Case 1:10-cv-00258-SLR Document 630 Filed 04/11/16 Page 1 of 18 PageID #: 21905
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`MOBILEMEDIA IDEAS, LLC,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`Civ. No. 10-258-SLR
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`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, Safraz W. Ishmael, Esquire, Kenneth Rubenstein,
`Esquire, Kimberly A. Mottley, Esquire, Laura E. Stafford, Esquire, William D. Dalsen,
`Esquire, and Anthony C. Coles, Esquire of Proskauer Rose LLP.
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`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, Melody N. Drummond Hansen, Esquire, Xin-Yi Zhou,
`Esquire, and David S. Almeling, Esquire of O'Melveny & Myers LLP.
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`MEMORANDUM OPINION
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`, 2016
`Dated: April 1 l
`Wilmington, Delaware
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`

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`Case 1:10-cv-00258-SLR Document 630 Filed 04/11/16 Page 2 of 18 PageID #: 21906
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`R~,
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`I. INTRODUCTION
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`Plaintiff MobileMedia Ideas, LLC ("MobileMedia") filed a patent infringement
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`complaint against Apple Inc. ("Apple") on March 31, 2010, alleging in its amended
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`complaint infringement of sixteen patents, including U.S. Patent No. RE 39,231 ("the
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`'231 patent"). (D.I. 1; D.I. 8) Apple answered and counterclaimed on August 9, 2010.
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`(D.I. 10) The court resolved the parties' claim construction issues and summary
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`judgment motions for infringement and invalidity, finding in relevant part that Apple did
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`not infringe the '231 patent. (D.I. 461; D.I. 462); MobileMedia Ideas, LLC v. Apple Inc.,
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`907 F. Supp. 2d 570, 596-99 (D. Del. 2012). The case proceeded to a six day jury trial
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`beginning on December 3, 2012 on three of the asserted patents. The court then
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`resolved the parties' post-trial motions and a motion for reargument regarding the '231
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`patent. (D.I. 539; D.I. 540; D.I. 541; D.I. 542); MobileMedia Ideas, LLC v. Apple Inc.,
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`966 F. Supp. 2d 433 (D. Del. 2012); MobileMedia Ideas, LLC v. Apple Inc., 966 F. Supp.
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`2d 439 (D. Del. 2012). The Federal Circuit issued its mandate on June 5, 2015,
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`affirming in part, reversing in part, vacating and remanding. MobileMedia Ideas LLC v.
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`Apple Inc., 780 F.3d 1159 (Fed. Cir. 2015). Presently before the court is Apple's motion
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`for summary judgment of invalidity and non-infringement of the '231 patent. (D.I. 577)
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`The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`II. BACKGROUND
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`A. The Parties
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`MobileMedia is a limited liability company organized under the laws of the State
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`of Delaware with its principal place of business in Chevy Chase, Maryland. (D.I. 8 at~
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`1) It obtained the patents-in-suit in January 2012 from Nokia Capital, Inc. and Sony
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`Corporation of America pursuant to two Patent Purchase Agreements. (D.I. 228, ex. D;
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`ex. G) Apple is a corporation organized under the laws of the State of California 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. (Id.)
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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. The patent claims a foreign
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`application priority date of December 19, 1994.
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`According to the abstract, the patent teaches communication terminal equipment
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`and a method for stopping the alert sound or reducing the volume of the alert sound for
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`an incoming call on a telephone. (Abstract) Conventionally, a "call incoming on a
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`telephone is informed by means of an alert sound," but the alert sound "does not stop
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`ringing before a user effects [a] next operation." (1: 17-20) A user who cannot respond
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`to a call incoming has only the option to forcibly disconnect the incoming call, turn off
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`the telephone, or allow the alert sound to continue ringing. (1 :20-25) The first two
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`options, forcibly disconnecting the incoming call or turning off the telephone, may give
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`the person on the call origination side an "unpleasant feeling because [he or she] can
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`notice that the circuit was broken off intentionally" or may give the person the
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`impression that the telephone network has failed. (1 :26-30, 39-42) Moreover, a user
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`2
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`who turns off the power may forget to turn the power back on and miss the next
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`incoming call. (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 surroundings. (1 :30-33)
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`In light of these problems, the invention aims "to provide a communication
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`terminal equipment which is superior in selecting and handling properties for users .... "
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`(1 :43-46) It teaches a telephone in which an alert sound stopping function or volume
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`reducing function is allotted to a key. (2:2-5, 4:40-42, 5:12-17) When the telephone
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`receives an incoming call, the user can use a predetermined operation, such as
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`depressing a key for a short time, to prompt the "alert on/off controller" to stop
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`generation of the alert sound. (3:36-48) Alternatively, the alert sound may be reduced.
