15-03-06 Samsung Opening Brief (Fed. Cir.)

Case: 15-1171
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Appeal Nos. 15-1171, -1195
United States Court of Appeals

for the
Federal Circuit
APPLE INC., a California corporation,
Plaintiff-Cross-Appellant,
v.
SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,
SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation,
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
a Delaware limited liability company,
Defendants-Appellants.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF CALIFORNIA IN CASE NO. 5:12-CV-00630-LHK,
LUCY H. KOH, UNITED STATES DISTRICT JUDGE
CORRECTED NON-CONFIDENTIAL BRIEF

FOR DEFENDANTS-APPELLANTS
JOHN B. QUINN
SCOTT L. WATSON
MICHAEL T. ZELLER
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017
(213) 443-3000
KATHLEEN M. SULLIVAN
WILLIAM B. ADAMS
DAVID M. COOPER
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
(212) 849-7000
BRIAN C. CANNON
KEVIN P.B. JOHNSON
VICTORIA F. MAROULIS
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, California 94065
(650) 801-5000
March 4, 2015
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CERTIFICATE OF INTEREST
Counsel for Defendants-Appellants certifies the following:
1.
The full name of every party or amicus represented by me is:
Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.

Effective January 1, 2015, Samsung Telecommunications America, LLC (STA)
merged with and into Samsung Electronics America, Inc., and therefore STA no
longer exists as a separate corporate entity.
2.
The name of the real party in interest (if the party named in the caption
is not the real party in interest) represented by me is:

N/A
3.
All parent corporations and any publicly held companies that own 10
percent or more of the stock of the party or amicus curiae represented by me

are:
Samsung Electronics America, Inc. (SEA) is a wholly-owned subsidiary of
Samsung Electronics Co., Ltd. (SEC), a publicly held corporation organized
under the laws of the Republic of Korea. SEC is not owned by any parent
corporation and no other publicly held corporation owns 10% or more of its stock.
No other publicly held corporation owns 10% or more of SEAs stock.
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4.
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The names of all law firms and the partners or associates that appeared
for the party or amicus now represented by me in the trial court or are
expected to appear in this court are:
Quinn Emanuel Urquhart & Sullivan, LLP: Deepa Acharya; William B. Adams;
Anthony P. Alden; Carl G. Anderson; Alexander D. Baxter; Katherine B.
Bearman; Robert J. Becher; Rebecca A. Bers; Kara M. Borden; Todd M. Briggs;
Amy H. Candido; Brian C. Cannon; Kenneth R. Chiate; David M. Cooper; Lindsay
Cooper; Clark Craddock; Patrick D. Curran; Jacob K. Danzinger; Edward J.
DeFranco; Samuel M. Drezdzon; Marissa R. Ducca; David Elsberg; Eric J.
Emanuel; Richard W. Erwine; Susan R. Estrich; Michael L. Fazio; Anastasia M.
Fernands; Scott A. Florance; Ryan S. Goldstein; John S. Gordon; Ron Hagiz;
Nathan A. Hamstra; Jordan R. Jaffe; Joshua P. Jaffe; Kevin P.B. Johnson; James
D. Judah; Robert N. Kang; Rachel M. Kassabian; Scott B. Kidman; Peter A.
Klivans; Valerie A. Lozano; Kristin J. Madigan; Victoria F. Maroulis; John T.
McKee; Joseph Milowic; David A. Nelson; Jared W. Newton; Sean S. Pak; Daniel
C. Posner; Christopher E. Price; Maxim Price; William C. Price; B. Dylan Proctor;
John B. Quinn; Carlos A. Rodriguez; Shahin Rezvani; Patrick M. Shields; Elliot J.
Siegel; Kevin A. Smith; Robert W. Stone; Kathleen M. Sullivan; Stephen A.
Swedlow; Derek J. Tang; Amardeep L. Thakur; Bill Trac; Charles K. Verhoeven;
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Matthew S. Warren; Scott L. Watson; Cleland B. Welton II; Alan L. Whitehurst;

Lance L. Yang; Michael T. Zeller
Crone Hawxhurst LLP: Daryl M. Crone
Sheppard Mullin Richter & Hampton LLP: Gary L. Halling; David R. Garcia;
Michael R. Heimbold; Mona Solouki
Squire Patton Boggs (US) LLP: Mark C. Dosker
Steptoe & Johnson LLP: John M. Caracappa; Michael R. Heimbold; Huan-Yi Lin;
Dylan Ruga
Williams & Connolly, LLP: Stanley E. Fisher; Dov P. Grossman; David M.
Horniak; David M. Krinsky; Aaron P. Maurer
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TABLE OF CONTENTS
STATEMENT OF RELATED CASES ................................................................. XII
PRELIMINARY STATEMENT ............................................................................... 1
JURISDICTIONAL STATEMENT .......................................................................... 2
STATEMENT OF THE ISSUES............................................................................... 2
STATEMENT OF THE CASE .................................................................................. 3
A.
The Patents At Issue .............................................................................. 3

1.
Apples 647 Patent (Quick Links) ......................................... 3
2.
Apples 721 Patent (Slide To Unlock) ................................... 6
3.
Apples 172 Patent (Text Correction) .................................... 7
4.
Apples 959 Patent (Unified Search) ..................................... 7
5.
Apples 414 Patent (Sync) ..................................................... 7
6.
Samsungs 239 Patent ................................................................ 8
B.
The Jury Verdict ....................................................................................8
C.
The District Courts Orders On Post-Trial Motions ............................. 9
SUMMARY OF ARGUMENT ...............................................................................10

STANDARDS OF REVIEW ...................................................................................14
ARGUMENT ...........................................................................................................16
I.
THE DISTRICT COURT ERRED IN DENYING SAMSUNGS

MOTION FOR JMOL AS TO APPLES 647 PATENT .............................16
A.
Under This Courts Claim Construction, No Reasonable Jury

Could Find That The Accused Products Include An Analyzer
Server .................................................................................................16
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B.
II.
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Could Find That The Accused Products Link[] Actions With
A Specified Connection ...................................................................25
A.
Samsung Is Entitled To JMOL As To The 721 Patent Because

Claim 8 Is Invalid As Obvious ............................................................33
B.
Samsung Is Entitled To JMOL As To The 172 Patent ......................38
D.
IV.
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MOTION FOR JMOL AS TO APPLES 721, 172, 959 AND 414
PATENTS ......................................................................................................33
C.
III.
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1.
The District Court Erred In Its Construction Of The

Phrase Keyboard And A Touchscreen Display .....................38
2.
Claim 18 Is Invalid As Obvious ...............................................39

Claim 25 Is Invalid As Indefinite And Anticipated ............................45
1.
The Term Heuristic Renders Claim 25 Invalid As

Indefinite Under Nautilus .........................................................45
2.
Claim 25 Is Invalid As Anticipated By WAIS Prior Art .......... 47

Claim 20 Is Invalid As Anticipated .....................................................49
THE DISTRICT COURT ERRED IN GRANTING APPLE

ONGOING ROYALTIES .............................................................................51
A.
The District Court Lacked Jurisdiction To Order Ongoing

Royalties ..............................................................................................51
B.
Apple Waived Any Claim To Ongoing Royalties ..............................52
C.
The District Court Erred By Failing To Consider The HTC

License In Determining Ongoing Royalty Rates ................................55
THE DISTRICT COURTS ERRONEOUS CLAIM

CONSTRUCTION OF SAMSUNGS 239 PATENT WARRANTS A
NEW TRIAL .................................................................................................56
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A.
B.
V.
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The District Court Incorrectly Construed The Term Means For

Transmission Of Said Captured Video Over A Cellular
Frequency ..........................................................................................56
1.
The District Court Erred By Including Software

Limitations In The Structure .....................................................57
2.
The District Court Erred By Failing To Include Cellular

Radio Transmitters As Part Of The Structure .........................59
Samsung Is Entitled To A New Trial To Remedy The District

Courts Erroneous And Prejudicial Claim Construction.....................60
IF THE COURT ORDERS A NEW TRIAL ON APPLES

DAMAGES, IT SHOULD CORRECT THE DISTRICT COURTS
ERRONEOUS EVIDENTIARY RULINGS.................................................61
A.
Apples Conjoint Survey Evidence And Damages Calculations

Based On That Evidence Should Be Excluded ...................................61
B.
Evidence Of Apples Real-World Licenses And Valuations Of

The Patents-In-Suit Should Be Admitted............................................64
C.
Apples Evidence Of Lost Profits For An Incorrect Blackout

Period For The 647 Patent Should Be Excluded ...............................65
CONCLUSION ........................................................................................................67
ADDENDUM
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CONFIDENTIAL MATERIAL OMITTED

The materials omitted from pages 56, 62, 63, and 64 of this brief describe
Apples confidential licensing information. The materials omitted from pages
A27-29, A33-34, and A38 of the Addendum describe confidential information
regarding Samsungs sales and profits. The materials omitted from page A113 of
the Addendum contain confidential information regarding the parties reasonableroyalty calculations.
The materials omitted from pages A136.3-36.5 of the
Addendum contain confidential information relating to Apples calculation of

alleged lost profits. The materials omitted from pages A168-70 and A173-75 of
the Addendum describe confidential technical information.
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TABLE OF AUTHORITIES
Page
Cases
Allergan, Inc. v. Apotex Inc.,
754 F.3d 952 (Fed. Cir. 2014) ............................................................................36
Apple Inc. v. Motorola, Inc.,
757 F.3d 1286 (Fed. Cir. 2014) ...................................................................passim
Apple Inc. v. Motorola, Inc.,
No. 11-cv-08540 (N.D. Ill. Mar. 19, 2012) .................................................passim
Aqua Shield v. Inter Pool Cover Team,
774 F.3d 766 (Fed. Cir. 2014) ............................................................................15
ArcelorMittal France v. AK Steel Corp.,
700 F.3d 1314 (Fed. Cir. 2012) ..........................................................................60
Aro Mfg. Co. v. Convertible Top Replacement Co.,
377 U.S. 476 (1964) ............................................................................................66
Arthur A. Collins, Inc. v. N. Telecom Ltd.,
216 F.3d 1042 (Fed. Cir. 2000) ..........................................................................23
Atmel Corp. v. Info. Storage Devices, Inc.,
198 F.3d 1374 (Fed. Cir. 1999) ..........................................................................59
B. Braun Med., Inc. v. Abbott Labs.,
124 F.3d 1419 (Fed. Cir. 1997) ..........................................................................57
Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
616 F.3d 1249 (Fed. Cir. 2010) ..........................................................................38
Brilliant Instruments, Inc. v. GuideTech, LLC,
707 F.3d 1342 (Fed. Cir. 2013) ..........................................................................14
Broadcom Corp. v. Emulex Corp.,
732 F.3d 1325 (Fed. Cir. 2013) ..........................................................................14
Cheese Sys. Inc. v. Tetra Pak Cheese & Powder Sys. Inc.,
725 F.3d 1341 (Fed. Cir. 2013) ..........................................................................36
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Cybor Corp. v. FAS Techs., Inc.,

138 F.3d 1448 (Fed. Cir. 1998) ..........................................................................14
DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014) ..........................................................................15
Eaton Corp. v. Rockwell Intl Corp.,
323 F.3d 1332 (Fed. Cir. 2003) ..........................................................................14
Elvis Presley Enters., Inc. v. Capece,
141 F.3d 188 (5th Cir. 1998) ..............................................................................53
Ericsson, Inc. v. D-Link Sys, Inc.,
773 F.3d 1201 (Fed. Cir. 2014) ..........................................................................65
Galderma Labs., LP v. Tolmar, Inc.,
737 F.3d 731 (Fed. Cir. 2013) ......................................................................35, 36
Gaus v. Conair Corp.,
363 F.3d 1284 (Fed. Cir. 2004) ..........................................................................38
Geo. M. Martin Co. v. Alliance Mach. Sys. Intl LLC,
618 F.3d 1294 (Fed. Cir. 2010) ..........................................................................37
Georgia-Pacific Corp. v. U.S. Plywood Corp.,
318 F. Supp. 1116 (S.D.N.Y. 1970) ...................................................................55
Grain Processing Corp. v. American Maize Prods. Co.,
185 F.3d 1341 (Fed. Cir. 1999) ....................................................................14, 66
Griggs v. Provident Consumer Discount Co.,
459 U.S. 56 (1982) ..............................................................................................51
Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364 (Fed. Cir. 2014) ..........................................................................46
KSR Intl Co. v. Teleflex Inc.,
550 U.S. 398 (2007) ......................................................................................33, 42
In re Kubin,
561 F.3d 1351 (Fed. Cir. 2009) ..........................................................................36
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LaserDynamics, Inc. v. Quanta Computer, Inc.,

694 F.3d 51 (Fed. Cir. 2012) ........................................................................55, 65
Mformation Techs., Inc. v. Research in Motion Ltd.,
2012 WL 3222237 (N.D. Cal. Aug. 8, 2012),
affd, 764 F.3d 1392 (Fed. Cir. 2014) .................................................................23
Micro Chem., Inc. v. Great Plains Chem. Co.,
194 F.3d 1250 (Fed. Cir. 1999) ....................................................................58, 59
Nautilus, Inc. v. Biosig Instruments, Inc.,
___ U.S. ___, 134 S. Ct. 2120 (2014).....................................................12, 45, 46
Oracle Am., Inc. v. Google Inc.,
2012 WL 850705 (N.D. Cal. Mar. 13, 2012),
revd on other grounds, 750 F.3d 1339 (Fed. Cir. 2014) ...................................63
Paice LLC v. Toyota Motor Corp.,
504 F.3d 1293 (Fed. Cir. 2007) ....................................................................52, 54
Paige v. State of Cal.,
102 F.3d 1035 (9th Cir. 1996) ............................................................................51
Phillips Petroleum Co. v. Huntsman Polymers Corp.,
157 F.3d 866 (Fed. Cir. 1998) ............................................................................23
PlaSmart, Inc. v. Kappos,
482 F. Appx 568 (Fed. Cir. 2012) .....................................................................45
Ramos v. Davis & Geck, Inc.,
968 F. Supp. 765 (D.P.R. 1997),
affd, 167 F.3d 727 (1st Cir. 1999) ....................................................................53
Ricks Mushroom Serv., Inc. v. United States,
521 F.3d 1338 (Fed. Cir. 2008) ..........................................................................15
S. Cal. Retail Clerks Union v. Bjorklund,
728 F.2d 1262 (9th Cir. 1984) ............................................................................53
Southwall Techs., Inc. v. Cardinal IG Co.,
54 F.3d 1570 (Fed. Cir. 1995) ............................................................................15
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Teva Pharm. U.S.A., Inc. v. Sandoz, Inc.,

___ U.S. ___, 135 S. Ct. 831 (2015)...................................................................15
Virnetx, Inc. v. Cisco Sys., Inc.,
767 F.3d 1308 (Fed. Cir. 2014) ..........................................................................15
W. Union Co. v. Moneygram Payment Sys., Inc.,
626 F.3d 1361 (Fed. Cir. 2010) ..........................................................................37
Wenger Mfg., Inc. v. Coating Mach. Sys., Inc.,
239 F.3d 1225 (Fed. Cir. 2001) ....................................................................57, 58
Whitserve, LLC v. Computer Packages, Inc.,
694 F.3d 10 (Fed. Cir. 2012) ..............................................................................15
Wyers v. Master Lock Co.,
616 F.3d 1231 (Fed. Cir. 2010) ..........................................................................37
Statutes and Rules
28 U.S.C. 1295(a)(1) ...............................................................................................2
28 U.S.C. 1331 ........................................................................................................2
28 U.S.C. 1338 ........................................................................................................2
35 U.S.C. 112 ..................................................................................................46, 56
35 U.S.C. 283 ........................................................................................................52
Fed. R. Civ. P. 50 .....................................................................................................53
Fed. R. Civ. P. 59 .....................................................................................................53
Fed. R. Evid. 702 .....................................................................................................62
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STATEMENT OF RELATED CASES

Defendants-Appellants identify the following appeals as related:
Apple Inc. v. Samsung Elecs. Co., No. 2014-1802 (pending).
Apple Inc. v. Samsung Elecs. Co., No. 2012-1507, 695 F.3d 1370 (Fed. Cir.
2012) (Prost, J., joined by Moore & Reyna, JJ.).
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PRELIMINARY STATEMENT
This is an appeal from a judgment after jury trial in the District Court for the
District of Northern California (Koh, J.) awarding Apple $119,625,000 in
damages, plus supplemental damages and ongoing royalties, for infringement of
three patents. That judgment should be reversed, for Apple failed to prove
infringement of any valid patent.
As to the 647 patent, which covers quick links and which accounts for the
overwhelming majority of damages ($98,690,625), Apple presented its case based
on claim constructions for two limitations that this Court expressly rejected in
another case, Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1304-07 (Fed. Cir.
2014). Under this Courts authoritative claim construction, no reasonable jury
could find infringement, and the district court erred in denying judgment as a
matter of law (JMOL) on this ground.
The district court likewise erred in denying JMOL that the asserted claims of
Apples 721 and 172 patents are invalid as obvious, and thus in leaving intact the
$2,990,625 in damages awarded for infringement of the 721 patent and the
$17,943,750 in damages awarded for infringement of the 172 patent. The slide
to unlock software feature of the 721 patent was well known in the prior art of
touchscreen devices. Likewise, the autocorrect feature of the 172 patent was in
use and obvious well before Apple filed its patent.
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The jury found no infringement of Apples 959 or 414 patents, but the
district court erred nonetheless in denying JMOL that claim 25 of the 959 patent is
invalid as indefinite and anticipated and that claim 20 of the 414 patent is invalid
as anticipated.
With respect to the 239 patent asserted by Samsung, the district court made
claim construction errors prejudicial to Samsung at trial. A new trial should be
ordered on this patent.
JURISDICTIONAL STATEMENT
The district court had jurisdiction pursuant to 28 U.S.C. 1331 and 1338.
For the reasons stated infra Part III.A, the district court did not have jurisdiction to
address ongoing royalties. This Court has jurisdiction over Samsungs appeal of
the district courts November 25, 2014 final judgment pursuant to 28 U.S.C.
1295(a)(1). Samsung filed a timely notice of appeal on November 25, 2014.
A41151-52.
STATEMENT OF THE ISSUES
1.
Whether the district court erred in denying JMOL that Apples 647
patent was not infringed under the proper construction of (a) the analyzer server
limitation and (b) the linking actions limitation.
2.
Whether the district court erred in denying JMOL that (a) claim 8 of
Apples 721 patent is invalid as obvious; (b) claim 18 of Apples 172 patent is
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not infringed and invalid as obvious; (c) claim 25 of Apples 959 patent is invalid
as indefinite and anticipated; and (d) claim 20 of Apples 414 patent is invalid as
anticipated.
3.
Whether the district court erred in granting Apples motion for
ongoing royalties where (a) Apples interlocutory appeal of the denial of

permanent injunction divested the court of jurisdiction; (b) Apple waived any
request for ongoing royalties; and (c) the royalty rate was set without consideration
of a comparable Apple license.
4.
Whether the district court erred in its claim construction of Samsungs
239 patent.
5.
Whether, if this Court orders a new trial on Apples patents, it should
correct the district courts erroneous evidentiary rulings (a) admitting evidence
regarding Apples conjoint survey; (b) excluding evidence regarding Apples
comparable license and valuation of the patents-in-suit; and (c) admitting evidence
of lost profits for a blackout period for the 647 patent.
STATEMENT OF THE CASE
A.
The Patents At Issue

1.
Apples 647 Patent (Quick Links)
Asserted claim 9 of U.S. Patent No. 5,946,647 (647 patent) is directed to

a software program that receives data from separate client applications, detects
structures in that data (like phone numbers and street addresses in an email
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message), links actions to those structures, provides a pop-up menu allowing a

user to select a linked action (like dial or add-to-contacts), and then executes the
selected action on the detected structure. Because detecting structures and linking
actions were known in the art, the claimed program is limited to a specific software
architecture with three distinct software routines: (1) an analyzer server, for
detecting and linking structures; (2) a user interface to handle user selections;
and (3) an action processor that performs the selected action on the detected
structure. A597.
At trial, Apple asserted claim 9, which is dependent upon claim 1. Claim 1
provides:
1. A computer-based system for detecting structures in data and
performing actions on detected structures, comprising:
an input device for receiving data;
an output device for presenting the data;
a memory storing information including program routines including
an analyzer server for detecting structures in the data, and for linking
actions to the detected structures;
a user interface enabling the selection of a detected structure and a
linked action; and
an action processor for performing the selected action linked to the
selected structure; and
a processing unit coupled to the input device, the output device, and
the memory for controlling the execution of the program routines.
A597 (construed terms emphasized). Claim 9 states:
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9. The system recited in claim 1, wherein the user interface enables

selection of an action by causing the output device to display a pop-up
menu of the linked actions.
Id.
In a prior case in which Apple asserted the 647 patent against Motorola, the
District Court for the Northern District of Illinois construed analyzer server as a
server routine separate from a client that receives data having structures from the
client; and construed linking actions to the detected structures as creating a
specified connection between each detected structure and at least one computer
subroutine that causes the CPU to perform a sequence of operations on that
detected structure. Apple Inc. v. Motorola, Inc., No. 11-cv-08540, slip op. at 8-11
(N.D. Ill. Mar. 19, 2012) (Posner, J., sitting by designation) (emphases added).
Samsung notified the district court below of those claim constructions and urged
the district court to apply them. 1 But the district court commenced trial on March
31, 2014, without providing any construction of analyzer server or linking
actions. On April 25, 2014, this Court affirmed in Motorola, expressly adopting
the Northern District of Illinois constructions of the terms analyzer server and
linking actions in the 647 patent. Motorola, 757 F.3d at 1304-07. The district
court allowed the parties to present additional testimony on the last day of trial to
1
A3015-16 (April 23, 2012 preliminary injunction briefing); A40059:25A40060:4 (February 14, 2013 technology tutorial); A40542-47 (December 12,
2013 hearing); A40853-54 (March 13, 2014 Joint Pre-Trial Statement); A40867
(March 28, 2014 denial of request for inclusion in jury notebook).
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address the infringement and invalidity allegations under this Courts

constructions. A13027:16-24.
2.
Apples 721 Patent (Slide To Unlock)
U.S. Patent No. 8,046,721 (721 patent) is directed to a device with a

touch-sensitive display that may be unlocked using pre-defined gestures and
instructions. Asserted claim 8 is dependent on claim 7, which provides:
7. A portable electronic device, comprising:
a touch-sensitive display;
memory;
one or more processors; and
one or more modules including instructions:
to detect a contact with the touch-sensitive display at a first predefined
location corresponding to an unlock image; to continuously move
the unlock image on the touch-sensitive display ; and
to unlock the hand-held electronic device if the unlock image is
moved from the first predefined location on the touch screen to a
predefined unlock region on the touch-sensitive display.
A685 (emphases added). Claim 8 is directed to:
8. The device of claim 7, further comprising instructions to display
visual cues to communicate a direction of movement of the unlock
image required to unlock the device.
Id. (emphasis added).
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3.
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Apples 172 Patent (Text Correction)
U.S. Patent No. 8,074,172 (172 patent) is directed to a particular form of

providing word recommendations for text correction. Asserted claim 18 requires
[a] graphical user interface on a portable electronic device with a keyboard and a
touch screen display. A707-08 (emphasis added). The district court construed
the preamble limitation a keyboard and a touchscreen display to encompass both
physical and virtual keyboards. A161-64. Based on that construction, the court
granted summary judgment of infringement of the 172 patent. A164.
4.
Apples 959 Patent (Unified Search)
U.S. Patent No. 6,847,959 (959 patent) is directed to a computer system

for locating information both on the Internet and locally with a single search, by
using a plurality of heuristics. Asserted claim 25 requires instructions to provide
an information identifier to a plurality of heuristics to locate information in the
plurality of locations which include the Internet and local storage media. A607.
5.
Apples 414 Patent (Sync)
U.S. Patent No. 7,761,414 (414 patent) is directed to particular methods

and systems for synchronizing data between multiple devices. Asserted claim 20
requires at least three distinct synchronization software components that are
configured to synchronize. A655.
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Samsungs 239 Patent
U.S. Patent No. 5,579,239 (239 patent) is directed to a system for video
compression and transmission. Asserted claim 15 provides:
15. An apparatus for transmission of data, comprising:
a computer including a video capture module to capture and compress
video in real time;
means for transmission of said captured video over a cellular
frequency.
A720. The district court rejected Samsungs proposed construction of the means
for transmission as one or more modems connected to one or more cellular
telephones or cellular radio transmitters, and instead construed it as one or more
modems connected to one or more cellular telephones, and software performing a
software sequence of initializing one or more communications ports on said
apparatus, obtaining a cellular connection, obtaining said captured video, and
transmitting said captured video. A150 (emphasis added).
B.
The Jury Verdict
On May 5, 2014, the jury returned a verdict finding infringement of Apples

647 and 721 patents. A40869; A40872. The jury found no infringement of
Apples 959 and 414 patents. A40870-71. The jury also found that Samsungs
infringement of the 721 patent was willful. A40874. The jury found all of
Apples patents valid. Id. The jury awarded Apple $119.6 million (A40875); on a
per-patent basis, that award reflected $98,690,625 for infringement of the 647
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patent by nine Samsung products, $2,990,625 for infringement of the 721 patent
by three Samsung products, and $17,943,750 for infringement of the 172 patent
by seven Samsung products (A27-28; A40876).
As to the Samsung patents, the jury found that Apple infringed U.S. Patent
No. 6,226,449 (449 patent) but did not infringe the 239 patent and awarded
Samsung $158,400. A40878-79.
C.
The District Courts Orders On Post-Trial Motions
On August 27, 2014, the district court denied Apples motion for permanent
injunction. A41023-64. Apple filed an interlocutory appeal from that ruling,
which is pending before this Court. Apple Inc. v. Samsung Elecs. Co., No. 20141802.
On September 9, 2014, the district court denied Samsungs renewed motion
for JMOL (A39-91) except insofar as it granted Samsungs motion for judgment
that it did not willfully infringe the 721 patent, holding that there was no objective
willfulness because Samsungs invalidity defense was not objectively baseless
(A66). In addition, the court granted Apple supplemental damages for infringing
sales through the date of judgment. A113.
On November 25, 2014, the district court awarded ongoing royalties to
Apple for any ongoing infringement. A3-38. On the same day, the district court
entered final judgment. A1-2.
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SUMMARY OF ARGUMENT
The judgment should be reversed or vacated on several independent
grounds.
1. The judgment of infringement of Apples 647 patent should be reversed
because Apple failed to produce evidence showing infringement of the 647 patent
under this Courts authoritative constructions in Motorola of the analyzer server
and linking actions limitations in that patent.
First, as to analyzer server, there is no evidence that the accused code
functions as a server routine that is separate from a client or receives data
having structures from a client. Rather, the undisputed evidence established that
the accused code is part of the application when the claimed detecting and
linking functions are performed.
The district court erred in finding the
separateness requirement satisfied by the fact that the code came from shared
libraries, for the uncontested evidence shows that the accused library code is just
like any other code within the application itself, and thus is no more a separate
server than is any other software in the application. By treating such an ordinary
program routine as a server separate from a client, the district court rendered the
separate server requirement meaningless, in disregard of Motorola.
Second, Apple produced no evidence to show a specified connection
between a detected structure and a selected action. The district court found the
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specified-connection requirement satisfied because the system necessarily calls a

method called startActivity() when the user makes a selection of an action to be
performed, but that was error. As Apples own expert conceded, startActivity() is
merely a generic first step that begins the process of identifying possible
applications to perform the action. If the activation of any codewhether or not it
is linked to a particular applicationwere sufficient to constitute a specified
connection, then that requirement would be rendered meaningless.
2. Samsung is entitled to JMOL as to Apples 721, 172, 959, and 414
patents.
First, Samsung is entitled to judgment that claim 8 of the 721 patent is
invalid as obvious because the prior art disclosed all of the limitations in claim 8.
The district court held that, because the prior art was ambivalent about the use of
sliders (rather than other toggles) to unlock, the jury could have found that the
prior art teaches away from sliders. But the prior art expressly encourag[ed] the
use of sliders, and this Court has rejected the idea that ambivalence suffices to
constitute teaching away.
Second, Samsung is entitled to judgment of non-infringement of the 172
patent because the district court erroneously construed the limitation a keyboard
and a touchscreen display to encompass both physical and virtual keyboards.
Since the keyboard and display are recited as separate elements, the plain
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language requires a separate keyboard and display, not a keyboard that is part of
the display. In any event, claim 18 of the 172 patent is invalid as obvious because
the prior art in combination disclosed every limitation of claim 18.
Third, Samsung is entitled to judgment that claim 25 of the 959 patent is
invalid. Claim 25 is invalid as indefinite because the claim relies upon heuristics
to conduct searches for information without any specification of what those
heuristics are.
The district courts use of a rule of thumb in construing
heuristics and Apples experts definition of heuristics as good ideas are both far
too vague and subjective to satisfy the requirements of Nautilus, Inc. v. Biosig
Instruments, Inc., ___ U.S. ___, 134 S. Ct. 2120 (2014). Claim 25 is also invalid
as anticipated by prior art, which met every claim limitation.
Fourth, Samsung is entitled to judgment that claim 20 of the 414 patent is
invalid as anticipated. The undisputed evidence established that Windows Mobile
5 (WM5) anticipated claim 20. The district courts ruling to the contrary relied
solely on one sentence of testimony from Apples expert that was irrelevant to the
component of WM5 that Samsung relied upon to show anticipation.
3. This Court should vacate the district courts ruling awarding ongoing
royalties. The district court lacked jurisdiction over ongoing royalties because it
addressed the issue after Apple appealed the denial of a permanent injunction,
passing jurisdiction over equitable relief to this Court. In any event, Apple waived
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ongoing royalties by failing to request that relief at trial or at any other point prior
to its injunction appeal. Even if an ongoing royalty were proper, the district court
erred in setting the rate because it failed to consider Apples comparable license to
HTC.
4. Samsung is entitled to a new trial on its 239 patent because asserted
claim 15 is a means-plus-function claim, and the district court erroneously
construed the claim to require software structure not included in the specification
and not necessary to perform the stated function. The district court also erred in
excluding cellular radio transmitters for performing the transmission function.
The specification discloses radio transmitters and transmission over cellular
frequencies, which necessarily include cellular radio transmitters.
5. Samsung does not seek any new trial on Apples patents, but should any
such new trial be ordered, this Court should correct three evidentiary rulings.
First, the conjoint survey evidence presented by Apples expert witness Dr. John
Hauser should be excluded as unreliable, as should testimony by Apples damages
expert Dr. Christopher Vellturo insofar as it relies on that survey. The survey fails
to consider significant factors that affect real-world market share and consumer
decisions, such as brand, battery life, operating system, and promotion and is
inconsistent with real-world evidence of consumers buying decisions. Second,
Samsung should be able to introduce Apples comparable licenses and previous
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valuation of their patents, which showed that Apples proposed royalty rates below
were grossly inflated. Third, the district court erred in admitting evidence of lost
profits for a blackout period for the 647 patent, in conflict with Grain
Processing Corp. v. American Maize Prods. Co., 185 F.3d 1341, 1348 (Fed. Cir.
1999).
STANDARDS OF REVIEW
The district courts ruling on Samsungs motion for JMOL is reviewed de
novo, and should be reversed if the jurys factual findings are not supported by
substantial evidence or if the legal conclusions implied from the jurys verdict
cannot in law be supported by those findings. Eaton Corp. v. Rockwell Intl
Corp., 323 F.3d 1332, 1336 (Fed. Cir. 2003) (quoting Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)).
The district courts grant of summary judgment is reviewed de novo, and
should be upheld only if, crediting all of the nonmovants evidence and drawing all
justifiable inferences in its favor, there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of law. Brilliant
Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed. Cir. 2013)
(citation omitted).
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Obviousness is a question of law reviewed de novo with the jurys

underlying fact determinations reviewed for substantial evidence. Broadcom Corp.
v. Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013).
The jurys determination of anticipation is reviewed for substantial evidence.
Virnetx, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1323 (Fed. Cir. 2014).
Whether a patent is invalid for indefiniteness is reviewed de novo. DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014).
The district courts claim constructions relied only on intrinsic evidence (see
A201-264; A137-150), and are therefore reviewed de novo. See Teva Pharm.
U.S.A., Inc. v. Sandoz, Inc., ___ U.S. ___, 135 S. Ct. 831, 840-42 (2015).
The district courts award of ongoing royalties is reviewed for abuse of
discretion. Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 35 (Fed. Cir.
2012). A district court abuses its discretion when it makes a clear error of
judgment in weighing relevant factors or exercises its discretion based upon an
error of law or clearly erroneous factual findings. Aqua Shield v. Inter Pool
Cover Team, 774 F.3d 766, 770 (Fed. Cir. 2014) (brackets and internal quotation
marks omitted). A district courts assertion of jurisdiction is a legal matter, which
is reviewed de novo. See, e.g., Ricks Mushroom Serv., Inc. v. United States, 521
F.3d 1338, 1342 (Fed. Cir. 2008).
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ARGUMENT
I.

MOTION FOR JMOL AS TO APPLES 647 PATENT
Infringement requires proof that each and every claim limitation is found in
the accused device. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575
(Fed. Cir. 1995) ([E]very limitation set forth in a claim must be found in an
accused product, exactly.). Under this Courts authoritative constructions of the
terms analyzer server and linking actions in claim 9, no reasonable jury could
find that the accused products infringe Apples 647 patent. Samsung is thus
entitled to reversal of the $98,690,625 in damages awarded on that patent and entry
of judgment in its favor.
A.

Could Find That The Accused Products Include An Analyzer
Server
This Courts Claim Construction in Motorola.
In Motorola, this Court
affirmed the district courts construction of analyzer server as a server routine

separate from a client that receives data having structures from the client. 757
F.3d at 1304. Apple had argued in that case (as here) that the analyzer server
need not be separate from a client and instead should be construed as a
program routine(s) that receives data, uses patterns to detect structures in the data,
and links actions to the detected structures. Id. This Court expressly rejected
Apples proposed construction, finding that it contradicts the claim language
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because it reads analyzer server out of the claim. Id. at 1305. Rather, the plain
meaning of server, when viewed from the perspective of a person of ordinary
skill in the art, entails a client-server relationship, and [c]onsistent with this
perspective, the specification discloses an analyzer server that is separate from the
application it serves. Id. at 1304. In particular, the patent specification depicts
program 165 as separate from application 167:
Id. Thus, the specification describes the analyzer server and the application,
which it serves, as separate structures, in which the application sends data to the
analyzer server to be analyzed. Id.
The Unrebutted Evidence At Trial. Apple accused two applications on the
Samsung devices of infringing claim 9: the Browser application (web browser)
and the Messenger application (text messaging).
Those applications perform
certain functions described in the patent (and well known in the art), such as
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detecting structures and allowing users to select actions to be performed on them.

But they do not use the software architecture of claim 9, as construed by this Court
in Motorola.
Instead, the uncontested evidence at trial showed that the Browser and
Messenger applications each contain their own routines within the application for
analyzing the data (i.e., performing the detecting and linking functions) and do not
rely on a separate server, as claimed by the 647 patent. For Browser, this code is
referred to as Cachebuilder or, in later versions, ContentDetectors; for Messenger,
this code is referred to as Linkify.
A11591:14-18 (Hackborn); A13092:17-
13093:22 (Jeffay).
The accused codeCachebuilder, ContentDetectors, and Linkifyall
originate in shared libraries in the Android operating system.
A10897:25-
10898:5 (Mowry). As Googles engineer explained, the code is stored in a library

so that multiple applications have access to it and can copy it into the application
when the relevant functionality is needed. A11591:2-11592:10 (Hackborn). This
is more efficient than each application always maintaining such code, even when
not needed, which would create unnecessary overhead.
A11591:17-11592:2
(Hackborn). Unlike a server, a shared library never receives data from client
applications for analysis (e.g., detecting and linking).
(Jeffay).
A13095:1-13096:5
Rather, applications merely copy code from a library for later use.
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A11792:4-18 (Jeffay). Thus, Androids shared libraries are a programming tool

that has no bearing on whether a client-server architecture exists.
When an application such as Browser or Messenger needs the code, it will
copy it from the library and it will run as part of the application. A13092:1713093:7 (Jeffay) (accused code is not separate from the clients because it
becomes part of the application). In fact, Dianne Hackborn, the Google engineer
who helped to design and implement Linkify, testified that Linkify does not run
on its own. It runs as part of the application thats using it. A11591:14-18. Ms.
Hackborn explained specifically that Linkify is not a server because there is no
sharing it does of data between applications and it would be a waste to have the
overhead of putting it as a separate server. A11591:19-11592:2.
Based on this evidence, no reasonable jury could conclude that
Cachebuilder, ContentDetectors, and Linkify function as server routines that are
separate from the Browser and Messenger applications, as required by the
claim, for each is simply part of the client application itself. And Apple offered no
evidence showing that the code in question is separate from the accused
applications when the detecting and linking functions are performed, or that it ever
receives data from the accused client applications.
Apples Reliance On An Incorrect Claim Construction At Trial. Because the
district court did not provide the jury with the proper construction of analyzer
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server until after all of the 647 witnesses had testified, Apple tried its entire case
based on the incorrect premise that analyzer server should be construed broadly
as program routine(s) that receives data, uses patterns to detect structures in the
data, and links actions to the detected structuresthe very claim construction
rejected by this Court in Motorola, 757 F.3d at 1304. Accordingly, Apple sought
to prove that the analyzer server element was met simply because the functions
of detecting and linking were presenta position irreconcilable with this
Courts claim construction of analyzer server requiring a separate server.
Apples expert Todd Mowry testified that Linkify could be an analyzer server
simply because its software, and the software detects structures in the data and
links actions to the detected structures. A12800:22-24; see also A10896:14-16
([T]he definition of analyzer server is [i]ts a piece of software that performs
these functions.); A10853:11-10855:3; A41153.
On cross-examination, Dr.
Mowry insisted that any device that has the functions of detecting and linking is
necessarily an analyzer server. A10920:10-19.
Apples Evidence On The Last Day Of Trial. In the additional testimony
allowed by the district court after issuance of this Courts Motorola ruling (see
A13029:4-13045:5), Apple submitted no new factual testimony or additional
evidence, and Apples expert stated that his analysis had not changed, despite
having provided his opinion under the construction rejected by this Court
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(A13029:12-20 (Mowry)). Rather, Apples expert simply asserted that the fact that
Linkify and Cachebuilder/ContentDetectors are written as shared libraries
qualifies them as a server that operates separate from a client application.
A13030:1-13038:25 (Mowry).
Apple, however, did not provide any evidence of a library operating as a
server separate from a set of client applications that can access it. Nor could it, for
a shared library and a server are distinct concepts in computer science.
As
Samsungs expert Dr. Jeffay explained, libraries are bits of code that exist so that
all programmers can use them. [T]he idea is so that you dont have to reinvent
the wheel every time. You go to the library, you take code out of the library, you
integrate it in your application, and at that point the library code is no different
than any other code in the application. A11792:4-18; see also A11794:8-16;
A13092:17-13093:1; A13099:4-23.
Simply put, library code is in the
application and is just like every other piece of code [that] is in there.
A11792:19-11793:2. When an application, like Messenger, uses Linkify, it gets
[its] own copy of Linkify. Its the same for both Content Detectors and Cache
Builder. A13094:9-25. Thus, the shared libraries Apple accused never receive
data from a client application, as expressly required by the proper analyzer
server claim construction. Instead, each client application simply copies the code
it needs from the library, integrating that code into the application itself to later
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provide the needed functionality; nothing is sent to the library for analysis.
A11591:14-11592:2
(Hackborn);
A11791:23-11794:7;
A13091:19-13095:15;
A13096:6-13097:5. The claimed analyzer server, on the other hand, is separate

from client applications and must receive data from each client application in order
to separately analyze it.
Apples
infringement
allegations
themselves
recognize
that
Cachebuilder/ContentDetectors and Linkify are part of the applications, for they do

not accuse a single, separate set of routines of detecting and linking for both
Messenger and Browser, but rather accuse two different sets of routines (i.e.,
Cachebuilder/ContentDetectors for Browser and Linkify for Messenger), both of
which run as part of one application, but not the other. In fact, Apples expert Dr.
Mowry expressly acknowledged that the code he relies upon is code in the
client/code from the client.
A13033:8-11; A13033:19-21; A13034:16-19.
Because the code is part of the client applications, it is not separate from them,
as required by this Courts construction. Indeed, the idea that there is a clientserver relationship, Motorola, 757 F.3d at 1304, makes no sense where the code
in question is all part of the same application.
The District Courts JMOL Decision. In its decision denying JMOL of noninfringement of the 647 patent, the district court relied solely upon Apples
evidence from the last day of trial. A44-47. With respect to the analyzer server
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limitation, the district court held that the jury could have credited Dr. Mowrys
assertion that the shared libraries receive data from the Messenger and Browser
applications and detect structures in that data. A47. But the district court cited
only conclusory statements by Dr. Mowry to support this position (A46-47), which
is not surprising considering such shared libraries do not work this way. Apple
was required to offer more than an experts conclusory statementa statement that
conflicts with basic principles of computer scienceto support infringement. 2
Indeed, the cited testimony from Dr. Mowry does not say that shared
libraries receive data, but rather that the routines receive data. A13032:1-21;
see also A13034:11-13035:11. Apple should not be permitted to treat the accused
code as a shared library for purposes of satisfying the separate-server requirement,
while treating the accused code as code in the application itself for purposes of
satisfying the receiving-data requirement. Such inconsistent characterizations of
analyzer server conflict with this Courts construction.
Similarly, the district courts suggestion that the jury could reasonably have
found that shared libraries are separate from the applications that use them (A47) is
2
See, e.g., Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046
(Fed. Cir. 2000) ([I]t is well settled that an experts unsupported conclusion on the
ultimate issue of infringement is insufficient to raise a genuine issue of material
fact.); see also Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d
866, 876 (Fed. Cir. 1998); Mformation Techs., Inc. v. Research in Motion Ltd.,
2012 WL 3222237, at *2 (N.D. Cal. Aug. 8, 2012), affd, 764 F.3d 1392 (Fed. Cir.
2014).
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irrelevant because that separation exists only before the code is copied into the
application, and thus before the code supposedly becomes the analyzer server
that receives data from the client and performs the relevant functions of detecting
and linking. Simply put, the fact that the accused code came from a shared library
does not change the undisputed fact that it is part of the application when it
performs the relevant functions of an analyzer server."
The accused code is therefore no more separate and no more a server
than is any other program routine. The district court did not cite any testimony for
the proposition that, separate or not, the code from a shared library is a server.
As the unrebutted evidence from Googles engineer made clear, using shared
libraries (a programming tool) is fundamentally different from using a separate
server (a form of software architecture). See supra at 18-19. And by treating such
an ordinary program routine as a server separate from a client, the district court
disregarded this Courts holding in Motorola, which expressly rejected defining
analyzer server simply as a program routine that receives data. See Motorola,
757 F.3d at 1304-05. Accordingly, the district courts analysis would read[]
analyzer server out of the claim, precisely the improper result that this Court
rejected in Motorola. Id. at 1305.
Finally, the district court also erred in relying (A47) on Dr. Mowrys
testimony, on the last day of trial, that the code he previously identified as
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performing linking was actually so-called glue code that connects together
different modules or different pieces of software (A13033:22-13034:10), and thus
does not violate the requirement that the code be separate from a
client. A13033:8-11; A13033:19-21; A13034:16-19; A13060:9-13. Dr. Mowrys
belated characterization of the code cannot change the fact that it is not separate
from the application as required by the claim. Whether called glue code or not,
Dr. Mowry admitted that the linking code for the analyzer server was part of the
client itself (A13033:8-11; A13033:19-21; A13034:16-19) (stating that this is
code in the client / code from the client), and it therefore cannot function as a
separate server.
Because the record contains no substantial evidence of a separate analyzer
server as required by this Courts construction in Motorola, Samsung is entitled to
JMOL on the 647 patent.
B.

Could Find That The Accused Products Link[] Actions With A
Specified Connection
The district court also erred by not granting JMOL of non-infringement of

the 647 patent based on the phrase linking actions to the detected structures. As
with the term analyzer server, Apple relied largely upon a claim construction that
this Court rejected in Motorola, and failed to produce any evidence on the last day
of trial to demonstrate that the correct claim construction was satisfied.
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This Courts Claim Construction. In Motorola, the district court construed

the claim phrase linking actions to the detected structures to mean creating a
specified connection between each detected structure and at least one computer
subroutine that causes the CPU to perform a sequence of operations on that
detected structure. Motorola, 757 F.3d at 1304 (emphasis added). This Court
affirmed that construction, expressly rejecting Apples contention that linking
means merely associating detected structures to computer subroutines that cause
the CPU to perform a sequence of operations on the particular structure to which
they are associated. Id. at 1306 (emphasis added). As this Court explained, the
plain meaning of associating relates to a mere commonality, while linking infers a
joining. Id. This Court further held that linking is more than just associating,
noting that [t]he patent consistently differentiates between associating and linking
and implies that linking is a more specific connection than merely associating.
The Unrebutted Evidence At Trial. The record here contains no evidence of
any specified connection between detected structures and actions. In the accused
applications, Android creates a pop-up menu that is displayed when the user selects
a detected structure via a touchscreen.
A10869:21-10870:6 (Mowry).
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A41155, A41156, A41157. If a user selects an option from the pop-up menu,
Android creates what is known as an Intent. A10857:16-A10859:10 (Mowry).
According to Apple, Intents are part of the specified connection between the
structure and the action. A13039:25-13040:23; A13041:5-16 (Mowry).
Unrebutted evidence, however, established that Intents do not create a
specified connection but, at most, an association, and in fact, Intents were
purposefully designed to avoid creating any specified connection. Google engineer
Ms. Hackborn, the creator of the Intent system, testified that Android was intended
to have an open platform, and we wanted to allow third party applications to work
the same as built-in applications on Android, so Intents allowed us to work with
both third party and built-in applications the same way. A11586:20-11587:6.
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Intents do this by initiating a process that prompts Android to search for whatever
applications (third-party or system-provided) are available to perform that action
thus allowing programmers to avoid specifying in advance that a particular system
application will handle the task. A11586:7-11587:6; A11588:11-23 (Hackborn);
A11802:2-23 (Jeffay). Moreover, Android provided this flexibility so that users
can choose the application to perform the action if multiple applications are
available.
Thus, in the accused applications, instead of specifying the application that
will act on a structure after a users pop-up menu selection, the accused application
creates an Intent with a generic request (e.g., dial) that causes the system to
identify one or more applications that can perform the request, and if multiple such
applications exist, provide that choice to the user. As Ms. Hackborn explained,
once the Intent is created, it is give[n] to Android and then Android will find
an application that will actually do [what is requested]. A11586:7-13. Simply
put, there is no specified connection because the connection can be made to any
application that the system identifies and the user chooses, rather than to a specific
application. Apple offered no evidence rebutting these accounts of the operation of
Intents.
Apples Reliance On An Incorrect Claim Construction At Trial. Prior to the
last day of trial, Apple pressed its case that Intents were links based on the
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erroneous premise that mere association was enough for infringementthe very
premise this Court expressly rejected in Motorola. For example, Apples expert
Dr. Mowry presented the 647 patent to the jury as a new invention where if you
had a system that could automatically find these things, like phone numbers, e-mail
addresses and so on, and also automatically associate different choices and things
you could do with them, which they call actions.
A10831:16-20 (emphasis
added). He also concluded that his analysis meant that the software associates
the recognized text with the appropriate choices. A10865:16-19. Nowhere did
Apples expert testify that there is a specified connection between a detected
structure and the code for performing a selected action.
Apples Evidence On The Last Day Of Trial. After this Court issued its
Motorola opinion, in the extra testimony allowed by the district court on the final
trial day, Apple again offered no new factual evidence, but merely had its expert
Dr. Mowry testify that, regardless of what he had said earlier about associating,
there was in fact a specified connection.
He pointed to a method called
setIntent() that, when a structure is detected, necessarily calls another method

called startActivity(), which will eventually determine the application to handle the
action after the user has made a selection. A13040:6-23. But that is the same
Intents system and startActivity() method that Dr. Mowry earlier stated merely
associated an action with a structure, given that it was designed to allow a user to
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select applications to handle tasks without interfering with hard, specified code
paths to an application.
The District Courts JMOL Decision.
In denying JMOL of non-
infringement of the 647 patent based on the linking actions term, the district
court again relied solely on Apples post-Motorola testimony on the last day of
trial.
A44-46.
The district court held that the jury might have credited Dr.
Mowrys testimony that the creation of an intent object for a particular choice in
the pop-up menu forms the specified connection because it necessarily calls
the startActivity() method and passes an Intent object. A45. But whether an
action routine is necessarily called is irrelevant to the linking actions phrase as
construed by this Court: the linked action must be part of a specified connection.
As this Court held, linking infers a joining. Motorola, 757 F.3d at 1306.
Unrebutted evidence at trial showed that calling startActivity() is not a
joining, even if it necessarily occurs, and thus does not form a specified
connection between a structure and the routines that will operate on them. As Dr.
Jeffay explained:
The user doesnt select Start Activity. The user selects [for
example] dial, and at the time that the structures are detected and
linked, there is no specified connection between that structure and the
code thats ultimately going to dial. Its to allow users to specify
their own, for example, their favorite e-mail client so that when you
detect an e-mail address, its not bound to any particular e-mail client
because it doesnt yet know which e-mail client the user wants to use.
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And this Intent mechanism figures this out on the fly. So at the
time something is detected, whats linked is Start Activity, and Start
Activity is ultimately not the action that the user wants to perform.
A13100:16-13101:4.
Apple did not produce any evidence to dispute that
startActivity() simply starts the process of choosing an application, and that the
Intent mechanism does not have a connection to any particular application or set of
applications because it was designed to avoid such specificity.
To the contrary, Apples own admissions support the conclusion that the
district court erred in finding a specified connection based on calling
startActivity(). Dr. Mowry conceded that Intents express what you want to have
happen when you launch another program (A10858:3-7), and that startActivity()
is just the launcher that knows how to launch another program (A10858:13-20).
Thus, because the undisputed evidence shows that startActivity() is simply
the code that begins the process of searching for an unknown application, there is
no specified connection. Indeed, any time that a user chooses an action on a
smartphone, some computer code will be activated. If that suffices to constitute a
specified connection, then the term specified connection as construed by this
Court in Motorola would be rendered meaningless.
The error in the district courts analysis is further demonstrated by the fact
that no connection exists at the time the user selects an action. The plain language
of claim 9 demonstrates that the specified connection must be in place before
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selection of an action by the user because it requires a user interface enabling the
selection of a detected structure and a linked action. A597. This makes sense
because a connection cannot be specified if it does not exist when the action is
chosen. The undisputed evidence shows, however, that Android uses Intents to
find an application after the users selection of an action. A11802:3-11804:11;
A11826:2-24 (Jeffay). Indeed, the Intent does not even exist until after the user
selects the structure and the action the user wishes to perform.
A12806:13-
12807:16; A13033:1-21; A13034:12-19 (Mowry). In describing the subroutines in

the Android code that he accused of being the linked actions to detected structures
(A10857:9-10867:23), Apples own expert Dr. Mowry conceded that Android
builds Intents only after the user selects an option, without any such connection
existing beforehand (A10857:9-10864:23; A12806:13-12807:16; A13033:113034:23).
The district court erred in disregarding the important timing sequence the
claim requires for the supposed connection. The court held that, because the
analyzer server is tasked with creating links, those links need not always exist:
under the Motorola construction, the analyzer server is for creating a specified
connection, such that the claimed action need not always be linked to a structure
prior to detection of that structure. A45. But the point of the claim requirement is
not that the link must always exist or exist prior to detection of a structure, but
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that it must exist before the user selects the action. Otherwise, there is no linked
action or specified connection, and indeed, no such connection was
demonstrated here.
Because the record contains no substantial evidence of a specified
connection as required by this Courts claim construction in Motorola, Samsung
is entitled to JMOL of non-infringement on the 647 patent.
II.

MOTION FOR JMOL AS TO APPLES 721, 172, 959 AND 414
PATENTS
A.

Claim 8 Is Invalid As Obvious
The district court erred in failing to grant JMOL that claim 8 of the 721
patent is invalid as obvious. [T]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield predictable
results. KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). Claim 8 is a
classic example of an obvious combination under KSR.
Claim 8 (dependent upon claim 7) covers [a] portable electronic device
with module instructions to unlock the hand-held electronic device if the unlock
image is moved from the first predefined location on the touch screen to a
A685.
Samsung
presented two pieces of prior art, the Neonode N1 Quickstart Guide (A20713-740)
and a video and paper by Plaisant that were presented at the ACM CHI conference
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in 1992 (A20741, A20742-43). A11973:23-11984:1 (Greenberg). Together, the

prior art disclosed all of the limitations in claim 8 of the 721 patent.
The Neonode guide disclosed unlocking a portable, touch-screen phone with
a left-to-right sweep gesture.
A11976:8-21 (Greenberg); A20741.
In fact,
Neonode even has Right sweep to unlock appear on the screen of the device.
A20725. Thus, the only element of claim 8 missing from Neonode is the moving
image accompanying the sweep. A11976:22-11977:2 (Greenberg).
The Plaisant reference plainly disclosed this sliding image that could be
moved from one predefined location to another to change the state of the device.
A11978:15-11979:20 (Greenberg).
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A20741. At trial, Apple did not show that claim 8 combines the elements of
Neonode and Plaisant in any unexpected or unpredictable way.
A12875:2-
12877:16 (Cockburn). And Apple did not identify any element missing from both
Neonode
and
Plaisant.
Instead,
Apples
sole
argument
against
the
Neonode/Plaisant combination was that Plaisant teaches away from using the
sliding mechanism. A12874:21-12877:16 (Cockburn).
As a matter of law, there was no teaching away here. A reference does
not teach away if it does not criticize, discredit, or otherwise discourage
investigation into the invention claimed. Galderma Labs., LP v. Tolmar, Inc., 737
F.3d 731, 739 (Fed. Cir. 2013) (internal quotation marks and alterations omitted).
The record is clear that Plaisant did not discourage, and in fact encouraged, the
use of sliders. Specifically, Plaisant taught that an advantage of the sliding
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movement is that it is less likely to be done inadvertently therefore making the

toggle very secure. A20743 (emphasis added); A11980:12-11981:9 (Greenberg).
Plaisant does state that [t]he toggles that are pushed seemed to be preferred over
the toggles that slide, but it made clear [e]ven if sliders were not preferred, the
fact that users used them correctly is encouraging. A20743 (emphasis added).
The district court erred in holding that Plaisants ambivalence towards
sliders created a question of fact for the jury. A55-56. This Court has repeatedly
held that such ambivalence does not constitute teaching away as a matter of law.
For instance, Allergan, Inc. v. Apotex Inc., 754 F.3d 952 (Fed. Cir. 2014), held that
[t]he district court err[ed] by taking an overly cramped view of what the prior
art teaches because the prior arts mere disclosure of alternative preferences does
not teach a person of ordinary skill away. Id. at 963-64.3 Indeed, the case for
teaching away here is even weaker than in Allergan because, despite some
ambivalence, Plaisant pointed out the important advantage of sliders directly
relevant to the combination at issue. A20743 (emphasis added). 4 In short, there is
See also, e.g., Galderma Labs., 737 F.3d at 739; In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009).
4
The district court relied upon Cheese Systems Inc. v. Tetra Pak Cheese &
Powder Systems Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013), but there [n]othing
in the prior art noted that the improvement stated in the patent at issue should be
employed. Id. at 1352.
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no plausible reading of Plaisantwhich highlights the benefits of slidersthat

renders the use of sliders nonobvious.
Finally, the district court erred in holding that the jury could have found
secondary indicia of non-obviousness. Where, as here, the inventions represented
no more than the predictable use of prior art elements according to their established
functions, weak secondary considerations are inadequate to establish nonobviousness. W. Union Co. v. Moneygram Payment Sys., Inc., 626 F.3d 1361,
1373 (Fed. Cir. 2010) (internal quotation marks omitted). Indeed, the district court
relied solely on generic praise not linked to the actual subject matter of the claim
and a supposed long-felt need (A56-57), but [w]here the differences between
the prior art and the claimed invention are as minimal as they are here, it cannot
be said that any long-felt need was unsolved. Geo. M. Martin Co. v. Alliance
Mach. Sys. Intl LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010). Moreover, to rely on
secondary indicia, the patentee must establish a nexus between the evidence of
commercial success and the patented invention. Wyers v. Master Lock Co., 616
F.3d 1231, 1246 (Fed. Cir. 2010). Apple made no effort to establish a nexus
between commercial success and the subject matter of claim 8.
(Cockburn).
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Samsung Is Entitled To JMOL As To The 172 Patent

1.
The District Court Erred In Its Construction Of The Phrase

Keyboard And A Touchscreen Display
The district court erred in granting summary judgment of infringement of

claim 18 of Apples 172 patent, directed to text correction, because the court
erroneously construed the preamble limitation a keyboard and a touchscreen
display to encompass both physical and virtual keyboards. A161-164. The
proper construction requires a physical keyboard in addition to a touchscreen.
Claim 18 requires two elements: a keyboard and a touch screen display.
A707-08 (emphasis added). Where a claim lists elements separately, the clear
implication of the claim language is that those elements are distinct component[s]
of the patented invention. Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations omitted); see also Gaus v.
Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004) (similar). Thus, the plain
language of claim 18 excludes keyboards that are part of the touchscreen display
(i.e., virtual keyboards), rather than separate from it (i.e., physical keyboards). In
concluding that a keyboard could be touchscreen or physical, the district court
erroneously isolated the word keyboard out of context from the actual claim
language. A162-63. Moreover, the 172 patents specification confirms that a
physical keyboard, unlike a virtual keyboard, is not part of the touch screen
display. A705. Thus, summary judgment of infringement was improper, and
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because the accused devices have no physical keyboard, judgment of noninfringement should be entered for Samsung.
2.
Claim 18 Is Invalid As Obvious
The district court also erred in denying JMOL that claim 18 is invalid as
obvious over the combination of U.S. Patent No. 7,880,730 (Robinson)
(A20885-929) and International Publication No. WO 2005/008899 (Xrgomics)
(A21000-058). Together, these references disclose every limitation of claim 18.
Claim 18 describes a form of text correction in which a current character
string is displayed in a first area and a second area of a touchscreen display.
A707-08.
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first area
second
area
A694. Under claim 18, the user has three options: (1) the user can replace the
current character string with a suggested replacement string by selecting a
delimiter (such as the spacebar); (2) the user can replace the current character
string by selecting a replacement character string in the second area; or (3) the user
can keep the current character string by selecting it in the second area. A707-08;
A12028:15-12031:14 (Wigdor).
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Robinson (Keyboard system with automatic correction) discloses virtually

every aspect of claim 18. A20885-929. Robinson, like the 172 patent, discloses a
user interface for text entry.
first area
A20889. Robinson also discloses a separate area of a touchscreen display with

both a current character string and suggested replacement character strings
displayed in the separate area:
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second
area
A20890; A12027:22-12028:14 (Wigdor).
Furthermore, Robinson discloses all
three of the user options recited by claim 18. A12028:15-12031:14 (Wigdor). As

a matter of law, and applying a modicum of common sense as allowed by KSR,
550 U.S. at 421, the automatic text correction of claim 18 was obvious in 2007.
This was confirmed by Samsungs expert at trial. A12032:5-6 (Wigdor).
The only thing Robinson arguably does not disclose is the current character
string in the first area.
A12031:15-12032:3 (Wigdor).
But it would be an
insignificant leap for a person of ordinary skill in the art to contemplate Robinson
with the current character string displayed in the first area:
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rwzt
Robinson Fig. 1B, modified by Samsung to display rwzt in the text

Indeed, displaying what a user is typing (i.e., the current character string) in the
text entry area was a well-known behavior in computers since the 1970s, and
numerous examples of that behavior existed. A12025:1-9 (Wigdor). One such
example is Xrgomics, which discloses another text correction system in which the
touchscreen display includes a first and second area.
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A21051; A12025:25-12026:19 (Wigdor).
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The first area includes the current
character string (here, deva) and the second area includes suggestions that a user
can select to replace the current character string, as well as the current character
string itself. A12025:25-12026:19 (Wigdor). Xrgomics thus discloses a current
character string in the first area, the only element missing from Robinsons figures.
A12026:11-19; A12031:15-12032:6 (Wigdor).
In its decision on Samsungs motion for JMOL (A39-91), the district court
erroneously considered each of Robinson and Xrgomics in isolation (A66-69).
The district court should have considered the prior art together because Samsungs
expert testified that a person of ordinary skill in the art would have been motivated
to combine Robinson and Xrgomics (see A12027:1-21; A12031:15-12032:6
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(Wigdor)), and there was no evidence to the contrary. The district court also relied
on the testimony of Apples expert that claim 18 placed the character string in a
different location than did the prior art. A67 (citing A12915-A12916 (Cockburn)).
Looked at in combination, however, the prior art showed that text strings could be
located anywhere on the screen. See A12031:21-12032:6. Moreover, even if it
were not disclosed by the prior art, this minor difference in the location of a
character string is insufficient to defeat obviousness because it does not represent
any technical advance over the prior art. See, e.g., PlaSmart, Inc. v. Kappos, 482
F. Appx 568, 573-74 (Fed. Cir. 2012). Accordingly, JMOL of invalidity for
obviousness should have been granted. 5
C.

Claim 25 Is Invalid As Indefinite And Anticipated
Although the jury found Apples 959 patent not infringed by Samsungs
products, the district court erred in not granting JMOL that claim 25 was invalid as
indefinite or anticipated.
1.
The Term Heuristic Renders Claim 25 Invalid As

Indefinite Under Nautilus
Apples 959 patent purports to be an invention for searching for information

on a local device as well as on the Internetso-called unified search. The claim
5
For the same reasons discussed with respect to the 721 patent (see supra
at 37), secondary indicia of non-obviousness are likewise inapplicable to the 172
patent.
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relies upon heuristics to conduct such searches for information without any
specification of what those heuristics are. The district court labored to define the
term, and settled on rule of thumb that does not consist solely of constraint
satisfaction parameters, and Apples expert at trial said rule[s] of thumb were
simply good ideas. Such imprecise concepts are indefinite under 35 U.S.C.
112, 2.6
The claim, when read in light of the specification and the prosecution
history, fail[s] to inform, with reasonable certainty, those skilled in the art about
the scope of the invention. Nautilus, 134 S. Ct. at 2124. The district court failed
to address Nautilus and simply repeated its reasoning from its summary judgment
order, which used the now-disapproved insolubly ambiguous indefiniteness
standard. A73-74. Because the courts finding of definiteness was based solely on
intrinsic evidence, its decision is reviewed de novo. Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).
For claim 25, the intrinsic record provides no objective boundaries. The
claims, when read in light of the specification and the prosecution history, must
provide objective boundaries for those of skill in the art. Id. at 1371. At trial,
Apples own expert described heuristics as simply good idea[s]an inherently
The 959 patent was filed in 1999 and therefore the pre-AIA version of 35
U.S.C. 112 applies.
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subjective standard. A10941:10-20 (Snoeren) (emphasis added). Moreover, the

two inventors of the 959 patent contradicted one another on whether the
exemplary search techniques mentioned in their own patent specification were
heuristics or not.
A40503:2-5, A40503:11-13, A40504:4-9 (Mortensen);
A40509:25-409510:3, A40512:4-8, A40512:10-16 (Arrouye).
The first named
inventor of the 959 patent went so far to answer Who knows when pressed on
whether one example in the 959 patent specification was a heuristic. A40515:922 (Arrouye). Even taking into account the district courts definition, another
person of ordinary skill could not determine what constitutes a rule of thumb
other than saying I know it when I see it. A40427:15-22, A40423:21-40424:18,
A40431:8-A40432:17 (Oren).
Thus, the term heuristic renders claim 25
indefinite.
2.
Claim 25 Is Invalid As Anticipated By WAIS Prior Art
To the extent the claim is definite, claim 25 is anticipated by the WAIS prior
art. Apple did not invent searching the Internet and local devices for information,
as it asserts. WAIS, an acronym for the Wide Area Information Server, was an
open-source software system developed in the 1990s for being able to search
anywhere data was locatedwhether the data was stored locally or on the
Internet.
A20401.
Brewster Kahle, the father of WAIS, testified at trial
concerning WAISs ability to search locally and on the internet using heuristics
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the heart of the alleged novelty of claim 25. A11860:5-11, A11862:1-8; A20001 at
2.0.65\x\qcommands.c, 2.0.65\docs\SF\fwsf.ps; A20533-34; A20584; A20689.
The uncontroverted evidence admitted at trial shows that WAIS searched local and
Internet sources with a single search using a plurality of heuristics long before
the priority date of the 959 patent. A20584; see also A11854:4-16, A11856:1622, A11861:21-25 (Kahle); A11882:7-9 (Pfeifer); A20001; A20401; A20537-564;
A20568-71; A20690-91 (contemporaneous documents expressly describing WAIS
as using heuristics and touting its ability to search anywhere information is
located, including both on the users local hard drive or the Internet).
Samsungs expert Martin Rinard explained at trial how the WAIS prior art
met every limitation of claim 25. That art provided software on a computer
readable medium for locating information from a plurality of locations containing
program instructions because it (A20001) includes instructions that locate
information locally and on the Internet. A11919:14-21, A11920:9-21, A11922:616, A11934:5-21.
And it satisfied all the remaining elements of claim 25,
including provided said information identifier to a plurality of heuristics to locate

information in the plurality of locations which include the Internet and local
storage media. A11923:8-11926:14; A12928:20-A12929:19 (explaining source
code and documentation); A11933:14-11936:20 (demonstrating capabilities of
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WAIS compiled software). Accordingly, this Court should find on de novo review
that WAIS anticipated claim 25.
D.

Claim 20 Is Invalid As Anticipated
Although the jury found claim 20 of the 414 patent not to be infringed, the
district court erred in not granting JMOL of invalidity. The 414 patent purports to
be directed to synchronization between a mobile device and desktop computer.
Samsung presented clear and convincing, unrebutted evidence that Windows
Mobile 5 (WM5) anticipates claim 20.
Samsungs
evidencewhich
included
WM5
source
code
and
documentation, fact testimony from a WM5 developer, and expert testimony

proved anticipation. Samsungs expert, Dr. Chase, pointed the jury to source code
for the IMAP Mail Component and explained that the component was configured
to synchronize structured data between a local database and a database residing on
an IMAP server. A12203:8-16; A12205:10-13. Dr. Chase further explained that
the IMAP Mail component provided a synchronization processing thread
(A12263:10-13), and demonstrated using WM5 source code that the IMAP Mail
component was configured to synchronize the email data class, while the Contacts
Provider and Calendar Provider components were configured to synchronize
structured data for email, contacts, and calendar data classes, respectively, between
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the local database and a Microsoft Exchange server.
A12202:25-12203:16;
A20693; A20997 at 40:22-41:11 (Hall).

By contrast, Apple presented no evidence concerning the IMAP Mail
component. Apples expert, Dr. Snoeren, did not even mention the IMAP Mail
component, much less refute the source code and testimony presented by Dr.
Chase.
Additionally, Dr. Snoeren admitted that the Contacts Provider and
Calendar Provider components were configured to synchronize structured data for

their respective data classes, as required by claim 20. A12859:10-18.
Rather than offer evidence concerning the IMAP Mail component, Apple
advanced a legal argument based on claim construction. Dr. Snoeren told the jury
that the plain language of claim 20 required all three synchronization software
components each to provide a synchronization processing thread, not simply one
of three as the plain language of claim 20 requires. A12860:2-A12861:1.
Ruling on JMOL, the district court rejected Apples argument, finding it
meritless because it contradicts the plain language of claim 20.
A79.
Nevertheless, the court pointed to a single line of Apples expert testimony to

conclude that a reasonable jury could have determined no single WM5 component
provided a synchronization processing thread. A78-79 (quoting A12860:13-17).
But that testimony was irrelevant to Samsungs anticipation read. It concerned Dr.
Snoerens opinions that the WM5 Provider components did not provide threads (as
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required by claim 11) and that a fourth component called the Sync Client was
not class-specific (as required by claim 20). These opinions had nothing to do with
Samsungs evidence that the IMAP Mail component was both class-specific and
provided a thread, and that the Contacts and Calendar Provider components were
class-specific. A reasonable jury would have deemed irrelevant the single line of
Dr. Snoerens testimony the district court relied on, leaving no basis on which to
deny JMOL of invalidity.
III.
THE DISTRICT COURT ERRED IN GRANTING APPLE ONGOING

ROYALTIES
A.
The District Court Lacked Jurisdiction To Order Ongoing

Royalties
The filing of a notice of appeal is an event of jurisdictional significanceit

confers jurisdiction on the court of appeals and divests the district court of its
control over those aspects of the case involved in the appeal. Griggs v. Provident
Consumer Discount Co., 459 U.S. 56, 58 (1982); see also Paige v. State of Cal.,
102 F.3d 1035, 1039 (9th Cir. 1996) (appellate court takes jurisdiction as to
matters inextricably bound up with the injunctive order from which the appeal is
taken). Thus, on August 29, 2014, when Apple filed notice of its interlocutory
appeal of the district courts order denying a permanent injunction (A41065),
jurisdiction passed to this Court regarding the matters inextricably involved in that
appeal. Nonetheless, Apple moved for the equitable remedy of ongoing royalties
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on September 3, 2014 (A41068-74), and the district court decided the ongoing
royalties issue on November 25, 2014. A3-38.
That was error because, as prospective equitable relief under 283, any
grant of ongoing royalties is inextricably bound up with the appeal of the denial of
the permanent injunction.
Ongoing royalties are not damages but a form of
injunctive relief. See Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1315-16
(Fed. Cir. 2007). Thus, Apples motion for an ongoing royalty amounted to asking
the district court for alternative relief under 283 while appealing the denial of its
prior request for a permanent injunction. There is no precedent to support the
district courts conclusion that, after jurisdiction over the denial of a permanent
injunction had passed to this Court, it nevertheless could consider a separately filed
motion for the further equitable relief of an ongoing royalty. While the district
court relied (A12-14) on case law holding that a district court may proceed with
the merits when an injunction is on appeal, those cases are inapposite because they
all dealt with a preliminary (not permanent) injunction and because none addressed
whether a second form of equitable relief could be considered while an injunction
was on appeal.
B.
Apple Waived Any Claim To Ongoing Royalties
The district court in any event abused its discretion in holding that Apple
had not waived ongoing royalties despite Apples failure to request that relief until
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after the trial and after the denial and appeal of its motion for permanent
injunction. Apple did not mention ongoing royalties in its Amended Complaint
(A3044-58); the Joint Amended Pretrial Statement (A40840-42); or at trial. Apple
likewise failed to mention an ongoing royalty in its Rule 50(a) motion for
judgment as a matter of law (A3089-3100), its Rule 50(b) and 59(e) motions after
the verdict (A3140-3193), or its motion for a permanent injunction (A3114-3139).
Apples failure to mention the relief of an ongoing royalty in the Joint
Amended Pretrial Statement (A40840-42) by itself gives rise to waiver as a matter
of law. The Ninth Circuit has held that the pretrial order controls the course of
the action unless the court modifies it, and issues not preserved in the pretrial
order have been eliminated from the action. S. Cal. Retail Clerks Union v.
Bjorklund, 728 F.2d 1262, 1264 (9th Cir. 1984). In the Joint Amended Pretrial
Statement, Apple provided a lengthy and detailed list of specific relief, but did not
mention an ongoing royalty. A40840-42. That omission is dispositive. See, e.g.,
Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 206 (5th Cir. 1998) (EPEs
listing of injunctive relief, damages, and attorneys fees under the Lanham Act in
the Joint Pre-Trial Order does not act to preserve its claim for an accounting of
profits, and the issue therefore was waived.); Ramos v. Davis & Geck, Inc., 968 F.
Supp. 765, 771 (D.P.R. 1997) (The failure to state the damages that the plaintiff is
specifically seeking in the pretrial order waives that claim for relief.), affd, 167
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F.3d 727 (1st Cir. 1999). The district court purports to rely on three awards of
ongoing royalties in similar circumstances (A7 n.1), but they are in fact
inapposite.7
The district court also held that ongoing royalties were implicitly included
in the pretrial order because Apple requested a reasonable royalty (A8 (quoting
A40841)), but that request was included only as part of a request for damages
(A40841 (emphasis added)). And ongoing royalties are not damages. Paice,
504 F.3d at 1316. Indeed, the fact that neither Apple nor Samsung ever mentioned
ongoing royalties until several months after trial belies the idea that the parties
believed ongoing royalties were at issue.
Finally, Apples last-minute request for an ongoing royalty created
significant prejudice to Samsung. If Samsung had known that Apple was seeking
an ongoing royalty, then Samsung could have advocated for a verdict form that
made clear whether the jury was awarding a lump sum or a royalty rate. Because
that was unclear in the verdict form, the district court assumed that the jury had
In the first case, the plaintiff expressly requested an ongoing royalty in the
pretrial order. A41087. In the second case, the pretrial order itself made clear that
the contentions could be supplemented and would not provide grounds for waiver.
A41124. And in the third case, the plaintiffs one-paragraph contentions were
plainly not meant to be comprehensive, and there is nothing in the record to
indicate that the proposed pretrial order was actually approved by the judge.
A41142, A41150.
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awarded a per-unit reasonable royalty.
Page: 68
A24.
Filed: 03/06/2015
Thus, Apple gained an unfair
strategic advantage in waiting until after trial to request an ongoing royalty.

C.
The District Court Erred By Failing To Consider The HTC

License In Determining Ongoing Royalty Rates
Even if an ongoing royalty were proper here, this Court should vacate the
district courts ruling because the court failed to consider Apples license to HTC
in setting a rate for ongoing royalties.
In deciding ongoing royalty rates, courts generally consider the GeorgiaPacific factors, and the district court followed that approach here. A26. The very
first factor concerns [t]he royalties received by the patentee for the licensing of
the patent in suit, proving or tending to prove an established royalty. GeorgiaPacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970);
accord LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 79 (Fed. Cir.
2012). Nonetheless, the court failed to consider Apples license to HTC (which
Samsung raised in its briefing on ongoing royalties (A3219)), presumably because
the court had previously excluded the license in its Daubert decision. A40705-10.
That approach is erroneous for two reasons. First, in deciding the Daubert
motion, the court considered the standard for admission of expert testimony and
the concern about potentially confusing the jury (A40709-10), but neither of these
considerations applies to the courts determination of an ongoing royalty rate.
Second, even if the Daubert ruling were dispositive, for the reasons discussed infra
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Confidential Material Redacted
at 64-65, the district courts analysis was erroneous. Consideration of the HTC
license would have shown that the ongoing royalties set by the district court
, A38) for the three patents on minor features are grossly

inflated. Based on the district courts rates,
. A40881-41022;
A40266; A40276-80. This makes no sense, and this Court should vacate the award
of ongoing royalties for the district court to consider the HTC license in deciding
an appropriate royalty rate.
IV.
THE DISTRICT COURTS ERRONEOUS CLAIM CONSTRUCTION

OF SAMSUNGS 239 PATENT WARRANTS A NEW TRIAL
A.
The District Court Incorrectly Construed The Term Means For

Transmission Of Said Captured Video Over A Cellular
Frequency
Samsungs 239 patent is directed to a mobile phone with an innovative

apparatus for capturing, compressing and transmitting videos. A710-21. Asserted
claim 15 is written in means-plus-function format pursuant to 35 U.S.C. 112 6.
A720. The district courts denial of JMOL to Samsung on this patent was error
because the district court incorrectly construed the term means for transmission of
said captured video over a cellular frequency by requiring a host of software
structure not necessary to perform the stated function. A150.
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The district court construed this term as follows: one or more modems
connected to one or more cellular telephones, and software performing a software
sequence of initializing one or more communications ports on said apparatus,
obtaining a cellular connection, obtaining said captured video, and transmitting
said captured video. Id. Properly construed, the structure should be one or more
modems connected to one or more cellular telephones or cellular radio
transmitters.
1.
The District Court Erred

Limitations In The Structure
By
Including
Software
With no dispute as to the function at issue (transmission of said captured

video over a cellular frequency (A140)), the claim construction task was to
identify the structures necessary to perform this transmission function. Although
the structures must be clearly link[ed] or associate[d] to the recited function, B.
Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997), a court
may not import structural limitations from the written description that are
unnecessary to perform the claimed function. Wenger Mfg., Inc. v. Coating
Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001).
The specification of the 239 patent does not require any software for
transmission, and including such software as necessary structure was error.
Instead, the specification discloses hardware as the means for transmission. See
A718 at 9:25-45 (cellular and radio transmitters as structure for transmission over a
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cellular frequency).
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Indeed, dependent claim 16 requires the means for
transmission to include two hardware componentsat least two interfaces and

a cellular telephone. A720. The district court included a series of software steps
based on the preferred embodiment in the specification. A262. Those software
structures, however, do not correspond to the means for transmission, and even if
they did, incorporating them into the structure would be in direct conflict with this
Courts holding that a district court may not restrict the structure to what was
disclosed in the preferred embodiment, but was not necessary to perform the
recited function.
Wenger Mfg., 239 F.3d at 1233.
Because the proper
construction does not require any explicit software, the district courts construction
should be reversed.
Even assuming the structure requires any software, the district courts
construction was not properly restricted to software necessary to perform the
claimed function. See, e.g., Micro Chem., Inc. v. Great Plains Chem. Co., 194
F.3d 1250, 1258 (Fed. Cir. 1999) (the district court erred by incorporating
structure beyond that necessary to perform the claimed functions). The district
courts construction included a software sequence of initializing one or more
communications ports on said apparatus, obtaining a cellular connection, obtaining
said captured video, A150, which is directed not only at transmission but also at
unclaimed steps of initializing and obtaining. But transmissionthe function
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at issueis only one aspect of communication. A717 at 8:23-30. It was error to

include all the other aspects of communication as the structural definition of
transmission.
2.
The District Court Erred By Failing To Include Cellular

Radio Transmitters As Part Of The Structure
Not only did the district court include unnecessary software steps, it
excluded the required hardware of cellular radio transmitters for performing the
transmission function. See Micro Chem., 194 F.3d at 1258-59.
The district court concluded that, because the words cellular radio
transmitter appear nowhere in the specification, the intrinsic evidence does not
support their inclusion. A142. But the specification discloses radio transmitters
and transmission over cellular frequencies, which necessarily include cellular
radio transmitters. A718 at 9:25-26, 9:40-42. And this Court has recognized that
such a corresponding structure may be implicit in the specification. See Atmel
Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999).8 It was
error for the district court to exclude hardware required for transmission in the
relevant structure for means for transmission.
8
The district courts assertion that Samsung did not include cellular radio
transmitters in its construction for claim 1s means for transmitting structure is
incorrect. A142. Samsung did include radio frequency transmitters in its
proposed construction of claim 1, but properly restricted the structure to cellular
radio transmitters for claim 15. A255-56. In any event, the district court should
have provided the correct construction for the trial.
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B.
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Samsung Is Entitled To A New Trial To Remedy The District

Courts Erroneous And Prejudicial Claim Construction
A district courts incorrect claim construction requires a new trial where a

party shows that they were prejudiced by the error. ArcelorMittal France v. AK
Steel Corp., 700 F.3d 1314, 1325 (Fed. Cir. 2012). The district courts errors
clearly prejudiced Samsung because in order to prove infringement, it had to
identify a host of unnecessary software steps to meet the relevant claim limitation,
all of which Apple contested.
A12756-57; A12762-66 (Storer).
In addition,
because the district court improperly excluded the required hardware for
transmission in its definition of relevant structure, Samsung could not point to a
cellular radio transmitter in the iPhone to prove infringement of the means for
transmission claim limitation.
Moreover, there was substantial evidence that Samsung likely would have
prevailed under the correct claim construction. A20744-92; A20793-818.
In
particular, most of Apples non-infringement arguments involved portions of the

claim
construction
that
were
incorrect,
e.g.,
lack
of
port
and
connection. A12762:9-12764:19; A12756:15-12757:18. Therefore, the verdict

should be vacated and the case remanded.
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V.
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IF THE COURT ORDERS A NEW TRIAL ON APPLES DAMAGES,

IT SHOULD CORRECT THE DISTRICT COURTS ERRONEOUS
EVIDENTIARY RULINGS
Although the damages awarded to Apple were grossly inflated and
disproportionate to the value of the three minor patents at issue here, in order to
streamline issues for appeal, Samsung is not challenging the amount of damages
awarded to Apple in the event its other challenges to the judgment are rejected.
But if this Court were to order any new trial on Apples claims, Samsung
conditionally appeals three evidentiary rulings that improperly prejudiced
Samsungs damages defense at trial.
A.
Apples Conjoint Survey Evidence And Damages Calculations

Based On That Evidence Should Be Excluded
More than three-quarters of the total of $2.1 billion in damages that Apple
sought in this case depends upon expert analyses of conjoint surveys of
smartphone and tablet buyers that purported to measure the value of Apples
patented features. That evidence is inadmissible and should be excluded from any
new trial.
Over Samsungs objection (A40720), the district court allowed (A40720-32)
Apples expert Dr. John Hauser to testify about conjoint surveys in which he
showed respondents videos illustrating Apples allegedly patented features, and
then asked them to make a series of choices among hypothetical products
containing different combinations of features.
61
A11109-19; see also A40171,
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A40192 45, A40207-09 79-84. Dr. Hauser used the responses to calculate
dollar values for how much consumers were willing to pay for each patented
function (willingness to pay) and the percentage shift in consumer demand for
Samsungs products that allegedly resulted from its use of Apples claimed
features in its devices (willingness to buy). A11120-28; A21059-108.
The district court also allowed (A40733, A40737), again over Samsungs
objection (A40733), Apples damages expert Dr. Christopher Vellturo to testify
based on Dr. Hausers willingness to buy figures that Samsungs infringement
cost Apple $559.6 million in diminished demand lost profits.
A11301-05.
Similarly, he was permitted to testify, based on Dr. Hausers willingness to buy

numbers, that Apple had suffered $1.12 billion in claimed reasonable-royalty
damages. A11319-23; A11330; A11371-76. The royalty rates resulting from
those calculations were sky-high: $40.10 per smartphone for five minor feature
patents (A21146) and
for just two patents on each Samsung tablet
(A21149).
Both Dr. Hausers and Dr. Vellturos testimony should have been excluded
as unreliable under Fed. R. Evid. 702.
First, Dr. Vellturos damages analysis is unreliable because it depends on
the erroneous assumption that the willingness to buy results of a conjoint survey
can be used to accurately calculate changes in market share. Samsung is aware of
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no case where a patent plaintiff calculated damages based on the willingness to

buy results of a conjoint survey. Indeed, the one court that considered a similar
methodology excluded it. Oracle Am., Inc. v. Google Inc., 2012 WL 850705, at
*10 (N.D. Cal. Mar. 13, 2012), revd on other grounds, 750 F.3d 1339 (Fed. Cir.
2014). As explained by the president of the firm on whose software Dr. Hauser
relied (A40193 at n.27), a conjoint survey do[es] not predict market share
because such a study cannot account for numerous variables that affect real-world
market share, such as differences in awareness developed through advertising and
promotion. A40246.
Second, Dr. Hausers survey design improperly excluded major product
features such as brand, battery life, operating system, and a devices overall speed.
See, e.g., A11139-40 (Hauser); A12083 (Reibstein). The weight of the evidence
(including
) confirms both that major features
omitted from the conjoint survey were ones on which consumers base their
purchasing decisions (see e.g., A12369-70 (Erdem); A20836-84), and that
untestable factors like marketing and point-of-sale experience also play a crucial
role in sales. A11408; A11413-14; A11418-19 (Velturo); A11682-87 (Pendleton);
A12389-90 (Chevalier); A20933; A20819; A20821-26; A20834-35.
The unreliability of Dr. Hausers study is confirmed by the absurdity of its
results. The survey purports to show that consumers would be willing to pay up to
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$102 each, and more than $270 in total, for four minor features of a smartphone
whose total cost was merely $149. A11181 (Hauser). The willingness to buy
numbers are likewise facially implausible, predicting declines in sales of up to 26%
from the omission of a single patented feature (A21062), and of up to 61% if
several were omitted simultaneously (A21069).
B.
Evidence Of Apples Real-World Licenses And Valuations Of The

Patents-In-Suit Should Be Admitted
The district court also abused its discretion in excluding evidence of Apples
own past licenses and valuations of the patents-in-suit. In November 2012, Apple
licensed to HTC
. A408811022; A40266; A40268; A40276-80; A40288; A40302; A40305-07; A40310;
A40313-14. And in a patent infringement lawsuit against Motorola based on
Motorolas use of the Android operating system, Apple took the position that a
reasonable royalty for the 647 patent was $0.60 per unitless than one twentieth
the $12.49 per unit Apple claimed in this case. A11098-103 (Hauser); A40805-07.
This evidence demonstrate that Apples claimed $40.10 per unit royalty rate
for just five patents was absurd. Yet the district court ruled that Samsungs expert,
Dr. Judith Chevalier, could not rely on this evidence in her testimony. A40700717. The result was to leave the jury to decide damages without any real-world
reference point.
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In the event of any new trial, Dr. Chevalier should be permitted to rely on
the Apple-HTC license as a basis for her opinion because evidence of comparable
past licenses is highly probative as to what constitutes a reasonable royalty for
those patent rights. LaserDynamics, 694 F.3d at 79. The purported distinctions
on which the district court relied do not provide a ground for exclusion because
[p]rior licenses are almost never perfectly analogous to the infringement
action, and thus the fact that a license is not perfectly analogous generally goes
to the weight of the evidence, not its admissibility. Ericsson, Inc. v. D-Link Sys,
Inc., 773 F.3d 1201, 1227-28 (Fed. Cir. 2014).
Apples previous royalty rate calculation for the 647 patent similarly should
be admitted as probative evidence of that patents value. The main difference
between Samsungs and Motorolas circumstancesthat Motorola involved the
647 patents claim 1 (a broad, independent claim), while this case concerns claim
9 (a narrower claim that depends on claim 1)confirms the relevance of Apples
past position: Apples assertion here that the dependent claim is worth $12.49 per
unit cannot be reconciled with its past assertion that the independent claim is
worth 60 cents per unit.
C.
Apples Evidence Of Lost Profits For An Incorrect Blackout

Period For The 647 Patent Should Be Excluded
Apples damages expert Dr. Vellturo was erroneously allowed to submit a

report and then testify at trial that Apple should receive lost profits for a blackout
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period for the 647 patent that contradicts this Courts holding in Grain Processing
Corp. v. American Maize-Products Co., 185 F.3d 1341 (Fed. Cir. 1999). Samsung
moved to strike this evidence but the district court erroneously admitted it.
A136.1-A136.8; A11270-71; A11291-99.
Grain Processing requires an inquiry, for damages purposes, that asks had
the Infringer not infringed, what would the Patent Holder-Licensee have made?
185 F.3d at 1350 (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 377
U.S. 476, 507 (1964)). To determine lost profits requires a reconstruction of the
market in order to project economic results that did not occur. Id. But a fair
and accurate reconstruction of the but for market must also take into account,
where relevant, alternative actions the infringer foreseeably would have undertaken
had he not infringed. Id. at 1350-51.
Apples expert testified as to a but for world in which Samsung, knowing
that its products infringed, supposedly would have pulled its smartphones and
tablets off the market, designed around the patents, and reintroduced themduring
which time Samsungs market share would have been reallocated to other
manufacturers, including Apple. See A11291-99. But this testimony was
improper as to the 647 patent because, under Grain Processing, it is implausible
to suppose that Samsung would have released a product it knew infringed, and then
lost time in the marketplace replacing it with a non-infringing alternative. See 185
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F.3d at 1351 (The competitor in the but for marketplace is hardly likely to
surrender its complete market share when faced with a patent, if it can compete in
some other lawful manner.). Because, for the 647 patent, Apple provided notice
to Samsung a year before Samsung sold its accused product (see A11267), it is
implausible to suppose that Samsung would deliberately release an infringing
product and then suffer a blackout period when it took the infringing product off
the market to replace it with a non-infringing alternative. This Courts precedent
forecloses such an implausible hypothetical world, and permitting that testimony
improperly allowed the jury to confer a windfall on Apple.
Accordingly, any lost-profits testimony by Dr. Vellturo on retrial should be
limited to Samsungs rational action in the hypothetical world, which, after notice,
would be to develop a design-around before the release of infringing products.
Although Samsung is not requesting a retrial on damages, if there is to be any
retrial, the district courts error in allowing Apples expert to testify about a
hypothetical blackout period for the 647 patent (A136.1-136.8) should be
corrected.
CONCLUSION
The judgment should be reversed or vacated as to Apples patents, and the
judgment should be vacated and remanded for a new trial as to Samsungs 239
patent.
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Dated: March 4, 2015
Respectfully submitted,
Kevin P.B. Johnson

Victoria F. Maroulis
Brian C. Cannon
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Telephone: (650) 801-5000
Facsimile: (650) 801-5100
By: /s/ Kathleen M. Sullivan

Kathleen M. Sullivan
William B. Adams
David M. Cooper
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
Telephone: (212) 849-7000
Facsimile: (212) 849-7100
kathleensullivan@quinnemanuel.com
John B. Quinn
Michael T. Zeller
Scott L. Watson
& SULLIVAN, LLP
865 S. Figueroa St., 10th Floor
Los Angeles, CA 90017
Telephone: (213) 443-3000
Facsimile: (213) 443-3100
Attorneys for Defendants-Appellants
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ADDENDUM
Filed: 03/06/2015
Case: 15-1171
Document: 40
Page: 83
Filed: 03/06/2015
ADDENDUM
Final Judgment
(A1-2)
Final Judgment of November 25, 2014
Order
(A3-38)
Order Granting In Part Apples Motion for

Ongoing Royalties [Under Seal]
Opinion (Willfulness)
(A39-91)
Order Granting In Part And Denying In Part

Samsungs Motion for Judgment As A
Matter Of Law
Opinion (Infringement)
(A92-136)
Order Granting In Part And Denying In Part

Apples Motion For Judgment As A Matter
Of Law [8QGHU6HDO]
Opinion (Motion to Strike)

(A136.1-136.8)
Order Denying Samsungs Motion to Strike

Portions of Dr. Vellturos Supplemental
Report [Under Seal]
Opinion (Claim Construction)

(A137-150)
Order Construing 239 Patent Claim 15
Opinion (Infringement)
(A151-200)
Order Granting In Part and Denying In Part

Apples Motion For Summary Judgment
And Denying Samsungs Motion For Partial
Summary Judgment
Opinion (Claim Construction)

(A201-264)
Order Construing Disputed Claim Terms Of

U.S. Patents Nos. 5,579,239; 5,666,502;
5,946,647; 7,577,757; 7,756,087; 7,761,414;
8,014,760
647 Patent
(A583-598)
U.S. Patent No. 9,946,647
959 Patent
(A599-608)
414 Patent
(A609-657)
Case: 15-1171
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Page: 84
Filed: 03/06/2015
721 Patent
(A658-685)
172 Patent
(A686-709)
239 Patent
(A710-721)
Case: 15-1171
Document:
40 Page:Filed11/25/14
85 Filed: 03/06/2015
Case5:12-cv-00630-LHK
Document2076
Page1 of 2
1
2
3
4
5
6
7
8
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
United States District Court

For the Northern District of California
10
SAN JOSE DIVISION
11
12
13
14
15
16
17
18
19
20
21
)
)
Plaintiff and Counterdefendant,
)
)
v.
)
)
SAMSUNG ELECTRONICS CO., LTD., a
)
)
Korean corporation; SAMSUNG
ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
)
TELECOMMUNICATIONS AMERICA, LLC, )
)
)
Defendants and Counterclaimants. )
)
APPLE, INC., a California corporation,
Case No.: 12-CV-00630-LHK

JUDGMENT
Judgment is entered against Samsung Electronics Co., Ltd., Samsung Electronics America,
22
Inc., and Samsung Telecommunications America, LLC (collectively, Samsung) and in favor of
23
Apple, Inc. (Apple) in the amount of $119,625,000.00. Judgment is entered against Apple and in
24
favor of Samsung in the amount of $158,400.00.
25
For the reasons stated in the November 25, 2014 Order Granting Apples Motion for
26
Ongoing Royalties (ECF No. 2074), Samsung is ordered to pay ongoing royalties for any
27
continuing infringement at the per-unit rates set forth in that Order. Those royalties shall apply to
28
products adjudicated to infringe U.S. Patent Nos. 5,946,647; 8,046,721; and 8,074,172, and to
1
Case No.: 5:12-CV-00630-LHK
JUDGMENT
A1
Case: 15-1171
Document:
Document2076
86 Filed: 03/06/2015
Page2 of 2
products not more than colorably different therefrom. The starting date for any ongoing royalties
shall be after the date of this Judgment.
The Clerk shall close the case file.
IT IS SO ORDERED.
Dated: November 25, 2014
_________________________________
LUCY H. KOH
United States District Judge
6
7
8
9

10
11
12
13
14
15
16
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23
24
25
26
27
28
2
JUDGMENT
A2
Case: 15-1171
Document: 40
Page: 87
ase5:12-cv-00630-LHK Document2075 *SEALED*

"SEALED*
Filed: 03/06/2015
Filedl1!25J14
Filedll/25114 Pagel of 36
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CALIFORNIA
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DISTRICT OF CALIFORN
10
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)
)
)
)
APPLE,
APPL E, INC., a California
Cali forn ia corporation,
corporat ion,
Plaintiff,
v.
v.
C!l.Se
12-CV-006JO-LHK
IN PART APPLE'S
ORDER GRANTING lN
MOTION FOR ONGOING ROY
ROV ALTTES
AL TIES
SAMSUNG ELECTRONICS
)
ELECrRONICS CO., LTD.,
LTD., a
)
ELECTRON ICS AMERICA, INC., a New York)
ELECTRONICS
)
TELECOMMVNJCA
TfONS AMERICA,
TELECOM MUNICATIONS
AMER ICA, LLC,
LLC. ))
a Delaware limited liability
)
liabi lity company,
[UNDER
IUNDER SEAL]
)
)
Defendants.
Derendants.
_________________________________________)
------------------------)
After aj
a jury
ury trial and resolution of post-trial motions, on September 3, 2014,
2014 , Apple, Inc.
20
("Apple")
(,'Apple") moved for ongoing royalties for any continuing infrin.
infringement
gement by Samsung
Sam sung Electronics
Electronics
21
Co.,
Co .. Ltd.,
Ltd" Samsung Electronics
Electron ics America, lnc.,
Inc., and Samsung
Samsllng Telecommunications America, LLC
22
(co llectively,
llectively. "Samsung").
" Samsung") . See ECFNo.
ECF No . 1959. The Court
Cou rt ordered the parties to brief the issues of
23
whether Apple is entitled to ongoing

ongo ing royalties at all,
a ll. and the proper amount of any such royalties.
royalti es.
24
ECF No. 1978.

1978. The Court finds Apple'
Apple'ss motion
mot ion suitable for
fo r decision without oral
oral argument
argumclll
25
Civill Local Rule 7-l(b),

7I(b), and therefore VACATES the hearing set for December 18,
18,
pursuant to Civi
26
arguments, the Cout1

2014. Having considered the law, the record, and the parties' arguments.
Cou rt GRANTS
27
Apple's
rel ie fas
as discltssed
discussed be.Jow.
be low.
Apple' s motion, but modifies
mod ifi es the scope of Apple's requested relief
28
Case No.;
No.: 5:12-CV-00630-LHI<
5: 12-CY-00630-LHK
ORDER GRANTING IN PART
ROYALTI ES
I'ART APPLE'S MOTION FOR ONGOING ROYALTIES
A3
Case: 15-1171
Document: 40
Page: 88

ase5:12-cv-00630-LHk
'SEALED'
l.
I.
Filed: 03/06/2015
Filedll/25/14 Page2 of 36
BACKGROUND
BACKGROUND
On May 5, 2014, a jury reached a verdict in this case, findin

findingg in part that Samsung
Sam sung
3J
infringed Apple's U.S

U.S.. Patent Nos. 5,946,647 (the "'647
'"647 patent")
patent''),, 8,046,721
8,046,72 1 (the "'721
<1 721 patent''),
patent"),
and 8,074,
'" 172 pateht").
patent"). ECF No. 1884. On May 23,2014,
23, 2014, both parties filed motions
moti ons
8.074, 172 (the "'172
for judgment as a matter of law, and Apple filed a motion for a permanent injunction. See ECF
Nos. 1895-3, 1896-3, 1897-3

1897-3.. On August 27, 2014. the Court
Cou rt denied Apple's request tor
for a
permanent injunction.
injunction. ECF No. 1954. On August 29, 2014,
2014. Apple
App le filed a notice of appeal to the
Federal
Pcdcral Circuit regarding denial of
ofthe
the permanent injunction.
inj unction. The CoUJtsubsequently
Court subsequent ly resolved
reso lved tthe
he
parties
o f law.
Jaw. ECF Nos
Nos.. 1963, 1965.
parties'' motions for judgment as a matter of
10
On September 3, 2014, Apple filed the instant motion, seek

seeking
ing ongoing royalties for any
.s
11
II
future infringement by Samsung. ECF No. 1958. Apple demands toyalties

royalties from Samsung
Sam sung for any
t::
<-8
t::=<2
:l:'=
12
continuing sales of
fo r which the juty
j ury found infringement,
infri ngemcnt, and for any Samsung
o f the products for
~ ~
(j
13
products "not more than colorably

co lorab ly different" from the adjudicated
adjud icated products. ECF No. 1959
-." ....."
14
(Apple's Proposecj
Propm;ed Order). Apple claims that the jury awarded peHtnit
peHlOit royalty
roya lty rates of$2.75
of$2 .75 fot
fol'
15
the
lhe '647
' 647 Patent,
Paten t. $2.30 for
for the ' 172 Patent,
Patent. and $1.41
$1.41 for the '721
'72 I Patent, and requests the same
.,,"0
16
aoy future infringement. See id.

rates for any
0"
=
17
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uu
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"-
On September 9, 2014,
2014. the Court set
sct schedules for briefing both Apple
Apple'1 s entitlement to
18
ongoing royalties and the proper amount of any such royalties, and asked the parties to address the
19
effect
Apple's
this
effeet of Apple
's motion
mot ion on entry of final judgment in th
is case. ECF No. 1966. On September 13,
20
2014,
20 J 4, Samsung
Sams ung sought an extension
ex(en ~ i o n of time
li me 10
to respond to Apple's motion. ECF Nos. 1969, 1970.
211
2
On Septembet
15,1014, Apple opposed Samsung's request for an extension. ECF
ECF No. 1975.
September 15,2014,
22
After
subm issions.
HCF No.
Aller considering the parties
parties'' submiss
ions, the Court adjusted the briefing
brieji ng schedules. ECF
23
1978.
1978.
24
Regarding Apple's entitlement to ongoing

ongo ing royalties, Samsung filed
filcd an OpposiHon
Opposition on
25
September 22, 20
2014.
filed its Reply.
ECF No.
14. ECF No. 1986-3. On September 29, 2014, Apple
Apple-filed
Reply . Ecr
26
2001. On October 6, 2014,

20[4, Satnsung
Samsllng filed an administrative
adm inistrative motion seeking
seek ing leave to file
fil e a Sur-
27
Reply (ECP
(ECF No. 2032).
2032). The
The Court
(ECF No.
No. 2013), which Apple
App le opposed on October
Octo ber 9, 2014
20 14 (ECFNo.
28
2
Case No.:
No.: 5:12-CV-00630-Li
5: 12-CY00630-U"lK
IK
ORDER GRANTING IN PART APPLE'S
FOR ONGOING ROYAL
TIES
APPLE' S MOTION f'OR
ROYALTIES
A4
Case: 15-1171
Document: 40
Page: 89
ase5:12-cv-00630-LHK
ase5:12-cv-00630-LH K Document2075 *SEALED*
'SEALED'
Filed: 03/06/2015
granted Samsung's request (ECF No. 2049), and Samsung

Sam sung fJied
!]led its Sur-Reply
Su r-Reply on
on October 15,
15,20
20 '14
14
2
(ECF No. 2050).

2050).
ongo ing royalties,
roya lties, on September 22, 2014, Apple filed
fil ed its
ilo;
As to the proper quantity of ongoing
3
44
open
opening
ing brie
brieff and supporting
supporti ng materials.
materials. ECP
ECF No
No.. 1985-3
1985-3.. On October 6, 2014, Sam
Samsung
sung filed
fi led its
s5
Response with supporting decLarations.

20 14, Apple filed its
ils
declarations. ECF No. 2015-2. On October 14, 2014,
Reply. ECF No. 2046-3.

Reply.
II.
II .
9
10
.~
e
E
tt: c
.2
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LEGAL STANDARDS
In their briefs, the parties make many conflicting

conflictin g (and sometimes
someti mes inconsistent) statements
about the nature or

of the
tile ongoing royalties
roya lties remedy. As a result,
resul t, the Court briefly reviews the
relevant legal standards .
An ongoing
continue
inve11tion for
inue using
us in g a patented invention
ongoi ng royalty permits an adjudged infringer to cont
12
a price
price.. See Paice
Paiue LLC v. Toyota Motor
Molol' Corp., 504 F.3d
Jd 1293, 1313 n. I[J3 (Fed.
(Fed . Cir.
Ci r. 2007)
13
13
(defining an ongoing
ongoi ng royalty and distingu ishing a compulsory license).
license). The Federal
Federa l Circuit
C ircuit has
14
identified 35 U.S.C.
U.S.c. 283,
283 . which
wh ich authorizes "injunctions
"injunction s in accordance with the principles of
IS
15
equity," as statutory authority for awarding

award ing ongoing royalties. See id. at 1314
13 14 (citing
(c iting 283); see
16
16
also Mark
Ma rk A.
11.. Lemley,
Lemley , The Ongoing Confusion Over Ongoing Royalties, 76 Mo. L. Rev. 695,
695 , 695695
17
99 (200 l)
I) (analyzing authority for ongoing
ongoi ng royalties under
under 283 and 284). Accordingly,
According ly. wh
while
ile
18
IS
lhis remedy involves monetary relief, there is no Seventh Amendment right to jury trial
this
trial for ongoing
19
royalties.
131516
15-16 ("[T]he
("LTJhe fact
facllhat
that monetary relief
rel ief is at issue in tthis
hi s case
royal ties. See Paice, 504 F.3d at 13
20
does not,
1!l)L, standing
stamli!!g alone, warrant
wurt'11111 a jury trial.").
triaL") .
... u
....
.- ti
t;;
Q
,_
.,a
~Cl
~E
- E
~
.So
l! "
rJ:J.S:::.
"'~
-o
'"t:
<IJ
~ 00
;<,:::
:~ ~
o
c:
,~
tl)
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00
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'"
2211
The Federal Circuit

Ci rcuit has held that ongo
ongoing
ing royalties are a discretionary remedy.
remedy . "There are
arc
22
o f relief for ongoing infringement

several types of
in fringement that a court
cou rt can consider: (1)
( I) it can grant an
un
23
injunction;
injuncti on; (2) it can order
ordcr the parties to attempt to negotiate
negotiutc terms for future use
lise of the invention
in vention ;
24
24
royal ty ; or (4) it can exercise Its

its discr
discretion
etion to conclude
concl ude that no forwardforward
(3) it can grant an ongoing royalty;
25
looking relief is appropriate in the circumstances."

circumstances," Whitserve.
Whilserve , LLC
LLe v.
v. Computer
ComputeI' Packages, Inc.
[lIc.,,
26
694 f.3d
F .3d 10,
10. 35 (Fed.
(Fed . Cir.
e ir. 2012). "Under some circumstances, awarding an ongoing royalty
royally for
27
infril1gement
patent in
fringement in lieu of an injunction
inj unction may be appropriate.
appropriate ."" Paice,
Paice, 504 F.3d
r.3d at 13
1314
I4.,
28
nol automatic:
automatic : "awarding an ongoing
ongo ing royally
royalty where ' necessary' to
Ho wever, the
thl' remedy is not
However,
3
Case No.:
No. : 5: 12-CV-00630-LHK
ORDER GRANTING IN PART APPLE
APPLE'S
'S MOTION FOR
FORONGOINGROYALTI
ONGOING ROYA LTI ES
AS
A5
Case: 15-1171
Document: 40
Page: 90
a se5 :12-cv-00630-L HK Document2075 *SEALED*
-S EALED-
Filed: 03/06/2015
Filed ll/25/14
lli25i14 Page4 of
of 36
effectuate
infringement,
e ffectuate a remedy, be it fo
forr antitrust
anti trust violations or patent infringeme
nt, does not justify
ju st ify the
22
prov is ion of such

provision
s uch rel
relief
ief as a matter
matte r of
o f course
co urse whenever a permanent
perma nent injunction
injunctio n is not imposed."
imposed, " !d.
Id.
at 1314-15.
1 3 14~1 5.
The Federal Circuit

Circui t has not
not addressed the burden
burden of proof
proo f for ongoing royalties. However,
However.
other
ol her cowts
courts have placed
pl aced the burden on the
Ihe patent'ee.
patentee. Creative Internet
Internel Adver.
Ad\'er. C01p.
Corp. v. Yahoo! Inc.,
f llC.,
674 F. Supp. 2d 847, 855 (E.

(E DD.. Tex. 2009) ("When
(" Whe n injunctive
inj unctive relief
re lie f is denied under
unde r the traditional
trad it ional
77
four factor
faclor test and the Court instead
in stead considers whether
w hether an infringer should
s houl d pay an ongoing royalty,
the Court finds

fin ds that the burden of
o f proving
provi ng damages remains with the patentee.").
Determination
o f ongoing
ongo ing royalties
roya lties differs from
rrom evaluation
eva luati on ofa
o r a reasonable royalty during
duri ng
D etermination of
10
tri<d because the

ict and
trial
thc jury
j ury has reached a liability
li ability verd
verdict
a nd other
othe r economic factors
faclors may have changed
changed..
...E
11
II
"Prior to judgment,
judgme nt. liabi lity
li ty for infringement, as well as the validity
validi ty of
of the patent,
pate nt, is uncertain,
uncertain , and
=;.::
o
c;l
12
12
a rc determined in the context of that

damages are
th at w1certainty.
uncert ainty . Once a judgment of valid
validity
ity and
" o
0
-ti....
t)
.... ......
.
-~
13
infri ngem e nt has been

infringement
bcen entered,
cntered, however, the calculus
Ct:llculus is markedly di
different
ffe rent because different
;;
C
O'l ' .....
Q
Q .::2
.~
14
Amada v. Microsoft Corp.,

C()rp., 517
5 17 F.3d 1353,
1353 1 1362 (Fed.
(Fed. C
Cir.
ir. 2008).
economic factors aare
rc involved.''
involved." Amado
~
lJ
0c
IS
15
A district
d istrict court may also consider "additional
"add itional evidence of changes in the parties'
part ies' bargaining
bargaini ng
"
"'
'O t:
"' 0
;;~: : z:z
16
positions
pos iti ons and otber
other economic ciccu.mstances
circumstances that may be of
o f value in determining an appropriate
"
C!J
17
12, 1343
ongoi ng royalty." Active Video Networks,
Nerwol'ks. lnc.
Inc. v. Verizon
Verizo n Commc 'ns,
'ns, Inc. , 694
694 F.3d
F. 3d 13
1312,
1343
.....
0"
r.z...
18
(Fed. Cir.
C ir. 201
20 12);
2); but see
sec Lemley,
Le mley, supra, at 704-05 ("Juries are already required to assume that the
19
patent is va
valid
lid and
a nd infringed
in fringed when setting
setti ng past damages. There is no reason to think that asking
aski ng the
20
same
sa Ulc question twice
t w ice should
sho uld pi'oduce
produce different
differe nt answers
alun,vcrs iJl
in most case
cases.")
s ,") (footllotes
(foot11otcs omitted).
211
2
Ill.
Ifl.
.. c~
t: t.S
o;
::::I:"::::
uU .....
u
U
.~ (.)
-.-.,. 0a....
-.
"
5 ~
(JJJ::.
q.j
=
0
;:J
""
22
DI
SCUSSION
IJISCUSS
ION
Apple and Samsung
SamslIng have three sets of
of disputes. First, Samsung
Samsun g argues that Apple is
23
procedurally barred from

fro m seeking the remedy of ongoing roya
royalties.
lties. Second, Samsung
Sam sung contends in
24
24
the alternative
alte rnati ve that Apple is not entitled
e ntitled to any ongoing
ongoi ng royalties
roya lti es for
fo r any
a ny Samsung
Sam Sling products.
produ cts. Third,
Th ird,
25
assum ing that

that Apple is entitled
en titled to
to a remedy, the parties ddispute
assuming
ispute the
I.he proper ongoing
ongo in g royalty
royal ty rates.
26
The Court add

addresses
order,.
resses these qdisputes
isputcs in order
27
28
4
Case No.: 5: 12-CV-00630-LHK
12-CV-OOG30-LHK
ORDER
ORDE R GRANTfNG
GRANTING IN
tN PARi
PA RT APPLE'
APPLE 'S
S MOTION FOR ONGOING ROYALTIES
ROYALTIES
A6
Case: 15-1171
Document: 40
Page: 91
ase5:12-cv-00630-LHK Docurnent2075 'SEALED'

*SEALED*
A.
Filed: 03/06/2015
Filedll/25/14 'PageS
Page5 of 36
Samsung's
Snmsung's Procedural Arguments
Samsung presents a host of procedural arguments as to why Apple

Appk is now precluded from
seeking ongoing royalt

ies, and why the Court should postpone resolution
royalties,
reso lution of Apple's motion.
mot ion.
Apple disputes each of these arguments and contends

contend s that it has not forfeited any rights. The Court
determines that Apple

App le ;s
is not barred from requesting
requesti ng ongoing
ongo ing roya
royalties,
lties, for th
thee teasons
reasons below.
1.
t.
Waiver
Samsung fit~t
fir st argues that Apple
App le waived ongoing royalties by failing
failin g to identify
identi fy this remedy
in various pretrial
pretrial fifilings.
lings. Samsung observes
o bserves that Apple did not offer any expert testimony
testim ony on
ongoing royalties or raise the issue

iss ue in motions for prepre and post-verdict
pO~1 verdi cI judgment
judgmen t as a matter
maHer of
10
law, new tri

trial,
al, or a permanent injunction. See ECF No. 19863
1986-3 at 2-3.
23. In
[n particular, Samsung
SamsLLng
11
II
claims that Apple

App le fa iled to
10 request ongoing royalties in the parties' Joint Amended Pretrial
Pretria l
12
Statement,
Starcment. and that Apple's "boilerplate"
" boilerplate" reference to "[a]ny other
oth er remedy lo
to whi~h
which Apple may be
13
entitled, incl
including
uding all remedies provided fot
for in 35 U.SC.
U.Sc. 284, and 285 and under any other law"
14
was insufficient
insuffi cient to preserve the issue.
issue. Jd. at 4; ECF No. 1455-1
1455[ at 3. Relatedly,
Rc lated ly, Samsung argues
15
IS
that Apple
App le al
also
~o failed
fa il ed to include ongoing royalties
roya lties in the scope of injunctive
inju nctive relief
reliefrcquested,
requested, which
.,, "
16
was limited to an injunction preventing ''futther

act s of infringement." ECF No. 1455-1
1455[ at 3.
" furthe r acts
Cl "II)
C
l7
17
u..0
18
Statement by requesting "all

"a ll damages adeq uatc
uate to compensate for Samsung's
SUl11sung's infringement of
19
Ap~le>
App, le' s
20
infringement." 6Cf
the Federal
characterized
EC f No. 2001 at 2. Apple notes that lhe
Federa l Circuit
Circu it in Palce
Palce character
ized
21
ongoing royalties as a "reasonable royalty" in light of ongoing infringement, such that App
le's
Apple's
22
request for
fo r a "reasonable royalty" encompassed that
thaI remedy. Id. (quoting 504 FJd
F.3d at 1315).
23
Additionally,
Additiona lly, Apple submits examples of
of pretrial
pretria l statements in other casescases-including
including Paice-
24
where the parties did not expressly request an "ohgoing

"ongoing royalty," but no waiver
waivc,r occurred.
occurred . See,
See, e.g.,
e.g. ,
25
EC[
ECF No. 2002A
2002~4 at 3 (pretrial
(prelrial statement in Paice, seeking "monetary damages
dam ages in the
lhe form of
oraa
26
reasonable royalty").)
royalty") .1
27
See also ECF

Ecr Nos. 2002 ~ 1[ at 6 (Joint Final Pre-Trial
PreTrial Order, Mondis Tech.
Tech. Ltd.
Ltd v. Hon
[[on Hai
Precision Indus.
[nd/H'. Co.,
co . ~ No,
No. 2:07-CV -565
565 (E.
(E.n.
D. Tex.),
Tex.)), 2002-2
20022 a1
at. 18 (Order on f"inal
rinal Pretrial
Conference, liP
Engine, Inc.
(E. D. Va.)},
li P Engine.
[nCo v.
v. AOL.
AOL, Inc.,
Me., No. 2: 11-cv-512
11-cv 512 (E.n.
Va.)), 2002-3
2002-3 at 3 (Joint
(Jo int Pre-Trial
PreTrial
.~
a
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28
Apple responds that it adequately preserved ongoi

ongoing
ng toyaltics
royaJrics in the Joint Amended Pretrial
Pretrial
asserted
asscrted patents1J and in no event less than a reasonable royalty
roya lty for Samsung's
Samsung 's acts of
5
Case No.!
No.: 5;12-CV-00630-LHK
5!12-CV-00630-LHK
ORDER GRANTING JN
IN PART APPLE'S
I\PPLE'S MOTION FOR ONGOING ROYALTIES
ROYA],'I'IES
A7
Case: 15-1171
Document: 40
Page: 92

'SEALED'
Filed: 03/06/2015
Filedll/25/14
Fil edlll25114 Page6 of 36
Additionally, Samsung points

poi nts to this Court'
Court'ss August 21
21,, 20
201l44 Order denying Samsung's
Sam sung ' s
.ss
.~
E
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t:..E:
;::.::
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fo r judgment of invalid
inva lidity
ity under 35 U.S.C. 101.
10 1. ECF No. 1952. There, the Court
motion for
Samsu ng's attempt

attemptto
to raise 10
101I defenses against two Apple patents for the 'first
first time after
rejected Samsung's
011 defenses because Samsung did

trial. The CoUJ1
Cou rt determined that Samsung failed
fa iled to preserve I10
55
lega l theory in expert reports, dispositive motions, or the Joint

Jo int Amended Pretrial
Pretrial
not identify that legal
III 4-5.
4~ 5. The Court noted that the Ninth Circuit has "consistently
aconsistcntly held that issues
iss ues
Statement. See id. at
pretr ial order have been

bee n eliminated from the action,''
action,'" S. Cal.
Cal. Rewil
Retail Clerks
not preserved in the pretrial
Union v. Bjorklund, 728 F.2d 1262, 1264

l 264 (9th Cir,
Cir. 1984), and that !'a
"a theory wi
willll be barred if
if not
na l at
q
9
Co.,, 769 F.2d

least
Am. Tel. & Tel.
Tel. Co.
r .2d 541 , 548 (9th Cir.
C iT .
leasi implicitly included in the order," Eagle v. Am.
10
princ iples
les should preclude Apple from seeking
1985). Now, Samsung
Sam sung argues that these same princip
11
II
No. 1986-3 at 3.
ongoing
o ngoing royalties.
roya lt ies, See ECF
ECFNo.
12
Under these circumstances,

c ircumslunces, the Court concludes 1hat
that Apple did
d id not
nol waive ongoing royalties.
13
1J
royalties" in the Joint Amended

A mended Pretrial
Apple
A pp le concedes that it did not use the words "ongoing royalties''
Ci
~ .~
.'@
14
Statement
is litigation, Apple
Stateme nt or its pre- and post-trial motions. However,
However. throughout th
this
App le has
~=
15
roya lties to compen

compensate
sate for
fo r all
ii ll Samsung
Sam sung infringement. See, e.g"
e.g., Compl.
CampI.
consistently requested royalties
16
(ECP
No. 1) at 13-14;
Am.. Com
pl. (ECF No. 261) at 12-13.
(Eel-' No.1)
13 - 14; Am
CampI.
12- 13. As noted above, in the Joint
Jo int Amended
17
Pretrial
Pret rial Statement, Apple requested
req uested "all damages adequate to compensate for Samsung's
18
infringement of
o f Apple'
Apple'ss asserted patents,
patents. and in no event less than a reasonable royalty."
royalty ." ECF No.
19
1455-1 at 3. Thus,
forr ongoing
Thu s, Apple's request fo
ongoi ng royalties
roya lties was at least ""iimplicitly
m plicit ly included" in this
20
Eagle, 769 F.2d

f.2d at 548.
54 8. By contrast,
corHrast, Sam
Samsung
sung did
d id not idenlify
identify 101 in lhe Joinl
Joint Amt:mlt:d
Amt:ndt:d
filing . Eagle.
filing.
21
Pretrial Statement at all, despite iden

identifying
tifying other statutory defe
defenses
nses (such
(suc h as
as 102, 103,
103, and
22
112). See ECF No. 1952 at 3. Moreover,

Moroover. Samsung had raised 101 much earlier in this case, but
23
repo rts and pretrial filings.

filings. Apple, on the other hand, has
then abandoned that defense in its expert reports
24
cons isten tly sought compensatory

com pensatory roya.lties
royalties for all
a ll infrin
infringing
ging act
activity.
ivity.
consistently
--.-c:....
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0
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25
26
27
28
In
rn its Sur-Reply, Samsung
Samsu ng contends
contcnds thar
that App!e's
App!e 's reference t9 "royalties"
''royalties" or "damages" in
Jo int Amended
Amcnded Pretrial Statement could
the Joint
cou ld not encompass ongoing
ongo ing royalties
royal ti es because that is a
Orde r, Creali
Order,
Creafive
lle Internet
Infernef Adver.
Adver. Corp. v. Yahoo!
Yahoo! inc"
Inc,, No. 6:07cv354
6 :07cv35 4 (E.D.
(E.D. Tex.)). However, the
COlirl
fo r any
Cou
rt notes that the patentee in Mondis requested "a running royalty to compensate it for
continuing
2002-1 at 12.
co ntinuing infringement.''
in fringemen t. " ECF No. 2002-1
6
Case No.: 5: 12-CV-00630-LHK
IZ-CVOO630-LHK
ORDER GRANTING fN
POR ONGOING ROYALTIES
ROYAL"TIES
IN PART APPLE'S MOTION FOR
AS
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remedy tmder
.C. 283, not "damages" under 284. ECF
tinder 35 U.S
U.S.C.
Eel" No. 2050 at 2. Samsung is
.,EE
C<3
t:
t.::::::~:..:
<-2
0.8
correct that the Federal Circuit has characterized ongoing

ongo ing royalties as an eqnitable
equitab le remedy
3J
authorized
I314-166 (analyzing ongoing royalties under
auth or ized under
under 283. See Paice,
Paice, 504 F.3d at 1314-1
under 283
Orthopedic, Inc.
Inc. v.
v. Nu
NIIVasive,
Vasive, Inc.,
and finding
findin g no Seventh Amendment
Amenument right to jjury
ury trial); Warsaw Orthopedic.
515
5 15 F. App'
App'x
x 882, 882 (Fed. Cir.
eir. 2012) ("An
("An ongo ing royalty
rOYIlII)' is not the same as an accounting
accounti ng for
ror
damages.
dam ages.").
"). However, this
thi s does not mean that Apple's request
request fo
forr "roya
"royalties"
lties" Hnd
and "damages''
"damages" is
insufficient
insufTIcicnt to invoke a request for
fo r ongoing royalties. The Federal Circuit has also referred to an
all
ongoing royalty as a "reasonable

F .3d at 1315
" reasonable royalty.,
roya lty." Paice,
Paice, 504 F.3d
13 15 (describing the requested
req uested relief
relie f
orthe ongoing infringement").

infringement") . As Apple notes,
nores, other courts have
as "a reasonable royalty in light ofthe
10
awarded ongo
ongoing
ties even
ing royal
royaliies
ev en though the patentee generally
generall y sought a "reasonable
"reasonabl e royalty"
roya lty" or
IIII
compensatory damages. See.

See. e.g. , ECF No.
No . 2002
2002-4
-4 at 3 (pretria
(pretriall statement in Paice)?
Paice).2
Sam ~sung
ung
o "'
12
-,_';: ...,ti
13
event less than a reasonable royalty" but did

d id not employ the
patentee sought damages and "in no everlt
14
words
"ongo ing royalty.''
roya lty," Rather;
Rather, Samsung
Sanlsu ng cites two cases relat
relating
ing to waiver, neither controll
controlling
ing
word s "ongoing
!!E
~ E
15
and both distinguishable.

distinguis hable. See ECF No. 1986-3 at 3.
J. In
[n Elvis Presley Enterprises,
Ellterprises, Inc.
Inc . v. Capece,
..,"'-=
'll B
16
the Fifth Circuit affirmed
= <I")
17
profits.
pro fit s. 141 F.3d
F.Jd 188,
188,206
206 (5th Cir. 1998). The pplaintiff
laintifflistcd
listed " injunctive relief, damages,
damages, and
18
attorneys
feess under the
uttomcys'' fce
the Lanham Act" in the pretrial order, but not an accotmting
accountin g of profits.
profi ts. !d.
Id. In
19
finding
tinding waiver,
wa iver, the court relied on the fact
ract that
thal the Lanham
Lan ham Act has a specific provision for
fo r an
20
accounting
acco unting ofpruiils
u rprufits lhal
Ihat ""llists
ists il
it st:paralely
scparatt:ly Crum
rrum damages."
dillllagcs. " ftl.
111. That
T hat is not
l1ul lbe
the situatiou
silllalioll here,
ben:,
21
however,
becau se there is no express statutory provision in the Patent Act that separately lists
howeve r, because
22
ongoing royalties. Next, in Ramos v. Davis &

& Geck, Inc., the District
Di st rict of Puerto Rico found that the
23
plaintiff waived a claim for "front pay" as to one cause of

o f action, but based this
th is result on the fact
24
express ly requested "front pay" for

fo r a separate cause of
of action.
acti on. 968 F. Supp. 765,
that the plaintiff
plainti ff expressly
25
771
771 (D.P.R.
CD.P.R. l997).
1997). Again, that is not what occurred
occu rred here. Apple has consistently sought
26
Smnsllllg
Srunsung argues that ir
if 283 does
docs not govern ongo
on~oing
ing royalties (as a fo
form
rm of
of inj
injuunctive
nctive
then Samsu11g
Samsung is entitled to ajury
trelict).
elief), then
a jury trial under the Seventh Amendment. See ECF No. l1986-3
986-3
at 4 n. l.
l . This argument is 111isplaced.
misplaced. Paice explained that
that 283 governs
gove rns ongoing royalt ies, and
and
that there is no tight
right to a jury trial. 504 FJd
F.3d at 13
1315-16.
I 5-16. Indeed, in a later brief,
brier, Samsung
Sam sung cites
Paice and argues that no jury tria
triall is required. See
Sf?e ECF No. 20
2015-2
15-2 at 3.
7
::::J:":::
0"
C,)
CJ
UU
..........
-~
(J O
.---" 0
"'" ......
<.>
t:;
<I) .;:
......
Q .~
fi)
Cl
~Cl
~
.!! 4.1"
U':l
.....
.
II>
;:::
z
. ~z
~ .;::
"'-=0.....
does not
nOl cite
ci te any case law
IllW where ongoing royalties were deemed waived where a
a ruling that
that the plaintiff
pla intiff in a trademark case waived an accounting of
of
"-
(..!..,
27
28
Case N
No.:
o.: 5:
5;J2-CY-006JQLHK
12-CY -00630-LHK
ORDER GRANTING IN PART APPLE'S MOTION FOR
FOR ONGOINO
ONGOfNO ROYALTIES
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compensatory royalties
royal ties for
fo r all infringing activity. Overall, Samsung has not demonstrated that
2
3
4
Apple waived
waived the issue of ongoing royalties.
2.
Timeliness
Aside
As ide from waiver, Samsung
Samsung calls App
Apple's
le's request for ongoing royalties an
an "untimely
"u ntimely
second post-trial motion."

mot io n." ECF
ECF No. 1986-3 at 5. Samsung points
po ints to the Court'
Court'ss March 5, 2014
scheduling order fo
forr post-trial
post-tria! motions, which stated that "each side may file one motion for
fo r new trial (!post-trial

(, post-trial motion')''
Illolion')" and "[e)ach
"[e]ach
j udgment as a matter of
o f Jaw
law and/or motion for
judgment
prevailing
fi le one motion for a permanent injunction."
injunction," ECF No. 1398 at
'at 4.
4, Samsung
preva ilin g side may file
claims that Apple'

Apple'ss motion is an additional "motion
" motion to alter or amend aajudgmenl"
judgment" under Fed. R,
R.
to
10
Civ.
C iv. P. 59(
59(e),
e), and therefore an untimely post-trial
posttrial motion
motion not authorized by the Court's
Court' s scheduling
11
11
le needed to raise ongoing royalties "as alternative relief in its

order.
Apple
order. According to Samsung, App
-=
-
oo"@
12
lor permilllcnl
permanent injunction.!'
injunctio n." ECF No.
No, 1986-3
19863 at 5,
5.
motion for
-~
v 0
13
.~
E
t:<E
t:;I;'::;
<2
uu
U
U
t'b
-'I:-.......
U
-o.- .!!?....,
.-
Apple characterizes the situation

s ituation differently.
differcntly, "Apple
"A pple agrees that its
ils request for an
all ongoing
I.. <.)
~c
Q .~
,o
.
0
ec
~ c
'
eo= ....
_ o
0
.....
rn'E
"'-
1l o
"C:I o
.~z
:: Z
Q (1)
" 0
;;:J.S
:::>-5
,_
14
59(e)
e) motion to 'alter or amend aajudgmcnt'"
judgment"' under Rule
royalty may be characterized as a Rule 59(
15
15
59(
e), but claims that this motion
"post-trial motion " as defi
defined
ned in the
Ihc Court's
Cou rl 's schedu
scheduliling
ng
59(e),
molion is not a "post-trialtnotion"
16
order because it is not a "motion fo r judgment as a matter of law and/or motjon

mot ion for new trial."
trial,"
17
App le also claims

cla im s its motion
moti on is ''early''
'iearly" because the Court
Cou rt has not yet entered
ECF No.
No, 2001 at 6-7. Apple
18
fifinal
nal judgment.
judgmcnt. I!d.
d. at 7.
7, Apple
App le claims that at
alleast
least one other district court has allowed a patentee
pa1entee
19
to seek ongoing royalties after losing a permanent injunction

requ est. Sr:.e
See Warsaw Orthopedic,
injunctio n request.
20
Inc:.
Inc. v.
v, Nu
NuVo,'iive
Vasive,, Inc., No.
No, 08-CY
08-CV- 1512,
JSI2. slip op.
up. al
aL 1I (S .D.
,D. CaL
Cal. JUlie
June 10,
10,20
2013)
13) (''[T)he
(" [T]hc CoUii
Court
21
21
denied
motion
ion for a permanent injunction and ordered the parties to brief the matter of
den ied Warsaw's mot
22
ongoing royalties.").
royalties."),
J.J-.
"-
23
The Court finds

110t untimely. The Court's
Cou rt 's March 5, 2014
20 14
tinds that Apple's
App le's motion is not
24
schedu
scheduling
ling order (ECF
(EeF No.
No. 1398) addressed only motions requesting
requ esting a new trial,
Tria l,judgment
judgment as a
25
law, and permanent

matter of
injunctions, Apple's
Apple 's motion does not
nOl fall within
with in any of
o f those
o flaw,
permant::nl injunctions.
26
A lso, Apple
Applc fi led its motion
mot ion
categories, and is therefore not foreclosed by that scheduling order. Also,
27
roya ltics only

on ly one week after the Court denied a permanent injunction,
injunction. 'vvhich
wh ich negates
for ongo ing royalties
28
Samsung's
Sam sling ' s claims of
of untimeliness.
8
C<lseNo,:
Case
No,; 5:
5 : 12~CV-00630-LHK
12-C V-00630-LHK
ORDER GRANTING IN PART APPLE'S
APPLE ' S MOTION FOR ONGOING ROYAL
ROYAL-TIES
TII~S
A10
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Sam sung asserts that Apple forfeited

lo rfeited ongoing
ongo in g royalties by not req
requesting
uesting that relief
rel ie f at the
2
same time it moved for a permanent injunction.

inj unction. Apple argues that briefing both issues
simu ltaneously wou

ld force patentees "to take L
the.conflict
he conflicting
ing position that money damages are
would
inadequate, while
wh ile simultaneously proposing money damages to remedy the infringement." ECF
No. 200 1l at
6. However, Samsung
a16.
SamslIng claims that "parties
" parties routinely
roulinely request an ongoing
ongo ing royalty
royal ty in the
thc
alternative to-and at the same time as-a request for a permanent irijunction
injunction barring ll1e
the sale
sa le of
the infringing produ~t,"

product," citing
ci ting Ba/d
Bard rPeripheral
eripheral Vascular
Vascular v,
v. W.L.
WL. Gore & Associates,
Associales, 670 Fr.3d
.3d
117
11 711,. 1178 (Fed. Cir.
Cit. 20 12) (vacated in part,
pari, 476 F. App'x 747 (Ped.
(Fed. Cir.
Cir, 20
2012),
12)), and Cordance
Corp,
Cmp, v. Amazon.com,
Amazon.cum, Inc.,
[m:" 730 F.
F. Supp. 2d 333,336
333, 336 (D.
(D . Del. 2010).
20 I 0). ECFNo.
ECF No. 1986-3
J 986-3 at 6.
10
However, both of those cases are merely examples

ex.amp les of
of patentees sitnultaneously
simu ltaneously seeking both an
atl
'2
...
IIII
injunction
injun ction and ongoing royalties.
roya lti es. E.g., Cordance,
Corda/Ice, 730
73 0 F. Supp. 2d at 336 ("Cordance filed
filed a
=:.=
~
12
mOlion for
motion
fo r permanent injunction
injuncti on or, in the alternative, imposition of an ongoing royalty.'').
roya lty."). Neither
'to
13
13
th at this
th is is a procedural
procedural requirement.
requireme nt?3 Accordingly,
Accordingly. th
thee Court determines that Apple'
App le' s
ho lds that
case holds
"' ....
--
14
motion is not untimely.

untimely .
t:<
Q
uu
'E .~
~ .~
"'Cl
~ ~
-~'""
I!)
rJ:J..;i
15
3.
Jurisdiction
Jurisdicti on
-o'Qo
16
Next, Samsung
Samsllng challenges this
thi s Cout
Court's
t's jurisd
jurisdiction
icti on to decide Apple 's motion.
motion . Apple
17
Cou rt 's denial of

appealed this Court's
o f Apple'
App le'ss request for a permanent injunction,
injunction. before
oofore resolution of the
18
18
parties' motions
moti ons for judgment as a matter of
of law or entry of fin
final
al judgment in this case. See ECF
Ecr
19
No. 1955. App

Apple
le appealed under 28 U.S.C.
U.S.c. 1292(c)(l),
I 292(c)( 1), which
wh ich permits appeals
appea ls to the Federal
20
Circuit from interlocutory orders refus

refusing
ing ifliunctions.
injunctions . See also
(llso 1292(a)(l);
I 292(a)( I); Or. of Pl.-Appellant
Pl. -A ppellant
21
Apple Inc
Inc.. at I, Case
Casc No. 141802
14- 1802 (Fed. Cir. Oct. 3, 2014) ("Th
("Thiiss Court has jurisdiction
jurisd iction over
overthc
the
22
permanent
denial of
o faa pl!rmanc
nt injunction
inj unction under 28 U.S.C.
U,S .C. l292(c)(
I 292(c)( lI).").
),"), According to Samsung,
Samsung. Apple's
23
interlocutory
interlocu tory apreal
appeal ''divested
"divested the Court ofjurisdiction"
ju risdict ion" for any "overlapping matters"
muttcrs'l between
24
Apple's
injunction
Apple 's requests for a permanent inju
nct ion and for
tor ongoing royalties. ECF No. 1986-3
1986-3 at 8.
'25
25
Samsung
Sam sun g posits that ongoing royalties
roya lties involve several issues common to a permanent injunction,
injunction~
26
such
s uch as the adequacy of
o f monetary relief and consumer demand for the infringed
inFringed patented features.
feat ures.
27
;':: z.
I!)
~.s
.0..
1-1-.-
28
The Court notes

nares that delaying
delay in g a motion
moti on for ongoing royalties until after resolution of
of a
injuunction
nction motion (as Apple has done here) may delay entry of
permanent inj
o f' final
fin al judgment, as
discussed
di
scussed below.
be low.
9
3
Case No,: 5: 12-CV-OOG30LHK

12-CV00G30-LHK
ORDER GRANTING
GRAN"nNG IN PART APPLE'S MOTION FOR ONGOING ROYALTIES
ROY ALTIES
A11
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See id. at 8-9.

