Motorola Mobility, Inc. v. Microsoft Corporation

Filing 121

MOTION for Use of Representative Claims and Accompanying Memorandum of Law in Support by Motorola Mobility, Inc.. (Mullins, Edward) Modified text on 7/22/2011 (asl).

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
MOTOROLA MOBILITY, INC.,

CASE NO. 1:10-cv-24063-MORENO

Plaintiff / Counterclaim Defendant,
v.
MICROSOFT CORPORATION,
Defendant / Counterclaim Plaintiff.
/
PLAINTIFF/COUNTERCLAIM DEFENDANT MOTOROLA
MOBILITY, INC.’S MOTION FOR USE OF REPRESENTATIVE CLAIMS
AND ACCOMPANYING MEMORANDUM OF LAW IN SUPPORT
Plaintiff/Counterclaim Defendant Motorola Mobility, Inc. (“Motorola”), pursuant to Federal
Rules of Civil Procedure 1 and 16 and all other applicable rules and this Court’s inherent power,
moves for an Order directing the parties to try this action using a reasonable number of
representative claims of the multiple patents at issue, instead of the hundreds of claims that
Defendant/Counterclaim Plaintiff Microsoft Corporation (“Microsoft”) proposes to be tried. This
motion should be granted for the reasons set forth in the memorandum of law below.
MEMORANDUM OF LAW
I.

INTRODUCTION
The use of representative claims to streamline complex patent cases with large numbers of

claims is routinely used in complex patent litigation. Yet, Microsoft – at this date when discovery is
largely complete and the parties have submitted all motion papers – refuses to limit the number of
claims and insists that hundreds of claims in the more than a dozen patents be tried. This would
lead to an unnecessarily complex and unwieldy case and a waste of the resources of the jury, the
Court, and the parties.
Between Motorola’s main claims and Microsoft’s counterclaims, this patent action involves
fourteen (14) patents and over 150 asserted claims – 60 asserted by Motorola and 92 asserted by

Microsoft.1 In turn, the patents are associated with various allegedly infringing products with
respect to each party. In total, nearly 30 different products are accused in this case.
To ease the logistical burden of this case, Motorola seeks to make the case more manageable
by limiting the number of claims that ultimately will be presented to the jury through the use of
representative claims. Microsoft has refused and failed to present a valid reason for not doing so
other than it insisting on presenting each and every claim it seeks to enforce to the jury to be tried.
Whatever the arrangement, the parties should be on the same footing and thus Microsoft’s
insistence on trying all of its claims to the jury will require Motorola to do the same.
Yet, if the case proceeds according to Microsoft’s model, over 150 claims relating to the
multiple patents and allegedly infringing products will be presented to the jury. Such a plan is a
complete waste of resources as many of the claims at issue are duplicative of each other or generally
redundant.
Worse, proceeding to trial on such an unwieldy amount of claims likely would confuse the
jury, make it hard for a manageable trial to be conducted in the standard 2-week period, and lead to
the unnecessary expenditure of the parties’ and the Court’s resources. As explained below, to avoid
similar issues, numerous courts from around the country, including the Federal Circuit, have deemed
it proper to limit the number of claims in complex patent cases, such as this case.
Motorola requests that the Court direct the parties to proceed on a reasonably limited
number of claims – Motorola proposes forty (40) claims total with each party asserting twenty (20)
claims. Motorola further proposes that if the Court were inclined to grant Motorola’s request, that it
direct the parties to meet and confer with regard to the choosing and defining of the claims, as well
as the preclusive effect that any determinations with respect to the representative claims would have
on the dependent claims and then submit a final order on same.
FACTUAL BACKGROUND AND PROCEDURAL HISTORY
Motorola filed this case on November 10, 2010, claiming that various of Microsoft’s
products infringe the Motorola Patents. (D.E. 1). The Microsoft products accused of infringing
these patents include Windows 7, Windows Vista, Windows Phone 7, Windows Mobile 6.5,
1

