Motorola Mobility, Inc. v. Apple, Inc.

Filing 159

RESPONSE/REPLY to 95 Affidavit, Supplemental Claim Construction Brief by Apple, Inc.. (Attachments: # 1 Affidavit Declaration of Christine Haskett, # 2 Exhibit #1- Hearing Transcript, # 3 Exhibit #2- Presentation, # 4 Exhibit #3- Contentions, # 5 Exhibit #4- EP0847654B1, # 6 Exhibit #5- Comparison, # 7 Exhibit #6- Translation, # 8 Exhibit #7- Rule 43)(Pace, Christopher)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO.: 1:10-CV-23580-UU

MOTOROLA MOBILITY, INC.,
Plaintiff,
v.
APPLE INC.,
Defendant.

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

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DEFENDANT AND COUNTERCLAIM-PLAINTIFF APPLE INC.’S
SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF

I.

Introduction
The asserted claims of U.S. Patent No. 5,754,119 (“the ’119 Patent”) include the

limitation “responsive to receiving the second message, transmitting a third message.” As
“responsive to” implies, the claims require a direct cause-and-effect relationship between
receiving the second message and transmitting a third message, as described throughout the
intrinsic record. Accordingly, Apple, Inc. (“Apple”) respectfully submits its revised proposed
construction: “transmitting a third message as a direct result of receiving the second message.”1
Counsel for Motorola Mobility, Inc. (“Motorola”) agreed that the claim language “talks about a
cause and effect” but yet still appears to dispute whether receipt of the second message must
cause transmission of the third message. See Ex. 1, Markman Hrg. Tr. at 426:8-9; 446:21-25.2
Yet, as the Court pointed out, if there is an intervening fourth or fifth message, then the
transmission of the third message would no longer be “responsive to” the second message. See
id. at 447:4-8. Moreover, Motorola recently argued that the language “responsive to” in the
substantively identical European counterpart to the ’119 Patent requires transmission of the third
message to occur “as a result of the receipt of the second message.”
II.

The Parties Have a Dispute Over Claim Scope Because In the Accused Apple
Products, Receipt of the Second Message Does Not Directly Result in Transmission
of the Third Message
The parties’ opposing constructions relate to a dispute over the proper scope of the

claims. Put simply, in the accused products, receipt of what Motorola asserts is the “second
message” does not directly result in transmission of the “third message” required by the claims.
1

During the hearing, the Court proposed a similar construction: “upon receiving the second
message and as a direct result of receiving the second message, transmitting a third message.”
See Ex. 1, Markman Hrg. Tr. at 446:16-19.

2

All “Ex.” cites refer to the exhibits attached to the Declaration of Christine Saunders Haskett in
Support of Apple Inc.’s Supplemental Claim Construction Brief, unless otherwise noted.

1

See Ex. 1, Markman Hrg. Tr. at 443-449; Ex. 2, Apple’s Markman Presentation at 45-49.
Instead, intervening steps are required to cause the transmission of the “third message.” If no
further action is taken by the user or the user’s devices, the IMAP server does not transmit the
status change that was in the “second message.” Motorola argues that the claims nonetheless
capture the accused products. See Ex. 3, Motorola’s Infringement Contentions at 9-13. Such a
dispute as to claim scope requires the Court to construe this term. O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
III.

The Intrinsic Evidence Supports Apple’s Revised Construction, Which Clarifies
That Receipt of the Second Message Directly Results in Transmission of the Third
Message.
Apple proffers a revised wording of its proposed construction to alleviate any confusion

introduced by the term “automatically.” Like “automatically,” “as a direct result of” does not
require the “immediate” transmission of the third message in the temporal sense. Instead, it
requires the causal relationship clearly conveyed by the claims, specification and prosecution
history—that receipt of the second message directly results in transmission of the third message.
A.

The Patent Repeatedly Uses the Phrase “Responsive to” in Claim 1 to
Connote Causation.

The phrase “responsive to” also appears in the second and fourth elements of claim 1 to
describe changing the first status of the first message to a second status at the first transceiver
and the second transceiver, respectively. Because “a word or phrase used consistently
throughout a claim should be interpreted consistently,” Phonometrics, Inc. v. N. Telecom Inc.,
133 F.3d 1459, 1465 (Fed. Cir. 1998), examining Motorola’s use of “responsive to” throughout
claim 1 sheds light on the proper construction of the term at issue.
With regard to the second element of claim 1, the specification describes that the input
“causes the status of message 205 to change from ‘unread’ to ‘read’” in the first transceiver.
2

’119 Patent at 5:45-46 (emphasis added). The specification also states that the first status is
changed to the second status “as a result of a subsequent input to the first transceiver.” Id. at
10:50-53 (emphasis added). These disclosures indicate that the phrase “responsive to” in claim 1
connotes a direct causative relationship between two events. Similarly, with regard to the fourth
element of claim 1, the Examiner believed that the language “responsive to” was language of
causation, describing the claimed method as one
wherein status changes (e.g., changes to received messages, alarm
times, alert thresholds and key word alerts) made on a first pager
are wirelessly communicated to an infrastructure which
automatically communicates such status changes to other pagers,
thus causing the other pagers to make corresponding status
changes in their status.
Dkt. No. 93-3, Notice of Allowability at 3-4 (emphasis added).
B.

The Specification and Prosecution History Reveal That Receipt of the Second
Message Directly Results in Transmission of the Third Message.

