Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 1 of 10 PageID #: 12092
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
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`MOBILEMEDIA IDEAS, LLC,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`)
`)
`)
`)
`) Civ. No. 1 0-258-SLR-MPT
`)
`)
`)
`)
`
`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 J. 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, Mary B. Matterer, Esquire, and Kenneth L. Dorsney,
`Esquire of Morris James LLP, Wilmington, Delaware. Counsel for Defendant. Of
`Counsel: Ruffin B. Cordell, Esquire, and Frank E. Sherkenbach, Esquire of Fish &
`Richardson P.C., and George A. Riley, Esquire, and Luann L. Simmons, Esquire of
`O'Melveny & Myers LLP.
`
`MEMORANDUM OPINION
`
`Dated: September 5 , 2013
`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-MPT
`)
`)
`)
`)
`
`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 J. 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, Mary B. Matterer, Esquire, and Kenneth L. Dorsney,
`Esquire of Morris James LLP, Wilmington, Delaware. Counsel for Defendant. Of
`Counsel: Ruffin B. Cordell, Esquire, and Frank E. Sherkenbach, Esquire of Fish &
`Richardson P.C., and George A. Riley, Esquire, and Luann L. Simmons, Esquire of
`O'Melveny & Myers LLP.
`
`MEMORANDUM OPINION
`
`Dated: September 5 , 2013
`Wilmington, Delaware
`
`
`
`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 2 of 10 PageID #: 12093
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`I. INTRODUCTION
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`Plaintiff MobileMedia Ideas, LLC ("MobileMedia") filed this patent infringement
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`suit against Apple Inc. ("Apple") on March 31, 2010, alleging in its amended complaint
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`infringement of sixteen patents, including U.S. Patent No. RE 39,231 ("the '231
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`patent"). 1 (0.1. 1; 0.1. 8) Apple raised affirmative defenses of, inter alia, non-
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`infringement, invalidity, unenforceability, failure to state a claim, "waiver, laches and/or
`estoppel," prosecution history estoppel, and lack of standing. (0.1. 10 at mr 114-23)
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`Apple also asserted counterclaims for declaratory judgment of non-infringement. (/d. at
`mr 124-208)
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`On November 8, 2012, the court issued a memorandum opinion and order
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`construing several disputed claim limitations and resolving the parties' motions for
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`summary judgment of infringement and invalidity of the remaining patents-at-issue. 2
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`(0.1. 461; 0.1. 462) In relevant part, the court found non-infringement of the '231 patent.
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`The court also found that a question of fact precluded any summary judgment finding
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`regarding validity of claims 2, 3, 4, and 12 ("the asserted claims") of the '231 patent.
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`Currently before the court is MobileMedia's motion for reargument regarding the '231
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`patent. (0.1. 469)
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`II. BACKGROUND
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`11n April 2012, the parties stipulated to dismiss the claims and counterclaims
`related to two patents (0.1. 263), and MobileMedia deferred four other asserted patents
`for a later phase.
`
`2The court also resolved several motions to strike and granted MobileMedia's
`motion for partial summary judgment on several of Apple's defenses. (0.1. 461; 0.1.
`462)
`
`
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`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 3 of 10 PageID #: 12094
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`A. The Parties
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`MobileMedia is a Delaware LLC with its principal place of business in Chevy
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`Chase, Maryland. (D.I. 8 at~ 1) It obtained the patents-in-suit in January 2012 from
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`Nokia Capital, Inc. and Sony Corporation of America pursuant to two Patent Purchase
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`Agreements. (D. I. 228, ex. D; ex. G) Apple Inc. is a California corporation with its
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`principal place of business in Cupertino, California. (D.I. 10 at~ 2) It designs,
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`manufactures, markets, and sells the accused products. (/d.)
