Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 1 of 16
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF VERMONT
`
`
`ARNOUSE DIGITAL DEVICES CORP.,
`
`
`
`Plaintiff,
`
`
`v.
`
`
`MOTOROLA MOBILITY, INC.,
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`Case No. 5:11-cv-155-CR
`
`
`Jury Trial Demanded
`
`
`DEFENDANT MOTOROLA MOBILITY’S SUR-REPLY CLAIM CONSTRUCTION
`BRIEF
`
`
`
`
`
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 1
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 2 of 16
`
`
`
`I.
`
`II.
`
`A.
`
`SUMMARY ................................................................................................................... 1
`
`ARGUMENT ................................................................................................................. 1
`
`Input/Output Related Terms ........................................................................................... 1
`
`1.
`The Plain Meaning of “Without Input and Output Means” Supports Motorola’s Claim
`Construction.............................................................................................................................. 1
`
`2.
`
`3.
`
`B.
`
`C.
`
`Arnouse Disclaimed Portable Computers with Input or Output Means ........................ 3
`
`Whether the Amendment was Necessary is Irrelevant ................................................... 5
`
`“interacting directly therewith” (Claim 1) .................................................................... 7
`
`“non-functioning shell” (Claims 1 and 15) ................................................................... 8
`
`D.
`“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) .......................................... 9
`
`E.
`wherein the reader and portable computer are configured to become a fully
`functioning computer when connected” (Claim 15) ............................................................... 10
`
`F.
`
`The Accused Devices Should Be Kept in Mind When Construing Claim Terms ......... 11
`
`III. CONCLUSION ............................................................................................................ 13
`
`
`
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 2
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 3 of 16
`
`
`
`
`
`I.
`
`SUMMARY
`
`Defendant Motorola Mobility LLC, formerly known as Motorola Mobility, Inc.,
`
`(“Motorola”) respectfully submits its Sur-Reply Claim Construction Brief addressing the
`
`disputed claim terms in U.S. Patent No. 7,516,484 (“patent-in-suit” or “the ’484 patent”).
`
`Plaintiff Arnouse Digital Devices Corp. (“Arnouse”) has alleged that Motorola lapdocks that can
`
`be paired with certain Motorola smartphones infringe claims 1, 3, 7, 15, 16, 18, and 20 of the
`
`patent-in-suit. (Compl. D.E. 4 at ¶ 6, 12-13; D.E. 31).
`
`The primary issue in dispute here is the meaning of “a portable computer without input
`
`and output means for interacting directly therewith” as recited by claim 1, and similar language
`
`recited by claim 15. Arnouse argues that its claims, which require a portable computer without
`
`input and output means, cover a portable telephone that has input and output means (e.g. buttons,
`
`speakers, and a touch-screen). Arnouse’s contention ignores the plain meaning of the phrase
`
`“without input and output means,” the statements Arnouse made to the patent Office to obtain its
`
`patent, and black letter claim construction law. Thus, Arnouse’s proposed construction of this
`
`claim term should be rejected, and Motorola’s proposed constructions should be adopted.
`
`II.
`
`ARGUMENT
`
`A. Input/Output Related Terms
`
`1. The Plain Meaning of “Without Input and Output Means” Supports
`
`Motorola’s Claim Construction
`
`Arnouse contends that Motorola’s central argument is that Arnouse disclaimed claim
`
`scope by presenting arguments during prosecution. (D.E. 51 at p. 4). While this is indeed one of
`
`the arguments Motorola presented, it is not the only one. First, Motorola notes that the plain
`
`meaning of “a portable computer without input and output means for interacting directly
`
`1
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 3
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 4 of 16
`
`
`
`therewith” is 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. Thus, even without
`
`recourse to the prosecution history Motorola’s construction is correct. See Computer Docking
`
`Station Corp. v. Dell, Inc., 519 F.3d 1366, 1373 (Fed. Cir. 2008) (“Claim terms are generally
`
`given their ordinary and customary meaning, which 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.’”) (quoting Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citations omitted)).
