Motorola Mobility, Inc. v. Microsoft Corporation

Filing 129

MOTION in Limine Nos. 1-9 and Brief in Support Thereof by Motorola Mobility, Inc.. (Attachments: #1 Affidavit, #2 Exhibit A to Affidavit in Support, #3 Exhibit B to Affidavit in Support, #4 Exhibit C to Affidavit in Support, #5 Exhibit D to Affidavit in Support, #6 Exhibit E to Affidavit in Support, #7 Exhibit F to Affidavit in Support, #8 Exhibit G to Affidavit in Support, #9 Exhibit H to Affidavit in Support, #10 Exhibit I to Affidavit in Support, #11 Exhibit J to Affidavit in Support, #12 Exhibit K to Affidavit in Support, #13 Exhibit L to Affidavit in Support, #14 Exhibit M to Affidavit in Support)(Mullins, Edward)

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 1:10-cv-24063-MORENO

MOTOROLA MOBILITY, INC.,
Plaintiff,
vs.
MICROSOFT CORPORATION,
Defendant.

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DEFENDANT MICROSOFT CORPORATION’S DISCLOSURE OF
PROPOSED CLAIM CONSTRUCTIONS
Defendant/Counter-Claimant Microsoft Corporation (“Microsoft”) provides the following
proposed claim constructions for the claim limitations in the asserted patents that require
construction by the Court. The list of proposed claim constructions contained herein is based on
information reasonably available to Microsoft at this stage of the litigation. Microsoft reserves
the right to amend and supplement this list when and if additional information becomes
available. Microsoft further reserves the right to amend and supplement this list upon receipt of
Motorola’s submission of the same.

Microsoft Patent No. 6,791,536
Claim Term/
Identified By
Motorola term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

14, 16, 17

Plain and ordinary meaning or
alternatively:

generating at least one down event of
the secondary switch of the pointing
device

14, 16, 17

“generating at least one action
representing an activation of the
secondary switch of the pointing device
such as the signal to display a contextsensitive command menu”
Plain and ordinary meaning or
generating at least one down event of
alternatively:
the primary switch of the pointing
device
“generating at least one action
representing an activation of the
primary switch of the pointing device
such as the signal to select an object”

“generating at least one event
representing an activation of the
secondary switch of the pointing
device”

Motorola term:
“generating at least one event
representing an activation of the
primary switch of the pointing
device”

Microsoft Patent No. 6,897,853
Claim Term/
Identified By
Motorola term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

7-11

“determining that the input is a stroke
if the input exceeds a first threshold
based upon movement of the input”

This element requires no construction
and should be accorded its plain and
ordinary meaning.

“determining whether the input is
a stroke based on a first move
threshold”

If this element is construed, it should be
given the following meaning:
“determining that the input is a stroke if
the input exceeds a first predetermined
distance.”

Motorola term:

7-11

“determining whether the input is
a tap based on a time threshold”

“determining that the input is a tap if
the input does not exceed a threshold
dependent on time”

This element requires no construction
and should be accorded its plain and
ordinary meaning.
If this element is construed, it should be
given the following meaning:
“determining that the input is a tap if
the input does not exceed a
predetermined amount of time.”

Motorola term:
“determining whether the stroke
is a hold or a hold and drag”

7-11

“determining that the input is
a hold if the input exceeds a threshold
dependent on time and does not
exceed a second threshold based upon
movement of the input or a hold and
drag if the input exceeds a threshold

3

This element requires no construction
and should be accorded its plain and
ordinary meaning.
If this element is construed, it should be
given the following meaning:

Claim Term/
Identified By

Claims

Microsoft Proposed Construction
dependent on time and exceeds a
second threshold based upon
movement of the input”

Motorola term:

11

Plain and ordinary meaning or
alternatively:

“simulating a right mouse click”
“generating an action that represents
an activation of a secondary switch of
a pointing device”

4

Motorola Proposed Construction

“determining that the input is a hold if
the input exceeds a predetermined
amount of time and does not exceed a
second predetermined distance or a
hold and drag if the input exceeds a
predetermined amount of time and
exceeds a second predetermined
distance”
generating a down event followed by
an up event of a right mouse button

Microsoft Patent No. 7,024,214
Claim Term/
Identified By
Motorola term:
“synchronization mechanism”

