Mirror Worlds, LLC v. Apple, Inc.

Filing 144

JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT pursuant to P.R. 4-3, filed by Mirror Worlds Technologies, Inc., Mirror Worlds, LLC, Apple, Inc. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D)(Smith, Stefani)

Mirror Worlds, LLC v. Apple, Inc.

Doc. 144

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION MIRROR WORLDS, LLC, Plaintiff, v. APPLE INC., Defendant. APPLE INC., Counterclaim Plaintiff, v. MIRROR WORLDS LLC, MIRROR WORLDS TECHNOLOGIES, INC., Counterclaim Defendants. JOINT CLAIM CONSTRUCTION AND PRE-HEARING STATEMENT PURSUANT TO PATENT RULE 4-3 Pursuant to P.R. 4-3, Mirror Worlds, LLC ("Mirror Worlds"), Mirror Worlds Technologies, Inc. ("MWT") and Apple Inc. ("Apple") hereby file this Joint Claim Construction and Pre-hearing Statement in accordance with the Court's September 18, 2008 Docket Control Order and the Court's Order dated November 2, 2009. This statement addresses the claim construction positions of the parties regarding both the Mirror Worlds patents--U.S. Patent No. 6,006,227 ("the '227 patent"); 6,638,313 ("the Civil Action No. 6:08-CV-88 LED JURY TRIAL DEMANDED

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'313 patent"); 6,725,427 ("the '427 patent"); and 6,768,999 ("the '999 patent")--as well as Apple's Piles patent--U.S. Patent No. 6, 6,613,101 ("the '101 patent"). While this statement is submitted on behalf of all the parties, Mirror Worlds and MWT contend that Apple's patent infringement claim against MWT should be severed from Mirror Worlds' patent infringement claim against Apple and intend to file a motion seeking that relief. Apple originally filed its patent infringement claim regarding the `101 patent against both Mirror Worlds and MWT, which are unrelated companies, but later agreed to dismiss its infringement claim against Mirror Worlds in response to Mirror Worlds motion to dismiss that claim. Thus, Apple's infringement claim is against MWT only--a company which was not an original party to this lawsuit and, again, unrelated to Mirror Worlds. Similarly, Mirror Worlds infringement claims against Apple are by Mirror Worlds only, not MWT. Mirror World

contends that it would be highly prejudicial to it to have its infringement claim against Apple tried before the same jury as Apple's infringement claim against an unrelated party (MWT). Apple disagrees. Mirror Worlds and MWT also note that this statement's consideration and treatment of the claim constructions of the Mirror Worlds' patents is on behalf of Mirror Worlds only (not MWT). Also, this statement's consideration and treatment of the claim constructions of Apple's `101 patent is on behalf of MWT only (not Mirror Worlds). (a) Terms on Which the Parties Agree After several meet and confer telephone conferences, the parties were able to narrow the list of disputed claim terms and phrases, and have reached agreement on many claim terms, as set forth in Exhibit A. The parties will continue their efforts to reduce the number of disputed terms

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. (b) Proposed Constructions For Disputed Terms The parties have set forth their proposed constructions in three exhibits: Exhibit B sets forth Mirror Worlds' and Apple's proposed constructions of each disputed claim term of the Mirror Worlds patents and Apple's and MWT's proposed constructions of each disputed claim term of Apple's Piles patent. Exhibit C includes all the information set forth in Exhibit B. It further contains all references from the specification and prosecution history that Mirror Worlds and MWT contend support their proposed constructions, as well as an identification of the non-expert extrinsic evidence known to Mirror Worlds and MWT on which they intend to rely.. Exhibit D includes all the information set forth in Exhibit B, and further contains all references from the specification and prosecution history that Apple contends support its constructions, as well as an identification of the non-expert extrinsic evidence on which it intends to rely. Both parties may also rely on the testimony of expert witnesses and will exchange a summary of their respective expert's testimony, pursuant to Local Patent Rule 4-3(d), by November 25, 2009. The parties agree that the joint submission of this statement does not waive any party's right to challenge any materials identified as "extrinsic evidence" and to object to their introduction in the record. (c) Claim Construction Hearing Length The parties believe that the Claim Construction Hearing can be conducted in 1 day.

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(d)

Witnesses, Including Experts, for the Claim Construction Hearing Mirror Worlds may call Dr. John Levy as an expert at the Claim Construction

Hearing. Apple may call Dr. Steven Feiner of Columbia University as an expert at the Claim Construction Hearing. Again, the parties have agreed to exchange a summary of their respective expert's testimony, pursuant to Local Patent Rule 4-3(d), by November 25, 2009. (e) Other Issues The parties agree they do not have any other issues that need to be taken up at a pre-hearing conference prior to the Claim Construction Hearing.

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Dated: November 16, 2009 /s/ Kenneth Stein Otis Carroll Texas Bar No. 03895700 Lead Attorney Deborah Race Texas Bar No. 16448700 IRELAND, CARROLL & KELLY, P.C. 6101 S. Broadway, Suite 500 Tyler, Texas 75703 903-561-1600 (Telephone) 903-581-1071 (Facsimile) [e-mail] Of counsel: Joseph Diamante (Pro Hac Vice) Kenneth Stein (Pro Hac Vice) Richard An (Pro Hac Vice) STROOCK & STROOCK & LAVAN LLP 180 Maiden Lane New York, NY 10038 212-806-5400 (Telephone) 212-806-6006 (Facsimile) [e-mail] [e-mail] [e-mail] Attorneys for MIRROR WORLDS, LLC and MIRROR WORLDS TECHNOLOGIES, INC.

Respectfully submitted, /s/ Stefani C. Smith Eric M. Albritton Texas State Bar No. 00790215 ALBRITTON LAW FIRM P.O. Box 2649 Longview, Texas 75606 [phone] (Telephone) [phone] (Facsimile) [e-mail] Matthew Powers Lead Attorney Steven S. Cherensky Sonal N. Mehta (Pro Hac Vice) Stefani C. Smith (Pro Hac Vice) WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 650-802-3000 (Telephone) 650-802-3100 (Facsimile) [e-mail] [e-mail] [e-mail] [e-mail] Attorneys for APPLE INC.

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CERTIFICATE OF SERVICE This is to certify that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on this day, November 16, 2009. /s/ Stefani Smith Stefani C. Smith

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