Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 1 of 28
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`
`
`Michael T. Pieja (CA Bar No. 250351)
`Alan E. Littmann (pro hac vice)
`Jennifer Greenblatt (pro hac vice)
`Doug Winnard (CA Bar No. 275420)
`Andrew J. Rima (pro hac vice)
`Emma C. Neff (pro hac vice)
`Lauren Abendshien (pro hac vice)
`GOLDMAN ISMAIL TOMASELLI
`BRENNAN & BAUM LLP
`564 W. Randolph St., Suite 400
`Chicago, IL 60661
`Tel: (312) 681-6000
`Fax: (312) 881-5191
`mpieja@goldmanismail.com
`alittmann@goldmanismail.com
`jgreenblatt@goldmanismail.com
`dwinnard@goldmanismail.com
`arima@goldmanismail.com
`eneff@goldmanismail.com
`labendshien@goldmanismail.com
`
`Attorneys for Defendant Apple Inc.
`
`(Additional counsel listed in signature block)
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`UNILOC USA, INC., et al.,
`
`Plaintiffs,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`Case Nos. 3:18-cv-00365-WHA
`
`DEFENDANT APPLE INC.’S CLAIM
`CONSTRUCTION BRIEF FOR CLAIM 9 OF U.S.
`PATENT NO. 6,216,158
`
`JUDGE: Hon. William Alsup
`
`Accompanying Papers: Declaration of Michael T. Pieja
`in Support; Exhibits
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
`OF U.S. PATENT NO. 6,216,158
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`i
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`CASE NO. 3:18-CV-00365-WHA
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`Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 2 of 28
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`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ............................................................................................................... ii 
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`INTRODUCTION ................................................................................................................... 1 
`
`BACKGROUND ..................................................................................................................... 2 
`
`LEGAL STANDARD .............................................................................................................. 3 
`
`APPLE’S PROPOSED CONSTRUCTIONS ARE FAITHFUL TO THE
`INTRINSIC EVIDENCE. ........................................................................................................ 4 
`
`A. 
`
`The ‘158 Patent Uses The Term “Service” To Refer To A Network-Based
`Resource That Is Controlled By Program Code. ......................................................... 5 
`
`1. 
`
`2. 
`
`3. 
`
`The ‘158 Patent Uses “Service” To Refer To A Resource. ............................. 5 
`
`The ‘158 Patent Requires Its “Service” To Be Network-Based. ..................... 5 
`
`The ‘158 Patent Requires That A Network-Based “Service” Be
`Controlled By The Program Code. .................................................................. 7 
`
`B. 
`
`The ‘158 Patent Uses The Term “Program” To Refer To An Application, Not
`An Operating System. .................................................................................................. 8 
`
`1. 
`
`2. 
`
`As The Applicant Confirmed During Prosecution, The Specific
`“Program” Claimed In The ‘158 Patent Is An “Application.” ......................... 8 
`
`The Claimed “Program” Cannot Be An Entire Operating System. ............... 10 
`
`C. 
`
`The Phrase “The [Palm-Sized] Computer Is Not Capable Of Executing The
`Program By Itself” Means That The Computer Lacks The Hardware Needed
`To Execute The Program. .......................................................................................... 12 
`
`V. 
`
`THE “DESCRIPTION OF THE SERVICE” ELEMENT IS UNTETHERED
`FROM THE REMAINDER OF CLAIM 9, RENDERING THE CLAIM
`AMBIGUOUS AND INDEFINITE. ..................................................................................... 15 
`
`A. 
`
`B. 
`
`C. 
`
`Claim 9 Is Indefinite As Written. ............................................................................... 16 
`
`A Person Of Ordinary Skill In The Art Cannot Ascertain The Scope Of
`Claim 9 With Reasonable Certainty. ......................................................................... 17 
`
`Claim 9 Is Not Amenable To Correction And Must Be Held Invalid. ...................... 20 
`
`VI. 
