[Translation from the German language]
`
`Hogan Lovells International LLP
`Kennedydamm 24, 40476 Dusseldorf
`P.O. Box 32 07 35, 40422 Dusseldorf
`T +49 211 13 68 0
`F +49 211 13 68 100
`www.hoganlovells.com
`
`Advance copy by fax: +49 621 292 1314
`District Court of Mannheim
`- 7th Civil Chamber -
`A1, 1
`68159 Mannheim
`Germany
`
`Dr Andreas von Falck
`Partner / Rechtsanwalt
`andreas.vonfalck@hoganlovells.com
`
`MUN-
`Our ref
`LIB01/KABUSCO/507757.12
`Matter ref
`45785/00173
`
`25 April 2013
`
`We will serve this document.
`
`Rejoinder of the Defendant under 2)
`
`In the matter of
`
`ContentGuard Europa GmbH, legally represented by its managing directors Benjamin G. Wolff
`and R. Gerard Salemme, Mainzer Landstr. 46, 60325 Frankfurt am Main, Germany
`
`- Plaintiff -
`
`REIMANN OSTERRIETH KÖHLER HAFT, Rechtsanwalt Klaus
`Haft,
`Rechtsanwältin
`Dr
`Christine
`Kanz,
`Steinstr. 20,
`40212 Dusseldorf, Germany
`
`legal representative:
`
`versus
`
`ZTE Corporation
`
`- Defendant under 1) -
`
`ZTE Deutschland GmbH,
`legally represented by its managing director Qiuyang Li,
`Am Seestern 18, 40547 Dusseldorf
`
`- Defendant under 2) -
`
`legal representative
`of the Defendant under 2):
`
`Hogan Lovells International LLP, Rechtsanwalt Dr Andreas von
`Falck, Dusseldorf and Rechtsanwalt Dr Steininger, Munich
`
`Case ref. 7 O 280/12
`Hearing date: 3 May 2013
`
`Hogan Lovells International LLP is a limited liability partnership registered in England and Wales with registered number OC323639. Registered office and principal place
`of business: Atlantic House, Holborn Viaduct, London EC1A 2FG.
`
`"Hogan Lovells" is an international legal practice that includes Hogan Lovells International LLP and Hogan Lovells US LLP, with offices in: Alicante Amsterdam Baltimore
`Beijing Berlin Brussels Caracas Colorado Springs Denver Dubai Dusseldorf Frankfurt Hamburg Hanoi Ho Chi Minh City Hong Kong Houston London
`Los Angeles Madrid Miami Milan Moscow Munich New York Northern Virginia Paris Philadelphia Prague Rome San Francisco Shanghai Silicon Valley Singapore
`Tokyo Ulaanbaatar Warsaw Washington DC Associated Offices: Budapest Jakarta Jeddah Riyadh Zagreb.
`
`The word "partner" is used to describe a partner or member of Hogan Lovells International LLP, Hogan Lovells US LLP or any of their affiliated entities or any employee or
`consultant with equivalent standing. Certain individuals, who are designated as partners, but who are not members of Hogan Lovells International LLP, do not hold
`qualifications equivalent to members. A list of the members of Hogan Lovells International LLP is open to inspection at the above address. For more information about
`Hogan Lovells, the partners and their qualifications, see www.hoganlovells.com.
`
`

