Motorola Mobility, Inc. v. Apple, Inc.

Filing 131

NOTICE by Apple, Inc., Motorola Mobility, Inc. Joint Chart Concerning the Impact of Claim Construction (Mullins, Edward)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10-cv-23580-UU

MOTOROLA MOBILITY, INC.,
Plaintiff,
v.

JURY TRIAL DEMANDED

APPLE, INC.,
Defendant.

APPLE, INC.,
Counterclaim Plaintiff,
v.
MOTOROLA, INC. and
MOTOROLA MOBILITY, INC.,
Counterclaim Defendants.

JOINT CHART CONCERNING THE IMPACT OF CLAIM CONSTRUCTION

i

At the Court's request, the parties have created a joint statement concerning the impact of the Court's claim construction ruling.
The statement includes the disputed terms, both Motorola's and Apple's proposed constructions, and a statement from each party
describing the likely impact of the Court's adoption of its construction.
While preparing this statement, the parties agreed to the definition of "gesture," as it is used within Apple's '849 patent. The
parties agreed that "gesture" shall mean “a motion of the object / appendage making contact with the touch screen." This is Apple's
alternative definition of the term. Accordingly, because the definition of "gesture" is no longer in dispute, "gesture" is not included in
the joint statement charts below. The parties have also agreed to the relevant functions for the means plus function claims.

I.

DISPUTED TERMS OF APPLE'S PATENTS
A.

Disputed Terms of the '849 Patent

Disputed Claim
Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

Moving an unlock image

“Translating the unlock image from
one portion of the coordinate space
of the touch-sensitive display to
another”

Ordinary meaning, or in the
alternative, “causing an unlock image
to change position over time via
continuous contact with the touch
screen”

Motorola’s Position: Under Motorola's
proposed construction, there can be no genuine
issue of material fact that the accused Motorola
products do not infringe any asserted claim of
the '849 Patent.

(‘849 Claims 1-10)

To unlock the accused Motorola devices, no
icon is translated from one portion of the
display to another. Rather, an icon is
expanded/stretched (i.e., distorted) in response
to a user’s contact with the touch screen, while
the position of the icon remains constant.

1

Disputed Claim
Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions
Apple’s Position: Under Apple's proposed
construction, the accused Motorola products
meet this claim term. Even under Motorola's
proposed construction, Apple believes that the
accused Motorola products meet this claim
term, if not literally, then under the doctrine of
equivalents, as a substantially similar gesture is
used, even if the Court agrees with Motorola
that "moving" is limited to translational
movement.

1.

Products Related to the Asserted Claims

Apple asserts that the Apple iPhone and subsequent iPhone and iPad products relate to the asserted claims.
2.

Products Accused of Infringing the Asserted Claims

Apple asserts that several of Motorola's mobile devices infringe the asserted claims of the '849 patent, including the
Atrix, Bravo, Charm, Citrus, Cliq, Cliq XT, Cliq 2, Defy, Devour, Droid, Droid 2, Droid 2 Global, Droid X, Droid Pro, BackFlip,
Flipout, Flipside, i1, and Xoom.

2

B.

Disputed Terms of the '646 & '116 patents (the "Display Space Patents")

Disputed Claim Term
Determi[ning][es]
whether [a] device . . . is
a video device
(‘646 claims 1, 10, 13, 14,
16, and 32)

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

“Having the device manager, which
is an operating system component
and not a device driver, specifically
determine that the device is a video
display device”

Determin[ing][es]…
Plain and ordinary meaning applies or,
in the alternative: “determine whether
a device is or is not capable of
displaying video”

Motorola's Position: Under Motorola's
proposed construction, there can be no genuine
issue of material fact that the accused Motorola
products do not infringe any asserted claim of
the Display Space Patents.