`
`CONCLUSION ...................................................................................................................... 22 
`
`
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
`OF THE ‘158 PATENT
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`Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 3 of 28
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` CASES 
`
`TABLE OF AUTHORITIES
`
`Altera Corp. v. PACT XPP Techs., AG,
`2015 WL 4999952 (N.D. Cal. Aug. 21, 2015) ............................................................................ 22
`
`Cellular Commc'ns Equip. LLC v. AT&T, Inc.,
`2016 WL 7364266 (E.D. Tex. Dec. 18, 2016) ............................................................................. 16
`
`Eon Corp. IP Holdings v. Silver Spring Networks,
`815 F.3d 1314 (Fed. Cir. 2016)................................................................................................ 3, 12
`
`
`
`Gardner v. Toyota Motor Corp.,
`2009 WL 4110305 (W.D. Wash. Nov. 19, 2009) ........................................................................ 17
`
`Halliburton Energy Servs., Inc. v. M-I LLC,
`514 F.3d 1244 (Fed. Cir. 2008)................................................................................................ 4, 17
`
`In Re Qualcomm Litigation,
`2018 WL 1406944 (S.D. Cal. Mar. 21, 2018) ............................................................................. 12
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004).............................................................................................. 10, 16
`
`IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
`430 F.3d 1377 (Fed. Cir. 2005)................................................................................................ 4, 19
`
`Jones v. Apple, Inc.,
`2017 WL 1146982 (N.D. Cal. Jan. 10, 2017) ........................................................................ 17, 20
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) ....................................................................................................... 4, 14, 15
`
`Novo Indus., L.P. v. Micro Molds Corp.,
`350 F.3d 1348 (Fed. Cir. 2003).......................................................................................... 4, 20, 22
`
`O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)...................................................................................................... 3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)...................................................................................................... 3
`
`SRI Int'l v. Matsushita Elec. Corp. of Am.,
`775 F.2d 1107 (Fed. Cir. 1985).................................................................................................... 18
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335 (Fed. Cir. 2015).................................................................................................... 20
`
`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
`OF THE ‘158 PATENT
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`Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 4 of 28
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`Trustees of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016).................................................................................................. 1, 3
`
`Wi-Lan, Inc. v. Apple Inc.,
`811 F.3d 455 (Fed. Cir. 2016)...................................................................................................... 16
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
`OF THE ‘158 PATENT
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`Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 5 of 28
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`Under paragraph 4 of the Court’s May 1, 2018, Case Management Order, Uniloc selected
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`claim 9 of the U.S. Patent No. 6,126,158 (“the ‘158 Patent”) to include in the Court’s early summary
`
`judgment procedure. Pursuant to paragraph 22 of the Court’s Case Management Order, and the
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`Court’s July 14, 2018, Order endorsing the parties’ scheduling stipulation, Defendant Apple Inc.
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`(“Apple”) hereby respectfully submits its brief regarding the claim construction issues pertaining to
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`that claim. Pursuant to the July 14 Order, the parties will be submitting separate briefs regarding
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`
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`Apple’s chosen claim (claim 21 of U.S. Patent No. 6,446,127), with Uniloc filing the opening brief
`
`on that claim.
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 6,216,158 describes a supposed improvement to 1990s-era Palm Pilots and
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`PDAs. According to the patent, these devices’ limited physical capabilities prevented them from
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`running many useful applications. Drawing heavily on pre-existing technology, the ‘158 Patent
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`proposes addressing this “problem” by putting applications, and other services like printers, on a
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`network. The patent then describes a way for a PDA or other palm-sized device to look up the
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`services in a directory and control them over the network.
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`This description of the patent’s alleged invention permeates the patent’s claims, specification,
`
`and prosecution history. Apple’s proposed constructions faithfully track this intrinsic evidence,
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`following the Federal Circuit’s admonition that “the construction that stays true to the claim language
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`and most naturally aligns with the patent’s description of the invention will be, in the end, the correct
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`construction.” Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366 (Fed. Cir. 2016)
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`(quotation omitted). Uniloc’s proposed constructions, in contrast, stray far from the intrinsic evidence
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`in an effort to fabricate infringement reads on Apple’s products. And Uniloc’s constructions create
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`more issues than they solve. For one term, Uniloc proposes “ordinary meaning” without saying what
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`that meaning is or addressing the parties’ dispute. For another, Uniloc offers a construction that
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`makes infringement dependent on the subjective intent of a device’s user.
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`Further, and even absent Uniloc’s constructions, claim 9 contains an unresolvable ambiguity.
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`The claim is a method claim. In the middle of the claim, however, is a structural element that has no
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`link to the rest of the claim and that attempts to refer back to an element that is not present. Nothing
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
`OF THE ‘158 PATENT
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`in the claim makes clear the role that this structural element plays, or whether (or where) it needs to
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`be present in order for infringement to occur. Because a person of ordinary skill in the art could not
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`reasonably understand claim 9’s scope, the claim is invalid as indefinite.