`
`Second, the prosecution history makes clear that the reader is configured to interact with
`
`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. Specifically, as Arnouse stated
`
`during prosecution, “[i]n other words, the portable computer needs the reader for the user to
`
`interact with the computer.” Response to Office Action filed February 11, 2009, at 9 (emphasis
`
`added). Arnouse’s statements during prosecution should be used in interpreting the claim terms
`
`in dispute, regardless of whether they arise to the level of a disclaimer. In interpreting a claim,
`
`“the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the
`
`claims, the specification and, if in evidence, the prosecution history.” Computer Docking
`
`Station, 519 F.3d at 1373 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996)). The Federal Circuit has also recognized that, “the prosecution history can
`
`often inform the meaning of the claim language by demonstrating how the inventor understood
`
`the invention and whether the inventor limited the invention in the course of prosecution, making
`
`the claim scope narrower than it would otherwise be.” Phillips, 415 F.3d at 1317 (citations
`
`omitted). Thus, even if there were no disclaimer, this Court should not adopt any construction
`
`2
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 4
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 5 of 16
`
`
`
`that allows the portable computer to have input and output means since the prosecution history
`
`supports a contrary meaning.
`
`2. Arnouse Disclaimed Portable Computers with Input or Output Means
`
`In addition, Arnouse has disclaimed coverage of any portable computer that has input and
`
`output means. Statements made during prosecution of an application can affect the scope of the
`
`claims. See Computer Docking Station, 519 F.3d at 1374; Rexnord Corp. v. Laitram Corp., 274
`
`F.3d 1336, 1343 (Fed. Cir. 2001). In particular, “a patentee may limit the meaning of a claim
`
`term by making a clear and unmistakable disavowal of scope during prosecution.” Computer
`
`Docking Station, 519 F.3d at 1374 (quoting Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d
`
`1123, 1136 (Fed. Cir. 2006)). For example, an Applicant limits the scope of a claim term by
`
`“clearly characterizing the invention in a way to try to overcome rejections based on prior art.”
`
`Computer Docking Station, 519 F.3d at 1374; see, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc.,
`
`357 F.3d 1340, 1349 (Fed. Cir. 2004) (limiting the term “transmitting” to require direct
`
`transmission over telephone line because the patentee stated during prosecution that the
`
`invention transmits over a standard telephone line, thus disclaiming transmission over a packet
`
`switched network); Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1372 (Fed. Cir. 2003)
`
`(finding the patentee expressly disavowed floor paneling systems without “play” because the
`
`applicant cited the feature during prosecution to overcome prior art); Bell Atl. Network Servs. v.
`
`Covad Commc’ns Group, Inc., 262 F.3d 1258, 1273-75 (Fed. Cir. 2001) (limiting operation of
`
`the “transceiver” to the three stated modes because of clearly limiting statements made by the
`
`applicant to try to overcome a prior art rejection).
`
`Computer Docking Station is particularly relevant here, and not just because it relates to
`
`similar technology. 519 F.3d 1366. In Computer Docking Station the court found that “portable
`
`computer” as recited in the preamble means “a computer without a built-in display or keyboard” due
`
`3
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 5
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 6 of 16
`
`
`
`to prosecution statements distinguishing prior art as “requiring a portable display and keyboard,”
`
`unlike the invention at issue. Id. at 1376. Specifically, the Applicants in Computer Docking Station
`
`argued that “the microprocessor interfaces with several peripheral devices including a keyboard,
`
`display, modem, serial and parallel port devices, a power source, etc. The Applicants' system
`
`provides all of the interfaces for these devices at a set of interface connectors on the rear bezel of
`
`the housing.” Id. And that “[a] single connector to implement all of the interfaces provides for
`
`easy connection and disconnection and may be used to advantage with lap-top computers as
`
`well. For example, the lap-top system of Herron, et al. docks to several connectors making it
`
`difficult to align the connectors before docking.” Id. at 1377.
`
`These statements are just as clear and unambiguous as Arnouse’s statements that
`
`“Hogdahl does not disclose or suggest that the computer lacks input and output means for
`
`interacting directly therewith” because the “workslate unit [in Hogdahl] is capable of full
`
`computing operations without the docking station.” Response to Office Action filed February
`
`11, 2009, at 9-10. And if there were any doubt, Arnouse’s statement that “[i]n other words, the
`
`portable computer needs the reader for the user to interact with the computer” puts the matter
`
`to rest. Id. at 9 (emphasis added). By making these statements, Arnouse “limit[ed] the meaning
`
`of a claim term by making a clear and unmistakable disavowal of scope during prosecution” to
`
`eliminate from the claims any reader that worked with a portable computer having input or
`
`output means. Computer Docking Station, 519 F.3d at 1374 (quoting Purdue Pharma, 438 F.3d
`
`at 1136).
