Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 1 of 103 PageID #: 8975
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`MOBILEMEDIA IDEAS, LLC,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`)
`)
`)
`)
`) Civ. No. 1 0-258-SLR
`)
`)
`)
`)
`
`Jack B. Blumenfeld, Esquire, Rodger D. Smith II, Esquire, and Jeremy A. Tigan, Esquire
`of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Plaintiff. Of
`Counsel: Steven M. Bauer, Esquire, Justin T. Daniels, Esquire, Safraz W. Ishmael,
`Esquire, Kenneth Rubenstein, Esquire, Anthony C. Coles, Esquire, and Alan
`Federbush, Esquire of Proskauer Rose LLP.
`
`Richard K. Herrmann, Esquire, and Mary B. Matterer, Esquire of Morris James LLP,
`Wilmington, Delaware. Counsel for Defendant. Of Counsel: George A. Riley, Esquire,
`Luann L. Simmons, Esquire, and David S. Almeling, Esquire of O'Melveny & Myers
`LLP.
`
`MEMORANDUM OPINION
`
`Dated: November 8, 2012
`Wilmington, Delaware
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`MOBILEMEDIA IDEAS, LLC,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`)
`)
`)
`)
`) Civ. No. 1 0-258-SLR
`)
`)
`)
`)
`
`Jack B. Blumenfeld, Esquire, Rodger D. Smith II, Esquire, and Jeremy A. Tigan, Esquire
`of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Plaintiff. Of
`Counsel: Steven M. Bauer, Esquire, Justin T. Daniels, Esquire, Safraz W. Ishmael,
`Esquire, Kenneth Rubenstein, Esquire, Anthony C. Coles, Esquire, and Alan
`Federbush, Esquire of Proskauer Rose LLP.
`
`Richard K. Herrmann, Esquire, and Mary B. Matterer, Esquire of Morris James LLP,
`Wilmington, Delaware. Counsel for Defendant. Of Counsel: George A. Riley, Esquire,
`Luann L. Simmons, Esquire, and David S. Almeling, Esquire of O'Melveny & Myers
`LLP.
`
`MEMORANDUM OPINION
`
`Dated: November 8, 2012
`Wilmington, Delaware
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 2 of 103 PageID #: 8976
`
`->i~>-<,i 11-R . . - )
`ROBINSON, di~
`
`I. INTRODUCTION
`
`Plaintiff MobileMedia Ideas, LLC ("MobileMedia") filed a patent infringement
`
`complaint against Apple Inc. ("Apple") on March 31, 2010, alleging infringement of
`
`fourteen of its patents: U.S. Patent Nos. 6,070,068 ("the '068 patent"), 6,253,075 ("the
`
`'075 patent"), RE39231 ("the '231 patent"), 5,737,394 ("the '394 patent"), 6,427,078
`
`("the '078 patent"), 6,441 ,828 ("the '828 patent"), 6,549,942 (''the '942 patent"),
`
`6,393,430 ("the '430 patent"), 6,002,390 ("the '390 patent"), 6,446,080 ("the '080
`
`patent"), 6,760,477 ("the '477 patent"), 7,313,647 ("the '647 patent"), 7,349,012 ("the
`
`'012 patent"), and 5,915,239 ("the '239 patent"). (0.1. 1) On July 16, 2010,
`
`Mobile Media amended its complaint to assert infringement of two additional patents:
`
`U.S. Patent Nos. 6, 725,155 ("the '155 patent") and 5,490,170 ("the '170 patent"). (0.1.
`
`8) Subsequently, Apple answered and asserted affirmative defenses of, inter alia,
`
`noninfringement, invalidity, unenforceability, failure to state a claim, "waiver, laches
`
`and/or estoppel," prosecution history estoppel, and lack of standing. (0.1. 10 at mT 114-
`
`23) On March 2, 2012, Apple filed a motion to dismiss on grounds that MobileMedia
`
`lacked standing to sue for infringement of the patents-in-suit. The court denied the
`
`motion. (0.1. 441) Discovery closed on May 4, 2012. (D. I. 225)
`
`On April 4, 2012, the parties stipulated to dismiss the claims and counterclaims
`
`related to the '390 patent and the '647 patent. (D. I. 263) On April 25, 2012,
`
`MobileMedia deferred four patents (the '080, '477, '012, and '239 patents) for a later
`
`phase, leaving ten patents-in-suit. Currently remaining before the court are several
`
`summary judgment motions: Apple's motions for summary judgment of invalidity and
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 3 of 103 PageID #: 8977
`
`non-infringement (0.1. 305; D. I. 328); and MobileMedia's motions for summary judgment
`
`of no invalidity and for partial summary judgment on Apple's affirmative defenses of
`
`estoppel, waiver, and prosecution history estoppel (D. I. 300; D. I. 329). Apple also filed
`
`a motion to strike MobileMedia's newly proposed claim constructions and claim terms,
`
`and both parties filed motions to strike portions of expert reports and declarations. (D. I.
