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)

EXHIBIT 1

Page 408
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No.: 10-23580-Civ-UNGARO
MOTOROLA MOBILITY, INC.,
Plaintiff,
-vAPPLE, INC.,
Defendant.

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VOLUME 2B

Miami, Florida
October 18, 2011
3:06 p.m.

TRANSCRIPT OF MARKMAN HEARING
BEFORE THE HONORABLE URSULA UNGARO
U.S. DISTRICT JUDGE
APPEARANCES:
For the Plaintiff

ASTIGARRAGA DAVIS MULLINS & GROSSMAN, PA
BY: EDWARD M. MULLINS, ESQ.
701 Brickell Avenue - 16th Floor
Miami, Florida 33131
-andQUINN EMMANUEL URQUHART & SULLIVAN
BY: DAVID A. PERLSON, ESQ.,
ANTHONY PASTOR, ESQ., and
JOHN DUCHEMIN, ESQ.
50 California Street - 22nd Floor
San Francisco, California 94111
-andBY: RAYMOND N. NIMROD, ESQ.
51 Madison Street - 22nd Floor
New York, New York 10010

(Continued)
REPORTED BY:

TAMRA K. PIDERIT, FPR, RPR, CRR

[phone]

Prose Court Reporting
250 South Australian Avenue - Suite 1500
West Palm Beach, Florida 33401

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APPEARANCES (continued):

2
3

For the Defendant

4
5

WEIL, GOTSHAL & MANGES, LLP
BY: MATTHEW D. POWERS, ESQ.,
JILL J. HO, ESQ., and
ANNE M. CAPPELLA, ESQ.
201 Redwood Shores Parkway
Redwood Shores, California 94065-1134

6
COVINGTON & BURLING, LLP
BY: ROBERT T. HASLAM, ESQ.,
CHRISTINE S. HASKETT, ESQ., and
CHRISTOPHER K. EPPICH, ESQ.
333 Twin Dolphin Drive - Suite 700
Redwood Shores, California 94065

7
8
9
10
11
12

(Call to order of the Court)
THE COURT:

Okay.

You can have a seat.

How are we

doing this?

13

MR. HASLAM:

14

THE COURT:

15

MR. HASLAM:

16

It's me.

Bob Haslam.

I can do it in less.

How much time do you need?
I'm going to ask for an hour, but I think

17

THE COURT:

18

MR. HASLAM:

19

THE COURT:

20

MR. HASLAM:

21

As I have been sitting here the last two days, I have

22

had several thoughts, but two I thought I might share with you

23

as sort of an introduction on the '119 patent perhaps that's

24

going to be applicable to some of the other patents.

25

An hour a side?

Do you want some rebuttal?

Yes.
Ten minutes?
I will take 10 minutes.

There is a judge in California who has done a lot of

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patent cases.

2

THE COURT:

3

MR. HASLAM:

That poor judge.
He would sympathize and probably empathize

4

with what you are going through here yesterday, today, tomorrow,

5

and after we leave.

6

to other judges about the process.

7

examples was a claim that they had that had the term

8

"substantially parallel."

9

to myself, when I went to school there were parallel lines and

He would give talks to the bench and also
In one of his favorite

When I heard him say that I thought

10

nonparallel lines, and I don't know what "substantially

11

parallel" means, so I empathize with him.
The second thought that I had, and I did have more than

12
13

two thoughts the last several days, but the second thought is I

14

don't think the '119 patent is over there in the category of

15

substantially parallel.

16

spectrum.

17

It's actually at the other end of the

I suspect you will either have or will wonder on this

18

one, as you did ask on a prior one, why do I need to construe

19

this at all.

20

my presentation is why these terms, which may seem like they are

21

ordinary terms even to the people who might sit in the jury, why

22

there is still a dispute that requires your resolution.

23

because we know what mischief, because of other discovery in

24

this case, we know what mischief Motorola will attempt to cloak

25

it's ordinary meaning in.

One of the things I'm going to elaborate on during

It's

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THE COURT:

2

MR. HASLAM:

They seem they are mischievous.
The first page there it just has the

3

patent; again, it's for reference.

4

what the problem that the '119 patent was aimed at purportedly

5

solving.

6

user had multiple pagers, changes that were made on one pager

7

were not automatically synchronized with the other.

8

solution they came up with was automatic synchronization of

9

changes made on one pager -- with one user's pager with that

10

I want to start here with

And the problem they faced was back in the '90s when a

The

user's other pagers.
One of the slides that we use in the tutorial, and it

11
12

comes right off the specification, an example that the inventors

13

gave is the beach pager, the neon beach pager during the day

14

where the user is on the beach receiving and reading and

15

deleting or saving or protecting messages weren't being

16

automatically made those same changes on his evening black

17

pager.

18

avoid the tedious task of having to reread messages, resave

19

them, redelete them, or do whatever at home.

20

So they wanted to come up with a way that they could

Next slide, slide 6, just graphically illustrates what

21

the problem was.

22

And the background of the invention, again, highlights what they

23

thought the problem was.

24

pager and, therefore, has to make the changes.

25

The specification, slide 7, is the background.

The user is faced with a different

At the end of that portion that I have put up on slide

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7, they tell us what their solution -- what they were looking

2

for to solve the problem, and they stated, "Thus, what is needed

3

is a way to have message status changes made on any one of the

4

user's pagers automatically made on the user's other pagers."

5

The point I'm going to come back to, and we are going

6

to see it over and over again, is the word "automatically,"

7

which is one of the terms that we believe should be included in

8

the Court's construction.

9

I have put up here Claim 1, and I have walked through

10

it, but I want to move on because I want to go through Claim 1

11

with an animation we have, which I think illustrates what the

12

invention is as described in Claim 1.

13

What we see here on the screen on slide 12 is in the

14

upper, left-hand corner is the neon beach pager, and down below

15

we see the black evening pager.

16

the beach, and a first message has been sent to me if I'm the

17

person at the beach and waiting to go home from my home pager.

18

In the terminology of the claim, we have both pagers, because we

19

have the same address, have received a message, and the first

20

status is unread.

21

Again, during the daytime at

The claim goes on to describe a change in the -- there

22

we have the first message coming in, first status unread.

The

23

claim goes on to describe a manual input, in this case,

24

causing -- what we see in here is on the first pager the person

25

read the message and then decided to delete it.

That's the

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second status going from unread to delete.

2

with that status was sent in the claim term the wireless

3

transceiver, which is a tower in the wireless network, the

4

paging network, and we have seen in the nighttime at that point

5

in time when the delete was made on my beach pager, it hadn't

6

yet been made on the nighttime pager.

7

A second message

What we see here in the terms of the claim is in

8

response to the second message, a third message is being sent.

9

And in the third message the claim provides that the second --

10

the third message has something that is indicative of the second

11

status, indicative, in this case, of the delete.