`

`[Translation from the German language]
`
`- 2 -
`
`we reply as follows, on behalf of the Defendant under 2), to the Plaintiff's reply dated 5 April 2013:
`
`The complaint is neither admissible nor founded. Should the Court, contrary to expectations,
`assume that Patent in Suit 1 is infringed, the proceedings would in any case have to be stayed.
`
` Under section A of this rejoinder, we will demonstrate once again that the complaint is
`subject matter covered by an arbitration agreement and must therefore be dismissed as
`inadmissible.
`
` We make submissions on the fact that the complaint is unfounded in section B. The
`complaint must be dismissed as unfounded due alone to the Plaintiff's lack of standing to
`sue, as the Plaintiff has not proven that it has, as it claims to have, a licence in Patent in
`Suit 1 (section B, part I). Taking as a basis the correct construction of Claim 1 of Patent in
`Suit 1 (cf. section B, part II), in section B, part III we will furthermore demonstrate that
`several features of Claim 1 of Patent in Suit 1 are in fact not infringed by the contested
`embodiments and that consequently the complaint is unfounded for this reason, too.
`
`in section C we will make submissions on our motion to stay the
` Furthermore,
`proceedings asserted in the alternative in our statement of defence and will demonstrate
`that the nullity action filed by the Defendant under 2) against Patent in Suit 1 will in all
`likelihood be successful. By contrast, the arguments put forward by the Plaintiff in its
`reply, in particular against the challenges to novelty of the Defendant under 2), are not
`convincing.
`
`
`
`Lastly, in section D we comment on the auxiliary claims asserted by the Plaintiff, in
`section E we assert the defence of the statute of limitations, and in section F we briefly
`comment, on behalf of the Defendant under 2), on the invalidity of the service on the
`Defendant under 1).
`
`A.
`INADMISSIBILITY OF THE COMPLAINT
`
`1.
`
`the German Code of Civil Procedure
`to Sec. 1032 of
`Pursuant
`the Complaint
`is to be dismissed as
`[Zivilprozessordnung – ZPO],
`inadmissible, because in the present case the arbitration agreement
`defence pleaded by the Defendant under 2) is successful. The arguments
`advanced by the Plaintiff in its reply, on the other hand, are not convincing.
`
`507757
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`
`

`

`[Translation from the German language]
`
`- 3 -
`
`2.
`
`Regarding the applicability of the arbitration clause pursuant to Clause 9 of
`the Open Mobile Alliance (OMA) documents (Exhibit HL 1), which are
`referred to here as the Agreement, the Plaintiff first incorrectly states that in
`the case at hand the clause is not applicable if for no other reason than the
`fact that Exhibit HL 1 does not govern the issue in dispute here, namely
`infringement of a patent which may be essential to OMA DRM Standard 1.0.
`In view of the very broad wording of the arbitration clause, which we would
`like to reproduce once again, we cannot concur with this.
`
`"9. Disputes
`
`any dispute arising out of or in connection with this Schedule shall be
`referred to and finally resolved by arbitration under the Rules of
`the
`London Court of International Arbitration, which Rules are deemed to be
`incorporated by reference into this paragraph and therefore the
`Application Form;"
`
`German translation:
`
`"9. Streitigkeiten
`
`jede Streitigkeit aufgrund diesem oder in Zusammenhang mit diesem
`Programm soll der Schiedsgerichtsbarkeit nach den Regeln des London
`Court of
`International Arbitration überwiesen und abschließend durch
`diesen gelöst werden, wobei die Regeln durch Verweis als in diesen
`Absatz und damit in die Application Form aufgenommen gelten;"
`
`(Emphasis by the author)
`
`2.1
`
`2.2
`
`infringement proceedings are not expressly excluded from the scope of
`First of all,
`application of the arbitration clause by the wording of the provision, and the provision does
`not contain any indications that the scope of application might be restricted in such a way,
`either. On the contrary: the very broad phrasing "any dispute" and "in connection with this
`Schedule" alone indicates that OMA, as is customary with this type of clause, intended
`comprehensive settlement of by means of arbitration conflicts between its members and
`affiliated companies [verbundene Unternehmen]
`in connection with patents that are
`(potentially) essential for its standards.
`
`Furthermore, the infringement allegation in the case at hand is in connection with the
`Agreement and thus constitutes a legal dispute which, based on the wording, falls within
`the scope of application of the arbitration clause. Clause 5.7 is the relevant provision of the
`Agreement with which the proceedings at hand are connected.
`It stipulates the
`requirements that must be met by third parties in order to have a claim to the grant of a
`licence for a standard-essential patent and thus, at the same time, the requirements for
`lawful use of this type of patent. This means that if it can be inferred from Clause 5.7 of the
`
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`

