Case 5:19-cv-00036-RWS Document 136-5 Filed 11/18/19 Page 1 of 4 PageID #: 5678
`Case 5:19-cv-00036—RWS Document 136-5 Filed 11/18/19 Page 1 of 4 PageID #: 5678
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`EXHIBIT 5
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`EXHIBIT 5
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`Case 5:19-cv-00036-RWS Document 136-5 Filed 11/18/19 Page 2 of 4 PageID #: 5679
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`Plaintiff,
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`vs.
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`APPLE INC.,
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` Civil Action No. 5:19-cv-00036-RWS
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`Defendant.
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`DECLARATION OF DR. BENJAMIN B. BEDERSON IN SUPPORT OF
`APPLE INC.’S PROPOSED CLAIM CONSTRUCTIONS
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`Case 5:19-cv-00036-RWS Document 136-5 Filed 11/18/19 Page 3 of 4 PageID #: 5680
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`Claim Term
`“ringing sound
`generator”
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`Apple’s Proposal
`This claim term should be governed
`by pre-AIA 35 U.S.C. § 112, ¶ 6.
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`Maxell’s Proposal
`Plain and ordinary meaning
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`Claimed Function: to generate a
`ringing sound
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`Claimed Structure: Element 1519
`in Figure 15 comprising 1, 3a-3c,
`and 4a-4c in Figure 1; or
`equivalents thereof
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`31.
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`I agree with Apple’s proposed construction because it reflects the understanding a
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`person of ordinary skill in the art would have had, as of the January 7, 2000 priority date of the
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`’306 patent, regarding the term as used in the patent specification. Indeed, one of ordinary skill
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`in the art would understand the term “ringing sound generator” to be a means-plus-function term,
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`with the claimed function to generate a ringing sound and the claimed structure of Element 1519
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`in Figure 15 comprising 1, 3a-3c, and 4a-4c in Figure 1; or equivalents thereof.
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`32.
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`At the outset, I note that one of ordinary skill in the art would not understand the
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`term “generator” to denote sufficiently definite structure. Instead, the “generator” term would be
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`understood as anything that performs the function of generating. Indeed, in different contexts,
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`the word “generator” can be used to refer to entirely different classes of structures. Some
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`examples include electric generators, engine generators, gas generators, motor generators, signal
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`generators, and many others.
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`33.
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`Further, one of ordinary skill in the art would not understand the term “ringing
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`sound generator” to convey any definite structure or device. Although the term does not use the
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`“means for…” formulation, the term “ringing sound generator” is merely a descriptive term that
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`repeats its intended function, i.e., to generate a ringing sound. Thus, one of ordinary skill in the
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`art would understand that a “ringing sound generator” could be anything that generates a ringing
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`sound. For example, a person ringing a cow bell could be a “ringing sound generator.”
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`11
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`Case 5:19-cv-00036-RWS Document 136-5 Filed 11/18/19 Page 4 of 4 PageID #: 5681
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`50.
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`The term “communication apparatus” never appears in the specification of the
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`’991 patent. See generally ’991 patent. Instead, it appears only in the patent’s title and its
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`claims. See generally id.
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`51.
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`In describing the “Field of the Invention,” the ’991 patent explicitly discloses that
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`“the present technology relates to a television (TV) receiver set with TV phone functionality
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`added thereto, which is arranged to have a video telephone call enabling means to thereby make
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`it possible to perform video/voice-based telecommunication with another machine.” Id. at 1:26-
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`35. It further discloses that “[t]his technology also relates to a TV phone system using
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`videophone function-added TV receivers of this type.” Id.
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`52.
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`Indeed, the specification repeatedly and exclusively uses the term “videophone
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`function-added TV receiver” to refer to the devices in the patented system. See generally id.
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`53.
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`In fact, the specification describes a “videophone function-added TV receiver”
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`284 times, and a “TV receiver” is mentioned 318 times. See generally id.
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`54.
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`Indeed, in the prosecution of U.S. Pat. App. Pub. No. 2015/837,402, which issued
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`as the ’991 patent, the patent application was entitled “Television Receiver with a TV Phone
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`Function” until the applicant’s July 24, 2018 Amendment after Notice of Allowance. See
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`Applicant’s July 24, 2018 Amendment after Notice of Allowance in ’991 Prosecution History.
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`55.
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`The specification does not disclose any device that could be considered a
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`“communication apparatus” except for the disclosed “videophone function-added TV receiver.”
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`56.
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`Because the patent specification and file history repeatedly and consistently
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`characterizes the claimed invention as a “videophone function-added TV receiver,” one of
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`ordinary skill in the art would understand “communication apparatus” to mean “videophone
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`function-added TV receiver” based on the intrinsic evidence.
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`19
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