`
`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.
`
`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.
`
`MEMORANDUM OPINION
`
`Dated: July ifl , 2016
`Wilmington, Delaware
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`
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 2 of 17 PageID #: 26031
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`R~Ntit.~dge
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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") and 6,725, 155 ("the '155 patent"). 1 (D.I. 1; D.I. 8) Apple answered and
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`counterclaimed on August 9, 2010. (D.I. 10) The court resolved the parties' claim
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`construction issues and summary judgment motions for infringement and invalidity.
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`(D.I. 461; D.I. 462); MobileMedia Ideas, LLC v. Apple Inc., 907 F. Supp. 2d 570, 596-99
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`(D. Del. 2012). The case proceeded to a six day jury trial beginning on December 3,
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`2012 on three of the asserted patents. The court then resolved the parties' post-trial
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`motions. (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 regarding damages (D.I. 633) and motions to exclude certain
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`expert opinions (D.I. 636, 639). The court has jurisdiction pursuant to 28 U.S.C. §§
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`1331 and 1338(a).
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`II. SUMMARY JUDGMENT
`
`1 The '231 patent, titled "Communication Terminal Equipment and Call Incoming Control
`Method," reissued on August 8, 2006. An ex parte reexamination resulted in a
`reexamination certificate that issued April 3, 2012. The '155 patent, titled "Method and
`Apparatus for Information Processing, and Medium for Information Processing," was
`filed on February 9, 2000 and issued on April 20, 2004.
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`
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 3 of 17 PageID #: 26032
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`A. Standard
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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) & (8). 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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`2
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`
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 4 of 17 PageID #: 26033
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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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`B. Analysis 2
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`1. Prosecution history
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`On March 6, 1998, twice amended claims 1 and 12 were again amended in
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`response to an office action3 rejecting the claims over prior art, adding certain language
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`relevant to the issue at bar:
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`1. (Twice Amended) 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 a sound; and
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`control means for controlling said alert sound generator and determining
`whether a predetermined operation is operated when said alert sound is
`being rung and when said predetermined operation is operated an
`operating state of said alert sound generator is altered based on an
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`2 The court recites only the background needed for the issues at bar. A fuller recitation
`may be found in previous opinions. (See e.g., 0.1. 630)
`3 During prosecution of U.S. Patent No. 5,995,852 ("the '852 patent"). Original claim 12
`of the '231 patent was issued in the '852 patent. The subsequent reexamination yielded
`the '231 patent, which proceedings added new claims 20-23. The prosecution history of
`the '852 patent is properly considered in the above analysis.
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`3
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 5 of 17 PageID #: 26034
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`outcome of the determination and a communication state between the
`terminal and the remote caller remains unchanged.
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`12. (Twice Amended) The communication terminal according to claim 1,
`further comprising:
`
`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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`(0.1. 658, ex. G at JA268-72) (emphasis added) On February 16, 1999, claim 1 was
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`further amended4 in relevant part to change the last limitation to:
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`1. (Four-Times Amended) 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,
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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 alert sound only for the received call, without affecting the
`volume of the alert sound for future received calls, while a call ringing
`state, as perceived by the remote caller, of the call to the terminal
`from the remote caller remains unchanged.
`
`(Id. at JA 339) (emphasis added) Claim 12 was not amended. The applicant argued,
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`in response to an obviousness rejection, that the prior art did "not disclose or suggest
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`control of the alert sound in the manner provided in" amended claim 1. More
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`specifically, it did not disclose "changing a volume of the alert sound only for the call ..
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`4 The interim amendment to claim 1 (on August 18, 1998) did not affect the language at
`issue. (0.1. 658, ex. G at JA299-301)
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`4
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 6 of 17 PageID #: 26035
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`. , while leaving a call ringing status, as perceived by the remote caller, of the call from
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`the remote caller to the communication apparatus unchanged .... " (Id. at 341-42)
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`(emphasis omitted) As issued, claims 1 and 12 recited:
`
`1. 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,
`
`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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`12. The communication terminal according to claim 1, further comprising:
`
`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.
`
`('231 patent, 5:49-67, 6:43-50) (emphasis added)
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`The applicant amended claim 12 to be an independent claim during
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`reexamination (incorporating all the limitations of independent claim 1 ), as reflected in
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`the communication dated October 4, 2011:
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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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`5
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 7 of 17 PageID #: 26036
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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,
`
`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:
`
`RF signal processing means for transmitting and/or receiving radio waves;
`and
`
`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.