`

`[Translation from the German language]
`
`- 4 -
`
`2.3
`
`3.
`
`4.
`
`Agreement that the Defendant under 2) has a right of use with respect to Patent in Suit 1,
`the Plaintiff's infringement allegation fails. Accordingly, the question of whether or not
`Clause 5.7. of the Agreement is applicable to Patent in Suit 1 is decisive for the outcome of
`the infringement proceedings at hand. All things considered, there is a connection between
`Clause 5.7 of the Agreement and the infringement allegation, which is thus covered by the
`scope of application of the arbitration clause.
`
`Furthermore, having the question regarding a claim to the grant of a licence settled by
`means of arbitration pursuant to Clause 5.7 of the Agreement but having the related issue
`of the infringement allegation settled by an ordinary court of law would violate the principles
`of procedural economy. Splitting the proceedings up in this manner cannot have been
`intended by OMA, the author of the arbitration clause.
`
`the
`the arbitration clause and thus the competence of
`the applicability of
`Moreover,
`arbitration tribunal do not require that it has been conclusively established between the
`parties that Patent in Suit 1 is a patent that is essential to the OMA DRM 1.0 standard.
`Rather,
`this is something the arbitration tribunal has to judge itself. For, as already
`discussed, pursuant to Clause 9 of the Agreement, "any dispute" in connection with the
`Agreement is subject to arbitration. The Plaintiff, on its part, is obligated to grant the
`Defendant under 2) a licence pursuant to Clause 5.7 of the Agreement only if Patent in
`Suit 1 is essential to OMA DRM 1.0 standard. Accordingly, the question of standard-
`essentiality – as the Plaintiff itself notes in connection with its infringement argumentation
`by referring to various passages in the OMA DRM standard 1.0 specifications – is also
`connected with the Agreement and, pursuant to Clause 9 of the Agreement, must therefore
`be settled by arbitration.
`
`Contrary to the Plaintiff's submissions in margin nos. 5 and 6 of the reply, as affiliates of
`Microsoft Corporation within the meaning of
`the Agreement
`(hereinafter
`"Affiliated
`Company"), both the Plaintiff's parent company, ContentGuard Holding Inc., and the
`Plaintiff itself are bound by the arbitration clause. The Plaintiff has correctly stated that in
`order to define the term Affiliated Company, pursuant to Clause 1.3 in conjunction with
`Clause 2.1 of the OMA document submitted as Exhibit HL 2, the Agreement refers to the
`term "subsidiary" (hereinafter "Subsidiary"). As the term "subsidiary" is not expressly
`defined, its meaning must be determined by interpreting the Agreement. In that connection,
`the Plaintiff's assertion that there is an allegedly unwritten "minimum requirement" to the
`effect that an OMA member must, in any case, hold the majority of voting shares in the
`Subsidiary and/or Affiliated Company is incorrect. One indication that it is incorrect is the
`fact that the Agreement uses an explicit, different definition for this purported minimum
`requirement. Control of a corporation over
`the majority of shares in voting capital
`corresponds to the definition of the term "control", which is itself defined under the same
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`