Motorola term:
“flexible selection rule(s)”

Motorola term:
“value, from having access to
synchronized data”

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1, 3-6, 10, 14,
17, 19, 22-29,
32-34, 38, 39,
41-44, 46-52,
54-56
1, 3-6, 10, 14,
17, 19, 22-29,
32-34, 38, 39,
41-44, 46-52,
54-56
1, 3-6, 10, 14,
17, 19, 22-29,
32-34, 38, 39,
41-44, 46-52,
54-56

Plain and ordinary meaning, or
alternatively:

A communication link used for
synchronization, such as GSM, GPRS,
WiFi (802.11b), Bluetooth, PSTN
(dial-up), hardwire tether or dock

“process or technique for
synchronization”
Plain and ordinary meaning, or
alternatively:
“rules for selection to determine
whether, when, and/or how”
Plain and ordinary meaning, or
alternatively:
“value associated with obtaining
synchronized data”

5

changeable rule(s) which specify
which synchronization mechanisms
can be used for synchronizing certain
types of data
importance to the user of having
access to the synchronized data item

Microsoft Patent No. 7,493,130
Claim Term/
Identified By
Motorola term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1-2, 4-8, 1011, 13-19

Plain and ordinary meaning or
alternatively:

1-2, 4-8, 1011, 13-19

“process or technique for
synchronization”
Plain and ordinary meaning, or
alternatively:

A communication link used for
synchronization, such as GSM, GPRS,
WiFi (802.11b), Bluetooth, PSTN
(dial-up), hardwire tether or dock

1-2, 4-8, 1011, 13-19

“rules for selection to determine
whether, when, and/or how”
Plain and ordinary meaning, or
alternatively:

“synchronization mechanism”

Motorola term:
“flexible selection rule(s)”

Motorola term:
“value, from having access to
synchronized data”

“value associated with obtaining
synchronized data”

6

changeable rule(s) which specify
which synchronization mechanisms
can be used for synchronizing certain
types of data
importance to the user of having
access to the synchronized data item

Microsoft Patent No. 7,383,460
Claim Term/
Identified By
Microsoft term:
“the hardware-dependent
process”
Motorola term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

7

“the hardware-dependent interface”

Indefinite.

8, 9

“the combination of a counter,
comparator, and match register”

a hardware timer that operates in
accordance with the “Intel
Architecture/Personal Computer
(lA/PC) HPET (High Precision Event
Timers) Specification”

high precision event timer
(HPET)

7

Microsoft Patent No. 6,897,904
Claim Term/
Identified By
Motorola term:
“program content currently being
tuned”

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

19

Plain and ordinary meaning or
alternatively:

“live program content”

“the program content that a tuner is
currently receiving”

8

Microsoft Patent No. 6,785,901
Claim Term/
Identified By
None

Claims

Microsoft Proposed Construction

9

Motorola Proposed Construction

Motorola Patent No. 5,502,839
Claim Term/
Identified By
Microsoft term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

9-12, 15-16,
18-21, 23

an abstraction of a displayable object
made up of a collection of predefined,
standard device-independent data
structures, including at least a common
header data structure

A device-independent abstraction of a
displayable object (e.g., line, text, etc.)

“virtual input” is a device-independent
abstraction of physical input
represented as one or more of a set of
standard messages

“virtual input” means one or more
picture elements generated from user
input

“picture element comprising a
plurality of device independent
data structures in a
predetermined, standard data
format, at least one of said data
structures comprising a plurality
of different data fields each
containing information describing
said picture element
Microsoft term:
9-13, 22-23
“virtual output”; “virtual input”

Motorola term:

9-14

“source of virtual input”
Motorola term:

10-11

“picture manager process”

“virtual output” is a deviceindependent abstraction of physical
output represented as one or more of a
set of standard messages
a physical input device corresponding
to a virtual input device
a process that constructs a deviceindependent representation of a picture
using a small set of elemental picture
elements and controls modification and

10

“virtual output” means one or more
picture elements of a picture

A process which generates one or more
picture elements from user input
A Picture Manager process is a process
that constructs a device-independent
representation of a picture using a set of
related picture elements and controls

Claim Term/
Identified By

Motorola term:

Claims

11

“window manager process”

Microsoft and Motorola MeansPlus -Function term:

9-14

“means for
performing processing operations
on said virtual input and for
generating virtual output”

Microsoft and Motorola MeansPlus -Function term:

Motorola Proposed Construction

retrieval of these elements, as explicitly
defined at 17:23-25, 17:63-18:10, and
5:20-46.
a process that maps a given picture (or
portion thereof) to a rectangular area of
a given size on a given screen (a
“window”) in virtual pixels, as
explicitly defined at 22:53-24:11 and
5:20-46.
Function: performing processing
operations on said virtual input and
generating virtual output

modification and retrieval of the picture
elements.

