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

Filing 151

Notice by Counter Claimants Apple, Inc., Next Software, Inc., Plaintiffs Apple, Inc., Next Software, Inc., Counter Defendants Apple, Inc., Next Software, Inc. re 148 Notice (Other), Notice (Other) Response To Motorolas Notice of Supplemental Authority Concerning Claim Construction. (Peterson, James) Modified party text on 9/8/2011 (mmo).

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
Counterclaim Defendants,
v.
MOTOROLA, INC. and MOTOROLA
MOBILITY, INC.,
Defendants and
Counterclaim Plaintiffs.

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Case No. 10-CV-662 (BBC)

JURY TRIAL DEMANDED

APPLE INC.’S AND NEXT SOFTWARE INC.’S RESPONSE TO
MOTOROLA’S NOTICE OF SUPPLEMENTAL AUTHORITY
CONCERNING CLAIM CONSTRUCTION

Plaintiffs Apple Inc. (“Apple”) and NeXT Software, Inc. (“NeXT”)
respectfully respond to Motorola’s Notice of Supplemental Authority Concerning Claim
Construction, D.I. 148, to which Motorola attaches the public version of the Initial
Determination by an Administrative Law Judge of the United States International Trade
Commission In the Matter of CERTAIN PERSONAL DATA AND MOBILE
COMMUNICATION DEVICES AND RELATED SOFTWARE, Investigation No. 337-TA710 (“ALJ Initial Determination”). Motorola asserts that this Court should consider the ALJ
Initial Determination as authority for construction of the term “dynamic binding” in claim 1
of U.S. Patent No. 5,481,721 (“the ’721 patent”), which is presently before the Court in

Civil Action No. 10-CV-662-BBC

connection with the pending claim construction proceedings. For the reasons that Apple has
already fully briefed, Apple respectfully submits that the Court should not follow the ALJ
Initial Determination as to the construction of “dynamic binding” and should instead construe
the term consistent with Apple’s proposed construction here.
The ALJ’s construction of “dynamic binding” was incorrectly premised on
reading a preferred “Objective C” embodiment of the ’721 patent into the claims. ALJ Initial
Determination at 220-21. Apple explained in its claim construction briefing that limiting the
claims to the Objective C preferred embodiment is improper because (1) the ’721 patent
specification teaches that the “invention may be implemented in any type of computer system
or programming or processing environment,” and thus is not limited to an Objective C
environment; and (2) dependent claim 8 of the ’721 patent is itself limited to Objective C,
underscoring the incorrectness of reading such a limitation into independent claim 1, from
which claim 8 depends. See Apple’s Opening Claim Construction Brief, D.I. 91, at 123-27
(June 17, 2011); Apple’s Responsive Claim Construction Brief, D.I. 106, at 16-22 (July 15,
2011). The ALJ Initial Determination did not address these points. In addition, the Cox and
NeXTSTEP references cited in the ALJ Initial Determination contradict its construction of
“dynamic binding” and indeed support Apple’s construction, for the reasons discussed in
Apple’s claim construction briefing. See Apple Opening Brief at 126-27; Apple Responsive
Brief at 18. Apple’s briefing also cites additional support for the plain and ordinary meaning
of “dynamic binding” as specifying that binding occurs during runtime (as opposed to
binding at compile time), consistent with Apple’s proposed construction, which is not
referenced in the ALJ Initial Determination. See id.

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Accordingly, for the reasons explained by Apple in its claim construction
briefing, Apple respectfully submits that the ALJ’s construction of “dynamic binding” should
not be followed here.
September 7, 2011
s/ James D. Peterson
James D. Peterson (# 1022819)
[e-mail]
GODFREY & KAHN, S.C.
One East Main Street, Suite 500
P.O. Box 2719
Madison, WI 53701-2719
Telephone: [phone]
Facsimile: [phone]
Jill J. Ho
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
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]
Elizabeth Stotland Weiswasser
[e-mail]
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, NY 10153
Telephone: [phone]
Facsimile: [phone]

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Matthew D. Powers
[e-mail]
Steven S. Cherensky
[e-mail]
TENSEGRITY LAW GROUP LLP
201 Redwood Shores Parkway, Suite 401
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: 650-802-6001
Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065-1418
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiffs Apple Inc.
and NeXT Software, Inc.
6800374_1

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