Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 1 of 38 PageID #: 5568
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-0036-RWS
`
`LEAD CASE
`
`JURY TRIAL DEMANDED
`
`
`
`PLAINTIFF MAXELL, LTD.’S
`OPENING CLAIM CONSTRUCTION BRIEF
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 2 of 38 PageID #: 5569
`
`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`INTRODUCTION ................................................................................................................. 1
`I.
`II. SUBJECT MATTER OF THE ASSERTED PATENTS ................................................... 1
`III. LEGAL STANDARDS .......................................................................................................... 1
`IV. DESCRIPTION OF THE ASSERTED PATENTS AND THE PROPER
`CONSTRUCTION OF THE DISPUTED TERMS ....................................................... 2
`A.
`The ’794 Patent ....................................................................................................... 2
`1.
`Background of the ’794 Patent ................................................................ 2
`2.
`Level of Ordinary Skill in the Art for the ’794 Patent .......................... 3
`3.
`Disputed Term in the ’794 Patent............................................................ 3
`The ’306 Patent ....................................................................................................... 6
`1.
`Background of the ’306 Patent ................................................................ 6
`2.
`Level of Ordinary Skill in the Art for the ’306 Patent .......................... 6
`3.
`Disputed Term in the ’306 Patent............................................................ 7
`The ’438 Patent ....................................................................................................... 8
`1.
`Background of the ’438 Patent ................................................................ 8
`2.
`Level of Ordinary Skill in the Art for the ’438 Patent .......................... 9
`3.
`Disputed Terms in the ’438 Patent .......................................................... 9
`The ’991 Patent ..................................................................................................... 14
`1.
`Background of the ’991 Patent .............................................................. 14
`2.
`Level of Ordinary Skill in the Art for the ’991 Patent ........................ 14
`3.
`Disputed Term in the ’991 Patent.......................................................... 15
`The ’493 Patent ..................................................................................................... 17
`1.
`Background of the ’493 Patent .............................................................. 17
`2.
`Level of Ordinary Skill in the Art for the ’493 Patent ........................ 17
`3.
`Disputed Terms in the ’493 Patent ........................................................ 18
`The ’317/’999/’498 Patents................................................................................... 25
`1.
`Background of the ’317/’999/’498 Patents ............................................ 25
`2.
`Level of Ordinary Skill in the Art for the ’317/’999/’498 Patents ...... 26
`3.
`Disputed Terms in the ’317/’999/’498 Patents...................................... 26
`V. CONCLUSION .................................................................................................................... 30
`
`
`D.
`
`E.
`
`F.
`
`- ii -
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 3 of 38 PageID #: 5570
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Apple, Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014)..................................................................................................4
`
`Biscotti Inc. v. Microsoft Corp.,
`Case No. 2:13-cv-01015, 2016 U.S. Dist. LEXIS 155336 (E.D. Tex. Nov. 9,
`2016) ........................................................................................................................................15
`
`Blue Calypso, Inc. v. Groupon, Inc.,
`93 F. Supp. 3d 575 (E.D. Tex. 2015) .......................................................................................15
`
`Comark Comm’ns, Inc. v. Harris Corp.,
`156 F.3d 1182 (Fed. Cir. 1998)..........................................................................................12, 21
`
`Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc.,
`382 F. Supp. 3d 586 (E.D. Tex. 2019) .....................................................................................11
`
`E-Watch Inc. v. Apple, Inc.,
`Case No. 2:13-CV-1061, 2015 WL 1387947 (E.D. Tex. Mar. 25, 2015) .................................4
`
`EPOS Techns. LTD v. Pegasus Techns. LTD,
`766 F.3d 1338 (Fed. Cir. 2014)................................................................................................16
`
`Free Stream Media Corp. v. Alphonso Inc.,
`Case No. 2:15-CV-1725, 2017 WL 1165578 (E.D. Tex. Mar. 29, 2017) .............................4, 8
`
`GE Lighting Sols., LLC v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014)................................................................................................12
`
`Globetrotter Software, Inc. v. Elan Comput. Grp., Inc.,
`362 F.3d 1367 (Fed. Cir. 2004)..................................................................................................8
`
`Maxell Ltd. v. Huawei,
`Case No. 5:16-cv-00178, Dkt. No. 175 .....................................................................................3
`
`Maxell Ltd. v. Huawei Device USA Inc.,
`297 F. Supp. 3d 668 (E.D. Tex.2018) ..................................................................................1, 14
`
`Personalized Media Commc’ns v. ITC,
`161 F.3d 696 (Fed. Cir. 1998)....................................................................................................4
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)..............................................................................3, 7
`
`iii
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`

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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 4 of 38 PageID #: 5571
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`
`Skky, Inc. v. MindGeek, s.a.r.l.,
`859 F.3d 1014 (Fed. Cir. 2017)..................................................................................................8
`
`SRAM Corp. v. AD-II Eng’g Inc.,
`465 F.3d 1351 (Fed. Cir. 2006)................................................................................................28
`
`SynQor Inc. v. Artesyn Techns.