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`(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 and reads:
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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:
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`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,
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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,
`further comprising:
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`3
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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.
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`Reexamined claims 2, 3, and 4 each depend from claim 12. Reexamined claim 2 adds
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`the limitation that the "control means controls the state of said alert sound generator to
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`stop the sound." Reexamined claim 3 adds the limitation that the "control means
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`controls the state of said alert sound generator to reduce the volume of the sound."
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`Finally, reexamined claim 4 adds the limitation "wherein said predetermined operation is
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`an operation depressing a predetermined operation key."
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`MobileMedia contends that the iPhone 3G, iPhone 3GS, and iPhone 4 ("the
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`accused iPhones") infringe claims 2-4 and 12 of the '231 patent. (D.I. 461 at 4) The
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`court granted Apple's motion for summary judgment of non-infringement, finding that
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`under its construction of "to change a volume of the generated alert sound," the
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`accused iPhones did not practice the limitation of "said control means controls said alert
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`sound generator to change a volume of the generated sound." MobileMedia, 907 F.
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`Supp. 2d at 598-99. In relevant part, the Federal Circuit held erroneous the court's
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`construction of "to change a volume" and vacated the judgment of non-infringement.
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`MobileMedia, 780 F.3d at 1181. The Federal Circuit stated that "[c]onsistent with the
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`specification, 'controlling the alert sound generator to change a volume of the generated
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`alert sound' by the 'control means' encompasses both stopping and reducing the
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`volume of the alert sound as recited in dependent claims 2 and 3, respectively." Id.
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`Ill. STANDARD OF REVIEW
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`"The court shall grant summary judgment if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law." Fed. R. Civ. P. 56(a). The moving party bears the burden of
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`demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus.
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`Co. v. Zenith Radio Corp., 415 U.S. 475, 586 n. 10 (1986). A party asserting that a fact
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`cannot be-or, alternatively, is-genuinely disputed must be supported either by citing
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`to "particular parts of materials in the record, including depositions, documents,
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`electronically stored information, affidavits or declarations, stipulations (including those
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`made for the purposes of the motions only), admissions, interrogatory answers, or other
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`materials," or by "showing that the materials cited do not establish the absence or
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`presence of a genuine dispute, or that an adverse party cannot produce admissible
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`evidence to support the fact." Fed. R. Civ. P. 56(c)(1 )(A) & (B). If the moving party has
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`carried its burden, the nonmovant must then "come forward with specific facts showing
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`that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation
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`marks omitted). The Court will "draw all reasonable inferences in favor of the nonmoving
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`party, and it may not make credibility determinations or weigh the evidence." Reeves v.
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`Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
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`To defeat a motion for summary judgment, the non-moving party must "do more
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`than simply show that there is some metaphysical doubt as to the material facts."
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`Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d
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`584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more
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`than just bare assertions, conclusory allegations or suspicions to show the existence of
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`a genuine issue") (internal quotation marks omitted). Although the "mere existence of
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`some alleged factual dispute between the parties will not defeat an otherwise properly
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`supported motion for summary judgment," a factual dispute is genuine where "the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party."
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). "If the evidence is merely
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`colorable, or is not significantly probative, summary judgment may be granted." Id. at
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`249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322
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`(1986) (stating entry of summary judgment is mandated "against a party who fails to
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`make a showing sufficient to establish the existence of an element essential to that
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`party's case, and on which that party will bear the burden of proof at trial").
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`IV. DISCUSSION
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`A. Claim Construction and Indefiniteness
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`1. Standards
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`Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303,
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`1330 (Fed. Cir. 2005) (en bane). Claim construction focuses on intrinsic evidence - the
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`claims, specification and prosecution history - because intrinsic evidence is "the most
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`significant source of the legally operative meaning of disputed claim language."
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v.
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`Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S.
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`370 (1996). Claims must be interpreted from the perspective of one of ordinary skill in
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`the relevant art at the time of the invention. Phillips, 415 F.3d at 1313.