Structure: the operations performed
by the Console Manager process as
explicitly defined at 15:30-17:6, 44:634, and 5:20-46.

9-14

Function: accepting said virtual output
Structure: the operations by which a
Picture Manager process receives and
processes incoming requests related to
picture elements, as explicitly defined
at 17:23-25, 17:63-18:10, and 5:20-46.

“means for accepting said virtual
output”

Microsoft and Motorola Means-

Microsoft Proposed Construction

9-14

Function: converting said virtual

11

The Window Manager process is a
process that maps all (or a portion) of a
picture to a particular rectangular area
(window) of a display screen, updates
the display screen and controls the size
and appearance of the window.
Function: performing processing
operations on virtual input and
generating virtual output
Corresponding structure: Console
Manager, which is any process that
processes virtual input and, in response,
generates virtual output, as described,
for example, at least at FIGs. 8, 9, 12,
13; Cols. 15:30-17:17;
24:49-26:24; 27:5-28:17; 29:65-30:48;
43:51-65; 44:6-34; 47-56.
Function: accepting virtual output
Corresponding structure: Picture
Manager, which is any process that
accepts virtual output as described, for
example, at least at FIGs. 8, 9, 12, 14;
Cols. 13:64-14:7; 16:4-56; 17:23-25;
17:63-18:23; 25:44-56; 30:51-33:5;
43:60-65; 44:35-39; 145-150.
Function: converting virtual output into

Claim Term/
Identified By
Plus -Function term:

Claims

Microsoft Means-Plus -Function
term:
“wherein said virtual output
accepting means comprises a
picture manager process for
controlling said plurality of
related picture elements”

Microsoft Means-Plus -Function
term:
“wherein said virtual output
accepting means further
comprises a window manager
process for controlling the
display of said plurality of related
picture elements on said display

11

at least one physical output suitable for
use by at least one physical output
device

Structure: the operations performed
by the Output Manager process as
defined at 19:32-20:64 and 5:20-46.

10

Motorola Proposed Construction

output into at least one physical output
suitable for use by at least one physical
output device

“means for converting said
virtual output into at least one
physical output suitable for use
by at least one physical output
device”

Microsoft Proposed Construction

Corresponding structure: Output
Manager, which is any process that
converts virtual output into physical
output suitable for use by a physical
output device as described, for example,
at least at FIGs. 8, 9, 12, 14; Cols.
19:32-20:64; 23:51-24:44; 25:33-43;
26:33-43; 43:58-65.
This element is not a means-plusfunction element that should be
construed according to 35 U.S.C. §112,
¶ 6 because it recites sufficient structure
to perform the claimed function in its
entirety.

Function: accepting virtual output to
control a picture, a meta element, or a
macro element
Structure: the operations by which a
Picture Manager process controls the
modification and retrieval of a picture,
meta element, or macro element as
explicitly defined at 17:23-25, 17:6318:10, and 5:20-46.
In addition to the structure and function
defined in claim 10, the claimed means
includes:
Function: mapping said plurality of
related picture elements onto a
rectangular area (called a “window) on
the screen of said display device

12

(see Picture Manager Process above)

This element is not a means-plusfunction element that should be
construed according to 35 U.S.C. §112,
¶ 6 because it recites sufficient structure
to perform the claimed function in its
entirety.
(see Window Manager Process above)

Claim Term/
Identified By
device”

Claims

Microsoft Means-Plus -Function
term:

12

“wherein said virtual output
converting means comprises a
virtual output manager process
responsive to said one or more
processed picture elements for
coupling said one or more
processed picture elements to
said at least one physical output
device”