8-9 . App
Apple
le disagrees,
di sagrees, claiming
c laiming that its request for ongoing
ongo ing royalties ""is
is distinct from the
2
33
injunction issue raised on appeal. ")' ECF No.

No. 200 1 at 8.
8,
The Court finds
find s Samsung
Samsung's
's jur
jurisdictional
isdictional arguments uti
unpersuasiye.
persuas ive. Samsung's theory
the01y that
thai
unction appeal is not supported by the

ongoing
o ngo ing royalties are inextricably bound to the permanent inj
injunction
law that the purties

parties have cited. "The fil ing of af1 notice of appeal is an event
eVent of jurisdictional
jurisd ictional
significanc~it
th e court
courl of appeals and divests the distJict
distri ct court
significance':""'it confers jurisdiction on the
control
appea l." Griggs v. Pro
Provident
vident Consumer
contro l over those aspects ofthe
of tile case involved
invo lved in the appeal."
Discount Co., 459 U.S. 56

j ur isdicti on under
56,1 58 ( 1982). The Ninth Circuit has held that its jurisdiction
1292(a)(
I 292(a)(J)
I) (for interlocutory injunction
injunction orders) extends
extend s "only to the ' matters inextricably bound
lO
10
up with the inju

nctive order from which
Cal.,, 102 F.3d 1035,
1035 , 1039
injunctive
which tbe
the appeal is taken,'"
taken ,' " Paige v. Cal.
11
11
(9th Cir.
Cir. 1996)
l996) (quoting
(9th Cir.
(quoti ng Self-Realization
Se/fRealization .Fellowship
Fellowship Church v. Ananda,
Anone/a. 59 F.3d 902, 905 (9th
C ir.
~:.:
12
4
1995)).
1995)).4
However, "it
" it is firmly established that
thut un
an appeal
uppeal ftom
from an interlocutory
interlocutory order does not
13
divest
th e trial
trial court of
o f jurisdiction
j uri sdiction to continue w
with
ith other phases of the case."
case.'' Plotkin v.v. Pac.
Pac. Tel.
d ivest the
14
& Tel.
Tei. Co.,
Co. , 688 F.2d 129
1291,
1, 1293 (9th Ci
Cir.r. 1982); see also Fairchild Semiconductor Corp.
Corp. v. Third
~c
E E
15
ltIC., No.
No . 2009-1168,
2009-1 168, 2009 WL 790 I 05, at*
at * lI (Fed.
(Fed . Cir. Mar. 25,
Dimension (3D)
(3 D) Semiconductor,
Sem;conduclor, Inc.,
en-s
oo"....
16
2009) ("Although
("A Ithough a district
di strict conrt
court may not proceed with
with matters
matte rs involved
invo lved with the injunction itself.
itse lf.
.<;::Z
.~ Z
C:
c al
~
;;:>
"
17
., . or make findings
findi ngs to support its injunction
injunct ion whlle
while the injunction is on
on appeal, .,
.. . the district court
coun
18
18
may proceed with the litigation and permit discovery,

di scovery, enter rulings
rul ings on summary judgment, or hold
hold
l9
19
a trial
tr ial on the merits.") (internal
(in ternal citations
citatio ns omitted).
o mitted) .
ro
.S
'
E
tt..2
.S
=~
0
o0 ro
u
UU
u
4-.
-~
'to
-E.~
.....
.... -,
"
of its
()
.!: l::z
c ,g
Q .~
.0
~a
ro .....
!!4J
.... Q)
""
0
~0
,.....
""
20
Si:tm:;ung
SaJJL!lllllg cites
I; itcs Puige
Paige to !lupport
support its argument that the
tire CoUJi
COlu1 Jacks
lacks jurisdiction over any
21
21
overlapping
App le's appeal. See ECF
ECF No. 1986-3 at 8. However, the Ninth
N inth Circuit's
overl apping issues in Apple's
22
Sarnsung 's
' s arguments are
arc misplaced.
mi splaced. Paige involved
guidance in that case is instructive as to why Samsung
23
an
ordcr granting a preliminary
prel iminary injtmction
injunciion in a discrimination class
an interlocutory appeal of an order
24
02 F.3d
FJd at 1037.
1037. The district
di strict court entered the injunction based on its decisions
dec isions
action suit. I102
25
2S
regarding class certification

the defendahts
defendants sought interlocutory
certificati on and summary judgment,
j udgment, and the:
26
27
28
~
re ly on Ninth
Ninth Circuit
Circu it Jaw
law regard
regarding
ing jjurisdiction,
urisdiction, but do not add
address
ress whether
Both sides rely
regional
wou ld apply to this
thi s Court's
Court 's ju
jurisdiction.
risd iction. Cf lnt
Im'/'l Elec. Tech. Corp.
regional or Federal Circuit law would
v. Hughes Aircraft Co.,
Co .. 476 F.3d 1329, 1330 (Fed. Cir. 2007) ("We
(" We apply our own law, rather Illan
than
regional circuit
regional
ci rcuit law, to questions relating to ottr
our own
own appellate jurisdiction.").
j urisdiction.").
10
Case No.:
No. : 5:12-CV-00630-LHK
5: 12-CV-OOG30-LHK
ORDER GRANTING
GRANTJNG IN PART APPLE'S
APPLE' S MOTION FOR ONGOING ROYALTIES
RO YALTIES
A12
Case: 15-1171
Document: 40
Page: 97
se5:12-cv-00630-LHK Document2075 "SEALED*

' SEALED'
Filed: 03/06/2015
Filedl
Filedll/25114
l/25/14 Pagell
Pagell of 36
review of those underlying

under lying decisions.
decis ions. The Ninth Circu
Circuit
it held that "the class certification
certifi cation order in
.;
.~
c:
c
....
"
t:
1: <.9
::t:.=
=:..=
this
grant of the
m injunction,"
injtmction/ ' and that
th is case is inextricably bound up with the gram
tile interi
interim
lhat the injunction
injunction
could not be upheld "wilhoui

"witJ10ut also upholding
upho ld ing the certification orlhe
of the class." Id.
ld. at 1039. The court
also exercised
relief
ef provided in the
exerc ised jurisdiction
jurisd iction over the summary
sum mary judgment order "because
" because the feli
injunction
th at the
lite merits orlhe
of the disparate irnpact
i1npact isstL
issuee had been resolved."
resolved.,
injuncti on was based on the fact that
Id
ld. at 1040.
I040. Thus, Paige indicates that predicate issues that are necessary to resolution
resolu tion of an
injunction
injunct ion are
arc "inextricably
" inextricably bound
bou nd up with" an interlocutory appeal
appea l and thus removed ffrom
rom the
district court's
cou rt 's jurisdiction during
dllfing the appeal.
appeaL See also Bates
BaleS v. United Parcel Serv.,
Serv .. Inc., 465 F.3d
Cir. 2006) ("Because

authority to grant the injunction
I1069,
069, 1076 (9th Cir.
C'Because the district court' s legal authorily
10
stemmed from
from its holding
ho lding that UPS violated
vio laled the ADA and the California
Ca liforn ia laws, those holdings are
II
II
' inextricably
inextr icably bound
bou nd up' with its injunction.").
injuncti on:)
llere,
uinextricablyy bound up with''
Here, Apple's
Apple 's request for
for ongoing
ongo ing royalties is not "inextricabl
with" the
o
.........
- ~
0
12
12
13
permanent inj
injunction
unclion appeal.
appeaL Unlike
Unlike the class certification
cerlification and summary judgment rulings in
"
.....
s.-"' :6
14
Paige, determining Apple' s entitlement

ent itlement to ongoing
ongo ing royalties
roya lties was not necessary for resolving
15
Apple's
motion . Indeed, Apple did not move for ongoing royalties unti
permanen t injunction mOlion
untill after
aftcr
App
le's permanent
16
the Court denied

sung contends that "the amount of money adequate
inju nction. Sam
Samsung
adeq uate
den ied a permanent injunction.
17
to compensate Apple"
App le" is "involved in the appeal" because
beca use Apple must argue that monetary
18
18
Spec ifical ly, Samsung

Samsu ng claims that
damages are
arc inadequate compensation. ECF No. 1986-3 at 9. Specifically,
19
. the petmanent
he Georgia-Pacific factors (for purposes of
or tthe
permanent injunction
injunction appeal
appea l affects application
app li cation of
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20
determining
dctemlining ongoing
ongo ing royalties)
royalt ies) because issues such
sllch as the probative
probativc value
valuc of Apple's
Apple ' s p~tenl
patent
2211
licenses and demand

de mand for
fo r the patented
patcnted features must
mu st be "re-open[
" re-opcn[cd]."
ed]." !d.
Jd. at 9. This argument fa
faililss
22
because mere factual

between issues does
docs not
nOI demonstrate that those issues are
factua l overlap
ove rlap belwecn
23
""iinextricably
Court' s permanent injunction
injunc.tion order did not address the
nextricably bound" to each other. This Court's
24
Georgia-Pacific factors
fac tors or reasonable
reasonab le royalties,
royalties. See ECP
ECF No. 1954. As Apple points
poi nts out, many
25
discrete issues regarding liability

appli cation of
o f Georgia-Pacific) were
liabi lity and damages (including
(includ ing application
26
also disputed
parties ' motlons
motions tor
Jor judgment as a matter of law, but Samsung
Sam sung did not argue
d isputed in the parties'
27
that Apple's appeal divested

divcsted th is Court
Cou rt of jjurisdiction
uri sd ictio/1 to resolve
reso lve those mot
motions.
ion s. See ECF No. 2001
200 I
28
at 8. Indeed, rulings
rul ings on preliminary
prel imina'ry and permanent injunctions require some analysis of liability
liabi lity
ll
II
5 : 112-CV-D0630-LHK
2-CV-00630~LHK
Case No.;
No.: 5:
ORDER GRANTING JN
IN PART APPI
APPJ,E'S
.E'S MOTION
~OT I ON FOR ONGOING ROYALTIES
A13
Case: 15-1171
Document: 40
Page: 98
se5:12-cv-00630-LHK
se5:12-cv00630-LHK Document2075 *SEALED*
'SEALED'
Filed: 03/06/2015
and remedies, wh
which
ich overlap factually with other issues,
issu es, but
but 1292 allows
a llows for interlocutory
appeals
injuunction
ncl ion orders while a case proceeds before the district
distric t court. Because determination
appeal s of inj
of ongoing
ongoi ng royalties
royalt'ies is not inextTicably
inextricably bound L
up
ip with Apple's permanent injunction motion,
Apple 's appeal has not

divested this Court ofjurisdiction.
nOldivcsted
jurisdicti on.
S
5
66
. ~E
;: S
.2
t:
4.
Request
Request for
f'or Stay
As a further procedural alternative, Samsung asks that ""fi]fthe

[i]fthe Court finds that the
jurisdictional
losc, tl1e
the Court should avoid potentially
pOlcntially wasteful
wastefu l proceedings by
j urisd icti onal question is even cclose,
staying thi
thiss case pending resolution of Apple's interlocutory
interlocUTory appeal/'
appeal." ECF
ECF No. 1986-3
19863 at 10.
Samstmg
SamslIng claims that
thai deciding Apple's
Apple 's ongoing royalties motion
moti on now would waste resources
[0
10
because the pending appeal may affect or obviate ongoing

unpersuuded and
ongoi ng royalties. The Court is unpersuaded
[ [
Il
DENIES Samsung's request

Apple's
requcst to stay resolution
resol ution of Apple
's ongoing royalties motion.
motion,
o ro
Q
"
==
[2
12
IJ 0
[3
13
therc may be some over

overlapping
lapping issues that are relevant to both a permanent injunction
The fact that there
=~
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Fi rst, as explained
exp lained above, the Court does not find Samsung'
Samsung 'ss jurisdictiona
jurisdictionall question close.
First,
[4
14
ongo ing royalties does not divest this Court of

o f ju
jurisdiction.
risdiction. Samsung has not persuaded the
and ongoing
..,Q
~;:::
~
c
[S
15
Court that there is a substantial risk of ''having

" having the same issues before two courts
couris simultaneously?'
simultaneously"
..,en-s
"''''
[6
16
1986 3) because
bccause the pending appeal involves
invo lves the propriety of an injunction
injun ction under eBay
(ECF No. 1986-3)
[7
17
v. MercExchallge.
MercExchange. LLC,
lLC, 547 U.S. 388 (2006), not the merits or calculation
calculati on of ongoing
Inc. v.
[8
18
royalties.
Q .~
.5
.9 ~
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IU 0
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[9
19
C ircu it has indicated that ongoing

ongoi ng royalties must be resolved prior to
10
Second, the Federal Circuit
20
entry of final judgment.

enlry
judgmellt. Last year, in Robert
Roberl Bosch, LLC v.
y. Pylon
Py lon Manufacturing
Mallltjacturillg Corp.
Corp.,, the
21
Federal
judgment before adjudicating
Fedcral Circuit held tthat
hat a district court can enter
entcr a final appealable
appealablcjudgment
22
ra il within the scope

seope or
o r an accounting"
" accountin g" under
under l292(c)(2).
1292(c)(2), 719 F.3d
F ,3d
damages because damages fall
23
1305, 1308 (Fed. Cir. 20 13) (en bane). However, in a prior nonprecedential
nonprecedcntiu! opinion,
op in ion, the Federal
Federal
24
Circuit stated
ongo ing royalty is not the same
samc as an accounting
accou nting for damages'.' and must
Slated that "[a]n
" [aJn ongoing
25
2S
therefore
resolved
lved before entry
entry-of
of final judgment: "We
" We agree with Warsaw that even assuming
there rare be reso
26
wou ld give this court jurisdiction over a claim that is ' final except fo r an
art accounting'
account ing'
Rule 54(b) would
27
wi thin the
(he meaning
mcaning of28 U.S.C. 1292(c)(2),
I 292(c)(2), file
the case is not
nOf 'final' because the dislriel
district court has
within
28
not
rlol yet determined ongoing royalties.''
royallies." Warsaw, 5!5
515 F. App'x
App'x: at 882 (emphasis
(emphas is added); see
J'ee also
12
Case No.: 5:
5:12CV
12-CV00630.LHK
oo630-LHK
ORDER GRANTING IN PA
PART
RT APPLE'S
APPLE' S MOTION fOR
FOR ONGOING ROYAL
IWYALTI
TIES
ES
A14
Case: 15-1171
Document: 40
Page: 99
se5:12-cv-00630-LHK
se5 :12-cv-00630-LHK DOCllme
Document2075
nt2075 *SEALED*
"'SEALED'"
Filed: 03/06/2015
Hynix Semiconductor Inc. v. Rambus

Ramblls Inc., 609 F. Supp.
Sllpp. 2d 951, 987 (N.D. Cal. 2009) (noting
(not ing that a
request for ongoing

ongo ing royalty may preclude fina
tinall jUdgment).
judgment), Apple and Samsung
Sam sung concur that
Warsaw,
Warsaw , and not Bosch, applies here. See ECF No. 200 l1 at 9 (Apple:
(Apple: ''a
"a stay will leave any appeal
in limbo");
l i mbo")~ ECf
ECF No.
No . 2015-2 at 3 (Samsung:
(SamslIng: "'' Warsaw
If'arsaw ... found that
thai ongoing
ongoin g royalties
roya lti es under
under 283
do not fall
fal l within the
t he fin
finality
ality exception under
under 1292(c)(2)"). Therefore, stayingthis
staying this issue as
Samsung
Sams ung proposes would preclude
preclude. entry
ent ry of fifina/judgment
na l judgment and
a nd prevent the parties from appealing
any remaining
Apple .s5
rem ai nin g issues other than denial of
o f a permanent
pe rmanent injunction for Apple.
Samsung
Sams un g argues that the Court should postpone resolution
resol ution of
o f ongoing
ongoi ng royalties
roya lties for the same
reasons that
th at it postponed calculation of supplemental damages and prejudgment interest. See ECF
,.
10
No. 1986-3 at lII.

l . In its post-verdict
post-verd ict motion for juc!gment
judgment as a matter
matte r of law,
luw, Apple sought
II
supplemental
for post-verdict in fringement, as wel
welll as prejudgment interest on the jury'
jury'ss
supplemental damages tor
=:.=.
Q
=:.=
t<:l
12
da1
nages award. The Court
d] that an award of
damages
Courl "agree[
"agree[d]
o f supplemental
supplement al damages is necessary here,"
..._
13
idence of actual postverdict

but found
fou nd it "appropriate to delay the consideration
cons ideration of ev
evidence
postvcrdi ct sales and
14
calculation of su
supplemental
ppl emental damages un
untitill after
afte1 the comp
complet
letion
ion of the appea
appeall in
in this cao:;e."
case." ECF
Ecr
15
No. 1963 at 18-19. Likewise,

Likew ise. the Court "declinef
" declinerd]
dl Apple's
i\pp le's request that the
t he Court calculate
ca lculate and
"'~
", tt:
"'Ci
~ 0
" ;z
0
,<;:
,,=
;Z
16
award prejudgment interest

in te rest at tl1is
thi s time
t ime before
befo re any appeal
appeal is resolved."
resolved." Id.
ld. at 24. The Court was
= "
;:J
;:>
17
able to postpone those calculations because they do not preclude

abJe
precl_ude final judgment. However,
However. as
"
18
explained above, ongoing royalties must be addressed before entry of

o ffinaljudgment
final judgment and appea
appeall of
of
[9
19
any
flny remaining
rema ining issues.
issues_
.~
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20
Samsung
itigations--//P Engine,
A OL 11U':-',
lrtc..". , Case No.
2; 11 Salll sung also identifies
iden t ifies two other
olher Ilitigations-liP
Ertg ill!!, Inc;.
1t,C. v.
v. AOL
No.2:
6:07-cv-00354~JDL
6:07
-cv -00354 ~JDL
21
21
cv-5
12 (E.D. Va.
Va.),
nternet Advertising Corp.
cv-5l2
), and Creative IInternet
CUI'l}. v. Yahoo!
Yahoo! Inc., No.
22
(E.D.
CE.O. Tex.)- where
w here the parties litigated ongoing royalties,
royal ties, but subsequent
subsequ ent Federal
Federa l Circuit
C ircuit decisions
23
on the underlying
merits
of those cases rendered
I 986-3 at
underl ying me
rits of
rcnde red ongoing
ongo ing royalties moot. See ECf
EC r No. 1986-3
24
II 1-13.
I - 13 . However, Samsung's
Sams ung' s argument
a rgument that resolution
resolUl ion of Apple's ongoing royalties motion can be
25
26
27
28
The
T he Court observes that Apple has tried to expedite the pending permanent
Sec Apple's Opp'n to Samsung's
Sarns ung's Mot. for a 30-0ay
30-Day Extension
Extens ion (ECF No. 58), Apple, Inc.
Inc.
appeal. See
v. Samsung Elecs
Elecs Co., No. 14-1802
14- 1802 (Fed.
(Fed . Cir. Oct.
O ct. 24, 2014). Fl!J'ther
Further deJaying
delaying entry
e ntry of ffin
inal
aJ
judgment here could
coul d prompt two separate appeals regarding
regard in g denial of a permanent injunction and
Apple' s ongoing
all other issues,
iss ues, which could be inefficient and favors
favo rs prompt resolution
reso lution of Apple's
royalties motion.
13
Case
Cllse No.:
No.: 5:12-CV-00630-LHK
5: 12-CV-00630-LHK
ORDER GRANTING IN
fN PART APPLE' S MOTION FOR ONGOING ROY
ROYALTIES
ALTIES
A15
Case: 15-1171
Document: 40
Page: 100
se5:12-cV-00630-LHK
se5:12-cv-00630-L HK Document2075
Oocument2075 *SEALED*
'SEALEO'
Filed: 03/06/2015
Filedll/25/14
Filedllf2 5f14 Page14 of 36
stayed ignores Warsaw's instruction that ongoing royalties must be adjudicated prior to a full
appeal.
)3
For the foregoing reasons, the Court disagrees with Samsung's

Samsung ls procedural and jurisdictional
jurisdi ctional
objections to Apple's motion
r)lot ion and denies
dC'nics Samsung's
Sam sung' s request to slay
stay resolt.Jtion
rt:.so lutioll of tJ1is
lh is motion.
B.
Apflle's
Apllle's Entitlement
E ntitlem ent to Ongoing Royalties
The Court turns to

\0 the parties' second set of disputes-whether
dispu tes-whether Apple is entitled to ongoing
royalties for
ana lysis of the proper amount
fo r any continuing infringement. This issue precedes any analysis
i8
of ongoing
ongo ing royalties, which the Court addtesses
addresses in a separate section below.
below.
Apple
App
le and Samsung
Samsu ng disagree about the legal standards for
fo r determining entitlement to
10
ongoing
p CI' se to ongoing
ongoin g royalties:
roya lties: "ln
" In the absence of
o f an
ongo ing royalties. Apple insists that it is entitled per
IIIJ
injunction,
. .''" ECF
inj uncti on, a patentee
pat entee is entitled
entit led to receive ongoing
ongo ing royalties . . ..
Ee)': No. 1958 at 1.
I . Apple
12
fu
rther states Ihat
that permanent injl.mctions
further
injunctions and ongoing royalties share the same statutory basis
I)
13
( 283), but claims that " [d]ifferent

relief:
Iype of
ofre
li cf: Georgia~Pac!fic
Georgia~Pac ific for
(
ldJi fTerent legal standards apply to each type
Vi
....
~ ~
Q
.~
Q.~
14
an ongoing
ECf No. 2001 at 4-5.
4 5. On the other
on goi ng royalty and eBay for a permanent injunction." ECF
~E
~
E
IIS
5
tirst time in its Sur-Reply that

thaI "Georgia-Pac[flc
~ 'Geo rgia-Pac if;c is a test for
Sam sung argues for the first
hand, Samsung
16
determining the amount of a royalty as legal damages, Jtot

"ot whether a plaintiff
pla intifT is entitled to the
17
No . 2050
205 0 at 3. According to Sam sung, the fourfourequitable remedy of
o[ an ongoing royalty." ECF No.
18
18
factor eDay
eBay test
tcst for injunctive relief
relie f is also
a lso the standard for determining entitlement to ongoing
ongo ing
19
royalties,
court's equitable discretion." ld.
ld.
roya lties, and "the test for entitlement is based on the CQurt's
."E
.~
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..e
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-o'-
"
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'"
20
20
The pparties'
f1l1ies' arguments conflate the.
the standards
s tt'1l1dt'1rd ~ for determining entitlement
~lItille",efll to ongoing
21
2
1
royalties as opposed to the amount of

of any such royalties.
royaJties. Apple
App le claims
c lai ms that Georgia-Pacific is the
22
"legal standard ..
ongo ing royalty.''
royalty. " However, Georgia-Pacific addresses detet'mination
determ ination of
. , . for an ongoing
23
the amount of a reasonable royalty through a hypothetical negotiation, not whether a patentee is
24
entitled to an ongoing
ongo ing royalty
royallY under
under 283. On the other hand
hand,, Samsung characterizes e/3ay
eBay as
25
2S
holding
well-established' and
hold ing that the four-facl!)r
four-factpr test for permanent injunctions "is the ' well~cstablished'
26
' traditional'
any equitable
d. at 3 (emphasis
eBay,
equitabLe relief"
relief " lJd
(emphasi s added). This overextends eBay,
traditiona l' test for any
27
which addressed permanent injunctions, not ongoing

ongo ing royalties.
royalties. See,
See, e.g.,
e.g. , 547 U.S . at 393 (referring
28
to "traditiona
'ltraditionall equitable pr
principles
for a permanent irrjunction"
i'?illnction"
inci pleS in deciding respondent's motion /or
14
Case No.:
No.; 5: 12-CV-00630-LHK
12CV-00630-LHK
ORD8R
ORD~R GRANTING JN
IN PART APPLE'S
APPLE'S MOTION
MOTtON FOR
POR ONGOING ROYALTIES
A16
Case: 15-1171
Document: 40
Page: 101
se5:12-cv-00630-LHK
se5: 12-cv-00630- LHK Document2075 'SEAL
*SEALED*
ED'
Filed: 03/06/2015
Filedll/25/14
Filedlll25114 Page15 of 36
(emphasis added).
added)). Samsung
to
SamslIng cites
ci tes no cases that apply the four-factor
fOUT factor permanent injunction test lO
8
ongoing
ongoin g roya
royalties.
lties. Indeed, it is unclear how the Court
Cou rt could apply the second eBay factorfaclor~''that
'that
remedi
es available
remedies
ava ilable at law, such as monetary damages, are inadequate
inadequ ate to compensate for that
injury''-to
inj ury"-la an
8n award of ongoing royalties.
royal ties . !d.
Id. at 391.
39 1.
'
E
(lj
1:
<2
t:::=:..::
..S
:; :'::
o
uu
UU
.......
0
(<j
1l
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.... ......
"
Ul ...
.:!l
.t::
+'
~
Ci .~
.,o
.Cl
~I=)
~
(<j E
....
of
Federal Circuit
Ci rcuit has instructed that entitlement to ongoing royalties is a matter of
The Federal
discretion for the district court, focusing

focusin g on whether the patentee has received
rece ived compensation
compensation for
for
continuing
infringement.
fringement. Contra,ry
Contrary to Apple's argument
argurnenllhat
that it is entitled per se
5e to ongoing
cont inui ng: in
di strict court "can

" can exercise its discretion to
roya lties, the Federal
Federal Circuit has plainly
pla inly stated that a district
royalties,
conclude lila!
that no forward-looking
fo rward-looking relief is appropriate in the
[he circumstances."
circumstances.') Whitserve,
Whilserve, 694 FJd
F.3d
10
at 335;
5; see also Presidio Components,
Components. Inc. v.
v. Am.
Am. Tech. Ceramics Corp. , 702 Fr .3d 13
1355 I.
1, 1363 (Fed.
(Fed.
1I II
Cir. 20 12) ("This

("Thi s coul't
court reviews the
tile district court's
cou rt' s decision to impose an ongoing royalty, in light
12
of its denial of
discretion."). In Paice,
Paice, the Federal
or
oraa permanent injunction, for abuse of
oIdiscretion.").
Pcderal Circuit
CifCLLit
I13J
explained that "{u}nder

"[u}nder some circumstances, awarding
award ing an ongoing royalty for
fo r patent infringement
14
14
in lieu of an injunction nwy

may be appropriate,''
app ropriate," and that
th at such a remedy should not be
he provided "as a
-.!l v
oo.c
"'~
"Ct:
410
v 0
IS
d at 1314-15
matter of course whenever a permanent injunction is not imposed."
imposed. " 504 FJ
P.3d
13 14-1 5
16
16
(emphases added); see

.fee also Bard, 670 F.3d at 1178
11 78 (cit
(citing
ing ;cf.).
idol.
"1:: Q)
v
17
....
00"
(.!..,
"-
18
Pederal Circuit has indicated

ind icated that a prevailing
prevai ling patentee should receive compensation
injuncti on, the Federal
injunction,
19
19
tbr
fo r any continuing infringement. See Telcordia
Telcord ia Techs .. Inc.
inc. v.
v. Cisco Sys.,
Sys .. Inc.
IlIc.,, 612 F.3d
r.3d 1365,
20
1379 (Feel.
an ongoing
(" An awanl
awarLl of
ofan
ungu in g royally
ruyalLy i~
i~ apprupriatt:
Hppruprialc be~ausc
be"au!S1,; the recoro
rt:l,;urLl supports
!!upports
(Fed . Cir. 2010) ("An
21
district court's finding

the distl'ict
fin ding that Telcord
Telcordia
ia has not been compensated for
fo r Cisco's
Cisco ' s continuing
22
infringement."). Because Apple could file piecemeal

agai nst Samsung for fbtllrc
future
p iecemea l complaints
comp laints against
23
infringemem,
endless
less succession of
infringement, awarding ongoing royalties
roya lties at this stage may avoid "an end
24
lawsuits presenting the same issue." Lemley,

Leml ey, supra, at 697.
697 . Accordingly,
Accord ingly, the Federal Circuit has
25
25
repeatedly approved the practice of granting

gr anting ongoing royalties
royal ties to compensate a patentee for
26
continuing
Amado. 517
5 17 F.3d
F.3 d at 1362; Active
ACliveVideo,
Video, 694
cont inui ng infringement.
in fr ingement. See Paice, 504 F.3d at 1316; Amado,
27
P.Jd
F.3d at 1343; Bard, 1170
670 F.3d
r .3d at 1193. Multiple district
di strict courts have followed Paice and awarded
28
28
ongoing royalties in lieu

licu of
of an injunction.
inj unction. See, e.g., Telcordia
Tclcordia Techs. v.
v. Cisco Sys.,
Sys.) No. 04-876,
,,;-=.-::: ZZ"
~i:
::>-5
While a patentee does not automatically receive

rece ive ongoi.ng
ongoin g royalties
royaltics in lieu of a permanent
15
5: 12CY-00630-LH K
ORDER GRANTING
GRANTJNG fN
IN PART APPLE'S
APPLE' S MOTION FOR ONGOING ROYAL
ROY ALTIES
TIES
ORDER
A17
Case: 15-1171
Document: 40
Page: 102
se5:12-cv-00630-LHK
*SEALED*
se5l2-cv-00630LHK Document2075
Documenl2075 SEALED'
2014 U.S. Dist. LEXIS 5l076,at

20 14) (awarding ongoi ng roya
royalties);
lties);
5 1076, at *18 (D. Del. Apr. 14,
14,20
Carnegie Mellon
Mel/on Univ,
Univ. v.
v. Marvell Tech.
Tech. Grp.,
Grp .. Ltd,
Ltd. , No.
No . 09-290,2014
09-290, 20 14 U.S. Dist. LEXIS 43042, at
*124
... 124 (W.O.
(W.o. Pa.
ra. Mar. 31,
31 , 2014) (same); Depuy SYl'llhcs
Synthes Prods.,
Prods .. LLC v.
\I, Globus Med:,
Med, Inc.,
inc., No. 11-
652,
2014): Mondis, 2012
2012U.S.
U.S. Dist.
Di s!.
65 2, 2014
20 14 U.S.
U.S . Dist. LEXIS
LEX IS 61450, at *24 (D. Del. Mar. 28, 2014);
LEXIS
LEX IS 60004, at *22-24.
*22-24 .
royalties,
part ies' additional
additi onal arguments regarding Apple's
Apple ' s entitlement
en titlement to
roya lties, the Court
Cou rt turns to the parties'
ongoing royalties under the present circumstances.

ci rcumstances.
10
t: ,s
t:tE
:=:.::
:;1:"=
o
ot3
to
-c 'o
t:
.-. . ..1)'0_
<.it)
u..._
patentee's
's entitlement to
10 ongoing
ongo ing
Havi ng addressed the standard for determining a patentee
Having
Filedll/25/14
Filedl l/25/14 Page16 of 36
.~
.S
Filed: 03/06/2015
I.
I.
Double Recovery
Samsung's first
firs,t argument is that Apple improperly seeks double
do uble recovery for certain
ll
II
infringing sales because Apple

App le is already entitled to supplemental damages for
fo r post-verdict
12
infringement. See RCF

ECF No. 1986-3 at 13; Ec
ECFr No. 2050 at I,
I. "Generally,
"Genera lly, the double recovery of
13
13
damages is impermissible.''
impermiss ib le. " Aero Prods.lnt'l,
Prods. Int 'I, Inc. v. lntex
II/tex Recreation Corp"
Cmp., 466 F.3d
r .3d 1000, 1017
10 17
(Fed. Cic.
Cir. 2006).
.~
..~
~
J::
.b
14
(1:3
....
15
....
Q.)
~,o
6
~
II s::E
E.
r:n.S:::.
~ .~
fn
post-verdict
le sought "rs]upplementaJ
ct' motion for judgment as a matter of law, App
Apple
"rs]upplt::mcntal
10 its posi-verdi
"'~
-ct:
'"Ot
16
damages through judgment."

Ecr No. 1897-3 at ii. Noting that Apple wanted supplemental
jud gment." ECF
:::::
::: z;z:
= "Q.)
::J..S
::>
,
17
17
damages "through
dale of
o f judgment for
fo r infringing sales not considered by the jury," this
th is Court
Coun
';through the date
"-
18
agreed that "an award of

o f supplemental
su pplemental damages is necessary here, as there are
arc sales for which the
19
ju ry did
d id not make an
an award, because they occurred aafter
fter the jury
j ury reached Its
its verdict." ECF No.
jury
Q.)
~
0o
'0""
(.J.,
20
J1963
963 at 17-18.
17- 18. Thus, App
Apple
le has sought
w ughl and
ami ubtaim:d
ublaim:u entitlement
t:olillemt:nl lu s upplemental
upplt:roe!llal uamages
rJamages
21
beginning the day after the jury's

j ury 's verdict through the date of final judgment, i.n
in an amount to be
22
determined after
resolution
lu tion of any appeals.
appea ls.
aller reso
23
In seeking ongoing royalties,

royalties. Apple initially sought compensation tor
Jor infringing prod ucts
24
"that are
on or after the date of this
thi s [Proposed]
[ProposcdJ Order."
Order." ECF
Eer' No. I1959.
959. However, after
After
arc sold
so ld on
25
Samsung rai sed the poss

possibility
ibility of double
doub le recovery,
recovery. Applcchanged
Apple changed positions
positi ons and now "requests
" requests that
26
royalties
lties start from the date of the
lhe denial of
oflne
the permanent injunction,
inju nction, and Apple will
such ongoing roya
27
accept this
0. Apple claims
thi s remedy in lieu of supplemental damages."
damages." ECF
ECF No. 200 IJ at I10.
claim s that
28
un
under
der this amended request, ''there
"there will
wi ll be no double-counting."
doub le-counting." !d.
Id.
16
5: 12-CV -00630-LJ-IK
ORDER GRANTING JN
IN PART
PART APPLE'S
APPLE'S MOTION FOR
FO R ONGOING ROYAL
ROY ALTIES
A18
Case: 15-1171
Document: 40
Page: 103
se5:12-cv-00630-LHK
se5:l2-cv-00630-LHK Document2075 *SEALED*
'SEALED'
Filed: 03/06/2015
Filedll/25/14
Filedl1!25/l4 Page17 of 36
In light of Apple's shifting positions,

posi tions, the Court concludes that
thai Apple may recover any
2
appropriate ongoihg
ongoing royalties only
on ly after entry of
o f final judgment, and supplemental damages for any
post-verdict, prejudgment infringement.

in fr ingement. In its Reply in support of
o f ongoing royalties, Apple
changed course and now seeks ongoing royalties starting on

o n August 27,2014
27. 2014 (the date the Court
denied a permanent injunction), waiving supplemental

supp lemental damages after that date. However, at
al
Apple 's
' s request,
request , the Court has al ready awarded supplemental
supplementa l damages through the anticipated
entry of fina
fi nall judgment. Having invited the Court
Courl to
lo grant
gram this remedy over Samsung's
Sam sung's objection,
Apple
may not arbitrari ly choose new dates for its remedies. See Pegram 1'.
Applemay
v. Herdrieh,
Herdrich, 530 U.S.
211 , 227 n.8

n.g (2000) ("Judicial
("J udicial estoppel generally prevents a party
parly from prevailing
prevailin g in one phase of a
10
case on an argument
argu ment and then relying on a contradictory argument to prevail in another phase.n).
phase.'').
IIII
Accordingly, Apple may recover supplemental

ofthe
the verdict
supplementa l damages for the period between entry of
Q
~
Q"
::;:.=
;;1:'=
1
122
and entry of lin

judgment, and any ongoing royalties on
ly for infringement after entry of fin
al
fin a Il judgment.
only
final
1:j'o
tJ 0
13
J3
j ud
udgment.
gment. This obviates
obv iates any concern over double recovery.
."02E"
t!
1: <E
.~
uu
UU
_......
-.--
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' 6:
tl
U
.~
.'!: p
l:
Q .~
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~
14
" ""
Cf)~
"'"'
o
0
],,"
z
:=....c
:z:
Cl v.
15
16
ECF
sung' s primary argument is lack of notice. Samsung
BeE No. 1986-3 at 14. Sam
Sa111sung'
Sam sung claims that
17
"Apple
si lent about its intention
intent ion lo
to file an alternative motion
moti on for injunctive relief,"
relief," which
" Apple remained silent
a
u.,
&
18
prevented adequate discovery

post"judgment ci
rcumstances" necessary to assess
di scovery into "the likely post-judgment
circumstances"
19
ongoing royalties. ld.

Id. Samsung also insinuates
in sinuates that Apple's goal "'' is not recompense
recompen se for genuine
20
injury, but
her to prejudice Samsung."
bUL rat
rather
Samsung. " !d.
Id.
iujury,
.0
~0
--ell ....
c:
E
.;:
2.
Notice
Samsung
Sam sung next asserts that "equity weighs heavily against
against a grant of an ongoing
ongo ing royalty."
-I).)
~ofj
;;;>-5
"
21
Sarnsung's
Samsung's arguments merely repeat its waiver arguments under
underthc
the rubric of
of"equity."
"equity. " For
For
22
the reasons
of
I'easons explained above, the Court rejects Samsung'
Samsung'ss arguments regarding waiver and lack or
23
notice. Samsung's speculative

speCUlative allegations regarding .t\pple)s
Apple's motives do not affect Apple' s
24
entitlement to remedies.
remed ies.
25
26
3.
,Judicial
Judicial Resources
The parties argue abol.lt

about whether imposing ongoing royalties
royallies woulc.l
woul~ waste or conserve
27
judicial resources. These arguments boil down to two issues: (I) whether there is any continuing
conli nuing
28
infringement of
'721,
1, and '647 Patents, and (2) whether Apple can seek ongoing roya
royalties
lties
o f the'
the ' 172, '72
17
Case No.:
No.; 5: 12-CV-00630-LHK
12-CV-00630-LI IK
ORDER
QRDERGRANTING
GRANTING IN PART APPLE'S MOTION FOR ONGOrNG
ONGOING ROYALTIES
RO YA LTIES
A19
Case: 15-1171
Document: 40
Page: 104
se5:12-cv-00630-LHK
se5:12-cv-00630LHK Document2075 *SEALED*
' SEALED'
Filed: 03/06/2015
Filedll/25/14
Filedll/25/l4 PagelS
Page18 of 36
for
devices
fo r Samsung
Sams ung products "not
" not more than
than colorably
co lorab ly ddifferene
ifferen t" from the dev
ices that
thai the
lhe jjury
ury found to
2
infringe.
infri nge.
a.
Samsungg claims
SamslIn
clainl s that
that there is no need for continuing
continu ing remedies because it no longer infringes
infri nges
44
ECFP No.
any of the ' 172, '72
' 7211,, and '647 Patents.
Patents. See
Se~ EC
No. 1986-3
\ 986-3 at 15.
15 . According to Sam sung, 11" [n]o
[n,1 o
Samsung
si nce 2012
201 2 has even been accused of
o f infringing
infri ng ing the '172
' 172 or '72
' 72 1
Sam su ng product released since
patents,"
" Sa msung long ago designed around these patents." ECF
Ecr No,
No. 1986-3
\986-3 at 15. As to
paten ts," and "Samstmg
the ' 647 Patent,

"post-verd ict sales of the accused products in this
thi s case
Patent. Samsung represents that "post-verdict
have already
a lready ended,"
cnded," and thallhe
thaLthe only version
vt:rsion ofthe
o r the Galaxy S lli
111 product on sale "incorporate[s]
" incorporate[sJ
10
~
'
'
t:
~
.: <2
Continuing
Continuin g Infringement
Infringement
different
diffe
rent cocle"
code" than the relevant infringing source code.
code . ld
ld.
In
In support of
o f these asserrjons,
assert ions, Samsung
Sarn su ng submits
submi ts multiple
mUltip le declarations.
declarati ons. Corey Kerstetter,
]IIJ
0"
=c.;
UU
u...._.
=:.=
=;;;
12
Vice President of Business Planning at Satnsung

Telecommunications
unications America ("STA"),
(" STA"), avers that
th at
Samsung Telecomm
~
ti
o
" 0
'5
.2
E.~
I)
13
STA has stopped importing

im porting into the United
Uni ted States the Admire, Galaxy Nexus, Galaxy Note, Galaxy
Ga laxy
.c
14
S II,
11, Galaxy S II Epic
Epi c 4G Touch, Galaxy SIJ
SII Skyrocket, and Stratosphere accused products. ECF
r.n~
~O
~E
- E
15
15
No. 2015-8
docs not represent that
thnt STA
ST A has stopped selling
se ll ing
20 15-8 ("Kerstetter
(" Kerstetter Decl.")
DecL") 1 3. Kerstetter does
16
thes-e
these products. However, Kerstetter does represent that STA bas
has stopped selling
se ll ing the
th e Galaxy
Ga laxy Note
17
I[
ll
18
18
Samsung
Sam su ng also
a lso submits declarations from Juhu
Juhuii Lee and Sungwoo Cho,
C ho, both Samsung engineers,
19
Sam sung has changed

chahged the
t he source code for tthe
he accused Browser and Messenger
who slate that Samsung
20
20
applications, respecti
applicatjons,
respectively,
ve ly, in any remaining Galaxy
Ga laxy S liT
III products. ECF
I3cr Nos.
Nos . 20
2015I 5~ 11
11 ("
(HLee
Lee
21
21
Dec!."),
20155-1I2 ("Cho
(''Cho Dec!.").
DecJ.") . Finally,
Finall y_, Sam
Sa rnsung
sung relies
re lies on a new declaration
declaration from its expert
ex pert for
Decl."), 201
22
22
' 647 Patent, Dr.

Dr. Kevin Jeffay,
JefTay, who opines
o pines based on the Lee and Cho
C hu Declarations
Dcclarai ion:s that the
the '647
23
current versions of the

Ihe Browser and Messenger applications
appli cations in the Ga laxy
la.xy S JII
ill products do not
24
infringe asserted claim

cla im 9 oftne
o f the '647
' 647 Patent. ECF
EC F No. 2015
201 5--10
10 (''Jeffay
("Je ffay Dec!.")
Decl .") 11,]39,
~~ 39, 45, 52.
52 .
.~.;:,
.~
Q .~
Q.
~
.S
~ a;
"
oo::
Y:l-5
-o'00
1:
::: ;z;
Q)
.'"
;Z
Q Q)
c "
P-5
~.s
....
"
25
and certain
certai n Galaxy
Ga laxy S Ilf
II I models,
mode ls, though those pproducts
rodu ct~ may have
ha ve "''retail
retai l availability.''
availab ility." ld.
ld. ~[,14-5
~, 4-5..
ln
In response, Apple
App le contends that Samsung's
Samsung' s representations are insufficient
insuffi cicnt to demonstrate
26
noninfriogemcnt,
particul arly regarding the '647
' 647 Patent. See ECF
EC F No.
No . 2001
2 00 I at 12-13.
12-13 . For
noninfri llgement. particularly
27
ex
ample, Apple faults Samsung
Sams ung for not guaranteeing that the accused
example,
acc-used source code is no longer
28
28
Samsung products currently

current ly on the market
market. ECF No.
No, 22046-3
046~3 at 2.
2 . Apple also
present in any Samsung
'
18
Case No,:
No.: S:
5:12-CV-00630-LHK
12CV-OOG30-LHK
ORDER GRANTTNG
ROYALTIES
GRANTING rN
IN PART APPLE'S MOTION
MO'nON FOR ONGOING ROYA
LTIES
A20
Case: 15-1171
Document: 40
Page: 105
se5:12-cv-00630-LHK
'SEALED'
se5:12-cV-00630-LHK Document2075 *SEALED*
Filed: 03/06/2015
Filed11/25/14 Page19 of 36
Filedllf25f14
submits a declaration
declaratioll from its damages expett,
expcl1 , Dr. Christopher Vellturo,
Veiliuro, who claims
cla ims (based on
2
th
ird-party investigations) that retai lers are
third-party
arc still offering the.
the Galaxy S HI
III and Galaxy
Ga laxy Note
Note II. ECF
No. 1985-4 (''Vellturo

Ded") ,,
,~ 9-10.
9-10 . Generally, Apple
App le asserts that "''Samsung
Sam sung has not
nol removed
(" Vellturo Decl.")
the patented features

infrin gement.
reatures entirely," but
bllt offers no
nO specific
spec ific evidence to prove continuing infringement.
ECF
Ecr No. 2046-3 at 2.
2.
Apple does not

nol ask the Court to determine at Ihis
this point
po int whethet
whether Samsung
Samsun g continues to
77
infr inge. See BCF

infringe.
ECF No. 2046-3 at 2. Moreover, given the limited record regarding
regard ing any post-verdict
infringement
the Court declines to do so for purposes of this
thi s motion. Regardless, if
infi'ingement by Samsung, lhe
Samsung is correct that

thaI it no longer infringes
in fr inges with
wi th respect
res pect to the adjudicated products, that fact
10
does not foreclose

Ib reclose ongoing
ongo ing royalties.
royalties. If Samsung
Samslln g no longer imports or sells
se lls any
any of the adjudicated
adjud icated
'
E
IIII
products,
Irom thai
that
prod ucts, then it does not need to pay any ongoi ng royalties and suffers no hardship from
1:
t: 2
S
=;.::
= :..=
0 $
o
12
uu
UU
..... ......
Morcovcr, as Ihis
remedy. Moreover,
this Court previously
prev iolls ly noted in connection with evaluating a permanent
perm anent
-'i:--.. .--~.....tl.
...........
.-"'
l3
13
injunction, the
lhe absence of current infringement
infringemem does not fo
foreclose
reclose future infringement:
in fringement : ''The
"The fact
....
14
that Samsung
Sam sung may have stopped sell
selling
ing infringing products for now says nothing about what
,~D
Q
~~
!!ti
.5II t"
15
Samsung may choose to do in the future.''

Samsu11g Elecs. Co., 909 F. Supp. 2d
future!' Apple, Inc.
II/C. v. Samsllng
"'-
-o
,, "
0
16
;~
., : Z
Z
~
"
u
;:J.:;
'='-5
l11147,
47, lI 161 (N.D.
(N. D. Cal. 20
2012),
12). aff'd in part, 735 F.3d
F.3 d 1352 (Fed.
(Fed. Cir,
Cir. 2013)
20 13) (footnote om
omitted).
itted).
17
Whi
While
le Apple could resort to filing new lawsuits
lawsu its lo
to address any continuing
co ntinuing infringement, see
~'e e Aspex
Lll..
18
Eyewear,
Inc. v. Marchon
Ma/"chon Eyewear,lnc.,
Eyewear, inc., 672 F.3d
F.3 d 1335,
133 5, 1344 (Fed. Cir. 20 12), ongoing royalties
roya lties
Eyewear. Inc,
19
may reduce
tme litigation.
red uce unnecessary fu
future
litigation . Thus, Samsung's assertions that it no longer infringes
in fringes do
20
not
110\ prevent imposi
imposition
tio n of ongoi
ongoing
ng royalties.
. td
~
(,J
"
0
0
()
Q .~
~
(J)..:::.
50
""
2
211
b.
P
Products
r oducts ""not
not more
morc than colorably different"
22
In its proposed order, Apple seeks ongoing

ongo in g royalties
royalt ies "as lo
La products adjudicated
adjudi cated to infringe
23
the ' 647,

64 7, ''1I 72, and ''721
lorably different
721 patents,
plllents, respectively,
res pecti vely, and as to products not more than co
colorably
24
therefrom."
Samsu ng protests that thi
thiss proposed language is overly broad and will
wi ll
therefrom ." ECF No. 1959. Samsung
25
'(perpetuate
"perpetuate satellite litigation" about whether unaccused Samsung
Samsullg products are "colorably
26
6-17. Samsung
different"
Sams ung claims
cl aims
di(ferent" from the accused infringing products. See ECF No. 1986-3 at I16-17.
27
that Apple has initiated

Commi ssion
initiared costly enforcement pr0cced
proceed ings at the International Trade Commission
28
28
against other
obtaining exclusion
c:'<clusion orders against certain produ
products.
cts. !d.
{d.
Other competitors
co mpeti tors after
afte r obLaining
19
Case No.: 5: 12-CV-00630-LHK
12-CV-OOG30-LHK
ORDER GRANTING IN PART APPLE'S MOTION 1I0H
POR ONGOING ROYALTieS
A21
Case: 15-1171
Document: 40
Page: 106
se5:12-cv-00630-LHK
seS :12-cv-00630-LHK Document2075 *SEALED*
"'SEALED*
Filed: 03/06/2015
Filedll/25/14
Filed ll/25/14 Page20 of 36
Samsung's
Samsun g' s concerns are
arc premature. In the injunction context, this Cotut
Court has already
2
<In ot more than colorably

co lorab ly different" provision
provi sion is standard in injunctions.
inj unctions. ECF No.
observed that the "not
38 , The Federal Circuit

C ircuit has explained and applied
appli ed this
thi s standard for
fo r contempt proceedings
1954 at 38.
44
Corp., 646 F.3d 869, 882 (Fed.

regarding injunctJons.
TiVu Inc.
Inc , v.
v. EchoStar Corp"
( Fed . Cir.
C ir. 20 11)
1 I) (en
injunctions . See TiVo
(" Instead of focusing

bane) C'lnstead
focu sing solely
so lel y on infringement, the contempt analysis must focus ini
initially
tially on
the differences between the features relied upon to establish

establi sh infringement and the modified features
oflhe
of
the newly accused products."). Several distri
district
ct courts have used this
th is language when imposing
imposi ng
ongoing royalties
royalties.. For example,
examp le, in Bianco v.
v. Globus
Globw,' Medical, Inc.,
Inc., Federal Circuit
Circuit' Judge
Judge William
(si ttin g by designation)

des ignatio n) ordered ongoing
Bryson (sitting
ongo ing royalties for trade secret
sec ret misappropriation,
mi sappropriati on, noting
10
payme nts on future sales of those three products implicitly

that "[a]h
" [a]n order basing
bas ing ongoing royalty payments
II
II
t1\at are not co

colora
lorably
bly different
d ifferent fro
from
m those products." No.2: 12-CV-00147extends to any products that
=:..::;
=:..::
12
WCD,
wen, 20 14 U.S. Dist.
Disl. LEXJS
LEXIS 89777,
897 77, at *36-37 (E.D.
(E D. Tex. July l,
1,2014);
20 14); see also VirnetX
VimelX Inc.
Inc, v.
1:i
~6
0
"A:
'1: U
0_
13
Apple Inc., No.6:

No. 6: 13-CY-211,
13-CV-2 Il, 20
2014
14 U.S. Dist.
Di sl. LEXTS
LEXIS 1590
159013,
13, at *16
* 16 (ED.
(E.D. Tex.
Tex . Mar. 6, 2014)
.....
~
Q
.~
Q .-
-.-"' "
.-
14
( includ in g "products
(including
"product s not colorably
colorab ly different from
fro m those adjud
adjudicated
icated at trial") (rev
(rev'd
'd in part, 767
~c;
.!! 0
15
F.3d
FJ d 1308
1308 (Fed.
(Red . Cir.
C ir. 2014));
2014); Mondis,
Monelis, 2012 U.S. Dist.
Ois1. LEXJS
LEX IS 60004, at *7-8 (same); Creative,
CreaLive, 674
16
F. Supp
Supp.. 2d at 854.
00
17
&
18
refused to employ
empl oy the "not
" not colorably
co lorably different"
d ifferent" language
lan guage and lim ited ongoing
ongoi ng royalties to
19
20 13 WL 1136964, at *3 (E.D.
(ED. Tex.
Te.'I:. Mar.
Mar. 15,
J 5, 2013).
''adjudicated
"adjudicated models."
model s." No.
No. 6:09-CY-203,
6:09-CV-203, 2013
20
There,
least 25 unadjudicated
Therc , the plaintiff
plail1tiff argued that "at
"al Icast
unadj udicatcd but not 'colorably different'
diffcrcllt' phones
211
2
s hould be considered in the ongoing

should
ongo ing royalty rate analysis,"
ana lysis," and that "this number
num ber could increase"
22
after discovery.
ld. at *2. The
"elusive
di scov ery. fd
T hc district court decided not to include this
th is "elusi
ve target" in the
23
filingg a separate action involving these

ongoing royal
royalty
"w ithout prejudice to Fractus filin
ly analysis, but "without
24
prod
ucts." Jd. While the Fractus court exercised its discretion to decline
products."
declin e to adjudicate products
25
25
th at were "not
" not colorably
colorab ly different," as noted above, most other courts have adjudicated
adj udicated "not
that
26
ff could
colorably
Moreov er, the
thc Fractus
Praclus court recognized that the plainti
plaint iff
colorab ly different"
d ifferent" products. Moreover,
27
simply fifile
le !lew
new lawsu
lawsuits
its to target new lnfiinglng
infringi ng products. Similarly,
Simil arly. Apple
App leeould
cou ld fifillee new
28
Samsung for future infringement.

infd ngement. Samsung
Samsun g does not address the likelihood
likelih ood that
that
lawsuits against Samstmg
...,
~
t::
<Q
1:02
uou
U
0 ~
~
.....
-.-"
~
.,~Cl
o
"
_< 0>-
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"'~
".....
Samsung cites Fractus,

Fractus. SA.
S.A . v. Samsung Electronics
Electrunics Co.
Co, as
a ~ an example
example where a court
20
Case No.:
No.: 5:
5! 12-CV-00630-LHK
12-CV-00630-LHK
ORDER
PART
ONGOING
OR DER GRANTING IN PA
RT APPLE'S
APPLE ' S MOTION FOR ONGOI
NG ROYALTIES
RO YALTIES
A22
Case: 15-1171
Document: 40
Page: 107
se5:12-cv-00630-LHK Document2075 '*SEAlED*

SEALED'
Filed: 03/06/2015
Filedll/25/14
Filedl l /25/14 Page21 of 36
new enforcement lawsuits by Apple wou ld require

requ ire the "further
"filrther motion
mOl ion practiceJ
practi ce, discovery and
22
3
. ctl
~
Q
'
t: <.E?
$"
=;.::;
=;.=
expert disputes" that Samsung decries here,

here. ECF No. 1986-3
19863 at 17-18.
171 8.
Samsung also argues

argt1es lhal
that Apple's
Apple 's proposed language for
fo r ongoing royalties is "far
" far broader
even than what it proposed for its

jts permanent
permanen t injunction"
inj unction" because Apple tried to enjoin
enjo in only
on ly
"features," not "products."

{7. In its proposed permanent injunction, Apple targeted
"prod ucts. " /d.
Id. at 17.
"software
"softwa re or code capable of implementing any Infringing
In fr inging Feature, and/or any feature not more
than colorably
co lorably different
diITerent therefrom."
therefrom, " ECF No. 1895-4.
1895-4 . This Court
Cou rt noted
nOled that
thal Apple's proposed
injunction
inj unction was relatively
re latively narrow because it "targets
;'targets only
on ly specific
spec ific features,
fea tures, not entire products."
No. 1954
[954 at 38. Such narrowing was appropriate because Apple sought to
t'O enjoin a variety of
of
ECF No.
10
activities such as ''develop

ing, designing,
imp lement ing any
"developing,
desi gning. [or)
[or] testing" source code "capable of implementing
IIII
lnfr
lnfri.nging
inging Feature." ECF No. 1895-4.
1895-4 .
12
Here, Apple seeks ongoing royalties

roya lt ies for "''products
prouucts not more than colorably
co lorably different
13
therefrom." ECF No. 1959. Apple does

docs not t'espond
respond to Samsung's
Samsung' s objection, but Apple indicates
ind icates
-"' ...l=
14
that it wants royalties for "products with the software found to infringe or software that is not more
,S;::
eo
_
u
~ ....
"
15
than colorab
colorably
ly different
d ifferent therc
therefrom."
tioJ11." ECF No. 200 lI at 14.
14. The
T he Court is not convinced by
16
Samsung
SaJ11sung' s assertion that Apple's request is "far
" far broader" th,m
than the proposed permanent injunction.
17
The Federal Circu it explained that the "not colorably different''

diflerent" inquiry focuses on "the features
featu res
18
18
relied
future
re lied upon to establish
estab lish infringement.''
in fri ngemen t. " TiVo,
TWo , 646 F.3d
P.3 d at 882.
882 . Thus, any analysis
anal ysis of
offuhlre
19
Samsung
Samsllllg product
productss would
wou ld necessarily focus
foclis on the relevant infringing features. The
T he jury heard
20
wnsiutmtbl~;:
~ull~jr.k:nibk
2l
21
jury's
ju ry's apport
apportionment
ionment of the value of those
lhose features to the adjudicated products. Applying ongoing
ongoi ng
22
royalties
roya lties by product instead of feature is reasonable under these circumstances.
o
0 "'
uu
UU
..,.
c....
~~
-.-"""'... -....
u 0
(.)
0
~ . -
.~
.....
t:)
Q .~
,_COl
o
ru
tl)'
"'t
'e o
0"= z
.~:z
o u
=
:;:Jfi
too5
0
Q)
.....
0"
u.,
w..
23
24
eviut:n(;t: rt:gan.ling
evir.lell\;e
rt:gtirr.l ing tht:
lILt: valut:
value ufthe
uflhe infringing
in rringing feature:;,
fCi:l lun::s, su Ll1c
tile vcn.lict
vcrr.lil;l reflects
reilccts lhe
tht:
5,
5.
The Jury Verdict
Finally,
jury'ss damages verdi
verdict
Finall y, Samsung
Sam sung argues
argllt~s that the
thejury
ct reflects
re flects a lump
lum p sum, which
whkh means
25
that Apple
"pple has received a one-time
one-t ime compensation for
lor all
a[) past and fllture
future infringement. See ECF
26
No. 1986-3 at 18. Fu

Furthermore,
rt hermore, Samsung contends that if
if the jury
j ury verdict is ambiguous,
ambiguou s, it is
27
imposs ible to award ongoing royalties. See id. at 18-19;

impossible
18- 19; ECF
EC F No. 20 15-2 at 1.
28
2
211
Case No.: 5:
5~ 12-CV-00630-LHK
12-CV..Q0630-LHK
ORDER GRANTING
TIES
GRflNTING TN
IN PART APPLE'S MOTJON
MOTION POR ONGOING ROYAL
ROYALTIES
A23
Case: 15-1171
Document: 40
Page: 108
Filed: 03/06/2015
se5: 12-cv-00630-LHK
12-cv-00630 -LHK Document2075
Oocllme nt2075 *SEALEDX
*5 EALED* Filedll/25/14
Filed11/25/14 Page22
Page2 2 of 36
Samsung
Sall1 sung has already raised
rai sed and lost this
th is argument. Jn
In opposing Apple's earlier
earl ier request for
fo r
s upp lementa l damages, Samsung argued that tthe

supplemental
he ju
jury
ry must have awarded a lump
lu mp sum instead of a
3J
per-unit royalty. The

T he Court rejected this theory because the
th e verdict contains no express statement
per-uhit
about whether the damages award encompasses future infringement, the

ict form
t he verd
verdict
fo rm chart
chan with
respect to the Galaxy

Ga laxy S II
" products referred
refe rred to sales
sal es up to the "Present,"
" Present." and Dr.
Dr. Chevalier
Cheva lier also
EC F No. 1963 at 19-22 (citing

presented a per-unit
per-unit reasonable royalty theory at trial. See ECF
77
Tefcordia,
Te/cordia, 6 12
' 2 F.Jd
F .3d at 1378, and Whitserve,
Wl/ifserve, 694 F.3d
F.Jd at 35
35-38).
-38), For these reasons, the Court
Coun
previously
prev iously concluded
conc luded that: "Because
" Because the record suggests it is pplausible
lau sible that the jury intended to
award Apple
App le damages on
only
ly for past
pas! infringing sales, the Court cannot conclude that the
thejury
jury
10
necessarily awarded a lump-sum

lum p-slim award intended to cover past and
Dnd future infringernene'
infringement." Jd.
Jd. at 22.
a
.....E
II
Accordingly,
ly. the Court awarded sttpplemental
supplem ental damages.
damages. Par
For the same reasons, the Court
According
=:..=til
1
12
2
d isagrees with
disagrees
w ith Samsung'
Samsung ' s interpretation of the jury verdict.
verd ict.
1:) 0
..
13
1- 0
~
Q .,~
Q
~
14
til
tt: ~
r.2
~:.::
u
Uu
U
'+-<
-c.....'t '......-.....pUo-"
~0
O
6.
Summary ofEntitletnent
ofEntiUcmcnt to Ongoing Uoyalties
Royalties
Apple has not received

rece ived compensation for any continuing infr
in fr ingement by Samsung. See
- o
B
~E
E
1
15
5
Telcordia,
.3d at 1379 (stating
(statin g that "an ongoing
ongo ing royalty
roya lty is appropriate" because the patentee
Tel
cordia, 612 FFJd
U')
'
"'~
-glio
..~. ;z
."'
z
= 0
0
);;l
,S
"' -5,_
16
~'has
"has
17
an increased chance of duplicative

duplica!ive litigation and successive lawsuits.
lawsuits . Exercising
Exerc ising its equitable
18
di scretion~
scretion,
19
of final
However, the Court restricts any ongoing royalties to the period after entry affi
na l judgment
20
because Apple has already obtained entitlement to supplemental damages for post-verdict, pre-
21
21
judgment infringement.
"
IJ..
"-
not been compensated for ....

. . continuing
co ntinu ing infringement").
infringement" ). Without ongoing royalties, there is
the Court tinds

fi nds that Apple
App le should receive ongoing
ongo in g royalties
roya lti es under these circumstances.
22
C.
23
Court now addresses

add resses the proper calculation
calculat ion of ongoing
ongoi ng royalties. The Federal Circuit
Circu it
The Cout1
Amount of Ongoing Royalties

R oyaltics
24
2"
has recommended that "the district

d istrict court may wish to allow the parties to negotiate
nego[iate a license
li cense
25
26
27
28
28
Samsung claims
cla ims that when the jury recalculated
reca lculated damages for the Galaxy S II products under
the
EC F No. L
1884
884 at 9), the jury only
on ly reallocated damages
dmnuges without
wit hout changing
chang ing the
the'' 172 Patent (see ECF
totall award, wh ich indicates
2015-2
15-2 at I. The
T he Court
Cou rt already rejected
tota
ind icates a lump sum. See ECF No. 20
this speculative
(see "feF
ECr No. 1963
1963 at 21
2 1 n.
n.7).
7). The jury
ju ry might have made a mistake in its
specu lative argument
argume nt(see
first
fi rst calcu lation, and then appl
applied
ied a per-uni
per-un itt rate
ratc when recalculating
recalc ulat ing damages. Indeed, as shown in
thejmy's updated verdict re
reflects
llccts a nearly unifonn
uniform per-unit royalty lor
tor aallll
the charts below, thejllry's
adjudicated
adjud icated products
prod ucts under the ' 172 Patent.
22
Case No.: 5:
5; 12-CV-00630-LHK
ORDER GRANTING IN Pr\R'J'

PART APPLE'
APP1.,E' S MOTION FOR
FOIt ONGOING .ROYALTIES
ROYALTIES
A24
Case: 15-1171
Document: 40
Page: 109
se5:12-cv-00630-LHK Document2075
Documenl2075 *SEALED*
'SEALED'
Filed: 03/06/2015
amongst themselves regarding future use

lise of a patented invention before imposing an ongoing
ongo ing
2
6; see also
16-17
1316;
a/so id. at 13
13\617 (Rader, J., concurring)
conclirrin g) (suggesting that
royalty." Paice,
I'aice, 504 F.3d
F.3d at 131
negotiation be aa requiretnent).
requirement). District courts have followed this recommendation by ordering
private negotiations. E.g., Hynix,

Slipp. 2d at 987.
Jiynix, 609 F. Supp.
Here, these parties have been negotiating

20 I 0, or well over four
negot iating on and off since August 2010,
years. See Tr.

T r. at
al 1046: 16-21. The Court ha
hass presided over three jjury
ury trials between these parties
77
(in the above-captioned case ancl

and in Case No. 11
11-CY
-CV-01846)
-01846) and ordered private negotiations
negotiation s
After
!lcr the May 5, 201
2014
4 jury verdict, the parties conducted further
fu rther negotiations,
negOliations, but
mu lti ple times. A
multiple
to no avail.
10
ava il. See ECF
ECF No.
No, 1894. In August 2014,
20 14, Apple and Samsung
SamsLLllg settled all of
o f their
thei r worldwide
worldw ide
10
patent disputes, except their U.S. litigations.

litigations . See Vellturo
Vetlturo Dec
Decl.
I. 1
~ 46. Furthermore, the briefs here
11
II
demonstrate that tl1e

the parties still vigorously dispute ongoing royalties
roya lties and disagree on almost all
:;:..:::
=
:.:::
0"'
12
issues. Therefore, the

Ihe parties'
parties ' behavior indicates that any order to negotiate
negoti ate ongoing royalties is
CJ ~
0
-.--
l3
13
likely to be futile and only

offinaljudgment.
ol1 ly delay the entry of
final judgment. The Court
Comt therefore determines
.~ ~
b
.~
Q .~
~
.~
14
ongoing royalty rates from the briefing.
"'a
15
IS
.~
E
t::.
1: <2
... .....
UU
uu
" 0
t:
' i:; u
ti
."
"' ....
Cl)"""
"'~
.
"t
16
between a reasonable
reasonab le royalty for pre-verdict
prc.:verdict infringement and damages for post~verdict
post-verdict
'"
c Z
17
infringement," and that "the calculus is markedly different because different economic factors are
arc
18
1
involved." Amado, 517
517 F.3d
f..3d at
al 1361-62. A district
d istrict court may consider '"additional
additional evidence of
19
19
changes in
in the
the parties' bargaining
bargain ing positions
posi tions and other economic circumstances that may be of value
va lue
20
in determining
delcnn in ing an appropriate ongoing royalty." Active
ActiveVideo,
Video, 694 P.Jd
r .3d nt
at 1343.
1J 4J. " [l')he
[T]hc Federal
Fcdcra!
211
2
Circuit has not delineated specific

fo r comts
cOLirts to assess in an ongoing royalty
specifIC economic factors for
22
context." Telcordict,
IS 51076,
51 076, at **5.
5. However,
U.S . Dist. LEX
LEXIS
However, in Bard,
Bard. the Federal Circuit
Telcordia, 2014 U.S.
23
approved
fic facto
factors:
<Ipprovcd certain case-speci
case-specific
rs: "The court also
al so considered other economic factors,
24
includ
ing that Bard and Gore compete
surg ical grafts, Gore profits highly
high ly
incl uding
compeLe directly with respect to surgical
25
from its infringing products,

prod ucts, Gore potentially faces stiffer losses that include a permanent
26
inj unction
uhction if Bard prevails in a second lawsuit,
lawsu it, and Bard seeks adequate compensation and Jacks
lacks
27
27
incentive to accept a below-market deal.

r.3d at 1193.
dea l,"" 670 F.3d
~Q
~
0
As noted above,
Federall Circuit has held that " [t]here is a fundamental difference ..
..
above. the Federa
-!I)
'i zc0
.~
:;,,s
~.s
....
0"
u.
28
23
Case No.;
No.: 5: 12-CV
12-CV-0063
00630-LHK
O"LHK
ORDER
ORDER GRANTtNG
GRANT!NG IN PART APPLE.'
A I)PLE'S
S MOTION FOR ONGO
ONGOING
ING ROYALTIES
1
A25
Case: 15-1171
Document: 40
Page: 110
se5:12-cv-00630-LHK
se5 :12-cv-00630-LHK Document2075
Oocumenl207 5 *SEALED*
'SEALEO'
Filed: 03/06/2015
Courts have useJ

used the Georgla-l'acific
GeorgilJ-l'acific factors
fac tors (0
to evaluate a post-verdict hypothetical
22
negotiation for ongoing royalties. As Judge Bryson stated, "the

''the courts have often used the
~he 50so-
called Georgia-Pacific factors in assessing how the changed circumstances

c ircumstances would produce a
royalty
post-verd ict licensin
licensingg negotiation that was drffcrent
different from the royalty
royalt)'
royally rate in a hypothetical post-verdict
hypothet ical licens

rate the j ury selected based on a hypothetical
licensing
ing negotiation
negoti ation at the outset of
o f infringement."
Bianco.
Bianco, 2014 U.S. Dlst.
Di st. LEX}S
LEXIS 89777, at *8
"'8 (Bryson.
(Bryson, J.). Accordingly, to assess ongoing
royalties,
roya lties, the Court
Court' considers the Jaw
law regardi
regarding
ng reasonable royalties under Ge()rgia~PC/c{fic,
Georgia~Pac!fic. See
88
Georgia-Poe,
Corp .
., 31
8 F. Supp. lll6,
Georgia~P{/c , Corp. v,
v. U.S.
u.s. Plywood Corp
318
I I 16, 1120 (S.O.N.Y.
(S.O,N .Y. 1970).
9
10
10
c<i
E
'
1::
t: ~
<8
l.
t.
Rates
Rates in the Jury Verdict
Generally, the jury's

evaluating
ongo ing royalties.
j ury's damages award is a starting point for
for evaluat
ing ongoing
11
II
See Bard,
Bard. 670 F.3d al
at 1193 (affirming
(affi rming ongoing
ongo ing royalty that "'should
'"should be higher than the I10%
0%
12
12
reasonable
reasonab le royalty rate
rate'' set by thejury");
the jury"); Blanco~
Blanco, 2014
20 14 U.S
U.S.. Dist.
Di st. LEXIS 89777, at *7 (noting that
13
I3
the Eastern
of'l'exas
''consistently looked to the jury's verdict "5
as the'
starting point' for
Eu!>tern District of
Texas has "consiste,nlly
the 'starting
.~
. ~ !;:;
b
Q .~
~
14
14
determining
damages''); Telcordia,
Telcordia, 2014 U.S. Dist.
Disl. LEXIS 51076, at *13
*13 C'[C]ourts
("(C]OUTts
deterrnining postjudgment
postjudgment damages");
ec:
.!! ,_
c
15
frequently
frequent ly impose a post-verdict
post-verdict ongoi
ongo ing
ng royalty
royally rate that is higher than the reasonable royalty
16
foun
infiingement.''). Here, tthe
he parties argue about
abOll( what royalty rates the
thejjury
ury
foundd at trial for past infringement.").
17
might have jntended

i{Jund
intended to award Apple. The jury awarded aggregate damages for each product found
18
to infringe each
eac h patent, but did not specify any per~un
per-unit
i t rate. ECF No. 1884 at 9.
9. In interpreting an
an
19
ambiguous
ambigu ous verdict tbrm,
fo rm, this
(his Court has ''broad
" broad discretion"
discret ion" to determ
determine
ine if"the
if" the verdict figure
20
represented past infringement as

IlS wel l us
as ongoing infringement.''
infringcmcnt. lI Telcordia, 6612
12 F.3d at
lit 1378;
1378 ; see
21
also Whitserve,
Wllilserve, 694 F.3d at 35-38.
)5 ~3 8.
::s
:;1:'=
:.:::
coS
::J.S
,
60
~
~
22
Apple
App
le seeks per-unit
peHlllit royalty rates of$2.75 for the
th e '647
' 647 Patent, $1.41 for the '721 Patent,
Palent,
23
and $2.30 for the ' 172 Patent, for both adjudicated
not more than colorably
"not
co lorably
adj udicated products and all H
24
different" products. ECF No.

No . 1959. To arrive at
al these rates, Dr.
Dr. Yellturo
Ve llturo reverse engineers the
25
jury's verdict.
verd ict. Vellturo
Vcl lturo Dec!. 'ii~1 13-22.
1 3~22. Dr. Yellturo
Vcllturo attempts to
10 expla
explain
in the verdict
verd ict by dividing the
26
jury's
jury 's award for each product by his own proposed reasonable
reasonab le royalties
roya lties to determine what
27
percentage of
hiss pl'Oposal
proposal the jjury
ury applied
applit:d . Ild.,
d. ~[ 16.
16. Dr. Vellturo concludes: "(
"(I)
I) the jury reached
Dfhi
28
per-uni t royalties for each patent, (2) the jury calculated

agreement on per-unit
calcu l ~tted the ratio between its rates
24
Case No.: 5: 12-CV-00630-LH
12 CVOQ630.LHK
K
ORDER GRANTING
GRANTlI'\G IN PART APPLE'S MOTION FOR ONGOING ROYALTIES
ROY AL TIES
A26
Confidential
Redacted
Case: 15-1171
Document: 40Information
Page: 111 Filed:
03/06/2015
Yl:l.;:.c;;:12-cv-00630-LHK Document2075
Document2Q75 *SEALED*
'SEALED'
Filedll/25/14
File dll/25/14 Page25 of 36
and my royalty
ratios
roya lly rates;
rales; (3) the jury applied
appl ied those rati
os to the reasonable royalty damages for each
2
product provided at PX222A 1.24, which was discussed during closing arguments; and (4) the jury
j ury
modified
modi fled the
the amount in the last line ('Stratosphere')
e Stratospherc') to obtain a round tolal
total damages figure
fi gure to be
included in the answer to question 9 on the Amended Final Verdict."

Verd ict." !d.
Id.
5S
Vellturo determines that the

thc jury awarded 22% of
o f his
hi s proposed royalties for the '647
' 647 Patent. /d.
Id.
,116.
~ 16. Based on this
th is ratio, Dr. Vellturo
Ve llturo mul1iplies
multi plies his original proposed per-unit royalty for the '647
Patent ($12.49)
($12,49) by 22% to reach a per-unit
pcr-unitrateoF$2.75.
rate of$2.75 . !d.,[
lei. I17.
7.
8
9
1 18. As
A s an example, Dr.
Dr,
Samsung interprets the verd ict differently. Dr.

Dr. Chevalier renews Samsung's argument that
the jury must have awarded a lump-sum
lu mp-sum royalty,
roya lty, not a per-unit
per-unit royalty-an
roya lty- an argument that this
10
Court has rejected. ECP

Ecr No. 2015-9
20 15-9 ("Chevalier
(''Chevalier Dec!.") 'mf
Ii 13-14.
13-1 4. Next, Dr.
Dr. Chevalier disagrees
11
II
with Dr. Vellturo's

Velltu ro's calculations from
fro m the jury
j ury verdict because they do not explain
explai n the actual
actuul
::s:.=
12
damages award. See rd.

id.
-......"' ........._
-,o....
13
Vcll turo ''ss fo rmula does not produce the

thejjttry's
(lry's award for Samsung's
Sam sung's Admire product:
Vellturo
.::!
t;t.8
0 Cd
uu
...........
(j o
10. For the '647 Paten4

Patent. for example, Dr,
Dr . Chevalier claims that Dr.
.... 0
~- ~
~t:
Cd ....
14
==
~
15
-0)
rJ':lJ::.
"'
t
Qlo
16
16
=4)
~-:5
...
0
17
17
J/[Dr ",U""o', P"']]l*[[ rI,um,,,
[[
from
!rom PX222A1
PX122AI
[(
=
= S7.:;07,1
S7. 507.l56,3l
:;6.31
18
!d.
/d.
19
Vellturo's
0;; see also
VelltllTo' s estimate
est im ate by $92,02l.69
$92 ,021.69 (or about 1.2%).
[.2%) . !d.~
[d. ~ 1IO
a/so id.
id. Ex. 2.
20
21
22
23
23
for' ]
chuuages tlgure
Ii,,,l" for
Admire
Adlllir~ 011
on '647
'6-'7 JMent
pu t~nt
= [ ( S2.7
51,7:'.'i luuit
ltLni! )/($
J/( $1!2.49/nuit
~ A9/\lnit J]*($34.096.1.39]
1] [S34,096.139 J
~ z
LJ,..
i"'Y,,,,,I
jmy agreed per

p,l' ]/ [ Dr. \'ellmro's J)er
unit
lI11it lOyalty
wyalry rnre
nue
unit royalty
rOYillty rate
nlle
[(
for '64
'6477 patent
pm ~nt
for
for '64
'64i7 patent
p;J t ~ll t
~j
~ 9.
9.
Dr. Chevalier
Cheval ier notes that the ju
jury
ry actually awarded $7,599,178,
7,599,178 , which exceeds Dr.
Dr.
Although
jury verdict,
Al though Apple
App le''ss estimated per-unit
per-un it rates are
arc roughly
rough ly consistent with the
thcjury
verd ict, the
Court find
findss no basis for
fo r estimating the per-unit
per-1Jnit royalties as Apple suggests. The jury verdict and
Vellturu' s Exhibit
Exhib i13)
3) reflect
rc necl the following
foll owing
undisputed numbers of infringing units (shown in Dr. Vellturo's
per-unit rates for

fo r the adjudicated products:
24
25
2S
26
27
28
25
25
Case No.: 5: 12-CV-00630-LHK
12-CV00630-LHK
ORDER GRANT
GRANTING
ING IN
fN PART APPLE'S MOTIO\l
MOTI0'-1 FOR
POR ONGOING ROYAL TIES
A27
Confidential
Information Redacted
Document: 40 Page: 112 Filed: 03/06/2015
Case: 15-1171
:12-cv-00630-LH K Document2075
'SEALEO'
Filedll/25/14 Page
Page26
26 of 36
3
4
5
6
7
8
9
10
11
II
:::.::::
=:.=
12
12
(So
...........
';:" u0
-~
....-."" .u_
13
See Vellturo
Vcllturo Decl. Ex. 3 (ECF No. 1985-7),
1985-7) , Instead of
of simply
simp ly dividing the damages award for
fo r
.~ .b
1::
~ .~
.!!!
14
.0
a
~E
:: E
each product by the number of

o f units as shown above, Dr. Vel
Vcllturo
lturo uses a more compli
complicated
cated
15
IS
th en multiplying the resulting ratio

divid ing the jury's award by his proposed award, and then
approach: dividing
"''
~
t00
16
against
~ 17,, Dr.
aga in st his proposed per-unit rate. See Vellturo
Velltura Decl. ~117
Dr. Vellturo
VeUluro claims that it is
c .
=
17
inappropriate to divide
"resu lts in
div ide the damages for each product by the number of units because it ''results
18
18
per-unit rates that vary fo

forr each product."
product.." ld.
ld. 1,1 21.
21. He claims that this approach does not explain
19
the jury's
jury 's actions because "there is no reason
reasen to believe
be lieve tthat
hat the jury wouJd
would adopt a differel\t
different
20
royalty rate for each different

nation
d ifferent combi
comb inati
on of a patent and a product," and no witness or lawyer
2
211
told the jjury

d. ,122.
22. Dr.
Dr. Vellturo furth
further
er defends his
hi s approach
ury to calculate
cal cu late damages this way. Ild.
.~
E
1: <2
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o
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22
23
24
round" figures
fig ures for two of thc
the patents, which a lay jury
j ury would
wou ld more
because itil purportedly reflects ""round"
likely
apply.
likely,pp
ly. Id.
/d. ~ 17.
The Court fifinds
nds no basis for adopting Dr. Vel!
tum's more
Veltturo's
morc complicated
compl icated approach. As Dr.
25
Chevalier observesi
observes, Dr. Vellturo's
VeUturo's method does
docs not
nol produce the numbers that the jury actually
actua lly
26
awarded. Dr. Vellturo

Vellturo 's calculations rely on
on unsupported
unsu pported speculation as to
to how the
the jury computed
27
7211 Patent is
damages. For example, Dr. Vellt11ro
Velltura admits
admits that
thal his
hi s reverse-engineered rate for the ''72
28
26
Case No,;
No.: 5;
5; 12-CY-00630-LIIK
12-CV-00630LHK
ORDER GRANTING IN PA
PART
RT APPLE'S
A PPL E' S MOTION
MOT ION FOR ONGOING ROYAL
ROYALTI
TIES
ES
A28
Confidential
Case: 15-1171
se5:12-cv-00630-LHK Docutnent2075
DocUment2075 *SEALED*
'SEALED'
not a ""round"
round" figure, but speculates that this rate "may reflect a decision to approximate a rtumber
number
.,E
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ee
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that is seven-eighths
oftheroyalty
royalty rate I proposed."
proposed," !d.
ttl,
sevcn-cighths afthe
3J
7
grounds
mot ion for judgment as a matter of law, Apple
ground s for this guesswork.
gucsswork. Indeed, in briefing its motion
claimed that it was not

nol possible
possi ble to deconstruct the verdict becat1se
becau se ('[t]hejury
'Tt]hejury may have awarded a
lump sum, a running royalty,

Apple'ss lost profits, or a combination ofthese
orthese and/or other
royalty. some
so me of Apple'
theories," ECF No. 1918

theories."
191 S at 6 n.4. Furthermore, Dr. Vellturo
Vellturo''ss approach would apply the same
77
of any adjudicated
adj ud icated product for a giveh
given patent.
palent. In other words,
words. Dr. Yellhlro
Vellturo
fulure sale or
rate to each future
s8
would use a $2.7

LB, even though the
$2.755 rate under the '647
' 647 Patent for a future sale
sa le of the Galaxy S lll,
99
verdict reflects a lower actual rate of_

of-
17 & n.26. However, he provides

prov ides no
This approximation is unnecessary because the verdict
10
all average rate per patent across all

allows the Court to determine rates for each product, not just an
11
II
products.
slraight10 rward and reliable
re liab le way to determine perper"
prod uct s. Thus, the Court finds that the most straightforward
12
fo r the adjudicated products is to divide damages fo r each product by the number of

unit rates for
13
Par the adjudicated products, the Court

Courl uses these per-unit
pef"unit royalty rates as the starting point
po int
units. For
14
for ongoing
roya lties.
ongoi ng royalties.
adjudicated
For any products that are "''not
not more titan
than colorably
colorab ly different" from the adj
udicated products,
15
"'~
.,,
"''t:
'05
16
ined by dividing
the Court concludes that
Ihat the most appropriate rates are determ
determined
d ividing the total
tota l damages
o u
=
Q)
17
17
for each patent by the tota

totall number of
of infringing products for that patent. This calculation shows
0"
tJ....
W-
18
rale that the jury awarded fo

forr a given patent, across all adjudicated
adj udi cated products
the average per-unit
per-un it rate
19
fo
of each
forr that patent.
patent Thus,
T hus, these rates show what the jury awarded on average for infringement of
20
patent, which is a reasonable starting point

royalties fb
tbrr umldjudicaled
unadjudicated products that
po int for
fo r royahies
that are "not
21
21
than co lorably different." As shown in the tables

more than
tabl es above, these
these calculations
calcu lations produce rates of
22
-_
~
;:;:
.~ ;z;
;Z
;:J
::::>-s
"-
the '172
IIIII for the'
172 Patent. -_
' 647 Patent,

_
for the '647
Patent. ~
for the '72
'7211 Patent, and "
23
24
25
Cou rt rejects Dr. VeUturo

Ve llturo's
's approach for
fo r the
However, the Court
reasons above.
above_
26
26
27
28
,
7
Dr. Vellturo assumes that the jury applied a11 percentage to the reasonable royalties he
proposed at trial. However, the jury's numbers are
arc also consistent with
wi th applying a multiple
mUltiple of Dr.
Chevalier's
royalties.
ties. See DX 453A.
45JA.
Cheva
lier's proposed reasonable royal
27
Case
elise No.: 5;12-CV-00630-GIIK
5:12-CV-00630"LH K
ORDER GRANTING IN PART APPLE'S MOTION FOR ONG01NG
ONGOING ROYAL TIES
A29
Case: 15-1171
Document: 40
Page: 114
se5:12-cv-00630-LHK
se5:12 -cv-00630-LHK Document2075 "*SEALED*
SEALED*
2.
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tt.$2
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Filed: 03/06/2015
Filedll/25/14
Filedll/2Sf14 Page28 of 36
Circumstances
Changed Circ
umstances
Having
ined starting points
ict, the Court next
I-laving determ
determined
poi nts for ongoing royalties
roya lties based on the verd
verdict,
considers any ''changes

"changes in the parties'
part ies' bargaining positions and other economic circumstances"
ci rcumstances" that
may warrant departure from

Video, 694 f.3d at 1343. The
from those rates.
rates . Active
ActiveVideo,
Th e original
o ri ginal hypothetical
hypothetica l
negotiations for the infringed patents would

wou ld have occurred in late
latc 20
2011.
l L See Vellturo
Vclltu ro Decl.
Dec!. ~ 29.
ln
es, courts have used a second hypothetical
In setting ongoing
ongo ing royalti
royalties,
hypothetica l negotiation following
follow ing the
verdict.
E.g. , Carneg;e
Carnegh1. Met/on,
AId/Oil, 20 14 U.S. Oi51.
Dist. LEXlS
LEXIS 43042, at*
at * 119 (evaluating
(evaluat ing "hypothetical
"hypothetical
verd
ict.'8 E,g.
negotiation" after verdict);

verdict) ; Depuy, 2014 U.S. Dist.
Di st. LEXIS 6614
1450,
50, at *24 n.8 (analyzing
(analyzin g "post" post'negoliutiotl"
verdi
ct hypothetical negotiation"),
verdict
negotiation"). Here, both parties' experts analyze various Georgia-Pacific
10
factors
f<letars th<~.t
that cmdd
cou ld affect the verdlcl
verdict rates. However,
However, Apple
App le does not seek
seck higher
hi ghe r rates: "to
Uta be
11
II
conservative, Apple only

onl y seeks ongoing royalties consistent
consisten t with the amounts awarded by the
12
jury."
jury." ECF No. 1985-3 at 2. Sam
Samssung
ung claims that the verdict rates
rales "should
"shou ld be adjusted downward
I13J
by 57 to 75 percent
pt!rcent to account for changes from 2011 to 2014."
20 14." ECF No. 2015-2 at2.
at 2.
.....
Q
Q ,~
.~
14
".,,"t"
'"
I15
5
substantial shift
shi ft. in the bargaining position of
oflhe
the parties"
parties" because
becau se it places the patentee in a
'Q ~
t
16
stronger negotiating position. Active

Ac!iveVideo,
Video, 694 F.3d
P.)d at 1342. ''Once
"Once a judgment of
of validity
valid ity and
:'c:c:: zu
17
infringement has been entered,

entered. however, the calculus
calculu s is markedly dlfferent
dilTcrent because different
18
18
economic factors are involved."

involved," Amado, 517 F.Jd
F.3d at 1362; see also Bard, 670 F
F.3d
.3d at 11 93
19
(quoting
(q uoting id,
id. and affirming ongoing
ongo ing royalty
roya lty rate
rale higher than jury's). Therefore,
T herefore, Apple
App le would
wou ld have a
20
strougc:r positiou
strouger
posi tiull iu
ill a post-verdict
post- verdict hypothetical
hypothet i,"al negotiation than
thall it djd
did before, which fav
favors
ors
21
21
relatively higher ongoing royalty rates.

mind,, the Court
ihe
rates. With this background in mind
Cou rt turns to the
22
disputed Georgia-Pacific
GeorgiCl-Pacific factors.
factors .
.,Q
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II ~
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As an initial mAtter,
matter, the Federal
Federal Circuit has counscleu
counseled that a liability verdict causes "a
23
24
25
26
27
28
Vcl lturo refers to a hypothetical

hypothetica l negotiation "''as
as of
o f summer
su mmer or fall2014."
fu1120 14, " VeHturo
Vellturo
Dr. Vcllturo
Decl.
Dec!. ~, 25. Dr.
Dr. Chevalier
Cheva lier assumes "late
" late 20
2014,"
14," but states that her analysis "is not sensitive to when
(n
in 20 14, after trial, the hypothetical
hypotheti ca l negotiation occurs.'
occurs." Chevalier
C heva lier Decl.
oecl. ~ 16
16 &
& n.2 1. Neither
party's expert has identified
ideruHi ed any changed circumstances between "summer or fall
fa ll 2014"
20 14" and "lare
" late
20 14," or between !he
2014) and this Order, that would aflcct
affect
2014,"
the completion
co mpletion of briefing (October 15,
15.2014)
the
the result here.
28
Case No.: 5:12CY-00630-LHK
5: 12-CV-00630-L HK
ORDER GRANTING IN PART APPLE'S MOTION fOR

ROYALTIES
FOR ONGOING RO
YA LTIES
A30
Case: 15-1171
Document: 40
Page: 115
se5:12-cv-00630-LHK
se S:12-cv-00630-LHK Document2075 'SEALED'
*SEALED*
a.
2
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Filedll/25/14 Page29
Page 2g of 36
Factor 5
Geotgia-Pac~fic
Georgia-Pacific
The experts first address factor 5: "The

"Th e commercial
commercial relationsh
relationship
ip between
between the licensor and
licensee, such as,

as: whether they are competitors in
in the same territory in the same line
li ne of business; or
whether
whet her they are
arc inventor and promoter."
promOler. " Georgia-Pacific,
Georgia-PaCljic, 318
3 18 F.
F. Supp.
Su pp. at
al 1120. Dr. Vellturo
Vel lturo
opines that changes in the smartphone market between

bel ween 201 1 and 2014
20 14 tend to support
su pport a higher
royalty. See Vellturo

Vcll turo Dec!.
De.c! .~,
~1 26-34. He cites data showing
show ing that total
total smartphones sold in the U.S.
U.S.
increased from 105 million in 201 1lto

to 137 million
mill ion in 2013.
20 13. ld.
Id. ,27.
27. He also claims that App
Apple
le and
S:::tmsung's
hipments
fro m 40% in 20 I111 to 70% in 20
2013
I 3,,
Samsung' s combined share of U.S.
U.S. smartphone
smartph one ~shi
pments rose from
and that Samsung's

Snmsung's share also rose from 20% to 30% over that time.
rime. Jd.
~ 29.
Dr. Vellturo further

furthe r
10
notes that Samsung

" grown more dominant"
dom inant" and pushed out other smartphone competitors,
Sarnsung has ''grown
11
11
intensifying competition with Apple. T

Id.
d.
12
particularly
successful. both as to units sold and profit
profits,
s, and therefore particularly harmed Apple.
particu
larly successful,
13
13
See id.
icJ. ~ 30. Overa
Overall,
ll , Dr.
Dr . Vellturo
Ve ll turo claims that the expand
expanding
ing market and increased competition
competit ion
14
14
would
high royalty.
wou ld favor a relatively high
~, 33-34.
~
33~34.
He also states that the Galaxy

Ga laxy S lll
II I was
rn ,_
~
Filed: 03/06/2015
~ .~
~Cl
;l
c
~c:
_ u
"
.s ~
.. "
(/)...C:.
V>~
15
1S
ln
presellted thi
thiss evidence
ev idence to the jury, so
In response,
response. Dr.
Dr. Chevalier argues that Apple al ready presented
"CCt!
~ 0
16
''there
meaningful change in the relative
relat ive competitiveness
com pet itiveness between Apple and Samsung."
Samsung,"
"there is no meaningful
1:1 <I)
:;:;J..C:.
17
Chevalier
Deel,!.~~ 2l.
2 1. Dr.
Dr, Chevalier
Che valier is correct
corrcct that
that Dr. Velltu
VeHturo
ro already ptesented
presented some of his
hi s cited
Cheva lier Dec
18
evidence.
At trial , Dr.
Dr, Vcll
Vcllturo
tt1ro relied on evidence arising after 2011
20 I I regarding
regard ing the parties'
ev idence. Attdal,
19
competitiveness.
T r. at 12
1213
13:20:20. 12 14:22 (referring to compet
competition
ition during
du ri ng period of
competiti veness. See Tr.
20
20
AugUS1201 l1 through the end of20 13"). In his

hi s current
cu rren t dcclurat
declaration,
ion, fur
rur data
infringement, "''Augllsl20l
21
21
regarding
total smartphone
smarlphone sales and the market share of all smattphone
smartphonc mant1
manu facturers,
racturers, Dr.
regord ing total
22
Vellturo simply refers to his pretrial

Ve llturo Dec!.,
Dec!. 27 & n.33,
pretrial supplemental expert report. See Vellturo
23
,~ 33 &
& nn. 42-43.
424 3. However, Dr.
Dr. Vellturo
Vcl ltu ro does
docs provide
prov ide the market share
shure data of all smartphone
24
manufacturers through the

information that was not before the jjury.
ury. Dr.
Dr.
lhe second quarter of2
01' 200 14, information
25
Vellturo gets this

ait ic les and blog posts dated a.
after
fter the trial. See id.
Ihis data fiom
from online articles
26
nn
nn .35-3
.35 ~3 7 (citing
(c iLing http://www
http://www.patcn
.patentlyapple.com/patcntly-apple/20
tlynpple.com/patcntly-applc/20 14/08/samsung-temporarily14/08/sarnsungtcmpornri ly.
27
beats-app
beats
~applle-in
e in -us-smartphone-shi
~ lI s ~ sml.lrt ph one ship
pments.httnl
m ents. h tm l
28
market research reports but do not prov ide the methodology or underly
fo r such reports,
underlyiing
ng data for
0
;:;:,""c :z
Z
"' '5
'+-'
0"
w..
[.!..
~ 31 &
&
(A
(Aug.
ug. 6, 2014)).
2014)) . These new articles reference
29
Case No.:
No. : 5:
5: 12-CY
12-CV-00630-LHK
-0063D-LHK
ORDER GRANTING
i\L'T'JES
GRANTfNG IN
LN PART APPLE'S
APPLE' S MOTION FOR ONGOING
ONGO ING ROY I\L
'TIES
A31
Case: 15-1171
Document: 40
Page: 116
se5:12-cv-00630-LHK
*SEALED*
se5: 12-cv-00630-LHK Document2075 'SEALED'
Filed: 03/06/2015
Accordingly, this
thi s factor weighs only
on ly slightly in favor of
or Apple.
22
Georgia-Pacific Factors 9, 10,

l O,lIud
and 11
11
b.
,.)
"'
>
Next, Apple's expert discusses factors

factors 9-1
9- 11I;; "9.
"9 . The uti
utility
lity and
Ilnd advantages of the patent
that had been used for working out similar results.

results .
property over the old modes or devices, if any, thaI'
10. The nature of the patented invention; the character of the commerc
commercial
ia l embodiment of it as
owned and produced by the licensor; and the benefits to those who have used the invention.
t11.
J. The extent to which the infringer has made use of
ofthc
the invention; and any evidence probative of
the value of that

thaI use."
usc." Georgia-Pacific, 318
3 18 F. Supp.
Supp. at 1120. Dr. Vcllturo
Vcllillro groups these factors
together and analyzes them with the assumption that Samsung continues to infringe the '647
' 64 7
10
Patent.
See Vellturo Dec.!.~
Decl. 39 ("Samsu11g
("Samsung has continued to sell the Galaxy S3 without
Paten\. See
cE
....
11
II
the '647
' 647 patent's technology.~').
tecllnology."). He claims that
th at under the "theory
" theory
implementi ng any alternative to tile
implementing
=:..::
0 $
o
12
of revealed preference" (which he previously invoked at trial,

trial , see Tr.
n . at 1250: l100-1251:
I 251: IIII),
),
--~
4-tJ 0
13
Samsung's
infringemelll demonstrates
demon strates that it values
va lues the patented features. See if/.
id.
Samsung' s continued
contin ued infringement
14
He also notes separate proceedings involving the '647

' 647 Patent: that asserted claim 9 was
wa s confirmed
15
15
during reexamination, and that

amrmed certain
certa in claim constructions in Apple,
that the Federal Circuit affirmed
-o'~0
. 0
16
Inc. v. MOlorola,
Motorola, Inc., 757 F.3d
F3d 1286 (Fed. Cir.
Cir . 2014).
20 14). See id.,
id. , 37. Dr. Vellturo also notes
c Q)
17
Samsung's
Sam sung ' s statements at trial that
thai Samsung could
cou ld easily design around the asserted patents. See id.
18
~~
.,
<13
t <2
~<.8
;;:..=
uu
UU
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1- (.)
,,!: !:::
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r/}-E
ell ...
,,"
.,,;2:
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:;:J..C:
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0"
"-
19
40-42.
Dr. Chevalier responds
respo nds with a single
sing le argument: to the
Ihe extent Samsung continues
contin ues to infringe,
20
Samsung
fo r reasons other than the value of
oflhe
the patented inventions.
invemions. See
Sam sung might choose to clo
do so for
21
21
Chevalier Dec!.~,
Decl .~' 22-26. As examples, she notes that Samsung might not want Apple to
10 dictate
22
the
of a competitor," citing
"raJcqll icscing to the
lhe demands ofa
ciling her
Ihe features
fealure s in their products and avoid "[ajcquicscing
23
own tr
trial
d.
ial testimony. Ild.
24
of the three disputed patents.

patenls.
infringes any ofthe
'125 & n.43.

n.4 3. As noted above, Samsung
Samsu ng also represents that it no longer
~ 25
25
The Court finds

find s Apple's
Ap ple's position more persuasive.
persuasive. As Dr.
Dr. Vellturo notes, ongoing royalties
26
would apply only ifSamsung

i rSnmsung continues
cont inues to infiinge.
infringe, See Vcllturo
Vcliluro Decl. ~ 44. This Court previously
27
tll at ''Samsung's
"Samsung's witnesses repeatedly told
to ld the
th e jury
j ury that
tllal design-arounds
design~arounds wou
would
ld be simple or
noted that
2288
already exist." ECF No. 1954 at 36. Thus, thete

there is little
lin le reason for Samsung to continue any
30
5: 12-CY-006JO-LHK
ORDBR
ORDER GRANTING IN PART APPLE'S MOTION
MO'nON FOR ONGOING ROYAL TIES
A32
Confidential
Case: 15-1171
DocUment2075 *SEALED*
'SEALED'
Filedl1125/14
in1'fjngement.
iniringement. Dr.
Dr. Chevalier'
Che va lier' s arguments about alternative motivations for
for continuing
co ntinuing infringement
infHngement
2
..,
.:l
are
a rc speculative and contrary to Samsung's
Sam sung 's repeated trial statements about the ease of designdes ignarounds.
a rounds. For these reasons, the Court finds
finds that these factors favor Apple
Apple..
ttl
5:::
E
....
t: tS
S
c.
Georgia-Pacific Factors 8 and l2

12
To reduce ongoing royalty

roya lty ra~es,
rates, Dr.
Dr. Chevalier appl
applies
ies factors 8 (''The
("The established
profitability
pro fitabi lity of
of the product
produ ct made under the patenf;
patent; its commercial success; and its
ils current
curren!
popu larity. 1")') and 12 (''The

pottion
profitt ot
ing price that may be customary in the
(" The porti
on of
o f the profi
or of the sell
selling
particu
particular
lar business or in comparable
com parable businesses to allow for the use
usc of the inventio
inventionn or a11alogous
analogous
inventions.") . Georgia-Pacific, 318

inventions.").
3 18 F. Supp.
Supp . at 1120.
1 120. Overall, Dr. Chevalier's opin
opinion
ion regard ing
10
these factors is that
II
11
wammt
warrant lower royalties.
royalti es.
and thus
=
= :..::;
:..::.
12
12
..... '-'-
13
"critical"
"crit ical" for Samsung's
Samsung 's competition with Apple. See Chevalier Decl. ,,128-29.
1 28-29. Dr. Vellturo
Vcllturo told
to ld
.~~ !::
.t:
Q .!!!
~
14
the jury that many U.S. consumers were expected to buy their
thei r first smartphone
smarlphone in 2012, and that
~c
~ 0
J5
Is the lime
time period where the competition between Samsung
Sam sung and Apple's about to intensify
"'"this
this is
16
because
units now are being launched
laun ched into the marketplace" because "the
"thc competition
becau se the accused uni1s
17
for tirsHime
fir st-time buyers is particularly important." Tr.
Tr. at 1234:9-1235:
1234:9-1 235 : l.
I. He also testified
testifi ed that "the
18
Fall of20
o rlO 11
II is an extremely impotiant
important time in this
thi s marketplace
mark.etplace because the
the market is growing very
19
fast for smartphohes

smartphone. " Id.
ld. at 1306:24-1307:
1306 : 24~1307: 14.
smnrtphones and a lot of people are buying their first smartphone."
20
Di.
Dr. Vellturo
Vet lturo argued that ecosystem
"ecosystem effecrs
effects".. would drive up
lip damages for Apple
App lc because customers
21
21
tend
1308: 7-18.
18. According to Or.
Dr. Chevalier,
Cheva lier, Dr. Vellturo
Vetltu ro failed to
tcnd to show product loyalty.
loyalty. Id. at 1308:7
22
account for the fact that this

thi s critica
cri ticall time
lime "has already passed by the time of
o faa hypothetical
hypotheticlll
23
negotiation in late
latc 20 14.''
14:' Chevalier
Chevali er Dec!.
Dec !. 1
~! 34. She claims
clai ms that the proportion of fi[irst-time
rst-time
negbliation
24
smartphone
s in ~e 2011
20 11 . See id.
id, ~ 32. She further claims that both
sman pho ne buyers has likely decreased since
25
parties'
part ies' smartphones
uU0Q uU.
ttl
0(,1 .0. .
....
'i::
'- u
(.)
~ .-
.-o-0"t
<l'l0
~Cl
~
...."
"
~ I!)
rJ:J.r.
Vl~
-
" ;z:
.~
:::
Z0
="
",oS
~-=
Cl
(!)
...
0
Dr.
Cheva lier claims
cla ims that Dr. Vellturo
VeJlturo previously opined
opin ed that
th nt the 2011-12
20 \ 1-1 2 time
timc frame
framc was
Or. Chevalier
I.L.
"-
26
. See
Sc-e id. ,, 36.
Samsung's arguments do not carry much weight. Dr.

Dr. Velltuto
Vellturo did not analyze
ana lyze these factors
Samstmg's
27
for
royallies, and his trial testimony did indicate
ind icate that
(hat capturing fifirst-lime
rst-time
tor pwposes
purposes of ongoing royalties,
28
buyers in 201 1-1

2 was particularly
1- 12
particularl y important, which would have increased Apple's expected
31
Case No,; .5,
5:12-CV-00630-LHK
!2-CV 00630-L HK
ORDER GRANTING IN
rN PART APPLE'S
APPLE'S MOTION
MOTIO\J FOR
FOR ONGOING ROYALTIES
A33
Confidential
Redacted
Case: 15-1171
Page: 118 Filed:
03/06/2015
'SEALED'
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Fjledl1l25/14 Page32 of 36
royalties for
ll. However, Dr,
hat later
fo r the hypothetical
hypoth etical negotiation in 20
2011.
Dr , Velltmo
Velltu ro did not testify tthat
latcr
t:<E
t::::s:.;::;
<2
= :.=
o
8~
UU
..........
~~
-c.....
'0
s... ....
(.)
_
.--C .:':!....."
0~ 0
~ .-
<n ....
periods (including
competition.
post-verdiot time frame) would not also be critical to competit
ion . Rather,
(i ncluding tthe
ht: post-verdict
13'' was
he explained that "''August
August 2011
20 11 through the end of 20
2013"
wus a "particularly
" particu larly significant
sign ificant period''
period"
because
growth ." Tr.
Tr . at 12 13:20-1 214:10.
2 14: 1O. In
beca use the market was ''in
" in a profound state of change and growth."
turn, Dr. Chevalier identifies no evidence that competition has become less "critical"
"critical" followi
foll owi ng the
has already passed." Even if the proportion

verdict, or that the ''critical
"critical phase''
phase" 11"has
proporti on of first-time
fi rst-time
buyers has decreased, the absolute number of

o f such buyers may stilt
still be high
hi gh.. She claims that
However, she cites data

dala that she previously
prev ious ly presented
prcsented in
her pretrial
pretr ial expert reports. See Chevalier Decl.
Decl . ~, 36 & nn. 63, 64, 66; see also Tr. at 2424: J100-18
18
10
lO
(discussing
(d iscussing profitability
profita bility of Sam sung products). Thus, her argument is subject to the same criticism
cri ticism
11
II
Vellturo'ss market share evidence

ev idence aboveabove-that
that this data was already available
avai lable to
10
she leveled at Dr. Velltmo'
12
12
the jury and does not reflect any changed circumstances.

ci rcumstances.
13
~
~ .~
14
~
~
c
_~ c:
u
...
15
...,"
enD
~O
"
v}.:::
.....
Accordingly,
According ly, Dr. Chevalier's
Chevalier' s analysis offactors
o f fecto rs 8 and 12 provides little support for
reducing ongoing royalty rates. The Court
Courl finds
tinds that these
thcse factors arc roughly
tOL1ghly neutraL
ncutral.
d.
Georgia-Pacific
Geurgiu-.Pucijic Factor
Factor 6
II)
en.:.
]u ~0
16
17
17
products of the licensee;

licensee ; that
thaI. existing value
va lue of the invention to the licensor as a generator of sales
18
o rhi
, of
hiss non-patented items; and the extent of such derivative
dcrivati ve or
Or convoyed sales.''
sa les." Georgia-Pac{fic,
Georgia-Pacific,
19
318 F. Supp. at 1120.

1120, Dr. Chevalier applies the same arguments
argume~nts she raises
ra ises for factors 8 and 12,
20
targeting Dr. Vellturos

Vellturo's use of ecosystem effects. See Chevalier Decl.
Dec!. ~~'I! 37-38. She faults Dr.
Dr,
21
Vellturo for failing to account for a predicted decline in the proportion offirst-time
of first-time smartphone
smartphonc
22
ill 2014-15,
20 14-15 , which may reduce any ecosystem effects. See id.
buyers in
23
above regarding
regard ing factors 8 and 12, this
th is analysis
allalysis has limited persuasive
persuas ive value. While Dr. Vellturo
Vcllturo
24
thi s factor
did not address this
fac tor for
fo r purposes of ongoing
ongoi ng royalties, Dr. Chevalier
Cheva lier does not cite any new
25
evidence that
thai customer
cllstomer loyalty or other factors influencing
infl uencing ecosystem effects
effect s have changed in the
the
26
post-verdict time period. Due to

La th
thiiss lack
tack of
orcv
evidence
idcncc regarding changed circumstances,
circumslances,lhe
the Court
Cuurt
27
finds
fa ctor is roughly
rou ghty neutral.
nelltral.
find s that this factor
:t:: Z
:=Z
c II)
u
:;'oS
;:;:J -:5
...
0"
Ll..
w..
Factor 6 addresses: "The effect of selling

se ll ing the patented specialty in promoting sales of
of other
38. For the reasons

reasOnS stated
28
32
elise No.; 5:12-CV-00630-LHK
Case
5: 12-CV-00630-LHK
ORDER
ORDER GRANTI
GRANTING
NG tN
IN PART APPLE'S MOTION FOR ONGOING ROYALTIES
ROYAL TIES
A34
Case: 15-1171
Document: 40
Page: 119
se5:12-cv-00630-LHK Document2075 'SEALED'

*SEALED*
e.
c.
Filed: 03/06/2015
Fi
ledll/25/14 Page33 of 36
Filedll/25/14
Georgia-Pacific
Georgitl.PQci/ic Factors 1I a nd 4
Both experts discuss

d iscuss Apple 1'ss patent license agreements that have been executed post-
33
verdict. Dr.
Dr. Vellturo
Vc ll turo analyzes this under the rubric of factor 1:
I : "The royalties received by fhe
the
patentee for
rOf the licensing of
oflhe
the patent in suit,
su it. proving
prov ing or tending to prove an established royalty.''
roya lty."
Georgia-Pacific, 318
31 8 F.
F. Supp. at 1120.
1120. Dr.
Dr. Chevalier addresses this more generally under factor 4:
66
"The licensor's established policy and marketing program to

to maintain his patent monopoly by not
use the invention

licensing others to lise
invent ion or by granting licenses under special
specia l conditions designed to
preserve that monopoly." !d.

Jd. Both sides
sid es refer to two patent agreements: (I)
(1) Apple and Samsung's
Samsung 's
August 2014
20 14 "worldwide
" \-vorldwide stand-down," in which
wh ich the parties
panies settled all patent disputes
di sputes outside
outside the
10
United States, and (2) Apple's May 2014

20J4 agreement with Google and Motorola
Motoro la Mobility
Mobi lity to settle
.....~
II
all U.S. smartphone patent litigation. See Vellturo Dec!.,~

Decl . ' i 46-47; Chevalier Decl
Dec!.~~
. ~' 40-41 .
1:
t: <2
::; '-=
===
o
8UU
0
-~
't
o
-'C......
....ti_
-.-
12
Dr. Vellturo
Vel lturo briefly states that "neither
" nei ther agreement is relevant" because they involve
invo lve
13
different circumstances, and "no values

.''
va lues were placed on any
an y specific intellectual property
property."
-.
14
Vellturo
Vel ltu ro Decl. ,1~,45
45 , 48.
48 . On the other hand, Dr. Chevalier claims
c laims that
that these two settlements
VJQ
.0
~ $:::
:::
15
"represent a distinct shift in App le's patent policy"

policy'' and "reflect
tensions between
"refl ect a lessening of
oflcnsions
"'1i"
16
competitors
'smartphone
martphone wars' as compared to the period from 2011 through trial and
competito rs in the 's
c u
17
suggest an increased willingness to reach agreements with

wi th competitors.''
competitors." Chevalier Dec!.
Dec!. ,1
'J42.
<;-.
"
}.c
(.)
-." t:
Vl
,_
......
A
-~
0-
.5 43'
I'Jl.I::.
't:l t::
1l<1.1 o0
~ z
.-::
Z
):;;)
;:;
"'-5
,
....
0
u..
"'
18
The Court finds

find s that these factors
facto rs are roughly neutral. The parties provide no information
19
about the terms of

the two agreements that
of thiss
ofthe
th at would enable comparisons to
fO the circumstances
ci rcum stances oflhi
20
case. For
Fur t:xample,
e-xampJe, if
i r thust:
thmic two
twu agrt:crnents
agreements addressed
lllhJn;:s.'S cJ litigations
Iitigaliolls that
thai had not
1101yet reached
rcached verdicts,
21
they may not reflect

reneet comparable situations.
situations. Both experts provide only conclusory
concl usory statements
22
set1 lement agreements. Or.

Dr. Chevalier
Chevalicr does not explain
ex plain how these agreements
regarding Apple's senlement
23
represent a "shift"
"sh ift" in comparison to Apple'
Apple'ss prior stances and does not compare these agreements
24
to Apple's
App le's earlier settlement
sett lement agreements with other companies.
companics. This lack of
of information
in fo rmati on renders
25
these factors rough

roughly
Iy neutral.
ncutral.
26
27
28
f.
Georgia-Pacific Factor
Fador 13
The last factor addressed is:

is : "The pmt
portion
ion aoffth
thee realizable profit that should be credited lO
10
the invention as distinguished fiom
from non-patented elements, the manufacturing process, business
33
33
5: 12-CV-00630-LI-IK
ORDER GRANTING IN
fN PART APPLE'S MOTION
MOTION FOR
ROYALTIES
A35
Case: 15-1171
Document: 40
Page: 120
se5:12-cv-00630-LHK
se5;
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risks, or significant
signi ficant features or improvements added by the infringer."
in fringe r. " Georgia-Pac(fic,
Georgia-Pacific, 318
3 18 F.
.,E
C<j
tt: ..S
<2
::s
:=
O<>l
o=;..::;
uu
UU
Q
(.1 ~
0
.... 4...
u 0
.t). . .,
.;:
s... U
...."' .....
....". .
."Jo.--.-
-.
~ .!::?
.~
_~ C
0
Supp. at 1120.
J 110 . Dr. Chevalier
Cheval ier stales
slaLes that the Ga laxy S 1II
111 has received upgrades to the And
Android
ro id
operating system,
system , with "dozens
"dozen s of new features" not covered by the asserted patents. Chevalier
Dec!.~~
Dec!.
grow with each software

so ftware update, the portion
po rtion of
o f the overall software
so fl ware functionality
fu nctionality covered by the
66
patents-at-issue
onl y decrease.''
decrease." ld.
Id.
patents-nt-i ssue can only
does not address any changes to the adjudicated

adjud icated products, and Dr. Chevalier identifies new features
that may make

makc the patented features relatively
re latively less important than they were at the time of the
th e first
fi rst
hypothet ica l royalty

hypothetical
roya lty negotiation
negotiat ion.. However, Dr.
Dr. Chevalier is not a technical
technical expert and provides
43-45.
43 -45. "As the number offeatures
of features included
inc luded in the Android
And ro id operating system continues to
~1 45 ..
This factor
fac tor slightly favors
favo rs Samsung.
Samsu ng. Dr. Vellturo
Velltu ro
10
only a cursory assessment of

without
o f changes to the Galaxy S UJ,
U1 , w
ithout addressing
address ing the relative
IIIl
importance of the new features

featu res or the extent to which customers have upgraded their
th eir phones. For
12
Sam sung only

on ly slightly.
sli ght ly.
these reasons,
reason s, this factor favors Samsung
13
14
3.
Overall Royalty
Roya lty Rates
Ha les
see ks rates consistent

conSislcnl with the verd ict, conceding that most or
Apple seeks
of the evidence that the
~ E
15
IS
experts cited
"al ready presented at tria!
trial or in prior expert reports," which "confirms
"confi rms the
eitet! was "already
"'~
"'
,,~ t::130
16
wisdom and conserv

conservatism
ati sm inherent in using rates that preserve, rather than enhance, what that jury
j ury
c0 "o
17
awarded."
royalties
awarded ." ECF No. 2046-3 at 2. However,
However, Samsung believes
be lieves that any ongoing
o ngoing royalt
ies should be
.....
0"
t.L.
"-
18
discounted
discountcd by 57-75%.
57-75% , Dr. Chevalier computes
compu tes these discounts by using formu
fo rmulas
las that Dr.
Dr,
19
Vellturo presented to the jury to quantify his

8. Dr.
hi s reasonable royalty
roya lty analysis.
analysis, See Tr. at 1315-1
1315 -18.
Dr,
20
numerical inputs.,
inputs" for the formulas:
formulas: the profitability
profi tability of the iPhone, the
Chevalier changes "three numerical
2
1
21
decline in price of the Galaxy S lll,

ill , and "the diminishing share or
of first-time
fi rst-time buyers going
goi ng forward
22
from
fro m a 201
20 14
4 hypothetical
hypotheiical negotiation as compared to a 201
20 11
1 hypothetical
hypothetica l negotiation."
negot iat ion," ECF No.
No,
23
23
2015-2
Decl. ~ 47
47.. She uses two alternative calculations, one based on projected
20 15-2 at 2; Chevalier Dec!.
24
2014
201 4 iPhone profits
pro fi ts (Ex.
(Ex , 4), the other us
using
ing profits
profi ts of
ofthe
the lowest-pdced
lowest-priced iPhone that is "most likely
25
to compete
compere with the Galaxy S lli"
[II" (Ex. 5).
5) , Chevalier
Cheva lier Decl,
Decl. ,[
~ 47.
47 , With
Wi th her modified
modi fi ed inputs,
inpms, Dr.
Dr,
26
Chevalier concludes that the royalty rates should be reduced by either

ei th er 59% or 75% for the '647
' 647
27
Patent, and eeither

Id. Exs. 4, 5.
5. As one example, Dr.
ither 57% or 74% for the '72!
' 72 1 and ' 172 Patents. Jd.
28
modiified
fied inputs reduce Apple's
App le 's "willingness
"willi ngness to accept rate" for
fo r the '647 Patent from
Chevali er's mod
Chevalier's
"
t:!o
(J)..S:::
"
;:;
.~ z
:z
:::J-5
"' -5
34
Case No.;
No.: 5:12-CV-00630-Lill<
5: 12-CY-00630-LHK
PA RT APPLE'S MOTION FOR
ROYA LT IES
A36
Case: 15-1171
Document: 40
Page: 121
se5:12-cv-00630-LHK
se5 '12-cv-00630-LHK Document2075 *SEALED*
'SEALED'
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Filed11/25/14
Filedll/25114 Page35 of
o( 36
$12.49 (the number that Dr. Vellturo

Ve lltllro originally proposed at
attriaJ)
trial) to $5
$5.09,
.09, for a discount of 59%.
2
Jd
ld. Ex. 4. Without explanation, she applies the same discount to the $2.75 rate that Dr. Vellturo
Vcllturo
claims
actually
ly awarded, to produce
prod uce a mte
rate of$1.12.
of$l, 12, Jd.
ld.
claim s the jury actual
Dr. Cheva lier's analysis is not persuasive. Fitst,

First, her analys
analysis
is is
is limited lo
to modifying rhe
the
inputs for Dr. Vellturo's

Vcllturo's formul
formulas
as based
based on her conclusion tthat
hat "Dr.
" Dr. Vellturo
Vcllturo ignored key changes
in the marketplace." ld. ,[ 46

46.. However,
Howeve r, the jury awarded significantly
sign ificantly Jess
less for each patent than
Dr.
thcju
jury
ry applied Dr. Vcllturo's
Vc lltu ro's formulas
Dr. Vellturo recommended, so there is no indication that the
(or applied the royalty rat'es that Dr. Chevalier proposed

pro posed at trial).
trial) . Accordingly, Dr. Chevalier
provides no basis for applying her discounts

VeJJturo's
diseollnts to the jury's
j ury 's rates, as opposed to Dr. Vellturo's
10
original rates. Second, in modifying iilputs,

iil puts, Dr. Chevalier reduces the price of
orthe
the Galaxy S Ul,
il l,
11
II
and uuses
ses on
ly the Galaxy S lil
JI[ and Galaxy S II Epic 4G Touch as representative products. See /d.
ld.
only
:::~:.=
~:.=
~
12
Ex. 7. Even if
il"Dr.
Dr. Chevalier appropriately adjusts the price of the Galaxy S Ul,
III, she provides no
-~
-~
0""" 00
13
13
explanation
al l other adjudicated products, much
exp lanation for why this particular discount should apply to all
.~
.~
~ .~
14
less any newer products ''not

"not more than colorably different'~
different" that might infringe. Thitd,
Third, as
~c:
1:0
~O
"'0
ca
....
-II)
15
15
explained above, the Court finds

find s that certain
certa in Georgia-Pacific
Georgia-Pacffic factors tend to support a relatively
"::It
"''''
","
:::;::Z
16
higher
higber royalty rate, and Dr. Chevalier
Cheval ier assumes no such factors
fac tors in proposing her discounts.
.~
t:c.2
1: <9:
o.
uu
UU
o
-E.
-'"'u--.b
!:! i3
(/l..C:
(II
~
."
oCl ZQJ
~
:::::J-5
"'-5
17
t.l..
~
18
a post-verdict hypothetical
hypothetica l negotiatio11,
negot iation . the patentee generally has
ha~ a stronger position than before.
beFote.
19
Dr. Chevalier omits

om its th
thiiss factor entirely
enlirely from her ongoing royalties analysis.
ana lys is. Moreover, Samsung
Sam sung
20
cites no case where a court awarded ongojng

jury's.
ongoing royalties at rates
rates below the Jury'
s. Rather, courts
21
F.3d
have generally awarded the same or higher rates for continuing infringement. E.g.,
E.g. , Bard,
Bard, 670 FJd
22
at 1193
11 93 (affirming
(affirmin g rates higher than jury
jury's);
's); Depuy,
Depuy, 2014
20 14 U.S.
U. S. Dist. LEXlS
LEX IS 61450>
61450, at *24
"24 n.8
23
(awarding higher rate); Carnegie Mellon, 2014 U.S.

U. S. Dist. LEXlS
LEX IS 43042, at*
at *1119
19 (awarding same
24
rate). This further

counsels
further counse
ls against the discounts that Samsung
Sam sung proposes.
....
0"
Particularly, Dr. Chevalier

Chevali er and Samsung do not address the Federal Circuit's
Circuit' s holding
ho lding that in
25
After considering both parties'

pan ies' arguments, the supporting declarations and exhibits,
exhibits.
26
applicable
case law, and the record, the Court determines that the proper ongoing royalty
royally rates are
appl icable case
27
reflected
ected in the jury verdict. As explained
exp lained above, Georgia-Pacific
Georgio-Podfic factors
facto rs 5 and 9-1
9 11I favo tr
th ose refl
those
2R
28
Apple. Factors 8 and 12,

6, and 1 and 4 are roughly neutral. Pactor
sl ightly favors Samsung.
Sam sung.
12,6,
Factor 13 slightly
35
Case No.:
No .: 5: 12-CV
12-CY-00630-LHK
00630-LHK
ORDER GRANTING lN
IN PART APPLE'S
APPLE'S MOTION FOR
A37
Confidential
Redacted
Case: 15-1171
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03/06/2015
:12-cv-00630-LHK Document2075 'SEALED'
*SEALED*
Filedll/25/14
Filedlll25114 Page36 of 36
On ba
balance,
lance, Samsung has
has not shown that any changed economic circumstances warrant reducing
the verdict
verd ict rates. Apple does
dces not seek any rates higher than the jury verdict.
verd ict. Accordingly, the rates
reflected
reOected in the verdict shall apply.
44
figure s obtained by dividing the jury's

jury' s
Por the adjud
adjudicated
For
icated products, the rates shou ld be the figures
award for each product by the corresponding number of units.

un its. For any tmadjudicated
unadjudicatcd products ~'not
" not
111ore
thann co
lorably different,"
diffetent," the rates should be .
more tha
colorably
" . for the '647 PatentPatent_
77
~ for
fo r the ' 172 Patent, for
fo r th~
th! reasons
reason s explained
exp la ined above.
above .
Patent, and IIIII
IV.
for
the '721
forthe
'72 1
CONCLUSION
For
For the foregoing
foregoi ng reasons, the Court
Cou rt DENiES
DENIES Samsung's
Sams ung's request to
10 stay resolution
resoluti on of
10
Apple's
Apple
's motion and GRANTS Apple 's motion
mo:ion for ongoing royalties. The Court determines that
lI
"
Apple
For any continuing
cont inuing intiingement,
in fr ingement, in lieu of
o f a permanent
App
le is entitled to ongoing royalties for
12
adjud icated to infringe the '647, ''172

172,, or '72 1
inj uncti on. Those royalties shall apply to products adjudicated
injunction.
Cj ~
0
" 0
.~
... 0
13
Patents, and to products "not

" not more than co
colorably
lorably different therefrom." The starting
st81t ing date for
fo r any
.~ !::l
C
~ .~
.!!!
.-
14
final jjudgment
Ln this case. The ongoing
ongoing
ongoi
ng royalties shall
sha ll be after entry of
affinal
udgment in
ongo ing royalty rates for
e~cc
oo.r.
- "
"'~
'"Ot
15
sha ll be:
any adj udicated products shall
.~
E
t:
t:..2
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=
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0 j
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v
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"'-5....
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0
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16
17
17
18
18
19
20
21
22
For any unadjudicated

unadjud icated products
prod ucts "not
" nOi more than colorably
co lorably di
different,"
fferent," the rates shall be
be ~ for the
23
'6477 Pate
Patem,
nt, ~ for the '721 Patent, and -_
'64
24
IT IS SO ORDERED.
ORD ERED.
25
Dated:
Dated : November 25, 2014
l1li
for
fo r the ''172
l 72 Patent.
L~~'~ '
[.~!~
26
United
Un ited States District Judge
Judge_
27
28
36
Case
Cnse No.:
No.; 5: 12-CV-00630-LHK
12-CVOO630-LHK
ORDER GRANTING
GRANTrNG lN
IN PART APPLE'S MOTlON
MOTION FOR ONGOING ROYALTIES
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SAN JOSE DIVISION
)
)
)
)
v.
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)
)
)
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ORDER GRANTING IN PART AND
DENYING IN PART SAMSUNGS
MOTION FOR JUDGMENT AS A
MATTER OF LAW
On May 5, 2014, after a thirteen-day trial and approximately four days of deliberation, a
jury in this patent case reached a verdict. ECF No. 1884. On May 23, 2014, Samsung filed a
motion for judgment as a matter of law and motion to amend the judgment. ECF No. 1896-3
(Mot.). On June 6, 2014, Apple filed an opposition. ECF No. 1908-3 (Oppn). On June 13,
2014, Samsung filed a reply. ECF No. 1917 (Reply). The Court held a hearing on July 10, 2014.
Having considered the law, the record, and the parties argument, the Court GRANTS Samsungs
motion for judgment as a matter of law that Samsung did not willfully infringe the 721 patent and
DENIES Samsungs motion in all other respects.
1
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I.

LEGAL STANDARD
Federal Rule of Civil Procedure 50 permits a district court to grant judgment as a matter of
law when the evidence permits only one reasonable conclusion and the conclusion is contrary to
that reached by the jury. Ostad v. Or. Health Scis. Univ., 327 F.3d 876, 881 (9th Cir. 2003). A
party seeking judgment as a matter of law after a jury verdict must show that the verdict is not
supported by substantial evidence, meaning relevant evidence that a reasonable mind would
accept as adequate to support a conclusion. Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361,
1366 (Fed. Cir. 2005) (citing Gillette v. Delmore, 979 F.2d 1342, 1346 (9th Cir. 1992)). The Court
must view the evidence in the light most favorable to the nonmoving party . . . and draw all
10
reasonable inferences in that partys favor. See E.E.O.C. v. Go Daddy Software, Inc., 581 F.3d
11
951, 961 (9th Cir. 2009) (internal quotations and citations omitted).
12
A new trial is appropriate under Rule 59 only if the jury verdict is contrary to the clear
13
weight of the evidence. DSPT Intl, Inc. v. Nahum, 624 F.3d 1213, 1218 (9th Cir. 2010). A court
14
should grant a new trial where necessary to prevent a miscarriage of justice. Molski v. M.J.
15
Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007).
16
II.
ANALYSIS
17
A.
18
The 647 patent is directed to a system and method for performing an action on a structure
Non-infringement of Claim 9 of the 647 Patent
19
in computer-generated data. The 647 patent generally covers a computer-based system and
20
method for detecting structures, such as phone numbers, post-office addresses, or dates, and
21
performing actions on the detected structures. See 647 Patent Abstract, col.1 ll.8-16. Apple
22
asserted claim 9 of the 647 patent against Samsung. Claim 9 depends from claim 1 and recites:
23
24
25
26
27
1. A computer-based system for detecting structures in data and performing actions

on detected structures, comprising:
an analyzer server for detecting structures in the data, and for linking actions
to the detected structures;
a user interface enabling the selection of a detected structure and a linked
action; and
28
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2
3
4
9. The system recited in claim 1, wherein the user interface enables selection of an
action by causing the output device to display a pop-up menu of the linked
actions.
647 Patent cls. 1, 9. The jury found that all nine accused Samsung products infringe, and awarded
damages. See ECF No. 1884 at 9. Samsung now moves for judgment as a matter of law that claim
9 is not infringed and is invalid in light of prior art. The Court addresses non-infringement and
invalidity in turn.
9
an action processor for performing the selected action linked to the selected
structure; and
a processing unit coupled to the input device, the output device, and the memory for
controlling the execution of the program routines.
As to non-infringement, Samsung contends that Apple presented its case under incorrect
10
claim constructions that the Federal Circuit rejected shortly before the close of trial, in Apple, Inc.
11
v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) (Motorola), and that Apple failed to
12
demonstrate infringement of at least three limitations of claim 9, as properly construed. The Court
13
concludes that substantial evidence supports the jurys finding of infringement, and accordingly
14
DENIES Samsungs motion.
15
To prove infringement, the plaintiff bears the burden of proof to show the presence of
16
every element or its equivalent in the accused device. Uniloc USA, Inc. v. Microsoft Corp., 632
17
F.3d 1292, 1301 (Fed. Cir. 2011). If any claim limitation is absent from the accused device, there
18
is no literal infringement as a matter of law. Bayer AG v. Elan Pharm. Research Corp., 212 F.3d
19
1241, 1247 (Fed. Cir. 2000).
20
21
1.
Claim Construction
Samsung argues extensively that Apple presented an infringement case based on the wrong
22
claim constructions. Samsung contends that Apple shot for the moon by relying on broad
23
constructions of analyzer server and linking actions, and that the Federal Circuits opinion in
24
Motorola rendered most of Apples case ineffective. See Mot. at 1-8.
25
Samsungs arguments at this stage are misdirected to the extent they do not address the
26
merits of Apples infringement case
namely, the evidence and claim language at issue. During
27
trial, the Court specifically addressed the effect of the Motorola decision with input from the
28
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parties, and allowed both Apple and Samsung to present supplemental expert testimony before
submitting the case to the jury. Accordingly, the verdict must be evaluated against the evidence
presented, not the parties procedural disputes regarding Motorola.
4
5
the terms analyzer server and linking actions to the detected structures in the 647 patent. See
Apple, Inc. v. Motorola, Inc., No. 11-CV-08540, slip op. at 8-11 (N.D. Ill. Mar. 19, 2012). On July
20, 2012, the parties to the Motorola litigation appealed these constructions to the Federal Circuit.
Meanwhile, in the instant case, this Court held a claim construction hearing on February 21, 2013
and issued a claim construction order on April 10, 2013. See ECF No. 447. The parties requested
10
On March 19, 2012, in the Motorola litigation, the Northern District of Illinois construed
11
and received construction of only one term in the 647 patent, action processor. See id. at 64.
However, since claim construction proceedings concluded, both parties have attempted to
12
seek untimely constructions of the 647 patent. In its summary judgment motion, Apple sought
13
belated constructions for analyzer server and linking actions, ECF No. 803-4 at 5 n.6, but the
14
Court found that Apples attempt to argue for a new claim construction at this stage is doubly
15
improper, both because it did not raise its arguments at the claim construction stage and because
16
Apple is trying to sidestep the summary judgment page limitations by incorporating legal
17
arguments in a separate declaration, ECF No. 1151 at 17. On March 27, 2014, only days before
18
the start of trial, Samsung filed a request to supplement the jury books with the Northern District of
19
Illinoiss constructions of analyzer server and linking actions that were then awaiting review
20
by the Federal Circuit in Motorola. ECF No. 1521. The Court denied Samsungs request. ECF No.
21
1536. The case then proceeded to trial.
22
On April 25, 2014, which was the last scheduled day of evidence at trial, the Federal Circuit
23
issued its decision in Motorola. The Federal Circuit affirmed the Northern District of Illinoiss
24
following constructions of analyzer server and linking actions from the 647 patent, and
25
rejected Apples arguments to alter those constructions:
26
27
analyzer server: a server routine separate from a client that receives data having
structures from the client.
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linking actions to the detected structures: creating a specified connection

between each detected structure and at least one computer subroutine that causes the
CPU to perform a sequence of operations on that detected structure.
Motorola, 757 F.3d at 1304-07. In response to this sudden development, the Court allowed the
3
parties to address the effect of Motorola on the trial, after which the parties agreed to extend the
4
trial and present additional testimony from their respective experts on 647 patent infringement and
5
validity. See Tr. at 2988:4-3003:20; ECF Nos. 1828, 1845. The Court also provided the Motorola
6
constructions to the jury. See id. at 3014:16-24.
7
Before and during trial, the parties relied on expert opinions regarding infringement and
8
validity of the 647 patent from Dr. Todd Mowry (Apple) and Dr. Kevin Jeffay (Samsung). Apple
9
now asserts that Samsung waived any challenges to Dr. Mowrys testimony based on the Motorola
10
constructions because Samsung did not raise these issues in its pre-verdict Rule 50(a) motion.
11
Oppn at 3. Apples objection is misplaced. Apple does not identify which specific non12
infringement arguments Samsung allegedly waived. Samsung addressed the sufficiency of
13
Dr. Mowrys testimony during oral arguments for Rule 50(a) motions at the close of the evidence.
14
E.g., Tr. at 3114:20-3115:4 (referring to Dr. Mowrys opinions).
15
Samsung claims that Apples infringement case and Dr. Mowrys testimony before the
16
issuance of Motorola relied on the claim constructions that the Federal Circuit rejected. However,
17
the time for these arguments has passed, as the parties decided to permit additional evidence to
18
address the Motorola constructions. Moreover, the Court notes that when trial resumed on April
19
28, 2014, Samsung attempted to have Dr. Jeffay testify misleadingly that he had used the Motorola
20
constructions since the very first day I worked on this case. Id. at 3055:2-6. In fact, in his expert
21
reports, Dr. Jeffay did not offer opinions on which claim constructions were correct. See, e.g., ECF
22
No. 882-11 (Jeffay Rebuttal Report) 120-28; Tr. at 3060:14-3064:21. Dr. Jeffay also testified at
23
deposition that he had not taken positions on the Motorola constructions. E.g., id. at 3067:8-14
24
(quoting Jeffay deposition: So sitting here today, based on all the information youve seen, do you
25
have an opinion as to what the proper construction of analyzer server is as it appears in claim 1?
26
Answer: No.); see also id. at 3056:8-3077:25.
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Rather, the relevant issue is whether a reasonable jury, properly instructed, could have determined
from the evidence presented that Samsungs accused products infringe claim 9 of the 647 patent.
Indeed, despite raising these issues, Samsung asserts in its Reply that pretrial and recall procedure
are irrelevant here and the only relevant consideration is the record. Reply at 3.
6
7

At this stage, the parties prior attempts to argue claim construction are not germane.
2.
Linking Actions and Specified Connection
The Federal Circuit construed the claim phrase linking actions to the detected structures
to mean creating a specified connection between each detected structure and at least one computer
subroutine that causes the CPU to perform a sequence of operations on that detected structure.
10
Motorola, 757 F.3d at 1305-06 (emphasis added). Samsung argues that the claimed analyzer
11
server must create the specified connection, and that no accused device can possibly infringe
12
because the user selects an action to be linked. See Mot. at 9-11. However, a reasonable jury could
13
have found infringement of this limitation.
14
Samsung presented testimony from Google engineer Dianne Hackborn, who discussed
15
Intents in the Android operating system, explaining that Intents do communications between
16
applications or interactions between applications. Tr. at 1580:1-6. Hackborn testified that when an
17
application wants to have a user perform an action, such as composing an e-mail, it can make an
18
Intent and give it to Android and then Android will find an application that can actually do that.
19
Id. at 1580:7-13. Dr. Jeffay then testified that there is no specified connection in Android
20
because the Intent mechanism does not bind a specific application (such as a particular e-mail
21
client) to a structure. Id. at 3087:3-3089:1 (Whats not linked is the code thats ultimately going
22
to, for example, dial the phone.).
23
However, Dr. Mowry expressed contrary opinions that the jury could have credited.
24
Dr. Mowrys infringement theory was that the Messenger (also referred to as Messaging by the
25
parties) and Browser applications in Android include a method called setIntent() that calls another
26
method called startActivity(), which corresponds to the at least one computer subroutine in claim
27
9 as construed in Motorola. Dr. Mowry explained that the Motorola construction of linking
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actions did not change his infringement opinion, based on his review of source code for the
Messenger and Browser applications in the Gingerbread, Ice Cream Sandwich, and Jelly Bean
versions of Android, which he presented to the jury. Id. at 3026:16-3028:22. As an example, for the
Gingerbread Messenger application, Dr. Mowry testified that setIntent() records an intent object
for a particular choice in the pop-up menu that shows you choices of linked action, and that once
the user picks an option, it necessarily calls the startActivity() method and passes an Intent object.
Id. at 3027:6-23.