`II.
`
`BACKGROUND
`
`The ‘158 Patent, filed in early 1999, purports to address limitations in 1990s-era PDA
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`technology. At the time, early “palm sized computers such as 3Com’s Palm [Pilot]” were coming
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`into use. (Ex. A, ‘158 Patent at 1:19–21; id. at 1:13–18.) These devices, however, had serious
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`shortcomings: “limited processing, display and input capabilities,” “limited battery life and lower
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`bandwidth communications.” (Id. at 1:23–25, 1:27–29.) As a result of these limitations, palm-sized
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`devices could not perform tasks that would seem commonplace on a smartphone today, such as
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`displaying a PowerPoint presentation. (See id. at, e.g., 3:12–19, 3:41–65; Ex. B, 7/12/00 Resp. to
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`Office Action at 3.)
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`As the ‘158 Patent describes, prior to the patent, Sun Microsystems (“Sun”) had already
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`developed a technology called Jini to address many of these issues. (Ex. A, ‘158 Patent at 2:45–47.)
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`Jini was designed to allow relatively primitive palm-sized devices to access “network resources” to
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`augment their own capabilities. (Id. at 2:45–49.) Using Jini, different services, or resources, such as
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`printers and software applications, could register themselves on a network. (Id.) Palm-sized devices
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`could then “locate services and download software for those services.” (Id. at 2:62–64.) This
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`software allowed the devices to communicate with and use various services that had registered on the
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`network, without the services themselves ever being located on the device. In addition, because a
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`device could download new software when it needed to access new network capabilities, “the
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`behavior of a device [could] be dynamically altered to accommodate changing conditions.” (Id. at
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`2:58–61.)
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`The ‘158 Patent’s alleged contribution is a specific use case of Sun’s technology. The ‘158
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`Patent discloses a system where, just as in Jini, network-based resources register themselves in a
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`directory. (Ex. A, ‘158 Patent at 4:31–32, 5:27–37.) A palm-sized device can access this directory
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`and download software relating to the services. (Id. at 3:45–49, 4:31–32, 6:9–21.) The software
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`allows the device to act as a remote control for a specific type of service: programs, or applications,
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
`OF THE ‘158 PATENT
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`Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 7 of 28
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`that the device is not itself capable of executing. (Id. at 3:45–51, 6:22–26.)
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`In this Court’s early summary judgment procedure, Uniloc chose method claim 9 of the ‘158
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`Patent, which depends from method claim 8. Claim 9, rewritten in independent form, is reproduced
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`in full below:
`
`9. A method of controlling a program on a network device from a palm sized computer,
`the computer is not capable of executing the program by itself, the network device
`and computer being coupled in communications via a network, the method
`comprising:
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`accessing a directory of services, a service in the directory of services corresponding
`to the program, the description of the service including at least a reference to
`program code for controlling the service;
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`loading the program code;
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`issuing control commands to the network device using the program code, the control
`commands causing the network device to control the program[;]
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`wherein loading the program code includes loading the program code onto the palm
`sized computer and the [sic] issuing the control commands includes the palm sized
`computer issuing the control commands.
`
`III. LEGAL STANDARD
`The claim construction process focuses on the intrinsic evidence: the patent’s claims,
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`specification, and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
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`(en banc). “The construction that stays true to the claim language and most naturally aligns with the
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`patent’s description of the invention will be, in the end, the correct construction.” Symantec Corp.,
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`811 F.3d at 1366 (quotations omitted). “The purpose of claim construction is to determine the
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`meaning and scope of the patent claims asserted to be infringed. When the parties raise an actual
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`dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.”
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`O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quotations
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`and internal citations omitted). “Thus, a determination that a claim term ‘needs no construction’ or
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`has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’
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`meaning or when reliance on a term's ‘ordinary’ meaning does not resolve the parties’ dispute.” Eon
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`Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1318 (Fed. Cir. 2016) (quoting O2
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`Micro, 521 F.3d at 1361).
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
`OF THE ‘158 PATENT
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`Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 8 of 28
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`A patent may contain defects that, at the claim construction stage, result in its being held
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`invalid as indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the
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`specification delineating the patent, and the prosecution history, fail to inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
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`Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). “[A] claim could be indefinite if a term does not have
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`proper antecedent basis where such basis is not otherwise present by implication or the meaning is
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`
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`not reasonably ascertainable.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed.