`
`Arnouse cannot obtain a patent by distinguishing its claimed invention from the prior art,
`
`then assert in litigation that its patent covers devices that have the same feature found in the prior
`
`art. Prosecution disclaimer “protects the public’s reliance on definitive statements made during
`
`prosecution” by “precluding patentees from recapturing through claim interpretation specific
`
`4
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 6
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 7 of 16
`
`
`
`meanings [clearly and unmistakably] disclaimed during prosecution.” Computer Docking
`
`Station, 519 F.3d at 1374-75 (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-
`
`24 (Fed. Cir. 2003) (citing in part Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211,
`
`220-21 (1940))). Thus, prosecution disclaimer “protects the right of competitors to rely on
`
`representations made by the patentee during prosecution to guide their conduct.” See Computer
`
`Docking Station, 519 F.3d at 1379; Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1372
`
`(Fed. Cir. 2005).
`
`Here, Arnouse made statements during prosecution that would lead a competitor to
`
`believe that the claims are clearly and unmistakably limited to readers designed to interact with
`
`portable computers without input and output means for interacting directly therewith, since the
`
`user needs the reader to interact with the computer – and not with phones that plainly have input
`
`and output means. Arnouse now asks the Court to interpret the claims to permit it to recapture
`
`the very portable computers at issue in the Hogdahl reference, which it had to distinguish to
`
`obtain its patent. “Claims should not be construed ‘one way in order to obtain their allowance
`
`and in a different way against accused infringers.’” Computer Docking Station, 519 F.3d at 1375
`
`(quoting Chimie v. PPG Indus., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (citations omitted)). Thus,
`
`public policy and the law prohibit Arnouse’s proposed claim constructions.
`
`3. Whether the Amendment was Necessary is Irrelevant
`
`Arnouse argues that its statement that “Hogdhal does not disclose or suggest that the
`
`computer lacks input and output means for interacting directly therewith” does not limit the
`
`scope of the patent’s claims because the limitation “is unnecessary to distinguish the patentees’
`
`invention from Hogdahl.” (D.E. 51 at pp. 7-8). This is contrary to the record and the arguments
`
`made by Arnouse during prosecution. For example, the U.S. Patent Office allowed the patent
`
`5
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 7
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 8 of 16
`
`
`
`shortly after Arnouse filed the response to the Office Action discussed above. Furthermore, in
`
`the Notice of Allowability, the Office stated that one of the reasons for allowance was that “[t]he
`
`prior art of record does not teach or render obvious the limitations as recited in independent
`
`claims 1, 8, & 16, specific to the ‘reader configured to interact with a portable computer without
`
`input and output means for interacting directly therewith . . . .’” Notice of Allowability, mailed
`
`February 25, 2009, at 2-3. Thus, the statements Arnouse made during prosecution were plainly
`
`necessary to obtain its patent.
`
`Nevertheless, even assuming otherwise, patentees are “not allowed to assert that claims
`
`should be interpreted as if they had surrendered only what they had to.” Norian Corp. v. Stryker
`
`Corp., 432 F.3d 1356, 1362 (Fed. Cir. 2005); see Andersen Corp. v. Fiber Composites, LLC, 474
`
`F.3d 1361, 1374 (Fed. Cir. 2007). For example, a “disavowal, if clear and unambiguous can lie
`
`in a single distinction among many.” Computer Docking Station, 519 F.3d at 1377 (holding that
`
`applicants clearly and unambiguously disavowed an interpretation of “portable computer” that
`
`would encompass a computer with a built-in display or keyboard even though applicants
`
`distinguished their invention from the prior art in multiple ways during prosecution). Thus, an
`
`applicant can disavow particular aspects of a claim term even if the applicant distinguished their
`
`invention from the prior art in many ways. See id.
`
`In its brief, Arnouse cites Northern Telecom Ltd v. Samsung Electric Co., as supporting
`
`its position that “prosecution disclaimer did not ‘support the judicial narrowing of a clear claim
`
`term’ because the inventors’ statements were amenable to multiple reasonable interpretations.”