Samsung claims that there is no specified connection in the accused devices because
there is no pre-existing link between a detected structure (such as an e-mail address) and a
10
computer subroutine that directly performs an action (such as the Gmail application). Samsung
11
argues that startActivity() is not called until the user selects an action, so it cannot be a specified
12
connection. Samsung also contends that claim 9 requires a linked action, which further confirms
13
that there must be a pre-existing link between the structure and the subroutine. See Mot. at 10.
14
However, Dr. Mowry addressed this issue when he explained to the jury that startActivity() is
15
necessarily and automatically called when a structure is detected. See Tr. at 3027:14-17. Also, as
16
Apple notes, under the Motorola construction, the analyzer server is for creating a specified
17
connection, such that the claimed action need not always be linked to a structure prior to
18
detection of that structure. Furthermore, Dr. Jeffay admitted that startActivity() is a computer
19
subroutine thats actually linked into the detected structures, but claimed that no specified
20
connection exists because claim 9 requires that you link the actual program that performs that
21
function, such as dialing a phone number. Id. at 3090:5-20. The Motorola construction of linking
22
actions, however, requires only that the detected structure be linked to a computer subroutine that
23
causes the CPU to perform that function. Thus, the jury could have determined that startActivity()
24
satisfies this limitation because it is admittedly a linked subroutine that causes performance of an
25
action. While it is well settled that an experts unsupported conclusion on the ultimate issue of
26
infringement is insufficient to raise a genuine issue of material fact, Arthur A. Collins, Inc. v. N.
27
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Telecom Ltd., 216 F.3d 1042, 1046 (Fed. Cir. 2000), that is not the situation here. The jury could
have evaluated the expert testimony and reasonably determined infringement of this limitation.

For completeness, the Court addresses two additional arguments from Apple that are
misplaced. First, Apple contends that Samsung waived its argument regarding the linked action
limitation by not raising it in its pre-verdict Rule 50(a) motion. See Oppn at 8 n.2. Samsung does
not respond to this waiver argument in its Reply. However, the Court finds no waiver because
Samsung argued repeatedly that no specified connection exists in Android. See Tr. at 3115:12-
3117:10. Second, Apple notes that the Northern District of Illinois previously concluded in
Motorola that infringement of linking actions (and other limitations) was not amenable to
10
summary judgment. These arguments are meritless. Motorola involved different products and
11
parties. Moreover, Apple asked the Court to exclude references to Motorola from trial because the
12
Motorola order, and any reference to rulings, findings, or other developments in cases not
13
involving both parties to this action should be excluded. ECF No. 1281-3 at 4. Having argued that
14
prior orders in Motorola were irrelevant, Apple cannot now rely on them.
15
Even setting aside Apples misplaced arguments, the Court determines for the reasons
16
above that a reasonable jury could have found infringement of the linking actions to the detected
17
structures limitation.
18
19
3.
Analyzer Server
The claimed analyzer server means a server routine separate from a client that receives
20
data having structures from the client. The parties focus their dispute on whether Android includes
21
a server routine that is separate from a client.
22
Apple contended that the Messenger and Browser applications contain shared libraries that
23
correspond to the analyzer server limitation. See Tr. at 3017:17-3019:21. These shared libraries
24
include the Linkify, Cache Builder, and Content Detector classes. Id. Dr. Mowry stated that
25
Messenger and Browser are clients that pass data to these shared libraries to detect structures. Id.
26
at 3017:9-16. Samsung claims infringement is impossible under this theory because a shared
27
library is not separate from the client application. Samsung points to Ms. Hackborns testimony,
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where she stated that Linkify is not a server and does not run on its own. It runs as part of the
application thats using it. Id. at 1585:9-18. Dr. Jeffay relied in part on Ms. Hackborns testimony
to opine that shared libraries are not separate from the clients because they become[s] part of the
application. Id. at 3079:17-3080:7, 3084:20-22 (Q. So if you pull the Linkify code out of
Messenger, what happens? A. Well, Messenger certainly would not run.).

The Court finds that substantial evidence supports the jurys verdict for this limitation.
Dr. Mowry presented Android source code to the jury and explained that the shared libraries
receive data from the Messenger and Browser applications and detect structures in that data. See id.
at 3017:23-3018:8, 3018:24-3019:13. Dr. Mowry also directly rebutted Dr. Jeffays opinions
10
regarding shared libraries, explaining that the shared libraries are stored in a particular part of
11
memory, are accessible to multiple applications, and are definitely separate from the
12
applications. Id. at 3023:3-3024:19. Dr. Mowry also acknowledged Ms. Hackborns testimony but
13
stated that it did not alter his opinions on shared libraries. See id. at 3025:12-25, 3052:1-14 (stating
14
that a shared library is not written as a standalone program, even though it is distinct and separate
15
from the application). Apple also had Dr. Mowry testify that the shared libraries receive data from
16
the client applications. See id. at 3019:18-21, 3021:25-3022:3. The jury could have reasonably
17
credited Dr. Mowrys explanations.
18
Dr. Mowry also testified that glue code supports his view that the shared libraries are
19
distinct from the client applications because the glue code connects together different modules or
20
different pieces of software. Id. at 3020:22-3021:10. Samsung asserts that glue code is not a
21
term of art. Mot. at 12. This objection is irrelevant. Regardless of whether glue code appears in
22
textbooks, Dr. Mowry stated that the presence of such code indicates that this claim limitation is
23
satisfied. The jury was entitled to assess the competing experts credibility on this point. See
24
Kinetic, 688 F.3d at 1362.
25
26
27
4.
Action Processor
This Court construed action processor as program routine(s) that perform the selected
action on the detected structure. ECF No. 447 at 64. Motorola did not affect this construction, and
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the parties did not offer additional testimony on this limitation. Dr. Mowry identified the
startActivity() and resolveActivity() methods in the Android source code as action processors.
See Tr. at 873:8-20. He also testified that startActivity() allows one program to launch another
program and pass data to it, such that it performs the selected action. Id. at 2794:8-2796:21.
According to Samsung, startActivity() cannot be an action processor because it does not directly
perform an action (such as dialing a phone number or initiating an e-mail). However, the Courts
construction of action processor is not limited in this way, and during claim construction, the
parties disputed only whether an action processor must be separate from a client. See ECF No.
447 at 14-20. Samsung fails to show that a reasonable jury could not determine that startActivity()

10
performs selected actions by launching appropriate applications.
11
5.
12
Jelly Bean Galaxy Nexus
For the Jelly Bean version of the Galaxy Nexus, Apple did not accuse the Messenger
13
application, only Browser. Samsung contends that Browser lacks a user interface enabling the
14
selection of a detected structure because Browser detects a structure (such as an e-mail address)
15
only after a user selects it. The jury heard sufficient evidence to reject this argument. Dr. Mowry
16
explained that the Jelly Bean Galaxy Nexus infringes because it allows users to perform a long
17
press
18
selection of an action. Tr. at 866:3-870:8; see also id. at 869:10-17 (The user eventually is holding
19
down long enough that it becomes a selection through a press and hold.). At the summary
20
judgment stage, the Court noted that whether the long press infringes would be a question for the
21
jury. See ECF No. 1151 at 20-21. The jury could have reasonably accepted Dr. Mowrys
22
explanation.
23
24
a press and hold instead of a tap
that results in detection of a structure prior to
For the foregoing reasons, Samsungs motion for judgment as a matter of law of noninfringement of the 647 patent is DENIED.
25
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B.
Samsung moves for judgment as a matter of law that no reasonable jury could find claim 9
Invalidity of Claim 9 of the 647 Patent
of the 647 patent valid, arguing that Sidekick renders the claim obvious. Mot. at 14. The Court
DENIES Samsungs motion.
Under 35 U.S.C. 103, a patent is invalid as obvious if the differences between the
claimed invention and the prior art are such that the claimed invention as a whole would have been
obvious before the effective filing date of the claimed invention to a person having ordinary skill in
the art to which the claimed invention pertains. 35 U.S.C. 103. A party seeking to invalidate a
patent on the basis of obviousness must demonstrate by clear and convincing evidence that a
10
skilled artisan would have been motivated to combine the teachings of the prior art references to
11
achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation
12
of success in doing so. Kinetic, 688 F.3d at 1360. Obviousness is a question of law based on
13
underlying findings of fact. In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). Though
14
obviousness is ultimately a question of law for the Court to decide de novo, in evaluating a jury
15
verdict of obviousness, the Court treats with deference the implied findings of fact made by the
16
jury. Kinetic, 688 F.3d at 1356 57. The Court must discern the jurys implied factual findings by
17
interpreting the evidence consistently with the verdict and drawing all reasonable inferences in the
18
nonmoving partys favor. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
19
464 F.3d 1356, 1361 (Fed. Cir. 2006). The Court first presume[s] that the jury resolved the
20
underlying factual disputes in favor of the verdict [ ] and leave[s] those presumed findings
21
undisturbed if they are supported by substantial evidence. Kinetic, 688 F.3d at 1356-57 (citation
22
omitted). The underlying factual inquiries are: (1) the scope and content of the prior art; (2) the
23
differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art;
24
and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved
25
needs, copying, praise, and the failure of others. KSR Intl Co. v. Teleflex, Inc., 550 U.S. 398, 406
26
(2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)); Crocs, Inc. v. Intl Trade
27
Commn, 598 F.3d 1294, 1311 (Fed. Cir. 2010). The Court then examines the ultimate legal
28
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conclusion of obviousness de novo to determine whether it is correct in light of the presumed jury
fact findings. Kinetic, 688 F.3d at 1357. Here, the jury found claim 9 of the 647 patent valid.
Thus, below, the Court first examines whether substantial evidence supported the jurys underlying
factual conclusions that there was a significant gap between the prior art and the patent, and that
there were secondary indicia of non-obviousness.

First, there was conflicting expert testimony on the question whether Sidekick rendered
claim 9 obvious. Samsungs expert, Dr. Jeffay, testified Sidekick rendered claim 9 obvious because
it disclosed all the limitations of claim 9 except for two, and that those two limitations
actions to the detected structures by using a specified connection, and a pop-up menu would
linking
10
have been obvious based on Sidekick. See ECF No. 1928 at 3092-94, 3098-99; ECF No. 1717 at
11
1810, 1841. Yet Apples expert, Dr. Mowry, testified that Sidekick did not render the 647 obvious
12
because in addition to missing those two elements, see ECF No. 1928 at 3101, Sidekick did not
13
detect multiple structures nor link to multiple actions. See ECF No. 1926 at 2802-03, 2810; ECF
14
No. 1928 at 3101, 3104. Specifically, Dr. Mowry explained Sidekick could only detect one
15
structure
16
only one pattern to detect all phone numbers, including domestic and international. See ECF No.
17
1926 at 2802-06, 2809. Dr. Mowry also testified that Sidekick could link only one action
18
See ECF No. 1926 at 2803, 2809; ECF No. 1928 at 3104. In response, Dr. Jeffay claimed Sidekick
19
could detect multiple structures because it could detect multiple types of phone numbers (including
20
domestic and international) by using different patterns, ECF No. 1717 at 1807-08, 1834-35.
21
Dr. Jeffay also implicitly rejected Dr. Mowrys testimony that claim 9 requires multiple actions,
22
given that Dr. Jeffay did not testify that multiple actions was one of the limitations of the claim.
23
Id. at 1807. Finally, Dr. Mowry testified Sidekick failed to satisfy claim 9s requirement that the
24
user interface enable selecting a structure. ECF No. 1624 at 923-24; ECF No. 1926 at 2802.
25
Dr. Jeffay rebutted this point by stating a user can pick any number that they want. ECF No.
26
1717 at 1838-39. Based on this conflicting expert testimony, the jury was free to make credibility
27
determinations and believe the witness it considers more trustworthy. Kinetic, 688 F.3d at 1362
phone numbers
and showed the jury Sidekick code and explained how the code used
28
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(citation omitted). The jurys finding of validity indicates that the jury made an implied finding of
fact crediting Dr. Mowrys testimony that the gap between Sidekick and the 647 was significant
because Sidekick did not disclose various elements of claim 9. Id. at 1363 ([W]hether the prior art
discloses the limitations of a particular claim is a question of fact to be determined by the jury[.]);
Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1315 (Fed. Cir. 2009) (holding that jury was
entitled to conclude, as a factual matter, that the prior art did not disclose this limitation). The
Court must give that finding deference. Kinetic, 688 F.3d at 1356-57. Crediting Dr. Mowrys
testimony over that of Dr. Jeffay, the Court cannot say that the jurys implied finding that these
gaps were significant was not supported by substantial evidence in the record.

10
Further, the Court is unpersuaded by Samsungs claim that Dr. Mowrys testimony that
11
claim 9 requires multiple actions fails as a matter of law under the Federal Circuits construction
12
of linking actions to the detected structures, Mot. at 15, Reply at 9. The Federal Circuit held that
13
claim 9 requires only that at least one action be linked to each detected structure. Motorola, 757
14
F.3d at 1307 (The plain language of the claims does not require multiple actions for each
15
structure[.]). Apple acknowledges as much. Oppn at 4. However, nothing in the Federal Circuits
16
order prohibited the jury from finding that the plain and ordinary meaning of claim 9 requires that
17
there be multiple actions that are linked to multiple structures.
18
Second, the jurys finding of non-obviousness means the jury implicitly rejected Samsungs
19
claim that there were no secondary indicia of non-obviousness. ECF No. 1717 at 1811-13
20
(Dr. Jeffay testifying there were no secondary considerations suggesting pop-up would not be
21
obvious and that there is no evidence Samsung copied claim 9). Again, the Court must defer to this
22
implicit factual finding. See Kinetic, 688 F.3d at 1356-57. Apple cites substantial evidence to
23
support the jurys finding, including Googles recognition of the need and usefulness of the
24
invention. See ECF No. 1624 at 881-83 (describing PX 116, email between Google engineers
25
discussing that for text objects such as email addresses and physical addresses, one of our most
26
powerful features is the interaction of text objects [and] other applications on the phone. For
27
instance, users can select a phone number . . . and it will launch the dialer[.]).
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In light of these factual findings, the Court now considers whether, as a matter of law, it
would have been obvious to a designer of ordinary skill in the art to bridge the gap the jury
implicitly found. While Dr. Jeffay testified it would have been obvious to use a pop-up menu or to
link actions using a specified connection based on Sidekick, Dr. Jeffay did not explain why it
would have been obvious for an engineer of ordinary skill to combine additional actions with
Sidekicks dialing action such that there are multiple actions linked overall. Nor did he explain
why, assuming Apple is correct that detecting only phone numbers does not satisfy the claims
requirement to detect multiple structures, it would have been obvious to create an invention that
detects multiple structures such as postal addresses, email addresses, and telephone numbers. ECF
10
No. 1928 at 3103 (Dr. Mowry describing different kinds of structures). Because Samsung has
11
failed to identify the necessary evidence, the Court cannot conclude there is clear and convincing
12
evidence that it would have been obvious to bridge these gaps between Sidekick and claim 9.
13
In sum, in light of the gaps between Sidekick and claim 9, and lack of clear evidence by
14
Samsung as to why such a gap would have been obvious to bridge, the Court finds that as a matter
15
of law, Samsung has not produced clear and convincing evidence that the claimed invention was
16
obvious in light of the prior art. Accordingly, the Court DENIES Samsungs motion for judgment
17
as a matter of law that claim 9 of the 647 patent is invalid.
18
C.
19
The jury found claim 8 of the U.S. Patent No. 8,046,721 (the 721 patent) not invalid.
20
Samsung moves for judgment as a matter of law that no reasonable jury could find claim 9 not
21
invalid. Samsung moves on two grounds: (1) obviousness, and (2) indefiniteness. The Court
22
addresses each in turn below, and DENIES Samsungs motion.
23
1.
Obviousness
24
Claim 8 of the 721 is dependent on claim 7. The claims recite as follows:
25

memory;
one or more processors; and
one or more modules stored in the memory and configured for execution by
26
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the one or more processors, the one or more modules including

instructions:
to detect a contact with the touch-sensitive display at a first
predefined location corresponding to an unlock image;
to continuously move the unlock image on the touch-sensitive
display in accordance with movement of the detected contact
while continuous contact with the touch-sensitive display is
maintained, wherein the unlock image is a graphical, interactive
user-interface object with which a user interacts in order to
unlock the device; and
to unlock the hand-held electronic device if the unlock image is
moved from the first predefined location on the touch screen to a
8. The device of claim 7, further comprising instructions to display visual cues to
communicate a direction of movement of the unlock image required to unlock the device.
721 Patent cls. 7, 8.
Samsung argues claim 8 is obvious as a matter of law because the Neonode N1 QuickStart
Guide and a video and paper by Plaisant together disclosed all the limitations in claim 8. Mot. at
16-17. Samsung cites Dr. Greenbergs testimony that the Neonode Guide discloses a portable
electronic phone with a touch-sensitive display with a left-to-right unlocking gesture, and that the
only claim element missing from the Neonode is a moving image accompanying the sweep gesture.
ECF No. 1717 at 1967-69; 1975; see also DX 342.013 (Neonode Guide describing how to right
sweep to unlock the phone). Dr. Greenberg also testified about the Plaisant paper, titled
Touchscreen Toggle Design, which describes touchscreens called toggles that switch state from
one state to another, things like on or off, and that could include things like lock to unlock. ECF
No. 1717 at 1969-70. He testified Plaisant described toggles that operate by sliding actions,
called sliders. Id. at 1971. Dr. Greenberg concluded that Plaisant filled the missing claim element
in the Neonode because Plaisant disclosed a sliding image that could be moved from one
predefined location to another to change the state of the device. Id. at 1970-72; 1975. Thus,
Dr. Greenberg testified that the combination disclosed all of the claim limitations. Id. at 1975-76.
Dr. Greenberg further concluded that the person of ordinary skill in the art would be highly
interested in both of them and would think it natural to combine these two because they both
deal with touch base systems, they both deal with user interfaces. They both talk about changing
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state . . . they both specifically describe how a sliding action is used to prevent accidental
activation. Id. at 1974. He reasoned that a person would think to implement sliders on a
touchscreen phone because that is just a very routine thing to think about in terms of interaction
design. Id. at 1974-75. Dr. Greenbergs testimony that the claim was invalid for obviousness
notwithstanding, the Court does not agree that Samsung presented clear and convincing evidence
of obviousness.

First, there was conflicting expert testimony on the question of whether the combination
disclosed all the claim elements. Apples expert, Dr. Cockburn, testified that although the Neonode
describes unlocking a mobile phone using a right sweep gesture, it fails to disclose several key
10
claim elements relating to an unlock image and its movement, including that there was no
11
predefined location corresponding to an unlock image, no continuous movement of an unlock
12
image, no unlocking the device if the image is moved from one location to another, and no
13
visual cues communicating the direction of movement since theres no image to move. ECF No.
14
1926 at 2864-65. He also testified that Plaisant, which describes a touchscreen user interface for
15
turning on and off home appliance systems, fails to supply these missing claim elements because
16
Plaisant does not disclose using an unlock image to unlock a portable electronic device. Id. at
17
2865-67; DX 344 (Plaisant paper noting that the research was conducted in collaboration with a
18
group whose focus is on providing state-of-the-art systems that are easy for the homeowner to
19
use.). Where, as here, the parties offered conflicting expert testimony, the jury was free to make
20
credibility determinations[.] Kinetic, 688 F.3d at 1362 (citation omitted). In light of the jurys
21
validity finding, the Court must infer that the jury found [Dr. Cockburn] to be credible and
22
persuasive when testifying that the prior art, even when combined, did not disclose all claim
23
elements. Id.
24
Second, Dr. Cockburn testified, contrary to Dr. Greenberg, that a person of ordinary skill in
25
the art would not have been motivated to combine the Neonode and Plaisant in such a way as to
26
invent claim 8. ECF No. 1926 at 2866. He provided two reasons. First, Plaisant described toggle
27
designs intended to be used with a touch screen [that] would be mounted into a wall or into
28
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cabinetry for controlling office or home appliances, like air conditioning units or heaters. Id. at
2865. A reasonable jury could infer from this testimony that an ordinary artisan would not have
been motivated to combine elements from a wall-mounted touchscreen for home appliances and a
smartphone, particularly in view of the pocket dialing problem specific to mobile devices that
Apples invention sought to address. See ECF No. 1623 at 636.
Additionally, Dr. Cockburn explained that Plaisant teach[es] away from the use of
sliding, because it tells you not to use the sliding [toggle] mechanism. ECF No. 1926 at 2865-
66. What a piece of prior art teaches and motivation to combine prior art are both questions of fact.
Cheese Sys. Inc. v. Tetra Pak Cheese & Powder Sys. Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
10
A reference may be said to teach away when a person of ordinary skill, upon reading the
11
reference, would be discouraged from following the path set out in the reference, or would be led
12
in a direction divergent from the path that was taken by the applicant. In re Kahn, 441 F.3d 977,
13
990 (Fed. Cir. 2006) (citation omitted). Here, Dr. Cockburn explained that Plaisant teaches that
14
sliders were not preferred among the toggle mechanisms, and tells us that toggles that are
15
pushed seem to be preferred over toggles that slide; and the sliding is more complex than simply
16
touching; and also that sliders are harder to implement. ECF No. 1926 at 2866. Dr. Greenberg
17
disputed this point, and testified that Plaisant teaches that the sliding toggles worked and noted
18
how Plaisant states that the fact that user[s] use [sliders] correctly is encouraging. ECF No. 1717
19
at 1972-73.
20
The Court notes that there is language in Plaisant to arguably support either experts
21
interpretation concerning whether Plaisant teaches away from the use of sliders. This is because
22
Plaisant evaluates the pros and cons of various types of toggles used to change the state of a
23
device and concludes generally that the evaluation of the toggles showed some important
24
differences in personal preferences. DX 344.002. More specifically, on the one hand, Plaisant
25
states that toggles that are pushed seemed to be preferred over the toggles that slide, sliding is a
26
more complex task than simply touching, and sliders are more difficult to implement than
27
buttons[.] DX 344.002. On the other hand, Plaisant seems to encourage the use of sliders by
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noting that users used sliding motions successfully to manipulate the sliding toggles, by noting
that the fact that user[s] use [sliders] correctly is encouraging, and by noting that another
advantage of the sliding movement is that it is less likely to be done inadvertently therefore making
the toggle very secure[.] This advantage can be pushed further and controls can be designed to be
very secure by requiring more complex gestures[.] DX 344.002.

As noted above, what a piece of prior art teaches is a question of fact for the jury. The
Court concludes that in light of Dr. Cockburns testimony and the language in Plaisant suggesting
Plaisant taught away from sliders, the jurys implied finding of fact that there would have been no
motivation to combine the Neonode and Plaisant was supported by substantial evidence in the
10
record. See Teleflex, Inc., v. Ficosa N. Am. Corp., 299 F.3d 1313, 1334 (Fed. Cir. 2002) (holding
11
that expert testimony of a lack of motivation to combine . . . constitutes substantial evidence of
12
nonobviousness); Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1304 (Fed. Cir. 2005)
13
(reversing judgment as a matter of law of obviousness in view of conflicting expert testimony on
14
motivation to combine); Harris Corp. v. Fed. Express Corp., 502 Fed. Appx. 957, 968 (Fed. Cir.
15
2013) (unpublished) (affirming denial of motion for judgment as a matter of law of obviousness
16
where there was conflicting evidence regarding whether prior art taught away from the invention
17
because the prior art also included certain facts that might have discouraged an artisan from using
18
[the] spread spectrum.).
19
Finally, the jurys validity finding means the jury implicitly rejected Samsungs claim that
20
there were no secondary indicia of non-obviousness. This finding is supported by substantial
21
evidence including industry praise specifically for Apples slide to unlock invention. See PX 118
22
(January 2007 MacWorld video featuring Steve Jobs live demonstration of slide to unlock on the
23
iPhone to an audience that began cheering). Apple also introduced various Samsung internal
24
documents noting how Apples slide to unlock feature is precise, easy to use, and intuitive. See PX
25
119 at 11 (presentation prepared by Samsungs European design team in June 2009 calling Apples
26
slide to unlock invention a [c]reative way[] of solving UI complexity.); PX 121 at 100 (Samsung
27
software verification group document noting that unlike Samsungs victory phone, iPhones
28
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unlocking standard is precise as it is handled through sliding, and it allows prevention of any
wrong motion, and recommending a direction of improvement to make it the same as iPhone,
clarify the unlocking standard by sliding); PX 157 at 19-20 (Samsung document recommending to
improve Samsung phone by making it like the iPhone which is easy to unlock, [given that] lock
screen always shows guide text or arrow like the iPhone and to make the lock icons movement
be smooth and continuous like the iPhone); PX 219 at 14 (Samsung document noting that the
iPhone intuitively indicate[s] the direction and length to move when unlocking on the lock
screen); ECF No. 1623 at 638-50 (Dr. Cockburn testimony that these various Samsung documents
recognized the advantages of claim 8); Power-One, Inc. v. Artesyn Techs, Inc., 599 F.3d 1343,
10
1352 (Fed. Cir. 2010) (noting that praise in the industry, and specifically praise from a competitor
11
tends to indicate that the invention was not obvious).
12
Furthermore, Apple introduced evidence of a long-felt need for its invention. See ECF No.
13
1623 at 636-37 (Dr. Cockburns testimony that phone designers had been trying to solve the
14
problem of accidental activation and the pocket dial problem before the iPhone existed, but had
15
only come up with frustrat[ing] solutions); ECF No. 1926 at 2869 (explaining that there had not
16
been a good mechanism for unlocking for a long time.); ECF No. 1623 at 599, 603, 611 (Greg
17
Christie, Apples Human Interface Vice President, testifying about concerns over pocket-dial
18
problem). In light of this evidence, the Court must defer to the jurys implicit factual finding that
19
there were secondary indicia of non-obviousness. See Kinetic, 688 F.3d at 1356-57.
20
In light of the jurys factual findings, the Court concludes it would be error to fail[] to
21
defer to the jurys factual findings and grant[] JMOL on obviousness. Id. at 1371. Because there is
22
no clear and convincing evidence that it would have been obvious to bridge the gaps between the
23
prior art and claim 8, the Court DENIES Samsungs motion for judgment as a matter of law that
24
claim 8 of the 721 is invalid as obvious.
25
2.
Indefiniteness
26
Samsung argues that the 721 patent is indefinite as a matter of law because the claim term
27
unlock is indefinite. Mot. at 19. To be valid, claims must particularly point[] out and distinctly
28
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claim[] the subject matter which the applicant regards as the invention. 35 U.S.C. 112. The
purpose of this definiteness requirement is to ensure that the claims delineate the scope of the
invention using language that adequately notifies the public of the patentees right to exclude.
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (abrogated on
other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014)). [A]
patent is invalid for indefiniteness if its claims, read in light of the specification delineating the
patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art
about the scope of the invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124
(2014). The Supreme Court has noted that some modicum of uncertainty must be tolerated, given
10
the inherent limitations of language and because absolute precision is unattainable. Id. at 2128-
11
29. The Court DENIES Samsungs motion.
12
While Samsung contends that the term unlock is indefinite because there is insufficient
13
clarity as to what it means for a device to be locked versus unlocked, the specification provides
14
a definition that establishes when a device is locked and when it is unlocked:
15
16
17
18
19
20
21
22
23
24
25
26
27
In the user-interface lock state (hereinafter the lock state), the device is powered
on and operational but ignores most, if not all, user input. That is, the device takes
no action in response to user input and/or the device is prevented from performing a
predefined set of operations in response to the user input. . . .
In the user-interface unlock state (hereinafter the unlock state), the device is in its
normal operating state, detecting and responding to user input corresponding to
interaction with the user interface. . . . An unlocked device detects and responds to
user input for navigating between user interfaces, entry of data and activation or
deactivation of functions.
721 Patent col.7 l.64-col.8 l.45. The specification, therefore, provides guidance as to what it
means when the device is locked. According to the specification, when the device is locked it is
powered on and operational but ignores most, if not all, user input. Id. While Samsung claims it
is unclear what the phrase most, if not all means, the specification further describes what most,
if not all, user input means. According to the specification, the locked device responds to user
input corresponding to attempts to transition the device to the user-interface unlock state or
powering the device off, but does not respond to user input corresponding to attempts to navigate
28
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between user interfaces. Id. at 8:13-17. The specification later confirms that distinction between
unlocked state and a locked state when stating that an unlocked device detects and responds
to user input for navigating between user interfaces[.] Id. at 8:39-40. Accordingly, in light of these
explanations, the Court finds that the claim provides sufficient clarity as to the term unlock, and
that the term does not meet the standard of indefiniteness such that claim 8 as a whole fail[s] to
inform, with reasonable certainty, those skilled in the art about the scope of the invention.
Nautilus, 134 S. Ct. at 2124.
The trial record supports the Courts conclusion that Samsung has failed to prove
indefiniteness by clear and convincing evidence. While the Court acknowledges that discerning
10
whether a given device is in a locked or unlocked state might be difficult in certain
11
circumstances for the general public, the Supreme Court has noted that one must bear in mind []
12
that patents are not addressed to lawyers, or even to the public generally, but rather to those
13
skilled in the relevant art. Id. at 2128; see also Carnegie Steel Co. v. Cambria Iron Co., 185 U.S.
14
403, 437 (1902) (stating that any description which is sufficient to apprise [those skilled in] the art
15
of the definite feature of the invention, and to serve as a warning to others of what the patent claims
16
as a monopoly, is sufficiently definite to sustain the patent). Here, Dr. Cockburn, a person of at
17
least ordinary skill in the art, testified that he had no difficulty at all in understanding the
18
difference between a locked state and an unlocked state when he read claim 8. ECF No. 1623 at
19
634. He further testified that the the plain and ordinary meaning of the term is clear. Id. at 633.
20
Perhaps more convincingly, even Samsungs own expert, Dr. Greenberg, was able to explain when
21
a device will unlock when explaining the 721 patent and prior art to the jury. See ECF No. 1717
22
at 1968.
23
Accordingly, the Court finds that one of ordinary skill in the art could reasonably ascertain
24
the scope of claim 8. The Court accordingly DENIES Samsungs motion for judgment as a matter
25
of law that claim 8 of the 721 is invalid as indefinite.1
26
27
28
D.
Non-infringement of the 721 Patent
The Court notes that this Courts preliminary injunction order previously concluded that the term
unlock is not indefinite. ECF No. 221 at 52.
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The jury found that the Admire, Galaxy Nexus, and Stratosphere infringe claim 8 of the
721 patent. ECF No. 1884 at 5. Samsung moves for judgment as a matter of law that no
reasonable jury could find that these devices infringe the 721. Mot. at 19. The Court DENIES
Samsungs motion.
First, Samsung argues that no reasonable jury could find that the Galaxy Nexus infringes.
Samsung cites how claim 8 requires detecting a contact with the touch-sensitive display at a first
predefined location corresponding to an unlock image and continuously moving the unlock
image on the touch sensitive display in accordance with movement of the detected contact. 721
Patent cols.19-20. Samsung argues that [t]he plain language thus requires that the image with
10
which the user makes contact be the same image that then moves with user contact. Mot. at 19
11
(emphasis added). Accordingly, Samsung argues that because the image with which the user
12
makes contact on the Galaxy Nexus devices a padlock in a circle disappears upon user contact
13
and is replaced by another, different image, this limitation of the claim is not met. Id. (emphasis in
14
original) (citing testimony from Dr. Greenberg that the Galaxy Nexus does not infringe because the
15
image has to be the same . . . it cant be different, ECF No. 1717 at 1980-81).2 Samsung
16
emphasizes that Apples own expert, Dr. Cockburn, admitted at trial that the image changes upon
17
user contact. Mot. at 20 (citing ECF No. 1623 at 740-42). Samsung is correct that Dr. Cockburn
18
testified that when the user contacts the unlock image in the Ice Cream Sandwich version of the
19
Galaxy Nexus, the image will animate, itll change its representation slightly and that in the
20
Jellybean version, the image changes slightly to a circle thats a spotlight onto [a series of]
21
dots. ECF No. 1623 at 676-78, 742; see also ECF No. 1926 at 2861.
22
However, the Court disagrees that no reasonable jury could find that the Galaxy Nexus
23
infringes claim 8. Because the Court did not construe the term unlock image, the jury had to
24
apply its plain and ordinary meaning, and was not obligated to accept Samsungs contention that an
25
unlock image must consist of the same, single image. The jurys implicit rejection of Samsungs
26
2
27
28
Dr. Greenberg testified that in the Ice Cream Sandwich version of the Galaxy Nexus, the new
image is a larger circle. ECF No. 1717 at 1981. In the Jelly Bean Version, the new image is a series
of dots. Id.
22
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argument is supported by substantial evidence. Dr. Cockburn testified that he did not agree with
Dr. Greenbergs view that the accused phones do not infringe simply because the unlock image
changes. See ECF No. 1623 at 678-79, 742 (interpreting claim 8 to allow multiple images, given
that the specification teaches that the visual representation of the unlock image can change and
explicitly states the unlock image may be animated); see also ECF No. 1926 at 2861. The jury
was free to weigh the experts testimony and determine for itself whether the Galaxy Nexus
contains an unlock image under the plain meaning of that term. Indeed, the reasonableness of the
jurys implicit finding that Dr. Cockburns interpretation of the claim was correct is demonstrated
by how this Court rejected precisely the same argument Samsung raises now in this Courts
10
preliminary injunction order in this case. Then, as now, Samsung argued that the term unlock
11
image must refer to the same single unlock image because the claims first refer to an unlock
12
image and later refer to the unlock image. Compare ECF No. 221 at 44, with Mot. at 19. The
13
Court rejected Samsungs proffered construction, concluding that Apples argument that unlock
14
image may refer to more than one image is also supported by the specification[,] [which] . . .
15
demonstrate[s] an unlock gesture corresponding to one of a plurality of unlock images, according
16
to some embodiments of the invention. ECF No. 221 at 45 (internal quotation marks and citations
17
omitted).
18
Nor is the Court convinced by Samsungs more specific argument that the Jelly Bean
19
version of the Galaxy Nexus cannot infringe because Apple did not present any evidence that the
20
second unlock imagewhich Dr. Greenberg testified is a series of dots, ECF No. 1717 at 1980-
21
81moves and thus the limitation that the unlock image continuously move in accordance with
22
the detected contact is not met. Mot. at 21; see ECF No. 1717 at 1981 (Dr. Greenbergs testimony
23
that the dots dont actually move at all. The only thing that happens is that individual dots get
24
brighter or dimmer.). The jury could have reasonably credited Dr. Cockburns testimony that the
25
second image was rather a circle thats a spotlight onto [a series of] dots. ECF No. 1623 at 742;
26
see also id. at 677. Dr. Cockburn testified that the continuously move element is met because the
27
spotlight effect on the dots moves in accordance with the users contact. ECF No. 1623 at 677;
28
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ECF No. 1926 at 2861. In support, Dr. Cockburn showed the jury PDX 46, a demonstrative of the
Galaxy Nexus which indeed shows a circle that is a spotlight effect on a series of dots moving in
accordance with the users contact. See ECF No. 1623 at 677. The demonstrative shows that,
contrary to Dr. Greenbergs opinion, the dots and the spotlight on them move in accordance with
the users contact. The jury could have confirmed Dr. Cockburns testimony and the movements
shown in PDX 46 by actually testing the slide to unlock feature in the Galaxy Nexus phones in
evidence. See JX 29 A-I.

Further, while Samsung contends Dr. Cockburn did not offer any evidence in support of his
contention that the unlock image in the Galaxy Nexus is a graphical interactive user interface
10
object that may change form, Mot. at 20, Dr. Cockburn did demonstrate how the unlock image
11
changes appearance by showing the jury demonstratives of representative Galaxy Nexus devices.
12
See ECF No. 1623 at 676-77 (showing PDX 44, PDX 46). The jury was free to confirm
13
Dr. Cockburns conclusions and demonstratives by testing the Galaxy Nexus phones in evidence.
14
See JX 29A-I.
15
Finally, the Court rejects Samsungs argument that judgment of non-infringement should be
16
granted as to the Admire, Galaxy Nexus, and Stratosphere because Apple offered no evidence of
17
any instructions required by claim 8. Mot. at 21 (citing 721 Patent cols.19-20). To the contrary,
18
the jury heard Dr. Cockburns expert testimony that because the accused phones are computing
19
devices, they necessarily had software, processors, [and] memory. ECF No. 1623 at 659; see also
20
id. at 630 ([S]oftware components are just a form of instructions); id. at 626 (Source code is the
21
set of instructions that are on a computing device that enable it to become operative in some way.
22
So the instructions to determine the behavior of the device, and thats software.).
23
In sum, because there is substantial evidence to support the jurys findings of infringement,
24
the Court DENIES Samsungs motion for judgment as a matter of law that the Admire, Galaxy
25
Nexus, and Stratosphere do not infringe claim 8.
26
E.
Willful Infringement of Claim 8 of the 721 Patent
27
28
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Samsung moves for judgment as a matter of law that Samsung did not willfully infringe
claim 8 of the 721 patent. Mot. at 21. To establish willfulness, a patentee must show by clear and
convincing evidence that the infringer acted despite an objectively high likelihood that its actions
constituted infringement of a valid patent. The state of mind of the accused infringer is not relevant
to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also
demonstrate that this objectively-defined risk . . . was either known or so obvious that it should
have been known to the accused infringer. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed.
Cir. 2007) (internal citation omitted). Thus, the willfulness inquiry is a two-prong analysis,
requiring an objective inquiry and a subjective inquiry. The objective inquiry is a question for the
10
Court, and the subjective inquiry is a question for the jury. Bard Peripheral Vascular, Inc. v. W.L.
11
Gore & Assocs., Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012). The objective inquiry requires a
12
showing of objective recklessness by the infringer. In re Seagate Tech., 497 F.3d at 1371; Bard,
13
682 F.3d at 1006 (Seagate also requires a threshold determination of objective recklessness.).
14
Here, the jury found that, as a subjective matter, Samsung willfully infringed the 721
15
patent. ECF No. 1884 at 7. Because both prongs must be established for the Court to make an
16
ultimate finding of willfulness, failure on the objective prong defeats a claim of willfulness.
17
Because the Court finds no objective willfulness for the reasons set forth below, the Court need not
18
consider whether the jurys finding of subjective willfulness was supported by substantial
19
evidence. See Apple, Inc. v. Samsung Elecs. Co., Ltd., 920 F. Supp. 2d 1079, 1108 (N.D. Cal. 2013)
20
(declining to examine whether the jurys finding on subjective willfulness was supported by
21
substantial evidence because the objective willfulness prong was not satisfied). The Court
22
GRANTS Samsungs motion.
23
As noted above, to establish objective willfulness, Apple must prove by clear and
24
convincing evidence that there was an objectively high likelihood that [Samsungs] actions
25
constituted infringement of a valid patent. Bard, 682 F.3d at 1005 (citing Seagate, 497 F.3d at
26
1371). If Samsung had an objectively reasonable defense to infringement, its infringement cannot
27
be said to be objectively willful, and objective willfulness fails as a matter of law. See Spine
28
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Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010) (The
objective prong of Seagate tends not to be met where an accused infringer relies on a reasonable
defense to a charge of infringement.); Bard, 682 F.3d at 1006 (objective willfulness determination
entails an objective assessment of potential defenses based on the risk presented by the patent.
Those defenses may include questions of infringement but also can be expected in almost every
case to entail questions of validity[.]). Samsungs defense is not reasonable if it is objectively
baseless. Id. at 1007-08. An objectively baseless defense is one which no reasonable litigant
could realistically expect [to] succe[ed] on the merits. Id. at 1007 (citation omitted).

The Court finds that Samsungs defense to infringement of claim 8 was not objectively
10
baseless. As a preliminary matter, as noted above, Dr. Cockburn and Dr. Greenberg had differing
11
opinions concerning whether Plaisant teaches away from the use of sliders and thus whether the
12
person of ordinary skill in the art would have a motivation to combine Plaisant and the Neonode.
13
This is not surprising in light of the fact that there is language in Plaisant to support either experts
14
interpretation. This is because Plaisant evaluates the pros and cons of various types of toggles
15
used to change the state of a device and concludes generally that the evaluation of the toggles
16
showed some important differences in personal preferences. DX 344.002. On the one hand,
17
Plaisant states that toggles that are pushed seemed to be preferred over the toggles that slide,
18
sliding is a more complex task than simply touching, and sliders are more difficult to implement
19
than buttons[.] DX 344.002. On the other hand, Plaisant seems to encourage the use of sliders by
20
noting that users used sliding motions successfully to manipulate the sliding toggles, by noting
21
that the fact that user[s] use [sliders] correctly is encouraging, and by noting that another
22
advantage of the sliding movement is that it is less likely to be done inadvertently therefore making
23
the toggle very secure[.] This advantage can be pushed further and controls can be designed to be
24
very secure by requiring more complex gestures[.] DX 344.002.
25
While Dr. Cockburn testified that there was no motivation to combine the two references,
26
Dr. Greenberg testified to the contrary, noting how Plaisant teaches that the sliding toggles
27
worked and how Plaisant states that the fact that user[s] use [sliders] correctly is encouraging.
28
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ECF No. 1717 at 1972-73. Based on Dr. Greenbergs testimony and the language in Plaisant
suggesting Plaisant encouraged use of sliders, the Court cannot find that Samsungs reliance on an
invalidity defense was objectively baseless. Further, a motivation to combine may come from the
nature of a problem to be solved, leading inventors to look to references relating to possible
solutions to that problem. Ruiz v. Found. Anchoring Sys., Inc., 357 F.3d 1270, 1276-77 (Fed. Cir.
2004) (citation omitted) ([B]ecause the prior art references address the narrow problem of
underpinning existing building foundations, a person seeking to solve that exact same problem
would consult the references and apply their teachings together.). Here, in light of Dr.
Greenbergs opinion and the language in the prior art references, the reasonable litigant could have
10
believed that the two references provided a motivation to combine by describing a similar solution
11
the use of sliding motions
to solve the problem of inadvertent activation in touchscreen devices.
12
See DX 344.002 (Plaisant suggesting sliding toggles are preferable for preventing inadvertent
13
activation in touchscreen devices: [A]nother advantage of the sliding movement is that it is less
14
likely to be done inadvertently therefore making the toggle very secure[.]); DX 342.013 (Neonode
15
citing a similar inadvertent activation problem in mobile phones and advocating a similar sliding
16
solution by stating, [T]o make sure no unintentional calls are made[,] . . . [s]weep right to unlock
17
your unit).
18
Apple argues Samsung had no reasonable invalidity defense because this Court previously
19
concluded at the preliminary injunction phase that Apple was likely to withstand Samsungs
20
obviousness challenge to the validity of the 721 patent. Oppn at 22-23 (citing ECF No. 221 at
21
51). However, the Court finds that its prior conclusion at the preliminary injunction stage does not
22
render Samsungs reliance on its invalidity defense objectively baseless. At the preliminary
23
injunction stage, Samsung failed to show that the Neonode qualified as a prior art reference, and
24
accordingly the Court disregarded the Neonode in its invalidity analysis. ECF No. 221 at 50.
25
Further, the Court noted that Samsungs prior expert failed to identify any reason to combine
26
Plaisant with a handheld device. Id. at 50-51. Here, in contrast, there is no dispute that the
27
Neonode is a prior art reference, and Samsungs expert Dr. Greenberg has provided a reason to
28
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combine Plaisant and the Neonode. See ECF No. 1717 at 1974. Thus, the Court finds that its prior
conclusion at the preliminary injunction stage does not render Samsungs reliance on its invalidity
defense based on the Neonode and Plaisant objectively baseless.

Further, while Apple argues that the U.S. Patent and Trademark Office (PTO) considered
the Neonode and Plaisant yet still issued claim 8, Oppn at 22, the PTOs determinations are not
dispositive because the Federal Circuit has found no objective willfulness even where a
defendants invalidity defense was based on a prior art reference that was before the PTO and the
PTO found the prior art reference did not invalidate the claim. See, e.g., Spine Solutions, 620 F.3d
at 1319-20 (reversing district courts denial of defendants motion for judgment as a matter of law
10
of no willfulness because defendant had an objectively reasonable invalidity defense based on two
11
prior art references, irrespective of the fact that the PTO had the two prior art references before it
12
when issuing the patent); Univ. of Pittsburgh of Commonwealth Sys. of Higher Educ. v. Varian
13
Med. Sys., Inc., 561 Fed. Appx. 934, 943-45 (Fed. Cir. 2014) (unpublished) (reversing district
14
courts finding that defendants invalidity defense was objectively unreasonable, despite
15
acknowledging that the PTO had found that the prior art the defendant relied upon did not
16
invalidate the asserted claims when reexamining the patent).
17
In sum, Samsungs infringement of the 721 patent was not objectively willful because
18
Samsungs invalidity defense was not objectively baseless. Accordingly, Apple has not met its
19
burden to show clear and convincing evidence that Samsung acted despite an objectively high
20
likelihood that its actions would infringe a valid patent. Samsungs motion for judgment as a matter
21
of law that its infringement of the 721 patent was not willful is GRANTED.
22
F.
23
Samsung moves for judgment as a matter of law that no reasonable jury could find claim 18
Invalidity of the 172 Patent
24
of the 172 patent not invalid. Mot. at 25-26. Claim 18 of the 172 patent covers a particular form
25
of text correction, in which a current character string is displayed in a first and second area of a
26
touch screen display. JX 13. The user can replace a mistyped word (i.e., the current character
27
string) by selecting a delimiter or selecting a replacement word in the second area. Id. The user
28
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can also keep the current character string by selecting it in the second area. Id. The jury found
claim 18 of the 172 patent not invalid. Samsung claims that a combination of two prior art
references, U.S. Patent No. 7,880,730 (Robinson) and International Publication No. WO
2005/008899 A1 (Xrgomics), render claim 18 obvious. Below, the Court first examines whether
substantial evidence supported the jurys underlying factual conclusions that there was a significant
gap between the prior art and the patent and that there were secondary indicia of non-obviousness.
The Court DENIES Samsungs motion.
First, the Court notes that there was conflicting expert testimony on the question of
obviousness. Samsungs expert, Dr. Wigdor, testified that Robinson disclosed every limitation of
10
claim 18 except for onethat the current character string [appear] in the first area. ECF No. 1717
11
at 2015-17; 2023-24. Wigdor testified that Xrgomics disclosed that limitation by including the
12
current character string in the first area, and that the person of ordinary skill in the art would
13
combine Robinson and Xrgomics to fill the missing element in Robinson. Id. at 2018-19; 2023-24.
14
However, Apples expert, Dr. Cockburn, testified that Robinson missed several limitations
15
of claim 18 in addition to the current character string in the first area limitation. ECF No. 1927 at
16
2903-05. For instance, Robinson missed the limitation that the current character string in the first
17
area is replaced with the suggested replacement string when the user presses a delimiter. Id. at
18
2905. Dr. Cockburn further testified that Xrgomics, though it discloses the current character string
19
in the first area limitation, id. at 2905, similarly does not disclose the limitation that the current
20
character string in the first area is replaced with the suggested replacement string when the user
21
presses a delimiter because Xrgomics offers alternative words that complete the current character
22
string in the first area rather than correct that current character string. Id. at 2904-05 (testifying that
23
Xrgomics is a word completion patent, not a spelling correction patent and that theres no
24
correction going on in Xrgomics because Xrgomics just adds letters to the end of the current
25
character string i.e., it offers alternative words that complete that word). Finally, contrary to what
26
Dr. Wigdor testified, Dr. Cockburn opined that the combination of Robinson and Xrgomics did not
27
disclose the elements of claim 18 and did not render claim 18 obvious because Xrgomics did not
28
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fill th[e] gaps in Robinson. Id. Based on this conflicting expert testimony, the jury was free to
make credibility determinations and believe the witness it considers more trustworthy. Kinetic,
688 F.3d at 1362 (citation omitted). The jurys finding of validity indicates that the jury made an
implied finding of fact affirming Dr. Cockburns testimony that Robinson and Xrgomics did not
disclose all the elements of claim 18 and rejecting Dr. Wigdors opinion of obviousness. Id. at
1363 ([W]hether the prior art discloses the limitations of a particular claim is a question of fact to
be determined by the jury.). In other words, the jury implicitly rejected Samsungs argument that
it would be obvious to combine two thingsthe current character string in the first area feature in
Xrgomics and Robinsons feature of having a suggested replacement string in the second areain
10
order to come up with claim 18s limitation that the current character string in the first area is
11
replaced with the suggested replacement string when the user presses a delimiter. Mot. at 27. The
12
Court must give that finding deference. Kinetic, 688 F.3d at 1356-57. Crediting Dr. Cockburns
13
testimony over Dr. Wigdors, the Court cannot say that the jurys implied finding that the gap
14
between the prior art and claim 18 was significant was not supported by substantial evidence.
15
Second, the jurys finding of non-obviousness means the jury implicitly rejected Samsungs
16
claim, and Dr. Wigdors testimony, that there were no secondary indicia of non-obviousness. ECF
17
No. 1717 at 2024; Mot. at 28. The Court must defer to this implicit factual finding. See Kinetic,
18
688 F.3d at 1356-57. Apple cites substantial evidence to support the jurys finding, including
19
Dr. Cockburns testimony that there was industry praise for claim 18 as illustrated in Samsungs
20
internal documents and comments from carriers that they want . . . the claim 18 mechanism. ECF
21
No. 1927 at 2906; ECF No. 1623 at 698-700 (discussing PX 168, a Samsung internal document
22
reflecting T-Mobiles request that Samsung modify its autocorrect technology to adopt the
23
functionality of claim 18).3
24
25
26
27
28
Samsung has directed the Court to the PTOs recent non-final rejection of claim 18 in an ex parte
reexamination. See ECF No. 1951. However, this preliminary decision does not affect the outcome
here. The Federal Circuit has noted that initial rejections by the PTO are generally entitled to
minimal weight. Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1584 (Fed. Cir. 1996)
(noting that non-final office actions are so commonplace that they hardly justif[y] a good faith
belief in the invalidity of the claims for willfulness purposes) (citation omitted); see also id. at
1584 (stating that a grant of a request for reexamination does not establish a likelihood of patent
invalidity); Q.G. Prods. v. Shorty, Inc., 992 F.2d 1211, 1213 (Fed. Cir. 1993) (noting that initial
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1
2
convincing evidence that it would have been obvious, as a matter of law, to bridge the gaps
between the prior art and claim 18. Accordingly, the Court DENIES Samsungs motion for
judgment as a matter of law that claim 18 of the 172 patent is invalid.
G.
The jury determined that asserted claim 25 of Apples 959 patent was not invalid. See ECF
7
8
9
10
In light of the jurys factual findings, this Court cannot conclude that there is clear and
11
12
13
14
No. 1884 at 7. Claim 25 depends from claim 24 and recites:

24. A computer readable medium for locating information from a plurality of
locations containing program instructions to:
receive an information identifier;
provide said information identifier to a plurality of heuristics to locate information
in the plurality of locations which include the Internet and local storage
media;
determine at least one candidate item of information based upon the plurality of
heuristics; and
display a representation of said candidate item of information.
25. The computer readable medium of claim 24, wherein the information identifier
is applied separately to each heuristic.
959 Patent cls. 24, 25. Samsung moves for judgment as a matter of law that claim 25 is invalid,
15
based on three grounds: (1) anticipation, (2) obviousness, and (3) indefiniteness. The Court
16
addresses each basis in turn and DENIES Samsungs motion.
17
18
1.
Anticipation
First, Samsung contends that the WAIS reference anticipates claim 25. A patent claim is
19
invalid for anticipation under 35 U.S.C. 102 if each and every limitation is found either
20
expressly or inherently in a single prior art reference. Bristol-Myers Squibb Co. v. Ben Venue
21
Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001). Whether a patent is anticipated is a question of
22
23
24
25
26
27
28
patent rejections often occur as a part of the normal application process); Minemyer v. B Roc
Reps., Inc., 2012 WL 346621, at *4 (N.D. Ill. Feb. 2, 2012) (The cases are virtually uniform in
holding that office actions at the PTO are not relevant on the question of patent invalidity or willful
infringement. . . . The cases recognize that interim acceptances, rejections and adjustments are the
norm at the PTO.). Accordingly, the Court does not find that the PTOs non-final office action is a
sufficient basis for overturning the jury verdict.
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fact. Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1297 (Fed. Cir. 2010).
Anticipation must be shown by clear and convincing evidence. Id. at 1292.4
At trial, Samsung relied on software called freeWAIS-sf 2.0 (DX 301, the WAIS
reference) as alleged prior art, and presented testimony from three witnesses supposedly showing
that the software qualified as prior art and disclosed all limitations of claim 25. WAIS is an
acronym for Wide Area Information Server. Tr. at 1845:18-21. Samsung first called Brewster
Kahle, founder of the Internet Archive, to testify that he conceived of the WAIS project as a system
that could basically search your own hard drive, your own personal computer of e-mail and
memos or, or presentations and the like. Id. at 1845:3-5, 1846:4-16, 1853:21-25. Next, Samsung
10
called Ulrich Pfeifer to explain that he developed the freeWAIS-sf software in the mid-1990s, and
11
that WAIS was a program to search documents and your local computer or by the web. Id. at
12
1863:4-16; see also id. at 1863:18-23, 1865:17-21 (stating that freeWAIS-sf was available online).
13
Finally, Samsung relied on Dr. Martin Rinard for expert opinions that the WAIS reference
14
disclosed various limitations of claim 25, including the use of a heuristic ranking algorithm. Id.
15
at 1915:21-1916:16.
16
Despite Samsungs presentation, the jury had multiple bases from which to conclude that
17
Samsung failed to demonstrate with clear and convincing evidence that claim 25 was invalid.
18
Dr. Rinard expressly relied on the software distribution that contains the source code for WAIS.
19
Tr. at 1914:6-9; see also id. at 2915:11-15. Through its expert Dr. Alex Snoeren, Apple introduced
20
testimony that freeWAIS-sf did not contain program instructions as required by claim 25 because
21
it contained only source code, not an executable program. Dr. Snoeren told the jury that the way
22
source code works is thats for humans to read and write. Computers dont actually execute source
23
code. So in order to get program instructions, you have to compile that code. So the source code
24
itself wouldnt actually even meet the preamble of the claim. Id. at 2824:7-21. Samsung states
25
incorrectly that Dr. Snoeren contradicted himself by relying on source code for his infringement
26
opinions. Dr. Snoeren analyzed source code in the accused products, see id. at 950:12-21, but also
27
28
The Court previously denied Apples motion for summary judgment of no invalidity of claim 25.
See ECF No. 1151 at 27-29.
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explained that the accused devices had flash memory containing program instructions, id. at
949:12-18, and there was no dispute that the accused Samsung devices had compiled code.
Moreover, the parties did not request claim construction of program instructions. In Versata
Software, Inc. v. SAP America, Inc., the Federal Circuit addressed a similar situation, where the
parties did not request construction of computer instructions, and held that [w]hether computer
instructions can include source code thus becomes a pure factual issue. 717 F.3d 1255, 1262
(Fed. Cir. 2013). While the Versata jury concluded that the disputed source code did constitute
computer instructions, the jury here was free to reach the opposite conclusion from the
conflicting expert testimony.

10
Dr. Snoeren also opined that freeWAIS-sf did not teach the limitation of plurality of
11
heuristics to locate information in the plurality of locations. Regarding plurality of heuristics,
12
Dr. Snoeren critiqued Dr. Rinards demonstration because it repeated the same heuristic on
13
multiple computers, so what we have here is two copies of the same heuristic, such that [w]e
14
dont have a plurality of heuristics. Tr. at 2823:7-2824:6. Regarding plurality of locations,
15
Dr. Snoeren also testified that the WAIS source code did not show searching on the Internet, only
16
on a local server and a server on another machine. Id. at 2825:7-19. On these points, the jury
17
could reasonably have credited Apples expert evidence over Samsungs.
18
Additionally, Apple called into question whether WAIS qualified as prior art. Samsung
19
relied on the WAIS reference being known or used in the United States prior to the 959 patents
20
priority date. See 35 U.S.C. 102(a) (2006). Dr. Rinard admitted that he did not know of any
21
actual computers in the United States that ran freeWAIS-sf before the 959 patents priority date of
22
January 5, 2000. See Tr. at 1953:8-25. On cross-examination, Mr. Pfeifer (the developer of
23
freeWAIS-sf) also equivocated as to whether freeWAIS-sf was available from servers in the United
24
States, or only in four countries abroad, before the 959 patents priority date. See id. at 1870:9-21
25
(I would not want to rule out that I put one copy of, or fetched one copy from the United States.).
26
Mr. Pfeifer was also unable to confirm the configuration of any freeWAIS-sf systems that allegedly
27
28
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existed prior to January 5, 2000. See id. at 1871:3-1872:14. Accordingly, the jury could have
reasonably determined that Samsung failed to show that WAIS qualified as prior art.

2.
Obviousness
Second, Samsung contends that claim 25 would have been obvious as a matter of law,
based on a combination of Smith (JX 55, U.S. Patent No. 7,653,614) and Shoham (JX 56, U.S.
Patent No. 5,855,015). As noted above, obviousness is a question of law, but requires the court to
presume that the jury resolved the underlying factual disputes in favor of the verdict [] and leave
those presumed findings undisturbed if they are supported by substantial evidence. Kinetic, 688
F.3d at 1356-57 (citation and quotation omitted). At trial, Dr. Rinard opined that Smith is another
10
example of universal search employing heuristics, Tr. at 1930:2-10, that Shoham used
11
conventional heuristic search, id. at 1931:19-23, and that those skilled in the art would have been
12
motivated to combine the two, id. at 1931:24-1932:5. Dr. Rinard also briefly touched on secondary
13
considerations of non-obviousness, claiming that there was no commercial success or copying. See
14
id. at 1932:16-1933:9.
15
However, Dr. Rinards obviousness analysis was cursory, without substantive analysis of
16
the disclosures of Smith or Shoham, or a limitation-by-limitation analysis of claim 25. See
17
generally id. at 1929:9-1933:9. Dr. Snoeren provided greater testimony about the contents of Smith
18
and Shoham, opining that there would have been no reason to combine Smith (a patent for a fancy
19
set top box or table box) with Shoham (a very theoretical mathematical patent), and that such a
20
combination would not have disclosed all elements of claim 25. Id. at 2827:4-25. In light of this
21
conflicting testimony, the jury was entitled to assess the experts credibility on these issues. See
22
Kinetic, 688 F.3d at 1362. Thus, the jury could have determined that Smith and Shoham failed to
23
teach the elements of claim 25, and that there would have been no reason to combine those
24
references. Based on those implied findings, the Court cannot conclude as a matter of law that
25
claim 25 would have been obvious.
26
27
Samsung asserts that Dr. Snoerens failure to give a point-by-point response to

Dr. Rinard or address secondary considerations renders Dr. Snoerens opinions flawed as a matter
28
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of law such that they cannot be considered in evaluating obviousness. Mot. at 32. These
arguments distort the ultimate burden of proof on obviousness. See Novo Nordisk A/S v. Caraco
Pharm. Labs., Ltd., 719 F.3d 1346, 1353 (Fed. Cir. 2013) (noting that the burden of persuasion
remains with the challenger during litigation for obviousness).
Indefiniteness
As noted above, the Supreme Court decided Nautilus on June 2, 2014 (after Samsung filed
its current motion) and held that indefiniteness turns on whether claims define the invention with
reasonable certainty. 134 S. Ct. at 2124. Samsung now argues that the term heuristic in the 959
patent is indefinite as a matter of law under this new standard.
10
3.
During summary judgment proceedings, the Court denied Samsungs motion for judgment
11
that the term heuristic in the 959 patent was indefinite under the now-overruled insolubly
12
ambiguous standard, but noted: Samsung remains free to raise the issue of indefiniteness again
13
should the term heuristic become central to Apples attempts to distinguish the 959 Patent from
14
any prior art Samsung asserts at trial. ECF No. 1151 at 33 n.11. The parties now dispute whether
15
Apple in fact tried to distinguish the prior art at trial on the basis of heuristic. Samsung contends
16
that Apple relied exclusively on this term to rebut invalidity, while Apple argues that it relied only
17
on plurality of heuristics, not the definition of heuristic itself. Without deciding this issue, and
18
for purposes of this motion, the Court addresses Samsungs indefiniteness arguments under the
19
intervening Nautilus decision. The Court determines that Samsung has not shown by clear and
20
convincing evidence that heuristic is indefinite.
21
The Court previously addressed the meaning of heuristic. In resolving Apples motion for
22
a preliminary injunction, the Court construed the similar term heuristic algorithm in U.S. Patent
23
No. 8,086,604 (which is related to the 959 patent and shares a common specification), based on
24
that patents specification, prosecution history, and extrinsic evidence from the parties. See ECF
25
No. 221 at 15-19. On appeal, when addressing the preliminary injunction in this case, the Federal
26
Circuit reversed other aspects of this Courts claim construction, but did not disturb the
27
construction of heuristic algorithm. See Apple, Inc. v. Samsung Elecs. Co., Ltd., 695 F.3d 1370,
28
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1378-80 (Fed. Cir. 2012). Although indefiniteness was not an issue in the appeal and the Federal
Circuits analysis preceded Nautilus, the Federal Circuits analysis may be some indication that
heuristic is not indefinite and has a reasonably certain meaning.
Later, at the summary judgment stage, the Court further addressed the meaning of
heuristic. Without objection from the parties, the Court construed heuristic in the 959 patent
consistently with its prior construction of heuristic algorithm, to mean: some rule of thumb
that does not consist solely of constraint satisfaction parameters. ECF No. 1151 at 31. As noted
above, the Court rejected Samsungs indefiniteness arguments in Samsungs summary judgment
motion. The Court distinguished heuristic from other terms held to be indefinite
such as
10
fragile gel in Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008)
11
because neither the term heuristic nor the Courts construction of it involves a word of degree,
12
pure functional language, or other danger sign that typically triggers indefiniteness concerns. ECF
13
No. 1151 at 32.
14
Furthermore, both Dr. Rinard and Dr. Snoeren applied the term heuristic under this
15
Courts construction to the accused Samsung devices and the asserted prior art without difficulty.
16
See Tr. at 1915:21-1916:16 (Rinard discussing how WAIS implement[s] a rule of thumb), 954:1-
17
17 (Snoeren identifying accused code that actually explains how the rule of thumb works). Other
18
than conclusory allegations that the term is ill-defined, Samsung provides no clear and
19
convincing evidence for holding that heuristic is indefinite. See Reply at 17-18; cf. Bluestone
20
Innovations LLC v. Nichia Corp., No. 12-CV-00059-SI, 2014 U.S. Dist. LEXIS 87182, at *36
21
(N.D. Cal. June 24, 2014) (Defendants have failed to provide the Court with any evidence
22
showing that someone skilled in the relevant art would be unable to ascertain the scope of claim 9
23
with reasonable certainty.). Accordingly, the Court DENIES Samsungs indefiniteness challenge
24
to the 959 patent.
25
H.
26
The jury also determined that asserted claim 20 of Apples 414 patent was not invalid. See
27
ECF No. 1884 at 7. Claim 20 depends from claim 11 and recites:
28
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1
2
3
4
5
6
7
8

11. A computer readable storage medium containing executable program

instructions which when executed cause a data processing system to perform
a method comprising:
executing at least one user-level non-synchronization processing thread, wherein the
at least one user-level non-synchronization processing thread is provided by
a user application which provides a user interface to allow a user to access
and edit structured data in a first store associated with a first database; and
executing at least one synchronization processing thread concurrently with the
executing of the at least one user-level non-synchronization processing
thread, wherein the at least one synchronization processing thread is
provided by a synchronization software component which is configured to
synchronize the structured data from the first database with the structured
data from a second database.
20. The storage medium as in claim 11 wherein the synchronization software
component is configured to synchronize structured data of a first data class
and other synchronization software components are configured to
synchronize structured data of other corresponding data classes.
10
414 Patent cls. 11, 20. Samsung now seeks judgment as a matter of law that claim 20 is invalid for
11
anticipation. The Court determines that substantial evidence supports the verdict, and DENIES
12
Samsungs motion.
13
Samsung asserts that Windows Mobile 5.0, a system from Microsoft that runs on wireless
14
devices (Tr. at 2184:16-21), disclosed all elements of claim 20. To explain how Windows Mobile
15
5.0 operated, Samsungs expert for the 414 patent, Dr. Jeffrey Chase, relied on the following
16
diagram from an exhibit entitled Exchange ActiveSync and Exchange 2003:
17
18
19
20
21
22
23
24
25
26
27
28
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DX 317 at 2; see also SDX 3648; SDX 3653. Dr. Chase testified that Windows Mobile 5.0 had
components called Providers for e-mail, contacts, and calendar that provide the synchronization
processes threads I spoke about. Tr. at 2193:9-20. The parties raise several disputes regarding the
limitation of wherein the at least one synchronization processing thread is provided by a
synchronization software component.

1.
provided by
First, Samsung argues that Apple distorted the plain meaning of provided by when it
argued that a synchronization software component must create a thread. This argument is not
persuasive. Samsung relies on testimony from one of the 414 patents named inventors, Gordon
10
Freeman, who said that a thread would be provided by a component if the component would
11
have executing code and that executing code must execute in a thread. Tr. at 2854:9-19. However,
12
the Federal Circuit has held that inventor testimony as to the inventors subjective intent is
13
irrelevant to the issue of claim construction. Howmedica Osteonics Corp. v. Wright Med. Tech.,
14
Inc., 540 F.3d 1337, 1347 (Fed. Cir. 2008). Samsung did not request claim construction of
15
provided by and agrees that the jury was entitled to rely on the plain and ordinary meaning of the
16
term. See Reply at 19.
17
The jury heard testimony from Dr. Snoeren that a software component does not provide a
18
thread unless it creates one: Q. Are you saying that providing a thread is the same thing as
19
creating a thread, sir? Yes or no? A. Yes, sir. Ive said that, and Ill say it again. Tr. at 2855:7-9.
20
Moreover, Samsung made this argument when seeking summary judgment of invalidity, and the
21
Court rejected it, concluding that Samsung has not established that a reasonable jury would
22
necessarily find that a synchronization software component that execute[s] on or provid[es] the
23
instructions for a thread discloses the claim limitation that the component provide[] the thread
24
itself. ECF No. 1151 at 24-25. Thus, Samsungs post-trial attempt to dispute the meaning of
25
provided by is misplaced. See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1320-21
26
(Fed. Cir. 2003) ([I]t is too late at the JMOL stage to argue for or adopt a new and more detailed
27
28
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interpretation of the claim language and test the jury verdict by that new and more detailed
interpretation.).

Moreover, in opposing Apples motion for judgment as a matter of law of infringement of
the 414 patent, Samsung takes a contrary position about revisiting claim construction, in
connection with the limitation of configured to synchronize structured data. In opposing Apples
motion, Samsung argues that the jury was entitled to determine that configured to synchronize
requires that the software component perform the synchronization directly, not cause another
component to do so indirectly. See ECF No. 1906 at 6-7. Yet in Samsungs motion, Samsung
contends that the jury was not entitled to determine that provided by requires direct causation.
10
See Mot. at 37. Samsungs conflicting positions underscore the Federal Circuits prohibition
11
against arguing for a new claim construction at the post-trial stage. It is too late for Samsung to
12
propose a new construction of provided by.
13
14
2.
at least one synchronization processing thread
Second, Samsung argues that even under Apples view of provided by, Windows Mobile
15
5.0 clearly disclosed at least one synchronization processing thread created by a synchronization
16
software component. In addition to the E-mail, Contacts, and Calendar Providers shown in
17
DX 317, Samsung claims that Windows Mobile 5.0 also included an IMAP Mail component. Id.
18
at 36. Samsung asserts that this IMAP Mail component satisfies the requirements of claim 20
19
because this component was configured to synchronize structured data and created a
20
synchronization processing thread. Under Samsungs theory, even if the E-mail, Contacts, and
21
Calendar components did not create threads, the IMAP Mail component did so, and claim 20
22
requires only one such thread. See id.
23
Apple contests Samsungs theory about the IMAP Mail component. Apple claims that this
24
is an entirely new invalidity argument that was not presented to the jury. Oppn at 35. Apple is
25
incorrect. During trial, Dr. Chase testified that in addition to the three Provider components (E-
26
mail, Contacts, and Calendar), theres a fourth component here . . . there is in particular a
27
component called IMAP Mail component that can synchronize data with IMAP Mail servers. Tr.
28
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at 2193:21-2194:16, 2196:10-13; see also SDX 3650 (Samsung demonstrative identifying the
IMAP Mail Component). Under questioning by Apples counsel, Dr. Chase further testified that
The IMAP Mail component does create a thread, yes. Its a synchronization processing thread.
Id. at 2254:10-13. Thus, Apple cannot credibly claim surprise at this argument.
Alternatively, Apple argues that a reasonable jury could have concluded that this evidence
was not clear and convincing proof of anticipation. The Court agrees. While Dr. Chase referred to
the IMAP Mail component, his analysis was cursory. Of his testimony that Samsung cites in its
motion, only the portions above mention IMAP. When asked to identify three synchronization
software components (which claim 20 requires), Dr. Chase pointed only to three different classes,
10
E-mail, Contacts and Calendar, not the IMAP Mail component. Id. at 2195:9-14. Even if Dr.
11
Chase had presented the IMAP Mail component in greater detail, a jury may properly refuse to
12
credit even uncontradicted testimony. Guy v. City of San Diego, 608 F.3d 582, 588 (9th Cir.
13
2010). Although Dr. Snoeren did not discuss the IMAP Mail component specifically, he opined to
14
the jury that he found no software components in Windows Mobile 5.0 that provide a
15
synchronization processing thread: Q. So is there anywhere in Windows Mobile a software
16
component that is specific to a data class, such as E-mail, Contacts, or Calendar, and also provides
17
a thread to synchronize that data class? A. No, Maam, theres not. Id. at 2849:2-17. The
18
excerpted diagram from DX 317 also lacks any reference to IMAP. While this is a close question,
19
the Court must view the evidence in the light most favorable to the nonmoving party . . . and draw
20
all reasonable inferences in that partys favor, Go Daddy, 581 F.3d at 961, and Samsung bears the
21
ultimate burden of proving invalidity by clear and convincing evidence.
22
Here, Apple presented sufficient evidence for a reasonable jury to conclude that Windows
23
Mobile 5.0 did not disclose at least one synchronization processing thread is provided by a
24
synchronization software component because the relevant software components execute on pre-
25
existing threads provided by other components, and do not provide a thread themselves. Oppn at
26
33.5 Under cross-examination, Dr. Chase admitted that none of the E-mail, Contacts, and
27
28
The parties have previously stated that a thread is a series of steps that a computer process
needs to complete. ECF No. 1151 at 24 n.8.
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Calendar Providers that he identified in DX 317 creates a synchronization thread. See id. at
2254:4-21. Moreover, Apples expert Dr. Alex Snoeren disagreed with Dr. Chases infringement
opinion, based on independent review of the Windows Mobile 5.0 source code, and testified that no
software components in Windows Mobile 5.0 provide a thread. Id. at 2848:10-2849:17. Samsung
did not call Dr. Chase to rebut Dr. Snoerens validity opinions. Accordingly, the Court finds that a
reasonable jury could have found non-infringement on this basis.

Apple offers another alternative basis for confirming the verdict: that claim 20 requires
three synchronization software components, and that all three must provide a synchronization
processing thread. This argument is meritless because it contradicts the plain language of claim 20.
10
Independent claim 11 (from which claim 20 depends) recites at least one synchroniziation
11
processing thread that is provided by a synchronization software component. Apple posits that
12
claim 11 defines the characteristics of a synchronization software component. Oppn at 36. This
13
argument distorts the claim language. Claim 11 states that a component must provide at least
14
one thread, but does not say that any and all components must provide threads. Claim 20 further
15
requires at least two additional software components, but does not say that those additional
16
components must also provide threads. Therefore, this argument has no basis in the claim
17
language.
18
19
For the foregoing reasons, the Court concludes that the jurys verdict of no invalidity was
reasonable, and DENIES Samsungs motion.
20
I.
21
The Defendants in this case are three Samsung entities: the Samsung Korean parent
22
company, Samsung Electronics Corporation (SEC), and two United States subsidiaries, Samsung
23
Telecommunications America (STA) and Samsung Electronics America (SEA). ECF No. 1714
24
at 1047 (undisputed fact read to the jury that STA and SEA are subsidiaries of SEC). The jury
25
found SEC liable for direct infringement, inducing infringement, and contributory infringement
26
with respect to certain Samsung products and Apple patents.6 Samsung moves for judgment as a
27
28
SECs Liability for Indirect Infringement
This includes the following Samsung products for the 647 patent: Admire, Galaxy Nexus,
Galaxy Note, Galaxy Note II, Galaxy S II, Galaxy S II Epic 4G Touch, Galaxy S II Skyrocket,
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matter of law that SEC is not liable for indirect infringement for these products and patents, either
in the form of inducing infringement under 35 U.S.C. 271(b) or contributory infringement under
35 U.S.C. 271(c).7 The Court DENIES Samsungs motion.8

Patent law provides that whoever actively induces infringement of a patent shall be liable
as an infringer. 35 U.S.C. 271(b). A claim for actively inducing infringement requires scienter
and mens rea. Global Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Thus, to
prevail on an inducement claim, a patentee must show first that there has been direct
infringement, and second that the alleged infringer knowingly induced infringement and possessed
specific intent to encourage anothers infringement. Kyocera Wireless Corp. v. Intl Trade
10
Commn, 545 F.3d 1340, 1353 54 (Fed. Cir. 2008) (internal quotation marks and citation omitted);
11
accord DSU Med. Corp. v. JMS Co. Ltd., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc). [M]ere
12
knowledge of possible infringement by others does not amount to inducement; [rather,] specific
13
intent and action to induce infringement must be proven. DSU, 471 F.3d at 1305 (citation
14
omitted). Specific intent requires a showing that the alleged infringers actions induced infringing
15
acts and that he knew or should have known his actions would induce actual infringements. Id. at
16
1304 (citation omitted). While proof of intent is necessary, direct evidence is not required; rather,
17
circumstantial evidence may suffice. Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed.
18
Cir. 1988). The requisite intent to induce infringement may be inferred from all of the
19
circumstances. Id. at 669. There is no requirement that direct evidence be introduced, nor is a
20
jurys preference for circumstantial evidence over direct evidence unreasonable per se. Liquid
21
22
23
24
25
26
27
28
Galaxy S III, Stratosphere. ECF No. 1884 at 2, 6 (Amended Verdict Form). This also includes the
following products for the 721 patent: Admire, Galaxy Nexus, Stratosphere. Id. at 5, 6.
7
Apple accused SEC of inducing only STA, not SEA, to infringe the 647 and 721. ECF No. 1884
at 2, 5.
8
Samsung also argues that there can be no finding of indirect infringement given that there is no
liability for direct infringement by STA. Mot. at 38 (citing Dynacore Holdings Corp. v. U.S.
Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004), for the proposition that there can be a valid
finding of inducement and contributory infringement only if there is a predicate offense of direct
infringement). Because the Court rejects Samsungs motions for judgment as a matter of law of
non-infringement of the 721 and the 647, the Court rejects Samsungs argument that there is no
liability for direct infringement and thus only considers here Samsungs other argument that even
if there were direct infringement, there is no evidence to support the claims for indirect
infringement. Id.
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Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1219 (Fed. Cir. 2006). Moreover, [t]he drawing
of inferences, particularly in respect of an intent-implicating question . . . is peculiarly within the
province of the fact finder that observed the witnesses. Rolls Royce Ltd. v. GTE Valeron Corp.,
800 F.2d 1101, 1110 (Fed. Cir. 1986). A patentee bears the burden of proving inducement by a
preponderance of the evidence. See Fujitsu Ltd. v. Belkin Intl, Inc., No. 10-CV-03972-LHK, 2012
U.S. Dist. LEXIS 142102, at *120 (N.D. Cal. Sept. 28, 2012).

Here, there is sufficient evidence to support the jurys verdict that SEC induced STA to
infringe. As a preliminary matter, the requirement that the alleged infringer knew or should have
known his actions would induce actual infringement necessarily includes the requirement that he or
10
she knew of the patent. DSU, 471 F.3d at 1304; Global Tech Appliances, 131 S. Ct. at 2068;
11
Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1379 (Fed. Cir. 2001). Apple
12
presented evidence that SEC knew about the 647 patent and Apples allegation of infringement
13
since August 2010 when Apple made a presentation to Samsung that Samsung was infringing the
14
647, and knew about all Apples other patents since February 8, 2012 when Apple filed its
15
complaint. ECF No. 1714 at 1043 (undisputed facts read to the jury); PX 132 at 15 (August 2010
16
Presentation to Samsung); PX 3003 at 33 (deposition of Jun Won Lee, Director of Licensing for
17
SEC) (describing how Apple told Samsung that Samsung was infringing Apples patents). See
18
EON Corp. IP Holdings, LLC v. Sensus USA, Inc., No. C 12 1011 EMC, 2012 WL 4514138, at *1
19
(N.D. Cal. Oct. 1, 2012) (complaint suffices to establish knowledge element of induced
20
infringement).
21
Further, other facts presented at trial provided sufficient circumstantial evidence for a
22
reasonable jury to conclude that SEC intended to encourage STAs infringement. The jury learned
23
STA sold more than 37 million accused units in the United States, and that STA bought these units
24
from SEC, its parent company. ECF No. 1714 at 1208-09 (Vellturo) (SEC shipped devices to STA
25
for sale in the United States); ECF No. 1715 at 1285-86 (Vellturo) (SEC manufactured, designed,
26
and shipped accused units to the United States for resale to carriers and customers by STA); PX
27
3001 (Justin Denison, Chief Strategy Officer at STA) (noting SEC is parent of STA). The jury also
28
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learned that some design teams at STA in the United States worked with and under [the]
direction of SECs research and development team in South Korea in order to help design,
develop, test, and commercialize Samsung telecommunication devices which STA sold in the
United States. See PX 3004 at 87-88 (Tim Sheppard, Vice President of Finance and Operations at
STA); see also ECF No. 1716 at 1607 (testimony of Dale Sohn, CEO of STA, stating SEC made
the final decision to include the operating platform in its phones). SEC also exercised a high degree
of control over STA by directly setting the wholesale price at which STA was to sell phones to
carriers in the United States. PX 3004 at 188. Drawing all reasonable inferences in Apples favor, a
reasonable jury could find that SEC induced STAs infringement, given that SEC controlled the
10
design and manufacture of the smartphones which STA sold, and controlled the price at which
11
STA sold the devices to carriers in the United States. See Water Techs., 850 F.2d at 668-69
12
(upholding district courts finding of specific intent to induce based on defendants knowledge of
13
the patent and because defendant helped direct infringer make the infringing product and exercised
14
control over manufacture of the product); Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d
15
1325, 1343 (Fed. Cir. 2008) (reversing district courts summary judgment finding of no
16
inducement because defendants role as the designer and manufacturer of the infringing products
17
may evidence an intent sufficiently specific to support a finding of inducement.).
18
Samsungs arguments to the contrary fail. Samsung argues there is no evidence that SEC
19
had the specific intent required for inducement. Mot. at 38; Reply at 21. Samsung argues that even
20
assuming SEC had knowledge of the 647 patent, Dr. Jeffays testimony established SECs belief
21
that it did not infringe the 647 and that the 647 is not valid, and thus Samsung did not know that
22
the acts it was inducing constituted infringement. Id. The Court is not persuaded because this issue
23
is not one in which the evidence permits only one reasonable conclusion, as required for this
24
Court to grant Samsung judgment as a matter of law under Rule 50. See Conceptus, Inc. v. Hologic,
25
Inc., Inc., No. C 09 02280 WHA, 2012 WL 44237, at *8-9 (N.D. Cal. Jan. 9, 2012) (finding
26
sufficient evidence to support jurys finding of indirect infringement and rejecting argument that
27
because there was evidence that defendant believed plaintiffs patent was invalid and not infringed,
28
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there was insufficient evidence to show intent for indirect infringement); Water Techs., 850 F.2d at
668-69 (finding defendant liable for inducement, despite an asserted subjective belief that he had
a non-infringing [product]). Ultimately, because [i]ntent is a factual determination particularly
within the province of the trier of fact, this Court sees no reason to disturb the jurys finding that
SEC had intent to induce infringement. Fuji Photo Film Co. Ltd. v. Jazz Photo Corp., 394 F.3d
1368, 1378 (Fed. Cir. 2005) (declining to disturb jurys verdict because intent to induce
infringement is a factual determination.).

For the reasons above, sufficient evidence supports the jurys finding that SEC is liable for
inducement. Accordingly, the Court need not reach the question of whether the jurys finding of
10
contributory infringement for these same products and patents was also supported by substantial
11
evidence because an additional finding on an alternative theory of indirect infringement will not
12
change the outcome. See Apple, 920 F. Supp. 2d at 1111 (declining to reach whether jurys finding
13
of induced infringement was supported by substantial evidence in light of Courts conclusion that
14
jurys finding of direct infringement by SEC was supported by substantial evidence). Accordingly,
15
the Court DENIES Samsungs motion for judgment as a matter of law that SEC is not liable for
16
indirect infringement.
17
J.
18
Samsung claims the jurys verdict creates impermissible double recovery with respect to
Double Recovery
19
the Galaxy S II, Galaxy S II Epic 4G Touch, and Galaxy S II Skyrocket (the Galaxy S II
20
Products). Mot. at 39. Samsung notes how in the first case between the parties, Case No. 11-CV-
21
01846, there was a final judgment awarding damages for design patent infringement by the Galaxy S
22
II Products, and that the award for these products represented Samsungs profits, pursuant to 35
23
U.S.C. 289. Id. (citing ECF No. 2271 at 9-10, post-trial order recognizing that jury awarded
24
Apple 40 % of Apples calculation of Samsungs profits). Samsung notes how in this case, the jury
25
awarded damages for infringement of utility patents by the Galaxy S II Products. ECF No. 1884
26
(Amended Verdict Form). Accordingly, Samsung claims the Court should deduct the full amount
27
28
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of the Galaxy S II awards in this case as impermissible double recovery at this time. Mot. at 39.
The Court DENIES Samsungs request.
As a preliminary matter, the Court notes that it denied Samsungs motion in limine before
trial which effectively raised this same issue by asking the Court to exclude evidence of damages
on sales for which Apple had already obtained an award of Samsungs profits in the first case. See
ECF No. 1283-3 at 24-27 (motion); ECF No. 1398 at 3 (case management order). The Court
allowed evidence of other forms of damages for the Galaxy S II Products in this second trial on the
basis that if the judgment in the first case is vacated by the Federal Circuit, Apple would likely
wish to seek recovery in the form of lost profits or reasonable royalty damages for those sales in
10
this second case. ECF No. 1411 at 24 (pretrial conference transcript). Given this possibility, to
11
prevent the necessity of holding a damages retrial in the instant case, the Court issued a verdict
12
form in the instant case which separated out the damages for the Galaxy S II Products in the
13
relevant time periods for which damages in both cases might overlap. Id.
14
The Court declines Samsungs request to deduct the full amount of the Galaxy S II awards
15
in this case at this time. As this Court recognized at the hearing concerning Samsungs motion in
16
limine, see ECF No. 1411 at 23-24, it is well settled law that a patentee that receives profits under
17
35 U.S.C. 289 is not entitled to a further recovery for utility patent infringement from the same
18
sale. Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1291 (Fed. Cir. 2002); 35 U.S.C.
19
289 (a patentee shall not twice recover the profit made from the infringement.). It is thus clear,
20
as Apple concedes, that Apple may only recover one form of damages for each infringing sale,
21
regardless of how many patents the Galaxy S II Products infringe. ECF No. 1334-3 at 20 (Apples
22
opposition to Samsungs motion in limine). Accordingly, this Court has already assured Samsung
23
that the Court will not allow Apple to attain a double recovery for each infringing sale of these
24
products. See ECF No. 1411 at 24. The only remaining question is when this Court will take action
25
by formally eliminating any duplicative damages: before entering final judgment in this case before
26
this case is appealed, as Samsung requests, or after appeals of both cases are resolved. The Court
27
already answered that question by holding at the pretrial conference that after the appeals of both
28
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cases are resolved and assuming both survive appeal the Court will consult with the parties
[] to determine only one recovery for each sale. Id.

Samsungs arguments to the contrary are unavailing. Samsung claims that because the
jurys verdict in the instant case creates and includes a double recovery, the Court must deduct
the full amount of the Galaxy S II awards from the verdict now before entering final judgment in
this case and before this case goes up on appeal. Mot. at 39-41. The Court is not persuaded. For
one thing, the verdict in the instant case does not in and of itself create or include a double
recovery; it is only when Apple receives two awards for each infringing sale that an impermissible
double recovery occurs. The cases Samsung cites are not to the contrary. See, e.g., Catalina, 295
10
F.3d at 1291 (recognizing that once [the patentee] receives profits under 289 for each sale, [the
11
patentee] is not entitled to further recovery from the same sale[.]) (emphasis added). Samsung has
12
not yet paid Apple anything for Samsungs sales of Galaxy S II Products.
13
Second, Samsung does not cite any case suggesting that in this context, where there are two
14
different cases with two separate judgments, damages must be deducted before the second case is
15
appealed. While it is clear that Apple may not actually receive two awards for the same infringing
16
sale of a product, Samsung cites no case holding that a patentee cannot have, pending on appeal,
17
two separate judgments
18
damages for the same infringing sale. This is the situation that will occur here, as the parties have
19
already appealed the judgment in the first case,9 and the parties have suggested they will appeal the
20
instant case. Samsungs citation to Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 3:01-
21
CV-0485, 2010 WL 815466, at *4 (M.D. Penn. Mar. 3, 2010), affd per curiam, 477 Fed. Appx.
22
740 (Fed. Cir. 2012) (unpublished), is unavailing. Mot. at 41. There, where a jury had awarded
23
both the full amount of the patentees request for lost profits and a reasonable royalty for the same
24
sales, the district court rejected the patentees request to enter judgment as determined by the jury
25
and delay deduction of double recovery from the judgment until after appeal. Id. The court reduced
in two different cases
which grant the patentee two possible forms of
26
9
27
28
Samsungs opening brief to the Federal Circuit included an appeal of the infringers profits award
with respect to the Galaxy S II Products. Brief of the Petitioner-Appellant, Apple, Inc. v. Samsung
Elecs., Ltd., No. 14-1335 (Fed. Cir. May 23, 2014), Docket No. 33.
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the total award before entering judgment. Id. The Federal Circuit summarily affirmed the opinion
without reasoning. See 477 Fed. Appx. 740. Critically, however, Arlington involved a double
damages award in the same case, and did not hold or suggest that when there are two cases with
two separate judgments, damages must be deducted before the second case is appealed.10 Given
that there is no clear statement of law on this issue, the Court finds no reason to deviate from its
previous decision to address the issue of double recovery after appeal of both cases are resolved.
This decision is most efficient. Notably, if this Court strikes the damages awarded in the instant
case as impermissible double recovery now, and then the judgment of design patent infringement
in the first case gets vacated on appeal, this Court will have to reinstate the damages award in this
10
case on remand after the appeal of this case to ensure Apple actually receives damages for each
11
infringing sale, assuming the judgment of infringement in this case withstands appellate review.11
12
10
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
The same goes for Samsungs other cited cases. See, e.g., Aero Prods. Intl, Inc. v. Intex
Recreation Corp., 466 F.3d 1000 (Fed. Cir. 2006) (reversing as impermissible double recovery
district courts denial of defendants post-trial motion and courts judgment entering a jury award
of damages in same case for both patent and trademark infringement); Catalina, 295 F.3d at 129192 (reversing judgment in one case involving double award of infringers profits and reasonable
royalties).
11
The Court denies Apples request that this Court calculate a supplemental damages award and
prejudgment interest in Case No. 11-CV-01846 at this time. Despite the fact that the Court
previously ruled that it would wait until the appeals in the first case are resolved before calculating
supplemental damages and prejudgment interest in that case, see ECF No. 2271 at 6, 8 (March
2013 post-trial order); ECF No. 2947 at 3 (damages retrial post-trial order declining Apples
request to reconsider Courts decision), Apple in its opposition to Samsungs motion for judgment
as a matter of law in Case No. 12-CV-00630 renews its request for a supplemental damages award
and pre-judgment interest in Case No. 11-CV-01846. Oppn at 40-41. Apples request is
procedurally improper, as it is made in connection with briefing in the second case between the
parties, not the first case. Second, the Court rejects Apples request on the merits. Apple now
claims that the Court deferred the award in part to obtain appellate guidance on how supplemental
damages should be calculated, but that in light of the fact that Samsung has not challenged this
Courts rulings on supplemental damages in its opening appellate brief, the Federal Circuit will not
be providing any further guidance on supplemental damages. Oppn at 40. However, this Court
previously explained that obtaining the Federal Circuits guidance both as to the merits as well as
to how to calculate supplemental damages, before proceeding with an accounting, is the most
efficient and acceptable way to proceed. ECF No. 2947 at 3 (emphasis added). The Court
continues to conclude that it is more efficient to wait for the Federal Circuits guidance on the
merits issue of whether Samsungs products infringe Apples patents before calculating
supplemental damages and prejudgment interest in that case. See ECF No. 2947 at 3 (citing Intron,
Inc. v. Benghiat, No. Civ.99 501 (JRT/FLN), 2003 WL 22037710, at *16 (D. Minn. Aug. 29,
2003)).
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1
2
necessary, consult with the parties [] to determine only one recovery for each sale after the
appeals of both cases are resolved. ECF No. 1411 at 24. The Court will allow for appropriate
briefing on the double recovery issue at that time. The Court DENIES Samsungs motion to deduct
any double recovery from the verdict at this time.
K.
Samsungs 239 patent is directed to a remote video transmission system. Against Apple,
8
9
10
Accordingly, consistent with this Courts ruling at the pretrial conference, the Court will, if
11
Infringement of Claim 15 of the 239 Patent
Samsung asserted claim 15, which recites:

a computer including a video capture module to capture and compress video in real
time;
means for transmission of said captured video over a cellular frequency.
239 Patent cl. 15. The jury found that none of the three accused Apple products (iPhone 4, iPhone
12
4S, and iPhone 5) infringe. See ECF No. 1884 at 11. Samsung seeks judgment as a matter of law of
13
infringement. The Court finds that substantial evidence supports the jurys verdict and DENIES
14
Samsungs motion.
15
As an initial matter, Samsung claims that [n]o reasonable jury could find non16
infringement because substantial evidence was presented to conclude claim 15 was infringed.
17
Mot. at 44. Samsung invokes the wrong legal standard: even if substantial evidence could support a
18
contrary verdict, Samsung must show a lack of substantial evidence that favors the existing verdict,
19
such that only one reasonable conclusion is possible. Ostad, 327 F.3d at 881. Here, substantial
20
evidence supports the non-infringement determination.
21
Samsung focuses on three limitations in claim 15, arguing that Apples expert, Dr. James
22
Storer, made improper arguments for each limitation. First, Samsung argues that Dr. Storer
23
incorrectly testified that the claimed video capture module is restricted to a video card, must
24
receive analog signals, and must be plugged into another component. However, Samsung
25
mischaracterizes the trial testimony. In explaining his non-infringement opinion, Dr. Storer stated
26
that he reviewed a bill of materials for an accused iPhone 5 (Tr. at 2738:24-2739:8), a live
27
disassembly of an iPhone 5 (id. at 2741:8-25), and the testimony of Apple engineer Roberto Garcia
28
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(id. at 2738:13-23) to determine that the accused devices do not capture video. Contrary to
Samsungs position, Dr. Storer expressly acknowledged that [c]laim 15 only requires a video
capture module, not a video card, and opined that no such module exists in the accused phones.
Id. at 2742:6-15. Dr. Storer did testify that no component of the accused phones receives analog
video, and [t]heres not a cable being plugged in coming from a remote source. Id. at 2743:10-
17. This was not improper argument of claim construction. Samsung did not request claim
construction of video capture module
of other terms in claim 15 at Samsungs request. Thus, the jury was entitled to evaluate the plain
and ordinary meaning of the term based on the evidence at trial. See ECF No. 1301 at 5. Dr. Storer
10
testified that he personally worked with video capture modules in the 1990s, and that the iPhones
11
lacked such hardware. See id. at 2727:2-15. Furthermore, Samsung did not object to this testimony.
12
See Price v. Kramer, 200 F.3d 1237, 1252 (9th Cir. 2000) (noting that failure to object to testimony
13
waives argument on appeal).
14
even though the Court provided last-minute construction
Next, Samsung claims Apple offered improper arguments about means for transmission of
15
said captured video over a cellular frequency. The Court construed this term to mean: one or
16
more modems connected to one or more cellular telephones, and software performing a software
17
sequence of initializing one or more communications ports on said apparatus, obtaining a cellular
18
connection, obtaining said captured video, and transmitting said captured video. ECF No. 1532 at
19
14. Samsung claims that Dr. Storer gave improper opinions that a port required a specific kind of
20
hardware, and that connected to requires a cable. Again, Samsung mischaracterizes the
21
testimony. Dr. Storer told the jury that the electrical connections between chips that Samsungs
22
expert identified in the accused iPhones were not ports as understood at the 239 patents priority
23
date. Tr. at 2751:14-2752:9. While Dr. Storer referred to a lack of cables connecting the iPhones
24
to any modems (id. at 2745:6-14), he also opined that the phones baseband processor
25
Samsungs expert identified as the claimed modem
26
cellular telephones because the baseband processor was itself part of the phone (id. at 2745:15-
which
could not be connected to one or more
27
28
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2746:18). Thus, Apple presented reasoned expert opinions based on the Courts claim construction
that the jury could have credited.

Finally, Samsung contends that Apple improperly tried to limit video to something other
than streaming video and video frames. Mot. at 45. At trial, Samsung argued that Apples
FaceTime application transmits video. In response, Dr. Storer testified that [t]here is no video at
all on FaceTime because an individual frame is created and then its immediately transmitted,
and disagreed with Samsungs expert because [a] single frame is not video. Tr. at 2754:1-25; see
also id. at 2713:10-2714:3 (Garcia testimony regarding absence of video in FaceTime). Samsung
did not object to this testimony and now identifies no reason why these opinions contradict the
10
plain and ordinary meaning of video. Dr. Storer agreed on cross-examination that his expert
11
report used the phrase, the FaceTime application prepares to transmit video (id. at 2781:10-17),
12
but this does not amount to an admission that FaceTime employs video as claimed, particularly
13
because Mr. Garcia distinguished between video and a video frame (id. at 2713:20-23).
14
Additionally, Samsung argues that Dr. Storer compared the accused products to commercial
15
embodiments of the 239 patent, instead of the claim language. Samsungs argument is misplaced.
16
As detailed above, Apple presented specific evidence about its accused products and why they do
17
not infringe. Samsung points to Amgen Inc. v. Hoechst Marion Roussel, Inc., where the Federal
18
Circuit reversed summary judgment of non-infringement because the district court relied solely on
19
commercial embodiments, and thus eschewed the cardinal principle that the accused device must
20
be compared to the claims rather than to a preferred or commercial embodiment. 314 F.3d 1313,
21
1347 (Fed. Cir. 2003). However, that is not the situation here. The jury heard substantial evidence
22
in addition to Dr. Storers discussion of the inventors actual products, and also received
23
instructions to not compare the Samsung and Apple commercial products to each other. ECF No.
24
1847 at 32; see Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1470 (Fed. Cir. 1997)
25
(denying new trial where patentee made only a a few passing references to commercial products
26
and the jury instructions properly cautioned the jury not to compare commercial embodiments to
27
determine infringement).
28
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The jury needed to conclude that only one of the limitations of claim 27 above was not
present in the accused iPhones to reach a verdict of non-infringement. The jury received substantial
evidence to conclude that any of several limitations were not infringed. Accordingly, Samsungs
motion regarding infringement of the 239 patent is DENIED.
III.

CONCLUSION
For the reasons discussed above, the Court:
(1) DENIES Samsungs motion for judgment as a matter of law of non-infringement of claim 9 of
the 647 patent.
(2) DENIES Samsungs motion for judgment as a matter of law of invalidity of claim 9 of the 647
10
patent.
11
(3) DENIES Samsungs motion for judgment as a matter of law of invalidity of claim 8 of the 721
12
patent.
13
(4) DENIES Samsungs motion for judgment as a matter of law of non-infringement of the 721
14
patent.
15
(5) GRANTS Samsungs motion for judgment as a matter of law that Samsung did not willfully
16
infringe the 721 patent.
17
(6) DENIES Samsungs motion for judgment as a matter of law of invalidity of the 172 patent.
18
(7) DENIES Samsungs motion for judgment as a matter of law of invalidity of claim 25 of the
19
959 patent.
20
(8) DENIES Samsungs motion for judgment as a matter of law of invalidity of claim 20 of the
21
414 patent.
22
(9) DENIES Samsungs motion for judgment as a matter of law that SEC is not liable for indirect
23
infringement.
24
(10) DENIES Samsungs request that the Court deduct the full amount of the Galaxy S II awards as
25
impermissible double recovery.
26
(11) DENIES Samsungs motion for judgment as a matter of law of infringement of claim 15 of the
27
239 patent.
28
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IT IS SO ORDERED.
Dated: September 9, 2014
_________________________________
LUCY H. KOH
3
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5
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7
8
9
10
11
12
13
14
15
16
17
18
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20
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GRAl\i'TING IN PART
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LAW
[UNDER SEAL]
On May 5, 2014,
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("Mot."). On June 6, 2014, :Samsung
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Case No.: 12-CV-00630
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ORDER GRANTING IN
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(citing Gillette v.
v. Delmore.
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ANALYSIS
Infringement
of Claim 8 of the
'721 Patent
Patentby
bySamsung
Samsung's
n Products
Products
' s Galaxy
Galaxy SSi!
Infringement of
the'721
19
A.
20
Apple moves
moves for
for judgment
judgmentas
asaamatter
matterof
oflaw
lawthat
thatSamsung's
Samsung'saccused
accusedGalaxy
GalaxyS SIlIIproducts,
produCts
21
infringe claim 8 of
of the '721
'721 patent
patentor,
Qr,ininthe
thealternative,
alternative,for
foraanew
newtrial
trialon
oninfringement
infringementand
and
22
The '721
'721 patent
patentdiscloses
discloses unlocking
unlockingaaportable
portableelectronic
electronic
damages for those products. Mot.
Mot. at 3. The
23
device by using
using aa predetermined
predeterminedgesture
gestureon
onaatouch-sensitive
touch-sensitivescreen.
screen. See generally '721
'721 Patent
24
coL
1. The '721 patent
patenttargeted
targetedthe
theproblem
problemof
cf"unintentional
activationor
ordeactivation
deactivation of functions
col.1.
"unintentional activation
25
Id Apple asserted claim 8

unintentional contact
contactwith
withthe
thetouch
touchscreen"
screen"ininportable
portabledevices.
devices.ld
due to unintentional
26
of
patentagainst
againstSamsung.
Samsung.Claim
Claim88depends
dependsfrom
from claim
claim7.7.Both
Bothclaims
claimsrecite:
recite:
of the '721 patent
27
27
28
7. A portable electronic
electronic device,
device, comprising:
comprising:
2
Case
Case No.:
No.: 12-CV-00630
ORDER GRANTING
GRANTING IN
IN PART
PARTAND
A}..I{)DENYING
DENYiNGIN
INPART
PARTAPPLE'S
APPLE'SMOTION
MOTIONFOR
FORJUDGMENT
JUDGMENT.AS
MATrER
,AS-AAMATTER
OF LAW
A93
Case: 15-1171
Document: 40
Page: 178
Filed: 03/06/2015
HK Document1963
Document1963*SEALED*
*SEALED* Fileda9l08114
Filed09/08/14 Page3
of 45
Page3 of
memory;
processors; and
and
one or more processors;
in the
the memory
memory and
and configured
configuredfor
forexecution
executionby
bythe
tbeone
one
or more
more modules
modules stored
stored in
one or
one or
or more
more modules
modules including
including instructions:
instructions:
or more processors, the
the one
to detect a contact
contact with
with the
tbe touch-sensitive
touch-sensitive display
display at
at aafirst
first predefined
predefinedlocation
location
image;
corresponding
to an
an unlock
unlockimage;
corresponding to
to continuously
continuously move
move the
the unlock
unlock image
image on
on the
the touch-sensitive
touch-sensitivedisplay
displayininaccordance
accordance
ofthe
the detected contact
contact while
while continuous
continuous contact
contact with
withthe
the
with movement of
is a
touch-sensitive display is maintained, wherein the unlock image isa
graphical, interactive
interactive user-interface
user-interface object
object with
with which
which aa user
userinteracts
interactsinin
order
unlock the
the device;
device; and
and
order to unlock
to unlock the hand-held
hand-beld electronic
electronic device
device ififthe
the unlock
unlockimage
image isis moved
moved from
fromthe
the
screen to
toa
predefined unlock
unlock region
regionon
on
first predefined location on the touch screen
a predefined
the touch-sensitive
touch-sensitive display.
display.
8. The device of
ofclaim
claim 7,
7, further
further comprising
comprising instructions
instructionsto
todisplay
displayvisual
visualcues
cuestoto
3
4
communicate
ofmovement
movement of
ofthe
the unlock
unlockimage
imagerequired
requiredtoto
communicate a direction of
unlock the device.
10
Samsung phones
phones of
ofinfringing
infringing the '721 patent.
patent. For
For the
the Admire,
Admire, Galaxy
GalaxyNexus,
Nexus..
Apple accused six Samsung
....c
i1
11
and Stratosphere,
Stratosphere, Apple
Apple accused
accused the
the "slide
"slidetotounlock"
unlock'"feature
featureininthose
thosephones.
phones.For
Forthe
theGalaxy
GalaxySSIIII,
.......
.-u"'0.......t:
12
Galaxy SS 11
II Epic
and Galaxy S n
("'Galaxy SS I1
II products"), Apple
Apple accused
accu~d
It Skyrocket ("Galaxy
Epic 4G Touch, and
13
only the "slide to answer" feature.

While the
the jury
jury found
found that the Admire, Galaxy
Nexus.. and
feature.'I While
Galaxy Nexus,
Q.r!!
"",,0
aD
14
Stratosphere infringe
infringe claim
claim 8,
8, the
the jury
jury found
found that
thatthe
theGalaxy
GalaxySSIIIIproducts
productsdo
donot
notinfringe.
infringe.ECF
ECFNo.
No.
~'""
_
0
15
1884
Apple'smotion,
motion, as
asexplained
explainedbelow.
below.
1884 at
at 5.
5. The Court DENIES Apple's
.~
t:~
::t'.Q.~
ors
UU
UL)
c,jO
O
._~
.2:!c
CI}':::
-=!:
~o
.t:Z
a:a: ' v0
""
0'0
U..
r
;;:J-::E
tL.
16
<
proofto
presence of
of
"To prove infringement,
infringement, the
the plaintiff bears the burden of
of proof
to show the presence
17
Y. A47crosvft
Corp., 632
every element or its
accUSed device."
device." Uniloc USA,
USA, Inc.
Inc. v.
MICrosoft Corp.,
its equivalent in the accused
18
F
3d 1292.
1292, 1301
1301 (Fed. Cir. 2011).
20 I I). "If
"Ifany
any claim
claim limitation
limitation is
is absent
absent from the accused
accused device,
device, there
there
F.3d
19
Bayer AG
AG v. Elan Pharm.
Pharm. Research Corp.~
Corp., 212
212 F.3d
infringement as
as aa matter
matterof
oflaw."
law.'" Bayer
is no literal infringement
20
1241,
needed to
to identify
identify only
only one
onelimitation
limitationmissing
missing
1241, 1247 (Fed. Cir.
Cir: 2000). Accordingly, the jury needed
21
21
from
products to reach
reach its
its verdict.
verdict.
from the a<.:cused
accused products:to
22
whetheraareasonable
reasonablejury
jurycould
couldhave
havefound
found
The sole dispute
dispute between
betweenthe
theparties
partieshere
hereisiswhether
23
that Samsung's
Samsung's"slide
"slidetotoanswer"
answer"features
featuresdo
donot
notinfringe,
infringe,but
butthat
thatthe
the"slide
"slidetotounlock"
unlock"features
featuresdo
do
24
24
infringe. At trial, Apple's

expertDr.
Dr. Andrew
Andrew Cockburn
Cockburn testified
testified that
that the
the "slide
"slideto
toanswer"
answer"
Apple's expert
25
26
27
28
I' After
After the
the July
July 10,
10, 2014
2014 hearing,
hearing, and
and without
without permission
permission from
from the
the Court,
Court, Apple
Applefiled
filed additional
additional
exhibits and argument,
argument, claiming
claimingthat
thatthe
theaccused
accusedfunction
functionofofthe
theGalaxy
GalaxySS1IIIEpic
Epic4G
4GTouch
Touch was
the operation used
to retrieve
retrievemissed
missedmessages,
messages,as
asopposed
opposedtotothe
theoperation
operationused
used to respond to
'the
used to
and argument
argumentare
areuntimely
untimely and
incoming phone
phone calks.
calls."" ECF
.ECFNo.
No.1945
1945atat J.1.Apple's
Apple's new evidence
evidence and
will be disregarded.
3
Case No.: 12-CV-00630

ORDER GRANTING IN PART AND DENYING IN
IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS AAMATTER
MATIER
OF LAW
A94
Case: 15-1171
Document: 40
Page: 179
Filed: 03/06/2015
aseS:12-cv-00630-LHK
Page4of
of45
45
630-LHK Document1963 *SEALED*
*SEALED* Filed09/08/14
Filed09/08/14 Page4
in the
theGalaxy
Galaxy SS-11
II products
feature utilized
utilized
functionality in
productswas
was"very
"verysimilar"
similar" to
to the
the "slide
"slide to unlock" feature
1! functionality
by the non-Galaxy
Id. at 633-36.
non.;Galaxy SS ItII accused
accused phones.
phones. !d.
Dr.Cockburn
Cockburntestified
testifiedthat
that
633-36, 653-64,673-76.
65-64, 673-76. Dr.
both "slide to unlock"

"slide to
to answer"
answer" infringe
infringe because
because they
they `detect
"detectaacontact
contactwith
withthe
thetouchtouchunlock" and "slide
at an
an "unlock
"unlockimage";
image";allow
allowthe
theuser
usertoto"continuously
"continuouslymove
movethe
theunlock
unlockimage
image. ...
sensitive display"
display" at
accordance to the detected

the "direction
. in ac.c{)rdance
detected contact";
contact"; provide
provide"visual
"visualcues"
cues"for
forthe
"directionofofmovement
movementofof
the unlock image

image required
required to
to unlock
unlock the
thedevice";
device";and
and"unlock
"unlockthe
thedevice"
device"when
whenthe
theunlock
unlockimage
imageisis
"to aapredeftned
predefined unlock region."
673-74. Apple also argues that
moved 'to
region." See id.
id. at 6.73-74.
that Figure
Figure 77 in
in the
the
'721 patent
patent discloses
disclosesaaform
formof
of"slide
"slidetotoanswer,"
answer."sosothis
thisfeature
featuremust
mustfall
faUwithin
withinthe
thescope
scopeofofclaim
claim
8.
10
The Court
Court concludes
concludes that
that aa reasonable
reasonablejury
jurycould
couldhave
havedistinguished
distinguished"slide
"slidetotoanswer"
answer"from
from
(!$
'fE
11
"slide
"slide to unlock"
unlock" for
forpurposes
purposesof
ofinfringement.
infringement. The
The verdict
verdict must
must stand
stand unless
unless the
the evidence,
evidence.
12
12
"construed
to the. nonmoving party, permits
thelight
lightmost
mostfavorable
favorable'tO'theoorunovingparty.
permitsonly
onlyone
onereasonable
reasonable
"construed ininthe
13
13
conclusion, and that conclusion

jury's verdict."
Pagay, 307F3d
307 F 3d 915,
conClusion is
is contrary to the jury's
verdict." Pavao v.
v. Pagay.
conclusion.
Q .l!:
14
r=..... .
partyrequested
requestedclaim
claimconstruction
constructionofofany
anyterms
termsininthe
the'721
'721
918 (9th Cir. 2002).
2002). Notably,
Notably. neither
neitherparty
15
the jury
jury was
wasinstructed
instructedto
torely
relyon
onthe
theplain
plainand
andordinary
ordinarymeaning
meaningofofllte
claim
patent
Accordingly ~ the
patent. Accordingly,
the claim
16
language. See
t 847 at
at 30;
30; see also ePlus,
ePlus. Inc. v. Lawson
Lawson Software,
Software, Inc.,
Inc., 700F
.3d 509,
See ECF No. 1847
700 F.3d
:J::....
17
Cir. 2012)
520 (Fed.
(Fed.Cir.
2012) ("In
("Inthe
the absence
absenceof
ofsuch
suchaaconstruction,
construction,however,
however,the
thejury
jurywas
wasfree
freetotorely
relyonon
tl..
18
the plain and ordinary meaning.").
t:~
=:;::
Q(!$
C).U
......
a9
.
"C"n
;.,;.
....-.-w
",,0
a~c
G4
_(l)
rl)o!:
~
...
,=,,0
;:::2
C(l)
19
Contrary to
arguments, the
jury's non-infringement verdict
Galaxy
S 11
to Apple's:
Apple's'arguments,
thejury'snon-inffingement
verdic.tforforthethe
GahL"y
S II
Contrary
20
contradict the '721

'721 patent
patentor
orthe
the record.
record. As
Asan
an example,
example, the
thejury
jurycould
couldhave
have
products does not contradict
211
21
"slide to
to answer"
answer" functionality
functionality does
does not
not "unlock
"unlockthe
thehand-held
hand-held
reasonably determined that the "slide
22
as claimed.
claimed. The
Thepa.tent
describes aa "lock
"lock state"
state"as
as aa condition
conditionwhere
whereaaphone
phone
patent describes
electronic device,"
device," as
23
or powering off;
"Inthe
theuser-interface
user-interfacelock
lockstate
state
ignores all inputs other than unlocking or
off "In
24
thedevice
device100
100isispowered
poweredon
onand
andoperational
operationalbut
butignores
ignoresmost,
most,ififnot
(hereinafter the 'lock
'lockstate'),
state'),the
not
25
, In
other
words,
locked
device100
100responds
respondstotouser
userinput
inputcorresponding
correspondingtoto
jnput. ..In
all, user input....
other
words,
thethe
locked
device
26
attempts to transition
transition the device 100
100 to the user-interface
user-interface unlock
unlock state
state or
orpowering
poweringthe
thedevice
device100
100
attempts
27
off, but does not respond

respond to
to user
user input
input corresponding
corresponding to attempts
attempts to navigate
navigate between
between user
user
28
4
Case No.:
12-CV-00630
No I2-CV-OO63Q
IN PART
PART AND
AND DENYING
DENYING IN
IN PART
PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENTAS
ASAAMATTER
MATIER
ORDER GRANTING IN
OF LAW
A95
Case: 15-1171
Document: 40
Page: 180
Document1963
"SEALED*
ase5:12-cv-00630-LHK Docu
ent1963 *SEALED*
Filed: 03/06/2015
Filed09/08!14
Filed09/08/14 Page5
Pages of 45
interfaces." '721 patent

patentcol.71.64
co1.71.64-66,
answer"
coil.811.12-17.However.
However,ininSamsung's
Samsung's "slide to answer"
66, coI.811.12-17.
user to
to answer
answer or
or decline
decline a;call
a call directly,
directly. which
which indicates
indicatesthat
thatthe
the
feature, the phone allows the user
responds to
to user
userinputs.
inputs. The
TheGalaxy
GalaxySiS 11
II products
phone responds
products also
also include
include the functionality.of"Reject
functionality of "Reject
call with message,"

message," which
which allows
allowsthe
theuser
usertotosend
sendthe
thecaller
calleraapre-set
pre-set text message instead of
accepting or
or declining
decliningthe
the call.
call. The
Thejury
jUJ'ycould
could have
haveverified
verifiedthis
thisby
bytesting
testingthe
thefunctionality
functionalityon
onthe
the
phones in
in evidence.
evidence. JX
JX 32
32(Galaxy
(GalaxySS11);
In; JX 33 (Galaxy
(Galaxy SS IIII Epic
Epic4G
4GTouch);
Touch);JX
JX34
34(Galaxy
(GalaxySS1III
phones
Skyrocket); ECF No. 1866-1

1866-1 (final
(final admitted
admitted exhibit
exhibit list);
list); see
see also POX
demonstrative.of
PDX 40 (video demonstrative
of
"slide to answer"
11 products).
products). Based
Based on
on at
at least
least these
thesestatements
statementsininthe
thepatent
patentand
andthe
the
"sHdeto
answer" on
on Galaxy
GalaxySS1I
accused devices themselves, the jury could have decided that Samsung's
Samsung's "slide
"slideto
to answer"
answer"screen
screen
}0
10
is not a "lock state,"

isnbta
state," and that sliding
sliding to answer or decline a call does not
not "unlock"
"unlock"the
the device,
device.
CI
'c...
1:<2
L w
II
II
also consistent
consistent with
with Figure
Figure 77 of
ofthe
the'721
'721patent.
patent.Apple
Appleclaims
claimsthat
thatFigures
The verdict is also
.Figures
==J
to
12
77A-7D
A-7D demonstrate sliding
sliding to
to answer.
answer_ However,
However. that
thatembodiment
embodimentarguably
arguablydoes
doesnot
notshow
show sliding
'to
L-.-
13
to answer a call because

because itit does
does not
not result
resultininentry
entryinto
intoan
anactive
activecall.
call.Rather,
Rather.Figure
Figure7D
7Dshows
showsthat,
that,
QrIl
14
after sliding
sliding to unlock,
uniock,the
user can
can press
presseither
either"Decline"
<+Oecline"oror"Accept"
"Accept"ininresponse
responsetotoananincoming
incoming
the user
.2=:::
4'# ....
_Il.)
15
the unlock
unlock action
action ....
... , AtAtthis
call: "In FIG.
FlG. 7D,
70. the user completes the
thispoint,
point,the
theuser
usermay
mayinteract
interact
0
1
.=;2:
"
z
16
with the virtual buttons

buttons 708
708 and
and accept
acceptor
decline the
theincoming
incomingcall."
call,"'721
t721patent
patentcoi.1611.4-1
col.16 Il.4-11
or decline
I. .
j;J;S
17
an"unlocked"
"unlocked"
Thus.
patent explains
explains that
that aascreen
screenwhere
wherethe
theuser
usercan
canaccept
acceptor
ordecline
declineaacall
callisisan
Thus, the patent
18
state~ However, Samsung's

Samsung'saccused
accused "slide
"slidetotoanswer"
answer"screen
screen also
also permits
permitsthe
theuser
userto
toaccept
acceptor
or
state.
19
decline a call,
call. without
without further
further action:
action:
Ut.,...
C t)
.:! t3
",0
oo,
=:::Il.)
...
tl..
~'-
20
20
21
22
23
24
25
26
27
28
5
Case
CaseNo.:
No.: 12-CV-00630
t2-CV-00630
ORDER GRANTING
GRANTING IN
IN PART
PART AND
AND DENYING
DENYINGIN
INPART
PARTAPPLE'S
APPLE'SMOTION
MOTIONFOR,
FORJUDGMENT
JUDGMENTAS
ASAAMATTER
MATTER
OF LAW
A96
Case: 15-1171
Document: 40
Page: 181
Filed: 03/06/2015
Filed09/08/14 Page6
Page6of
of45
45
Touchscreen
Touch screen 714
706
Incoming call from:
mobile
JohnOoe
John Doe
Decline
Accept }
6
7
8
~
9
10
.:S
c
'"',
11
'0'<11
]2
t:~
U.==v
t),~
o
'tro
13
wE
...
j\)
V
='"'
00
15
~ti
.....
t; ~i:
':5
.gc:
14
"C ."0
16
~z
Cj\)
;:J
17
I-
00
u~
u.
18
19
20
40
Accordingly,
Accordingly. a reasonable
reasonable jury
jury could
could have
havedetermined
detenninedthat
thatsliding
slidingtotoanswer
answeron
onthe
theaccused
accused
devices is
is not
nota
form of
ofunlocking
unlockingbecause
becausethe
thephone
phoneisisininan
an"unlocked"
"unlocked"state
statewhen
whenititpresents
presents
a form
muitipletUn:ctions.
"unlock"; to
to the
the extent
extentApple
Apple
these multiple
functions. AppJedid.not
Apple did not request a construction for 'ùnlock";
seeks such aconstroction
Apple'srequest
request isis untimely.
untimely. See Hewlett-Packard
Hewlett-Packard Co.
Co. v.v. Alustek
Mustek
a construction now, Apple's
>Svs_, Inc., 340 F.3d

S"vs.,
f.3d 1314.
1314, 1320-21
t320~21 (Fed.
(Fed. Cir.
Cir. 2003)
2003) ("[W]here
("[W]herethe
theparties
partiesand
andthe
thedistrict
districtcourt
courtelect
elect
prov ide an interpretation
interpretation of
ofthe
the
to provide the jury only
only with
with the
the claim
claim language
language itself,
itself and do not provide
ofthe
specification and
and the
the prosecution
prosecution history,
history,ititisistoo
toolate
lateatatthe
theJMOL
JMOL
language in the light of
the specification
and more
the
stage to argue for
for or
or adopt
adopt aa new
newand
moredetailed
de~ailed interpretation
interpretationof
ofthe
theclaim
claimlanguage
languageand
andtest
testthe
jury verdict
jury
verdict by
by that
that new
newand
andmore
moredetailed
detailedinterpretation.
interpretation:'}.
").
21
22
23
24
25
26
27
28
Additionally.
Apple points
points out
o.ut that
that Dr.
Dr. Greenberg
Greenbergdid
didnot
nottestify
testifYtotoany
anyinfringement
infringement
Additionally, Apple
products. Mot.
Mot. at 5. However.
However, Apple bore
n products.
bore the
the burden
burden of
ofproof
proof
defense specific
specific to
to the
the Galaxy
Galaxy SS 11
infringement. and
and Apple
Apple cites
citesno
nocase
~seholding
holding that a jury must rely on expert
expert testimony to find
on infringement,
non-infringement.
courts have held otherwise. See Creative
Creative Compounds.
Compounds, LLC
LLCv.v. Starmark
Slarmark
non- infringement, and courts
Labs. 651
1303. 1314
1314 (Fed.
(Fed. Cir.
CiT. 2011)
2011)("Ifthepatentee
failsto
meetthat
thatburden
burden[of
[ofproving
proving
Labs.,
651 F.3d 1303,
(`:lf the patentee fails
to meet
infringement], the patentee

patentee loses
losesregardless
regardlessof
ofwhether
whetherthe
theaccused
accusedcomes
comesforward
forwardwith
withany
any
v. Broadcom Corp., No. CIV.A.

evidence to the contrary.");
contrary."); Intel Corp. v.
ClVA. 00-796-SLR, 2003 WL
WL
6
Case No.: l2-CV-00630
12-CV-00630
ORDER GRANTING
GRANifNG IN PART
PARTAND
IN PART
PARi APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENTAS
ASAMAITER
AND DENYING IN
A MATTER
OF LAW
A97
Case: 15-1171
Document: 40
Page: 182
Filed: 03/06/2015
*SEALED* FiledO9/08/14
Filed09/08/14 Page7
Page7ofof45
45
matter of
oflaw
of
360256, at **14(0.
14 (D. Del.
Del. 2003)
2003) (denying patentee's motion for judgment as a matter
law of
infringement; "Broadcom was not

not required to
to put
put on
on its
its own
own expert
experttotodisprove
disproveinfringement
infringement
infringement,
Intel that
that bore
borethe
theburden
burdenof
ofproving
provinginfringement.
infringement.").
because it was Intel
").
Court cannot
cannot conclude that the evidence
evidence `permits
"permitsonly
onlyone
one
For these reasons, the Court
55
conclusion" and
and substitute
substitute its
its judgment
judgment for
for the
the jury's.
jury's.Davao,
Pavao.307
307F.3d
F.3datat918.
918.Apple's
Apple's
reasonable conclusion"
66
regarding infringement
infringementof
ofthe
theGalaxy
GalaxySSIIHproducts
productsisisDENIED.
DENIED.
motion regarding
1
7
B.
The '414
'414 patent
patentcovers
covers"asynchronous
"~ynchtonous data synchronization amongst devices,"
devices." which
which the
the
The
Infringement
Claim 20
Infringement of
oCClaim
29 of
ofthe
the '414
'414Patent
Patent
;<batkground sync."
sync."Apple
Apple asserted
asserted claim
claim 20
20of
ofthe
the '414
'414patent
patentagainst
against
parties nicknamed "background
lO
10
Samsung. The jury found that

the ten
that none
none of
afthe
ten accused
accused Samsung
Samsung products
products infringes
infringesthe
the'414
'414patent.
patent.
II
11
See ECF No.

1884 at 9. Apple now
nOw moves for judgment as a matter
matter of
oflaw
law of
ofinfringement
infringement or,
or.
.See
No. 1884
12
trialon
oninfringement
infringementand
anddamages.
damages. Claim
Claim 20
20 depends
depends from
from claim
claim 11.
11. Both
Both
alternatively, anew
anew trial
'0
13
claims recite:
recite:
Q.!!!
14
<0
:.:s==. 'c
UU
UU
,.c
L.. v
.-."'_-....
fl
~E
t~
0<0
-~
~o
",,0
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_0
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.e
"O~
Col
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z
=
::J-:S
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....
0
15
16
17
18
19
20
20
21
21
22
23
computer readable
11. A computer
readable storage
storagemedium
mediumcontaining.
containingexecutable
executableprogram
program
instructions
which when
whenexecuted
executedcause--a
cause a data processing
processing system
systemtotoperform
perform
instructions which
a method comprising:
comprising:
.
executing at least
least one user-level
user-level non-synchronization
non-synchronization processing
processing thread,
thread, wherein
whereinthe
the
at
least one
one user-level
processingthread
thread isisprovided
providedby
by
at least
a user application which
which provides
provides aa user
user interface
interface to
to allow
allow aa user
userto
toaccess
access
and edit
edit structured
structureddata
dataininaafirst
firststore
storeassociated
associatedwith
withaafirst
firstdatabase;
database;and
and
executing at least
least one
one synchronization
synchronization processing
processing thread
thread concurrently
concurrently with
with the
the
executing of
ofthe
at least
least one
one user-level
processing
the at
one synchronization
synchronization processing
processingthread
thread isis
thread, wherein the
the at
at least
least one
provided by a synchronization software component
component which
which isis configured
configured to
to
synchronize the structured
structured data
data from
from the
thefirst
first database
databasewith
withthe
thestructured
structured
data from aa second
second database.
database.
20. The storage .medium

medium as in claim 11 wherein the synchronization
synchronizationsoftware
software
structured data
data of
ofaa first
first data
data class
class
component is configured to synchronize structured
and other
other synchronization
synchronization software
software components
components are
are configured
configuredto
to
ofother
othercorresponding
correspondingdata
dataclasses.
classes.
synchronize structured
structured data
data of
cIs. 11,
11,20.
Apple claims
claimsthat
thatititpresented
presentedevidence
evidencethat
thatall
allSamsung
Samsungaccused
accusedproducts
products
'414
Patent cis.
'414 Patent
20. Apple
24
satisfy every limitation of

satisfY
ofclaim
claim 20,
20. while
while Samsung
Samsung conceded
conceded infringement
infringementof
ofseveral
severallimitations
limitations
25
and presented insufficient

insufficient proof
proofof
ofnon-infringement.
non-infringement. However,
However, as
asset
setforth
forth below,
below,the
thejury's
jury'snonnon26
infringement verdict is supported by

by substantial evidence
evidence and
and isis not
notcontrary
contrary to
tothe
theclear
clearweight
weightof
of
27
the evidence.
Accordingly. Court
Court DENIES
DENIES Apple's
Apple's motion.
motion.
evidence. Accordingly,
28
7
Case
CaseNo.:
No.: 12-CV"()0630
12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MAlTER
OF LAW
A98
Case: 15-1171
Document: 40
Page: 183
Filed: 03/06/2015
Page8of
of45
45
Docurnent1963 *SEALED*
Filed09/08/14 Page8
1 J(
1
Apple's
theory of
ofinfringement
infringementisisthat
thatthe
theAndroid
Androidoperating
operatingsystem,
system,asasinstalled
installedon
onthe
the
Apple's theory
accused Samsung devices, contains

contains"Sync
"SyncAdapters"
Adapters"that
thatperform
perfonnthe
thesynchronization
synchronizationfunctions
functionsinin
claim 20. It is undisputed that

that claim
claim 20
20 requires
requires at
at least
least three
three distinct
distinct "synchronization
"synchronizationsoftware
software
As the
the Court
Court explained
explainedin
in its
itssummary
summaryjudgment
judgmentorder:
order:"The
"Thefirst
firstisisthe
theclaimed
claimed
components."
components." As
ofaaflrst
data
synchronization software component 'configured
'configured to synchronize structured
structured data
data of
first data
class'
andthe
theother
othertwo
twoare
arethe
theother
'othersynchronization
softwarecomponents'
components'configured
configured 'to
class and
17
of other corresponding data classes.

classes."'"ECF
EeFNo.
No.1151
1151atat23.
23.Moreover,
Moreover,
synchronize structured data of
requires that
thateach
each synchronization
softwarecomponent
componentbe
beconfigured
configuredtoto"synchronize
'synchronize
claim 20 requires
'414 patent
structured data"
data" from
from aa different
different data
dataclass.
class. See '414
patent cL20.
cL20.
10
At trial,
trial. the parties
parties presented
preSented opposing
oPPQsing expert
expert testimony
testimony from
from Dr.
Dr.Alex
AlexSnoeren
Sneeren(Apple)
(Apple)
.Stic
t.e""
11
11
Theexperts
expertsconcurred
concurred
and Dr. Jeffrey Chase (Samsung), who both analyzed relevant source code. The
QaS
12
ofthree
threedata
dataclasses:
classes:Calendar,
Calendar,
that the accused software
software includes
includessix
sixSync
SyncAdapters,
Adapters, two
twofor
foreach
eacbof
13
13
See Tr. at
at 980:1-1.5
980:1-15 (Snoeren),
(Snoeren), 2166.:12-23
2166:12-2:3 (Chase).,
(Chase); see
seeal$o
Contacts,
andEmail.
Contacts, and.
Email. SeeTr.
also SOX
SDX 3634. The
14
experts further agreed that

thatthe
"GoogleCalendar"
Calendar"Sync
SyncAdapter
Adapterfor
forthe
the"Calendar"
"Calendar" data
dataclass
classand
and
the 'Google
... 0
=""
15
t5
for the
the 'Contacts'
"Contacts"data
dataclass
classare
are"synchronization
"synchronizationsoftware
software
the "Google Contacts"
Contacts" Sync
Sync Adapter
Adapter for
't':I5
16
See Tr.
Tr. at 981:11-17; SDX
configuredtotosynchronize
synchronizestructured
structureddata."
data." See
SOX 3635. In
components ...
... configured
P;S
17
of Apple.
Apple, Dr.
Or. Snoeren
Snoeren testified
testified that
thatthe
the"Gmail"
"Gmail"Sync
SyncAdapter
Adapterfor
forthe
the"Email"
"EmaW'data
dataclass
classisis
support of
18
also aa synchronization
software component,
component,and
and that
thattherefore
thereforethe
theaccused
accusedsoftware
softwarehas
hasthree
threesuch
sueb
19
to different
differentdata
dataclasses.
classes. See Tr. at 981:18-982:3.
981:18-982:3. Dr.
Dr. Snoeren
Sneeren reviewed.
reviewed
components corresponding
corresponding to
20
Google documentation
documentation for
for the
the Sync
SyncAdapters
Adapters(PX
(PX172)
172)and
andopined
opinedthat
thatall
allsix
sixSync
SyncAdapters
Adapterscall
canaa
21
2.1
fum.:tion
"PerformBackgroundSync."which
whichallegedly
allegedlyestablishes
establishesthat
thatthe
theGmail
GmailSync
Sync
function called "PerformBackgroundSync."
22
984:23-986:16.
16. Alternatively,
Alternatively, Dr.
Dr.
Adapter can perform the
the claimed
claimed synchronization
synchronization function.
function.ld.
Id. at 984:23-986:
23
Sneeren
that three
three Sync
Sync Adapters
Adapters that
thatuse
usethe
theMicrosoft
MicrosoftExchange
Exchangeprotocol
protocol("Exchange
("Exchange
Snoeren stated that
24
Calendar," "Exchange
nize structured
id at
Calendar,'"
"Exchange Contacts,"
Contacts," and
and "Exchange
"Exchange Mail")
Mail") also
also synchronize
synchronize
structured data.
data. See id.
25
986:17-987:4.
=::::
UU
_4-0
.--.-......
...
~o
I-Q
v....,;
+A V
~
~.!!!
";0
.
~c
oo;S
.~Z
co
is
t.1..
26
27
Samsung argues that

that the
the jury
jury could
could have determined that the accused
accused software
softwaredoes
doesnot
not
wereeach
each"configured
"configuredtoto
include at least three synchronization
software components
componentsthat
thatwere
28
8
8
Case No.:.
No.: 12-CV-00630
12-CV-00630
JUOOMEl\!'f AS
AS A
A MATTER
MAlTER
OF LAW
A99
Case: 15-1171
ase5:12-cv-00630~LHK
K
Document: 40
Page: 184
Filed: 03/06/2015
*SEALED* Filed091O8/14
Filed09/08/14 Page9
Page9of
of 45
45
synchronize structured data."

data:' The
The Court
Court agrees that substantial
substantial trial evidence permitted aa
Chase explained
explained to
to the
the
reasonable jury to determine
determine non-infringement
non-infringement on at least this basis. Dr. Chase
ofthe
the E-mail
E-mail data
data class"
class"that
thatare
areconfigured
configuredtotosynchronize
synchronize
Sync Adapters
Adapters of
jury that "there are no Sync
structured data. Id. at 2167:20;..2168:6.