`709 F.3d 1365 (Fed. Cir. 2013)................................................................................................16
`
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)..........................................................................................16, 21
`
`THX, Ltd. v. Apple, Inc.,
`Case No. 13-cv-01161, 2016 U.S. Dist. LEXIS 153557 (N.D. Cal. Nov. 4,
`2016) ........................................................................................................................................28
`
`TiVo Inc. v. EchoStar Commc’ns Corp.,
`Case No. 2:04-CV-1, 2005 U.S. Dist. LEXIS 46879 (E.D. Tex. Aug. 18,
`2005) ........................................................................................................................................10
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997)......................................................................................3, 22, 24
`
`Statutes
`
`35 U.S.C. § 112, ¶ 6 ............................................................................................................... passim
`
`iv
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`

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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 5 of 38 PageID #: 5572
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`
`TABLE OF EXHIBITS
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`Exhibit 1 Expert Declaration of Michael Brogioli, PH.D.
`
`Exhibit 2 Excerpts of Expert Declaration of Daniel Menasce, PH.D.
`
`Exhibit 3 Excerpts of Deposition Transcript of Joseph Paradiso, PH.D.
`
`Exhibit 4 Expert Declaration of Robert Maher, PH.D.
`
`Exhibit 5 Excerpts of Expert Declaration of Benjamin Bederson, PH.D.
`
`Exhibit 6 Expert Declaration of Tim Williams, PH.D.
`
`Exhibit 7 Excerpts of IBM’s 1994 Dictionary of Computing
`
`Exhibit 8 Expert Declaration of Vijay Madisetti, PH.D.
`
`Exhibit 9 U.S. Patent No. 5,828,406
`
`Exhibit 10 Excerpts of Deposition Transcript of Vijay Madisetti, PH.D.
`
`Exhibit 11 Expert Declaration of Craig Rosenberg, PH.D.
`
`Exhibit 12 Excerpts of Declaration of Joseph Paradiso, PH.D.
`
`Exhibit 13 Excerpts of Deposition Transcript of Daniel Menasce, PH.D.
`
`Exhibit 14 Excerpts of Deposition Transcript of Tim Williams, PH.D.
`
`- v -
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 6 of 38 PageID #: 5573
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`
`I.
`
`INTRODUCTION
`
`Maxell’s proposed constructions for the disputed terms of the asserted patents1 follow the
`
`canons of claim construction and provide interpretations that flow from the intrinsic record. In
`
`contrast, Apple’s proposed constructions import limitations from preferred embodiments, often
`
`times improperly invoking 35 U.S.C. § 112, ¶ 6 as an excuse for unduly narrowing the words the
`
`inventors selected to describe their innovations. Rather than look for meaning in the claim
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`language and the specification, Apple further looks for ways to narrow the scope of the claims,
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`lifting language from exemplary embodiments and refusing to apply clear precedent about
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`readily understandable words such as “detector” and “input unit.”
`
`In sum, Apple repeatedly departs from a proper claim construction analysis. Its proposals
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`should therefore be rejected, and Maxell’s adopted.
`
`II.