`

`[Translation from the German language]
`
`- 5 -
`
`Clause 2.1 of the document submitted as Exhibit HL 2. However, the term "control" defined
`therein and thus the corresponding criterion of control over the voting shares is not present
`in the definition of Affiliated Companies. Furthermore, the legal tradition in almost all legal
`systems is precisely to not make the term "Affiliated Company" contingent on a majority of
`voting shares but to merely regard companies that are affiliated with each other via a
`majority of voting shares as a special case of an affiliated company. In German stock
`corporation law pursuant to Sec. 15 in conjunction with Sec. 16 of the German Stock
`Corporation Act [Aktiengesetz – AktG], for example, a majority shareholding constitutes just
`one of several sub-categories of an Affiliated company. In the case of companies with
`cross-shareholdings, which constitute a further sub-category pursuant
`to Sec. 15 in
`conjunction with Sec. 19 AktG, cross-shareholdings in the shares of the other company of
`as little as 25% +1 are sufficient. We assume that the same applies for the Anglo-American
`legal system, as can be gathered from Section 1159 of the English "Companies Act 2006",
`for example. In that section, too, the term "subsidiary" is defined more specifically using
`certain categories – similarly to Sec. 15 AktG – with majority shareholding again
`constituting only a special category. Accordingly, it must be assumed that the Agreement
`assumes a company to be an Affiliated Company even if an OMA member holds only a
`minority interest in that company. It is undisputed (margin no. 6 of the reply) that Microsoft
`Corporation has held a corresponding share in the Plaintiff's parent company at least since
`early 2007. As a result, the Plaintiff and its parent company, as Affiliated Companies of
`Microsoft Corporation, are also bound by the arbitration clause.
`
`5.
`
`Furthermore, during the period it held shares in the Plaintiff's parent company, Microsoft
`Corporation was a member of OMA. This can be inferred from the information provided on
`the OMA homepage regarding the IPR declarations of its members. In an IPR declaration,
`a member of OMA declares that it is prepared to licence the intellectual property right in
`question to third parties in accordance with the FRAND criteria ("fair, reasonable and non-
`discriminatory") stipulated in Clause 5.7. of the Agreement. The corresponding declarations
`given
`by
`Microsoft
`Corporation
`are
`available
`at
`http://www.openmobilealliance.org/aboutoma/OMA_IPR_Declarations_J_M.aspx.
`A
`screenshot of that web page is submitted as
`
`Exhibit HL 16.
`
`Form this, it follows that in the period from 17 February 2006 to 17 April 2007 Microsoft
`Corporation submitted corresponding declarations related to at least eleven patents and,
`accordingly, was a member of OMA at least during this period. Furthermore, the period
`specified coincides at least partially with the period during which Microsoft Corporation
`was a shareholder of the Plaintiff's parent company.
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`[Translation from the German language]
`
`- 6 -
`
`6.
`
`Lastly, contrary to the Plaintiff's opinion, Clause 1.3 of the Agreement does not stand in the
`way of the application of the arbitration clause either. The provision stipulates that Clause 5
`binds not only members of OMA but also their Affiliated Companies. Accordingly, subject to
`the provisions of Clause 5.7 of the Agreement, third parties also have a claim vis-à-vis
`Affiliated Companies of an OMA member to the grant of a FRAND licence. And while it is
`true that Clause 1.3 does not expressly refer to the arbitration clause in Clause 9 of the
`Agreement, such reference is not required for the arbitration clause to be applicable to
`Affiliated Companies. For, as already stated, the arbitration clause itself covers any dispute
`due to, or in connection with, the Agreement and accordingly also disputes in connection
`with Clause 5.7 of the Agreement. As, pursuant to Clause 1.3, the effects of Clause 5.7 of
`the Agreement also extend to Affiliated Companies, the arbitration clause, by way of
`Clause 5.7, is consequently also binding for the Plaintiff.
`
`B.
`COMPLAINT UNFOUNDED
`
`I.
`
`PLAINTIFF'S LACK OF STANDING TO SUE
`
`The Defendant under 2) denies the Plaintiff's standing to sue for lack of knowledge.
`
`As proof of its alleged standing to sue, the Plaintiff has so far submitted as Exhibit K-A 4 only a
`mere copy of an agreement allegedly concluded between the Plaintiff and the patent proprietor
`ContentGuard Holdings Inc. ("Patent License Agreement and Assignment of Claims"). This
`submission of a mere copy of an alleged agreement is not sufficient as proof of the Plaintiff's
`standing to sue.
`
`In addition, the Defendant under 2) contests that the agreement referred to was validly concluded
`at all. It can be inferred from Exhibit K-A 4 that the alleged agreement was signed for the Plaintiff
`by Mr Benjamin G. Wolff on 24 May 2012. The Defendant under 2) contests for lack of knowledge
`that on 24 May 2012 Mr Benjamin G. Wolff was authorised to represent the Plaintiff. As can be
`seen from the extract from the commercial register submitted by the Defendant under 2) as
`Exhibit HL 4, the appointment of Mr Benjamin G. Wolff as the Plaintiff's managing director was
`not entered in the commercial register until 22 June 2012. The extract from the commercial
`register submitted by the Defendant under 2) (Exhibit HL 4) shows that at the point in time when
`the agreement was signed on 24 May 2012, Mr Norbert Pacho and Ms Stefanie Kabelitz were still
`entered in the commercial register as the Plaintiff's managing directors.
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`507757
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`

