Motorola Mobility, Inc. v. Apple, Inc.

Filing 162

NOTICE by Apple, Inc. Defendant and Counterclaim-Plaintiff Apple Inc.'s Response to the Court's October 24, 2011 Order and Notice of Filing of Motorola's May 13, 2011 Infringement Contentions (Attachments: # 1 Exhibit Motorola's Preliminary Infringement Contentions, # 2 Exhibit A - Motorola's Preliminary Infringement Contentions, # 3 Exhibit B - Motorola's Preliminary Infringement Contentions, # 4 Exhibit C - Motorola's Preliminary Infringement Contentions, # 5 Exhibit D - Motorola's Preliminary Infringement Contentions, # 6 Exhibit E - Motorola's Preliminary Infringement Contentions, # 7 Exhibit F - Motorola's Preliminary Infringement Contentions)(Pace, Christopher)

Exhibit E
UNITED STATES PATENT NO. 6,101,531
PRELIMINARY INFRINGEMENT CONTENTIONS1
Accused Apple Products:2 Apple iPhone 3G S, Apple iPhone 3G, Apple iPhone 4G, Apple iPad, Apple iPad with 3G, Apple iPad
2, Apple iPad 2 with 3G, Apple iPod Touch, Apple MacBook, Apple MacBook Pro, Apple MacBook
Air, Apple iMac, Apple Mac Mini, Apple Mac Pro, MobileMe .
‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

1. A method of
communicating data units
over a wireless network
between a client
communication unit and a
host device via a

Upon information and belief, Apple iPhones and Apple Computers perform each and every step of
this claim in the course of normal use with MobileMe. Additionally, a user of an Apple iPhone and/or
Apple Computer performs each and every step of this claim in the course of such use. Furthermore,
Apple has performed each and every step of this claim and has actively induced users to perform such
steps, and has contributed to such use by selling Apple Phones, Apple Computers, and MobileMe and
by providing directions for their use.

1

Motorola Mobility's investigation is ongoing and discovery and claim construction are not yet complete. Mobility reserves the right
to supplement or amend these contentions with contentions arising under the doctrine of equivalents in response to any proposed or
ordered claim construction, subsequent discovery response or production, or subsequent disclosure made pursuant to FRCP 26.
2

This list of Accused Apple Products was created based on publicly available information. Motorola Mobility reserves the right to
supplement this list of Accused Apple Products.
3

This chart provides Motorola’s preliminary infringement analysis for the MobileMe service communicating with Apple's accused
products. In this claim chart, "Apple Phone" refers to Apple iPhone 3G S, Apple iPhone 3G, Apple iPhone 4G, Apple iPad, Apple
iPad with 3G, Apple iPad 2, Apple iPad 2 with 3G, and Apple iPod Touch; whereas "Apple Computer" refers to Apple MacBook,
Apple MacBook Pro, Apple MacBook Air, Apple iMac, Apple Mac Mini, and Apple Mac Pro. Upon information and belief, the
analysis set forth in this chart for "Apple Phone" applies equally to the Apple iPhone 3G S, Apple iPhone 3G, Apple iPhone 4G,
Apple iPad, Apple iPad with 3G, Apple iPad 2, Apple iPad 2 with 3G, and Apple iPod Touch; whereas, upon information and belief,
the analysis set forth in this chart for "Apple Computer" applies equally to the Apple MacBook, Apple MacBook Pro, Apple MacBook
Air, Apple iMac, Apple Mac Mini, and Apple Mac Pro..
1

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

communication server, the
method comprising, at the
communication server:

Over a wireless network, Apple and/or its users communicate data units (e.g., email) between a client
communication unit (an Apple Phone or an Apple Computer) and a host device (a MobileMe mail
server) via a communication server (a MobileMe communication server):

What is IMAP and Why Do We Use It, (http://www.apple.com/mobileme/news/2008/11/what-is2

