Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 1 of 31
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF VERMONT
`
`ARNOUSE DIGITAL DEVICES, CORP.,
`Plaintiff,
`
`v.
`
`MOTOROLA MOBILITY, INC.
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`
`Case No. 5:11-cv-155
`
`ARNOUSE DIGITAL DEVICES, CORP.'S MARKMANBRIEF REGARDING
`CONSTRUCTION OF THE DISPUTED CLAIM TERMS IN U.S. PATENT NO. 7,516,484
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 1
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 2 of 31
`
`I. BACKGROUND ............................................................................................................................ 6
`II. LEGAL STANDARDS GOVERNING MARKMAN HEARINGS IN THE U.S.
`DISTRICT COURT FOR THE DISTRICT OF VERMONT ............................................ 7
`A.
`General .................................................................................................................... 7
`B.
`The Public Notice Function Of Patents Mandates That Claims Be
`Construed Exactly As They Are Written ................................................................ 8
`A Proper Claim Construction Must Comport With The Written
`Description Of The Application As Filed ............................................................... 9
`Extrinsic Evidence ................................................................................................ 11
`D.
`III. PROPOSED CLAIM CONSTRUCTION ......................................................................... ll
`A.
`"a reader configured to i.nteracl with a portabl computer without input
`and output means for interacting directly therewith" ........................................... 12
`i.
`ADD's Construction Gives Effect To All OfThe Words OfThe
`Claim Without Unduly Limiting The Claim ............................................. 13
`Defendant MMI's Construction Neglects To Consider Each And
`Every Word Of The Preamble .................................................................. 18
`"input or an output device" ................................................................................... 19
`ADD's Construction Adheres To The Meaning Expressed By The
`'484 Patent. ................................................................................................ 19
`"non-functioning shell" ......................................................................................... 20
`ADD's Construction Of"non-functioning shell" Is Consistent
`With The Explicit Teachings OfThe '484 Patent. .................................... 21
`Defendant MMI's Construction Of"non-functioning shell" Is Not
`Supportable ............................................................................................... 23
`"wherein the reader are configured o that they will not operate with a
`computer other than a portable computer of the system" ..................................... 23
`ADD's Construction Construes The Phrase As A Whole And
`Adheres To The Patentee's Description Of The System .......................... 24
`Defendant's Construction Is At Odds With The Preamble And The
`Intended Meaning Of The Patentee .......................................................... 25
`"at least one portable computer" ........................................................................... 27
`Plaintiffs Construction Is Consistent With The '484 Patent's
`Specification ............................................................................................. 28
`"wherein the portable computer excludes means for a user to interact
`directly with the portable computer" .................................................................... 28
`ADD's Construction Gives Effect To The Phrase "interacting
`directly" ..................................................................................................... 28
`
`D.
`
`C.
`
`B.
`
`C.
`
`E.
`
`F.
`
`11.
`
`1.
`
`1.
`
`11.
`
`1.
`
`11.
`
`1.
`
`1.
`
`- 2-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 2
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 3 of 31
`
`A.
`
`"wher in the reader and portable computer are configured to become a
`fully functioning computer when connected" ....................................................... 29
`
`1.