`
`215 F.3d 1281, 1294 (Fed. Cir. 2000); (D.E. 51 at p. 5). But this ignores that the reason the
`
`Court in Northern Telecom declined to narrow the claim term because there it was the case that
`
`“[t]he inventors [did] not specify (except in paragraph 3, of course) how the references are
`
`6
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 8
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 9 of 16
`
`
`
`‘totally different.’” Northern Telecom, 215 F.3d at 1294. For example, the Court noted “it could
`
`be any number of other unstated reasons. Like the district court, we simply cannot tell.” Id. at
`
`1294. In contrast Arnouse made its distinction from the prior art plain by arguing that Hogdahl
`
`disclosed a portable computer with input and output means and therefore capable of full
`
`computing operations without the docking station, whereas Arnouse claimed a portable computer
`
`without input and output means. Specifically, Arnouse argued, “Hogdahl does not disclose or
`
`suggest that the computer lacks input and output means for interacting directly therewith”
`
`because the “workslate unit [in Hogdahl] is capable of full computing operations without the
`
`docking station.” Response to Office Action filed February 11, 2009, at 9-10.
`
`B. “interacting directly therewith” (Claim 1)
`
`Arnouse argues that Motorola does not provide any definition for interacting directly
`
`therewith. (D.E. 51 at p. 10). This is incorrect. As stated in its opening brief, Motorola’s
`
`proposed construction is that interacting simply means being able to access the computer in any
`
`fashion. (D.E. 50 at p. 8). This is consistent with the disclosure of the ’484 patent, which
`
`broadly provides that interacting with a computer means being able to access the “software,
`
`hardware, or other functionality such as sounds, visuals, etc.” ’484 patent, col. 5, l. 67 to col. 6,
`
`1. 2 (emphasis added).
`
`In contrast, Arnouse proposes a construction that limits this to interaction “with the
`
`programs, hardware, and user information of the portable computer.” (D.E. 47 at p. 19-20).
`
`Effectively, Arnouse asks this Court to substitute “user information” in the place of “other
`
`functionality such as sounds, visuals, etc.” Although Arnouse admits that “user information . . .
`
`is a broad term that would include just this functionality [e.g. sounds, visuals, etc.],” Arnouse
`
`provides no support for why this Court should deviate from the explicit definition found in the
`
`7
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 9
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 10 of 16
`
`
`
`patent specification and adopt Arnouse’s unsupported definition. (D.E. 51 at p. 10). Nor does
`
`Arnouse explain whether its proposed definition would exclude any particular user interaction
`
`from the scope of the claim, and thus it is unclear whether there is any meaningful dispute
`
`between the parties’ constructions. Regardless, Motorola’s proposed construction is more
`
`faithful to the language of the claim and should be adopted.
`
`C. “non-functioning shell” (Claims 1 and 15)
`
`There is no need to construe “non-functioning shell.” But if the term must be construed,
`
`Motorola proposes a simple construction based on the plain meaning, “non-working device.”
`
`Rather than arguing how its long construction will help the jury to better understand the meaning
`
`of “non-functioning shell,” Arnouse instead argues that Motorola’s construction of “non-
`
`functioning shell” is part of a “scheme” to introduce prior art. Arnouse argues that if Motorola is
`
`granted its construction the patent could be invalidated by a clock radio and power supply.
`
`Specifically, Arnouse argues “a power supply fits within the scope of the term portable computer
`
`and a reader could be a clock radio that does not include a power supply.” (D.E. 51 at p. 11).
`
`The absurdity of this argument is apparent, as Arnouse continues to ignore the full context of the
`
`claim language in making it. First, Arnouse’s argument would require that the power supply be a
`
`“portable computer.” And second, it requires that a clock radio “provide direct user interaction
`
`with the [power supply] when the [power supply] and reader are connected.” ’484 patent, claim
`
`1. Neither of these results makes any sense.
`
`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.