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`Claim construction starts with the claims, id. at 1312, and remains centered on
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`the words of the claims throughout. Interactive Gift Express, Inc. v. Compuserve, Inc.,
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`256 F.3d 1323, 1331 (Fed. Cir. 2001 ). In the absence of an express intent to impart
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`different meaning to claim terms, the terms are presumed to have their ordinary
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`meaning. Id. Claims, however, must be read in view of the specification and
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`prosecution history. Indeed, the specification is often "the single best guide to the
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`meaning of a disputed term." Phillips, 415 F.3d at 1315.
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`"In construing a means-plus-function claim, [pursuant to 35 U.S.C. § 112, 1J 6,]
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`the district court must first determine the claimed function and then identify the
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`corresponding structure in the written description of the patent that performs that
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`function." Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010)
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`(citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir.
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`2006)). Ultimately, if no corresponding structure is disclosed in the specification, the
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`claim term must be construed as indefinite, pursuant to 35 U.S.C. § 112, 1J 2. Ergo
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`Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
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`Where the claim language does not recite the term "means," there is a
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`presumption that the limitation does not invoke 35 U.S.C. § 112, 1J 6. Personalized
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`Media Commc'ns, LLC v. ITC, 161 F.3d 696, 703 (Fed. Cir. 1998).
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`The standard is whether the words of the claim are understood by persons
`of ordinary skill in the art to have a sufficiently definite meaning as the
`name for structure. When a claim term lacks the word "means," the
`presumption can be overcome and§ 112, [11] 6 will apply if the challenger
`demonstrates that the claim term fails to "recite sufficiently definite
`structure" or else recites "function without reciting sufficient structure for
`performing that function."
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (citing
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`Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996); Watts v.
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`XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). "Generic terms such as
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`'mechanism,' 'element,' 'device,' and other nonce words that reflect nothing more than
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`verbal constructs may be used in a claim in a manner that is tantamount to using the
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`word 'means' because they 'typically do not connote sufficiently definite structure .... "'
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`Id. at 1350 (citing Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software,
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`462 F.3d 1344, 1354 (Fed. Cir. 2006)). To determine whether a claim term that lacks
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`the word "means" is subject to§ 112, 1J 6, the court must consider the words of the
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`claims themselves, the written description, the prosecution history, and any relevant
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`intrinsic evidence. lnventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d
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`1350, 1356 (Fed. Cir. 2011) (citing Personalized Media, 161 F.3d at 704 (The
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`presumption that a claim lacking the term "means" recites sufficiently definite structure
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`can be rebutted "if the evidence intrinsic to the patent and any relevant extrinsic
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`evidence so warrant[s].")).
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`"[l]n the§ 112, 1J 6 context, a court's determination of the structure that
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`corresponds to a particular means-plus-function limitation is indeed a matter of claim
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`construction." SeeAtmelCorp. v. Info. Storage Devices, Inc., 198F.3d 1374, 1379
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`(Fed. Cir. 1999) (citation omitted). The court must "construe the disputed claim term by
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`identifying the 'corresponding structure, material, or acts described in the specification'
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`to which the claim term will be limited." Media Rights Technologies, Inc. v. Capital One
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`Financial Corp., 800 F.3d 1366, 1350 (Fed. Cir. 2015) (citing Robert Bosch, LLC v.
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`Sna,:rOn Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014)). "Where there are multiple
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`claimed functions, ... the patentee must disclose adequate corresponding structure to
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`perform all of the claimed functions." Id. (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d
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`1302, 1318-19 (Fed. Cir. 2012). Without such "corresponding structure," the claim term
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`is indefinite. Id. (citing Robert Bosch, 769 F.3d at 1097). More specifically,
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`[s]tructure disclosed in the specification qualifies as "corresponding
`structure" if the intrinsic evidence clearly links or associates that structure
`to the function recited in the claim. Even if the specification discloses
`corresponding structure, the disclosure must be of "adequate"
`corresponding structure to achieve the claimed function. Under 35 U.S.C.
`§ 112, m,n 2 and 6, therefore, if a person of ordinary skill in the art would
`be unable to recognize the structure in the specification and associate it
`with the corresponding function in the claim, a means-plus-function clause
`is indefinite.
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`Williamson, 792 F.3d at 1352 (citations omitted).