12

And the claim goes on in the last element to say in one

13

of the other pagers, in this case my home pager, in response to

14

receiving the third message, which is the one that came from the

15

wireless infrastructure, changing the first status of the first

16

message, which was the one that I had received the same as at

17

the beach, to the second status, which in this case is delete.

18

So what I put on the screen here are the proposed

19

constructions.

20

"responsive to receiving the second message, transmitting a

21

third message."

22
23
24
25

The claim term we are going to focus on is

Our proposed construction is "upon receiving the second
message, automatically transmitting a third message."
THE COURT:

So what would it be if it wasn't automatic?

I mean, that's really the only concept that you introduce here,

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right?
MR. HASLAM:

2

It is.

I can give you an example.

3

on I have got an example of the accused device that will

4

illustrate what the device is.

5

Later

that might be a little more user friendly.

I thought of another example

If I'm at home at night and I hear somebody breaking

6
7

glass downstairs and I call 911, a policeman will be dispatched

8

as a result of or in response to my call --

9

THE COURT:

Right.

10

MR. HASLAM:

11

Now, suppose I'm not that smart, so I stay in my house,

-- and will come to my house.

12

doorbell rings, a policeman comes to the door soliciting funds

13

for the Policemen's Athletic League.

14

door, but he did not come in response to the 911 call, and

15

that's an argument that Motorola is going to make in the accused

16

device.

17

The policeman came to my

There is no third message within the context of the

18

claim that is in response to or upon receiving the second

19

message automatically sent.

20

talk later about where they are going to try to get that point

21

across in the claim language and out of the specification.

They are going to, and I'm going to

22

I think you have hit the nail on the head.

The patent

23

is all about, and I'm going to show you both in the

24

specification, in the claim language, and in the prosecution

25

history is all about in response to receiving the second message

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there is a cause-and-effect relationship that is a result of

2

that or caused by the receipt of the second message that the

3

third message is dispatched.

That's the essence of the dispute.

So what I put up here is a big red question mark is

4
5

Motorola's proposed construction is to leave it to argument to

6

the jury to what "responsive to receiving the second message"

7

means.

8

are going to argue is the policeman who is coming to solicit

9

funds for the PAL is somehow in response to my 911 call when he

10
11

As my somewhat clumsy example of a 911 call, what they

doesn't even know about the 911 call.
So here is what the dispute -- one way of phrasing the

12

dispute, "when receipt of the second message causes automatic

13

transmission of the third message," or in Motorola's view, as we

14

believe their position to be, "whether receipt of the second

15

message need not cause transmission of a third message."

16

Here is an overview of the arguments I'm going to make.

17

We find support both in the claim language, specification, and

18

the prosecution history.

19

claim language.

20

three spaces and color coded them.

21

to" in three places in Claim 1.

22

of the first message to a second message responsive to an input

23

to the one transceiver.

24

for purposes of the patent was one of the pagers.

25

And let's look first of all at the

I have up here Claim 1, and I have numbered
We see the term "responsive

First, is changing the status

Transceiver is in this claim language

As we saw the input in the example in the patent is me

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at the beach, pushes a button to delete a message.

The second

2

place we see it is where the claim dispute exists that we are

3

going to be resolving here, and that is responsive to receiving

4

the second message, transmitting a third message.

5

place is in the last element where the claim says, "responsive

6

to receiving the third message, changing the first status."

And the last

7

We know from both parties' legal tutorials that as a

8

very general but very often almost always true, the same term

9

used in a claim should be given the same meaning.

10

When we look at how the --

11

THE COURT:

12

understand this mechanically.

13

third message changing the first status of the first message to

14

the second status."

15

MR. HASLAM:

16

THE COURT:

Could you go back.

I'm not sure I

"Responsive to receiving the

Yes.
This is we are still talking about in the

17

transceiver that is not the one that originally received the

18

message.

19

MR. HASLAM:

Right.

That's because since both pagers

20

have the same address, when the first message came in in the

21

claim term, which is, for example, an e-mail from my wife, or

22

today it would be, back then it would be a page from somebody,

23

that goes to both the neon pager and nighttime pager, and they

24

call that the first message.

25

THE COURT:

So then when you open the message it's

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read, so that sends a message to the other beeper saying it's

2

been read?

3

MR. HASLAM:

4

THE COURT:

5
6

Correct.
And then there is a third message that's

sent to the beeper itself saying change its status to read?
MR. HASLAM:

Right.

And the second message -- to be

7

precise, the second message is the one that goes from my beach

8

pager to the wireless network.

9

around the third message which says change your status from the

The wireless network turns

10

first status in your example which was unread to read, which

11

that's what the last element is talking about.

12

THE COURT:

13

MR. HASLAM:

Okay.
In those three places they use the term

14

"responsive to."

15

talks about some of those limitations, it uses words of

16

causation.

17

changing the status on the beach pager here, the act of

18

depressing the button causes the status of message 205, which is

19

the first message, to change from unread to read in pager 130.

20

In the parlance of the patent, pager 130 is my neon beach pager.

21

When we look at the specification, when it

So Count 5, lines 45 and 46, it's talking about

Likewise at column 10, lines 50 to 53, and this is on

22

slide 24, it says:

When a first status in a transceiver is

23

changed to a subsequent status, as a result of a subsequent

24

input to the first transceiver, the invention provides a method

25

of automatically changing the first status in a second

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transceiver to the subsequent status.
So here again in the highlighted portion it uses words

2
3

of causation when it talks about what "responsive to" means.

4

Because in the claim, remember, in the first part it changes a

5

first message from a first status to a second status responsive

6

to an input, and the specification specifically is talking about

7

that change based on a subsequent input being as a result of.
And if we look at the papers in your binder, it's

8
9

docket number 93-3, it's a notice of allowabilty.

The examiner

10

in explaining why he was allowing the patent, among other

11

things, said that "wherein status changes made on a first pager

12

are wirelessly communicated to an infrastructure which

13

automatically communicates such status changes to other pagers,

14

thus causing the other pagers to make corresponding changes in

15

their status."
That's in the third claim element I was talking about

16
17

responsive to receiving the third message changing the second

18

message.

19

So if we look at the claim language mapped up with the

20

specification, we see that the patentees use "responsive to" in

21

a variety of ways to mean something causing something else, as a

22

result of, caused by, or causing something.

23

Now, let's look at what the specification says about

24

"responsive to" receiving the second message transmitting a

25

third message.

In the background of the invention, and I

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alluded to this in an earlier slide, this is column 1, line 66

2

to column 2, line 2 on slide 28, in describing after laying out

3

what the problems with the prior art were, they state the

4

problem that they were going to solve.

5

to have message status changes made on any one of the user's

6

pagers automatically made on the user's other pagers."