The direct cause-and-effect relationship between receipt of the second message and
transmission of the third message is depicted in Figure 1 and described in column 6, lines 10-14
of the specification:
Infrastructure 110 receives message 240 at step 245. The message
is then submitted to a message queue of the infrastructure 110 for
transmission by the infrastructure. In step 250, the infrastructure
transmits the status of the first message via a third message, or
message 255.
The causative relationship between the steps of the claimed method is underscored by the
patentees’ repeated description in the specification and the prosecution history of the claimed
method as “automatic.” See, e.g., ’119 Patent at Abstract, 1:45-47, 1:66-2:2, 10:50-54; Dkt. No.
93-2, June 20, 1997 Amendment at 4. See also Dkt. No. 93, Apple’s Op. Br. at 7-9.
IV.

In Litigation Concerning the Same Claim of the European Counterpart to the ’119
Patent, Motorola Argued That “Responsive to” Requires a Causal Connection
Between Receipt of the Second Message and Transmission of the Third Message
3

Motorola has also filed a parallel suit against Apple in Germany, accusing Apple of
infringing the European counterpart to the ’119 patent, EP 0847654 B1 (“EP ’654”). The
disclosure of EP ’654 and the language of claim 1 is substantively identical to that of the ’119
Patent. See Ex. 4, EP ’654; see also Ex. 5, Comparison of ’119 Patent and EP ’654.
After briefing on claim construction in this case closed, Motorola submitted a brief in the
German litigation construing the phrase “responsive to receiving the second message,
transmitting the third message” in claim 1 of EP ’654. 3 Significantly, Motorola’s construction
requires a causal connection between receipt of the second message and transmission of the third
message:
From the wording alone, “responsive to” merely requires a causal
connection and no time immediacy, which would be completely
undefined for one skilled in the art.
Ex. 6, Translation of Motorola’s Reply Brief at 5 (emphasis added). Motorola also argued that
“the sending of the third message in [the element at issue] is ‘responsive to’ because it occurs as
a result of the receipt of the second message.” Id. at 8 (emphasis in original).
Additionally, Motorola argued that the language “responsive to” means that transmission
of the third message is initiated by receipt of the second message, and not some action by the
user or by the second device:
When the server sends a synchronization message to the other
receiving device without the user or his receiving device needing
to initiate such a synchronization message, then the sending of this
third message occurs “responsive to” the second message.
Id. at 6 (emphasis added). The Court may consider Motorola’s admissions to the German court,
3

Apple is mindful of the Court’s statements concerning the admission of new evidence, but here
Motorola has an opportunity to respond, and Motorola’s statements in the German brief were
made, and therefore only became available, on October 11, 2011, almost two months after claim
construction briefing in this case closed on August 18, 2011.

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which are clearly relevant to the parties’ dispute. See, e.g., Gillette Co. v. Energizer Holdings,
Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (relying on construction accused infringer gave to
term “comprising” in foreign proceeding relating to foreign counterpart to asserted U.S. patent).
V.

“Responsive to” Does Not Mean “Without Human Intervention”
At the Markman hearing, Motorola indicated that it would accept a construction of

“responsive to” as “without human intervention.” See, e.g., Ex. 1, Markman Hrg Tr. at 435:1113, 450:7-10. Motorola’s proposal, however, fails to address the issue in dispute, i.e., whether
receipt of the second message must directly result in transmission of the third message.4
Moreover, Motorola’s proposed construction of “responsive to” would not make sense if
it is applied consistently, as it should be, elsewhere in claim 1. In the second substantive element
of claim 1, the first status of the first message is changed to the second status “responsive to” an
input to the first transceiver. The specification describes that this “input to the first transceiver”
is user input. See, e.g., ‘119 Patent at 5:40-43 (“Referring again to FIG. 1, in step 220, pager 130
receives an input from the user: typically the user interacts with a user interface by depressing a
button on the pager indicating a desire to read the message.”). If “responsive to” were construed
to mean that user intervention cannot be a triggering event, the construction could not be
reconciled with the fact that user input is required by this claim element.
VI.

Conclusion
Accordingly, Apple respectfully requests that the Court adopt Apple’s revised proposed

construction: “transmitting a third message as a direct result of receiving the second message.”

4

Lack of user intervention is, of course, an example of how one event can directly result in
another, but it is neither a requirement nor the only requirement; in order for a direct cause-andeffect relationship to exist, there must be no other intervention, human or otherwise, that results
in the second event.

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Dated: October 26, 2011

Respectfully submitted,
__/s/ Christopher R. J. Pace________________
Christopher R. J. Pace
[e-mail]
Edward Soto
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
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]
Robert T. Haslam (CA Bar No. 71134)
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065-1418
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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 Apple Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on October 26, 2011, I filed the foregoing document with the Clerk
of the Court. I also certify that the foregoing document is being served this day on counsel of
record identified on the attached Service List via email and CM/ECF.

__/s/ Christopher R. J. Pace______________
Christopher R.J. Pace (Fla. Bar No. 0721166)

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SERVICE LIST
Case No. 1:10cv023580-Civ-UU
Edward M. Mullins
Fla. Bar No. 863920
[e-mail]
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Motorola Mobility, Inc.
Electronically served via CM/ECF and via email

Of Counsel:
Charles K. Verhoeven
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
[phone]
Edward J. DeFranco
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
David A. Nelson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Motorola Mobility, Inc.
Electronically served via email

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