`

`[Translation from the German language]
`
`- 7 -
`
`Moreover, the Defendant under 2) contests for lack of knowledge the power of representation of
`Mr Thomas J. Neary, who signed the alleged agreement on behalf of the patent proprietor.
`
`The complaint must therefore be dismissed due to the Plaintiff's lack of standing to sue alone.
`
`II.
`
`CONSTRUCTION OF PATENT IN SUIT 1
`
`7.
`
`Preliminary considerations
`
`7.1 Contrary to the unfounded criticism raised by the Plaintiff in margin no. 9 of the reply, when
`determining the protective scope of Claim 1 of Patent in Suit 1, the Defendant under 2), in
`line with the statutory stipulations, primarily looked at the wording of the claim in dispute. In
`actual fact, it is solely the Plaintiff that can be blamed for construing Patent in Suit 1 in an
`inadmissible manner. In particular, the Plaintiff must bear in mind that the claims of Patent
`in Suit 1 underwent marked changes in the application procedure, meaning that the focus
`of the purported invention has shifted considerably. The result is that a large portion of the
`description and the drawings is of no use for the construction of the main claim as granted.
`For they describe technical aspects that are not reflected anywhere in the claim wording.
`This applies in particular where the description and drawings refer to a system claim with
`more than one repository, for, according to the Patent in Suit, such a system is not claimed
`(in this respect, cf. our statements on p. 12 of the statement of defence).
`
`7.2 We already revealed the weaknesses of the Plaintiff's classification of features in our
`statement of defence, where we explained at the same time why the classification of
`features of the Defendant under 2), which was submitted as Exhibit HL 5, is to be favoured
`over that of the Plaintiff. The Plaintiff denied this in a general manner without commenting
`on the arguments presented by the Defendant under 2). However, it is still the case that
`only the classification of features of the Defendant under 2) enables a differentiated view of
`all features characterising the repository according to the claim, while at the same time
`making it entirely clear that the means for rendering – we assume that this is undisputed
`between the parties – is part of the device and not part of the repository. The Defendant
`under 2) therefore bases the statements presented below in response to the Plaintiff's
`further submissions on the construction of Claim 1 of Patent in Suit 1 once again on its own
`classification of features, submitted as Exhibit HL 5. However, to facilitate work for the
`Court, we will also quote the respective feature designation according to the Plaintiff's
`classification where it deviates from that of the Defendant under 2).
`
`8.
`
`Features 1 to 1.1.1 (Features 1 and 1.1)
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`[Translation from the German language]
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`- 8 -
`
`With respect to the features
`
`"[1] A device comprising a
`
`[1.1] repository
`
`[1.1.1] for storing digital works and …"
`
`it appears, based on the Plaintiff's new submissions in margin no. 13 of the reply, that the
`parties agree that a repository it not just a purely function-logical construct but must
`always be embodied by hardware. In margin no. 31 et seq. of its statement of complaint,
`the Plaintiff had taken a different view of this.
`
`8.1 However, we cannot concur with the Plaintiff's line of argument that the claim in dispute
`does not stipulate in any way how the spatial-physical
`layout of the repository must be
`designed. The Defendant under 2) has already made extensive submissions in this respect
`on pages 13 to 17 of its statement of defence. In this connection, the Plaintiff fails to
`recognise in particular that the storing function of the repository cannot be provided by just
`any kind of storage means. For, how else could one understand in particular Feature 1.6,
`which, with respect
`to the storing function characterising the repository, requires a
`corresponding storage means, i.e. a physical unit and thus a specific embodiment of the
`repository. In actual fact, Feature 1.6 suggests to the person skilled in the art that the
`repository is embodied by very specific storage hardware units (for example, a memory
`core of the kind depicted on p. 16 of the statement of defence).
`
`the
`the Defendant under 2) upholds the view set out on page 16 of
`8.2 Consequently,
`statement of defence that the repository is embodied by storage hardware components that
`are embedded in a specific storage device, for example an SD card. This understanding is
`confirmed by Feature 1.4, which teaches that the repository (i.e. the storage hardware
`components) is embedded in the (storage) device. By contrast, the Plaintiff's opinion to the
`contrary, put forward in margin no. 16 of the reply, that the storage medium is embedded in
`the remaining hardware and that said hardware, along with software provided, forms the
`repository has no basis in the wording of the claim in dispute. According to the teaching of
`Feature 1.4, the storage medium is not embedded in the repository; rather, the repository is
`embedded in the device.
`
`8.3
`
`Furthermore, the repository according to the patent must be secured against access. For
`sentence 1 para. [0050] of the patent specification in suit stipulates that the hardware
`embodiment of a repository must be enclosed in a secure housing which physically protects
`the repository against access from outside. Where the Plaintiff maintains that the secure
`housing requirement applies only for a preferred exemplary embodiment, it errs.
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`507757
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`