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

imap-and-why-do-we-use-it.html), accessed on May 5, 2011, MOTO-APPLE-0006037953_126657.
See MobileMe Features, (http://www.apple.com/mobileme/features/), accessed on May 13, 2011,
MOTO-APPLE-0006037953_127187:

filtering data units based on a Upon information and belief, MobileMe filters data units based on a first set of user-selected criteria
first set of user-selected
to produce filtered data units. For example, MobileMe filters email messages (data units) based on a
criteria to produce filtered
user decision to automatically filter junk mail messages (user-selected criteria to produce filtered data
3

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

data units;

units):

MobileMe: Why was I "spammed" at my MobileMe Mail address?,
(http://support.apple.com/kb/HT2073?viewlocale=en_US), accessed May 13, 2011, MOTO-APPLE0006037953_127206.
communicating the filtered
data units to the client
communication unit;

Upon information and belief, MobileMe communicates the filtered data units to the client
communication unit. For example, MobileMe communicates e-mails that pass through the MobileMe
junk mail filter (filtered data units) to an Apple Phone or Apple Computer (client communication
unit):

4

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

MobileMe Features, (http://www.apple.com/mobileme/features/), accessed on May 13, 2011, MOTOAPPLE-0006037953_127187.
See MobileMe: Why was I "spammed" at my MobileMe Mail address?,
(http://support.apple.com/kb/HT2073?viewlocale=en_US), accessed May 13, 2011, MOTO-APPLE0006037953_127206:

5

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

receiving a second set of a
plurality of user-selected
criteria, wherein the second
set of the plurality of userselected criteria has been
previously prepared at the
client communication unit
and, when completed, has
been sent to the
communication server in a
virtual session;

Upon information and belief, MobileMe can receive a second set of a plurality of user-selected
criteria, wherein the second set of the plurality of user-selected criteria has been previously prepared
at the client communication unit and, when completed, has been sent to the communication server in a
virtual session.
The user of an Apple Phone can select which mailboxes (and which folders within those mailboxes)
are synched to the device. In addition, the user of an Apple Phone can select how many emails should
be downloaded to the device, and the user of an Apple Phone can select not to load remote HTML
images. MobileMe receives any and all of these user-selected criteria previously prepared at the
Apple Phone, which are, when completed, sent to MobileMe communication server:

6

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

Photo of Apple iPhone showing option to load remote images, taken June 29, 2010, MOTO-APPLE
0006037953_127176 (arrow added).
The user of a Apple Computer can identify junk mail that passed through the first set of user-selected
filter criteria. MobileMe receives this new user-selected criteria previously prepared at the Apple
Computer, which is, when completed, sent to the MobileMe communication server:

7

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

Helping Mail identify junk mail,
(http://docs.info.apple.com/article.html?path=Mail/3.0/en/9940.html), accessed on May 13, 2011,
MOTO-APPLE-0006037953_126637.
See MobileMe: Why was I "spammed" at my MobileMe Mail address?,
(http://support.apple.com/kb/HT2073?viewlocale=en_US), accessed May 13, 2011, MOTO-APPLE0006037953_127206:

8

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

See also How MobilMe filters spam messages, (http://support.apple.com/kb/HT1073), accessed on
May 13, 2011, MOTO-APPLE-0006037953_127207:

See also MobileMe Features, (http://www.apple.com/mobileme/features/), accessed on May 13, 2011,
MOTO-APPLE-006037953_127187:

9

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

filtering subsequent data
units based on the second set
of the plurality of userselected criteria to create
subsequent filtered data
units; and

Upon information and belief, MobileMe will filter subsequent email messages (data units) based on
the second set of the plurality of user-selected criteria to create subsequent filtered data units.
When used with an Apple Phone, MobileMe will filter later email messages (subsequent data units)
based on the Apple Phone user’s criteria of which folders / mailboxes to sync, how many emails
should be downloaded for display, and whether to download remote HTML images to create
subsequent filtered emails.