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`Generally, "in a means-plus-function claim 'in which the disclosed structure is a
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`computer, or microprocessor, programmed to carry out an algorithm, the disclosed
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`structure is not the general purpose computer, but rather the special purpose computer
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`programmed to perform the disclosed algorithm."' Aristocrat Techs. Australia Pty Ltd. v.
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`Int'/ Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting WMS Gaming, Inc. v.
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`Int'/ Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)). The specification can express
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`the algorithm "in any understandable terms including as a mathematical formula, in
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`prose, or as a flow chart, or in any other manner that provides sufficient structure."
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`Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal
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`citation omitted).
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`The description of the algorithm must do more than describe the function to be
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`performed; it must describe how the function is to be performed. Blackboard, Inc. v.
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`Desire2Leam, Inc., 574 F.3d 1371, 1382-83 (Fed. Cir. 2009) (finding "[t]he specification
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`contains no description of the structure or the process that the access control manager
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`uses to perform the 'assigning' function."). It is insufficient to aver that a disclosure has
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`enough structure for a person of ordinary skill to devise some method or write some
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`software to perform the desired function. Function Media, L.L.C. v. Google, Inc., 708
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`F.3d 1310, 1319 (Fed. Cir. 2013) (citing Blackboard, 574 F.3d at 1385).
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`2. Analysis
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`a. "An alert sound generator for generating an alert sound
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`when the call is received from the remote caller" 1
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`The specification describes figure 2 as "a block diagram showing an example of
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`the inner circuit of the communication terminal equipment according to the present
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`invention." (1 :58-60) Figure 2 discloses a box labeled "Alert Sound Generator 13" and
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`the specification explains that,
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`when a call is given to this portable telephone 1 from another party, the
`CPU 7 detects this call and performs control to turn on an alert on/off
`controller 12 to thereby make an alert sound generator 13 generate an
`alert sound. Thus, the user is able to notice the call incoming. In this
`state, if the user depresses the send key 3C, the CPU 7 detects this
`depression, so that it enables conversation and stops the generation of
`the alert sound at the same time. This is a case where the user can
`respond to a call incoming. However, there is a case where the user
`cannot respond to a call incoming in accordance with the surroundings at
`the time of the call incoming. To cope with such a case, therefore, there is
`provided a function to eliminate an alert sound without forcibly cutting-off a
`circuit under a predetermined operation.
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`(2:48-62) The term "generator" is not otherwise found in the specification. The
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`specification explains that "[i]lf the power key 3A is depressed for a time shorter than a
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`predetermined time (for example, shorter than one second) when an alert sound is
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`being generated, the CPU 7 detects this depression and controls the alert on/off
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`controller 12 to make it stop the generation of the alert sound." (3:1-6; see also 3:45) In
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`describing "the operation and the state transition" of the call, the specification explains
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`1 Found in claim 12.
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`that "an alert sound" is "generated." (3:27-32) Accordingly, the limitation is defined by
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`its function, i.e., a generator used to generate an alert sound. The court concludes that
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`the limitation is subject to § 112, ~ 6, with a function "generating the alert sound when
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`the call is received from the remote caller" and a structure "alert sound generator."
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`The parties dispute, by reference to extrinsic evidence, whether such structure
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`is sufficient. In discussing the lack of written description, Apple's expert, Dr.
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`Balakrishnan, opined that he "could find nothing [in the claims, specification, and
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`prosecution history] that discloses this limitation. There is no support in the '231
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`[p]atent specification or figures for this limitation." Dr. Balakrishnan concluded that "[a]
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`person of ordinary skill in the art would not understand what 'an alert sound generator'
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`is .... "2 (D.I. 579, ex. D at~~ 122-23; ex. Eat~ 83) Dr. Balakrishnan testified that an
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`"alert sound generator" is
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`something that is able to generate the sound and generation of the sound
`involves a mechanism for creating the sound itself from a transducer
`perspective, in other words, the speaker and the signal that needs to be
`generated in order to provide that transducer with the ability to create that
`particular sound.