`
`SUBJECT MATTER OF THE ASSERTED PATENTS
`
`The asserted patents generally fall into six areas of technology: power control and
`
`management (6,329,794 (“the ’794 Patent”) and 6,408,193 (“the ’193 Patent”)), alert generation
`
`and control (6,928,306 (“the ’306 Patent”)), device to device authentication (7,116,438 (“the
`
`’438 Patent”) and 10,212,586 (“the ’586 Patent”)), video call management (10,084,991 (“the
`
`’991 Patent”)), image processing (8,339,493 (“the ’493 Patent”)), and GPS and navigation
`
`functions (6,748,317 (“the ’317 Patent”); 6,580,999 (“the ’999 Patent”); and 6,430,498 (“the
`
`’498 Patent”)). Additional descriptions of the patents are provided in Section IV.
`
`III. LEGAL STANDARDS
`
`This Court knows well the legal standards governing claim construction. See, e.g., Maxell
`
`Ltd. v. Huawei Device USA Inc., 297 F. Supp. 3d 668, 677-681 (E.D. Tex.2018). As such, Maxell will
`
`
`1 Only eight of the ten asserted patents contain limitations for which the parties have claim construction disputes.
`For completeness, however, Maxell’s technology tutorial addresses all ten asserted patents.
`
`- 1 -
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 7 of 38 PageID #: 5574
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`not recount those principles for the Court here, but will rely on authority where appropriate in
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`discussions for the terms below.
`
`IV. DESCRIPTION OF THE ASSERTED PATENTS AND THE PROPER
`CONSTRUCTION OF THE DISPUTED TERMS
`A.
`
`The ’794 Patent
`1.
`
`Background of the ’794 Patent
`
`The ’794 Patent, which has a priority date of May 22, 2000, solves a problem in
`
`conventional information processing devices. Prior to the inventions disclosed in the ’794 Patent,
`
`these devices would attempt to increase power efficiency by, for example, reducing the power
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`consumed by function devices (e.g., applications) that were in use, or by stopping or restricting
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`operations of unused function devices. ’794 Patent at 1:12-22.
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`But the devices could not prioritize one function over another; either all function devices
`
`had their power restricted, or none did. Id. at 1:23-31. For example, in an information processing
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`device containing an audio communication function (typical phone function) and a videophone
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`function, a user may wish to prioritize the audio phone function over the videophone function, so
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`that the user could continue a call even after the battery is too depleted to effectively use the
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`videophone. Id. at 1:31-41. But conventional devices would continue operation of all functions,
`
`so that higher priority functions lost power at the same time as lower priority functions. Id.
`
`The ’794 Patent solves this problem by assigning different priorities to the various
`
`functions. Id. at 1:49-67. The patent describes a controller that controls the operation of the
`
`function devices based on remaining battery capacity. Id. at 1:55-67, 4:36-61. The controller also
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`sends power reduction instructions to different function devices at different times. Id. at 4:36-61.
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`The effect is that lower-priority function devices (such as a videophone function) can be powered
`
`down before other, higher-priority function devices (such as audio communication). This
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`2
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 8 of 38 PageID #: 5575
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`priority-based power management allows users to manage power more effectively, and to
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`continue using desired functions longer. Id. at 1:55-67.
`
`2.
`
`Level of Ordinary Skill in the Art for the ’794 Patent
`
`For the ’794 Patent, a person of ordinary skill in the art has a working knowledge of
`
`power management systems, gained through a Bachelor of Science in Electrical Engineering or
`
`an equivalent degree and one year of experience in the field of power management.
`
`3.
`
`Disputed Term in the ’794 Patent
`
`“capacity detector for detecting a remaining capacity of said battery”
`
`Maxell’s Proposed Construction
`Plain and ordinary meaning
`
`Apple’s Proposed Construction
`Function: detect a remaining capacity of battery
`Structure: Capacity Detector 107 (as configured in Figs. 1, 6, 10, or 11)
`performing the steps shown in Fig. 4; or equivalents thereof
`
`
`Where the ordinary meaning of claim language is readily understood by one of ordinary
`
`skill in the art, claim construction “involves little more than the application of the widely
`
`accepted meaning of commonly understood words.” See Phillips v. AWH Corp., 415 F.3d 1303,
`
`1314 (Fed. Cir. 2005) (en banc). In these situations, no construction is needed. U.S. Surgical
`
`Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
`
`In the ZTE case, involving this same patent, the parties, their experts, this Court, and the
`
`lay jurors had no trouble understanding “capacity detector” without a construction by the Court.