`
`(D.I. 635, ex. 2 at JA 3156-57) The applicant argued that the prior art (directed to a
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`cordless telephone) did not anticipate claim 12 as it did not teach or suggest the
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`limitation "said communication status between said apparatus and said remote caller is
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`established by said transmitted and/or received radio waves." (Id. at JA 3170-71) On
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`October 4, 2011, in response to a final office action, the applicant argued (based on the
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`above prosecution history) that the antecedent basis for "said communication status" is
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`a "call ringing state." (Id. at JA 3316-46)
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`During an interview with the examiner, the patentee again asserted that the
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`antecedent basis for "said communication status" in the above claim 12 was "call ringing
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`state, as perceived by the remote caller," as provided in issued claim 1. The examiner
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`disagreed, stating that as claim 12 recites a "received call" (also a communication
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`status) the antecedent basis for "said communication status" was unclear. The
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`6
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 8 of 17 PageID #: 26037
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`"received call" status would allow the claims to embrace both the cellular telephone and
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`cordless telephone. The examiner requested that the patentee correct the claim
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`limitation by amendment. (D.I. 658, ex. Cat JA3382) On December 15, 2011, the
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`applicant amended the last limitation of claim 12:
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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;
`
`control means for controlling said alert sound generator; and
`
`means for specifying a predetermined operation by the user,
`
`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:
`
`RF signal processing means for transmitting and/or receiving radio waves;
`and
`
`an antenna for transmitting and/or receiving said radio waves, wherein
`said call ringing state between said apparatus and said remote caller is
`established by said transmitted and/or received radio waves.
`
`(0.1. 635, ex. 2 at JA3395) (emphasis added) The PTO then allowed the claim, stating
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`that the previous rejections over the prior art were based upon interpreting "said
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`communication status" as referring to the earlier recited "received call," which allowed
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`claim 12 to embrace both of the disclosed cellular telephone and cordless telephone
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`embodiments. The examiner noted that the applicant "followed the examiner's
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`7
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 9 of 17 PageID #: 26038
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`suggestion by replacing the phrase 'said communication status' with 'said call ringing
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`state,' whose antecedent basis is clearly established and thus 'call ringing state' must
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`[be] interpreted more narrowly." The examiner also explained that the prior art uses a
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`wireline PSTN telephone network and does not teach "leaving any type of call ringing
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`state unchanged when, as is now recited due to the amendment, the call ringing state is
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`established by transmitted radio waves." (D.I. 635, ex. 2 at JA3476-79, ex. 4)
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`2. Intervening rights
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`Pursuant to 35 U.S.C. §§ 252 and 307(b), a patentee of a reexamined patent
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`may only recover "infringement damages for the time period between the date of
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`issuance of the original claims and the date of issuance of the reexamined claims if the
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`original and the reexamined claims are 'substantially identical.'" R+L Carriers, Inc. v.
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`Qualcomm, Inc., 801 F.3d 1346, 1349 (Fed. Cir. 2015) (citations omitted). "To
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`determine whether substantive changes have been made," a court must consider
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`"whether the scope of the claims are identical, not merely whether different words are
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`used." Id. (citing Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1346 (Fed. Cir. 1998);
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`Bloom Eng'g Co. v. N. Am. Mfg. Co., 129 F.3d 1247, 1250 (Fed. Cir. 1997)).
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`The parties dispute whether "communication status" was meant to embrace both
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`"call ringing state" and "received call" as suggested by the examiner. The examiner's
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`conclusion that "call ringing state" should be interpreted more narrowly follows from his
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`explanation that a "received call" is also a communication status. Having reviewed the
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`prosecution history, the court disagrees. Claim 1 is directed to "informing a user of a
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`received call." The first relevant iteration of the claims at issue included the language a
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`"communication state between the terminal and the remote caller remains unchanged"
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`8
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 10 of 17 PageID #: 26039
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`(claim 1) and "said communication status" (claim 12). The patentee amended the claim
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`language to provide "a call ringing state, as perceived by the remote caller, of the call to
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`the terminal from the remote caller remains unchanged" (claim 1) without changing the
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`language "said communication status" (claim 12). The term "received call" appears in
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`the first relevant iteration of claim 1 and was not a "communication status" as indicated
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`by the plain language. The examiner's conclusion does not compel the court at bar to
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`interpret "communication status" more broadly in the first instance. As the claims
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`remained substantially identical in scope, intervening rights do not apply. 5
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`3. Marking
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`35 U.S.C. § 287(a), provides:
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`Patentees, and persons making, offering for sale, or selling within the
`United States any patented article for or under them, or importing any
`patented article into the United States, may give notice to the public that
`the same is patented, either by fixing thereon the word "patent" or the
`abbreviation "pat.", together with the number of the patent, or by fixing
`thereon the word "patent" or the abbreviation "pat." together with an
`address of a posting on the Internet, accessible to the public without
`charge for accessing the address, that associates the patented article with
`the number of the patent, or when, from the character of the article, this
`can not be done, by fixing to it, or to the package wherein one or more of
`them is contained, a label containing a like notice. In the event of failure
`so to mark, no damages shall be recovered by the patentee in any action
`for infringement, except on proof that the infringer was notified of the
`infringement and continued to infringe thereafter, in which event damages
`may be recovered only for infringement occurring after such notice. Filing
`of an action for infringement shall constitute such notice.