Detect[ing][s]…
Plain and ordinary meaning applies or,
in the alternative: “detecting a device
capable of displaying”

The accused Motorola products do not use a
device manager to determine that a video
display device is attached. Rather, Motorola’s
accused devices use the prior-art method of
relying on the device drivers for video display
devices. Device drivers are substantively and
functionally different from the device manager
of the Display Space Patents.

Detect[ing][s] . . . a
display device
(‘116 claims 1, 8-10, 16, 1820, 27, 33, 36-38, and 42)

Apple’s Position: Under the plain and ordinary
meaning and Apple’s alternative proposed
construction, the accused Motorola products
meet this claim term. In addition, even under
Motorola's proposed construction, Apple
believes that the Motorola products meet this
claim term, because the accused Motorola
products should be found to literally include a
device manager as required under Motorola's
construction or to include a structure that
infringes that requirement under the doctrine of
equivalents. In addition, Motorola's arguments
regarding the prior art limitations on the
doctrine of equivalents are both legally and
factually incorrect.

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

modifying the allocation of

“Changing the allotment of the

Plain and ordinary meaning applies or,

3

Impact of Proposed Construction
Motorola's Position: Under Motorola's

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

global coordinate space available for
use by display devices”

display space

in the alternative: “allocating or
deallocating display space”

proposed construction, there can be no genuine
issue of material fact that the accused Motorola
products do not infringe any asserted claim of
the Display Space Patents.

“An allotment of the global
coordinate space, available for use
by display devices, to be changed”

Plain and ordinary meaning applies or,
in the alternative: “a part of the display
space to be allocated or deallocated”

The accused Motorola products do not contain
or utilize a global coordinate space. Instead, the
accused Motorola products use an independent
coordinate space for any external video display
device. These coordinate spaces are
independent from the coordinate space used by
the touch screen of the accused Motorola
products.

(‘646 claims 1, 10, 13, 14,
16, and 32)
a portion of the display
space to be modified
(‘116 claims 1, 8-10, 16, 1820, 27, 33, 36-38, and 42)

Apple’s Position: Under the plain and ordinary
meaning and Apple’s alternative proposed
construction, the accused Motorola products
meet this claim term. In addition, Motorola's
characterization of its products as using an
independent display spaces appears to be false
with respect to at least the Motorola Xoom
products, which do not use independent display
spaces. Moreover, to the extent that any of
Motorola's products only use independent
display spaces, Apple asserts that the Motorola
products meet this portion of Motorola's
proposed construction, at least, under the
doctrine of equivalents, because the coordinate
spaces of the accused Motorola products are
insubstantially different from the exemplary
global coordinate space disclosed in the
specifications.

1.

Products Related to the Asserted Claims

4

Apple asserts that the Apple PowerBook and subsequent computer products allowing connections to external monitors
relate to the asserted claims.
2.

Products Accused of Infringing the Asserted Claims

Apple asserts that several of Motorola's mobile devices infringe the asserted claims of the Display Space Patents,
including the Droid X, Atrix, and Xoom.

5

C.

Disputed Terms of the '456 / '509/ '560 "Florin" Patents1

Disputed Claim Term

(‘509 Claims 15, 16, 23, 26,
28, 33, 51, 54-61, 65, and
70; ‘456 Claim 9)

Apple's Proposed Construction

Impact of Proposed Constructions

Corresponding Structure: A central
processing unit (CPU), a system
bus; an A/V decoder; a wireless
control unit; a system memory unit;
an A/V memory unit; a memory and
bus controller; an A/V encoder; a
highspeed digital A/V bus; an A/V
processor; one or more
tuners/demodulators, wherein one
tuner/demodulator reads and
displays a current program from one
of the channels received; additional
tuners/demodulators (or the same
tuner/demodulator, used in
alternation) to read and display data
from the side-band channels in
picture-in-picture (pip) windows; a
remote control device including a
transmitter for transmitting signals
to the audio-visual system; and
software applications that generate
picture-in-picture windows,
program listing information,
program recording, and other
interactive functions.