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`B. The '231 Patent
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`The '231 patent, titled "Communication Terminal Equipment and Call Incoming
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`Control Method," reissued on August 8, 2006. An ex parte reexamination resulted in a
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`reexamination certificate that issued April 3, 2012. The reexamination certificate
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`cancelled claims 1, 11, 13-16, and 18-23, determined claims 2-4, 8, 12, and 17 to be
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`patentable as amended, and added new claims 24-29. MobileMedia has alleged that
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`Apple's iPhone 3G, iPhone 3GS, iPhone 4 products infringe the asserted claims of the
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`'231 patent. (D.I. 8)
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`The '231 patent aims "to provide a communication terminal equipment which is
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`superior in selecting and handling properties for users .... " ('231 patent, col. 1 :43-46)
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`Conventionally, a "call incoming on a telephone is informed by means of an alert
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`sound," but the alert sound "does not stop ringing before a user effects [a] next
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`operation." (/d., col. 1 :17-20) A user who cannot respond to an incoming call has only
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`the option to forcibly disconnect the incoming call, turn off the telephone, or allow the
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`alert sound to continue ringing. (/d., col. 1 :20-25) The first two options, forcibly
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`2
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`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 4 of 10 PageID #: 12095
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`disconnecting the incoming call or turning off the telephone, may give the person on the
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`call origination side an "unpleasant feeling because [he or she] can notice that the
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`circuit was broken off intentionally" or may give the person the impression that the
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`telephone network has failed. (/d., col. 1:26-30, 39-42) Moreover, a user who turns off
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`the power may forget to turn the power back on and miss subsequent incoming calls.
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`(/d., col. 1 :37-39) On the other hand, the third option, allowing the alert sound to
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`continue ringing, may disturb the user or other persons in the surrounding environment.
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`(/d., col. 1 :3-33)
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`In light of these problems, the invention discloses a telephone in which an alert
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`sound muting or volume reducing function is allotted to a key. (/d., col. 2:2-5, 4:40-42,
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`5:12-17) When the telephone receives an incoming call, the user can use a
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`predetermined operation, such as depressing a key for a short time, to prompt the "alert
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`on/off controller" to stop generation of the alert sound. (/d. at col. 3:36-48)
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`Alternatively, the volume of the alert sound may be reduced. (/d. at col. 4:40-42)
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`Claims 2, 3, 4, and 12 are at issue. Claim 12 was amended to be an
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`independent claim during reexamination:
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`12. A communication terminal for informing a user of a received call from
`a remote caller by an alert sound, comprising:
`
`an alert sound generator for generating the alert sound when the call is
`received from the remote caller;
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`control means for controlling said alert sound generator; and
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`means for specifying a predetermined operation by the user,
`
`3
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`
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`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 5 of 10 PageID #: 12096
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`wherein when said alert sound generator is generating the alert sound and
`said means for specifying said predetermined operation is operated by the
`user, said control means controls said alert sound generator to change a
`volume of the generated alert sound only for the received call, without
`affecting the volume of the alert sound for future received calls, while
`leaving a call ringing state, as perceived by the remote caller, of the call to
`the terminal from the remote caller unchanged,
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`further comprising:
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`RF signal processing means for transmitting and/or receiving radio waves;
`and
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`an antenna for transmitting and/or receiving said radio waves, wherein
`said communication status between said apparatus and said remote caller
`is established by said transmitted and/or received radio waves.
`
`(emphasis added) Reexamined claims 2, 3, and 4 are all dependent from claim 12.
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`Reexamined claim 2 adds the limitation that the control means controls the state of the
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`alert sound generator to "stop the sound." (Emphasis added) Reexamined claim 3
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`adds the limitation that the control means controls the state of the alert sound generator
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`"to reduce the volume of the sound." (Emphasis added) Finally, reexamined claim 4
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`adds the limitation "where said predetermined operation is an operation depressing a
`
`predetermined operation key."