The patents asserted by Motorola are U.S. Patents Nos. 5,502,839; 5,764,899; 5,784,001; 6,272,333;
6,408,176; 6,757,544; and 6,983,370 (collectively, the “Motorola Patents”). The patents asserted by
Microsoft are U.S. Patents Nos. 6,791,536; 6,897,853; 7,024,214; 7,493,130; 7,383,460; 6,897,904;
and 6,785,901 (collectively, the “Microsoft Patents”).
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Microsoft Exchange Server, Lync 2010, Live Messenger, and Bing Maps.
On December 23, 2010, Microsoft answered Motorola’s Complaint and filed a counterclaim,
alleging infringement by Motorola of the Microsoft Patents.

Among the allegedly infringing

products are over 20 Motorola Android devices and digital video recorders. (D.E. 21 at 13, 16).
Pursuant to the Court’s Scheduling Order dated January 4, 2011 (D.E. 23), and as amended
by the Order Continuing Trial and Certain Pretrial Dates dated January 20, 2011 (D.E. 36), the case
is set for trial on the 2-week period commencing October 24, 2011.
To date, the parties have exchanged proposed constructions for claims and definition of
terms. As well, the parties are finalizing discovery exchange, including expert submissions and
depositions. As noted, the result of this process is that the parties are, collectively, trying over 150
claims among the various patents. Motorola approached Microsoft weeks ago to discuss possible
representative claims in part to limit the number of terms that this Court would need to construe.2
As noted, however, despite attempts by Motorola to have Microsoft agree to limit the number of
claims, Microsoft has not agreed to do so, and the parties were forced to brief over 50 claim terms in
its Markman submissions. As it stands presently, under Microsoft’s approach there would be over
150 claims being asserted in the 14 patents.
ARGUMENT
Microsoft’s refusal to agree to a more manageable amount of claims is unreasonable,
particularly when considering the significant extent of duplication and overlap among the parties’
proposed claims.
This duplication and overlap may be illustrated by examining two of Microsoft’s claims
relating to two of the Microsoft syncing patents, Patents Nos. 7,024,214 and 7,493,130, just as an
example. There are 7 independent claims with regard to these patents, but these claims essentially
fall into two groups: consulting a set of flexible rules to select a sync mechanism and consulting a
set of flexible rules to determine whether to sync a data item (and thereby also selecting a sync
mechanism). Within those two groups, the claims are basically identical, except for being of
different types: method, apparatus, and Beauregard claims (computer readable media claims).
A comparison of claim 2 relating to the ‘130 patent and claim 1 of the ‘214 patent reveals
2

The parties are filing simultaneously with this brief, claim construction papers of nearly 100 pages
in length each. Motorola believes that limiting the number of claims may reduce the number of
claim terms that require construction.
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that, with the exception of the preamble, these claims are identical:
Claim 2 of the ‘130 patent
A first computer system in a network that
includes the first computer system having
a first data store and second computer
system having a second data store, the
first computer system comprising one or
more computer-readable media having
computer-executable instructions for
implementing a method for synchronizing
the first and second data stores in a
flexible
manner
considering
the
circumstances that exist at the time of
synchronization, wherein the method
comprises:

Claim 1 of the ‘214 patent
In a network that includes a first
computer system having a first data
store and second computer system
having a second data store, a method
for synchronizing the first and
second data stores in a flexible
manner
considering
the
circumstances that exist at the time
of synchronization, the method
comprising the following:

i. an act of the first computer system i. an act of the first computer system
determining that a data item is to be determining that a data item is to be
synchronized;
synchronized;
ii. an act of the first computer system
identifying which of a plurality of
synchronization mechanisms, including one
or
more
hardwired
or
wireless
communication connections, are available to
use for synchronization;

ii. an act of the first computer system
identifying which of a plurality of
synchronization mechanisms, including one
or
more
hardwired
or
wireless
communication connections, are available
to use for synchronization;