2167:20-2168:6. He disagreed
disagreed directly
directly with Dr. Snoeren's
Snoeren's analysis
anallysis after
for the
the Gmail
Gmail Sync
Sync Adapter
Adapterthat
thatDr.
Dr.Snoeren
Snoerenexamined.
examined.See
See id. at
reviewing the same source
source code
code for
2170:
12-2171 :5. Dr. Chase
Chase opined
opined that
that the
the Sync
Sync Adapters
Adapters are
arenot
not"configured
"configuredtotosynchronize"
synchronize"
2170:12-2171:5.
synchronize data
data themselves,
themSelves, but
but rather
rather indirectly
indirectly"cause"
"cause"synchronization
synchronizationby
by
because they do not synchronize
calling other
other software
software components.
components. Id.
It!. at 2180:
17-2181: I 1 ("1
mechanic to
to fix my car;
car~
2.180:17-2.181:11
('t can call the mechanic
and if
ifthat
causes the
the mechanic
mechanic to
to fix
fix my
my car,
car, II really
reallycan't
can'rsay
saythat
thatI 1did
didititmyself
myselfororI ) could
that call causes
could do
to
10
it myself.
Furthermore, Dr. Chase told the
the jury that
that "{t]here's
"[t]bere's no
nosynchronization
synchronizationof
ofstructured
structured
myself."). Furthermore.
...
11
II
data of
of these classes in
in the
the Exchange
Exchange Sync
Sync Adapters"
Adapters" because
because "the code passes a synchronization
synchronization
Qa:!
12
request along to another

another component
componentof
ofExchange
Exchange called
calledthe
theExchange
ExchangeService."
Service."Id.
It!.atat2713.232713:23-
~~
.....
'" ...-
13
Samsurig also
also called
called Google
Google manager
managerPaul
Paul Westbrook,
Westbrook,who
whotestified
testified that the Gmail Sync
2174:6. Samsung
Q.!!!
A
14
Aqapter
"passes messages
messagesbetween
behveenthe
theSync
SyncManager
Manager here to this Mail Engine here,"
here,'" and that
that itit isis
Adapter "passes
15
the Mail Engine that

ofthe
theGmail
GmaHAndroid
Android
theMaii
that performs
performs synchronization,
synchronization. to
to optimize
optimizethe
thespeed
speedof
~o
l6
16
application. It!.
1649:20-1650: 12. Mr.
Mr. Westbrook
Westbrook also
also testified
testified that
thatthe
theExchange
ExchangeSync
SyncAdapters
Adapters
Id. at 1649:20-1650:12.
...." .c
-....
17
Id. at 1653:1-17.
1653: 1-17. Based on
on this
this expert
expert and
and factual
factual
only pass messages without
without synchronizing.
synchronizing. [d.
0
u.5
18
testimony, the jury

jury could
could have
have decided
decided that
thatthe
theaccused
accused products
productslack
lackthree
threedistinct
distinctsynchronization
synchronization
19
thus do
do not
not infringe.
infringe.
software components, and thus
").
I':S
'2
t.
::I:'::
UU
'.tic>
- ....
"'0
",Q
O
~c
c= ...
.... !I)
VJ..!::.
"t't:
:::z
CV
20
Apple contends that Samsung

Samsung made
made improper
improper claim
claim construction
constru..:tion arguments to the jury by
21
stating that "configured

different from "causing"
"causing" another
another software
softwarc component
component to
to
"configured to synchronize"
synchronize" isis different
22
synchronize. According to Apple,

Apple. "Samsung
"Samsung proposed
proposedthat
thatthe
thejury
jury 'import
import fl additional limitations
23
into the
suggestingthat
thatthe
theclaim
claim required that au sync adapter
adapter be
be configured
configured to
to
the claims'
claims' ...
... bybysuggesting
24
way." Mot.=at
Mot. at 13. Apple
synchronizationor
ortotoperform
performsynchronization
synchronizationinina-a specific way."
perform all synchronization
25
further asserts that Samsung's

alleged claim
claim construction
construction "is
"is also
alsoinconsistent
inconsistentwith
withthe
the
Samsung's alleged
26
o1't11.:
'414 patent's
patent'sintrinsic
intrinsicrecord.
record.
specification and the prosecution history," and cites portions of
the '414
27
13-14.
Id. at 13-14.
28
9
Case No.: 12-CV-00630
11-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION

MOTION FOR
fOR IUDGMENT
JUDGMENT AS
AS AAMATTER
MATIER
OF LAW
A100
Case: 15-1171
Document: 40
Page: 185
Filed: 03/06/2015
se5:12cv-00630-LHK
PagelOof
of 45
45
se5:12-cv-00630-L.HK Document1963
*SEALED* Filed09J08J14
Apple's
arguments regarding
regarding claim
claim construction
construction are unfounded
unfounded.Apple
Applerelies
reliesheavily
heaviJy
Apple's arguments
throughout its papers

papers on Moba
Moho B.V
B. V. v.v. Diamond
DiamondAutomation,
Automation,Inc.
Inc. In Moho,
Moba, the district court
claim prior
prior to
to trial,
trial, but
but when
when resolving
resolvingpost-trial
post-trialmotions,
motions."reasoned
"reasonedthat
thatthe
the
construed aa method claim
fromthe
thetestimony
testimonypresented
presentedthat
thatsequential
sequentialperformance
performanceisis
jury reasonably
reasonably could
could have
havedetermined
determinedfrom
jury
ofthe
themethod
methodclaim.
claim.325
325F.3d
F.3d1306,
1306,13.13
1313(Fed.
(Fed.Cir.
Cir.2003).
2003).The
TheFederal
Federal
a necessary characteristic"
characteristic"of
Circuit reversed, holding

holding that
that`the
''thedistrict
districtcourt
courtallowed
allowedthe
thejury
jurytotoadd
addan
anadditional
additionallimitation
limitationtoto
the district court's

construction." ld.
Moho dealt with a situation where the
the district
district court
court had
had
Id. Thus, Moba
court's construction."
already construed
construed the
the claim
claim at
at issue,
issue. but
butrelied
relied on
on an
an extra
extralimitation
limitationwhen
whenreviewing
reviewingthe
theverdict.
verdicL
However, the Federal

Federal Circuit
Circuit has
hasclarified
clarified that
thatparties
partiesmay
may not
notre-argue
rc-argueclaim
claimconstruction
constructionininpostpost..,
10
.!:
...c:
11
trial motions:
}..o
l3
13
_.",0
14
14
c;I'"
_
0
15
15
"0'"
(UO
16
When issues of
not been
been properly
properly raised
mised in
in connection
connectionwith
with
of claim construction have not
jury instructions, itit isis improper
improper for
for the
the district
district court
court to
to adopt
adoptaa new
newor
ormore
more
the jury
detailed claim construction
construction in
in connection
connection with
with the
the JMOL
JMOLmotion.
motion.On
OnJMOL.
JMOL,the
the
question of
ofwhether
whethersubstantial
substantialevidence
evidence
issue here should have been limited
limited to the question
Alolia, B.
B. V. v. Diamond
Diamond
supported the verdict
verdict under
underthe
theagreed
agreedinstruction.
instruction. See Moba,
Automation, Inc..
Inc., 325
325 F.3d
F3d 1306,
1306, 13l3-14
where
1.313-14{Fed.
(Fed. Cir.
Cir. 2003).10
2003). In other words, where
the parties
parties and the
the district
district court
courtelect
electto
toprovide
providethe
thejury
juryonly
onlywith
withthe
theclaim
claim
of
an. interpretation
interpretation of
of the language in the light of
language itself, and do not provide an
specification and
and the
the prosecution
prosecutionhistory,
history,ititisisloo
latcatatthe
theJMOL
JMOLstage
stagetoto
the specification
too late
argue for or adopt
adopt aa new
new and
and more
more detailed
detailed interpretation
interpretationof
ofthe
theclaim
claimlanguage
languageand
and
more detailed
detailedinterprc
interpretation.
test the jury verdict
verdict by
new and
and more
tation.
tr that new
17
Hewleft-Packard. 340
340F~3d
1320-21. InePlus,
v. Lawson
LawsonSofi
Softll'are.
Hewlett-Packard,
F.3d at 1320-21.1n
ePlus, Inc. v.
rare,Inc.,
Inc., the
the parties disputed
IS
18
claimterm
term ''determining"
"determining"required
requiredananelement
element
could decide
decidethat
that the
the unconstrued
unconstrued claim
whether the jury could
19
of
Cir. 2012).
2012). The Federal
Federal Circuit
Circuit rejected
rejected the
the appellant's
appellant's
of control. 700 F.3d 509, 520 (Fed. Cit.
20
rding the meaning

argument as "essentially
"essentiallyraising
raising aaclaim
claimconstruction
construction argument rcg
rcgording
meaning of
ofthe
the term
term
2[
21
'determining'
in the
theguise
guiseof
ofaachaUenge
to the
the sufficiency
sufficiency of
ofthe
the evidence
cvidcnceof
infringement,." and
`determining' in
.challenge to
of infringement;"and
22
f cc to rely on the plain and

held that in the absence of
ofan express
eXpress construction,
construction., 'the
"thejury
jurywas
was fn:c
23
term." Id.
Id. Accordingly,
ordinary meaning of the term:'
Accordingly. itit isis improper tc
to create
..:rcate a new claim construction
24
after the verdict, and parties

partiesmay
may not
notrevisit
revisitclaim
claimconstruction
constructionfor
forterms
terms governed by
by plain
plain and
'r
-)
25
meaning.
ordinary meaning.
E
t:'
:s:.:::
Oc;l
UU
L- ...
.
41
(,/0
-"'""
II'~~
I
12
~~-
<I.l
...
."" ttl
~c:
00,':
0
=4.>
.
::J':5
~;z:
....
0
lJ;...
26
27
28
Here.
seeks a post-trial
post-trial construction
construction for
for "configured
"configuredtotosynchronize,"
synchronize."raising
raisingnew
new
Here, Apple seeks
arguments regarding
regarding the
the '41:4
'414 patent's
patent'sspecification
specificationand
andprosecution
prosecmionhistory,
history.despite
despitenever
never
10
Case No.: 12-CV-00630
12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
AMATTER
MATIER
OF LAW
A101
Case: 15-1171
Document: 40
Page: 186
Filed: 03/06/2015
e5:12-cv-00630-LHK
45
e5:12-cv 00630-LHK -Documenti963
FiledO9l08/14 Pagell
Pageli ofof45
I
1
requesting such a construction before. At trial, Apple did

Dr.Chase's
Chase'stestimony
testimonyasas
did not
not objt:;,:t
objet totoDr.
improperlyarguing
arguingClaim
cJaim construction..
construction. See
See Price v. Kramer..
Kramer. 200 F.3d 1237,
1237. 1252
1252 (9th Cir.
Cir. 2000)
2000)
improperly
33
to testimony
testimony waives argument on appeal). Furthermore,
Furthermore, this
this Court
Court
(noting that failure to object
object to
WhenApple
Applesought
soughtsummary
summary
already addressed and
and rejected
rejected Apple's
Apple'sargument
argumentbefore
beforetrial.
trial.When
ofinfringement,
infringement, the
the Court
Court noted
noted than
that: (1)
(1) the
the parties did not seek a construction of
judgment of
of
judgment
jury could
"configured to synchronize,"
synchronize." (2.
(2)) that plain and ordinary meaning applied,
applied, and (3)
(3) that
that "a
"ajury
could
77
reasonably conclude
conclUde that
that the
the accused
accused Sync Adapters merely dired
other components
componentS to
to perform
perform
direct other
8g
'configured to
to synchronize
synchronize structured
structured data'
data'as
as
synchronization operations and are not themselves 'configured
9
9
required by the claim."

claim:' ECF
ECF No.
No. 1.151
1151 at 23-24. Apple'saucmpt
lJ revisit this decision is
is
Apple's attempt :.>
10
1.0
Inc..
03561-WHA, 2012 U.S.
by fact
factor
law. See Oracle
Oracle Ant.
Am. v.v. Google
.. N.
N,J.1=,.-CVW-CV-03561-WHA.
unsupported by
or law.
Goggle inc
11
Dist"
*9 (N.D.
(N.D. Cal.
Cal. May
May 30,
30, 2012)
2012) ("Rule
(<<Rule:O
Hot an
311 occasion
occasion for
for yet
yet another
another
Dist. LEXIS 75026, at *9
.`() ii-,.ot
==
12
'').
round of summary judgment
judgment based
based on
on new
new slants
slantson
onthe
thecas.:
case13\\
la ."j.
1;:<9
cJ
!;.)U
--.(;1;;
.2
....
""c)
.Q.:!a
A-....
I3
13
ell ...
Apple's
Apple's remaining
remaining arguments
arguments challenge
challenge Samsung's
Samsung'sinterpretation
interpretationof
ofthe
theconflicting
conflicting
14
at 10-I
1Q-ll;
at 4-6.
4-6. However,
However. "we
"We do I1i
\t wejgh
weigh the evidence or make
Mot. at
1; Reply at
not
testimony. See Mot
15
of law;"
law."
of granti,ag
grantillgjudgment
matter of
credibiUtydetetminations
credibility determinations in assessing the propriety of
jdgment asasaamatter
u O
16
Harperv.
Angeles, 533 F.3d 1010,
1010, 1021
1021 (9th
(9th Cir.
Cir. 20
20ng).
evidence
Hat
per v. City of
of Los Angeles,
" S). Because substantial evidence
-S...
tl..
`
J7
17
supports the jury's

non-infringementverdict,
verdict,the
theCourt
CourtDENIES
DENIES.
respect to
apple's motion with respect
to the
the
jury's non-infringement
. \\pple's
18
'414
414 patent.
",Q
2S
.au
00-5
"C ...
o=ou
!::z
~-S
a..
J'aseut
of Claim
Claim 25
2S of
oftbe
Infringement of
the '959 i'aklll
19
C.
20
The '959
"959 patent
patent is
is directed
directed to a "universal interface
interfa~\! iir
lorretrieval
r.:trievalof
of information in
in a
21
computer
"univer~j search."
search:'Apple
:\pplcasserted
ussertedclaim
claim25
25of
ofthe
the'959
'959
computer system,"
system:' also
also colloquially
colloquially called
called ùniversal
22
against Samsung.
Samsung. The
The jury
juryfound
found that
thatnone
noneof
ofthe
theten
tenac:
ac\,:t:scd
Samsungproducts
productsinfringes
infringes
patent against
;.scd Samsung
23
patent. See ECFNo.

a::,aJ matter
matterof
oflaw
lawof
ofinfringement
infringement
the '959
'959 patent.
ECF No, 1884 at
at 9.
9. Apple
Apple seeksjudgmcHi
seeks judgmc:.::,
24
or, alternatively, a new trial on infringement and damages. Clam.:

Cbim :::5
claim 24. Both
Both
from Maimor,
'5 depends from
25
claims recite:
recite:
26
27
infornyation from
from aa plurality
plurality of
24. A computer
computer readable
readable medium
medium for
for locating
locating information
locations containing program
program instructions
instructions to:
to:
28
28
11
II
Case No.:
No.: 12-CV-00630
Case
III PART APPLE'S MOTION

ORDER GRAl'-.'TING
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A MATTER
MATIER
GRANTING IN PART AND DENYING IN
OF LAW
A102
Case: 15-1171
Document: 40
Page: 187
Filed: 03/06/2015
seS:12-cv-00630-LHK
:12-cv-00630-LHK Document1963 *SEALED'"
Page12of
of45
45
receive an
an information
information identifier;
identifier;provide
providesaid
said information
informationidentifier
identifiertotoaaplurality
pluralityofof
receive
heuristics to locate information in the plurality of'locations
of locationswhich
whichinclude
include
media;
the Internet and local
local storage
storagemedia;
determine at least one
one candidate
candidate item
item of
ofinformation
based upon
upon the
theplurality
pluralityof
of
information based
heuristics; and
and
display a representation of
ofsaid
said candidate
candidate item
item of
ofinformation.
infonnation.
25. The computer

computer readable
readable medium
medium of
ofclaim
claim 24,
24, wherein
wherein the
the information
informationidentifier
identifier
separately to
is applied separately
to each
each heuristic.
heuristic.
'959
24. 25. Apple claims
claims that
that itit presented
presented evidence
evidence that
that all
all products
productssatisfy
satisfyeach
each
`959 Patent cis. 24,
6
limitation of
challen=ged
limitation
ofclaim
claim25,
25,while
whileSamsung
Samsungunsuccessfully
unsuccessfully
challengedonly
onlyone
onelimitation::
limitation.The:`Cottrt
The Court
7
DENIES Apple's.
Apple's motion.
motion. The
The jury's
jury'snon-infringement
non-infringementverdict
verdictisis SJlpported
disagrees and DENIES
supported by
8
substantial evidence
evidence and is
is not
not contrary
contraryto
tothe
the clear
clear weight of :h.:
f%eevidence.
evidence.
9
instructions to
to "provide
provide said
The parties focus on claim 25's
25'srequirement
requirementfor.
for instnlcttons
saidinformation
information
I4
10
.:!!
E
E
11
II
==
o~
8a
UU
.........G
12
1.2
t:!
~o
.L~o
+
-.on ...
infringement of
ofthis
thiselement,
element,Apple
Applerelied
reliedon
on
the Internet and local storage
storage media."
media."To
Toprove
proveinfringe01ent
expert testimony from Dr.
Dr. Snoeren.
Snoeren. See generally Tr. at 940:21-945:5,
940:21-945:5. 952:8-956:23.
952:8--956:23. In
In the
:the
13
14
S.~
. 14
onO
~c
sa
a,
"t:I ....
16
;;,;:).;:
11
00-5
...
0
t.:...
accused products,
pr()ducts, Dr. Snoeren
Snoeren identified
identified the
theinfringing
infringing llmctiUl1;llit>'
as the
the Quick Search Box
Box (or
(or
i cti:;nality as
'`Google Search")
Gingerbread, Jelly
!m `.::ndwich
theOingerbread,
JellyBean,
Bean,and
andIceIccC.
Cn.,"HU
S:llldwich.versions
versionsofofAndroid.
Android.
"Google
Search")ininthe
15
.sO
._z
r:::lv
identifier to a plurality of
ofheuristics
heuristics to
to locate
locate information
information in
in the
theplurality
pluralityof
oflocations
whichinclude
include
locations which
lei.
942:7-19 (Gingerbread),
(Gingerbread), 943:13-944:7
943;13-944:7l(Jdly
Beanand
andIce
CreamSandwich).
Sandwich).
Id. at 940:21-941:20, 942:7-19
clly Bean
Ice Cream
For Gingerbread, Dr. Snoeren told
told the
the jury
jury that
thatthe
the "Web ivt.>,Lk
til..: Samsung
Samsung products"
products"
M,.,'I:; ininthe
information on
on the
theInternet
Interneti.e;.tt:se
b;,;\:~ltI:>citit"combine[s]
"combine[s]places
placesthat
thatthe
the
provides a heuristic for locating
18
18
user has actually

actually previously
previouslybrowsed
browsedusing
usingthe
theweb
webbrowser
browseri.:;d
.md suggestions that the Google search
search
19
13c.,n :md
Id. at 956:8-23. For
suggestion server has presented."
presented." lei.
For Jelly fk.m
: ;adIcc
IceCream
Cream Sandwich.
Sandwich, Dr.
D.
20
i11t2cl;:lc that on these versions of
Snoeren testified that the "Google
"Google Module"
Module"isis"the
''theheuristic
heuristic mUGuh:
ofthe
the
21
22
lei. ,Itt.t'945:.
945:2-5;
PDX91.24
91.24(Apple
(Apple
phone provide the
the Internet
Internet searching
searchingapplications."
applications."Icl.
:.,tsci,!
e PDX
demonstrative).
demonstrative).
23
penn it the jury to decide

decide that
that
However.
presented sufficient
sufficient rebuttal
rebuttal ~\'iJ":;i':C
cvi..::.c to permit
However, Samsung presented
24
the accused
accused devices
deviceslack
lackinstructions
instructionstotosearch
search"a"aplurality
pluraEty c,::
uj' ~ >cation:;
Internet,"
ications which include the Internet,"
25
as claim 25 requires. Bjorn Bringert, a Google

hu \,'
llk~Jon
on "all"
"all"versions
versionsof
ofthe
the
Google engineer
engineer \\who
:, .;led
26
acL "',;
d Gvoglc
1568: 15-22),explained
explainedthat
thatthe
th.: aCL'
Google search app
app (Tr.
(Tr. at
at 1568:15-22),
Google search functionality
27
employs a software
software method
methodcalled
c(llledblendResultsO
blendResultsOthat
thatdues
du..:snolli LL
': , ..:.
r..:h the
theInternet,
Internet,but
butrather
rather
.Feh
28
12
Case No.: I2-CV-00630
12-CV-00630
ORDER GRANTING IN
l' "'
'!',n'i
"": FOR
!'OR JUDGMENT AS A MAITER
MATTER
IN PART AND
AND DENYING IN
IN PART
PARTAP!'LE'S
API .!TS 1\"
OF LAW
A103
Case: 15-1171
Document: 40
Page: 188
Filed: 03/06/2015
K Document2963
Pagei3 of
se5:l2-cv-00630-LHK
"'SEALED'" Filed09108114
Filed09108/l4 Page13
of 45
45
"blends"data
datapreviously
previouslyretrieved
retrievedfrom
from-aaGoogle
Googleserver
serverand
and a local database.
database. See
See id.
id at
at 1567:8-23
1567:8-23
"blends"
("Q. Now this Blend Results, does

does that
that search
searchthe
theInternet?
Internet?A.
A.No,
No,ititdoesn't.
doesn't....
. ..The
Theblender
blender
33
doesn't go
go and buy them or
or locate
locate them.").
them.''). Samsurtg's
Samsung'sexpert
expertDr.
Dr.Martin
MartinRinard
Rinardtestified
testifiedtotothe
the
doesn't
conclusion.: "What it's

it's doing is taking information that has
has already
already been
been located,
located, either
either in
in the
the
same conclusion:
can't possibly
the
possibly be
be any
any of
ofthe
locaJdatabase
or by
by the
the Google
Googleservers,
servers,and
andputting
puttingitittogether.
together. So it can't
database or
local
claim 25."
25." Id.
Id. at 1890.11-21.
1890:11-21.
heuristics in claim
Apple.
claims that Samsung'
Samsung'ss positions
po~itionscontradicted
contradictedthe
theplain
plainclaim
claimlanguage
languagebecause
becauseclaim
claim
Apple claims
"does not
not require
require the
the accused
accused device
device or
orapplication
application to
tosearcb
theInternet
Internetevery
everytime
timethe
theuser
user
25 "does
search the
"[tJhe fact
fact that
that something
something else initially
initiallyiocatedinformation
located information on
on the
the Internet
Internet
inputs a query,"
query," and "[t]he
10
on the
the Internet."
Internet."Mot.
Mot.atat19-20.
19-20.
affect whether
whetherthe
theheuristic
heuristic also locates information on
does not affect
'sE
II
Apple's argument
argument isis misguided.
misguided. The
The '959
'959patent
patentrequires
requiresheuristics
heuristics to "locate
"locate information
information in
inthe
the
Apple's
==
00:1
._""u
12
of locations which
which include
include the
the Internet."
Internet." Apple
Apple implies
impliesthat
thata
systeminfringes
infringesififit
locates
plurality of
a system
it locates
u o
13
stored locally
locallybut
butis,
is,ororwas
wasatatsome
sometime,
time,also
alsopresent
presentononthe
theInternet.
Internet.However,
However,
that isis stored
information that
Q .!!!
14
Apple never requested such aa strained

strained claim
claim construction,
construction, and
and the
the jury
jury was
wasfree
free to credit the
"'S
=4)
15
testimony from Dr. Bringert

Bringert and
and Dr.
Dr. Rinard
accused search
search features
features did
did not
not
Rivard and conclude that the accused
'go
0
16
infringe. Apple's
Moba v. Diamond
DiamondAutomation
Automation isis once again misplaced. As explained
Apple's reliance on hloba
i=liS
=4>
11
17
performance" requirement
requirement
above, Moba held that the district court improperly added a "sequential performance"
tL.
18
13.13-14. Here,
when assessing
assessing aajury
verdict. 325
325 F.3d
F.3d at 1313-14.
to a previously construed
construed method
method claim
claim when
jury verdict.
19
newclaim
claim construction
construction position
Rather, itit is
is Apple
Apple that
that asserts
asserts ::a
a new
position
Samsung made no such argument. Rather,
20
not request
request additional
additional claim
claim construction,
construction, and
andplain
plainand
andordinary
ordinary
after trial, when Apple did not
21
2.1
meaning applied to the

the 'terms
terms that Apple
Apple now
now raises.
raises.
0:1
t:c
a.
tj
tU
U
... <""
.i5
~O
.... ..c:
flit::
;::Z
z
...0
22
an inconsistent
inconsistent position
position regarding
regardinginvalidity
invalidityof
ofclaim
claim
Apple also argues that
that Dr.
Dr. Rinard
Rinard took
took an
23
25 because he opined that

that the
the "WAIS"
'WAIS"prior
priorart
artreference
reference applied a heuristic after data was
24
data did
did not
not need
need to
to be
be on
on the
the Internet.
Internet. However,
However.Dr.
Dr.Rinard's
Rinard's
retrieved, suggesting that the
the data
25
he described
described aa "relevance
"relevanceranking
rankingheuristic"
heuristic" that sorted data
testimony was not so contradictory: he
26
WAISreference
referenceperformed..
performed.
entries.
identified searches
searches"from
"fromthe
theInternet"
Internet"that
thatthe
theWAIS
entries, but separately identified
27
Jd.
concluded that
that claim,25
claim 25 was
wasnot
not invalid, so it
Id. at 1928:8-20, 1927:20-24. Moreover, the jury concluded
28
28
13
CaseNo.:
12~CV-00630
Case Na 12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART

FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MATIER
PART APPLE'S
APPLE'S MOTION FOR
OF LAW
A104
Case: 15-1171
Document: 40
Page: 189
Filed: 03/06/2015
Page14of
of45
45
se5:12-cv-00630-LHK
*SEALED* FiledO9f08I14
have determined
determinedreasonably
reasonablyand
andconsistently
consistentlythat
thatclaim
claim25
25reads
readsononneither
neitherthe
theWAIS
WAIS
could have
nor the
the accused
accuseddevices
devicesdue
duetotolack
lackofofsearches
searcheson
onthe
theInternet.
Internet.
reference nor
33
Samsung
Samsurtg further
further argues
argues that
thatthe
thejury
jury could
couldhave
havedecided
decidedthat
thatthe
theaccused
accusedproducts
productslacked
lackeda a
ofheuristics
heuristics because Dr.
Dr~ Snoeren identified only a single heuristic for each product"plurality" of
"plurality"
product-
either the Web

Web Module
Module (for
(forGingerbread)
Gingerbread)orOfthe
theGoogle
GoogleModule
Module(for
(forJelly
JeUyBean
Beanand
andIce
IceCream
Cream
either
Dr;
Sandwich). See
Opp'natat14-15.
14-15.Samsung
Samsungfails
fails to
to explain
explain the
thebasis
basisfor
forthis
thisargument,
argument,ininlight
lightof
ofOt.
Sandwich).
See Opp'n
Snoeren'sidentification
identificationof
ofother
other"modules"
"modules" ininthe
theaccused
accusedoperating
operatingsystems,
systems,such
suchasasBrowser
Browserand
and
Snoeren's
Jelly Bean
Beanand
andIce
IceCream
CreamSandwich.
Sandwich.See
SeeTr.
Tr.atat950:22-951:8
950:22-951:8("1
("Ifound
foundininthe
thecase
caseofof
Contacts in Jelly
Gingerbread two modules, the Contacts

Contacts Module
Module and
and the
the Web
Web Module,
Module, and
and in
in the
theother
othertwo
two
10
were four.");
four,");PDX
91.24. However,
However, even
even setting
settingthis
this issue
issue aside,
aside,substantial
substantial
versions there were
PDX 91.24.
11
Ii
jury'snon-infringement
non-infringement verdict,
verdict. as
as explained
explained above.
above. Apple's
Apple'smotion
motion
supports the jury's
evidence supports
UU.... aU
12
regarding infringement
infringement of
ofthe
the '959
'959patent
patentisisDENIED.
DENIED.
regarding
........
""t>
ColO
13
D.
~.;e
14
Apple also seeks

seeks judgment
judgmentas
as aa matter
matterofJaw
that Samsung
Samsung (specifically,
(specificany~SEC
SECand
and STA)
STA)
of.law that
-;E
e
t5
15
infringed the
the '647
'647patent
TheFederal
FederalCircuit
Circuitset
setthe
therelevant
relevantstandard
standardfor
forthe
thewillfulness
willfulness
willfully infringed
patent. The
16
inquiry for patent infringement: "a

"a patentee
patentee must
must show
show by
by clear
clearand
and convincing
convincingevidence
evidencethat
thatthe
the
;:J.;:i
17
objectively high
high likelihood
likelihood that
that its
its actions
actions constituted
constituted infringement
infringementof
ofaa
infringer acted despite an objectively
IJ:..
18
valid patent. The

The state
state of
ofmind
mind of
ofthe
the accused
accused infringer
infringer is
is not
not relevant
relevant to
to this
this objective
objectiveinquiry.
inquiry. IfIf
19
this threshold objective

objectivestandard
standardisissatisfied,
satisfied.the
thepatentee
patenteemust-also
must rusodemonstrate
demonstratethat
thatthis
this
20
. . was
objectively-defined risk.
risk ...
waseither:
either known or so obvious that
that itit should
should have
havebeen
beenknown
knownto
to the
the
21
Tech.. LLC, 497

497 F.3d 1360, 1371
1371 (Fed.
(Fed. Cur.
eir. 2007) (internal
accused infringer."ln
infringer." In re SeagaJe
Seagute Tech.,
22
inquiry isis aa two-prong

two-prong analysis,
analysis, requiring
requiringan
anobjective
objective
citation omitted). Thus, the
the willfulness
willfulness inquiry
23
inquiry and a subjective inquiry,

inqUiry
inquiry. The
Theobjective
objectiveinquiry
inquiryisisaaquestion
questionfor
forthe
theCourt,
Court,and
andthe
the
24
subjective inquiry is a question for

for the
the jury.
jury. See Bard
Vascular. Inc. v.
v. W.L:
W.L. Gore &
Bard Peripheral Vascular,
&
25
Assocs., Inc.,
inc., 682
682 F.3d 1003, 1007 (Fed. Cir. 2012). A patent
patent owner
owner must
must prove
prove willfulness
willfulness "by
"by
26
clear and convincing evidence."

evidence." Seagate, 497 F.3d at 1371.
137 I .
t':S
'8E
0
tt2
::s:'::
Qt':S
~
._-="0
~Q
(;}~
!~
..,
=/1)
....
0
Infringement of
of Claim 9 of
oUlte
'647 Patent
Patent
Willful Infringement
the '647
27
28
14
14
Case
CaseNo.;
No.: 12-CV-00630
12-CV-00630
A MATTER
MA'ITER
JUDGMENT AS A
OF LAW
A105
Case: 15-1171
Document: 40
Page: 190
Filed: 03/06/2015
e5:l2-cv-Q0630-lHK
:12-cv-00630-LHK Document1963
DocumenU963 *SEALED*
*SEAlED* Filed09108114
Filed091081l4 Page15
Page15of
of45
45
case, the
the jury
jury found
found that,
that,as
asaasubjective
subjectivechatter,
matter, Samsung
Samsungdid
didnot
notwillfully
willfullyinfringe
infringe
In this case,
2
'647 patent.
patent, ECF No. 1884
1884 at 7. In other words, the jury considered
considered whether
whetherthe
the"objectively"objectivelythe '647
defined risk (determined

(detennined by
by the
the record developed
deveJoped in the
the infringement
infringementproceeding)
proceeding)was
waseither
either
that itit should

should have
have been
been known
known to the accused
accused infringer,"
infringer," Seagate, 497 F.3d
F.3d at
known or so obvious that
detennined that
that itit was
was not.
not. Apple
Appleposits
positsthat
thatSamsung
Samsung willfully infringed because Apple
Apple
1371, and determined
writtennoticetoSamsung
ofthe
the '647
'647patent
patentinin August 2010 (.see
(see PX 132),
132). and Samsung
Samsung
gave written
notice to Samsung of
subsequently copied
copied the
the "quick
links"feature
featureand
and continued
continuedto
to infringe even
even after this lawsuit
lawsuit
subsequently
"quick links"
began. However, Samsung

Samsung points
points to
to substantial evidence that
that supports
supportsthe
the jury's
jury'sview
viewtotothe
the
contrary. Specifically,
Specifically. Apple's
Apple'sexpert
expertDr.
Dr~Mowry
Mowryadmitted
admittedon
oncross-examination
cross-examinationthat
thathis
hisexpert
expert
10
report noted that

that "the
"'the accused
accused browser
browserfunctionality
functionality has
has existed
existed in
in Android
Androidsince
since at least version
11
l5
that there
there have
have been
been no
no changes in the accused
accused functionality,"
functionality /'and
and
1.5 (Cupcake)
(Cupcake)...
... and that
U
U
UV
12
Cupcake was
was released
released in
in April
April 2009.
2009. Tr.
Tr. at
at 919:9-920:14.
919:9-920: 14.Because
Becausethe
theaccused
accused
acknowledged that Cupcake
....
13
ofthe
the '647
'647patent,
patent.this
thistiming
timingcould
couldnegate
negate any
featuresappeated
features:
appeared before
before Apple
Apple notified Samsung of
~.~
14
inference of
Sam sung. The
The jury
jury also could have
have concluded
concludedthat
thatSamsung
had
of copying by Samsung.
Samsung had
\!!S~
15
reasonable defenses
defenses to
to infringement,
infringement,despite
despitethe
the ultimate verdict of
of infringement
infringement and
and no
no invalidity.
invatidity~
16
Samsung presented expert

expert testimony
testimony from
Dr. Kevin
Kevin Jeffay
Jeffay on
on both
both non-infringement
non-infringementand
and
from Dr.
17
of claim 9 of
of the
invalidity of
the''647
647 patent,
patent,and
andSamsung
Samsungdid
did not
notpresent
presentevidence
evidenceregarding
regardingthe
the
18
Samsung's defenses
adequacy of
ofSamsung's
defensesthroughout
throughoutthe
thelawsuit.
lawsuit.22
E
tIS
's
t:~
=;.:::
I!!!
am
... <0-..
(10
.E+ U
'Ct)
~
.:1 b
AQ
aO
-eE
;j,
"CIo
!;zo
U
=<1)
~.s
....00
\:X,.
e4
As explained above,
above, willfulness
willfulness requires
requires both
both that
that the
the jury
jury find
find subjective
subjectivewillfulness
willfulnessand
and
19
20
that the court findl

find objective
no subjective
subjectivewillfulness,
willfulness,and
andthe
the
objective willfulness. Here, the jury found no
21
Court agrees that substantial

substantial evidence
evidence in
in the
the record supports
supports this
this finding.
f'mding. Therefore,
Therefore,even
evenifif the
22
Court were to find the objective

objective prong
prong satisfied,
satisfied, there
there can
can be
beno
no ultimate
ultimatewillfulness
willfulnessdetermination.
determination.
23
Accordingly, the Court

Court need not
not reach
reach the
the objective
objective analysis.
analysis. Apple's
Apple'smotion
motionisisDENIED.
DENIED.
24
25
26
27
28
2 The parties
whether Apple
Apple proved
proved that
that itit practices
practicesthe
the '647
'647patent
patent(for
(forpurposes,
purposes.of
of
also dispute whether
establishing that Samsung copied the patented feature), and Samsung's
Samsung'salleged
allegedability
abilitytotodesign
design
around the patent. Resolving these disputes
disputes isis unnecessary
unnecessary because
because the
thejury
jurycould
couldhave
haverelied
reliedon
on
the other evidence discussed here to find no subjective willfulness.
15
Case No.:
-00630
No.: l12-CV
2-CV-00630
ORDER GRANTING IN PART AND DENYING
DENYING IN
IN PART
PART APPLE'S
APPLE'S MOTION FOR
FOR JUDGMENT AS A MATIER
MATTER
OF LAW
LAW
A106
Case: 15-1171
Document: 40
Page: 191
Filed: 03/06/2015
Filed09/O8/14 Pagelb
se5:l2-cv-00630-LHK Document1963
Document1963 "'SEALED'"
Page16of
of45
45
WhetherSamsung
SamsungFailed
Failedto
toEstablish
EstablishAffirmative
AffirmativeDefenses
Defenses
Whether
E.
moves for
for judgment
judgmentas
asaamatter
matterof
oflaw
lawthat
thatSamsung
Samsungfailed
failedtotoprove
provethe
theaffirmative
affirmative
Apple moves
33
in Samsung's
Samsung'sAnswer,
Answer,including
includingwaiver,
waiver,acquiescence,
acquiescence,estoppel,
estoppel.laches,
laches.failure
failuretoto
defenses listed in
mitigate,
mitigate. prosecution history estoppel,
estoppel, prosecution
prosecution laches,
laches, "acts
"acts of
ofplaintiff,"
plaintiff,"and
and"actions
"actionsof
of
others:' Mot.
Mot at
at 22
22 (,citing
(citing ECF No. 107).
107). Apple
Apple notes
notes that
that Samsung
Samsungdid
didnot
notoffer
offerany
any evidence
evidenceaatt.
others."
defenses. Id.
ld. The
The Court
Court denies Apple's
Apple'smotion.
motion.
trial on these defenses.
71
Because Samsung
Samsungdid
did not
notinclude
includethese
thesedefenses
defensesininthe
thejoint
jointpretrial
pretrialstatement,
statement,which
whichthe
the
88
specified the "issues

"issues of
offactand
law remaining
remaining to
to be
belitigated/'
ECFNo.
No.1455.1
1455-1atat.
parties stated specified
fact and law
litigated," ECF
25. Samsung abandoned

abandoned those
thosedefenses
defensesand
andthey
theywere
wereeliminated
eliminatedfrom
fromthe
thecase.
case. Cf
Cj:S.
& Cal.
Cal Retail
Retail
25,
10
728 F.2d 1262, 1264

v.Bjorklund,
1264 (9th
(9th
Bjorklund, 128F.2d
Clerks Union and Food Employers Joint PensionTr;
Pension Tr. Fund v.
11
1i
Cir.
1984) ("We
Cir.1984)
("We have
have consistently
consistentlyheld
heldthat
thatissues
issuesnot
notpreserved
preservedininthe
thepretrial
pretrialorder
order[under
[underRule
Rule
a.~
0U
t~
.-....-Q,....,
12
12
3 Nonetheless, Apple
16(e)J
from the
the action.").
action.").3Nooetheless,,
Apple does
does not
notcite,
cite,nor
norhas
hasthis
this
16(e)] have been eliminated
eliminated from
13
13
Court found, any

any case
case inin the
theNinth
NinthCircuit
CircuitororFederal
FederalCircuit
Circuitholding
holdingthat
thatwhen
whena aparty
partyabandons
abandonsanan
~.~
14
issue pretrial.
opposing party
partyisisentitled
entitledtotojudgment
judgmentasasaamatter
matterofoflaw
Jaw.. 44 To the contrary,
contrary. the
the
pretrial, the opposing
uE
.... .,c
$E
CiS
15
Federal Circuit recently clarified

clarifled that
that judgment
judgmentas
as a matter
matter of
oflaw
law should
should be
begranted
grantedonly
onlyon
onissues
issues
"'I:S
'0 o
z
~Z
=u
;J';;
16
in issue,
issue, during
during the
the trial.
trial."" AlcQn
Research Ltd.
Ltd. v.v. Barr
Barr
that were "litigated.
or fairly
fairly placed
placed in
"litigated, or
Alcon Research
17
745 F.3d
F3d 1180,
In Alcon,
Alcon, the Circuit
Laboratories, Inc.,
J 180,1193
1193 (Fed.
(Fed. Cir.
Cir. 2014)
2014) (citation
(citation omitted).
omitted).ln
Laboratories,
Inc., 145
c;r...
18
50(b)]with
withrespect
respect
held that "[a] court
court should not
not render
render judgment
judgment [as
[as aa matter
matter of
oflaw
underRule
Rule50(b)]
law under
CiS
Cs
OsI;
s".. '..
=
1:~
..
~ U
~5
r.riCl
f;l.)t
...0
19
20
21
22
22
23
23
24
25
25
26
26
27
27
28
3
1
Pinal
governed by
by Rule
Rule 16(e),
16(e),which
whichprovides
providesthat
thataapretrial
pretrialorder
order"shall
"shaH
Final pretrial orders are governed
control the subsequent course
course of
ofthe
the action
action unless
unless modified
modified by
by aa subsequent
subsequentorder."
order."The
TheNinth
Ninth
finalpretri~l
order supersedes
supersedes the
the pleadings
pleadings and
and that
that claims
claimsor
ordefenses
defensesset
set
Circuit has held that a final
pretrial order
forth in the pleadings but
bot omitted
omitted from
from the
the final
final pretrial
pretrial order
order are
are not
notproperly
properly before
beforethe
thedistrict
district
joint pretrial statement
court. Bjorklund, 728 F.2d
F2d at
at 1264.
1264. Here,
Here. the
the parties
parties filed a joint
statementand
andattached
attachedaa
J6 pretrial order
order which
which held
held that
that the
the parties
parties had
had specified
specified the
the"issues
"issuesof
offact
factand
andlaw
law
proposed Rule 16
remaining to be litigated"
litigated" in
in the
the pretrial
pretrial statement
statement and
and that
that the
the order
orderwould
would"supplement
"supplementthe
the
oftrial
trial of
ofthis
this action."
action." ECF
ECFNo.
1455-1 atat25,
25,28.
28.This
ThisCourt
Court
pleadings and govern the course of
No. 1455-1
subsequently filed a pretrial conference
conference order
order that
that did not
not specifically
specifically adopt
adoptthe
theparties'
parties'proposed
proposed
order by specifying the remaining issues
issues of
offact
fact and
and law
law to
to be
be litigated.
litigated. ECF
ECF No.
No. 1398
1398(Case
(Case
Management Order). Nonetheless, the
the Court
Court finds that
that Samsung's
Samsung'sconcession
concessionthat
thatthe
thepretrial
pretrial
that Samsung
Samsung abandoned
abandonedits
itsdefenses.
defenses.
statement supplemented the pleadings
pleadings suffices
suffices to deem that
4 The case Apple cites, Bjorklund, 728 F
2d 1262, is inapposite. It merely
merely held
held that
thatbecause
becauseaaRule.
Rule
F.2d
16{e)
of the action, a defendant's
defendant'sfailure
failuretotopreserve
preserve
16(e) pretrial
pretrial order
order controls the subsequent course of
an issue by failing to raise itit in
in the
the pretrial order
order prevents
prevents him
him from
from asserting
asserting that
thatthat
thatissue
issueisisaa
material issue offactthat
precludes summary
summary judgment.
judgment.ld.
Id: at 1264-65.
of fact that precludes
16
Case
CaseNo.:
No.: 12-CV-00630
ORDER GRANTING IN PART AND DENYlNG

DENYING IN
IN PART
PARTAPPLE'S
APPLE'S MOTION
MOTION FOR JUDGMENT AS A MATTER
OF LAW
A107
Case: 15-1171
Document: 40
Page: 192
Filed: 03/06/2015
se5:12--cv-0063Q..LHK Document1963
*SEALED* F11ed09108114
Hled09/08/14 Page17
Page17 of
of 45
45
to claims 'reference[d]
'reference[d]ininthe
thecomplaint'
complaint'but
butnot
notraised
raisedininthe
thepretrial
pretrialstatement
statementoror litigated at
at trial
trial
to
2
2,
'a reference in the complaint

complaint is
is not
not sufficient
sufficient to support
support aajudgment:"
by
Id. Here, by
[because] à
judgment."' !d.
thepretrial
pretrial
because Samsung
Samsungraised
raisedthese
thesedefenses
defensesininits
itsAnswer
Answerbut
butdid
didnot
notraise
raisethem
themininthe
analogy, because
trial> this Court

Court finds that
thatno
no judgment
judgmentmay
maybe
berendered
renderedon
onthese
these
nor litigate
litigatethem
them at trial,
statement nor
55
See. e.g.,
e.g.,VirnetX
VirnetXInc.
Inc.v.v.
Other courts
courts have
have rejected
rejectedsimilar
similarmotions
motionsininother
otherpatent
patentcases.
cases. See,
defenses. Other
Apple Inc.,
Inc 925 F. Supp.
Supp.2d
816, 848-50 (ED
(E.D.Tex.
Tex.2013)
2013)(denying
(denyingplaintiff's
plaintiff's
motion
judgment
Apple
2d 816,
motion
forfor
judgment
as a matter
to the jury"
parties
oflaw
law on
on defenses
defenseswhich
whichwere
were"never
"neverpresented
presentedtothe
jury"because
becauseboth
both
partieshad
had
matter of
narrow their
theirclaims
claimsand
anddefenses
defensesbefore
before trial, and the court would not
not "penalize
"penalize
agreed to narrow
[defendant's
attempt to] narrow issues [for trial] by entering judgment"
against the defendant).
judgment" against
[defendant's attempt
10
'so:.
Apple~s motion.
Accordingly, the
the Court
Court denies
denies Apple's
."
the '721 Patent and the '647 Patent

Enhanced Damages
Damages for thery21
Request for Enhanced
11
F.
=;::
o
12
U.s.C. 284 states

that "the
"the court
court may
may increase
increasethe
thedamages
damagesup
uptotothree
threetimes
timesthe.
the
states that
35 U.S.C.
.-........2....
13
amount found or
or assessed_"
assessed." Apple asks
asks this
this Court
Court to
to award
award enhanced
enhanceddamages
damagesbased
basedon
onSamsung's
Samsung's
Q.!!a
A4
14
Mot. at
at23
23.However,
However, a "finding of
allegedly willful infringement
infringement of the '721
'721 and
and '647 patents.
patents Mot
.ae
au
IS
15
i41 Ltd
Ltd. P'ship
enhanced damages."
willful infringement
infringement is a prerequisite
prerequisite to the
the award
award of
ofenhance<i
damages."i4i
P'ship v.
v.
"'cIt:
w .O0
=;Z
16
Microsoft Corp.,
Corp" 598F.3d
831. 858
858 (Fed.
(Fed. Cir.
Cir. 2010);
2010); see also Bard,
Bard; 682 F.3d at 1005.
1005. Because this
this
598 F.3d 831,
=u
;;;,-s
17
law that
did not
oflaw
that Samsung
Samsungdid
not willfully
willfully
Court grants Samsung's motion for judgment
""
18
of
'721 patent
patent in a separate Order, and denies Apple's motion for judgment
infringe the
the'721
19
Ibasis to
tc I
the Court has no basis
law that Samsungwillfully
'647 patent,
patent, see
see supra
II.D, the
supra Part II.13,
Samsung. willfully infringed the '647
20
request.
grant enhanced damages for the
the '721
'721 and the '647 patents, and thus DENIES Apple's
Apple's request
t:~
Q.~
U
U
.... .t;...
0 0
fooO
ffl L
~J:f
I7JO
{/}..t:
a...
0
21
G.
22
Apple seeks an award of

of supplemental damages-through
damages through the date of
ofjudgment
judgment for
for infringing
infringing
23
284requires
requiresthat
thatcourts
courtsaward
awardcompensation
compensationfor
forevery
every
sales not considered by the jury.
.S.C. 284
jury. 35 U
U.S.C.'
24
sale, and the Federal Circuit has

infringing sate,
has held that a patent
patent holder
holder is
is entitled
entitledto
tosupplemental
supplemental
25
11. Secure Computing

damages for infringing sales
sales that
that the
the jury did not consider. See Finjan, Inc. v.
26
Corp., 626 F.3d 1197,

1197, 1212-13
1212-13 (Fed. Cir. 2010). Thus, '~[c]ourts
foraa
"[c]ourts routinely grant motions for
27
further accounting where the jury did not consider certain periods of
.]" Metso
of infringing activity[
activity[.]"
Supplemental
Supplemental Damages
28
17
Case No.:
No.: 12-CV-00630
ORDER GRANTING
JUDGMENT AS A
A MATTER
GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR JUDGMENT
OF LAW
A108
Case: 15-1171
Document: 40
Page: 193
se5:12~cv~00630~LHK
*SEALED*
ILK Document1963
Filed: 03/06/2015
Filed09/08/l4 Page18
Page18ofof45
45
Filed09108114
I1
Inc. v.
v. Powerscreen
PowerscreenInt'7Distribution
Int.'[ DistributionLtd.,
LId,833
833F.
F.Supp.
Supp.2d
2d333,
333,347
347(E.D.N.Y.
(E.D.N.Y.2011);
Minerals, Inc.
2011);
22
99-cv-501 JRT-FLN, 2003 WL

also Itron,
[tron, Inc.
Inc. v.v. Benghiat,
Benghiat, Case No. 99-cv-501-JRT-FLN.
WL22037710,
220377]0, at
at *15 (D.
see also
Minn. Aug. 29,

infringing activities); Hynix
29, 2003)
2003) (granting
(granting motion
motion for
for accounting
accounting of
ofinfringingactivities);
Hynix
SemiconductorInc.
Inc.v.v.Ram
Rambus
Inc., 609 F. Supp. 2d 951, 96()';61
2009) (awarding
960-61 (N.D. Cal. 2009)
Semiconductor
bus Inc.,
5S
damages for
for infringement
infringement occurring
occurring between
between verdict
verdictand
and entry
entryof
ofjudgment).
judgment).
of supplemental damages is
is necessary
necessary here,
here, as
as there are
The Court agrees that an award of
jury did
did not
notmake
makean
anaward,
award,because
becausethey
theyoccurred
occurredafter
afterthe
thejury
jtlryreached
reacheditsits
sales for which the jury
88
verdict. This
This would
would include
includesales
salesofofthe
theGalaxy
GalaxySSIII
IIIand
andthe
theGalaxy
GalaxyNote
Note11.
II.Mot.
Mot.atat29;
29;Opp'n
Opp'natat
27. Consistent with Federal

Federal Circuit
Circuitcase
case law
law and
and this
this Court's
Court'sapproach
approachininthe
thefirst
firstcase
casebetween
betweenthe
the
10
parties, the Court

Court intends
intends to
to calculate
calculatethe
the supplemental
damages award
award for these products
products starting
starting
'fE
11
No. 2271
3
from May 6, 2014,
2014, the
the day
dayafter
afterthe
thejury
juryverdict.
verdict. See Case No. II I-CV-01846,
I-CV-O 1846, ECF
ECFNo.
2271 at
at3
o
U
UU==
12
r'Apple
Ordet") ("Consistent
('~Consistent with
with the
the Presidio Components decision, the Court
Court intends
intends to
("Apple I Order")
J3
13
damages award
award beginning
beginning on
on August
August25,
25,2012,
2012,the
the -lay
day after the
calculate the supplemental
~.~
14
verdict."). The Court

Court will
will calculate
calculate supplemental
damages using
usingthe
thesame
samemethodology
methodologythe
theCourt
Court
_0
15
in thefirst
firstcase,
case,namely
namelythat
thatthe
theper-product
per~productrate
rateshould
shouldbe
becakulated
based on
on the
the jury's
jury's
adopted lathe
calculated based
~.O
d
.:::z
'Ot::
16
verdict: "[The
'"[The Court
Court will]
will] determine
determine the
the per-sale
per-sale amount
amount on
00 aa product-by-product
pfoouct-by-productbasis,
basis,and
anduse
use
;;J ..;i
17
that per-sale
per-sale amount
amount to
to determine
determine the
the supplemental
damagesamount
amountfor
foreach
eachproduct
productthat
thathas
has
18
remained on the
any post-verdict
the market
marketfor
forany
post-verdictperiod.
period.Because
Becausethe
thejury
juryreturned
returnedananaward
awardforforeach
each
19
product separately, the;Court

the Court can simply
simpJy divide the jury award for
for each
each product
product by
by that
thatproduct's
product's
20
number of
of sales
sates to calculate
calculate this
this per-product
per-product amount."
amount" Apple 1I Order at 5.
<IS
t:~
<IS
-~
u O
1:.1$
yL
.b
.=-.-
G
~e
fIlO1
U)..s::
=0
...
0
21
However, the Court denies Apple's

Apple'srequest
requestthat
thatthe
theCourt
Courtcalculate
calculateand
andaward
awardsupplemental
supplemental
22
damages at this time

the Court
COurt enters
enters final judgment. Mot. at
at 31. Courts have found it
time before the
23
appropriate to delay orders

orders forthe
for thesubmission
submissionofofevidence
evidenceofofthe
thenumber
numberofofpost-verdict
post-verdictsales
salesand
and
24
hearings thereon pending

pending the resolution
resolution of
ofappeals,
appeals, to
to àvoid
"avoidpotentially
potentiallyunnecessary
unnecessaryexpenditures
expenditures
25
oftime
preparing such
such an
an accounting[.]"
accounting[.]" [Iron,
Itron, 2003 WL 22037710, at *16; see also
of time and money in preparing
26
EoIas
Techs., Inc;
Corp., 2004 WL 170334, at *8 (N.D. III.
Ill. Jan. 15,
15,2004).
2004), vacated in
Eolas Techs_,
Inc. v.
v. Microsoft
Microsoft Corp.,
27
part on other grounds.

F3d 1325'(Fed.
1325 (Fed. Cir.
Cir. 2005)
2005)("
("It grant
grant the
the motion
motionand
andwill
willrequire
requirean
an
grounds, 399 F.3d
28
18
Ca:seNo.:
12-CV-00630
Case No.: 12-CV-00630
ORDER GRANTING IN PART Al\'D

FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
AND DENYING IN PART APPLE'S MOTION FOR
OF LAW
A109
Case: 15-1171
Document: 40
Page: 194
Filed: 03/06/2015
e5:12-cv..Q0630-lHK
Document1963 *SEAlED*
Page19ofof45
45
e5:12-cv-00630-LHK Docurnent1963
accounting after
after any appeal
appeal in
in this
thiscase
caseisis terminated."). Because
Because the parties have indicated
indicated that
that an
an
proceeding without
without the
the Federal Circuit's
Circuit'sguidance
guidancemay
maycause
causeunnecessary
unnecessary
appeal is anticipated, proceeding
part of
of the jury's
verdicton
on
expenditures of
of time and resources should the Circuit reverse any part
jury's verdict
liability. The Court thus

thus finds
finds itit appropriate
appropriateto
to delay
delay the consideration of
ofevidence
evidence of
ofactual
actual postpost-
ofsupplemental
supplementaldamages
damagesuntil
untilafter
afterthe
thecompletion
completionofofthe
theappeal
appealinin
and calculation
calculationof
verdict sales and
made this
this same
same determination
determination in the first
first case.
case. See Apple
Apple I Order at 6,
6~ 8; Case
Case
this case. The Court made
77
No. I1
I l-CV-01846.
EeFNo.
2941 at 3.
- CV - 01846, ECF
No. 2947
No,
Finally, Samsung
Samsung argues
argues Apple
Apple isis not
not entitled to supplemental
damages because
becausethe
the verdict
verdict
8
9
indicates the jury's

damagesaward
awardwas
wasaalump-sum
Iump..gumroyalty
royaltyintended
intendedtotocompensate.
compensateApple
Applefor
forall
all
jury's damages
10
past and future infringement, and that

that granting
granting supplemental
damages would
would breach
breach the
the jury's
jury'srole
role
11
in awarding damages.
at 24
24-25.
verdict does
does not
notexpressly
expresslystate
statewhether
whetheritit
damages. Opp'n
Opp'n at
-25. Because the jury verdict
12
compensates Apple for Samsung's

Samsung'sboth
bothpast
pastand
andfuture
futureuse
useof
ofthe
thepatented
patentedtechnology
technologyororonly
only
V
-u
.....
.r:
q~Qr
13
compensates Apple
Apple for
for past
past use,
use, itit isis ambiguous
ambiguous on
on this
this point.
point. In
In interpreting
interpretingan
anambiguous
ambiguousverdict
verdict
14
form'> this Court has

has "broad
"broaddiscretion"
discretion"totodetermine
determineifif"the
"the verdict
verdictfigure
figurerepresented
representedpast:
past
fonn,s
SuE
15
Techs. Inc.
Inc. v.
v. Cisco
Cisco Sys.,
Sys., Inc.,
Inc., 612 FFad
3d
infringement as wen
ongoing infringement."
infringement" Telcordia Techs.,
well as ongoing
'01::
$0
16
1365, 1378
argument,as
asexplained
explainedbelow.
below.
1378 (Fed.
(Fed. Cir. 2010). The Court rejects Samsung's
Samsung's argument,
.-S
f!:S
0
t~
=:.::;
cf!:S
U
!;,)U
.... 1+-.
~o
.-.~
~
~. (11
....S
oo..c:
=Z
=4)
Telcordia, the district

district court rejected the defendant's
defendant'sargument
argumentthat
thatthe
thejury's
jury'sdamages
damages
In Telcordia.
;J..c:
.
~
11
17
""-
18
l8
award was necessarily

necessarily aalump-sum
lump-sumaward
awardintended
intendedtotocompensate
compensatethe
thepatentee
patenteefor
forpast;and
past andfuture
future
19
infringement; reasoning
trial provided
provided no
no way of
of knowing one way or
infringement,
reasoning that
thatthe
the evidence_
evidence atattrial
or the other
other
20
Teehs., Inc. v. Cisco Sys.,

Supp.2d
727 ~ 728 n.8
what the jury actually did. Telcordia Techs.,
Sys, Inc., 592 F. Supp.
2d 727,
21
. 0)
(rejecting
(D. Del. 2009), aJf'd
in part, vacated
vacated in part, 612 F.3d 1365 (Fed.
(Fed. Cir.
CiT. 201
2010)
(rejectingdefendant's
defendant's
aff'd in
22
argument that the court

court could
could not
notgrant
grant patentee
patentee an
an ongoing
ongoingroyalty
royaltyuntil
untilexpiration
expirationofofthe
thepatent
patent
23
awarded aalump-sum
lump-sumthat
thatcovered
coveredfuture
futureinfringement,
infringement,reasoning
reasoningthat
that(1):
(1)the
thejury
jury
because the jury
jury awarded
24
issued a general verdict; (2)

(2) the
the jury
jury heard
heard different
different sets
sets of
ofdamages
damages numbers
numbersfrom
from the
theparties'
parties'two
two
25
experts, which the jury

jury could
could accept,
accept, reject,
reject, or
orvary;
vary; (3)
(3) the
thejury's
jury'saward
awardwas
wasdifferent
differentfrom
fromthe
the
26
damages award advanced

advanced by
by either
either party's
party'sexpert;
expert;and
and (4) there was "nothing
"nothing in
in either
either the
the record
record or
or
...
0
21
27
28
special verdict
verdict form
fonn that
that indicates
indicates the
thejury's
jury'sintent
intenton
onthis
thisissue.
issue.
Neither party requested aa special
19
CaseNo.:
No.: 12-CV-00630
Case
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
AMATTER
MATTER
OF LAW
A110
Case: 15-1171
Document: 40
Page: 195
Filed: 03/06/2015
e5:12-cv-0063D-LHK
Page20 of
of 45
45
:12-cv-00630-LHK Document1963
*SEALED* Filed09108114
verdict form from which

whkh the
the court
court could
coulddetermine
determinewhether
whetherthe
thejury
jurybased
baseditsitsaward
awardonona alumplump-
'8E
sum.
paid-up
royalty rate;
rate; some
some variation
variation or
orcombination
combinationofofthe
thetwo;
two;ororrejected
rejected
up license; running royalty
sum, paid
the theories and reached its

its own number.").
number:'). When
When the
the defendant
defendantappealed
appealed the
the district
districtcourt's
court'sorder
order
granting the patentee

patentee equitable
equitablerelief
reIiefin
theform
formof
ofan
anongoing
ongoingroyalty,
royalty~the
theFederal
FederalCircuit
Circuit
in the
55
affirmed, reasoning that the court

court did
did not
not abuse
abuse its
its "broad
"broad discretion"
discretion" in
ininterpreting
interpretingthe
theverdict
verdict
form becausethe
because theverdict
verdictform
formwas
wasambiguous,
ambiguous,neither
neitherparty
partyhad
hadproposed
proposedthe
thejury's
jury'sexact
exact$6.5
$6.5
million award;
award, and it was "unclear
<4unclearwhether
whetherthe:
thejury
on aa lump-sum,
lump-sum,paid-up
paid-up
jury based its award on
some variation
variationor
orcombination
combinationof
ofthe
thetwo,
two,ororsome
someother
othertheory.
theory .',6
license, running royalty,
royalty. some
"6
Telcordia, 612 F.3d

F.3d at 1378.
1318. The
The Federal
Federal Circuit
Circuit thus
thus implicitly
implicitly affirmed
affirmed the
the district
districtcourt's
court's
10
18
rationale
when aa record
record isis unclear
unclearas
as to
to what
what the
the jury
jury actually
actuallydid,
did, ititisisappropriate
appropriateto
toreject
rejectaa
rationale that when
11
defendant'sargument
argumentthat
thatthe
thejury's
jury'saward
awardnecessarily
necessarilycompensated
compensatedthe
thepatentee
patenteefor
forfuture
future
defendant's
12
infringement
infringement.
(s
(IS
t<2
==
o
o~
(IS
\,)U
UU
_4-<
0
<,;0
-._-
Similarly,
LLCv.v. Computer Packages,
Packages. Inc., 694
10,35-38
(Fed. Cir.
6994 F.3d 10,
35-38 (Fed.
Similarly,. in Whitserve, LLC
C" t)
13
~.~
14
2012), the Federal

2012).
Federal Circuit
Circuit vacated
vacated and
and remanded
remanded the
the district
district court's
court'sdenial
denialofofsupplemental
supplemental
~E
tlS4)
15
afterthe
the verdict
verdictbut
but before
before final
fmal judgment
judgment was
wasentered
enteredbecause
becausethe
thecourt
court
damages for infringement
infringement after
1;:::Z0
16
16.
explain its
itsreasottsfor
denying such
such damages. However,
However. in
inthe
the midst
midstof
ofdoing
doing so,
so.the
the
had failed to explain
reasons for denying
P-S
17
Circuit rejected the defendant's

defendant'sargument
argumentthat
thatthe
thepatentee's
patentee'ssupplemental
supplemental damages request was
18
properly denied because

because the
the jury
jury had
had necessarily
necessarily awarded
awarded aa lump-sum
lump-sumlicense
licensefor
forall
allpast
pastand
and
19
"nothing in
in the record
record would
would support"
support" that
that
future infringement.
infringement. Id. at 38. The Circuit noted that "nothing
20
20
"the parties
parties limited
limited their
theirdamages
damages arguments
arguments to
topast
pastinfringement
infringementrather
ratherthan
than
conclusion because
because "the
21
projected future infringement"

infringement" and
and the
the 'jury's
verdictdid
did not
notindicate
indicatethat
thatthe
theaward
awardwas
wasmeant
meanttoto
"jury's verdict
22
cover future use of [plaintiff's]

patents[.]" Id. at 35,
35,38;
("We cart
not[sic] accept
accept
[plaintiffs] patents[.]"
38; see also id. at35
at 35 ("Vile
can not
23
wasawarded
awarded[by
[bythe
thejury].").
jury}.").
[defendant's]
suggestionthat
thataapaid-up
paid-uplicense
licensewas
[defendant's] suggestion
.........
00
=z
-"J::
<l)t:
:I<\,)
cap
0
~
tJ;.;
24
25
26:
26
27
28
The Federal Circuit

Circuit noted
noted that
that while
while the
the district
districtcourt's
court'sdecision
decisionwas
wasnot
notclearly
clearlyerroneous,
erroneous.the
the
Federal Circuit
Circuit itself
itselfcould
could not
not "determine
"determinewhether
whetherthe
thejury
jurycompensated
compensatedTelcordia
Telcordiafor
forall
allofof
activities. " Telcordia,
Telcordia, 612 F.3d at 1378.
Cisco's infringing activities."
20
Case
Case No.:
No.: 12-CV"()0630
t 2-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S M
MOTION
JUDGMENT AS A MATTER
MA TIER
OTION FOR JUDGMENT
OF LAW
A111
Case: 15-1171
Document: 40
Page: 196
Filed: 03/06/2015
se5:12-cv-0063Q-LHK
Document1963 *SEALEO*
Page21ofof45
45
-cu-00630-LHK Docurnent1963
Filed09/08114 Page2i
Here, in light of
of the ambiguity concerning whether the jury actually
actually awarded
awarded aa lump-sum
lump-sum
11
2
future infringement, the Court rejects Samsung's

past and future
Samsung's
royalty to compensate Apple for past
Whitserve and Telcor

dia. there
As in
in Whitserve
Telcordia.
there isis no
no express
express statement
statement in
in the
the
jury did
did so.
so. As
argument that the jury
thatthe4arnages
awardwould
wouldencompass
encompassdamages
damagesfor
forfuture
futureinfringement.
infringement. See ECF
verdict form that
the damages award
No. 1884.
1884. The verdict
verdict form
fonn did
did not
not require
require the
the jury
juryto
to denote
denote which
whichdamages
damagestheories
theoriesititapplied.
applied. Id
Id.
Further, as in Telcordia.
presented with
with several
several sets
setsof
ofdamages
damagesnumbers
numbersduring
duringDr.
Dr.
Telcordia, the jurors were presented
Chevalier and Dr. Vellturo's

Vellturo~stestimony
trial,which
whichthe
thejurors
jurorscould
couldhave
havechosen
chosentotoaccept,
accept,
testimony atattrial,
reject, or vary, and the jury's

$119,625,000 isisdifferent
jury'saward
awardof
of$119,625.000
differentfrom
fromthe
thedamages
damagesaward
awardproposed
proposed
reject.
parties' experts.
experts.Finally,
Finally,the
thefact
factthat
thatthe
theverdict
verdictform
fonnchart
chartwith
withrespect
respecttotothetheGalaxy
Galaxy
S II
by both parties'
S 11
10
Products expressly indicated

indicated that
that the
the award
award would
wouLd be
be made
made for
for sales
salesthrough
throughthe
the"Present"
"Present"supports
supports
11
the interpretation
interpretation that
that the
the jury
jury could
could have
have believed
believed that
that its
its damages
damagesawards
awardsfor
forall
allproducts
productswere
were
U
U .....
12
1&84 at
at 10
10 (asking
(asking jury
jury to
meantto
Apple only
only for
for past
past infringing
infringing sales.
sales. See ECF No. 1884
meant to compensate Apple
~o
13
their"dollar
"dollarbreakdown"
breakdown"for
foreach
eachofofcertain
certainproducts
products
- theGalaxy
GalaxySS11II Epic
Epic4G
4GTouch,
Touch,the
the
provide their
the:
'" ....
.Q.~
Ca
<1.>0
~t::
os .....
14
Galaxy
II Skyrocket,
Galaxy SSII11for
foreach
each of
of the
the following
following three
three time
time periods
periodsonly:
only:(1)
(1)
Galaxy SS 11
Skyrocket ; and Galaxy
a_0
15
"August 1,
1,2011June30,
30.2012";(2)
"July1,2012August
1,2012 -August24,
24,2012";
and(3)
(3)"August
"August25,
25,2012
20122011-June
2012"; (2) "July
2012"; and
'1:10
16
Present.").
Present.
...
17
(\:J
's
tcS
==
QcO
L-.--Q
"'0
('/}'
!Zo
=0IS
;;JoS
0O
").
clear that
thatthe
the jury
jurymade
madeits
itsdamages
damagesaward
awardbased
basedon
on
While Samsung argues
argues the
the evidence
evidence isis clear
18
Samsung'sexpert
expertDr.
Dr.Chevalier,
Chevalier,Opp=n
Opp'n at
at 25-26
25-26 (citing
(citing Chevalier
ChevalierDeclaration,
Declaration,
calculations by Samsung's
19
ECF No. 1907-5),7

1907~5), 7 Apple rebuts
rebuts that
that there.are
there are "multiple
"multiple ways
ways the
the jury
jurycould
couldhave
havereached
reachedits
itstotal
total
20
20
from Dr.
Dr. Vellturo's
Vellturo'sproposed
proposedreasonable
reasonableroyalty
royaltydamages[.]"
damages[TReply
Replyatat
damages number
number by
by starting
starting from
21
17. The Court need not dissect the

theverdicno
resolve this
this dispute
dispute because
becauseeven
evenassuming
assumingthe
thejury
jury
verdict to resolve
22
22:
utilized Dr. Chevalier's

Chevalier'sreasonable
reasonableroyalty
royaltynumbers
numbersas
asaastarting
startingpoint,
point.that
thatwould
wouldnot
notprove
provethat
that
23
the jury awarded a lump-sum

past and future infringement
infringement as
as opposed
opposed to
to
lump-sum to compensate for past
24
on aa per-unit,
per-unit, per-patent
per"patentrunning
runningroyalty
royaltybasis
basisfor
forall
all
compensating Apple
Apple for
for past
past infringement
infringement on
25:
25
7
26
27
28
7 Dr. Chevalier claims that the jury's

anocation of
'721. and
and''172
172
jury's allocation
of damages between the '647, '721,
between the
the accused
accused products
productsfor
for each
each patent,
patent,and
andthe
thefact
factthat
thatthe
thejury
jurydid
didnot
notgrant
grantaa
patents and between
1907-5,1
unifonn per-unit
per-unitroyalty
royalty for
for all
all products,
products, demonstrates
demonstrates aalump-sum
lump-sumverdict.
verdict. See ECF No. 1907-5,
uniform
67. She also claims
claims that
that the
the fact
fact that
thatthe
thejury
reallocated the
thetotal
totaldamages
damagesnumber
numberwhen
when
jury reallocated
II products
lump sum.
sum. See id. 1 68.
calculating damages
damages for
for the
the Galaxy S 11
productsfurther
further indicates
indicates a lump
2]
21
Case No.: 12-CV-00630

12-CV-00630

MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
AMATTER
MATIER
OF LAW
A112
Case: 15-1171
Document: 40
Page: 197
Filed: 03/06/2015
Confidential Information Redacted
e5:12-cv-00630-lHK
Page22of
of45
45
K Document1963
sales made through the trial.$

triaLS This is because
because although Dr. Chevalier
her total
total proposed
proposed
Chevalier testified her
award of
"roughly$38.4
$38.4million"
million}'was
wasaa"lump
"lumpsum."
sum:'ECF
ECFNo.
No.1938
1938atat2422,
2422, she
shedid
did not
not testify
testify
of"roughly
infringement, and
and her
herdamages
damagesexhibit
exhibit
that this lump-sum:
lump-sum was intended to cover past and future infringement,
nowhere describes her damages total

tomlas
"Jump-sum," let
let alone
alone aa lump-sum
lump-sum covering
coveringpast
pastand
and
as a "lump-sum,"
future
OX 453A.
453A.
tiiture infringement. See gen/lrally
generally DX
EVen her testimony and demonstratives
demonstratives at trial
Even
'sE
to her
her$035
$0.35per-unit,
per-unit.per-patent
per-patentroyalty
royaltyrate.
rate.See
SeeSDX
SDX3791
3791 (describing
repeatedly referred
referred to
88.
"royalty rate per

per patent
patent per unit" of
of$O.3S);
ECFNo,
1938 at
at 2422
2422("1
(~l concluded
concluded that
thataareasonable
reasonable
$0.35); ECF
No. 1938
royalty would be $0.35 per

per patent,
patent. per
per unit.");
unit:'); id. at 2432 (noting she arrived at
at the
the $0.35
$0.35 "per
"per
10
patent. per unit"

unit" number
number by
by applying
applying Georgia-Pacific factors); id.
(stating that
that her
her
patent,
id, at 2435 (stating
ii
11
reasonable royalty number

number came
came from àpplying
"applyingthat
that$0.35
$0.35 per
perpatent,
patent,per
perunit
unit[sic]
[sic]totoeach
eachofofthe
the
12
infringing."). Ifffanything.
anything, the
accused units based on which patents
patents they're
they'reaccused
accusedof
ofinfringing.j.
thefact
factthat
thatDr.
Dr.
13
Chevalier calculated
calculated her
her reasonable
reasonable royalty
royalty damages
damages for
for the
the Galaxy
Galaxy SSII
Ii Products
Productsinindistinct
distincttime
time
14
the "Present."
..Present.. . .
periods only through the
CIS
t,,;:
=:.:
U
d
U'to
t,)~
" ...
.--."'u
tIl'-
- 1;;
A
~.-
0.
.as
SlI)
g
til
rn
tiJ-E
!~
=lI)
::J..;i
""
15
16
_ ., suggests
suggests that
that ififthe
the jury
jury based
based its
its calculation
calculation on
on Dr.
Dr. Chevalier's
Chevalier'snumbers,
numbers.the
thejury
jurylikely
likely
17
would have believed

would.have
believed her numbers were intended to compensate Apple only for
for past
past infringement
infringement.9
18
I8
Because the record suggests it is plausible that thejury

intended to award Apple
Apple damages
thejury intended
19
only for past infringing

infringing sales,
sales. the
the Court
Court cannot
cannot conclude
conclude that
thatthe
the jury
jurynecessarily
necessarUyawarded
awarded aa lump-
20
Whitser ve and
sum award intended to cover past and future infringement. Accordingly,
Accordingly,tender
under Whitserve
21
Telcordia,
rejects Samsung's
Samsung'sargument
argumentand
andfinds
findsthat
thatan
anaward
awardofofsupplemental
supplementaldamages
damages
Telcordia. the Court rejects
warranted.
22 1 is iswarranted.
22
23
24
25
26
26
27
28
. While
n
. the Jury
.followed
' . the final jury
i y could
Samsungg argues
jury must have
argue that
Jury instruction that. they
thejury
award a "one-time lump sum," that is not dispositive because the
jurywas
wasalso
alsoinstructed
instructedthat
thataa
reasonable royalty award
1847 at
at 50.
50.
award could
could be
be based
based on
on aa running
running per-unit
per-unitroyalty.
royalty. See ECF No. 1847
22
Case No.: 12-CV-00630

12-CV-00630
GRANTING IN
ORDER GRANTING
INPART
PART AND DENYING IN
TIER
IN PART APPLE'S
APPLE'S MOTION FOR JUDGMENT AS A MA
MATTER
OF LAW
A113
Case: 15-1171
Document: 40
Page: 198
Filed: 03/06/2015
*SEALED*: Filed09108114
se5:12-cv-00630-LHK
Page23of
of 45
45
LHK Document1963
H.
Prejudgment Interest
Under 35 U.S.C. 284,

284. the district
district court has considerable
considerable discretion
discretion in
in awarding
awarding
Bio-RadLabs.,
Labs., Inc.
Inc. vv.Nicolet
NicoletInstrument
InstrumentCorp.,
Corp., 807 F.2d
F.2d 964, 969 (Fed.
prejudgment interest. See Bib-Rad
Cir. 1986).
1986). The purpose of
ofprejudgment
prejudgment interest
interest is to "compensate[
"compensate[j1the
thepatent
patentowner
ownerfor
forthe
theuse
use
of
of injury
injury and
and the date of
of judgment."
WalgreenCo.,
Co., 88 FF.3d
of its money between the date of
judgment." Oiness v. Walgreen
3d
1025,
1033 (Fed.
(Fed. Cir.
Cir. 1996).
1996).Such
Suchinterest
interestisis usually
usually awarded
awarded from
from the
thedate
dateof
ofinfringement
infringementto
tothe
the
1025,1033
77
date of
ofjudgment.
Nickson Indus.
Indus.Inc.,
Inc.,v.v.Rol
RolMfg.
Mfg.Co.,
Co.,Ltd.,
Ltd., 847 F.2d 795, 800 (Fed.
(Fed. Cir.
judgment. See Nickson
beawarded
awardedabsent
absentsome
somejustification
justificationfor
for
1988). "[P]rejudgment
interestshould
shouldordinarily
ordinarilybe
"[P]ejudgment interest
Corp., 461 U.S. 648,657

Motors Corp. v. Devex Corp.,
648, 657 (1983)
withholding such an award[.]"
awardf.]" Gen. Molors
10
award of
ofprejudgment
prejudgmentinterest
interestisisgenerally
generallyappropriate
appropriateafter
aftera afinding
findingofofpatent
patent
(holding that
that an award
11
I1
Apple II
in the
the first
first patent
patentinfringement
infringementcase
casebetween
betweenApple
Appleand
andSamsung,
Samsung, see Apple
infringement). As in
12
Order at
Order
at 7-8, the
the Court
Court concludes
concludeshere
berethat
thatApple
Appleisisentitled
entitledtotoan
anaward
awardofofprejudgment
prejudgmentinterest.
interest.
-.q
13
s
~
ttS
L ~
-=:.:::
et';j
U
C,)U
... to....
u O
.........
ylooc
Ls . V
.r.l.1::
~ .... U)
~O
aQ
"'E
a
0E
-...c:
rI.l
t
10
;::Z
~z
CO
...s
-S.
00...
.'-1.
.~
of prejudgment
prejudgmentinterest
interestisisleft
leftto
to the
thewide
discretionofofthis
thisCourt,
Court.which
whichmay
may
The rate of
wide discretion
144
14
award interest
interestat
or above
abovethe
theprime
primerate.
rate. Uniruyal,lnc.
Uniroyal, Inc. v.
v. Rudkin-Wiley
Rudkin-Wl1eyCorp.,
Corp., 939
93.9 FF.2d
.2d 1540,
at or
15
1545 (Fed. Cir.

Cir; 1991).
1991). Courts
Courtsmay
mayuse
usethe
theprime
primerate,
rate,the
the,prime
rateplus
plusa apercentage,
percentage,the
theU.S..
U.S.
prime rate
16
Treasury Bill
Bilt rate, state
statestatutory
statutoryrate,
rate,corporate
bondrate,:
rate, or'whatever
or whateverrate
ratethe
thecourt
courtdeems
deems
corporate bond
17
2008 WL
WL 3385819,
338581 9,atat*6
*6(N.D.
(N.D.Cal_
Cal July
July
appropriate. Junker v.
v. HOC
HDC Corp.,
Corp, No. C-07-05094 JCS, 2008
18
Mot atat
28,2008).
partiesbave
proposed two
two different
different rates.
rates. Apple
Apple proposes
proposesthe
theprime
primerate.
rate. Mot.
28, 2008). The parties
have proposed
19
30-31. Samsung argues that

that the lower
lower52-week
52-weekTreasury
TreasuryBill
Billrate
rateisisappropriate,
appropriate,consistent
consistentwith
with
20
this Court's
approach in
in the
the first
first case
case between
between the parties. Opp'n
Opp'nat
at 28; Apple 1I Order at
at 7. In
Court's approach
21
detennining
determining the appropriate
appropriaterate,
rate,courts.
courts have
have considered
considered whether,
whether, during
duringthe
theperiod
periodofof
22
infringement, the plaintiff

plaintiff"borrowed
moneyatataahigher
higherrate,
rate,what
whatthat
thatrate
ratewas,
was,oror[v[whether]
there
"borrowed money
hether] there
23
and the
the loss
loss of
ofthe
the use
use of
ofthe
themoney
moneyawarded
awardedas
asaa
was a causal connection between
between any
any borrowing
borrowing and
24
result of [the defendant's]

infringement." Laitram Corp. v. NEC
defendant'sr infringement."
NEC Corp., I1 l5
t 5F.3d
F.3d 947,
947; 955 (Fed.
25
usethe
theTreasury
TreasuryBill
Billrate
rateinincase
casewhere
wheredistrict
district
Cir. 1997) (upholding district
district court's
court'sdecision
decisiontotouse
26
of"a
a causal
causalconnection
connection between
between any
anyborrowing
borrowingand
andthe
theloss
lossofofthe
theuse
useof
of
court found no evidence of
27
the money awarded as

as aa result
result of
ofthe
the infringement.").
infringement."). Such
Such factors
factorswould
wouldmake
makean
anaward
awardatataa
28
28
23
-CV 00630
Case
12-CV-00630
Case No.:
No.: 12
-
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR

FORJUDGMENT
JUDGMENT AS
AS A
A MATTER
MATTER
OF LAW
A114
Case: 15-1171
Document: 40
Page: 199
Filed: 03/06/2015
se5:12-cv-00630-LHK
Page24of
of45
45
higher rate more

more appropriate.
appropriate.Here,
Here,although
althoughApple
Applehas
hassubmitted
submittedaadeclaration
declarationstating
statingthat
thatApple
Apple
higher
markets at
at rates
rateshigher
higherthan
than the
theTreasury
TreasuryBill
BiHrate,
rate, see Robinson Decl., ECF
borrowed in the public markets
Applemaintains
maintainssubstantial
substantialcash
cash reserves
reservesand
andhas
hasnot
notpresented
presented any evidence that
1897-8 9, Apple
No. 1897-8,9,
borrow money because it was deprived of

award. Thus,
Thus, here,
here, as in
it needed to borrow
of the damages award.
55
this Court
Courtfound
foundininthe
thefirst
firstcase,
case,the
theCourt
Courtconcludes
concludesthe
the52week
52-weekTreasury
TreasuryBill
Bill
Laitram, and as this
rate is sufficient. The Treasury Bill rate has been accepted and employed
employed by
by many
many courts
courts in patent
cases
method of
ofplacing
placing aapatent
patent owner
owner in-a
in a position equivalent
equivalent to
to where
where itit would
would
cases as a reasonable method
infringement. See, e.g., Datascope

SMEC, Inc.,
Inc., 879
879F.2d
F.2d820,
have been had there been no infringement.
L atascope Corp. v.
v SMEC,
820,
829 (Fed. Cir. 1989),

1989).cert.
denied, 493 U.S. 1024 (1990).
cert. denied,
10
Finally
Courtaddresses
addressesthe
theappropriateness
appropriatenessofofcompounding.
compounding.Apple
Appleseeks
seeksannual
annual
Finally,~ the Court
de
'fE
=>=d
C
uc..>
",,'0
....
a-t,)
-.S-.!i
A
11
whether to
to
compounding. Mot. at 31. The Federal Circuit has explained that "the determination whether
12
or compound
compound interest
interest [][J isis aamatter
matter largely
largely within
within the
the discretion
discretionof
ofthe
thedistrict
districtcourt."
court."
award simple or
13
Gyromat Corp. v.
v. Champion
ChampionSppark
SparkPlug
PlugCo.,
CO.,735
F.2d 549, 557 (Fed. Cir. 1984). Courts "have
"have
735 F.2d
14
Sealant Sys. Int'L

Intl,
recognized that compounding
compounding isis necessary
necessary to
to fully compensate
compensate the
the patentee."
patentee." SealantSys.
15
Inc. v. TEK
TEK Global
Global S.R.L.,
S.R.L.,No.
No.5:1
S:ll-CV-00774-PSG.
2014WL
WL1008183,
1008183,atat*6*6 (N.D.
N.D. Cal. Mar. 7,
l -CV-00774-PSG, 2014
"eo
d2
16
16'
2014) (citation omitted).

omitted). "Because
"Because aa patentee's
patentee~sdamages
damagesinclude
includethe
theforegone
foregoneuse
useofofmoney,
money,
P-5
17
omitted). Thus,
compounding is needed to
to account for the time value of
ofmoney."
money." Id
Ill. (citation omitted).
Th~
&:z.;
18
Id. (citation
(citation omitted)..
"courts have approved
approved annual
annual compounding
compounding and.even
and even daily
dailycompounding."
compounding." [d.
omitted).
19
As Samsung
Samsunghas
has not
not indicated any objection to compounding, Opp'n
Opp'natat28-30,
28-30,the
theCourt
Court.concludes,
concludes.
As
20
as it did in the first case,

case, that
that annual
annual compounding
compounding should
should be
be utilized.
utilized. See Apple
Apple JI Order
at 7-8.
7-8.
Order at
21
Accordingly, when
when the
the anticipated
anticipated appeal
appeal of
ofthis
this case
caseisisresolved,
resolved,and
and the final damages
t:<2
Uv
-
.... 4-0
...
.
!~
- E
Su
!Zl,
.~Z
A
=::u
...
'0
22
Apple prejudgment
prejudgmentinterest
interestatatthe
the52week
52-week Treasury
Treasury Bill
Bill rate,
rate~
amount settled,
settled; this Court will award Apple
23
compounded annually.
annually. The
TheCourt
Courtdeclines
declinesApple's
Apple'srequest
requestthat
thatthe
theCourt
Courtcalculate
calculateand
andaward
award
24
prejudgment interest
resolved. Mot.
Motatat31.
31.Because
Becauseboth
bothparties
parties
prejudgment;
interest at this time before any appeal isis resolved.
25
have indicated that they

they may
may challenge
challenge the legal sufficiency ofthe
of the jury's award.
award,: itit will
will be more
26
27
28
24
Case
12-CV
-00630
Case No.:
No.: 12-C
V-00630

FOR JUDGMENT
JUDGMENT AS A MATTER
OF LAW
A115
Case: 15-1171
Document: 40
Page: 200
Filed: 03/06/2015
se5:12-cv-00630-lHK
K Document1963
*SEAlED* Filed09108114
Page25of
of45
45
efficient to calculateprjudgment
calculate prejudgmentinterest
interestafter
afterappeal,
appeal,when
whenthe.
thefinal
finalamount
amountofofthe
thejudgment
judgmentisis
II
known. The Court

Court made
made this
thissame
samedecision
decisionininthe
thefirst
firstcase.
case. See Apple
Apple II Order
Order at
at 8.
8. 10
10
The '449
'449 patent
patent isis directed
an "apparatus
reproducing digital
digital image
image
àpparatus for recording and reproducing
directed to an
and speech."
speech." Samsung
Samsung asserted
asserted claim 27 ofthe
'449 patent
patent against
against Apple.
Apple. The jury found that all
of the '449
five accused Apple products infringe the '449

'449 patent,
patent, and
and awarded
awardeddamages
damagesof
of$158,4oo.00
forthat
that
$158,400.00 for
J 1-12. Apple now moves for judgment

matter of
oflaw
law of
of
infringement
judgment as a matter
infringement. See ECF No. 1884 at 11-12.
non-infringement or,
or. alternatively,
alternatively,aanew
newtrial
trialon
on infringement and damages. Claim 27 depends
non-infringement
from claim 25. Both claims

claims recite:
to
10
25. A digital camera

cameraeomprising:
comprising:
a lens,
an imaging device which converts
converts an
an optical image
image into
into an
an analog
analog signal;
signal;
an A/D
AID converter
converter which converts
converts said
said analog
analog signal
signal from
from said
said imaging
imaging device
deviceto
to a
digital signal;
a compressor which compresses
compresses said
said digital signal
signal outputted
outputted from
from said
said A/D
AID
converter, and generates
generates compressed
compresseddata
databy
byusing
usingaadifferent
differentcompressing
compressing
method for moving image signals
signals and for
for still
still image
ilnagesignals;
signals;
a recording circuit
circuit which records
records compressed
compressed data,
data, said
said compressed
compresseq.data
including a
data including
moving image signal,
signaL, and aa still
S\i11 image signal;
decompressor which decompresses said
aa decompressor
said compressed
compressed data
data by
by using
usingaa different
different
decompressing method according
according to
to whether
whether said
said recorded
recorded compressed
compressed data
is a moving image signal or
or a still image signal;
a reproducing
reproducing circuit
circuit which
which reproduces
reproduces a moving
moving image
image signal,
signaI~aasound
soundsignal
signalinin
synchronous to said moving image signal,
signal. and aa still
stilt image
image signal;
signal; and
and
a display which displays
displays said
said moving
moving image
image signals
signals and
and still
stilI image
imagesignals
signalsoutputted
outputted
list of
ofsaid
said moving
moving image
image signal
signal and
and still
from said
said reproducing
reproducing circuit, and a list
of classifications
classifications as
as aa classification
classification
image signal as a search mode, and a list of
mode;
ofsaid
said plurality
pluralityof
ofimage
image signals
wherein said
said recording
recording circuit
circuit records
records each
each one
one of
with classification data, and
said display lists
lists a plurality
plurality of
ofclassifications
classifications and
and aa number
numberof
ofimages
imagesbelonging
belongingtoto
each classification.
C$
's
11
*, o
t:43
#=:::
oQ6j
12
'tto
...........
13
\)1..0..0
-.J..()
.f4 l:l.
Q.~
G .-
14
14
,aS~iv
15
"CIS
16
=0
17
A
~O
a
_c
\I.I ..s:::
~;Z
t:;I.;i
I-
Non-infringement of
ofClaim
Claim 27 oftbe
Patent
of the '449 Patent
Non-infringement
18
19
20
21
22
23
24
27. A digital camera

camera according
according to
to claim
claim 25,
25,
wherein said classification
classification isis able
able to
to change
change by
by aa direction
direction of
ofaauser.
user.
'449
Patent cis.
cis. 25,
25. 27.
27. Apple
Applecontends
contendsthat
thatSamsung's
Samsung'strial
trialevidence
evidencefailed
failedtotodemonstrate
demonstrate
'449 Patent
ofat
at least
least four
four limitations
limitations of
ofclaim
claim 27.
27. Considering
Consideringeach
eachof
ofthese
theselimitations
limitationsininturn,
tum,
infringement of
25
26
27
27
28
10 The Court rejects

rejects Samsung's
Samsung'sargument
argumentthat
thatprejudgment
prejudgmentinterest
interestmust
mustbebecalculated
calculatedonona afinal
final
judgment amount
amount that
that has
has subtracted $158,400,
$158.400, which represents Samsung's
Samsung's award
award for
for Apple's
Apple's
judgment
infringement of Sam
sung's '449
'449patent.
patent.Opp'n
Opp'natat30.
30.Samsung
Samsungcites
citesno
nolaw
lawfor
forthe
theproposition
propositionthat
that
Samsung's
subtraction of
of the counterclaimant's
counterclaimant'saward
awardisisrequired
requiredprior
priortotocalculating
calculatingprejudgment
prejudgmentinterest
intereston
on
an award relating to infringement
infringement of
ofthe
the patentee's
patentee'spatents.
patents.
25
' 0
Case No.: 12-CV-00630

ORDER GRANTING IN PART AND DENYING IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MATIER
OF LAW
A116
Case: 15-1171
Document: 40
Page: 201
Filed: 03/06/2015
se5:12-cv-00630-LHK
5:12-cv-0063Q..LHK Document19f3
*SEAlED* Piled09/08/14
Page26ofof45
45
the Court concludes that substantial evidence

evidence supports
supports the jury's
jury'sfinding
findingof
ofinfringement,
infringement,and
andthe
the
the evidence,
evidence. and accordingly DENIES
DENIES Apple's
Apple's
verdict is not contrary to the clear weight of
ofthe
motion.
.4
First, Apple contends

contends that
that the
the accused
accused iPhone
iPhone4S,
4S,iPhone
iPhone5,5.and
andiPod
iPodTouch
Touch5th
5thGeneration
Generation
"reproducing circuit
circuit which
which reproduces.....
reproduces ...aasound
soundsignal
signalininsynchronous
synchronoustotosaid
said
products lack a "reproducing
moving image signal," as

as claim
claim 27
27 requires.
requires. Apple
Apple states
states that
that Samsung's
Samsung'sexpert
expertfor
forthe
the'449
'449patent,
patent,
SDX 3742),
accused devices
devices (see SOX
3742). but
but argues
argues
Kenneth Parulski,
identified an "audio .circuit"
circuit" in the accused
Parulski identified
ofApple
Apple
this audio circuit
circuit cannot
cannot reproduce
reproduce synchronous
synchronous audio.
audio. Apple
Apple points
points to
to the
the testimony
testimony of
Dr. Dan
Dan
engineer Tim Millet
Millet and allegedly
allegedly contradictory
contradictory testimony from another Samsung
Samsung expert,
expert, Dr.
10
Schonfeld.
jury'sdetermination.
determination,
However, the record contains sufficient evidence to support the
the jury's
Schonfeld. However.
's8
11
"audio subsystem"
subsyste.m"
Mr. Millet did testify that
that Apple's
Apple's "software team" decided not to use the "audio
0-;
R
12
contained in the three disputed

disputed products
products for
for audio
audio processing.
processing. Tr. at
at 2699:20-2700:13.
2699:20-2700: 13.However,
However.
-...........--
13
Mr. Millet
Millet also testified
testified on
on cross-examination
cross-examinationthat
that he was not an expert on Apple's
Apple'ssoftware,
software. see
~.~
14
id
2701 :14-16, and
and the
the jury
jurywas
wasfree
freetotoassess
assessthe
thecredibility
credibilityofofhis
hisdirect
directtestimony.
testimony. Samsung~s
Samsung's
id. at 2701:14-16,
aS~
15
expert explained how the accused

accused products
products have
have reproducing
reproducing circuits
circuits for
for sound,
sound,see
see id. at 2609:22-
16
2610:14, while Apple's

Apple'sexpert,
expert,Dr.
Dr.Jim
JimStorer,
Storer,did
didnot
notoffer
offeraanon-infringement
non-infringementopinion
opinionbased
basedon
on
17
circuit" despite
despite talking
talking with
with Apple
Apple engineers,
engineers, see id.
2721 :20of a "reproducing
"reproducing circuit"
id at 2721:20the absence of
18
'239patentexpert
2722:6,
position, the cited testimony from Samsung's '239
patent expert
2722:6. Next, contrary to Apple's
Apple's position,
19
Dr. Schonfeld
Schonfeldstated
statedthat
thatintegrated
integrated
did not contradict Samsung's position for the '449
'449 patent:
patent: Dr.
20
patent or
or a "reproducing
circuits require software generally,
generally, but
but said nothing about the '449 patent
21
in the accused
accused devices.
devices. See
id. at 2558:1-4. It is also undisputed that
that Apple's
Apple'sproducts
productscan
can
circuit" in
See id.
22
audio-afact
factthat
thatthe.
thejury
couldhave
haveconfirmed
confirmed from the representative
representative devices
devices
reproduce
reproduce audioa
jury could
23
OX 38-46A).
3846A).
admitted into the record (JX
as
t.
:='U
C)U
U
..c...
tJ O
y
- tU
J
.~
.
00
SE
tl).J::
-01:
Z
~Z
=~
p;s
;...
24
arRues that none

none of
ofthe
the five
five accused
accused products
products contains
containsthe
theclaimed
claimed
Second, Apple argues
25
that these limitations require components that

that
"compressor"
or "decompressor."
"decompressor," Apple's
Apple'stheory
theoryisisthat
"compressor" or
26
"separate and
"both still
still images
images and
and videos,"
videos," and
and that its products
products use
use "separate
compress or decompress "both
27
distinct components
components to compress/decompress still images
images and videos."
videos," Mot.
Mot. atat33-34.
33-34.Apple's
Apple's
28
26
Case No.:
No.: 12-CV=00630
Case
12-CV-00630
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR JUDGMENT AS A MATTER
MA TIER
OF LAW
A117
Case: 15-1171
Document: 40
Page: 202
Filed: 03/06/2015
e5:12-cv-00630-LHK
e5:12-cv-00630-LHK Document1963
"SEALED* Filed49108114
Page2?of
of45
45
argument is unpersuasive. This

This Court
Court did
did not
not construe
construe the
the claim
claim terms
terms "compressor"
"compressor"and
and
"decompressor," and instructed the jury to apply plain and ordinary

"decompressor."
ordinary meaning for terms not
ECF No.
No. 1847
1847 at
at 30.
30. On
On cross-examination
cross-examination from
from Apple's
Apple'scounsel,
counsel, Mr. Parulski
construed. See ECF
circuitry that
that performs
perfonnsboth
both
testified that he "identified a single Apple
Apple design chip with the circuitry
originate with
with different
different
compressing methods,"
methods," even
even though certain components of
of the chip originate
oneintegrated
integratedcircuit.".
circuit"),Mr.
Mr.Millet:also
Millet also
manufacturers.
manufacturers. Tr. at 2638:25-2639:6, 2643:5-14
2643:5-I4 ("That's
(That's one
told
jury that
"essentially a single integrated circuit
the jury
that a system on chip ("SOC")
("SOC") is
is essentially
circuit that
that integrates
integrates
told the
ofdifferent
different components,"
components." and
and that
that the
the Apple
Apple A6
A6chip
chipin
inthe
theinfringing
infringingdevices
devices
a large number of
Id. at 2688:13-20,2701
:21-2702:8. Apple's
Apple's
contains
for compressors
compressors and
and decompressors.
decompressors. Id:
contains circuitry for
2688:13-20, 2701:21-2702:8.
10
"SOC contains
contains dozens of
components. most
most unrelated
unrelatedtotocompression
compression
contention that the "SOC
of different components,
1:1
11
misplaced because
because the
the presence
presenceof
ofadditional
additionalcomponents
componentsdoes
does
or decompression"
(Reply at
at 20)
20) isis misplaced
decompression" (Reply
12
Chiron Corp
Corp.,
. 112 F.3d 495,501
Cir. 1997)
1997)
not negate infringement.
infringement See Genentech, Inc. v. Chiron
495, 501 (Fed. Cir,
13
"comprising" claim,
(in a "comprising"
claim, "other
"otherelements
elementsmay
maybe
beadded
addedand
andstill
stillform
formaaconstruct
constructwithin
withinthe
thescope
scope
~~!
14
of
of the chum").
claim").
,seE
oo..c
"CIt:
0
Su
15
I5
001
16
image signals
signals"with
"withclassification
classificationdata."
data."Samsung
Samsung
contain a "recording
circuit"that
thatrecords
recordsimage
"recording circuit"
~;S
17
identified the Camera Roll feature in Apple's

Apple'sproducts
productsas
asmeeting
meetingthis
thislimitation.
limitation.Apple's.
Apple'snonnon-
18
infringement argument
argument is
is that the
aU photos
photos and
and videos
videos taken
taken with
withthe
the
the Camera Roll includes all
19
no "classification"
"classification"of
ofthose
thoseimages.
images. See Mot. at 35. Apple
Apple also
also argues
arguesthat
thatthe
the
device, so there is no
20
'449 patent requires recording of

of "image
"image signals
signals with classification data," such that
that the
21
classification data must

must be
be recorded
recorded simultaneously
simultaneously with
with the
the images.
images. The
TheCourt
Courtdisagrees
disagreesthat
that there
22
is inadequate evidence
evidence to support the verdict. The parties did not
not request
request construction
construction of
of
23
"classification
data," so
so its
its plain
plainand
andordinary
ordinarymeaning
meaningapplies.
applies.Mr.
Mr.Parulski
Parulskitestified
testifiedthat
thatthe
the
"classification data,"
24
theCamera
CameraRoll
Rolland
andthe
theother
other
accused products store
store information
information about
about"which
"which images
images are
areininthe
25
rolls."
Apple's source
source code
code and
and testimony
testimony from
from Apple's
Apple'scorporate
corporate
rolls," based on his inspection of
of Apple's
26
Storertestified
testified that
that the
the
representative.
Tr. at 2615:22-2616:9;
2615:22-2616:9; see also id. at 2637:9-16. While Dr. Storer
representative. Ti'.
27
Camera Roll does not

not include
include classification
classification data,
see Uf.
the jury
jury could
could have
have
data,:see
ad. at 2775:25-2778:24,
2775:25-2778:24, the
's
a:!
t@
::tQa:!
tJu
....u ""'O
.....-
-C t)
G"}I-<
1'1.10
=uz
~:z
Third, Apple challenges

challenges the
the sufficiency
sufficiency of
ofSamsung's
Samsung'sproof
proofthat
thatthe
theaccused
accusedproducts
products
I-<
0
0
w
r..
28
27
27
Case No.:
12-CV-00630
Case
No.: 12-CV-00630

ORDER
PART AND
AND DENYING
DENYING IN
IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FORJUDGMENT
JUDGMENTAS
AS AAMATTER
MATIER
OF LAW
A118
Case: 15-1171
Document: 40
Page: 203
Filed: 03/06/2015
*SEA.ED* Filed09108114
5:12-cv-00630-LHK DocumenU963
Page28of
of45
45
tI
Parulski's explanation
credited Mr. Parulski's
explanation and concluded that the fact that the accused
accused devices
devices can
can
data.
distinguish Camera Roll photos
photos from
from other
otherphotos
photosindicates
indicatesthe
thepresence
presenceofofclassification
classificationaata.
.S
Fourth, Apple
Apple contests infringement
of the'
the '449
449 patent limitation requiring a display with "a
Fourth,
infringement of
list of said moving image signal and still image signal as a search mode." According to Apple, the
55
displays an array of
thumbnails, which cannot be
Camera Roll displaysan
ofthulllbnails,
be'aa "list."
"list.'~Dr.
Dr. Storer
Storeropined
opined that
thatthe
the
'449
449 patent
patent is
is directed toward avoiding
avoiding the
the need
need to
to browse
browse through
through numerous
numerousimages,
images, which
which isis
provides, ill.
2767:11-20,
what a thumbnail array provides.
id. at 2767:
11-20, but
but Mr.
Mr. Parulski
Parulskioffered
offeredaacontrary,,
contrary opinion and
explained that Figure 8 of the patent shows a sample search mode with thumbnails,
thumbnails, id
2613:5id. at 2613;5-
2614:10.
Thus, a reasonable jury could
Storer's characterization
2614:
10. Thus.
could have rejected Dr. Storer's
characterization of
of the Camera
10
to
Roll as not having a "list of

of said moving
Roll
moving image
image signal and still image signal as a search
search mode."
eE
11
II
==
0(3
12
DENIED.
.......
........
13
J.
~.~
14
Apple moves
moves for
for judgment
judgmentas
asaamatter
matterof
oflaw
lawthat
thatits
itsiPad
iPadproducts
productsdodonot
notinfringe
infringeclaim
claim1515
t:Ja
U
""'
...
(,i0,
..'" ...
G1
.!c:
!i.(,i
For
For the foregoing reasons, Apple's
Apple'smotion
motion regarding
regarding non-infringement
non-infringement of
ofthe '449
'449 patent
patent isis
of Claim 15 of
of the '239
Non-infringement
'239 Patent
Patentwith
with Respect
Respect to iPad Prodllets
Products
Non-infringement of
.n s..
'fit
=100
15
of the '239
accused Apple's iPad
of
'239patent.
patent. Mot.
Mot. atat36.
36.Apple
Apptenotes
notesthat
thatSamsung
Samsungaccused
Wad products of
of
"01::
'41
:::z
=~
iJ-,S
...c
16
infringing the '239

'239 patent
patentfor
fortwo
two years
yearsof
oflitigation;
litigation;that
thatSamsung
Samsungincluded
includedthis
thisclaim
claimand
andApple
Apple
17
included its counterclaim for declaratory

declaratory judgment
judgment of
ofnon-infringement
non-infringement in
inthe
thejoint
jointpretrial
pretrial
18
statement, see ECF No. 1455-1 at 2-3, 8; and that the Court
claim
Court informed
informed the
the jury
juryof
ofSamsung's
Samsung'sclaim
statement.
19
19
of
of infringement
infringement in
in the
the preliminary
preliminary jury
jury instructions,
instructions, see ECF No. 1543.
1543. Apple
Apple further
further notes
notes that
that
20
Samsung told Apple and the

third week
the Court
Court during
duringthe
tbethird
Week of
oftrial
trial that
thatSamsung
Samsungwas
wasno
nolonger
longer
21
accusing the iPad

iPad 2, iPad
iPad 3,
3, iPad
iPad 4,
4, and
and iPad
iPad mini ofinfringement
of infringement of
of claim 15.
15, Mot. at 36 (citing
22
ECF No. 1764-5, letter

letter from Samsung
Samsung counsel
counsel to
to Apple
Apple counsel);
counsel); ECF
ECF No.
No.1743
1743(Updated
(UpdatedList
Listof
of
23
Accused Products by Samsung).Sarnsung

Samsung.
did not present any evidence of
ofinfringement
infringement by
by Apple's
Apple'S
24
iPad products.
products at trial. The Court
Court grants
grants Apple's
Apple'smotion,
motion,as
asexplained
explainedbelow.
below.
-~
(1,)':::
0
~
25
The Federal Circuit's

Circuit'srecent
recent holding
holdingin
in Alcoa
Alcon Research Ltd
Ltd vv.Barr
BarrLaboratories,
Laboratories, Inc.,
Inc., 745
145
26
F.3d 1180 (Fed. Cir. 2014), guides the analysis. There, the
the plaintiff
plaintiffhad
hadasserted
assertedtwo
twopatents
patentsininitsits
27
complaint,
complaint. but
but subsequently
subsequently sent
sent the
the defendant
defendant a letter stating
stating that
that the
the plaintiff
plaintiffhad
haddecided
decidedtoto
28
28
Case No.: 12-CV-00630
12-CV-00630
ORDER GRANTING
GRANTING IN
IN PART
PART AND
AND DENYING
DENYINGIN
INPART
PARTAPPLE'S
APPLE'S.MOTION
MOTIONFOR
FORJUDGMENT
JUDGMENTAS
ASAAMATTER
MATIER
OF LAW
A119
Case: 15-1171
Document: 40
Page: 204
Filed: 03/06/2015
Document1963
*SEALED** FiledO9108114
FHed09/08/14 Page29
Page29of
of45
45
e5:12-cv-00630-LHK
3 *SEALE[
claims of
ofinfringement,
infringement, but
butnever
never formally
formally moved
moved to
to dismiss
dismiss those
thoseclaims.
claims.The
The
dismiss those claims
plaintiffdid
did not
not assert
assert those
thoseclaims
claimsininthe
thepretrial
pretrialorder,
order.and
anddid
didnot
notadduce
adduceany
anyevidence
evidencerelated
relatedtoto
plaintiff
3
31
those patents
patents at
at trial.
trial.ld.
1184, 1193. The district court
denied the
the defendant's
defendant'spost-trial
post-trial motion
motion
courtdenied
those
Id. at 1184,
amend the judgment

judgment under
under Rule 59(e) in order to enter
enter judgment
judgment as
as aamatter
matterof
oflaw
law ofofnonnonto amend
55
infringement of
ofthose
those two
two patents,
patents.and
andthe
theFederal
FederalCircuit
Circuitaffirmed.
affirmed.ld.
1] 86-87. The
TheFederal
Federal
Id. at
at1186-87.
infringement
Circuit
Circuit held
held that
that judgment
judgmentwas
wasnot
notwarranted
warrantedbecause
becausethe
thepatents
patentswere
werenot
not"litigated,
"litigated.ororfairly
fairly
(citation omitted).
issue~ during
during the
the trial."
triaL" Id.
III at 1193
1193 {citation
omitted}, The
The Circuit
Circuitnoted
notedthat
thatinin
placed in issue,
determining ififthis
this standard
standardisismet,
met,courts
courtsshould
should"assess[]
"assess[]both
bothwhat
whatthe
theparties
partiesexpected`to
expected totrytry
determining
their statements
statements and
and conduct
conductand
andwhat
whatthey
theyactually
actuallylitigated
litigatedatat trial." Id
III The Circuit
Circuit held
given their
10
were not
not "litigated.
during the
the trial"
trial"because
because(1)
(1)the
the
"litigated, or fairly placed in issue, during
that the patents were
'e
11
plaintiff had informed the defendant

defendant of
oNts
decision to
to drop
drop its
its claims;
claims; (2)
(2) the
theclaims
claimswere
were omitted
omitted
plaintiff
its decision
{cUI,j..
Q~
U
12
from the pretrial order; (3)

(3)neither
neither party
party set
setforth
forth any arguments
arguments or
orevidence
evidence on
on the
themerits
meritsof
of
13
counterclaim for
infringement of
ofthose
thoseclaims;
claims; and
and(4)
(4)the
thedefendant
defendantnever
neverfiled
filed a counterclaim
for declaratory
declaratory
14
judgment of
ofnon-infringement.
non-infringement.ld.
"[a]
Id. The Circuit further noted that-"[
a] court should not render
judgment
15
in the complaint'
complaint' but
with respect
respect to
to claims
claims`reference[d]
'reference[dJ in
butnot
notraised
raisedininthe
thepretrial
pretrial
judgmentwith
judgment
16
a reference
statement or litigated at trial [because] 'a
referencein
inthe
thecomplaint
complaintisisnot
notsufficient
sufficientto
tosupporta
support a
;;J-5
17
judgment.,n Id (citation omitted).

judgment."
t:..
w
18
a:I
1::<
::s:':::
'So
.--.-0....
.~~
A
0
Q
is
:;uv
~"
Q.-
~o
~Z
=~
...0
Here.
the Court concludes
concludes that
that the
the issue
issue of
ofwhether
whether Apple's
Apple's;Pad
iPad products infringe the '239
Here,-the
19
patent was "litigated,

~litigated, or
placed in
in issue,
issue, during
during the
the trial.
triaL"" Although
Samsungpresented
presentedno
no
Although Samsung
or fairly placed
20
evidence at trial on
on the
the issue
issue of
ofinfringement
infringementasasto.
to the iPad
iPad products,
products.ititisisclear
clearthat
thatboth
bothApple
Appleand
and
21
Samsung expected to
to try
try the
the issue
issue of
ofinfringement-as
infringement asto
tothose
thoseproducts
productsand
andthat
thatthese
theseclaims
claimswere
were
22
"referenced in
in the
the complaint,"
complaint," for
for the
the following
followingreasons.
reasons.First,
First,Samsung
Samsung
not akin to claims merely "referenced
23
infringement claim as
as to
to these
these products
products in
in the
the pretrial
pretrial statement,
statement,and
andApple
Appleincluded
includedits
its
included its infringement
24
counterclaim for declaratory

c{)unterclaim
judgmentof
ofnon-infringement
non-infringement as
as to
to these
theseproducts
productsininthe
thepretrial
pretrial
25
statement as well. Second, the

the jury
jury was
was explicitly
explicitly informed
informed of
ofSamsung's
Samsung'sclaim
claimofofinfringement
infringementasas
26
to these products in the preliminary

preliminary jury
juryinstructions,
instructions. and
and was
was informed
informedthat
thatApple
Apple"denie[d]
"denie[d]that
thatitit
27
has infringed the claims asserted by

by Samsung," ECF
ECF No.
No. 1543. Third, Samsung did not withdraw
2&
28
29
CaseNo.:
Case No.: 12-CV-00630
I2.CV-00630
PART APPLE'S
APPLE'S MOTION FORJUOOMENT
FOR JUDGMENT AS A MATTER
MATTER
OF LAW
A120
Case: 15-1171
Document: 40
Page: 205
Filed: 03/06/2015
Page30ofof45
45
e5:12-cv-00630-LHK
claim until the

the third week
week of
oftrial,
trial. albeit before presenting
presenting its
its affirmative
affirmative case.
case. Samsung's
Samsung's
its claim
22
in the
the proceeding
proceeding was
was prejudicial
prejudicial to
to Apple.
Apple. Apple
Applewas
wasforced
forced to
to
at such aa late
late stage
stage in
withdrawal at
Apple~s defense
defense to
to Samsung's
Samsung'sclaim
claimin
in advance
advance of
oftrial
trial and
and had
had to
to try
try Apple's
Apple'scase
casefor
for
prepare Apple's
assuming that
that Apple
Apple had
had to
to reserve
reserve time
time to
to rebut
rebut Samsung's
Samsung'sclaim.
claim.Finally,
Finally,Samsung's
Samsung's
three weeks assuming
55
of its claim
claim of
ofinfringement
did not
not moot
moot Apple's
Apple'scounterclaim
counterclaimby
byindicating
indicatingthat
that
dismissal of
infringement did
Samsung would not

thefuture.
future.Under
Underthese
these
ilot sue
sue Apple
Applefor
forinfringement
infringementas
astotothose
thoseproducts
productsininthe
that theìssue
the issue of
of non-infringement
non-infringement was
was "fairly
"fairly placed
placed in
in issue'
issue"such
such
circumstances. the Court
Court finds
finds that
circumstances;
I) the
a determination on the issue, unlike
unlike in Alcoa
Alcon where(
where (I)
the parties
parties
that Apple is entitled to a-detefnination
explicitly
jury
(2)the
thejury
expJicitly recognized in
in the
the pretrial
pretrial order
order that
that the
the plaintiff
plaintiffhad
had dropped
dropped those
those patents,
patents.(2)
10
-sE
I
ofthe
the infringement
infringementclaim,
claim.and
and(3)
(3)the
thedefendant
defendantnever
neverfiled
fileda acounterclaim.
cQunterclaim. 11
never learned of
a$
1:'
o::=
0CIS
Ut)
UU
11
This Court
Court notes
notes that
that in
in affirming
affirming the
the district
district court's
COurt~sdenial
denialofofjudgment
judgmenttotothe
thedefendant
defendantinin
12
Alcon, the Federal Circuit

Circuit emphasized
emphasized that
that the
the defendant
defendant had
had not
not filed a counterclaim for
Alcoa,
'C1)
-""'
13
ofnon-infringement,
non-infringement, and
and noted
noted that
that such
such aa filing
filing would
wouldlikely
likely have
have
judgment of
.Q-~.....
14
745 F.3d at 1193

1193 (noting that "if
"ifthe
the accused
a<:cused infringer
infringerdoes
does
compelled a different outcome.
outcome. Alcon,
Alcon, 745
SO
~e
15
not file a counterclai~

up to the patentee to decide
decide what
whatclaims
claimsare
are to be litigated and
counterclaim, then itit isis up
16
decided at trial" but

but "[i]f
"[ilfan
an accused
accused infringer
infringerhas
has filed
filed aa counterclaim,
counterclaim,then
thenthe
thepatentee
patenteehas
hasnotice
notice
17
if it drops its
its infringement
infringement claims, the issue of
ofinfringement
infringement remains
remains to
to be
be litigated.");
litigated.");
that, even if
18
Geselischaft m.
b<II., 945 F.2d 1546,
Inc. v. Proma
Mktg. Gesellschaft
m.b.H.,
Proma Produlct-UnJ
Produkt id
(h Mktg.
see also Tol-O-Matic, Inc.
19
1554 (Fed. Cir. 1991),

1991). abrogated on
Markman v.v. Westview
WestviewInstruments,
Instruments,Inc.,
Inc.,52
52
on other grounds, Markman
20
F.3d 967 (Fed.

must be sufficient
sufficient and
and explicit
explicitnotice
noticeofofthe
theclaims
claimsatatrisk"
risk"toto
(Fed.. Cir.
Cir. 1995) ("There must
21
grant judgment as a matter

matteroflaw).
Here, Apple's
Apple'sfiling
filingof
ofa
counterclaimmeans
meansSamsung
had
of law). Here,
a counterclaim
Samsung had
22
notice that the issue of

ofinfringement
infringement was
was still
still at
at issue
issue even
even after
afterSamsung
Samsungwithdrew
withdrewits
its
23
This isis because

because Apple
Apple never
never withdrew
withdrewApple's
Apple'scounterclaim-after
counterclaim afterSamsung
Samsung
infringement claims. This
~o
-0
--"-i
...
Nl V
rI'lO
A
OO
"go
~Z
=0
...0
::J-S
S..
u..
24
24
25
26
26
27
28
11
reached aa similar
similarconclusion
conclusionininan
ananalogous.
analogouscase
casepre
pre-Alcon.
TheFederal
Federal Circuit
Circuit reached
Alcon. See, e.g.,
e.g.,. Strub
Strut
1 }The
v.
Corp.~ 168
F.3d1321,
1321,1998
WL537721,
537721,at
at**10-11
17,1998)
1 8.F.3d
1998 WL
10-1 I (Fed. Cir.Aug.
Cir. Aug. 17,1998)
v. Axon Corp.,
(unpublished) (reversing district court's
of the plaintiffs
plaintiff'smotion
motionfor
forjudgment
matterofof
court's denial of
law of validity because defendant's
defendant'scounterclaim
counterclaimfor
fordeclaratory
declaratoryjudgment
judgmentofofinvalidity
invaliditywas
waspart
partofof
the pre-trial order and defendant
defendant waited
waited until
until the
the close
close of
ofevidence
evidenceto
towithdraw
withdrawthe
thecounterclaim,
counterclaim,
ofaa clearly
clearly presented
presentedclaim
claimatatsuch
suchaalate
latestage
stageininthe
theproceeding
proceedingwas
was
reasoning that "[withhdrawal
"[w]ithdrawal of
wasforced
forcedtotoprepare
preparea adefense
defensetotothis
thisclaim
claimininadvance.
advance
clearly prejudicial
prejudicial to
to [the
[theplaintiff]
plaintiff]which
whichwas
of trial," and thus plaintiff
plaintiffwas
was entitled
entitled to
to judgment
judgment on
on that
thatclaim).
claim).
30
Case No.: 12-CV-00630

12-CV-O()630
ORDER GRANTING
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MATIER
GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR
OF LAW
A121
Case: 15-1171
e5:12-cv-00630~lHK
12-cv-00630-LHK
*.
0e
tt2
==
05
Page: 206
Filed: 03/06/2015
OocumenU963*SEALED*
"'SEAlEO* Filed09108114
Filed09/08/14 Page31.
Page31ofof45
45
Document1963
gave Apple
Applenotice.
notice that
that Samsung
Samsung was
was withdrawing
withdrawing Samsung's
Samsung'sclaim
claimofofinfringement
infringementasastotothe
tbeiPad
Wad
gave
products.
products.
Finally,
thatApple's
nonFinally. Samsung
Samsungargues
argues Apple
Apple somehow waived its argument that
Apple'snon-
33
.S!!
Document: 40
infringement counterclaim
counterclaimwas
Wasstill
stillatatissue
issueafter
afterSamsung
Samsungwithdrew
withdrewitsitsinfringement
infringementclaim
claim
infringement
because
because Apple
Apple did
did not
not file
file any
any response
response to
to this
this Court's
Court'sorder,
order,issued
issuedininthe
themiddle
middleofoftrial,
mal,that
thatthe
the
an update
update regarding
reganfingwhich
whichApple
Appleproducts
productswere
wereaccused
accusedof
ofinfringing
infringingSamsung's
Samsung's
parties file
file an
parties
77
Opp'n at
at 35.
35. This
This argument
argument fails.
fails. The
The Court's
Court's order, see ECF No. 1737,
1137, never
never asked
asked Apple
Apple
patents. Opp'n
whether Apple
Apple withdrew
withdrewits
its non-infringement
non,.inmngementcounterclaim,
counterclaim,so
sothere
therewas
wasno
noreason
reasonfor
for
to state whether
file any
any such
such statement.
statement.
Apple to file
10
to
In sum, the
the Court
Court finds
finds that
that Apple's
Apple'scounterclaim
counterclaimwas
wasfairly
fairlyplaced
placedininissue
issueduring
duringthe
thetrial.
trial.
11
BecauseSamstlng
burden to
to show
showinfringement,
infringement. Medtronic, Inc. v.
v. Mirowski
MirowskiFamily
Family
Because.
Samsung had the burden
12
12
Ventures.
S.Ct 843,
843, 850-51
850-51(2014),
(2014), but presented no evidence,
evidence,the
the Court
CourtGRANTS
GRANTS
Ventures, UC,
LLC, 134 S.Ct.
-.-
13
Apple's motion
motionfor
forjudgment
judgmentas
asaamatter
matterof
.oflaw
lawthat
thatthe
theiPad
iPadproducts
productsdo
donot
notinfringe
infringethe
the '239
Apple's
14
patent.
t,)u
_4..
u O
1:'t
.:2l:;
A=.~
00
A
.ae
SQE
1~
~:Z
=u
15
IS
16
P-S
17
18
19
19
20
21
22
23
24
25
25
26
26
21
27
28
28
K.
InfringemenHor
'414 and
and '959;
'959;New
NewTrial
Trialon
onWillfulness
Willfulnessfor
forall
all
New Trial on Infringement
for '414
Apple Patents
Patents Other
Other than
than '721;
'721; New
New Trial
Trial on
onDamages
Damagesfor
forall
aUApple's
Apple~sPatents
Patents
Apple seeks
seeks a new
new trial
mal on
on various
various bases.
bases, and
and the
the Court
Court addresses
addresseseach
eachininturn
tumbelow.
below.
1.
Assertions that Apple Does Not

Not Practice
Practice the
the '172,
'112,'414,
'414,and
and'959
'959Patents
Patents
Apple seeks a new mal

I 4 and '959,
'959, aanew
newtrial
trialon
onwillfulness
willfulness for
for
trial on infringement for the
the '4
'414
an Apple's
Apple's patents
patentsother
otherthan
than the
the '721,
'121.and
andaanew
newtrial
trialon
ondamages
damagesfor
forall
allof
ofApple's
Apple'spatents
patentson
onthe
the
all
basis that
and prejudicially
prejudicially told
told the
thejury
jurythat
thatApple
Appledoes
doesnot
notand
andhas
hasnever
never
that Samsung
Samsung improperly
improperlyand
practiced the '414
'414patent.
patent,' '959
patent,and
andU.S.
U.S. Patent
PatentNo.
No. 8,074,
'112 patent").
patent").Mot.
Mot.at.
at
8,074, 172
172("the
('the '172
959 patent,
31.
motion.
Apple's motion.
7. The Court DENIES Apple's
Court's case
The Court first sets forth the relevant procedural history. This Court's
casenarrowing
narrowing order
order
early on in
in this
this case
case to
to each
each "limit
`limit their
required
their asserted
asserted claims
claims to
to 55 per
per side"
side"
required Apple
Apple and
and Samsung eaflyon
sung filed
a motion to
to enforce
enforce the
the Court's
Court'scase
case
at trial.
trial. ECF No.
No. 411
471 at 2. In October 2013, Sam
Samsung
fled a:motion
by arguing
arguing that
that
trial by
narrowing order, arguing that
that Apple was attempting-to
attempting to assert eight claims
claims at
at mal
Samsung infringed five claims and separately arguing that Apple practiced
Sam-sung
practiced three
three extra
extraclaims
claims -31
31
Case
12-CV~0Q630
No.: 12-CV-00630
Case No.:
ORDER GRANtING
GRANTING IN PART AND
AND DENYING
DENYING IN PART
PART APPLE'S
APPLE'S MOTION FOR JUDGMENT AS A MAnER
MATTER
ORDER
OF
OF LAW
LAW
A122
Case: 15-1171
Document: 40
Page: 207
Filed: 03/06/2015
e5:12-cv-00630-LHK
Fifed09/08J14 Page32
Page32ofof45
45
LHK Document1963
Claim 34 of the '959

'959 patent,
172 patent.
patent, and
and Claim 11
ii of
patent. Claim
Claim 27
27 of
ofthe ''172
of the
the '414
'414 patent
patent
"extra claims").
(hereinafter "extra
claims"). See ECF No. 804-3
804~3 at 3. Apple argued in
in response
response that
thatthe
thethree
threeextra
extra
practice were
were not
not "asserted claims"
claims for which
which Apple
Applewanted
wantedto
topresent
presentevidence
evidence ofApple's
Apple's practice
at 2.
2. At
At the
the hearing
hearing on
that should count towards the five claim limit at trial. ECF No. 845 at
Samsung's motion
to enforce,
enforce,the
theCourt
Courtdisagreed
disagreedwith
withApple.
Apple.The
TheCourt
Courtnoted
noted that if Apple
Samsung's
motion to
at trial
trial that it practiced those extra claims, those claims would
would count towards
wanted to argue at
"asserted claims"
claims" and
and Apple
Apple would
would have
have to
to accordingly
accordinglyreduce
reducethe
the number of
Apple's limit
limit of
of five "asserted
of
claims it asserted for infringement.

infringement. ECF
ECF No.
No. 1133
1133 atat158.
158.The
TheCourt
Courtalso
alsogave
gaveApple
Applea achoice.
choice. The
Court stated that if

if Apple
Apple was going
going to
to argue
argue at
at trial that
that Apple
Apple practiced the
the extra claims to rebut
10
Samsung~s
argumentthat
thatApple
Appledoes
doesnot
notpractice
practicethe
thepatents,
patents.ininthe
theinterest
interestofoffaimess
Samsung
Samsung's argument
fairness Samsung
11
challenge the
the validity
validity of
nfthe extra
extra claims.
claims.ld
was because
would be allowed to challenge
Id. at 155-59, 170. This was:because
.(13
12
the Court reasoned itit would

would be
be unfair
unfair for
for Apple
Apple to
to use
use the
the extra
extra claims
claims as
as aa sword
swordfor
fordamages
damages
--.......
13
arguing Apple
Apple practices
practices those
those claims,
claims, yet
yet prevent
prevent Samsung
Samsungfrom
from challenging
challengingthe
the
purposes by arguing
Q.~
14
Id. In response.
of those claims.
validity of
claims.ld
withdraw the
thethree
threeextra
extraclaims
claimsand
andnot
not
response; Apple elected to withdraw
'!e
aSQ)v
15
ofpractice.
practice.ld
170.The
TheCourt
Courtconfirmed
confIrmedthis
thisininitsitsorder
ordermemorializing
memorializingthe
the
evidence of
present evidence
Id atat170.
'i o
;::Z
16
E hearing.
hearing. See ECF No. 1057 at 2 ("At
("At the
the hearing. Apple stated that
that itit would not
not seek
seek to
to introduce
introduce at
at
...
0c
c.
'"'"
17
of the '959
'959patent,
patent. claim 27 of
ofthe
trial any evidence of
of its three unasserted claims, i.e., claim 34 of
18
'172
patent. and
and claim
claim 11
II of
ofthe
the '414
'414patent.
patent.Accordingly,
Accordingly, the
theCourt
Courtdenies
deniesSamsung's
Samsung'smotion
motiontoto
'172 patent,
19
enforce Apple's
[] as moot.").
moot.").
Apple's compliance with the Court's case narrowing order []as
('IS
'8
1:<
t::s.~
w_
<:>
UU
Uw
-~
Col 0
J..Q
:il .b
AlIlQ
.
Ci)'E
v2
CQ)
;J-5
D5
20
At the pretrial hearing

hearing on
on the
the parties'
parties' motions
motionsininlimine,
limine,the
theparties
partiesand
andthe
theCourt
Courtrevisited
revisited
21
issue. The
The Court
Courtagain
again told
told Apple
Applethat
this issue.
thatififApple
Applewanted
wantedtotoassert
assertits
itspractice
practiceofofthe
the extra claims
22
in order to wipe out

infringing alternative, that
out aa potential
potential nonnon-infringing
that in
in the
the interest
interestof
offairness,
fairness,the
the claims
23
would count as one

one of
ofApple's
Apple'sfive
fiveasserted
assertedclaims
claimsand
andwould
wouldbe
besubject
subjecttotoananinvalidity
invaliditychallenge
challenge
24
1411 at 48-50, 54-55,58

54-55. 58 ("If
("[fyou
you want
wanttotoput
putthis
thisclaim
claim at issue, you are
by Samsung. ECF No. 1411
25
welcome to do that. ItIt just

just needs
needs to be one
nne of
ofynur
three of
like to use all
your five, three
of your five if you'd
you'd like
26
three. That's
just your
your choice ...
..[If[If
youassert
assertthe
thepractice
practiceofofthese
theseclaims,]
claims.]it itcounts
countsasasone
oneofnf
That's just
you
27
your five and it is potentially going to

I'mnot
notgoing
goingtotolet
letthis
thisbe
belitigated
litigated
to be
be invalidated
invalidated...
... I'm
28
32
Case No.: 12-CV-00630
12-CV-00630

PART AND DENYING IN PART APPLE'S
APPLE'S MOTION
MOTION FOR
FORJUDGMENT
JUDGMENTAS
AS AAMATTER
MATTER
OF LAW
A123
Case: 15-1171
Document: 40
Page: 208
Filed: 03/06/2015
K Document1963
e5:12-cv-00630-LHK
OocumenU963*SEALED*
*SEALEO* FiledO9108/14
Page33ofof45
45
door in
in aa sword
swordand
andshield
shieldfashion
fashionwhere
wherethey
theycan't
can'tchallenge
challengevalidity,.
validity,but
butyou
youget
gettoto
behind the door
That'sjust
justnot
notgoing
goingto
tohappen.
happen. What's
What'syour
yourchoice?").
choice?").The
TheCourt
Courtalso
also
use it defensively. That's
ofthe
the unasserted
unassertedclaims
claimsbefore
beforetrial.
trial. Id at
at 51
51
explicitly gave
gave Apple
Applethe
theoffer
offertotolitigate
litigatethe.
thevalidity
validity of
explicitly
you prepared
prepared [to]
[to] litigate
litigate the
the validity?
validity? I'm
I'mwilling
willingtotodo
dothe
thevalidity
validityon
onthese
thesethree
threeand
andwe
we
("Are you
55
potentiallyinvalidate.
invalidate these three unasserted claims
claims before
before the
the trial
trialon
onthis
thisand
andititwould
wouldbe
beaa
could potentially
id at
at54
54(Court
(Courtinforming
infonningparties
partiesthat
thatthe
theCourt
Courtcould
could.decide
decidevalidity
validitybefore
beforetrial
trialifif
non-issue.");
non-issue."); id.
77
rejected the
the Court's
Court'soffer
offerand
andagain
again chose to "stick
"stick with
with [its]
[itsJoriginal
original five
five
Apple agreed). Apple rejected
Accordingly,the
the Court
Courtprecluded
precludedApple
Applefrom
fromcontendingattrial.I
contending at trialthat
thatApple
Apple
[claims]." Jd.
Id. at 58. Accordingly,
practices
practices the extra
extra claims
claims and
and held
held that
that Apple
Apple "may
"may not
not rebut
rebut any
anySamsung
Samsungcontention
contentionthat
thatApple
Apple
to
10
products constitUte
constitute an acceptable noninfringing alternative
alternative to
tothe
the '414~
'414, '172,
'172, or
or'959
'959patents[.]"
patentsl.}"
11
Court noted
noted in
in its
its Order
Order that
that "it
"it gave
gave Apple
Apple an
an opportunity
opportunityto
torebut
rebut
ECF No. 1398 at 3. The Court
V
tJu
::=
U.......
Od
12
constitUteacceptable
acceptablenoninfringing
noninfringingalternatives
alternativesby
by
Samsung's contention
contentionthat
thatApple
Appleproducts
productsconstitute
Samsung's
.--.-....
yO
-y
.~ !J
13
'172,or
or'959
'959patents
patentssoso long as
contending that
thatApple
Apple practices unasserted
unasserted claims of
of the '414, '172,
14
Apple was willing to litigate

litigate the
the validity
validity of
ofthe
the unasserted
unasserted claims
claims either
eitherbefore
beforeor
orduring
duringthe
theMarch
March
15
31,
declined the Court's offer." Id.
Id
3'1, 2014triaL
2014 trial. Apple
Apple declined.
..$
ttS
~.!!
00
.
~E
d u
E
-.s::
oot:
1z
.... Z
=u
j;J .-5
....
00
u.
16
Before trial, the parties

parties filed ajoint
a jointmotion
motionto
tosupplement
supplementPreliminary
PreliminaryJury
JuryInstruction
InstructiOnNo.
No.
17
jury that
20 and filed Proposed
Proposed Final
Final Jury
Jury Instruction
Instruction No
NO'.18
18which
whichwould
wouldinform
infonnthe
thejury
that"Apple
"Appledoes
does
18
l
not contend that it practices the '414,'172,
'414, '172.oror'959
'959patents"
patentsfin
inthis
thisaction.
action.ECF
ECFNo.
No.1418
1418atat2.2.The
The
19
Court's final
"fiJn this
this case,
case, Apple
Apple does
does not
not
Court's
final preliminary
preliminaryjury
juryinstructions
instructionsaccordingly
accordingly stated
statedthat
that`t[i]n
20
contend that it practices

practices the
the '414,'
'414, 172,
'172,and
and'959
'959patents?'
patents."ECF'
ECFNo.
No.1542
1542atat22.
22.The
Theparties:also
parties also
21
filed a "joint amended pretrial

pretrial statement
statement and
and order"
order" in
in which
which the
the parties
partiesstated
statedinillthe
the"Undisputed
"Undisputed
22
Facts" section
Facts"
secticn that
that "Apple's.
"Apple'sproducts
productsdo.
do not practice claim
claim 23
25 of
ofthe
the '959
'959patent,
patent,claim
claim2020ofofthe
the
23
'414 patent, or
or claim 18
18 of
ofthe
the '172
'172patent,"
patent,"which
which are
are the
the claims
claims Apple
Apple asserted
asserted against
againstSamsung
Samsung
24
1455-1 at 9.
for infringement
infringementpurposes'
purposes (hereinafter
(hereinafter "asserted
"assertedclaims").
claims").ECF
ECFNo.
No.1455-1:at.9.
25
During Samsung's
Samsung'sopening
openingstatement,
statement,Samsung
Samsungtotd
told the
thejury
jurythat
thatApple
Appledoes
doesnot
notpractice
practice
26
ECF No. 1622 at.

