Case 1:10-cv-00258-SLR-MPT Document 470 Filed 11/15/12 Page 1 of 6 PageID #: 9179
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
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`MOBILEMEDIA IDEAS, LLC,
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`Plaintiff,
`
`v.
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`APPLE INC.,
`
`Defendant.
`
`)
`)
`)
`)
`) Civ. No. 1 0-258-SLR
`)
`)
`)
`)
`
`MEMORANDUM ORDER
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`At Wilmington this 15th day of November, 2012, having reviewed the materials
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`regarding reexamined claims 1-3 of U.S. Patent No. 6,427,078 ("the '078 patent") (D.I.
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`465; D.l. 466);
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`IT IS ORDERED that claims 1-3 of the '078 patent are to be excluded at trial, for
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`the reasons that follow:
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`1. Background. Plaintiff MobileMedia Ideas, LLC ("MobileMedia") filed a patent
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`infringement complaint against Apple Inc. ("Apple") on March 31, 2010, alleging
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`infringement of, among other patents, the '078 patent. (D.I. 1) Specifically,
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`Mobile Media alleged certain Apple products of infringing claims 1, 2, 3, 8, and 73, as
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`originally issued, of the '078 patent. (I d.) Apple has asserted affirmative defenses of,
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`inter alia, non-infringement and invalidity. (D.I. 1 0)
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`2. Fact discovery closed October 31, 2011, and expert discovery closed May 4,
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`2012. (D.I. 135; D.l. 225) The parties filed their joint claim construction chart on March
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`23, 2012, and Apple moved for summary judgment of invalidity and non-infringement on
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`
`
`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
`)
`)
`)
`)
`
`MEMORANDUM ORDER
`
`At Wilmington this 15th day of November, 2012, having reviewed the materials
`
`regarding reexamined claims 1-3 of U.S. Patent No. 6,427,078 ("the '078 patent") (D.I.
`
`465; D.l. 466);
`
`IT IS ORDERED that claims 1-3 of the '078 patent are to be excluded at trial, for
`
`the reasons that follow:
`
`1. Background. Plaintiff MobileMedia Ideas, LLC ("MobileMedia") filed a patent
`
`infringement complaint against Apple Inc. ("Apple") on March 31, 2010, alleging
`
`infringement of, among other patents, the '078 patent. (D.I. 1) Specifically,
`
`Mobile Media alleged certain Apple products of infringing claims 1, 2, 3, 8, and 73, as
`
`originally issued, of the '078 patent. (I d.) Apple has asserted affirmative defenses of,
`
`inter alia, non-infringement and invalidity. (D.I. 1 0)
`
`2. Fact discovery closed October 31, 2011, and expert discovery closed May 4,
`
`2012. (D.I. 135; D.l. 225) The parties filed their joint claim construction chart on March
`
`23, 2012, and Apple moved for summary judgment of invalidity and non-infringement on
`
`
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`Case 1:10-cv-00258-SLR-MPT Document 470 Filed 11/15/12 Page 2 of 6 PageID #: 9180
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`May 14,2012 and June 4, 2012, respectively. (D.I. 239; D.l. 305; D.l. 328)
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`3. During the pendency of this case, the U.S. Patent & Trademark Office ("PTO")
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`conducted an ex parte reexamination of the '078 patent. Neither party moved to stay
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`proceedings, pending reexamination, with respect to the '078 patent. On September 4,
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`2012, a reexamination certificate for the '078 patent issued, determining claim 1 to be
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`patentable as amended and claims 2 and 3 to be patentable as dependent from
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`amended claim 1. 1 (D.I. 444-1)
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`4. The parties have identified a remaining substantive issue not addressed in the
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`court's summary judgment memorandum opinion and order dated November 8, 2012.
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`(D.I. 461; D.l. 462) Apple requests that the court exclude reexamined claims 1-3 ("the
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`reexamined claims") of the '078 patent from trial or, in the alternative, permit Apple to
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`supplement its expert opinions regarding the '078 patent. (D. I. 465) MobileMedia
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`requests that the court allow substitution of the reexamined claims at trial. 2 (D.I. 466) A
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`jury trial for the case is scheduled to begin on December 3, 2012. (D.I. 17)
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`5. As amended, claim 1 provides:
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`1 Claims 2 and 3 of the '078 patent provide:
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`2. A device according to claim 1, wherein said means for transmitting
`image information comprises a cellular mobile phone unit.
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`3. A device according to claim 2, wherein the cellular mobile phone unit
`comprises equipment required by speech communications, such as a
`microphone and a loudspeaker, wherein said equipment is fitted in the
`housing of the device.
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`2 MobileMedia also alleged infringement of claims 8 and 73 of the '078 patent.
`Claim 8 was cancelled in the reexamination and has been withdrawn from the litigation.
`As claim 73 is independent and remains unchanged after reexamination, MobileMedia
`may continue to assert infringement of that claim.
`
`2
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`
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`Case 1:10-cv-00258-SLR-MPT Document 470 Filed 11/15/12 Page 3 of 6 PageID #: 9181
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`1. A [device] portable cellular mobile phone3 for personal
`communication, data collection and data processing, which is a small(cid:173)
`sized, portable and hand-held work station including a housing and
`comprising
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`a data processing unit comprising a microprocessor,
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`a display,
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`a user interface,
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`a number of peripheral device interfaces,
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`at least one memory unit;
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`a power source, and
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`application software,
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`wherein the device also comprises:
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`a camera unit for obtaining and outputting image information comprising:
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`a camera for receiving image information;
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`optics connected to said camera for passing said image information to the
`camera;
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`means for processing and for storing at least a portion of said image
`information obtained by said camera unit for later recall and
`processing;
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`at least one memory unit for storing said image information; and
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`an output coupled to said data processing unit for outputting image
`information from said memory unit to the processing unit; and
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`wherein at least a portion of said camera unit is located within said
`housing, and said data processing unit processes image information
`output by said camera unit,
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`3 Matters enclosed in brackets appeared in the patent but have been deleted and
`are no longer a part of the patent; matters in bold indicate additions made to the patent.