Microsoft and Motorola MeansPlus -Function term:
“means responsive to one of said
physical input devices for
generating a picture”

Microsoft Proposed Construction
Structure: the operations performed
by the Window Manager process,
which is a process that maps a given
picture (or portion thereof) to a
rectangular area of a given size on a
given screen (a “window”) in virtual
pixels, as explicitly defined at 22:5324:11 and 5:20-46.
Function: coupling1 said one or more
processed picture elements to said at
least one physical output device
Structure: the operations performed
by the Output Manager process as
explicitly defined at 19:32-20:64 and
5:20-46, wherein the physical output
suitable for the screen is sent to the
display device

Motorola Proposed Construction

This element is not a means-plusfunction element that should be
construed according to 35 U.S.C. §112,
¶ 6 because it recites sufficient structure
to perform the claimed function in its
entirety.
“Virtual output manager process” means
the process by which virtual output is
converted into real output on a particular
physical device.

1

Coupling is defined at 18:51-52, 19:5961, and 23:51-54 as processes or structures
that exchange messages via process
identifiers (PID's) rather than by name

15-16, 18-23

Function: generating a picture from
the input from a physical input device2
Structure: the Input Manager, Console
Manager, and Picture Manager
processes communicating between

13

Function: generating a picture
comprising one or more picture
elements responsive to a user’s
interaction with a physical input device.
Corresponding structure: Input Manager

Claim Term/
Identified By

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

each other as described at 25:25-31,
25:44-56, and 5:20-46.

and Console Manager processes that
generate a picture comprising one or
more picture elements responsive to a
user’s interaction with a physical input
device, as described, for example, at
least at FIGs. 8, 9, 12; Cols. 12:14-23;
13:64-14:7; 18:24-19: 31; 25:25-31,
25:44-56; 43:51-65; 47-56; 70-71.
Function: performing processing
operations on one or more picture
elements.

2

as the term "said physical input devices"
has no antecedent basis other than in the
preamble, this term becomes indefinite
unless the preamble to Claim 15 is limiting

Microsoft and Motorola MeansPlus -Function term:

15-16, 18-23

“means for performing
processing operations on said one
or more picture elements”

Microsoft and Motorola MeansPlus -Function term:
“means responsive to said one or
more processed picture elements
for coupling said one or more
processed picture elements to one
of said physical output devices”

Function: performing processing
operations on said one or more picture
elements
Structure: the operations performed
by the Console Manager process on
picture elements as described at 44:634 and 5:20-46.

15-16, 18-23

Function: sending one or more
processed picture elements to one or
more said physical display devices3 for
display
Structure: the operations performed
by the virtual output manager process
as described at 20:4-42 and 5:20-46.

14

Corresponding structure: Console
Manager processes that perform
processing operations on one or more
picture elements, as described, for
example, at least at FIGs. 8, 9, 12, 13;
Cols. 15:30-17:17;
24:49-26:24; 27:5-28:17; 29:65-30:48;
43:51-65; 44:6-34; 47-56
Function: coupling said one or more
processed picture elements to a physical
output device
Corresponding structure: Output
Manager processes that couple one or
more processed picture elements to a
physical output device, as described, for
example, at least at FIGs. 8, 9, 12, 14;

Claim Term/
Identified By

“wherein said means responsive
to one of said physical input
devices comprises a virtual input
manager process”
Microsoft Means-Plus -Function
term:
“wherein said means responsive
to said one or more processed
picture elements comprises a
virtual output manager process”

Motorola Proposed Construction

as the term "said physical output devices"
has no antecedent basis other than in the
preamble, this term becomes indefinite
unless the preamble to Claim 15 is limiting

22

Microsoft Proposed Construction
3

Microsoft Means-Plus -Function
term:

Claims

Cols. 19:32-20:64; 23:51-24:44; 25:3343; 26:33-43; 43:58-65.

Function: generating a picture from
the input from a physical input device

“Virtual input manager process” means
the process by which input from a
physical device is converted into virtual
form

Structure: the operations performed
by the virtual input manager process as
defined at 18:24-19:31 and 5:20-46.
23

Function: coupling one or more
processed picture elements to one or
more said physical display devices
Structure: the operations performed
by the virtual output manager process
as defined at 20:4-42 and 5:20-46.