357, 359, 386-87, 391, 401,
has. See ECFNo.
at 357,
the '172, '414,
'414, and
and '959
'959patents
patentsand
andnever
neverhas.
27
413-14. Shortly thereafter, Apple

Apple filed
filed aa motion
motion asking
asking this
this Court
Court to
to permit
pennitApple
Appletotointroduce
introduce
28
33
Case No,:
No.: 12-CV-00630
FOR JUDGMENT
JUDGMENT AS
AS A MATTER
MATIER
OF LAW
A124
Case: 15-1171
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Page: 209
Filed: 03/06/2015
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Rled09/08/14 Page34
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45
evidence to rebut Samsung's

Samsung'sassertions
assertionsby
byclaiming
claimingApple
Applepractices
practicesand
andused
usedtotopractice
practicethe
the
patents. and asking

asking for
for aa curative
curativeinstruction
instructiontotominimize
minimizethe
theprejudice
prejudiceresulting
resulting from Samsung's
patents,:and
assertions. ECF No. 1567

1567 at
at 5-6. The
The Court
Court denied Apple's
Apple'smotion
motion"for
"forcurative
curativeaction
actionasas to
whether Apple currently practices the '414,

'414, '172,
'172, and
and '959
'959Patents."
Patents."ECF
ECFNo.
No.1578
1578atat1.1.
S
5
Nonetheless, the
"as to
the Court
Court ordered
ordered Apple
Apple to
to file
file aa supplemental
supplemental brief
brief"as
towhat
whattimely
timelyproduced
produced
and/or timely disclosed evidence

evidence exists
exists in
in the
the record
re.cord as
as to
to whether
whether Apple
Apple inin the
the past
pastpracticed"
practiced"the
the
7
7
three
asserted claims.
claims. Id.
Id
three asserted
In response,
response. Apple submitted aa brief
briefidentifying only the following evidence. ECF No.
1581-3. With respect to claim 20 of

'414, Apple
Apple submitted:a
submitted a quote
quote from
from the
the deposition
deposition of
of
of the '414,
to
10
Gordon Freedman, the

the inventor
inventor of
ofthe
the '414
'414patent,
patent:,ininwhich
whichhe
henoted
notedthat
thatan
aniPhone
iPhone
11
II
synchronization prototype
prototype included
included "software
"software that
that embodied
embodied all
aU the
the ideas
ideasin
inclaim
claim20
20of
ofthe
the'414
414
12
patent" and that

thaJ that
thatsoftware
was "essentially
"essentiallywhat
whatwas
wasininthe
theshipping
shippingproduct."
product." ECF
ECFNo.
No.1581-5
] 581-5
patent"
software was
"C t)
13
at
216. .218. With respect
respect to
to claim
claim 18
t 8of
ofthe
the '172
'172patent,
patent:,Apple
Applesubmitted
submittedaaquote
quotefrom
fromthe
the
at 216-218.
~.!:
14
deposition of
of Kenneth
Kenneth Kocienda,
Kocienda, an
an inventor
inventor of
ofthe
the '172
'I n patent,
patent:,ininwhich
whichhe
henoted
notedthat
thathehedid
didnot
not
SUE
UJ"
15
"fll'Storiginal
originaliPhone
iPhonepractice[d]
practice[d]claim
claim18"
18~'but
butthen
thenininresponse
responsetotothe
thequestion
question
.."think"
think" that
that the
the "first
'0
~~
16
for the
theiPhone
iPhonepractice
practiceclaim
claim18,"
18."he
heresponded
responded"I"l
whether
"other non-English
non-English language
languagekeyboards
keyboards for
whether "other
;:J.,a
17
believe that the languages

languages which
which II listed
listed earlier,
earlier, Japanese,
Japanese, Chinese,
Chinese, et
etcetera,
cetera,do
doemploy
employthis."
this,"
18
ECF No. 1581-6 at 128.

128. With
With respect
respect to
to claim
claim 25 of
ofthe
the '959,
'959,Apple
Applecited
citedtotoApple's
Apple'sResponse
Responsetoto
19
13,2013
ThirdSupplemental
SupplementalResponse
Responsetoto
Interrogatory No. 42 dated June 13,
2013 and Apple's
Apple'sTbird
20
Interrogatory No. 25 dated

dated June
June 19,
19.2013.
in which
which Apple
Apple identified
identifiedsource
sourcecode
codefiles
fileswith
withrespect
respect
2013, in
21
as implementing
implementing the
thefunctionality
functionality that
that practices
practices"the
"theasserted
assertedclaims
claimsofofthe
tile'959"
'959~'
to iOS version 66 as
22
patent.
patent, ECF
ECF No.
No. 1.581-7
1581-7 at 17-18
17-18 and
and ECF
ECFNo.
No. 1581-8
1581-8at
at16.
16,Apple
Appleexpressly
expresslyconceded
concededininitsits
23
briefthat
that "Apple's
"Apple'sexperts
expertsdid
didnot
notprovide
provideopinions
opinionsthat
thatApple
Applepractices
practicesororhas
has
supplemental brief
24
practiced" the
the asserted
asserted claims.
claims. ECF
ECFNo.
No.1581-3.
1581-3. The
The Court
Courtsubsequently
subsequentlydenied,
denied,on
onthe
therecord,
record,
practiced"
25
Apple's
motionseeking
seekingaacurative
curativeaction
actionregarding
regardingwhether
whetherApple
Applepracticed
practicedthe
thepatents
patentsininthe
thepast.
past.
Apple's motion
26
No; 1623
1623 at
at 613.
ECF No.
Ce
~
"s
1:<2
==
c:>~
C,)U
UU
_<0~o
-..='.00
:sO
.... S
=u
x..
27
28
34
28
Case No.:
I 2-CV -00630
No.: I2-CV-00630

A}\;'D DENYING
DEN"YING IN PART APPLE'S MOTION FOR
FOR JUDGMENT
ASAA MA
ITER
MATTER
JUDGMENT AS
OF LAW
A125
Case: 15-1171
Document: 40
Page: 210
Filed: 03/06/2015
se5:12-cv-00630-LHK
*SEALED* FiledO9108114
Page35of
of45
45
11
Samsung's closing
closing statement, Samsung's
coutlselsuggested
suggestedtotothe
thejury
jurythat
thatany
any
During Samsung's
amsung's counsel
damages award should be

be reduced
reduced because
becauseApple
Apple does
does not
notpractice
practiceApple's
Apple'sasserted
assertedpatents.
patents. See
ECF No. 1929 at 3270 (claiming

(claiming that
thatApple
Apple"seekf
"seek[s] lots
money for
for things
things that
that Apple
Apple itself
itselfdoes
does
tots of
of money
not even use"); id. at 3328-29.

3'328-29. Samsung
Samsung also
also argued Samsung
Samsung could
couldnot
nothave
havecopied
copiedthe
theasserted
asserted
usedinin Apple's
Apple'sproducts.
products.ld.
cO.py it if
have never
neverbeen
beenused
patents because they have
Id. at.3256
at 3256 eyou
("You can't copy
it's not there, ififApple

Apple doesn't
doesn'tpractice
practiceit.";
it.");id..
idatat3257-58
3257-58("If
("Ifit's
it'snot
notininyour
yourproduct,
product,someone
someone
7
7
Andwhy
whywould
wouldsomeone
someonecome
come[sic]
[sic]totoyour
yourproduct
productififyou're
you'renot
notpracticing
practicingthose
those
can't
copy itit.And
can't copy
same patents?,,);
patents?"), id
id.atat3265-66
3265-66("By
e'Bythe
theway,
way,[Apple]
[Apple]wasn't
wasn'tpracticing
practicingmost
mostofofthese
thesepatents,
patents,atat
this point aU
them.");
practice most.of
mostofthese
patents:'); id.at
doesn't practice
these patents."),
all of
ofthem.
id. at
"); id. at 3277 ("[T]he iPhone doesn't
10
s)
3287 ("Well, we've

we've already
alreadyseen
seenthat,most
that mostof
ofthese
these patents
patents aren't
aren'tused
usedininthe
theiPhone.").
iPhone.").
'sI~
11
IJ
U
G_8
.J ......
12
points that
that Apple
Appledoes
doesnot
notand
andhas
hasnever
neverpracticed
practicedthe
theasserted
assertedpatents,
patents,without
withoutgiving
giving
at various points
or::
ColO
13
Apple a chance
chance to
to rebut.
rebut. Apple
Appleargues
arguesthat
thatthe
theprejudicial
prejudicialvalue
valueofofthose
thosestatements
statementsand
andthe
thefact
fact
A
=.~
U
$e
14
trial necessary. The Court rejects

new trial
rejeCts Apple's
Apple's argument.
argument.
that Apple could
could not
not rebut
rebut them
them renders
rendersaanew
.auE
15
oct!
0
uO
16
Appiey Mot.
Mot. at
at38-40.
3840.Yet
Yetany
anyargument
argument
damages] based on false
false information,"
information,"which
whichprejudiced.
prejudiced Apple.
=u
:;;;;.;;
17
by Samsung that Apple does

does not currently practice the asserted claims of the '959, '414, and '172
'172
18
light of
ofApple's
Apple'smultiple
multipleadmissions
admissionspre-trial
pre-trialthat
thatApple
Appledoes
doesnot
not
patents was not "false"
"false" inin light
19
asserted claims.
claims. See ECF No. 1133 at 162-63 (Apple
(Apple stating
statingat
atDecember
December2013
2013hearing
hearing
practice
the -asserted
practice the
20
that Apple does

No. 1455-1
1455-1 atat99("joint
ejointamended
amended
does. not
not practice the three asserted claims); ECF No.
21
order" in
in which
which the
the parties
parties stated in the "Undisputed
4'Undisputed Facts"
Facts"section
section that
that
pretrial statement and order"
22
"Apple's products
donot
notpractice
practiceclaim
claim25
25 of
ofthe
the '959
'959patent,
patent,claim
claim20
20ofofthe
the'414
'414patent,
patent,ororclaim
claim
"Apple's
products do
23
patent."); ECF
ECF No.
No. 1581-3
1581-3at
at I1(Apple
(Appleconceding
concedingthat
that"Apple's
'~Apple'sexperts
expertsdid
didnot
not
18 of
of the '172 patent:");
24
Apple practices"
practices" the
the three
three asserted
asserted claims);
claims); ECF
provide opinions that Apple
ECF No.
No. 1418
1418at:2
at2 (joint
(joint
25
stipulation pre-trial stating that

that "Apple
"Apple does
does not contend that
thatitit practices
practices the
the '414,
'414.'172,
'172,oror'959
'959
26
patents',.
patents").
a$
t:~
=:.::
.-.'"_-....
t)
HL
fitQ
Apple now contends

contends itit was
was manifestly
manifestly unfair
unfairfor
forthe
theCourt
Courttotoallow
allowSamsung
Samsungtototell
teUthe
thejury
jury
Apple.argues
Court.to
:toallow
allow the
the jury
jury to "reach
"reach aa verdict
verdict [and
[andcalculate
calculate
Apple argues it was unfair for the Court
\/}.J:
.,!:: ;Z
...
00
t.L.
27
28
35
28
Case No.: 12-CV-00630

12-CV-00630
PART AND DENYING IN PART APPLE'S MOTION FOR
FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
MATTER
OF LAW
A126
Case: 15-1171
Document: 40
Page: 211
Filed: 03/06/2015
Page36 of
of 45
45
With respect to
to' Samsung's
Samsung'sarguments
arguments that
that Apple
Apple never practiced the asserted claims in the
2
past, the Court

CO'urt fails
fails to
to see
see how
how Samsung's
Samsung'sassertions
assertionswere
were"false"
"false"given
giventhat
thatthis
thisCourt
Courtexplicitly
explicitly
gave Apple the

the opportunity
oppontlnity to
to present
presentits
itsevidence
evidenceof
ofpast
pastpractice
practiceofofthe
theasserted
assertedclaims,
claims,and
and
Apple's evidence
Apple's
evidencewas
wasweak
weakatatbest.
best.Moreover,
Moreover, Apple
Appledid
didnot
notobtain
obtainany
anyexpert
expertopinion
opinionthat
thatApple
Apple
practiced those
those claims,
claims. as
as Apple
Apple expressly
expressly conceded.
conceded. ECF
ECF No.
No. 1581-3
1581-3atat11("Apple's
("Apple'sexperts
expertsdid
did
..has
haspracticed"
practiced"the
the three
three asserted
assertedclaims).'
claims).122
not provide opinions that Apple ....
With respect
respect to any argument by Samsung that
that Apple does
does not
not practice
practice and
and has
has never
never
7
8
Apple
the three
three unasserted extra claims, the Court
Court is
is not
not convinced
convincedby.
by Apple's
Apple'sclaim
claimthat
thatApple
practiced the
was prejudiced by
by not
not being able to rebut Samsung's
Samsung's arguments.
arguments. Apple's
Apple'sclaim
claimisisunavailing
unavailing
10
Court gave
gaveApple
Apple the
thechoice
choice not
not once,
once, but
buttwice,
twice, to
to rebut by presenting
presenting evidence
evidence at
at
because this Court
11
that Apple
Apple practices
practicesthe
theextra
extraclaims,
claims, but
butApple
Apple declined
declinedthe
theCourt's
Court'soffer
offerboth
bothtimes.
times.When
When
trial that
UU
U
U
w
12
given tbe
not to present
presentevidence
evidence of
ofApple's
Apple'spractice
practiceof
ofthese
theseextra
extraclaims,
claims,orortotodo
doso
sowith
with
the choice not
U ~
13
the consequence of
ofopening
opening up
up those
those claims
claims to
to aa validity
validity challenge
chaUenge bySamsung
by Samsungand
andtoto.have
havethose
those
~.~
AQ
rIlCl
14
present such
claims count as one
one of
ofits
its five
five "asserted"
"asserted"claims,
claims, Apple
Appleitself
itself chose not to present
such evidence
evidence
~o
....
..c:
$5
15
and to only assert the

the five other
O'ther claims
claims Apple
Apple originally
originally asserted
asserted for
forinfringement
infringementpurposes.
purposes.
""E
's
't~
:::t-
0""
....gO
"-'
-;:
.....u.l::.~
oot:
"00
a~a
!:z
=0
;;;J;S
The Court
Court notes
notes that
thatApple's
choicewas
wasaastrategic
strategicdecision
decisionbeneficial
beneficialtotoApple.
Apple.This
Thisisis
Apple's choice
16
17
because Apple chose not

notto
to assert
assert claims
claims which
which were
were broader
broaderand
and thus
thusmore
morevulnerable
vulnerabletotovalidity
validity
18
claim) depends
depends from
from claim
claim 11
11 of
of the
challenges.
challenges.. For
For example,claim
example, claim 20
20 of
of the
the '414 patent (asserted claim)
19
'414 (unasserted claim).

claim). Independent
Independentclaim.
claim 11
II requires only one "synchronization
"Synchronization software
software
"414
20
component,"
but asserted
asserted dependent
dependentclaim
claim20
20requires
requiresatatleast
leastthree
threedistinct
distinctsoftware
softwarecomponents.
components.
component," but
21
See ECF No.

1151at
23.Before
Beforeand
andduring
duringtrial,
trial, Apple repeatedly
repeatedly, relied
relied on
on the
the fact
fact that
that claim
claim 20
20
No 1151
at 23:
l-o
0
C
r.z..
22
23
24
25
26
27
28
12
Furtbennore.
cases Apple
Apple cites
cites in
in support
support of
ofits
its proposition
propositionthat
thatthe
theCourt
Courthad
hadan
an"obligation"
"obligation"
Furthermore, the cases
to permit Apple to rebut
rebutSamsung's
Samsung'sstatements
statementsare
areinapposite,
inapposite,asasone
onecase
caseisisa acriminal
criminalcase
casewhich
which
held onlythatfalse
inadmissible rebuttal
rebuttalevidence,
evidence, see
only that false information can open the door to otherwise inadmissible
another, Dillon, Read &
& Co.
Co v.
493 F.3d 1021,
e.g., United
United States
States v.
v. Sine,
Sine, 493F.3d
1021, 1037
1037 (9th Cir.
Cir. 2007),
2007). and
and another,Dillon,
v.
United States.
1989), stands
stands for
for the
the unremarkable
unremarkableproposition
propositionthat
thataa
States, 875 F.2d 293, 300 (Fed. Cir. 1989),
trial court
court should
should not
not allow
allowstipulations
stipulationswith
withrespect
respectto
tofacts
factsthe
thecourt
courtknows
knowsare
arefalse.
false.Apple's
Apple's
other cited case for
for the
the proposition
propOsition that
thataacurative
curative instruction
instructionisisneeded
neededwhen
whenthere
thereisis"attorney
"attorney
is also
also inapposite.
inapposite. See United
United States
States v.
v. Schuler,
Schuler, 813 .F
F.2d
misconduct" is
.2d978.
978,979-83
979-83 (9th
(9th Cir. 1987)
(holding that without
without aa curative
curative instruction,
instruction, aaprosecutor's
prosecutor'sreference
referenceduring
duringclosing
closingargument
argumenttotoa a
non-testifying
defendant'sbehavior
behaviorduring
duringtrial
trialalleged laughter
laug.ijterwhen
whentestimony
testimonyabout
aboutthe
the
non-testifying defendant's
his alleged
threats he made
made was
waspresented
presentedtotothe
thejury
jury
- violated Fed. R. Evid. 404(a),
~04(a), Due
DueProcess,
Process,and
andthe
the
defendant's
FifthAmendment
Amendmentright
rightnot
nottototestify,
testify,and
andthus
thuswarranted
warrantedreversal).
reversal).
defendant's Fifth
12
36
36
Case
CaseNo.:
No.: 12-CV-0063Q
12-CV-00630
ORDER GRANTING IN
IN PART.AND
PART AND DENYING
DENYING IN
IN PART
PART APPLE'S
APPLE'SMOTION
MOTIONFOR.
FORJUDGMENT
JUDGMENTAS
AS AAMATTER
MA ITER
OF LAW
A127
Case: 15-1171
Document: 40
Page: 212
Filed: 03/06/2015
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5:12-cv-00630-LHK
*SEALED* FiledO91OS/14 Page37
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of45
45
K Document1963
three software
software components
components to
to rebut
rebut Samsung's
Samsung'sinvalidity
invalidityarguments
fu'gumentsbased
basedon
onthe
the
requires three
(Apple's opposition
853-4 at 7 (kpple's
opposition to
to Samsung's
Samsung's
5.0 prior
prior art reference.
reference. See ECF No. 853=4
Windows Mobile 5.0
motion for summary judgment) ("The 'sync

'sync client'
client' does
does not
notmeet
meet t;lairn
~laim 20's
20's requirement for
;
multiple components
components (let
(let alone
alone multiple
multipledata-class
data-classspecific
specificcomponents)
compo~ents)and
andthus
thusdoes
doesnot
not
multiple
original};Tr.
Tr.atat2828:25-2829:11,
2828:25-2829:11.2847:1-10 (Dr.
(Dr.Snoeren
Snoerentestimony:
testimony:
anticipate:') (emphasis
(emphasisininoriginal);
anticipate.")
"So, again,
in claim
claim 20
20 we
we need
need those
those three
threedifferent
differentsoftware
software synchronization
synJhronizationcomponents,
components,and
and
again, in
all of the limitations

ofthem has
has to
to meet
meetallofthe
limitations from II.").
1L").Thus,
Thu/i,Apple
Applewould
wouldhave
havefaced
facedaa
each one of
the validity
validity of
ofunasserted
unasserted claim
claim 11
11 as
as opposed
~pposedtoto the
thevalidity
validity of
of
defending the
greater challenge defending
claim 20.
asserted claim
10
2847:~-10
ofthe
the '959
'959patent
patentrequires
requiressearches
seatchesininaa"plurality
"pluralityofoflocations.
locations,
Similarly. asserted claim
claim 25 of
Similarly,
tIS
'E
t:<2
:::;.:
Qa:s
U
UU
U
..........
QO
U.
0
C
1:)
...,.
..
v~
.r;b
11
which include the Internet and local storage media:'

media."959
'959Patent
Patentcls.
c1:s.24,
24,25.
25.However,
However,claim
claim34
34
12
not have
have these
these limitations,
limitations. Apple
Apple has
has repeatedly
repeatedly!relied
uponclaim
claim25's
25's
(unasserted) does not
retied upon
13
oflocations
locations including
including the Internet
Internet to
to distinguish
di~tingUjShSamsung's
Samsung's"freeWAIS"'freeWAISrequirelllent for a plurality
plurality of
requirement
14
sf"prior
artreference.
reference. See Tr.at
2825:7-2826: t (Dr. Snoeren
Snoeren testimony);
testikony);ECF
ECFNo.
No.1908-3
1908-3atat28-29
28-29
Tr. at 2825:7-2826:1
sf' prior art
15
(Apple's opposition
as aa matter
law) (arguing
(Apple's
opposition to
to Samsung's
Samsung'smotion
motionfor
forjudgment
judgtnentas
mattet of
oflaw)
(arguing that
that
16
freeWAIS-sf
"would not
free
W
nothave
havethe
theability
abilitytotolocate..
locate information
information inina plurality
pluralityofoflocations
locationsthat.
that
17
Internet and local

local storage
storage media").
media'''). Accordingly,
Accordingly, Apple would have faced a
includes both the Internet
18
ofunasserted
unasserted claim
claim 34
34 as
as ppposedd to the validity of
greater challenge
challenge defending
defending the
the validity
validity of
19
asserted claim 25.
s.
~
lila
..54)
.. s
#~Q
~
-
'go
0
::::;2:
=4)
Ca
zi
;:>;9
DY
....
00
.L.
w
20
AIS-sf~'would
Apple's
choiceto
Apple's choice
toassert
assertthe
theasserted
assertedclaims
claimsas
asopposed
opposedtoto ~e unasserted claims was aa
21
)t now complain that

strategic decision beneficial to Apple.
Apple~ The
The Court finds that
that Apple
Apple ~annot
thatits
its own
own
22
decision led to an unfair

unfair result
result or
or prejudice
prejudice by
by "undermin[ing]
"undermin[ing] Ap
Apple's infringement, willfulness,
willfulness.
23
at 39.
and damages arguments." Mot. at
24
Furthermore,
AppJehas
hasalso
alsonot:explained
not explainedwhy
whythe
theCoura
Court J,hOUld not have pressed Apple to
Furthermore, Apple
~ot
25
;e of
of the extra claims,
make an election between
between not presenting
presentingevidence
evidenceof
ofApple's
Apple'spr<
pra4ice
claims. or
26
openingupupth+
presenting such
such evidence
evidencewith
withthe
theconsequence
consequenceofofopening
27
27
In other words, Apple has not

not explained
explained why
why itit would be fair
fair for
for flpple to use the unasserted
28
Case
CaseNo.:
No.: 12-CV-00630
12-CV-00630
tho~ claims to a validity challenge.

challenge.
37
37
GRANTING IN PART AND DENYING IN

IN PART
PART APPLE'S
APPLE'S MOTlqN FOR JUDGMENT AS A MATTER
ORDER GRANfING
OF LAW
A128
Case: 15-1171
Document: 40
Page: 213
Filed: 03/06/2015
,
i led09108114
Page38 of
of 45
Document1963 *SEALEO*
*SEALED* FFiledoJo8/14
Page38
se5:12-cv-00630-LHK DocumenU963
;
i
c1aimsas
sbield and
andaasword
swordby
byarguing
arguingatattrial
trialthat
tbatApple
Applepractices
qracticesthe
theclaims
claimsininorder
ordertoto
claims as both a shield
i
support its damages arguments and wipe out Samsung's

Samsung'snon-infringing
non-infringingalternative
alternativearguments,
arguments.but
but
simultaneously prevent
prevent Samsung
Samsung from challenging
challenging the validity
validity of
ofthose
those claims.
claims. Absent
Absentany
any
explanation from Apple,

Apple, such
such an election was
was necessary
necessart in
in the interest of
of fairness to
to
persuasive explanation
Samsung.
I
3
know that Apple's

soJehowdid
didnot
not know
The Court further rejects
rejects Apple's
Apple'sargument
argumentthat
thatApple
Applesomehow
the unasserted
unasserted claims
claims would
would mean Samsung
Samsun~ would
would be
be allowed
allowed to
toargue
argue at
at
choice with respect to the
trial that Apple

Apple does
does not
notpractice
practicethe
theasserted
assertedpatents.
patents. See Reply at
at! 23; Mot. at 39 ("What
("What began
began as
Apple could affirmatively contend at trial on a single issue thus morpbed

morphed
an order limiting what Apple
10
and misleading
misleading statements[,
]") (emphasis in
into a license for Samsung to make numerous false and
statements[.]")
11
original). This claim

claim is
is belied
belied by
by the
the fact
fact that
that at
at the
the pretrial
pretrial conference,
conference, when
when Apple
Appledecided
decidedonce
once
12
original five
five claims,
claims, Apple
Apple itself
itselfacknowledged
acknowledged that
thatits
itschoice
choicenot
notto
toargue
argue
again to stick with its original
13
Samsungwould
wouldAbe
1be able
Apple does
doesnot
not
that Apple practices
practices the
the extra claims
would mean Samsung
claims would:
able to
to argue Apple
Q.~
14
ReF No.
No. 1411
1411 at
at 58
S8 ("[l]f
("(I]fyou
rulethat,
that,[Samsung]
[Samsung1can
canargue
arguethat
thatApple
Apple
practice the patents. ECF
you rule
.Be:
Cl-<
15
aU these
these patents,
patents, and,:therefore,
and, therefore, that
that the
the iPhore
iPhoneisisaanon-infringing
non-infringing
practices no claim in all
16
ifthafs
yourruling,
ruling, we
we will
will abide
abide by
by itit,and
andwe
wewould
wouldlike
liketotostick
stickwith
withour
ourfive
five
alternative;
alternative, if
that's your
~-S
17
id at 61 (the Court informed the parties that

"Samsungwill
willbe
beable
ableto
to argue
arguethat
that
claims,");
claims."); see also id.
that"Samsung
"'"
c...
18
doesnot
notpractice
practicethe
thepatents).
patents). J3
the Apple products
are non-infringing
non-infringing alternatives"
alternatives" because
becauseApple
Appledoes
products are
13
t:<$
'f
t<S
QtU
o~
t,)u
Uv
_<+-<
w~
.CoI
v 0C
....
""'Col
==
.-u
-AA....
t;.t:
tIlCl
_U.I
(I.)
"go
!:z
Ii
::::IU.I
0a
19
20
21
22
23
24
25
26
27
28
propositi~n
13The
TheCourt
Courtfurther
further notes
notes that
that Apple's
Apple's cited case
J3
case for
for the
the proposition that
that`false
"falsestatements"
statements"
9o.~ 60 F.3d
Fold 631, 637
637 (9th
(9th Cir.
Cir.
warrant aa new
new trial
trial isisdistinguishable.
distinguishable.Wharfv.
BurlingtonN.R.R.
.Wharf'v. Burlington.
N.R.R. Co.,
t1995),
995). was
workplace injury,
injury. and
and the
the Ninth
N.inth
was a case
case in which an employee sued his employer
employer for a workplace
defense counsel
Circuit held the district
district court
court should
should have
have granted
granted aa new
new trial.
trial. The
The!defense
counselhad
hadallowed
allowedthe
the
teU the
the jury
jury the
thestipulated
stipulatedfact
factthat
thatthe
theplaintiff
plaintiff"still
"stillha[d]:
ha[d]!his
hisjob"
job"with
withthe
thedefendant,
defendant,
court to tell
knew that
thatthis
this "fact"
'"fact"was
wasfalse
falsebecause
beca~the
thedefendant
defendanthad
hadalready
already
even though defense
defense counsel
counsel knew
information prejudiced
prejudiced the
the plaintiff
plaintiff
decided to terminate
terminate plaintiff.
plaintiff. Id. The court found this false information
who could
he knew
knewhehedid
didnot
notactually
actuallyWill
stillhave
havehis
his
could have
have asked
askedthe
thejury
jurytotoaward
awardmore
moredamages
damagesififhe
Because the
the lawyer's
lawyer'smisconduct
misconductprevented
preventedthe
thejury
juryfrom
fromconsidering
consideringthe
thefull
funextent
extent
job. Id. at 638. Because
of the damages caused
ofthe
caused by
by the
the defendant's
defendanfsnegligence,
negligence,aanew
newtrial
trialwas
waswarranted.
warranted. Id. In this case,
the
Court
cannot
conclude
that
the
statements
by
Samsung
withrespect
respectto
topractice
practice
unlike in Wharf.
Wharf
Court cannot conclude that the statements by Samsung with
of the unasserted claims
of
claims were
were"false,"
"false,"as
asthey
theywent
wenttoto a contested issue that Apple itself
itselfchose
chose not
not
to instead
instead assert
assertits
its five
five other
otherclaims
claimsof
ofinfringement.
iu.fringement.
to address when electing
electing to
38
'
38
Case
CaseNo.:
No.: 12-CV-00630

MOTIQN FOR JUDGMENT AS A
A MATTER
MATIER
PART APPLE'S MOTION
OF LAW
A129
Case: 15-1171
Document: 40
Page: 214
Filed: 03/06/2015
seS:12-cv-00630-LHK Document1963
*SEALEO* FiledO9/08/14
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45
se5:12-cv-00630-LHK
:01of45
that Apple
Apple was
wasgiven:
given ample opportunities to make its
its choice,
choice, and
andthat
thatits
itschoice
choicewas
was
Given that
22
could
intended to benefit
benefrt Apple,
Apple, this
this Court
Court finds that
that Apple's
Apple'sassertion
assertionthat
thatititcould
a strategic decision intended
not present
its practice
present evidence
evidenceof
ofits
practiceofofthe
theunasserted
unassertedclaims
claimsdoes
doesnot
notsuffice
sufficetotomeet
meetRule
Rule59,
59,
44
raresituations
situationswhen
whenititisisnecessary
necessarytoto"prevent
"prevent
which permits
permitsthis=Court
this Court to grant
only inrare
which
grant a new trial onlyin
55
Fe4. R.
R. Civ.
Civ.P.
P.59.
59.
a miscarria.ge of
a_miscarriage
of justice."
justice." Fed.
Finally,
Finally, the
the Court
Courtisisnot
notconvinced.
convinced by Apple's
Apple's contention
contentionthat
that"adherence
"adherencetotoaacase
case
'77
narrowing procedure
justify depriving
depriving Apple
Apple of
ofthe
the right
right to
to present
presentthe
the truth
truthabout
aboutits
its
procedure cannot
cannot justify
88
-re Katz
Katz Interactive
40-41; Reply
Reply atat24.
24. In
In support,
support, Apple
Appleclaims
claims that
that In
Inre
rights." Mot.
Mot. at
at 40-41,
property rights."
1303, 1312-13
1312-l3 (Fed.
(Fed. Cir.
Cir. 2011),
2011),"suggest[s]
"suggest[s]that
thataacase
case
Call Processing Patent Litigation, 639 F.3d 1303,
10
procedure could
could violate
violate the
the patentee's
patentee'sdue
dueprocess
processrights
rightswhere
whereititresults
resultsininpreventing
preventing
narrowing procedure
's
11
from introducing
introducingevidenceconceming
unasserted claims
claimsthat
that`present[]
'present[]unique
uniqueissues
issues
the patentee
patentee from
the
evidence concerning unasserted
UU U
12
12.
Mot at 40-41. The Court rejects Apple's

Apple's suggestion
suggestionthat
thatthis
thisCourt's
Court's
as to liability or damages.
damages."m Mot.
-.-.
13
five claims
claims violated
violated Apple's
Apple'sdue
dueprocess
processrights.
rights.InIn Katz, after
limit Apple
Apple to asserting
asserting five
decision to limit
~.!!.!
14
ofclaims
claimsthe
thedistrict
districtcourt
courtwould
wouldallow
allowthe
thepatentee
patenteetotoassert
assertatattrial,
trial"the
the
selecting the total number
numberof
$E
So
15
asked the
the district
districtcourt
courttotostay
staythe
thedisposition
dispositionofofvarious
variousextra
extraclaims
claimswhich
whichthe
thepatentee
patentee
patentee asked
"go
B
;::Z
16
at 1309-10. The district court denied the patentee's

Katz. 639 F.3d
F.3dat
patentee'smotion
motion
did not select
select. In re Katz,
~-S
.....
17
because the patentee

extra claims
claims"presented
"presentedunique
uniqueissues
issuesas
astoto
patentee failed
failed to
to demonstrate
demonstrate that
that these
these extra
18
Id at 1312. The Federal Circuit.

affrmed, rejecting
liability or
damages"so
soas
asto
to justify
justifyaastay.
stay.ld.
Circuitaffirmed.
rejecting the
the
ordamages"
19
patentee's
the district
and reasoning
reasoning that
thatthe
thepatentee
patenteehad
hadnot
notshown
shownthat
thatthe
district
patentee'sdue
dueprocess
processargument
argumentand:
20
court's
claim selection
selectionprocedure
procedure"was
"wasinadequate
inadequatetotoprotect
protectKatz's
Katz'srights
rightswith
withrespect
respecttotothe
the
court's claim
21
unasserted claims."
The .Circuit
Circuit noted that (the
"some
tf the patentee had demonstrated that "some
claims." Id. at 1311. The
22
of its unselected
of
unselected claims presented unique
unique issues
issues as to
to liability
liability or
or damages"
damages"and
andthe
thedistrict
districtcourt
court
.23
:23
had refused to permit

permitthe
the patentee
patenteetotoassert
assertthose
those claims.
claims, such a "decision would be subject to
24
that the
the patentee
patentee had
had "made
"madeno
no
review and reversal." Id. at 1312-13. However, the Circuit noted that
25
effort to make such a showing with respect to

to any
any of
of the
the unselected
unselected claims."
claims" Id. at 1313. Similarly
26
266
washighly
highlyrelevant
relevantand
andunique
unique
here, although Apple now claims that "Apple's
"Apple'spractice
practice[]0was
27
determining infringement
infringement and
and damages,"
damages,"Reply
Reply
information that the jury would have considered in determining
\lIS
E
t:8
;:s:'=
o \lIS
.... <+-<
.R...fJO
L V
~u
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.:rl
b
A..,,0
oo,
=0
00
28
39
Case No.:
No.: 12-CV-00630
DENYING IN
IN PART
PART APPLE'S
APPLE'S MOTION
MOTIONFOR
FORJUDGMENT
JUDGMENTAS
ASAAMATTER
MATIER
ORDER GRANTING IN PART AND DENYING
OF LAW
A130
Case: 15-1171
Document: 40
Page: 215
Filed: 03/06/2015
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Docutnentl963 *SEALED*
5:12-cv"()0630-LHK Document1963
*SEALEO* Rled09l08/14
Fited09/08114 Page4O
Page40ofof45
45
24. Apple
Apple failed
failed to
to explain
explainininspecific
specificdetail
detailbefore
beforetrial
trialhow
howitsitsthree
threeextra
extraclaims
claimspresented
presentedany
any
at 24,
"unique issues
issues as to
to liability
liability or damages" which would have
have required
requiredthis
thisCourt
Courttotodeviate
deviatefrom
fromits
its
"unique
33
decision:
to:limit
limiteach
eachparty
party to fiVe
five claims.
claims. The
The Court
Courtacted
actedwithin
within its discretion
discretion when
when limiting
limiting the
the
decision to
parties
claimseach
eachininorder
ordertotokeep
keepthis
thiscomplex
complexcase
casemanageable
manageablefor
forthe
thejury.
jury. See Joao
parties to five claims
55
Control
& Monitoring
MonitoringSys
LLCv.
Co., No. 13-CV-13615,
13..CV-13615, 2014
2014 WL
WL 106926,
106926, at
at *3
*3
Control &
Sys.,. LLC
v. Ford Motor Co.,;No.
10, 2014)
20 14) {citing
(citing Federal
Federal Circuit
Circuit cases
cases "establish[ing]
"establish[ing1 the
thebroad
broaddiscretion
discretion of
ofaa
(E.D. Mich. Jan. 10,
<limit the scope of

of trial in a patent case by limiting the
the number
number of
of claims that can be
district court to `limit
asserted.")
asserted."')(citation
(citationomitted).
omitted). To
To credit
credit Apple's argument
argument that
that Apple
Apple should
shouldhave
havebeen
beenallowed
allowed to
essentially assert
assert eight
eightclaims
claimsbecause
becauseits
itsextra
extra claims were
were relevant
relevanttotoinfringement
infringementand
anddamages
damagesessentially
10
while insulating
would eviscerate
eviscerate that discretion
insulating three of
ofthese
these claims from invalidity
invalidity challenges
challenges
- would
's
U
11
that courts
courts allow
allowparties
partiestotoassert
assertail
allclaims
claimspotentially
potentiallyrelevant
relevanttotothe
thecase.
case. It would
by mandating that
jU
QCI:S
12
12
wit\:l the Katz decision which emphasized, while affirming

affirming the
the district
district court's
court'sdecision,
decision,
also conflict with
~o
13
"complex: cases,"
cases," the
thedistrict
district court "needs
needs to have broad discretion to administer
administer the
the
that in "complex
14
1313 (citation omitted).

proceeding." In reKatz.
re Katz, 639 F.3d at 1313
CI:S
-"e
3;:::
._...
.......
tt,)u
..... <.0-,
~
t;"c
VJ 4w
Q.~
flO
-=
='"'
15
Ultimately. the Court

Court concludes
concludes that
that even crediting
crediting Apple's
Apple'sconcerns,
concerns,the
thecircumstances
circumstancesof
of
Ultimately,
!:z0
'e~
16
the high
high standard
standard under
under Rule
Rule 59,
59, which
which permits
permitsthis
thisCourt
Courttotogrant
grantanew
a newtrial
trial
this case do not reach the
t:J-S
...
17
only in rare situations

situations where
where necessary
necessary to
to "prevent
"preventaa miscarriage
miscarriageof
of justice"
justice." Fed. R. Civ. P. 59.
18
Accordingly,
Court DENIES
DENIESApple's
Apple'smotion
motionfor-anew
for a newtrial:
trialon
onthe
thebasis
basisthat
thatSamsung:
Samsungmade.
made
A;cordngly, the Court
19
concerning Apple's
improper statements concerning
Apple'spractice
practiceof
ofits
itspatents.
patents.
_0
\/l'c
=0
r
20
21
2.
Reference to the
the Possibility
Possibility of
of a Permanent
PermanentInjunction
Injnnction
Apple seeks a new trial on infringement for the

'959, aanew
newtrial
trial on
on willfulness
willfulness for
for
the '414 and '959,
22
all
aU Apple's
Apple's patents
patents other
other than
than the
the'721
'721,,and
andaanew
newtrial
trial on
on damages
damagesfor
forall
allof
ofApple's
Apple'spatents
patentsinin
23
order to correct Samsung's

Samsung'sallegedly
allegedlyprejudicial
prejudicialreference
referenceits
itsopening
openingstatement
statementthat
thatApple
Apple :S
is
24
to get
get an
an order
ordersaying
sayingthat
thatnone
noneof
ofthese
these phones
phonescan
canbe
besold
sOldininthe
theUnited
UnitedStates
States
seeking "to
25
m~tion.
anymore." ECF No. 1622 at 358. Mot. at 41. The Court DENIES Apple's
Apple's motion.
26
27
The procedural
proc-edural history isis as
as follows.
follows. The
The Court
Court initially
initially overruled
overruledApple's
Apple'sobjection
objectiontoto
Samsung's reference in
in Samsung's
Samsung'sopening
openingslides
slides to
to how
how Apple
Apple isis seeking
seekingaapermanent
injunction
28
40
Case No.: 12-CV-00630
AND DENYING IN PART

PART APPLE'S
APPLE'S MOTION
MOTIQN FOR JUDGMENT AS A MATTER
OF LAW
A131
Case: 15-1171
Document: 40
Page: 216
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45
K Document1963
because the reference allegedly suggested

in this case because.
suggested Apple
Apple was
was "not
"notentitled
entitled to
tothe
thedamages"
damages"and
and
"equitable relief
also because "equitable
reliefisis to
to be
be decided
decided by
by the
theCourt."
Court."ECF
ECF No.
No. 1517-3
1517-3atat77(motion);
(motion);ECF
EeF
1538 at II (ruling);
(ruling);ECF
ECFNo.
No.1555
1555(denying
(denyingmotion
motionfor
forreconsideration).
reconsideration).Nonetheless,
Nonetheless.after
after
No. 1538
Samsung's opening
whichSamsung
Samsungtold
toldthe
thejury
juryApple
Appleisisseeking
seeking"to
"toget
getananorder
order
Samsung's
openingstatement
statementininwhich
saying that nOne

ofthese
these phones
phones can
can be
be sold
sold in
in the
the United
United States
States anymore,"
anymore."ECF
EeFNo.
No.1622
1622atat358,
358,
none of
prohibited Samsung
the Court pronibited
Samsung from
from making
making further
further reference
reference to
to Apple's
Apple'spermanent
permanentinjunction
injunction
7
8
ECF No. 1623

request on the ground
ground that
thatsuch
suchreferences
referenceswould
wouldbe
beirrelevant.
irrelevant &e
1623 at
at 615. The
The
See EeF
.
ECF Nos. 1567 at 8-9 (motion)
Court dellie.dApple's,request
for ~curative
instruction, see ECYNos.
(moti<m) &
&, 1578
1578
denied Apple's request fora
curative instruction,
(orcjer),
record that
that any
any such
such instruction
instruction would
would unnecessarily
unnecessarily"highlight
"highlighttheissue~"
(order), stating on the record
the issue."
10
No. 1623 at 615.

ECF No,
6t5. The Court
Court also
also denied
denied Apple's
Apple'srequest
requestfor
foraaifinal
finaljury
juryinstruction,
instruction,see
seeECF
ECF
ctt
'f
11
=:=
ctt
12
.--..--.
,L ....U
13
halding
asaa matter
matter of
oflaw,
law, references
references to the possibility of
ofa permanent
injunction must
mustbe
be
holding that as
S~
AQ
14
excluded in patent
patent trials.
trials. Rather,
Rather. whether
whetherto
to allow
aHow such
such references
referencesat
,attrial
trialisisaamatter
matterwithin
withinthe
the
E
-<1)
t;E
15
court's
discretion subject
subjecttotobalancing
balancingunder
underFederal
FederalRule
Ruleof
ofEvidence.403.
Evidence 403. See, e.g., Broadcom
court's discretion
"=0
16
Corp. v. Emulex Corp.,

Corp. No. 09-CV-0
09-CV-OI058.
Cal. Aug.
Aug. 10,
10r2011)(granting
1058, ECFNo.
ECF No. 770 at2
at 2 (C.Dt
(C D. Cal.
2011) (granting
.s
17
in patent
patent case
case to
to exclude
excludereference
reference to
to the
the possibility
possibilityof
ofpermanent
permanentinjunction
injunctionrelief
relief
motion in limine in
18
because the
the defendant
defendant "offer[ed]
"offer[ed] no
noreasoned
reasonedbasis
basisfor
furbeing
beingpermitted
permittedtotorefer
refertoto
under Rule 403 because
19
relief.,,)14
this Court's
Court'sdecision
decision to
toallow
allowthe
thereference
referenceduring
duringopening
openingstatements
statements
injunctive relief.")
Here, this
i4 Here.
20
was made
made-after
balancingof
ofthe
theappropriate
appropriate Rule
Rule 403
403 factors.
factors. Although
A~thoughthis
thisCourt
Courtruled
ruledafter
after
after a balancing
21
opening statements that

that no
no further
further references
references to
to the
the possibility
possibility of
ofpermanent
permanentinjunctive
injunctiverelief
relief
22
should be made,
made. the
the Court
Court finds
finds that
that Samsung's
Samsung'sone
onereference
referenceduring
duringitsitsopening
openingstatement
statementwas
Wasnot
not
23
Molski,
warrant aa new
newtrial
underRule
Rule 59
59"to
"toprevent
prevent a
justice,," Moisld,
so prejudicial as to warrant
trial under
a miscarriage ofofjustice."
24
481
Court found,
found. any
any,case
caseininwhich
whicha anew
newpatent
patenttrial_
trial
481 F.3d at 729. Apple does not cite, nor has this Court
~~
Q
U
U .....
~ o
1Z0
-0
"" $0.<
v3~
oo~
!:z
av
=<1)
.j;;j
I Nos,
Nos. 1758
1758 at 120-21
120-21 &
& 1848.
1848.
Apple's
request for
for a new trial. As an initial
there isis no
no rule
rule
Court denies Apple's
request
matter, there
The CO\iltdenie$
.
.
$0.<
25
26
27
28
14
at trial
trial that
that the
the question
question of
ofwhether
whetheraa party mayi reference
injunction
reference a permanent
14 Apple conceded at
is a matter "completely
Court's] discretion.
discretion. It's
It's ajudgmentfor
make," ECF
ECF
t for. [the
[the Court] to make."
"completely in [the Court's]
No. 1621
1621 at
at255.
.
255.
41
Case
Case No.:
No.: 12-CV-00630
12-CV-00630

PART AND DENYING IN PART APPLE'S
A MATTER.
MATIER
IN FOR
FOR JUDGMENT AS A
APPLE'S MOTION
OF LAW
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Case: 15-1171
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Filed09,108/14 Page42
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of 45
45
granted on
on the
the ground
groundthat
thatthe
thejury
juryheard
heard aa reference to
to aa permanent
pem,tanentinjunction
injunctionrequest
requestororon
on
was granted
2
3
that aa curative
curadveinstruction
instructionwith
withrespect
respecttotothat
thatissue
issuewas
wa$not
notgiven.
given. 15IS
the ground that
under Ninth
Ninth Circuit
Circuit case
case law,
law, granting
granting a motion
motion for
fqr anew
a newtrial
trial on the basis of
of
Further, under
misC()nduct isis only

only appropriate
appropriate where the "flavor
"flavor of misconduct..
miscondu,ct ..
sufficientlypermeate.
permeate
. sufficiently
attorney misconduct
proceeding to
to provide
provide conviction
conviction that
that the
the jury
jury was
was influenced
influenced by
by passion
passion and
and prejudice in
an entire proceeding
its verdict
verdict."
Harris Upham
Upham &
& Co.,
Co.,dnc.,
736 F.2d 1283,
1283, 1286
1286 (9th
." Kehr v. Smith Barney, Harris
Inc., 736
reaching its
1984) (citation
(citation omitted).
omitted). While
While Apple
Apple claims
claims that
that Samsung's
Samsung'sreference
referenceduring
duringits
itsopening
opening
Cir. 1984)
basedon
onthe
thepotential
potentialconsequences
consequencesofofthe
theverdict,
verdict,
statement invited
invited the
the jury
juryto
to"decide
"decidethe
thecase
casebased
statement
taw," Mot.
Mot. at
at 42,
42, the
the Court
Court isis not
not convinced
convincedthat
tha,t the
thejury'sconsideration
jury's'considerationof
ofthe
the
not the facts or the law,"
10
was so
so tainted
tainted or
orinfluenced
influencedasasaaresult
resultofofthis
thisone
onereference
referenceasastotowarrant
Warraflta
newtrial.
trial.
evidence was
a new
's
11
Sarnsung"sopening
openingstatement,
statement,the
the jury heard evidence
witnesses over
over the
the
evidence from ,multiple
multiple witnesses
After Samsung's
o==
12
oftrial,
trial, and
and there
there were
were no further
further references
references to
toApple's
Apple'srequest
requestfor
for
course of
of thirteen days of
.-
13
permanent injunctive
injunctive relief.
relief. Accordingly.,
Accordingly, the Court
Court DENIES
DENIES Apple's
Apple'smotion
motionfor
fora anew
newtrial
trialdue
duetoto
S.2i
14
Samsung's
prejudicialreference
referenceininits
itsopening
openingstatement
statementtotothe
thepossibility
possibilityofofpermanent
permanent
Samsung's allegedly
(1:$<1.>
15
injunctive relief.
!Z
16
3.
::>
17
(1:$
t:t2
0(1:$
U
UL)
U
.... to-.
yO
w ....
a
1-ot)
~"C
C'IlO
Aa
.se
ii5,
"00
o
=<1.>
Reference to Federal Circuit

Circuit Preliminary
Preliminary, Injunction
Injunction Decision
Decision
'959 patent to
Apple seeks
seeks aa new
new trial
trial on
on infringement,
infringement, willfulness,
willfulness, and
and damages
damagesfor
forthe
the '959
!-o
0
0
>.t.
u;
18
correct Samsung's
prejudicialreferences
referencestotothe
theFederal
FederalCircuit's
Circuit'spreliminary
preliminary injunction
Samsung's allegedly
19
F d 1370
decision in this case.
Inc. v;
v. Samsung
Samsung Elecs. Co.,
Co., 695 FJd
1370(Fed.
(Fed.Cir.
Cir.2012).
2012). Mot.
Mot at
case, see Apple lac.
20
42, In that decision, the Federal Circuit

42.
Circuit held
held Apple
Apple did not
not satisfy
satisfY its
its burden
burden necessary
necessary for
foraa
21
22
23
24
25
26
27
28
15
Carp., 352 F. Supp.2d
which Apple
Apple cites,
cites, was
was aa
526, 529 (D. Del.:2005),
Del 2005), which
Corp. v. Corvis Corp.,
Supp. 2d 526.
k5 Ciena Carp.
reconsideration of
ofthe district
district court's
courfsdenial
den~alof
ofaapermanent
permanentinjunction
injunction in a
decision on aamotion for reconsideration
patent case. There, the court
court simply
simply cited,
cited, without
without any
any reasoning,
reasoning, the
~e court's
court'sprevious
previousmotion
motioninin
limine ruling which "required
"required [Defendant]
[Defendant] not
not to
to refer
refer to
to the
the injunctive
injunptiveremedy
remedyininthe
thepresence
presenceof
of
the jury."
cites Computer Associates
Inc. v. American Fundware, Inc., 831 F.
AssociatesInt'l,
Intl Inc.
jury." Apple also cites
Supp. 1516, 1530 (D. Colo. 1993),
1993), which
which is
is aa breach
breach of
ofcontract
contract and
and trade
trade secret
secretmisappropriation
misappropriation
case, not a patent case, that
that granted a motion in
in limine
I imine excluding
excluding reference
referenceto
tothe
theplaintiff's
plaintiff'sclaim
claim
must be
be granted
granted when
when the
thepossibility
possibilityof
of
for injunctive relief. Neither
Neither case held that
that aa new trial must
813 FF.2d
2 978,
States v. Schuler,
injunctive relief
referenced at
at trial.
trial. Finally,
Finally, United States
SchWer, 813
978,982
982(9th
(9th Cir.
Cir.
relief is referenced
1987),
as itit isis aa criminal
criminal case
case where
wherethe
theprosecutor
prosecutorimproperly
improperlymade
made
1987), isis clearly
clearly distinguishable, as
comments about the conduct
conduct of
ofaa non-testifying
non~testifying defendant,
defendant. and
and the
th4 Ninth
Ninth Circuit
Circuitgranted
grantedaanew
new
trial because the failure of
ofthe district court
court to give a curative
curative instruction
instruction violated
violatedthe
thedefendants
defendant's
fifth
.
Fifth Amendment rights.
42
Case No.: 12-CV-00630

.
MATTER
IN PART
PART APPLE'S
APPLE'S MOTION FOR JUDGMENT AS A MATIER
ORDER GRANTING IN PART AND DENYING IN
OF
OF LAW
LAW
A133
Case: 15-1171
Document: 40
Page: 218
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*SEALED*
Filed: 03/06/2015
Filed09 /08/24 Page43

FiledOQ/08/14
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of45
45
;
_no
andthus
thus
preliminary injuru:tion
injunction wit.
with respect 10
to U.s.
U.S. P_t
Patent No.
No. 8,086,604
8,086,604 Jthe'6(14
(the '604 patent"), and
reY~ed
grantingaapreliminary
injunctionon
od the
the '604.1d.
1317. The Court
reversed this Court'sdecision
Court's decision granting
'604. Id. at 1377.
13;
DENIES Apple's
motion.
Apple's motion.
4
5
Apple claims that the following allegedly prejudicial

prejudicialstate~ent
was made
made by
by Samsung's
Samsung's
statement was
counsel during Samsung's
Samsung'sopening
openingstatement:
statement:
~What.l~appened
pate~t.
[Apple1 sued
sued on
on a different
different search
search patent. [Apple]
[Apple] sued
suedon
onthe
the '604
'664
"What happened isis [Apple]
'959'1,and
and[Apple]
[Apple]went
.Wentto
to.court
courtand
andthey
they got an injunction
against
patent, not [the '959],
injunction against
was right,
[Samsung] doing this type of
of search. We didn't
didn't think
thinkitit w*
right. We
Wedidn~t
didn't agree,
agree, but
but we
we
[S3IlJsung]
so we
we
...:. ititwasn't
tutjned that
that off.
off. We
We appealed
appealed it,
it, and
and
complied. And
And so
wasn't hard to do. I mean, we turned
appeals reversed
~s wrong,
wrong, we're
we'reentitled
entitledtotodo
do
the court of
ofappeal.s
reversed and
and said
said we were
were right, Apple
Appl+ was
it, and then dropped that patent."
patent:f
.
10
ECF No.
that when making this statement,
statem*nt, Samsung
Samsung incorrectly
incorrectly told
told the
the
No. 1622 at 402. Apple claims that
11
jury
ruled Samsung
is entitled
jury that
that the
the Federal
Federal Circuit
Ci(cuitruJed
Samsungis
entitledto
touse
useApple's
APpJ,'Suniversal
universalsearch
searchfeature
feature
_o
12
though the
'959 patent
42claimed in the '959
~959 patent,
patent, even
evet.ithough
the'959
patentwas
was not
not atissue
at/issueininthe
theappeal.
aPpeal.Mot.
Mot.atat42-
13
43. Apple further claims

claims that
that Samsung
Samsung also
also improperly-cross-examined
improperly cross-ex~ined Dr.
Dr. Vellturo,
VeUturojApple's
Apple's
61;)
pA
:sCiE
14
damages expert;
daIllages
expert, by asking
asking him to
to admit
admit that
that the only reason
reason Samsung removed
removedthe
theQuick
QUickSearch
Search
~a
_.<1)
oo..c:
15
''C'
(liP
t::
16
reincorporated that
thatfeature
intoits
itsproducts
productsonly
onlybecause
becausethat
thatdecision
deconwas
wasultimately
ultimatetyreversed.
feature into
reversed.
=IU
j:);
""'
00
17
Mot. at 43 (citing ECF

ECFN.o.
1715 at
at 1341-42).
1341-42). In
In sum,
sum, Apple
Apple claims
cla~s that
that Samsung's
Samsung'sstatements
No. 1715
statements
18
prejudiced Apple because

because they
"suggested to
to the
the jury
jury that
that an
an appeals
ap~lscourt
courtsided
sidedwith
withSamsung
and
they "suggested
Samsung and
19
against
issue that
that was
was relevant
relevant in
in the
the current
current trial,
trial, when
wh~nin
infact
factthe
theFederal
FederalCircuit's
Circuit's
against Apple on an issue
20
decision had no relevance to

to the
the issues
issues that
that were
were before
before the
the jury"
jury."Mot.
Mot.atat43.
43.
7
8
tIS
's
tom
_
1:<
;:s.o t;;.
4C).C
~
.....
UU
uP
(J
$,t)
... cJ
.y
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~
w
21
sam~ng
Box feature from its
its products
products was
was this
this Court's
Court'spreliminary
preliminaryinjunction
injunct~on
order,and
andthat
thatSamsung
Samsung
order,
i
Apple previously moved

moved fora
foracurative
curativeinstruction
instructionand
andpro
pro~osed
finaljury
Juryinstructions
instructionstoto
.osed final
22
correct Samsung's
Samsung'sallegedlyprejudicial
statementininits
allegedly prejudicial statement
itsopening
Opening statement,
sljatement,see
ECF No. 1567;
1567;
see EeF
23
ECF No. 11758

1578 at 2; ECF
EeF No. 1848.
1848.
ECF No. 1578
758 at
at 122, but this Court
Court denied both requests. See Eef
24
The Court finds no reason

reason to
to change
change course
course and
and thus
thus denies
denies Apple's
App1e:t.srequest,
request,for
fortwo
tworeasons.
reasons.
25
First, Apple's
Apple~sclaim
elaimthat
thatSamsung
Samsungincorrectly
incorrectlysuggested
suggestedtotolthej~ry
thatthe
theFederal
FederalCircuit
Circuit
the jury that
26
ruled Samsung is entitled

to use
use Apple's
Apple'suniversal
universalsearch
searchfeature
feature qlaimed
entitled to
claimed in the
the '959 is meritless in
21
light of
Samsung's
opening
statement
explicitly
told
thejury
jury
thatApple
Appleattained
attainedaa
of the
factfact
thatthat
Samsung's
opening
statement
explicitly
told
the
that
!
28
43
Case No.: 12-CV-00630

12-CY-00630
IN PART
PART APPLE'S
APPLE'S MOTION
MATTER
ORDER GRANTING IN PART AND DENYING rN
MOTrqN FOR JUDGMENT AS A MA
TIER
OF LAW
A134
Case: 15-1171
Document: 40
Page: 219
Filed: 03/06/2015
e5:12-cv-00630-LHK
Page44of
of45
45
:12-cv-00630-LHK Document1963 *SEALED*
e5
injunction with
with respect
respect to
to the
the '604 patent,
patent. not
not the
the '959
'959 patent,
patent, and
and that
that this
this decision
decision
preliminary
mentioned the
the'959
by the
the Federal
FederalCircuit.
Circuit.ECF
ECFNo.
No. 1622 at 402. Samsung never mentioned
'959
was reversed
reversed by
was
33
patent in connection
Circuit decision. Samsung
Samsung even
eyen explicitly
explicitly told
told the
the jury at
connection with the Federal Circuit
other,
times throughout
throughout trial that Apple
other times
Apple attained
attained aa preliminary
inju~ctionwith
withrespect
respecttotothe
the'604
'604
55
1714 at
at 1031-33
1031-33 (Cross
(Crossof
ofDr.
Dr.Snoeren);
Snoeren);ECF
ECFNo.
No.1715
1715atat1342
1342(Cross
(CrossofofDr.
Dr.
patent See ECF No. 1714
patent.
VeUturo).
Vellturo).
77
Second.
Apple's claim
claim that
thatthe
theFederal
Federal Circuit's
Circuit'sdecision
decisionhad
hadno
norelevance
relevanceto
tothe
thecurrent
current
Second, Apple's
belied bythe
thefact
factthat
thatApple
Appleitself,
itself.when
whengiven
giventhe
thechoice
choicebyqythis
thisCourt,-chose
Court. chosetotomake
tmtkethe
trial is beliedby
the
This Court
Court expressly
expressly told
told Apple
Apple before
before trial
trial that
thatififApple
Applechose
chosetotoargue
arguethat
~t
decision relevant. This
to
10
Samsungremoved
Quick Search
Search Box
Box feature
feature and
and then
then reincorporated
reincorboratedititdue
dueto
tocustomer
customer
Samsung
removed the Quick
11
complaints about the feature's

feature'sabsence.
absence,Samsung
Samsungwould
wouldbe
beallowed
allowd,dtotorebut
rebutby
bytelling
tellingSamsung's
Samsung's
12
of the story
story
- i.e.,
Samsungremoved
removed the
the Quick
QuickSearch
Search.Box
Box only
only to
to comply
comply with
withthis
this
i.e., that Samsung
side of
13
CQurt's
grantof
ofaapreliminary
preliminaryinjunction
injunctiontotoApple
Appleregarding
regardingthe
the'604,
'()04,and
andreincorporated
reincorporatedthe
the
Court's grant
Q.A
14
Federal Circuit's
Circuit'sreversal
reversal of
ofthat
thatinjunction.
injunction. See ECF
ECF No. 1621
t 621 at
feature only in response to the Federal
~S
15
255 (THE COURT: "But

"But ififyou're
you'regoing
goingtotosay,
say,yes,
yes,we
wewant
wanttotoget
g~into
intothe
thefact
factthat
thatthis
thiswas
was
16
removed and customers

customers complained
complained and
and itit was
was reincorporated,
reincorporated, then
then IIthink
.think[the
[thefact;that
fact thatthe
the
::;Iii
17
injunction was
...So
Sotake
takeyour
yourpick.
pick.
was issued
issued and
and itit was
was reversed
reversed by
bythe
thehigher
highercourt]
court]comes
comesinin....
18
Which one do you want?").

Apple'scounsel
counsel elected
elected to
to make
tmtke Apple's
Apple'sargument,
argument.which
whichopened
openedthe
the
want?''). Apple's
19
door to rebuttal. See ill.

COUNSEL: "The first.
first We're
We'regoing
goingtotoput
putititin.")..Thus,
in."). Thus,when
when
id (APPLE'S COUNSEL:
20
Apple subsequently told the jury

jury that
that Samsung
Samsung removed the
the Quick
QuickSearch
SearchBox
Boxand
andrestored
restoredititas
asaa
21
result of
996-98~ Samsung
at 322~23;
322-23; ECF No. 1624 at 996-98,
see ECF No. 1622 at
of customer complaints, ~'f!e
22
byreferring
referringto
tothe
theFederal
FederalCircuit's
Circuit'sdecision.
decision.ECF
ECFNo.
No.
permissibly rebutted Apple's
Apple'sallegation
allegationby
23
1622
Because Apple
Apple chose to argue
1622 at
at 402403;
402-403; ECF
EGF No.
No. 1714 at 1030-33 (cross of Dr. Snoeren). Because
24
that Samsung removed

removed the Quick
Quick Search
Search Box
Box feature
feature and
and reincorporated
reincorporatedititdue
duetotocustomer
customer
25
complaints, Apple knowingly opened

opened tare
the door
references to
to the
the Federal
Federal Circuit's
Circuit's
door to
to Samsung's
Samsung's references
26
to make the decision

decision relevant.
relevant. Accordingly,
Accordingly.the
theCourt
Court
preliminary injunction decision and
and chose
chose to
27
finds that a new trial is not warranted, and DENIES

DENIES Apple's motion.
at
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44
44
Case
lZ-CV-00630
CaseNo.;
No..12-CV-00630

FOR JUDGMENT
JUDGMENT AS
AS A
A MATTER
OF LAW
A135
Case: 15-1171
Document: 40
Page: 220
Filed: 03/06/2015
e5:12-cv-00630-LHK Documentl963
FiledO~/08/14 Page45
Page45ofof45
45
HI.
CON,CLUSION
III. CONCLUSION
For the reasons discussed

for
discussed above,
above.the
the Court:
Court:
2
0
3
(1) DENIES Apple's

motionfor
for judgment
judgmentas
asaamatter
matterof
oflaw
ofclaim 88 of
ofthe '721
'721
Apple's motion
law of infringement of
patent.
(2) DENIES Apples

Apple;~motion
motionfor
forjudgment
matterofoflaw
infringementofofclaim
claim20
20ofofthe.
the
law ofofinfringement
~'414
414 patent.
patent.
(3) DENtES
motionfor
for judgment
judgmentas
as aamatter
matterof
oflaw
ofclaim
claim 25
25 of
ofthe
the
of infringement of
DENIES Apple's
Apple's motion
law ofinfringement
'959
patent.
'9S9patent
Apple'smotion
motionfor
forjudgment
matterof
oflaw
lawthat
thatSamsung
$amsung willfully infringed
(4) DENIES Apple's
to
patent
claim 9 of
of the ~647
'647 patent.
It
(5) DENIES Apple's

Apple's motion
motion for
forjudgment
judgmentas
asaamatter
matterof
oflaw
lawthat
thatSamsung failed
failedtotoestablish
establishits
its
oU
d
12
affirmative defenses.
defenses.
.;:U0
tr
13
Apple'srequestfor
enhanced damages
damages for
for the '721
'721 patent
patentand
and the
the'647
'647patent.
patent.
(6) DENIES Apple's
request for enhanced
14
(7) GRANTS Apple's

Apple' srequest
requestfor
forsupplemental
supplementaldamages.
damages.
.5!
t!
=-
CJ<+-o
lfo
~Ung
....J:
.!l ....
~.~
~CI
"'S
.aJl;)U
oo,
"
'0
d~
!Z
15
(8) GRANTS Apple's

Apple'srequest
requestfor
forprejudgment
prejudgmentinterest.
interest.
16
(9) DENIES Apple's

Apple'srequest
requestfor
forjudgment
judgmentasasa
matterof
oflaw
ofnon-infringement
non-infringementofofclaim
claim27
27ofof
a matter
law of
::J.;:i
17
the'
449 and
and vacatur
vacatur of
ofthe
the damages
damages award.
award.
the '449
18
(10) GRANTS Apple's

of law of
(l0)
Apple'srequest
requestfor
forjudgn~tent
ofnon-infringement
non-infringementof
ofclaim
claim15
15of
of
19
the '239
patentwith
with respect
respect to
to Apple's
Apple'siPad
iPadproducts.
products.
'239 patent
20
(11) DENIES Apple's

request for
for aa new
new trial
trial on infringement for the
q.e '414
'414and
and '959,
'959,aanew
newtrial
trialon
on
Apple's request
21
and aa new
new trial on damages for all Apple's
willfulness foraH
for all Apple patents other than
than the'72!,
the'721, and
22
patents.
patents,
23
IT IS SO ORDERED.
24
Dated: September
September 8, 2014
=4)
,..
00
.
LUCY H. K
United States
25
Judge
26
27
28
45
i
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTIQN FOR JUDGMENT AS A
A MATTER
MA TIER
OPLAW
OF
LAW
Case No.: 12-CV-00630
12~CV-00630
A136
Case: 15-1171
Document: 40
Page: 221
ase5:l2-cv-00630-LHK Document1537 *SEALED*
'SEALED'
Filed: 03/06/2015
Filed03/28/14
Fi led03/28/l4 Pagel
Page l of 8
2
3
4
5
6
7
8
UNITED
UN
ITED STATES DISTRICT COURT
9

10
SAN JOSE DIVISION
ro
0
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11
II
===
o ro
12
tic0
13
13
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Plaintiff
and Counterdefendant,
PlaintilTand
)
)
ORDER DENYING SAMSUNG'S

STR IKE PORTlONS
PORTIONS OF
MOTION TO STRIKE
DR. VELLTURO'S SUPPLEMENTAL
EXPERT REPORT
v.
)
)
~
ro
c
,_
..... v
APPLE. INC., aa California corporation,

APPLE,
18
TO., a
)
SAMSUNG ELECTRONICS CO., L
LTD.,
SAM SUNG
)
ELECTRONICS AMERICA,
C., a New York)
AME RI CA, lINC.,
SA MSlJNG
)
TELECOMMUNICATIONS AMERICA,
AME RICA, LLC, )
aa Delaware limited liability company,
)
(SEALED
[SEALED VERSION]
VE RSION[
19
20
2211
Defendants and Counterclaimants.

Coumcrclaimants. )
_____________________________
)
---------------------)
Sarnsung
pmtions of Apple's February 17,
2014 Supplemental Expert
Samsung moves to strike portions
17,2014
22
Report of
ofChris\opher
Christopher A. Vellturo,
Velltura, Ph.D.
Ph. D . as untimely under Fed. R.
R. Civ. P. 26 and contrary to
to this
thi s
23
Court's prior rul

rulings
in gs regarding off-the-market lost profits. See ECF
EeF No. 1420-3 ("MOL").
("Mot"). Apple
24
fililed
led an Opposition, and Samsung filed
fi led a Reply. See ECF Nos. 1438-3
1438~3 (''Opp'n"),
("Opp 'n"), 1445. Having
25
cons
idered the brie
considered
briefing,
fing, relevant record, and applicable law, the Court DENIES
DEN IES the Motion
Mot ion for the
26
reasons stated below.
27
28
12-CY 00630LHK
ORDER DENYING SAMSUNG'S MOTION TO

TO STRIKE PORTIONS OF DR. VELLTURO'S SUPPLEMENTAL
EXPERT
EXPE!<T REPORT
A136.1
Case: 15-1171
Document: 40
Page: 222
I.
Filed: 03/06/2015
Filed03/28/14
Filed03J28114 Page2 of 8
BACKGROUND
On February 4, 2014, the parties stipulated to exchange updated sales information for
2
3
accused products, as well as "supplemental calculations of damages incorporating" that data. ECF
Nos. 1235, 1239. On February 17,2014, the agreed date for exchanging supplemental calculations,
App le served Dr. Vellturo's Supplemental Report addressing Apple's asserted damages. Samsung
seeks to strike two aspects of Dr. Ve

Vellturo's
llturo's Supplemental Report. First, Samsung argues that Dr.
Vellturo's new analysis of Apple's off-the-market lost profits for the '647 patent contradicts this
Court's ruling on damages in a prior case involving Apple and Samsung, No. 11-CV-1846-LHK.
I1-CV-1846-LHK .
See Mot. at 2-5; see also Joint Pretrial Statement at 13-14,22-23

13-14, 22-23 (ECF No. 1336) (noting dispute).
10
Second, Samsung attacks Dr.

Dr. Vellturo's attempts to rely on certain new deposition testimony and
11
sales information produced after his August 12, 2013

20 13 Opening Report. See Mot. at 2 n.l. Apple
12
opposes.
13
II.
('j
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LEGALSTANDARDS
LEGAL STANDARDS
Samsung moves to strike pursuant to Fed. R. Civ. P. 26, contending that Apple failed to
-~
oo..r::.
'T.:)t::
"'t::
Q,j 0
'-
15
timely disclose Dr. Vellturo's opinions under Rule 26(a)(2).

26(a)(2) . See Mot. at 3. As the moving party,
;;: z
16
Sam sung bears the burden of showing a discovery violation has occurred. See, e.g., Dong Ah Tire
;::l-5
::;:l-5
17
& Rubber Co.

Co. v. Gla.';jorms,
Gla,<;forms, Inc., No. 06-CV -33 59
59,, 2008 WL 4786671, at *2 (N.D . Cal. Oct. 29,
18
2008) . Once Samsung satisfies that burden, it becomes Apple's burden to show that Apple's
19
failure to comply with Rule 26 was either justified or harmless. See Yeti by Molly Ltd. v. Deckers
20
Outdoor Corp., 259 F.3d 1101, 1106-07 (9th Cir. 2001).
21
III.
~
~
;:: Z
c ~
,_'0
DISCUSSION
22
A.
Off-the-Market Lost Profits for the '647 Patent
23
On November 7, 2013, in a prior case involving Apple and Samsung,

Sam sung, Apple, Inc. v.
24
Samsung Electronics Co., Ltd., No. 5:l1-CV-1846-LHK

5:11-CV-1846-LHK (N.D. Cal.) ("Apple 1'),
F'), this Court
25
addressed the parties' arguments about the proper timing for analyzing Apple's asserted off-the-
26
market (or "blackout") lost profits--damages

profits--ciamages corresponding to times when Samsung was allegedly
27
infringing but should have been unable to sell the accused products until Samsung had built non-
28
2
ORDER DENYING SAMSUNG'S MOTION TO STRIKE PORTIONS OF DR. VELLTURO'S SUPPLEMENTAL
EXPERT REPORT
A136.2
Confidential Information Redacted
Case: 15-1171
Document: 40
Page: 223
Documen1l537 'SEALED'
*SEALED*
Filed: 03/06/2015
Filed03/28/14
Filed03/2B/14 Page3 of 8
infringing alternatives. The issue presented was whether potential

potentia! design-arounds must be
considered beginning on the date of first infringement, or on the

thc date
dale when Samsung first received
ofinfringemcnt.
infringement. See Order Re: Design
lJesign Around Start Dates at l-2,
1-2, Apple !(N.D.
I(N.D. Cal. Nov.
notice of
13) ("Apple I Order"). Under the

7, 20
2013)
thc circumstances that the parties presented in Apple I, the
Court
Courl accepted Samsung's
Sumsung's position and ruled that "one would need to
La begin the analysis at the date
66
of first infringement
infringemen t to avoid arbitrari
arbitrarily
ly ignoring actions the infringer could have taken in lieu of
77
infringing."
infringing." Id
Id. at 5. That ruling reduced Apple's damages demand in Apple I by $305 million.
Opp ' n at 4.
See Opp'n
Turning to the present case, Samsung

Sam sung used the same arguments about design-around dates
10
10,2013,
2013, Samsung filed
to restrict Apple's damages theories in this second litigation. On October 10,
1II1
a Daubert motion to exclude Dr. Vellturo's

VeUturo's opinions on off-the-market lost profits. See Sam
Samsung
sung
0"
uu
UU
or;!
12
8023). In his Opening Report on Apple's damages theories

Mol. to Exc lude Ops. at 13 (ECF No. 802-3).
Mot.
.....
'u'o
u 0
c1-.- +-'Ul )
--"~"-
13
in this case, Dr. Vellturo analyzed off-the-market lost profits based on notice dates, not first
Q
Q .;!2
.~
cnCi
14
infringement dates. See Opening Expert

Expen Rpt.
Rpl. of Christopher A. Vellturo,
Vcllturo, Ph.D. ("Vellturo Opening
infhngement
f!:
II)
to)
15
Rpt.'')
ur of Apple's five asserted patents, the date of first infringement
fOUT
Rpt.") ~ 306, Tbl. 4. For (o
.,, "
16
alternatives
preceded the notice date. See id. By
Uy requiring Dr. Vellturo to analyze non-infringing alternat
ives
17
first infringement instead of the later notice dates, Apple's lost profits
at the earlier dates of fIrst
18
recovery wou
would
ld drop by as much as -_
19
802-3). In its Daubert

Dauber' motion to exclude Dr. Vellturo's
Vell turo's initial
initial opinions about blackout damages,
20
Sam sung wielded the same arguments about design-around dates that it asserted in Apple 1:
I: ""Dr.
Dr.
21
Vellturo's
Vellturo' s failure to use
lise the date of first infringement for his lost profits calculations is improper."
22
!d.
Id. On February 25, 2014,
20 I4, the Court
Caliri granted Sam
Samsung's
sung's Daubert
Dauben motion to preclude Dr. Vellturo
Vel/turo
23
from using ""notice

notice dates rather than first-infringement dates in his lost profits analysis" because
24
"this Court ruled in favor ofSamsung

;'this
of Sam sung on that issue" in Apple 1.
I. Feb. 25, 2014
20 14 Order at 2-3
2-3 (ECF
25
No. 1326).
.~
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=
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;:J-;5
....
~
(.L.
"-
26
27
28
. Samsung Mot. to Exclude Ops. at 13 (ECF No.
On February
Ft::bruary 17, 20
2014
14 (after the Apple I1Order, and while
wh ile Samsung's Daubert
Dauben motion in the
instant case was pending), Apple served Dr. Vellturo's
Vellturo 's Supplemental
Supplememal Report,
Repo rt, which now includes
3J
Of DR. YELLTURO'S
VELLTURO'S SUPPLEMENTAL
SAMSUNCi'S MOT ION TO STRIKE PORTIONS OF
EXPERT
l!XI'ERT REPORT
REPOrrr
A136.3
Confidential
Information
Redacted
Case: 15-1171
Document: 40
Page: 224 Filed:
03/06/2015
'SEALED'
Filed03/28114
off-the-market
orrlhc-market lost profits calculations
cnlculati ons for the '64
' 6477 patent using the date of first infringement.
in fringement. For
2
the '647 patent,

patenl, the current
cu rrent alleged date of first infringement
3J
notice date
("Vel
ltu ro Supp. Rpt.") ,]5;
306, Tbl.
("Vcllturo
'15; Vellturo
Vetlturo Opening Rpt. ,!
' 1306,
TbL 4.
4 . Previously, Dr.
Dr. Vellturo
Vcllturo did not
calcu late such damages for the '647

' 647 patent
palent because the notice date
dale preceded infringement. See
Vellturo Opening Rpt.

Rpl.
infringement instead o[
of the earlier notice date, Dr.
Dr. Vellturo
Ve llturo opines that Apple is entitled to an
addi tional
additional
~,
10
.:S
-~
c
fal Is after the

falls
See Supplemental Expert Rpt. of Christopher A. Vellturo,

Vcllturo. Ph.D.
Ph .D.
309. Now, by analyzing non-infringing alternatives on the first date of
in off-the-market
o ff-the-market lost profits for the '647 patent. See Vellturo Supp. Rpt.
4-6; Mot. at l.
I Order and in its Daubert
Dauberl motion in the instant case,
Despite prevailing in the Apple IOrder
II
Sam sung
lost profits calculations for the '64
7
su ng now argues that Dr.
Dr. Vellturo's ne}v off-the-market
off-the-marketlost
'647
c~
uu
UU
12
patent should be stricken-even though they arc based on design-around periods heginning
beginn ing on the
;:: u
.Q"t:Q-"'~. .~.-.~......."
13
IJ
first infringement date.

requ ire that designdate . According to Samsung,
Samsung. the Apple II Order does not require
14
arounds be analy-zed
analyzed at the date of first infringement if the notice date is earlier.
earlier. Mot. at 4-5.
4-5 .
....
15
Sam sung maintains that the date

However, Samsung
in fringement is still the appropriate date for
d:ne of first infringement
16
Apple's filur
four other patents for which
which the date of first infringement precedes the notice date. On the
17
Court has already held that design-arounds

other hand, Apple contends that this CoUtt
dcsign-arollnds should
s hould be analyzed
I188
as of the first infringement date, and points out

Olll that Sam sung advocated such
sueh a rule but now
19
contradicts
contradi cts itself to reduce its potential damages exposure for the '647 patent. Opp'n at 2-4.
E
t:":=:.:
c"
,
::;~ :.:
~
...... ~
,,
tJ 00
--
.,o
~O
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-llC'l c....E
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""g t:
o
" 0
.~
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=>-5
~
'00
""'-
20
Sam sung'!' arguments are unpersuasive.

unpersliasive. The Court
Samsung's
COllrt concludes
conclunes that Dr. Vellturo's
Velltllro's
21
s upplemental opinions on blackout damages for the '647

' 647 patent are
Brc not inconsistent
inconsis tent with the Apple
supplemental
22
1J Order. In Apple I, this Court held that "potential

"potent ial design arounds ought to be considered as of the
23
2J
date of
offirst
fi rst infringement,"
in frin gement," based on the relevant dates and issues presented in that dispute.
di spute. Apple 1
J
24
Order at 10. The Court applied the underlying reason

ing of Federal Circu
it precedent in
reasoning
Circuit
25
concluding that 'reconstructing

"reconstructing the hypothetical market requires
requ ires one to factor out infringement
26
entirely, " and that it is legally improper

entirely,"
im proper to "arbitrarily
"arbitrari ly ignor[e]
igl1or[e] actions the infringer could have
27
infringing."
fri nging." !d.
ld. at 5. Specifically, in Grain Processing Co1p.
COIp. v. American Maize
Maiu-taken in lieu of in
28
4
Case
CilscNo.:
No.: 12-CV
t2-cv-{)0630-LlIK
-00630-LII K
ORDER DENYING SAMSUNG'S MOTION TO STRIKE
STRlKE PORTIONS OF DR. VELLTURO'S
VELtTURO'S SUPI'LEMENTAL
SUPPLEMENTAL
EXPERT REPORT
A136.4
Confidential
Case: 15-1171
aseS:12-cv-00630-L
HK Document1537 *SEALED*
"SEALED"
Products,
PmdUCIS, the Federal Circuit addressed lost profits and stated that "a fair and accurate
2
reconstruction of the 'but for' market also must take

rake into account, where relevant, alternative
Ihe infringer foreseeably would have undertaken

underta ken had he not infringed
infri nged ."
." 185 F.3d 1341,
actions the
CiT. 1999).
135051 (Fed.
(Fed . Cir.
1350-51
''It]h e critical time period for determining

detennining
However, Grain Processing also confirmed that "[t)he
ngement for which the

availability of an alternative is the period of
of infri
infringement
Ihe patent owner claims
damages, i.e., the 'accounting

'account ing period."'
period.'" !d.
Jd. at 1353 (citation
(c itation omitted). This is because tthe
he lost
infringed. "
profits inquiry is based on what the patentee would have earned "had the Infringer not infringed."
Aro 1\{fg.
MIg. Co.
CO. v. Convertible Top Replacement Co.,
Co. , 377 U.S. 476,507
476, 507 (1964) (citation omitted);
om itted); see
10
also Grain Processing,

Proces.~ing, 185 F.3d at 1349 (''To
("'To recover lost profits, the patent owner must show
'-
11
that 'but
causation
'blll for' the
Ihe infringement,
infri ngemem, he would have made additional
add itional
' causation in fact,' establishing thai
uu
UU
==-=
12
profits."
/nstrumenrs Corp.
C01p. v. Perego, 65F.3d
65 F.3d 941,952
941, 952 (Fed. Cir. 1995)).
profits. " (citing King Instruments
.i:
'i: t)
'0
13
Accordingly,
ti me frame for assessing lost profits
According ly, the Federal Circuit has held that the relevant time
-Q,.,a:2?
~
Q .~
~ O
14
non -infringing alternatives)

alternati ves) is during the period of
o f infringement, when
(including the absence of non-infringing
"
-<Ll
15
palentce .
the infringer made sales that would have otherwise gone to the patentee.
.~
cc:
t::<2
t: 2"
:;:I :"::::
0
Q~
.
<I-
tjo
't o
....~ -"
~ .(J')
.....
--." --"
~c:
<:<! .....
(/).J::
cn~
~
"Ct::
"' 00
Q,l
,~ z
;Z
.-:::
c
<I)
c "
=>oS
~-5
....
05
~
"-
16
wou ld require analysis of

Contrary to these principles, Samsung
Sam sung now proposes a rule that would
17
potential design-arounds
design-arounds before the infringement period- in this case, on
on the notice date ofoC _
18
IIIII
~ which precedes the first infringement date
19
Yellturo
Vellturo Supp. Rpt.
20
becn available. Indeed,

Indeed, Grain
before infringement even
cven began, when no lost profits could have been
2
211
Processing counsels that "[w]hen

"IwJhen an alleged
alJeged alternative is not on
on the market during the
'he accounting
22
period, a ttrial
rial court may reasonably infer that it was not available
ava ilable as a noninfring
noninfringing
ing substitute at
23
that time," and the infringer "then has the burden to overcome this inference by showing that the
24
available during the accollnling

accounting period." 185 F.3d at 1353 (emphases
(em phases added).
subst itute was avaihible
substitute
25
According to Apple's
Apple 's allegations, Sam sung decided
decid ed to infringe instead of designing around the
26
not ice more than a year earlier.

earlier. See Opp'n at 4. As a factual matter,
'647 patent, despite receiving notice
27
Samsung
SamsLlng may show that various non-infringing
non -infrin ging alternatives were developed before Samsung's first
28
by over
o ver one year. See
55.. Samsung
Sam sung provides no authority
aUlhori ty that requires
requ ires assessing
assessi ng design-arounds
5l
Case No.:
No. : 12-CV-00630-LHK
t 2-CV-00630-U IK
ORDER DEN
DENYJNG
YING SAMSUNG'S
SAM SUNG' S MOTION TO STRIKE PORTIONS OF DR. VELLTURO'S
VELLT URO'S SUPPLEMENTAL
EX
PERT REPOR
REPORT
T
EXPERT
A136.5
Case: 15-1171
Document: 40
Page: 226

'SEALED'
Filed: 03/06/2015
Filed03/28/14
Filed03128114 Page6 of 8
infringement date and were available during the relevant accounting

accounti ng period. See Apple JI Order at
5. However, Sam
Samsung
sung provides insufficient justification for holding, as a matter of
orIaw,
law, that a
patentee's damages expert must consider non-infringing

non -i nfringing alternatives at a notice date that precedes
the infringement accounting period.
FUJthermore,
Furthermore, under Samsung's current view, early notice of
o f infringement would make it
easier for an infringer to avoid liability for lost profits because the in
infringer
fringer could
cou ld choose to
\0
infringe and later assert the availability of design-arounds

design-a rounds at the earlier notice date,
date. instead of the
A lso. an infringer could be subject

su~ject to
10 potentially
potentia lly greater
gre(l/(!r lost profits damages
date it first infringed. Also,
if
it received notice after infringing, instead of before.
ifll
before . Such a rule could create a disincentive for a
10
patentee to provide early notice

nolice or for an accused infringer to pursue early non-infringing
noninfringing
cj::;
....
t: ~
.!2"
II
Samsu ng previously argued that early notice should be encouraged: "If

alternatives. Indeed, Sarnsung
" If Apple
uu
UU
_ to-
12
were right about the

Ihe law, the statute intended to encourage early notice would reward nol
not giving
-Q"'.~-...."
--
13
notice ." Samsung's

Samsung ' s Resp. to Apple's Statement Regarding Design Around Dates at 5, Apple
early notice."
~ .~
14
I (ECF
(EC r No. 2598). Samsung'
Samsung 'ss current position regarding the '647
' 647 patent runs contrary to this
....
j::;
'"","
15
15
principle.
oo..r::.
~
"
't
0 0
z
.t::
.<::
Z0
cc:: 0u
16
::>-5
0-:S
17
must begin with the date of first infringement as a matter of law, but now retreats from that
0
1.1...
"-
18
24. In Apple!,
Apple I, Samsung
position to avoid lost profits liability
liabil ity for the '647 patent. See Opp'n at 2-4.
19
designaround date is the first

fi rst infringement
infr ingement date, not the notice date. See
insisted that the proper design-around
20
Mol. to Strike at 3-4,

34, Apple I (ECF 1No.
Samsung's Mot.
o. 2386) ("When calculating lost profits, courts
21
starting on Ithe
he dale
date of
first
look to whether noninfringing design arounds
around s are available slarring
o/firsl
22
infringement-even
at
in/ringemem--even if it is earlier than the notice
not ice date.");
date.") ; Oct.
OCI. 10,
la, 2013
20 J3 Tr. of Proceedings al
23
127:3~8, Apple I (ECF No. 2535) ("(F)or

("[F]or lost profits design around starts at the date of first
fir st
127:3-8,
24
Samsu ng's
infringement. It does not happen at the notice date."); Samsung
's Resp. to Apple's Statement
25
259&) (''Apple's
("App le's improper
Improper Methodology ls
Is
Regarding Design Around Dates at 2, Apple 1I (ECF No. 2598)
26
Contrary to Law'');
Law"); Samsung's
Sam sung's Statement Regarding the Court's
Courl 's Order, Apple I (EeF
(ECF No.
No. 2530).
.~
=:.::
:::1 ==
-.--r; .-'o.....(.,) 0
~
" ()
u
~0
_~Cl
c
-~
....
;: b
o
....
"
SamslIng vigorously argued that design-around

designaround periods
Moreover, as Apple points out, Samsung
27
28
6
Case No.: 12-CV-00630-l.IIK
IZ.cV-00630-U1K
ORDER DENYING
STRI KE PORTIONS
POI{TIONS OF DR.
OR. VELLTURO'S
VELL TURO' S SUPPLEMENTAL
DENY ING SAMSUNG'S MOTION TO STRIKE
EXPERT REPORT
A136.6
Case: 15-1171
Document: 40
Page: 227
Documentl537 'SEALED'
*SEALED*
Filed: 03/06/2015
Then, after obtaining a favorable

I, Samsung successfully
favo rable ruling on this issue in Apple 1,
success full y
moved in this case to exclude Dr. Vellturo's

Vellturo' s opinions in his Opening Report regarding off-the-
market lost profits based on the notice dates for Apple's

App le's patents, without ever addressing a possible
poss ib le
44
exception for the '647

' 647 patent. See Samsung's
Sam sung 's Mot. to Exclude Ops. at 13 (ECF No. 802-4) ("This
is contrary to the law:

law: when calcu
ca lculating
lating lost profits, courts
cou rts look to whether non-infringing design
Slarting on the dale

date of
ojfirJt
first ill!rillgemenl
infringement - even if it is earlier than the notice
arounds are available slarting
date."); Samsung's Reply in Supp.

Supp . of Mot.
MOL to Exclude Ops. at 9 (ECF No. 948A)
948-4) ("Apple's efforts
.... to justify Dr. Vellturo's design-around period for his lost

losl profits calculation are contrary to the
Court's recent ruli

ng in NDCA I that, as a matter of
oflaw,
law, the design-around
design-a round period must commence
ruling
LO
10
oflhe
the first
first infringement,
infr in gement, not on the notice
noti ce date.").
on the date of
ro
cc
,_
11
II
Neither party has timely raised this issue to the Court, for
fo r Apple did not supplement Dr.
Or.
o
ro
o
uu
UU
12
12
Vcl1turo'ss opinions for the '647 patent until February 17,2014,

Vellturo'
17, 2014, more than three months after the
--.-....U
---.-.....
13
Apple IIOrder.
Order. However, it is far too late for Samsung
Salllsung to reverse positions
pOSitions regarding design-around
14
I3ccause Samsung has failed to provide a sufficient legal basis for excluding Dr.
dates. Because
Dr. Vellturo's
Vellturo 's
...,C!)
.;.: eJ
c:: ....
15
Supplemental Report in light of the Apple I Order, Samsung's

Samsun g' s motion
mot ion to strike is DENIED
DEN IED with
....
"'-5
.,,"
"0""
C!)
0
16
respect to opinions on off-the-market

patenlo
oIT-the-market lost profits for the '647 patent.
t:i:::s:..=
<E
.
:: :..=
<.,.....
-~
~
" 00
. 1-o
~ (.)
Vl
~
....
c
Q ~
Q.~
V
~Cl
lo
_ c
c
~
.'!
(f)..C
:-.:::Z
:-.: ;Z
cC C!)
"
~-5
::J-5
...."
0
u...
"-
17
B. Reliance on Other Discovery
18
In a footnote, Samsung also seeks to preclude

precl ude Dr. Vellturo from relying
re lyin g on (1)
(I) new
19
of Go ogle employees, (2) new data about certain accused

acclised Apple
App le products, and (3)
depositions ofGoogle
20
adjustments to reasonable royalty calculations

calcu lations for time periods based on new Samsung
Samsu ng product
21
21
n. l . Samsung fails to demonstrate

data. See Mot. at 2 n.l.
demonstrat e that any of these updates are impermissible.
22
dam ages calculations

ca lculations based on
The parties plainly agreed to supplement their experts' damages
23
updated sales in
information.
formation. See ECrECF No.
No . 1235 at2
at 2 (''The
("The parties agree to exchange supplemental
24
calculations of damages incorporating Updated Financial Data .... ").

"). Each of Dr.
Dr. Vellturo's
Vellturo'$
25
supplementations to
10 wh
which
ich Samsung
Sam sung objects appears
appea rs to fall within the scope of the pa1ties'
parties'
26
llturo identifies two Google depositions that took place

stipu
lation. Regarding
stipulation.
Regardin g depositions, Dr. Ve
Vcllturo
27
on August 16,20
16, 2013,
13, shortly
shortl y after his Opening Report, and reserves the ability
abil ity to cite those
28
7
12CV -00630-LHK
SAMSVNG'S MOTION TO STRIKE PORTIONS Of
or DR. VELL
VELLTURO'S
TURO'S SUPPLEMENTAL
REPORT
EXPERT REPORT
A136.7
Case: 15-1171
Document: 40
Page: 228
ase5:12cv00630LHK Document1537 'SEALED'
*SEALED*
Filed: 03/06/2015
Filed03/28/14 PageS
Page8 of 8
materials to "reinforce" his original opinions. See Vellturo Supp. Rpt. ~ 28 &
& nn. 22, 23. Thus,
2
op inions based on these materials, and the

Dr. Vellturo does not appear to introduce new opinions
lhe
depositions that took place seven months ago cannot be a surprise to Samsung. As to new data
about Apple products, Dr. Vellturo claims to update market share calculations
calcul ations "using methods
"cxclud[ing] products for which I[

previously disclosed"
disclosed" to account
accoulll for new numbers, such as "exclud[ing]
observe no unit sales by the end of20

of2013."
13." Id.
Id ~~,221-25.
1-25. Dr. Vellturo also updates his reasonable
royalty conclusions about customers

clIstomers repurchasing smartphones based on Samsung's newly
produced data. See id.

it!.
impermissible uses of new data, particularly given Apple's representation that

lhat these changes
~~
14-15. Samsung offers

explanation
otTers no exp
lanat ion for why these updates would be
[0
10
asser1ed damages. See Opp'n at

aI411.3.
4 n.3. Accordingly, Samsung's
Salllsung's motion to
actually reduce Apple's asserted
II
strike these modifications to Dr. Vellturo's

Vellturo' s Opening Report is DENIED.
uu
.... <+-<
ctl
12
IV.
c u
....
A .~
13
IJ
"'
L..
14
Supplemental Report is DENIED.
-E
Z:a;
15
IT IS SO ORDERED.
O RIJ ER ED.
"O t::
16
.~
t<S
:::: :.=
--~0
CONCLUSION
For the foregoing reasons, Samsung's

SalllSung's motion to strike portions of Dr. Vellturo's
Ve lltu ro's
rf.l ..S::
Q.l
.<::: Z
c a)
:::>;5
17
L..
4..
18
19
20
21
22
23
24
25
26
27
28
8
12-CV-00630-LHK
Case No.: 12-CV-0063G-LHK
STRI KE PORTIONS OF
or DR. VELL TURO'S SUPPLEMENTAL
ORDER DENYING SAMSUNG'S MOTION TO STRIKE
EXPERT REPORT
A136.8
Case: 15-1171
Document:
229 Filed: 03/06/2015
Document1532
Page1 of 14
1
2
3
4
5
6
7
8
9

10

SAN JOSE DIVISION
11
12
13
14
15
16
17
18
19
20
21
)
)
)
)
v.
)
)
)
)
)
)
)
)

ORDER CONSTRUING 239 PATENT
CLAIM 15
Samsung has requested that the Court construe an additional limitation in claim 15 of the
22
239 patent: means for transmission of said captured video over a cellular frequency. Samsung
23
also requests permission to amend its infringement contentions to include theories for means-plus-
24
function equivalents and the doctrine of equivalents for claim 15. The parties have submitted
25
briefs and expert declarations in support of their respective positions. The Court has reviewed the
26
parties submissions and, in the interest of resolving any potential dispute prior to trial (cf. O2
27
Micro Intl Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008)), now
28
construes the limitation at issue.

1
ORDER CONSTRUING 239 PATENT CLAIM 15
A137
Document1532
Page2 of 14
Case: 15-1171
Document:
230 Filed: 03/06/2015
1
2
BACKGROUND
On April 10, 2013, the Court issued its Order Construing Disputed Claim Terms, following
a claim construction hearing and full briefing from the parties. ECF No. 447 (Order). At the
time, Samsung asserted claims 1 and 15 of the 239 patent. Among the disputed terms, the Court
construed certain means-plus-function limitations in claim 1 of the 239 patent, but the parties did
not request construction of any terms in claim 15 of the 239 patent. See Order at 64; Joint Claim
Construction Statement at 9-40 (ECF No. 300-1). Since the Court issued its Order, the parties have
filed multiple rounds of motions seeking to exclude opposing expert opinions based on the Courts
existing claim construction rulings. See ECF Nos. 878-4, 877-4, 1202-3. Those disputes were
10
I.
resolved well before the March 5, 2014 pretrial conference. See ECF Nos. 1127, 1301.
11
On February 4, 2014, the parties filed case-narrowing statements pursuant to the Courts
12
case management orders, limiting their asserted patent claims to five claims per side. Samsung
13
elected claims 1 and 15 of the 239 patent among its five claims. See Samsungs Feb. 4, 2014 Case
14
Narrowing Statement at 2 (ECF No. 1236). However, at the March 5, 2014 pretrial conference,
15
Samsung sua sponte indicated that it might voluntarily withdraw some asserted claims for trial and
16
would do so by March 7. See ECF No. 1411 at 6:14-24.
17
On March 7, 2014, the parties sua sponte filed a stipulation in which Samsung agreed to
18
withdraw several asserted patent claims, including claim 1 of the 239 patent, leaving claim 15 as
19
the only asserted claim of the 239 patent. See ECF No. 1419. On March 13, 2014, Samsung filed
20
an administrative motion for additional claim construction of means for transmission of said
21
captured video over a cellular frequency as recited in claim 15, requesting briefing and a hearing
22
prior to trial, which will begin on March 31, 2014. See ECF No. 1461. Apple responded by
23
contending that additional claim construction was not necessary in light of the Courts construction
24
of claim 1, but requesting permission for a summary judgment motion and hearing regarding
25
noninfringement of claim 15 should the Court construe the terms at issue. See ECF No. 1465. The
26
parties agree that claim 15 presents a means-plus-function limitation and concur on the claimed
27
function, but disagree about the scope of the corresponding structure. The parties also disagree
28
2
A138
Document1532
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Case: 15-1171
Document:
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about whether Samsung previously waived its ability to assert equivalents (either means-plus-
function or under the doctrine of equivalents) for claim 15.

The Court allowed the parties to submit short briefs regarding claim construction and
Samsungs ability to amend its infringement contentions, but denied Apples request for another
round of summary judgment briefing on the eve of trial. See ECF No. 1470. Samsung filed its
brief on March 19, 2014. See ECF No. 1484 (Samsung Br.). Apple filed a response on March
21, 2014. See ECF No. 1491 (Apple Br.).
II.
LEGAL STANDARDS
As before, the Court construes patent claims as a matter of law based on the relevant
10
intrinsic and extrinsic evidence. See Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.,
11
No. 2012-1014 (Fed. Cir. Feb. 21, 2014) (en banc); Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
12
Cir. 2005) (en banc); see also Order at 2. Claim construction of means-plus-function limitations
13
pursuant to 35 U.S.C. 112(f) requires identifying the claimed function and the corresponding
14
structure for performing that function in the patents disclosure. See Noah Sys., Inc. v. Intuit Inc.,
15
675 F.3d 1302, 1311 (Fed. Cir. 2012); see also Order at 47.
16
Amendment of the Infringement Contentions or the Invalidity Contentions may be made
17
only by order of the Court upon a timely showing of good cause. Patent L.R. 3-6. This Courts
18
rules have required the parties to give early notice of their infringement and invalidity
19
contentions, and to proceed with diligence in amending those contentions when new information
20
comes to light in the course of discovery. O2 Micro Intl Ltd. v. Monolithic Power Sys., Inc., 467
21
F.3d 1355, 1365-66 (Fed. Cir. 2006). Accordingly, determining whether good cause justifies
22
amendment of contentions in a particular situation depends on the amending partys diligence and
23
the degree of prejudice to other parties. See Order Re: Samsungs and Apples Mots. for Leave at
24
2-4 (ECF No. 636) (collecting cases). Only if the moving party is able to show diligence may the
25
court consider the prejudice to the non-moving party. Genentech, Inc. v. Trs. of the Univ. of Pa.,
26
No. 10-CV-02037, 2011 U.S. Dist. LEXIS 108127, at *4 (N.D. Cal. Sept. 16, 2011).
27
28
3
A139
Case: 15-1171
Document:
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Page4 of 14
DISCUSSION
A.
The only limitation at issue is means for transmission of said captured video over a
Claim Construction
cellular frequency, recited in 239 patent claim 15. Both claim 1, which the Court previously
construed, and claim 15 are reproduced below for reference.
Claim 1
1. An apparatus for transmission of data,
comprising:
Claim 15
comprising:
a mobile remote unit including:

a.) means for capturing, digitizing, and
compressing at least one composite signal;
b.) means for storing said composite signal;
c.) means for transmitting said composite
signal;
a computer including a video capture module to

capture and compress video in real time;
7
8
9
10
III.
11
12
13
14
means for transmission of said captured

video over a cellular frequency.
a host unit including:

a.) means for receiving at least one
composite signal transmitted by the remote
unit;
17
a playback unit including:

a.) means for exchanging data with said host
unit;
b.) means for storing the composite signal
received by the host unit;
c.) means for decompressing said composite
signal.
18
Samsung and Apple agree that the contested phrase (bolded above) is a means-plus-function
19
limitation under 112(f), and that the claimed function is transmission of said captured video over
20
a cellular frequency. See Samsung Br. at 1; Apple Br. at 1. However, the parties identify
21
different sets of corresponding structure:
22
Claim Language
23
means for transmission

of said captured video
over a cellular
frequency
15
16
24
25
Samsungs Proposed
Construction
structure: one or more modems
connected to one or more cellular
telephones or cellular radio
transmitters
26
27
28
4
A140
Apples Proposed Construction

structure: one or more modems
connected to one or more cellular
telephones, and software
performing a software sequence of
initializing one or more
communications ports on the
remote unit, obtaining the stored
data file, and transmitting the
stored data file
Case: 15-1171
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Samsung Br. at 1. Both constructions include the structure of one or more modems connected to
one or more cellular telephones, but otherwise diverge. There are two primary points of
disagreement: (1) whether the claimed structure also includes cellular radio transmitters
(Samsungs proposal), and (2) whether software of any kind is claimed (Apples proposal).

The parties prior dispute regarding claim 1 of the 239 patent provides some context for
this claim construction. Previously, the Court construed the similar limitation in claim 1 of means
for transmitting said composite signal to mean one or more modems connected to one or more
cellular telephones, telephone lines, and/or radio transmitters, and software performing a software
sequence of initializing one or more communications ports on the remote unit, obtaining the stored
10
data file, and transmitting the stored data file. Order at 55-64. Thus, the Court has already
11
determined that certain types of hardware and software from the specification correspond to
12
means for transmitting a signal. Id.
13
14
1.
Cellular Radio Transmitters
Samsung, citing expert opinion, argues that the claimed structure must include cellular
15
telephones or cellular radio transmitters because a person of ordinary skill would have understood
16
that a cellular radio transmitter performs the transmission in a cellular telephone. Samsung Br. at
17
1; Decl. of Prof. Dan Schonfeld (ECF No. 1484-1, Schonfeld Decl.) 3. Samsung also argues
18
that the doctrine of claim differentiation favors its definition. Claim 16 depends from claim 15 and
19
recites a cellular telephone.
20
Claim 15
comprising:
21
22
23
24
Claim 16
16. The apparatus of claim 15 wherein the
means for transmission of said captured video
over a cellular frequency includes;

at least two interfaces operating in conjunction

with said computer;
means for transmission of said captured

video over a cellular frequency.
a cellular telephone connected to each said

interface.
25
26
27
28
Generally, a dependent claim is construed to be narrower and distinct from its corresponding
independent claim. See InterDigital Commcns, LLC v. Intl Trade Commn, 690 F.3d 1318, 132425 (Fed. Cir. 2012). According to Samsung, claim 15s structure cannot be limited to cellular
5
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telephones because claim 16 also recites a cellular telephone, and claim differentiation requires
that the two claims be distinguishable. See Samsung Br. at 2.
Samsungs positions are unpersuasive. First, the intrinsic evidence does not support
Samsungs proposal. As Apple points out, the phrase cellular radio transmitter appears nowhere
in the entire patent. Also, if Samsung is correct that a cellular telephone necessarily comprises a
cellular radio transmitter, then Samsungs proposed language of cellular telephones or cellular
radio transmitters is superfluous. Therefore, it would be incorrect to read the structure of cellular
radio transmitters into claim 15, for 112(f) does not permit incorporation of structure from the
written description beyond that necessary to perform the claimed function. Micro Chem., Inc. v.

10
11
Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
Nor do principles of claim differentiation require Samsungs construction. Claim 16
12
specifies additional limitations not found in claim 15: at least two interfaces and a cellular
13
telephone connected to each interface (emphasis added). These extra limitations differentiate
14
claim 16 from claim 15, and also require that a cellular telephone be connected to each interface,
15
which adds an additional restriction on cellular telephones that does not exist in claim 15.
16
Furthermore, this Court previously observed that the presence of a dependent claim reciting a
17
structure does not override the requirements of 112, 6. Order at 48 (citing Laitram Corp. v.
18
Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)). Here, as explained above, the specification
19
provides no basis for reading cellular radio transmitters into the claimed structure.
20
Samsungs unexplained delay also undermines its arguments
Samsung waited until less
21
than three weeks before trial and more than a year after claim construction briefing and the hearing
22
to take this new position. Indeed, Samsung did not propose cellular radio transmitters in its
23
construction of the similar means for transmitting limitation in claim 1. See Samsungs Opening
24
Claim Construction Br. at 22 (ECF No. 335); see generally Feb. 21, 2013 Tr. of Proceedings (ECF
25
No. 429). Samsungs late efforts to construe claim 15 appear to be a last-ditch attempt to seek
26
reconsideration of the Courts construction of claim 1, which Samsung no longer asserts.
27
As to extrinsic evidence, the parties provide only brief expert declarations. These opinions
28
are conclusory and provide little guidance. Samsungs expert opines that a person of ordinary skill
6
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would know that a cellular radio transmitter is the actual hardware enabling transmission of
information in a cellular telephone, but provides little support for this position. Schonfeld Decl.
3. As explained above, even if all cellular telephones have cellular radio transmitters, then
Samsungs proposed construction is superfluous. Apples expert repeats portions of the
specification, noting for example the absence of cellular radio transmitter in the specification.
See Decl. of James Storer, Ph.D. (ECF No. 1491-2, Storer Decl.) 10-11. In short, neither
sides expert provides a dispositive opinion that alters the conclusion supported by the
specification that cellular radio transmitters is not part of the required structure for transmission
of signals.
10
The parties appear to agree that claim 15s structure also excludes conventional telephone
11
lines and radio transmitters, which are structures that the Court included in its construction of the
12
similar limitation of means for transmitting said composite signal in claim 1. The Court
13
construed that limitation in claim 1 to encompass one or more modems connected to one or more
14
cellular telephones, telephone lines, and/or radio transmitters. In doing so, the Court observed
15
that claim 1 does not restrict the type of frequency used for transmitting a signal, and the 239
16
patents specification also discloses the use of land lines and radio transmissions, in addition to
17
cellular telephones. Order at 57-59; see also 239 Patent col.2 ll.29-31 (A further object is to
18
provide an apparatus that will transmit audio/video files for immediate broadcast over radio
19
frequencies, cellular telephone frequencies, or land telephone lines.). By contrast, claim 15 limits
20
means for transmission to over a cellular frequency. Accordingly, neither party contends that
21
claim 15s structure comprises conventional telephone lines and radio transmitters.
22
In light of the foregoing, the hardware structure corresponding to means for transmission
23
of said captured video over a cellular frequency is properly construed as one or more modems
24
connected to one or more cellular telephones.
25
2.
Software as Part of the Corresponding Structure
26
Samsung argues that claim 15s structure should not be restricted to software of any kind
27
because software is not necessary for transmission of captured video. Samsung Br. 3. Although
28
the Court construed claim 1s means for transmitting to require software (Order at 64), Samsung
7
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points out that claim 1 includes the terms remote unit and host unit, and the specification
discusses transmission software only in the context of communication between a remote unit and
host unit. E.g., 239 Patent col.8 ll.23-25 (Transfer software sequence B enables the remote
unit to communicate with the host unit to transmit a stored data file using the system hardware.).
Samsung contends that claim 15 is different because it does not require transmitting from a
remote unit to a host unit, and therefore does not require software. Samsung Br. 3.

Apple proposes that claim 15 be construed to require software performing a software
data file, and transmitting the stored data file. Apple asserts that the 239 patent states that
10
software is necessary for any transmission, and that the computer of claim 15 corresponds to the
11
remote unit in the specification, such that the specifications discussion of transmission software
12
applies equally to claim 15. See Apple Br. at 2.
13
The Court agrees that claim 15s means-plus-function structure requires software for the
14
same reasons that applied to claim 1. As explained above, the Court previously determined that
15
claim 1s means for transmitting must include software because the specification teaches that a
16
software sequence is necessary for transmitting a signal in the context of the invention. See Order
17
at 61-63. Under the preferred embodiment, the 239 patent discloses that software is required for
18
transmission: Transfer software sequence B enables the remote unit to communicate and
19
contains all of the instructions necessary for communication. 239 Patent col.8 ll.23-30
20
(emphases added); see also id. col.8 l.45
21
col.2 l.24 col.3 l.14 (Summary of the Invention; a computer program sequence . . . sends
22
[data] to one or more computer interfaces which transmit the data file). Samsung is correct that
23
claim 15 does not recite a remote unit or host unit, which appear in both claim 1 and the
24
specification. However, Samsung fails to demonstrate that this difference shows that software is
25
unnecessary for transmission as recited in claim 15, or that the specification supplies any other
26
structure for performing an alternate type of transmission that does not involve a remote unit and
27
host unit. Indeed, the term transmission implies communication from one unit to another, and
28
the specification explains that software is necessary to enable such communication. E.g., id. col.8
col.10 l.2 (discussing Transfer Software Sequence B),
8
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ll.25-30. Samsung also suggests that transmitting (claim 1) and transmission (claim 15)
require different constructions (ECF No. 1461 at 3), but fails to explain why transmitting
involves software while transmission does not. See, e.g., AIA Engg Ltd. v. Magotteaux Intl S/A,
657 F.3d 1264, 1275 (Fed. Cir. 2011) (construing homogeneous solid solution and
homogeneous ceramic composite as synonymous).

Samsung next argues in the alternative that, if claim 15s structure is construed to include
software, the software should be restricted solely to software to perform the claimed function,
which does not include initializing a communications port or obtaining the stored data file.
Samsung Br. at 4. Accordingly, Samsung proposes the alternative construction of software that
10
transmits the file. Id. Apple counters that the same software sequence for initializing and
11
obtaining in claim 1 is also necessary for transmission in claim 15. See Apple Br. at 1. Apple
12
also argues that claim 15s software requires a sequence for obtaining the stored data file because
13
the captured video recited in claim 15 must be a stored data file. Id. at 1-3. Apple points out that
14
the 239 patent applicants relied on creation of a data file to distinguish prior art. Id.
15
The Court agrees in part with Apple. Samsung provides no persuasive reasons why the
16
software sequence that the Court identified for claim 1 is not also required for claim 15. The Court
17
previously explained in detail why the software sequence in claim 1 is necessary, not optional, for
18
transmitting a signal. See Order at 61-62 ([T]he other steps performed by software sequence B
19
initializing communication ports, obtaining the stored data file, and transmitting the stored data
20
file all appear to be necessary for any transmission . . . .). Specifically, the written description
21
lists five software algorithms in transfer software sequence B: [1] initialize the communications
22
ports on the remote, [2] obtain a cellular connection with each cellular telephone to the host unit,
23
[3] obtain the stored data file, [4] initiate file splitting sequence C, and [5] transmit the split data
24
file. 239 Patent col.8 ll.25-30. However, not all five algorithms are necessary for transmission
25
the step of file splitting need not occur, or may occur prior to transmission. E.g., id. col.3 ll.22-
26
23 (In an alternate embodiment, a basic one, the signal is not divided before it is transmitted.);
27
see Order at 62. Moreover, claim 17 depends from claim 15 and includes means for splitting the
28
captured video into pieces for transmission, which further confirms that claim 15 does not require
9
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software for initiating file splitting. By contrast, the steps of initializing the communications ports
and obtaining the data for transmission are required for the transmission process. See id. at 62-63.
3
4
frequency, while claim 1 is not. For claim 1, the Court previously concluded that the
specifications algorithm to obtain a cellular connection with each cellular telephone to the host
unit (239 Patent col.8 ll.27-28) was not necessary structure because claim 1 encompasses
transmitting over telephone lines and radio transmitters, not just cellular telephones:
10
[T]he transmission may take place using a radio transmitter instead of a traditional
phone or cell phone. Thus, the software algorithm of obtain[ing] a cellular
connection with each cellular telephone relates only to a particular embodiment of
the invention using cell phones, and is not necessary for the embodiments using a
radio transmitter.
11
Order at 63. Here, because claim 15 is limited to cellular frequencies, this software algorithm for
12
obtaining a cellular connection would be necessary for transmission over a cellular frequency.
13
Therefore, the Court construes claim 15 to include this software algorithm.

However, as explained above, claim 15 is limited to transmission over a cellular
14
The Court further disagrees with Apples proposed construction because it includes terms
15
from claim 1 that do not appear in claim 15. Apple proposes software performing a software
16
17
data file, and transmitting the stored data file (emphases added). However, neither remote unit
18
nor stored data file (or storing) appears in claim 15:
19
Claim 1
comprising:
Claim 15
comprising:

a.) means for capturing, digitizing, and
compressing at least one composite signal;
c.) means for transmitting said composite
signal;

20
21
22
23
24
25
26
27
means for transmission of said captured video

over a cellular frequency.
Therefore, claim 15 provides no antecedent basis for either the remote unit or the stored data
file. See Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 782 (Fed. Cir. 2010)
(rejecting claim construction that ignored antecedent basis).
28
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1
2
unit, claim 15 recites that the means for transmission are included in [a]n apparatus for
transmission of data. Therefore, the one or more communications ports in Apples proposed
construction must refer to ports in the claimed apparatus for transmission.
Claim 1 also includes means for storing said composite signal, which does not appear in
claim 15. Instead, claim 15 recites a computer with a video capture module to capture and
compress video, with means for transmission of said captured video. Accordingly, the
information that is obtained and transmitted in claim 15 must be said captured video.

Where claim 1 states that the means for transmitting is included in a mobile remote
Apple posits that [t]he disclosed structure for captured video is a stored data file. Apple
10
Br. at 2. Apples argument is that the 239 patent applicants stated during prosecution that their
11
invention requires a stored data file because they distinguished a prior art reference on that basis:
12
Thus, Gattis does not disclose the creation of a data file as required by Applicants claims. ECF
13
No. 1491-3 (Feb. 2, 1996 amendment, SAMNDCA630-00832606). However, the excerpted
14
prosecution history also shows that the applicants were discussing then-pending claims 1 and 12,
15
and claim 12 specifically recited a data file. Id. (SAMNDCA630-00832605). There is no
16
indication that the applicants were addressing claim 15 as issued or the term said captured video.
17
Accordingly, the Court rejects Apples prosecution history argument.
18
For the reasons above, the Court provides the following construction of the software
19
structure: software performing a software sequence of initializing one or more
20
communications ports on said apparatus, obtaining a cellular connection, obtaining said
21
captured video, and transmitting said captured video.
22
B.
23
In its motion requesting construction of claim 15, Samsung sought permission to argue
24
infringement under the doctrine of equivalents, if the Court did not adopt Samsungs proposed
25
construction. See Samsungs Admin. Mot. for Limited Additional Claim Construction at 4 n.1
26
(ECF No. 1461). In its claim construction brief, Samsung further clarifies that it wants to amend
27
its infringement contentions to assert equivalents under 112(f) in addition to the doctrine of
28
equivalents. See Samsung Br. at 5. Apple responds that Samsung waived its right to amend when
Amendment of Samsungs Infringement Contentions for Claim 15
11
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Samsung previously withdrew equivalents contentions for claim 15 and failed to seek additional
claim construction until the eve of trial. See Apple Br. at 4-5.
3
4
below), the Court concludes that Samsung had not preserved the right to assert equivalents (for
means-plus-function structure or the doctrine of equivalents) prior to its present request for
additional claim construction. The parties have repeatedly litigated the proper scope of Samsungs
infringement contentions, and Samsung failed to assert its equivalents theories for claim 15 until
now, after sua sponte dropping claim 1 voluntarily from the case.

Based on the parties litigation conduct regarding infringement contentions (discussed
After the Court issued its claim construction Order, the parties moved for leave to amend
10
their respective infringement contentions. On June 26, 2013, Judge Grewal granted and denied in
11
part Samsungs request to assert equivalents for the 239 patent. See ECF No. 636. Judge Grewal
12
rejected Samsungs general attempt to include the doctrine of equivalents for all asserted patents
13
and 112(f) equivalents for all means-plus-function limitations not yet construed, finding that
14
Samsung did not have good cause to add DOE and Section 112(f) equivalents theories at that
15
time. Id. at 5, 8. Samsung concedes that it lost its attempt to assert equivalents for claim 15:
16
Judge Grewal denied Samsungs amendments for claim 15 because Samsungs request was
17
premature. Samsung Br. at 5 & n.3. However, Judge Grewal advised: If and when Samsung
18
faces an adverse construction, it may seek leave to amend in light of that adverse construction.
19
ECF No. 636 at 8.
20
Meanwhile, Judge Grewal partially granted Samsungs specific request to assert both
21
112(f) equivalents and the doctrine of equivalents for the means for transmitting limitation in
22
claim 1 of the 239 patent because the claim construction order provides good cause for the
23
proposed amendments, but did not permit Samsung to include the vague phrase and/or other
24
processes. Id. at 17-18. Samsung specifically identified this limitation and presented arguments
25
as to why it should be allowed to adjust its contentions in response to the Courts claim
26
construction. Id.
27
28
On November 5, 2013, both parties filed motions to strike certain infringement contentions.
ECF Nos. 877-4, 878-4. On December 13, 2013, the parties submitted a joint chart of issues
12
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disputed in their motions to strike, noting that Apples motion targeted Samsungs equivalents
arguments for claim 15. ECF No. 1056 at 3, 4. The chart also included the following agreement
on equivalents theories in light of Judge Grewals June 26, 2013 Order:
Both Apple and Samsung agree to withdraw all doctrine of equivalents and
structural equivalents arguments under Section 112(f) in their respective expert
reports that are subject of the parties pending motions to strike. For clarity, Apples
motion to strike did not include and this agreement does not extend to the means
for capturing and means for transmitting limitations that were subject to Judge
Grewals June 26, 2013 order. (Dkt. No. 636.) Subject to the resolution of Apples
pending Daubert motion, Samsung can argue both doctrine of equivalents and
structural equivalents under Section 112(f) for these terms. This agreement does not
preclude the parties from seeking leave to amend their infringement contentions to
include doctrine of equivalents or structural equivalents arguments under Section
112(f) if the Court construes terms adverse to a party in the future.
10
Id. at 3 n.4. Therefore, Samsung expressly withdrew all equivalents contentions including those
11
for claim 15 other than the same two specific limitations in claim 1 of the 239 patent permitted
12
by Judge Grewals June 26, 2013 Order.
5
6
7

13
While the June 26, 2013 Order and the parties agreement allowed the parties to seek leave
14
to amend contentions in response to later claim constructions, Samsung has failed to demonstrate
15
that it exercised the necessary diligence to do so. To obtain leave to amend, the moving party must
16
proceed with diligence in amending those contentions. O2 Micro, 467 F.3d at 1365-66; Patent
17
L.R. 3-6. Here, Samsung has asserted claim 15 since before claim construction (see ECF No. 383
18
at 2-3 (Feb. 18, 2013)), but never requested construction of any terms until March 13, 2014 after
19
rulings on summary judgment, Daubert, and in limine motions; almost a year after the claim
20
construction Order; and less than three weeks before trial. Between Judge Grewals June 26, 2013
21
Order and Samsungs March 13, 2014 motion for additional claim construction, Samsung did not
22
seek claim construction for claim 15 or leave to assert equivalents theories. See, e.g., Acer, Inc. v.
23
Tech. Props. Ltd., No. 5:08-CV-877, 2010 U.S. Dist. LEXIS 142472, at *17 (N.D. Cal. Sept. 10,
24
2010) (denying leave to amend infringement contentions; Because TPL has not demonstrated
25
diligence, the inquiry should end. (citation omitted)). Nor does Samsung identify any new
26
evidence that would justify this late request. The fact that Samsung sua sponte voluntarily
27
withdrew claim 1 of the 239 patent does not permit Samsung to wholly revisit claim construction
28
and pose new infringement theories.

13
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Furthermore, Samsungs belated tactics would now unfairly prejudice Apple and tax the
resources of the Court. Jury selection will begin on Monday, March 31, 2014. Instead of
narrowing the issues for trial, Samsung now seeks to expand them by introducing new
infringement theories. Samsung contends that Apple faces no prejudice because both parties
experts already opined on equivalents for claim 15. See Samsung Br. at 5 n.3. However, Apple
responds that it would need to re-consider its exhibit list, and submit new jury instructions, and
that it relied on Samsungs withdrawal of its equivalents contentions for claim 15. Apple Br. at 5
& n.7. Samsung would almost certainly seek to revise its own proposed exhibits and jury
instructions in response to any changes that Apple makes. Moreover, the Court has already ruled
10
on summary judgment, Daubert motions, and motions in limine. With opening statements only
11
days away, the Court will not entertain new rounds of motions for leave to amend infringement
12
contentions, witness and exhibit lists, and jury instructions based on theories that Samsung could
13
have raised long ago.
14
For the foregoing reasons, Samsungs request for leave to amend its infringement
15
contentions to include equivalents theories for claim 15 is DENIED.
16
IV.
17
CONCLUSION
In summary, and for the reasons stated herein, the Court construes the relevant limitation of
18
239 patent claim 15 as follows:
19
Patent
5,579,239
20
Disputed Term
means for transmission of said capture
video over a cellular frequency
21
22
23
24
25
26
Courts Construction
one or more modems connected to one
or more cellular telephones, and
software performing a software
sequence of initializing one or more
communications ports on said
apparatus, obtaining a cellular
connection, obtaining said captured
video, and transmitting said captured
video.
IT IS SO ORDERED.
________ ________________________
LUCY H. KOH
27
28
14
A150
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Page: 243
ase5:l2-cv-00630-LHK Document1151
Document1l5l'SEALED'
*SEALED*
Filed: 03/06/2015
FiledOl/21/14
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TELECOMMUNICATIONS
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-00630-LHK
Case No.:
No.: 12-CV
12-CV-00630-LHK
ORDER
ORD ER GRANTING-IN-PART
G RANTING- IN-PART AND
DENYING-IN-PART
DENYIN G-IN-PART APPLE'S MOTION
FO R PART
IAL SUMMARY
FOR
PARTIAL
JJUDGMENT
UDGMENT AND DENYING
DENY ING
SAMSUNG
SAMSUNG'S
' S MOTION FOR PARTIAL
PA RTIAL
SUMMARY JJUDGMENT
UDGMENT
[UNDER SEAL]
SEAL)
_____________________________
The parties in th
this
is patent suit have cross moved for part
partial
ial summary
su mmal), judgment on various
22
PlaintilTand
pm1ia ] summary
issues. Plaintiff
and Counterdefcndant
Counterdefendant Apple, Inc. ("Apple") filed a motion for pattial
23
judgment against Defendants and Countcrclaimants

Counterclaimants Samsung E
Electron
lectronics
ics Co., Ltd.; Samsung
24
Inc.; and Samsung Telecommuni

Electronics America, fnc.;
Telecommunications
cations America, LLC (collective
(collectively
ly
25
"Samsung")
"Sa msung") oonn October 10,2013. See ECFNo.
ECF No. 803-4 ("Apple MSJ").
MSJ "). Samsung filed a motion
mo tion for
26
partial sum
mary judgment on the same date. See ECF
summary
Ecr No. 805-3 ("Samsung MSJ"). The parties
patiies
27
filed corresponding oppositions

oppo:;ilions on November 1,
1,2013,
2013, see ECF
Ec r Nos.
No:;. 854-3 ("Samsung
(" Samsung Opp'n"),
28
853-3 ("Apple
("App le Opp' n"), and replies on November 14,2013, see ECFNos.
ECr Nos. 944
944-4
-4 ("Apple Reply"),
I
12-CY-00630-LHK
DENYING-IN-PART APPLE'S MSJ
MSl AND DENYING SAMSUNG'S
SAM SUNG'S MSJ
MSl
ORDER GRANTING-IN-PART AND DENYlNG-IN-PART
A151
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Filed01/21/14
946-3 ("Samsung Reply"). The Court heard oral

ora l arguments on these motions on December 12,
[2,
2
2013
2013.. After hearing oral argument on the matter, and reviewing the briefing by the parties, the
evidence offered in support of

or lhe
the briefing, and the relevant case law, the Court GRANTS
G RAN TS in part
pa!t
and DENIES in pa1

partt Apple's motion for
fo r summary judgment and DENIES Samsung's motion for
summary judgment.
I.
1.
BACKGROUND
BACKGROUND
At the center afthe

of the parties' dispute in this lawsuit are some of Apple and Samsung's
Samsullg's latest
7
8
smartphones, media players, tablets, and computers. The Court is also presiding over an earliersmattphones,
filed case between the same parties that involves older devices.
devices. See, e.g., Apple, Inc. v. Samsung
10
10
II-CV -01846,20
[3 WL 6225202 (Nov. 25, 2013).ln
2013). I n the present case, each
Electronics Co., No. 11-CV-01846,
2013
11
side's claims include allegations that the other has infringed its utility patents by using, selling,
12
offering to sell, and importing the accused devices in violation of35 U.S.c.
U.S. C. 271. Apple moved to
13
13
preliminarily
prelim inarily enjoin Samsung's allegedly infringing sales of one of the accused products, the
14
Coutt granted Apple's preliminary injunction motion as to one of Apple's

Galaxy Nexus. T his Court
~s::
I:
E
~ ....
!!.
15
15
No . 8,086,604 (the "'604 Patent"), see Apple, Inc.

Inc. v.
v. Samsung
Sa/nsung
patents-in-suit, U.S. Patent No.
"0"
:::Z
c "
=
i:J-5
0-5
16
Electronics Co., Ltd., 877 F. Supp. 2d 838 (N.D. Cal. 2012), but the Federal Circuit reversed, in
17
part because this Court erroneously construed a claim term from the ''604
Inc. v.
604 patent, see Apple inc.
18
Samsung Electronics Co., 695 F.3d 1370,

13 70, 1378 (Fed.
(Fed . Ci
Cir.r. 20
2012).
12).
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In order to stream
streamline
line the case for trial, the Court has required the parties to limit their
19
20
infringement contentions to 5 patents, 10 asserted claims, and 15 accused products per side. See
21
21
ECF No. 471 at 2.

2.\1 The parties have accordingly limited th
their
eir infringement
infri ngement contentions as follows.
22
U.S. Patent No.

No . 8,074,172 (the'" 172 Patent"); claims 1,
1,4,6,8,
4, 6, 8,
Apple currently asserts claim 18 of U.S.
23
and 9 of U.S. Patent No. 5,946,647 (the "'647 Patent");

Patent") ; claim 20 of U.S. Patent No. 7,761,414 (the
24
"'414 Patent"); claims

cla ims 24 and 25 of U.S.
U .S. Patent No. 6,847,959 (the '"959
"'959 Patent'');
Patent"); and claim 8 of
25
U.S.
U.s. Patent No. 8,046,
8,046,721
721 (the "'721
'"721 Patent") against the following Samsung products: Admire,
26
II 4G, Galaxy Nexus, Galaxy Note, Galaxy Note II , Galaxy SH,

SII , Galaxy
Conquer 4G, Dart, Exhibit fJ
27
28
I By February 6, 2014, the parties will be required to limit their asserted claims to 5 per side and
limit their accused products to 10 per side. See ECF No. 471 at
a12.
2.
2

ORDER GRANTING-IN-PART AND DENYING-IN-PART
DENYtNG-IN-PART APPLE'S MSJ AND DENYING SAiV1.SUNG'S
SAMSUNG'S MSJ
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SU
SII Epic 4G
40 Touch, Galaxy SII Skyrocket, Galaxy S HI,
[II , Galaxy Tab 2 110.1,
0.1, Illusion, Stratosphere,
22
and Transform Ultra.

