Apple, Inc. v. Motorola, Inc. et al

Filing 113

Motion for Leave to File Supplemental Claims Construction Evidence by Plaintiffs/Counter Claimants Apple, Inc., NeXT Software, Inc. (Peterson, James) Modified on 7/20/2011 (llj).

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

APPLE INC., and NEXT SOFTWARE,
INC. (f/k/a NeXT COMPUTER, INC.),
Plaintiffs and
CounterclaimDefendants,
v.

Case No. 10-CV-662 (BBC)

MOTOROLA, INC. and MOTOROLA
MOBILITY, INC.
Defendants and
CounterclaimPlaintiffs

APPLE INC. AND NEXT SOFTWARE, INC.’S
MOTION FOR LEAVE TO FILE
SUPPLEMENTAL CLAIMS CONSTRUCTION EVIDENCE

Apple Inc. and NeXT Software, Inc. (“Apple") respectfully seek leave to submit
supplemental evidence pertinent to the construction of a term in Motorola’s U.S. Patent No.
5,319,712 (the “‘712 patent”). The supplemental evidence consists of additional excerpts from
the certified translation of the file history of the Japanese counterpart to the ‘712 patent. Other
excerpts from the Japanese file history are already of record through the Haskett Declaration
(Dkt. No. 92), Exs. 10 and 11. The additional excerpts are attached to the Supplemental Taub
Declaration, filed with this motion.
The submission of the additional excerpts is necessary now because Motorola, Inc. and
Motorola Mobility, Inc. argued in their responsive claim construction brief that statements made
by the inventors in the prosecution of the Japanese counterpart to the ‘712 patent are not relevant
to the construction of terms in the claims of the ‘712 patent because they were made after the
‘712 patent issued. See Dkt. No. 108 at 87-88.
Apple submits the additional excerpts to establish two points. First, the cover page of the
PCT application, read with the cover page of the file history of the Japanese counterpart,
demonstrate that the Japanese counterpart claims priority, through the PCT application, to U.S.
Patent Application No. 08/112,780, filed on August 28, 1993, which issued as the ‘712 patent.
See Ex. 1 to the Supplemental Taub Decl. Second, claim 9 of the Japanese counterpart is
identical to claim 17 of the ‘712 patent, which is asserted against Apple in this case. See Ex. 2 to
the Supplemental Taub Decl. Given that claim 9 of the Japanese counterpart is identical to
asserted claim 17 of the ‘712 patent, and given that the Japanese counterpart claims priority to
and includes a disclosure identical to the patent application that led to the ‘712 patent, the
inventors’ statements concerning the meaning of the term “transmit overflow sequence number”

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during prosecution of the Japanese counterpart are relevant here, and are extrinsic evidence
properly considered by the Court.
Accordingly, Apple respectfully requests that the Court allow Apple to submit the
additional excerpts attached to the Supplemental Taub Declaration.

Dated: July 19, 2011

Respectfully submitted,
/s/ James D. Peterson

________

Robert T. Haslam (CA Bar No. 71134)
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065-1418
Telephone: [phone]
Facsimile: [phone]
Robert D. Fram (CA Bar No. 126750)
[e-mail]
Christine Saunders Haskett (CA Bar No. 188053)
[e-mail]
Samuel F. Ernst (CA Bar No. 223963)
[e-mail]
Winslow B. Taub (CA Bar No. 233456)
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111-5356
Telephone: [phone]
Facsimile: [phone]
Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]

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Elizabeth Stotland Weiswasser
[e-mail]
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, NY 10153
Telephone: [phone]
Facsimile: [phone]
MATTHEW D. POWERS
[e-mail]
Steven Cherensky
[e-mail]
Tensegrity Law Group LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: 650-802-6001
James Donald Peterson (# 1022819)
One East Main Street, Suite 500
P.O. Box 2719
Madison, WI 53701-2719
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiffs Apple Inc.
and NeXT Software, Inc.
6607330_3

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