`

`(a)
`
`(b)
`
`[Translation from the German language]
`
`- 9 -
`
`Contrary to the Plaintiff's statements, it is not possible to infer purely formalistically
`from para. [0015] of the patent specification in suit that the quoted sentence 1 of
`para. [0050] merely relates to a preferred exemplary embodiment. Instead, the
`content of para. [0050] must be considered in its own right.
`
`the Plaintiff
`By making general reference to dependent Claims 2, 5 and 6,
`attempts to refute that Main Claim 1 of Patent in Suit 1 requires that the storage
`medium and thus the repository itself must be secured against user access.
`However, the wording of these claims does not allow such a conclusion to be
`drawn. What is correct is that the claims provide a removable storage unit which a
`user can thus access in principle. However, Claim 2 assumes that the storage
`means cannot be equated to an interchangeable storage unit and that it in fact
`has both a removable storage unit and a storage unit which constitutes an integral
`part. This can be gathered from Claim 2 alone, according to which the storage
`means "comprises" a removable storage, as opposed to constituting it.
`Furthermore, Claims 5 and 6, too, assume the existence of two different storage
`units, as was ultimately correctly recognised in connection with the construction of
`Feature 1.1.2 (Feature 1.2) by the Plaintiff, too (cf. margin no. 28 of the reply).
`Thus, Claims 2, 5 and 6 precisely make it clear that – in this respect,
`the
`Defendant hereby makes its previous statements more precise – at least part of
`the storage medium of
`the repository within the meaning of Claim 1 must
`constitute an integral part which accordingly can and, according to para. [0050] of
`the patent specification in suit, must be protected against access by a secure
`housing. Lastly, the Plaintiff’s understanding also contradicts the object of Patent
`in Suit 1. For if, according to the Patent in Suit, it were possible to store both the
`digital work and the corresponding rights of use together on a storage medium
`that can be removed by the user at will – which the Plaintiff assumes is the case –
`the alleged invention would fail to achieve its purpose, namely improved control
`over use of digital works (cf. para. [0008] of the patent specification in suit).
`
`(c)
`
`Finally, paras. [0057] to [0059] of the patent specification in suit do not contradict
`the understanding of
`the Defendant under 2) either, according to which the
`hardware embodiment of the repository according to the claim must be enclosed
`in a secure housing according to para [0050]. In actual fact, paras. [0057] to
`[0059] of the patent specification in suit cannot be used for the purposes of
`construing the claim in dispute at all.
`
`(i)
`
`First of all, the Defendant under 2) does not share the Plaintiff's view that
`paras. [0057] to [0059] explain in greater detail the physical access control
`described in para. [0050]. Para. [0050] sentence 1 of
`the patent
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`[Translation from the German language]
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`- 10 -
`
`(ii)
`
`for example, pertains to physically securing a
`specification in suit,
`repository against access. By contrast, the security classes specified in
`para. [0059] also relate to other, non-physical securing methods,
`for
`example encryption of files. In margin no. 20 of its reply, the Plaintiff itself
`points out that physical securing mechanisms cannot even be used below
`level 3. Thus, it is clear that paras. [0050] and paras. [0057] to [0059]
`relate to different subject matters.
`
`However, the chief reason why paras. [0057] to [0059] cannot be used for
`the purposes of construing Main Claim 1 of Patent in Suit is because –
`unlike the claim in dispute and para. [0050] of the patent specification in
`suit – the security classes described therein expressly relate to a system
`and to communication and transmission of data between different
`repositories. For one thing, this is expressly stated in the introductory
`remarks regarding the security classes listed in tabular
`format
`in
`para. [0059]. For another, the lowest security class, referred to as "Level 0,
`which is the basis of the further categorisation of security classes, literally
`describes an "open system". Patent in Suit 1, on the other hand, does not
`relate to a system. Accordingly, paras. [0057]
`to [0059], which relate
`exclusively to a system as such, are not relevant for the construction of
`Claim 1 of Patent in Suit 1.
`
`9.
`
`Feature 1.1.2 (Feature 1.2)
`
`As regards Feature 1.1.2, nothing need be added to the submissions we made in our
`statement of defence.
`
`10.
`
`Feature 1.4 (Feature 1.5)
`
`"[1.4] said repository being embedded in said device,"
`
`As the Defendant under 2) already explained in the statement of defence, according to
`the Patent in Suit, the storage means that are part of the repository must be built into the
`device as an integral element. Contrary to the Plaintiff's allegation in margin no. 30 of the
`reply, this understanding on the part of the Defendant under 2) does not contradict the
`dependent Claims 2, 5 and 6 of Patent in Suit 1 either. In this respect, the Defendant
`under 2) has demonstrated under margin no. 8.3 of this rejoinder that what can in fact be
`gathered from these claims is that a repository, to the extent if provides a removable
`storage, must comprise an additional storage unit which is an integral part, i.e. embedded
`within the meaning of Feature 1.4.
`
`11.
`
`Feature 1.5
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`[Translation from the German language]
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`
`The feature
`
`[1.5] coupled to said means for rendering;"
`
`describes the relationship between the means for rendering and the repository according
`to the claim, with both the repository and the means for rendering constituting central
`elements of the alleged invention.
`
`11.1 First of all, we assume that it is undisputed between the parties that, according to the claim,
`the means for rendering are integrated into the device but not into the repository. In this
`respect, the Plaintiff's feature analysis, which, under Feature 1, does not differentiate with
`sufficient clarity between the device and the repository and according to whose further
`systematic sub-classification the means for rendering can be understood as either an
`element of the repository or of the device (cf. Features 1 and 1.3 of the Plaintiff's feature
`analysis) is misleading at least. This is because the way commas are used in the main
`claim in dispute on page 27 of the patent specification in suit illustrates that the means for
`rendering are an element of
`the device that
`is independent of
`the repository. This
`understanding is furthermore confirmed by the description and figures in the patent
`specification in suit. Finally, even the Plaintiff appears to base its construction of
`Feature 1.5 on this understanding. In margin no. 32 of its reply, for example, it states that
`the claim in dispute requires that repository and means for rendering be integrated within
`the same overall device.
`
`11.2 Following on from that, it can be gathered precisely from the clear differentiation between
`the two elements in Features 1 and 1.2 of Patent in Suit 1 (Features 1 and 1.3) that Claim 1
`basically regards the repository and the means for rendering as two separate elements of
`the device that are independent of one another in both spatial and functional
`terms.
`Consequently, these two elements do not share any components. This understanding is
`confirmed by the teaching of Feature 1.5 of Claim 1 of Patent in Suit 1, which expressly
`requires that both elements are coupled to one another. For if the repository and the means
`for
`rendering shared any components from the outset – which is the Plaintiff's
`understanding – coupling them would be superfluous.
`
`11.3 Where the Plaintiff alleges that it can be inferred from Patent in Suit 1 that the repository
`and the means for rendering may comprise shared components, it has not stated any
`reasons for this. The description and figures in the patent specification in suit do not contain
`any indication of this either. The means for rendering as an element of the device according
`to the claim, in particular, are not described in any more detail in the patent specification in
`suit. Paras. [0024] to [0027] of the patent specification in suit do indeed contain statements
`regarding a "rendering system". However, these paragraphs of the description cannot be
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`507757
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`Hogan Lovells
`
`