`
`In Contrast To Defendant MMI, ADD Gives Effect To All Of The
`Claim Terms In Its Construction ............................................................... 29
`IV. CONCLUSION .................................................................................................................... 30
`
`- 3-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 3
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 4 of 31
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Advanced Fiber Technologies Trust v. J & L Fiber, 674 F. 3d 1365 (Fed. Cir. 2012) ................ 17
`
`Application of Lund, 376 F. 2d 982 (CCPA 1967) ....................................................................... 24
`
`Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006) ...................................................... 17
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F. 3d 1359 (Fed. Cir. 2002) ...................................... 17
`
`Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335 (Fed. Cir. 1998) ..................................... 10
`
`Digital-VendingSvcs. Intern. v. Univ. a/Phoenix, 672 F.3d 1270 (Fed. Cir. 2012) .................... 17
`
`Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002) (en bane)
`
`····················································································································································· 7
`
`Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533 (Fed. Cir. 1991) ................................................... 9
`
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) ..................................... 9, 11
`
`Liebscher v. Boothroyd, 258 F.2d 948 (CCPA 1958) ................................................................... 11
`
`Markman v. Westview Instruments Inc., 517 U.S. 370 (1996) ....................................................... 7
`
`Martek Biosciences v. Nutrinova, 579 F.3d 1363 (Fed. Cir. 2009) .............................................. 10
`
`Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313 (Fed. Cir. 2005) ............................................ 8
`
`Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F .3d 1473 (Fed. Cir. 1998) ............................... 8
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en bane) ....................................... passim
`
`Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) ................... 10, 11
`
`Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001) ..................................... 9, 20,28
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) .. 11
`
`Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448 (Fed. Cir. 1985) ...................................... 10
`
`Vas-Cath v. Mahurakr, 935 F.2d 1555 (Fed. Cir. 1991) .............................................................. 10
`
`-4-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 4
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 5 of 31
`
`Vitronics, Corp. v Conceptronic. Inc., 90 F.3d 1576 (Fed. Cir. 1996) ........................................... 8
`
`Watts v. XL Sys., Inc., 232 F.3d 877 (Fed. Cir. 2000) ................................................................... 11
`
`Statutes
`
`35 U.S.C. § 112 ............................................................................................................................... 9
`
`35 U.S.C. § 271 (a) ......................................................................................................................... 7
`
`Other Authorities
`
`Merriam-Webster, http://www.merriam-webster.com/dictionary/computer ................................ 14
`
`ROBERT C. FABER, Faber On Mechanics ofPatent Claim Drafting, 6th ed. (August 2010) ......... 26
`
`- 5-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 5
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 6 of 31
`
`I. BACKGROUND
`
`U.S. Patent No. 7,516,4841 ("the '484 patent") proposes a unique solution to the problem
`
`of breaches of information privacy and the transfer of computer viruses, malware, trojan horses,
`
`and the like between computer systems. See generally, Declaration of Justin W. McCabe, Esq.
`
`("McCabe") Tab A, U.S. Patent No. 7,516,484 to Arnouse. At a high level, the novel solution
`
`developed by the patentee to keep a user's information safe and to minimize virus transmission is
`
`a portable computer and portable computer reader, which, when combined, form a general
`
`purpose fully functioning computer but when separated prohibit access to the user's information
`
`and data. !d. at column 1, line 48 to column 2, line 11. The portable computer is designed to be
`
`compact, tamper resistant, and most importantly, the user information contained thereon is
`
`inaccessible without the use of and connection to the portable computer reader. !d. at column 5,
`
`lines 66 to column 6, lines 3. On the other hand, the portable computer reader could take on
`
`many forms, but preferably is a merely a shell that offers a way to interact with the portable
`
`computer. !d. at column 7, lines 17-19. As a shell, when the portable computer reader is not
`
`connected to a portable computer, the portable computer reader is inoperable and does not store
`
`or retain any of the user's private information and data. !d. at column 6, lines 10-21. However,
`
`when the two devices are coupled together, the user's private information and data are accessible
`
`to the user (assuming the security protocols have been followed) through the input and/or output
`
`devices associated with the portable computer reader. !d. at column 1, line 61 to column 1,
`
`line 4.
`
`Thus, the configuration of the portable computer and reader facilitates the safe and
`
`portable use of a user's private information because the information can only be stored on the
`
`1 The '484 patent issued on April 7, 2009, and is based on U.S. Patent Application Serial No. 12/099,032, filed with
`the USPTO on April 7, 2008 ("the '032 application"). For the purposes of this brief and for clarity, "the '484 patent"
`will be used to refer to both the issued patent as well as the '032 application.
