Motorola Mobility, Inc. v. Apple, Inc.

Filing 145

NOTICE by Motorola Mobility, Inc. of Filing Amended Joint Chart Concerning Impact of Claim Construction (Giuliano, Douglas)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-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.

AMENDED JOINT CHART CONCERNING
THE IMPACT OF CLAIM CONSTRUCTION

02426.51753/4400900.1

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.”
alternative definition of the term.
in the joint statement charts below.

This is Apple’s

Accordingly, because the definition of “gesture” is no longer in dispute, “gesture” is not included
The parties have also agreed to the relevant functions for the means-plus-function claims.

The parties continued to meet and confer following the tutorial and have reached additional agreements.

Specifically, the

parties have agreed that the corresponding structure for “control means in communication with” is “remote control.”

As previously

indicated, the parties agree that the corresponding function for this term is “sending commands to the transceiver to allow a user to
selectively display multiple levels of information on an A/V display” with respect to the ’509 patent and “sending commands to the
transceiver to allow a user to display A/V programs on an A/V display” with respect to the ’456 patent.

Because there is no longer a

dispute regarding this term, “control means in communication with” has been removed from the charts below.
In addition, the parties agree that “listing interface” no longer requires construction for the ’509, ’560, and ’456 patents.
Accordingly, the term “listing interface” is not included in the charts below.
The parties have also narrowed their dispute concerning the corresponding structure for “listing means” and “listing interface
means” as used in the ’509, ’560, and ’456 patents.

The chart below has been revised to reflect the parties’ current proposals.

Finally, with respect to the ’987 patent, Motorola’s previous construction read “the antenna . . . is arranged between an
exposed surface of the housing and the at least a portion on the user interface.”

02426.51753/4400900.1

In order to narrow the issues, Motorola has agreed to

revise its alternative proposed construction to replace the word “exposed” with “outside,” as is already in the claim language, to read
“the antenna … is arranged between an outside surface of the housing and the at least a portion of the user interface.”

This change is

noted below.
I.

DISPUTED TERMS OF APPLE’S PATENTS
A.

Disputed Terms of the ’849 Patent1

Disputed Claim
Term

Motorola’s Proposed
Construction

Apple’s Proposed Construction

Impact of Proposed Constructions

Moving [an][the] 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, 12-14,
16-18)

In the alternative: “causing an
unlock image to change from one
location to another.”*

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.
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

1

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

2

Disputed Claim
Term

Motorola’s Proposed
Construction

Apple’s Proposed Construction

Impact of Proposed Constructions
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.

///

///

3

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)
Detect[ing][s] . . . a
display device

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.

(’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.

4

Disputed Claim Term

Motorola’s Proposed
Construction

Apple’s Proposed Construction

Impact of Proposed Construction

modifying the allocation of
display space

“Changing the allotment of the
global coordinate space available for
use by display devices”

Plain and ordinary meaning applies or,
in the alternative: “allocating or
deallocating display space”

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.

“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.

5

3.

Products Related to the Asserted Claims

Apple asserts that the Apple PowerBook and subsequent computer products allowing connections to external monitors,
including the iPad 2 tablet computer, relate to the asserted claims.
4.

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.

Disputed Terms of the ’456 / ’509/ ’560 “Florin” Patents2
Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

2

Impact of Proposed Constructions

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 (controlling means only), and ’560 Patents.

6

Disputed Claim Term
listing means / listing
interface means
(’509 Claims 15-20, 22-27,
51-52, 54-58, and 60-63;
’456 Claims 1, 2, 4, and 9)3

Motorola's Proposed
Construction

Apple's Proposed Construction

Agreed (as to terms in the 509 patent)
Corresponding Function:
’456
Under § 112 ¶ 6, the function is “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.”

Impact of Proposed Constructions
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.
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

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 is an obvious error, which can be corrected
by the Court. Motorola does not believe “means” would be appropriately added to the ‘456 patents by “correction” or otherwise.
The parties agree that, if the Court at some later time order the word “means” to be added to the ’456 Patent claims such that the
phrase “listing interface” would be “listing interface means,” that the construction of “listing means” in the ’509 Patent would apply.
Both parties agree that this issue is not properly before the Court at this time.