iii. an act of the first computer system
consulting a set of one or more flexible
selection rules to select a synchronization
mechanism, the set of one or more flexible
rules taking into consideration value, from
having access to synchronized data, relative
to at least one of (i) an economic cost for
synchronization using each available
synchronization mechanism, (ii) network
security for each available synchronization
mechanism, (iii) security of the second
computer system, or (iv) value of data being
synchronized and thereby selecting an
available
synchronization
mechanism
appropriate for the data item given the one
or more flexible selection rules; and

iii. an act of the first computer system
consulting a set of one or more flexible
selection rules to select a synchronization
mechanism, the set of one or more flexible
roles taking into consideration value, from
having access to synchronized data, relative
to at least one of (i) an economic cost for
synchronization using each available
synchronization mechanism, (ii) network
security for each available synchronization
mechanism, or (iii) security of the second
computer system, or (iv) value of data being
synchronized and thereby selecting an
available
synchronization
mechanism
appropriate for the data item given the one
or more flexible selection rules; and

iv. an act of the first computer

iv. an act of the first computer
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system
using
the
selected
synchronization
mechanism
to
synchronize the data item with the
second computer.

system
using
the
selected
synchronization
mechanism
to
synchronize the data item with the
second computer.

There is simply no reason to assert two claims that include the same exact claim limitations.
These claims are but one example of the type of inefficient and duplicative claims trial Microsoft
proposes --unwarranted in any patent case -- but particularly inappropriate for an action such as this
that already involves numerous patents and accused products. Indeed, just with regard to the ‘214
and ‘130 patents alone, Microsoft asserts some 50 claims. The number and complexity of such
claims could be reduced if this Court were to require the parties to try only representative claims, as
explained below.
This Court has the authority to do so pursuant to the Federal Rules of Civil Procedure, as
well as the Court’s inherent power to manage its cases. Rule 1 provides that district courts should
“secure the just, speedy, and inexpensive determination of every action and proceeding.” And, Rule
16 permits this Court to “consider and take appropriate action on the following matters: (A)
formulating and simplifying the issues...; (D) avoiding unnecessary proof and cumulative evidence…;
(L) adopting special procedures for managing potentially difficult or protracted actions that may
involve complex issues...; (M) ordering a separate trial ... of a claim, counterclaim,… or particular
issue; and (P) facilitating in other ways the just, speedy, and inexpensive disposition of the action.”
Id. (c)(2); see also Fed. R. Civ. P. 42(b) (allowing separate trials of specific claims or issues for
convenience, economy, or to avoid prejudice).
The use of representative claims is not uncommon in complex patent cases with a large
number of claims and issues, such as this case. Indeed, cognizant of the need to avoid undue
expense, burdensomeness, and jury confusion, parties often stipulate to the use of representative
claims.

E.g., Baxter Int’l, Inc. v. COBE Laboratories, Inc., 88 F.3d 1054, 1056 (Fed. Cir. 1996)