`
`- 6 -
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 6
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 7 of 31
`
`portable computer and can only be accessed with the assistance of the portable computer reader.
`
`Thus, multiple users each having their own portable computer can use the same portable
`
`computer reader and not worry about any other user accessing their information or transmitting a
`
`virus to their portable computer. Id. at column 2, lines 11-16. To further promote the security of
`
`each user's information, security measures such as passwords, biometric markers, and
`
`specialized connections between the portable computer and the portable computer reader may be
`
`employed to uniquely mate the portable computer or, more specifically, the information
`
`contained on the portable computer, with the portable computer reader. See, e.g., id. at column 5,
`
`lines 45-62.
`
`II. LEGAL STANDARDS GOVERNING MARKMAN HEARINGS IN THE
`U.S. DISTRICT COURT FOR THE DISTRICT OF VERMONT
`
`A. General
`
`The claims of an issued patent set out the metes and bounds of the right to exclude for a
`
`patent owner. See Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., Inc., 285 F.3d 1046, 1052
`
`(Fed. Cir. 2002) (en bane) ("Both the Supreme Court and this court have adhered to the
`
`fundamental principle that claims define the scope of patent protection."). Thus, infringement
`
`liability is established by showing that there is correspondence between all elements of at least
`
`one claim in the patent and the structure or steps, respectively, in the accused product or method.
`
`See generally, 35 U.S.C. § 271 (a). When the meaning of terms in patent claims is not easily
`
`understood, some interpretive analysis or "construction" is needed. It is the court's
`
`responsibility to perform this analysis. Markman v. Westview Instruments Inc., 517 U.S. 370
`
`(1996).
`
`The seminal case on claim construction is Phillips v. A WH Corp., 415 F .3d 13 03 (Fed.
`
`Cir. 2005) (en bane). According to Phillips, a claim construction analysis typically focuses first
`
`- 7-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 7
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 8 of 31
`
`on the claim language itself, and the terms in the claim are generally given their ordinary and
`
`customary meaning. Id. at 1312 (citing Vitronics, Corp. v. Conceptronic. Inc., 90 F.3d 1576,
`
`1582 (Fed. Cir. 1996)). The ordinary and customary meaning of a claim term is "the meaning
`
`that the term would have to a person of ordinary skill in the art in question at the time of the
`
`invention, i.e., as of the effective filing date of the patent application" determined by "the
`
`ordinary artisan after reading the entire patent." Phillips, 415 F .3d at 1313.
`
`In some cases the ordinary and customary meaning of a claim term may be evident to any
`
`reader of the claim simply through the well understood meaning of words. See id. at 1314. Yet,
`
`the court's analysis cannot start and end with the claim terms in isolation. See Medrad, Inc. v.
`
`MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) ("We cannot look at the ordinary
`
`meaning of the term ... in a vacuum. Rather, we must look at the ordinary meaning in the
`
`context of the written description and the prosecution history."). The appropriate construction of
`
`a claim term remains the meaning attributable to it by a person of ordinary skill in the art in light
`
`of the "inventor's words that are used to describe the invention." Phillips, 415 F.3d at 1313
`
`("The inventor's words that are used to describe the invention-the inventor's lexicography-
`
`must be understood and interpreted by the court as they would be understood and interpreted by
`
`a person in that field of technology. Thus the court starts the decision making process by
`
`reviewing the same resources as would that person, viz., the patent specification and the
`
`prosecution history.") (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477
`
`(Fed. Cir. 1998)).
`
`B. The Public Notice Function Of Patents Mandates That Claims Be Construed
`Exactly As They Are Written.