15

“Virtual output manager process” means
the process by which virtual output is
converted into real output on a particular
physical device

Motorola Patent No. 5,764,899
Claim Term/
Identified By
Microsoft proposed term:
A system for communicating
reply data with a communication
unit comprising
Microsoft proposed term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1

The preamble is limiting. The term
means "A system for transmitting or
receiving the reply email composed on
the communication unit before
optimization."
The host server and the communication
server are separate processing devices
(e.g., computers) transmitting to or
receiving from each other over a
network.
A message, transmitted to a mailbox,
having text and header information
used for transmitting the text. The
header information includes at least the
recipient mailbox address and the
author address and may include other
message attributes such as subject,
date, and priority level.
Sending [send, sends, sent] from one
processing device (e.g., computer) to a
separate processing device (e.g.,
computer)

The preamble is not limiting and should
be construed according to its plain and
ordinary meaning.

1

a host server, in communication
with the communication server
Microsoft proposed term:

1, 15,18

email; e-mail

Microsoft proposed term:

1, 14, 16, 17

"forwarding" / "forward" /
"forwards" / "forwarded"

Microsoft proposed term:

14

A comparison is made at the

16

A computer or a program that operates
as an e-mail post office, which can
exchange data with the communication
server
This element requires no construction
and should be accorded its plain and
ordinary meaning.
If this element is construed, it should be
given the following meaning: "electronic
mail"
This element requires no construction
and should be accorded its plain and
ordinary meaning.
If this element is construed, it should be
given the following meaning:
"Forwarding from one computer or
program to another"
This element requires no construction

Claim Term/
Identified By
a determination is made whether
to forward the optimized reply or
a replica reply

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

communication server whether to
forward the optimized reply or replica
reply based on the known parameters
of the target communication unit, such
as whether the target is served by the
same communication server, was an
original addressee, or has deleted the
original message.

and should be accorded its plain and
ordinary meaning.

17

If this element is construed, it should be
given the following meaning: "the
communication server decides whether
to forward the optimized reply or the
replica reply."

Motorola Patent No. 5,784,001
Claim Term/
Identified By
Microsoft proposed term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1, 4, 6

Searching a particular database on the
data communication receiver to
compare each alphanumeric word
parsed from the message for a match
between it and the alphanumeric key
words in the database. Alphanumeric
only includes numbers and alphabet
characters.

This element requires no construction
and should be accorded its plain and
ordinary meaning.

At least one supplemental image is
displayed along with the entire
alphanumeric message.

At least one image is displayed along
with a portion of, or the entire,
alphanumeric message.

The preamble is limiting.

The preamble is a limitation that should

"referencing a database to
determine whether at least one
word included in the
alphanumeric message matches at
least one key word included in
the database” / ”determining
whether at least one word
included in the alphanumeric
message matches at least one key
word included in the database” /
“determining whether at least one
word included in the
alphanumeric message matches at
least one key word included in
the database”
Microsoft proposed term:
1, 4, 6
“graphic message that is
accompanied by the
alphanumeric message”/ “graphic
message accompanied by the
alphanumeric message”/ “graphic
message accompanied by the
message”
Microsoft proposed term:

1, 4, 6

18

Claim Term/
Identified By
"A method for displaying
messages in a data
communication receiver; A data
communication receiver for
presenting information”
Microsoft proposed Means-PlusFunction term:

Claims

All claim elements are a part of or
performed on the mobile
communication device receiving the
message.
4

"programming means coupled to
the processor and to the database
for programming the database,
the programming means further
comprising: the receiver for
receiving a programming
message including a key word
and image data; a memory for
storing a programming word; and
storing means for storing the key
word and image data in the
database in response to
determining that the
programming message includes
the programming word"

Microsoft proposed Means-PlusFunction term:
"storing means for storing the key

Microsoft Proposed Construction

Function: programming the database,
receiving a programming message
including a key word and image data,
storing a programming word, storing
the key word and image data in the
database in response to determining
that the programming message includes
the programming word

Motorola Proposed Construction
be construed according to its plain and
ordinary meaning.