"What is needed is a way

7

I'm not going to belabor it, but both sides in their

8

tutorials said looking at the problem that the inventors were

9

trying to solve is a helpful way of defining or looking at what

10

should be the proper scope of the claim giving the inventor

11

nothing less than what they claimed, but also nothing more than

12

what they claimed.
Then if we look at the abstract, and I know there was a

13
14

lot of discussion legally about the significance of the

15

abstract, and the cases do look at it.

16

thick book that the Patent Office has called the Manual of

17

Patent Examining Procedures.

18

THE COURT:

19

MR. HASLAM:

20

There is actually a very

Where is the abstract?
The abstract is on the front page of the

patent.

21

THE COURT:

22

MR. HASLAM:

Oh.

Right.

I have got it on.

I have got it on the screen here, but it

23

is supposed to be a succinct statement of the technical

24

disclosure and of what is new.

25

specified at Section 608.018(b) of the Manual of Patent

That's something that is

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Examination Procedures.

2

need to go there, but there is guidance as to what it is.
THE COURT:

3

I don't necessarily suggest that you

Can I make a suggestion?

Without

4

understanding what their argument is, it's kind of useless to me

5

because what you are saying makes perfect sense.

6

understand their position on why what you are saying doesn't

7

make perfect sense.
MR. HASLAM:

8
9

sit down.

I'm perfectly happy on this claim term to

There is another term.

10

THE COURT:

11

MR. HASLAM:

12

THE COURT:

13

I need to

There is, right.
I'm happy to skip to that.
Why don't we do that, and then I will give

you a little more time in rebuttal if you have it.

14

MR. HASLAM:

All right.

15

The second term which is in that same clause that we

16

were looking at earlier is what does it mean to be indicative of

17

the second status.

18

might look at this and say why should I have to construe this.

19

It seems to be reasonably clear what it means.

20

This is one I suspect that reasonable minds

However, we believe it should be made clear that it is

21

descriptive of the changed status.

22

construction is ordinary meaning, or here they have given us a

23

proposed ordinary meaning definition, which is "providing an

24

indication of the second status."

25

Motorola's proposed

What we think the dispute might be, but Motorola will

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have to clarify this for us, we believe that the third message

2

contains the changed status.

3

is read, deleted, protected, or some other status.

4

that what Motorola is contending for is that the third message

5

merely indicates that a status change has occurred without

6

actually communicating what the new status is.

7

That is whether the changed status
We believe

What I have shown on slide 56, it's a rather busy

8

slide, but I have tried to condense some of the relevant

9

messages and some of the relevant claim terms in one graphic to

10

illustrate why we believe that the third message must contain

11

what the status change is as opposed to merely that a status

12

change has occurred.

13

beach pager, already having deleted the message, so that's the

14

second status.

15

THE COURT:

Again, I have shown the first pager, the

I don't get this.

I mean, then it goes on

16

to say, "and responsive to receiving the second message,

17

transmitting a third message indicative of the second status."

18

So whatever the indication is it's got to be parallel to the

19

second message.

20

So it's got to have some informational content.

MR. HASLAM:

Precisely.

If we actually look at the

21

claim, which I put up there at slide 58, the last claim element

22

says, "receiving the third message and responsive to receiving

23

the third message changing the first status of the first message

24

to the second status."

25

If you don't know what the second status is in that

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third message, then the home pager doesn't know what to change

2

the status to.

THE COURT:

3
4

If I -I'm not sure I understand this distinction

between indicative and descriptive.
MR. HASLAM:

5

If indicative means simply that the third

6

message says there has been some status change without telling

7

me what it is.

As I said --

THE COURT:

8

Okay.

I really need to understand how they

9

could take that position, because it's obvious, I think from it

10

here, that the third message has to be reflective in some way of

11

whatever the second message was.

12

words.

Maybe it has to be --

13

MR. HASLAM:

14

THE COURT:

15

MR. HASLAM:

16

Maybe it doesn't have to be

A bit.
Something.
This is the example of the three bits, 0

was unread, 1 is read.

17

THE COURT:

What difference does it make if they assign

18

a number to the information?

19

MR. HASLAM:

It doesn't.

But I believe what we believe

20

Motorola is contending for is the possibility that the third

21

message simply says some status has changed leaving the second

22

transceiver to guess whether I saved it, whether I deleted it.

23

If I have got a bank stock transaction that I get at my beach

24

pager that I want to make sure I save, and all I send to my home

25

pager is some status has changed, how does it know what to do?

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How does it know whether to delete it?

2

Save it?

Do something

else?
That's why I said at the outset this is one where the

3
4

Court might look at me like I have two horns because it seems

5

obvious that it has to say something in some fashion.

6

it's words or in digital data, it has to say something about

7

what the change was.
Given that and given that I think it's reasonably

8
9
10

obvious that's what it has to mean, I'm prepared to sit down and
let Motorola explain.
THE COURT:

11
12

Whether

Let me hear from Motorola.

I need to

understand Motorola's position.
MR. PASTOR:

13

We also think that the dispute here is

14

really easy to solve.

15

issue, which is "responsive to receiving the second message,

16

transmitting a third message."

17

clear.

18

that a person of ordinary skill --

19
20
21

I would like to start with the first

The claim language here is very

This is not an issue where there is any type of term

THE COURT:

If I don't add the word "automatic," how

would Motorola construe this term?
MR. PASTOR:

You have the whole point there, if you

22

don't add the word "automatic."

23

add the word "automatic" to the claim at all?

24

not contain the word --

25

THE COURT:

Why is there a requirement to
The claim does

If I don't infer automatic from this

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1
2
3
4
5
6

language, what is going on here?
MR. PASTOR:

Before you even reach that issue, you have

to ask what they are really talking about with automatic.
THE COURT:

I think what I'm talking about is what is

this invention about?
MR. PASTOR:

Let's go back to the background of the

7

invention.

The background of the invention, if you look at

8

column, you know, we talked about this earlier on, we talked

9

about column 1.

You can start at line 35:

If the user reads,

10

deletes, or protects the message on the carried pager, the

11

message remains as unread.

12

So basically what this is talking about is the user

13

then has to manually put in the change in the status in the

14

message on all of his or her devices.

15

said is that you can have a change in the status amongst all

16

your devices without user intervention.

17

THE COURT:

18

MR. PASTOR:

Now, what the invention

Right, automatically.
That is hey, wow, it's done automatically.

19

They are talking about adding the word "automatically" in a

20

particular part of the claim.

21

their alleged noninfringement position is that automatically --

22

we don't do automatically because it's not immediate.

23

THE COURT:

24

MR. PASTOR:

25

What they have identified in

I'm sorry, who says that?
Apple.

Apple says we don't infringe this

claim because our system it doesn't have a third message

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transmitted that's immediately sent.

2

automatically sent.

3

that word "automatically" here, we don't infringe because -THE COURT:

4
5

And they say it's not

What they are really saying by including

"Automatic" and "immediate" don't mean the

same things.
MR. PASTOR:

6

I agree what you have now identified is

7

there is a problem with their construction.