`
`The parties at bar dispute who bears the burden of satisfying the marking
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`requirement where, as here, there is a question as to whether the patentee ever
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`5 Having found that intervening rights do not apply, the court declines to address
`MobileMedia's arguments that Apple did not properly plead such defense. While
`Apple's presentation thereof was untimely, the decision of scope is one of law and did
`not cause undue prejudice to MobileMedia in the current litigation context.
`
`9
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`
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 11 of 17 PageID #: 26040
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`marketed a product within the United States that practices the asserted patent. The
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`Federal Circuit has not provided clear guidance on this issue and the case law remains
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`split. Certain courts hold that the burden is properly on patentee to prove that it never
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`marketed a patented product. Other courts hold that the accused infringer must first
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`come forward with proof that the patentee sold a patented product as, absent such
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`product, there would be nothing to mark. Upon that threshold showing the burden shifts
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`to the patentee to show compliance with the marking statute. See Sealant Sys. Int'/,
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`Inc. v. TEK Glob. S.R.L., Civ. No. 11-774-PSG, 2014WL1008183, at *29-31, nn.222-23
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`(N.D. Cal. Mar. 7, 2014) (gathering cases); Golden Bridge Tech. Inc v. Apple, Inc., Civ.
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`No. 12-4882-PSG, 2014 WL 1928977, at *11-12 (N.D. Cal. May 14, 2014). "The
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`marking statute serves three related purposes: 1) helping to avoid innocent
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`infringement; 2) encouraging patentees to give notice to the public that the article is
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`patented; and 3) aiding the public to identify whether an article is patented." Nike, Inc.
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`v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (Fed. Cir. 1998) (citations omitted). The
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`court concurs with the reasoning requiring an alleged infringer (seeking to limit
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`damages) to come forward with particular unmarked products allegedly triggering § 287.
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`Without such a threshold showing, the "universe of products for which [MobileMedia]
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`would have to establish compliance with, or inapplicability of, the marking statute would
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`be unbounded." See Sealant Sys., 2014 WL 1008183, at *31. In the case at bar, Apple
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`has not met this initial burden. The court denies Apple's motion for summary judgment.
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`IV. MOTIONS TO EXCLUDE
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`Rule 702 of the Federal Rules of Civil Procedure allows a qualified witness to
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`testify in the form of an opinion if the witness' "scientific, technical, or other specialized
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`10
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 12 of 17 PageID #: 26041
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`knowledge will help the trier of fact to understand the evidence or to determine a fact in
`
`issue" and if his/her testimony is the product of reliable principles and methods which
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`have been reliably applied to the facts of the case.
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`A. Pertinent Art
`
`Dr. Gareth Loy ("Loy") received a Doctor of Musical Arts degree from Stanford
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`University focusing on computer science, digital signal processing, and computer
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`systems for audio, real-time computing, and compiler technology. He taught graduate
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`courses in computer science and digital signal processing at the University of California,
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`San Diego for a decade and worked as a software architect, information engineer, and
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`digital audio engineer for another decade. (D.I. 660, ex. 1)
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`The '155 patent "relates to an information processing apparatus and ... method,
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`and a providing medium, and more particularly, relates to an information processing
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`apparatus and ... method and a providing medium which can guide a variety of routes
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`without holding map data." (1 :8-12) The patent specifies that the information
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`processing apparatus and method "can be utilized in a portable navigation system," with
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`certain of the claim limitations specifying detecting Global Positions System ("GPS")
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`information. (17:46, 55-56, 18:33-34)
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`Apple seeks to limit the field of pertinent art to "navigation systems and location
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`detection," thereby excluding Dr. Loy's opinions as outside his general experience in
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`embedded systems and information processing. That the patent uses the information
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`processing apparatus and method to process navigation and location information does
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`not narrow the field of pertinent art as Apple suggests. Indeed, the accused products
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`are iPhones and iPads executing certain Apple software. Dr. Loy's experience with
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`11
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 13 of 17 PageID #: 26042
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`embedded systems and information processing may be applied to the interpretation and
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`application of processing navigation and location information as directed by the '155
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`patent.6 Apple's motion is denied.
