Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF VERMONT
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`Case No. 5:11-cv-155-CR
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`Jury Trial Demanded
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`ARNOUSE DIGITAL DEVICES CORP.,
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`Plaintiff,
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`v.
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`MOTOROLA MOBILITY, INC.,
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`Defendant.
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`DEFENDANT MOTOROLA MOBILITY’S RESPONSIVE
`CLAIM CONSTRUCTION BRIEF
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`{B0924349.1 13925-0001}
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 1
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 2 of 21
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`INTRODUCTION AND SUMMARY OF ARGUMENT ............................................ 1
`I.
`THE LAW OF CLAIM CONSTRUCTION ................................................................. 2
`II.
`III. ARGUMENT ................................................................................................................. 3
`A.
`Input/Output Related Terms ............................................................................................. 3
`1.
`“a reader configured to interact with a portable computer without input and output means
`for interacting directly therewith” (Claim 1) ............................................................................... 3
`2.
`“wherein the portable computer excludes means for a user to interact directly with the
`portable computer” (Claim 15) ................................................................................................... 7
`3.
`“input and output means”, “input or an output device”, “input device” and “output device”
`(Claims 1 and 15) ....................................................................................................................... 7
`B.
`“non-functioning shell” (Claims 1 and 15) .................................................................... 10
`C.
`“wherein the readers are configured so that they will not operate with a computer other
`than a portable computer of the system” (Claims 1 and 15) ...................................................... 12
`D.
`“at least one portable computer” (Claim 15) ................................................................. 15
`E.
`“wherein the reader and portable computer are configured to become a fully functioning
`computer when connected” (Claim 15) .................................................................................... 16
`IV. CONCLUSION ............................................................................................................ 18
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`{B0924349.1 13925-0001}
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 2
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 3 of 21
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`I.
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`INTRODUCTION AND SUMMARY OF ARGUMENT
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`Defendant Motorola Mobility LLC, formerly known as Motorola Mobility, Inc.,
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`(“Motorola”) respectfully submits its Responsive Claim Construction Brief addressing the
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`disputed claim terms in U.S. Patent No. 7,516,484 (“patent-in-suit” or “the ’484 patent”).
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`Plaintiff Arnouse Digital Devices Corp. (“Arnouse”) has alleged that Motorola lapdocks that can
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`be paired with certain Motorola smartphones infringe claims 1, 3, 7, 15, 16, 18, and 20 of the
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`patent-in-suit. (Compl. D.E. 4, ¶ 6, 12-1; D.E. 31.)
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`Motorola previously filed a motion to dismiss Arnouse’s complaint, arguing that there is
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`no basis for Arnouse to allege that each of the smartphones at issue (which Arnouse alleges to be
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`the “portable computer” recited by the claims) lacks input or output means for interacting
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`directly therewith, as the claims require. (See D.E. 8.) The Court decided to engage in claim
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`construction before addressing this issue on its merits. Thus, the primary issue in dispute here is
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`the meaning of “a portable computer without input and output means for interacting directly
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`therewith” as recited by claim 1 and similar language in claim 15. In view of the plain meaning
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`of “without input and output means” and Arnouse’s own arguments during prosecution of the
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`’484 patent before the U.S. Patent Office, there is no rational basis for Arnouse to claim that
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`these elements are met because the smartphones at issue include several input and output means
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`for user interaction (e.g. a touchscreen, speakers, and buttons).
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`Instead, Arnouse attempts to present constructions that allow the accused lapdocks
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`(which Arnouse alleges to be the reader recited by the claims) to interact with devices that
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`Arnouse admits have input and output means. See Ex. A, Hearing on Motion to Dismiss
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`Transcript, at 23, l. 20. This argument lacks common sense and is contrary to what Arnouse
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`said to obtain allowance of the ’484 patent. The patent-in-suit plainly requires that the reader is
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 3
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 4 of 21
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`configured to interact only with a portable computer that has no input or output means. During
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`prosecution, Arnouse made this clear by distinguishing its amended claim from a prior art
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`reference, Hogdahl, by stating that “Hogdahl does not disclose or suggest that the computer lacks
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`input and output means for interacting directly therewith” because the “workslate unit [in
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`Hogdahl] is capable of full computing operations without the docking station.” Ex. B, Response
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`to Office Action filed February 11, 2009, at 9-10. Thus, Arnouse successfully argued to obtain
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`the ’484 patent that a docking station that is designed to work with a device that is capable of full
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`computing operations does not meet the limitations of the claims. See id. Arnouse could not
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`have made this concept any clearer, stating “[i]n other words, the portable computer needs the
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`reader for the user to interact with the computer.” Id. at 9 (emphasis added).