`
`265, 377, 414) The court has jurisdiction over these matters pursuant to 28 U.S.C. §
`
`1338.
`
`II. BACKGROUND
`
`A. The Parties
`
`MobileMedia is a Delaware LLC with its principal place of business in Chevy
`
`Chase, Maryland. (D. I. 8 at 1l1) It obtained the patents-in-suit in January 2012 from
`
`Nokia Capital, Inc. and Sony Corporation of America pursuant to two Patent Purchase
`
`Agreements. (D.I. 228, ex. D; ex. G) Apple Inc. is a California corporation with its
`
`principal place of business in Cupertino, California. (D.I. 10 at 1l2) It designs,
`
`manufactures, markets, and sells the accused products. (/d.)
`
`B. The Patents-in-Suit
`
`The ten remaining patents-in-suit relate to a variety of technologies in information
`
`processing, computing, mobile phones, and media player devices. The '068, '075, and
`
`'231 patents relate to technology for rejecting, silencing, and merging incoming second
`
`calls on mobile telephones already connected to a first call. The '078 and '394 patents
`
`relate to changeable keys and cameras, respectively, on mobile devices. The '828
`
`patent teaches a device that changes display orientation so that the display image is
`
`2
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 4 of 103 PageID #: 8978
`
`always upright. The '155 patent relates to a method and apparatus for obtaining
`
`navigation guidance. The '170, '942, and '430 patents pertain to multimedia- the '170
`
`patent is for compressing and expanding audio data, the '942 patent is for portable
`
`audio storage and playback, and the '430 patent relates to audio and video playlists.
`
`Apple has moved for summary judgment of non-infringement of all of the asserted
`
`claims of all ten patents-in-suit. (0.1. 328) The parties have cross-moved for summary
`
`judgment regarding the validity of all of the asserted claims of eight (excluding the '231
`
`and '430 patents) of the patents-in-suit. (0.1. 305; 0.1. 329) Presented with the variety
`
`of technology underlying the ten patents-in-suit, the court will provide a more detailed
`
`description of the technologies when discussing each patent in the context of the
`
`summary judgment issues.
`
`C. The Accused Products
`
`Mobile Media alleges that various Apple products infringe thirty claims of the ten
`
`patents-in-suit. Specifically, it alleges that Apple's iPhone 3G, iPhone 3GS, and iPhone
`
`4 products (collectively, "iPhones" or "accused iPhones") infringe claims 1, 7, 8, 23, and
`
`24 of the '068 patent, claims 5, 6, and 10 of the '075 patent, claims 2, 3, 4, and 12 of the
`
`'231 patent, claims 1, 2, 3, 8, and 73 of the '078 patent, and claim 18 of the '394 patent.
`
`It also alleges that Apple's iPhone 3G, iPhone 3GS, iPhone 4, iPad WiFi, iPad WiFi +
`
`3G, iPad 2 WiFi, iPad 2 WiFi + 3G, iPod classic, iPod nano, iPod touch, and iPod
`
`shuffle infringe claims 17 and 18 of the '828 patent, claims 1 and 5 of the '430 patent,
`
`and claim 49 of the '170 patent; that Apple's iPhone 3G, iPhone 3GS, iPhone 4, iPad
`
`WiFi, iPad WiFi + 3G, iPad 2 WiFi, and iPad 2 WiFi + 3G infringe claims 1, 2, 4, and 5 of
`
`3
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 5 of 103 PageID #: 8979
`
`the '155 patent; that Apple's iPhone 3G, iPhone 3GS, iPhone 4, iPad WiFi, iPad WiFi +
`
`3G, iPad 2 WiFi, iPad 2 WiFi + 3G, iPod nano, and iPod touch infringe claims 1, 6, and
`
`8 of the '942 patent; and that Apple's iPod classic infringes claim 1 of the '942 patent.