8

means?

Who knows what it

We are going to have a construction of a construction.

9

THE COURT:

10

MR. PASTOR:

It means without using interaction.
So if what they are proposing is that in

11

response to receiving the second message that there is a

12

transmission without user interaction?

13

proposing?

14

THE COURT:

I don't know.

15

Is that what you are saying?

16

MR. HASLAM:

17

THE COURT:

18

MR. HASLAM:

19

THE COURT:

20

MR. HASLAM:

Is that what they are

I will ask them.

No, Your Honor.
You are saying it has to be immediate?
No, we are not saying that either.
Okay.
It has to be caused by the receipt of the

21

second message, not caused by something else.

For example, in

22

my 911 where the policeman gets to my house because he is next

23

door on another call immediately in response to my 911 call or

24

whether it takes him a minute, the fact is that he got to my

25

house is in response to, caused by, my phone call.

acd2ea1c-87d5-4ec2-99da-78925274da0c

Page 426
We are not arguing for immediate.

1

What we are going

2

for is it has to be caused by the receipt of the second message.

3

When I get back up I will show you.
THE COURT:

4
5

So the issue is not the automatically.

The

issue is it's a response to the second message?

6

MR. HASLAM:

It's caused by.

7

MR. PASTOR:

Now we have gone down the rabbit hole of

8

what "automatically" means.

9

about a cause and effect.

The claim language already talks
It talks about responsive to

10

receiving the second message, transmitting a third message.

11

don't see how the word "automatically" adds anything but

12

confusion to the claim, because we have now heard that

13

automatically does not mean without user intervention, which is

14

the problem that the inventors were trying to solve.

15

something else, and this what they have just described, this is

16

the first time they have told us.
THE COURT:

17

I

It means

They are saying once the second message is

18

input, there is no user intervention, they agree with that, it's

19

automatically sent.

20

automatic transmission is triggered by the receipt of the second

21

message.

22

MR. HASLAM:

It's just that they are saying that the

That's right.

I think he just said that

23

this third message is caused by receipt of the second.

If they

24

will stipulate that the third message is caused by the receipt

25

of the second message, we have no dispute.

We can resolve that

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

and take that language.
MR. PASTOR:

2
3

The third message is transmitted in

response to receiving a second message.

4

THE COURT:

5

MR. PASTOR:

I don't get the dispute.
We are talking about -- there is no

6

dispute of the ordinary meaning.

7

responsive to receiving a second message transmitting a third

8

message.

9

there is causation, but there is nothing in between.

11

What they are trying to say is, and it's not just that

THE COURT:

10
that.

Well, they say -- no, they are not saying

They are not saying automatic means immediate.
MR. PASTOR:

12

The ordinary meaning says

13

again.

14

Now they are being a little bit tricky

Now what they are saying in their noninfringement

position --

15

THE COURT:

16

MR. PASTOR:

17
18

They think you are mischievous.
That's okay.

I my be mischievous, but not

today.
The point is if you look at their noninfringement

19

position, I guess we can go to their slide 46 -- might as well

20

start at 45.

21

THE COURT:

Is there some difference here between

22

"responsive" and "caused by"?

23

MR. PASTOR:

Well, is there a difference between

24

"responsive" to and "caused by"?

You know, I would have to look

25

at the ordinary meaning of "caused by."

I don't have a

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

definition of "caused by."

I generally think that we are

2

talking about that it is both of those terms would be talking

3

about one of the --

4

THE COURT:

5

MR. PASTOR:

It's a trigger.

It's just a trigger.

It's whether it's the sole trigger or

6

whether it's just part of the trigger.

7

responsive to something without being -- that something being

8

the sole reason why you have performed an action.

9

words -THE COURT:

10
11
12

Now, you can be

In other

In this context what else could it possibly

be?
MR. PASTOR:

Well, because the patent specification

13

talks about transmitting the second message or a number of

14

different messages, and it talks about there could be delays in

15

the system.

16

invention is not talking about a system of synchronizing

17

messages where there is no delays in the system whatsoever or

18

whether, you know, after receiving one of the messages --

This goes back to what the invention is.

19

THE COURT:

20

MR. PASTOR:

21
22

The

Do you think responsive connotes immediate?
No, I do not.

I do not.

I don't think

there is any requirement.
THE COURT:

Do you think that's why they are trying to

23

sneak this word "automatic" in, because they want to say that

24

responsive means immediate?

25

MR. PASTOR:

You just heard that responsive does not

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1

mean without user intervention -- I'm sorry, that automatic,

2

what they were trying to do does not mean without user

3

intervention, which was what the invention was, which is what

4

the references in the specification and prosecution history

5

referred to, what you understood it to be.

6

are trying to do.

7

That's not what they

They are trying to say that responsive, automatic

8

somehow means that it's the sole causation, and that if you look

9

at their infringement or noninfringement position --

10

THE COURT:

11

MR. PASTOR:

12

THE COURT:

13

MR. PASTOR:

14

THE COURT:

15

MR. PASTOR:

What other cause could there be?
What do you mean?
What do I mean?
I'm sorry, maybe I didn't hear you.
What other cause could there possibly be?
Perhaps we could resolve this issue if we

16

can ask Apple would they agree to adding "without human

17

interaction."

18
19

THE COURT:

In other words, would they

take out "automatic"?

20

MR. PASTOR:

21

THE COURT:

22

To which part?

Where they wanted "automatic."
"Upon receiving the second message

transmitting a third message without human interaction."

23

MR. PASTOR:

Exactly.

24

MR. HASLAM:

No, that's not what the invention is.

25

That's what the invention was.

When the patent wanted to talk about user intervention, it

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

specifically did so with respect to changing the first status to

2

the second status upon an input.

3

of the second message to the third message how that happens,

4

whether it's with or without user interface.

5

consistently says is it is caused by the receipt of the second

6

message.

It doesn't say in the receipt

What the patent

You know, he danced around the question when you asked

7
8

him whether or not he thought we were trying to get instant or

9

instantaneously.

As I inside my example of the 911 call, the

10

answer is no as long as what triggers the sending of the third

11

message is the second message.

12

THE COURT:

13

Everywhere in the patent --

But there is no human intervention in

sending the second message.

14

MR. HASLAM:

15

They put their finger on it.

16

cause other than the second message trigger the third message.

17

THE COURT:

18

MR. PASTOR:

19

THE COURT:

20

MR. PASTOR:

There isn't, but that is one aspect of it.
They are going to have some other

Give me an idea what would that be.
Pardon?
Give me an idea what would that be?
First, I think he is misstating the

21

dispute.

We are not saying that something else needs to be the

22

sole cause.

23

to the second message, that means that third message is not

24

going to be sent prior to receiving that second message that

25

it's in response to.

Okay?

What we are talking about is that responsive

So the plain language of the claims here

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

is exactly what we are talking about, exactly what was

2

described.