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`During reexamination, independent claims 8, 12, 17, and 24-29 were amended or
`
`added to recite changing the volume of an alert sound. Claims 2, 9, 25, and 28
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`disclose stopping an alert sound, and claims 3, 10, 26, and 29 disclose reducing the
`
`volume of an alert sound. The court construed "to change a volume of the generated
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`alert sound" to mean "to alter the degree of loudness of the alert sound that is being
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`generated without cutting off the telephone circuit," and construed "stop the sound" to
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`mean "stop the sound that is being generated without cutting off the telephone circuit."
`
`4
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`
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`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 6 of 10 PageID #: 12097
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`(D. I. 461 at 42-43) MobileMedia asserts that, given the rules of claim construction,
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`these constructions essentially read out the subject matter of asserted dependent claim
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`2.
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`Ill. STANDARD OF REVIEW
`
`A motion for reargument under Local Rule 7.1.5 is the "functional equivalent" of a
`
`motion to alter or amend judgment under Federal Rule of Civil Procedure 59( e). See
`
`Jones v. Pittsburgh Nat'/ Corp., 899 F.2d 1350, 1352 (3d Cir. 1990). The standard for
`
`obtaining relief under Rule 59( e) is difficult to meet. The purpose of a motion for
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`reargument or reconsideration is to "correct manifest errors of law or fact or to present
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`newly discovered evidence." Max's Seafood Cafe ex rei. Lou-Ann, Inc. v. Quinteros,
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`176 F.3d 669, 677 (3d Cir. 1999). A court should exercise its discretion to alter or
`
`amend its judgment only if the movant demonstrates one of the following: (1) a change
`
`in the controlling law; (2) a need to correct a clear error of law or fact or to prevent
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`manifest injustice; or (3) availability of new evidence not available when the judgment
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`was granted. See id. A motion for reargument is not properly grounded on a request
`
`that a court rethink a decision already made and may not be used "as a means to argue
`
`new facts or issues that inexcusably were not presented to the court in the matter
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`previously decided." Brambles USA, Inc. v. Blocker, 735 F. Supp. 1239, 1240 (D. Del.
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`1990); see a/so Glendon Energy Co. v. Borough of Glendon, 836 F. Supp. 1109, 1122
`
`(E.D. Pa. 1993).
`
`IV. DISCUSSION
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`5
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`
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`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 7 of 10 PageID #: 12098
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`MobileMedia seeks reargument solely on the basis that the court made an error
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`not of reasoning but of apprehension; it asserts that such an error arose when the court
`
`construed claim 12 to exclude the subject matter of dependent claim 2. However,
`
`contrary to MobileMedia's assertion, the court considered the relationship between
`
`claims 12 and 2. (See D. I. 461 at 43-45) The grounds asserted for reargument merely
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`constitute MobileMedia's disagreement with the court's conclusions and rehash
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`MobileMedia's claim construction and summary judgment arguments. MobileMedia has
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`not identified any change in law, new evidence, or error in apprehension that would
`
`warrant reargument. The court, therefore, does not change its claim construction or
`
`related summary judgment holdings for the '231 patent. However, the court recognizes
`
`that its intention may be subject to misinterpretation and, as such, will clarify its
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`summary judgment memorandum opinion and order regarding the '231 patent. See
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`Cordis Corp. v. Boston Scientific Corp., 2010 WL 331792 (D. Del. Jan. 28, 2010)
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`(denying motion for reconsideration but clarifying the court's order).
`
`"Claim terms are properly construed to include limitations not otherwise inherent
`
`in the term only when a patentee sets out a definition and acts as his own lexicographer
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`or when the patentee disavows the full scope of a claim term either in the specification
`
`or during prosecution." Woods v. Deangelo Marine Exhaust, Inc., 692 F.3d 1272, 1283
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`(Fed. Cir. 2012). Here, "to change a volume of the generated alert sound" was
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`construed using the plain and ordinary meaning of the term, in the context of the claim
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`language. The ordinary meaning of "change" is "to cause to be different" or "to
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`exchange for or replace with another, usually of the same kind or category." American
`
`6
`
`
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`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 8 of 10 PageID #: 12099
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`Heritage Dictionary of the English Language (4th ed. 2000). Because "change" refers to
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`"volume," the ordinary meaning of the term is that the volume becomes different or is
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`replaced by another volume level.