`
`See, e.g., Maxell Ltd. v. Huawei, Case No. 5:16-cv-00178, Dkt. No. 175 at 12 (parties agreeing
`
`that “capacity detector for detecting a remaining capacity of said battery” should be given its
`
`plain and ordinary meaning). No construction is needed this time, either.
`
`Both parties’ experts agree that the term connotes sufficient structure to a person of
`
`ordinary skill in the art in the form of one or more known hardware and/or software solutions.
`
`See Brogioli Decl. (Ex. 1) ¶¶ 30, 37; Menasce Decl. (Ex. 2) ¶ 63 (identifying at least four
`
`hardware and/or software solutions for implementing the claimed “capacity detector.”). Despite
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`3
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 9 of 38 PageID #: 5576
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`this consistent understanding Apple uses § 112, ¶ 6, as a proxy to unreasonably limit the scope of
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`the claims. Apple is wrong for several reasons.
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`First, it is well-established that “detector” alone connotes sufficiently definite structure to
`
`persons of ordinary skill in the art, thereby avoiding the ambit of § 112, ¶ 6. See Apple, Inc. v.
`
`Motorola, Inc., 757 F.3d 1286, 1299 (Fed. Cir. 2014)(“detector” is a structural term);
`
`Personalized Media Commc’ns v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998) (“digital detector”
`
`does not invoke § 112, ¶ 6 because “[e]ven though the term ‘detector’ does not specifically
`
`evoke a particular structure, it does convey to one knowledgeable in the art a variety of structures
`
`known as ‘detectors’”); see also E-Watch Inc. v. Apple, Inc., Case No. 2:13-CV-1061, 2015 WL
`
`1387947, at *12 (E.D. Tex. Mar. 25, 2015). Apple concedes as much in its agreement to construe
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`“an image-instability detector” as “a detector . . . capable of detecting an image instability of
`
`the electric camera.” See Dkt. No. 99 at 2. Not only is Apple’s position here incompatible with
`
`the applicable law, it is inconsistent with the positions it takes on other terms in this case. Id.
`
`Second, the claim language and specification reinforce that a person of skill in the art
`
`would understand “capacity detector” to connote sufficient structure. See ’794 Patent at 4:24-35;
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`Ex. 1 ¶¶ 32-33. Claims 1 and 9 are clear: the “capacity detector” detects the remaining capacity
`
`of the battery. This descriptive language does not detract from the definiteness of structure—“it
`
`further narrows the scope of those structures covered by the claim and makes the term more
`
`definite.” See Personalized Media, 161 F.3d at 705 (emphasis added). In other words, the claims
`
`themselves convey sufficiently definite structure. See Free Stream Media Corp. v. Alphonso Inc.,
`
`Case No. 2:15-CV-1725, 2017 WL 1165578, at *25 (E.D. Tex. Mar. 29, 2017) (declining to
`
`construe “client device” as an MPF term because “the claims themselves connote sufficiently
`
`definite structure by describing how the ‘client device’ operates within the claimed invention to
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 10 of 38 PageID #: 5577
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`achieve its objectives”).
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`In fact, both parties’ experts were able to identify a number of software and hardware
`
`solutions for implementing the capacity detector, confirming that the term itself conveys “a
`
`variety of structures” to persons skilled in the art. Ex. 2 ¶ 63 (explaining that battery capacity
`
`detector could be implemented in (1) software that implements an algorithm; (2) specialized
`
`hardware components; (3) analog circuit designed to output a signal; (4) digital circuit that turns
`
`on or off; and (5) any combination of the foregoing hardware or software solutions); See Ex. 1 ¶¶
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`32-36 (identifying several hardware and/or software solutions). Another of Apple’s experts in
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`this case even conceded that “battery capacity detector” has a “much more” specific structure
`
`than the claim term “device.” Paradiso Dep. Tr. (Ex. 3) 48:24-49:1.