No . 786. 2 Samsung currently asserts cla
claims
ims 10 and 35 ofU.S.
o f U.S. Patent
Ultra. See ECF No.
No. 7,756,087 (the '"087

'''087 Patent");
Patent"); cla
claim
im I133 of U.S. Patent No.
No . 7,551,596 (the'"
(the '''596
596 Patent");
44
claims I, 14, and 15 of U.S. Patent No. 7,577,757 (the "'757

'''757 Patent"); claims 25 and 27 of U.S.
U.S .
55
''' 449 Patent"); and clai

claims
ms 1I and 15 of
o f U.S. Patent No.
No . 5,579,239 (the
Patent No. 6,226,449 (the "'449
Patent
'"239
'''239 Patent") against the following
following Apple
App le prod
products:
ucts: iPhone 4, iPhone 4S, iPhone 5, iPad 2, iPad 3,
77
iPad 4, iPad Mini, iPod Touch (5th Generation), iPod Touch (4th Generation), MacBook
Macl3 00k A ir,
ir,
88
Mini , iTunes (including

(i ncluding iTunes Match), and iCioud.
iCloud. See ECF No.
No. 787.
787 .
MacBook Pro, iMac, Mac Mini,
99
In a prior
pr ior order, the Cotnt
Court construed
constru ed various terms in these claims. See ECF No.
No. 447 ("Cla
("Claim
im
10
.~t::
.....
t:. <2
="
_
Construction Order") .
lIIl
In its summary judgment motion, Apple asks this

th is Court to rule
ru le that various accused
12
the''172
172 Patent, clai
claim
m 1I of the '647 Patent, and cla
claim
im 20 of
orthe
the'' 414
products infringe claim 18 of the
13
obvio us claims 24 and

Patent; that two purported prior art systems fail to anticipate or render obvious
a nd 25 of
14
the '959 Patent;

Patent; and that U.S. Patent No. 7,587,446 (the "'446
'''446 Patent") antic
anticipates
ipates claims 1,
I, 14,
14 ,
15
and IISS of
ofthe
the '757 Patent.
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Samsung's summary judgment motion seeks an order from

from this Court that certain
certa in accused
16
4,)
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17
I, 4,
6, 8, and 9 of the '647 Patent; that Microsoft's Windows
products do not infi'inge
infringe claims 1,
4,6,
18
c laims 11
II and 20 of the '414 Patent; that claims 24 and 25 of the
Mobile 5.0 platform anticipates claims
19
'959 Patent are invalid as indefinite; and that claim 13 of the '596 Patent
Patent enjoys a priority date that
20
is one year earlier

earlierthan
than the date the claim was first
fi rst presented to the USPTO.
USPTO . Additional
Additional facts are
a re
2211
discussed below, as necessary, in the Court's ana

analysis.
lysis.
22
II.
II .
LEGAL STANDARD
The standard for evaluating motions for
fo r summary
su mmary judgment
j udgment is well settled and set forth
23
24
mot ion for summary

summa ry judgment, the jjudge
udge must
mu st view the
below. In addition, because, "in ruling on a motion
25
evidentiary
burden,"
evidence presented through the prism of
rden," Anderson v. Liberty
o f the substantive
substant ive evident
iary bu
26
27
28
2
2
Apple maintains that at least some

so me of these products are representative of other accused products
for purposes of Apple's infringement claims.
claims . The patties
parties are sti
stillll seek ing to reach an agreement on
Apple's representative-products contentions.
content ions.
3

12CY-00630-LHK
ORDER GRANTINGGRANTING-IN-PART
IN-PART AND DENYING-IN-PART
DENYING-[N-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
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Lobby,
Lobby, Inc.,
inc., 477 U.S. 242, 254 (1986), the Court sets for.th
for.th the substantive evidentiary burdens for
22
literal infringement and anticipation-issues

anticipation- issues common to both parties' motions.
A.
Summary Judgment
Under
Under Federal Rule of
ofeivi!
Civil Procedure
Procedu re 56(a), "[t]he court
COU I1 shall grant summary judgment if
the movant shows that there is no genuine dispute as to any material fact and the movant is entitled
66
to judgment as a matter
martel' of law."
law ." Material
Materi al facts are those that might affect the outcome orthe
of the case.
77
See Liberty
Uberty Lobby,
Lobby, 477 U.S. at 248. A dispute as to a material fact is "genuine"
"genuine" if
If the evidence is
such that "a reasonable jury could return a verdict for the nonmovitlg
nonmovit1g party." !d.
ld. The question is
ju ry could
cou ld reasonably find either that the [moving partyj
partyJ proved his case by the quality
""whether
whether a jury
10
fd. at 254 (emphasis

and quantity of evidence required by the governing law or that he did not." !d.
11
II
omitted). '''[A
'"[A]ll
JII justifiable inferences
in fe rences are to be drawn in [the nonmovant's]
nomnovant's] favor.'"
favor. '" United
12
ofAm. v.
v. Phelps Dodge
Dodge Corp.,
Corp. , 865 F.2d 1539, 1542 (9th Cir.
Cil". 1989) (en bane)
banc)
Steelworkers 0/
0
........
" ti
a
'C
.-.....'"' -"
13
at 255).
(quoting Liberty Lobby, 477 U.S. at255).
.~
14
.Q
"->0
~ E
15
for
fo r its motion and identifying those portions of the pleadings, depositions, interrogatory answers,
<Zl~
16
admissions, and affidavits,

affidav its, if any, that it contends demonstrate the absence of a genuine issue of
17
material fact. See Celotex Corp. v. Catrett,

Calrell, 477 U.S
U.S.. 317,323
317 , 323 (1986). A party opposing a properly
18
al legations or denials of that

supported motion for summary judgment may not rest upon the mere allegations
19
party's
particularr patts
ofmatcrials
materials in the record" showing that there is
party ' s pleading, but must "cit[e] to particula
parts of
20
tr ial. Fed. R
R.. Civ
Civ.. P. 56(c)(1)(A);
56(c)(I)(A); see also Liberty
Uberty Lobby, 477 U.S. at 250. The
a genuine issue for trial.
21
opposing party need not show the issue will be resolved conclusively in its favor.
favo r. See Liberty
22
U.S.
.S. at 248-49.
248-49 . All that is nccessary
necessary is submission of sufficient evidence to create a
Lobby, 477 U
23
material factual dispute, thereby requiring a jury or judge to resolve the parties' differing versions
24
at trial. See id.
ro
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The moving party bears the initial responsibility for informing the district court of the basis
25
H.
B.
26
A party must prove patent infringement by a preponderance of the evidence. See Siemens
Literallnfringement
Literallnfringcmcnl
27
fnc. v. Saint-Gobain
Sainl-Gobain Ceramics & Plastics. Inc.,
fnc. , 637 F.3d 1269, 1279 (Fed.
Medical Solutions USA, Inc.
28
Cir. 2011). At this stage, the parties' infringement disputes center on whether certain Samsung
4
Case No.:
No.: 12-CV-00630-LHK
DENYING-iN-PART APPLE'S MSJ AND
AND DENYING SAMSUNG'S
SAMS UNG'S MSJ
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products literally infringe certain patents. "Literal

" Literal infringement requires the patentee to prove that
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ofthe
the accused device contains each limitation of
the asserted claim(s)." Bayer AG v. Elan Pharm.
r.3d
3d 1241,
\241, 1247
\247 (Fed. Cir.
C if. 2000). ""If
If any claim
cla im limitation
limitat ion is absent 1l-om
from the
Research Corp., 212 F.
110 literal infringement as a matter of law." !d.

Id.
accused device, there is no
C.
e.
Patents are presumed valid. See 35 U.S.C. 282(a). A party challenging

cha llenging the validity of
oraa
Anticipation
Antici
llat ion
palent
ofpraving
proving invillidity
invalidity by clear and convincing evidence.
ev idence . See
patent claim bears Ihe
the burden of
P 'ship, 131
13 1 S. Ct.
Cl. 2238, 2242 (20 II).
I I). An accused infringer may show
s how
Microsoft Corp. v.v. i4i Ltd. P'ship,
U.S.c. 102 and to do so "must show by clear

that a patent claim is invalid as anticipated under 35 U.S.C.
10
and convincing evidence that a single prior art reference

rererence discloses each and every element of
oraa
lIII
invention. " Krippelz

Krippe/z v.
\I. Ford MOlol'
Motor Co., 667 F.3d 1261
1261,, 1265 (Fed. Cir. 20 12).
claimed invention."
12
III.
Ill.
DISCUSSION
DI SCUSSION
<.J
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Before
Berore addressing the merits orthe
of' the parties' su mmary judgment arguments, the Court
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Preliminary
Prcliminary Matters
Mattcrs
15
(1) whether
addresses two threshold issues that arise at various points in the parties' briefs: (I)
16
additional claim construction is necessary and (2) the

th e weight the Court should give to its
17
conclusions at the preliminary injunction stage.
18
19
l.
1.
Clai
m Construction
C laim
C Ollstt'uctioll
Many of
or the present issues rest on
On claim construction
construct ion positions
posit io ns that the parties never raised
rai sed
20
during the claim construction phase of

or this case. For example, Samsung seeks
seek s to construe "DDT
"001
21
field" in the '596 Patent to mean a "logical identifier representing the first PDU."
PO U." Samsung MSJ at
al
22
linds these arguments untimely.

unti mely. lI f'the
rthe parties
part ies wanted to tee up summary
su mmary judgment
23. The Court finds
23
positions based on particular

pa1ticular constructions, they "could
"cou ld (and should) have sought ...
24
construction[s]
construction[sl to [those]
[Ihosel effect[s]."
errect[s]." ePlus.
ePius, Inc. v. Lawson
Lawson Software, Inc., 700 F.3d 509, 520 (Fed.
25
Cir.
2012).
Cir.2012).
26
reso lve funda

rundamental
The Court recognizes its duty to resolve
mental disputes regarding claim scope. See
27
02 Micro Int
Inl 'l'f v.
v. Beyond Innovation Te ch. Co.,
Co" 521 F.3d
FJd 1351 ,> 1360 (Fed. Cir. 2008) (citing
28
Markman v.v. Westview Instruments, Inc., 52 F.3d

F.3d 967,979
967, 979 (Fed. Cir. 1995) (en bane)).
banc)). The Court
5
12-CV-00630-LHK
ORDER GRANTING-IN-PART AND DENYING-IN-PART APPLE'S MSJ AND DENY

DENYING
ING SAMSUNG'S MSJ
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fulfilled that duty when it provided a thorough claim construction opinion earlier in these
<1$
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uu
proceedings. Yet
Y ct "district courts are not
nOI (and should not be) required to construe every limitation
present in a patent's
patent 's asserted claims."
claims,"'d
ld at 1362 (emphasis in original). Nor are they obligated to
rule
ru le on claim construction
constructio n arguments
argu ments presented
presen ted for the first
fi rst time
ti me in summary judgment briefs. See
Function
Functioll Media,
Media, L.L.C.
L. Le. v. Googie
Google Inc.,
IIIC., 708 F.3d 1310, 1325 (Fed. Cir. 2013)
20 13) ("We hold that the
of a pre-trial motion for summary judgment ofnoninfi'ingement

ofl1oninfringcmcnt docs
does not,
nOl, by itself, show
denial ofa
77
that the district court delegated claim construction to the jury."). This is not a case like 02 Micro ,
where the district colllt

court erred when it declined to resolve a dispute over claim scope raised during
claim construction. Indeed,

Indeed , Function Media distinguished
distingui shed 02 Micro in part because "the
" the parties [in
lin
10
02 Micro1
Micro] disagreed [about the term in dispute] during claim cOllslruction."
constntclion." Jd.
Ie/. (emphasis added).
11
II
Here, the Cowt

constructionn stage.
Court resolved the parties
parties'' disputes over claim scope at the claim constructio
The Federal Ci
Circuit
rcuit has held that it can be error to engage in hypertechnical refinements
refinemen ts of
12
- ~
J3
13
the meaning of claims followi

ng claim construction to support a grant of
summary judgment. In
following
ofsUlnmary
"
14
AFG
A FG Industries,
Induslries, Inc. v. Cardinal JG
IG Co., 375 F.
F.3d
3d 1367 (Fed.
(Fed . Cir.
C ir. 2004
2004),
), the court, after previously
prev iously
15
15
construing the term "layer," held that a district court erred in granting summary judgment of
16
noninfhngement
noninfringemcnt under a supplemental
supplementa l definition
defini tion of the term that excluded a certain
certa in class of
17
accused devices. "Thi

"Thiss court'
court'ss remand did not invite further refinements in the meaning of the term
18
' layer.' .... Rather, this court requested the trial

tr ial cowt
court to apply the established claim
cla im construction
19
to the accused products." Jd.

Id. at 1372. Simi
Similarly,
larly, the Cou.rt
Court here, based on the patties'
parties' prior selection
20
ofterms
of terms in need of construction, has left many of the terms at issue to their plain and ordinary
21
21
meaning. for
For the majority
maj ority ofterms
of terms the parties now address
addrcss in their summary judgment briefs, the
22
Court
does not sec
COUIt docs
see the need for further re'fi
refinement
nement at the risk
fisk of taki
taking
ng factual
fact ual issues away from the
thc
23
jury.
Jury,
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Sound practical reasons counsel against construing additional terms based on claim
25
construction argtrments
District
arguments raised for the fiJst
first time in summary judgment briefs. The Northern Dis
trict
26
of California's
Ca lifornia's local rules require the parties to narrow the number
nu m ber of disputed terms
tcrms to l10
0 as parI
part
27
of their joint claim construction statement. See Patent L.R. 4-3(

oflheir
4-3(c).
c). ln
In accordance with those rules,
28
the parties made their selections

se lections at claim construction
co nstruction as to "the
" the terms whose construction will be
6
Case No.: 12-CV
12-CV-00630-LIIK
-00630-LI!K
ORDER GRANTING
GRANTJNG-IN-PART
IN-PART AND D.NYING1~~f.i'~RT
DENYINGU.,PART APJ>{,.E'S
APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
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Case: 15-1171
Document: 40
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most significant
significanllo
to the resolution of the case." !d.
Id. This requirement forces
force s parties to identify
2
potential case-dispositive terms at an early stage and also forces parties to help manage the
lhe scope
of patent
paten! cases. The Court painstakingly adjudged the parties' claim construction disputes during
the
Ihe claim construction phase based on their in-depth technology tutorials and voluminous
submissions of intrinsic and extrinsic evidence. The local rules

rutes and this Court did not set
sel out a
particular process for resolving claim construction disputes only to let the parties make additional
arguments at the summary judgment phase untethered to those carefully structured rules.
8
9
Practical considerations
considerat ions specific to this case also counsel against engagi
engaging
ng in additiona
additionall
claim construction now. The Cowt

Court warned the parties at their July
Jul y 31,
3 1, 2013 case management
10
conference thai,
Cou rt would not treat the
that, given the fast-approaching Spring 2014 trial date, the Court
II
c hance for the parties to make additional

addit ional claim
summary judgment phase of this case as a chance
:::~:.::
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12
construction arguments. See Hr'g Tr. at 22:13-16,

22: 13-16, 24:22-25:7. The Court has learned through two
-'i:.c----~....U
13
prior trials
tr ials with these parties, both in Case No. 11-CV-1846,
II-CV-1846, that, given the chance, each side will
.~ !::l
...
~ .!!!
14
continue to generate creative linguistic arguments about nearly every term in a claim in order to
.,, "
c~
I155
accuse the other side of"

of " ignoring the Court's claim construction rulings" or ""addi
adding
ng limitations to
oo..c:
"'~
-ot::
16
the plain language

langua ge of the claim."
cla im." Resolving those disputes has taken on a "whack-a-mole"
"w hack-a-mole"
17
diminished .
character, one for which the returns have quickly diminished.
-~
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COLIrt ref1.rses
refuses to consider the parties' summary judgment
All thi s is not to say that the Court
19
arguments merely because an apparent dispute

d ispute has arisen
ar isen about the scope of a term's plain and
20
ordinary or construed meaning. The Court does carefully consider these disputes, but does so as
21
"part of
ofthe
the infringement analysis, not part of the claim construction."
construction," Thorn
ThorneI'
er v.
v, Sony Computer
22
Am.. ILLC,
__ LC, 669 F.3d
F.3d 1362, 1369 (Fed. C
Cir.
ir. 20
2012).
12). The Federal Circuit's decision in
Entertainment Am.,
23
Thorner is instructive. There, the district court had construed the term
lerm "flexible"
"flex ible" to mean "capable
"capab le
24
of being noticeably flexed

nexed with ease."
ease," !d.
[d. On appeal,
uppeal, the Federal Circuit
Circu it concluded
conc luded that the
(he district
25
court's construction was too rigid.

rigid . The
T he court highlighted, however, that even though the plain and
26
ordinary meaning of" flexible"

preclude
nexible" controlled, that ruling
rul ing did not prec
lude summary
su mmary judgment of
27
noninfringement on
011 remand.
remand, "The district court is of course
Cou rse free
free on summary judgment to decide
28
7
Case No.: 12-CV-00630-LIIK
12-CV-00630-L1iK
ORDER GRANTING-IN-PART AND DENYING-IN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A157
Case: 15-1171
Document: 40
Page: 250

'SEALED'
Filed: 03/06/2015
Filed01/21/14
Filed01l21114 PageS of 49
that there
th ere is no genuine issue of material fact that the accused
accu sed products in Ihi
thiss case do not meet the
2
3
-~
E
E
t:tS
t:tE
=:.=
0=:..::
<13
o
UU
uu
plain and ordinary

ord inary meaning of
orthe
the term 'flexible."'
' flexible ... IId.
d.
With thi
thiss guidance, the Court will view the parties' disputes through the lens of whether a!I
reaso
rea so nable
llablejury,
jury, armed with the Court's
Co urt 's claim construction as to ce1tain
certain tenns
terlll S and
alld an instruction
instructi on
nary meaning controls

that the plain and ordi
ordinary
contro ls as to others, could or would necessarily
necessari ly conclude that
pri or art reference reads on an asserted

the asserted claim reads oonn an accused device (or Ihal
that a prior
claim). Similar to claim construction,

co nstruction, in determining whether an infringement or anticipation
anticipati on
argument fits within the plain and ord

ordinary
the Court reviews
he written
inary meaning of
ofaa term
termlhe
rev iews "[t]
"[t]he
description
part s ofthe
o f the specification," as those tools "may
" ma y shed contextua
contextuall light on the
descriptio n and other parts
10
plain
I 5 F.3d
Aven/is Pharms. Inc.
inc. v.v. Amino Chemicals Ltd.,
Ltd., 7
715
F.3 d 1363,
1363 , 1373
plnin and ordinary meaning."
menning. " Aventis
11
II
(Fed. Cir.
(red.
Clr. 20
2013).
13). But
BUlthe
the goal at this stage is not to complete the
the' Sisyphean task
ta sk of providing
12
term's
's plain and ordinary meaning. Instead,
Instead , the Court must
mllst determine
determi ne
definitive guidance as to a term
...';:.....-,_ -.--0
13
whether a jury, "free

" free to rely on
o n the plain and ordinary
ord inary meaning
meani ng ofthe termls],"
lermls]," eP/us,lnc.,
ePlus. inc., 700
14
F.3d at 520, may

mayor
mu st conclude !hnt
in fr inge (or
or must
that Ihe
the accused devices (or prior art references) infringe
P.3d
U'.l0
~O
~
-'! E
15
anticipate) the asserted claims.

clai ms.
~
...,.<+-<
() 0
<:;
()
.:a
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17
2.
T
The
he Court's
Co urt's Preli
Preliminary
minary IInjunct
nj unction
io n R
Ruling
uling
The parties dispute whether the Court should here apply various factual conclusions made
.e
18
in the
tbe likelihood-of-success
like lihood-o f- success portion of
o rtbe
the Court's preliminary injunction ruling. For example,
19
Apple argues that, in ruling on Apple's motion

Illotion for summary
sUlllmary judgment of
o f infringement
infringe men I of
o flhe
the ' 172
20
Patent, the Court should

co nsider that "[ljhis
"[ t[hi s Court has already
alread y found that Samsung devices with
s ho uld consider
21
21
the Google Keyboard likely

li kely infringe the'
the ' 172 Patent in its preliminary
prelim inary injunction
injuncti o n order."
order. " Apple
22
MSJ at J.
CO Llrt 's conclusion
conclu sio n that
tbat Apple was
wnS
I. This
Tbi s and similar arguments
argument s are without merit. The Cowt's
23
prevail on certain points "at trial,"

877,, does not entitle Apple, or even
likely
lik ely to prevnil
tr ia l," 877 F. Supp. 2d at
a1877
24
App le is entitled, to a summary judgment victory. "The

" The limited purpose of
o r a preliminary
prelimina ry
suggest Apple
25
injunction is to preserve the status quo

qu o and prevent irreparable injury,
provide
inj ury, not to pro
vide an evidentiary
26
basis
ba
sis for granting summary
SlImll1<lry judgment." elvfachines,
eMachines, inc.
In c. v.
II. Ready Access lvlemory,
Mem olY, inc.,
Inc. , No.
27
EDCV00-00374-YAPEEX,
456404 , *4
' 4 (C.
(C.D.
D. Cal. Mar. 5,
5 ,2001
200 I)) (cil
(citing
ing Univ.
Univ_ of Texas v.
EDC VOO-00374-VAPEEX, 2001 WL 456404,
28
8
Case No.: 12-CV-00630-LIJK
12-CV-00630-LHK
ORDER GRANTING-IN
GRANTfNG-IN-PI\RT
PART AND DENY
DENYING-LN-PART
ING-tN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A158
Case: 15-1171
Document: 40
Page: 251

*SEALED*
Filed: 03/06/2015
Filed01l21/14
Camenisch, 451 U.S. 390, 394 ((1981.

1981)). To hold otherwise
otherwi se would
wou ld improperly transform the Court's
2
3
.~
E
"0"
t:;1:'=
.B
- ~
benefl! of
engaged in extensive fact and expert discovery. Neither the parties nor the Court had the benefit
this discovery at the preliminary injunction phase, and the pa1ties

parties have used that discovery to refine
and develop previously presented and additional theories of tile

the case. Accordingly, in reaching
rcaching its
conclusions on summary jLJdgment,

COlll1 focuses
focllses on the parties ' evidentiary submi
submissions
ssions in
judgment, the CoUJt
their su
summary
mmary judgment briefs to determ
determine
inc whether genuine disputes of
ofmateria[
material fact exist as to
the various issues raised by the parties, not on the evidentiary arguments raised during the
II
=:.::
12
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Since the Court's ruling on Apple's motion for a preliminary injunction, the parties have
10
_
self-fulfilling
lf-fu lfilling prophecy.
preliminary injunction ruling into a se
18
19
20
21
22
23
24
25
preliminary injunction phase .

B.
Apple
Apple's
'S Motion for Summary
S umm ary Judgment
Judg mcnt of lnfingcment
Lnfringcmcnt on
o n th
thee ' 172
1 n Patent
Patcnt
(Wo rd Recommendations)
Rccommcndati o ns)
Apple
' s '[172
72 Patent, entitled "Method, System, and Graphical User Interface
I nterface for Providing
App Ie 's'
Word Recommendations," was filed on .January
January 5, 2007, and issued on December 6, 2011
2011.. The
' 172 Patent discloses a method, system, and interface for providing word recommendations to
users inputting lext

text into a portable
portab le communication device and for allowing the user to select the
recommended words. See generally '172 Patent Abstract. Although

A[though not characterized by the pruties
paJ1ics
as such, the features disclosed in the' 172 Patent appear to be a form
fo rm of what is known colloqu
colloquia
ially
ll y
as "auto correct."
App
le contends that it is entitled to summary judgment that the following
followi ng devices infiinge
infringe
Apple
G[ide, Conquer 40,
4G , Exhibit ll
114G,
4G, Galaxy Nexus,
Claim 18 of the ' 172 Patent: Admire, Captivate, Glide,
(exc[uding one release), Galaxy Sll
SI I Epic 40
4G
SII (excluding
Galaxy Note (excluding one release), Galaxy Sll
Touch (excluding one release), Stratosphere, and Transform Ultra (the'"

(the '" 172 Accused Products").
Apple
low, with the relevant portion
below,
pOJtion for purposes of Apple's
App[e MSJ at II n.l.
n.!. Claim 18
[8 is recited be
summary judgment motion emphasized:
26
27
28
9
IZ-CV-OOG30-LHK
DENYING-tN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A159
Case: 15-1171
Document: 40
Page: 252
se5:12-cv-00630-LHK Documen
Document1151
t11 51 *SEALED*
" SEALED*
3
4
5
6G
77
8
9
10
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FiledOl/21/14
Fi ledOl/21/14 Pagel0
Page10 of 49
18. A graphical user interface on a pO

portable
/'fahfe electronic device with a
a
keyboard and a touch .screen
screen display,
d isplay. comprising:
comprising:
a first area ofthe
ofthc touch screen display that displays
dispJaysua current
curienl character
cha racter
string
str ing being input by a
a user
uscr with the kt!yboa
keyboard;
nl ; lInu
and
aII second aarea
rea orl
ofthc
he touch
to uch screen display separate from the first area
that displays the current character
c haracter string or an portion thereof
thcrcofund
and au
suggested replacement character
character' string for the current character
string;
stl'i ng;
w
wherein;
herein;
the current character string in the
t he fifirst
rst aarea
rea is replaced w
with
it h the
s uggested replacement
rep lacement character string
st ri ng if the user activates
acti vates a key
suggested
on the
t he keyboard associated
associa ted with aa delimiter~
delimiter:
the current character string in the first area is replaced
repla ced with
w ith the
suggested rep
lacement
replac
e ment character string if
i ftthe
he user performs a
gesture on the
t he suggested
suggest ed replacement character string in the second
afea;
ar(!a ; and
the current character string in the first area is kept if the user performs
a gesture in the second area on the current character
c haracter stnng
string or the
portion thereof
t hereofdisplayed
displayed in the second a rea.
rl!a.
As patt
P31t of its summary judgment motion, Apple includes the infringement analysis
a nalysi s oflts
of its
expert, Professor
expen,
Profes~o r And
Andrew
rew Cockbu
Cockburn.
rn. Professor Cockburn's
Cockburn 's analysis provides
provid es su
sufficient
fficient evidence to
co ncl ud e that every

conclude
every'' 172 Accused Product contains all
nIl the elements
clement s of claitn
c laim 18.
l8. For
POI' exaniple,
example,
Professor Cockburn
electronic
Cockbu rn demonstrates that the Galaxy Nexus
Nex us is a pottable
pOltable electro
nic device with a
keyboard and a touch

to uch scteen
screen disp
display
lay that includes thc
the following
follOWing graphical user interface:
int erface:
15
(l.)
Filed: 03/06/2015
16
17
n
nl.:
u:
~A
':;)1 01'<)
~a 10 10
1n
<~Newmessage
d'il ~w lTItuage
~
~:
:
...
'"
18
l8
19
19
20
21
n.... ,' ''' "~ .. ""''''''~
22
23
24
25
26
27
Expert Report
Report of
o f Professor
Prof-essor Andrew
Andl'ew Cockbu
Cockburn
rn 'J
~ 394
394 (Be
(EC P
F" No. I 087
087~6)
-6) ("Cockburn Report").
Report'').
28
Professor Cockburn includes

includ es a1\ thotough
thoroug h infringement
infringeme nt analysis in his report,
report , demonstrating
dernon<;tra ting why
wby in
10
Case No.: 12-CV-00630-LIIK
12CV-00630LHK
ORDER GRANTfNG-IN-PART
GRANTfNGIN-I'AR T AND
ANDDENY1NG-tN
DENYING-IN-PART
P ART APPLE'S MSJ AND DENYINGSAMSUNG'S MSJ
/viS]
A160
Case: 15-1171
Document: 40
Page: 253

*SEALED*
Filed: 03/06/2015
FiledOl/21/14
Filed01l21f14 Page11
Pagell of 49
his opinion the' 172 Accused Products

Produc ts all infringe claim 18 of the ' 172 Patent in the same way. See
2
id. ~~
(ECF No. 1087-8).
'I~ 17-22,376-435, Exs. 2 (ECF
(ECr No. 1087-7),
10S7-7), 3 (ECr
10S7-S).'
Of this analysis, Samsung

Sam sung dispt1tes
disputes only whether the' 172 Accused Products include the
3
4
claimed "keyboard." Although

Althoug h Samsung concedes that all the'
the ' 172 Accused Products have a virtual
virtua l
keyboard- meaning that the keyboard appears on the display of the device through software
running
device-Samsung contends that the claim requires a physical
physica l keyboard, which
wh ich the
funning on the device---.-Samsung
'172 Accused Products indisputably lack.

lack . See Rebuttal Expett
Expert Report
Report orOr.
of Dr. Daniel
Dan iel Wigdor
S
8
Concerning Non-Infringement
30 (ECF No.
U.S . Patent
Patent No. 8,074,172
8,074, 172 ,11
' 1130
No.11087) ("Wigdor
Non-[ nrringement of U.S.
Rebuttal Report"); Deposition of Daniel Wigdor ("Wigdor Tr."), 107:17-108:14

087-1);
107: 17 - 108: 14 (ECF No. 110871);
10
see also Cockburn Repott

Repol1 ~ 386.
386. Neither patty
party sought a constru
construction
ction of the term "keyboard" to
.~
t::
0
ll
11
address this issue in their claim construction briefs. The Cowt

Court therefore applies "the full range" of
::s:.=
=:.::::
12
the term's plain and ordinary meaning, "unless

"u nless compelled
com pelled to do otherwise." Rexnord Corp. v.
.--.........
_
"'
"
....
-t:l.-Q,Q.....~ c"
"....
oo..r::
-""'-"
"
.,,,<;::: ':z."t
13
Laitram
Laitl'am Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). For
Por the following
fo llowing reasons, the Court
.,....
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16
17
18
IS
19
20
21
22
23
24
25
26
27
28
2S
1
1
For
Por example, Professor Cockburn includes the fo
following
llowing general description of the ' 172
172 Accused
Products in his report:
For example, if the
th e user types " messaf' (the current character string)
strin g) in the
Messaging application found on each of these devices, "messaf'
"messa f ' appears in the
portion of display showing the entirety of the text message the user is composing
(the "first area"). All of the accused devices also display the current character
string in a suggestion bar, which is located between the first
firs t area and the
keyboard (the "second area"). The suggestion bar contains both the current
cu rrent character string.
character string and suggested replacement words for the current
Using our example, ifthe
i fthe user typed "messaf',
" messaf', the second area would display
"messaf',
"messaf", as well as suggestions for replacements for "messaf', such as
"message" or "messages". Next, in every accused device, when the user selects a
delimiter, the
th e current character string in the first area is replaced by one of the
Continui ng the example, if the user selects
select!oi
suggestion!oi in the second area. Continuing
suggestions
spacebar after typing "messaf',
" messa f ', "message", one of the suggestions displayed in
the second area, would rep
replace
lace "messaf' displayed in the first
fi rst area. Altetnative
A lternatively,
ly,
if tthe
he user instead taps on "message" displayed
d isplayed in the second area, "message"
"messag e"
would replace "messaf'
"messa f ' in the first area. Fi
Pinally,
nally, in all of the accused devices, if
the user taps on "messaf'
" messaf' displayed in the second area, "messaf' is kept in the
first area.
19.
Cockburn Report~
Report ' 119.
11
11
ORDER GRANTTNG-TN-PART
GRANTING-IN-PART AND DENYING-INPART
DENYING-TN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A161
Case: 15-1171
Document: 40
Page: 254

'SEALED'
Filed: 03/06/2015
FiledOl/21/14
FiledOl/21114 Page12 of 49
concludes that no reasonable jury cou

could
ld understand the plain and ordinary meaning orthe
ofthe term
2
"keyboard" as lIused
sed in claim 18 to exclude
exc lude virtual
virtua l keyboards.
Other independent claims of

orthe'
the' 172 Patent clearly encompass both vittual
virtual and physical
keyboards. The scope of"keyboard"

or"keyboard" in those other claims
cla ims is crucial to understanding the term's
term 's
scope in claim 18. " [Al

fAl claim term shou
should
ld be construed consistently with its appearance in other
or tile
the same patent
patent."" Rexnord Corp., 274 F.3d at 1342.
places in the same claim or in other claims of
In particular, independent claim 28 recites " [al

(a1 portable electronic device, cOl11prising
comprising ... a display
..
.... (and]
[andl a keyboard" (among other things)
thi ngs),, and claim
c laim 29 recites "ft)he
"[t]he portable electronic
e lectronic device
of
the keyboard is a virtual
Ihe display is a touch screen display, and wherein
whereinlhe
o f claim 28, wherein the
10
keyboard displayed on
di splay. " Similarly, independent claim 2 recites, among
o n the touch screen display."
11
II
other things, a "portable

" portable electronic device with a touch screen display"
di splay" and a "keyboard," and
12
subsequent dependent claims alternatively

a lternati vely lim
limitit the keyboard o[
of claim 2 to "a soft
so ft keyboard that is
13
patt
pal1 of the 10liCh
touch screen display"
d isplay" (claim 6) and "a
" a physical
phys ical keyboard that is not a part
pari of the touch
b"
14
screen display" (claim 7). Because

oul a "further
" further limitation"
li mitation" of
I3ecause a dependent claim necessarily sets out
lllO
~O
~
~E
E
15
the subject matter

maUer of the independent claim, 35 U.S.C.
U.S.c. ll2(d),
11 2(d), the scope of the unmodified term
16
"keyboard"
" keyboard" in independent claims 2 and 28 is necessarily broad enough to include a virtual or soft
17
keyboard.
e
E
CIS
.~
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18
This broad understanding

of the term "keyboard"
" keyboard" is fully consistent
consistenl with the' 172 Patent's
Patent 's
understa nding ofthe
19
specification. All but

but one of the disclosed embodiments include a virtual or soft keyboard.
keyboard . See 7:6-
20
32,7:50-65,
32, 7:50-65 , 8:59-10:59
8:59- 10 :59 (discussing
(d iscussing "virtual or sofi
soil keyboard 21
210").
0"). The one time tbe
the inventors
21
described an embodiment with a physical keyboard, they did so expressly as

a s an "alternativeO"
" alternativell" and
22
explicitly stated
ft]he physical keyboard is not a part of the touch screen display."'
thaI ""[tJhe
display .'" 172
I 72 Patent
slaled that
23
4
at 7:33-39.
7:33~39.4 In addition, every figure in the ' I172
72 Patent that
thaI shows a portable electronic device
24
includes
include s a virtual
virt ual keyboard. See Figs.
Pigs. 2, 4A-4I,
4A-4 I, 5A-5B.
5A~5I3. This
Th is evidence leads inescapably
inescapab ly to the
25
26
27
28
41n
ln full,
fu ll , the
the'"72
I 72 Patent describes this
thi s "alternativef]"
"a lt ernativeO" physical keyboard embodiment as follows:
follows:
Alternatively,
"Alternati ve ly, in some other embodiments, the keyboard may be a physical keyboard that includes
a set
sel of push buttons, a keypad, or the like. The physical keyboard is not a part of the touch screen
display." 7:33-39.
12
Case No.: 12-C
12CV-00630-LHK
V00630-LI JK
ORDER GRANTJNG-IN-PART
DENYING-iN-PART APPLE'S MSJ AND
/\NO DENYING SAMSUNG'S MSJ
GRANTINGiN-PART AND DENYING-fN-PJ\RT
A162
Case: 15-1171
Document: 40
Page: 255

'SEALED'
Filed: 03/06/2015
FiledOl121f14
conclusion that claim

cla im l8's
18's reference to a "portable
" portable electronic device with a keyboard
keyboa rd and a touch
2
3
.~
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t2
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screen display" natu

nan1rally
rally includes a virtual keyboard
keyboard..
the ' 172 Patent cover a virtual keyboard,
Samsung acknowledges that the other claims in the'
but contends that

thai the scope of asserted claim
cla iIII 18-which
18- wh ich does not have any dependent claimsclaims-is
is
different
differerll and cannot include a virtual keyboard because of how the term "keyboard"
"key boa rd" appears in the
claim.
cla im. Samsung emphasizes that the preamble of claim 18 recites "a portable electronic device with
a keyboard and a touch

louch screen display."
display ," Relying on the principle
prinCiple that "[wjhere
U(wJ here a claim lists
elements separately, the clear implication of

orthe
the claim language is that those elements are distinct
component[s] of the patented invention," Becton, Dickinson & Co. v. Tyco Ilealthcare
I-Iealthcare Group, LP,
10
616 F.3d 1249, 1254 (Fed.

(Fed . Cir.
Gir. 2010) (in
(internal
ternal quotation
quotati on marks omirted),
omitted), Samsung
Sa/nsung contends the
II
isting of a keyboard "and" a touch screen display requires

requ ires the two parts of the portable
claim's Ilisting
12
electronic device to be separate, Samsung Opp'n at 12. The Court concludes that
thai the "distinct
13
component"
principle
component" prin
ciple stated in Becton, Dickinson is not applicable here and does not alter the plain
14
and ordinary meaning of"keyboard,"

of "keyboard," for two reasons.
reasons .
15
First,
First, applying
a ppl ying the "distinct component" principle as Samsung proposes proves too much.
16
nsung's reading, even claims 2 and 28-which also conjunctively list a "keyboard"
Under Sar
Samsung's
" keyboard" and a
17
"display"- would exclude a virtual

virtua l keyboard. As explained
exp lained above, that reading cannot be squared
18
18
with dependent claims 6 and 29, both of which require the keyboa
keyboard
rd from their respective
19
independent claims
cla ims to be a virtual or soft
so ft keyboard
keyboa rd that is part ofthe
of the touch screen display.
20
Although Samsung separately

separatel y contends
con tends that "every claim need not cover every embodiment,"
embod iment," and
21
shou ld be read to have a different scope than the other sets of claims in the
therefore that claim 18 should
22
'172
ification suggests a
' 172 Patent,
Pa tent, the Court
COLIrt concludes that nothing in claim
cla im 18 or the rest of the spec
specification
23
departure from the

Ihe defaull
default reading that counsels "against interpreting
interpret ing a claim term in a way
wCly that
24
excludes disclosed embodiments." lle/msdelfer

Helmsderfer v. Bobrick Washroom Equip.,
Equip .. Inc.
Inc.,, 527 F.3d 1379,
25
1383 (Fed. Cir.

eiL 2008).
26
Second, the two cases Samsung cites for support

su pport did not apply
a pply the "distinct
"d ist inct components"
27
the claims and

principle in isolation, but instead
in stead relied on additional indications
ind ications of distinctness in thecJaims
28
from this case. [n

In Becton, Dickinson,
specification that are missing fiom
Dickinson. the claims recited a "hinged
"h inged
13
Case No.: 12CV00630-LHK
12-CV-00630-LHK
OROgR GRANTING-IN-PART
GRANTINGtNPART AND DENYING-IN-PART
DENYlNG-IN PART APPLE'S MSJ AND DENYJNG
ORDER
DENYING SAMSUNO'S
SAMSUNG'S MSJ
A163
Case: 15-1171
Document: 40
Page: 256

'SEALED'
Filed: 03/06/2015
FiledOl/21/14
arm ... and spr ing means connected to said hinged arm."
arm," 616 F.3d
FJd at 1254 (emphasis added). The
T he
2
Fed
Federal
era! Circu it rei
relied
ied on the "connected to" language-as well as the fact that the only
embodiments in the specification had spring means separate from the hinged arm- to construe the
two elements
clements as separate.Jd.
scparatc.ld. No such "connecting to" language is present in claim 18,
\8, and, unlike
in Becton, Dickinson, the specification orlhc

of the'' 172 Patent, as described above, overwhelmingly
supports a virtual or soft keyboard.
The'
The ' 172 Patent's specification distinguishes this case also from Gazts
Galls v. Conair Corp.,
Corp. , 363
F.3d 1284 (Fed.

(Fed . Cir. 2004), the other case on which Samsung heavily relies.
relics. See Samsung Opp'n at
13.
13 .1Inn Gaus, the claim at issue included the language "an electrical operating unit and a pair of
10
spaced-apart electrically
electrica ll y exposed conductive probe networks." The
Th e Federal Circuit construed the
II
term as a whole to require an electrical operating unit separate from the pair of spaced-apart
12
electrically
electrical ly exposed conductive probe networks, relying in part on the fact that "the specification
13
"structural separation ... [was]

[wasJ essential
plainly describes the two components as separate" and the "structural
14
to the operation ofthe

of the device in the prescribed manner.''
manner." Jd. at 1288-89. The' 172 Patent, in
.0
"'~
~ E
E
15
contrast, explicitly
explicit ly contemplates combining the keyboard with the touch screen display and
('/.)'
"'"
16
nowhere suggests that separating

separat ing them is essential to the invention. While the plain and ordinary
=
c "
17
meaning of keyboard as used in claim 18 therefore encompasses a physical

physica l keyboard separate fiom
frolll
18
the touch screen

structure.
scree n display, it is by no means limited to that structure.
.~
E
E
t:~
t: <2
=:.=:
=:..::<IS
o.
uu
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~.~
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a;lo
al o
;<::Z
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19
Accordingly, the Court holds that no reasonable jury could conclude that the virtual
20
keyboards ofthe
of the '172
' 172 Accused Products fa ll outside ofthe
o f the plain and ordinary meaning ofthe
orthe term
21
21
docs not otherwise dispute

di spute Apple's satisfactory
satis factory
"keyboard" in claim 18. Because Samsung does
22
show ing of infringement as to that claim, the

th e Court GRANTS Apple's motion for summary
sUlllmary
23
judgmentthat
judgment that the
the''172
172 Accused Products
Products infringe claim 18 ofthe
o rthe ''1172
72 Patent.
24
C.
The '647
' 647 Patent (Links for Structures)
25
The '647 Patent, entitled

entitl ed "System and Method for Performing an Action on a Structure in
26
Computer-Generated
Computer-G enerated Data," was filed on February
February 1,
I, 1996, and issued on August 31,
31 , 1999. The
27
'647 Patent is directed to a computer-based system and method for detecting structures, such as
28
phone numbers, post-office addresses, or dates, and performing actions on the detected structures.
14
Case No.:
No.: 12-CV-00630-LHK
ORDER GRANTING-IN-PART AND DENYING-IN-PART APPLE'S
APPLE ' S MSJ AND DENYING SAMSUNG'S MS.I
MSJ
A164
Case: 15-1171
Document: 40
Page: 257
se5:12CV00630-LHK
*SEALED*
se5: l2-cv-00630-LHK Documentl151
Document115l'SEALED'
Filed: 03/06/2015
FiledOl/21/14
Filed01l211l 4 Page15
PagelS of 49
See '647
:816.
'6477 Patent sought to
10 overcome certain deficiencies in the
'64 7 Patent Abstract, I :8-1
6. The '64
22
prior art that inhibited an user's ability to easily perform different

dirferent desired actions on information
systems
encountered in a given software application. According to the '647 Patent, conventional sysrems
existed to help search a file or document for informati

information
on using pattern analysis, but upon
identifying such information, the user would have to "cut[]"

" cutU" and "past[er
"past[e]" that information
informati on into
66
so n ware application in orderto

information. Id. 1I :42-50.
:42 -50.
order to lise
use the information./d.
another fie ld or software
Pa tent discloses
di scloses a system and method for
lor recognizing when certain patternsThe '647 Patent
called "structures"-are present in a data set and lor

ror automatically providing
provi ding optiona
op ti onall actions for
ror an
99
perrorm that are linked to the structures.

stru ctu res. See id.
id, at2:21-54.
at 2:2154. For example,
exa mple, the disclosed
user to perform
10
system may sca

scann and
a nd recognize
recogn ize when phone numbers or email addresses appear in a Microsoft
E...
II
II
-53. Then, the di

disclosed
acti ons
Word document.
documenL See id. aatt 1I :24-35;
:2435; see also id.
id. at
a t 2:42
2:4253.
sclosed system links actions
::: :.=
12
12
se lect an action.
acti on. See id.
2:4253. So when an email
to these structure
structuress and allow the user to select
id. at 2:42-53.
13
13
document,, the disclosed system allows the user to select the email
address is detected in a Word document
14
options. such
suc h as send an email
email to the identified address or
address and then choose from a list of options,
c
~ t:
15
store the email addressinanelectroni

address in an electroniccaddressbaok.ld.
address book./d. at 5:5-18.
Vl"
"''
""
"3 o0
16
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t:
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ell ...
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00
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1\s
As described in the claims and the specification,
specifica tion, the '647
'64 7 Patent
Pa tent achieves the described
descri bed
17
functio nality principall

principally
o f three "program
" program routines": (I)
( I) an ana
lyzer server; (2) a
y through the use of
analyzer
functionality
18
/d. claim I.
uppl ications described in the '647
' 647
user interface; and (3) an action processor. !d.
l . Client appl
19
Patent (e.g., word processors) submit documents

document s to the analyzer server to "detectO
" detectO structures in the
20
linkL1 actions to the detected structures." !d.

/d. The di
disclo
sed analyzer server then returns
sclosed
data" and " linkU
21
any detected structures and links to the client application.

appl ication. The user interface "'enable[s]
enablers] the
22
action." !d.
/d. Finally,
Finally. the action
act ion processor "perform[s]
" perform[s]
selection of a detected structure and a linked aClion."
23
the selected action linked to the selected structure." !d.

Id. at 7:20-21.
7:20-21 .
24
25
The parties' motions implicate claim

c laim 1I ofthe
oflhe '647 Patent, which is reproduced below with
the relevant limitations emphasized:
26
27
28
15
C'nsc
e lise No.: 12-C'V
12-CY -00630-LHK
-00630LHK
ORDL::R
QRDl:m GRANTING-IN-PART
GRANTING IN-PART AND DENYING-TN-PART
DENYING-IN-PART APPLE'S
APPI.E'S MSJ
MS.I AND DENYING
DENY TNG SAMSUNG'S MSJ
MS.I
A165
Case: 15-1171
Document: 40
Page: 258
se5:l2-cv-00630-LHK
Document115l *SEALED*
'SEALED'
3
4
6
7
8
9
10
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14
15
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16
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17
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18
Clol
c "
):J
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Filed: 03/06/2015
FiledOl/21/14
FiledOl/211l4 Page16 of 49
I.
\. A computer-based system for detecting structures
stru ctures in data and
a nd
performing actions on detected structures, comprising:
a memory storing
sloring information including program routines including
an
detectin g structu
structures
res in the data,
dala, and for
a n analyzer server for detecting
linking actions to the detected structures;
stru ctures;
fhe selection of a detected structure and a
a user interface enabling the
linked action; and
a processing unit coupled
coup led to the input device, the output device, and
the memory for controlling
rOLlti nes.
contr olli ng the execution of the program routines.
1.
I.
Apple's
Applc ' s Motion
M ot io n for S umma
umm a ry Judgment
Jud gme nt of Infringement
Infrin gc ment
Apple
App le contends
con te nds that it is entilled
ent it led to summary judgment that the following
fo llowing products each
infringe
Admire,
in frin ge claim II of the
th e '647
' 647 Patent:
Paten!: Admi
re, Captivate Glide,
G I ide, Conquer 4G, Da1t,
Dan, Exhibit II
11 4G,
4G ,
Galaxy Nexus,
Ga laxy Note, Galaxy Note 11,
II , Galaxy
Ga laxy Rugby Pro, Galaxy
Ga laxy S ll,
11 , Galaxy
Galax y S II
[I Epic 4G
Nexus., Galaxy
Touch, Galaxy S Jl
II Skyrocket, Galaxy SIll,
S II I, Illusion,
Ill usion, Stratosphere, and Transform
T ransform Ultra. Apple
MSJ at4
at 4 n. 5. Apple's motion is based on the allegedly undisputed operation of the web browser
included with four different versions of
ofthe
the Android operating
o perating system: Froyo, Gingerbread, Ice
Cream Sandwich,
Sandwic h, and Jelly
Je lly Bean. See Lnitial
Initial Expert
Expen Report of
o f Dr. Todd C. Mowry Regarding
Infringement
ofU.S.
I 01,, nn.l2-l3
I I 08-1
);
U .S. Patent No. 5,946,647 ("Mowry Rep.") ,, 101
nn.12-13 (ECF No.
No . 11
08- 1);
Infrin gement of
Rebuttal Expe11
Expert Report of Dr. Kevin Jeffay Concerning
Concern ing Noninfiingement
Nonin fi'ingcmcnt of
ofU.S.
U.S. Patent
Pale nt No
No..
Rebutta l Rep.")
Rep. ") ,1~
1 154 n.2, 178 n.7 (ECF
(ECFNo.
No. I1074-8).
074-8). As part of its
5,946,647 ("Jeffay Rebuttal
'1199
infringement
in fringcmcnt claim,
cla im, Apple also accuses the short
sho rt messaging service software
so ftware included with these
20
four operating systems,

li mited lo
to the web browser.
system s, but its summary judgment motion is limited
21
21
a. Claim Co
Const
nstruction
ru ctio n
22
23
Apple's arguments
argum ents in support of
o f summary
sum mary judgment on
o n the '647
' 647 Patent
Paten t implicates the
construction
const ru ed by JJudge
udge Richard
Ri chard A. Posner in Apple,
Apple.
constructi on of"analyzer
o f "analyzer server," a term that was construed
24
I l -cv-08540 (N.D. Ill. March 19,20
19,2012),
12), appeal pending No. 12-1548
Inc. v. Motorola, Inc., No. JI::11-cv-08540
25
5
(Fed.
Cir.
Held Sep. 11,
11 >2013)("Motorola
2013) ("Motorola Order"); see ECF No. 118-11.
118-11 . Judge Posner
( Fed. C
ir. Oral Arg. Held
26
construed "analyzer
"ana lyzer server" to mean "a server routine separate from a client that receives data
27
28
sitt ing by designatio

designationn in Apple v. Motorola [rom
fr o m the U.S. Court of Appeals for the
)s Judge Posner is sitting
Seventh Circuit.
Circuit .
16
12-CY-00630-LJ-IK
ORDER GRANTING-IN-PART AND DENYING-IN-PART APPLE'S MSJ AND DENYING SAMSUNG'S
SAMSUNG' S MSJ
A166
Case: 15-1171
Document: 40
Page: 259
Dacument1151 'SEALED'
*SEALED*
Filed: 03/06/2015
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Fi JedOl/21114 Page17 of 49
having structures from

from the client." Motorola Order at 10. In its order granting Apple's motion for a
22
preliminary injunction, this

th is Court applied Judge Posner's
Posner' s construction,
constructi on, noting
noti ng that it did
d id so on ly for
purposes or
of the preliminary
prel iminary injunction motion
moti on because Apple maintained
main tained that
tha tlhc
the Galaxy Nexus
44
infringed even under that construction.

a1875
875..
construct ion . See 877 F. Supp. 2d at
The Court will

wi ll also apply Judge Posner's construction of"analyzer
of "analyzer server" for purposes of
66
Apple's
Apple' s summary judgment motion. Although Apple now maintains
main ta ins Judge Posner's
Posner' s construction is
77
wrong
wrong (and has challenged the constructions on appeal in the Apple v. Motorola case), its challenge
in its summary
summalY judgment motion consists of no more than a sentence in the body of its brief and a
footnote cite to 16 paragraphs in its infringement expert's report for the '647 Patent.
footnote
Patent. See Apple
10
MSJ at 5, n.6 . Apple's attempt to argue for a new claim construction at this stage is doubly
11
II
improper, bot
bothh because it did not raise its arguments at the claim construction stage and because
=:..=
12
Applc
Apple is trying to sidestep the
th e summary judgment page limitations by incorporating legal
~
(J 0
13
arguments in a separate declaration.

declaration .
t:::I;":::
c.8
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1- <..)
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"-
14
Apple
a lready rejected
rejectcd Samsung's "precise arguments in claim
A pple contends that this Court already
15
construction, when Sam

Samsung
sung tried to add the
the''separate
separate fiom
from a client' limitation to th
the'
e 'ana
analyzer
lyzer
16
clement. " Apple MSJ at 6 (citing C la

im Construct
ion Order
O rder at 16-18)
16- 18) (emp
(emphasis
server' element."
laim
Construction
hasis added).
17
Apple is incorrect. T
This
his C
Court
OUlt was not asked to construe
constru e "analyzer server." Rather, the Court
18
construed only one term from the '647 Patent,

Patent , the
th e term "action processor." Although the Court
19
adopted
ado pted Apple's proposed construction for that term over Samsung's objection, it never addressed
20
the "precise"
"precise" argument Samsung is raising now.
21
Further,
FU11her, in describing the Court's claim construction order, Apple's motion
molion altered the
22
ru ling to the analyzer

Court's description of claim 1I so as to suggest that the Court applied its ruling
23
server term. Compare Claim Construction

Construct io n Order at 16 ("The claims strongly suggest that an action
24
from the application containing

contain ing the data.") (emphasis added)
processor is not necessarily separate fiom
25
with Apple MSJ at 6 ("The Court also

a lso exp
explained
lained that '[t]he claims strongly suggest that [the
[rhe
26
claimed program routines are] not necessarily separate fiom

from the application
app li cation containing the data.
data."')
''')
27
(Apple's
(Apple' s alterations;
al terations; emphasis added). A
Although
lthough Apple is correct that claim 1 of the '647 Patent
28
bot h the
th e action processor and the analyzer
ana lyzer server as "program routines," the Court did not
describes both
17
17
ORDER GRANTING-IN-PART AND DENYING-lN-PART
DENYING-IN-PART APPLE'S MSJ
MSJ AND DENYlNG
DENYING SAMSUNG'S MSJ
A167
Confidential
Redacted
Case: 15-1171
Page: 260 Filed:
03/06/2015
se5:12-cv-00630-LHK
Doc ument1151 *SEALED-'"
*SEALED*
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f=iledOl/21114 Page18
PagelS of 49
say that
tbat its ruling applied
appl icu 10
to the analyzer server. To the colltrary,
COtllmry. the Court
COllrt explicitly noted that
thaI
2
Samsung's arguments related

relnted to "action
"act ion processor" seemed to ignore the difference between the
plain
"processor'' and a ('server."
C laim
I 8. If anythi
anything,
"server," See Cla
im Construction Order at 18.
ng.
pla in language of a "processor"
that discussion
vc resolved the construction
constluction of"analyzer
that
dlSCLLssion suggests that the Court might ha
have
or "analyzer server"
55
differently
di iTercntly if
i r the question had been presented.
Apple tries
the Court's
tri es to recover from its dubious characterization
characterizat ioll of
orthc
Court 's opinion in its
it s reply
by contendlng
[thaij the Coun's
contendl1lg that it was merely trying to 'point[]
"poinln out
OUIlthalj
Court's logic" applies equally to
\0
the analyzer server term.

term . Apple Reply at 4 ((emphasis
em.phasis added). But that explanation
~xplallat iOIl merely
exernpli
exemplifific5
es Apple's earlier misstatement.
misstatemchl. Asking the Court to apply logic fiom
from an earlier rul
ruling
ing to
10
a(\ different controversy is one thing; tellii1g

telling the Coutt
Court that
thaI ilit already rejected the "precise
" precise
e.5E
]11
l
argumentU" currently
cul'tently bcrore
before the Cc1urt
Court is quite another_
another lt1
In any matter before the Court-but
Cotlt"t- bl1t even
argurnentO''
=:.=
_===
uUU
u....."
-~
'5 .g
--t)b
12
more
morc so in a matter such as this, Willi
with nearly 4,000 docket entries across the lwoApple
two Apple v. Samsung
v 0
13
cases-parties are expected to describe the Court's

Court' s prior rulings
rul ings accurately and forthrightly.
ronhrightly. Failure
Failure.
,~
~ 1-<
14
to do so carries
canies consequences. T
Too the extent Apple wants this Court
COU lt to construe "analyzer
"analyv;:,r server"
l5
15
using the same arguments Apple raised with

wi th respect to "action
"act ion processor,"
processor;' the Cowt
Court rejects this
16
argument as untimely aand

nd improperly raised.
t:J:
1: <2
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17
Io any event, Apple contends

In
cOllttmJ ,s thal
tha.t it i:s
is entitled to summary j udgment of infiingclnent
infi' illgemcnt even
evcn
18
under Judge Posner's

Posner' 5 constructio11
construct ion of
of''analyzer
"analyzer server." The Court now addresses
add resses lhal
that content;
contention
on
19
and finds th~1t

that it, too,
tn o, is with
without
out merit.
20
21
2J
h. An::t.IY
Ana lyzer
ver
1.c r Ser
SC Ivc.r
As noted above, claim I requires "a

"ann analyzer server for
fo r detect
detecting
ing structures in data, ~ll1d
and
22
Jor
for linking
link ing actions to the detected structures," aJ1d
and thc
the Court has now adopted
adoptcd Judge Posner's
Posner' s
23
construction
0 f an "analyzer server''
server'l to be "a server routine separate from
from a client
c(ienr that receives
receivt!~'
construct ion of
24
24
data having
havi ng structures from a cl
c1ienL."
ienL.,. Motorola Order at I 0 (emphases added).
25
Through its expc1t

expert Dr. Todd Mowry,
Mowry. Apple
App le conteods
conteutls lhat
[hilt a set of snared
shared library subroutines
26
claim I. Mowry
in the Andl'oid
analyzer server" clement of
Andmid operating systems function as the ""analyzer
afclaim
27
Rep.1
Rep. ~, 132132-143.
143.
28
2X
According to
tn
Ill
18
Case No.: 12-CY-00630-LHK
12CY-00630-LHK
ORDER GRANTlNG-JN-PART
GRANTING-IN!'AR1 AND DENYfNG-fNPART
DENYINGINPART APPLE'S MSJ AND DENYI
DENYtNG
NG SAMSUNG'S
SA!vfSVNG'S MSJ
A168
Confidential
Redacted
Case: 15-1171
Page: 261 Filed:
03/06/2015
se5:12-cv-00630-LHK
se5:12-c.v-00630-LHK Document1151 *SEALED*
*SEALEO*
Filed01121/14
Filed01l21/14 Page19 of 49
Dr. Mowry,
2
these shared libraries an!
"st'purate from"
"sepurate
fr om" the "c
''clien
lil:n1"t'' (e,g.
(e.g. , the browser application)
app lication)..
Samsung contends that the shared libraries

"a11alyzer
li brari es identified by Apple do not meet the "a
nalyzer
server" limitation as construed

constl1l ed by Ju
Judge
dge Posner
Pos ner because they are
arc not
nDt "separate
''separate fiom"
from " the browser
applicatio n and do not "receive[J

"receive[J data having structures
stl1lClUres fiom"
from" that applicatlon.
application. ln
In support ofits
o[its
application
position,
pos
iti on, Samsu
Samsung
ng has submitted
su bmitted a declaration
declarmion from its noninJ
non in rringcrnern
J-ingtrnent expert for
[or the '6
' 647
47 Patent,
Dr. Kt:v
Kev in Jeffay.
1t:mlY. Dr. Jdfay
Jt;!Tay :s~::ts
~etS forth
[urth a thorough
tht>rough analysis of the shared library toutines
routines identified
id entified
Dr, Mowry
opinion
," the
by Dr.
Mowry and
nod explains
expl.lins why in his opini
on they are
nre part of, rather than
tilan "separate
"sepur;\te from
from,"
browser applications and therefore are no

nott ihc
the requirr.'d
required ''server."
'server." See Declaration of Dr.
Dr_ Kevin
Kev in
10
Jeffay ln
In Support of Samsung's Opposition
Oppos iti on to
tn Apple's Motion fol'
for Summary Judgment Concerning
Com:erning
II
Il
19-24. 33539,
126- 132, 176-182
U.S. Patent
,946,64 7 ("JelTay
("Jeffay Dec
I.") ,~[ 19-24,
5-39, 60-71
60-71,, I103-109,
03-1 09, 126-132,
U.S,
Patent No.
No, S
5.946.647
Or::cI.")
:s :..:::
12
(ECF No"
No . 855-1
855-1).
). Dr.
Dr , Jeffay
Jenhy also explains
exp lu ins that his analysis of the source
so urce code leads him to believe
bel ieve
-.....t ,.....
13
that
Judge Posner's
client" as required
I'eqllire<i by Judgr;:
lhat the accused libraries do not " receive data from a clienf'
,:::,
14
construction.
!d.~~
I~ 112-11
3, 120, 135-136,
173- l47, 185-186.
constructioo.leI.
~ 100-10
100-101,
t 12-1 13,120,1
35 -1 36,173-147,
135-186.
..~ E
.nCl
Ql
15
"' t::
0
..~ ;z:
16
of Judgc
udgc Posner'
Posncr'ss claim co
construction
nstructi on of " nnalyzer
analyzer server''
server" to the
th e accused products, one
application ofJ
c:= cu
17
Ihi s Comt
COllli cannot resolve
reso lve at summary
Sllmmary j udgment.
udgment Accordingly. Apple has failed to show !haL
that it
that this
....
0
u..
18
is ent
entitled
ith:d to su
summary
mmary judgment
jud gment of
or inGingement,
inG'ingement, and its
it s 111
motion
0tiol1 as
as to
to the '647 Patent
Patenl is DENtED.
DENTED.
.~
t: ..E
ou
uq...
0
"' 0.....
.~
Q .~
This dise~greernent
disugreem!.:'!nl between the
lhe pa1tic:s'
parii!.:'!.:) experts
experls cumtilutes
I;;unstitutes a genui
genuine
nc ddispuie
i:;pute as to
to the
Q)
oo..c::
P-5
2.
19
20
21
22
Samsung
Samsu ng contends that
tJ1at it is entitled to summaryjl..tdgment
summary judgment that the operati
operat.i o11
on of the Browser
Brows!!r
on the acctlsed
accused products running the
rhe Jelly Bean
Btan opt:rating
operating system
~ystt:m dot:s
d{)e~ nol
not infringe
infringt: tht:
th~:: asserted
claims
cI(\im~ of
or th
tJ1~:;
e ''647
647 Patent.
Patell\'
23
24
25
26
SlImsu
Sa
msung's
ng's M
Motion
otion for Non-Infringem
Non-(nfringcmenl
ent of JJelly
elly B
Bean
ean Oper
Operating
ating
System
The Jelly
J elly Bean operating system, which Samsung
SamSlll1g introduced in the summer or2
of200 '1122 after
motion
was fully
il~\\ncti o n moti
on WlIS
fully briefed,
briefed. is the newest operating system at issue in
Apple's preliminary it~ttncti
Ithi
hiss
case. The parties agree that

th<l t the Jelly
Jell y Bean Browser operates differently
dif(erently than
than the browser on the
Andro id operating systems.

accu sed Android
other accused
27
28
19
Case No.:
elise
Nu .: 12-CV-00630-LHK
12-CV-006JO-LHK
ORDER
ING-IN-PART
DENYlNGlN-PART APPLE'
APPLE'S
MSJ AND DENYING
DENVINGSAMSUNG'
SAMSUNG'SS MS
MSJJ
ORDBR GRANT
GRANTIN
G-IN-PART AND DENYING-IN-PART
S MS.J
A169
Confidential
Redacted
Case: 15-1171
Page: 262 Filed:
03/06/2015
d se5:12-cv-00630-LHK
se5:12-cv00630-LHK
Document1151 "'SEALED*
*SEALED*
1
2
3
4
Samsung contends
con tend s that
thal Apple's concession that the .Jelly
Jelly Bean
I3 eall Browset
Bra wser detects structures
only
on ly after a user touches an area on a screen entitles Samsung to summary jjudgment
udgment of
noninfringement.
nOll in fringe ment. The
Th e parties agree that
thal the plain and ordi
ordinary
nary meaning of the claim limitation
II111itation "a
user interface
interrace enabling
eoa bli ng the selection
se lecti on of a detected
deJected structure"
structure" requires
req uires "the user interface to enable
enab Ie
selec
sel eelion
tion of a slwdure,
structure, by the lIser,
user, (fJler
c~fier the
tht: struclu
structu re has already been
bt:cn detected."
detecled." Rep
Reply
1y
.,'
10
Declaratio11
Declaration ofDr,
of Dr, Todd C. Mowry Concerning U,S.
U.S. Patent
Patent No. 5,946,647 at
o.t ~ 217 (ECF
(ECr No. 805-
II
14)
(emphasiss in
11
1) (emphasi
i tl original). 1\.ccording
According to Samsu
>a,""u ng,
"Ig,
tt:,,,,
<E
<B
"12
12
u'+<
~
o 0
0
... +'J:
....l.. ..tiu_
13
Patent or any of its dependents because they do not provide a ''user

user inlerface
interface enabling lhe
the selection
14
ofa
of a detectetl
defected structure and a linked action."'
action . ,,, Samsung MSJ
MS.J at 3 (emphases in original).
r.ll
o=~
uU"
o ....
U
-"
....A :!:
- "
ri)
...
......
Q .~
ri)Q
.
0
! E
0
:l
.a <U"
Cll-$
"'~
"'..Q,l=' 0t z
.t:
:::
Zc
~ <U
o
P-8
"-5"
....
"
'"
the Accused
thee '64 7
Acc used Jelly Bean
Rean Browser Products
Product s do not infringe claim 1 of lh
Apple disagrees with Samsung's

Samsung' s analysis. As Apple's expe1t
expel1 explains,
15
15
16
17
Mowry
Mowry Rep.~
Rep. -V 251
25 1 (alteration added).
added).
18
19
20
22 11
See Mowry Rep

Rep..
22
~,1
~ 250-5
250-51.
1.
23
of a structure and the second tap allows the user

ofa
lL ser to select the detected structure
stru cture and launch the
24
menu of linked actions. Apple Opp. at 5. The second

sec.ond touch,
tOUCh, Apple con
contitinues,
nues, "wou
" would
ld indisputably
i ndispulably
25
be a 'selection of a detected structure,"'

structure,' " and the long-press is no different.
di!'ferent.
Apple analogizes tl1e

Ole long-press to a double tap, where the first tap
lap triggers the detection
T
The
he Court
CoUii is satisrled
satisfied that Apple'
Apple'ss "long-press"
" long-press" argument establish~s
t:slabJishes aa genuinely
genuindy disputed
26
27
issue
i~sue of
0 f 111aterial
materia I fact for the jury.
j 111')'. In
In light of the evidence Apple
App 1e has
hilS presented-prcscntcd- namely,
n!lJlle1)" its
28
expeti'
lo ng -press functiona
ysis of the
ex perl' s description
descri ption of the long-press
fu nctiona lit
Iit )'y and anal )'sis
Ih e source code
cod e for tl1at
that
20
Ca~e
Case
No.;
No.: l2-CV-00630-LHK
l2-CV-OD630-LHK
ORDER GRANTING
GRANT ING- lN-PART
IN-PART AND DENYINO-lN-PI\RT
DENY ING-tN-PART APPLE'
APPLE'S
S MS.I
MSJ ANlJ
ANU DENYING
lJENY ING St\MSUNG'S
SAMSUNG'S MSJ
At70
A170
Case: 15-1171
Document: 40
Page: 263

'SEALED'
Filed: 03/06/2015
Fi1edOl/21/14
functionality, see Mowry Rep. ~~ 157-58, 250-51-a

250-51-ajury
jury cou
could
ld conclude that the Jelly Bean
Bean
2
Browser has the claimed "user interface enabli

enab li ng the selection
select ion ofa
of a detected structure." Samsung
contends that Apple's "dual

"dual selection"
select ion" theory is fau
faulty
lty because Apple fails to
10 identify
idet1lify at what point
po int
during the long press the second se

selection
lection occurs. Samsu
Samsung
ng Reply at 2.
2 . Whether this and other
criticisms are sufficient

surticient to dispel
di spel Apple's long-press theory
tbeory is a question
quest ion for the jury, not this
Court,
Court DENIES
DEN IES Samsung's motion for summary
sum mary judgment as to
COllrt, to decide. Accordingly, the Cowi
the '647 Patent.
D.
The
T he '414
'4 14 Patent, entitled"
entitled "Asynchronous
Asynchronous Data Synchronization Amongst Devices," was
])atent
The '414 Pate
nt (Synchronization)
10
filed on January 7, 2007 and issued on July

July20,
20, 2010. The '4 I144 Patent discloses "[s]ystems [and]
II
methods ... for synchronization

synch ronization tasks and non-synchronization
non~synchronization tasks [to]
[to J be[]
beO executed
:::1 :.:::
:"=
=
(1:$
12
concurrently." '414 Patent Abstract. The system allows, for example, "a user [to] manipulate or
-c..... -....0
13
view
while
ile a synchronization
synchron ization operation, which synchronizes structured data from, for
for
v iew a calendar wh
s.. u
-.~
.:!l J:;:
"
14
example, the calendar or other databases such as a contact database, is being

be ing performed." !d.
[d. at
~ s::
c
~ .....
....
v"
1/)..S::
"'~
15
2:37-40.
2:3740, In this way
way,, the '414 Patent
Patent teaches a system that aallllows
ows data on two devices, such
stich as a
"'t::
""~
()) 0
0
..-"":: Z
s:: Z())
16
handheld computer connected to a desktop computer, to be synchronized while allowing user
c "
o-s
....
17
applications
fd. at II :65; see id. at 24:42-68.
appl ications "to run concurrently with the synchronization process." !d.
"
18
The patent explains that "non-synchronization" software, such as a calendar appl

application,
ication, and
19
"synchronization" software run concurrently in different "threads

"th reads or processes" on one or both of
20
the devices. !d.

-5.
fd. at 25:1
25: 1-5.
.,E
.~
t:<B
t: <E"
0o
uu
UU
.......
<;
ti
0Q .
.!!?
.,a
.0
-.
"
;o~
"-
21
22
23
24
25
26
27
Claim 20 ofthe
orthe '414 Patent is at issue. Claim
Cla im 20 depends from
rrom claim 11,
II, which reads as
follows (emphasis added):
11.
II. A computer readable
readab le storage medium containing
conta ining executable program
instructions which
wh ich when executed cause a data processing system to perform a
method comprising:
compris ing:
executing at least one user-leve

user- leve l non-synchronization processing thread
thread,,
wherein the at least one user-level
user-level nonsynchronization
nonsynchronization processing
thread is provided by a user application which provides a user
interface to allow a user to access and edit structured
st ructured data in a first
store associated with a first database; and
28
21
!2-CV-00630-LHK
ORDER GRANTING-IN-PART
GRANTING-iNPART AND DENYING-IN-PART
DENYING-iN-PART APPLE'S MSJ AND DENYING SAMSUNG'S
SAMSVNG'S MSJ
A171
Case: 15-1171
Document: 40
Page: 264

'SEALED'
1
2
3
4
5
6
7
8
9
. <13
~
a....
"
t: <.S
eE"
=:..::::
=:.=
o
O<ll
~
U
uu
U
...........
-.-....-.-.......-. .
~
() 0
'"
0
1- (.)
.~ b
tl
Q.~
Cl; .~
<1)0
~ O
~
E
3
c:s (I)
Filed: 03/06/2015
FiledOl/21/14
Fil edOl/21114 Page22 of 49
executing
executi ng at least
lea st one
o ne synchronization processing
process ing thread concurrently
co ncurre ntly with
oflhe at least one user-level non-synchronization
no n-synchronizatio n
the executing ofthe
processing thread, wherein the at least one synchronization processing
thread is provided by a synchronization software component which is
configured
co nfig ured to synchronize
synchro nize the structured data fiom
from the first
fir s! database
dmabase
with the structured data fiom
fro m a second
seco nd database.
Asserted claim 20 requires
req ui res (with
(w ith emphasis)
T he storage medium as in claim 11
1 [ wherein the
rhe synchronization
20. The
software component is configured to synchronize structured data of a first
synchronization software components
componenls are configured to
data class and other synchronizaTion
,)ynchronize structured
slrllciured data
da la of other corresponding
correspondi ng data classes.
cla sses.
synchronize
1.
Apple's Motion for Summary Judgment of

ofinfringement
Infrin ge ment
Apple claims
cla ims it is entitled to summary
su mmary jjudgment
udgment that the following
follow ing products
prod ucts infringe
infri nge claim
10
20 of the '414 Patent: the Samsung Admire,

4G , Dart, Exhibit II 4G,
Adm ire, Conquer
Conquer4G
4G , Galaxy Nexus,
11
II
Galaxy Note, Galaxy Note II,

II , Galaxy Sll,
SIl , Galaxy Sll
S ll Epic
Ep ic 4G Touch, Galaxy SII
S it Skyrocket,
12
Galaxy S III,
10.
0.11,, Illusion,
Ill usion, Stratosphere, and Transform
T ra nsform Ultra. Apple MSJ at 10 n.7;
Ill , Galaxy Tab 2 1
13
see Expert Report

R eport of Dr. Alex C. Snoeren Concerning
Concern ing U.S.
U.s. Patent Nos. 6,847,959 and
a nd 7,761 ,414
14
15
at~
~ 409 n.86 (EeF
(ECF No. 11099-3).
099-3).
("Snoren Rep.") at
represe ntat ive for

The
T he parties
parti es disagree as to whether any of these accused products are representative
l! "
00'
"'aso
'2
'll
16
purposes of the '414 Patent

ofJeffrey
ofSamsung's
Patent. See Declaration
Declarat io n of
J effrey S. Chase, Ph.D.,
Ph.D ., in Support
S upport of
Samsung's
(I)
17
Opposition to Apple's Motion for Summary Judgment

Judgme nt ("Chase Opp'n Dec!.")
Decl.") at ,118
18 (ECF
(EC F No.
18
Th is disagreement,
d isagree ment, if genuine,
ge nui ne, creates
crea tes a first problem for Apple's
Apple 's summary judgment
j udgme nt
1069-1). This
19
motion, because Apple would need to show the absence of a genuinely

ge nu inely disputed
d isputed issue of material
20
fact for each product

mot ion.. But the Court does not need to
prod uct in order to prevail fully on Apple's motion
21
address whether Apple has established a representative

representat ive product,
prod uct, because even
eve n for the product that
22
Apple claims is representative (the Galaxy S fii),

Ill), the Court concludes
concl udes that a genuine dispute as to
23
infringement
su m mary judg
judgment.
ment.
infr in geme nt precludes summary
.<.::Z
,':: Z
=
" "....
l;J;S
1=>-5
"
"-
24
As set out above, claim

c laim 20 requires
requ ires that "the synchronization
sy nchronizatio n software component
com pone nt [of claim
25
11]
II ] is configured
con fig ured to synchronize structured data of a first data class and
a nd other synchronization
sy nchron izat ion
26
software components are configured to synchronize

synchron ize structured data of other corresponding data
27
language, claim
cla im 20 requires at least
classes. " The
T he parties
part ies appear to agree that, based on its plain language.
classes."
28
22
SA.i\ti.SUNG'S MSJ
DENYING- IN -PART APPLE'S MSJ AND DENYING
DENYING SAMSUNG'S
A172
Confidential
Case: 15-1171
se5:12-cv-00630-LHK
Docurnen11151 *SEALED*
"SEALED'"
three "synchro
nization software
components.'' See Chase Opp'n Decl.
!hree
"synchronization
soOware components:'
Oed. at ~ 105; Apple
App le Reply
Rep ly ar
at 6.
The first is the cl

dai111ed
uimcd sy nchro
nchronization
niza tion software.
software component
co rr1ponent ''configured
"c()nlil:\u rcd to synchronize
sy nchroni ze structured
slruclur'cd
data of
ofaa firs
flrslt datu
data ctass"
class" and the other
olher lwo
two (Ife
arc the "other synchronization
synchronization so
sofiwurc
ftware compon~nts"
components"
configured
conti
gurcd "1
"to0 synchro
synchronize
nize slfuctured
structured data or
of other correspondi
corresponding
ng data
da lOclasses!'
citlsscs,"
Apple
App le targets st
~I x
X so-called "Sync Adapters"
Adapters"' in
In the Galaxy SIll
S II I as the claimed
clai med
synchronization
sym;hroni7.ll1io n software compo
components,
nents, ead
cat:h orw
of which
hich Apple claims
clai ms Is configu
configured
red to synchronize
sy nchro nize
structured
structu red datil
data corresponding
correspond in g to a particulur
parliculur da
~lata
ln class:
class ; Google Calendar, Coogle
Google Contacts,
COlltacts, Gmail,
Gmai l,
Exchange Mail
Moi l,, 8xc
Exchange
hungc Ca
Calendar,
lendar, and
and IExcha
~><change
nge Contacts.
Co ntacts. See Snoren Rep.
Rep. 01
at ~ 4
471.
71 . Sam
Su msung,
sung,
however, contends
ugh its expert
Adapters-th4o!
contcnds thro
through
cx pert Dr. Chase that four of
or the six accused Sync
Sy nc Adapters-the
10
Gmail Sync Adaptcr,

Adapter, Exchange
bchange Contacts Sync Adapter.
Adapter, ExchangcCMiendar
Excha nge Ca lendur Sy
Sync
nc Adapter.
Adapter, and
"
!::
11
lI
Exchange
Maill Sync
Sy nc Adapter-perform no synchroniza
synchronizatio
tionn operations at
ill all.
ul l. aand
nd are therefore not
Excha nge Mai
o
";i
C) ""
12
12
""configured
configured to synchronize
synchro nize structured
structu red data," as
liS clairn
clui m 20 req
requires.
uires. See Chase Opp'
Opp'nn Decl.
Dec!. at~~
011
76-76
<.1 ~
0
13
1IOJ,
UJ, 106. Accordi ng to
10 Samsung,
Sa msun g, the lour
lo Ut erro
erroneously
nco~tsl y aCl;used
accused Sy nc Adapters
Ada plers merely
merely -_
E
;: ..2
i:
<-2
,-
::: :..=
uu
UU
.....
. "-
" u
0
c
:E
,'...Q
..... til
0,- .._
a
. 0
~a
E
-~ E
~
"'..,"
~
;::
!d. at~~ 24-53,82-103.

24 -53,82- 103. Accordingly,
Accon.li ng ly,
15
<U
C/j.J::
16
Samsung's argument concludes,

concl udes, Apple ell
cann establish only
on ly that the accused products have
hovc at most
mOSt
1U
17
two,
tWO, not three. "sy
" s), nchroni-zation
nc hroni7.al io n software
softwa re components."
componenls."
18
~
", e
t:
<.1
0 0
:::
;z
.: ;Z
= ,,;"
;,
::l-;5
..."
~
C
14
The pa
parties
rt ie!. di
t.lidd not seek
seck an consh'1.1
constrlJctio
Clionn of''configured
of "co nfi gured to !<ynchr01
synchro nize
1ize structured
structu red data,"
dala." and
Rnd
19
therefore
th ercrore the plain
pl ai n and
and ordinary meaning
meani ng aprlics.
applies. Apple
Ap ple contends
conten ds thut
that a reasonable
rea!>orHlbl ejury
ju ry would
20
necessarily
concluch: thvl
synchronii'.ation
necessari ly conclude
thaI a synchron
i:r;ltion software
so ft ware component is "configured
"co nfigu rcd to synchronize
sy nchronite
11
~1
structured
.struct ured data"
da til" even if
iritit merely
mere ly "dircct[sj
''direct[sJ other
ot~cr parts of
oftthe
he software"
sofiware" to synchronize structured
22
data. Appk
Apple Reply at6
al6 (emphasis omitted).
omillcd).
23
Apple has
po inted to nothing
nmhi ng thai would require a
a jury to read
rcad the plain
pluin and ordinary
ordi nary
has pointed
24
Illcan ing oft

of the
he c.:laim
clai m su
:m broadly.
broadly. ln
In support
SIIPP(l11 of its
ils position, Apple highl
highlights
ights on ly a preferred
prcrcrred
meaning
25
embodiment
thl:} '4
14 Patent that incluucs
itselff
embo dimcl1I in the
'414
includes 3a "Sync
" Sync Agent,"
Age nt~" which,
which , Apple
App le argues, does not itsel
16
26
perform synchronization
synch ronization operations
operatio ns on strlJctured
struct ured data.
dat1t. But
BUI even
eve n lhe
the Sync
Sy nc Agent on which Apple
27
rei ies 'determi

n[esl the Older
order of
sy nc hro ni:~.ati oo of
thee various data
rel
"determinles!
ofsynchronizalion
oCth
datu classes." '4 14 Patent at 111J :60:60
28
28
12: 10.
I0. Apple docs not
nOI contend
co ntl!nd that
tha t the acctrsed
accused Sync
Sy nc Ada
Adapters
pt ers in Ihe
the Ga
Galaxy
laxy S l1I
In perform that
23
elise
Ca~e No.: 12CV-00630-U-IK
12-CV-OOGJO-LHK
ORDER CRANTINC-IN-PART
GRANTING-IN-PART AND DENY
DENYINGINPART
tNGlNPART Arpi..E
APPLE'S
'S MSJ AND DENY ING SAMSUNG'S MSJ
A173
Confidential
Information
Redacted
Case: 15-1171
Document: 40
Page: 266 Filed:
03/06/2015
se5: 12-cv-00630-LHK
1 2~cv 00630LHK Document1151 SEALEO'"
*SEALED*
fu
nction. Therefore.
The.refore. aj
a jury
not.~!:)
function.
ury finding
find ing ofnoninfringemenl
o f noninfri ngemL:nl would nol,
~3 Apple contends,
contends. amount Loan
to an
2
exd
exclusion
usion of a preferred embodiment. Based on
0 11 the S\lmma
sum ma ry judgment record, n jury could
reasonably
rcnsonably co
nclude Lhat
that the accused Sync Ada
conclude
Adnpter!'
pters merely direct ot
other
her co1nponents
components to perform
44
synchroni.tation
sync hronization operations
o perat ions and are not themselves
themsel ves "co
"conrlgured
nfigured 1to
0 synchronize
synchm nize str11
structured
ctured data''
data" as
required by the claim.

claim. Apple's
Apple' s motion
mot io n for
for summary
summa ry judgment of
of'infii
infri ngement as to the '4
'414
[4 Patent
is thcrl!forc
th erefore 0DEN
ENLED.
IED.
2.
Samsung
Sa m sun g's
's Motion
Motio n fo r Summaty
SlllllltllWY Judgment of
01" Anticipation
A ntic ipat io n
assclts that a platfo rm

r m called
ca lled Windows Mobile 5.0,
5,0 1 developed
devel o ped by Microsoft and
SamslJng
Sam su ng assetts
later
the '4l4
patent
2005 1 mandates
mandate::; summary
su mmary judgrn~..:nlthat
judgment that claim 20 of
of lile
'414 palent
on sale no la
ter than
Ihtln October 2005,
6
10
is invalid
inva lid as anticipa
anticipatted
ed under either
eilher 35 U.S.C.
U,S.C, 1I 02(1>)
02(b) or (g)(2) (2006),
(2006) ,6 M
Microsoft's
icrosofl ' s mobile
I11I
plutform
plotfor
m allowed Windows-based handheld devices
devi<.:es to
10 synchronize
sync hronize certain
certai n data- such
suc h as e-mail,
e-mail,
::s :...::
12
contacts,
CO IlI:t ct S. Olld
n11d calendar
calenda r information-with
information---wilh a Microsoft
Mic rosoft !.!.>.change
Exchange Server. See
S'ee Fazio Decl. Ex. 22
....
c.;: 0
13
(ECP
U.S . Patent Nos
(BCP No. 809-1
809 1):): Rebuttal
Rebuttal Expert Report
Repo rt of Or. Alex C.
C . Snoren
Snore" Concerning
Co ncern ing U.S,
Nos..
b
,~
.!1
.Cl
~
~c
r::
~ .....
"
.... Q,)
14
6.84 7,959 ,and

6.847.959
nd 7.761.414
7.76 1.414 ("Snoren
("Sroren Reb. Rep.")
~'
~ 0
16
.E
'E
<':!
-i:
o
~o. ~
=
uo~~
u~ca
UU
-E-.. -....~
(j
()
.~
c
~
-"'-e. "
... o
:,'E,;::: zZo
="
P.S
"-5
..."
rf
~
::::;
Q,)
IS
540-543
( ECr No.
073-9).
5405 43 (ECr
No . I10739).
According 10
to Samsung,
Samsung. Windows Mobile
Mo bile 5.0 includes
include s multiple
mult ip le synchronization
sy nchronization software
so ftware
ffcrcnl class,
co mponents con
co n figu red to synchronize structured
st ructurcd data
claw of
oraa di
difFercnl
I
See
17
17
18
Decln
ratJO
I1 of .JeffreyS.
Sa msung's Motio n for Summary Judgment
Declarat
ion
Jeffrey S . C hase,
ha se, Ph.D
Ph .D.,., in Suppo1i
SlIPPOr! of
ofSarnsung's
19
("Ch(ISC
l 06-l07
066- 12). 7 Appl
Applee acknowledges the
("Chase. SJ Dec!.")
Dcc),") at,,~
at ~ 106t 07 (ECF'
(ECr No.
No . I1066-12).7
Ihe presence ofthese
of these
20
10
components in Windows Mobile 5.0, but contends thut

thaI Samsung
j\rMllng ca nnot establish that aany
ny
2
211
"provid[e]"
" provid(e j'" a synchronization processing thread . as
Us required by 111dependent
Independent claim
cla im I I of the '4
'41144
22
Patent. See'
See 1414 PutCnI,
Patent, claim IIII ("at least one synchronization
synchron iM1tion pi'Ocessing
processi ng thread is provided by aa.
23
synchron i <~tion so
fl ware
Iights
tls expert fo
synchronilalion
softwa
re component.") (emphasis
(em pha sis added). s~ Apple high
highligh
ts lhat
that ils
forr the
14
24
25
26
27
28
b Samsung' s summary judgment moti

'Samsung'
m oti on also
a lso challenges lhc
the validity of claim II
I I of
o f the
tile '414 Patent.
At the summary
su mmary judgment
j udgment hearing, however, Apple agreed
ag rcccllo
to withdraw its reliance on
o n claim 11
I I for
any purpose. See ECF No
No.. IlOS
0577 at 2. The Court therefore DENTES
DENI
without
wit hDut prejudice Samsung's
SamslIng's
motion for summary
su mnutry judgment as to claim II of
oflhc
the ' 414 Patent.
Pll tent.
1
1 Apple
A pple initially
initia lly challenged
cha llengc d lhe
the timeliness of Samsung's
Sam'\ung's reliance on these discrete components
compone nts of
of
Mobilc 5.0, see Apple Opp'
dropped
Lh iss timeliness objection.
Windows Mobile
OPP' n
I1 aL
at 8-10,
810. but subsequently
subscquent ly dro
pped Ihi
objection,
see ECF
BCF No,
No. 1056,
I056, Exhibit A at II..
'The
~ The parties
pu rtie!; agree that
thaI a " thread" is "a
Ita series
se r ie~ of steps lhat
that a computer
co mputer process needs to
to comple
com ple te."
See ECr
ECF No.
No. 333
331 at 19; Samsung's Reply at 7; see
.)'ee also
(llso ECP
EC F No. 333 at 19,
l9, n.6 (noting that the
24
Cnsc
Cl1scNo.:
No.: JJ2CY00630-LHK
2-CV-00630-LHK
as
OI(DI;I{
O I~DER GRANTtNG-rN-PAR,T
(jRAN TINGIN-PAR'1 AND DENY IN OINPART
G-tNP ART /\PPLWS
AI'Pt.cS MS.I
M ::i.l /\Nl)
AN]) DENY
UENY lNG
ING SAMSUNU'S
SAMSUNli'S MSJ
A174
Confidential
Case: 15-1171
e5:12-cv-00630-LHK
s eS:12-cv-00630-LH
K Documentl151
Document1151 --sEALED_.
"SEALED*
Flled01f21/14
FiledOl f21114 Page25
Page 2S of
of 49
'4114
4 Patent, Dr.
'4
Dr. Alex Snorcn,
'noren, testiriecl
tes tifi ed al
at deposition
dCpOsiti on that his understanding
understand ing of"providing
of "provid in g a(l thre
thread"
ad"
2
2
is to "cause[]
th e generation
thrend,'' ECF
I082-6
"causeD the
gcnernti on of the lhrend,"
Ecr N().
No. 1082
-6 at
a1 300,
300. yet Sam sung's expert
31
conceded that
that1hc
the sy nchronization
nchroni zati on comtJonents
components in Wi
Windows
ndows Mobile
Mobil e 5.0 do not "'createD
"'create !] or
instantiatcn
insta ntiatc[l a threa d,'"
d,"' App
Apple's
le's O
Opp.
pp. at II (quoti
(quoting
ng depositi on of Jcffi'cy
Jeffrey Chase
Ch ase at 239 (EC F No.
N o.
I On
073 -1l 1)).
l)).
Whether Lany
111y of lhc
the Windows Mobile 5.0 synchronization
ponents identified
sy nchronizatioll com
componcnlS
identifi ed by
Sarnsung
laimed
oni~ation
thread as
claim
(us per
S aU1 s11 ll ~ provide
pr ovide the ccla
imed synchr
sy nchroni
zat ion processing thread
as required
requ ired by clai
m 20 (as
I I) is al\ qttCsLi
(jllc.-;\ ion
on off(l
of fact
c\ for the jury .._Samsung contends thatlhosc
thnt lhosc components ncccssnrily
necessarily
claim 11)
9g
""provid[e
providle]"
l" a(I syncluonizallon
synchrooizaLion processin
processingg, th
thread
read because
becnuse they
Lhey indi
ir r,d;';put.bly
Samsung
Smnsung MSJ at 15
IS (citing Chase SJ D
Decl
ccl...
,1 85 -9 1, 97
97-98),
-98), nnd
and
10
~
II
=:..::c:
12
12
11,!97-98).
agctin,
seck iIu construction
the term
term at issue, leaving Ihcj
the jury
97 -98). Once agai
n, the patties
part ie s did not seck
const ruction of
oflhe
ury
13
13
to aapply
pply the plain
plnin ond
~nd ord
ordinary
inary meaning
meanin g of
ofthnt
t'h:n tcrm
term to the accused
~ cc u sc d devices.
deviccs, Samsung
Sam sung has
ha s not
li! .5
14
established
csta bhshcd that
Ihul IIa reasonable
reaso nab le jjury
ury wou
would
Id ncccssanly
ncccssan ly fi nd
nd that a synchronizati
synchronization
on soft
software
"arc
s E
15
component
com ponent that
o:;, C
IG
limitation
limi taliOll thot
that thc
the .;:omponcnl
~:omponent 'provide(]"
" prov idc(]" the
lhc tluc,;ld
thread itself
ilscl ( Accordingly
Accordingly, Samsung's
S3 msung's motion
Illotion for
17
lldgm ent of invalidity

inval idity of
ofclai
clai m20
m 20 of thc
the ''414
4 14 Patent is DaNI
DFN IEO.IJ
ED. II
summary jjudgment
<;: ..$2
0
uu
..... .......
(J
' i:
o .~
,a
Samsung Reply
Rcply at 7 (citing Chase Dccl.
Dcc!.
discloses the claim
Cli
f/).!:
c
.=
z
c:
Cl
::J.;:
....
18
18
E.
19
The '959 Patent,

P3lent, e nt
ntitled
illed "Un
" Un ivorsa
;versa l ln
In Lcrface
terface for Relri
Retri eval
cva 1ofl
of Informution
nfnrmul i 011 in
inaa Computer
The '959
' 959 Patent (U
(Unified
nifit'd Sctuch)
SC:II'ch)
20
Sy.stem,"
System ." was filud
J1Icd on Jonuary
January 5.
5, 2000. and issued on January
Ja nuary 25.
25.2005.
2005. It
ll is the predecessor patent
pa tent
21
to
10 the '604 Patent that was
wa s at issue at the prclimtnary
pre limInary inj
injunction
unction phase:
phase of this case. The '959 Patent
P,llent
22
23
24
25
2S
26
2G
27
27
28
1996 editi
ed iti on of the lIEEE Standard
Stlnd~rd Dictionary
Dic liOno.ry of Elec
El ec trical
tri c~1 and EleClron
Electronics
ics Terms
T crm s defines au
''thread''
"thread" as '''n
'"a single
si ngle flow
now of
of control in a process
process'' or program ."),
.'')
9
q In its
its oppos ition
iti on bri
brief,
ef, Apple
Appl e contend
contendss that,
tha t, not only should Samsung's moti
motion
on be den
denied,
ied, but
summary judgment
antici
pate shoul
d he granted
in Apple's
j ud gment that
thA t Windows Mobil
Mobi lee 5.0
5.U docs not an
ticipatc
shou ld
grant cd in
App le's
fa vor. Apple Opp'
O pp' n
n.,\
at 7. Under
Und er Rule
Rul e 56(1)(
56(f)( 1),
I), a Court
Coutt may grant
gra nt summary
sum mary judgment
j udgment for a
movantt 11a ftcr
ivingg notice
non
ficr ggivin
noti ce and a reasonable
rca sonil blc time
ti me to respond. Grants
Grunts of summary
su mmary judgment to a>l
nonmovan
nonmoving
nonm oving party.
party, howe
however,
ver, are "generally disftwored,
disfavored, because they risk depriving a losing party of
adequate
adeq uate notice and
and opportunity
opportun ity to oppose sum
summary
mary jlldgme
j udgment.''
nl." MikkC'/sen
Mikke lsen Graphic Engineering,
inc. 1\'.'. Zund Am.. Inc.
Inc.,, -.. Fed. Appx
Appx.. --, 20
2013
13 WL 4269406.
4269406, at *7 (Fed . Cir. Aug. 16, 20 13). Ap
Apple
ple
could
moved for
udgment
cou ld have movcd
fo r summary
sum mary jjud
gme nt on this
thi.$ ground, but chose not
nOl to, despite moving on a
host of
attempt
orother grounds. Tl1c
Tl1e Court declines to con~ider
co ns ider Apples
Apple 's altem
pt to Sllpp
supp lement
leme nt its summary
on lhtough
jjudgment
udgment moti
mOtion
through its opposition to Sam sung's
sling's motion .
25
2l
CaseNo.;
Case No.: 1'2-CV-006J
12-CY-UOOJOI,J-11\
O-I,HK
ORDER GRANTINGI
GR ANTINOIN?ART
NPART AND DEN
DBNYIN
YINGIN
O LN-PART
PART APPLE'S M
MSJ
SJ AND DENYING
DENYI NGSAM
SAMSUNG'S
SUNO'S MSJ
A175
Case: 15-1171
Document: 40
Page: 268

*SEALED*
Filed: 03/06/2015
FiledOl/21/14
is directed to a unitary search interface that can access information in a variety of locations-such
locations- such
as a local hard disk, a local network server, and the Internet-and

Internet- and that can use different
ditferent search
algorithms to list the most relevant candidate results. More specifically, the '959
' 959 Patent is directed
to "a universal
un iversal interface which uses a plurality of heuristic algorithms to identify an item of
information
in forma ti on (e.g., document, application or Internet
Internel web page) in response to at least one
information descriptor." '959

' 959 Patent,
Patent, 1: l10-14.
0-14 .
oflhe
the '959 Patent contended that they overcame two different problems in
The inventors of
the prior
pri or art relating to a computer user's need to search quickly
quick ly through vast amounts of
information
informat ion for relevant results. First, the
th e inventors contended that the prior art did not provide "a
10
single interface ....

, . to allow a computer user to find a needed or desired item of information from
11
II
among all different types of information storage systems." ld.

Jd. at 2:5-8. For example, some
:::s:-=
(lj
o0=:..::::
12
computers had one interface for searching

sea rching for fi les stored locally on a computer, see id. at 1:23-34,
-~
(j 0
u
0
13
and a different interface to access worldwide websites and interact with search engines provided
-.-"" ...-"....
14
by the website, see id. at 1:46-53.

I :46-53 . But the inventors contended that there had been "no combination
comb ination
~
.!! E
15
of desktop :find
find routines . .. and Internet browsing routines." Jd.
Id. at 2:4-9. Thus, according to the
00'
"'~
"
t
16
'959 Patent, a user had to access a different interface to search for different types of information
=
~
17
in format ion's stored location.

depend ing on that information's
depending
"
18
'E
t: <B
..8
(lj
uu
UU
.............
-'i:.......
- .-....U_
;...
(.)
Q .~
~.~
~Cl
""c:.:l
!J
z: ~
o
~
0
0
.-::Z
." Z
::0-5
P.S
....
00
"-
Second, the patent states that the prior art lacked sufficient ability to effectively filter
19
search results, "fail[ing] to significantly

sign i ficantly reduce the time and efJort
effort a user expends to identify and
20
retrieve
retr ieve useful information." Jd.
Id. at 1:37-39. The inventors of
ofthe
the '959 Patent identified a need for
2l
21
technology
teclUlology that "allows the computer to he!
hel p the user determine ...
. .. additional criteria or to
22
automatically provide
prov ide additional criteria,
cri teria, so that search results have a higher percentage of items
23
intere st to the user." IId.

d. at 1:61-65.
1:6 I -65.
that are of interest
24
Figure 2 of th
thee '959 Patent discloses a "retrieval manager" component that receives search
searc h
25
fo rm of text or speech, and dispatches

d ispatches that input to a plurality of
terms from the user, either in the form
26
"plug-in
"p lug-in modules." Id. at 3:63-4:7. Each of these modules has
ha s an "associated
" associated heuristic
heurist ic which it
27
employs
em ploys to locate information that corresponds to the user input."
input" Jd.
Id. at 4:8-10.
4:8-1 O. For instance, one
28
module may be configured to search th

thee titles of local documents that match the user input;
26
12-CY-00630-LHK
GRANTTNG-IN-PART AND DENYING
DENYINGfN-PART
tN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
MS J
A176
Case: 15-1171
Document: 40
Page: 269
se5:12-cv-00630-LHK
Document1151 'SEALED'
*SEALED*
se5:12-Gv-00630-LHK DOGument1151
Filed: 03/06/2015
Filed01/21/14
another may be configured to index and search the contents of locally stored files;
fi les; a third may
2
search a list
Jis! of most recently accessed files, applications, and web sites for a match; and a fourth
may employ a search engine to locate

locatc Internet web pages that match the user input. See id. at 4:6-
19. The patent teaches that the results from the modules are returned to the retrieval manager,
whi
which
ch in turn presents the results to the user, potentially after employing "additional heuristics to
determine which results are most relevant." !d.

/d. at 4:23-26.
7
8
9
10
s::
1II1
t:<2
t:: ..2
::;I :":::
12
ro
>-.
E
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o
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o
ro
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<J 0
.... .-"'~ ......."....
Q.':!:
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--.--
receive an information identifier;

provide said information identifier to a plurality
plura lity of heuristics to locate
information in the plurality
plura lity of locations which include the Internet and
local storage media;
13
14
display a representation of said candidate item of information.
-",."
"
16
=
0 <I">
17
17
P.S
"'.s>-.
"0
p..
"-
24. A computer readable medium for locating information from a

plurality of locations containing program instructions to:
determine at least one candidate item of information based upon the

plurality of heuristics; and
1-<
+-'
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U
(.)
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c
~
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$:v
oo...c
"'~
"
't
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Z
Claims 24 and 25 are at issue. Claim 24 reads as follows:

follows:
15
18
19
20
21
22
23
24
25
26
27
28
Clai m 25 reads,
Claim
where in the information
informat ion
25. The computer readable medium of claim 24, wherein
identifier is applied separately to each heuristic.
heuristic .
1.
Apple's
A pple's Motion
M otio n for Summary
Su mm a r y .Ju
Judgment
dg ment of No Invalidity
rnvalid ity
Samsung contends that asserted independent claim 24 and dependent claim 25 of

o f the '959
Patent are
arc invalid as anticipated or obvious based on two different products that Samsung asserts
were "known
imed in the '959 Patent,
"k nown or used by others in this country" before the invention cla
claimed
see 35 U.S.C. II 02(a) (2006), or ""in

in publ
public
ic use or on sale in this
th is cou
country"
ntry" a year before the filing
tiling
'95 9 Patent, see id. I102(b).
02(b). See Declaration of Martin Rinard, Ph.D. in Support of
date of the '959
Samsung's Opposition to Apple's Motion for Summary Judgment Concerning U.S. Patent No.
6,84
7,959 ("Rinard Dec!.") at
6,847,959
at~~
"1112-124,
112-124, Exs. 1-2 (ECF Nos. I1104-3,
I 04-3, 855-7). In
In particular,
Samsung relies on AppleSearch,
ch, accord
ing to Samsung's expert for the '959 Patent, Dr.
App1eSearch, whi
which,
according
Martin Rinard, was "a commercial product sold by Apple [that] allowed users to search for
information stored on both their local computer and a remote W
AISS [Wide Area Information
WAI
27
Case No.: 12-cv00630-LHK
12-CV -00630-LHK
A177
Case: 15-1171
Document: 40
Page: 270
se5:12-cv-00630-LHK
se5:12cv00630LHK Document1151
'SEALED'
Filed: 03/06/2015
FiledOl/21114
FiledOl/21/14 Page28
Page2B of
01 49
Server] server across the lnternet,

Internet, and return results in a si
single
ngle unifi
unified
ed interface."
interface.'' ld.
Id. Ex. I at I.
2
relies
AIS system itself,
itse l [,which,
"was a uuniversal
niversal
Sarnsu
ng also re
lics on theW
the WAIS
which, accordin
accordingg to Dr. Rinard, ""vas
Sam
sung
search system avai

lable
Id. Ex. 2 at 2; see Expet1
Expert Report of Martin
Man in Rinard,
availab
le throughout the 1990s."
19905." Jd.
Ph.D.
Ph.D . Regarding the Validity afC
of Claims
laims 24 and 25 of U.S. Patent No. 6,847,959
6,847 ,959 ("Ri nard Rep.")
5
6
.~ 300-39
300~39 (ECF No. 1108-9). To support Samsung's invalidity claim, Dr.
Dr. Rinard built and
WAIS
AJS products.
configured systems
sys tems using the AppleSearch and W
Apple contends
conte nds that it is entitled to summary judgment that neither AppleSearch
App leSearch nor WAJS
WAfS
anticipate or render obv

obvious
ious claims 24 and
find 25 of the '959 Patent because Sa
Samsung
msung cannot
cantlot meet its
burden of demonstrating that Dr. Rinard

Rinard's
' s configured AppleSearch
AppleScarch and WAIS
WA IS systems were ever
10
known or used prior to 2000. Among other things.

things, Apple points to Dr. Rinard's
Rinard 's deposition
II
testimony, in which he was unable to provide a particular example of such prior use, despite
t: ..E
~
:= :..:
0o cu
=:.=
12
building a demonstration system that he asserts shows an example of what the public used during
....
- <+-.
~
13
the
th e critica
cr itica l time. See Deposition of Martin Rinard, Ph.D.
Ph .D. ("Rinard Tr. "), 177: II 0-188:23,
O~ 188:23, 203
203:: 17-
- .-tl::
14
205:10,21
16:6,223:
(EeF No.
No. I10872).
087-2).
205: I 0, 2 1 1:3-2
I :3216:6,
223: 14-226: 16 (ECF
..,Q
~Cl
~
~ E
15
cu
E
e
uu
UU
<J 0
"
ti
~ .~
' :
..~
~
~ ~
.~
A
!S
~
jury to conclude that these

Samsung responds that it has provided sufficient evidence for aajury
0\)
4:1
V>-"
{/)'
.,,;::~ Z"0
16
systems were on sale and in public use pri

or to the critical date. The Court agrees. Even the
prior
."l:::
c Z4:1
.
;=;l;3
~-S
17
Sa msu ng's position. For example,

example.
deposition testimony
te stimony on which Apple relies provides support for Samsung's
..."
18
Dr. Rinard testified

w]hen you purchased AppleSearch
that " [wJhen
App leSearch 1.5, the box came with
te st ified that"[
19
documentation
AJS servers," id. at 179,
you look at
con nect to W
WAIS
179. and
a nd that "[i]f
"[i ] Fyou
documentati on that showed how to connect
20
repon, if you look at the conte

contents
nt s of the free- W
WAIS-sf-2.0.65
A fS -sf-2.0.65
the documentation 1I cite in my repot1,
21
distribution, if you look at all the evidence that shows people using these systems, if you look at
22
the documentation that comes with the system,

you'lll I see instructions for building and configuring
system , you'
23
system
locn l databases
dutabases efficiently in combin
com bin ation with remote
rem ote
systemss to include the ability to access local
24
databases on the Internet

Internet' to satisfy the limitations
lirnil<lIions of
oFthe
the asserted claims," id. at 214-15.
214-15 .
....
00
C-1-.
25
Apple' s argument that ""Samsung

Apple's
Samsung has absolutely no evidence that anyone at any relevant
26
time actually knew 0/

of or used either system configured
co nfigured to have
ha ve the claimed funct ionality," Apple
27
Reply at 9 (emphasis in original),

orig inal), simply ignores the circumstantial evidence Sam
Samsung
sung has
28
{he documentation on which Dr. Rinard relies.

provided through Dr. Rinard's testimony and the
28
Case No.:
No.: 12-CV-00630-LHK
ORDER GRANTING-IN-PART Ai'ID
AND DENYINGDENYING-IN-PART
IN-PART APPLE'S MSJ AND DENYING
DENY ING SAMSUNG'S MSJ
A178
Case: 15-1171
Document: 40
Page: 271
se5: 12-cv-00630-LHK Document1151 'SEALED'

se5:12-cv-00630-LHK
*SEALED*
Filed: 03/06/2015
Filed01/21/14
Circumstantial evidence can be just as probative

proba tive as direct
d irect evidence,
ev idence, if not more so. See Desert
2
Palace, Inc. v. Costa, 539 U.S. 90, 100 (2003) ("The reason for treating
treat ing circumstantial and direct
evidence alike is both clear and deep rooted:

rooted : 'circumstantial
'c ircumstant ial evidence
ev idence is not only
on ly sufficient, but
may also be more certain, satisfying and persuasive than direct

evidence."')
di rect ev
idence."') (quoting Rogers v.
Missouri Pacific R.
Co. , 352 U.S.
l7 (1957)). Drawing all reasonable inferences in
R Co.,
U.S . 500, 508, n.
n.17
Samsung's favor, aajury

jury could rely on Dr. Rinard's
Rina rd's testimony, as well as the documentation
documentat ion he
references, to conclude that his

h is demonstration systems accurately represent systems that were
actually known to and used by the public prior to the critical date. See also Rinard
Ri na rd Tr. at 177-88,
204,212-13.
204,2 I 2-13 . Accordingly, Apple's motion for summary
sum mary judgment that the App
AppleSearch
leSearch and WAIS
WA IS
10
.,;
.!:!
II
t:<E
t::::.:::
<2
::1 :"=
12
o ro
uu
UU
-.-- .--.
(j ~
0
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...c-
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.E
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lo.
0
......
C)
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Q.~
-"
~Cl
"'a
....
~
~ c
~
"
10
systems do not invalidate claims 24 and 25 of the '959 Patent is DENIED.
DEN IED.lo
2.
Samsung's Motion for Summary

SummaryJud
Judgment
gmcnt ofIndctinitencss
oflndefiniteness
Samsung contends that it is entitled to summary judgment that claims 24 and 25 are invalid
inva lid
13
as indefinite
indefin ite based on those claims' use ofthe
of the term ""heu
heuristic."
rist ic." Under 35 U.S.C.
U.S.c. ll2(b),
I 12(b), claims
14
must "particularly
. ...
ou t and distinctly claim[]
claim[J the subject matter which the inventor ..
" pmticularly point[] out
15
regards as the invention."

inventi on ." A claim that fails
fai ls to meet this requirement,
requ iremen l, called the "definiteness"
"defin iteness"
16
requirement,
e.g.,, Datamize, LLC v. Plumtree
PLumtree Software, Inc.,
Inc., 417 F.3d 1342,
1342, 1356
requi rement, is invalid. See, e.g.
17
(Fed. Cir. 2005) (affirming summary judgmen

judgmentt of invalidity
inva lidity based on claims'
cla ims' use of the term
18
"aesthetically pleasing").
pleasing"). The
Th e purpose of the definiteness
defin iteness requirement is "to ensure that the claims
19
delineate the scope of

ofthe
the invention using language that adequately notifies the public
publ ic of the
20
patentee'
patentee'ss right to exclude." !d.
ld. at 1347. "'The
"' T he statutory requirement of particularity
particu larity and
21
clea rly distinguish what is claimed from what

distinctness in claims is met only when [the claims] clearly
22
went before in the art and clearly circumscribe what is forec

foreclosed
losed from
trom future enterprise."'
enterp rise.'" Jd.
Id.
2)
23
(quoting United
UnifedCarbon
Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942) (alteration
(altenltion in
24
original)).
(!)
1/)...C:
"'
~
",
t:
~t
qj
0
:t::Z:
."
Z
cc: (!)
i:i;S
"'-5
.....
0"
w..
25
26
27
28
10
10
Apple initially
initial ly contended that Samsung should be precluded from
fro m relying on the AppleSearch
WArs
fai led to properly disclose its
and W
AIS systems as obviousness references because Samsung failed
Apple
le MSJ at 18-19.
18-1 9. The parties apparently have resolved that
reliance on those systems. See App
dispute. See ECF No.
No . 1056, Exhibit A at l.
I.
29
Case No.
No.:: 12-CV-00630-LHK
12-CY-00630-LHK
ORDER GRANTJNG-IN-PART
GRANTrNG-!N-PART AND DENYING-IN-PART
DENYING-!N-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A179
Case: 15-1171
Document: 40
Page: 272

"SEALED"
Filed: 03/06/2015
Filed01/21/14
The definiteness
defi niteness requirement does
docs not compel
co mpel absolute cclarity.
larity, See Star Scientific, Inc.
In c. v.
v.
2
R.J
Reynold~ Tobacco Co., 655 F.3d 1364, 1373
[373 (Feel.
(Fed. Cir. 20l
2011).
l ).lnstcacl,
[nSlcnd, ""[a'!
[al claim is indefinite
R.J. Reynolds
only when it is not

/1ot amenab
amenable
le to construction or insolubly
inso lubly ambiguous." Biosig
Bio.~ig Instruments,
flls/ruments, Inc.
In c. v.
Nautilus,
Naulilus, Inc.,
Inc. , 715
7 15 F.3d 891,898
891 , 898 (Fed. Cir.
C ir. 20 13) (internal quotation marks omitted). To prevail
on its indefiniteness argument, Samsung must

Inus! show that "one of ordinary
o rdinary skill
sk ill in the relevant art
di scern the boundaries or

of the
lhe claim based on the claim language, the specification,
spec ificatio n, the
could not discern
prosecution history,
hislory, aand
nd the knowledge in the relevant art." Haem
Haemonetics
onetics Corp.
COlp. v. Baxter
Boxle!"
I 0).
Healthcare
Hea""care Corp., 607 F.3d 776, 783 (Fed.
(Fed . Cir. 20
2010).
Types of
tenns that
oflcrms
tltat typically trigger
tri gger indefiniteness
indc finitene ss concerns include
inc lude means-plus-function
10
elements that may lack "corresponding structure in the specification," numeric limitations that
thai fail
11
II
to identify "which of multiple

mu)tjple methods
met hods of measuring that number should be used," terms that lack
12
a proper antecedent
antecede nt basis, or terms that may be "completely dependent on
o n a person's
person" s subjective
- .-J:lb
.:a
.f!!
13
Hallib urton Energy Services, In c. v. M-1

M-I LLC,
LLC, 514 F.3d
F.3 d 1244, 1249 (Fed. Cir. 2008).
opinion." Halliburlon
14
Add
itiona l term
Additional
sometimes
scrut iny, although not necessarily
termss that someti
mes trigger scrutiny,
ne cessarily a separate category
cntegory
~E
~ E
15
from
[Tom the preceding list, include "word[sJ
"word[s l of degree" or limitation
limitationss defined
delined in "purely functional
U')"
"'"'
." t:
~
v 0
0
16
terms." Enzo Biochem,

Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332-33 (Fed.
(Fed. Cir.
C ir. 201
2010).
0).
(I)
17
..~
~
t:t:::::.::
<E
S
:::1:'=
0o <1:1
uUU
u
.,. 4-o
(J
0
u ~
ti
,t: .~
. -~ o+J
.Q
.!::::!
~ .~
~~">0
~Cl
.f
(I)
!lv
:::;:c zZv
;:J.g
::>;;
.....
0
j;.L,
Definiteness
law, see Kinetic Concepts,
Definiten ess is a question of
oflaw,
Concepls, Inc.
In c. v. Blue Sky Medical Group,
Group,
18
In c., 554 F.3d 1010,

10 I 0, I1022
022 (Fed. Cir. 2009), lind
and the accllsed
accused infringer bears the bllrden
burden of
Inc.,
19
demonstratin
demonstrating
g indefiniteness by "clear and co
convi
nvincing
nci ng evidence,"
evide nce," Haemonetics,
Ha emonelics, 607 F.3d at 783.
783 .
20
In
1n this context, the "clear
"c1ear and convincing evidence" standard
sta ndard is not "a rigid evidentiary
evid entiary test,''
test," but
21
"a useful
usefu l reminder to courts" that,
thaI, where substantial dou bt exists about whether aII term is
22
indefin ite, the general

ge neral presumption
prcsumption of patent
patcn t validity controls. Block v. Community Nutrition
Nu/rilion
23
Institute,
Ins/ilute, 467 U.S. 340, 351
35 1 (1984); see id. (explaining
(ex pluining the meaning ofthe "clear
"c lear and convincing
24
evide
nce" standard in a!I different
ev
idence"
differe nt lega l context); Exxon Research & Eng'g
Hng 'g Co. v. United States, 265
25
F.3d 137
1371,
1375
ir. 2001)
I , 13
7 5 (Fed. C
Cir.
200 1) ("[W]e accord respect to the statutory presumption
pre sumption of patent
26
va lidity.").
27
28
30
GRANTING-iN-PART AND DENYING-IN-PART
DENYING-iN-PART APPLE'S MSJ AND DENY
DENYING
ING SAMSUNG
SAM SUNG 'S MSJ
A180
Case: 15-1171
Document: 40
Page: 273

'SEALED'
a.
2
,..,
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Fi led01l21114 Page31
Pag e31 of 49
Claim Construction
Construclion
"General princ
principles
iples of
ofcJaim
claim construction apply when determining indetiniteness."
indefiniteness." Biosig
.:l
Instruments,
P.3d at 898. Significantly,
Sig nificantl y, the Colllt
Court has already construed the term "heuri stic
st ic
Ins/rumen!s, 715 F.3d
algorithm" in the context of Apple's preliminary injunction motion, which concerned a related
ruling
ing on
patent with a virtually identical specification. See Apple, 877 F. Supp. 2d at 863-66. In rul
that motion, the Coutt

Court noted that Apple was "less than clear as to how, exactly, it defines
'heuristic"'
'heuristic'" and that"[t]he
that "[t]he specification is not particularly
particu larly illuminating in this regard" either./d.
either. Id. at
"heu ristic algorithm" as "a search algorithm

863-64. Nonetheless, the Court construed the term "heuristic
that employs some 'ru

le of thumb' and does not consist solely of constraint satisfaction
'rule
10
866. Neither party contends that the Com1

Court shou
should
ld construe "heuristic''
"heuristic"
parameters." Id. at 866.
II
II
differently in
Court draws from
fro m its prior construction
construct ion and
in any substantive respect. Accordingly, the Comt
:= :..::
=
:..:::
12
cons ist solely

construes "heuristic" in the '959 Patent to mean "some 'rule of thumb' that does not consist
;:;
r..l 0
13
of constraint satisfaction parameters."
Cll
14
d
.~
t: ~
<2
O
o . Cil
d
uu
U
_.......U
.. 0--.-
u
..... "
t:
't:
....
Q .~
.~
Q
-.
Cllo
b.
Is the Court's Construction

Co nstruction Insolubly Ambiguous?
15
15
Having settled on a construction, the Court

Cou rt has taken an important fifirst
rst step in the
"'
'"d t
0
16
indefiniteness analysis. "Ifthe

"If the meaning of the claim is discern
discernible,
ible, even though the task may be
o "
o.s
::J-5
17
formidable
fo rmidable and the conclusion may be one over which reasonable persons will disagree, we have
is"0
18
held the claim sufficiently clear to avoid invalidity

inva lidity on
all indefiniteness
inde li niteness grounds." Halliburton,
Halliburton, 514
5 14
19
F.3d at 1249 (internal quotation

quotat ion marks and aalterations
lterations omitted). Nevettheless,
Neverthe less, the Federal Ci
Circu
rcuit
it
20
has made clear that a term can be indefinite even if it is susceptible

suscept ible to a construction.
construction . "[I]f
" (I ]f
21
reasonab le effot1s
efforts at claim
c laim construction result in a definition
defin ition that does not provide
prov ide sufficient
sumcient
22
clar ity to inform ski lled

lIed artisans of the bounds of the claim,
c laim, the claim is insolubly
particularity and clarity
23
lid for
ambiguous and inva
invalid
fo r indefiniteness."
indeli niteness." Star Scientific, Inc. v. R..J
R..!. Reynolds Tobacco Co., 537
24
137
711 (Fed. Cir.
Cif. 2008). The Court must therefore determine whether its construction of
F.3d 1357, 13
25
"heuristic" is insolubly ambiguous.
~
.!!
~
c0
"'-
oo..c
"
-
<1)
"~ 0
..~
-::: Z
<1)
'"
(..1...
26
"provide(sJ sufficient clarity delineating the

The Coul1
Court is satisfied that its construction "provide[s]
27
of the claim to one skilled in the art." Biosig Instruments,

instruments, 715 F.3d at 899. Accord ing
in g to
bounds ofthe
28
the Coutt's
Cou rt's construction, the accused computer instructions must allow searching using a "rule
"ru le of
31
3I
12-cv-00630-LHK
GRANTING- IN-PART AND DENYIN
DENYING[NPART
G-IN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A181
Case: 15-1171
Document: 40
Page: 274

*SEALED*
Filed: 03/06/2015
thumb" that
thai is "not ... solely [through] constraint satisfaction parameters." Under this
22
construction, a search that, for example, returns results based

b.lsed solely on whether the author of
oraa
document matches a user-provided input (e.g., family

klmily name "JOBS" and given
gi ven name beginning
with "STE") would not be a heuristic because it uses "solely constraint

cOl1strainl satisfaction parameters."
See Apple, 877 F. Supp. 2d at 866 (discussing U.S. Patent

Patent No. 7,020,670 (the "'670
''' 670 Patent"),
Patent" ), prior
art to the ''604

604 Patent)~
Patent); '670
' 670 Patent at
al 15:15-24.
15: \5-24. That distinction provides sufficient clarity to avoid
77
an indefiniteness problem.
problem .
8
9
Samsung does not appear to dispute that searches such as the one just described would fai
failI
to qualify as the claimed heuristic. See Samsung
Sam sung Reply at 10. Nevertheless, Samsung, relying
10
heavily on the Federal Circuit's

Halliburton , contends that the term is indefinite
Circu it' s decision in Halliburton,
.~E
II
11
because the precise boundary between what is and what is not a heuristic is insufficiently
=:.=.
.
tiS
12
discernible.
fo r two
discernible . The Court concludes that Samsung's reliance on Halliburton is misplaced for
.- -.;-.s
13
reasons.
14
,.,Q
~O
~
c::
~
E
~ M
15
15
proposed should be construed to require, among other things, a gel that "easily transitions to a
16
liquid
force. " 514 F.3d at 125
\2500 (emphasis added)
added)~; see Enzo B
Biochem,
iochem,
liqu id state upon the introduction of force."
17
lnc.
Corp.,, 599 F.3d at 1332 ("When a 'word of degree' is used, the coutt
court must
Inc. v. Applera Corp.
18
determine whether the patent provides some standard for measuring that degree.") (internal
19
of it
quotation marks omitted). Here, neither the term "heuristic"
" heuristic" nor the Court's construction orit
20
involves
in volves a word of degree, pure functional language, or other danger sign that typically triggers
21
indefiniteness
concerns. Although not conclusive, the Court looks to this categorization
categoril<ltion as an
indefin iteness concerns.
22
important
im portant threshold indicator as to the level
leve l of definiteness the term must provide.
t:<B
t: ..9:
::I:'::::
0Q
uu
UU
...,.<+-<
-~
(J 0
"
.~
lo.. <)
u
~.~
.s u
{/)'
Vl~
"'o
'" 0
.~z
.~Z
-
(l)
.=
);;;).S
;0-5"
(l)
0
C-t..
"-
23
First,
First , Halliburton involved a "word of degree," namely."
namely, "fragile
fragile gel,"
gel ," which the patentee
Second,
Second, and more crucial, in Halliburton,
Halliburton, the term at issue ("fragile gel")
gel " ) was the only
24
element distinguishing the claimed invention

invent ion frorn
from the prior art. See 5514
14 FJ
F.3d
d at 125
12533
25
("[I]ndependent
claim s 1-3
I ~3 and 5 are distinguishable
distingu ishable frorn
from the prior art only because they are
(" [T]ndependent claims
26
'fragile
'frag il e gels."')
gels. "').. The
T he Federal Circuit found this point "important" to its decision because "in
" in
27
attempting to define a claim term, a person of ordinary skill is likely to conclude that the definition
28
does not encompass that which is expressly distinguished as prior art."

art. " Jd. at 1252. The patentee in
32
Case No.:
No. : 12-CV-00630-LHK
12-CV-0063 0-LHK
APPLE ' S MSJ AND DENYING SAMSUNG'S
SAMS UNG'S MSJ
MSJ
A182
Case: 15-1171
Document: 40
Page: 275

*SEALED*
Filed: 03/06/2015
FiledOl/21114
Halliburton, however, tailed

failed to "distingtlish
"di stingui sh how the'
the 'fragile
frag il e gels' claimed
c laimed in the ... patent
performed
disclosed
perform ed differently
di fferent ly than the di
sclosed prior
pri or art," id. at 1253, a tailure
failure the Federal
Federa l Circuit found
fo und
33
to be "fatal" to th
thee claims'
claim s' validity.
val idity, Jd.
ld.
.~
E
t: t8
r.E
::s :.=
::I:":::
0o
uu
UU
...
.
.
..
I.J 'o
0
~
~
:; '5
:~~
0: .!!J:
.~
Here,
Here. in contrast,
con tra st, the precise boundary of the term "heuristic" is less important because
Apple
the prior art. During prosecution,
App le relies
reli es on other elements of the claim to distinguish
d istingui sh it fiom
from ihe
Apple relied heavily

heavi ly oonn the primary prior art
art's
's failure to search both the Internet
Imernet and local
loca l storage
77
media. See ECF No. 1I 062 at APLN

APLNDC630-0000041332
DC630 -000004 \ 332 ("[Tlhe Blumenfeld et al. publicati
publication
on
contains
conta ins no disclosure
di sclosure of locating information
informati o n in any other location than tht:
the Internet.").
Int ernet."). Apple also
high!
highlighted
ighted the
th e prior art's
a rt 's failure to provide a single search query to multiple types of searches.
sea rches. I[do
d.
10
("[T]
he search information (i.e., a search
("[T]he
sea rch string) input to [sic] via the interface in Blumenfeld el al.
ll
II
is not
nOI provided to more than one of the types of searches identified in the Action (i.e., Author,
12
Title, Subject, Keyword, ISBN and Boolean keyword ...

. . .).")(emphasis
).") (e mpha sis in original).
original ). To be sure,
su re,
13
13
A ppl e did rely on the "heuristic

" heuristic algorithm" limitation
limitati on in distinguishing
distingui shing the related ''604
604 Patent
Apple
14
fiom
fro m the prior art. However, Apple
Appl e fifiled
led th
thee app lication for the '604 Patent
Patent four
fou r years after it filed
,o
~O
~
E
~ E
15
for the '959

'95 9 Patent, and Apple
Appl e made its " heuristic
hemi stic aalgorithm"
lgorithm" arguments in prosecuting the '604
,, 1:
'Q
t:
16
Patent after
the '959
a fier Ille
'95 9 Patent issued. See Apple, 877 F.
F. Supp. 2d at 864-65 (discussing
(d iscussing statements
17
App le made to the

th e IlTQ
PTO while
whil e prosecuting the '604
' 604 Patent in 2007 and 2008). The
Th e Coun
Court is not
Apple
18
of any
aware ora
ny case issuing an
a n indefiniteness
indetlniteness ruling in an ancestor patent based on statements made
19
in a subseque
subsequent
nt appl
application.
ication. See Trading
Y;'ading Technologies
Teclmologies Jnt
Int 'l,
'I, Inc.
inc. v.
v. Open
Ope n E C!y,
OJI, LLC, 728 F.3d
F.3 d
20
1309, 1323 (Fed. Cir. 20 13)

J 3) (noting that prosecution
prosecuti on history estoppel and disclaimer "can
" can extend
21
ji-om
from a pa
parent
rent application to
/0 subsequent
subseque nt patents") (emphases
(e mpha ses added).
add ed). As for the earlier, '959 Patent,
22
Samsung has failed

fuiled to show that a stricter
str icter defi
nition of"heuristic"
definition
of "heuristic" is necessary to distinguish the
23
asserted claims
c lai nlS over the prior art or otherwi
otherwise
se all
allow
ow a person of ordinary sk
skiiIIll to appreciate their
th ei r
24
24
bounds.
bound
s."
A ~
::
~ <IJ
(/)..!:;
v,<IJ
;t::Z:
.~ z
cr:: cu
:::J-5
"'-5
....
0"
(..I..
"-
11
25
26
27
Finally, Samsung points to various witnesses having difficulty

diffi culty discerning what is and is not
a heuristic. See Samsung

Samsu ng MSJ at 19-21.
19-21 . Samsung,
SamslI ng, however, did not ask the witnesses to define or
11
Samsung
Sam su ng remains
remai ns free to raise the issue of indefiniteness
indefiniten ess again should the term "heuristic"
"heu risti c"
become central to Apple's attempts to distinguish
di stingui sh the '959 Patent from any prior
pri or art Samsung
Sa msung
asserts
assens at trial.
eriat.
33
II
28
Case No.:
No.: 12-CV-00630-LHK
12-CY-00630LH K
ORDER GRANTrNO-IN-PART
DENYINGINPART APPLE'S MSJ AND DENYlNOSAMSUNO'S
DENYING SAMSlJNG'S MSJ
GRANTINGINPART AND DENYTNO-!N-PART
A183
Case: 15-1171
Document: 40
Page: 276

*SEALED*
Filed: 03/06/2015
FiledOl/21114
apply the term in the context ofthe

of the claims. Whether a person of ordinary skill can provide a
22
II can
definition of"heuristic"
of "heuristic" in the abstract has littl
littlee relevance to whether a person of ordinary ski
skill
33
apply the Court's construction of

of"heuristic"
"heuristic" in the context of the claims
cla ims in light of the
44
specification. "[D]efining a word is often more difficult than grasping its meaning in a specific
context." Apple inc.

Inc. v. Motorola,
Molorola, Inc.,
Inc. , No.
No. ll-CV-8540,
II CY-8540, D.l.
O.I. 526 (N.D. Ill. Jan. 16, 20
2012);
12); see id.
(rejecting indefiniteness challenge to term "heuristic" as used in a different Apple patent that
77
claimed a "heuristic" to translate imprecise finger

finger gestures into actions desired by the user); In the
/he
Matter
Malter of
olCer/ain
Certain Electronic
Elec/ronic Digital
Digi/al Media Devices &
& Componen/s
Components Thereof, lnv.
Inv. No. 337-TA-796,
Order No. 16,2012 WL 754088 at *11

"'II (lJ.S.J.T.C.
(U.S.I.T.C. Mar. 6, 2012) (same). To establ
establish
ish
10
specificat ion[l,
indefiniteness here, Samsung must show that "the claims, read in the light of the specification[],
'E
11
II
notJ reasonably apprise those skilled

ski lled in the art both of the utilization and scope of the
[do not]
==-=
o=:..=
ro
12
invention." ShatterproofGlass
ShallerproolGlass Corp.
COI1). v.
v. Libbey-Owens Ford
Ford Co., 758 F.2d 613,624
613, 624 (Fed
(Fed.. Cir.
13
asserted claims
1985). Samsung has failed to provide clear and convincing evidence that the assetted
. ~ 1-o
~ .~
14
14
12
violate this contexHpecific
context-specific inquiry. L2
~ E
~~
.!l "
",.c
15
ro
,
~ tB
Q
u
UU
u~
.,.
~ '+<
........
" 0
.-........
- u
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~ .~
~ 0
;.... 0
~ .-
<llo.
.0
00'
.,, "
16
=~
17
~0
"
~z
:o:
ZQ
c "
0-5
P.S
h
~
0
Accordingly, the Court DENIES

DEN IES Samsung's motion for summary judgment of
indefiniteness as
a s to the '959 Patent.
F.
18
Apple's
Apple 's Motion for Summary
S ummar,), Judgment of Invalidity of the '757 Patent
(Multimedia
(M ultimedia Synchronization)
The '757 Patent, entitled

entit led "Multimedia
"Mu ltimedia Synchronization Method and Device," discloses "[a]
"La]
19
20
system ..
.... for
for synchronizing
synchron izing a multiplicity
mu ltiplicity of devices in a multimedia environment" so that users
21
can access
acce ss their multimedia collection (e.g., movies and music) in different locations. ' 757 Patent
Pat ent
22
Abstract. The application for the '757 Patent was filed on October 19, 2006 (as a continuation of
23
an application filed on June 19,200 I) and issued on August 18,2009.
24
25
26
27
28
12
The Federal Circuit faced the word "heuristic" in its preliminary injunction opinion in this case.
See, e.g.
e.g.,, Apple, 695 F.3d at 1380 ("Apple ... has distinguished [prior art]
att] Andreolli not just
because the [claimed]
l claimed] apparatus
apparatu s uses heuristics, but also because it employs different heuristic
algorithms
areas.").
a lgorithms in different search areas."
). Yet the Federal Circuit nowhere suggested that the '604
patent's repeated use of the word ""heuristic"
heuristic" created an indefiniteness problem. Although Samsung
did not raise an indefiniteness challenge
chall enge in that appeal, this Court notes that, ifthe
if the term were
insolubly ambiguous, the Federal Circuit very likely would have had more difflClLlty
difftculty concluding
that this Court's construction
constru ction of'"
of'"each
each"'
''' with respect to '"plurality
"'plurality of heuristic modules' ...
contravenes the plain terms of
ofthe
the claim ." !d.
Jd. at 1378 (emphasis added)
added)..
34
12
Case
CascNo.:
No.: 12-CV-00630-LHK
MS.J
A184
Case: 15-1171
Document: 40
Page: 277
se5:12-cv-00630-LHK
se5: 12-cv-00630-LHK Document1151 *SEALED*
"SEALED"
Filed: 03/06/2015
Filed01/21/14
Fi1ed01l21114 Page35 of 49
Claims It., 14,

0 r the
14 , and 15 are at
al issue. Of
th e three, claim lI is independent and reads as follows:
I.
t. A system for synchronizing devices in a multimedia
mult imed ia environmental
environmen tal
[sicj,
[sic], the system comprising:
3
at
It:ast one central storage
stora ge and interface device, wherein audio, video, or
III least
photographic data, including content information and content
conlent
management information, relating to at least one
o ne user, are stored in
digital form; and
4
5
at [east
least one
o ne zone, each zone having at least one zone speci fie storage and
interface device capable of storing or interfacing with information
stored in the central storage and interface device, wherein audio,
It:ast one user,
video, or photographic
photographi c information, relating
re lat ing to at least
contained within the zone specific storage and interface device and the
10 the zone
central storage and interface
interfa ce device, are updated in relation to
specific sforage
storage and intelface
interJace devices and the central storage and
intetface
inleliace device,
device , whereby the at least one user can be situated
s itu al'e d in any
one of
the zones and access the audio, video, or photographic
oCthe
information related to the at least one user.
8
9
10
.~
.~
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II
11
_o0 ......t'G
uu
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12
t:
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(.)
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13
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14
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15
-,a
13
'757
' 757 Patent, claim II (emphasis added).
added) . 13
t:
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.:"c= z2
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16
17
18
19
20
21
22
23
24
25
26
27
28
Apple asserts that it is entitled to summary

su mmary judgment that claims
claim s 1,
I , 14, and 15 of the ''757
757
Patent are anticipated by the '446 Patent, which
whi ch was filed in November 2000, 7 months before the
claimed pri ority date of the '757
'7 57 Patent. See 35 U.S.C. II 02(e) (2006). The '4
'446
46 Patent, entitled
enti tled
"Acquisition
Informationn Space," is directed to
"Acqui sit ion and Synchronization of Digital Media to a Personal
Personallnformalio
the problem
thnt arises when "a user ... acquire[sj
acquire[sJ and store[s]
store[s1 digital
di gital media on one
o ne networkprobl em that
stich as a persona
personall computer ... [at work], but ... desire[s] to transfer that
coupled device, such
infmrnation
thi s digital media on other network-coupled devices, such as
information and maintain a library of this
a personal
user's
's home, a notebook computer which
w hich travels
travel s with the user, or even
persona l computer at the user
a palm-top computer."
Patent teaches synchronizing
co mputer." '446 Patent at II :35-41
:35-41.. As a solution, the '446 Palentleaches
ofinforillali
information"
o n" (wh
(which
ich the patent refers to as the individual's
individual 's
"an
user-defined set of
" an individual's
individual 's user-detined
" personal information space") to "any

" any one or
Or all of the devices coupled within the user'
user'ss space,
spl:lce,
including persona
Id. at
al 5:4-16,9:14-23.
5:4-16, 9: 14-23. The
personall computers, PDA' s, automotive PC's, and the like." !d.
'446 Patent "cross-reference[s] and incorporate[s]
incorporate(s] by reference ...
.. . in their entirety" three
13
I ] The Court has construed the term ":wne

"zone specific storage and interface device" to mean 'a
" a storage
and interface device that resides in an area, such as a room or similar location."
locatio n. " Claim Construction
Order at 45
45..
35

i2-CV-00630-LHK
GRANTING-iN-PART AND DENY!N
DENYING-TN-PART
G-iN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A185
Case: 15-1171
Document: 40
Page: 278

*SEALED*
Filed: 03/06/2015
FiledOl/21/14
documents, id. at II:: I10-11

O-Il,, one of which- U.S. Patent No. 6,671,757 entitled "Data Transfer and
2
Synchronization System" (the

(lhe "Multer
"M ulter Patent")-is
Patcnt")-is relevant to Apple's
App le's motion.
motion . The Mu
Multer
lter Patent
Palent
discloses a system that "allows

I ication of information
inforrnation across all
all systems coupled to the
" allows the rep
replication
system," Multer Patent

Patcnt at 8:54-56, with a focus on
o n synchronizing
synchronizi ng "personal contact information"
5S
and e-mai
I, id. at 5:4 I.
e-mail.id.at
1.
1.
1.
Incorporation
Inco rporation by Reference
n.c rc rc ncc
App
Apple's
le's invalidation-by-anticipation
invalidatio n-by-anticipation challenge rests heavily on
onlhe
the assumption
assumpt ion that the
'446 Patent
Pa tent incorporates the Multer Patent by reference. Although " invalidity by anticipation
requires that
thee four corners of
tha t th
ofaa single,
si ng le, prior a1t
m1 document describe every element ofthe
of the claimed
10
invention," material not explicitly contained

cont.1 ined in the single, prior art document "may still be
II
II
considered for purposes of anticipation

an ti cipation if that material is incorporated
incorporatcd by reference
refcrence into the
;:2:..::1
::s
:"=
12
document." Advanced Display Systems, inc.