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`The Federal Circuit recently addressed a similar situation and came to the same
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`conclusion. Zircon Corp. v. Stanley Black & Decker, Inc., 452 Fed. App'x 966, 969-76
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`(Fed. Cir. 2011) In Zircon, the patent-at-issue was a device, known as a "stud finder,"
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`for locating objects behind a wall. The specification of the patent-at-issue disclosed
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`embodiments using two capacitive sensors that employed either division (via a ratio) or
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`subtraction to compare capacitances. Independent claim 10 recited "computing a ratio"
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`of the capacitances, whereas dependent claim 19 recited "comparing" the capacitances.
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`The Court found that the "comparing" methodology in dependent claim 19 was in
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`addition to (not a narrower form of) the "computing a ratio" methodology of independent
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`claim 10 because "the specification [did] not interchangeably use the term 'ratio' to
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`describe the results of both division and subtraction operations." /d. at 976.
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`Here, the limitation "to change a volume of the generated alert sound" is not
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`interchangeable with, or encompassing of, "to stop the sound." The specification of the
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`'231 patent does not disclose a device with the option of either stopping an alert sound
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`or changing its volume. As the court noted in its November 8, 2012 memorandum
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`opinion, the specification only discusses alternative embodiments that have the
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`functionality of reducing an alert sound's volume or stopping the generation of an alert
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`sound, but not both. (D.I. 461 at 42-43; see '231 patent, col. 4:37-47, 4:66-5:12)
`
`Figures 3 and 5 of the written description show schematic diagrams for devices that
`
`7
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`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 9 of 10 PageID #: 12100
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`control an alert sound generator by stopping the alert sound, whereas figure 4 shows a
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`diagram for a device that controls an alert sound generator by changing the volume of
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`the alert sound. 3
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`The doctrine of claim differentiation creates a presumption that each claim in a
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`patent has a different scope. "However, that presumption is not a hard and fast rule and
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`will be overcome by a contrary construction dictated by the written description or
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`prosecution history." SeaChange lnt'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed.
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`Cir. 2005). Consistent with the specification, "to change a volume," which appears in
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`the independent claims, is substantially the same as "to reduce the volume"4 but does
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`not encompass "to stop the volume." The fact that, on reexamination, the patentee did
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`not follow normal drafting protocol to make the new independent claims inclusive of
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`some of the dependent claims - as opposed to those dependent claims being narrower
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`and in alternative form- is not a problem the court can remedy. See Zircon, 452 F.
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`App'x at 976 ("The fact that the claims do not appear in the patent as, perhaps, they
`
`were originally intended is not a problem this court has the authority to remedy."). The
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`court will not essentially redraft the claim language when the patentee had two
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`opportunities to do so. The Federal Circuit has "repeatedly and consistently recognized
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`3Figure 4 of the '231 patent does have a state 13.1 "stop alert sound," but that
`state is in response to the user answering an incoming call because it leads to state 14
`"conversation." It does not show stopping the sound while leaving a call ringing state,
`as perceived by the remote caller, unchanged.
`
`4'"[C]aims that are written in different words may ultimately cover substantially the
`same subject matter."' Sea Change lnt'l, 413 F .3d at 1369 (quoting Multiform
`Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998)).
`8
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`
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`Case 1:10-cv-00258-SLR-MPT Document 539 Filed 09/05/13 Page 10 of 10 PageID #: 12101
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`that courts may not redraft claims, whether to make them operable or to sustain their
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`validity." Chef Am. Inc. v. Lamb-Weston Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).
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`V. CONCLUSION
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`For the foregoing reasons, the court denies MobileMedia's motion for reargument
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`regarding the '231 patent. An appropriate order shall issue.
`
`9
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