`
`The claims themselves provide "substantial guidance as to the meaning of particular
`
`claim terms." Phillips, 415 F.3d at 1314. The context in which the claim term is used within the
`
`- 8 -
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 8
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 9 of 31
`
`particular claim in question can illuminate the meaning of the term. See id. ("the use of a term
`
`within the claim provides a firm basis for construing the term."). A claim term may also be
`
`construed in light of the same claim term appearing in other claims, whether those claims are
`
`asserted or unasserted. !d. Additionally, differences among claims can assist in construing a
`
`particular claim term. !d. (citingLaitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir.
`
`1991)). For example when a dependent claim adds a limitation that is not present in the
`
`previous claim from which it depends, the additional limitation in the dependent claim raises a
`
`presumption that the limitation does not exist in that previous claim. Phillips, 415 F .3d at 1314
`
`(citingLiebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,910 (Fed. Cir. 2004)). In construing
`
`the claims, however, claim terms appearing in different places within the same claim or in other
`
`claims should be construed consistently throughout the claims. Rexnord Corp. v. Laitram Corp.,
`
`274 F.3d 1336, 1342 (Fed. Cir. 2001).
`
`C. A Proper Claim Construction Must Comport With The Written Description
`Of The Application As Filed
`
`Phillips also highlighted the fundamental requirement that claim terms can only have a
`
`meaning that is supported by the written description ofthe specification2
`
`: "[t]he importance of
`
`the specification in claim construction derives from its statutory role. The close kinship between
`
`the written description and the claims is enforced by the statutory requirement that the
`
`specification describe the claimed invention in 'full, clear, concise, and exact terms.'" Phillips,
`
`415 F.3d at 1316 (citing 35 U.S.C. § 112, first paragraph); see also, id. at 1315 ("Shortly after
`
`the creation of this court, Judge Rich wrote that '[t]he descriptive part of the specification aids in
`
`ascertaining the scope and meaning of the claims inasmuch as the words of the claims must be
`
`2 The "specification" of a patent comprises all portions of the patent, i.e., drawings, claims, written description,
`abstract, title, etc.
`
`- 9 -
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 9
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 10 of 31
`
`based on the description."') (citing Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452
`
`(Fed. Cir. 1985). Thus, the limitations imposed on claims by the specification arise from the
`
`very purpose of the written description requirement of the patent laws. Vas-Cath v. Mahurakr,
`
`935 F.2d 1555, 1563-64 (Fed. Cir. 1991) ("The purpose ofthe 'written description' requirement
`
`is broader than to merely explain how to 'make and use'; the applicant must also convey with
`
`reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in
`
`possession of the invention. The invention is, for purposes of the 'written description' inquiry,
`
`whatever is now claimed.") (emphasis in original).
`
`In looking to the specification to interpret a claim term, the entire written description
`
`must be reviewed as a whole. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1345 (Fed.
`
`Cir. 1998). "Ultimately, the interpretation to be given a term can only be determined and
`
`confirmed with a full understanding of what the inventors actually invented and intended to
`
`envelop with the claim. The construction that stays true to the claim language and most naturally
`
`aligns with the patent's description of the invention will be, in the end, the correct construction."
`
`Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d
`
`1243, 1250 (Fed. Cir. 1998) (citations omitted)).
`
`A patentee may explicitly limit claim scope through an intentional disclaimer, or
`
`disavowal, of claim scope in the specification using "words or expressions of manifest exclusion
`
`or restriction." Martek Biosciences v. Nutrinova, 579 F.3d 1363, 1381 (Fed. Cir. 2009) (quoting
`
`Innova, 381 F.3d at 1117. Clear notice of relinquishment of claim scope or alternate definitions
`
`of claim terms used by the inventor in the specification can impact claim term interpretation,
`
`even where it was not the intent ofthe inventor to do so. See Innova, 381 F.3d at 1117 ("Because
`
`the inquiry into the meaning of claim terms is an objective one, a patentee who notifies the
`
`- 10-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 10
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 11 of 31
`
`public that claim terms are to be limited beyond their ordinary meaning to one of skill in the art
`
`will be bound by that notification, even where it may have been unintended. See, e.g., Liebel(cid:173)
`
`Flarsheim, 358 F.3d at 905-09; SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
`
`F.3d 1337, 1344 (Fed. Cir. 2001) (stating, in the written description '[the] structure ... is the
`
`basic ... structure for all embodiments'); Watts v. XL Sys., Inc., 232 F.3d 877, 883 (Fed. Cir.