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`B. Royalty Rates
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`Generally, "[w]hen the methodology is sound, and the evidence relied upon
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`sufficiently related to the case at hand, disputes about the degree of relevance or
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`accuracy (above this minimum threshold) may go to the testimony's weight, but not its
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`admissibility." i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 852 (Fed. Cir. 2010).
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`More specifically, "[t]he degree of comparability of ... license agreements as well as
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`any failure on the part of [the] expert to control for certain variables are factual issues
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`best addressed by cross examination and not by exclusion." ActiveVideo Networks, Inc.
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`v. Verizon Comm., Inc., 694 F.3d 1312, 1333 (Fed. Cir. 2012); see also Vimetx, Inc. v.
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`Cisco Sys., Inc., 767 F.3d 1308, 1331 (Fed. Cir. 2014) (finding that "though there were
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`undoubtedly differences between the licenses at issue and the circumstances of the
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`hypothetical negotiation, '[t]he jury was entitled to hear the expert testimony and decide
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`for itself what to accept or reject"') (citation omitted). In contrast, "[w]hen relying on
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`licenses to prove a reasonable royalty, alleging a loose or vague comparability between
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`different technologies or licenses does not suffice." LaserDynamics, Inc. v. Quanta
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`Computer, Inc., 694 F.3d 51, 79 (Fed. Cir. 2012); see also, ResQNet.com, Inc. v.
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`6 The cases cited by Apple are distinguishable. For example, in Sundance, Inc. v.
`DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008), the Federal Circuit held that
`a patent attorney, with no experience in the field of tarps or covers (the pertinent art),
`who "practiced as an engineer for but a year and a half in unrelated areas," was "not
`qualified to testify as an expert witness on the issues of infringement or validity."). Id. at
`1361-62.
`
`12
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`
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 14 of 17 PageID #: 26043
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`Lansa, Inc., 594 F.3d 860, 871-72 (Fed. Cir. 2010) (criticizing an expert who relied on
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`licenses to inflate his royalty recommendation, with "little or no evidence of a link
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`between [such] licenses and the claimed invention").
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`MobileMedia's expert, John Jarosz ("Jarosz"), presents a hypothetical negotiation
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`and calculates a reasonable royalty rate based on certain license agreements and the
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`economics of patent portfolios. (0.1. 653, ex. A at 30-59) He explains that "the patented
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`features at issue in this matter improve the overall user experience and ease of use of
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`the accused Apple products." He then selects certain Apple patents at issue in a prior
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`litigation, 7 which patents covered features contributing to a device's ease of use. He
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`uses the reasonable royalty rates (adjusted for certain variables) claimed by Apple for
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`these features in an "incremental benefits analysis" to test his calculated royalty rates.
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`(Id. at 84-90)
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`Apple objects to the use of the royalty rates from the prior litigation, asserting that
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`no evidence supports that any of the eight patents are technologically or economically
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`comparable to the patents at bar. Additionally, according to Apple, the circumstances of
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`the royalty rate calculations in the prior litigation (based on a hypothetical negotiation
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`between Apple as licensor and Samsung as licensee) are substantially different than
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`those of the case at bar. (0.1. 639)
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`Jarosz's analysis is sufficiently detailed. He offers reasons for his patent
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`selection and acknowledges and adjusts the royalty rates for the differing circumstances
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`of the prior litigation. Accordingly, the court is persuaded that the evidence used by
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`7 Apple Inc. v. Samsung Electronics Co. Ltd., Civ. Nos. 11-1846-LHK and 12-630-LHK
`(N.O. Cal.).
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`13
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 15 of 17 PageID #: 26044
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`Jarosz is "sufficiently related" and any disagreements by Apple regarding his factual
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`assumptions, considerations, and conclusions are more properly addressed via cross
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`examination. Apple's motion to exclude these opinions is denied.