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`But now, Arnouse ignores these statements in an attempt to stretch its ’484 patent to
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`cover lapdocks designed to be used with smartphones that, Arnouse concedes, have input and
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`output means. Arnouse cannot broaden the claim language by including subject matter explicitly
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`disclaimed during prosecution to obtain its patent. Southwall Techs., Inc. v. Cardinal IG Co., 54
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`F.3d 1570, 1576 (Fed. Cir. 1995) (“The prosecution history limits the interpretation of claim
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`terms so as to exclude any interpretation that was disclaimed during prosecution.”) (citations
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`omitted). Thus, Arnouse’s proposed construction of this critical claim term should be rejected.
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`Motorola’s proposed construction of this and the other disputed claim terms are well-supported
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`by the intrinsic record and reflect the meaning that a person skilled in the art at the time of the
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`alleged invention of the patent-in-suit would ascribe to those terms, and thus should be adopted.
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`II.
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`THE LAW OF CLAIM CONSTRUCTION
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`Motorola generally agrees with Arnouse’s statement of the relevant law. In particular,
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`Motorola agrees with Arnouse’s discussion of construing and limiting claim terms in light of
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 4
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 5 of 21
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`arguments made during prosecution of a patent application. (See D.E. 47, pp. 8, 10-11.) In this
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`regard, Motorola further notes that the Phillips Court also recognized that, “the prosecution
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`history can often inform the meaning of the claim language by demonstrating how the inventor
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`understood the invention and whether the inventor limited the invention in the course of
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`prosecution, making the claim scope narrower than it would otherwise be.” Phillips v. AWH
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`Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006) (citations
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`omitted); see also Cardinal, 54 F.3d at 1576 (“The prosecution history limits the interpretation of
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`claim terms so as to exclude any interpretation that was disclaimed during prosecution.”)
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`(citations omitted). Finally, “[i]t is not necessary that each claim read on every embodiment
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`[described in the Specification].” Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed.
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`Cir. 2010) (citations omitted).
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`III. ARGUMENT
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`A. Input/Output Related Terms
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`1.
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`“a reader configured to interact with a portable computer without
`input and output means for interacting directly therewith” (Claim 1)
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`Both Arnouse and Motorola agree that the preamble of claim 1 is a substantive limitation
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`of the claim. The Parties, however, propose competing constructions of the preamble, including
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`phrases within the preamble such as “input and output means,” as discussed below.
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 5
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 6 of 21
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`Claim Term
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`Claim 1: A reader configured
`to interact with a portable
`computer without input and
`output means for interacting
`directly therewith
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`Motorola’s Proposed
`Construction (emphasis
`added)
`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.
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`Arnouse’s Proposed
`Construction (emphasis
`added)
`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.
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`There are three primary differences between the Parties’ proposed constructions: (1)
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`Arnouse proposes that a reader can work with a portable computer that has input and output
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`means as well as one that does not, whereas Motorola proposes that the reader works only with a
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`portable computer that lacks input and output means; (2) Arnouse requires the reader for the user
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`to interact specifically with “the programs, hardware, and user information of the portable
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`computer” rather than, as Motorola proposes, the portable computer in general; and (3) Arnouse
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`requires that the portable computer “includes a connector and a memory the memory including
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`software and user information,” whereas Motorola’s proposed construction does not specifically
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`do so since these terms are not disputed or are already recited by the claim.
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`First, Arnouse proposes that the reader may work with any type of portable computer,
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`regardless of whether that portable computer has input and output means. As Arnouse’s brief
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`states, while “the reader of claim 1 is necessarily configured to interact with a portable computer
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`without input and output means, nothing in the ‘484 patent precludes this same reader from also
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`{B0924349.1 13925-0001}4
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 6
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 7 of 21
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`being contemporaneously configured to interact with a portable computer with input and output
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`means.” (D.E. 47, p. 14.) However, Arnouse’s proposed construction directly contradicts not
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`only the plain language of the claim, but also statements Arnouse made to the Patent Office to
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`secure the ’484 patent.