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`Cir. 2008). A court charged with construing a claim that appearing to be indefinite may not ordinarily
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`redraft the claim to correct the error. “A district court can correct a patent only if (1) the correction
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`is not subject to reasonable debate based on consideration of the claim language and the specification
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`and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus.,
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`L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Outside these narrow
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`circumstances, the claim must stand or fall as written.
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`A claim is also invalid as indefinite, if it is drawn to two separate statutory classes of invention,
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`such as a method and an apparatus. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384
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`(Fed. Cir. 2005). A claim that mixes separate classes of invention fails to apprise a person of ordinary
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`skill in the art as to when the claim is infringed. For example, “a manufacturer or seller of the claimed
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`apparatus would not know from the claim whether it might also be liable for contributory
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`infringement because a buyer or user of the apparatus later performs the claimed method of using the
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`apparatus.” Id.
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`IV. APPLE’S PROPOSED CONSTRUCTIONS ARE FAITHFUL TO THE INTRINSIC
`EVIDENCE.
`The parties dispute the meaning of three terms: “service,” “program,” and “the computer is
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`not capable of executing the program by itself.” For each, Apple’s construction flows directly from
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`the claims themselves, the patent’s specification, and its file history, and the Court should adopt it.
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`/ / /
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`/ / /
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`/ / /
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
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`Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 9 of 28
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`
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`A.
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`The ‘158 Patent Uses The Term “Service” To Refer To A Network-Based
`Resource That Is Controlled By Program Code.
`
`Term
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`service
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`Apple’s Construction
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`Uniloc’s Construction
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`a network-based resource
`controlled by the program code
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`a software functionality or
`capability
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`With respect to the term “service,” the parties first dispute whether a “service” is limited to
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`software, or whether it may (as Apple proposes) encompass other types of resources disclosed in the
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`patent, such as storage. The parties also dispute whether (as Apple proposes) the service must be
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`network-based and controlled by program code, as the specification uniformly requires. Because the
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`intrinsic evidence supports Apple’s proposed construction, the Court should adopt it.
`1.
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`The ‘158 Patent Uses “Service” To Refer To A Resource.
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`As an initial matter, the ‘158 Patent equates the term “service” with a computer “resource.”
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`The patent uses these terms interchangeably. In explaining how the supposed invention works on a
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`palm-sized device, for instance, the patent states:
`The resources are accessed and controlled, but not resident, on the control device.
`Examples of such compute/memory-intensive services include PowerPoint slide
`presentations and speech recognition systems.
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`(Ex. A, ‘158 Patent at 3:15–18 (emphasis added); see also id. at 2:37–43, 11:60–67.) Similarly, the
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`patent refers to “a directory of resources (or services),” suggesting that “resources” and “services”
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`are interchangeable. (Id. at 2:32–33.) Further, all the patent’s examples of “services”—applications,
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`operating systems, memory or storage, a display, and a projector—are resources for use by a
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`computer. (Id. at FIG. 6, 3:49–54.)
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`2.
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`The ‘158 Patent Requires Its “Service” To Be Network-Based.
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`The ‘158 Patent next requires that its claimed “services” are network-based. This requirement
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`flows first from the claims. Claim 8, from which claim 9 depends, requires a “directory of services.”
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`The ‘158 Patent explicitly states that the services in this directory must be on a network: “The
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`directory of services 220 encodes the set of services available on the network 110.” (Ex. A, ‘158
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`Patent at 9:12–13 (emphasis added).)
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
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`Case 3:18-cv-00365-WHA Document 117 Filed 07/27/18 Page 10 of 28
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`Similarly, the specification repeatedly confirms that the claimed services are network-based.
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`It explains that “services are stored on the network and can be used at will” by the palm-sized device.
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`(Ex. A, ‘158 Patent at 2:18–19 (emphasis added).) Then, a few paragraphs later, the patent states that
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`“[s]ervices . . . represent a distributed set of capabilities residing on a network.” (Id. at 3:25–26
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`(emphasis added).) These are not isolated instances; numerous other passages in the specification
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`also make clear that the ‘158 Patent’s “services” must be network-based. For instance, the
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`specification states that “[s]ervices will be physically distributed across devices” and “offered via the
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`network.” (Id. at 3:35–40 (emphasis added).) It explains that “[c]ontrol applications reside on a
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`lightweight computing device, such as a palm sized computer, but manipulate computing services on
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`the network.” (Id. at 2:37–39 (emphasis added).) And it teaches that the “network 110 [is] the
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`physical medium which connects devices [such as the palm sized computer] and services.” (Id. at
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`4:8–9.) Beyond this, the ‘158 Patent describes services as “network-based” at least seven times. (Id.