3

What they are trying to do is say that there is nothing

4

intervening between receiving the second message and then

5

transmitting the third message.

6

noninfringement position clearly is laid out to be.

7

Okay?

That's what their

We are saying -- and that's why they add the word

8

"automatically."

Again, it's what they are trying to say is

9

that there is nothing in between, nothing happens between

10

receiving the second message and transmitting the third message.

11

What we have really come out --

12

THE COURT:

13

Nothing does happen, right?

MR. PASTOR:

See, now the claim does not require that

14

nothing else happens.

15

second message, a third message is sent.

16

enough to have other items, other steps occur, and that's the

17

real dispute here.

18

nothing else that occurs between receipt of the second message

19

and transmission of the third message.

20

state that no delay can occur between receipt of the second

21

message and transmission of the third message.

22

It just says that responsive to the
The claim is broad

This patent does not say that there is

The patent does not

This whole talk about the specification, the problem to

23

be solved, none of that was talking about transmitting the

24

second message without any delay after receiving the second

25

message -- transmitting the third message after receiving the

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

second message.

That's the mischief.

2

mischief, Your Honor.

3

We are talking about

adding the word "automatically."

That's the mischief that's caused by

4

Now, we would stipulate --

5

THE COURT:

Let me make sure what it is this chart

6

says.

"The accused systems do not transmit status changes

7

automatically upon receiving them.

8

transmitted only when the receiving device first requests them."

9

MR. PASTOR:

10

THE COURT:

11

MR. PASTOR:

12

Where are you reading from?
I'm reading from the chart.
That's their noninfringement position, I

believe.
THE COURT:

13
14

Instead status changes are

Right.

I'm trying to understand what that

means.

15

MR. PASTOR:

16

THE COURT:

They are saying -In other words, if I have two beepers, and

17

I get a message on my first beeper and I read it, under Apple's

18

product it would not necessarily change that status on the

19

second beeper unless I requested an update in status or

20

something like that?

21

MR. PASTOR:

22

THE COURT:

23

MR. PASTOR:

24
25

No.
Is that the idea?
No.

Their system would have an update in

status that does not require human intervention.
Now what they would try so say is we have another

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

server involved or that this other severer sends a message to a

2

second server.

3

that occurs between receipt of the second message and

4

transmission of the third.

5

there is anything --

6
7

There is an intervening step, in other words,

THE COURT:

The claim does not care whether

Because this is a method claim, right?

This is not an apparatus claim?

8

MR. PASTOR:

9

THE COURT:

10

the messages get transmitted?

11

MR. PASTOR:

Right?

It is.
Right?

So it doesn't define exactly how

Correct.

There could be other steps.

You

12

know, a device can infringe a method claim even though it

13

performs -- I'm sorry, a method can infringe a claim, method

14

claim, even if that method is performed and then there is other

15

steps performed on top of that.

16

have here.

17

That's the instance that we

In other words, an easy example is if you have a

18

computer, okay, and the claim says I have a computer with a CPU,

19

a keyboard, and a screen.

20

computer infringes that, and they say no, no, no, that doesn't

21

infringe because it also has a touch pad.

22

THE COURT:

We go ahead and we say, oh, this

This gets to a problem that I have been

23

having with some of these.

I have a lot of trouble

24

understanding how these proposed constructions meet head on the

25

issue that one side or the other is trying to address.

If

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

that's what Apple is trying to address here, and I don't mean to

2

put you in the position of talking to Apple, I don't really see

3

how adding this word "automatically" has anything to do with

4

whether or not there is some intervening communication device.

5

MR. PASTOR:

Well, it's because, as we have identified

6

today, they didn't really just mean automatic.

7

defined as --

8
9

THE COURT:

Automatic is

So, again, this is part of my problem here

is that I don't understand how the choices of words that each

10

side is putting into these proposed constructions, I oftentimes

11

do not understand how the words chosen by each side address the

12

problem that each side is trying to also address.

13

MR. PASTOR:

Well, in the case of Motorola, Your Honor,

14

that's why we have tried -- well, they don't here.

15

of Motorola, we have tried to explain, for instance, with moving

16

and unlock image.

17

required movement from one location to another, and it's our

18

position that our products don't have an image that moves from

19

one location to another.

20

In the case

We tried to explain that our construction

Now here, however, they have admittedly now come up

21

with a construction that is really just a predecessor to a

22

further construction.

23

"automatically," but what we are really going to say during the

24

infringement stage is automatically means something else.

25

That's the problem here.

We want you to add the word

This claim clearly does not require

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

any modification whatsoever.

2

some intervening step between receiving the second message and

3

transmitting the third message.

4

THE COURT:

5

MR. PASTOR:

6

THE COURT:

7

MR. PASTOR:

There is no support for having

What if said "simultaneously"?
It could be simultaneous.
But there could be a time lag.
And that's the issue, is that this claim

8

is broad enough to include the instance where it's all

9

automatic, near automatic, or may happen an hour down the road.

10

But it's still -THE COURT:

11
12

So the real point from your perspective is

it's without human intervention?

13

MR. PASTOR:

14

THE COURT:

15

MR. PASTOR:

16

THE COURT:

17

Exactly, Your Honor.
Do you want to talk about the other issue?
Unless you want to continue on this.
I need to take a short recess.

but something came up.

I'm sorry,

Let's take 5 minutes.

18

(Recess taken at 3:49 p.m.)

19

(Resumed at 3:54 p.m.)
THE COURT:

20
21

Let's go on to the other issue.

Maybe we

don't have a dispute about this one.
MR. PASTOR:

22

We certainty have a dispute, Your Honor.

23

Let me just get to that set of slides.

24

status.

25

literally to rewrite the claim.

Indicative of second

This is just another example of Apple's attempting
The claim requires that the

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

second message be indicative of a second status.

2

say descriptive of a second status.

3

It does not

Claim 5.

That's in Claim 1, it's in

4

Now, we have provided a construction, we said,

5

"indicative of a second status means providing an indication of

6

the second status."

7

change the word "indicative" in the claims to read to be

8

"descriptive."
THE COURT:

9
10

MR. PASTOR:

THE COURT:

MR. PASTOR:

19
20

Exactly.

It has to have some kind of

context, but enough context that's indicative of.
THE COURT:

17
18

But it has to have some kind of content or

else the user doesn't know what this means.

15
16

It needs to be some type of indication.

It does not have to describe what the changed status was.

13
14

In other words what you are saying is

delete equals ping, then the third message could be just a ping?

11
12

We don't think that there is any reason to

So in other words like a ping?

Ping means

delete.
MR. PASTOR:

Ping could be indicative of it.

It

depends on the system.

21

THE COURT:

Or ping could be message read?

22

MR. PASTOR:

23

Now, if you just look at what they have proposed here,

Absolutely.

That's indicative.

24

Your Honor, in the claim they basically just crossed out the

25

word "indicative" and replaced it with "descriptive."