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`C. Survey Evidence
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`Admissible evidence "must carefully tie proof of damages to the claimed
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`invention's footprint in the market place." ResQNet.com, 594 F.3d at 869 (citations
`
`omitted). MobileMedia's expert, Dr. Tulin Erdem ("Dr. Erdem"), conducted a survey
`
`regarding the '155 patent. Apple seeks to strike a survey question as having too broad
`
`a footprint. 8 Specifically, Dr. Erdem stated that "the benefits of the '155 patent relate to
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`quicker and more accurate location detection." (D.I. 654 at 6) Such description was
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`used as one of the "features" in survey questions. 9 The feature "quicker and more
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`accurate location detection" was more fully described as "[y]our iPhone automatically
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`calculates your location using cellular, Wi-Fi, and GPS when using navigation apps.
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`This can reduce the time needed to calculate your location from several minutes to just
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`a few seconds without sacrificing accuracy." (D.I. 654, app. A at 9) Dr. Erdem relied in
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`part on Dr. Loy's report in formulating the survey question. Specifically, Dr. Loy agreed
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`with the examiner that using any of three different modes to detect positional
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`information is complementary and allows the results to be combined or used as
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`fallbacks. (D.I. 654, ex. 2 at~ 70) Dr. Loy also cited to an Apple press release noting
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`8 The court requested that the parties' submit the survey and supporting evidence for its
`review. While the parties did so, the court points out that such submission would have
`been substantially more helpful had the parties listed the pages containing the
`"enclosed red boxes and blue boxes," i.e., the material designated by the parties for the
`court's review.
`9 For example the survey asked: "How satisfied or dissatisfied are you with the
`following iPhone features?" (D.I. 654, app. A at 12)
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`14
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`
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 16 of 17 PageID #: 26045
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`the "benefits made possible by the '155 patented invention" - the "iPhone's ability to
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`calculate iPhone users' locations [in just a few seconds] by using cell towers, Wi-Fi
`
`hotspots and Global Positions System ("GPS") satellites." (Id. at~ 324) Dr. Loy's
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`deposition testimony used the term "redundancy" to describe the tailback capability. 10
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`The court concludes that the survey question is sufficiently tied to Dr. Loy's opinion
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`regarding the benefit of the patent. 11 Apple's request to exclude the survey question is
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`denied.
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`D. Non-Infringing Alternatives
`
`The existence of a non-infringing alternative may be relevant to the determination
`
`of a royalty rate. Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1571 (Fed. Cir. 1996). The
`
`parties dispute whether Apple's non-infringing alternatives would have been
`
`commercially acceptable. Having reviewed the parties' submissions and cited case-law,
`
`the court concludes that "empirical evidence, such as user surveys, customer
`
`interviews, or market data" are not mandatory as argued by MobileMedia. Instead, the
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`cases suggest that courts generally allow opinion evidence. Micro Chem., Inc. v.
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`Lextron, Inc., 318 F.3d 1119, 1122 (Fed. Cir. 2003) (discussing Grain Processing Corp.
`
`v. American Maize-Products Co., 185 F.3d 1341 (Fed. Cir. 1999), which did not erect a
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`10 Provided to the court during oral argument on the issue. (Tr., June 28, 2016 at 132;
`Tr., April 21, 2016 at 45)
`11 In contrast, in Fractus, S.A. v. Samsung, Civ. No. 6:09-CV-203-LED-JDL, 2011 WL
`7563820 (E.D. Tex. Apr. 29, 2011), the patent at issue was directed to "one type of
`internal antenna that purportedly provides advantages such as multiband functionality
`and reduced size." The survey "was intended to determine the relative importance of
`internal antennas in cell phones to consumers" vs. external antennas. The court
`reasoned that "the surveys do not measure how consumers value the purported
`advantages provided by [p]laintiff's technology ... but merely measure the perceived
`consumer value of cell phones with any internal antennas" and excluded the survey
`evidence. Id. at *1.
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`15
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`Case 1:10-cv-00258-SLR Document 675 Filed 07/21/16 Page 17 of 17 PageID #: 26046
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`rigid test for determining availability). MobileMedia's arguments go to the weight of the
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`expert's testimony, not to the admissibility. See e.g., TV Interactive Data Corp. v. Sony
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`Corp., 929 F. Supp. 2d 1006, 1013-14 (N.D. Cal. 2013) (explaining that the court would
`
`not exclude an expert's opinions regarding a non-infringing alternative, even though the
`
`expert "had not analyzed whether the proposed alternatives would be