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`at 2:66–67, 3:21, 4:40, 5:23–24, 9:23, 9:24; see Id. at 4:21–22.) Each of these descriptions confirms
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`that the claimed “service” must be network-based.
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`The figures of the ‘158 Patent also indicate that the claimed services are network-based. For
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`instance, Figure 1 (shown, annotated, at left)
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`shows
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`that each “service”—the
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`lookup
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`service, the application service, the storage
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`service, and the display service—is based on
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`network 110. Similarly, Figures 2 and 3 each
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`depict the “service” (element 250) based off of
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`network 110. Nothing in the claims, figures,
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`or specification of the ‘158 Patent identifies
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`any kind of service that is not network-based.
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`Indeed, having the claimed “service” be network-based—rather than residing on the palm-
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`sized device—is the entire point of the ‘158 Patent. (Ex. A, ‘158 Patent at 3:15–16 (“The resources
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`are accessed and controlled, but not resident, on the control device.”) (emphasis added).) The goal
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`of the patent’s “invention” is to allow a low-powered “control device,” such as a Palm Pilot, to access
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`“a wide class of computing services otherwise inaccessible to devices with restricted computing
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`power.” (Id. at 3:6–8.) And the way the patent proposes to do this is to “view[] the network as an
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`extension of the palm sized computer’s resources,” and locate the services there. (Id. at 2:10–13.)
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`The “services” must therefore be network-based in order to fulfill the basic purpose of the ‘158
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`Patent’s claims. Apple’s construction reflects this purpose.
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`3.
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`The ‘158 Patent Requires That A Network-Based “Service” Be
`Controlled By The Program Code.
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`Finally, as Apple’s construction reflects, the ‘158 Patent’s “services” must be controlled on
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`the network by the claimed “program code.” Again, this requirement originates with the claims
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`themselves: claim 8 requires that the claimed “program code” be “program code for controlling the
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`service.” (Ex. A, ‘158 Patent at 12:56–59.) And the specification repeatedly makes clear that the
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`service must be “controlled” on the network:
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` “[T]he palm sized computer 100 functions as the remote control device . . . It is a
`multi-function control device in that it can control a host of resources available via
`the network.” (Ex. A, ‘158 Patent at 4:12–15 (emphasis added).)
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` “[T]he control device 200 is able to control services on the network 110.” (Id. at
`4:29–30 (emphasis added).)
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`
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` “The palm sized computer 100 accomplishes this via middleware (e.g. Jini) and a
`generic control protocol capable of issuing control commands to an offboard
`resource.” (Id. at 4:15–18 (emphasis added).)
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`Apple’s construction thus tracks the intrinsic evidence, and the Court should adopt it.
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`Uniloc’s construction, in contrast, ignores and even contradicts the intrinsic record. As an initial
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`matter, Uniloc’s construction apparently allows for the “service” to reside and be controlled on the
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`claimed “palm sized device,” rather than on the network. This interpretation contradicts the patent’s
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`explicit statement that “services are stored on the network.” (Ex. A, ‘158 Patent at 2:18–19.) It is
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`also inconsistent with the specification’s repeated explanations that the palm sized device controls a
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`network-based service, not software on the device itself. (E.g. Id. at 4:13–15, 4:16–19, 4:29–30.)
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`Similarly, Uniloc apparently believes that its construction would allow the claimed “directory of
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`services” to be a directory of software available for use on the palm-sized device itself. But this
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`would contradict the specification’s statement that the “directory of services 220 encodes the set of
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`CASE NO. 3:18-CV-00365-WHA
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`services available on the network 110.” (Id. at 9:13–14 (emphasis added).) Uniloc’s requirement
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`that the services be “software” is also inconsistent with the specification, which provides several
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`examples of “services” that are not software, including “a storage service 150,” a “display service
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`140,” and a projector service. (Id. at 3:53–54, FIG. 6.)