`
`2000) (stating, in the written description, '[t]he present invention utilizes [the] feature')).
`
`D. Extrinsic Evidence
`
`Although less important to a claim construction and generally less reliable than the
`
`intrinsic evidence, evidence outside ofthe intrinsic record may be helpful in understanding a
`
`claim term. Phillips, 415 F.3d at 1317-1318. Extrinsic evidence includes dictionaries, treatises,
`
`and expert testimony. !d. Dictionaries, and especially technical dictionaries, can assist in
`
`determining a meaning of a term to one of ordinary skill in the art of the invention. !d.
`
`"However, a common meaning, such as one expressed in a relevant dictionary, that flies in the
`
`face of the patent disclosure" should not affect the proper interpretation of the claim term.
`
`Renishaw, 158 F.3d at 1250 (citing Liebscher v. Boothroyd, 258 F.2d 948 (CCPA 1958)).
`
`"In sum, extrinsic evidence may be useful to the court, but it is unlikely to result in a
`
`reliable interpretation of patent claim scope unless considered in the context of the intrinsic
`
`evidence." Phillips, 415 F.3d at 1319.
`
`III. PROPOSED CLAIM CONSTRUCTION
`
`Plaintiff Arnouse Digital Devices Corp. ("ADD") and Defendant Motorola Mobility, Inc.
`
`("MMI") (together, the "Parties") have spoken on numerous occasions regarding claim
`
`construction and have agreed upon the meaning of several terms. Other terms remain in dispute.
`
`- 11 -
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 11
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 12 of 31
`
`See McCabe Tab B, Table to Joint Claim Construction and Prehearing Statement, Doc. 39. The
`
`following claim terms are those that require construction from this Court.
`
`A. "a reader configured to interact with a portable computer without input and
`output means for interacting directly therewith"
`
`Neither Plaintiff nor Defendant disputes that the preamble3 should limit the scope of
`
`claim 1; however, the Parties have competing claim constructions of the preamble phrase "A
`
`reader configured to interact with a portable computer without input and output means for
`
`interacting directly therewith" and the phrase contained within the preamble: "input and output
`
`means." The Parties' constructions of these phrases are presented below:
`
`Claim Term
`
`ADD's Proposed Construction4
`
`Claim 1 : A reader
`configured to interact
`with a portable computer
`without input and output
`means for interacting
`directly therewith
`
`Claim 1 : input and
`output means
`
`An electronic device that is
`designed to be connected to a
`portable computer, wherein the
`portable computer lacks input
`and output means, as those
`terms are defined below, but
`includes a connector and a
`memory the memory including
`software and user information.
`In other words, the portable
`computer needs the reader for
`the user to interact with the
`programs, hardware, and user
`information of the portable
`computer.
`Any component that allows a
`portable computer to interact
`directly with the programs,
`hardware, and user information
`of the portable computer by
`
`MMI's Proposed
`Construction5
`An electronic device that is
`designed to be connected to
`a portable computer that by
`itself is not capable of
`receiving information from
`or providing information to
`a user because it lacks input
`and output means, as those
`terms are defined below. In
`other words, the portable
`computer needs the reader
`for the user to interact with
`the computer.
`
`Any component that allows a
`portable computer to
`receive information from or
`provide information to a
`user, including but not
`
`3 The "preamble" of a claim is the introductory clause of a patent claim. In claim 1 of the '484 patent, for example,
`it is the verbiage prior to the word "comprising:"
`4 As compared to the Joint Claim Construction and Prehearing Statement (Doc. 39, filed May 29, 2012) (hereinafter,
`"Joint Claim Construction Doc. 39") submitted by the Parties that reflected their positions at that time, in the process
`of finalizing its Markman Brief ADD slightly modified its claim construction.