(stipulation to use representative claims); Thomson, S.A. v. Quixote Corp., 166 F.3d 1172, 1173 (Fed.
Cir. 1999) (same).
Here, Microsoft thus far has refused to work with Motorola in devising and using
representative claims. Accordingly, this Court should exercise its authority and direct the parties to
use representative claims, as numerous other courts have done. Indeed, as recently as last month,
the Federal Circuit found that a district court did not abuse its discretion in granting a motion to
limit the number of claims that could be asserted in a patent case to 15 (fifteen), subject to an
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increase for good cause shown. Stamps.com Inc. v. Endicia, Inc., 2011 WL 2417044, *1 (Fed. Cir. June
15, 2011). That case involved even more infringement claims than this one (the plaintiff asserted in
Stamps asserted some 400 infringement claims involving over 11 patents).3
Courts have employed similar limits in other cases. See, e.g., In re Katz Interactive Call Processing
Litigation, 639 F.3d 1303 (Fed. Cir. 2011) (district court did not err in limiting plaintiff patentee to 64
claims from a large number of asserted claims when it left open the door for the assertion of
additional claims on a showing of need); ReRoof Am., Inc. v. United Structures of Am., Inc., 1999 WL
674517, *4 (Fed. Cir. Aug. 30, 1999) (district court did not abuse discretion in requiring plaintiff to
use representative claims in lieu of large number of claims at issue) (unpublished); Hearing
Components, Inc. v. Shure, Inc., 2008 WL 2485426, at *1 (E.D. Tex. June 13, 2008) (sua sponte ordering
parties to limit to ten the number of claim terms to be construed, and to select three representative
claims from each patent); Fenster Family Patent Holdings, Inc. ., v. Siemens Med. Solutions USA, Inc., 2005
WL 2304190, at *3 (D. Del. Sept. 20, 2005) (plaintiff's assertion of 90 claims and 49 allegedly
infringing products “unreasonable” and limiting plaintiff to 10 claims and 5 products); cf. Ormco Corp.
v. Align Tech., Inc., 498 F.3d 1307, 1321 n.2 (Fed. Cir. 2001) (O’Malley, J., concurring in part and
dissenting in part) (“There are legitimate ways in which district courts can streamline the claims
construction analysis when faced with myriad claims from multiple patents. District courts … may
direct parties to identify the most representative claims for construction. In that way, the district
court can provide guidance as to its construction of the most critical or oft-repeated claim terms
and, thus, provide a roadmap with respect to the direction any additional claim construction might
take.”).4
Several courts even have adopted local rules that set presumptive limits on the numbers of
claims to be construed or presented. E.g., Local Patent Rules, N. Dist. of Ill., Rule 4.1(b) (effective
Oct. 1, 2009) (requiring parties to have a meet and confer to select no more than 10 terms or
phrases to submit to the court for construction, and providing that if the parties can't agree on the
ten terms to submit, each party shall be allocated five terms, further requiring that for each term
presented to the court for construction, the “parties must certify whether it is outcome-

3
4

Stamps.Com, Inc. v. Endicia, Inc., PSI Systems Inc., 2009 WL 2576371 (C.D. Cal. May 21, 2009).

See, also Auto Wax Co. v. Mark V Products, No. 3:99–CV–0982–M, 2001 WL 292597, at *1 (N.D.
Tex. March 14, 2001) (requiring plaintiff to limit number of claims to be tried from 86 to 19);
Verizon Calif., Inc. v. Ronald A. Katz Tech. Licensing, L.P., 326 F. Supp. 2d 1060, 1066 (C.D. Cal. 2003)
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determinative.”); Local Patent Rules, W.D. Wash., Rule 132(c) (effective Jan. 1, 2009) (requiring
parties to identify “[t]he ten most important disputed terms,” and stating that the “Court will
construe a maximum of ten claim terms at the initial Markman hearing, unless the Court determines
otherwise.”); Local Rule 16.6, D. Mass., App. ¶ B(4)(d) (requiring parties to limit number of terms
indentified for the court to construe and to “prioritize the disputed terms in order of importance”)
(effective as of November 4, 2008).
If representative claims are not utilized in this case, the parties, the Court, and ultimately the
jury will be required to analyze the hundreds of claims vis-à-vis the numerous accused products. As
well, defenses such as prior art and invalidity will have to be considered against an inordinate
number of claims.
Motorola believes that limiting the parties to 40 (forty) representative claims, to be split
equally among the parties (20 each), would serve to significantly streamline the case while
safeguarding the parties’ rights.
II.

CONCLUSION
For the foregoing reasons, Motorola respectfully requests that the Court order the parties to

limit each of their cases to 20 (twenty) representative claims, with other claims to be litigated as
required if they are not resolved through the representative claims. Microsoft also requests that the
Court direct the parties to meet and confer in order to discuss and define the representative claims,
as well as the effect such claims would have on the remaining issues in the case.
CERTIFICATE OF GOOD FAITH CONFERENCE
I hereby certify that in accordance with Local Rule 7.1(a)(3), counsel for Motorola has
conferred with counsel for Microsoft in a good faith effort to resolve the issues raised in this
motion, but that the parties were unable to reach an agreement on these issues.
/s/ Edward M. Mullins_________
Edward M. Mullins