10

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

When used with an Apple Computer, MobileMe will filter subsequent email messages (subsequent
data units) based on the new junk mail criteria (the second set of the plurality of user-selected criteria)
to create subsequent filtered emails:

Helping Mail identify junk mail,
(http://docs.info.apple.com/article.html?path=Mail/3.0/en/9940.html), accessed on May 13, 2011,
MOTO-APPLE-0006037953_126637.
See MobileMe: Why was I "spammed" at my MobileMe Mail address?,
(http://support.apple.com/kb/HT2073?viewlocale=en_US), accessed May 13, 2011, MOTO-APPLE0006037953_127206:
11

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

See also How MobilMe filters spam messages, (http://support.apple.com/kb/HT1073), accessed on
May 13, 2011, MOTO-APPLE-0006037953_127207:

communicating the
subsequent filtered data units
to the client communication
unit.

Upon information and belief, MobileMe communicates the subsequent filtered data units to the client
communication unit. For example, MobileMe will allow messages that pass through the Apple Phone
user’s criteria of which folders / mailboxes to sync, how many emails should be downloaded for
display, and whether to download remote HTML images to create (the subsequent filtered data units)
to the Apple Phone (client communication unit)
Likewise, MobileMe will allow messages that pass through the new junk mail filter(the subsequent
filtered data units) to the Apple Computer (client communication unit):

12

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

MobileMe Features, (http://www.apple.com/mobileme/features/), accessed on May 13, 2011, MOTOAPPLE-0006037953_127187.
2. The method according to
claim 1 further comprising
truncating a subsequent
filtered data unit if the
subsequent filtered data unit

Upon information and belief, Apple iPhones perform each and every step of this claim in the course of
normal use with MobileMe. Additionally, a user of an Apple iPhone performs each and every step of
this claim in the course of such use. Furthermore, Apple has performed each and every step of this
claim and has actively induced users to perform such steps, and has contributed to such use by selling
Apple Phones and MobileMe and by providing directions for their use.
13

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

exceeds a first filter size.

11. A method of
communicating data units
over a wireless network
between a client
communication unit and a
host device via a
communication server, the
method comprising:

Upon information and belief, Apple iPhones will truncate subsequent data units if the subsequent
filtered data unit exceeds a second filter size.
Upon information and belief, Apple iPhones and Apple Computers perform each and every step of
this claim in the course of normal use with MobileMe. Additionally, a user of an Apple iPhone and/or
Apple Computer performs each and every step of this claim in the course of such use. Furthermore,
Apple has performed each and every step of this claim and has actively induced users to perform such
steps, and has contributed to such use by selling Apple Phones, Apple Computers, and MobileMe and
by providing directions for their use.
Over a wireless network, Apple and/or its users communicate data units (e.g., email) between a client
communication unit (an Apple Phone or an Apple Computer) and a host device (a MobileMe mail
server) via a communication server (a MobileMe communication server):

14

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

What is IMAP and Why Do We Use It, (http://www.apple.com/mobileme/news/2008/11/what-isimap-and-why-do-we-use-it.html), accessed on May 5, 2011, MOTO-APPLE-0006037953_126657.
See MobileMe Features, (http://www.apple.com/mobileme/features/), accessed on May 13, 2011,
MOTO-APPLE-0006037953_127187:

15

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

filtering data units, at the
communication server, based
on a first set of user-selected
criteria to produce filtered
data units;

Upon information and belief, MobileMe filters data units based on a first set of user-selected criteria
to produce filtered data units. For example, MobileMe filters email messages (data units) based on a
user decision to automatically filter junk mail messages (user-selected criteria to produce filtered data
units):

16

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

MobileMe: Why was I "spammed" at my MobileMe Mail address?,
(http://support.apple.com/kb/HT2073?viewlocale=en_US), accessed May 13, 2011, MOTO-APPLE0006037953_127206.
communicating, at the
communication server, the
filtered data units to the
client communication unit;

Upon information and belief, MobileMe communicates the filtered data units to the client
communication unit. For example, MobileMe communicates e-mails that pass through the MobileMe
junk mail filter (filtered data units) to an Apple Phone or Apple Computer (client communication
unit):

17

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

MobileMe Features, (http://www.apple.com/mobileme/features/), accessed on May 13, 2011, MOTOAPPLE-0006037953_127187.
See MobileMe: Why was I "spammed" at my MobileMe Mail address?,
(http://support.apple.com/kb/HT2073?viewlocale=en_US), accessed May 13, 2011, MOTO-APPLE0006037953_127206:

18

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

preparing, at the client
communication unit, a
second set of a plurality of
user-selected criteria, and
when completed,
communicating the second
set of the plurality of userselected criteria to the
communication server in a
virtual session;

The user of an Apple Phone can prepare a second set of a plurality of filter criteria, e.g., a user can
select which mailboxes (and which folders within those mailboxes) are synched to the device. In
addition, the user of an Apple Phone can select how many emails should be downloaded to the device,
and the user of an Apple Phone can select not to load remote HTML images.
When the user has completed preparing the second set of a plurality of filter criteria, it is
communicated to MobileMe communication server in a virtual session.

19

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

Photo of Apple iPhone showing option to load remote images, taken June 29, 2010, MOTO-APPLE
0006037953_127176 (arrow added).
The user of a Apple Computer can identify junk mail that passed through the first set of user-selected
filter criteria. MobileMe receives this new user-selected criteria previously prepared at the Apple
Computer, which is, when completed, sent to the MobileMe communication server:

20

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

Helping Mail identify junk mail,
(http://docs.info.apple.com/article.html?path=Mail/3.0/en/9940.html), accessed on May 13, 2011,
MOTO-APPLE-0006037953_126637.
See MobileMe: Why was I "spammed" at my MobileMe Mail address?,
(http://support.apple.com/kb/HT2073?viewlocale=en_US), accessed May 13, 2011, MOTO-APPLE0006037953_127206:

21

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

See also How MobilMe filters spam messages, (http://support.apple.com/kb/HT1073), accessed on
May 13, 2011, MOTO-APPLE-0006037953_127207:

See also MobileMe Features, (http://www.apple.com/mobileme/features/), accessed on May 13, 2011,
MOTO-APPLE-006037953_127187:

22

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

filtering subsequent data
units, at the communication
server, based on the second
set of the plurality of userselected criteria to create
subsequent filtered data
units; and

Upon information and belief, MobileMe will filter subsequent email messages (data units) based on
the second set of the plurality of user-selected criteria to create subsequent filtered data units.
When used with an Apple Phone, MobileMe will filter later email messages (subsequent data units)
based on the Apple Phone user’s criteria of which folders / mailboxes to sync, how many emails
should be downloaded for display, and whether to download remote HTML images to create
subsequent filtered emails.

23

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

When used with an Apple Computer, MobileMe will filter subsequent email messages (subsequent
data units) based on the new junk mail criteria (the second set of the plurality of user-selected criteria)
to create subsequent filtered emails:

Helping Mail identify junk mail,
(http://docs.info.apple.com/article.html?path=Mail/3.0/en/9940.html), accessed on May 13, 2011,
MOTO-APPLE-0006037953_126637.
See MobileMe: Why was I "spammed" at my MobileMe Mail address?,
(http://support.apple.com/kb/HT2073?viewlocale=en_US), accessed May 13, 2011, MOTO-APPLE0006037953_127206:
24

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

See also How MobilMe filters spam messages, (http://support.apple.com/kb/HT1073), accessed on
May 13, 2011, MOTO-APPLE-0006037953_127207:

communicating, at the
communication server, the
subsequent filtered data units
to the client communication
unit.

Upon information and belief, MobileMe communicates the subsequent filtered data units to the client
communication unit. For example, MobileMe will allow messages that pass through the Apple Phone
user’s criteria of which folders / mailboxes to sync, how many emails should be downloaded for
display, and whether to download remote HTML images to create (the subsequent filtered data units)
to the Apple Phone (client communication unit)
Likewise, MobileMe will allow messages that pass through the new junk mail filter(the subsequent
filtered data units) to the Apple Computer (client communication unit):

25

Exhibit E

‘531 Patent Claim

Representative Apple Products:

Apple MobileMe communicating with an Apple Phone
Apple MobileMe communicating with an Apple Computer3

MobileMe Features, (http://www.apple.com/mobileme/features/), accessed on May 13, 2011, MOTOAPPLE-0006037953_127187.

26