This element is not a means-plusfunction element that should be
construed according to 35 U.S.C. §112,
¶6 because it recites sufficient structure
to perform the claimed function in its
entirety.
To the extent that this element is
construed according to 35 U.S.C. §112:

Structure: none.
The claim is indefinite for claiming
processor 120, programmed to perform
the function of "storing the key word
and image data in the database in
response to determining that the
programming message includes the
programming word" without disclosing
the internal structure of that processor
in the form of an algorithm.
4

Function: storing the key word and
image data in the database in response
to determining that the programming
message includes the programming

19

Claimed function:
"programming the database"
Corresponding structure:
the Receiver, the Decoder, the Memory,
and a program for operating the
Processor according to the algorithm of
Figure 13.

This is a means-plus function element
that should be construed according to 35
U.S.C. §112.

Claim Term/
Identified By
word and image data in the
database in response to
determining that the
programming message includes
the programming word"

Motorola proposed term:
"programming message"

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

word

Claimed function:
"storing the key word and the image
data in the database in response to
determining that the programming
message includes the programming
word"

Structure: none.

1, 3, 4

The claim is indefinite for claiming
processor 120, programmed to perform
the function of "storing the key word
and image data in the database in
response to determining that the
programming message includes the
programming word" without disclosing
the internal structure of that processor
in the form of an algorithm.
A message, received by the receiver
separately from the alphanumeric
message, that includes a predetermined
programming word indicative of
programming information, a key word,
and an image associated with the key
word.

20

Corresponding structure:
A program for operating the Processor
according to steps 360, 370, 375, and
380 of the algorithm of Fig. 13.

A message that creates or modifies an
association between a key word and
image data.

Motorola Patent No. 6,272,333
Claim Term/
Identified By
Microsoft term:
“data”
Microsoft term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1, 7, 12

Information to be processed by an
application, not an application or a
software update for an application
delivering data only after
checking in the fixed portion whether
an application compatible with the data
is accessible to the subscriber unit
the stationary portion of the wireless
communication
system that includes base
stations and a controller that controls
the base stations, as distinct from the
portable portion that includes
subscriber units, or the public
network portion that includes
telephones or computers that originate
data messages
a device that can receive data from the
fixed portion of the wireless
communication system

Digital information

one official list of all applications
currently accessible to the subscriber
unit, including applications that can be
downloaded over the air

A portion of memory that includes a list
of all software applications that are
immediately available for use by the
subscriber unit

1, 7, 12

“controlling a delivery of data”
Microsoft term:

1, 3, 5, 7, 12

“fixed portion of [a/the] wireless
communication system”

Motorola term:

1, 3, 5-7, 1213

“subscriber unit”
Motorola term:
“application registry comprising
a list of all software applications
that are currently accessible to
the subscriber unit”

1, 3, 5-7, 1213

21

Managing whether and when data is
delivered

The stationary portion of the wireless
communication system that includes
base stations and a controller

A portable device for use in a wireless
communication system

Motorola Patent No. 6,757,544
Claim Term/
Identified By
Microsoft term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1, 3

“Location information input by the
user to indicate the location of the
communication device.”

This element requires no construction
and should be accorded its plain and
ordinary meaning.

“specific location information of
the communication device”

If this element is construed, it should
be given the following meaning:

Microsoft term:

1, 3, 9, 10

“general location information of
the location relevant to the user”

A geographic area that is determined
by the nature of the service request of
a user.

“Information about the specific
location of the communication device.”
This element requires no construction
and should be accorded its plain and
ordinary meaning.
If this element is construed, it should
be given the following meaning:

Microsoft & Motorola term:
“determining the location relevant
to a user by comparing the list of
location parameters with the
specific location information”

1, 3

Determining the geographic location
that corresponds to the specific
location information by matching the
specific location information with a
list of location parameters to identify a
matching location parameter.

22

“Information about the general area of
a location relevant to the user.”
“Identifying the location relevant to the
user by selecting from the list of
location parameters based on the
specific location information.”