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`Third, Apple’s construction is nothing more than an attempt to shoehorn additional
`
`limitations into the claims. Apple’s proposed function—“detect a remaining capacity of battery
`
`[sic]”—appropriately comports with the claim language. Yet, its proposed structure—“Capacity
`
`Detector 107 (as configured in Figs. 1, 6, 10, or 11) performing the steps shown in Fig. 4; or
`
`equivalents thereof”—does not. At step 401, “the remaining capacity of battery 102 is retrieved.”
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`’794 Patent at 4:24-25. This is plainly within the scope of the claims, and should be the only step
`
`necessary to accomplish Apple’s stated function. Apple’s proposed structure, however, includes
`
`remaining steps 402-405, which are not stated functions of the capacity detector as claimed. For
`
`example, steps 403 and 405 describe providing a notification when the battery reaches a
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`particular capacity—both of which would occur after the proposed function of detecting a
`
`remaining capacity of the battery. See Id. at FIG. 4. Apple’s construction is thus not only
`
`unnecessary, but logically inconsistent.
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`Accordingly, the term “capacity detector for detecting a remaining capacity of said
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`5
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 11 of 38 PageID #: 5578
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`battery” is not a means-plus-function term and should be given its plain and ordinary meaning.
`
`B.
`
`The ’306 Patent
`1.
`
`Background of the ’306 Patent
`
`The ’306 Patent, which has a priority date of January 7, 2000, solves a problem in the
`
`techniques of generating and controlling alerts in portable mobile units. Prior to the inventions
`
`disclosed in the ’306 Patent, conventional mobile devices had limited capability for generating
`
`alerts and notifying a user when an incoming call was received. ’306 Patent at 1:11-23. This led
`
`to confusion when multiple devices in the same area happened to have the same ringtone. Id.
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`Similarly, there was no way of identifying the caller audibly. Id. at 2:37-56. Adding audio files to
`
`the mobile devices to address this problem required additional memory, increasing the devices’
`
`size and expense. Id. at 1:50-53.
`
`The ’306 Patent solves these problems by including multiple sounds sources within a
`
`single mobile device, allowing for alerts having “an infinite number of variations” without
`
`requiring an infinite number of audio files. Id. at 2:34-36. By allowing the device to use multiple
`
`types of sound data—including FM, PCM, MIDI, MP3, and human voices—the invention
`
`enables generating distinct alerts based on the user’s preference. Id. at 5:1-10, 8:48-61. It also
`
`enables the device to announce the name of the caller—a benefit for many, but crucial for the
`
`visually impaired. See Id. The ’306 Patent also describes suppressing alerts under certain user-
`
`specified conditions, allowing flexibility for users who wish to avoid audible alerts at certain
`
`times, such as during court appearances or from “midnight to the early morning.” Id. at 10:51-64.
`
`2.
`
`Level of Ordinary Skill in the Art for the ’306 Patent
`
`For the ’306 Patent, a person of ordinary skill in the art has a working knowledge of
`
`audio signal processing, gained through a Bachelor of Science in Electrical Engineering or
`
`equivalent degree and at least two years’ experience in the field of audio signal processing.
`
`6
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 12 of 38 PageID #: 5579
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`3.
`
`Disputed Term in the ’306 Patent
`
`“ringing sound generator”
`
`Maxell’s Proposed Construction
`Plain and ordinary meaning
`
`Apple’s Proposed Construction
`Function: to generate a ringing sound
`Structure: Element 1519 in Figure 15 comprising 1, 3a-3c, and 4a-4c in
`Figure 1; or equivalents thereof
`
`
`There is no reason to depart from the plain and ordinary meaning of “ringing sound
`
`generator.” A person of ordinary skill in the art would have understood the meaning of this term
`
`when used in the context of a “portable mobile,” as claimed. Maher Decl. (Ex. 4) ¶ 31. By the
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`time of the invention on January 7, 2000, even a novice mobile phone user would have known
`
`that the phone must have components that allow it to generate sound. An electrical engineer with
`
`two years of experience in the field of audio signal processing certainly would have recognized
`
`the claimed ringing sound generator as the class of structure filling that role. Id.