That's

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1
2

not a construction, that's an actual rewriting of the claim.
There is nothing in the claim language here that says

3

"indicative" should be changed to "descriptive."

4

have two separate meanings.

5

Indicative means serving to indicate.

6

to describe.

7

The two terms

They are not synonymous.
Descriptive means serving

You can indicate something exists without describing

8

that something exists.

9

trying to narrow the claim so that it reads descriptive.

10
11

Indication is much broader, and they are
There

is no reason to change the words of the claim here.
The examples in the specification are examples where

12

the second status is simply indicative -- the second message is

13

simply indicative of the changed status.

14

at the tech tutorial.

15

contains three bits, and those bits, again, a bit is just a

16

binary digit.

17

value of 1.

18

indicate to the rest of the system that there is a changed

19

status of some type.

20

We went through this

The message status here basically

It has two values, it has the value of 0 or a
Those -- the change of whether it's 0 or 1 will

The specification expressly states that these three

21

bits indicate the corresponding status.

22

specification does not say that the three bits somehow describe

23

the status.

24

It's just a 1 or a 0.

25

They don't say guess what?

They don't say -- the

You have a change.

Now, during the tech tutorial, Apple's counsel admitted

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

that bits, like the ones in the embodiment of figure 3, merely

2

indicate a status change.

3

similar to, for example, the light on your phone.

4

have a light, and that would be an example of where you could

5

think of one bit of information, a 0 or a 1, an "on" or an "off"

6

as indicating a piece of information is relevant.

They stated we can think of a bit
Many phones

7

Now, you probably have a light on your phone.

8

THE COURT:

9

MR. PASTOR:

Not anymore.

On the Blackberry.

Okay.

On the Blackberry that light is

10

called a message indicator.

These lights don't describe the

11

message that you have, they merely indicate that you have a

12

message, that's what this bit is.
THE COURT:

13

I guess I have a little trouble with this

14

language "transmitting a third message indicative of the second

15

status."

16

second message indicative of a second status, and then

17

transmitting a third message indicative of the second status.

18

Somehow the third message has to convey, it seems to me, the

19

second status.

20

So it seems to suggest -- first it says transmitting a

MR. PASTOR:

What they are talking about is -- I know

21

it's confusing because there is a number of different status and

22

a number of different messages.

23

it's a message from a first transceiver.

24
25

What the second message is is

Let me just point out here that what we are dealing
with, what the claims require, and what the field of the patent

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

clearly states in the '119 patent is we are dealing with

2

transceivers, we are not dealing with pagers.

3

about how this is a pager patent.

4

receivers.

5

devices, i.e. a transceiver.

6

and address that this is not a pager patent, despite Apple's

7

best attempts to try to portray it as a pager patent.

They keep talking

The claims called for

The field for invention were two-way communication
I want to digress for one moment

8

So the claim requires after a first transceiver, a

9

first phone receives a message, that's a message from me to

10

Mr. Perlson.

11

message, and as oftentimes he does, immediately deletes it.

12

There is now a change in status of that message.

13

His phone receives my message.

He looks at my

Now, Mr. Perlson also has a second phone that's at home

14

that he uses when he goes out rather than when he is at work.

15

His first phone, the one at work, sends a status change message.

16

That's the second message, and that goes up to the system, and

17

the system then in response to receiving that second message

18

sends a third message back down to his phone at home.

19

the second message and the third message.

20

indicative of status changes.

21

just needs to indicate, guess what, I deleted this at work, I

22

don't need to delete it at home.

23

That's

So they are both

That's all it needs to be.

It

There is not a requirement that the second message or

24

third message needs to actually describe e-mail number 482 from

25

Anthony Pastor to David Perlson was just deleted.

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

THE COURT:

2

pings, it can all be pings.

3

MR. PASTOR:

4

THE COURT:

5

So under your construct, if it's

Absolutely.
The first -- the second and third

notification can both be equivalent pings?

6

MR. PASTOR:

7

THE COURT:

8

Okay.

It certainly could be.
Because the third ping could be indicative

of the second ping or the third ping.

9

MR. PASTOR:

If the system understands it as thus, yes.

10

It needs to be indicative of.

11

the system does something upon that indication.

If there is some indication, then

12

THE COURT:

Okay.

13

MR. PASTOR:

14

THE COURT:

15

MR. PASTOR:

16

THE COURT:

17

because I'm totally confused.

18

because the way Motorola makes it sound is that you are being

19

very tricky and that you are trying to talk me into adding this

20

word "automatically" when really there is a centrifuge here.

21

we add the word "automatically," and we get to the jury trial on

22

infringement, you are going to be arguing somehow what I meant

23

by "automatically" is that there could not be any

24

intermediate -- another infrastructure conveying the message.

25

That might not at all be what I have in mind by adding the word

Okay.
Okay.
Thank you.
Now I really need to hear from Apple
This makes me very uncomfortable,

If

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

"automatically" if I were inclined to do that.

2

troublesome to me.

3

trap if that's what's going on here.

4

So that's very

I don't want to fall into that kind of a

MR. HASLAM:

That's not what's going on here.

I

5

wouldn't want to lead you into that trap any more than you want

6

to fall into it.

7

argument, I would be setting it up for reversal.

If I did, and I then subsequently made that

8

THE COURT:

9

MR. HASLAM:

And a really annoyed judge.
The point, and the Court hit on it, and if

10

the Court is more -- we chose "automatically" because that is a

11

term that the inventors use frequently in the specification and

12

how they characterized it during prosecution.

13

If the Court is more comfortable, I will take what

14

Motorola's counsel said during his argument, "responsive" to

15

mean caused by.

16

the Court more comfortable, that the third -- the transmission

17

of the third message is caused by receipt of the second message.

There is no mischief in saying, if it will make

18

THE COURT:

Well, they didn't agree with that.

19

MR. HASLAM:

He said causation was the point.

20

THE COURT:

21
22

He may have said that, but he specifically

disclaimed "caused by" and "responsive" being equivalent.
Now we are on to something it seems to me totally

23

different than what you were proposing in your construction, so

24

I'm very frustrated with your construction, because now I am of

25

the belief, perhaps, that your proposed construction has nothing

acd2ea1c-87d5-4ec2-99da-78925274da0c

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1

to do with what you are really proposing.
MR. HASLAM:

2

Can we go to slide 45 in the deck.

There

3

is a lot of discussion by Motorola of what they think the

4

mischief is going to be.

5

they are accusing of infringement, and I will show you where the

6

dispute lies and why we thought "automatically" addressed it.

7

The essential thing is I showed in my slide -THE COURT:

8
9
10

13

Where does the dispute lie?

Does the

dispute lie with whether or not there is another intermediate
transmission tower?
MR. HASLAM:

11
12

Let's run through what the system is

No, it's whether or not what causes the

status -THE COURT:

What does that mean?