`5 MMI's proffered construction is based upon the latest claim construction conversation between the Parties, but
`may differ from the construction actually put forth by the MMI in its responsive Markman brief.
`
`- 12-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 12
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 13 of 31
`
`receiving information from or
`providing information to a user,
`including but not limited to, a
`keyboard, keypad, button,
`display, touch screen, speaker,
`webcam, microphone, or
`headphone jack.
`
`limited to, a keyboard,
`keypad, button, display,
`touch screen, speaker,
`webcam, microphone, or
`headphone jack.
`
`i. ADD's Construction Gives Effect To All Of The Words Of The Claim
`Without Unduly Limiting The Claim.
`
`ADD's construction of the preamble of claim 1 of the '484 patent is supported by the
`
`specification of the '484 patent and by the plain and ordinary meaning of the terms contained
`
`therein. Segregating the preamble into manageable phrases reveals the propriety of ADD's
`
`construction.
`
`a. "A reader configured to interact with"
`
`Throughout the specification of the '484 patent, the reader is described as having many
`
`different configurations, for example:
`
`•
`
`"generally, the portable computer reader comprises a housing. In various
`
`embodiments, the housing is an input/output device itself. For example, the
`
`portable computer reader housing may be a component of a conventional desktop
`
`or laptop computer, such as a keyboard, monitor, tower, mouse, etc." McCabe
`
`TAB A, at column 7, lines 7-12.
`
`•
`
`"In the embodiment shown in FIGS. 4 and 5, the reader comprises substantially
`
`all the elements of a conventional desktop computer such as a keyboard, mouse,
`
`display, etc. a display or monitor, a keyboard and a mouse. As shown, it
`
`preferably, does not have a structure that would typically house a hard drive
`
`because the reader is, preferably, a shell without the portable computer. "!d. at
`
`column 7, 13-19.
`
`- 13-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 13
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 14 of 31
`
`•
`
`"As shown in FIG. 8, in one embodiment, the portable computer readers have a
`
`main circuit board comprising, at least, a GPS chip, graphics processor, CPU,
`
`biometric chip and an 110 chip. Internally, the housing of the portable computer
`
`reader may also include a heat sink/fan, video cards, PCI buses, etc." !d. at
`
`column 8, lines 31-36.
`
`Accordingly, it is evident that the patentee broadly described many possible
`
`configurations of the reader and as such, the word "configured," should not be read as a word of
`
`exclusion that limits the abilities of the reader, but instead is meant to ensure that the reader
`
`contains at least certain abilities in addition to others not explicitly mentioned. Thus, for
`
`example, while the reader of claim 1 is necessarily configured to interact with a portable
`
`computer without input and output means, nothing in the '484 patent precludes this same reader
`
`from also being contemporaneously configured to interact with a portable computer with input
`
`and output means. The former configuration is necessitated by the claim, but a reader having
`
`both the former and later configurations is still "configured to interact" as required by claim 1. 6
`
`b. "a portable computer"
`
`In order to fully understand what a "reader" is in claim 1, it is necessary to define
`
`"portable computer." As detailed below, the patentee expressly defined "a portable computer" as
`
`a device that includes a memory and software, the memory including user information. This
`
`definition is admittedly at odds with the lay understanding of a portable computer, i.e., a portable
`
`device that is capable of completing computing functions. See, e.g., Merriam-Webster,
`
`http://www.merriam-webster.com/dictionary/computer, ("computer: a programmable usually
`
`electronic device that can store, retrieve, and process data."), last visited July 9, 2012. However,
`
`6 For example, an automobile wheel that is configured to work with a particular tire, does not preclude the ability of
`the same wheel to work with other tires.