`
`In summary:
`
`Accused Products
`
`Patent(s)-in-Suit
`
`Claim(s)-at-lssue
`
`iPhone 3G, iPhone 3GS, iPhone 4
`
`iPhone 3G, iPhone 3GS, iPhone 4,
`iPad WiFi, iPad WiFi + 3G,
`iPad 2 WiFi, iPad 2 WiFi + 3G,
`iPod classic, iPod nano,
`iPod touch, iPod shuffle
`
`iPhone 3G, iPhone 3GS, iPhone 4,
`iPad WiFi, iPad WiFi + 3G,
`iPad 2 WiFi, iPad 2 WiFi + 3G
`
`iPhone 3G, iPhone 3GS, iPhone 4,
`iPad WiFi, iPad WiFi + 3G,
`iPad 2 WiFi, iPad 2 WiFi + 3G,
`iPod classic, iPod nano, iPod touch
`
`iPhone 3G, iPhone 3GS, iPhone 4,
`iPad WiFi, iPad WiFi + 3G,
`iPad 2 WiFi, iPad 2 WiFi + 3G,
`iPod nano, iPod touch
`
`The '075 patent
`
`5,6, 10
`
`The '231 patent
`
`2,3,4, 12
`
`The '068 patent
`
`1, 7,8,23,24
`
`The '394 patent
`
`18
`
`The '078 patent
`
`1,2, 3,8, 73
`
`The '828 patent
`
`17, 18
`
`The '430 patent
`
`The '170 patent
`
`1' 5
`
`49
`
`The '155 patent
`
`1,2,4, 5
`
`The '942 patent
`
`1
`
`The '942 patent
`
`6, 8
`
`4
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 6 of 103 PageID #: 8980
`
`Ill. STANDARD OF REVIEW
`
`"The court shall grant summary judgment if the movant shows that there is no
`
`genuine dispute as to any material fact and the movant is entitled to judgment as a
`
`matter of law." Fed. R. Civ. P. 56( a). The moving party bears the burden of
`
`demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus.
`
`Co. v. Zenith Radio Corp., 415 U.S. 574, 586 n.10 (1986). A party asserting that a fact
`
`cannot be-or, alternatively, is-genuinely disputed must demonstrate such, either by
`
`citing to "particular parts of materials in the record, including depositions, documents,
`
`electronically stored information, affidavits or declarations, stipulations (including those
`
`made for the purposes of the motions only), admissions, interrogatory answers, or other
`
`materials," or by "showing that the materials cited do not establish the absence or
`
`presence of a genuine dispute, or that an adverse party cannot produce admissible
`
`evidence to support the fact." Fed. R. Civ. P. 56(c)(1 )(A) & (B). If the moving party has
`
`carried its burden, the nonmovant must then "come forward with specific facts showing
`
`that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation
`
`marks omitted). The court will "draw all reasonable inferences in favor of the nonmoving
`
`party, and it may not make credibility determinations or weigh the evidence." Reeves v.
`
`Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
`
`To defeat a motion for summary judgment, the non-moving party must "do more
`
`than simply show that there is some metaphysical doubt as to the material facts."
`
`Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d
`
`584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more
`
`5
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 7 of 103 PageID #: 8981
`
`than just bare assertions, conclusory allegations or suspicions to show the existence of
`
`a genuine issue") (internal quotation marks omitted). Although the "mere existence of
`
`some alleged factual dispute between the parties will not defeat an otherwise properly
`
`supported motion for summary judgment," a factual dispute is genuine where "the
`
`evidence is such that a reasonable jury could return a verdict for the nonmoving party."
`
`Anderson v. Liberty Lobby, Inc., 411 U.S. 242,247-48 (1986). "If the evidence is merely
`
`colorable, or is not significantly probative, summary judgment may be granted." /d. at
`
`249-50 (internal citations omitted); see a/so Celotex Corp. v. Catrett, 411 U.S. 317, 322
`
`(1986) (stating entry of summary judgment is mandated "against a party who fails to
`
`make a showing sufficient to establish the existence of an element essential to that
`
`party's case, and on which that party will bear the burden of proof at trial").
`
`A. Claim Construction
`
`Claim construction is a matter of law. Phillips v. A WH Corp., 415 F .3d 1303,
`
`1330 (Fed. Cir. 2005) (en bane). Claim construction focuses on intrinsic evidence- the
`
`claims, specification and prosecution history - because intrinsic evidence is "the most
`
`significant source of the legally operative meaning of disputed claim language."