Motorola Patent No. 6,408,176
Claim Term/
Identified By
Microsoft term:
“extracts the caller-related
information from the stored voice
mail” / “extracting the callerrelated information from the stored
voice mail” / “receiving the callerrelated information … after
extraction from stored voice mail”
Microsoft term:
Order of the functional operation
(Claim 1 -extracts caller-relation
information/(Claim 8 - extracting
the caller-related
information/Claim 11 - extraction
from stored voice mail) and the
functional step (Claim 1 - converts
the caller-related information from
the voice format to an alphanumeric string format/Claim 8 converting the caller-related
information from a voice format
into an alpha-numeric-string
format/Claim 11 - caller-related
information in an alpha-numeric
string format resulting from a

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1, 8, 11

“To select and remove the spoken
words that relate to the caller (e.g. a
telephone number) from the remainder
of the stored voice mail message to
produce caller-related information in
voice format.”

See constructions for “extracts /
extracting / extraction” and “callerrelated information”

1, 8, 11

The functional operation (Claim 1 extracts caller-relation
information/(Claim 8 - extracting the
caller-related information/Claim 11 extraction from stored voice mail) is
performed prior to the functional step
(Claim 1 - converts the caller-related
information from the voice format to
an alpha-numeric string format/Claim
8 - converting the caller-related
information from a voice format into
an alpha-numeric-string format/Claim
11 - caller-related information in an
alpha-numeric string format resulting
from a voice-to-alphanumeric-string–
format conversion).

The operation of “extracts”;
“extracting”; “extraction” of callerrelated information and the operation
of “converts” / “converting” /
“conversion” of caller-related
information may take place in any
order in accordance with known
speech-recognition techniques.

23

Claim Term/
Identified By
voice-to-alphanumeric-string–
format conversion).
Microsoft term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1

A telecommunication equipment
installation that routes voice calls
between the communication, target and
voice mail devices and routes data
between the converter and the
communication devices.
The communication system
infrastructure is receiving a request
from the communication unit.

Communication system infrastructure
component.

Information present in a stored voice
mail that enables a communication
device to initiate a communication to a
target device.
To select and remove from a group of
items those which meet specific
criteria.

Information provided by a caller in a
stored audio message.

“fixed network equipment”

Microsoft term:

11

“receiving a request from a user of
the communication unit”
Motorola term:

1, 8, 11

“caller-related information”
Motorola term:
“extracts” / “extracting” /
“extraction”

1, 8, 11

24

This element requires no construction
and should be accorded its plain and
ordinary meaning.

Selecting.

Motorola Patent No. 6,983,370
Claim Term/
Identified By
Microsoft term:
for providing continuity

Microsoft term:
first / second messaging client

Microsoft term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

1, 6, 9, 10, 11,
12, 13, 15, 18,
19, 20, 22, 29,
33, 36, 42, 45,
46, 50, 59
1, 2, 6, 9, 10,
11, 12, 15, 22,
36, 46, 50, 51,
52, 54, 59, 61

Indefinite.

Allowing an account user to continue
at least one messaging session on
different messaging clients

Client application operating on a
messaging device that includes
software capability for transferring
client data to and receiving client data
from at least one other messaging
client. The First and Second
Messaging Clients can be operated by
one or more account users.
Indefinite.

First client software to interface a
user’s device within a messaging
communication system

46

“adding the second messaging
client to the at least one
messaging session using the
session identifier”

Second client software to interface a
user’s device within a messaging
communication system
This element requires no construction
and should
be accorded its plain and ordinary
meaning.
If this element is construed, it should
be given the following meaning:
“using the session identifier to allow
the second messaging client to
participate in the at least one
messaging session.”

Microsoft terms:

59

Indefinite.

This element requires no construction

25

Claim Term/
Identified By

Claims

Microsoft Proposed Construction

and should be accorded its plain and
ordinary meaning.

“transfer the at least one
messaging session to the second
messaging client using the session
identifier”

Microsoft Means-Plus-Function
Term
“a first messaging client, for
establishing a first communication
connection including a plurality of
client data with a message server”

Motorola Proposed Construction

If this element is construed, it should
be given the following meaning:

50 – 52, 54

“Using the session identifier to transfer
the at least one messaging session from
the first messaging client to the second
messaging client.”
Indefinite.
This element is not a means-plusfunction element that should be
Function: establishing a first
construed according to 35 U.S.C.
communication connection including a §112,¶ 6 because it recites sufficient
plurality of client data with a message structure to perform the claimed
server.
function in its entirety.
Structure: none.

This element requires no construction
and should be accorded its plain and
ordinary meaning.

