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

Filing 90

Motion Requesting Claims Construction and Claim Construction Hearing by Plaintiffs Apple, Inc., NEXT SOFTWARE, INC. ** Disregard Declaration of Leonard Cimini, to be refiled as a separate document** # 2 Ex. A to Cimini Declaration) (Haslam, Robert) Modified on 6/20/2011 (voc).

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,
Case No. 10-CV-662 (BBC)

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

MOTION OF PLAINTIFFS AND COUNTERCLAIM-DEFENDANTS APPLE INC. AND
NEXT SOFTWARE, INC. REQUESTING CLAIM CONSTRUCTION AND CLAIM
CONSTRUCTION HEARING

I.

REQUEST FOR CLAIM CONSTRUCTION
Plaintiffs and Counterclaim-Defendants Apple Inc. and NeXT Software, Inc. (“Apple”)

move for construction of six terms that appear in the claims of four of the six patents asserted by
Defendants and Counterclaim-Plaintiffs Motorola, Inc. and Motorola Mobility, Inc.
(“Motorola”).1 Specifically, Apple moves for a construction of the following claim terms:
Motorola Patent No.
U.S. Patent No. 5,490,230

U.S. Patent No. 5,319,712
U.S. Patent No. 5,572,193

U.S. Patent No. 6,175,559

Claim Term
“long term energy value for
[the/a] frame of information”
“extracting from [the
recovered signal/the speech
coded information] at least
one parameter”
“transmit overflow sequence
number”
“transmitting . . . from the
subscriber unit to the
communication system”
“preamble sequence”
“outer code”

Apple provides its proposed constructions and support thereof in its accompanying brief. The six
claim terms selected by Apple from the Motorola patents-in-suit appear in every asserted claim
of their respective patents, and as further explained in Apple’s accompanying brief, if the Court
adopts Apple’s constructions of these terms, Apple will move for summary judgment of noninfringement with respect to those patents of which the claim terms are a part.

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The Motorola patents-in-suit are U.S. Patent Nos. 5,311,516 (the “’516 patent”), 5,319,712 (the
“’712 patent”), 5,490,230 (the “’230 patent”), 5,572,193 (the “’193 patent”), 6,175,559 (the
“’559 patent”) and 6,359,898 (the “’898 patent”).

Apple further understands that Motorola is moving for construction of nine terms that
appear in the claims of the Apple patents-in-suit.2 Those claim terms are as follows:
Apple Patent No.
U.S. Patent Nos. RE 39,486
and 5,929,852
U.S. Patent No. 6,424,354
U.S. Patent No. 6,275,983
U.S. Patent No. 5,969,705
U.S. Patent No. 5,946,647
U.S. Patent No. 5,566,337

U.S. Patent No. 5,481,721
U.S. Patent Nos. 5,455,599

U.S. Patent No. 6,493,002

Claim Term
“software component
architecture”
“connection information”
“during runtime”
“events for controlling said
user interface”
“linking actions to the
detected structures”
“storing means for storing a
specific set of events of
which said at least one event
consumer is to be informed”
“dynamic binding”
“means for capturing state
information and rendering
information at the grafport
object”
“programming modules”

Although Apple does not agree that these terms require construction by the Court at this time, in
accordance with the briefing schedule set by the Court, Apple also addresses its proposed
constructions of these nine terms in its accompanying brief.

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The Apple patents-in-suit are U.S. Patent Nos. 5,455,599 (the “’599 patent”), 5,481,721 (the
“’721 patent”), 5,519,867 (the “’867 patent”), 5,566,337 (the “’337 patent”), 5,838,315 (the
“’315 patent”), 5,915,131 (the “’131 patent”), 5,929,852 (the “’852 patent”), 5,946,647 (the
“’647 patent”), 5,969,705 (the “’705 patent”), 6,275,983 (the “’983 patent”), 6,343,263 (the
“’263 patent”), 6,424,354 (the “’354 patent”), 6,493,002 (the “’002 patent”), 7,479,949 (the
“’949 patent”) and RE 39,486 (the “’486 patent”).