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v.
`
`Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S.
`
`370 (1996). Claims must be interpreted from the perspective of one of ordinary skill in
`
`the relevant art at the time of the invention. Phillips, 415 F.3d at 1313.
`
`Claim construction starts with the claims, id. at 1312, and remains centered on
`
`the words of the claims throughout. Interactive Gift Express, Inc. v. Compuserve, Inc.,
`6
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 8 of 103 PageID #: 8982
`
`256 F.3d 1323, 1331 (Fed. Cir. 2001 ). In the absence of an express intent to impart
`
`different meaning to claim terms, the terms are presumed to have their ordinary
`
`meaning. /d. Claims, however, must be read in view of the specification and
`
`prosecution history. Indeed, the specification is often "the single best guide to the
`
`meaning of a disputed term." Phillips, 415 F.3d at 1315.
`
`A means-plus-function limitation recites a function to be performed rather than
`
`structure or materials that perform the function, and such a limitation, therefore, must be
`
`construed "to cover the corresponding structure, material, or acts described in the
`
`specification and equivalents thereof." 35 U.S.C. § 112, 1J6 (1994); Chiuminatta
`
`Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 1307-8 (Fed.
`
`Cir.1998). For an accused structure to literally infringe a means-plus-function limitation,
`
`"the accused structure must either be the same as the disclosed structure or be an
`
`'equivalent,' i.e., (1) perform the identical function and (2) be otherwise insubstantially
`
`different with respect to structure." Kemco Sales, Inc. v. Control Papers Co., Inc., 208
`
`F.3d 1352, 1364 (Fed. Cir.2000). "[S]tructures may be 'equivalent' for purposes of
`
`section 112, paragraph 6 if they perform the identical function, in substantially the same
`
`way, with substantially the same result." /d.
`
`B. Infringement
`
`A patent is infringed when a person "without authority makes, uses or sells any
`
`patented invention, within the United States ... during the term of the patent." 35
`
`U.S. C. § 271 (a). To prove direct infringement, the patentee must establish, by a
`
`preponderance of the evidence, that one or more claims of the patent read on the
`
`7
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 9 of 103 PageID #: 8983
`
`accused device literally or under the doctrine of equivalents. See Advanced
`
`Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir.
`
`2001 ). A two-step analysis is employed in making an infringement determination. See
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). First, the
`
`court must construe the asserted claims to ascertain their meaning and scope. See id.
`
`Construction of the claims is a question of law subject to de novo review. See Cybor
`
`Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The trier of fact must then
`
`compare the properly construed claims with the accused infringing product. See
`
`Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L
`
`Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
`
`"Direct infringement requires a party to perform each and every step or element
`
`of a claimed method or product." BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373,
`
`1378 (Fed. Cir. 2007). "If any claim limitation is absent from the accused device, there
`
`is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp.,
`
`212 F.3d 1241, 1247 (Fed. Cir. 2000). If an accused product does not infringe an
`
`independent claim, it also does not infringe any claim depending thereon. See
`
`Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989).
`
`However, "[o]ne may infringe an independent claim and not infringe a claim dependent
`
`on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir.
`
`2007) (quoting Wahpeton Canvas, 870 F.2d at 1552) (internal quotations omitted). A
`
`product that does not literally infringe a patent claim may still infringe under the doctrine
`
`of equivalents if the differences between an individual limitation of the claimed invention
`
`8
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 10 of 103 PageID #: 8984
`
`and an element of the accused product are insubstantial. See Warner-Jenkinson Co. v.
`
`Hilton Davis Chern. Co., 520 U.S. 17, 24 (1997).
`
`To establish indirect infringement, a patent owner has available two theories:
`
`active inducement of infringement and contributory infringement. See 35 U.S.C. §
`
`271(b) & (c). To establish active inducement of infringement, a patent owner must show
`
`that an accused infringer "knew or should have known [its] actions would induce actual
`
`infringements." DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed. Cir.
`
`2006). To establish contributory infringement, a patent owner must show that an
`
`accused infringer sells "a component of a patented machine ... knowing the same to be
`
`especially made or especially adapted for use in an infringement of such patent, and not
`
`a staple article or commodity of commerce suitable for substantial noninfringing use."