7

Disputed Claim Term

Motorola's Proposed
Construction

Apple's Proposed Construction

Impact of Proposed Constructions

Corresponding Structure: A central
processing unit (CPU); system
memory; A/V processor; A/V
decoder; A/V connect module
[including circuitry/software that
generates graphic overlay function
(for PiP claims only); one or more
tuners/demodulators, wherein one
tuner/demodulator reads and
displays a current program from one
of the channels received, and
additional tuners/demodulators (or
the same tuner/demodulator, used in
alternation) read and display data
from the side-band channels in
picture-in-picture (PiP) windows;
switcher]; A/V encoder; buses
necessary to transport data; software
that generates picture-in-picture
windows (for PiP claims only);
software that generates program
listings; memory and bus controller;
a wireless control unit; and a remote
control.

Corresponding structure: A central
processing unit (CPU); system
memory; A/V processor; A/V connect
module [including circuitry/software
that generates graphic overlay function
(for PiP claims only); one or more
tuners/demodulators, switcher]; A/V
encoder; buses necessary to transport
data; software that generates picturein-picture windows (for PiP claims
only); software that generates program
listings; memory and bus controller.

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

8

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

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
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.

In the alternative: “remote control in
communication with.”*

9

5.

Products Related to the Asserted Claims

Apple’s development of the EZTV system, which did not result in a consumer product.
development of the EZTV system is related to the asserted claims.

Apple contends that its

Motorola disagrees and contends that although there are no

commercial embodiments related to the asserted claims, a promotional video regarding EZTV was incorporated into the specification.
6.

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.

11

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 ’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.
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."*
In the alternative: “a data unit that
has passed a set of user-selected
criteria.”*

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
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.

12

Disputed Claim Term

Motorola’s Proposed
Construction

Apple’s Proposed Construction

Impact of Proposed Constructions
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
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

13

2 with 3G, Apple iPod Touch, Apple MacBook, Apple MacBook Pro, Apple MacBook Air, Apple iMac, Apple Mac Mini, Apple Mac
Pro, and MobileMe.
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)

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

In the alternative, “providing an
indication of the second status”

14

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

Disputed Claim Term

Motorola’s Proposed
Construction

Apple’s Proposed Construction

Impact of Proposed Constructions
synching multiple devices across a wireless
network.
Apple’s Position: The accused functionality
does not describe a changed message status
(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.
patent:

Apple asserts that the following product is specifically mentioned in the

Motorola Tango pager.
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 '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.

15

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 outside surface
of the housing and the at least a
portion of 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.

16

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.

17

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.
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 16, 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]
Attorneys for Defendant Apple Inc.
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
Tel: [phone]

02426.51753/4400900.1

/s/ Anthony Pastor
Anthony Pastor

Charles K. Verhoeven
Anthony Pastor
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[e-mail]
Edward M. Mullins (863920)
Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Phone: [phone]
Fax: [phone]
Email: [e-mail]
Edward J. DeFranco
Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Phone: [phone]
Fax: [phone]
Email: [e-mail]
David A. Nelson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
500 West Madison St., Ste. 2450
Chicago, IL 60661
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

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]

Attorneys for Plaintiff and CounterclaimDefendant Motorola Solutions, Inc. and
Motorola Mobility, Inc.

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 Defendant and CounterclaimPlaintiff Apple, Inc.

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on October 16, 2011, I served the foregoing document via
electronic mail on all counsel of record identified on the attached Service List.
/s/ Matthew O. Korhonen
Matthew O. Korhonen

02426.51753/4400900.1

SERVICE LIST
Motorola Mobility, Inc. versus Apple Inc.
Case No. 1:10cv023580-Civ-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]
Attorneys for Apple, Inc.
Electronically served via e-mail
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
Telephone: [phone]
Facsimile: [phone]
Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

02426.51753/4400900.1

Robert D. Fram
[e-mail]
Christine Saunders Haskett
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Apple, Inc.
Electronically served via e-mail

02426.51753/4400900.1

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