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`(D.I. 583, ex. A at 117:13-118:12) Dr. Meldal states that "in the context of a cellular
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`phone, [the alert sound generator] was understood by persons of ordinary skill in the art
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`to refer to an electronic circuit, including a speaker or a vibrator, that was capable of
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`generating sounds, as well as stopping the generation of such sounds."3 (D.I. 584 at~~
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`19-21) He opines that "the disclosure of 'alert sound generator 13' in Figure 2 [and the
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`2 Relying in part on the testimony of the inventor, Mr. Hayashi, that he did not invent the
`alert sound generator and he did not "think this patent touches on the content of the
`alert sound generator," but it is included in the claim. (D.I. 588, ex.Lat 107:23-108:2)
`3 Providing citations to electronics catalogs and hobbyist publications.
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`specification] is adequate corresponding structure to achieve the claimed function
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`[described by Apple]. A person of ordinary skill in the art would be able to recognize the
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`structure in the specification and associate it with the corresponding functions of the
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`claim." (D.I. 584at1(1[ 17-18)
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`When, as at bar, the indefiniteness inquiry is intertwined with claim construction,
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`the court may resolve factual disputes. See EON Corp. IP Holdings LLC v. AT&T
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`Mobility LLC, 785 F.3d 616, 620 (Fed. Cir. 2015) (affirming the district court's grant of
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`summary judgment of indefiniteness, which was based on numerous detailed findings of
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`fact by the district court, including evaluating expert testimony, when the indefiniteness
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`inquiry was intertwined with claim construction); Augme Techs., Inc. v. Yahoo! Inc., 755
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`F.3d 1326, 1337-38 (Fed. Cir. 2014) (affirming district court's finding of indefiniteness,
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`wherein the district court analyzed plaintiff's arguments based on expert testimony
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`against defendant's arguments regarding whether the patent disclosed an algorithm for
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`the means-plus-function claims and concluded that an algorithm was not disclosed); cf.
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`Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015)
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`(finding no clear error in the district court's reliance on certain expert testimony, as long
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`as the district court did not "defer to [the expert's] ultimate conclusion about claim
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`meaning").
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`"A party cannot transform into a factual matter the internal coherence and context
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`assessment of the patent simply by having an expert offer an opinion on it;" instead,
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`such an "assessment of the patent, and whether it conveys claim meaning with
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`reasonable certainty, are questions of law." Teva, 789 F.3d at 1342. The question for
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`the court remains whether the specification discloses "corresponding structure," i.e.,
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`clearly linking such structure to the function recited in the claim. Such structure is
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`adequate "if a person of ordinary skill in the art would be []able to recognize the
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`structure in the specification and associate it with the corresponding function in the
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`claim." Williamson, 792 F.3d at 1352. Moreover, "a challenge to a claim containing a
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`means-plus-function limitation as lacking structural support requires a finding, by clear
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`and convincing evidence, that the specification lacks disclosure of structure sufficient to
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`be understood by one skilled in the art as being adequate to perform the recited
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`function." See Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376-77 (Fed. Cir.
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`2001 ). Dr. Balakrishnan testified that the limitation would involve "the speaker and the
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`signal that needs to be generated in order to provide that transducer with the ability to
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`create that particular sound." Consistent with Dr. Meldal's opinion, the court concludes
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`that those of skill in the art would recognize the structure in the specification and
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`associate it with the corresponding functions of the claim.
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`b. "Control means for controlling said alert sound generator"4
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`The specification states: "The inner circuit is constituted by a CPU 7 (control
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`means) as a main part so that the CPU controls other parts of the inner circuit." (2: 19-
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`22) Figure 2 includes a box labeled "CPU" and another "alert on/off controller." The
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`specification further describes that the "CPU 7 detects [an incoming] call and performs
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`control to turn on an alert on/off controller 12 to thereby make an alert sound generator
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`13 generate an alert sound."5 "If the power key 3A is depressed for a time shorter than
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`a predetermined time (for example, shorter than one second) when an alert sound is
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`4 Found in claim 12.
`5 The full quote is given above in the previous limitation.