Inc. v. Kent
KenlStale
State University, 212 F.3d 1272, 1282 (Fed.
(Fed .
u" ~
0
0
13
Cir. 2000). Whether ma terial

terial is incorporated by reference into
oflaw
ilu o a host document is a question orlaw
..~
~
14
that this Court must resolve before it determines whether a genuinely

genu inely disputed material issue exists
~ E
~
15
IS
as to anticipation. See Zenon Environmental,

EnvirOllmef/lal. inc.
Illc. v.
v. U.S.
u.s. Filter
Filler Corp., 506 F.Jd
F 3d 1370,
137 0, 1379 (Fed.
Cl)'
." t:
16
Cir. 2007).
2007).
EE;
.~
i: ~
t:~
0o
uu
UU
:S
.,_. t,..,
-'C--- .-Ut:
~
(.)
J;:l
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.!!a
~Q
~O
.E!o
S v
<Il-"
~
0
0
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c .
=
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P-5
::>-5
....
00
""
17
To incorporate matter by reference, "a

"n host document must contain language 'clearly
18
identifying the subject matter

mailer which
which is incorporated
incorpora ted and where it is to be found'; a 'mere
' mere reference
19
",
to another application, or patent, or publication is not an incorporation of anything therein .... "'
20
Callaway Golf Co. v. Acushnet Co., 576 F.

F.3d
3d 1331,
1331 , 1346 (Fed. Cir. 2009) (quoting in
In re De
21
Seversky, 474 F.2d 671,

671 , 674 (C.C.P.A. 1973)) (emphasis in original).
origina l). In determining whether
22
material is incorporated by reference into a host document with sufficient patticularity,

panicularity, the Court
23
shou ld use ''the

should
" the standard of one reasonably ski
skilled
lled in the art." Advanced Display Systems, 2212
12 F.3d
24
at 1283
1283..
25
In light of these guidelines,

gu idel ines, the Court
COUl1 has little
linle trouble
troub le concluding that the '446 Patent
26
incorporates the Muller

Multer Patent in its entirety. The '446 Patent references the Multer Patent eighl
eight
27
times. The beginning of the patent's

pa tent's written
wrillen description includes a section entitled "CROSS" CROSS
28
REFERENCE TO RELATED APPLICATIONS," in which it lists the

th e Multer Patent along with
36
12-CY -00630-l,HK
ORDER GRANTINGGRANTING-IN-PART
IN-PART AND DENYING-IN-PART
DENYINGINPART APPLE'S MSJ AND DENYING SAMSVNG'S
SAMSUNG'S MSJ
A186
Case: 15-1171
Document: 40
Page: 279

'SEALED'
Filed: 03/06/2015
FiledOl/21/14
Fi1edOl121114 Page37 of 49
two other documents (the '"336

"'336 Patent" and the "'675
''' 675 Application") as "cross-referenced and
incorporated by reference herein in their entirety"

cnlirely" and then repeats at
a1 the end of the list that
"[e]ach
"[elach of these [three]
fthreel related
re lated Patents/Applications are incorporated herein by reference." Next, in
a section entitled "Descripti

on of the Related Art,"
" Description
Arl," the
Ihe specification references the Multer Patent
centrall to
three times
limes in the context of synchronizing a personal information space, the very subject centra
the '446 Patent itse

itself:
lf:
8
9
10
E
::::s :..:
s
=:..:
.~
-I.e..:;;
0
0
<':~
uu
UU
... . . .
~
v<.J 0a
-'i:...- ..--V_
-o(,flo.E-"
II
11
12
13
I. (..)
1-,
~
Q .~
14
~c
~
E
ell ....
....
~ u
0
IS
15
(,f)
~Cl
'33 6 Patent,
Palent, the ' 675 Application,
Appli cation, and Ihe
the Multer Patent] disclose a novel
[The '336
includ ing that
thai
method and system tor
for synchronization of personal information including
which is conventionally
personal digita
digitall assistants,
ass ista nts,
conventiona lly found in desktop applications, personal
ca lendar and address services, as well as any content
palm computers, and website calendar
in the personal information space including
inc lud ing file systems, contact information
losed in [the
and/or
aneVor calendaring information. In one aspect, the system disc
disclosed
Lthe '336
' 336
Patent , the '675 Application, and the Multer Patent] compri
comprises
seri es of device
Patent,
ses a series
engines which can be utilized on or in conj unction with any personal information
manager application or device,
can connect via a
devi ce, on servers, or both, which
whi ch can
communications network, such
such as the Internet, to transfer information in the form
of di fferenced
fTerenced data between respective applications and respective devices. In
essence, the system of [the '336 Patent,
Patent , the '675 Application,
Appl icat ion, and the Multer
Patent] creates a personal
informati on space or personal
persona l information store that is
Patent}
perso nal information
comprised
ch defines the movement of informat
information
which
ion
com pri sed of
ofaa set of transactions whi
bel ween one device, the intermediate
intennediale storage server, and other devices, and which
between
is un
unique
ique to an individual user or identifier.
001
16
17
aI22:44-3:2.
:443:2. T
The
he "Detailed
" Detailed Description"
Descripti on" section
sec tion of the specification
specificat ion references the
'446 Patent at
18
Multer
Palen! fo
Mu
Iter Patent
fOllr
ur additiona
additionall times,
time s, reasserti
reasserting
ng that " the transactional based extraction, transfer,
19
broadcast, storage and synchronization

Lthe '336 Patent, the ' 675
sync hronizati on systems for [sic] forth in [the
20
Application, and the Multer Patent]" is an example of a personal infor

mation
informati
on space and is " hereby
21
specifically incorporated by reference." !d.

Id. at
aI5:
5:34-41;
34 41 ; see id. at
at 6:24-29 ("Once inserted into the
22
sy nchroni zed to any number of different

private information space, the data can be synchronj
differem devices as
23
described in fthe
lthe '336
'33 6 Patent,
Patem, the '675 Application, and the Multer Patent."); id. at 8:50-56
24
("[S]ync
("[SJync server 130 can provide the informati
information
on set forth above directly to a server device engine
eng ine
25
140 which can

can then transfer the information
informati on to the personal information space stored in a database
26
200 as described in [the '33

'3366 Patent,
Patenl, the '675 Applicat
Application,
ion, and the Multer Patent].");
Patent)."); id. at 9:659:65
27
I0:3 ("The specific

10:3
speci fic structure and operation of the server and client based device engines are
"'"'o
"'
~ ;z~
~
c Q)
~
;:J-:$
"'oS....
a0"
1'".1...
28
37
Case No.:
No.: 12-CV-00630-LHK
12-CY-00630-LHK
ORDER
GRANTING-[N-PART AND DENYING-!N-PART
DEN YING-IN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A187
Case: 15-1171
Document: 40
Page: 280

'SEALED'
CIS
t: .
t:<B
=
=:.=:..:::CIS
0o
uu
UU
.- --".....
.....-....-., ......
............
-~
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(J
" '+-'
0
. ...
Filed01/21/14
described generally with respect to FIG. 5 and are disclosed in further detail ill
in [the '336
' 336 Patent
Patent,,
22
the ' 675 Application, and the Multer Patent.").

Patent.").
'E
Filed: 03/06/2015
The above-quoted language from the '446 Patent is sufficient

su rt1cient to incorporate the Multer
Mu lLer
44
Patent. The language "identifies with specificity both what material is being incorporated by
ofpersona[
personal information) "and where it may be found "
reference" (a system for synchronization of
66
Golfeo., 576 F.3d at 1346. The Federal Circuit

Circu il has called language
(the Multer
Mu Iter Patent). Callaway GolfCo.,
77
Patent "broad and unequivocal

unequivocal"" and sufficient
sufficienllO
to
similar to that found at the beginning of the '446 Patent
Harw'i v. Lee , 656 F.3d

F.3d 1331 , 1335 (Fed. Cir.
Cir . 20 II);
II) ;
incorporate an entire document by reference. Harari
see id. ("We ... conclude that the entire '579

' 579 application disclosure was incorporated by the broad
10
incorporater d] by
and unequivocal language: ' The disclosures of the two applications are hereby incorporate[d]
11
II
ofthe
the Multer Patent
reference."').
reference.
" '). The ' 446 Patent goes even further, reinforcing its incorporation of
12
by repeatedly referencing the synchronization system- which is the exclusive subject of the
13
13
Multer Patent-both
Patent- both as a whole and with reference to particular aspects of the system. See id.
14
("While it may seem redundant, nothing prevents a patent drafter from later incorporating again
15
certain 'relevant portions' of an application so as to direct the reader to the exact portion of the
16
incorporated document
document the drafter believes relevant."). The Court concludes that a person
17
reasonably skilled in the art would understand this language from the ' 446 Patent to incorporate
18
the Multer Patent in its entirety.
)... u
~
~.~
~
.~
.,C)
~Q
~ E
.sII "
oo..c
4)
"'~
~t::
;:::;::'0 zZ"
=
="
;:J-e
;0-5
4)
"
0
0
'"
4)
.....
c.x..
19
Samsung contends that Harari is inapposite because that case "addresses the sufficiency
su fficienc y of
20
a written description in an interference, not the clear and convincing standard for anticipation."
21
Samsung Opp. at 21 n.29. The Court is not persuaded . The Federal Circuit has not created different
22
di fferent applications of its incorporation-by-reference doctrine. See Northrop Grumman

rules for different
23
Tech. , Inc.
Inc. v. United States,
Stales, 535 F.3d 1339, 1344
1344 (red
(Fed.. eir.
Cir. 2008) (referring generally to the
Info. Tech.,
24
court's incorporation-by-reference doctrine "in the patent context").

context" ). Instead,
Instead , the Federal Circuit
25
treats incorporation by reference as a question of law and a "separate inquir[y]" from the fact issue
26
of anticipation. Zenon Environmental, 506 F.3d at 1379.

13 79. The "clear and convincing" standard
27
reference . See
therefore does not apply to whether a prior art document incorporates another by reference.
28
P 'ship, --U.S.--,
-- U.S. --, 131 S. Ct. 2238, 2253 (20ll)
(2011) (Breyer, J.,
J. , concurring)
Microsoft Corp. v. i4i Ltd. P'ship,
38
12-CV-00630-LHK
APPLE' S MSJ AND DENYJNG
DENYtNG SAMSUNG' S MSJ
MS J
A188
Case: 15-1171
Document: 40
Page: 281
Document1151
151 'SEALED'
*SEALED*
Filed: 03/06/2015
Filed01f21/14
("By preventing the ' clear and convincing' standard fiom

from roaming outside
olLtside its fact-related
tact-related
2
cou rts can increase the

lhe likelihood that discoveries
discover ies or inventions will not receive lega
legall
reservation, courts
protection where none

no ne is due.").
due.") . In
l n any event, Samsung
Sarnsling has not pointed the Court
Cou rt to a more
analogous Federal Circuit holding in the anticipation context. To the contrary, the Federal Circuit
has found that

("fr]eference is made to")
10") ""can
can be sufficient
50 ffi eient to indicate
Ihal even less specific language ("[rlcfcrencc
to one
o nc of skill
sk il l in the art that the referenced material
materia! is fully incorporated in the host document,"
even for
foraanticipation
nti ci pali o n purposes. Callaway Golj;
Golf, 576 F.3d
F.3 d at 1346.
'7577 Patent, Professor Dan

Samsung
Sam sling also points to a statement by its expert for the '75
Schonfeld, that the '446

' 446 Patent "does
" docs not clearly identify the subject matter that is incorporated nor
10
where it is to be found
fou nd such that one of
o f ordinary
ordi nary skill in the art could find
rind the general incorporation
II
by reference to be sufficiently
sufficientl y particular." Declaration of Professor Dan Schonfeld
Schonfc ld in Suppot1
Support of
::s
= :-=
:.: : :
12
Samsung's
Samsu ng's Opposition to Apple's Motions
Moli ons for
fo r Summary Judgment and to Exclude
Exc lude Expert
--u -....ti
.- "
~ ~
~ 0
0
13
13
~I 50 (ECF No. I1070).

070). This
T his statement is of
01' no help
hc lp to Samsung. As
("Sc honfeld Dec!.")
Decl." ) 1
Testimony ("Schonfeld
14
noted, incorporation
incorporat ion by reference is a question of law.
law. "The
" The opinion
op inion of an expett
expe rt does not convert
convel1
15
a question of law
la w into a question of fact."
fact" VanDer
Van J)er Salm Bulb
Bllib Farms,
Farms. Inc. v. Hapag LLoyd,
Lloyd. AG,
16
818 F.2
F.2dd 699, 70 II (9th
(9 th Cir.
C ir. 1987). Although expert testimony may in some circumstances
ci rcumstan ces help a
17
incorporales another document by reference, the Court in

court determine whether a host document incorporates
colllt
18
this instance concludes

co nc ludes that Dr.
Dr. Schonfeld's
Schonfel d's conclusory
conclu sory statement cannot overcome the broad and
19
unequivoca
or the '446
' 446 Patent
Patcnt incorporating the entire Mu
Multer
lter Patent.
uneq uivocall language in
in the specification of
.~
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0
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t: ~
0o
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~
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.... .....
. 1-.
~ (.)
~
. -
.~ ~
~
Q .~
.~
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.
0
c
"
C/)..C
~
f.'I:S
"~
.......
....
0
Q.)
~
"'~
Q.)
u 0
.-;:Z
.';: Z
co Q.)
~t::
."
t:
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......."
0
tJ..
20
21
2.
A
nticipation
Anticipation
Having
Havi ng determined the '446 Patent
Pa tent includes the Multer Patent in its entirety, the Court next
22
summa ry judgment that the '446 Patent

Pa tent anticipates
a ntic ipates the
th e
analyzes whether Apple is entitled to summary
23
asserted claims
Patent Viewing the evidence most favorable to Samsung, the Court
c laim s of
o f the '75
' 7577 Patent.
24
of a genuine issue
isslle of fact that the '446
' 446 Patent
conclu
co nclu des that App le has established the absence ora
25
l4 and
an d 15 ofthe
or the
ea ch and every limitation of independent claim 1I and dependent claims 14
discloses each
26
''7757
57 Patent.
27
28
39
12-CV-00630-LHK
DENYJNG-IN-PART
GRANTfNGiN-PART AND DENYtNGiN PART APPLE'S MSJ AND DENYING SAMSUNG'S
SAMSUNO'S MSJ
A189
Case: 15-1171
Document: 40
Page: 282

*SEALED*
a.
22
Filed: 03/06/2015
Claim
Clai m 1
Independent claim 1I of the ''757

757 Patent contains a preamble and two Ilimitations,
imitations, of which
$amsung does not dispute that the '446 Patent discloses

only the second limitation is in dispute. Samsung
claim 1. [n
does not contest
the preamble and the first limitation of
afclaim
In particular, Samsung docs
co ntest that the
55
446 Patent discloses

claim
''446
disc loses the preamble of
afcl
aim 1 (a "system for synchronizing devices in a
multimedia environmental [sic environment]") by describing a system thai

that synchronizes "media
77
information" found in a user's "personal information space" to "any

"anyone
one or all of the devices
88
POA 's, automotive PC's, and the

coupled within the user's space, including personal computers, PDA's,
' 446 Patent discloses the first

tirst limitation of claim 1I
like." '446
' 446 Patent, 9:9-20. Also undisputed, the '446
10
JO
("at least one central storage and interface device, wherein audio,
audi o, video, or photographic data,
gE
11
1l
informat io n and content management information, related to at least one user,

including content information
=:.:::;
=:..=
12
arc stored in digital form") by disclosing "storage server(s) 200," id. Fig. 3, that can "house[]"
"houseO" a
are
-4-<
(J ~
u
0
13
user's personal
pcrsonal information space, id. 5:26-29.
5:26-29 .
.,
~
t:<-8
t: <8
0o
UU
uu
-.-.......-
-.. I. ~
(.)
- 0
"' ...."
14
,Q
~O
~E
.!! E
15
~"
"''2
16
17
,..~ +-'
.Q
.~
~.~
!! (j)u
!J
1l
;~
:c z
Zu
,0
0
(j)
;:;:J.g
:0.,5
....
"
'"
18
19
20
14
14
Samsung
Sa msu ng does dispute whether the ''446
446 Patent discloses the emphasized portion of the
757 Patent, which is reproduced below:
limitati on of claim 1I of the ''757
final limitation
at least one zone, each zone having at least one zone specific storage and interface
device capable of storing
stori ng or interfacing with information stored in the central
storage and interface device, wherein audio, video,
vi dca, or photographic information,
relating to at least one user, contained within the zone specific storage and
interface
interlace device and the central storage and interface device, are updated in
specific storage and inte1j
intel/ace
a ce devices and the central storage
relation to the zone spec(fic
and interface device,
device , whereby the at least one user can be situated in any of the
tile
zones and access the audio, video, or photographic information related to the at
15
least one user. 15
21
21
22
23
24
25
26
27
28
14
)4 Samsung also does not
110t dispute that the incorporated Multer Patent discloses media files stored on
the storage server that have "content
"co ntent informati
information"
on" (e.g.,
(e.g. , photo data) and "co
"content
ntent management
information"
"grouping
informat ion" (e.g.,
(e .g., information that allows for
fo r "group
ing of classes of information
informatio n into appropriate
representations"). Multer Patent at 28:45-50.
28:45-50 .
15
)5 Samsung does not dispute that the '446
' 446 Patent discloses the other elements of this limitation. In
[n
particular, Samsung does not dispute that the ' 446 Patent discloses multiple "devices" identified by
the specific
specitic "zone"
"zo ne" in which each device resides, see '446
' 446 Patent, Figs 3 & 4 (depicting "Home
PC" and "Office PC"), each device having an "i
"interface"
nterface" capable of interacting with the storage
server and "storage" capable of storing
stor ing media data, see id. 9:20-39 (discussing devices'
device s' storage of
"media data" received from "the personal information space provided in storage server 200"). Nor
does Samsung
Smnsung dispute that the '446
' 446 Patent discloses a system where a user "can
''can be situated in any
one of the zones and access the audio, video, or photographic information related" to that user. See
'446 Patent, 9:40-64 ("In
(" In accordance with the present invention, digital
digita l media files of varying
40

[2-CV-00630-LHK
GRANTiNG-iN-PART AND DENYING-IN-PART
DENYiNG-iN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A190
Case: 15-1171
Document: 40
Page: 283
seS:12cv-00630-LHK
*SEALED*
Filed: 03/06/2015
FiledOll21114 Page41 of 49
FiledOl/21/14
In
particular,
claim 1I of the '757 Patent ("are
[n particu
lar, Samsung contends that the emphasized portion of
afclaim
2
to the zone specific storage and interface devices and the central storage and
updated in relation 10
interface device") implicitly requires "automatic synchronization,"

sy nc hronization," Samsung
Slln sung Opp'n at 21
(emphasis in original),
ori gina l), but the prior art '446
'44 6 Patent discloses
di scloses only
onl y "manual synchronization,"
sync hronization," id. at
16
original).
nai) .16
The
T he Court concl
concludes
udes Ihal
that claim lI of the '757 Patent does not require
22 (emphasis in origi
automatic
automa
tic synchronization,
synch roni zation, and thus
thu s Samsung's claim that automatic synchronization
synchroni zation is required
does not create an genuine material factual

fuclual ddiispute.
spute.
8
9
9
No rea sonable
sonnblejury
jury could
cou ld find
find an "automatic synchronization"
synchro nizati on" requirement
reqllirement in the plain
of claim
cla im 1I of the '757 Patent sufficient
language of
suffi cient to avoid potentially invalidating
inva Hdnling prior art,
art , the '446
.,E
10
17 The specification
speci fication of the '757 Patent discloses an array of"synchronizing
o f "sy nchronizing schemes," on
only
ly
Patent. 17
II
one of
o f which
wh ich is "automatic:'
" auto mati c:' See ''757
757 Patent, 9:4-6 ("Different
(" Different synchronizing
synchro niZing schemes are
=:.:
=:.=
12
JXl:ssible
possible (automatic, daily, weekly, etc)." The claim
cl aim itself
ltsel f does not explicitly require any
anyone
one of
-- -.-
13
those synchronization
synchronizati o n schemes.
.~
t: tB
S
0o
Co;!
uu
UU
....~ .....
0
'o
(J
'~
:-'
......
- u
.:!3
~ J::;
"
Q .~
.~
Q
<I.!
~O
14
argue s that claim 1

"automati c" synchronization
synchroni7,Mion because it requires
Samsung argues
I requires "automatic"
15
info nmltion on each device to be "updated in relation to" the information on the other
media information
.,.t:
"'CCt
16
Sam sllng's expert Dr. Schonfeld, applyi

applying
ng the plain
pla in and ordinary meaning
meanin g
devices. According to Samsung's
= ~
=
17
of the term "updated"

"upda ted" means that "a
" a change in one
o ne device is automatically
automat ically reflected
refle cted as a change in
"....
18
29. As set forth below, this

another device."
devi ce." Schonfeld Dec!.
Decl. ~'129.
thi s opinion is unsupported
lHl sllpported and
19
triable
ofMinnesota
Minnesota v. AGA
therefore insufficient to create a triab
le issue. See Regents of University of
~ E
!:
~
!! ou
en.;;:;
V>~
cu
00
.t:
:= ;z:
z
j:);:J
'='-5
00
t.L.
"-
20
21
22
23
24
25
26
27
28
formats, and other data

data,, may be synchronized
synchro ni zed or
o r transferred
trans ferred (uni-directionally)
(unid irectionally) to any network
net"\vork
appl ia nce 400 utilizing the system of the present invention.").
in vention. ").
coupled appliance
16
16 Samsung a
also
Iso contends
contend s that,
that , without the Multer
Mu lter Patent, the '44
'4466 Patent does not disclose a
system that meets
clai m I: bidirectional
bidirect ional
meet s two requirements that Samsu
Sam sll ng contends are part of claim
synchronization and automatic synchronization
synchron ization of
o f al
alll devices connected to the system. See
SamsLmg
Samstl ng Opp'n at 22-25.
2225 . Because the Court
COllrt ha s concluded that the '446 Patent incorporates the
Mu
lter Patent by reference, see supra Part
ParllTli.F.
ll.F. t,
I, and because Samsung does not dispute that
thai the
Multer
sync hron iza tio n, see Multer Patent, 6:36-38
6:3638 ("[T]he
Multer Patent discloses bidirectional synchronization,
ce information 6.
/), to be both transmitted and received"), and multimulli
synchronizer will allow differen
difference
device synchronization,
I 0:65-11 :6 ("ln
(" In one embodiment, each device engine implements
sy nchronization, see id. 10:6511
all processing
processi ng required
requi red to keep all the systems fully synchronized."),
sy nchronized."), the Court does not address
these arguments.
argll men Is.
17
11 Neither party sought
so ught a construction of
o f claim I that would
wou ld have imposed an "automatic
" automati c
synchronization"
synchronizatio n" requirement.
41
ORDER GRANTrNG-IN-PART
GRANTING-IN-PART AND DENYTNG-TN-PART
DENYINQIN-PART APPLE'S MSJ
M5J AND DENYING SAMSUNG'S
SAM SUNG'S MSJ
A191
Case: 15-1171
Document: 40
Page: 284
Document1l51'SEALED'
*SEALED*
Filed: 03/06/2015
FiledOl/21114
Medical Corp., 7'17

7 17 F.3d 929,941
929, 941 (Fed. Cir.
eir. 2013) ("Conclusory expert assertions cannot raise
triable issues of material fact on summary judgment.") (internal quotation marks omitted).
Dr. Schonfeld claims that three considerations

considerat ions support his understanding of the plain and
ordinary meaning of"updated,"

of "updated," but all of them entirely
ent irely fail to provide a basis on which a
reasonable
jury could side with Samsung. First, Dr. Schonfeld points to an "important"
reasonablcjury
" impOI1ant" dictionary
''' to bring up to date."'

date. ", Schonfeld Decl.
Dec!. ~ 30 (quoting
definition that states "update" means '"to
Merriam-Webster
Mcrriam-Webster Dictionary,
Diet ianary, http://www.merriam-webster.com/dictionary/update).
http:// www.merriam-webster.com/dictionary/ update). That
definition, however, simply begs the question whether something must be brought up to date
automatically.
10
"updated"
Second, Dr. Schonfeld contends that the claim's "passive" use of the term ''updated"
.~
11
II
implies "a perpetual state of the information." !d.

Jd. Again, the Court
COllrt does not see how this
=:..=
12
consideration could bring a reasonable jury to read an "automatic"

" automatic" requirement into claim 1.
I. The
.-....-........
"' ....
13
l3
use of passive voice generally creates ambiguity

ambigu ity rather than resolves it. See,
See , e.g.
e.g.,, Bryan A. Garner,
14
The Oxford Dictionary

DictionalY ofAmerican Usage & Style 246 (2000) (calling the passive voice "a prime
15
of unclarity").
). Dr. Schonfeld
Schonlcld does not cogently explain how the use of passive voice here
source ofunelarity"
16
could even possibly impose a narrow and precise use of the term ""updated."
updated ."
E
t: <-8
<2
0= ~
(lj
o "
UU
uu
....
<+-<
-~
(J
~ 0
0
."'"'"0"z
="
.-- -u
,Q
~l=:
~ "
....
-loo +'
(.)
+'
~ .~
~Cl
~
- "
....
Q)
Cf.l..C
"C
t:
Q) 0
" Z
0
;!:;:
;::
Cl Q)
;0.,5
;:::>
....
0
(.I..
u.
17
Finally,
Pina lly, Dr. Schonfeld
Schonfe ld unavailingly points to three excerpts from the specification. See
18
Schonfeld Deel.
Dec,!. ,132
~ 32 (citing '757
' 757 Patent, 3:1-7
3: 1-7 ("Therefore
(" Therefore it is desirous to have ... the entire
19
collection synchronized
synchron ized automatically
automatica lly ... ."),
") , 6:33-39 ("The digital multimedia device I104 allows
20
the user, ...

. .. to synchronize and update the user's
user' s audio/video files automatically ....
... ."), 6:55-59
21
("[A]n alternative
a lternative embodiment of the present invention [shows] ...
. . . the digital multimedia player
22
104 automatically performs the synchronization .. ..

. .")).Those
" )). Those excerpts' references to a "desirous"
" desirous"
23
automatic
automat ic synchronization feature, an embodiment that "update[s] ... automatically," and a
24
similar "alternative
" alternative embodiment" all
a ll suggest that, at most, the plain meaning of the term " updated"
25
encompasses automatic
automat ic synchronizat ion as Dr. Schonfeld
Schonfe ld describes, not that its plain meaning is
26
limited
lim ited to that type of automatic synchronizati
synchronization,
on, as Samsung's
Samsung' s theory requires. Indeed,
Indeed , that the
27
embod im ent that "update[s]

"updale[s] the user's
user' s audio/video files
specification describes (in active voice) an embodiment
28
42
Case No.:
No.: 12-CY-00630-LHK

DENYING-fN-PART APPLE'S
APPLE ' S MSJ AND DENYlNG
DENYING SAMSUNG'S
SAMSUNG' S MSJ
A192
Case: 15-1171
Document: 40
Page: 285
'SEALED'
Filed: 03/06/2015
Filed01/21/14
automatically" shows that the plain meaning oflhe

of the claim itself-w
itself-which
hich uses the term ""uupdated"
pdated"
wilhollllthe
hc adjective
ndjcctive "automatically"-is
"autornatically"-is broader.
without
fn
's opinion, Samsung contends that even Apple's expert agrees
[n addition to Dr. Schonfeld
Schonfeld's
that claim 1I requires automatic synchronization. Sam sung Opp'n at 2211 (citing
(ciling Deposition of
Richard Taylor ("Taylor Dep.")

Dcp." ) at 44:15-46:
44: 15-46: II (ECF No. 854-1
854-19.
9)). Apple's
Applc's expert Dr. Taylor
T aylor
''if fI identi
fy the set
mine, then the synchronization
m II,, "if
identify
Sci of media that is mine,then
synchronizulion of
testified that,
that. under clai
claim
that media goes on automatically

lIu tornatically after II/at
that synchronization
synchronizoliol1 process is initiaLed."
initialed." Taylor Ocp.
Dep. at 46
(emp hasis added).

added), But this testimony, even viewed in
(emphasis
inaa light most favorab
favorable
le to
lO Samsung, does not
110t
create an issue of material fact. To survive summary judgment Samsu

ng needs "updated"
Samsung
"u pdated" to
10
convey a narrower understanding

understand ing of
of"automatic,"
"automatic," namely, that ""aa change in one device is
...t:E
II
automatically reflected as a change in another device." Schonfeld Decl. ~ 29. Dr. Taylor did not
=:.=
12
testi
testifY
fy that the
th e claim requires synchroni:.cation
synchronization to be
bc automatically initiated whenever the content
.,a"'. 0-.l!?....."
-O.....-.-
13
on one device is changed.

changcd. In
[n fact, Dr. Taylor exp licitly
lic itly clarified that "the
"t he synchronization
sy nchronization activity
14
lofclaim
lof claim IJ
IJ....
, . may be started at
al multiple times or di
different
fferent frequencies," and only then ("after
"
!': .;~
en
:::.
"'
t:
4J 0
:':
.~ ;z:
;z.
15
docs the synchroniza

sy nchronization
tion occur automatically. Taylor
that synchronization process is initiated") does
16
Oep.
Dep. at 45~
45; see id.
it!. ("[Ojnce
("lOJnce it's started lthe
[the systemj
systemJ does all the work ... without manual
c" u~
17
iintervention.").
ntervel1tion. ").
0
"
w..
u..
18
.~
t:t:..E
,.S
"'-5
...
0
One final point demonstrates why no reasonable

reaso nable jury
jut)' cou
could
ld co
conclude
nclude that the plain meaning
19
za ti on requirement.
of claim I includes an automatic synchroni
synchronization
req uirement Dependent claim 6 of the '757
20
that the "audio,

" audio, video, and photographic information" stored on " a server" be
Patent requires lhat
21
"updated a/
al a predetermined time
lime in relation with other zone speci
spccific
fie storage and interface
22
devices." Limiting cla

c la im 1-which
I-which requires Ihat
that the
[he audio, video, or photographic information
informatio n in
23
"each zone" be ""updated

updated in relation
relat ion to the zone specific storage and interface
in tert:1ce devices"-to
deviees"-to
24
automatic updates of the type Samsung

Sam sung envisions would
woul d conflict with th
thee "predetermined
"predetenn ined time"
lime"
25
update that cclaim

laim 6 allows
all o ws with respect to one zone. In this
th is way, Samsung
Sarnsllng makes the same mistake
26
it does with
imit the'
the ' 172 Patent to physical
physica I keyboards:
wi th respect to its attempt to Ilimit
keyboa rds: it seeks to
10 impose
27
a requirement in an independent cla

claim
im that directly conflicts with the plain meaning of
ofaa dependent
28
claim. See 35 U.S.C. 112(d);

I 12(d); supra Partlli.B.
Part III.B .
43
Case No.: 12-CV-00630-LI
!2-CV-00630-LllK
IK
ORDER GRANTING
GRANTING-IN-PART
iN-PART AND DENY
DENYINGiNPART
lNG- lN-PART APPLE'S MSJ AND DENYfNG
DENYING SAMSUNG'S
SAM SUNG'S MSJ
A193
Case: 15-1171
Document: 40
Page: 286

*SEALED*
Filed: 03/06/2015
FiledOl/21/14
Fil edOl/21114 Page44 of 49
Samsung acknowledges that the '446 Patent discloses a system that allows a user
Llscr to trigger
.,
co;S
'E
t:t:<
<B
=:.:=
=:.::::
0
U
uu
U
..... ......
0
:.. ....
" u
22
the synchronization of media files

fi les across devices. See Samsung
Sam sung Opp. at 22
22;; Multer Patent,
Patem, 35:1235: 12-
33
synchroniy. .a.tion ," including a

22 (describing various ""triggering
triggering mechanisms for initiating synchronization,"
44
'"sync"'
'"sync ''' button, "time-based triggers," or "sync on a log-out
log-ou! orthc
of the user").
uscr"). Because
lJecause a reasonable
55
jury cou
could
ld not find a more
morc stringent synchronization requirement in the plain and ordinary meaning
66
of claim 1, no genuine dispute

d ispute exists for trial as to th
this
is limitation
limitation..
77
Having
Hav in g concluded that no genuine ddispute
ispute exists as to whether the '446 Patent discloses
each and every limitation of claim 1 of the '757

' 757 Patent, the Court GRANTS Apple's motion for
summary judgment that claim 1 is invalid

invali d as anticipated
ant icipated..
b.
10
11
II
Claims 14 and 15
Claims 14 and 15 require "[t]he system of claim 1 wherein the central

centra l storage and interface
12
device is disposed to be coupled to a wireless mobile device via LAN [Local Area Network]" and
13
"via WAN [Wide Area Network]," respectively. The '446 Patent discloses the use of devices such
14
as "notebook computers, palm-top

pa lm-lop computers, [and] hand-held computers" capable of receiving or
15
processing digital
connection'' such
digita l media
med ia via a network connection"
sLlch as "a LAN, WAN or open source global
",l:
~
t:
16
9:14-19
network." '446 Patent, 4:51-57;
4:5 I -57; see id. 9:
14-19 (describing
(describ ing synchronization
synchronil-<ltion with "PDA'
"POA' s").
c "
=
17
17
Samsu
ng does
sures meet the additional limitations of claims 14 and
Samsung
docs not dispute
d ispute that these disclo
disc losures
ti:0"
18
18
15. Because the '446 Patent discloses each and every limitation
limitat ion of independent claim I1 and of
19
dependent claims 14
14 and 15, the Court GRANTS Apple's
App le's motion for summary judgment that the
20
''446
446 Patent
Patcnt anticipates claims 14 and 15.
co;S
-.-......--"
-.-.Q....~~
(J
~
(.)
~ .-
lj) ....
.~
~ -~
lj)t:\
t:Q)
.!l "
oo..c:
"'~
0
" 0
.,::Z
;::: z
Q)
Q)
;0..5
>::l.S
....
~
21
22
23
24
25
26
27
28
G.
Samsung's Motion fo
for Summary ,Judgment
.Judgment that the '596 Patent (Control
Signals) Has a Priority Date of November 9, 2004
Samsung accuses Apple of infringing claim 13 of the'

the '596
596 Patent.
Patcnt. The'
The '596
596 Patent, entitled
"Mcthod and Apparatus for Signaling Control Information of Uplink Packet Data Service in
"Method
Mobile Communication System," was filed on November 9, 2005,
2005 , but it claims priority to a
Korean patent application filed on November
Novembcr 9, 2004 in the Korean Intellectual Property Office.
See '596 Patent, 1:5-13. The parties dispute whether Samsung

Sam sung is entitled
cntitled to the Korean filing date
datc
for purposes of eva
evaluating
luating the validity
va lid ity of claim 13.
44
GRANTfNG-IN-PART AND DENYING-IN-PART APPLE'S MSJ AND DENYING SAMSUNG'
SAMSUNG 'S
S MSJ
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Case: 15-1171
Document: 40
Page: 287
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Under 35 U.S.C.
U.S.c. 119, a patent can benefit from an earlier-filed
emlier-fil ed foreign application
app lication so
10llg
dispute
pute here, the earl
earlier-filed
ier-filed application provides a
long as, among other conditions not in dis
"wriiten description"
of the later-filed claims under 35 U.S.C. L
1 12(a). See In
in re Wertheim, 54!
541
"written
description'' ofrhe
18
F.2d
P.2d 257, 261 (CCPA
(Ce PA 1976). 18 A patent meets this written description requirement if a person of
ordinary ski
skillll in the art reading the earlier-filed applicntion
application would conclude that the invention
inc
ludes that which the applicant later claimed. See id. at 265. A patentee
pat entee may not add
ad d "new
includes
malleI'''
Id.
matter" in a later application and still enjoy an earlier filing date. Jd.
Whether a disclosure meets the written description requirement is a question offact.

of fact. See
eE
. :..:::=
:s
_
u8U
u
-'i:,-.... .-.....n.....
-C-.;....
Ill
.~
!lriad
Ariad Pharms., Inc. v.
1'. Eli Lilly
Liliy & Co., 598 F.3d
FJd 1336,
I 336, 1355
I 355 (Fed. Ci
Cir.r. 20
2010)
l 0) (en bane).
banc). Sam sung,
10
however, contends that there is no genuine di

dispute
spute that the Korean application
appl icati on sufficiently
II
II
inventio n recited in claim 13 and

illld therefore that ilit is entitled to the earlier effective
discloses the invention
....
0
-J,.<.::.
0
::1 :'=
12
iscussion ofthe
of the technology
techno logy behind the '596 Patent
Palent is
filing dale
date as a matter of law. A brief ddiscussion
(J
00
v ~
13
of Sam sung's summary judgment argument.

necessary to understand the nature ofSamsung's
o<~~
......
(.)
~
Q .~
14
As the ''596
596 Patent explains in the "Background of the Invention" section of the
,Q
~O
....~o ,...::;--
15
specification, certain mobile communication systems dedicate communication channels between
"'~
"Cl
te
."
~
v 00
16
to ensure superior data transmission

mobile devices and intermediate network equipment in order 10
17
from the devices to the network

fiom
network.. These channels are called enhanced
enhnnced uplink dedicated channels or
18
"E-DCI
f."' 596 Patent, I[:2331.
:23-31. To maintain these channels effect
ively, the intermediate network
"EOCH."'596
effectively,
19
equipment (which the '596 Patent call s "Node B" stations) must receive certain information about
20
seeking
ng to transmit data (which the '596 Patent calls
ca!1s ""user
user equipment" or
the mobile devices seeki
2211
"UEs"). !d.
Id. at 1I :3
:31-52.
1-52. This pre
prelim
Iim inary information includes the strength
strengt h of the various
22
communication channels, the data rate requested by the various UEs, and the transmission
23
of the UEs.ld
UEs. Id. at 2:23-39.
2:23 39. Based on
o n this information, the Node B will police the UEs'
capabilities ofthe
-"' "
crJ.S::
.... .....
0
:t:: Z
:'=
-""
c 0"
;::J-5
=--5
._
00
24
25
26
27
28
18
" Samsung's motion relies on 35 U.S.C.

U.S.c. 120 for priority. See Samsung MSJ at 22. Section 120
allows a<I later-filed application
a pp lication to enjoy the benefit of"an
of "an application previously filed in the United
U.S.C. 120
I 20 (em
(emphasis
phasis added). Because Sam
Samsung
sung claims
c laims the benefit of a foreign-filed
foreign fi[ed
States." 35 U.S.c.
9 (providing conditions whereby "[a]n
application, Section 119 applies. See id. 11
I [9
" [aJn application for
patent for an
<tn invention filed in this country by any person who has . .. previously regularly filed an
app
lication for a patent for
application
ror the same invention in aa/oreign
foreign country" may claim an earlier filing
date) (emphasis added).
45
Case No.: 12-CV
12-CV-00630-LHK
-00630-LHK
GRANTING-IN-PART AND DENYING-IN-PART
DENY ING-fN-PART APPLE'S MSJ AND DENYING SAM SUNG'S MSJ
ORDER GRANTfNG-IN-PART
A195
Case: 15-1171
Document: 40
Page: 288

'SEALED'
Filed: 03/06/2015
FiledOl121114
data transmissions, such that a plurality ofUEs may not simultaneously

simu ltaneously transmit packet data at
2
Typ ically, in establishing these dedicated

Typically,
dedi cated communication channels, a Node Band UE will
44
transmit and receive preliminary

prelimina ry messages through a dedicated transpo1t
transpolt channel, including
inclu d ing
estimates
est imates as to required transmiss
transmission
ion resources and scheduling information. The patent refers to
Ihis
this initial
in itia l information as "MAC-e
" MAC-e control information." !d.
ld. at 3:34-38; see 2:63-3:40. "MAC-e"
stands
stan ds for "Medium
"Mediu m Access Control for E-DCH." !d.
ld. at 3:35-38. The Node B will use this
information to allocate
al locate transmission resources. Once transmission resources are allocated, the UE
UB
can begin transmitting data through an E-DCH. The ultimately transmitted data is called a "MAC-
10
(13
high data rates. !d.

Jd. at 2:14-21.
2: 14-21.
e PDU,"
PD U," or a "Media Access Control-enhanced Protocol Data Unit." ld.
Jd. at 3:28-30.
II
11
The '596 Patent relates to a method and system for "more efficiently
efficicntly signaling the MAC-e
::s:"::
=:.=
12
control
control information" by piggybacking the MAC-e control information
in fo rmation onto the MAC-e PDUs.ld.
PDUs. Jd.
uu
U
U
..,_4-t
-~
<J 0
" .0. .
.....
,-
13
at 3:38-40. More particularly, a MAC-e

MAC -e PDU can be logically
log ica lly divided into two segments, a MAC-e
14
pay load . ld. at 7:55-60.

7:55-60 . Using
Us ing a crude
cru de analogy, the MAC-e header is like
li ke a
header and a MAC-e payload.Jd.
15
No de B receives a MAC-e PDU,

PD U, it will look to
o f contents for the MAC-e payload. When a Node
table of
16
of the MAC-e payloa

payload,
d, including the source of the
the MAC-e header to figure out the contents oflhe
17
different patts of the payload

pay load and the relationship of
o f those parts to other information within the
18
same and other MAC-e PDUs.

PDUs . Jd.
ld. at 8:7-21. These different parts ofthe
ofl he MAC-e payload are
arc also
19
called PDUs, but they are

arc different (and smaller) than the MAC-e PDUs containing them.
them.
'
E
t: <
00
(13
.........
-.-"'"'
00
-
.;!l
.~ !;:1
.':I
.:1;
~ .~
.Cl
"'A
.5
:l d)
"
~
E E
00'
"''J'!
'g o
~0
;<::Z
.-:: Z
=
="
P..S
::>05
d)
....
0
"0
"'
20
As relevant to the current dispute,

dispute , the MAC-e header is itself divided into multiple patts,
parts,
21
with each part corresponding to a PDU

PD U in the MAC-e payload.
pay load. ln
In one embodiment
embod iment discussed
di scussed in the
22
'596 Patent, each MAC-e header patt

part contains
conta ins three
th ree sub-patts:
sub-parts; a ""mu
multiplexing
ltiplexing identifler,"
identifier," a
23
variable
variab le that represents the number of data units in each patt
part of the payload,
pay load, and a flag that
24
represents whether additional header patts

8:35-9:
5-9: I 0.
O. The
pmts follow the current header
hea der patt.
part. ld. at 8:3
25
'596 Patent
Palent teaches how to generate and decipher MAC-e header information so that the No
Node
de B
26
will be able to recognize and

an d use the MAC-e control information in the MAC-e payload.
payload .
27
Claim
C laim 13 of
ofthe
the '596
' 596 Patent reads as follows:
28
46
GRANTrNG-IN-PART AND DENYING-iN-PART
DENYING- IN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A196
Case: 15-1171
Document: 40
Page: 289
se5:12-cv-00630-LHK Oocument1151
'SEALED'
3
4
5
66
7
8
9
10
.:2
c:
....
"
t:
r: ~
S"
::s
::1 :'=
:.:::
_o
-- .--...U
"'
0
$
~
uu
UU
.......
~
;:;
(.J 0
II
12
13
'i:
1.. u
- ....
.....
"
is -~
.~
~
~
r.l}o
~O
~
~ c:
~
_t:'S ....
0
~ "
....
14
15
(l)
'"~." ~tt
VJ..C
0~ 0
.';:
~ Z
z
" (l)
0
;,:;;)..C
:0-5
.....
....
0"
w...
"-
16
17
18
19
20
21
22
23
24
25
26
27
Filed: 03/06/2015
FiledOl/21114
13. A user equipment (VE)

(UE) fortransmitting
for transmining control information for an
uplink packet data service in a mobile
mobi le communication system, the UE
comprising:
( PDU) including
at least one block for forming a first protocol data unit (PDU)
uplink packet data;
a control unit for forming a control service data unit (SOU)
(SDU) including
for
an
uplink
packet
data
service;
and
control
information
co ntrol
a multip
lexing and transmission sequence
seq uence number (TSN) setting unit for
multiplexing
forming
first header part corresponding to the first POU
PDU by
forming at least
[east one ftrst
using a data
dala description indicator (DDJ)
(DDI) field representing the fust
first
PDU
PDU and anN
an N field
fie ld representing the number of uplink packet data
included
ing
first PDU,
POU, forming a second header part correspond
corresponding
inc
luded in the fust
using
to the control SOU by us
ing a DDl
~Ol fie ld set as a predetermined
specific va
lue representing that the contro
value
controll SOU is transmitted, and
forming a second data packet unit (PDU)
(POU) by concatenating a header
payload,
and a pay
load, the header including the header parts, the payload
contro
POU
POU and the co
ntroll SOU, wherein the second PDU
including the first PDU
is transmitted to a Node 13
B.
oftthe
he''596
596 Patent, it does not appear
Although the term "DDT"
" 001 " appears in the specification of
in the original Korean patent application. See ECF
ECP No. 811-4 (priority application). Nevertheless,
Neverthe less,
Samsung contends
co ntends claim 13 is entitled
en titled to the filing date ofthe
oflhe Korean patent application because
"the'
596 Patent and the priority application use different words to describe the same thing (i.e., a
"the '596
logical identifier).''
identi fier). ' Samsung MSJ at 25. Samsung asks the Court
COlirt to construe " DDI
001 field"
field " to mean
a "logical
" logical identifier representing the first PDU."
POU." Under that construction,
construction , Samsung contends, cla
claim
im
13 is entitled
enti tl ed to
10 the fifiling
ling date of the Korean application
application..
Samsung
led to establish
Samsllng has fai
failed
estab lish the absence of
ofaa genuine dispute as to this issue.
issue . Samsung
Sam Slin g
of"ODI field''
field" during the claim construction proceedings, and therefore
did not seek an construction of"DDI
Ihejury
ordinary
inary meaning of the claim
cla im term " data description indicator
the
jury will consider the plain and ord
(DDI)
(DDT) field." Because the Korean application did not use that
thai term, a reasonable jury could
ski II would not have perceived the inventors to have invented a

conclude that a person of ordinary skill
UE capable of forming a header using a DDI
DDT field.
fie ld.
Samsung argues
a rgues that "[t]he fact
facl that
thai Samsung used certain words in its priority application,
app lication,
and then used the words 'DDI
field ' in its later
laler application, does not mean that new matter was
' DOl field'
added."
added ." Samsu
Sarnsllng
Samsllng is correct that
ng Reply at 14. Samsung
thallhe
the new-matter
newmatter conclusion does not
necessarily follow from the
Ihe different-word
differentword premise. But that proves only
on ly that Samsung is entitled
28
47
Case No.:
No.: 12-CV-00630-LHK
12-CY-00630LHK
GRANTfNG-IN-PART
ORDER GRANTING[NPA
RT AND DENYING-IN-PART
DENYING-INPART APPLE'S MSJ AND DENYING
DENY ING SAMSUNG'S MSJ
A197
Case: 15-1171
Document: 40
Page: 290

'SEALED'
Filed: 03/06/2015
Filed01/21/14
to a trial on this issue, not summary judgment. Indeed, the case Samsung cites in support, Martek
2
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363 (Fed. Ci

Cir.
r. 2009), affirmed aaju
jury
ry verdict.
33
Summary judgment is not appropriate

appropriate..
Accordingly, Samsung's motion for

for summary judgment that the '596 Patent is entitled to a
November 9, 2004 priority date is DENIED.

DEN IED.
66
IV.
SEALING
SEALIN G
Both parties have requested that the Court sea
seall portions of the briefs and exhibits for their
77
88
summary judgment motions. After reviewing

rev iewing the parties' original fifilings
lings and concluding the
requests were overbroad, the Court denied the parties' administrative motions without
wi thout prejudice
10
and instructed them to file

file narrower sealing requests in renewed motions to seal. See ECF
ECF No.
11
II
1057. The parties complied. See ECF Nos.

Nos. 1066-71, 1073-74, 1079, I1093,
093, 1097-1100. T
The
he parties,
12
Google, and Microsoft filed

fi led declarations in support of these renewed motions. See, e.g., ECF Nos.
Nos.
13
1094, 1096. After

scaling requests and the declarations
deciarations in support
Aft er reviewing the parties' renewed sealing
14
thatt the material

materiallhe
the parties now seek to seal-which consists largely
thereof, the Court is satisfied tha
15
15
of party and third-party source code, product-rciease,

product-release, strategy,
strategy. and financial information- may
16
remain confidential, save one exception. That one exception is certain material that discloses
=
Q)
17
Apple's expert
expeti Dr. Snoren's opinion on what constitutes a "heuristic," which is based solely on
...
0"
18
pure
ly public, non-proprietary information.
purely
information . See Samsung MS.J
MSJ at 20:
20 : 16-19; ECF No. 1073-13
19
~~
20
one has articulated

articu lated "compe
"compelling
ll ing reasons" to keep this information secret. See Kamakana v. Cily
City &
21
21
Cnty. Of
OJ Honolulu, 447 F.3d 1172,
1 172, 1178
1 178 (9th Cir. 2006). Accordingly, the parties' administrative
22
motions to seal are GRANTED in part but DENIED

DEN IED with respect to Samsung's motion for
23
summary judgment at20:16-19

at 20: 16-19 and ECF
ECF No. 1073-13
t 073 - 13 at paragraphs 105-07.
24
V.
ro
.~
aE
1:
t:<B
<2
=;..:::=
.:::
o= :.ro
"
uu
UU
-.--.--.- -
.....
.......
<J
~ ~
0
1- .....
()
- - -<
"-'
~ ....
"u
.....
.Q .~
-'=l~
~ Q
""'0
~E
~ E
$3
II Q)
(/.l "
ezli
~0
" Z
0
::
:t::Z
P;S
~,s
""
105-07. This material relates to Samsung's indefin

indefiniteness
iteness argument, a dispositive issue, and no
CONCLUSION
CON CL USION
25
Apple's motion for summary judgment of infringe

infringement
the'' 172
men I of the
t 72 Patent and invalidity of
26
the '757 Patent is GRANTED. Apple's motion for summary

su mmary judgment of infringement of the '647
27
Patent, infringement of the '414 Patent,

Palent, and no invalidity of the '959 Patent is DEN
DENIED.
IED.
28
48
ORDER
ORDEH GRANTING-IN-PART Ai'ID
AND DENYING-IN-PART APPLE'S MSJ AND DENYING SAMSUNG'S MSJ
A198
Case: 15-1171
Document: 40
Page: 291
se5:12-cv-00630-LHK Documenl1151 *SEALED*

'SEALED'
Filed: 03/06/2015
Filed01121114 Page49 of
FiledOlf21114
of 49
amsung's motion lor

ndministrativc motions to !;COl
Samsung's
for summary judgment is DENIED. The patties'
parties' odministrntivl'
seal
2
documents
motions nrc
docurnents rclntcu
rclatoo to
Lo their cross molions
arC CiR/\NTF.D
ClRI\NTED in par
parit and DENIED
DEN IED in part.
parI.
IT IS SO ORlH~
0 11O 1l1).
lT
nED.
Dated: January 21.

21,2014
20 14
:55
United Statcs
Stare~ Di
tr1ct Judge
Di"lrlcl
66
77
X
"
10
. ..:
~
E
t: .S
.E!
i:
;:I :':
:::~
...:
II
12
_o ....
UU
uu
;;
<.J 0
t:
't: u
.... .u
;:
IJ
13
.!)
. ~ ...
!;:
~
0 ._ ~
14
tllo
.0
E
!~ u
!J)..C:
15
15
- .-
"''''
c
::: Z
16
...
18
"C tc
."
<ol
"c= zu
=
=>-5
"'oS...
0"
1,..1.,
17
19
20
21
22
23
24
25
2(,
26
27
28
49
eliSe No.;
No.. 12CV-00<d0-LHK
12-CV-0(}6:10-LHK
Ct~sc
PAR1' AND
I\NO DENVING-JN-J'>ART
DENVINO1N,PAH T APPLE'S
APPl.E'S MSJ
MSl AND l)r.NY
D ~NV ING
I NG S/IMSUNG'S
Si\MSUNG'S MSJ
ORDER GRANTINOIN
GRANTING 1N-r>AR1'
A199
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Page: 292
A200
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1
2
3
4
5
6
7
SAN JOSE DIVISION

10
11
12
13
14
15
16
17
APPLE INC., a California corporation,
)
)
)
)
v.
)
)
)
)
corporation; SAMSUNG
)
)
)

ORDER CONSTRUING DISPUTED
CLAIM TERMS OF U.S. PATENT NOS.
5,579,239; 5,666,502; 5,946,647;
7,577,757; 7,756,087; 7,761,414;
8,014,760
Plaintiff Apple Inc. (Apple) brings this suit against Samsung Electronics Co., Ltd.,
18
Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC
19
(collectively, Samsung). Apple asserts, among other things, that several of Samsungs products
20
infringe Apples patents. Samsung counterclaims that several of Apples products infringe
21
Samsungs patents. The parties now seek construction of nine disputed terms used in the claims of
22
the following patents-in-suit: U.S. Patent Numbers 5,579,239 (the 239 Patent); 5,666,502 (the
23
502 Patent); 5,946,647 (the 647 Patent); 7,577,757 (the 757 Patent); 7,756,087 (the 087
24
Patent); 7,761,414 (the 414 Patent); and 8,014,760 (the 760 Patent). The Court held a
25
technology tutorial on February 14, 2013, and a claim construction hearing on February 21, 2013.
26
The Court has reviewed the claims, specifications, and other relevant evidence, and has considered
27
the briefing and arguments of the parties. The Court now construes the terms at issue.
28
1
ORDER CONSTRUING DISPUTED CLAIM TERMS
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I.
LEGAL STANDARD
Claim construction is a question of law to be determined by the court. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), affd, 517 U.S. 370
(1996). Ultimately, the interpretation to be given a term can only be determined and confirmed
with a full understanding of what the inventors actually invented and intended to envelop with the
claim. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (internal quotation
marks and citation omitted). Accordingly, a claim should be construed in a manner that stays true
to the claim language and most naturally aligns with the patents description of the invention. Id.
In construing disputed terms, a court looks first to the claims themselves, for [i]t is a
10
bedrock principle of patent law that the claims of a patent define the invention to which the
11
patentee is entitled the right to exclude. Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari
12
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Generally, the words of a claim
13
should be given their ordinary and customary meaning, which is the meaning that the term[s]
14
would have to a person of ordinary skill in the art in question at the time of the invention. Id. at
15
1312-13. In some instances, the ordinary meaning to a person of skill in the art is clear, and claim
16
construction may involve little more than the application of the widely accepted meaning of
17
commonly understood words. Id. at 1314.
18
In many cases, however, the meaning of a term to a person skilled in the art will not be
19
readily apparent, and a court must look to other sources to determine the terms meaning. See
20
Phillips, 415 F.3d at 1314. Under these circumstances, a court should consider the context in
21
which the term is used in an asserted claim or in related claims, bearing in mind that the person of
22
ordinary skill in the art is deemed to read the claim term not only in the context of the particular
23
claim in which the disputed term appears, but in the context of the entire patent, including the
24
specification. Id. at 1313. Indeed, the specification is always highly relevant and [u]sually
25
. . . dispositive; it is the single best guide to the meaning of a disputed term. Id. at 1315 (quoting
26
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Where the
27
specification reveals that the patentee has given a special definition to a claim term that differs
28
from the meaning it would ordinarily possess, the inventors lexicography governs. Id. at 1316.
2
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Likewise, where the specification reveals an intentional disclaimer or disavowal of claim scope by
the inventor, the inventors intention as revealed through the specification is dispositive. Id.
A court may also consider the patents prosecution history, which consists of the complete
record of proceedings before the United States Patent and Trademark Office (PTO) and includes
the cited prior art references. The court may consider prosecution history where it is in evidence,
for 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 otherwise would be. Phillips, 415
F.3d at 1317.
10
Finally, a court also is authorized to consider extrinsic evidence in construing claims, such
11
as expert and inventor testimony, dictionaries, and learned treatises. Markman, 52 F.3d at 980.
12
Expert testimony may be particularly useful in [providing] background on the technology at issue,
13
. . . explain[ing] how an invention works, . . . ensur[ing] that the courts understanding of the
14
technical aspects of the patent is consistent with that of a person of skill in the art, or . . .
15
establish[ing] that a particular term in the patent or the prior art has a particular meaning in the
16
pertinent field. Phillips, 415 F.3d at 1318. Although a court may consider evidence extrinsic to
17
the patent and prosecution history, such evidence is considered less significant than the intrinsic
18
record and less reliable than the patent and its prosecution history in determining how to read
19
claim terms. Id. at 1317-18 (internal quotation marks and citations omitted). Thus, while
20
extrinsic evidence may be useful in claim construction, ultimately it is unlikely to result in a
21
reliable interpretation of patent claim scope unless considered in the context of the intrinsic
22
evidence. Id. at 1319. Any expert testimony that is clearly at odds with the claim construction
23
mandated by the claims themselves, the written description, and the prosecution history will be
24
significantly discounted. Id. at 1318 (internal quotation marks and citation omitted). Finally, while
25
the specification may describe a preferred embodiment, the claims are not necessarily limited only
26
to that embodiment. Phillips, 415 F.3d at 1323; see also Prima Tek II, L.L.C. v. Polypap, S.A.R.L.,
27
318 F.3d 1143, 1151 (Fed. Cir. 2003) (The general rule, of course, is that claims of a patent are
28
not limited to the preferred embodiment, unless by their own language.).

3
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1
2
DISCUSSION REGARDING APPLES PATENTS

Apple and Samsung first request that the Court construe five disputed terms contained
within four of Apples patents. Specifically, the parties dispute the meaning of: (1) history list
and field class contained within the 502 Patent; (2) action processor contained within the 647
Patent; (3) concurrently with contained within the 414 Patent; and (4) completely
substitute[e/ing] display of the list [of interactive items] with display of contact information
contained within the 760 Patent.
A.
The disputed terms history list and field class appear in Apples 502 Patent. The 502
10
II.
11
The 502 Patent
Patent, entitled Graphical User Interface Using Historical Lists With Field Classes, aims to
provide solutions to improve the speed and efficiency of data entry into user interface fields.
12
13
Recognizing that a user is often asked to enter data into a particular field that he or she has
14
entered previously, the 502 Patent discloses [a] data input technique for a computer that provides
15
the user with a historical list of potential choices for the data input . . . . 502 Patent Abstract.
16
The system allows [t]he user [to] input[] data for a field of [a] form by selecting an item from the
17
displayed historical list which corresponds to the particular field. 502 Patent, col. 2:25-28. This
18
enables a user to simply select an entry in the list, rather than to re-type the data into the field. As
19
the 502 Patent explains, this improved data entry technique is particularly useful for small, hand20
21
held computer devices, such as computerized personal organizers and tablets, where input errors
22
during data entry are common. See id. at col. 1:8-25; col. 1:63-col. 2:13. The application for the
23
502 Patent was filed on August 7, 1995, and the 502 Patent issued on September 9, 1997.
24
1.
history list
25
26
27
Samsungs Proposed Construction
A list of choices based on historical

information that is shared between different
applications
No construction necessary.
Should the Court find construction necessary: a
list of previously used entries
28
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1
2
In addition, Apple contends that this term is covered by dependent claims 13-15, 17, 20, and 22-24.
For example, independent Claim 11 of the 502 Patent recites:
4
5
A method for inputting data into a computer system having a display screen
associated therewith, said method comprising:
(a) displaying a form on the display screen of the computer system, the form having
at least one field associated with a field class and requiring data entry by a user;
(b) displaying a history list associated with the field class on the display screen on
the computer system;
8
9
10
The term history list appears in independent claims 8, 11, 16, and 26 of the 502 Patent.
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
(c) determining whether the user has selected an item from the displayed history
list;
(d) assigning a data value for the field to that of a data value associated with the
selected item when said determining (c) determines that the user has selected an
item; and
(e) updating the history list in accordance with the selected item when said
determining (c) determines that the user has selected an item.
502 Patent, col. 18:7-25 (emphasis added).
Apple does not believe that any construction of history list is necessary, though contends
that, should the Court require a construction, a history list should simply be construed as a list
of previously used entries. See Apple Op. Claim Constr. Br. (Apple Br.), ECF No. 356, at 4-5.
Samsung does not dispute that a history list is comprised of a list of previously used entries.
See Feb. 21, 2013 Claim Construction Hrg Tr. (Tr.) at 20:6-22. Rather, the parties principle
dispute centers around whether a history list can be shared between different applications, as Apple
contends, see Apple Br. at 4-5, or whether a history list must be shared between different
applications, as Samsung contends, see Samsungs Resp. Claim Constr. Br (Samsung Resp.),
ECF No. 352, at 5. As discussed below, the Court is not persuaded by Samsungs proposed
construction as it is not supported by the claim language and reads out an embodiment. Therefore,
the Court construes history list as simply a list of previously used entries.
26
27
28
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Claim Language/Specification
The Court agrees with Apple that the term history list should be construed to mean a list
of previously used entries, as this construction captures the plain meaning of the term as expressed
in the claim language and is further supported by the specification.

a.
The language of independent Claims 8, 11, 16, and 26, as well as the context in which the
term history list appears, makes it clear that a history list is comprised of a list of previously
used entries. See 502 Patent, col. 18:7-25 (updating the history list in accordance with the [user
selected] item . . . .) (Claim 11) (emphasis added); see generally Phillips, 415 F.3d at 1313 (noting
that the words of the claims themselves are the objective starting point for claim interpretation).
10
For example, Claim 11 describes that, when a user selects an item to fill in a field, the history list
11
is updated to reflect that selection. See 502 Patent, col. 18:7-25. Thus, the claim language itself
12
makes clear that, at a minimum, a history list is a list of entries selected previously by the user.
13
The specification of the 502 Patent also supports construing the term history list to mean
14
a list of previously used entries. As stated in the specification, [t]he history list is a list of data
15
values most recently and/or most frequently used for the associated field. Id. at col. 10:3-5. Other
16
portions of the specification also refer consistently to the history list as comprising entries used
17
recently or frequently. See id. at col. 2:30-33 (stating that the invention provides the
18
historical list of the most recently and/or frequently used data values . . . .); id. at col. 2:66-col. 3:1
19
(Preferably, the history list for each of the field classes is a menu list of most recently and
20
frequently used data values for the field classes.). In order to list data used recently or
21
frequently, a user must have entered data in the same field previously. Thus, the specification
22
clearly contemplates that a history list is a list of previously used entries.
23
Samsung does not contend that there is a meaningful difference between defining history
24
list as a list of choices based on historical information, which is the first part of Samsungs
25
proposed construction, and Apples proposed construction, a list of previously used entries. See
26
Tr. at 20:6-22. Rather, Samsung contends that the construction of history list should also include
27
a limitation that the information included in the history list is shared between different
28
applications. Samsung Resp. at 4-5.

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The Court is not persuaded that the intrinsic evidence supports Samsungs proposed
construction. First, the claims themselves do not discuss the concept of sharing data between
multiple applications. While Samsung contends that the term field class itself inherently requires
sharing across different applications, there is no support for this contention within the words of the
claims themselves.
Second, nothing in the specification requires sharing data between different applications.
While Samsung does identify portions of the specification which indicate that the invention may
share information between different applications, see Samsung Resp. at 4 (citing the 502 Patent at
col. 2:35-37), other portions of the specification make clear that the historical information does not
10
have to be shared between applications, it is merely an option. See, e.g., 502 Patent Abstract
11
(The historical [sic] can also be shared between different applications . . .) (emphasis added); id.
12
at col. 4:20-23 (The historical list can also be shared between different applications that execute
13
on the computer system . . . .) (emphasis added).
14
Further, although Samsung cites to several embodiments of the invention that involve
15
sharing data between different applications, the specification also includes embodiments that do
16
not share any information between applications. For instance, in support of its contention that a
17
history list must be shared between applications, Samsung points to Figures 13A and 13B, which
18
illustrate the use of the invention disclosed in the 502 Patent sharing historical entries between a
19
fax program and a phone messaging program. However, the specification of the 502 Patent also
20
includes other simpler embodiments of the invention, such as Figure 4, which do not mention or
21
include multiple applications. See id. at col. 9:40-col. 10:14; id. at FIG. 4. As noted by the Federal
22
Circuit, a patentee is not to be limited to the embodiments depicted in the drawings, as these are
23
often merely exemplary applications of the claimed technology. See, e.g., Prima Tek II, L.L.C.,
24
318 F.3d at 1148 ([T]he mere fact that the patent drawings depict a particular embodiment of the
25
patent does not operate to limit the claims to that specific configuration.). Moreover, limiting the
26
claim to the embodiments described in Figures 13A and 13B, which include multiple applications,
27
would impermissibly exclude the simpler embodiment disclosed in the description of Figure 4. See
28
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Vitronics, 90 F.3d at 1583 (holding that excluding a preferred embodiment is rarely, if ever,
correct.).1
Finally, the Court is not persuaded by Samsungs claim that the construction should be

3
4
limited to the so-called novel part of the invention described in the specification. See Samsung
Resp. at 4-5; see also id. at 6 (citing Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d
1296, 1305 (Fed. Cir. 2011), for the proposition that, [i]n reviewing the intrinsic record to
construe the claims, [courts] strive to capture the scope of the actual invention, rather than . . .
allow the claim language to become divorced from what the specification conveys is the
invention.). According to Samsung, the actual invention is the patents allegedly key
10
improvement over the prior art, which Samsung construes as the sharing of history information
11
across different applications. Samsung Resp. at 5. In support of this position, Samsung relies
12
heavily on Figures 13A and 13B, which illustrat[e] usage of the invention across different
13
programming applications. 502 Patent, at col. 16:23-24. However, unlike in Retractable
14
Technologies, Inc., the specification of the 502 Patent does not expressly limit the claims to Figure
15
13A and 13B, the sharing embodiments. In fact, the specification also describes a simpler
16
embodiment depicted in Figure 4 as the invention. See id. at col. 9:40-41 (FIG. 4 is a basic
17
block diagram of list processing 164 associated with a basic embodiment of the invention.)
18
(emphasis added). Yet, as already discussed, nothing in the description of Figure 4 requires that a
19
history list be shared between the proffered applications. Id. at col. 9:40-64. Thus, while some
20
of the embodiments of the invention described in the 502 Patent involve sharing a history list
21
between multiple applications, the specification does not support limiting the claims to only these
22
embodiments.
Therefore, the Court is not persuaded that the claims or the specification support Samsungs
23
24
proposed construction. Rather, the Court finds that Apples proposed construction is more
25
plausible.
26
1
27
28
Samsung also argued during the claim construction hearing that the algorithm in Figure 4
required sharing between multiple applications. See Tr. at 14:1-10. As described above, the Court
disagrees with Samsung that either Figure 4 or the accompanying description requires sharing
between applications.
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b.
Prosecution History
Samsung also argues that the prosecution history supports its position that the term history
list, as it is used in the 502 Patent, must be shared between multiple applications. See Samsung
Resp. at 4-5. The court must always consult the prosecution history, when offered in evidence, to
determine if the inventor surrendered disputed claim coverage. SanDisk Corp. v. Memorex
Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005). When a patentee amends the language of the
claims in order to overcome a rejection because of prior art, the patentee disclaims what was
eliminated from the patent. See Omega Engg, Inc., v. Raytek Corp., 334 F.3d 1314, 1324 (Fed.
Cir. 2003). Thus, [w]hile there are times that the prosecution history lacks the clarity of other
10
intrinsic sources, the prosecution history may be given substantial weight in construing a term
11
where that term was added by amendment. Bd. of Regents of the Univ. of Texas Sys. v. BENQ
12
Am. Corp., 533 F.3d 1362, 1369 (Fed. Cir. 2008) (internal citations omitted). Nevertheless, [a]
13
disclaimer must be clear and unmistakable, and unclear prosecution history cannot be used to
14
limit claims. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009)
15
(citing Free Motion Fitness, Inc. v. Cybex Intl, Inc., 423 F.3d 1343, 1353 (Fed. Cir. 2005)).
16
Samsung argues that, during prosecution, the U.S. Patent and Trademark Office Examiner
17
(Examiner) only allowed the asserted claims to survive the examination due to the sharing of a
18
history list among different applications for a particular field class. See Samsung Resp. at 3.
19
Samsungs argument is not, however, supported by the record.
20
During the prosecution of the 502 Patent, the Examiner indicated that various claims of the
21
502 Patent were obvious in light of various references and screenshots of the Borland Turbo C++
22
software (Turbo). See Decl. of Victoria Maroulis in Supp. Samsung Resp. Br. (Maroulis
23
Decl.), ECF No. 352, Ex. 2, at APLNDC630-0000056178-APLNDC630-0000056180 (Office
24
Action Summ.). The Examiner rejected Claims 5-7, 11-13, 15, and 26 because the Examiner
25
believed that, among other things, Turbo taught the use of a history list to expedite the entry of
26
information of previously used data. Office Action Summ. at 5.
27
In response to an interview, however, the Examiner amended the claims by adding a field
28
class limitation and allowed the claims. See Maroulis Decl., Ex. 2 at APLNDC630-00000561839
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APLNDC630-0000056189 (Notice of Allowability). As an example, Claim 11 was rewritten to
state displaying a form on the display screen of the computer system, the form having at least one
field associated with a field class and requiring data entry by a user; displaying a history list
associated with the field class on the display screen. . . . Notice of Allowability at 2 (emphasis in
original). As a basis for allowance, the Examiner stated that Turbo does not teach updating the
history list associated with the field class. In contrast, [Turbo] seems to limit updating to a specific
entry field instance. Notice of Allowability at 4. Therefore, the Examiner concluded that the
prior art does not render obvious nor anticipate the combination of claim elements in light of the
specification. Id.
10
Notably, during the prosecution, the Examiner made no reference to multiple applications.
11
Instead, the Examiner appears to have allowed the claims on the ground that Turbo did not teach:
12
(1) associating several different fields with the same field class, and then (2) associating a history
13
list with that field class. Rather, Turbo only associated one field with each history list and did
14
not group multiple fields into the same class. Notice of Allowability at 4. Therefore, the
15
prosecution history does not support Samsungs contention that the history list must be shared
16
between multiple applications.
17
18
c.
Extrinsic Evidence
Finally, in support of its proposed construction, Samsung cites to the extrinsic evidence,
19
which is generally not dispositive of claim construction. Specifically Samsung cites to the
20
deposition of Stephen Capps, the patents inventor. See Samsung Resp. at 4. Samsung maintains
21
that Mr. Cappss interpretation of the novel elements of the 502 Patent support Samsungs
22
contention that a history list must be shared between applications. Mr. Capps identified the
23
sharing of information between applications as the key difference between the prior art and the
24
502 Patent. Id. at 3-4 (citing Maroulis Decl., Ex. 3, Dep. Tr. of Mr. Capps from Dec. 7, 2012).
25
However, as discussed above, the specification and prosecution history do not support reading this
26
limitation into the claim language. Thus, the Court gives this source little or no weight. See Bell &
27
Howell DMP Co. v. Altek Systems, 132 F.3d 701, 706 (Fed. Cir. 1997) (The testimony of an
28
inventor . . . concerning claim construction is . . . entitled to little or no consideration. The

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testimony of an inventor often is a self-serving, after-the-fact attempt to state what should have
been part of his or her patent application) (quoting Markman, 52 F.3d at 983).
3
4
Accordingly, the Court construes history list to mean a list of previously used entries.
2.
field class
5
6
7
a data element that identifies a category of

information
Should the Court find construction necessary: a
category of information associated with a field
8
9

10
11
12
13
The term field class appears in Claims 1-2, 4-5, 8, 11, 13-17, 20, 22-24, and 26 of the
502 Patent. For example, independent Claim 11 of the 502 Patent recites:
A method for inputting data into a computer system having a display screen
associated therewith, said method comprising:
(a) displaying a form on the display screen of the computer system, the form having
at least one field associated with a field class and requiring data entry by a user;
14
(b) displaying a history list associated with the field class on the display screen on
the computer system;
15
(c) determining whether the user has selected an item from the displayed history
list;
16
17
18
19
20
21
22
23
24
25
26
(d) assigning a data value for the field to that of a data value associated with the
selected item when said determining (c) determines that the user has selected an
item; and
(e) updating the history list in accordance with the selected item when said
determining (c) determines that the user has selected an item.
502 Patent at col. 18:7-25 (emphasis added).
Apple maintains that the term field class does not need construction or that, if it does, it
should be understood as a class or category of information with which a field is associated.
Apple Br. at 7. Samsung contends that field class should be construed not only to mean a
category of information, but also an actual data element in software that identifies a category of
information. See Samsung Resp. at 8. For the reasons stated below, the Court concludes that
Samsungs proposed construction is not supported by the claim language or specification and
27
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adopts Apples construction of field class as a category of information with which a field is
associated.
3
4
as something that may be associated with at least one field (such as on a form) and with at least one
history list or table. See 502 Patent at col. 18:7-25. Thus, the Court turns to the specification for
further guidance.

The claims of the 502 Patent do not define field class and only reference a field class
The invention disclosed by the 502 Patent allows for a user to easily fill out electronic
forms by suggesting historical entries to the user when the same or similar fields on different forms
are encountered. See 502 Patent Abstract. The specification describes a field class as a
10
category of information corresponding to a history list or history table that can also be associated
11
with a particular field on a form. See 502 Patent at col. 2:45-66. The field class describes the
12
particular category of historical information that should be associated with a particular field. For
13
example, as described in the 502 Patent, the form fields name, caller, and to may all be
14
associated with the same field class of full names. See 502 Patent at col.10:45-67; id. at col.
15
16:23-49. As such, if a user selected the field name or caller depending on the form, the same
16
history list containing full names would be referenced to offer suggestions to the user. As
17
described in the specification, each history list is associated with a field class . . . [and] [t]he input
18
fields of a form then designate the field class associated therewith. 502 Patent at col. 10:64-66.
19
Thus, the specification makes clear that a field class should at least be understood to be a
20
particular category of information that is associated with a particular field on a document.
21
The remaining dispute centers on whether a field class is merely a category of
22
information or if it is an actual data element as proposed by Samsung. Samsung states that,
23
because the concept of a field class must exist in software, and not simply a users mental
24
impression, it must exist as a data element. See Samsung Resp. at 10. According to Samsung,
25
to not tie the field class to a concrete data element in a software program would render the
26
limitation essentially meaningless. Id. (If the field class in the 502 Patent was nothing more
27
than an abstract association between a field and a category of information, and not a tangible data
28
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element in the software, the claims would be unpatentable, and thus would not have been
allowed.) (emphasis in original).
While the invention of the 502 Patent is related to software and computer systems, this fact
alone does not require that each claim term be explicitly defined as a particular software element to
become meaningful. Apples proposed construction will not relegate field class to a users
mental impression or abstract idea, as Samsung contends, see Samsung Resp. at 10, because it
is not just an amorphous concept left to the users mind. It is a discrete association that is actually
carried out on a computer system. See 502 Patent at col. 18:7-25 (claiming a method for
inputting data into a computer system wherein the display screen and associated computer

10
11
display[] a history list associated with the field class on the display screen.).
Moreover, the term data element does not appear anywhere in either the intrinsic record
12
or the extrinsic evidence submitted by Samsung, and would thus interject a new and undefined
13
term into the claim language. The goal of claim construction is to remove ambiguity from the
14
claim terms. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
15
Because the specification does not make reference to a data element or any equivalent limitation,
16
the addition of that term would add unnecessary ambiguity and confusion to the claims.
17
18
Accordingly, the Court construes the term field class to mean a category of
information associated with a field.
19
B.
20
The disputed term action processor appears in Apples 647 Patent. The 647 Patent,
21
entitled System and Method for Performing an Action on a Structure in Computer-Generated
22
Data, discloses a system and a method [that] causes a computer to detect and perform actions on
23
structures identified in computer data. 647 Patent Abstract. Generally speaking, the system
24
identifies structures, associates . . . actions to the structures, enables selection of an action and
25
automatically performs the selected action on the structure. Id. at col. 1:66-col. 2:2. The
26
application for the 647 Patent was filed on February 1, 1996, and the 647 Patent issued on August
27
31, 1999.
The 647 Patent
28
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1.
action processor
2
3
4
a program routine separate from a client that

performs the selected action on the detected
structure
Should the Court find construction necessary:
program routine(s) that perform the selected
action on the detected structure
5
6
7
8
9

10
11
12
13
14
15
The term action processor appears in Claim 1 of the 647 Patent. Independent Claim 1 of
the 647 Patent recites:
A computer-based system for detecting structures in data and performing actions on
detected structures, comprising:
an analyzer server for detecting structures in the data, and for linking
actions to the detected structures;
a user interface enabling the selection of a detected structure and a
linked action; and
16

17
a processing unit coupled to the input device, the output device, and the
memory for controlling the execution of the program routines.
18
19
20
21
22
23
24
25
26
27

The 647 Patent discloses a system and method for recognizing when certain patterns or
data structures are present in a data set, and automatically providing optional actions for a user to
perform on the data structures. See id. at col. 2:21-54. For example, the system may scan a
Microsoft Word document and recognize when phone numbers or email addresses appear in the
document. See id. at col. 1:24-35; see also id. at col. 2:42-53. Then, the system may link actions
to these structures and allow the user to select an action. Id. As an example, when an email
address is detected in a document, the system may automatically give the user the options to send
an email to the identified address or to store the email address in an electronic address book. Id. at
col. 5:5-18. As another example, when a phone number is detected in a document, the system may
28
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give the user the option to place a call to that phone number or to place the number in an electronic
telephone book. Id.

As described in the claims and the specification, the invention of the 647 Patent achieves
this functionality principally through the use of three program routines: (1) an analyzer server; (2) a
user interface; and (3) an action processor. Collectively, the specification refers to these routines
as the program. See id. at col. 7:9-24 (Claim 1); id. at col. 2:25-27 (the program includes
program subroutines that include an analyzer server, an application program interface, a user
interface and an action processor.); id. at Fig. 2 (depicting a Program, 165, made up of
subroutines including the action processor). The analyzer server detect[s] structures [(patterns)]
10
in the data, and link[s] actions to the detected structures. Id. at col. 7:16-17. The user interface
11
enable[s] the selection of a detected structure and a linked action. Id. at col. 7:18-19. Finally,
12
the action processor perform[s] the selected action linked to the selected structure. Id. at col. 7:
13
20-21. The action processor operates by retriev[ing] the sequence of operations that constitute the
14
selected action, and perform[ing] the sequence using the selected structure as the object of the
15
selected action. Id. at col. 4:54-57. In the above example involving the Word document, if the
16
user elected to save the recognized phone number to an electronic telephone book, the action
17
processor would locate[] and open[] the electronic telephone book, [and] place[] the telephone
18
number in the appropriate field and allow[] the user to input any additional information into the
19
file. Id. at col. 5:47-50.
20
The parties agree in principle that the action processor is a program routine that
21
performs the selected action on the detected structure. See Apple Br. at 10; Samsung Resp. at 11.
22
However, Samsung seeks to add a limitation that this action processor must be separate from a
23
client [or application].2 Compare Apple Br. at 11, with Samsung Resp. at 12. Apple maintains
24
that reading separate from a client into the claim language would both introduce ambiguity and
25
improperly import a limitation into the claim based on a particular embodiment of the invention.
26
See Apple Br. at 11-13. The Court finds that, while the specification discloses several
27
28
Samsung stated that there is no difference in this context between the term Client, which is not
found in the patent, and the term Application, which is found in the patent. See Samsung Resp.
at 13.
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embodiments which utilize sharing between applications, sharing is not a requirement. Therefore,
the Court adopts Apples construction.
3
4
The claims themselves neither mention a client nor make reference to the location of the
action processor, apart from it being located in the memory storage of a computer-based system
(which it would be whether integrated into, or separate from, any client or application). See 647
Patent at col. 7:9-24. The claims do, however, provide some guidance. Specifically, the doctrine
of claim differentiation suggests that the action processor is not necessarily separate from the
application supplying the data.
10
a.
The presence of a dependent claim with an additional limitation indicates that the limitation
11
is not found in the independent claim it references. See Phillips, 415 F.3d at 1314-15. Here,
12
independent Claim 15 recites:
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
In a computer having a memory storing actions, a method for causing the computer
to perform an action on a structure identified in computer data, comprising the steps
of:
receiving computer data;
detecting a structure in the data;
linking at least one action to the detected structure;
enabling selection of the structure and a linked action; and
executing the selected action linked to the selected structure.
647 Patent at col. 8: 23-34. Dependent Claim 16 includes an additional limitation not
found in Claim 15:
The method recited in claim 15, wherein the computer data is received from the
application running concurrently.
Id. at col. 8:34-35.
The claims strongly suggest that an action processor is not necessarily separate from
the application containing the data. While Claim 16 includes the requirement that the data
be received from a separate application, this limitation requiring separateness is not found
in Claim 15. Under the doctrine of claim differentiation, it appears that Claim 15 may be
satisfied by a program that is not separate. Though Claim 15 does not actually use the term
action processor, it does refer to executing the selected action linked to the selected
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structure, which is precisely the language used in Claim 1 to describe the function of the
action processor. See 647 Patent at col. 7:20-21. A very similar argument arises with
respect to Claim 1, which claims the action processor, and Claim 3, which claims the
system recited in claim 1, wherein the input device receives the data from an application
running concurrently. . . . Id. at col. 7:27-30.

Samsungs arguments for requiring separateness based on the embodiments disclosed in the
specification are insufficient to overcome the clear indication from the claims that no such
separateness is required. As Samsung points out, the specification of the 647 Patent consistently
describes the claimed invention interacting with an application. See, e.g., id. at col. 3:36-44
10
(Application 167 is a program, such as a word-processor or email program. . . . The [claimed
11
invention] identif[ies] structures in the data presented by application 167, [and acts] to associate
12
actions with the structures identified in the data, to enable the user to select a structure and an
13
action, and to automatically perform the selected action on the identified structure.). In addition,
14
as noted by Samsung, the preferred embodiment of the 647 Patent clearly contemplates the
15
claimed program routines interacting with a separate application. Specifically, Figure 1 of the
16
specification shows a box (element 165, identified as Program) containing the program routines
17
of the claimed invention (including the action processor). This Program is adjacent to a separate
18
box (element 167), identified as the Application, on which the Program acts. See id. at Fig. 1.
19
Similarly, Figures 8 and 9 show the claimed invention operating during the runtime of an
20
apparently separate application. Id. at col. 5:50-55 (FIGS. 8 and 9 display a flowchart illustrating
21
preferred method 800 for recognizing patterns in documents and performing actions. This method
22
is carried out during the run-time of application 167.).
23
However, the fact that the specification depicts the program acting on a separate application
24
does not ultimately support Samsungs proposed limitation. First, the language of the claims
25
should not be limited to only the preferred embodiment. See Liebel-Flarsheim Co. v. Medrad, Inc.,
26
358 F.3d 898, 906 (Fed. Cir. 2004). Second, the figures of the specification are often idealized or
27
simplified renditions of the claimed invention, and the claims should not be limited to those
28
renditions. Prima Tek II, L.L.C., 318 F.3d at 1148. Finally, nothing in the specification clearly
17
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states that the patentee intended the invention only to operate in conjunction with a separate
application. In fact, the summary of the invention states that the program may be executed during
the run-time of another program, i.e. the application which presents the document, such as
Microsoft Word. 647 Patent at col. 2:42-46 (emphasis added). The invention summary does not
say that it must or shall operate during the run-time of another program.
In addition, Samsung argues that the action processor must be separate because the
detected structure and selected action are transmitted to the action processor. Samsung Resp. at
12 (citing 647 Patent at col. 4:52-54). Presumably, Samsung is arguing that information cannot be
transmitted from the application to the action processor if the action processor is integrated into
10
the application. However, the language Samsung cites, when read in context, specifies that, as
11
depicted in Figure 2, it is the user interface that transmits the information to the action processor.
12
See 647 Patent at col. 4:52-54. In Figure 2, the user interface and the action processor are
13
both part of the larger Program, indicated by Box 165. Thus, the transmission that the Patent
14
is describing occurs internally within the Program, regardless of whether that Program is integrated
15
into the application or completely separate from it. This language thus does not support Samsungs
16
construction.
17
Samsung also claims that one of skill in the art would understand the word processor to
18
imply a separate software component that executes actions on behalf of client applications. See
19
Samsung Resp. at 14. However, Samsung provides no legal or factual support for this proposition.
20
Indeed, Samsungs argument appears to be premised on the generally understood meaning of a
21
different word entirely: server.
22
23
24
25
Therefore, the claim language and specification do not support Samsungs contention that
the action processor must be separate from a client.
b.
Prosecution History
Samsung also argues that the prosecution history supports Samsungs position that the term
26
action processor, as it is used in the 647 Patent, refers to a program routine that is separate
27
from a client because the applicant referred to the invention as a system-wide service. See
28
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Samsung Resp. at 14. This argument is of limited relevance given the clear indication in the
claims. However, for the sake of thoroughness, the Court will address the prosecution history.

During the prosecution of the 647 Patent, the PTO Examiner indicated that the claims of
the 647 Patent were anticipated by U.S. Patent No. 5,574,843 (Gerlach). Decl. of Jennifer Rho
in Supp. Apple Br. (Rho Decl.), ECF No. 333, Ex. E, at 2. Gerlach disclosed [a] computer-
based system for detecting structures in data and performing actions on detected structures . . . .
Gerlach Abstract. The Examiner rejected independent Claims 1-3, 11-14, and 20 of the 647
Patent because the Examiner believed that, among other things, an action processor was
disclosed by Gerlach. Id. at 2-3.
10
Notably, the prosecution history indicates that the disagreement between the Patentee and
11
the Examiner about the meaning of action processor was over the definition of structures, not
12
over the location of the action processor. Specifically, in response to the rejection, the Patentee
13
argued that Gerlach did not teach an action processor because it did not describe selecting a
14
pre-existing structure detected from within externally generated data. Rho Decl. Ex. F, at 5. The
15
Patentee argued that Gerlach relied on internally generated structures, such as unique computer
16
code, as opposed to using pre-exiting structures having semantic significance such as phone
17
numbers, e-mail addresses, post-office addresses, zip codes and dates. Id. at 4 (quoting the 647
18
Patent). The Patentee distinguished Gerlach on the grounds that the data structures in the 647
19
Patent were generated externally to [Patentees] system (e.g., the outside world defines that a 7-
20
or 10-digit string with appropriate dashes represents a telephone number). Id. (emphasis in
21
original). Thus, the patentee made clear that the action processor, unlike the invention in Gerlach,
22
does not define the structures. However, this clarification says nothing about whether the action
23
processor must be separate from the application on which it operates.
24
Samsung also argues that the Patentees explanations for how the invention is different
25
from the Gerlach invention require that the invention of the 647 Patent be considered separate
26
from a client. Samsung Resp. at 12, 14. In support of its argument, Samsung states that, because
27
the applicant referenced the invention as a system-wide service that can enable cooperating
28
systems to detect recognizable structures, the action processor must be separate from a client.
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Id. at 12. Otherwise, presumably, it would not need to be system-wide, as it could be confined to a
single program. However, even if the mention of a system-wide service does indicate that the
invention served to enable cooperation across different applications, that does not mean that such
cooperation is required to satisfy the claims. Thus, the prosecution history of the 647 Patent does
not support Samsungs contention that the action processor must be separate from a client.
6
7
the specification and the prosecution history, and the Court construes action processor to mean
program routine(s) that perform the selected action on the detected structure.
9
10
Accordingly, Apples construction, which mirrors the claim language, is supported by both
C.
The 414 Patent
The disputed term concurrently with appears in Apples 414 Patent. The 414 Patent,
11
entitled Asynchronous Data Synchronization Amongst Devices discloses [s]ystems [and]
12
methods . . . for synchronization tasks and non-synchronization tasks being executed concurrently.
13
414 Patent Abstract. The system allows, for example, a user [to] manipulate or view a calendar
14
while a synchronization operation, which synchronizes structured data from, for example, the
15
calendar or other databases such as a contact database, is being performed. 414 Patent at col.
16
2:37-40. The application for the 414 Patent was filed on January 7, 2007, and the 414 Patent
17
issued on July 20, 2010.
18
1.
concurrently with
19
20
At the same time as
The synchronization thread and the nonsynchronization thread are both active during an
overlapping time interval.
21
22
23
24
The term concurrently with appears in Claims 1, 11, 21, 23, 27, and 31 of the 414 Patent.
25
For example, independent Claim 1 of the 414 Patent recites:
26
A machine implemented method comprising:
27
28
executing at least one user-level non-synchronization processing thread,

wherein the at least one user-level non-synchronization processing thread is
provided by a user application which provides a user interface to allow a
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user to access and edit structured data in a first store associated with a first
database; and
1
2
executing at least one synchronization processing thread concurrently with

the executing of the at least one user-level non-synchronization processing
thread, wherein the at least one synchronization processing thread is
provided by a synchronization software component which is configured to
synchronize the structured data from the first database with the structured
data from a second database.
3
4
5
6

414 Patent at col. 32:56-col. 33:3 (emphasis added).

The 414 Patent describes systems and methods that allow for both synchronization tasks
and non-synchronization tasks to be executed concurrently. 414 Patent at col. 2:18-20. With the
advent of mobile computing devices, many databases contained on those devices
such as contact
10
information, to-do lists, or calendar information
11
computers. See id. at col. 1:13-35. It is desirable that these databases synchronize with each other
12
such that, for example, when a user makes changes to his or her calendar on a mobile phone, that
13
change is reflected on the calendar on his or her home computer. Id. For this to be accomplished,
14
the two computing devices need to synchronize with each other. Id. Traditional synchronization
15
software required that the program being synchronized be locked or inaccessible during the
16
synchronization operation. Id. at col. 1:35-66. The invention embodied in the 414 Patent
17
overcomes the limitations of these prior systems and allows for the synchronization operation to
18
run currently with the user performing non-synchronization operations. Id. at col. 2:18-27. For
19
example, in certain embodiments a user may view or manipulate a calendar while a
20
synchronization operation, which synchronizes structured data from, for example, the calendar or
21
other databases such as the contact database, is being performed [at the same time]. 414 Patent at
22
col. 2:37-40.
23
often need to be shared between multiple
The parties disagree as to what it means for the synchronization operation to be executed
24
concurrently with the non-synchronization operation. The parties proposed constructions differ
25
as to whether concurrently with means that both the synchronization and non-synchronization
26
threads are being executed by a processor at precisely the same instant, as Samsung proposes, or
27
merely within an overlapping time frame
28
processes
as with rapid switching back and forth between the
as Apple proposes. The Court concludes that, while the claims and specification are
21

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unclear as to the meaning of concurrently with, the extrinsic evidence supports Apples proposed
construction that the threads need only be active during an overlapping time interval.
3
4
The claims themselves do not define concurrently with other than to state that the
processing thread[s] associated with the synchronization and non-synchronization routines are
executed concurrently. See 414 Patent at col. 32:56-col. 33:3. Thus, the Court turns to the
specification for further guidance.

a.
The specification provides some limited guidance as to the meaning of concurrently with.
Samsungs proposed construction at the same time is found in the specifications description of
10
Figures 13A and 13B, but it does not provide any clearer guidance as to whether both processing
11
threads are being executed at the exact same instant, or if they are merely being completed during
12
an overlapping time frame. See id. at col. 24:53-67 ([A] user on [a] device may be viewing a
13
calendar . . . while at the same time a synchronization service is synchronizing the calendar. . . .)
14
(emphasis added).
15
The specification does, however, make clear that the invention can operate either on a
16
single processor or on multiple processors. Specifically, the description for Figures 13A and 13B
17
states that [the] non-synchronization processes and synchronization processes occur[]
18
concurrently in that they are both being executed by one or more processing systems. See id. at
19
col. 24:45-47. Thus, the specification contemplates that the synchronization and non-
20
synchronization processing threads may be executed concurrently either by a single processor or
21
by multiple processors. The description of Figure 3 also describes embodiments of the invention
22
containing either one or multiple processors. See id. at col. 6:15-17 (The data processing system
23
60 shown in FIG. 3 includes a processing system, which may be one or more microprocessors
24
. . . .); see also id. at 5:23-24 (The processing system 47 may include one or more
25
microprocessors . . . .).
26
Thus, while the meaning of concurrently with is not apparent from the words of the
27
claims or of the specification, the specification does make clear that the processing threads for both
28
the synchronization and non-synchronization processes may be executed concurrently by a

22
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device with only one processor. Therefore, an appropriate construction for concurrently with
must be one that can be implemented on a single processor. As the specification provides no
further guidance, and the parties have submitted no prosecution history, the Court turns to extrinsic
evidence.

b.
Extrinsic Evidence
When interpreting a claim, a court should first look to the intrinsic evidence such as the
claim language, specification, and prosecution history. Vitronics, 90 F.3d at 1582. If ambiguity
remains as to the meaning of a claim term after considering the intrinsic evidence, the court may
turn to extrinsic evidence. Id. at 1584.
10
In this dispute, the claims, specification, and prosecution history do not provide an adequate
11
definition of concurrently with. The specification repeatedly makes reference to a one-processor
12
embodiment of the invention that may execute the processing threads for both the synchronization
13
and non-synchronization operations concurrently, but the specification does not describe how
14
this one-processor embodiment accomplishes this feat. The Court thus considers extrinsic
15
evidence as to what it means for a single processor to execute two threads concurrently.
16
In support of its construction that the two threads need only be active during an
17
overlapping time interval, rather than at precisely the same instant, Apple argues that a single
18
processor can only execute one single programming instruction at a time. See Apple Br. at 17.
19
Thus, Apple maintains, it was commonly understood in the computing and software field at the
20
time of the invention that concurrently, when referencing a single processor with multiple
21
program threads, meant that the processor would rapidly switch back and forth between the
22
multiple threads, thereby giving the illusion of simultaneous processing. Id. Apple submitted
23
excerpts from several technical dictionaries and an operating system textbook in support of its
24
argument. See Rho Decl., Exs. I , J, K. The 2004 Wiley Electrical and Electronics Dictionary
25
states that, because microprocessors can work so quickly, [concurrent execution] seems
26
simultaneous, even though each operation is usually executed in sequence. See Rho Decl., Ex. I,
27
Kaplan, Wiley Electrical and Electronics Dictionary (2004) at 138. Additionally, the 1992
28
textbook Modern Operating Systems states that, strictly speaking, at any instant of time, the
23
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[single processor] is running only one program, in the course of 1 second, it may work on several
programs, thus giving users the illusion of parallelism. See Rho Decl. Ex. J, Tanenbaum, Modern
Operating Systems (1992) at 27. Thus, Apple argues that its construction, [both] thread[s] are
both active during an overlapping time interval, accurately describes this rapid-swapping
operation of a single processor that was included in the common understanding of concurrently.
This definition does not require true simultaneous processing of the multiple threads (which would
require more than one processor or a multi-core processor).

Samsung argues that it is factually incorrect to state that a single microprocessor is . . .

incapable of executing two threads at the same time. Samsung Resp. at 17. Samsung states that,
10
at the time of the 414 Patent, multi-core processors existed that were capable of being configured
11
to execute multiple threads at the same time. Id. at n.8. Thus, according to Samsung, a single
12
processor could execute two threads simultaneously, without the rapid switching contemplated by
13
Apple, as long as it was a multi-core processor, and thus Samsungs construction could be correct
14
even for single-processor embodiments.
15
Apple, however, has presented convincing evidence in the form of an IBM technical paper
16
that, even if multi-core processors were available at the time of the invention, they were not
17
considered to be single processors. Rather, they would be considered two physical processors on
18
one chip. See Decl. of Jennifer Rho in Supp. Apple Reply (Rho Reply Decl.), ECF No. 362,
19
Ex. 3, at 4. Thus, the single processor embodiments contemplated by the specification do not seem
20
to include multi-core processors, which would be considered multi-processor systems.
21
Moreover, as Apple points out, the specification also discloses implementation on a
22
cellular telephone with PDA-like functionality. 414 Patent at col. 6:46. Apple has presented
23
evidence that the first cellular phone with a multi-core processor was not released until December
24
of 2010, see Rho Reply Decl. Ex. 4, while the 414 Patent Application was filed in July of 2010.
25
Thus, at the time of the 414 Patents application, any embodiment on a cellular phone most likely
26
was intended to work on only a single processor, without multi-core functionality. As the parties
27
appear to agree that one basic (non-SMT, non-dual core) single processor cannot execute two
28
threads in precisely the same instant, the specifications indication that the invention can be
24
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implemented on a single processor makes clear that concurrently with cannot be given a meaning
that could not be implemented in one single processor.
3
4
Samsung does not provide any reliable extrinsic evidence for its claim that persons of ordinary skill
in the art would have understood a single processor to reference only multi-core processors at the
time of the 414 Patent. See Samsung Resp. at 19-20. Nor does Samsung provide any evidence to
contradict Apples evidence that Samsung claims is an inaccurate representation of the state of the
available evidence at the time of the invention.

While Samsung criticizes Apples extrinsic evidence as cherry picked and out of date,
Thus, the extrinsic evidence indicates that a person of ordinary skill in the art at the time of
10
the invention would have understood concurrently to include the kind of rapid switching
11
contemplated by Apples proposed construction, which would permit the invention to be
12
implemented on a single processor. Accordingly, Apples construction is supported by both the
13
intrinsic and extrinsic evidence, and the Court construes concurrently with to mean the
14
synchronization thread and the non-synchronization thread are both active during an
15
overlapping time interval.
16
D.
17
The disputed term completely substitute[e/ing] display of the list [of interactive items]
18
with display of contact information appears in Apples 760 Patent. The 760 Patent, entitled
19
Missed Telephone Call Management for a Portable Multifunction Device discloses a computer-
20
implemented method [for managing missed calls] . . . for use in conjunction with a portable
21
electronic device with a touch screen display. 760 Patent Abstract. The method allows, for
22
example, [displaying] a list of items comprising missed telephone calls . . . [and] [u]pon detecting
23
user selection of an item in the list, [displaying] contact information . . . for a respective caller
24
corresponding to the user selected item. Id. The 760 Patent is intended to enable smartphone
25
users to contact a missed caller easily and quickly by phone, e-mail, instant message, or other
26
method of communication with just a few simple gestures on a touchscreen. The application for
27
the 760 Patent was filed on June 27, 2007, and the 760 Patent issued on September 6, 2011.
The 760 Patent
28
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1.
1
2
3
4
5
6
7
Completely substitut[e/ing] display of the list [of interactive items] with

display of contact information
Original: Display[ing] numbers, addresses,

and/or instant messaging usernames for
contacting a caller such that none of the list of
missed calls is visible.
Markman Revised Construction:3 Entirely
replac[e/ing] the display of interactive items
from a missed call list with the contact list
entry
Original, should the Court find construction
necessary: Replace[e/ing] the display of the list
of interactive items with the display of
information for a selected contact
Markman Revised Construction: Displaying at
least two contact objects in place of the display
of the list of interactive items
8
The term completely substitute[e/ing] display of the list [of interactive items] with display
9
of contact information appears in various forms in Claims 1, 8, 10, 12, 14, 16, 18, 19, and 21 of
10
the 760 Patent. For example, independent Claim 1 of the 760 Patent recites:
11
A method, comprising:
12
at a portable electronic device with a touch screen display:
13
displaying a list of interactive items comprising missed telephone

calls, wherein each item in the list of interactive items includes a first
interactive displayed portion and a second interactive displayed
portion distinct from the first interactive displayed portion;
14
15
immediately in response to detecting a finger gesture on the first

interactive displayed portion of a respective user selected item in the
list, initiating a return telephone call to a return telephone number
associated with the respective user selected item;
16
17
18
immediately in response to detecting a finger gesture on the second

interactive displayed portion of the respective user selected item in
the list, completely substituting display of the list of interactive
items with display of contact information for a respective caller
corresponding to the respective user selected item, the displayed
contact information including a plurality of contact objects; the
plurality of contact objects including:
19
20
21
22
a first contact object comprising a telephone number object

having the return telephone number, and
23
24
25
26
27
28
During the technology tutorial, the Court requested that the parties clarify their dispute over
completely substituting as the parties briefing and tutorials were unclear and the parties
appeared to agree on several aspects. At the claim construction hearing, the parties narrowed and
clarified their dispute for the Court and also proposed new constructions for completely
substituting. See Tr. at 82:11-83:14. The Courts Order is directed toward the parties revised, as
opposed to original, constructions.
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a second contact object associated with a non-telephonic

communication modality for contacting the respective caller;
and
1
2
immediately in response to detecting user selection of the second

contact object, initiating a communication with the respective caller
via the non-telephonic communication modality corresponding to the
second contact object.
3
4
5
6
7
8
9

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

The 760 Patent claims a method for managing missed telephone calls on a mobile device,
such as a smartphone. See 760 Patent Abstract. The Background of the 760 Patent notes that,
due to the small size of modern smartphones, it can often be difficult to design an interface that is
simple and easy to use, but still allows the user to access the multitude of functions the device
offers. See id. at col. 1:49-col. 2:18. The inventors of the 760 Patent were particularly concerned
with the design of an interface that would allow the user to view missed calls and be able to
respond to those calls in one or more ways without having to memorize complicated key
sequences and menu hierarchies. Id. at col. 1:66-67. In some embodiments, the user will be
provided with a screen that lists missed calls from various persons. Id. at col. 24:45-64; see also id.
at col. 30:41-64. Each entry on the list will have two distinct interactive portions (regions where
the user may tap a touchscreen and activate a response). Id. at col. 30:41-61. If the user taps on
the first interactive portion of an item, a return phone call is initiated to the return telephone
number associated with that item. Id. at col. 32:16-23. If, instead, the user taps on the second
interactive portion of an item, a display of contact information is shown for the caller
corresponding to the selected item. Id. at col. 31:3-22. The screen showing the contact
information for the selected item is completely substitute[ed] for the original screen containing
the listing of missed calls. Id.; id. at col. 36:19-49 (Claim 1). The new display shows the contact
information associated with the selected person and allows the user to communicate with that
person in a variety of ways (such as another telephone number, instant messaging, or email). Id. at
col. 31:23-47.
The parties appear to agree that, visually, the second display must take the place of the first
display rather than being superimposed or concealing some portion of it. During the claim
28
27
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construction hearing, the parties clarified that their dispute centered around whether completely
substituting referred to completely substituting the display only, or the content of the display. See
Tr. at 83:11-24 (describing Apples view on the limitation as relating to how youre viewing the
information, not necessarily what the information is, whereas Samsungs position relates to the
content of the information and requires some additional information). Apple maintains that the
second display need only contain a plurality of contact objects, such as phone numbers or email
addresses, as stated in the claim language. Samsung, on the other hand, contends that the second
display of contact information must contain information beyond just replicating a portion of the
original missed call list; specifically, the second display contains a contact list entry in addition
10
to the plurality of contact objects. Accordingly, the Court will address the required and permissible
11
content of the second display.
12
The parties dispute centers around the prosecution history of the 760 Patent, but the Court
13
will begin with the claims and specification as they form the objective starting point for the claim
14
construction. For the reasons stated below, the Court concludes that Samsungs proposed
15
construction is not supported by the prosecution history, and construes this term as displaying at
16
least two contact objects in place of the display of the list of interactive items.
17
a.
Claim Language
18
The claims themselves do not provide a clear answer to the parties dispute: whether
19
completely substituting refers to merely swapping the displays or, as Samsung contends, it refers
20
to the information in the second display that must be completely substituted and must include a
21
contact list entry.
22
Independent Claim 1 states that the second display includes contact information for a
23
respective caller, and that this contact information includes a plurality of contact objects,
24
including at least one contact object comprising a telephone number and a second contact object
25
associated with a non-telephonic communication method for contacting the respective caller. See
26
760 Patent at Claim 1, col. 36:19-49. Based on this plain language, Claim 1 does not appear to
27
require that there be a contact list entry or other type of information in addition to the plurality of
28
the required contact objects. Claim 1 only requires that the second display contain contact
28
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information, which must include at least two contact objects. Claim 1 does not, however,
define or make clear whether completely substituting refers to substituting only the actual
displays, or whether it refers to the information contained in the displays. As such, the Court turns
to the specification for further guidance.

b.
Specification
For the specification to limit the scope of a claim, there must be a clear disavowal of the
claim scope. See Omega Engg, Inc., 334 F.3d at 1324. Samsung argues that Apples proposed
construction is overly broad because it potentially reads the limitation as being met by merely a
reiteration of missed call information for that particular caller. See Samsung Resp. at 24.
10
Specifically, Samsung argues that Apples proposed construction would allow the second display
11
to merely replicate a portion of the missed call list (for example, by merely displaying a list of
12
missed calls from the selected contact). Tr. at 118:17-119:25. Samsung objects to this possibility
13
both because missed call information itself does not permit contacting the caller, as the invention
14
clearly contemplates, and because a display that includes missed call information cannot be said to
15
completely substitute for the list of missed calls. Instead, Samsung maintains that, in addition to
16
the plurality of contact objects, the second display must additionally include a contact list entry,
17
as disclosed in the specifications description of Figures 12B and 12C. See Tr. at 116:6-16; see
18
also Samsung Resp. at 22-23.
19
However, to the extent that Samsungs construction is intended specifically to foreclose the
20
inclusion of only information about missed calls in the display of contact information, the
21
specification does not include any clear disavowal of such a limited version of contact
22
information. It is true that Figure 12C specifically depicts a contact list entry comprising
23
information beyond the mere plurality of contact objects. However, the specification nowhere
24
expressly limits the claims to this one embodiment of the invention. Instead, the description of
25
Figure 12 states that, [i]n some embodiments, in response to the user activating icon 2808 for a
26
particular row . . . the touch screen displays the corresponding contact list entry for the other party
27
. . . . 760 Patent at 24:55-60 (emphasis added).
28
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Thus, based on the specification alone, the Court does not agree with Samsung that the
second display must include a contact list entry in addition to the plurality of contact objects
required by Claim 1. The contact list entry appears to be a particular element of one embodiment
described by Figure 12, not a limitation on the entire patent.
Given that completely substituting was added late in the prosecution of the 760 Patent
and that this amendment forms the basis of the parties dispute, however, the Court finds that the
specification does not clearly address to what completely substituting refers, and now turns to the
prosecution history for further guidance.

10
c.
Prosecution History
During the prosecution of the 760 Patent, the PTO Examiner allowed the claims of the
11
760 Patent after making an Examiners amendment. Rho Decl., Ex. N, at 15. The Examiner
12
stated that the claims originally were anticipated or rendered obvious by U.S. Patent No. 6,593,949
13
(Chew), U.S. Patent No. 7,680,513 (Haitani), U.S. Patent No. 7,289,614 (Twerdahl), and
14
Pub. No. US 20060281449 (Kun). See id. The Examiner altered the pertinent portion of several
15
claims to read as follows:
16
17
18
. . . immediately in response to detecting a finger gesture on the second interactive

displayed portion of the respective user selected item in the list, immediately
displaying completely substituting display of the list of interactive items with
display of contact information . . . .
19
See Rho Decl., Ex. N, at 3-14 (emphasis on additions, strikethroughs on removed portions). In
20
multiple claims, the Examiner thus added the phrase completely substituting display of the list of
21
interactive items with [the second display] in place of displaying [the second display] to allow
22
the claims over the cited prior art references. In his reasons for allowance, the Examiner stated that
23
none of the prior art taught completely substituting the display of the list of interactive items . . .
24
as defined in the specification (Figs 12B-12C) . . . . Id. at 15 (emphasis added).
25
Apple argues that the limitation completely substituting was added precisely to
26
distinguish from the Chew reference. See Apple Br. at 22. Specifically, the Chew reference
27
discloses a second display that only partially covered the first display of phone numbers. Id. Thus,
28
Apple maintains, the prosecution history makes clear that the phrase completely substituting was
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added to distinguish Chew and make clear that the 760 Patent refers to completely replacing one
display of missed calls with another display containing contact information. In essence, Apple
argues that completely substituting was added to make it clear that the second display had to
visually replace the first display, and not merely overlay or partially obscure it.

Samsung, by contrast, argues that the Examiner intended to limit the 760 Patent to only the
embodiment described by Figures 12B and 12C. See Tr. at 108:8-12. Samsung contends that the
Examiners statement should be read as requiring that the invention be limited to the display of
contact information . . . as defined in the specification (Figs 12B-12C). Tr. at 3-7. If understood
in this manner, Samsung argues that, instead of describing one embodiment of the invention, the
10
description of Figure 12
11
objects
12
Samsung concludes that the second display must contain both a plurality of contact objects and a
13
contact entry which is pulled from the phones memory and thus completely substituting the
14
information from the missed call list.
15
which describes a contact list entry in addition to a plurality of contact
is the only embodiment which was allowed by the Examiner. See Tr. at 110:3-7. Thus,
The Court disagrees with Apples contention that the amendment was made specifically to
16
address the partial displays disclosed in the Chew reference. The Examiners amendment makes
17
no reference to any specific figure of Chew, and the Examiner only referenced Chew when reciting
18
the list of prior art now overcome with the completely substituting amendment. See Rho Decl.
19
Ex. N at 15.
20
However, the Court also disagrees with Samsungs argument that the Examiners statement
21
expressly limits the claims to the contact list embodiment described by Figure 12. The Examiner
22
made no statement to that effect, and it appears equally likely that the Examiner was referencing
23
Figures 12B and 12C as an example of one display completely substituting or replacing another
24
from a visual, not a content, standpoint.
25
Figure 12B shows a list of missed calls, and Figure 12 C shows an entirely new display of
26
contact information which has totally replaced the display from Figure 12B. Thus, it appears that
27
the Examiners reference to those two figures was meant to demonstrate that what he meant by
28
completely substituting was that the second display was visually distinct from the first (as shown
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in the figures). There is no indication in the Examiners reasons for allowance that he intended to
limit the content of the displays to the content shown in Figures 12B and 12C.
Accordingly, the Court construes completely substitute[e/ing] display of the list [of
interactive items] with display of contact information to mean Displaying at least two contact
objects in place of the display of the list of interactive items.
III.

DISCUSSION REGARDING SAMSUNGS PATENTS

Next, Apple and Samsung request that the Court construe four disputed terms contained
within three of Samsungs patents. Specifically, the parties dispute the meaning of: (1) non-
scheduled transmission contained within the 807 Patent; (2) zone specific storage and interface
10
device contained within the 757 Patent; and (3) means for capturing, digitizing, and
11
compressing at least one composite signal and means for transmitting said composite signal
12
contained within the 239 Patent.
13
A.
14
The disputed term non-scheduled transmission appears in Samsungs 087 Patent.4 The
The 087 Patent
15
087 Patent, entitled Method and Apparatus for Performing Non-Scheduled Transmission in a
16
Mobile Communication System for Supporting an Enhanced Uplink Data Channel, discloses a
17
mobile communication method and apparatus that allows user equipment (UE), such as a cellular
18
phone, to efficiently send non-scheduled data transmissions without interfering with other UEs.
19
087 Patent Abstract. This is accomplished by specifying possible transmission time intervals
20
(TTIs) during which a UE may send non-scheduled transmissions. The application for the 087
21
Patent was filed on July 18, 2005, taking priority from a family of Korean patent applications, of
22
which KR 10-2004-055678 was the earliest filed, on July 16, 2004. The 087 Patent issued on July
23
13, 2010.
24
25
26
27
28
The parties initially disputed the term N as well in the 087 Patent. However, after the
technology tutorial held on February 14, 2013, the parties agreed that N should be construed as
a positive integer. See Joint Submission Re: Claim Constr., ECF No. 389.
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1.
Non-Scheduled Transmission
2
3
Transmission of uplink data by the UE without

using scheduling assignment information sent
by the base station.
4
5
6
7

Transmission of data using non-scheduled
transmission information to indicate possible
TTIs
8
9
The term non-scheduled transmission appears in Claims 1, 4, 5, 9, 12, 13, 17, 18, 20, 22,
23, and 25 of the 087 Patent.5 For example, independent Claim 1 of the 087 Patent recites:

10
A method for performing non-scheduled transmission in a user equipment (UE) of

a mobile communication system for supporting an enhanced uplink dedicated
channel (E-DCH), comprising the steps of:
11
12
receiving non-scheduled transmission information indicating k transmission

time intervals (TTIs) for transmitting non-scheduled data via the E-DCH,
wherein non-scheduled transmissions can be performed during the k TTIs
within a period having N TTIs; and
13
14
15
transmitting data on at least one TTI of the k TTIs within the period;
wherein the parameter k is an integer greater than 0 and less than or equal to
a positive integer N.
16
17

18
The 087 Patent generally relates to a method and apparatus for controlling data
19
transmission between a base station (Node B) and a plurality of user equipment (UE) devices
20
(such as 3G capable smartphones). See 087 Patent at col. 1:35-62. The invention disclosed in the
21
087 Patent improves the overall performance of such systems by reducing interference and the
22
number of communications through a novel scheduling system. See id. at col. 3:23-34. Traditional
23
systems required that the Node B and each UE go through a series of scheduling communications
24
in order for the UE to make a transmission. Id. at col. 2:42-53. These sorts of transmissions are
25
known as scheduled transmissions. Id. To make a scheduled transmission, the UE contacts the
26
27
28
Non-Scheduled Transmission Information or Non-Scheduled Transmission Determination

Value or Non-Scheduled Transmission Mode appear in other claims, but are separate terms
from Non-Scheduled Transmission.
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Node B and requests to make a scheduled transmission. Id. This request comprises information
such as the amount of data to be transferred, transmission power, and other specifics related to the
information to be transferred. Id. The Node B then considers requests from a plurality of UEs and
creates scheduling assignment information for each requested transmission. Id. at col. 2:54-61.
This scheduling assignment information lets the UE know when it can send the requested file, at
what data rate, and other transmission information. Id. The scheduling assignment information is
sent to the UE and the UE then sends the data along during the scheduled timeframe. Id.

The 087 Patent covers a novel method of transmitting data between a UE and a Node B as
non-scheduled transmissions. See 087 Patent Abstract. Rather than wait for the UE to request
10
scheduling assignment information, the 087 Patent discloses a system where a radio network
11
controller (RNC) at the Node B calculates potential transmission time intervals (TTIs) ahead
12
of time. Id. at col. 7:50-8:34. These potential transmission times, or TTIs, are then transmitted to
13
the UE, and the UE may make non-scheduled transmissions during the upcoming TTIs. Id. This
14
system offers the advantage of the UE not having to go through the process of requesting a data
15
transfer schedule from the Node B; instead, the UE is provided ahead of time with several time
16
intervals during which it may transmit data should it chose to do so. Id. at col. 6:49-59. These
17
TTIs are expressed in terms of the integers k and N; N represents the period of total TTIs, and k
18
represents the number of TTIs during the period N in which the UE may make non-scheduled
19
transmissions. Id. at col. 6:60-7:3. By allowing both traditional scheduled transmissions, and
20
the novel non-scheduled transmissions, the 087 Patent lets the Node B and UEs communicate
21
faster and with less overall interference. 087 Patent Abstract.
22
Samsungs proposed construction explains that non-scheduled transmissions are sent
23
using non-scheduled transmission information, which designates possible TTIs for transmission.
24
Apples proposed construction adds a negative limitation: that non-scheduled transmissions must
25
be sent without using scheduling assignment information sent by the base station. The Federal
26
Circuit has cautioned against reading negative limitations into claims where there is no express
27
disclaimer or independent lexicography in the written description that would justify adding that
28
negative limitation. Omega Engineering, 334 F.3d at 1322. As set forth below, there is no express
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disclaimer or independent lexicography in the claim language or specification; thus, the Court does
not find support for Apples proposed construction. Consequently, the Court adopts Samsungs
proposed construction.

a.
Claim Language
Claim 1 requires receiving non-scheduled transmission information, which indicates
particular TTIs during which the UE may transmit, and transmitting data on at least one TTI of
the possible TTIs identified. Samsungs construction, [t]ransmission of data using non-scheduled
transmission information to indicate possible transmission time intervals (TTIs), restates the claim
language in a somewhat simplified phrasing.
10
Apples construction, on the other hand, bars the use of scheduling assignment
11
information. Of the 40 independent and dependent claims, only independent Claims 27 and 34
12
refer to scheduling assignment information. Claim 34 recites in relevant part:
13
15
a receiver receiving at least one of scheduling assignment information generated by

Node B [a base station, e.g., a cellphone tower] based on scheduling information
. . . and non-scheduled transmission information indicating [TTIs] . . . for
transmitting non-scheduled data . . . .
16
087 Patent at col. 19:4-9. Claim 34 claims transmission using scheduling assignment information
17
in Node B controlled scheduling mode and transmission during at least one of the possible TTIs
18
during non-scheduled transmission mode. 087 Patent at col. 19:13-17. However, Claim 34
19
does not explicitly exclude any use of scheduling assignment information when the UE is in non-
20
scheduled transmission mode or is making non-scheduled transmissions; it requires only that non-
21
scheduled transmission information be used. Id. Indeed, Claim 34 makes clear that the invention
22
contemplates that both non-scheduled transmission information and scheduling assignment
23
information are available to the UE.
14
24
Similarly, Claim 27 recites both transmitting uplink data according to the scheduling
25
assignment information in a Node B controlled scheduling mode and transmitting uplink data on
26
at least one TTI of the k TTIs within the period in a non-scheduled transmission mode. Claim 27
27
thus claims both using scheduling assignment information and making transmissions during at least
28
one of the designated TTIs within the non-scheduled transmission period. However, a transmission
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made during one of those designated TTIs would meet the limits of the claim, whether or not the
transmission also used some of the available scheduling assignment information.
3
4
Thus, there is no clear support in the claims for Apples proposed negative limitation. The
Court now turns to the specification.
5
6
Specification
In support of Apples construction foreclosing the use of scheduling assignment
information, Apple points to language in the specification disclosing that a UE can operate without
using scheduling assignment information. See Apples Resp. Claim Constr. Br. (Apple Resp.),
ECF No. 350, at 3-4. For example, the specification discloses:
10
b.
11
12
13
14
15
The UE enables non-scheduled transmission (referred to as non-scheduled

transmission) for transmitting uplink data through the E-DCH without using
scheduling assignment information. The non-scheduled transmission can quickly
transmit E-DCH data by omitting a series of processes for sending scheduling
information from the UE to the Node B and receiving scheduling assignment
information from the Node B. The system limits a data rate possible for the nonscheduled transmission to within a relative low level, thereby maintaining system
performance enhancement through the Node B controlled scheduling and reducing a
delay time due to scheduling.
However, the fact that scheduling assignment information is not necessary in a non-
16
scheduled transmission does not mean that it is not allowed. Therefore, this passage does not
17
support Apples construction that scheduling assignment information is forbidden in making non18
scheduled transmissions.
19
Moreover, Samsung argues that, in some embodiments, non-scheduled transmission
20
information alone will not be sufficient to allow the non-scheduled transmission, but that
21
additional information from the base station will be required. See Samsung Op. Claim Constr. Br.
22
(Samsung Br.), ECF No. 335, at 7-8. Non-scheduled transmission information, as defined in
23
Claim 1, need only indicat[e] k TTIs for transmitting non-scheduled data . . . within a period
24
having N TTIs
in other words, the set of possible TTIs a given UE may use for transmission. Id.
25
at col. 15:38-42. However, Figure 8 and the accompanying text disclose an embodiment in which
26
non-scheduled transmission information is supplemented by data rate information. In this
27
embodiment, a base station node transmits to a UE non-scheduled transmission parameters such
28
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as a non-scheduled transmission period N, the number of non-scheduled transmissions k, a possible
non-scheduled transmission time interval, and so on. Id. at col. 11:44-48. Additionally, in this
embodiment, any ultimate non-scheduled transmissions by the UE also depend upon the allowed
data rate. Id. at col. 11:48-58. Thus, non-scheduled transmissions can clearly use data rate
information in addition to non-scheduled transmission information.
6
7
determine whether data rate information may be obtained from the scheduling assignment
information. If it can, then Apples additional negative limitation excluding the use of scheduling
assignment information cannot be correct, because the specification specifically contemplates a
10
Because non-scheduled transmissions can use data rate information, the Court must
11
non-scheduled transmission using data rate information.

The Background of the 087 Patent explains the scope of scheduling assignment
12
information. In describing the related art, the specification discloses that scheduling assignment
13
information [may] compris[e] information about an allowed data rate . . . and so on. Id. at col.
14
2:59-61. Thus, the Patent is explicit that data rate information is part of the scheduling assignment
15
information, meaning that if a non-scheduled transmission uses data rate information from the
16
scheduling assignment information, then it cannot be said to occur without using scheduling
17
assignment information from the base station. Accordingly, Apples construction precluding the
18
use of scheduling assignment information is foreclosed by the specification.
19
In sum, the invention involves sending from a base station to a UE non-scheduled
20
transmission information that specifies possible TTIs that may be used for non-scheduled data
21
transmission. The claim language does not limit the use of additional data from other sources
22
when making non-scheduled transmissions, and the specification and dependent claims explicitly
23
disclose using data rate information, which is a component of scheduling assignment information.
24
Accordingly, the Court agrees with Samsungs proposed construction, and disagrees with
25
the additional limitation proposed by Apple. The Court therefore adopts the following
26
construction: Transmission of data using non-scheduled transmission information to
27
indicate possible transmission time intervals (TTIs).
28
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1
2
3
4
5
6
7
8
9

10
11
12
13
B.
The 757 Patent
The disputed term zone specific storage and interface device appears in Samsungs 757
Patent. The 757 Patent, entitled Multimedia Synchronization Method and Device, discloses [a]
system . . . for synchronizing a multiplicity of devices in a multimedia environment so that users
can access their multimedia collection (e.g., movies and music) in different locations. 757 Patent
Abstract. The system is comprised of at least one central storage and interface device, at least
one zone, and at least one zone specific storage and interface device. 757 Patent at col. 10:3150 (Claim 1). The application for the 757 Patent was filed on October 19, 2006, as a continuation
of Patent Application No. 9/884,661, which was filed on June 19, 2001. The 757 Patent issued on
August 18, 2009.
1.
zone specific storage and interface device

A storage and interface device associated with
a particular viewing and/or listening zone

a device fixed in a room, or similar bounded
location, for multimedia playback
14
15
16
17
The term zone specific storage and interface device appears in independent Claim 1 of
the 757 Patent, and dependent claims 2-4, 6, and 8-13. Independent Claim 1 recites:
A system for synchronizing devices in a multimedia environment, the system
comprising:
18
19
20
21
22
23
24
25
at least one central storage and interface device, wherein audio, video, or
photographic data, including content information and content management
information, relating to at least one user, are stored in digital form; and
at least one zone, each zone having at least one zone specific storage and
interface device capable of storing or interfacing with information stored in
the central storage and interface device, wherein audio, video, or
photographic information, relating to at least one user, contained within the
zone specific storage and interface device and the central storage and
interface device, are updated in relation to the zone specific storage and
interface devices and the central storage and interface device, whereby the
at least one user can be situated in any one of the zones and access the audio,
video, or photographic information related to the at least one user.
26
27
28
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The 757 Patent discloses methods and a device for providing audio, video, and
photographic information across a multiplicity of devices. 757 Patent Abstract. The invention
allows a single user to access the same database of music, movies, or photographs from one of
many zones. Id.
5
6
synchronized with a central storage and interface device. Id. at col. 4:17-35. The central
storage and interface device maintains digital copies of a users audio, video, and photographic
information. Id. at col. 4:19-23. The various zone specific storage devices, located in a
plurality of zones, then synchronize with that data so that the user can enjoy the same collection
10
The device functions by having a plurality of zone specific storage and interface devices
of entertainment options from a wide variety of areas. Id. at col. 4:23-32.
11
Samsungs proposed construction requires only that a zone specific storage and interface
12
device be associated with a particular zone for viewing and/or listening to the multimedia
13
content stored on the system. Apples proposed construction adds the limitation that the zone
14
specific device must be fixed in a physical zone, rather than merely associated with the zone.
15
In addition, Apples proposed construction requires that the relevant zone be a room, or similar
16
bounded location.6 The Court concludes that neither partys construction is completely consistent
17
with the 757 Patent and instead construes zone specific storage and interface device as a
18
storage and interface device that resides in an area, such as a room or similar location.
19
a.
20
Claim Language
Although neither party selected the term zone for construction, the parties disagreement
21
about whether a zone-specific device may move or must be fixed is predicated largely on the
22
parties different definitions of the term zone.
23
24
6
25
26
27
28
Apples proposed construction also includes the additional limitation that the zone specific
storage and interface device be for multimedia playback. However, the parties have not
addressed this limitation in their briefing. Additionally, the Court finds that the zone specific
device itself should not be limited to requiring multimedia playback as dependent Claim 4 recites
that an output device may be coupled to the zone specific storage and interface device for
outputting the audio, video, and photographic information. This functionality may thus be
accomplished by an output device rather than the zone specific storage and interface device
itself.
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Apple construes the term zone as a room, or similar bounded location. Apple contends
that, by virtue of requiring that the storage and interface device be zone specific, the term itself
requires that the device be dedicated to and fixed in a zone, and not move across multiple zones.
Apple Resp. at 9. While the claims do state that a storage and interface device must be
specific to a zone, nothing in the language of the claims themselves requires that the specific
zone be a fixed location, that the device be fixed within that zone, or that the zone must be
bounded.

For additional support of its construction, Apple notes that dependent Claim 13 draws a
distinction between a wireless mobile device, which is mobile, and thus not fixed in a room or
10
similar bounded location, and a zone specific storage and interface device. See 757 Patent at
11
col. 12:12-15 (Claim 13) (The system of claim 1, wherein the zone specific storage and interface
12
device is disposed to be coupled to a wireless mobile device.). However, the plain language of
13
Claim 13 does not state that the zone specific storage and interface device must be fixed or
14
bounded, only that it must be zone specific. The only requirement of Claim 13 on its face is that
15
the zone specific device must be disposed to be coupled to a wireless mobile device.
16
17
18
19
Accordingly, the Court does not find that the claims themselves clearly support Apples
proposed limitation. The Court now turns to the specification.
b.
Specification
Samsung contends that the examples of portable and mobile multimedia devices found in
20
the specification show that these devices may serve as zone specific storage and interface
21
device[s]. See Samsung Br. at 14. However, the specification distinguishes zone specific storage
22
and interface devices from portable and mobile multimedia devices. For example, in Figure 7
23
which depicts various elements of the invention
24
interface device, 702, linked via a local area network (LAN) to a multitude of devices
25
including: (1) zone specific storage and interface devices 706, 708, and 710, each of which resides
26
in a specific zone; (2) a personal computer 712; (3) an automobile 716; and (4) [an]other
27
device 714 such as an intelligent MP3 player. Id. at col. 8:17-31. Thus, Figure 7 distinguishes
28
zone specific storage and interface devices from a personal computer, an automobile, and an
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MP3 player. Furthermore, in discussing Figure 7, the specification repeatedly refers to zone
specific devices without including networked digital portable personal players, 714, or
automobile devices, 716. See, e.g., 757 Patent at col. 8:40-44 (stating that [a] practical
example of implementing the instant invention involves the AudioReQuest Pro, the patents
example of a central storage device, and the AudioReQuest Multizone, the patents example of
zone specific storage and interface devices 706, 708, 710.); see also id. at col. 9:44-45 (zone
specific storage and interface devices 706, 708, 710).
Moreover, despite the specifications reference to portable and mobile multimedia devices,
the specification never suggests that such devices are zone specific. Rather, mobile and portable
10
devices are simply described as being coupled to the central device via networks such as LAN.
11
Compare 757 Patent at 8:25-31 (stating that portable devices and automobiles can be coupled to
12
LAN); with id. at 8:23-24 (stating that zone specific storage and interface devices 706, 708, and
13
710, each reside[] in a specific zone).
14
The specification further indicates that some portable devices could simply be secondary
15
devices that connect to the central storage and interface device through a network rather than
16
being zone specific storage and interface devices. See, e.g., id. at col. 9:17-27; col. 9:36-38
17
(distinguishing between: (1) the zone specific storage and interface devices, such as AudioReQuest
18
Multizone, which have removable hard drives to store the entire multimedia collection; and (2)
19
car and other mobile devices which can . . . synchronize over wired or wireless connections);
20
see also id. at col. 10:1-10 (distinguishing between: (1) content [that] is stored locally in a device
21
within a zone or any zone, so that output can be played in multiple zones and rooms; and (2)
22
other device[s] for mobile applications such as car, boat, airplane, and other transportation, that
23
would synchronize through either hardwired or wireless means resulting in storing the content
24
locally.).
25
Therefore, the specification contradicts Samsungs claim that the portable and mobile
26
multimedia devices found in the specification are zone specific storage and interface device[s].
27
Samsung Br. at 14. Instead, they appear to be different types of devices, which may be connected
28
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to the central storage and interface device over a network, but are portable rather than zone-
specific.