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II.

REQUEST FOR HEARING
Apple further requests that the Court hold a claim construction hearing regarding at least

four claim terms from the Motorola patents-in-suit as to which Apple is seeking construction.
Specifically, Apple requests the Court hear argument regarding the terms “long term energy
value for [the/a] frame of information” and “extracting from [the recovered signal/the speech
coded information] at least one parameter” found in the asserted claims of Motorola’s ’230
patent and the terms “preamble sequence” and “outer code” found in the asserted claims of
Motorola’s ’559 patent.
As discussed in greater detail in the accompanying brief, Motorola’s ‘230 and ’559
patents relate to the complex field of wireless telecommunication systems. Specifically,
Motorola’s ’230 patent falls within the field of speech coding, which is the process of creating a
compressed, digital version of human speech that can be transmitted efficiently from one
location to another. The speech coding technology described in the ’230 patent involves digital
processing of speech signals, and is built on a foundation that includes numerous interrelated
technical concepts. A hearing would provide the parties an opportunity to answer any questions
the Court may have about the technology, language, and concepts within the patent regarding the
terms “long term energy value for [the/a] frame of information” and “extracting from [the
recovered signal/the speech coded information] at least one parameter.”
Motorola’s ’559 patent concerns a method of generating a “preamble sequence” used by
a mobile handset to begin a communication session with the base station in a wireless CDMA
system. Again, understanding the claimed invention and the disputed issues will require an
appreciation of a number of concepts relating to the underlying code, or instructions, used to
form these “preamble sequences.” Given the complexity of the technology at issue, a hearing

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would provide a useful opportunity to answer any questions the Court may have about the
technology and legal arguments regarding the terms “preamble sequence” and “outer code.”
Finally, Apple requests that the Court hold a claim construction hearing regarding certain
of the disputed claim terms of the Apple patents-in-suit. Because it is Motorola who is
requesting construction of those terms, however, Apple is unable at this juncture to specify
which terms from the Apple patents should be the subject of a hearing. Apple will therefore
identify the specific terms as to which it believes a hearing would be appropriate in its response
to Motorola’s motion for claim construction.

Dated: June 17, 2011

Respectfully submitted,
________
/s/ Robert T. Haslam
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]
Matthew D. Powers
[e-mail]

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Steven S. Cherensky
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]
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.

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CERTIFICATE OF SERVICE
I hereby certify that on June 17, 2011, I caused these documents to be electronically filed
with the Clerk of the Court using the ECF system, which will make these documents available to
all counsel of record for viewing and downloading from the ECF system.


MOTION OF PLAINTIFFS AND COUNTERCLAIM-DEFENDANTS APPLE
INC. AND NEXT SOFTWARE, INC. REQUESTING CLAIM CONSTRUCTION
AND CLAIM CONSTRUCTION HEARING



MEMORANDUM IN SUPPORT OF MOTION OF PLAINTIFFS AND
COUNTER-CLAIMANTS APPLE INC. AND NEXT SOFTWARE, INC.
REQUESTING CLAIM CONSTRUCTION



DECLARATION OF CHRISTINE SAUNDERS HASKETT IN SUPPORT OF
PLAINTIFFS AND COUNTERCLAIM-DEFENDANTS APPLE INC. AND NEXT
SOFTWARE, INC.’S CLAIM CONSTRUCTION MEMORANDUM (AND
EXHIBITS THERETO)



DECLARATION OF DR. LEONARD J. CIMINI IN SUPPORT OF PLAINTIFFS
AND COUNTERCLAIM-DEFENDANTS APPLE INC. AND NEXT SOFTWARE,
INC.’S CLAIM CONSTRUCTION MEMORANDUM

/s/ Robert T. Haslam
Robert T. Haslam

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