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`Specifically, to persuade the Patent Examiner to allow the ’484 patent over a prior art
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`reference, Arnouse stated that “[i]n other words, the portable computer needs the reader for the
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`user to interact with the computer.” Ex. B at 9 (emphasis added). Arnouse further stated that
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`the prior art reference at issue, Hogdahl, “does not disclose or suggest that the computer lacks
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`input and output means for interacting directly therewith” because the “workslate unit [in
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`Hogdahl] is capable of full computing operations without the docking station.” Id. at 9-10.
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`Thus, Arnouse expressly disclaimed a reader designed to interact with a portable computer that
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`has input and output means and thus is capable of full computing operations on its own, because
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`such a portable computer would not need the reader for the user to interact with it. Arnouse’s
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`proposed construction thus is improper. Cardinal, 54 F.3d at 1576 (“The prosecution history
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`limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed
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`during prosecution.”) (citations omitted).
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`Second, Arnouse argues that this preamble phrase requires that “the portable computer
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`needs the reader for the user to interact with the programs, hardware, and user information of the
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`portable computer.” Again, during prosecution, Arnouse stated that “the portable computer
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`needs the reader for the user to interact with the computer” without these additional
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`qualifications. Ex. B at 9. Arnouse’s additional language is nowhere found in the specification
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`or prosecution history, and further is unclear and would merely confuse matters by raising
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`questions over what on the portable computer qualifies as “programs, hardware, and user
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`{B0924349.1 13925-0001}5
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 7
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 8 of 21
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`information.” In fact, Arnouse’s construction is at odds with the patent’s disclosure, which
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`places no such limitations on the user’s interaction with the portable computer. The ‘484 patent
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`broadly provides that interacting with a computer means being able to access the “software,
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`hardware, or other functionality such as sounds, visuals, etc.” Ex. C, ’484 patent, col. 5, l. 67 to
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`col. 6, 1. 2 (emphasis added). Yet, Arnouse asks this Court to substitute “user information” in
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`the place of “other functionality such as sounds, visuals, etc.” Motorola’s proposed construction
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`is that interacting simply means being able to access the computer in any fashion, consistent with
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`the disclosures of the ’484 patent.
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`Third, Arnouse includes in its construction that the portable computer “includes a
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`connector and a memory the memory including software and user information.” There is no
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`need to add this additional language. Motorola does not dispute that each of the accused
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`smartphones has connectors and memory including software and user information. Furthermore,
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`claim 1 already elsewhere recites “a connector for connecting to the portable computer.”
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`Copying this limitation into the definition of a different part of the claim is redundant, imprecise,
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`and unnecessary.
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`Motorola’s construction is fully supported by the intrinsic record of the ’484 patent, in
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`particular Arnouse’s crystal-clear statement during prosecution that “the portable computer needs
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`the reader for the user to interact with the computer” because the portable computer does not
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`have input and output means. Ex. B at 9. Arnouse simply cannot apply its ’484 patent to
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`lapdocks that work with smartphones which, it concedes, have input and output means. Thus,
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`Arnouse’s proposed constructions that seek to do so should be rejected.
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`{B0924349.1 13925-0001}6
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 8
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 9 of 21
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`2.
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`“wherein the portable computer excludes means for a user to interact
`directly with the portable computer” (Claim 15)
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`Claim Term
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`Claim 15: wherein the
`portable computer excludes
`means for a user to interact
`directly with the portable
`computer
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`Motorola’s Proposed
`Construction (emphasis
`added)
`By itself the portable
`computer cannot provide
`information to a user or
`receive information from a
`user. In other words, the
`portable computer needs the
`reader for the user to interact
`with the computer.
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`Arnouse’s Proposed
`Construction (emphasis
`added)
`The portable computer needs
`the reader for the user to
`interact with the programs,
`hardware, and user
`information of the portable
`computer.
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`
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`This claim phrase is similar to the language in the preamble of claim 1 which recites “a
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`portable computer without input and output means for interacting directly therewith.”
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`Accordingly, Motorola has construed the phrase similarly. See Section III.A.1 above.
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`Motorola’s proposed construction should be adopted by the Court for the same reasons.
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`3.