`
`Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061 (Fed. Cir. 2004)
`
`(quoting 35 U.S.C. § 271 (c)). Liability under either theory, however, depends on the
`
`patent owner having first shown direct infringement. Joy Technologies, Inc. v. Flakt,
`
`Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).
`
`When an accused infringer moves for summary judgment of non-infringement,
`
`such relief may be granted only if one or more limitations of the claim in question does
`
`not read on an element of the accused product, either literally or under the doctrine of
`
`equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see
`
`a/so TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) ("Summary
`
`judgment of non-infringement is ... appropriate where the patent owner's proof is
`
`deficient in meeting an essential part of the legal standard for infringement, because
`
`9
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 11 of 103 PageID #: 8985
`
`such failure will render all other facts immaterial."). Thus, summary judgment of
`
`non-infringement can only be granted if, after viewing the facts in the light most
`
`favorable to the non-movant, there is no genuine issue as to whether the accused
`
`product is covered by the claims (as construed by the Court). See Pitney Bowes, Inc. v.
`
`Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
`
`C. Invalidity
`
`1. Anticipation
`
`Under 35 U.S.C. § 102(e),
`
`a person shall be entitled to a patent unless an application for patent,
`published under section 122(b ), by another filed in the United States
`before the invention by the applicant for patent . . . or a patent granted on
`an application for patent by another filed in the United States before the
`invention by the applicant for patent.
`
`A claim is anticipated only if each and every limitation as set forth in the claim is
`
`found, either expressly or inherently described, in a single prior art reference.
`
`Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). A single
`
`prior art reference may expressly anticipate a claim where the reference explicitly
`
`discloses each and every claim limitation. However, the prior art need not be ipsissimis
`
`verbis (i.e., use identical words as those recited in the claims) to be expressly
`
`anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed.
`
`Cir. 1984 ). A single prior art reference also may anticipate a claim where one of
`
`ordinary skill in the art would have understood each and every claim limitation to have
`
`been disclosed inherently in the reference. Continental Can Co. USA Inc. v. Monsanto
`
`Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). The Federal Circuit has explained that an
`10
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 12 of 103 PageID #: 8986
`
`inherent limitation is one that is necessarily present and not one that may be
`
`established by probabilities or possibilities. /d. That is, "the mere fact that a certain
`
`thing may result from a given set of circumstances is not sufficient." /d. The Federal
`
`Circuit also has observed that "inherency operates to anticipate entire inventions as well
`
`as single limitations within an invention." Schering Corp. v. Geneva Pharm. Inc., 339
`
`F.3d 1373, 1380 (Fed. Cir. 2003). Moreover, recognition of an inherent limitation by a
`
`person of ordinary skill in the art before the critical date is not required to establish
`
`inherent anticipation. /d. at 1377.
`
`Even if the prior art discloses each and every limitation set forth in a claim, such
`
`disclosure will not suffice under 25 U.S.C. § 102 if it is not enabling. In re Borst, 345
`
`F.2d 851, 855 (1965). "Long ago our predecessor court recognized that a non-enabled
`
`disclosure cannot be anticipatory (because it is not truly prior art) if that disclosure fails
`
`to 'enable one of skill in the art to reduce the disclosed invention to practice."' Amgen
`
`Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003) (citations
`
`omitted). The patentee bears the burden to show that the prior art reference is not
`
`enabled and, therefore, disqualified as relevant prior art for an anticipation inquiry. /d. at
`
`1355.
`
`An anticipation inquiry involves two steps. First, the court must construe the
`
`claims of the patent in suit as a matter of law. Key Ph arm. v. Hereon Lab. Corp., 161
`
`F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the construed
`
`claims against the prior art to determine whether the prior art discloses the claimed
`
`invention. /d. The burden of proof rests on the party asserting invalidity and can be met
`
`11
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 13 of 103 PageID #: 8987
`
`only by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship,- U.S.-, 131
`
`S. Ct. 2238, 2242, 180 L. Ed. 2d 131 (2011) ("We consider whether [35 U.S.C.] § 282
`
`requires an invalidity defense to be proved by clear and convincing evidence. We hold
`
`that it does.").
`
`2. Obviousness
`
`"A patent may not be obtained ... if the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person having
`
`ordinary skill in the art." 35 U.S.C. § 1 03(a). Obviousness is a question of law, which
`
`depends on underlying factual inquiries.