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`[Translation from the German language]
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`- 12 -
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`used for the purposes of construction, as they relate to a system which is not claimed by
`Patent in Suit 1 as granted (for further details, cf. margin no. 7.1 of this rejoinder and the
`statements on p. 12 of the statement of defence).
`
`11.4 All things considered, everything thus supports the understanding of the Defendant under
`2), suggested by the wording of Claim 1 of Patent
`in Suit 1, according to which the
`repository and the means for rendering do not comprise shared components.
`
`12.
`
`Feature 1.6
`
`With respect to the feature
`
`"[1.6] said repository further comprising storage means for storing digital
`works and having a server mode and a requestor mode of operation;"
`
`the Plaintiff argues in favour of an allegedly functional construction which, however, is far
`removed from the wording of Main Claim 1 and is even in obvious contradiction to the
`latter. For example, the Plaintiff states in margin nos. 36 and 37 of the reply that there is
`no need for two clearly separated "units" within the device, one of which could be
`identified as requestor and the other as server;
`the only thing required is that
`the
`repository controls the typical functions of both a server and a requestor for managing
`digital rights according to the corresponding subfeatures. Contrary to the Plaintiff's
`statements in margin no. 34 of the reply, this, too, is not undisputed.
`
`12.1 By way of introduction, it must be pointed out that para. [0142] of the patent specification in
`suit quoted by the Plaintiff in this context does not provide any indication of a purely
`functional understanding of the repository as brought forward by the Plaintiff, according to
`which requestor and server are solely functions of the repository. For in para. [0142] of the
`patent specification in suit,
`it
`is stated merely that
`requestor and server may be
`components of the same device. This does not preclude that, likewise according to the
`claim, two units that are independent from one another exist within the device and perform
`the relevant functions of the modes of operation.
`
`12.2 However, an obvious argument against the Plaintiff's purely functional understanding of
`