Corresponding structure: a
combination of the CPU module 62,
which receives the data stream of
program listings, the system memory
65, which stores the section of the
program listings most relevant to the
user, A/V processor 77, which is “used
to manipulate, process, render, mix,
and otherwise rearrange digital data
into coherent audio-visual displays,”
and A/V connect module 66, which
“provides a graphic overlay function
that superimposes an A/V signal from
the video encoder 78 against another
A/V signal” that allows “both signals
to be simultaneously displayed on the
TV.”

Motorola's Position: Under Motorola's
proposed structure for the "listing means" /
"listing interface means" terms, there can be no
genuine issue of material fact that the accused
Motorola products do not infringe the asserted
claims of the '509 and '560 patents.

Corresponding Function:
’456
Under § 112 ¶ 6, the function is

listing means / listing
interface means

Motorola's Proposed
Construction

Corresponding Function:
’456
Under § 112 ¶ 6, the function is

1

Motorola’s accused devices contain no software
that causes a program listing to be displayed.
Further, Motorola does not provide a remote
control device with most of the accused devices.
Apple’s Position: Under Apple's proposed
construction, the accused Motorola products
meet this claim term. Even under Motorola's
proposed construction, Motorola's accused
products have a control panel with buttons for
controlling the operation of the accused
Motorola products. Further, Apple believes that
the accused Motorola products meet this claim
term, if not literally, then under the doctrine of
equivalents, because the control panels perform
the same function as the buttons on the remote
control. Motorola additionally causes direct
infringement by cable providers who install the
Motorola set-top boxes with interactive program
guides and remote controls. Motorola causes
direct infringement of method claims by end
users at least indirectly through the cable
providers and by providing instructions directly

In a good-faith attempt to reduce the issues in dispute, Motorola agrees to the functions proposed by Apple for the meanplus-function claim elements for the '509, '456, and '560 Patents.

6

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

“causing an A/V display to
selectively display a program
listing.”
’509
Under § 112 ¶ 6, the function is
“causing an A/V display to
selectively display a program listing
that contains listing information
related to A/V programs viewable
on the A/V display.”

Disputed Claim Term
Listing interface
(‘456 Claims 1, 2 and 8)

“causing an A/V display to selectively
display a program listing.”

’509
Under § 112 ¶ 6, the function is
“causing an A/V display to selectively
display a program listing that contains
listing information related to A/V
programs viewable on the A/V
display.”

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

"A software application executing
on the CPU causing the A/V display
to selectively display one level of
the multiple levels of information
related to an audio-visual program,
that level containing a list of
information (including at least
channel numbers, channel names,
and/or titles) about the viewable
audio-visual programs."

Plain and ordinary meaning applies or,
in the alternative: “an interactive
interface for listing A/V program
information”

Motorola's Position: Under Motorola's
proposed construction, there can be no genuine
issue of material fact that the accused Motorola
products do not infringe any asserted claim of
the '456 patent.

In the alternative:2 "a software
application causing the A/V display

2

or through cable providers. The accused
Motorola products are intended to execute
interactive programming guide software and
with a remote control.

Motorola’s accused devices contain no software
that causes the A/V display to selectively
display information related to an audio-visual
program.
Apple’s Position: Under the plain and ordinary
meaning and Apple’s alternative proposed

Alternative constructions indicated with an asterisk (*) are a good-faith attempt to reduce the issues in dispute and/or address
Apple’s objections.

7

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

to selectively display information
related to an audio-visual system."*3

Disputed Claim Term
Controller in
communication with
(‘560 Claims 1, 2, 4-6, 8, 9,
11-13, and 15-16)

Impact of Proposed Constructions
construction, the accused Motorola products
meet this claim term. Even under Motorola's
proposed construction, Motorola additionally
causes direct infringement by cable providers
who install the Motorola set-top boxes with
interactive program guides and remote controls.
Motorola causes direct infringement of method
claims by end users at least indirectly through
the cable providers and by providing
instructions directly or through cable providers.
Further, the accused Motorola products are
intended to execute interactive programming
guide software.