`
`Under§ 103, the scope and content of the prior art are to be determined;
`differences between the prior art and the claims at issue are to be
`ascertained; and the level of ordinary skill in the pertinent art resolved.
`Against this background the obviousness or nonobviousness of the
`subject matter is determined. Such secondary considerations as
`commercial success, long felt but unsolved needs, failure of others, etc.,
`might be utilized to give light to the circumstances surrounding the origin
`of the subject matter sought to be patented.
`
`KSR lnt'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere
`
`Co., 383 U.S. 1, 17-18 (1966)).
`
`"[A] patent composed of several elements is not proved obvious merely by
`
`demonstrating that each of its elements was, independently, known in the prior art."
`
`KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a
`
`combination of references has the burden to show that a person of ordinary skill in the
`
`relevant field had a reason to combine the elements in the manner claimed. /d. at 418-
`
`12
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 14 of 103 PageID #: 8988
`
`19. The Supreme Court has emphasized the need for courts to value "common sense"
`
`over "rigid preventative rules" in determining whether a motivation to combine existed.
`
`/d. at 419-20. "[A]ny need or problem known in the field of endeavor at the time of
`
`invention and addressed by the patent can provide a reason for combining the elements
`
`in the manner claimed." /d. at 420. In addition to showing that a person of ordinary skill
`
`in the art would have had reason to attempt to make the composition or device, or carry
`
`out the claimed process, a defendant must also demonstrate that "such a person would
`
`have had a reasonable expectation of success in doing so." PharmaStem
`
`Therapeutics, Inc. v. ViaCe/1, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
`
`A combination of prior art elements may have been "obvious to try" where there
`
`existed "a design need or market pressure to solve a problem and there [were] a finite
`
`number of identified, predictable solutions" to it, and the pursuit of the "known options
`
`within [a person of ordinary skill in the art's] technical grasp" leads to the anticipated
`
`success. /d. at 421. In this circumstance, "the fact that a combination was obvious to
`
`try might show that it was obvious under§ 103." /d.
`
`A court is required to consider secondary considerations, or objective indicia of
`
`nonobviousness, before reaching an obviousness determination, as a "check against
`
`hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`
`Patent Litig., 676 F.3d 1063, 1079 (Fed. Cir. 2012). "Such secondary considerations as
`
`commercial success, long felt but unsolved needs, failure of others, etc., might be
`
`utilized to give light to the circumstances surrounding the origin of the subject matter
`
`sought to be patented." John Deere Co., 383 U.S. at 17-18.
`
`13
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 15 of 103 PageID #: 8989
`
`"Because patents are presumed to be valid, see 35 U.S.C. § 282, an alleged
`
`infringer seeking to invalidate a patent on obviousness grounds must establish its
`
`obviousness by facts supported by clear and convincing evidence." Kao Corp. v.
`
`Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006) (citation omitted). In conjunction
`
`with this burden, the Federal Circuit has explained that,
`
`[w]hen no prior art other than that which was considered by the PTO
`examiner is relied on by the attacker, he has the added burden of
`overcoming the deference that is due to a qualified government agency
`presumed to have properly done its job, which includes one or more
`examiners who are assumed to have some expertise in interpreting the
`references and to be familiar from their work with the level of skill in the art
`and whose duty it is to issue only valid patents.
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting
`
`Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984)).
`
`IV. DISCUSSION
`
`For each of the ten patents-in-suit, the court will discuss the background
`
`technology, any necessary claim construction on summary judgment, and any
`
`infringement and invalidity issues on summary judgment.
`
`A. The '068 Patent
`
`1. Technology
`
`The '068 patent, titled "Communication Terminal Device and Method for
`
`Controlling a Connecting State of a Call into a Desired Connection State upon a
`
`Predetermined Operation by a User," was issued on May 30, 2000. It claims a foreign
`
`application priority date of March 19, 1996. A reexamination certificate was issued
`
`March 6, 2012, cancelling claims 17-22 and 27-32, amending several claims, and
`14
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 16 of 103 PageID #: 8990
`
`adding claims 33-57. The patent teaches a communication terminal device in which
`
`"the connecting state of a call can certainly and easily be controlled without learning
`
`troublesome operating methods .... " ('068 patent, abstract)
`
`Conventionally, a variety of functions are available to a telephone user if, during
`
`a call in progress, the user receives an incoming call from a third party. "For instance,
`
`[the user may suspend] the call in progress ... and [connect with] a newly received call
`
`... , or disconnect[] the call presently talking and connect with the newly received call, or
`
`includ[e] the call received among the present call and talk with two parties at the same
`
`time, ... or disconnectD the call received and ... continue talking with the present call."
