processed by said processing unit to another location using a
radio frequency channel.
6. Discussion. In determining whether, for purposes of infringement damages,
reexamined claims are legally identical to their original counterpart, the Federal Circuit
has looked at whether the reexamined claims are "without substantive change." Laitram
Corp. (Laitram II), 163 F.3d at 1346 (citing Seattle Box Co. v. Indus. Crating & Packing,

731 F.2d 818, 827-28 (Fed. Cir. 1984); Slimfold Mfg. Co. v. Kinkead Indus., 810 F.2d
1113, 1115 (Fed. Cir. 1987)). To decide "whether substantive changes have been
made, [the court] must discern whether the scope of the claims are identical .... " /d.
Claims amended during reexamination are not deemed to be per se substantively
changed; instead, "it is necessary to analyze the claims of the original and the
reexamined patents in light of the particular facts, including the prior art, the prosecution
history, other claims, and any other pertinent information." Laitram Corp. v. NEG Corp.
(Laitram /), 952 F.2d 1357, 1362 (Fed. Cir. 1991 ). The court finds this standard

instructive for determining whether the reexamined claims should be excluded at trial.
7. The amendments to claim 1 incorporate limitations from other claims of the
'078 patent, namely, a "portable cellular mobile phone," "microprocessor," "means for
processing and for storing ... ,"and "display [that] presents image information obtained
by said camera unit." MobileMedia asserts that Apple's experts "have opined on all of
the elements in the amended claim, in the course of responding to unamended claim 73
and dependent claim 8 (which depends from original claim 1)." (D.I. 466 at 1-2) While

4

Apple's experts addressed all of these limitations in the context of one asserted claim or
another, the combination of elements in amended claim 1 did not exist in a single claim
prior to the issuance of the reexamination certificate.
8. Asserted claim 8, now cancelled, disclosed a device comprising, among other
things, a "camera unit" that in turn comprised "a camera," "optics," "at least one memory
unit," "an output", "means for processing" and "means for storing." The "camera unit"
limitation in amended claim 1 comprises those same limitations. However, claim 8 is
substantively different from amended claim 1 in that it did not include a limitation for a
"display." On the other hand, the "display" limitation does appear in claim 73, but claim
73 teaches a different "camera unit." The "camera unit" of claim 73 only requires
"optics" and "means for processing and for storing."
9. In addition, in claim 73, the "microprocessor" is described as being part of the
"camera unit" limitation. The "microprocessor" in amended claim 1, by its plain
language, is part of the "data processing unit" limitation, not the camera unit. Finally,
the "device" in the preamble of claim 1 was amended to "portable cellular mobile
phone."
10. In light of the amendments described above, the scope of claim 1 was
substantively changed during reexamination. Claim 1, as asserted, is significantly
different from claim 1 as amended during reexamination. It is also significantly different
from claims 8 and 73. As claims 2 and 3 are dependent from amended claim 1, they
are also substantively changed for the same reasons.
11. The parties completed fact discovery, served expert reports, completed
expert discovery, filed their joint claim construction chart, and completed briefing on

5

summary judgment regarding infringement and invalidity prior to the issuance of the
reexamination certificate for the '078 patent on September 4, 2012. Because neither
party has had the opportunity to offer infringement or invalidity opinions on the
reexamined claims, proceeding with the reexamined claims at this stage may open the
door to new infringement theories and opinions at trial that have not been vetted
through discovery. 4
12. In addition, Apple would be unduly prejudiced if the reexamined claims were
to be substituted at this stage of litigation. For example, Apple has not had the
opportunity to identify prior art that might anticipate claim 1, as amended. Apple framed
its invalidity defenses for the '078 patent in light of the original claims.
13. Conclusion. For the foregoing reasons, the court excludes from trial claim
1, as amended during reexamination, as well as claims 2 and 3, of the '078 patent.

4

As just one example of the significance of the changes in amended claim 1,
neither party had a chance to consider the consequences of the "microprocessor"
limitation added to claim 1. Apple's expert, Dr. Grimes, avers that MobileMedia's expert
"does not appear to make any distinctions between the 'microprocessor' claimed in ...
claim element [73e] and the 'data processing unit' claimed in [original] claim 1." (D. I.
467, ex. D at 32) However, by its plain language, amended claim 1 seems to draw a
distinction between "microprocessor" and "data processing unit," as it provides for "a
data processing unit comprising a microprocessor." (emphasis added) Neither party
has had the opportunity to take the amended claim language into account in their
proposed claim constructions or positions on infringement and invalidity.

6