`
`8
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 10
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 11 of 16
`
`
`
`D. “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)
`
`Arnouse again argues that despite its statements during prosecution, the reader recited by
`
`claim 1 “is capable of working with computers that both lack input and output means and that
`
`have input and output means.” (D.E. 51 at p. 12). Arnouse presents this position by arguing that
`
`the patentee reintroduced the term “portable computer” a second time, and thus argues that this
`
`portable computer is different from the portable computer in the preamble and therefore can have
`
`input and output means. Such a construction renders the limitation in the preamble completely
`
`meaningless, and improperly ignores what Arnouse told the Patent Office to obtain its patent.
`
`Southwall Techs. Inc. v. Cardinal, 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“The prosecution history
`
`limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed
`
`during prosecution.”) (citations omitted).
`
`Arnouse further argues that though the claim recites “the system” rather than “a system,”
`
`this language does not refer to the reader and portable computer recited by the preamble. 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. (D.E. 47 at p. 26) (citing ROBERT C. FABER, Faber On Mechanics
`
`of Patent Claim Drafting, 6th ed. (August 2010) § 3.3). 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” 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 because, as Arnouse told the Patent Office,
`
`9
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 11
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 12 of 16
`
`
`
`the user needs the reader to interact with the portable computer in the invention of the ’484
`
`patent.
`
`Arnouse attempts to argue that during prosecution it made no statement with regard to the
`
`phrase “wherein the readers are configured so that they will not operate with a computer other
`
`than a portable computer of the system.” Motorola does not argue that Arnouse made such a
`
`statement. Rather, Motorola argues that Arnouse cannot modify this limitation to ignore its
`
`argument that Hogdahl “does not disclose or suggest that the computer lacks input and output
`
`means for interacting directly therewith” because the “workslate unit [in Hogdahl] is capable of
`
`full computing operations without the docking station.” Response to Office Action filed
`
`February 11, 2009, at 9-10. Thus, Arnouse cannot now propose a construction of any term that
`
`would cover a portable computer that has input and output means.
`
`E. wherein the reader and portable computer are configured to become a fully
`
`functioning computer when connected” (Claim 15)
`
`Arnouse ignores that Motorola’s construction ascribes the claim term “become” its plain
`
`meaning, i.e., that neither the reader, nor the portable computer, is a fully functional computer on
`
`its own, but they only become one when connected. By comparison, Hydrogen and Oxygen
`
`combine to become water (H2O), but neither is water by itself. Thus, Motorola’s proposed
`
`construction makes clear that, in Arnouse’s patent, neither the reader nor the portable computer
`
`separately has all of the components of a fully functional computer. In contrast, Arnouse
`
`proposes a construction that does not ascribe any meaning to the word “become.”
`
`Rather than addressing this point, Arnouse instead makes the conclusory and incorrect
`
`statement that “claim 15 does not require that when the portable computer is disconnected from
`
`the reader it lacks any certain functionality or features, as promoted by Defendant.” (D.E. 51 at
`
`10
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 12
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 13 of 16
`
`
`
`p. 14). But claim 15 clearly states that “the reader and portable computer are configured to
`
`become a fully functioning computer when connected.” The plain meaning of this claim is that
`
`the portable computer is not a fully functioning computer until connected with the reader.
`
`Arnouse further states that “[s]ince there is nothing in the specification that supports
`
`Defendant's interpretation, it should be rejected.” (D.E. 51 at p. 14). But one need search the
`
`’484 patent no further than the Abstract to find that “the reader is a non-functioning ‘shell’
`
`without the pocket PC, however, when they are connected the system becomes a fully functional
`
`personal computer.” ’484 patent, Abstract. Thus, even the Abstract of the ’484 patent makes
`
`clear that the reader and the “pocket PC” must be combined in order to become a fully functional
`
`computer. Other portions of the ’484 patent make this even more plain – for example, the
`
`specification states:
`
`Once the portable computer is connected to the portable computer reader,
`preferably, in a plug-and-play style, the system becomes a fully operational
`conventional computer capable of any known computing operation. When the
`portable computer is disconnected from the portable computer reader, the
`portable computer reader once again becomes a shell and the computer cannot
`be directly accessed unless re-connected to the portable computer reader or
`another portable computer reader.
`
`
`’484 patent, col. 6, ll. 12-22 (emphasis added). And, as noted extensively above, during
`
`prosecution Arnouse made this point abundantly clear in distinguishing Hogdahl.
`
`Thus, Motorola’s proposed construction is clearly supported by the specification, follows
`
`the plain meaning of the claim term, and should be granted.