(requiring plaintiff to select a maximum of three representative claims for each patent it contended
was infringed).
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Dated: July 21, 2011

Respectfully submitted,
/s/ Edward M. Mullins_________
Edward M. Mullins
[e-mail]
Douglas J. Giuliano
[e-mail]
ASTIGARRAGA DAVIS MULLINS
& GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Local Counsel for Plaintiff /
Counterclaim Defendant Motorola
Mobility, Inc.
Jesse J. Jenner*
Steven Pepe*
Khue V. Hoang*
Leslie M. Spencer*
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10020
Telephone: [phone]
Norman H. Beamer*
Mark D. Rowland*
Gabrielle E. Higgins*
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Telephone: [phone]
Kevin J. Post*
Megan F. Raymond*
ROPES & GRAY LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005
Telephone: [phone]
Lead Counsel for Plaintiff / Counterclaim Defendant
Motorola Mobility, Inc.

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on July 21, 2011, I electronically filed the foregoing document
with the Clerk of the Court using the CM/ECF filing system. I also certify that the foregoing
document is being served this date on all counsel of record or pro se parties on the Service List
below in the manner specified, either via transmission of Notices of Electronic Filing generated by
the CM/ECF system or; in some other authorized manner for those counsel or parties who are not
authorized to receive electronically Notices of Electronic Filing.
/s/ Edward M. Mullins___________________
Edward M. Mullins (Fla. Bar No. 863920)
SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corporation
Case No.: 1:10-CV-24063-MORENO/TORRES
United States District Court, Southern District of Florida
John W. McBride*
[e-mail]
David T. Pritikin*
[e-mail]
Douglas I. Lewis*
[e-mail]
Richard A. Cederoth*
[e-mail]
Erin E. Kelly*
[e-mail]
Shubham Mukherjee*
[e-mail]
Sherry A. Knutson*
[e-mail]
Stephen C. Carlson*
[e-mail]
Elizabeth Curtin*
[e-mail]
Neil H. Wyland*
[e-mail]
William M. Chang*
[e-mail]
Michael L. Lisak*
[e-mail]
Gerald L. Angst*
[e-mail]
Frank J. Favia, Jr.*
[e-mail]
Anthony Balkissoon*
[e-mail]

Curtis B. Miner
[e-mail]
Colson Hicks Eidson
255 Alhambra Circle
Penthouse
Coral Gables, Florida 33134
Jim S. Zeng*
[e-mail]
Theodore W. Chandler*
[e-mail]
Sandra S. Fujiyama*
[e-mail]
Michael C. Lee
[e-mail]
Paul D. Tripodi, II*
[e-mail]
Erik J. Carlson*
[e-mail]
Olivia M. Kim*
[e-mail]
Christopher G. Wilson*
[e-mail]
Yongdan Li*
[e-mail]
Sidley Austin LLP
555 West Fifth Street
Los Angeles, California 90013
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Aseem S. Gupta*
[e-mail]
Sidley Austin LLP
555 California Street, Suite 2000
San Francisco, California 94104
David J. Wolfsohn*
[e-mail]
Woodcock Washburn LLP
Cira Centre
2929 Arch Street
Philadelphia, Pennsylvania 19104

Tamar B. Kelber*
[e-mail]
Kathleen L. Holthaus*
[e-mail]
Sidley Austin LLP
One S. Dearborn
Chicago, Illinois 60603
Brian R. Nester*
[e-mail]
Sidley Austin LLP
1501 K Street, N.W.
Washington, DC 20005
Tung T. Nguyen*
[e-mail]
Nabeel U. Khan*
[e-mail]
Dale B. N ixon*
[e-mail]
Nicole D. Sims
[e-mail]
Benjamin B. Kelly*
[e-mail]
Daniel J. Galligan*
[e-mail]
Sidley Austin LLP
717 North Harwood, Suite 3400
Dallas, Texas 75201

Attorneys for Defendant
Electronically served via CM/ECF

*Admitted pro hac vice

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