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`3
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`
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`Case 1:10-cv-00258-SLR-MPT Document 470 Filed 11/15/12 Page 4 of 6 PageID #: 9182
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`wherein said display presents image information obtained by said
`camera unit, and
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`wherein said device further comprises means for transmitting image
`information processed by said processing unit to another location using a
`radio frequency channel.
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`6. Discussion. In determining whether, for purposes of infringement damages,
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`reexamined claims are legally identical to their original counterpart, the Federal Circuit
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`has looked at whether the reexamined claims are "without substantive change." Laitram
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`Corp. (Laitram II), 163 F.3d at 1346 (citing Seattle Box Co. v. Indus. Crating & Packing,
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`731 F.2d 818, 827-28 (Fed. Cir. 1984); Slimfold Mfg. Co. v. Kinkead Indus., 810 F.2d
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`1113, 1115 (Fed. Cir. 1987)). To decide "whether substantive changes have been
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`made, [the court] must discern whether the scope of the claims are identical .... " /d.
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`Claims amended during reexamination are not deemed to be per se substantively
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`changed; instead, "it is necessary to analyze the claims of the original and the
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`reexamined patents in light of the particular facts, including the prior art, the prosecution
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`history, other claims, and any other pertinent information." Laitram Corp. v. NEG Corp.
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`(Laitram /), 952 F.2d 1357, 1362 (Fed. Cir. 1991 ). The court finds this standard
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`instructive for determining whether the reexamined claims should be excluded at trial.
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`7. The amendments to claim 1 incorporate limitations from other claims of the
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`'078 patent, namely, a "portable cellular mobile phone," "microprocessor," "means for
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`processing and for storing ... ,"and "display [that] presents image information obtained
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`by said camera unit." MobileMedia asserts that Apple's experts "have opined on all of
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`the elements in the amended claim, in the course of responding to unamended claim 73
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`and dependent claim 8 (which depends from original claim 1 )." (D.I. 466 at 1-2) While
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`4
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`Case 1:10-cv-00258-SLR-MPT Document 470 Filed 11/15/12 Page 5 of 6 PageID #: 9183
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`Apple's experts addressed all of these limitations in the context of one asserted claim or
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`another, the combination of elements in amended claim 1 did not exist in a single claim
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`prior to the issuance of the reexamination certificate.
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`8. Asserted claim 8, now cancelled, disclosed a device comprising, among other
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`things, a "camera unit" that in turn comprised "a camera," "optics," "at least one memory
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`unit," "an output", "means for processing" and "means for storing." The "camera unit"
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`limitation in amended claim 1 comprises those same limitations. However, claim 8 is
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`substantively different from amended claim 1 in that it did not include a limitation for a
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`"display." On the other hand, the "display" limitation does appear in claim 73, but claim
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`73 teaches a different "camera unit." The "camera unit" of claim 73 only requires
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`"optics" and "means for processing and for storing."
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`9. In addition, in claim 73, the "microprocessor" is described as being part of the
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`"camera unit" limitation. The "microprocessor" in amended claim 1, by its plain
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`language, is part of the "data processing unit" limitation, not the camera unit. Finally,
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`the "device" in the preamble of claim 1 was amended to "portable cellular mobile
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`phone."
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`10. In light of the amendments described above, the scope of claim 1 was
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`substantively changed during reexamination. Claim 1, as asserted, is significantly
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`different from claim 1 as amended during reexamination. It is also significantly different
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`from claims 8 and 73. As claims 2 and 3 are dependent from amended claim 1, they
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`are also substantively changed for the same reasons.
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`11. The parties completed fact discovery, served expert reports, completed
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`expert discovery, filed their joint claim construction chart, and completed briefing on
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`5
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`Case 1:10-cv-00258-SLR-MPT Document 470 Filed 11/15/12 Page 6 of 6 PageID #: 9184
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`summary judgment regarding infringement and invalidity prior to the issuance of the
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`reexamination certificate for the '078 patent on September 4, 2012. Because neither
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`party has had the opportunity to offer infringement or invalidity opinions on the
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`reexamined claims, proceeding with the reexamined claims at this stage may open the
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`door to new infringement theories and opinions at trial that have not been vetted
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`through discovery.4
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`12. In addition, Apple would be unduly prejudiced if the reexamined claims were
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`to be substituted at this stage of litigation. For example, Apple has not had the
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`opportunity to identify prior art that might anticipate claim 1, as amended. Apple framed
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`its invalidity defenses for the '078 patent in light of the original claims.
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`13. Conclusion. For the foregoing reasons, the court excludes from trial claim
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`1, as amended during reexamination, as well as claims 2 and 3, of the '078 patent.
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`4 As just one example of the significance of the changes in amended claim 1,
`neither party had a chance to consider the consequences of the "microprocessor"
`limitation added to claim 1 . Apple's expert, Dr. Grimes, avers that MobileMedia's expert
`"does not appear to make any distinctions between the 'microprocessor' claimed in ...
`claim element [73e] and the 'data processing unit' claimed in [original] claim 1." (D. I.
`467, ex. D at 32) However, by its plain language, amended claim 1 seems to draw a
`distinction between "microprocessor" and "data processing unit," as it provides for "a
`data processing unit comprising a microprocessor." (emphasis added) Neither party
`has had the opportunity to take the amended claim language into account in their
`proposed claim constructions or positions on infringement and invalidity.
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`6
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