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`“input and output means”, “input or an output device”, “input
`device” and “output device” (Claims 1 and 15)
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`Claim Term
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`Claim 1: input and output
`means
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`Motorola’s Proposed
`Construction (emphasis
`added)
`Any component that allows a
`portable computer to receive
`information from or provide
`information to a user,
`including but not limited to, a
`keyboard, keypad, button,
`display, touch screen, speaker,
`webcam, microphone, or
`headphone jack.
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`Arnouse’s Proposed
`Construction (emphasis
`added)
`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.
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`{B0924349.1 13925-0001}7
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 9
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 10 of 21
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`Claim 1: input or an output
`device
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`Claim 15: input device
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`Claim 15: output device
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`Any component that allows
`the reader to receive
`information from or provide
`information to a user,
`including but not limited to, a
`keyboard, keypad, button,
`display, touch screen, speaker,
`webcam, microphone, or
`headphone jack.
`
`Any component that allows
`the reader to receive
`information from a user,
`including but not limited to, a
`keyboard, keypad, button,
`touch screen, webcam, or
`microphone.
`
`Any component that allows
`the reader to provide
`information to a user,
`including but not limited to, a
`display, touch screen, speaker,
`or headphone jack.
`
`Any component that allows
`the reader 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, a
`display, touch screen, speaker,
`webcam, microphone, or
`headphone jack.
`Anything that allows the
`reader to interact directly with
`the programs, hardware, and
`user information of the
`portable computer by
`receiving information from a
`user including but not limited
`to, a keyboard, keypad, touch
`screen, webcam, or
`microphone.
`Anything that allows the
`reader to interact directly with
`the programs, hardware, and
`user information of the
`portable computer by
`providing information to a
`user, including but not limited
`to, a display, touch screen,
`speaker, or headphone jack.
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`Motorola construes an input or output means/device1 to allow the “portable computer to
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`receive information from or provide information to a user.” Arnouse would add that the input or
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`output means/device allows “the portable computer to interact directly with the programs,
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`hardware, and user information of the portable computer by receiving information from or
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`providing information to a user.” (emphasis added). Arnouse’s construction again introduces
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`the concept of interacting with “the programs, hardware, and user information of the portable
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`1 Neither Party believes that the disparity in wording between the use of “means” in claim 1 and “device” in claim
`15 changes the intended meaning of the phrases, and both believe these elements should be construed the same. See
`(D.E. 47, p. 20).
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`{B0924349.1 13925-0001}8
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 10
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 11 of 21
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`computer” rather than merely interacting with the portable computer in any fashion, and this is
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`neither clear nor supported by the ’484 patent, as shown above.
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`Motorola’s proposed construction accurately represents what an input or output means or
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`device does, i.e. it allows a portable computer to receive information from or provide
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`information to a user. Motorola’s construction is supported by both common sense and the
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`specification of the ’484 patent, which in claim 3 defines the terms by listing various input
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`devices (“a keyboard, a keypad, a webcam, a touch screen, a microphone, a PDA and a video
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`recorder”) that receive information from a user, as well as various output devices (“a display and
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`speakers”) that provide information to a user.
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`In contrast, Arnouse’s construction overcomplicates matters by stating that an input or
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`output device allows a “reader to interact directly with the programs, hardware, and user
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`information of the portable computer by receiving information from or providing information to
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`a user.” (emphasis added). But nowhere does the patent reflect a user is limited to interacting
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`with these items. In fact, Arnouse explains in its ’484 patent that in addition to hardware and
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`software, a user may interact with other functionality such as sounds, visuals, etc. Ex. C at col.
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`5, l. 63 to col. 6, l. 2. Thus, Arnouse’s proposed construction would not cover functionality that
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`Arnouse expressly described in its ’484 patent (e.g. “sounds”). See id. Motorola’s construction
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`covers such functionality by recognizing, as does the ’484 patent by reciting a long list of
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`possible such means/devices (see, e.g., claim 3), that anything that allows a user to interact with
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`a portable computer in any fashion is an input or output means or device.
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`Finally, Arnouse includes in its construction that the input or output means/device allows
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`the portable computer or reader to “interact directly.” This is unnecessary and duplicative, as
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`this same phrase is recited later in claims 1 and 15. For example, claim 1 recites a “reader
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 11
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 12 of 21
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`configured to interact with a portable computer without input and output means for interacting
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`directly therewith” and claim 15 recites “wherein the portable computer excludes means for a
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`user to interact directly with the portable computer.” (emphasis added). Including “interact
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`directly” in the construction when it is already recited by the claim only serves to complicate the
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`construction.