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

"A hand-held remote control
containing a transmitter for
transmitting signals wirelessly to the
transceiver,"

Plain and ordinary meaning applies or,
in the alternative: “controller that
sends commands to”

Motorola's Position: Under Motorola's
proposed construction, there can be no genuine
issue of material fact that most, if not all, of the
accused Motorola products do not infringe.

In the alternative: "A remote control
containing a transmitter for
transmitting signals wirelessly to the
transceiver."*

Motorola does not provide a remote control for
most, if not all, of the accused Motorola
devices.
Apple’s Position: Under Apple's proposed
construction, the accused Motorola products
meet this claim term. Even under Motorola's
proposed construction, the accused Motorola

3

The dependent claims of the '456 patent refer to a "said A/V listing interface means" that Motorola contends has no apparent antecedent
basis in the independent claims, in particular given a construction of listing interface as not a means-plus-function term. Motorola reserves the
right to assert that the ‘456 patent claims are therefore indefinite for lack of antecedent basis. (See, e.g., '456 patent, claim 2). Apple disagrees
with Motorola's contention and believes that this issue is not properly before the Court, as "A/V listing interface means" was not one of the terms
raised for claim construction.

8

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions
products have a control panel with buttons for
controlling the operation of the accused
Motorola products. Apple also believes that the
accused Motorola products meet this claim
term, if not literally, then under the doctrine of
equivalents, because the control panels are
intended to perform the same function as the
buttons on the remote control. Motorola
additionally causes direct infringement by cable
providers who install the Motorola set-top boxes
with interactive program guides and remote
controls. Motorola causes direct infringement
of method claims by end users at least indirectly
through the cable providers and by providing
instructions directly or through cable providers.
The accused Motorola products are intended to
operate with a remote control.

Disputed Claim Term

Motorola's Proposed
Construction

Control means in
communication with ('509
and '456 patents)

Corresponding Structure: "A handheld remote control containing a
transmitter,"

(‘509 Claims 7-8, 10-11, 1420, 22-27, 43-52, 54-58, and
60-63; ‘456 Claims 1-2 and
4-10)

In the alternative: "A remote control
containing a transmitter."*
Corresponding Function:
‘509
“sending commands to the
transceiver to allow a user to
selectively display multiple levels of
information on an A/V display.”
The corresponding structure is:
’456

9

Apple's Proposed Construction

Impact of Proposed Constructions

Corresponding Structure: remote
control 60 or equivalent structure.

Motorola’s Position: Under Motorola's
proposed construction, there can be no genuine
issue of material fact that most, if not all, of the
accused Motorola products do not infringe.

Corresponding Function:
‘509
“sending commands to the transceiver
to allow a user to selectively display
multiple levels of information on an
A/V display.”
The corresponding structure is:
’456
“sending commands to the transceiver
to allow a user to display A/V

Motorola does not provide a remote control for
most, if not all, of the accused Motorola
devices.
Apple’s Position: Under Apple's proposed
construction, the accused Motorola products
meet this claim term. Even under Motorola's
proposed construction, the accused Motorola
products have a control panel with buttons for
controlling the operation of the accused

Disputed Claim Term

Motorola's Proposed
Construction
“sending commands to the
transceiver to allow a user to display
A/V programs on an A/V display.”

1.

Apple's Proposed Construction
programs on an A/V display.”

Impact of Proposed Constructions
Motorola products. Apple also believes that the
accused Motorola products meet this claim
term, if not literally, then under the doctrine of
equivalents, because the control panels are
intended to perform the same function as the
buttons on the remote control. Motorola
additionally causes direct infringement by cable
providers who install the Motorola set-top boxes
with interactive program guides and remote
controls. Motorola causes direct infringement
of method claims by end users at least indirectly
through the cable providers and by providing
instructions directly or through cable providers.
The accused Motorola products are intended to
operate with a remote control.