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`In addition, the reference in Uniloc’s construction to a software “functionality or capability”
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`is inconsistent with the claims. Claim 1 of the ‘158 Patent requires “sending control commands to
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`the service.” But a “capability” is not a thing that one can send commands to. Similarly, claim 1
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`requires that the “service controls an application.” It does not make sense to refer to a “capability”
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`as controlling an application (or anything else). Uniloc’s proposed construction is inconsistent with
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`the intrinsic evidence and should be rejected.
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`B.
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`The ‘158 Patent Uses The Term “Program” To Refer To An Application,
`Not An Operating System.
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`Term
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`Apple’s Construction
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`Uniloc’s Construction
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`program
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`an application, not an operating system
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`ordinary meaning
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`With respect to claim 9’s “program,” the key issues are (1) whether (as Apple proposes, and
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`the applicant indicated during prosecution) the “program” that “the computer is not capable of
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`executing” is an “application”, and (2) whether this “program” can be a computer’s entire operating
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`system, despite the contrary usage in the ‘158 Patent. Apple’s construction is consistent with the
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`claims, the specification, and the file history, and the Court should adopt it. Uniloc’s proposal of
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`“ordinary meaning,” in contrast, is unclear and unhelpful—it neither specifies what “ordinary
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`meaning” Uniloc proposes to apply nor addresses the issues raised above.
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`1.
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`As The Applicant Confirmed During Prosecution, The Specific
`“Program” Claimed In The ‘158 Patent Is An “Application.”
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`Claim 9 of the ‘158 Patent requires a specific type of “program”: one that “the [palm sized]
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`computer is not capable of executing [] by itself.” The claims, specification, and file history make
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`clear that this type of program must be an “application.” First, during prosecution, the Examiner
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`rejected the claims based on a prior art reference known as “Frese” (U.S. Patent No. 5,909,545).
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`(Ex. C, 4/6/00 Office Action.) In response, the applicant argued that Frese did not disclose an
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
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`application that cannot be executed on the palm-sized computer because Frese “[taught] away from
`palm sized remote control of a PC-based program, such as . . . Microsoft’s PowerPoint.” (Ex. B,
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`7/12/00 Resp. to Office Action at 2 (emphasis added).). The applicant thus used “application”
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`interchangeably with “program.” Similarly, later in prosecution, the applicant repeatedly argued that
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`its pending claims were patentable because the prior art did not disclose “remotely controlling an
`application that cannot be executed on a palm-sized computer.” (Ex. D, 9/14/00 Resp. to Office
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`Action at 2-3 (emphasis added)) (distinguishing the “Kuzma” reference); id. at 3 (distinguishing the
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`“Agranat et al.” reference).) But at the time the applicant made these statements, claim 9 required,
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`as it does now, a “program” that the palm sized computer “is not capable of executing.” (Ex. E,
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`1/25/99 Original Application at 23-24.) By offering an argument about an “application that cannot
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`be executed” to save the validity of a claim that required a “program” that could not be executed, the
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`applicant again equated “program” and “application.”
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`The claims and specification further underscore this conclusion. Claim 8 requires that “the
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`computer is not capable of executing the program by itself.” The only software that the specification
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`describes a palm-sized computer as being unable to execute is an “application.” Specifically, the
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`‘158 Patent refers on two occasions to a “desktop application[] that the palm sized computer could
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`not execute.” (Ex. A, ‘158 Patent at Abstract, 1:45–46 (emphasis added).) And separately, the patent
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`refers to “a desktop application that wuld not execute on a palm sized computer.” (Id. at 5:7–8
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`(emphasis added).) That’s it: there is no other description of any other type of software that a palm
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`sized device could not execute. Accordingly, when claim 8 refers to a “program” that “the computer
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`is not capable of executing,” the “program” must be an “application”; there is nothing else in the
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`specification that this term could be referring to.
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`Further, the ‘158 Patent’s only explanation of why a computer “may not be capable of
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`executing” software relates to applications. The patent explains that “palm sized computers have
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`limited processing, display and input capabilities.” (Ex. A, ‘158 Patent at 1:23–25.) The patent then
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`explains that, “[a]s a result of these limitations, palm sized computers do not run the same applications
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`as desktop or laptop computers.” (Id. at 1:22–27 (emphasis added).) The patent’s failure to describe
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`how or why a computer might be incapable of running any software other than an application further
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`APPLE’S CLAIM CONSTRUCTION BRIEF FOR CLAIM 9
`OF THE ‘158 PATENT
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