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`Further, both Motorola’s and Arnouse’s constructions include components that may
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`constitute an input and an output means/device based on the express language in the ’484 patent,
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`which describes an input/output device as “a keyboard, display, mouse, speakers, etc.” Ex. C at
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`col. 6, ll. 6-7; (D.E. 47, p. 16). Thus, both constructions include the same list of devices that may
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`be an input means/device and an output means/device. The only issue is whether such devices
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`may allow a user to interact in any fashion with the portable computer (as Motorola advocates),
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`or instead merely allow a user to interact with the “programs, hardware, and user information” of
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`the portable computer (as Arnouse advocates). Because nothing in the patent compels the
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`narrower reading Arnouse urges, Motorola’s proposed construction should be adopted.
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`B. “non-functioning shell” (Claims 1 and 15)
`
`Claim Term
`
`Claim 1 and Claim 15: non-
`functioning shell
`
`Motorola’s Proposed
`Construction
`non-working device
`
`Arnouse’s Proposed
`Construction
`means that the reader can
`access the programs,
`hardware, and user
`information stored on the
`portable computer when
`connected thereto, and ceases
`to function and does not retain
`any user information when not
`connected to the portable
`computer.
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`Arnouse adds unnecessarily complicated language to construe a two-word phrase using
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`38 words, many of which are found already in the claim. Motorola does not believe that
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 12
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 13 of 21
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`construction of “non-functioning shell” is needed; however, if construed, Motorola proposes a
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`simple construction of “non-working device.”
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`Specifically, the ’484 patent requires that the reader be a non-working device when not
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`connected to the portable computer by stating that “the reader is a non-functioning ‘shell’
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`without the pocket PC, however, when they are connected the system becomes a fully functional
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`personal computer.” ’484 patent, Abstract. The specification also states that “[t]he portable
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`computer reader is a ‘shell’ without the portable computer and, therefore, is inoperable for
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`performing computing functions without the portable computer.” Ex. C at col. 6, ll. 10-12.
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`Thus, the specification of the ’484 patent explicitly states that, when not connected to a portable
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`computer, the reader is inoperable, or in other words, is a non-working device.
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`Arnouse reads Motorola’s proposed construction in total isolation, and completely
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`ignores the word “device.” This leads Arnouse to the conclusion that a non-working device
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`“could consist of a block of wood that the portable computer sits on top of.” (D.E. 47, p. 23.)
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`But the absurdity of Arnouse’s argument is readily apparent when the term is considered in
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`context of the other claim language that describes what the reader – which, after all, the claims
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`make clear is the non-functioning shell – must do. For example, claim 1 requires that the reader
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`have “a connector for connecting to the portable computer.” It is unclear how a block of wood
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`would have “a connector for connecting to the portable computer.” Claim 1 also recites that the
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`reader has a “housing [that] is configured to provide direct user interaction with the portable
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`computer when the portable computer and the reader are connected.” No rational person would
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`argue that a block of wood could provide direct user interaction to the portable computer.
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`Arnouse then argues that Motorola’s construction “would make the power supply or
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`power cord equivalent to the portable computer, rendering the term ‘portable computer’
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`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 13
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`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 14 of 21
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`nonsensical.” (D.E. 47, p. 23.) First, the claim limitation “non-functioning shell” applies to the
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`reader, not the portable computer. In this context, a power supply or a power cord could not
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`serve as a reader because it does not, as the claims require, allow the user to interact directly with
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`the portable computer. Thus, Arnouse’s criticism is misplaced. When viewed in context of the
`
`claims, specification, and other intrinsic evidence, Motorola’s proposed construction (to the
`
`extent one is even necessary) is accurate.
`
`C. “wherein the readers are configured so that they will not operate with a
`computer other than a portable computer of the system” (Claims 1 and 15)
`
`
`
`Claim Term
`
`Claim 1 and Claim 15:
`wherein the readers are
`configured so that they will
`not operate with a computer
`other than a portable computer
`of the system.
`
`
`
`Motorola’s Proposed
`Construction
`wherein the reader is designed
`to operate with only a portable
`computer that does not have
`input and output means. In
`other words, the portable
`computer needs the reader for
`the user to interact with the
`computer.