Products Related to the Asserted Claims

No related products exist.
2.

Products Accused of Infringing the Asserted Claims

Apple asserts that several of Motorola's set-top boxes infringe the asserted claims of the Florin patents, including
Motorola's DCT700, DCT2500, DCT3400, DCT3412, DCT3080, DCT6200, DCT6208, DCT6400, DCT6412, DCX700, DCX3200,
DCX3200, P2, DCX3400, DCH70, DCH100, DCH200, DCH3200, DCH3416, DCH6200, DCH6416, DTA100, QIP2500, QIP2708,
QIP6200, QIP6416, QIP7100, and QIP7216.

10

II.

DISPUTED TERMS OF MOTOROLA'S PATENTS
A.

Disputed Term of the '006 Patent

Disputed Claim Term

Motorola's Proposed
Construction

Data Units Not Being Sent
From The Host To The
Communications Unit

Ordinary meaning – the phrase
requires no construction.

Apple's Proposed Construction

Impact of Proposed Constructions

“data units present at the host and not
sent to the communication unit”

Motorola's Position: Motorola is unaware of
any impact the construction proposed by Apple
would have on the issues of infringement and
validity. Even under Apple's construction,
Motorola believes that the Apple products meet
this claim term, if not literally than under the
doctrine of equivalents, as the Apple products
utilize a substantially similar process for
filtering data units.

(‘006 Claim 26)

Apple’s Position: Motorola argues that the
“data units not sent from the host to the
communication unit” are “remote images” that
the user can decide whether to receive.
However, these remote images are called
“remote” precisely because they are never
present at the host server; instead, they exist
only at some other site on the Internet.
Therefore, under Apple’s proposed construction,
the accused systems do not infringe.

1.

Products Related to the Asserted Claims

Motorola asserts that the Motorola AirMobile phones and Droid X2 relate to the asserted claims.
2.

Products Accused of Infringing the Asserted Claims

11

Motorola asserts that several of Apple's mobile devices and MobileMe service infringe the asserted claims of the '006
patent, including Apple's MobileMe, Apple iPhone 3G, Apple iPhone 3G S, Apple iPhone 4G, Apple iPad, Apple iPad with 3G, Apple
iPad 2, Apple iPad 2 with 3G, Apple iPod Touch, Apple MacBook, Apple MacBook Pro, Apple MacBook Air, Apple iMac, Apple
Mac Mini, and Apple Mac Pro.

12

B.

Disputed Terms of the '531 Patent

Disputed Claim Term
Filtered data unit

Motorola's Proposed
Construction
Plain meaning; or “a data unit that
has been filtered”

(‘531 Claims 1, 2, and 11)
In the alternative: "a data unit that
has passed a filter."*

Apple's Proposed Construction

Impact of Proposed Constructions

“one of a subset of data units at the
host device that are selected for
download to the client communication
unit based on having passed a filter”

Motorola’s Position: Motorola is unaware of
any impact the construction proposed by Apple
would have on the issues of infringement and
validity. Even under Apple's construction,
Motorola believes that the Apple products meet
this claim term, if not literally than under the
doctrine of equivalents, as the Apple products
utilize a substantially similar process for
reducing data units sent to the mobile device.

In the alternative: “a data unit that is
selected for download to the client
communication unit based on having
passed a set of user-selected criteria”4

Apple’s Position: Motorola argues that the use
of “Rules” within the accused systems to put
emails into different folders meets the “filtered
data unit” limitation. However, these “Rules”
only sort emails at the receiving end and do not
prevent any messages from being downloaded
to the device. Therefore, under Apple’s
proposed construction, the accused systems do
not infringe.