`
`Apple has not identified any lexicography or disavowal for departing from the plain and
`
`ordinary meaning of the term. Instead, Apple invokes § 112, ¶ 6, to import limitations into the
`
`claim. Apple’s expert justifies this by arguing that the sound generator could be confused with
`
`“electric generators, engine generators, gas generators, motor generators, signal generators,” or
`
`even a “cow bell.” Bederson Decl. (Ex. 5) ¶ 32. But Apple’s expert ignores the context of this
`
`patent (mobile phones), and by including devices such as gas generators and cow bells as
`
`examples of “generators,” has failed to consider the meaning of this term in view of the “single
`
`best guide” to the term’s meaning: the ’306 Patent’s specification. See Phillips, 415 F.3d at 1316.
`
`Put in the proper context, the term “ringing sound generator” denotes a definite structure
`
`or class of structures, namely, the circuitry and software in portable devices that produces audio
`
`alerts. Indeed, a person of ordinary skill in the art would understand, both from the claim
`
`language itself and from the descriptions of a “ringing sound generator” in the specification, that
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`7
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 13 of 38 PageID #: 5580
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`this term refers to a definite class of structures that generate sound using different sounds
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`sources. ’306 Patent at 2:11-24, FIG. 1 (disclosing an exemplary structure for ringing sound
`
`generator that includes, among other things, a memory, a plurality of reproducers, and a
`
`reproduction timing memory). The claim and the specification describe in detail exemplary
`
`structures for the “ringing sound generator,” showing that this term has sufficiently definite
`
`structure and should simply be given its plain and ordinary meaning. See Alphonso, 2017 WL
`
`1165578, at *25; see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir. 2017).
`
`Apple’s proposed construction is also improper because it limits the term to one
`
`embodiment to the exclusion of the others. By limiting the ringing sound generator to sound
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`sources 3a-3c in Figure 1 (FM, PCM, and MIDI), Apple has ignored the specification’s teaching
`
`that “sound data should not be restricted only to the above, and also the sound data of the MP3
`
`method can be used.” ’306 Patent at 5:1-8. Because a “claim interpretation that excludes a
`
`preferred embodiment from the scope of the claim ‘is rarely, if ever, correct,” Apple’s proposed
`
`construction should be rejected. See Globetrotter Software, Inc. v. Elan Comput. Grp., Inc., 362
`
`F.3d 1367, 1381 (Fed. Cir. 2004).
`
`“Ringing sound generator” is not a means-plus-function term and would be readily
`
`understood by those of skill in the art as the name for a class of structures. Accordingly, this term
`
`needs no specific construction, and it should be read according to its plain meaning.
`
`C.
`
`The ’438 Patent
`1.
`
`Background of the ’438 Patent
`
`The ’438 Patent has a priority date of May 22, 2003, and is directed to the field of device-
`
`to-device authentication. At the time of the ’438 Patent, conventional systems involving display
`
`devices did not have any ability to implement a requirement whereby only a device in a physical
`
`location near the display device could change the content displayed on the display device. ’438
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`8
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`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 14 of 38 PageID #: 5581
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`Patent at 1:24-41. This posed a security risk: anyone with an Internet connection could access a
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`display device on an unsecure network and remotely change the displayed content (e.g., arrival
`
`time of flights or trains in an airport or train station). Id. This lack of capability to account for
`
`physical proximity during the authentication process resulted in unacceptable vulnerability in
`
`conventional devices at the time.
`
`The ’438 Patent solves this problem by requiring authentication using a short-distance
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`communication process, which ensures that the remote device is in close proximity to the display
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`device. See Id. At 9:65-10:8. Consequently, if the remote device has not been authenticated by
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`short-distance communication, it will not be permitted to exchange data for display using its
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`primary means of transmitting data. See Id. At 6:51-7:46. A remote device authenticated by
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`using short-distance communication in accordance with the ’438 Patent, however, will be
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`permitted to exchange data. Id. The disclosed techniques thus allow one device to share data with
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`an additional device in close proximity in a secure manner, increasing the efficiency and security
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`between the devices. Id. At 7:52-8:51, FIG. 8.
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`2.
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`Level of Ordinary Skill in the Art for the ’438 Patent
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`For the ’438 Patent, a person of ordinary skill in the art has a working knowledge of
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`wireless communications, gained through a Bachelor of Science in Electrical Engineering or
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`equivalent and at least one year experience working in the field of wireless communications.
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`3.
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`Disputed Terms in the ’438 Patent
`
`a.