`
`F. The Accused Devices Should Be Kept in Mind When Construing Claim Terms
`
`Finally, in its brief Arnouse complains that the Accused Devices and how they operate
`
`are immaterial to claim construction. However, understanding how the Accused Devices operate
`
`and using them to put into context the dispute between the parties on claim construction helps
`
`11
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 13
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 14 of 16
`
`
`
`focus the Court’s attention on the disputed issues and, thus, is proper. See Wilson Sporting
`
`Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1327 (Fed. Cir. 2006) (“Although the
`
`construction of the claim is independent of the device charged with infringement, it is convenient
`
`for the court to concentrate on those aspects of the claim whose relation to the accused device is
`
`in dispute.” (quoting Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580
`
`(Fed. Cir. 1991)); see also, Typhoon Touch Technologies v. Dell, Inc., 659 F.3d 1376, 1583 (Fed.
`
`Cir. 2011) (“Of course the particular accused product (or process) is kept in mind, for it is
`
`efficient to focus on the construction of only the disputed elements or limitations of the claims.”)
`
`(quoting Scripps, 927 F.2d at 1580). Thus, while courts do not directly look at the features of the
`
`accused devices when determining claim scope, courts do keep in mind the accused devices to
`
`focus on what really matters to the disputed issues of infringement and invalidity. See id.; Lava
`
`Trading, Inc. v. Sonic Trading Mgmt., LLC., 445 F.3d 1348, 1350 (Fed. Cir. 2006) ("Without the
`
`vital contextual knowledge of the accused products or processes, this appeal takes on the
`
`attributes of something akin to an advisory opinion on the scope of the [patent-in-suit].").
`
`Arnouse continues to provide complex and unnecessary constructions for terms that
`
`Motorola does not dispute are present in the accused devices. For example, Motorola does not
`
`dispute that the accused readers are a “non-functioning shell” when not connected to one of the
`
`accused Smartphones. Similarly, with regard to the term “portable computer,” Motorola does
`
`not dispute that the accused Smartphones are “portable computers.” Rather, Motorola argues
`
`that the accused Smartphones do have input and output means. Thus, Motorola does not
`
`understand how construction of “portable computer” or “non-functioning shell” simplifies any
`
`issues in dispute. See Wilson Sporting Goods, 442 F.3d at 1327. The Court should instead focus
`
`on issue of whether the asserted claims cover a portable computer that both parties agree has
`
`12
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 14
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 15 of 16
`
`
`
`input and output means, along with other issues pertinent to disputed questions of infringement
`
`or invalidity. See Hearing on Motion to Dismiss Transcript, at p. 23, l. 20.
`
`III. CONCLUSION
`
`For the foregoing reasons, Motorola respectfully requests that the Court adopt its
`
`constructions of the disputed claim terms of the patent-in-suit.
`
`
`
`Respectfully submitted this 10th day of September 2012.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Samuel Hoar, Jr.
`/s/
`Samuel Hoar, Jr.
`Dinse, Knapp & McAndrew, PC
`209 Battery Street
`P.O. Box 988
`Burlington, VT 05402-0988
`Telephone: (802) 864-5751
`Shoar@Dinse.com
`
`Steven D. Moore
`North Carolina Bar No.: 23367
`Matias Ferrario
`North Carolina Bar No.: 38723
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: (336) 607-7431
`Facsimile: (336) 607-7500
`smoore@kilpatricktownsend.com
`mferrario@kilpatricktownsend.com
`
`
`Attorneys for Defendant Motorola Mobility, LLC.
`
`13
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 15
`
`

`

`Case 5:11-cv-00155-cr Document 52 Filed 09/10/12 Page 16 of 16
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned certifies that all counsel of record who are deemed to have consented to
`
`electronic service are being served with a copy of this document via the Court's CM/ECF system
`
`per Local Rule CV-5(a)(3) on September 10, 2012. Any other counsel of record will be served
`
`by First Class U.S. mail on this same date.
`
`
`
`
`
`
`
`
`
`
`
`/s/
`
`Samuel Hoar, Jr.
`
`
`
`
`
`
`14
`
`Petitioner Motorola Mobility LLC - Exhibit 1017 - Page 16
`
`