Disputed Claim Term
Wireless network
(‘531 Claims 1, 2, and 11)

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

Ordinary meaning – this term
requires no additional construction,
but in the alternative; “two or more
devices whose interconnection(s) is
implemented, at least in part,
without the use of wires”

“a network in which the
communication server is connected to
both the host device and the client
communication unit through a
completely wireless path”

Motorola’s Position: Motorola is unaware of
any impact the construction proposed by Apple
would have on the issues of infringement and
validity. Even under Apple's construction,
Motorola believes that the Apple products meet
this claim term, if not literally than under the
doctrine of equivalents, as the Apple products

4

Apple proposed this alternative construction in its responsive claim construction brief in response to objections by Motorola
that are not central to the parties’ claim construction dispute.

13

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions
utilize a substantially similar process for
transmitting data units to a mobile device across
a wireless network.
Apple’s Position: None of the accused systems
operate by means of a completely wireless path
between the host device and communication
unit. Therefore, under Apple’s proposed
construction, the accused systems do not
infringe.

1.

Products Related to the Asserted Claims

Motorola asserts that Motorola AirMobile phones and Droid X2 relate to the asserted claims.
2.

Products Accused of Infringing the Asserted Claims

Motorola asserts that several of Apple's mobile devices and MobileMe service infringe the asserted claims of the '531
patent, including Apple iPhone 3G S, Apple iPhone 3G, Apple iPhone 4G, Apple iPad, Apple iPad with 3G, Apple iPad 2, Apple iPad
2 with 3G, Apple iPod Touch, Apple MacBook, Apple MacBook Pro, Apple MacBook Air, Apple iMac, Apple Mac Mini, Apple Mac
Pro, and MobileMe.

14

C.

Disputed Terms of the '119 Patent

Disputed Claim Term

Motorola's Proposed
Construction

Responsive to receiving the
second message,
transmitting a third
message

Ordinary meaning – this phrase
requires no additional construction.

Apple's Proposed Construction
"upon receiving the second message,
automatically transmitting a third
message”

(‘119 Claims 1 and 2)

Impact of Proposed Constructions
Motorola’s Position: Motorola is unaware of
any impact the construction proposed by Apple
would have on the issues of infringement and
validity. Even under Apple's construction,
Motorola believes that the Apple products meet
this claim term, if not literally than under the
doctrine of equivalents, as the Apple products
utilize a substantially similar process for
synching multiple devices across a wireless
network.
Apple’s Position: The accused systems do not
transmit status changes automatically upon
receiving them. Instead, status changes are
transmitted only when the receiving device first
requests them. Therefore, under Apple’s
proposed construction, the accused systems do
not infringe.

Disputed Claim Term

Motorola's Proposed
Construction

Indicative of the second
status

Ordinary meaning – this phrase
requires no additional construction;

(‘119 Claims 1, 2 and 5)

In the alternative, "providing an
indication of the second status"

Apple's Proposed Construction
“descriptive of the changed status”

Impact of Proposed Constructions
Motorola’s Position: Motorola is unaware of
any impact the construction proposed by Apple
would have on the issues of infringement and
validity. Even under Apple's construction,
Motorola believes that the Apple products meet
this claim term, if not literally than under the
doctrine of equivalents, as the Apple products
utilize a substantially similar process for
synching multiple devices across a wireless
network.
Apple’s Position: The accused functionality
does not describe a changed message status

15

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions
(e.g., “read,” “delete,” “protect,” etc.). Instead,
it merely provides a generic indication (i.e., in
the form of a generic “ping”) that something has
changed. Therefore, under Apple’s proposed
construction, the accused systems do not
infringe.

1.