`
`- 14-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 14
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 15 of 31
`
`as with the various embodiments of the reader discussed above, the patentee's definition (and
`
`that proposed by ADD) is consistent with the '484 patent which describes several types of
`
`portable computers. See, e.g., McCabe Tab A, at column 3 at lines 12-17. In fact, the patentee
`
`specifically intended and stated that the term "portable computer" can have a meaning that is at
`
`odds with the lay understanding of a portable computer provided above when the patentee took
`
`pains to emphasize that "a portable computer," while possibly including all of the components of
`
`a fully-functional general purpose computer7
`
`, includes, at minimum, merely at least memory,
`
`software, and a connector. !d. column 3, lines 15-17, column 3, lines 66 to column 4, line 1 ("at
`
`the least, the portable computers' components include a main or primary memory and a
`
`connector for connecting to a reader"), column 4, lines 34-35 ("Loaded onto the memory,
`
`preferably onto the RAM, is software that is executed in the central processing unit.").
`
`Support for the meaning of "portable computer" proposed by ADD is also found in the
`
`remaining elements of claim 1, and specifically, the claim element that requires the reader to be a
`
`"non-functioning shell when not connected to the portable computer." !d. at column 13, lines
`
`17-18. Although discussed in more detail below, the term "non-functioning shell" means that
`
`the reader can access the memory containing the programs and user information when connected
`
`thereto, and ceases to function and does not retain any user information when not connected to
`
`the portable computer. This definition is derived, at least in part, from the patentee's statements
`
`that a) "when a user is finished, he or she simply removes the portable computer and ...
`
`[b]ecause the portable computer reader is a shell, none of the user's information is left behind"
`
`and b) the reader "is not completely a shell without a portable computer" when it "includes
`
`storage with software included thereon." !d. at column 8, line 66 to column 9, line 1. From
`
`7 See id. at column 1, lines 50-51 ("The portable computer has all of the components of a fully functional,
`conventional general purpose computer").
`
`- 15-
`
`Petitioner Motorola Mobility LLC - Exhibit 1014 - Page 15
`
`

`
`Case 5:11-cv-00155-cr Document 47 Filed 07/12/12 Page 16 of 31
`
`these statements the patentee made it clear that because the reader is not a shell when it includes
`
`software and storage, it must be a shell when it does not include those components.
`
`In the same vein, justification for the inclusion of user information within the scope of the
`
`term "portable computer" is also evident in the stated overall purpose of the patentee as
`
`described throughout the patent and specifically in the BACKGROUND and SUMMARY
`
`sections of the '484 patent. See McCabe Tab A column 1, line 21 to column 2, line 36
`
`(BACKGROUND and SUMMARY portions ofthe '484 patent). The patentee made clear that he
`
`sought to provide "a computing system that is portable, can be used in a number of different
`
`applications, and protects sensitive information." Id. at column 1, lines 40-42; see also id. at
`
`column 2, lines 1-4 ("When a user is finished, he or she simply removes the portable computer
`
`and can simply take it with him or her. Because the portable computer reader is a shell, none of
`
`the user's information is left behind.").
`
`c. "input and output means"
`
`ADD has defined input and output means to be any component that allows a portable
`
`computer to interact directly with the programs, hardware, and user information of the portable
`
`computer by receiving information from or providing information to a user, including but not
`
`limited to, a keyboard, keypad, button, display, touch screen, speaker, webcam, microphone, or
`
`headphone jack. ADD's construction is based on the express language found in the '484 patent
`
`which describes an input/output device as "a keyboard, display, mouse, speakers, etc." Id. at
`
`column 6, lines 6-7.
`
`d. "for interacting directly therewith "
`
`The last portion of the preamble, i.e., "for interacting directly therewith" is the crux of the
`
`disagreement between ADD and MMI as to the proper construction of the entire preamble.
`
`- 16-
`
`Petitioner Motorola Mobility LLC - Exhibit 1