Does that mean that

14

the direct cause is the second message and that excludes the

15

possibility of a second transmission tower or other structure?

16

MR. HASLAM:

No.

The second message can go through a

17

variety of transmission towers as long as, and they claimed it

18

this way, as long as the wireless infrastructure which is

19

ultimately responsible for sending the third message.

20

THE COURT:

21

the second message?

22
23
24
25

MR. HASLAM:

So the third message has to be triggered by

Yes.

If it goes through four towers,

that's fine.
THE COURT:

Does Motorola disagree with that, that the

third message has to be triggered by the second message,

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1

assuming it goes through 100 transmission towers in between?
MR. PASTOR:

2

Frankly, I don't even know what they are

3

proposing construction is at this moment.

4

automatic.

It's certainly not

So if I could just --

5

MR. HASLAM:

Triggered by.

6

MR. PASTOR:

Triggered by?

That's certainly nowhere in

7

the claim.

And, you know, if you want to give us a few minutes,

8

maybe we can try to work something out.
THE COURT:

9
10

apart.

11

Goodbye.

I really don't think you all are that far

I'm getting off the bench and letting you work on this.
I will give you 10 minutes.

12

(Recess taken at 4:07 p.m.)

13

(Resumed at 4:23 p.m.)

14

THE COURT:

15

MR. HASLAM:

Okay.

What did we achieve?

I think we both agreed that we are both

16

right, unfortunately.

17

crystallize where the --

18
19
20

THE COURT:

I have five slides that I think will

I don't think it's going to crystallize it

for me until you tell me where you are going.
MR. HASLAM:

That's what I'm going to show you, where

21

the dispute is.

I'm going to show you where the pings are,

22

where the accused device is, and you can see how each side is

23

going to argue its position, if you adopt their position.

24

THE COURT:

25

MR. HASLAM:

Okay.
Go to slide 45.

This is part of what we

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1

showed in the tutorial.

I have stepped into the process here a

2

little bit.

3

the slide, somebody has sent me an e-mail, and I have gotten it

4

on both my iPad and on my iPhone, and I have deleted it on my

5

iPhone.

So we have to imagine that before we see what's on

That sends a message which they will call the second

6
7

message that says okay, I have now deleted a message.

8

go to this IMAP server, which is the particular server that

9

handles delivery of mail to the devices.

10

It will

When it gets there no

message is sent.
This was the question Your Honor asked me in the

11
12

tutorial.

Can it sit there for an hour?

13

sit there for an hour.

14

somebody sends me a new e-mail.

15

Internet, the mail server, goes to the IMAP.

16

is this notification server recognizes that a new message has

17

come in.
THE COURT:

18
19

MR. HASLAM:

21

THE COURT:

22

MR. HASLAM:

What happens, then, is at some point
It comes in through the
What happens then

So basically something else has to happen

in order to trigger?

20

It's possible it could

Yes.
I remember this now.

Right.

And the ping that goes out isn't a ping

23

that says delete, it just says -- it's like a tap on the

24

shoulder.

25

ping, the tap on the shoulder, the device will go to the IMAP

It says contact the server.

So in response to the

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1

server, it will request the information that's there and will

2

pick up the new message, and if there were status updates, it

3

will pull down the status updates.

4

Our view, if I go back, is that the receipt of the

5

second message by the server, and it could have gone through a

6

variety of cell towers, but when it gets to where it's going to

7

be turned around, the third message which contains the status

8

change has to be triggered by or caused by the receipt of the

9

second message.

10

Their argument without human intervention, they one

11

point noted sole causation is going to be that they can say

12

well, this didn't happen with user intervention, but it also

13

didn't happen, in our view, as a result of or caused by the

14

status update.

15

That's where the dispute lies.

"Automatically" may have been a poor choice of words.

16

"Triggered by" or "caused by" is more directly how the patent in

17

some places that I showed you.

18

their limitation is wrong.

19

THE COURT:

There is other support for why

It could have been in the wireless

20

infrastructure that you are receiving the second message and as

21

a direct result of receiving the second message transmitting a

22

third message?

23

MR. HASLAM:

Yes, and that permits delays.

Delays is a

24

red herring.

I also think their argument about delay is wrong.

25

I want to show you that because it also -- where they didn't

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1

want a message to be triggered directly by something, they knew

2

how to say it, and they said it in Claim 1 elsewhere.
I'm going to go to page 37 of my slides, and this was

3
4

the argument -- this is how I think Motorola was initially going

5

to attempt to get initially in their argument to you today was

6

to say, well, our "automatically" could exclude delay.

7

indicated, it didn't, and delay is a red herring.
Their argument about delay for the third message is

8
9

misplaced anyway.

Here is their brief, responsive brief at 26.

THE COURT:

10
11

As I

Haven't we all agreed that delay is

irrelevant?

12

MR. HASLAM:

Have we?

13

MR. PASTOR:

I don't think that delay is irrelevant for

14

the purposes of claim construction.

15

the -THE COURT:

16

They have now proposed that

So I have a proposed construction.

Okay?

17

How about "upon receiving the second message and as a direct

18

result of receiving the second message, transmitting a third

19

message"?

20

MR. HASLAM:

That's fine.

21

MR. PASTOR:

We would actually -- at the point what

22

that does is it adds the word "as a direct result."

The claims

23

say "responsive to," not "directly responsive to."

24

back to the idea of being an immediate response to, responsive

25

to.

This goes

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1

THE COURT:

2

MR. PASTOR:

3

That has nothing to do with immediacy.
Well, you say it's directly resulting it.

So what that means -THE COURT:

4

That has nothing to do with immediacy.

5

just means there doesn't have to be an intervening message.

6

an intervening tower, just there doesn't have to be another

7

intervening message.

8

It

other words, we are not at a fourth message, a fifth message.
MR. PASTOR:

That there is no intervening message.

9

Not

In

We believe that there could or does or

10

does not have to be an very intervening message.

11

broad enough to cover a system that does not have intervening

12

message or that do have an intervening message because it just

13

says "responsive to."
That's the whole point.

14

The claims are

This whole rabbit hole started

15

because they want "automatic" or some immediate action after the

16

second message.

THE COURT:

17
18

There is nothing in the intrinsic evidence.
I don't think this has anything to do with

immediacy.
MR. PASTOR:

19

I misunderstood.

When I heard "in direct

20

response to," and you have to understand, again, this all goes

21

back to their noninfringement argument.

22

argument is they don't fringe because there is an intervening

23

act in between receiving the second message and transmitting the

24

third.

25

THE COURT:

Their noninfringement

Under their theory they are not infringing

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1

because what happens is the second message is received, but

2

nothing happens in response so receiving the second message

3

until there is at least a third message, which then transmits --

4

MR. HASLAM:

The ping.

5

THE COURT:

-- a ping.