Products Related to the Asserted Claims

Motorola asserts that all of Motorola's mobile devices using the Android operating system, including the Atrix, Bravo,
Charm, Citrus, Cliq, Cliq XT, Cliq 2, Defy, Devour, Droid, Droid 2, Droid 2 Global, Droid X, Droid Pro, BackFlip, Flipout, Flipside,
i1, and Xoom relate to the inventions of the asserted claims. Apple asserts that the following product is specifically mentioned in the
patent: Motorola Tango pager.
Products Accused of Infringing the Asserted Claims
Motorola asserts that several of Apple's mobile devices and MobileMe service infringe the asserted claims of the '119
patent, including MobileMe, Apple iPhone 3G S, Apple iPhone 3G, Apple iPhone 4G, Apple iPad with 3G, Apple iPad 2 with 3G, and
Apple iPod Touch.

16

D.

Disputed Terms of the '987 Patent

Disputed Claim Term

Motorola's Proposed
Construction

The antenna . . . is disposed
between an outside surface
of the housing and the at
least a portion of the user
interface

Ordinary meaning – this phrase
requires no construction

(‘987 Claims 13-14)

In the alternative, "the antenna . . . is
arranged between an exposed
surface of the housing and the at
least a portion on the user interface"

Apple's Proposed Construction

Impact of Proposed Constructions

“the entire antenna is placed between
the outside surface of the receiver’s
case and the portion of the user
interface surrounded by the antenna”

Motorola’s Position: Motorola is unaware of
any impact the construction proposed by Apple
would have on the issues of infringement and
validity. Even under Apple's construction,
Motorola believes that the Apple products meet
this claim term, if not literally than under the
doctrine of equivalents, as the Apple products
utilize a substantially similar antenna
orientation.
Apple’s Position: Neither antenna of the iPhone
4, in its entirety, is placed between the outside
surface of the receiver’s case and the portion of
the user interface surrounded by the antenna.
Therefore, under Apple’s proposed construction,
the accused product does not infringe.

1.

Products Related to the Asserted Claims

Motorola is undergoing a review to identify Motorola products that relate to the inventions of the asserted claims.
Apple asserts that the following products are specifically mentioned in the patents: Motorola radiotelephone model number 1293A
and the Motorola “Bravo” pager.
2.

Products Accused of Infringing the Asserted Claims

Motorola contends that Apple's iPhone 4, and its associated "bumper," infringe the asserted claims of the '987 patent.

17

E.

Disputed Terms of the '737 Patent

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

Address identifying the
portable communication
device

“Ordinary meaning – this term
requires no construction.

"a number used to direct messages that
uniquely identifies a portable
communication device”

(‘737 Claim 9)

In the alternative, some reference
uniquely identifying the portable
communication device”

Motorola’s Position: Motorola is unaware of
any impact the construction proposed by Apple
would have on the issues of infringement and
validity. Even under Apple's construction,
Motorola believes that the Apple products meet
this claim term, if not literally than under the
doctrine of equivalents, as the Apple products
utilize a substantially similar process for
authenticating a mobile device.
Apple’s Position: Motorola has not specified
what they are accusing as the “address
identifying the portable communication device.”
The accused systems do not send any
information used to direct messages that
uniquely identifies to the fixed unit the device
seeking authorization. Therefore, under Apple’s
proposed construction, the accused systems do
not infringe.

1.

Products Related to the Asserted Claims

Motorola asserts that all of Motorola's mobile devices using the Android Market client relate to the asserted claims.
Apple asserts that the following products are specifically mentioned in the patents: Motorola pagers utilizing Motorola’s “FLEX”
protocol.

18

2.

Products Accused of Infringing the Asserted Claims

Motorola asserts that several of Apple's mobile devices and MobileMe service infringe the asserted claims of the '737
patent, including Apple iPhone 3G, Apple iPhone 3GS, and Apple iPhone 4G, Apple iPad, Apple iPad with 3G, Apple iPad 2, Apple
iPad 2 with 3G, Apple iPod Touch, Apple MacBook, Apple MacBook Pro, Apple MacBook Air, Apple iMac, Apple Mac Mini, and
Apple Mac Pro.

F.

The '161 Patent
There are no disputed terms for the asserted claims of the '161 patent.

19

1.