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`13
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`Case 1:10-cv-00258-SLR Document 630 Filed 04/11/16 Page 15 of 18 PageID #: 21919
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`being generated, the CPU 7 detects this depression and controls the alert on/off
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`controller 12 to make it stop the generation of the alert sound." (2:48-52; 3:4-6) The
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`power key may also be used to reduce the volume of an alert sound. (4:37-43, 5:7-11)
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`The Federal Circuit construed this limitation as having the function "controlling
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`the alert sound generator to change a volume of the generated alert sound," and
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`structure "CPU and alert sound generator on/off controller."6 MobileMedia, 780 F.3d at
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`1180. Apple argues that the specification fails to disclose an algorithm or that the
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`specification's disclosures are insufficient. The court disagrees. As explained above,
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`an algorithm may be disclosed in any format. At bar, the specification discloses (using
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`words and figures) the process by which the corresponding structure performs the given
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`function.7
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`c. "RF signal processing means for transmitting and/or
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`receiving radio waves" 8
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`The specification discloses a box labeled "RF signal processing" in figure 2,
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`which is "a block diagram showing an example of the inner circuit of the communication
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`terminal equipment according to the present invention." (1 :58-60) The specification
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`explains that "[i]f the user operates the send key 3C, the CPU 7 begins call origination
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`to the other party through an RF signal processing portion 10 and the antenna 5."
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`(2:32-35) The specification describes fetching a reception signal through the signal
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`6 Such construction is similar to that proposed by MobileMedia during the initial claim
`construction exercise. (D.I. 303 at 4)
`7 Extrinsic evidence. Dr. Meldal opines that a person skilled in the art would find the
`required algorithm disclosed in the specification and figures. (D.I. 584 at ,-m 29-30)
`Apple offers no expert testimony on this point.
`8 Found in claim 12.
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`14
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`

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`Case 1:10-cv-00258-SLR Document 630 Filed 04/11/16 Page 16 of 18 PageID #: 21920
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`processing portion 10 and transmitting through the signal processing portion 10. (2:36-
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`47) The specification describes the function of the limitation and provides a
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`corresponding structure. 9 The court construes this limitation as having a function of
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`"transmitting and/or receiving radio waves" and a structure of "RF signal processing
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`circuitry." 10 Apple's motion for summary judgment of indefiniteness is denied.
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`8. Non-Infringement
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`1. Standard
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`When an accused infringer moves for summary judgment of non-infringement,
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`such relief may be granted only if one or more limitations of the claim in question does
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`not read on an element of the accused product, either literally or under the doctrine of
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`equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see
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`also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) ("Summary
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`judgment of non infringement is ... appropriate where the patent owner's proof is
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`deficient in meeting an essential part of the legal standard for infringement, because
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`such failure will render all other facts immaterial."). Thus, summary judgment of non-
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`infringement can only be granted if, after viewing the facts in the light most favorable to
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`the non-movant, there is no genuine issue as to whether the accused product is
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`covered by the claims (as construed by the Court). See Pitney Bowes, Inc. v. Hewlett-
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`Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
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`9 Extrinsic evidence. Dr. Meldal opined that a person of ordinary skill in the art "would
`understand from the descriptions in the '231 patent specification that the 'RF signal
`processing' portion 10 is RF signal processing circuitry." (D.I. 584 at~ 33) Apple offers
`no expert testimony on this point.
`10 This construction was agreed to by the parties during the claim construction phase.
`(D.I. 239, ex. A at 5)
`
`15
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`Case 1:10-cv-00258-SLR Document 630 Filed 04/11/16 Page 17 of 18 PageID #: 21921
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`The Federal Circuit has declined to "state a per se rule that expert testimony is
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`required to prove infringement when the art is complex." See Centricut, LLC v. Esab
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`Grp., Inc., 390 F.3d 1361, 1369-70 (Fed.Cir.2004) ("In many patent cases expert
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`testimony will not be necessary because the technology will be 'easily understandable
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`without the need for expert explanatory testimony."') (citations omitted); see also, Wyers
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`v. Master Lock Co., 616 F.3d 1231, 1239-40, 1242 (Fed.Cir.2010) (The existence of a
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`motivation to combine references "may boil down to a question of 'common sense"' and
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`"expert testimony is not required when the references and the invention are easily
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`understandable"). However, "in a case involving complex technology, where the
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`accused infringer offers expert testimony negating infringement, the patentee cannot
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`satisfy its burden of proof by relying only on testimony from those who are admittedly
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`not expert in the field." Id.
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`2. Analysis
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`Apple argues that MobileMedia has failed to identify specific structures in the
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`infringing products which meet the "alert sound generator" and "control means"
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`limitations. Dr. Meldal opined that, if the claim limitations were construed as means(cid:173)
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`plus-function limitations, "the iPhone Products meet [the alert sound generator] element
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`as construed by Apple. . . . [T]hey include a generator that generates the alert sound
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`when a call is received from a remote caller, that include