The claims are indefinite for failing to
identify a structure capable of
providing or maintaining continuity by To the extent that this element is
“establishing a first communication
construed according to 35 U.S.C.
connection including a plurality of
§112,¶ 6:
client data with a message server.”
Claimed function:
“establishing a first communication
connection including a plurality of
client data with a message server.”
Corresponding structure:

26

Claim Term/
Identified By
Microsoft Means-Plus-Function
term:

Claims

50 – 52, 54

Microsoft Proposed Construction

Indefinite.
Function: receiving the plurality of
client data from the first messaging
client and for establishing a second
communication connection including
the plurality of client data with the
message server

“a second messaging client for
receiving the plurality of client
data from the first messaging
client and for establishing a
second communication connection
including the plurality of client
data with the message server”

Structure: none.
The claims are indefinite for failing to
identify a structure capable of
providing or maintaining continuity by
“receiving the plurality of client data
from the first messaging client and for
establishing a second communication
connection including the plurality of
client data with the message server.”

Motorola term:
“client data”

1, 6, 9, 10, 13,
15, 18, 20, 36,
42, 45, 46, 50,
52, 54, 59

Data associated with the messaging
client and data associated with each
messaging session for which the
messaging client is currently
participating, has participated in, or
plans to participate in.

27

Motorola Proposed Construction
“first messaging client”
This element is not a means-plusfunction element that should be
construed according to 35 U.S.C.
§112,¶6 because it recites sufficient
structure to perform the claimed
function in its entirety.
This element requires no construction
and should be accorded its plain and
ordinary meaning.
To the extent that this element is
construed according to 35 U.S.C.
§112,¶6:
Claimed function:
“receiving the plurality of client data
from the first messaging client, and
establishing a second communication
connection including the plurality of
client data with the message server
Corresponding structure:
“second messaging client”
Motorola agrees with Microsoft’s
proposed construction.

Claim Term/
Identified By
Motorola term:

Claims

Microsoft Proposed Construction

Motorola Proposed Construction

22, 29, 36, 42,
46, 59

an active communication connection
during which there is a
transfer of electronic messages
between two or more communicating
devices with a defined beginning and
end.
Indefinite.

A session of real time electronic
messaging, between two or more
messaging clients.

“messaging session”

Motorola term:
“providing continuity between a
plurality of messaging clients”
Motorola term:
“session data”

2, 6, 9, 10, 11,
12, 13, 18, 19,
20, 29, 33, 42,
45, 59
22, 29, 33,

Data relating to each of the plurality of
messaging sessions for which the
account user is currently participating,
has previously participated, or plans to
participate in.

28

See construction for “for providing
continuity”

Data relating to one or more of the
messaging sessions in which the
account user is participating, has
previously participated, or plans to
participate, using the messaging client

DATED this 3rd day of June 2011.
Respectfully submitted,
COLSON HICKS EIDSON
Roberto Martinez, Esq.
Curtis Miner, Esq.
255 Alhambra Circle, Penthouse
Coral Gables, Florida 33134
Tel. [phone]
Fax. [phone]
By: __/s/ Tung T. Nguyen____
Tung T. Nguyen
E-mail: [e-mail]

Of Counsel:
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Tel. [phone]
Brian R. Nester
SIDLEY AUSTIN LLP
1501 K Street NW
Washington, DC 20005
Tel. [phone]

CERTIFICATE OF SERVICE
I hereby certify that on June 3, 2011, a true copy of the foregoing document was served
upon the following counsel of record in the manner indicated.
Respectfully submitted,
_/s/ Tung T. Nguyen _____
Tung T. Nguyen, Esq.
SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-Moreno
By Email
Edward M. Mullins
[e-mail]
Hal M. Lucas
[e-mail]
ASTIGARRAGA DAVIS
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Tel.: [phone]
Steven Pepe
[e-mail]
Jesse J. Jenner
[e-mail]
Leslie M. Spencer
[e-mail]
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036-8704
Tel.: [phone]

Norman H. Beamer
[e-mail]
Mark D. Rowland
[e-mail]
Gabrielle E. Higgins
[e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
Tel.: [phone]
Kevin J. Post
[e-mail]
Megan F. Raymond
[e-mail]
ROPES & GRAY LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005-3948
Tel.: [phone]
Counsel for Plaintiff Motorola Mobility, Inc.