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`Maxell’s Proposed Construction
`Plain and ordinary meaning
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`“an input unit for receiving an input entered by a user”
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`Apple’s Proposed Construction
`Function: to receive input entered by a user
`Structure: a keyboard; or equivalents thereof
`
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`“An input unit for receiving an input entered by a user” would be readily understood by a
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`person of ordinary skill in the art and requires no construction. See Williams Decl. (Ex. 6) ¶¶ 27-
`
`9
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`

`

`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 15 of 38 PageID #: 5582
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`29; see also TiVo Inc. v. EchoStar Commc’ns Corp., Case No. 2:04-CV-1, 2005 U.S. Dist.
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`LEXIS 46879, at *25 (E.D. Tex. Aug. 18, 2005) (applying the plain and ordinary meaning to
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`“input section”).
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`The ’438 Patent consistently uses the term “input unit” in a manner consistent with its
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`plain and ordinary meaning:
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`The input/output unit 103 is a component for displaying information to the user
`and receiving data entered by the user. The input/output unit 103 typically
`includes a liquid crystal display device and a ten-key board. However, the
`input/output unit 103 is not limited to the liquid crystal display device and the ten-
`key board. That is to say, the input/output unit 103 can be any component as long
`as the component is capable of receiving an input entered by the user and
`displaying an output to the user.
`
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`’438 Patent at 3:59-67 (emphasis added).
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`There is no lexicography by the inventors of the ’438 Patent that indicates a new meaning
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`for this easily-understood term. Nor is there any disavowal that justifies limiting this claim. As a
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`result, there is no reason to depart from the plain and ordinary meaning of “input unit.”
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`Extrinsic evidence also confirms that the ’438 Patent uses the term “input unit” consistent
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`with its plain an ordinary meaning. See IBM’s 1994 Dictionary of Computing (Ex. 7) at 343
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`(defining “input unit” as a “device in a data processing system by means of which data can be
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`entered into the system”). Accordingly, a person of ordinary skill in the art would readily
`
`understand, both from the claim language itself and from the descriptions of an “input unit” in
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`the specification, that this term refers to a definite class of structures that are used to receive an
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`input entered by a user. Ex. 6 ¶¶ 27-29; see also ’438 Patent at 3:59-67, FIG. 2 (showing that the
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`input unit 103 is being used within, for example, a mobile terminal).
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`Yet Apple once again turns to § 112, ¶ 6, to limit the scope of the claim, this time to a
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`“keyboard,” despite the specification’s plain teaching that the input unit “is not limited to” a
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`10
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`

`

`Case 5:19-cv-00036-RWS Document 136 Filed 11/18/19 Page 16 of 38 PageID #: 5583
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`keyboard. See ’438 Patent at 3:59-67. Even Apple’s own expert opines that a person of ordinary
`
`skill in the art would understand that “input unit” corresponds to known structures such as a
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`“mouse, keyboard, touch screen, touch-pen, [and] voice-activated inputs.” Menasce Decl. (Ex. 2)
`
`¶ 79; see also Menasce Dep. (Ex. 13) at 85:12-18 and 86:13-15 (admitting that he was able to
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`think of these examples without any “special research,” and that a person of ordinary skill in the
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`art would also have been aware of “[a]t least some of” these examples).
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`“Input unit” refers to a broad, but known, class of structures, and there is no reason to
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`stray from this generally understood meaning. See Cypress Lake Software, Inc. v. Samsung
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`Elecs. Am., Inc., 382 F. Supp. 3d 586, 658, 667 (E.D. Tex. 2019) (claim terms reciting “input
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`device” are “not governed by 35 U.S.C. § 112, ¶ 6, and should be given its plain and ordinary
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`meaning”); see also Ex. 7 at 341 (“input device” is a “[s]ynonym for input unit”). When the
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`patentee intended to use means-plus-function claiming, it did so explicitly, for example by
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`reciting “means for selecting an object displayed . . . .” ’438 Patent at 10:32-34. That it did not
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`do so with this term is telling.
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`“Input unit” is not a means plus function term, it would be readily understood by a person
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`of ordinary skill in the art, and is used in a manner consistent with this understanding by the ’438
`
`P