Products Related to the Asserted Claims

Motorola asserts that all of Motorola's mobile devices that use the Android operating system and have a text messaging
client relate to the asserted claims. Apple asserts that the following products are specifically mentioned in the patents: the Wireless
Messaging Gateway (WMG™) Administrator! paging terminal, the RF-Conductor!™ message distributor, the RF-Orchestra!
transmitter, the RF-Audience!™ receivers, and PageWriterTM 2000 data messaging units.

2.

Products Accused of Infringing the Asserted Claims

Motorola asserts that several of Apple's mobile devices and its MobileMe service infringe the asserted claims of the
'161 patent, including Apple iPhone 3G, Apple iPhone 3GS, and Apple iPhone 4G, Apple iPad, Apple iPad with 3G, Apple iPad 2,
Apple iPad 2 with 3G, Apple iPod Touch, Apple MacBook, Apple MacBook Pro, Apple MacBook Air, Apple iMac, Apple Mac Mini,
and Apple Mac Pro, and MobileMe.

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Dated: October 5, 2011
Respectfully submitted,

Respectfully submitted,

APPLE, INC.

MOTOROLA SOLUTIONS, INC. (f/k/a
MOTOROLA, INC.) AND MOTOROLA
MOBILITY, INC.

By:

By:

/s/ Christopher R. J. Pace
Christopher R. J. Pace
[e-mail]
Edward Soto
[e-mail]
WEIL, GOTSHAL & MANGES LLP
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Of Counsel:
Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]
Jill J. Ho
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Matthew D. Powers
[e-mail]
Steven S. Cherensky
[e-mail]
Tensegrity Law Group LLP
201 Redwood Shores Parkway, Suite 401
Redwood Shores, CA 94065
Telephone: [phone]

/s/ Anthony Pastor
Anthony Pastor

Charles K. Verhoeven
[e-mail]
Anthony Pastor
[e-mail]
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

By:

/s/ Edward M. Mullins
Edward M. Mullins
(Fla. Bar No. 863920)

[e-mail]
Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Telephone: [phone]
Facsimile: [phone]
Edward J. DeFranco
[e-mail]
Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Telephone: [phone]
Facsimile: [phone]

David A. Nelson
[e-mail]
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
Telephone: [phone]
Facsimile: [phone]

Robert T. Haslam (CA Bar No. 71134)
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065-1418
Telephone: [phone]
Facsimile: [phone]
Robert D. Fram (CA Bar No. 126750)
[e-mail]
Christine Saunders Haskett (CA Bar No. 188053)
[e-mail]
Samuel F. Ernst (CA Bar No. 223963)
[e-mail]
Winslow B. Taub (CA Bar No. 233456)
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111-5356
Telephone: [phone]
Facsimile: [phone]

Attorneys for Plaintiff and Counterclaim
Defendant Motorola Solutions, Inc. and
Motorola Mobility, Inc.

Attorneys for Defendant and Counterclaim Plaintiff
Apple, Inc.

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on October 5, 2011, I served the foregoing document via
electronic mail on all counsel of record identified on the attached Service List.
/s/ Edward M. Mullins
Edward M. Mullins

SERVICE LIST
Motorola Mobility, Inc. v. Apple, Inc.
Case No. 1:10-cv-23580-UU
United States District Court, Southern District of Florida
Christopher R.J. Pace
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
Miami, Florida 33131
Tel.: [phone] / Fax: [phone]
Matthew D. Powers
[e-mail]
Steven S. Cherensky
[e-mail]
TENSEGRITY LAW GROUP LLP
201 Redwood Shores Parkway, Suite 401
Redwood Shores, CA 94065
Tel: [phone]
Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Tel.: [phone] / Fax: [phone]
Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Tel.: [phone] / Fax: [phone]
Robert D. Fram
[e-mail]
Christine Saunders Haskett
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111
Tel.: [phone] / Fax: [phone]
Attorneys for Apple, Inc.
Electronically served via CM/ECF

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