6

MR. PASTOR:

Your Honor, if you hook at page 48, all of

7

these actions, you know, this action from the IMAP to the SMTP

8

to the notification server back to the iPhone, all of those

9

actions are in response to receiving that new message, which is

10

the second message that is claimed.

11

THE COURT:

12

MR. PASTOR:

13

the claims infringe.
THE COURT:

14

Not according to him.
That's an issue of infringement, whether

According to him the reason the

15

notification is going is not because of the second message, but

16

because of some independent message.
MR. PASTOR:

17

See, that's, again, an issue of

18

infringement.

19

claim language needs to add the word "automatic," needs to add

20

the word "directed," "direct result."

21

to."

22

think they are going to admit that because they are worried that

23

our infringement construction is going to actually read on their

24

device.

25

We are here to determine whether the disputed

It just says "responsive

That language is broad enough, and that's what they -- I

THE COURT:

So let me just see if I understand your

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1

position.

So your position would be this infringes, what they

2

have got up on 48, right?

3

MR. PASTOR:

4

THE COURT:

Yes.
Because the ping, while it might be most

5

immediately responsive to the fact that a new e-mail came in,

6

would not have been sent at all if the second message hadn't

7

been received?

8

MR. PASTOR:

It is still responsive to.

9

THE COURT:

So it's still responsive to.

10

So there is

like concurrent causes.

11

MR. PASTOR:

Correct.

12

MR. HASLAM:

The ping is sent based on the new message

13

whether or not there is a status update or not there.

14

the Court's proposed construction distilled the dispute to

15

causation or triggered by, or as the Court said, directly caused

16

by.

17

issue.

18

there and processes it and there is a delay because it's got --

19

these towers are getting messages, it takes some time to turn

20

that message around.

21

I think

As the Court said, the temporal or immediacy is not an
If a status update gets to the tower, and the tower sits

THE COURT:

That's not the issue.
So at least for the purposes of my

22

evaluating this proposed construction of Apple, can you just

23

agree that your proposed construction is not automatically, but

24

as a direct result of receiving the second message?

25

MR. HASLAM:

Yes.

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Page 450
THE COURT:

2

Court's proposal is satisfactory.
THE COURT:

5
6

I understand the Court's concern, and the

means.

3
4

Otherwise I don't know what "automatically"

MR. HASLAM:

1

I'm only proposing that's Apple's proposed

construction now, and I will just have to reflect on it.
MR. PERLSON:

7

The notion of surprise earlier today, I

8

mean you have raised that.

9

"automatically," we agreed "without human intervention," which I

10

We have agreed that they proposed

think everyone here agrees that's what that means.

11

MR. HASLAM:

12

MR. PERLSON:

I don't agree to that.
That's what the ordinary meaning of it

13

is.

Now it seems that there is an entirely new construction

14

that is actually construing a different term.

15

had "responsive to" in there.

16

thing, I mean, I think it would be appropriate for us to at

17

least have some sort of response, perhaps in writing or at least

18

some time to prepare, because the issue as teed up is completely

19

different than what was briefed.
MR. HASLAM:

20

I mean, before we

If we are going to have this new

I don't know how they could have seen the

21

tutorial and these particular slides in my argument and not know

22

the causation was the principal issue.
THE COURT:

23

Let me reflect on that.

24

things up tomorrow let's talk about it.

25

Okay?

When we wind
Just keep it in

mind.

acd2ea1c-87d5-4ec2-99da-78925274da0c

Page 451
I think that this is really as far as we can go with

1
2

this at this point on this particular construction.
What about the descriptive of the changed status issue?

3
4

Do you want to say anything else about that?
MR. HASLAM:

5

I did want to say something.

The patent

6

clearly requires, and if we start with the claim language, if we

7

go to the claim language, we have "indicative of the second

8

status."

9

receiving the third message, changing the first status of the

10

But look at the next claim limitation, "responsive to

first message to the second status."
If, as I understand, all it requires is hey, something

11
12

has changed, how can you change the first status to the second

13

status?

14

something at the beach, a little ping goes to my home computer

15

and it says, oh, okay, I'm going to delete it.

16

something descriptive.

17

It goes back to my problem.

How do I -- I save

It has to have

The patent talks at column 6, lines 1 through 9 when it

18

describes the bits it says it has a read/unread bit, it has a

19

protect bit and it has a delete bit.

20

its it's a 0 or a 1, conveys information.

21

in the right place, if you've got three bits in a message, and

22

it's in slots 10, 11, and 12, the device knows that the bit in

23

slot 10 is a read/unread bit.

24

THE COURT:

25

So the bit, even though
So if the 0 or 1 is

So the language I guess that you would

point to that really supports this within the claim is changing

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1

the first status of the first message to the second status.

2

the device has to know something in order to change the status.
MR. HASLAM:

3
4

status has changed.

5

Yes.

So

It has to know more than just a

It has to know what it is in order to be

able to change it.
If we look at the abstract, slide 62:

6

Status changes

7

made on the first pager are wirelessly communicated to an

8

infrastructure which communicates the status changes to other

9

pagers so that the other pagers make corresponding status

10

changes.
How can you make the corresponding status change if you

11
12

don't know what the status change was in the first place?

13

specification is replete with examples of it.

14

the patent in columns 6, lines 12 through 30, talk about the

15

process:

16

message via a third message, or message 255.

17

determines that message 255 has status change information due to

18

the status change control signal included in status field 258.

19

The

Slide 65, it's

The infrastructure transmits the status of the first
Pager 150

And the slide below we have shown out of the patent

20

message 255 with a status change 258, and we have added, this is

21

not in the figure, at the bottom there we have added what we

22

think the specification means when it says there are three bits

23

of information in that status message.

24
25

And then the specification goes on to say:

In response

pager 150, and pager 150 is the home pager in this example, 130

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1

is the one at the beach, in response pager 150 changes the

2

status of the first message 205 to correspond to the status set

3

by the user placing inputs to pager 130 at step 220 and delay

4

230.
There again it's talking about making corresponding

5
6

changes, and it can only do that if it has some piece of

7

information that tells you what it is.

8

it's a tap on the shoulder that says call him.

9

accused device the ping doesn't cause in that example the iPad

A ping that just says
And even in the

10

to make the change.

It has to go back and get the new message

11

with the status update, get the status update, and because the

12

status update has information in it that says this is what I

13

changed the message on my iPhone, deleted in my example, then it

14

knows how to delete it.

15

that says I deleted this message, I didn't save it.

16

forward it.

17

message.

But it knows it because of information
I didn't

I didn't do something else to the status of that

The notion that because it's a 0 or 1 just connotes

18
19

something.

The patent very specifically says those three bits

20

connote read/unread, protect, delete.

21

THE COURT:

22

Next?

23

MS. HASKETT:

24
25

Okay.

I think enough of this.

What are we doing next?
Your Honor, next we are doing the '006

patent.
THE COURT:

Okay.

So let me just find this on the

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