`
`Arnouse’s Proposed
`Construction
`means that the reader has a
`non-universal design that
`limits the types of portable
`computers that may be used
`with the reader.
`
`The dispute with regard to this claim limitation is whether it means that the reader may
`
`only work with a portable computer that lacks input and output means, as Motorola argues, or
`
`whether instead the reader must merely have some “non-universal design” that limits which
`
`portable computers may be used, as Arnouse argues. Arnouse’s proposed construction ignores
`
`the limitation in the preamble that the reader is configured to interact “with a portable computer
`
`without input and output means.” In contrast, Motorola’s proposed construction defines this
`
`phrase as Arnouse did during prosecution, namely, that “the portable computer needs the reader
`
`for the user to interact with the computer.” Ex. B at 9. Specifically, “the system” in this claim
`
`phrase refers to the system introduced in the preamble of claim 1 – a “reader configured to
`
`interact with a portable computer without input and output means for interacting directly
`
`{B0924349.1 13925-0001}12
`
`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 14
`
`

`
`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 15 of 21
`
`
`
`therewith.” ’484 patent, claim 1 (emphasis added). Thus, a portable computer “of the system”
`
`must lack input and output means, as Arnouse argued to the Patent Office to obtain its patent.
`
`Arnouse incorrectly argues that this limitation instead broadens the claim to encompass
`
`any portable computer that will operate with the reader, regardless of whether that portable
`
`computer has input and output means. Again, however, that is not what Arnouse told the Patent
`
`Office to obtain its patent, and Arnouse cannot now ignore the arguments it made during
`
`prosecution. Cardinal, 54 F.3d at 1576 (“The prosecution history limits the interpretation of
`
`claim terms so as to exclude any interpretation that was disclaimed during prosecution.”)
`
`(citations omitted).
`
`Arnouse also contends that Motorola’s proposed construction “ignores a central tenant
`
`[sic] of patent drafting, which requires that new claim elements are preceded by the indefinite
`
`article ‘a’ or ‘an’ but when an element is referred to a second time within a claim then it is
`
`anteceded by the definite article ‘the’ or the word ‘said’ so as to indicate that the element of the
`
`same as the prior element.” (D.E. 47, p. 26.) But it is Arnouse that ignores this rule. The term
`
`at issue recites “of the system.” Using common rules of construction involving antecedent basis,
`
`the system must already have been introduced in the claim, i.e., the article “the” connotes that the
`
`element has already been introduced earlier in the claim. (See id. at 26 (citing ROBERT C. FABER,
`
`Faber On Mechanics of Patent Claim Drafting, 6th ed. (August 2010) § 3.3)). Indeed, in claim
`
`15, the language “the system” in the claim refers back for antecedent basis to the language “a
`
`computing system” in the preamble, which as the claim explains comprises a reader and a
`
`portable computer that lacks a way for the user to interact directly therewith.
`
`Although the exact phrase “the system” is not previously used in claim 1, Motorola’s
`
`construction logically recognizes (as would a person of ordinary skill in the art) that “the system”
`
`{B0924349.1 13925-0001}13
`
`Petitioner Motorola Mobility LLC - Exhibit 1015 - Page 15
`
`

`
`Case 5:11-cv-00155-cr Document 50 Filed 08/13/12 Page 16 of 21
`
`
`
`is the combination of the reader and the portable computer, previously introduced in the
`
`preamble. Thus, the system mentioned at the end of claim 1 is the same system discussed at the
`
`beginning, a reader and a portable computer that lacks input and output means. This makes
`
`sense since, as Arnouse told the Patent Office, the user needs the reader to interact with the
`
`portable computer in the invention of the ’484 patent.2
`
`Another problem with Arnouse’s construction is that it provides no meaningful limits on
`
`the claim language because no connector has a universal design and all require a complementary
`
`connector. For example the three prong plug found on every device that plugs into a 120-volt
`
`power socket in the U.S. is widespread, but it is still non-universal because it will not plug into
`
`European power outlets. The same is doubly true for computer connectors, as there are a much
`
`broader array of possible connectors, many of which are not universal (e.g. a user cannot plug a
`
`VGA cable into a USB port). Furthermore, the ’484 patent does not state that the “reader has a
`
`non-universal design” as Arnouse’s construction would provide. But it does describe universal
`
`connectors for connecting the reader