`
`(/d., col. 1 :22-28) The user executes one of these call controls by performing a
`
`predetermined operation. (/d., col. 1 :29-30) For example, the Global System for
`
`Mobile Communications ("GSM") has a set of standards under which pressing the "2"
`
`key then the "send" key suspends the call in progress and connects with the call
`
`received; pressing the "1" key then the "send" key disconnects the call in progress and
`
`connects with the call received; pressing the "3" key then the "send" key switches the
`
`call into a three-way call; and pressing the "0" key then the "send" key disconnects the
`
`call received and continues the call in progress. (/d., col. 1 :31-38) According to the
`
`'068 patent, "these operating methods of call controls are very difficult to learn for the
`
`user, and often cause erroneous operations." (/d., col. 1:49-51)
`
`The '068 patent relates to an invention that allows the user to easily control the
`
`connecting state of a call. (/d., col. 1 :62-66) The invention provides a "control means"
`
`for displaying the "processing items" available and controlling the call into the
`
`15
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 17 of 103 PageID #: 8991
`
`connecting state that the user selects. (/d., col. 2:3-7) Claims 1, 7, 8, 23, and 24 are at
`
`issue. Reexamined claim 1 teaches:
`
`1. A communication terminal device for controlling a connecting state of a
`call into a desired connecting state upon a predetermined operation by a
`user, comprising:
`
`display means for displaying processing items available to the user
`relative to a call;
`
`input means for selecting and determining a desired processing item out
`of said processing items displayed on said display means; and
`
`control means for controlling displaying of the processing items available
`to the user relative to a present call and to an incoming call on said display
`means and controlling the present call and the incoming call into a
`respective connecting state corresponding to the processing item selected
`and determined by the operation of said input means by a user, wherein
`said control means controls said display means to display said processing
`items on said display means when only a single predetermined operation
`key of said input means is pushed by the user.
`
`Claim 7 limits claim 1 to a control means that controls the display means "to
`
`display a list of said processing items available to the user .... " (/d., col. 17:33-35)
`
`Claim 8 was amended to be independent during reexamination and incorporates the
`
`limitations of claims 1 and 7, except that it does not require that "only a single"
`
`predetermined key is pushed by the user: the "control means controls said display
`
`means to display said processing items on said display means when a predetermined
`
`operation key of said input means is pushed by the user." Claims 23 and 24 were also
`
`rewritten during reexamination to be independent. Claim 23 teaches a method claim
`
`similar to claim 1 but in "step" form. (/d., col. 18:30-45) Claim 24 incorporates the
`
`limitations of claim 23, adding "wherein when a processing for one call is determined by
`
`16
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 461 Filed 11/08/12 Page 18 of 103 PageID #: 8992
`
`said step of selecting and a processing for another call is naturally determined, said
`
`step of controlling said processing items includes listing only processing items available
`
`to said one call on said display."
`
`2. Claim Construction
`
`a. "[P]rocessing items available to the user" 1
`
`MobileMedia asserts that "processing items available to the user" should be
`
`construed simply as "call handling actions available to the user." (0.1. 239-1 at 1 0)
`
`Apple avers that the term should be restricted to "all actions available to the user for
`
`controlling the connecting state of a present call and of an incoming call." (/d.) Apple's
`
`construction of the term inappropriately adds language of reexamined claims 1, 6, 8, 13,
`
`and 15, which provides processing items that are available "relative to a present call
`
`and to an incoming call." However, the term "processing items available to the user" is
`
`used in a different context in reexamined claims 23 and 24, which refer to processing
`
`items available "relative to the call on a display." The processing items must simply
`
`allow the user to control the connecting state of a call. ('068 patent, col. 2:1 0-12)
`
`Therefore, it is under certain limiting claim language, not the term by itself, that the
`
`processing items must be available relative to a present call and an incoming call.
`
`In addition, Apple's proposed construction requiring that "all actions available to
`
`user" be displayed introduces an unnecessary limitation to the term. While the
`
`specification mentions one embodiment where "all of processings available to the call
`
`1 Because the court does not adopt either party's proposed construction for
`"processing items available to the user," Apple's m
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