Samsung argues that, should the Court construe automobile and personal mobile devices as
distinct from zone specific storage and interface devices, the Court will exclude disclosed
elements from the scope of the claims. However, Claims 13, 14, and 15 make clear that a system
including a networked wireless mobile device coupled to a zone specific device can still fall
within the scope of the invention, even if that networked device is not one of the zone specific
storage and interface devices found in Claim 1. See, e.g., 757 Patent at col. 12:12-15 (Claim 13)
(The system of claim 1, wherein the zone specific storage and interface device is disposed to be
10
coupled to a wireless mobile device.). Therefore, the Courts construction does not exclude
11
mobile devices from the scope of the patent, even if they are not zone specific storage and
12
interface devices. Similarly, an automobile or boat device can fall within the scope of Claims 14
13
and 15, which require central and mobile devices, but do not require the use of zone specific
14
devices. See, e.g., id. at col. 12:20-22 (Claim 15) (The system if claim 1, wherein the central
15
storage and interface device is disposed to be coupled to a wireless mobile device). Therefore, the
16
Court is not persuaded that zone specific storage and interface devices must include automobile
17
and personal mobile devices.
18
However, the Court does not believe that the specification clearly supports Apples
19
proposed limitation that the zone of the zone specific storage and interface device must be fixed
20
and bounded. In support of its construction, Apple points to examples of a zone in the
21
embodiment, which liken it to a room. See id. at col. 9:12-16 (In a typical custom home
22
installation, there may be upwards of 20 zones (e.g., rooms) with independent control and output.
23
By way of example, instead of only playing one CD throughout the building, different songs can be
24
played at the same time.) (emphasis added); see also id. at col. 10:3-5 (distinguishing between
25
multiple zones or rooms in a networked building, and multiple locations traveling through a
26
wide area network such as the Internet.) (emphasis added). It is axiomatic that claims should not
27
be limited simply because a specific embodiment in the specification discloses only a portion of the
28
potential claim scope. See Phillips, 415 F.3d at 1327 (holding that the claim was not limited to
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only the preferred embodiment). The applicability of this doctrine in this instance is emphasized
by the clear language of the specification, which explicitly lists rooms as simply examples of
zones, see 757 Patent at col. 9:13-14 (e.g., rooms), rather than as synonyms.

In further support of its construction, Apple argues that the term zone refers to a fixed
location because [o]ne of the purposes of the zone is to give a user substantially exclusive or
reclusive enjoyment of information shared by zone specific storage and interface devices 706, 708,
710, as well as by central storage and interface device 702, and other devices. Id. at col. 9:47-51.
However, the purpose of exclusive or reclusive enjoyment is not necessarily undermined by a
device being mobile. For example, a person can listen to an intelligent MP3 player with
10
headphones and benefit from substantially exclusive or reclusive enjoyment of shared data.
11
Moreover, for purpose of multimedia enjoyment, a car is obviously quite similar to a room
12
simply a room on wheels, and often includes multimedia devices that are built into the car. Thus, it
13
is not clear why a car should be treated any differently from a zone specific device located in a
14
room within a house.7
it is
However, the most persuasive argument raised by Apple as to why the zone specific
15
16
storage and interface device must be fixed and bounded is the fact that the 757 specification
17
describes zone specific storage and interface devices as resid[ing] in or exist[ing] in a single
18
zone. See id. at col. 8:23-24 (zone specific storage and interface devices 706, 708, and 710, each
19
of which resides in a specific zone); id. at 7:66-67 (referring to devices residing in different
20
zones); id. at 9:44-47 (stating that zone specific storage and interface devices 706, 708, 710 . . .
21
can be located in separate zones respectively. Or, some can co-exist in a zone.). While the Court
22
finds the specifications use of the term reside to reflect some degree of being contained within a
23
certain location rather than moving around freely, the Court is concerned that the terms fixed and
24
bounded may be overly limiting.
25
26
27
28
Apple also construes the terms exclusive or reclusive enjoyment to mean that each zone must
be exclusive, and therefore separate from, every other zone. Apple Br. at 10. However, the
specification states that zone specific storage and interface devices 706, 708, 710, or PC 712 can
be located in separate zones respectively. Or, some can co-exist in a zone. 757 Patent at 9:4447. Therefore, the specification does not clearly support Apples construction.
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Thus, while the Court concludes that the specification indicates that zone specific storage
and interface devices are distinct from a car and other mobile devices, the Court does not find
support in the specification for defining zone specific storage and interface devices as fixed and
bounded. At best, the specification supports concluding that zone specific devices reside in a
room or similar location. In fact, during the claim construction hearing, Apple agreed with the
Courts suggestion that the terms resides or remains better reflect the specification and should
be used in place of Apples proposed terms fixed and bounded. See Tr. at 140:9-14.
c.

Extrinsic Evidence
Apple contends that zone is a term of art in the home audio field, synonymous with room.
10
See Apple Resp. at 12 (citing Mark Fleischmann, Practical Home Theater: A Guide to Video and
11
Audio Systems, pg. 167 (2003 ed. 2001), for the proposition that the term Multi-room is defined
12
as an [a]udio system serving more than one room. Also called multi-zone.); see also id. (citing
13
Danny Briere & Pat Hurley, Home Theater for Dummies, p. 127 (2003), for the proposition that
14
multizone means multiple rooms with different audio sources). This use is consistent with
15
specific examples listed in the specification.8
16
Samsung does not contest that zone is often related to a room, but argues that it need not
17
be so limited. Rather, Samsung contends that the term zone is just a listening area where
18
multimedia content from a particular source may be viewed or heard. See Samsung Br. at 16
19
(citing John Sciacca, Sound All Around, Sound & Vision, p. 95 July/August 2001, for the
20
proposition that, [w]ith a multizone system, you divide your home into areas that can each play a
21
different source. Each zone can contain as many rooms or speakers as your electronics can
22
sustain.); see also id. (citing Bose Corporation, The Bose Lifestyle 11 Music System Overview 5
23
(Rev. 1, 1994), for the proposition that [e]ach listening area, whether a room or a group of rooms
24
(including outdoor areas), is referred to as a zone.). Therefore, Samsung states that a portable
25
26
27
28
Nevertheless, Apples extrinsic evidence does not prove that the term must be fixed or
bounded. The Court is also concerned that these terms might be interpreted in an overly
restrictive manner by a jury, such as interpreting the term bounded to require limitations such as
walls, and the term fixed to require that a device be built in.
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radio creates a listening zone that moves with the radio. Samsung Reply Claim Const. Br.
(Samsung Reply), ECF No. 363, at 7.

While Samsungs extrinsic evidence indicates that a zone may be defined more broadly
than a room to include an area, the phrase zone does appear connected to a particular
geographical location. Moreover, nothing Samsung sets forth indicates that the area is construed
to be mobile. Therefore, the extrinsic evidence does not appear to support construing the term
zone specific interface device as necessarily including mobile phones. Moreover, the Court
believes that Samsungs use of the term associated in its construction is ambiguous, and may
potentially include highly transitory associations with an infinite series of locations, as with a
10
mobile device, thereby evading the limitation of zone specific. Unique Concepts, Inc. v. Brown,
11
939 F.2d 1558, 1562 (Fed. Cir. 1991) (All the limitations of a claim must be considered
12
meaningful.). Samsungs use of the term particular to describe the zone does not cure this
13
defect, because particular does nothing to restrict the zone to one location as opposed to one
14
amorphous transitory area. Similarly, the term viewing or listening zone is ambiguous, and
15
again could incorporate an infinite series of locations, for example, the zone in which a personal
16
mobile device is carried.
17
Thus, the Court adopts the following construction for a zone specific storage and interface
18
device based on the intrinsic and extrinsic evidence set forth by the parties: a storage and
19
interface device that resides in an area, such as a room or similar location.
20
C.
21
The parties dispute two means-plus-function terms in Samsungs 239 Patent. The 239
The 239 Patent
22
Patent, entitled Remote Video Transmission System, discloses a system for digitizing and
23
compressing an audio/visual signal, transmitting that signal over low band width lines . . .
24
decompressing the digitized data and converting it to an audio/visual signal for broadcast. 239
25
Patent Abstract. The 239 Patent addresses the need for broadcasters to capture and transmit
26
broadcast quality video (e.g., news coverage of a natural disaster) from a remote location to a
27
network host station for immediate real time broadcast. 239 Patent at col. 1:14-col. 2:22.
28
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1
2
3
4
The application for the 239 Patent was filed on February 16, 1994, and the 239 Patent
issued on November 26, 1996. Samsung purchased the 239 Patent in 2011.
1.
Means for capturing, digitizing, and compressing at least one

composite signal
Agreed function: capturing, digitizing, and

compressing at least one composite signal
Agreed function: capturing, digitizing, and

compressing at least one composite signal
Corresponding structure: A video and/or audio

capture module, and equivalents
Corresponding structure: An audio card, a

video card having a video capture module, and a
video capture software package, such as Video
for Windows software using the software
sequence set forth at 2:63-3:3, 4:39-63, 5:46:23, and 6:62-7:14.
7
8
9

10
11
12
The term means for capturing, digitizing, and compressing at least one composite signal
13
appears in asserted independent claim 1 and dependent Claims 5 and 6 of the 239 Patent.
14
Independent Claim 1 of the 239 Patent recites:
15
16
17
18
19
20
21
An apparatus for transmission of data, comprising:

a.) means for capturing, digitizing, and compressing at least one
composite signal;
c.) means for transmitting said composite signal;
a.) means for receiving at least one composite signal transmitted by
the remote unit;
22
23
24
25
26
27

a.) means for exchanging data with said host unit;
b.) means for storing the composite signal received by the host unit;
c.) means for decompressing said composite signal.
The parties agree, as does the Court, that means for capturing digitizing, and compressing
at least one composite signal is a means-plus-function limitation recognized by 35 U.S.C. 112,
28
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6. See 35 U.S.C. 112, 6 (stating that means-plus-function terms are limited to structures
disclosed in the specification that perform the claimed function, and equivalents of those
structures).
A court must construct a means-plus-function limitation in two steps. First, the court must
determine the claimed function. Second, the court must identify the corresponding structure in the
written description of the patent that performs the function. Noah Sys., Inc. v. Intuit Inc., 675 F.3d
1302, 1311 (Fed. Cir. 2012) (quoting Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d
1324, 1332 (Fed. Cir. 2006)). A structure disclosed in the specification qualifies as a
corresponding structure if the specification or the prosecution history clearly links or associates
10
that structure to the function recited in the claim. Id. (quoting B. Braun Med., Inc. v. Abbott
11
Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). Moreover, the disclosure in the patents
12
specification must show [] what is meant by that [claim] language. If an applicant fails to set
13
forth an adequate disclosure, the applicant has in effect failed to particularly point out and
14
distinctly claim the invention as required by . . . section 112[, 2]. Id. at 1311-12 (quoting In re
15
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)).
16
Here, the parties agree that the claimed function is capturing, digitizing, and compressing
17
at least one composite signal. See Samsung Br. at 17 (Apple and Samsung agree on the
18
functions for both terms.). The parties disagree, however, as to what the corresponding structure
19
is in the specification. Samsung argues that the corresponding structure is simply a video and/or
20
audio capture module, and equivalents. Samsung Br. at 18. In contrast, Apple adds three
21
limitations to the construction of this claim. First, Apple argues that the corresponding structure
22
must have components capable of dealing with both audio and video signals. Thus, Apple requires
23
both an audio card and a video card. Second, Apples construction requires cards, rather than
24
merely modules. Third, Apple argues that the corresponding structure must include specific
25
software operating as discussed in several columns of the specification. While the Court agrees
26
with Apple that the corresponding structure for means for capturing, digitizing, and compressing
27
28
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at least one composite signal must include an audio capture card9 and a video card with a video
capture module, the Court does not agree that the corresponding structure must also include
specific software.
a.
First, the parties dispute whether the corresponding structure must have components

Audio and/or Visual vs. Audio and Visual
capable of dealing with both audio and visual signals or just one or the other. While the claim
language and specification are ambiguous as to the proper construction of this expression, the
prosecution history clarifies that the term composite requires that the structure have the ability to
capture both audio and visual signals. Therefore, the Court agrees with Apple that the means for
10
capturing, digitizing, and compressing at least one composite signal must be capable of capturing,
11
digitizing and compressing both audio and visual components.
12
i.
13
Claim Language
Independent Claim 1 does not specify the means for capturing, digitizing, and compressing
14
at least one composite signal, nor does it define the term composite. See 239 Patent at col.
15
13:4-17. Nevertheless, Samsung argues that the claims support its construction that the
16
corresponding structure need only have video or audio components. See Samsung Br. at 18.
17
Specifically, Samsung relies on Claims 5 and 6, which depend from Claim 1, as evidence that the
18
corresponding structure can have video and/or audio components. Notably, dependent Claim 5
19
claims only a video component, see 239 Patent at col. 13:25-28, whereas dependent Claim 6,
20
which is dependent on Claim 5, claims both a video and audio component. Id. at col. 13:29-32.
21
According to Samsung, [t]o require both to be read into claim 1 would render claims 5 and
22
6 superfluous. Samsung Br. at 20 (citing Retractable Techs., 653 F.3d at 1312). However, the
23
presence of a dependent claim reciting a structure does not override the requirements of 112, 6.
24
See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir.1991) (holding that the
25
requirements for means-plus-function limitations cannot be avoided by adding a dependent claim
26
reciting the corresponding structure).
27
9
28
During the claim construction hearing, Apple clarified that their construction was for an audio
capture card not an audio card. See Tr. at 153:18-25.
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Furthermore, both Claims 5 and 6 reference an audio or video capture device installed in
said remote unit for capturing. Additionally, Claim 5 refers to capturing the composite signal in
real time. Thus, it is not clear from the claim language whether the differentiation between Claim
1 and Claims 5 and 6 is the presence of an audio versus a video card or, rather, that in Claim 1 the
cards need not be installed in the remote capture unit or capture the composite signal in real
time.10
Samsung also notes that [d]ependent claim 4 makes it clear that the signal can be video

7
8
and/or audio. Samsung Br. at 20; see 239 Patent at col. 13:23-25 (Claim 4) (An apparatus
according to claim 3 further including means for splitting and organizing the digitized, compressed
10
audio and/or video signal prior to transmission.) (emphasis added). Apple argues, however, that
11
the doctrine of claim differentiation cannot apply to Claim 4, which adds requirements directed to a
12
means for splitting and organizing limitation, not the means for capturing, digitizing, and
13
compressing at issue here. Apple Resp. at 20. Just as it is unclear that the audio or visual
14
component is the differentiating factor in Claims 5 and 6, it is not clear that this is the
15
differentiating factor in Claim 4 either. Therefore, the Court does not find that the claims clearly
16
support Samsungs proposed corresponding structure. As such, the Court turns to the specification
17
for further guidance.
18
ii.
19
Specification
The Court also finds the specification to be ambiguous as to whether the corresponding
20
structure must have components capable of dealing with both audio and visual signals. The term
21
composite is never used in the specification. Instead, the specification refers to an audio/visual
22
10
23
24
25
26
27
28
Apple also contends that dependent Claims 5 and 6 do not support Samsungs construction
because they do not refer to the capture, digitization, or compression of an audio signal alone.
According to Apple, this is significant because, [i]f only audio was needed (as Samsungs video
and/or audio construction would permit), a reporter could simply make a traditional phone call.
Apple Resp. at 19. While it is true that dependent Claims 5 and 6 do not mention solely capturing
an audio signal, a proper corresponding structure could, in accordance with the claims terms,
involve only video signals or video and audio signals. However, as described above, Claims 5 and
6 introduce multiple additional limitations, and thus it is not clear from the claim language alone
whether the means for capturing, digitizing, and compressing at least one composite signal
requires the ability to capture both audio and visual components.
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signal, see, e.g., 239 Patent at col. 2: 28 (audio/video signals); col. 2:59 (audio/visual signal);
col. 2:67 (same), or to a video signal and an audio signal separately, see, e.g., id. at col. 2:47
(video signal); id. at col. 5:47 (audio signal).
4
5
signal is digitized and compressed. The specification further describes a situation where a user has
the option of capturing only the video signal, enabling the video data to be transmitted more
quickly than combined audio/video data. Id. at col. 5:39-60. This suggests that the captured,
digitized, and stored composite signal need not include audio signal, and that therefore an audio
card need not be a part of the structure required to perform the claim function of capturing,
10
The specification also discloses one preferred embodiment in which an audio and visual
11
digitizing, and compressing a composite signal.

Apple argues, however, that this optional function in the embodiment is irrelevant to a
12
proper construction of the claims because the means limitation at issue is found in an apparatus
13
claim, and the specification describes that apparatus as requiring hardware and software capable of
14
capturing, digitizing, and compressing both video and audio signals. See Apple Resp. at 19. Apple
15
contends that the mere fact that the claimed device may be used to capture and transmit video alone
16
in some situations is irrelevant. Id.; see Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075,
17
1091 (Fed. Cir. 2009) (rejecting a construction that injected a use limitation into a claim written in
18
structural terms because apparatus claims cover what a device is, not what a device does.) (citing
19
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)). However,
20
the patent does refer to the device capturing only a video signal, as opposed to capturing an
21
audio/visual signal, and it is unclear from the specification whether this is merely a function, as
22
Apple claims, or instead the entire structure for capturing a composite signal. Accordingly, the
23
specification does not clearly resolve the parties dispute.
24
25
iii.
Prosecution History
Despite the ambiguity within the claims and the specification, the prosecution history
26
indicates that the means for capturing, digitizing, and compressing at least one composite signal
27
requires the means for capturing, digitizing, and compressing both an audio and a visual signal.
28
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1
2
See Decl. of Peter J. Kovolos in Supp. Apple. Resp. (Kovolos Decl.), ECF No. 350, Ex. 4, at 2-3
(8/20/95 Office Action). The Examiner objected to the expression audio and/or visual signal
as covering two different elements
and indefinite. Id. Accordingly, the term was replaced with the term composite signal, which
the patent applicant explained is generally known to mean a signal which includes components
such as audio and/or visual. Decl. of Todd Briggs in Supp. Samsung Br. (Briggs Decl.), ECF
No. 335, Ex. I, at 6 (2/2/96 Amend.). The applicant further explained that:
9
10
Initially, Claim 1 referred to audio and/or visual signal rather than composite signal.
11
12
13
14
15
video and audio
and thereby found the claim to be vague
With regard to the present invention, the composite signal which is captured by the
remote unit may have both audio and video components as is commonly known to
be a composite signal. However, a composite signal having both audio and
video information is necessarily a larger quantity of information and
correspondingly has larger digitized file sizes. In instances where rapid
transmission of a video segment is desired in order to reduce the size of the resultant
digitized and compressed data file to be transmitted to the host unit, the remote unit
may be instructed to capture the video portions of the composite signal only.
Samsung emphasizes that the applicant stated only that the composite signal may have
16
both audio and video components, meaning simply that the composite signal may be: (1) an audio
17
signal, (2) a video signal, or (3) an audio and video signal. See Samsung Reply at 12. However,
18
construing the term composite signal so broadly completely disregards the Examiners reason for
19
initially rejecting Claim 1, which was to avoid covering audio and/or visual signal and thereby
20
render the claim vague and indefinite. See 8/20/95 Office Action at 2-3.
21
Moreover, construing the expression composite signal as having multiple components is
22
consistent with the basic linguistic understanding that something described as composite will
23
have multiple parts. Importantly, the only two signal components disclosed in the specification are
24
audio and visual. Therefore, to be a composite signal, presumably both are required. Furthermore,
25
the patent applicant emphasized that, where the components of the composite signal are audio and
26
visual signals, it may be desirable to capture only the video portions of the composite signal. See
27
2/2/96 Amend. at 6. If, as made clear by the applicant, a video signal alone is only a portion of a
28
composite signal, then the rest of the signal must be audio in order to actually be composite.
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Although the specification discloses the option of not capturing audio, the ability to capture the full
composite signal, including audio, is still required by this claim term.
Therefore, the Court agrees with Apple that the structure corresponding to the claimed
means for capturing, digitizing, and compressing at least one composite signal must have
components capable of dealing with both audio and visual signals and not audio or visual signals
as Samsung proposes.
b.

Capture Module vs. a Card
Contrary to Samsungs proposed construction, which construes the means for capturing,
digitizing, and compressing at least one composite signal as requiring a video and/or audio
10
capture module, the Court finds that the structure requires a video card having a video capture
11
module and an audio capture card.
12
The parties agree that the claimed function requires capturing, digitizing, and
13
compressing. However, the specification never discloses a capture module that is capable of
14
digitizing and compressing. Instead, the specification discloses a video capture card, which
15
takes the audio/visual signal, digitizes it into a computer data file, and compresses that data file.
16
239 Patent at col. 2:66-col. 3:1. Only after the data file has been digitized and compressed by the
17
video capture card is it captured in the computers memory by a capture module on the video
18
capture card. Id. at col. 3:1-3. Thus, the corresponding structure in the specification that can
19
perform the claimed function of capturing, digitizing, and compressing at least one composite
20
signal is not a capture module but instead a video card having a video capture module as
21
proposed by Apple.
22
Samsung argues that independent Claims 9 and 15, which recite apparatuses containing
23
only a video capture module to capture, digitize, and compress said composite signal into a data
24
file support Samsungs claim that the means in Claim 1 does not require a video card, but only a
25
module.11 See Samsung Reply at 9-10. Samsung notes correctly that the claims are a part of the
26
27
28
11
Samsung also cites to the prosecution history of Claims 9 and 15, wherein the Examiner allowed
the claims after the phrase video card having a video capture module was replaced with only a
video capture module in support of its construction. However, as described above, the Court finds
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specification and may be considered when determining the corresponding structure for a means-
plus-function term. See id. (citing In re Hayes MicroComputer Prods., Inc. Patent Litig., 982 F.2d
1527, 1543 (Fed. Cir. 1992)).
However, while Claim 1 comprises a mobile remote unit including . . . means for
capturing, digitizing, and compressing, Claims 9 and 15 recite a remote unit being a computer
comprising . . . a video capture module to capture, digitize, and compress (Claim 9) and a
computer including a video capture module to capture and compress video in real time (Claim
15). Compare 239 Patent at col. 13:4-9 (Claim 1), with col. 13:43-45 (Claim 9), and col. 14:17-20
(Claim 15). Claim 1 differs significantly from Claims 9 and 15 in that there is no requirement that
10
the mobile unit in Claim 1 be a computer. It is unclear from the claims or the specification
11
whether a mobile unit which is not necessarily a computer, as Claim 1 recites, would require the
12
same structure to capture, digitize, and compress a composite signal as would a mobile unit which
13
is a computer. Thus, the Court agrees with Apple that, in the context of Claim 1, the specification
14
requires the means to include a video card having a video capture module.12
15
Furthermore, the Court declines to adopt Samsungs proposed construction of audio
16
capture module or audio module. The specification only uses the term audio capture card and
17
never uses the term audio capture module. The Court agrees with Apple that it would be error to
18
introduce a new and unidentified term into the claims. See Cross Medical Prods. v. Medtronic
19
20
21
22
23
24
25
26
27
28
that the inherent differences between the two claims and Claim 1 prevent these claims from
resolving the ambiguity.
12
Samsung also argues that the doctrine of claim differentiation requires that independent Claim 1
be broader than dependent Claims 5 and 6, which recite audio and video capture devices.
However, the doctrine of claim differentiation may not be used to impermissibly expand the scope
of a means-plus-function claim. See, e.g., Nomos Corp. v. Brainlab USA, Inc., 357 F.3d 1364,
1368 (Fed. Cir. 2004) ([O]ur interpretation of the corresponding structure comes from the written
description, not from [the dependent claims] and, therefore, the prohibition against reading
limitations from a dependent claim into the independent claim is not violated.) (internal quotations
and citation omitted); Laitram Corp., 939 F.2d at 1538 ([T]he judicially developed guide to claim
interpretation known as claim differentiation cannot override the statute. A means-plus-function
limitation is not made open-ended by the presence of another claim specifically claiming the
disclosed structure which underlies the means clause or an equivalent of that structure.). The
Court finds that adopting Samsungs construction would impermissibly expand the scope of Claim
1.
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Sofamor Danek, Inc., 424 F.3d 1293, 1304 (Fed. Cir. 2005) (refusing to include structures not
disclosed in the specification). Thus, the Court finds that the means for capturing, digitizing, and
compressing at least one composite signal must include an audio capture card, and a video
card having a video capture module.
Specific Software as Part of the Corresponding Structure
Finally, Samsung argues that the structure disclosed in the specification does not require
specific software. Notably, Samsung has altered its proposed construction from a video and/or
audio capture module with associated software, and equivalents, as disclosed in the joint
prehearing claim construction statement by dropping the phrase with associated software. See
10
c.
Samsung Reply at n.6.
11
In contrast, Apple argues that the specification makes clear that software is part of the
12
structure required to perform the claimed capturing, digitizing, and compressing functions. In
13
support of this position, Apple notes that the Detailed Description of the Preferred Embodiment
14
discloses: A computer software program such as VIDEO FOR WINDOWS . . . operates with the
15
video card and capture module to capture, digitize, and compress the video signal into a data file.
16
239 Patent at col. 4:41-46 (emphasis added). However, other parts of the specification make clear
17
that Video for Windows does not itself perform the capturing, digitizing and compressing. Instead,
18
these functions are performed by the card and capture module. For example, the specifications
19
Summary of the Invention discloses that [c]omputer software loaded on a hard disk drive in the
20
remote unit instructs it to capture the input signal to a video capture card within the remote unit.
21
Id. at col. 2:63-66. Yet, it is the video card that digitizes and compresses the audio/visual signal,
22
id. at col. 2:66-3:1, and the video capture module on the video capture card that captures the data
23
file in the computers memory, id. at col. 3:1-3. See also id. at col. 6:9-14 ([T]he video card in the
24
remote unit captures the input video signal to its memory. Capture includes digitizing the input
25
video signal to form a binary data file and then compressing that file. The file is compressed in
26
order to conserve memory space and reduce transmission time.). Thus, the software does not
27
appear necessary to capturing, digitizing, and compressing the audio and visual signal.
28
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Indeed, both Video for Windows and the software sequence discussed in the specification
relate to ancillary functions not required for the video card and capture module. These ancillary
functions include: (1) displaying images of the first frames of video clips that have not been
captured, digitized, and compressed for selection on a user interface, see id. at col. 5:9-33; (2)
allowing the user to input optional capture parameters such as whether the video should be
captured with or without audio, see, e.g., id. at col. 5:49-col. 6:8; and (3) allowing editing of
captured video clips, see, e.g., id. at col. 6:31-35. Accordingly, the specification makes clear that
the additional software that instructs, id. at col. 2:65, and operates with the video card and
capture module to capture, digitize, and compress the video signal, id. at col. 4:43-44, is not
10
required to enable the claimed capturing, digitizing, and compressing. Thus, Video for Windows
11
and the software sequence that Apple seeks to incorporate into the claim construction are not part
12
of the structure in the specification that corresponds to the claimed functions of capturing,
13
digitizing, and compressing.
14
Section 112, 6, which governs means plus function claims, does not permit incorporation
15
of structure from the written description beyond that necessary to perform the claimed function.
16
Micro Chem., Inc. v. Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
17
Therefore, it is inappropriate to limit the claimed means for capturing, digitizing, and compressing
18
at least one composite signal to require Video for Windows software using the software sequence
19
set forth at 2:63-3:3, 4:39-63, 5:4-6:23, and 6:62-7:14.
20
Having found that the claimed means for capturing, digitizing, and compressing at least
21
one composite signal requires a video card having a video capture module and an audio capture
22
card, but does not require additional software, the Court construes this term as: an audio capture
23
card, and a video card having a video capture module.
24
2.
means for transmitting said composite signal
25
26
27
28
Agreed function: transmitting said composite

signal
Corresponding structure: one or more cellular
telephone transmitters, radio frequency
A255
Agreed function: transmitting said composite

signal
Corresponding structure: one or more modems
connected to a corresponding number of cellular
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1
2
transmitters, telemetric frequency transmitters,

and/or standard telephone line transmitters, and
equivalents
telephones or telephone lines and the run-time

module of a communications software package,
such as ProComm Plus for Windows software,
using the software sequence set forth at 3:8-14,
6:36-61, 7:24-33, 7:60-10:2
The term means for transmitting said composite signal appears in independent Claim 1
4
and dependent Claim 7 of the 239 Patent. Independent Claim 1 of the 239 Patent recites:
5
An apparatus for transmission of data, comprising:

a.) means for capturing, digitizing, and compressing at least one composite
signal;
means for receiving at least one composite signal transmitted by the
remote unit;
b.) means for storing the composite signal received by the host unit;
7
8
9

10
11
12
13
14
The parties agree that means for transmitting said composite signal is a means plus
15
function term. As discussed previously, means plus function terms are limited to structures
16
disclosed in the specification that perform the claimed function, and equivalents of those structures.
17
35 U.S.C. 112, 6. The parties also agree that the claimed function is transmitting said
18
composite signal. See Samsung Br. at 22 (As with the first disputed 239 means plus function
19
claim term, the parties agree that the function for this term is transmitting the composite signal.).
20
The parties disagree as to what the corresponding structure is in the specification.
21
Samsungs proposed structure is one or more cellular telephone transmitters, radio frequency
22
transmitters, telemetric frequency transmitters, and/or standard telephone line transmitters, and
23
equivalents. Samsung Br. at 22. In contrast, Apples proposed structure is one or more modems
24
connected to a corresponding number of cellular telephones or telephone lines and the run-time
25
module of a communications software package, such as ProComm Plus for Windows software,
26
using the software sequence set forth at 3:8-14, 6:36-61, 7:24-33, 7:60-10:2. See Apple Resp. at
27
21.
28
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1
2
Apple limits the means of transmission to cellular and conventional telephones, excluding radio
frequency and other telemetric means of transmission. Second, Apple requires the use of modems.
Third, Apple requires specific software: the run-time module of a communications software
package, such as ProComm Plus for Windows software, using the software sequence set forth at
col. 3:8-14; col. 6:36-61; col. 7:24-33; and col. 7:60-10:2. The Court agrees with Apple that the
structure for transmitting requires modems, but the Court also finds that the structure may include
cellular telephone transmitters, standard telephone transmitters, and radio transmitters.
Additionally, the Court agrees with Apple that software is necessary structure, but disagrees as to
10
Apples proposed construction limits the corresponding structure in three ways. First,
11
12
the actual algorithms required.

a.
Radio Frequency and Other Telemetric Means
First, the parties disagree about whether the required structure for performing the means
13
for transmitting includes cellular telephone transmitters, radio frequency transmitters, telemetric
14
frequency transmitters, and/or standard telephone line transmitters, as Samsung contends, or
15
merely cellular telephones and telephone lines, as Apple argues.
16
Samsung notes correctly that the claims themselves strong imply that telephone lines,
17
cellular, radio, or other telemetric frequencies may be used to transmit the claimed signal.
18
Dependent Claim 3 recites, [a]n apparatus according to claim 1 wherein the composite signal is
19
transmitted over telephone, cellular, radio or other telemetric frequencies. 239 Patent at col.
20
13:20-22 (emphasis added). In contrast, Apples proposed construction would exclude the use of
21
radio or other telemetric frequencies from both independent Claim 1 and its dependent Claim 3,
22
contrary to the plain language of Claim 3. But see InterDigital Communications, LLC v.
23
International Trade Com'n, 690 F.3d 1318, 1324-1325 (Fed. Cir. 2012) (finding that the
24
presumption of claim differentiation was especially strong where a party was urging that a
25
limitation in a dependent claim be read into the independent claim) (quoting SunRace Roots Enter.
26
Co. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003)).
27
28
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Samsungs position is further supported by the fact that the specification repeatedly states
that the transmitted data may be sent over radio or other telemetric frequencies. For example, the
Background of the Invention explains that:
A need also exists for a capture and transmission apparatus over cellular, land lines,
or radio or other frequencies. Additionally, with the current FCC limitations
regarding cellular transmissions from airborne craft an additional need is evidenced
for video over the radio or other telemetric frequencies.
239 Patent at col. 2:17-22 (emphasis added). Similarly, in the Detailed Description of the
Preferred Embodiment, the specification discloses that [f]iles may be transmitted using telephone
lines, cellular, radio and other telemetric frequencies, id. at col. 9:25-26, and that, [i]n areas

10
which are inaccessible to standard telephone lines and outside cellular telephone cell, files can be
11
transmitted using radio frequencies, id. at col. 9:38-40. See also 2/2/96 Amend. at 7 (confirming
12
that other telemetric frequencies are contemplated for transmission and include any frequency
13
over which data may be transmitted).
14
Apple responds by pointing out that Samsungs arguments do not answer the question
15
before the Court: whether the specification discloses a structure capable of transmitting over radio
16
or other telemetric frequencies. Specifically, Apple contends that the specification does not even
17
mention a cellular telephone transmitter, telemetric frequency transmitter, or standard
18
telephone line transmitters, or otherwise explain what those things are, how they work, or how
19
they might be involved in transmitting (and it only contains a passing mention of radio
20
transmitters, with no explanation of what they are or how they are connected to the remote
21
unit.). Apple Resp. at 24. Consequently, Apple argues that Samsungs construction should be
22
rejected because it would render the claims indefinite. Id. (citing Blackboard, Inc. v.
23
Desire2Learn Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009), for the proposition that failure to provide
24
adequate disclosure of structure renders claim indefinite).
25
The Court partially disagrees with Apple as to the adequacy of the disclosure within the
26
specification. As to radio frequencies, the Court finds that the patent discloses that, when using
27
radio rather than cellular frequencies, the cellular telephones in the remote [broadcasting unit] are
28
replaced with radio transmitters. 239 Patent at col. 9:40-42. Corresponding radio receivers are
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then installed in the host unit to receive the signal transmitted from the remote. Each transmitter
operates using a different frequency so as to keep each signal segregated. Id. at col. 9:42-45. The
Court finds that this constitutes an adequate disclosure showing what is meant by language in the
claim. See In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).
However, the Court agrees with Apple that the specification does not disclose any
transmitter using any other telemetric frequency. Moreover, during prosecution, the applicants
admitted that the phrase other telemetric frequencies means any frequency on which data may
be transmitted. 2/2/96 Amend. at 7 (emphasis added). Thus, lacking any disclosed structures in
the specification for transmissions via other telemetric frequencies the Court concludes that the
10
means of transmission includes one or more cellular telephones, telephone lines, and/or radio
11
transmitters.
12
13
14
15
b.
One or More Modems
Apple and Samsung also disagree as to whether the corresponding structure disclosed in the
specification includes one or more modems.
Samsung contends that modem is not part of the structure for transmitting the composite
16
signal because the modem is for interfacing each communication port. Samsung Br. at 23
17
(citing 239 Patent at col. 8:61-63 (The modems interfacing each communication port execute the
18
dialing directory file . . . and obtain a connection with the telephone line on the host unit.)).
19
Samsung appears to argue that, because the modem is interfacing between the remote unit and the
20
signal hardware, it cannot be a part of the transmission structure. However, the very section cited
21
by Samsung indicates that the modem is in fact a necessary structure for transmission. In the
22
embodiments which utilize a cell phone connection, for example, a successful transmission
23
requires that there be a cellular connection with each cellular telephone to the host unit. 239
24
Patent at col. 8:27-28. As cited by Samsung, the modem performs the function of obtain[ing] a
25
connection with the telephone line on the host unit. Id. at col. 8:62-63. Thus, in the telephone and
26
cell phone embodiments, the means for transmitting requires that a connection to the host unit be
27
made, and the modem is the structure responsible for making that connection.
28
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Apple argues that the required structure includes one or more modems because the
specification repeatedly discloses the use of modems as the sole interface between the remote unit
and the signal hardware. For example, the Detailed Description of the Preferred Embodiment,
discloses a modem as one example of an interface. See id. at col. 4:25-27 (The remote unit also
has up to four computer interfaces such as modems, each connected to a cellular telephone.); see
also id. at col. 8:40-41 (Each modem interfaces through a different communications port.); id. at
col. 8:61-63 (The modems interfacing each communication port . . . obtain a connection with the
telephone line on the host unit).

The Court agrees with Apple in that, for all three of the possible transmission modes
10
discussed in the previous section (telephone, cell phone, and radio), the specification refers to a
11
modem connecting the signal hardware to the remote unit. For instance, the specification discloses
12
that, in certain circumstances, the cellular telephones [may be] omitted from the remote, and the
13
modems connected to standard telephone jacks, using standard telephone connectors and wiring.
14
Id. at col. 9:34-37. Similarly, the specification discloses that cellular telephones in the remote
15
[may be] replaced with radio transmitters, but makes no mention of replacing or omitting the
16
modems discussed in the previous paragraph of the specification. Id. at col. 9:41-42. The
17
specification never discloses any interface structure other than a modem.
18
Finally, the Court notes that Samsungs claim term differentiation argument that the
19
claimed means of transmitting cannot include an interface because Claim 3 adds an interface as a
20
limitation is not persuasive. Claim 3 clearly adds the use of cellular transmission as a limitation to
21
the means of transmitting, and this cellular limitation is sufficient to render Claim 3 distinct from
22
Claim 1.
23
Accordingly, the Court concludes that the means for transmitting requires one or more
24
modems.13
25
13
26
27
28
This conclusion is supported by the Courts understanding that an interface such as a modem is
necessary to transform digital data into analog before transmission over analog frequencies, such as
traditional phone lines, cellular frequencies, and radio frequencies in existence at the time the 239
Patent was filed. Although equivalents to the corresponding structures disclosed in the
specification infringe a means plus function claim, such equivalents must have been in existence at
the time the patent was filed. See Welker Bearing Co. v PHD, Inc., 550 F.3d 1090, 1099-1100
(Fed. Cir. 2008) ([A]n equivalent structure under 112, 6 must have been available at the time
60

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c.
1
2
3
4
5
6
7
8
9

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Software as Part of the Corresponding Structure
Finally, the parties disagree about whether the corresponding structure for the transmitting
means must include software and, if so, whether the software includes the specific software
algorithms listed in the specification. While the Court agrees that the corresponding structure must
include certain software procedures, the Court does not find that the corresponding structure
requires the specific software algorithms suggested by Apple. Rather, the Court finds that the
transmitting means requires software procedures that must merely be capable of: (1) performing a
software sequence of initializing one or more communications ports on the remote unit; (2)
obtaining the stored data file; and (3) transmitting the stored data file. Additionally, the Court finds
that these sequences are not limited to the specific brand of software mentioned in the
specification.
First, Samsung argues that the corresponding structure does not need to include any
software because the means for transmitting relates only to the actual hardware transmitter, and
does not even include any processor element. See Samsung Br. at 24. In support of this position,
Samsung relies on Aristocrat Techs. Australia Pty Ltd. v. Intl Game Tech, 521 F.3d 1328 (Fed.
Cir. 2008), for the proposition that, since the means does not include a general purpose
processor, it cannot be limited to a specific algorithm listed in the specification. Samsung Br. at
24; see Aristocrat Techs., 521 F.3d at 1333 (holding computer-implemented means-plus-function
limitations of a claim lacked sufficient disclosure of structure without an algorithm because
general purpose computers can be programmed to perform very different tasks in very different
ways and, therefore, simply disclosing a computer as the structure designated to perform a
particular function does not [sufficiently] limit the scope of the claim . . . as required by section
112 paragraph 6.). In Aristocrat Techs., however, the Federal Circuit also stated that the relevant
inquiry into whether a specification has adequately disclosed sufficient structure is whether, based
on the disclosure of the patent . . . one of skill in the art would have understood that disclosure to
encompass software [to perform the function]. Id. at 1337 (quoting Medical Instrumentation &
of the issuance of the claim, whereas the doctrine of equivalents can capture after-arising
technology developed after issuance of the patent.) (quoting Al-Site Corp. v. VSI Intl, Inc., 174
F.3d 1308, 1320 (Fed. Cir. 1999)).
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Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003). Therefore, Aristocrat
Techs. does not foreclose construing the transmitting means to require software algorithms as
Samsung proposes. Instead, it merely requires that, if software is required by the means-plus-
function claim, that software must be described by an algorithm and not an abstract idea or
concept.

As such, whether software algorithms are a required structure depends on whether the
software included in the specification is required for the hardware to perform the claimed function
of transmitting. Apple argues that it must be required, because the 239 Patent specification
repeatedly describes the structure for performing the means for transmitting as including the run-
10
time module of a communications software package. Samsung disputes that there is any basis to
11
incorporate Apples proposed limitation into the construction.
12
The specification does appear to support finding that the corresponding structure must
13
include software as a means for transmitting said composite signal. The specification discloses a
14
preferred embodiment of the invention which includes software:
15
16
17
18
19
20
Transfer software sequence B enables the remote unit to communicate with the host
unit to transmit a stored data file using the system hardware. Transfer software
sequence B contains all of the instructions necessary to [1] initialize the
communications ports on the remote, [2] obtain a cellular connection with each
cellular telephone to the host unit, [3] obtain the stored data file, [4] initiate file
splitting sequence C, and [5] transmit the split data file.
However, not all of the five software algorithms listed above for the preferred embodiment
21
are necessary for performing the basic function of transmitting. For example, the specification
22
states that the step of splitting and organizing the file may occur prior to transmission. See 239
23
Patent at col. 3:22-23 (In an alternate embodiment, a basic one, the signal is not divided before it
24
is transmitted.); see also id. at col. 9:66-col. 10:2 (In order to decrease transmission time of the
25
data file, it may be split into 10K files and [then] transmitted over multiple land telephone lines,
26
cellular telephones, or radio frequencies.) (emphasis added); see also id. at col. 13:23-25 (Claim
27
4) (describing an additional means for splitting and organizing the digitized, compressed . . .
28
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signal prior to transmission) (emphasis added). Thus, the software sequence for initiating file
splitting sequence C is not required for the basic embodiment of transmitting.
Furthermore, as discussed above, the transmission may take place using a radio transmitter
instead of a traditional phone or cell phone. Thus, the software algorithm of obtain[ing] a cellular
connection with each cellular telephone relates only to a particular embodiment of the invention
using cell phones, and is not necessary for the embodiments using a radio transmitter.
7
8
ports, obtaining the stored data file, and transmitting the stored data file
necessary for any transmission because they are never described as optional or elective operations
10
However, the other steps performed by software sequence B initializing communication

all appear to be
by the specification.
11
Thus, the Court finds that three software algorithms are required for the means for
12
transmitting: (1) software that initializes the communication ports on the remotes, (2) software that
13
obtains the stored data file, and (3) software that transmits the data file.
14
While Apple requests that the exemplar software in the specification, ProComm Plus for
15
Windows, be required as part of the corresponding structure, the Court finds that limiting the
16
corresponding structure to the specific brand name software package would be unduly narrow.
17
Moreover, a construction naming this software package would risk misleading the jury, even if the
18
construction explicitly includes equivalents. Instead, the Courts construction is based upon the
19
specifications disclosure of the actual processes performed by software sequence B, as disclosed
20
in the specifications Detailed Description of a Preferred Embodiment.
21
Accordingly, the Court construes the corresponding structure as follows: one or more
22
modems connected to one or more cellular telephones, telephone lines, and/or radio
23
transmitters, and software performing a software sequence of initializing one or more
24
communications ports on the remote unit, obtaining the stored data file, and transmitting the
25
stored data file.
26
IV.
27
28
CONCLUSION
In summary, and for the reasons stated herein, the Court construes the parties disputed
terms as follows:
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Patent
5,666,502
Disputed Term
history list
Courts Construction
a list of previously used entries
a category of information
associated with a field
program routine(s) that perform
the selected action on the
detected structure
the synchronization thread and
the non-synchronization thread
are both active during an
overlapping time interval
field class
3
4
5,946,647 action processor
5
6
7
8
9
7,761,414 concurrently with

Completely substitut[e/ing]
display of the list [of interactive
8,014,760
items] with display of contact
information

10
11
7,756,087 non-scheduled transmission
12
13
7,577,757
14
zone-specific storage and

interface device
means for capturing,
digitizing, and compressing at
least one composite signal
15
16
17
18
19
5,579,239
means for transmitting the
composite signal
20
21
22
Displaying at least two contact

objects in place of the display of
the list of interactive items
Transmission of data using nonscheduled transmission
information to indicate possible
transmission time intervals
(TTIs)
a storage and interface device
that resides in an area, such as a
room or similar location
an audio capture card, and a
video card having a video
capture module
one or more modems connected
to one or more cellular
telephones, telephone lines,
and/or radio transmitters, and
software performing a software
sequence of initializing one or
more communications ports on
the remote unit, obtaining the
stored data file, and transmitting
the stored data file
IT IS SO ORDERED.
23
24
Dated: April 10, 2013
______________________ __________
LUCY H. KOH
25
26
27
28
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111111111
11111 111111111111111111111111111111111111111111111111111111111
1111111
1111I11111
111111111111
US005946647 A
United States Patent
[11]
Miller
MiUcr et
ct al.
at.
[54] SYSTEM AND
ANI) METHOD
METHOl) FOR
I'OR PERFORMING
I'ERmRMING
AN ACTION
ACTION ON A STRUCTURE [N
rN
COMPUTER-GENERATED
COMI'UTER-CENERATED DATA
[75]
fUier,
175] Inventors: James R.
R. 1\
MlIIl'
r, Mountain View;
Thomas
Thomus Bonura,
Bonura. Capitola; Bonnie
8 0nn[e
Nardi,
Nardi. Mountain
MouDtain View; D
I)~n'id
avid Wright,
Santa Clara, all

all of Calif.
A'iSignee:
Cupertino,
Assignee: Apple Computer, Inc.,
I.ne" Cupertino.
Calif.
Calir.
[73]
[21 ]J Appl.
App1. No.:
No .: 08/595,257
Feb. 1,
I , 1996
,1996
Filed:
[22]
[221
lot.
lnt. CJ.
CI. ...
.. ........
_...............................
.... . .......... . ....... ..............
_.................
...., C06F
G06F 17/27
U.S. Cl
___ ...... _. _. 704/9;
704/' ; 704/1
704/ 1
C I. .......................................................
[51]
[511
[52]
[52J
[58]
]SS]
SC:Ift:h .................................. 704/1,

704/1,7,97, 9- 10,
10,
Field of Search
704/243; 707/513, 101101- 104
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Schwan, Peter
l'cter and
ami Shoens,
Sho<:os, Kurt.
Kur!. "Managing Change in the
Rufus
Rnfus System,"
SYSlem," Abstract from the
Ihe IBM
ILlM Almaden Research
PI'. 11- 16.
16.
Center, pp.
Brad A "Tourmaline:
MTourmaline: Text
l ext Formatting
Formalling by DemonMyers, Brad
stration,"
14) in W
W(!lcll
iJ/c/r What
Whl/f I, Do:
Do: Programming
Progro/llmj,lg
Slralion;' (Chapter 14)
by
ited by Allen Cypher, MIT Press,
hy Demonslralion
Deli/omlratioll, ed
ediled
Pres.~.
(Cambridge, MA
MA 1993), pp.
(Cambridge.
PI" 309- 321.
321Maulsby,
Maulsby. David. ''lostructible
" lnstructiblc Agents,"
Agents.~ Dissertation
Disser1ation from
the Department
Deparlmenl of Computer Science at The University of
Calgary (Calgary,
Jun. 1994),
(Calgary. AlbertaAlberta-Jun.
1994). pp.
PI'. 178,
.178, 181181- 188,
188.
193-196
I 93-L96 (from Chapter 5).
Rus. Daniela
Danida and Subramanian,
SunranlHnian, Devika.
Dcvika. "D
Rus,
'" D,:,,"igning
esigning Structure-Based lnformatioo
Information Agents," AAAJ
AAAI Symposium
SYOlposiuOl (Mar.
1994),
1994). pp.
pp. 79-86.
Primary ExamiJter--Forester
EXGmifler-Forester W.
W. lsen
lscn
Examiller--Patric\.;: N
Edou ard
Assistant Ex.ami.ner-Patrick
N.. Edouard
Aaom(.>y,
Allorn,,>,, Agem,
Agent, or Firm~arc
Firm-CMr & Ferrell LLP
[57]
157J
ABSTRACr
AHST ltACT
A system and method eauses

causes a computer to detect and
structures identified in compute
computerr data.
data.
perform actions on structures
ana lyzer server, an application
The system provides an analyzer
program
program interface,
inlcrfa<.:c. a user interface
interhce and an
~u action
~clion processor.
proces.'iOr.
The analyzer
analy-r..cr server receives from an application running
concurrently data having
having recognizable structures, uses a
pattern
pattcrn analysis unit, such as a parser or fast
fasl sIring
string search
function ,. to detect structures
s.truetures in the data,
da ta, and links
Jinks relevant
actions to the detected structures. The application program
program
in
terface communicates
inkrface
c()mmuni~'a t cs with
wit h the application running
runrJing
concurrently, and transmits relevant
rc!evam information
infurmalion to the user
user
interface. Thus,
TIIUS. the user
Il->t:r iJJterface
interface can present and enable
selection of the detected structures,
s.tructurcs, and upon selection
selcCiion of a
detected structure.
structure, present the linked candidate actions.
de1ected
actions.
Upon selection of an action, tbe
the action processor performs
performs
the action on the detected structure.
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Case: 15-1171
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Case: 15-1171
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START
Receive Document Content
810
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820
Link Actions to Detected Structures
825
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Reg ions for Detected Structures
No
FIG. 8
A591
Case: 15-1171
U.S. Patent
Document: 40
Page: 366
Aug. 31,
3 1, 1999
Filed: 03/06/2015
5,946,647
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910
Display Regions
No
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930
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No
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950
FIG. 9
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Case: 15-1171
U.S. Patent
Document: 40
Page: 367
Aug. 31, 1999
5,946,647
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Case: 15-1171
Document: 40
Page: 368
Filed: 03/06/2015
5,946,647
5,946,647
22
SYSTEM
S V~""':M AND
A NI) METHOD
M"::'rHO)) FOR
t-OR l)ERFORMJNG
'>ERt'ORM INC
AN ACTION
ACt'IO N ON
ON A
A STRUCTURE
STR UCfU RE lN
IN
AN
COMPUTER-GENERATED
COM I' l r rt: R,Ct:NERATED DAIA
I)A1:1.
tion
tion of
of an
. n action
ICtion aod
.nd automatically
.utonutic.lty performs
performs lhe
the selected
~kcted
action
action on
00 the
the structure.
S\(\lCIUI'I:.
BACKGROUND
BACKGROUNI> OF
OF TirE
TI lE INVENTION
INVENllON
I.
I. Field
rjeld of
of the
the Invention
Im.'ention
This
1bis invention
in\'Cntion relates
relues generally
generally to
10 manipulation
mUlipulali(](l of
of strucSlfUCtures
tun::; in
In computer
wmputer data.
dati. More
Mocc particularly,
paniaJIarly, the
the invention
in\'ention
relates
rclltes to
10 aI system
:.~em and
.nd method
method for
for performing
performing computercomputerbased
bal;(:d actions
acti(](ls on
on structures
Slructul'C.'I identified
identified in computer
computer data.
dati.
2.
2. Description
Dc.""ription of
of lhe
the Background
Background Art
An
Much data that appears
appelr$ in
in aa computer
compl.ller user's
user's day-to-day
daYlo-day
activities
a(.1ivitics contains
eonllins recognizable
n:co,n i.f.able structures
S1ru(.'urc.s that
Ihal have
have semanseman
tic
Ik signifi
~ign incanec
ca nce such
such as phone
phone numbers,
numbers. eemai!
-mail addresses,
acklresses,
post-ollice
posloniec addresses,
add~s, 7.ip
zip codes
(.-odes and
and dates.
dales. In
In aa typical
Iypical day,
day,
for
mp le, au user
user may
rnay receive
(C(.'C ive ex
extensive
tensive fitiles
les from word
word
for exa
example,
processing
pl'Ol.:e....~ing programs
programs and
and e-mail
ernailthat
that contai
comain
n several
several of
ofthcsc
these
struc
structu(Cs.
tures. llowever,
lIowever, visually
visually searching
searching data
data files
filcs or
or docutructures is
ments
melllS to
to find
Hnd these
these sSlruclures
is laborious
laborious and
and cognitively
cogniti\'cly
d isntptive,
isru l)tivt. especially if tbe
the document
document is leoglhy
lengthy and
and hard
hard to
follow.
follow, Furthermore,
FUflhcrmore. missing
missing aI sSlrUClure
tructure such
s uch as
a... aI date
dale may
mlY
lead
leld to missing
mb.sing an
I n important
imporlant meeting
meeting or missing
mil;.s.ing a deadline.
deldline.
10 help
hel ll facili
facilitate
tate searching a document for these
these:
To
Slructures, programmers can create or
o r employ patlem
plUem analyanlly_
s~ructu.res,
SL'l
.IoL' unus,
units. such as parsers,
paI'SCrs. to
10 automatically
automatiQUy identify the
sSlructures.
tructures. For the
lbe purposes of the
tbe: present description,
ciescripti(](l. the
lhe
term pauem"
~pallem ~ refers
refers to data,
dlla. such as
a... a grammar,
gntmmar, regular
regullr
expression,
Clliprc:ssi(](l, string,
SIring, etc., used by aI pauero
panem analysis unit
unit to
10
recogni.te
reeOC.1II1A: information
mformltion io
in a document, such
sucb as dates,
dates.
addrcs.<;es,
.dd~s. phone
phone: numbers, names, etc. The
Tbe term
ICIm structure"
-structUNrefers
reftD to an instantiation
illSllntillion of a pauem
p.llero in the
tbe document. lThat
nat
is,
~. a date"
-d.te- paltern
p.llern will recognize
n:cogni7.c the
tbe structure
SlnlClUre Oct.
-Oct. 31,
JI,
1995."
1995.- The
lbe application
applicltion of a pattem
pillero to a document is termed
parsing."
..-parsing.that identify structures io
in computer
Conventional systems lhat
data do not enab
dlla
enable
le automatic performance
pcrfOfll1anoe of an action on an
identified
idcntilied sslructul'l:,
tru cture. For example,
examp le, if a long
long e-mail message
m~gc is
.scntto
use r. the
sent to a user,
lhe user
u!iCr may implement
impl~ment a pattern
panero analysis unit
scare h for particular .IoIru
to searc
structures,
...1ures. such as
lIS lelephone
telephone numnum,
bers. Upon iden
identtifi
ificalion
cation or
of a stntc
structure.
ture. the user may want to
perform an
~II actio
actionn oono the structure,
structUI'l:, such as moving the
number
10 a.n
an electronic
telephone
000k. Tbis
'Ibis usually
~umber to
e lectronic te
lephone book.
uwo lves
cture from the e
e-mail
invo
l ve~ c
cUutttng
ll ing the stru
Mructure
mail message,
l11essage.
locating
anti opening
opc ll ing the eelcctronic
applilectronic telephone book appli
loca ting and
cation
ca tio n program, pasting
plsting lhe
th~.: s truClUre
tructure into the aappropriatc
ppro priate
[icld,
Ilowever, despite
fi e ld, and closing the application program. However,
the fact
fa ..., Ithlt
hat compute
compu terr systems
s)'stcms are
arc getting
gelling faster aod
aotl more
efficient,
till tedjous
clflcicnt, this
thi!,: procedure
pr(x:edul'l: is sstill
tedious and cognitively
disru
pi ive.
dkrupti\e.
SUMMARY
SUMMARY OF
OF TilE
"n iE INVENTION
The
present
invention
overcomes
The prescnl in...ention O\"ercumes the
lite limitations
limitalions and
and
5s
deliciencies
of previous
ddicicocicsof
pre\'iou.usystems
~ems wilh
with aa system
system lhat
that identifies
structures
in computer
computer data,
data, as.<;aeiates
associates candidate
candidate actions
act.ions
structures in
wllh
Wllh each
elCh detected
dcte!;lc:d structure,
Slru!;lure. enables
enlbles the
the selection
:o;c1ect.lOn ol
01 an
an
action,
action, and
and automatically
.utomatic.lly performs
performs the
tbe selected
:o;clected action
action on
on the
the
identified structure.
It will
will be
be: appreciated
appreciated that
Iha t the
lhe system
system
Slructure. It
10 may operate on recognizable patterns for text, pictures,
to may operate on recogm.f.able paLlems
text, pictures.
tables,
IIbles. graphs,
sraphs. voice,
voice. etc.
etc. So
So long
long as
as aI pattern
pallern is
recognilab
le, the
te oo
n:~'Ognil.able.
the system
syst.:m will
will opera
OjlCfate
on it.
il. The
The present
pn:.scnt
!nvcntion
invenlion has
has significant
siJ,;rlilicant advantages over
o~"er previous
pro;:vious systems,
systems.
n-e nded
m
s~em may
may incorporate
inc.'orporate an ope
open-tndc:d
in that
thlt the
the present
prescnt system
n-coded
t' number
number and type
type of recognizable
rcc~il.able patterns,
palle rns, ao
an ope
openended
ts
lysis units,
numbe
numberr and type
type of pattern
pinero ana
analysis
un its, and
and further
further tha
thatt
the
the system
s)'l>ttm may
mny enable ao
an open-ended
opcntmkd number
number and
and type
type (i.e.
(I.e,
scripts,
ros,....
c.-ode
scri pts. mac
macros
'ode fragme
fr:'llmennts,
ts, etc.)
etc.) of
of candidate
candidate actions
attions to
to
n each
ntified strucassocia
te with,
31KI thus
Ihus perform, oon
each ide
identified
s truc
associMe
with, and
ture.
20 ture.
The
The present
prc.'>Cnt invention
ilw.:ntion provides
prov ides a computer
t'Ompu tcr system with aa
central
ceOLul proecs.<;ing
IIfOCCy,sinll unit
uni t (CPU),
(CPU), inpu t/ou
t/outtput
pul (1/0)
(110) means, and
a memory that
lhlt includes
includes aa program
Ilrog.ram to ide
ide ntify structures
SlructU(l!S in aa
document and
.nd perform
perform selected
sclccttd computer-based
wmpultr-basoo actions
actions on
(](I
215
iden tified structures.
structures. ll1e
' Ibe program
program includes program
5 the identified
subrou
tines that
subroutines
tluit include
iocludc an
.n analyzer
anllYler server,
ser....er. an
III application
Ippli~tioo
program interface,
interfaIX. a' user interface
interface: and
I nd an action proces.sor.
pr<:IC'CSW{.
The analy;er
anllYl.er server
scn'er receives
rc:cci\'CS data
dala from a document having
recognizable
.nd uses patterns
pallems to detect
detect. the
recogni;r,able structures,
Slruct.urcs, and
30
JO s.tructure~.
Slructures. Upon detection
delectlOn of aI structure,
Slruclure, the
tbe analyzer
analyzcc server
scn'er
hnks
links acuons
actioll to the detected
octected structure. Each
Eacb action is a
computer
t"Offlputer subroutine
~ubroulioe that causes
QUSCS the CPU to
10 perform a
sequence of operations on
(](I the panicular
partiaJI:Il' structure
Slruct.ure to which
it is linked.
linked. An action may specify
specif)' opening another
IDother
J5
J$ application,
Ippli~tion, loading the identified structure
Structure into
inlO an appropriate field,
Ind closing
closiOi the
tIM: application.
applic.tion. An action may
field. and
further include
ioelude internal
internll actions.
l!;Iions. sucb
such as storing phone
pbooe numnum
bers in an electronic
d~lrorlie phone book,
book. addresses
1kkl1'l:S/5C.S in ao
an electronic
electronic
address boo~,
ts on
lect ronic calendar,
apjlOlllInlCnL"
o n a~
an eelectronic
calendar. and
book, appointmeo
40
01() external acuons
action~ such as returnmg
returni ng phone caUs,
calls. drafting
drifting
le
uers, sending
il, and lhe
fa.c... jmile copies
t'Opies and e-ma
email,
the like.
[cllerli.
scnding facsimile
of
Since
execu t ed
~d during tbe
Ihe run-time
run timeof
Sloce the program
progu m may be execu1
another
aoother program
progr.ltn,, i.e. the application
applica tion which presents
prese nts tbe
the
document,
uch 1II.~
1s Microsoft Wo
rd, an applicatioo
d{)!,.'um~nt, ssuch
Word,
application pro<>ram
progr-dm
45
terface provides
4S in
inlcrfut'C
pmviu\:s mechanisms
mecha nisms for interprogram
in tcrprogram com~uoi
commu ni
cat
ions. The
rface retrieves and
cations.
"I1tc application
applica tion program inte
interfa~"(!
transmi ts ro;:levlnt
relevant information
otherr program to the
transmits
informa lion from tbe
the othe
Ihe
~ser interface
identifying, presenting
uscr
interfa~"(! for ickntifying.
Ilfc;:scm ing and enabling selecselec
uon or
of dete(.100
detected structures.
Upo n se
lection of a delectro
detected
1<IructUI'l:s. Upon
sdcction
tion
aod enables
selection of
so sstructure,
tructure. the user interface
in terr.ce presents
prcscnt~ 100
cnlble.~sclection
of
so
candidate actions.
candidate
canditbte
letiOllS. When a candidl
te action is selected,
selected. the
action
performs'I the selected action 00
on lhe
Ictioll proces.sor
pro<.'CS!oOf perform.
tbe selected
structu
re.
struCtu(C.
In addition to the
present invention
s~em, the prC;:SCDt
invenlion
lhe computer system,
~~
55
provides methods
also
Iiso prWoo
nICthods for performing actions on identified
structures in a document.
document In thi!.
this method,
method. the document
documenl is
analyzed using .a pallern
to identify corn:sponding
corresponding strucanalyl.cd
paltem 10
tures. Identified
structures are
al'l: stored
'ltor-cd in memory and preIdenllflCd Slruetul'l:S
sented
an
M:nted to the user for selection.
sc:kction. Upon selection of ao
60
60 identified Slructure
structure,a menu
ml:nu of candidate actions
Ictions is
presented,
each or
of which may be sclcctro
selected and perlormed
oo
performed (](I
pre.
!;cnted, ncb
structure.
the selected Siroctun:.
hn addressed this problem

One type of system that has
involves detecting
detccting telephone numbers. Such systems enable
aI user
select a telephone
requCSl th.
that1 the
uscr to sekCl
tclephooc number and request
application
Ipplication aUlomalically
automatically di.ltOO
dial lhe Dumber.
number. However,
these
lIowc~"er, the:se
S),Slelllli
systems do not
IlOl recogni7..e
fCCOG,Dizc: the selected
liClccted dau
data as a telephone
number, and they generally produce an error message
IIJC.';..'Wlge if the
user
invalid characters as a phone:
u r selects invllid
phone number. Also.
Also, they
enable the performance of
olher candidale
candidate action-.
actions
do not cubic
nf other
sucb
IS moving the number 10
book:
such as
to an electronic telephone book.
That is, if.
if a user wishes 10
to perform a dill'ereot
different acti(](l
action oonn an
In
identilied
telephone number,
the number
identiJicd telephooe
number. such as storing lbe
numbtr in
an addl'l.!-~
address book,
cannot automatically
the
book. the user canllOt
aUlomatically perform
perfonn lhe
BRIEF
DESCRIP'llON
TilE DRAWINGS
action but must .scl~t
select and transfer
transfe r tbe
the Dumber
number 10
to lhe
the
HRIU: I>CSCR
nrnON OF 'mE
appropriate dall
data base as
described above.
IS ckscribcd
65
FIG.
FIG, lI is a block
block diagram
d iagram of aI ....computer
ompukr system having a
n1erefore,
Thtl'l:fol'l:. a system is nccdt:u
needed tltal
that identifies
idcntilks structures,
structures
program stored
presen t
stol'l:d in RAM
RAM., in accordaoce
accordant'C wilh
with the pro;:scnt
inventio n,
n.
tructures, enables sclet
selec~
.s.o;ociat
associates
..'lI candidate actions 10
to the sstruclures,
"
A594
Case: 15-1171
Document: 40
Page: 369
Filed: 03/06/2015
5,946,647
FIG. 2 is a block diagram of the

lhe program of FIG. 1.
I.
FIG. 3 is a block diagram illustrating
illustrating the analyzer server
of FIG. 2.
FIG.
example
HG. 4 is aa block diagram illustrating
il1u"lr3ting aa particular c:l:amplc
of the analyzer
Jnalyz.::r server of FIG. 2.
FIG. 5 illustrates
illus trates a window
windnw presenting
prcscnling an example of a
documcrn having recognizable
rccogm7.ablc structures.
slruc\ures.
document
FIG.
nG. 6 illuslralcs
illustrates a window with (I1\:
the identified
idcnlitlcd structures
SlruClllrcs
in the example document of FIG. 5 highlighted based on the
analyzer server of FIG. 4.
FIG. 7 illustrates a w
window
indow showing
s howing Ihe
the display of a
pop~up menu for selecting
sdccling an action.
pop-up
FIGS. 8
S and 9
I} together
wgcthcr arc
are a flowchart
llowchar! de
depicting
picting the
[he
preferred method
rnclhod for selecting and
arK! performing
pcrfomling an action on
an identified
idcmificd structure.
S1meum:.
FIG. 10
10 is a flowchart
tlowchart depicting the
[he preferred method for
dala sample.
identifying a structure in a data
After identifying structu

structures
res and
arxJ linking actions,
actions. app
applica
lication program interface 230 communicates with application
167 to
!0 obtain infonn
infornlalion
167
ation on the identified sstructures
tructures so that
user interface
240 can successfully
interfac..:: 140
sut-cessfully present and enable
selection of the actions.
actioos. In
In a display-typo;
display-type environment,
cnvirollmcot,
tion program interface 230 retrieves the locations in
applica
application
document 2210
10 of the presen
tation regions
presentation
rcJtions for the detected
detecled
st
ructures from applica
tion 167.
structures
application
167. Application program
progmm interface
fal'C 230 then transmits
transmils this location information to user
interface 240,
truc tures,
240. which highlights the detected sstructures,
although other presentation
prescntation mechanisms can be used. User
Use r
in
terface 240 enables selection or
of an identified sst)1.[(;ture
tructure by
interface
making the presentation
prCS<!ntation regions mouse-sensitive, i.e. aware
event sucb
such as a mouse-down
mouse--do wn operation i.s
is
when a mouse cvent
performed
pcrfornled while the cursor
eun;or is oover
ver the region. Alternative
selection mechanisms can be used such as touch sensilive
sensitive
that d..::tected
detected
screens and dialog boxes. It
It will be appreciated
appreeiatcrlthat
structllres
structures can
lall be hierarchical,
hi.::rarehical, i.e. that a sub-s
substruclure
tructure can
itse
itself
lf be selected and have actions associated
associa ted with it. For
example, a user may be
Ix: able to select the year portion
por1ion of an
rathcr
identificd date, and select actions specific to the year rather
identified
than to the entire
en tire date.
dale.
User interface 240 communicates with application 167
167
User
ion program interface 230 to determine if a
through applicat
application
user
uscr has performed
perfornled a mouse-down operatio
operationn in a particular
tbe
mouse-sensitive
mo use-sensitive presentation
prescntalion region, thereby
thel\!by selecting the
structure presented at those coordi
nates. Upon selection of
coordinates.
this sstructure,
tructure, user
uscr interface 240 presents and enables selection of the linked
li nked ca
candidate
ndidate actions using any selection
sclection
mechanism,
mechanism. such as a conveotioml
l"Onventional pull-down
pull--down oorr pop-up
menu.
The above description of
of the user interface is cast in terms
of a purely visual environment. However,
I-I owevtr. the invention
inVCntion is
not limited to visual ioterface
interface means.
means. For example, in an
nvironment, user interface 240 may present the
audio eenvironm..::nt.
structmes
structures and associated
aMOeialcd actions to tbe
the user using voice
synthesis and may enable selection
arxJ action
selectioo of a pattern and
voiC(l or sound activation.
activalion. In th
this
is type of embodiment,
embodimenl.
using voice
aoaly:.:er
analyzer server 220 may be used in (."Onjunction
conjunction with a
synthes~s application 167
167 lhat
tb at reads docu
docu-tex
textt-to-speecb
-to-speech synthesis
ments to users owr
over a telephone. Analyzer
Analy~.cr server 220 scans
seans
document 210
2 10 to recognize
recogrti:.:e patterns
pa!1erus and link actions to tbe
the
rcwgni:.:ed patterns
paltems in the same manner as described
deseribed above.
recognized
In the audio eovironment,
environment, user interface
intcrfal'C 240 may provide a
167 reads a recogn
recogni7;cd
ized
special sound after application 167
pallero,
use
paltem . aod
and eoable
enable selection of the pattern
patlern through the usc
of an audio interface action, such as a voice
voiC(l command
commarxJ or the
pressing
pressing of a3 bu
bunon
tton on the touch-tone telephone keypad as
before. 1bus,
Thus, user interface 240 may present tbe
the linked
actions via
\'ia voice syn
sylllhesis.
thesis. One can create various environments baving
havitlg a combination of sensory mechanisms.
mechanisms.
Upon
candidatc action, user interface 240
Upon selection of a candidate
transmits the selected structure
struct ure and the selected action to
action processor 250. Action processor
pfOl."CSSOr 250 retrieves the
te the selected action.
action,
sequence
scqucnl"t.: of operations that constitu
constitute
and performs the sequence using the selected structure as the
object of the selected action.
Referring oow
iagram illustrating an
now to FIG. 3, a block ddi:1gram
analyzer server 220
hown. In
serverr
analY"lCr
220 is sshown.
In this figure, analyzer
analyze r serve
220 is described as having a pa
rser 310
parser
3 10 and a grammar
g.rammar ftle
file
320, although alternatively or additionally a fast string
search function oorr other
o ther function can be used. Parser 310
3 10
re
trieves a gramm
ar from grammar
retrieves
grammar
gramm ar file
Jile 320 and parses text
identifica tion of a strucusing the retrieved grammar. Upon identification
ture in the text, parser 310
3 10 links the actions associated with
tbe
the grammar to tbc
the identified structure. More particularly,
parser 310
3 10 retrieves from grammar
g.rammar!ile
auached
ft le 320 pointers attached
DETAiLED
DETAILED DESCRIPTION
DESCRII'TION OF 'nl
THE
E
PREFERRED
PR EFERRED EMBODIMENT
55
10
10
t5
15
20
20
Referring now to FIG.

cliagram is shown
I'I G. 1,
L a block diagram
sllOwn of a
CPU
computer system 100
100 including a C
PU 120.
120. Computer
microprocessor-based computer,
system 100
100 is preferably a microproo.:ssor-based
such as a Power Macintosh manufactured by Apple
Computer, Inc. of Cupertino, Calif. An input
device 110,
input devke
UO,
such as a keyboard and mouse, and an output
outpu t device 105,
105,
such as a CRT or voice module, are
arc coupled to CPU UO.
UO.
ROM 155,
ISS. RAM 170 and disk storage 175
175 are coupled to
CPU
CPU 120
120 via ssignal
ignal bus 115.
1.1 5. Computer system 100
100 optionally fllrther
fUr10cr comprises
l"Ompriscs a printer 180,
]80. a communications
l"Ommunications
interface 185,
IS5, and a floppy
floppy disk drive 190,
1110. each coupled to
CPU
U 5.
CPU 120
120 via signal bus 115.
Operating
160 is a program that controls and
Operati
ng system 160
facili
tates the processing carried out by CPU UO,
facilitates
120, and is
typically stored in RAM
RAM 170. Application 167
167 is
is a program,
word-processor or e-mail program,
such as a word-pfOl.'Cssor
program. that presents
preS<.:nts
data on output device 105
10510
to a user. The
'Ilte program 165
165 of the
tored in RAM
present invention is
is sstored
RAM 170
170 and causes CPU
CPU 120
120
to identify struc
structures
tures in the data presented
pr..:scnted by application
167,
167, to aswciate
associate actions with the sstructures
tructures identified in the
data, to "nable
enable the user to select
se](,,,t a sstructUf(;
tructure and an
art action,
and
ami to au
automatically
tomatically perform the selected action on
o n the
165 may be stOred
stored in disk
dL'>k
ident
identilied
ified structure. This program 165
storage 175
175 and
arxJ loaded into an allocated section of RAM
RAM
170
170 prior to execution by CPU 120.
120. Another section of RAM
170
170 is used
used for storing imernlcdiate
intermediate results and miscellan(:.Ous data 172.
172. Floppy clisk
disk drive 190
190 eenables
nables the storage of
neous
the present program 165
165 onto a removable sto
storage
rage medium
Ix: used to in
initially
itia lly load program
program 165
165 into
which may be
computer system
systent tOO.
100.
Referring now to FIG.
FIG. 2,
2. a schematic block diagram of
program 165
165 is shown together with
wilh its
its interaction
in1Cral1ioo with
wilh a
document 210. Program 165
165 contains program subrou
subroutines
tines
inclucling
tion program
including an analy:t.er
analYl.cr server 220, an applica
applicalion
interface 230,
inlerface
230. a user interface 240 and an actio
al1 ionn processor
25(1. Analyzer server 220 receives data having recognizable
250.
pallerns
patterns from a document 210,
21(1, which may be retrieved
relTieved from
a storage
disk storage
slorage
Sloragc medium such as RAM
RAM 170,
170. ROM
ROM 155,
155.&sk
175,
175. or the like, and presented on outpu
OUlputt device 105
105 by
application 167.
167. Analy:t.er
Analyzer server 220 comprises one or more
pattern
pauem analysis units,
units. such as a parser aod
and grammars or a
fast
fast string search
seareh li.1nction
function and dictionaries, which uses
pallerns
recognizable sstructures.
tructu res.
pallcms to parse document 210 Cor
for rel"Ognizable
Uponn detection of a structure, analyzer
Upo
analy:.:er server 220 links
actions associated with the responsible pattern
pallern to the
detected sstructure,
tructu re, using conventional pointers.
15
25
30
3o
35
J5
40
45
45
50
so
55
60
65
A595
Case: 15-1171
Document: 40
Page: 370
Filed: 03/06/2015
5,946,647
to the
lhe ggrammar
rammar and auaches
atlachcs the same poin
pointers
ters 10
to the
identified
inters direct the system 10
to the
idcn\iticd structure.
slruclUrc. These po
pointers
associated
as,<;()Cialcd actions contained in associated actions file 330.
331t
Thus,
user inter'!bus, upon selection of the identified structure, USl.:f
face 240 can
cau locate
local\; the linked actio
actions.
ns.
FIG. 4 illustrates an example of an analyzer server 220,
which includes 1:1ammars
gramm ars 410 and a ssiring
tring library 420 such
as a dictionary, each with associated actions. One of the
grammars 410 is a telephone number
numlx:r grammar with assoas.sociated actions for dialing a number identified by the telephone number grammar or placing the number in an eleceketronic
tronie telephone book. Analyzer server 220 also includes
posl-oflicc add
addresses,
grammars for post-office
resses, e-mail addresses and
dales. and a string
Siring lib
library
imporlanl names.
namcs.
dates,
rary 420 containing important
When ana
lyzer server 220 identifies
analY7.cr
idemifies an address using the
..e-mail
e-mail address" grammar,
srammar, actio
actions
sending e-mail
c-mail to the
ns for sending
pUlling the identified address
addres.s in an
identified address and putting
e-mail address book are
arc linked to the address.
FIG. 5 shows a window 5510
10 presenting
preseming an exemplary
document 210 having data con
containing
tainin g recogn
recognizable
izable
sstructures,
truc tUies, including aa phone number, post-office
post-ollicc address,
e-mail address,
name.
indudes a button
buuon
c_mail
address. and na
me. Window 510
5 10 includes
520 for initiating program 165,
165, although
ahhough alternative
alte rnative mechaoption" key may he
nisms ssuch
uch as depressing the "option"
be used.
used.
Upon initiation of program 165,
Upon
165, system 100 transmits the
contents of document 210
2 \0 to analyzer server 220,
220. which
parses the contents based on gra
grammars
mmars 410 and strings 420
parses
(FIG. 4). This parsing process
hown
proo.:ss produces
produ<.:es the window sshown
ted in FIG.
in FIG.
FIG. 6. As illustra
illustrated
FIG. 6,
6. analyzer
~nalyzer server 220
identifies the phone
phollC number, post-office
post-olike address, e-mail
address
yzer
addrcs... and name. Although not shown in FIG. 6,
6. anal
analyzer
server 220 links the actions associated
associah::d with grammars 410
and string,s
s trings 420 to these identified
identilied structures,
structures. and application
rface 230 retrieves information oonn the location
program inte
interface
tru ctures from application 167.
of these sstructures
167. User interface 240
tben
then highlights the identified
kkntified structures in document 210,
and makes the identified
ident ified structures mouse-sensitive.
As shown in FIG. 7, upo
uponn recognition of a mouse-down
mousc..()o wn
terface 240 presents
operation over a structure,
structure. user in
interface
presenls a
pop-up Illenu
menu 710. In this exampk,
example, pop-up menu 710
displays the ca
ndidate actions linked to the selected telecandidate
phone
phon<; number
numb<;r grammar 410,
4 10, including
includi ng dialing
dia ling the
th<; number
and
amI pu
puUing
tting the number into
illlo an electro
electronic
nic telephone book.
Upon selection of tbe
the act
action
io n for putti
putting
ng thc
the number in
io an
electron ic telephone book,
eJc<.:tronic
book. user interface
illlerface 240 transmi
transmits
ts the
corresponding
phone number and selec
ted action to
corresponding tele
telephone
selected
actio
actionn processor
proo.:ssor 250. Action
Actioo proces.sor
processor 250 locates and
book. places the telepbone
telephone
opens the electronic telephone book,
number in the appropriate field and allows the user
Ilser to input
additional
infonnatio n into the file.
any additio
nal information
FIGS. 8 and 9 display a flowchart
Howchan illustrat
ing preferred
flGS.
illustrating
re(."1,)gni~.ing palterns
patterns in
in documents and
method 800 for recognizing
performing actions.
is carried
carrie!l ou
outt during the
actions. This method is
rull-time of application
run-time
applicatio n 167. Referring first
lirst to FIG. 8,
8.
method 800 starts by receiving 810 tbe
the content,
content. or a portion
of tbe
the content, from document
doc11ment 210. A'>Suming
Assuming program 165
165
initiates
conieDL or
initiales with the receipt of any text,
text. the received content
portion is scanned 820 for identifiable
iden ti fiable structures using tbe
the
patterns
ure
pallerns in analyzer
analyze r server 220. Upon detection of a struct
structure
pancrn. actions
a,,ions associated with the
based on a particular pattern,
tructure.
particular pattern are linked 825 to the detected
det~ct~d sstructure.
Assuming
environmen t, the presentation
ASSUming a display-type
display.type environment,
region location
tructure is retrieved 830 from
location 1or
for a detected sstructure
application 167.
documen t conten
167. l[
If the document
contentt being displayed on
output device 105
105 is
is changed 840,
840. for example by the user
adding or modifying text,
metbod 800 restarts. Otherwise,
text. method
method 800 continucs
con tinues with block 850. If
If the presentation
regions cchange
hange 850,
850. for example by the a user scrolling
serolling
document 210, then new presentation regions from app
licaapplication 167 are again retrieved
reuie\'ed 830. Otherwise.
Otherwise, method 800
continues to block 860.
8611. As
A~ illustrated
illustraled by block 860,
860. method
800 loops between
betwe<;11 blocks 840
8-&0 and 860 until
unti l aa rt:ques!
request fo
forr
display of identified
di<splay
ident ific!l structures
Stnlctures is received 860. It wiU
will be
appreciated
apprecia
ted that the ssteps
teps of the loop (blocks 840.
840, 850
8SO aod
and
860) can be performed by applicatio
applicationn 167.
167.
Referring
also to FIG. 9, wben
lay of
when a request for tbe
the disp
display
Referring aL"'lto
detected structUies
structures is
is received 860, the regions are
arc displayed
910 using presentation
tbe
9\0
presenta tion mechanisms such as highlighting the
presenta
prCSCllla tion region around each detected sstructurc,
tructUie, although
alternative presentation mecban
isms can be used. If a
mechanisms
request for the display of candidate actions linked 10
to a
detected sstructure
truc ture is oot
turns to
not received
rcceiv<;:d 920, method 800 re
returns
84O. 1However,
lowever. if a request is received
reccived 920, the actions
block 840.
linked in block 825 are
arc displayed 930. This request
requcst for
display
call be performed using a
disp
lay of candidate actions cao
mechanism. such as a mouse-down operation over
selection mechanism,
ove r
detected structu
re, which causes
ndidate actions
a deteCled
structure,
causcs tbe
tl~ ca
candidate
the structure
SlruclU re 10
linked to tbe
to be displayed 930. Display 930 or
of
cand
candidate
idate actions may be implemented usiog
using aa pop-up
pop.up
menu. although alterna
altcrnatl\'e
menu,
tive presentation mechanisms can be
used such
sucb as ptill-down
menus, dialog
pull..()own menus.
di alog. boxes and voice
synthesizers.
As illustrated io
an action from the displayed
in block 940,
940. if
ifan
not selected 940,
940. method 800 rei
candidate actions is oot
returns
urns to
block 840. However,
Il owever. if an action is selected 940,
9411, the action
is executed 950
\ISO on the sSlrut1ure
tructure selected in block 920. After
Afte r
execution 950 of an action.
actioo, method 800 retu.ros
returns to block 840.
8-&0.
Method 800 ends when the user exits application 167,
167,
teps for ending
coding method 800
SOO can alternatively
alte rnatively
although other ssteps
used.
be used.
Referring
flOW to FIG. 10,
111. a flowchart illustrating
iUustratiog the
Referring now
preferred method 820 for scanoiog
scanning and detecting patterns in
a docunt<;nt
document is shown. Method 820
821) sta
stans
rts by retri
retrieving
evi ng 1010
1010
the data
!lata is
~s retrieved.
retrieved, so.:veral
several
data to be analyzed. After tbe
pattern analysis processc.s
pauem
proces.ses may be performed
p.:rformed oonn the data. As
ill
ustra ted in block 1020,
parsi ng process retrieves 1030
illustrated
1020, a parsing
iU.30
ggrammars,
ramm ars, detects
detects 1040
L040 sstructur<;s
tructures in the data based on the
re
trieved gramm
ars. and lin
links
ks 1050
1050 actions associated
aswciated with
retrieved
grammars,
each grammar to each
structure detected
eaeh SIOlelUN
detecled by that
Ihat grammar.
grammar.
As illustrated in block 1060,
A~
1060. a fast string search
seareh function
fUllCtion
r<;lrieves 1070
1070 tbc
the contents
tring Ubrary
library 420, detects
retrieves
contents of sstring
1080
IOSO the sstrings
trings in the data ident
identical
ical 10
to those in the stri
string
ng
library 420,
420. and links 1090
W90 actions associated with the
library sSIring
tring to the detected string. As
A~ illustra ted in block
1100,
iona.l pattern
neural
1100. addit
additional
pattern analysis processes, sucb
such as a ocural
net scan, can be performed 1100
UOO to detect in the data othe
otherr
patterns. sueb
such as pictUies,
pictures. ggraphs.
raphs, sound, etc. Method 820
palterns,
then ends. Alterna tively,
tively. the pattern
pallcrn analysis processes
proccs.scs can
be performed in parallel
parallel using a multipx"Cssor
multiprocessor multitasking
system. or
o r using a uniprocessor
system,
unipr<.x:cssor multithreaded multitasking
system where a thread is allocated to execute each
eacb pattern
detection scheme.
prefe rred and alternate
These and other variations of the preferred
embodiments and methods are provided by the present
invention. for
For example,
example. program 165
165 in FIG. 1I can be stored
in ROM,
re. In fact,
ROM. disk,
disk. or in dedicated hardwa
hardware.
fact. it may be
sepante
electronic
circuit
Otber components
oomponcntsof
of
realized as a sepa
rate electron
ic ci
rcui t.. Other
this invention may be implemented
impkmente!l using a programmed
genera
digi tal computer, using applicat
ion specific
gencrall purpose digjtal
application
integrated circuits,
circuits. or using a network of interconnected
conventional
circuits.
conven
tional components and ci
rcuits. The analyur
analyzer server
SCf\'er
220 of FIG. 22 may usc a neUial
neural net for searching a ggraphical
raphical
document 210 for faces, or a musical library for searching
scarcb.iog a
stored
sto
red musical piece 210 for sounds. The user interface
interfat'C 240
55
10
10
15
15
20
20
15
25
30
3o
J5
35
40
45
50
so
55
60
65
A596
Case: 15-1171
Document: 40
Page: 371
Filed: 03/06/2015
5,946,647
may present
preSCnt structures and act
ac1iOlls
ions via voice synthesis over
o"cr
a telephone line connection
conncction 10
to system 100. The
'Ibc cmbodiembodiments
presented for purposc~
purposes of illusmcms described
dcscril)<."<l have been prcscmcd
tralion and arc
intended
cxhnusljvc
ive or limiting,
limi ting, and
tration
are not in
tended to be exhaust
riations and modifica
tions arc
possible in ligh
many va
variations
modilicalions
are JlOS'>iblc
1ighlt of
(he
the foregoing
fo(.:going lcaching,
teaching. The
'lhc system is limited
Limited only by the
following
followin)!. claims.
claims,
What
Whal Is
is claimed is:
1.
compu ter-based system for detecting
I. A
A oompulcr-bascd
deleding structures in
data
dala and performing
p.::rformillg actions
aClions on
Oil detected
dC1CClcd structures,
SlruClurcs. comprisiog:
prising:
an inpu
ta;
iOpUIt device for receiving da
data;
an outpu
OUlpU1t device for presenting the data;
tines
a memory storing
sloring information including program rou
routines
including
an ana
analyzer
lyzer server for 1klccting
detecting SlruClllrcs
structures in the data,
and for linking actions to the dc(;.:c\cd
detected structures;
a user
U!;er interface
il)1erface enabl
enabling
ing the se
selection
lection of a detected
structure
slruclUre and a linked action; and
an action processor
proces.sor for performing the sclectccl
selected action
linked to the selected structure;
strul:ture; and
device.
ice, the output
a processing unit coupled to the input dev
device, and the memory for con
comrolling
trolling the execution of
the program routines.
2.
he system recited
2. T
The
reciled in claim 1,
I. wherein the analyzer
analY7.cr
server stores detected
det(:cted structures
structur(:s in the memory.
3. The system recited
rcciled in
in claim 1,
I. wherein the inpu t device
~n application
applicalion running (,-onl:urrently,
concurrently,
receives the data from an
rou tines sto
stored
and wherein the program routines
red in memory furlher
further
comprise an application program interface
interface for
[or communicatapplicalion,
ing with the application.
4. The
'I1te sys1Cm
system recited in claim 1,
I, wherein the analyzer
server includes grammars and a parser for detecting
trucdelecting sstrucIhe data.
tures in the
S. The system recited
reciled in claim 4, wherein the analyzer
3nalyl.cr
5.
server includes actions associated with each of the
grammars, and wherein the analyzer server
ser\'er links to a
delccted
slructure the actions
detec
ted structure
a<:lions associated with the
Ihe grammar
which detects
whi<:h
dete<:ts tha
thatt structure.
stru<:lUre.
6.
he system recited
Ii. T
' Ille
reciter! in claim 1,
I. wherein the analyzer
analp1lf
server indudcs
includes a string library and a fast ssiring
tring search
sear<:h
fun<:tion for detecting
detc<:ting sSIring
the data.
data,
function
tring structures in tbe
The
analY7.cr
7. T
he system recited in claim 6, wherein the analyzer
server includes actions associated wi
th each of tbe
with
the strings,
wherein
detccted structure
and where
in the analyzer server links to a detected
the actions associated
as.'SO<:iated with the grammar which detects tbat
that
sstring
tring structure.
struclllre.
uscr
S. The
'Ibe system reciled
recited in claim 1,
1. wherein the user
8.
interfa(.:e highlights detected structu
res.
inlerJ"acc
structures.
9. The
'Ibe system reciled
recited in claim 1,
I, wherein the user
ll.';er
interface enables selection of an action
interfa(,-c
aclion by causing the output
device to display a pop-up
pop-up menu of the linked actions.
10. The system recited in claim 1,
I , wherein Lbe
the programs
10.
stored in the memory f11rther
further comprise
t-ompr~se an application
applicalion run thatt causes the outpu
outputt device 10
presenl
ning concurrently tha
to present
the data
dala received
re('-cived by the input
inpul device,
devict:, and an application
program interface
imerface that provides
providc.,> interrupts
imerrupts and comnmnicommunicates
cales with tbe
the application.
applicalion.
11.
II . The
'Ibe syslcm
system recited in claim l,
I, w
whc
herein
rein the user
uscr
interface enables the selection of a delected
detected structure
struelure and a
ng sound activation,
activation.
linked action usi
using
U
1.2.. The system recited
reciled in claim 1,
I, wherein a first
lirSl one of
the actions
act ions may invoke a second one of the actions.
13. A pprogram
rogram storage medium storing a computer prothe swps
steps of:
gram for causing a computer to
10 perform
pc rform Ihe
receiving computer da
data;
la;
detecting a sstruclure
tructure in the data;
dat a;
linking at least one action to tbe
the detected structure;
enabling
""Iectiun uf
enabl
ing :s~:l<:ctiun
ur Ihe
th<: :structur<:
MfUl:lufC anti
all" a linked action;
actiun; all"
anti
Linked to the selected strucexecuting the selected action linked
s tructure.
10
10
14.
14 . ln
In aa computer baving
having aa memory storing
Sloring actions,
at1ions. a
system
sysICm for causing
<:ausing the compu
computer
ter 10
to perform an action on a
structure identified
identilied in computer data, comprising:
55
data;
means for receiving computer dala;
means for detecting a struClUre
structure in the da
ta;
data;
means for linking at least one action to tbe
the detected
sslructure;
tructure;
means
mearu; for selecting the structure
slructure and a linked action; and
15
20
me3ru; for executing

means
execu ting the selected action linked to the
selected structure.
15.
ter having a memory storing actions,
15. In a compu
computer
aelions, a
method for causing the computer to perform
perfonn an action on
on a
identilied in computer
compu ter data, comprising the steps
structure identified
25
15
of:
30
30
35
J5
40
45
4S
50
50
55
55
60
65
65
receiving compu
terr data;
compule
dala;
detecting a struelUre
structure in the data;
detcl:ting.
delected Slructure;
structure;
linking at least one action to the detected
re and a linked action; and
enabling selection
sdcction oftbe
of the structu
structure
linked to the selected stmcexecuting
cxecuting the selected action
aClionlinked
s truclure.
ture ,
16.
16. The method recited in claim 15,
IS, wherein the computer
compute r
data is
is rcceivccl
received from the
Ihe application running concurren
concurrently.
tly.
17.
17. The
Ibc method recited
redted in claim 15,
IS. wherein the memory
tep of detecting a
contains grammars,
grammars. and wherein the sSlep
structure
slruclUre further
furlher comprises the steps of retrieving a grammar
and parsing Ihe
the data based o
onn the
thc grammar.
18.
18. 1be
lbe method recited in claim 17,
17, wherein the grammar
is associated with a particular action, and wherein the sstep
tep
of linking at
al least
leasl one action to the
tbe detected sstruclUre
tructure
includes Ihe
the step of linking the particu
particular
Jar action to the
detected
deteeled structure.
struclure.
19. The method recited in claim 15,
19.
IS, w
wherein
herein the memory
slring.'>, and wherein the step
Slep of detecting a slruelure
structure
contains strings,
comprises the steps of retrieving a string from the
further (,"Omprises
string.
memory and scafllling
scan ning the data to identify the Siring.
20. The
'Ibe method recited in
in claim 15,
15, further comprisi
comprising
ng
after the sslep
tep of delecting
detecting a structure, ibe
the step of highlighting
the detected s tructure.
21. The method
mClhod recited in claim 15,
IS, further comprising,
tion to
after the step of linking at
al least
leaS! one ac
action
10 the
thc detected
sirueture, Lhe
the step
Mep of displaying and
alxl eoabling
enabling selection of an
structure,
action for performance
pcrfonnance on the detected structure.
22. A computer-based
comp uter-based method for causing a computer to
tructure in
identify, select and pe
perform
rform an action on
011 a sstrut'lUre
computer data received from a concurren
tly running
coneurrenlly
app
applica
lica tion, said application
applicatiou presenting the computer da!a
data 1to
0
the user, the method comprising the steps of:
data from tbe
the applica
application;
tion;
receiving computer dala
structu re in the computer data;
detecting a structure
lio!..'ing at least one action
linking
ae!ion to tbc
the detected
deteClcd structure;
A597
Case: 15-1171
Document: 40
Page: 372
Filed: 03/06/2015
5,946,647
10
HI
23. Tbe
communicating with the applica
application
tion to determine the
The method reci ted in claim 15, whereio
wherein tbe
the step of
the detected
Uclected structure as presented by the
location of tbe
enabling uses
US<.;S sound activation.
application. 10
application,
to enable selection of the detected structure
24.
The method recited
of
24.1lJe
reciled in claim 15,
15. whereio
wherein a first
IilSt ooe
olleof
lioked action, and to
[0 de
determine
tbe detected
and a linked
termine if tlw
second one of the actions.
the actions may invoke a sccOl1d
and a linked
lhlked action have
and 55 tbe
structure aod
bave been selected; aod
action linked to the detected
dclc(.1cd patpalperforming a selected actioo
*.. .. .. *.. *..
lern.
tern
A598
Case: 15-1171
(12)
(54)
Document: 40 Page: 373

1111111111111
(10)
Arrouye et
Arrouyc
ct al.
(45)
UNIVERSAL
UNIV.: R.''iAL INTERFACE
rt-.'TERFAC E FOR
FOR RETRIEVAL
RETRfEVA L
OF
Of INFORMATlON
INFORMATION IN
IN A
A COMPUTER
COMl'UTE I~
SYSTEtv.l
SYSTEM
(75
(75))
Inventors: Yan
Y~m Arrouy
Arrouye,
.... Cupertino, CA (US);
Mortt'nsen, Sunnyvale,
Slltlnyvale, CA (US)
Keith Mortensen,
(73) Assignee: Apple Computer,

Computl'r, Inc., Cupcrtioo,
Cupertino, CA
(US)
( *)
Notice:
Subject to any disclaimer, the term of this

patenl
palent is
is extended or adjusted under 35
U.S.C.
V.S.c. 154(b)
J54(b) by 0 days.
(21) Appl.
AppL N
No.;
o .: 09/478,009
09/478.00!l
(22)
Jan.
J ;III . 5,
.5, 2000
Filed:
FiJ~d:
7
Int.
I.nl. C
CI.'
J. ... ....... .. ... .. ..... ... (;Uf>t'
G06F 17/30;
17/30; G0
G06F
6F 17/(XI
\7/UU
(52) U.S.
U.S. Cl
CI......................
..
..... ...... ... ... .......
... ,707/2;
707/2; 3/104
3/l04.1
.1
(58) Field
f.' idd Uf
of Sea
St'"d rch
n:h ....................... 707/4,
7m!4, 3,
3,10,104.],
10, 104.1,
707115; 709/201,
707/ 1-5;
709/201. 217; 712/215,
712(215. 22, 24;
706/ L0-15, 46,
706{10--15,
46. 45:
45; 719/316
719(316
(51)
eferences CUtod
Cited
R
Refcl1.'nct'S
(56)
U.S.
U.S . PKI'ENT
PATENT DOCUMENTS
DOCU M ENTS
5,404,295
5,404.295
5,727,129
5.727.129
5,729,741
5,729,741
5,764,9{(i
5,764,906
5,870,755
5,893,lm
5_,893,1(17
5,913,205
5,<113,205
5.981,446
5,987,446
6,009,422
6,285,785
6~111,
178
6.3
J1 ,178
6,628,305
66,.. 732
732,088
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2CKJ2/0J.07872
2002;0107872
A
A
A
A
A
A
A
Katz et
~ (31.
707(1
* 4/1995
4/1905 Katz
al. ..................... 707(2
3/1998
3(1998 Barrett
B~mu ct
Cl al.
* 3/1998
Liaguno et
e t al.
aJ. ............. 707/
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104
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*
A
A
A "
A
A
A "
.,
6/1998
2/1999
1/1999
4/1999
6!1999
6{1999
/lQQQ
tll1/1999
12/1999
9/2001
'" *** J0/2001

""'"
101200'
.,Bl ,. ""'"
510004
sam
B1
B1
HI
B1
A1
A'
9/2003
5/2004
8/2002
Filed: 03/06/2015
lllllllllllllllllllllllllllllllllll
lllllllllllllllllllll
1111l11
llllllllllllllllll
1111111111111111
US006847959Bl
Edelstein
al.
Edelstein ct
Cl aJ.
,I 3J.
Slevens et
Stevens
al..............
.......... ... 707/104
Chan el.
~I al.
Jain et
707(2
el aal
:oJ.. ...................... 707/2
Core.y
Cor~y el
d al
3J.. ................... 707/3
Ciccarelli
Ci~'Calcili ...................... 707/4
Bellegarda
BelJeganla et
el al.
aJ. ......... 382/187
Bi.
11; et
CI al. ........................ 707/3
707/3
345(734
Hong e.t
,I aJ.
al ..................
.......... 345/734
Gla1tce .......................... 707/3
Glance
70713
Hudis et
el al
al.. .. ...........
... 707/104.1
......................
....
....
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ABSTHACT
AH
STRAc r
The present
Tbe
presenl iovention
invention provides convenient
con\'enicOl access
a<:cess to items of
information
informaliollthal
tbat are related to
10 various descriptors
de scriptors input
inpul by a
user, by means of a unitary
unilary interface which is
is capable
capabk of
3\;ces.sing informatioo
informalion io
in a3 variety
varit:ly oofC locations,
localiolJ.o;, lbrougb
lhrou gh a
accessing
number of differenl
numb<:r
different techniques.
It:chniques. Us
Using
iog aa pI'luralily
luraUty of
ofht:nristic
heuristic
aalgoritbms
lgorithms to operate
OpcrulC upon information
inlonnation descriptors input by
lbe
presem invention
invention locates
lOCales and displays
disp lays candidate
the user, the prese-nt
infonnalioD for
for selection
sclcL1ion and/Or
reuievaL Thus,
"Jb us , the
items of information
andtor retrieval.
advantages of a search engine can be exploited, wnile
while Listing
lisling
rdcvalllt obj
objeel
ect candidate
<.:andidate items
ilems of information.
only relevan
49 Claims,
( Inlllls, 3 Drawing
Urnwlng Sbrtts
S ht.'Cts
332331-339
339.*
.~
INPUT INFORMATION
lNFORII",nON
DESCRIPTOR
JIO
'"
PROVJD INFORMATION
PROVlDE
INFOR11~ rION OSCRIPTOR
DSCRIPTOR
TO PLUGPLUG-IN MODULES
II(x)UIIS
'"
J20
PLUGPLUG-IN
IN MODULES
IlOOULS DETF:RMINE
OfTrRilJIIl
WHETHER
"otHlTHR ANY INFORMATION
lNFORIIATlC1"l
L~
II", TCHS
rcHtS CRITERIA
CRrrfRJ~ OF HEURTSTICS
HfURlSnCS r JJO
JJO
I./A
II?fTrrIYAI.
RET1?!VA1. MANAGER
MANAGR JS
IS SENT
SfNT
ITEMS
INFORMATION
lrfMS OF INFORM'"
nON
MATCHING
I IIA
TCHIIiG
340
,.-JOINT
TRIAL ExmBIT
4
JOINT TRIAL
EXHIBIT NO.
N o.4
""''l
United
Unit"'! States
Stares District
DisrriCI Court
Northern
Nonh=l District of
ofCalifomia
California
No. 12-CV-00630-LHK
12-CV-00630-UIK (PSG)
Apple
Appl. Inc. v. Samsung Elecs.
Els.
Dale Admitted:
Admil1ed:
.... Date
By:
A599
JOINT TRIAL EXHIBIT NO.
4, Page 1 of 10
NO.4,
Case: 15-1171
U.S. Patent
Document: 40
Jan.
.fnn. 25,2005
25, 2005
Page: 374
yr-
DISPLAY
DISPLA Y 1"-'4
r-.---4
DEVICE
KErBOARD
V'""' 5
~
MOUSE
1--- 3
J
./'MICROPHONE f..-7
6
6
LOCAL
STORAGE
MEDIA
US 6,847,959 Bl
Bl
Sheet
S
heet 11 of
or 3
9
Il PROCESSOR 1-C_
t-'
MEMORY
Filed: 03/06/2015
_r-- 12
72
I I/0
I/O
DEVICE
...-;-;-;--",_8
LAN
STORAGE
VOLUME
70
74
INTERNET
17
77
15
75
SPEECH
PROCESSOR
16
76
RETRIEVAL
MANA
MANAGER
GER
78
LAN
SERVER
WAN
ROUTER
f----1 ROU TER
13
73
FIG. 1
DIALOG
BOX
PLUG-IN
MODULE
22,
221
PLUG-IN
MODULE
PLUG-IN
MODULE
223
222
PLUG- IN
MODULE
22N
FIG. 2
A600
JOINT TRIAL EXHIBIT NO.4, Page 2 of 10
Case: 15-1171
U.S. Patent
Document: 40
Jan.25,2005
.fnn. 25, 2005
Page: 375
Sheet
S heet 2 of
or 3
File
File
US 6,847,959 Bl
f20
77
do
Filed: 03/06/2015
Edit
View
View Lobel
Label
Special
19
79
[GOTO]
FIG. 3A
17
77
Q
cJ
20
File
Edit
View
View Lobel
Special
[9)
] IT)
OJB
([GOTO:
GOTO: _ _ ]
FIG. 38
)
0o
25
/27
GOT
GOTO
O
o0
Get Items:
I
FIG. 4
A601
Case: 15-1171
U.S.
u.s. Patent
Document: 40
.I,,".
Jan. 25, 2005
Page: 376
Filed: 03/06/2015
Sheet 3 of 3
INPUT INFORMA
INFORMATION
TION
DESCRIPTOR
US 6,847,959 Bl
~ 310
~
PROVIDE INFORMATION
INFORMA TION DESCRIPTOR ~ 320
"'---'
TO PLUG-IN MODULES
PLUG-IN MODULES DETERMINE

WHETHER ANY INFORMATION
MATCHES
MA TCHES CRITERIA OF HEURISTICS
RETRIEVAL MANAGER IS SENT

MATCHING
INFORMATION
MA TCHING ITEMS OF INFORMA
TION
~
~
330
~ 340
f-/'
FIG. 5
A602
Case: 15-1171
Document: 40
Page: 377
Filed: 03/06/2015
US 6,847,959 Bl
B1
1
located on the computer or an associated computer network

network
and,
Fi nd-type utility programs are
and. conversely,
converstly, File Find-type
arc not
capable of searcbi
starching
ng the Internet for web-based
wcb-bascd documents
00 (;ombination
combina tion of desktop
or applications. There
Ilieff': bas
has been no
55 li11d
lind routines that
thaI prcseoL<;
prcsen\.$ a single interface and Internet
BACKGROUND
BACKGROUND OF THE
THE INVEN'Il0N
[NVENTION
ustr to find
lind a n~;;eded
necded
browsing routines to allow
a!1ow a computer user
or
desired item
ordesircu
item ofinformation
of infonnation from among all different types
l. Field of the lovcntioo
irwenlion
of information storage systems. Additionally, there is no
The
prcscnl invention is directed to
[0 a computer-h
computer-human
uman
'111e present
program which is
progr3m
is able to process the user's input and then
interface
inlcrface for quickly and easily retrieving
ret rieving desired inlormainfonnato determine,
determine. using many different factors,
factors. including use of the
1ion
tion in a l'Ompllicr
computer system. More
Morc specifically, Ihe
the present
prescnt tO
the fiJc
Ille to be rctreived.
In
[ntertlCt.
terne t, the intent of the user as to tbe
invcl11ion is directed 10
imerface which uses a
invention
to a universal interface
Accordingly,
Acoordingly, in order
orde r to present a more informa tive and
algorithms to
[0 idcnlify
identify an item of
plurality of heuristic algorilhms
pcrsunalizuu u:;cr
u:;(;r interface,
intcrfar..'C, a unitary manner of
uf lim.liog
llulling a
persoliali/.cU
ioformatioo
information (e,g
(e.g.,.. document, application or Internet
Inlernet web
needed.
user's desired
desircu item
item of information
infofll13lion is needed.
to at
page)
page) in response 10
31 least
\casl one information descriptor.
15
2. Description of tbe
lhe Related Art
SUMMARY OF THE
I1 IE INVENT
INVENT ION
One of the
Ihe basic needs of a computer user, especially
espccially with
wilh
llie preThe
preseot
sen t inventioo
invention provides convenient acc~:ss
access to items
Ihe
the rcecn!
rece nt growth in the
lhe amount of data and infonnalion
information
o( information that
of
thaI are
arc related to various descriptors input by
available via networks
nc!works and the Inlcm.::i,
Internet, is 10
to be able to
10
uscr. by means
meallS of a unitary interface
interfat"(: which is capable
~'apable of
quickly search through the
thc available
availablc in(ormuion
inlofnJalion to identify 20 a3 user,
20 accessing
accc.<;sin); informa
informattion
ion io
in a variety of locations,
[oc3tiolt~, through a
useful items, and to thereafter easily locate those items,
items. To
lb
different techniques. Using a plurality of
heuristic
number of dillcrent
ofheuristic
satisfy
thiss need, many computer ope
o~ rating
ra t ing systems cootain
contain
sa tisfy thi
information descriptors
algori
thms to opera
operate
algorithms
te upon inforn13tion
descriplors input by
routioes
routines that provide a simple way to locate objects. For
For
the user.
prescot invention
invention locates
[ocates and displays canclidate
caodidate
user, the present
example, the Finder of the Macinlosh
Macintosh Operating System
e)(ample.
of
infonnation
tor
for
selection
and/or
retrieval.
-Inus,
Thus, the
items
o
f
information
implcmemcd
i[)C[udes a Find File
Fi[e 2"
2.'i
implemented by Apple
App[e Computer,
Contputer. Inc. includes
search engine can
ted, while listing
advantages
advalltages of a starch
cao be exploi
exploitc<i.
listiog
utilit
[ocat~ various files
Iiles loca
located
ted in
io
utilityy wb.icb
whic h permits a user
use r to locate
only relevant object candid
ate items of information.
candidate
the system ddirectories
irectories (e.g.,
(c.g. folders) using keywords that
In accordance with an exemplary
exem plary embodiment
embodimellt of the
occur in the
tbe desired file's
fitcs name.
name, The Find File util
utility
ity
present inven
in\cn!ion.
tion, methods and apparatuses
appara tuses tor
for locating
indudes the ability to search on local
loca[ disks and moumed
mounted
includes
inforll13 tioll
t"(lmputer
ter system are
arc described which
tion in a compu
system. implemented
implemen ted by 3D informa
servers. The Windows operating syS!em.
30
identificr, locate at leaS!
itcm of
receive
recci ve an information identifier,
least one item
Microsoft Corpora tion.
tion, also employs a Find
Find mechanism tbat
thaI
information
iofonnatioo based upon
upoo the information
illformation identifier by means
uS(; r to locate files stored in the computer system.
allows a user
algorithms each having a separate
of a plurality of heuristic algorithms
Tbe
inpulled search criteria to genera
gen<.: rale
te and
,ne application uses inputted
information
location scheme,
scheme. provide at least
least one
olle candidate infoffilatioll
of possible tifiles
les that
th at satisfy the search
sear<.:h criteria.
display a list
[ist o[
infoOllatioo item.
At times howevcr,
however, Lb
thee list can become long and .l'i item, and display a representation of the information
35
cumbersome, thereby reqtLiring
cumben;.omc.
requiring the user
uscr to sift through the
In accordance with another exemplary embodiment of the
Accordingly, this
list and idcnlify
klcntify useful information.
information, Accordingly.
thi" techinven tion, methods and apparatuses for locating
present invcn!ion.
faiill to sign
significantly
ifica ntly reduce.
reduce the timc
time 11nd
and effort
drort a
nique may fa
niquc
information
are dcscribed
described which input
informa. ion in a computer system arc
iden tify and retrieve useful information.
user expends to identify
an information identifier,
identificr. providing the information identifier to locate information
inforulation in the plurality of locations whicb
which
As another feature for
i\s
for quickly retrieving
retrieviog items of interest,
ilHerest, 40
40
ia, wherein the
comprise the lntcrnet
Internet and local storage med
media.
some computer systems store a list of previously used
information loca
located
matchc-<;the
informatioo identifier
idcnlifier when
ted matches
the information
documents
app licatioos from which they can
cao be easily
documeots or applications
applied to a~ plurality of heuristics.
hetLrisLics, determining
determiniog at least
least one
iovoked. However, this feature req11ires
requires the user
ust r to access
act'Css a
invoked.
candidate item of information
informa tion based upon the
tile plurality of
dil]"ercnt interface eleme
clement
nt to retrieve
retrie,'c the item.
item, and does not
dill"erent
heuristics, and displaying a representation
representa tion of the
tbc candidate
provide [or
tbe use
identify the specific 45
45 hcuristit-s,
for the
use of keywords to identify
of information.
infornlation.
item or
document or program that the user desires.
[n yet another exemplary embodiment of the present
In
Internet, various specialized
Also,
ith the advent of the Internet.
AI50. w
with
lor displaying
dL<;playing informainvemion,
invention, melhods
methods and apparatuses
apparaluses for
at can be loaded into
find routines
routine" have
havc been developed lb
that
ioto a
tion in
in a computer system is described which
which includes
iocludes
computer's memory and launched in order to facilitate user
inpu tti.ng an information identifier, providing !he
the informa50 inputting
requests for particular in
formation on servers located 50
information
tion
tioo identifier
identilier to a plurality
plura[ity of heuristics in
io accordance witb
with
throughout the world. Addit
Additionally,
througoolLl
iooally, web browser
browst r applicaa global
g!obal heuristic, wherein
whe rein each informatio
informationn identifier is
is
ustr to at
access
'Cess worldwide
worldw idc websites
websitcs and interact
tions enable a user
with search engines
cngines provided by the
tbe ,",,"Cbsitc.
websi te.
matched to informa
info rma tion based upon the plurality
plurality of
heuristics, receiving at least one
ooe candidllte
candidate item of infoOllainformaLike
Uke the Find File utility
uti lity discussed
discus.~d above,
above. linding
Hnding inforinfoOlJation provided
pro\'ided to !be
the heuristics in
ss tion based upon the information
mation on the Internet can prove frustrating because sea
rch S5
search
accordance
wiih the global oc
heuuristie.
ristic, and displaying a:I repa~'Cordance with
criteria arc often too broad. For example,
enml)le. wbeo
when a keyword
resentation
resen tation of the candidate items
itcms of
o( information.
infonnation.
is en
tered,
thousands of different web pages
co01aining these
ente
red, thousandsnF
pagcsconlaining
displayed in a Jist
list for a user 10
to choose from
from..
keywords can be
bedisplayed
BRIEF
DRAWINGS
BRIEF DESCRIPTION
DESCRII"1l 0N OF THE
TI IE DRAW
INGS
Accordingly,
are needed to more
Accordingly. adclitional
additional search
starch criteria afe
the presen
Other objects and advantages of Ihe
etTectivcly
prescntt invention will
c!fectively filter information available,
available. for example, on the 60
However, there is lillie
little technology curCillworld wide web. liowever,
become more appareot
apparen t from the following detailed descripren
tly av
available
the user
tion of the invention
invcntion when read in conjunction
conj unction wi
with
th the
rently
ailable which allows the computer to help Ihe
automa tically prodetermine such adclitional
additional criteria or LO
to automatically
accompanying drawings wherein like elements are
arc desigacWitiona[ criteria.
vide additional
cri teria, so that search results have a higher
nated by like
Ilke numerals and wherein:
th at arc of interest to the
th<.: Ilscr.
user.
pcrceotage
percentage of items that
FlG.
hardware
ts of a net65
rdware componen
components
oetFIG. 1I illustrates Lbe
the ha
Additionally, web-browser applications arc not designed
worked computer system of a type in whicb
which exemplary
to search
scarch for non
non-web-b
ased documents
dcx;uments or applications
app licatioos
embodin1cnts of the present
-web-based
present invention can be implemented;
implemcnted;
embodimcnts
UNIVERSAL
UNIVERSAL INTERFACE
INTEltFACE FOR
"O l~ RETRiEVAL
nETRIEVAL
01~
OF INFORMATION
I NI;"O ltMATION IN
IN A
A COMPUTER
COI\.'IJ>UTElt
SYSTEM
SYSTEM
"
"
A603
Case: 15-1171
Document: 40
Page: 378
Filed: 03/06/2015
US 6,847,959 Bl
B1
J71G.
FIG. 2 iUusLiates
illustrates the software architecture in accordance
the present
prescot invention;
invenlion;
embodi ments of tre
with exemplary embodiments
J71G.
JA illustrates
ilJuslralcs a partial
pania! view
vicw of a desktop illcludiog
inc luding
FIG. 3A.
a GO-TO
GOTO menu option,
opl ion, in accordance
accord~nce with an
3n exemplary
lhe presen
prcscn!t invention;
embodiment of the
flG.
FIG. 3B illustrates a partial
panial view
vicw of a desktop including
menu ooption
ption containing ua text input window, in
a GO-TO menu
embodimentt of the
lhe present
prescnt
accordance with an exemplary embodimen
i["]Verniao;
invemion;
Fl
FIG.
G. 4 illustrates
iIIuSlratcs an active window
windO'Nlhal
that is displayed when
thee GO-TO menu option
th
op tion described wi
with
lh respecllo
respect to FIG. 3 is
is
launched; and
llow diagram describing
FlG.
FIG. 5 illustrates a flow
d<JSCribing the
Ihe GO-TO
application in accordance with an exemplary
c~<:mplary embodiment of
the prescot
present invention.
provided to a speech processing

procc....~ing program 16. This input is
i:-;
received by an
all information
infonnation retrieval manager 18.
1.8 . In the case
of spoken words, the speech
sp<:ech processing program 16
16 first
fi rst
presented to the
converts the speech to text, which is then presentcd
information retrieva
retrievall manager 18.
He,
In
[n response, the information Mricval
retrieval manager
managcr 18
Ilf dispatches the input
inpulto
to a8 plurality
plurality ofplug-in
of plug-in modules
modu[cs 22c22N.
22 ,-22,...
Each
bas an associated
heuristic
Ea<.:h plug-in
plug-in module has
associa ted heu
ristic which it
loca te infonnation
information that
employs to locale
that corresponds to the user
use r
instan(.'C. olle
sea rch the names
input. For instance,
one module 22 1, may search
of files
tiles stored on the local storage media 12
12 and the LAN
storage volumes 8,
If, to tlnd
find those which match Ll1e
the u.',er
user input.
A second module 22
22:2 muy
may index
mdex and search tbe
the contents ot
of'
files on the local and/or network
network storage volumes. A
A Lllird
third
module 223 can maintain
maintain a list of the files,
liles, applications and
tes which
web si
sites
whic h were most recently
rece ntly accessed, and search this
~mploy a search
list for a match. Yet
Yet another module might employ
engine lo
to locate Internet web pages which
wh ich match the user
input.
Each plug-in module
module 221t -22N
- 22,v allempts
attempts to locate
loca te information
ma
tion in a relevant area of search, using its associated
heuristic. -[be
The results obtained by the modules are
arc seat
sent back
to the retrieval manager
managtr 18.
18. The
'Ibe information retrieval mandetermine
ager
age r may employ
em ploy additional heuristics to dete
nnine which
results are
a_re most relevant,
relevan t, and present one or more cboices
choices to
the user
use r on the display
dL<,play device 4.
wi th an embodiment of the
tbc prese
present
nt
In accordance with
unive rsal interface can be implemented so
SO as
invention, the universal
tbc computer's
to operate constantly and in tandem witb
with the
operatingg system. The
operatin
'!be function
functionality
alit y of
o[ the informa
illformaliOll
tion
retrieval
interrac..: can be a<.'Cessed
different ways.
retrieval interface
accessed in several different
F[G.
FIG. 3A illustrates a desktop display
disp lay 20 that includes a
graphical representation
''G0-1'0")
representa tion of a button
bUlIon 19
19 (entitled "GO-TO")
within
wi thill a menu bar 17. Also,
AISO,locatcd
located within the menu bar are
arc:
various conventional
conve ntio nal menu items such as File,
File, Edit, View,
View.
When the bullon
bu tto n 19
19 located in the menu
men u
Label, and Special. When
selec ted by the user,
user, the information
infonnation retrieval
17 is selected
bar 17
tion is accessed and tbe
function of the present inven
invention
the dialog
dia log
box 15
15 is
is displayed. It should be noted that while the access
aCl1!SS
tion retrieval feature is depicted as being by
to the informa
information
or a button located in
the menu bar in FIG. 3, there are
way of
inlhe
many other ways in which tbe
the interface
interfa<.'C can be accessed. For
maoy
example, the interface
imerface (.'Ould
represcmed by an icon
could be represented
graphica
lly loca
located
lau nched
graphically
ted in a desktop display, and be launched
tillle the user and clicks on the icon represemation
represcmation via
each time
tbc mo
mouse
the
use 3.
In another a!ternativt
embodimentt illustrated in FIG. 3B,
In
alternative embodimen
311,
the menu bar 17
17 might contain a text input
inp ut window itself,
tbe
and the information reuieval
retrieval function
is accessed when the
function is
in this window. More
Mo re
begins
user beg.
ins to type characters io
generally, tbe
the information
infonnation retrieval
rt:lrieval system ca
cann operate in
conjunction with any type of interface
in terface via which a user
cllter
ilem of information,
information, by monimight en
ter a request for an item
toring dialog boxes and other such
taring
~uch input mechanisms,
mechanisms.
includi
ng those in individual applications,
including
applications. For example. if a
in a browser
browse r window, the infonnation
user enters text io
information
te~1 to the modules to
retrieval system can provide this text
locate relevant items of informa
information.
tion.
When the GO-TO bu
buuon
tton 19
19 (illustrated in FIG. 3A) is
sclecled
selected by
hy a user, the dialog box, represented by active
\vindow
ted in JT!G.
the desktop
window 25 illustra
illustrated
FIG. 4,
4. is displayed on Ihe
of display
disp lay device 4. The
1be active
act ive window 25 provides a text
infomlation descriptor
descriplor wbich
which
box 27 for the user to enter an information
comprises
leuers, 11a word.
com prises a leuer,
letter. a series of lellers,
word, a plurality of
words,
to be used by the retrieva
words. a phrase or sentences
scntences 10
retrievall
manager 18,
IS, in locating i.nformation.
information. FIG. 5 illustrates the
55
10
10
tS
t5
THE
DETAILED DESCIUPTION
DESCRnrnON OF 111E
INVENll0N
INVENTION
111c present invention
The
invenlion will now
now be described with reference 10
encc
to the accompanying drawings describing a universal
in terface in which user inputs arc
are received and provided to
interface
a plurality of separate heuriSlic
heuristic algorithms to locale
locate at least
information. It will he
be appreciated that the
one item of infonnation,
invention is not limited to onl)'
invention
only the embodiments set forth
Rather. the particular
partiCIIlar heuristic algowithin this disclosure. Rather,
rithm s described herein are
arc meant to be exemplary of
rithms
o( many
differemr heuristics that
th at can Ix:
be employed, for
ror tbc
the purpose of
diJJcren
retrieving information
in formation through a ssimplilied
implified user
w;er interface.
imerfal'!:.
Referring to FIG.
FIG, l1,, a general computer system 2, in
Referring
which the present
mplemented, is illusprese nt invention can be
Ix: .iimplemented.
iIIus
lay device 4 and
trated. Computer system 2 comprises
<.'Om prises a disp
display
various input devices
devi<.'Cs such as a keyboard 5, microphone 7
and
aoo mouse
mo use 3 in operable connection
<.'On nectioD with a memory 6,
6. data
processor 9 aod
and local storage media 1
12
2 which can include
one or more magnetic and/or optical
op tical disk drives, for
example. Additionally,
<.'On Additiona lly, the computer system 2 can be connected via
\' ia an Input/Output device 10
10 (e.g., a modem or cable
14. The
connection) to a Local Area Network (LAN)
( LAN) server 14.
LAN server 14
14 can also be connected to a LAN storage
slorage
volume 8 which stores
use on the network served by
slores files
Illes for
for usc
Ll1e
the LAN.
LAN . The LAN server 14
14 can also include a Wide Area
Network (WAN) router
toUlCr 13 and an Internet
Imernet router 11.
II. The
'Ibe
and the lmernct
[nternet router
rout~r can be connected to
WAN router <tnd
o th er servers (not shown) which
whieh access
aCl'CSS additional storage
other
media
application
media containin
containingg files,
ftlcs, app
lication prog
programs,
rams, web pages,
etc, While other clements and components
com ponents are
ere.
arc normally
compu ter system 2, only Ihl:SC
clements are
arc
attached to the computer
these clements
allachcd
invention.
shown so as not to obscure the invention.
universa l
ln
prese nt inventicn
invention provides a universal
In general, the present
reLiieve an item of
interface that enables the user to readily retrieve
desired information
tbe va.rious
dcsired
information located on any of the
various storage
media
user's computer system, with
me
dia that arc accessible to the uscr's(.'Omputersystem,
could
minimal eeOort.
lfort. The desired information
infomntion cou
ld be an applitile
ca tion that is stored on the local storage media U,
cation
1.2, a file
lume 8, or a web page avai
lab le
stored on tbc
SlOred
the LAN
LAN slorage
storage vo
volume
available
througb the Jnternet
through
Internet router 11.
I I. Rather
Rath<f than require a separate
sea
rch mechanism to locale
search
locate each of
o r these different types of
tates the user's
information,
information, the present invention
invention facili
facilitates
use r's abilab ility to easily
easHy retrieve
retricve the inlormation
information by means of a single
universall interface which is
L<, capable of accessing
aC<'1!ssing IiIlles
les on all
universa
or
these various
variolls storage resources.
of lhese
The
111e components
compone nts which provide
provide this functionality
fUllCtionality are
arc
illustrated in the architectural
architec1ural block diagram of FIG.
R G. 2.
2, ln
In
operation. tbe
operation,
the user provides input
input which describes the inferinformarion
mation in whicb
which the user is interested. Tbis
This input could be
cntered in a dialog box 15
15 or :-;poken
spoken words
text data
dat a that is enlered
20
20
2"
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Case: 15-1171
Document: 40
Page: 379
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oper:uion'llhal
Ol)l!ralions lhnt arc performed in response
re.\poose to the user
\lser input.
input
10, the.:
In ::.h:p
Sh':p 3 10.
the user inputs an information
infomu.lion descriptor,
descriptor. eith.:r
either
by voice input
iOI)UIIO
to the
tbe microphone 7 or by manual input 1to
0 lhe
the
keyboard
kcyboml5S,......
which
hich is displayed in the le:.;1
text box
OO;{ 27. In
10 step
Mel"
320, once
32U.
aD: the information
infomlalion descriptor
descripto r is provided.
provided, tbe
the inforinfor
mation retrieval manager 18 provi<ks
provides the information
m.lion
descriptor loone
to one OT
or more of tbe
. . 22N,
the plug-in
plug.in modules 22
21 11..
22.\~
in accordance
witb a global heuristic,
a(.',.:ortbncc with
heuristic. described in detail
below.
Ixlow.
In
In step
Mep 330,
330. the selected
SC1C(.1Cd plug-in
plug-in modules 22 1\ ...
22....
. 22N
rcct:ivc the information descriptor and (k:u;rmim:
roccive
determine whether
whethe r
informa tion matches the criteria ooff respective locator
[ocalor
any information
hcurU.t iC15 aSS<Jcia
ted with
22N.
hcunSht-S
aSSOCW lcd
wilh the plug-m
plug-.n modules 22
Zl1\ ...
22 N
n,c
'!lIe heuristic
hcuristk' of cach
each pl
plug.in
ug-in module is dilTcrcnl.
different. For
example
us described previously, one heuristic can operate
example,, as
to mu
malch
tch the user descriptor
d(;$criptor with the
tile names of information
infomlation
~Wrage media in the computer, on
011
located within various storage
caon identify
servers
~rve rs and
alld tbe
the lnttlrnet.
Internet. Another
Anothe r heuristic ca
ma tches between the information dcscriptor
de.o;criptor and
Dlld tbc
the content
~'Qntenl
of files located on 11)0.:
the computer,
compu ter, on servers and thl:
the lotemet.
Inteme\.
Additiomtlly,
Additionally, heuristic
beuristic algorithms
algori thms can also be provided
that
tore and review the history
thD t sstore
h~~tory of information that bas
has been
r(cenlly accessed
lCCl.:ss..:d to determine
determ ine wbich
match the
which might match
recently
descriptor.
cmploy a look-up-table
look-up-uble to
descriptor. Other heuristics can employ
review
revicw mapping!>
mapl)ings on a private network accessed either
rcm(llely. Another heuristic module
modu le might review
locally or (emOlely.
locations
the favorite loca
tions ac<.:csscd
lK."CCsscd by a browser
browse r application
sy~tcm
m 2. The
Tbe URI.s
URI.... stored
f>lored bv
by the
located uo
romputer sysl~
on compuh:r
brows.::r application
applica tion can bc
browser
be searched
liearc~d to
10 determine if
if they
match
m~tch the input of the U$Cr.
user. Each
8ach plug-in module 22
22,1
.. _22,..
22",
might identify one item of information,
information. a&plurality
plurality of pospaoitem~ of information,
ssible
ible iterru;
infonnation. or
Of" no information lbat
thai matches
tn the module's heuristic
lk:uriSlic approach.
the u::.cr
uscr input,
input. according to
In ::.tcp
Mep 3.W.
340. once a plug-in module 22
12 1, .. 22,..
22", has
determined
determincd thai
that at least one item of information matches
matctK:..~ its
heuristic, the information retrieval manager is nOlilied
notified and
the information that
that matches the
tile user input,
inpul. according
sent the.
beuristic.ln
rdance with
to that module's assoeinted
associated heuristic.
In acco
al'CordancCl
wilh one
embodiment
embod iment of the invention,
inVention. a "first
" ti rst to respond"
respond'" approach
approoch
can be
o select an item
be
call
bo.: employed L
to
i!Cm of information to he
displayed
dL~]llaycd W
to the user.
uscr. In
In Iht..;
th is embodiment,
embodiment. the first
lirst plug-in
plugin
module 10
tion retrieval manager 18 that
to notify
Ilot ify th~.:
the informa
information
infurma tion has been identified is chosen, and its
matching inform:uion
matching information
informa tion is displayed
dil5pJayed )Jthe
to Lbe user or,
or. if desired,
automa
tically launched.
au
tomatically
lounchcd. Alternatively, the informatio
informationn
retrieval
retrie"al manager IS
18 could rank the outputs from lbe
tbe plug-in
modules
modul~ 22 11 . . . 22,v
22.~. in the order tbeir
their ootjfications
notillc31ions arc
received. This
Thi!> would allow for more than
tban one choice to be
displayed for an user. Due 10
to differences
differencc.<; in communication
10 give greater priority
priority 10
to
speeds. this approach
appro:.ch will tend to
locally stored
Slored Iiles
filcs than those which are
arc located at
al more
remOle sites,
sites. such ns
as 1!Jo,se
those on an wide-area network
nelwork or the
remote
Inh;rnet.
Internet.
In oother
ther embodiments
tmbtxliments of the
thi; invention, different global
heuristiC5 Clln
heuristit.'S
CIIn be employed
t1llployed by Ll:e
tte information
information retrieval
manager to determine
determine: the results that are to be:
be provided
pro"idcd to
ClIO be
be: classified into two
the user. 'lbcse
'Iltc,<;c global heuristics cnn
generall categories. In one category,
genera
l'3tegory, the user input
inpul is selec!;Clectivtly provided
I)f(widcd 10
to the plug-in modules, and only the results
tively
di:.1>layed to the IiJiCr.
user. For instance,
instance:,
from those modules are displayed
the moduh:s
modules can be given a priority
priori t)' ranking. When user
all of tbe
rel'C ived. it is first
tirst provided to the
the. module wi
with
tb tht
the
input is received,
highest
highc.~t ranking.
ranking. If that module responds
rtspunds within a certain
cenain
ime with one or more matches,
matches. those matches arc
Dre
period of 1time
displayed. llowcver,
tf tbe
Ilowever. If
the module
modu le responds that it cannot
lind n1 match.
find
match, or
Of" does not respond within the alloued
alloned period
time. the user input is provided to the next-highest
ne,.;t-highest
ooff time,
nnking
n,e procedure continues
c~nt inucs in this
thi... manner,
manner.
rnnking module. The
until
match, wbjch
unlilla module presents
jH"o!SCnts a malch,
which is
t.. then displayed
displ3yed to
10
the:
us.:r. As :10
an alternative
.1terrgli~ 1
to
0 sequentially accessing
lIl'ttSSing indithe user.
vidual modules,
modules. two
twO or more modules
rnnduk:s can be
be: grouped at
31 a
3
vidunl
given priority level,
le'el. nod
ll.nd be
1)( accessed
acccs.<;cd in
io parallel when their
the ir
priority level
It\'eI is
~<; selected.
!;Cleclcd.
In :ta further
fUrl hu enhancement
enhanl'Cmenl of the prioritized
prioriti/d approach,
approath. the
rank ing of
o f the module.s
modulc,..; can be context
conlext sensitive.
sensiti'e. For
priority
priorit y ranking
inslanc..:, if the
insullCI.',
th..: uI'Cr
user nct.'C$l>C~
a..;cess-.:s lbe
lhe: information
informa tion retrieval
n.:lricval sys")'Stelll
th rough an icon on the desktop or a system menu bar,
tem through
the plug-in
pl ug-in modules which perform searches on local
loclil storage
media can be
hc given higher priority than those
tbose which search
scarch
remote
s it\i.s.. Ilowever,
llowever. if the
thc user
uscr enters text via a window
n:m<lle sites
likely that tbe
in a browser application, ilit is more likdy
the user
desires
d e.'1 irc.~ to view
viow a web
w;;:b page.
page, and
lind therefore
there fore the plug-in
plug.in
mooules who:-::c
whose heuristics
are oriented
orie nted lowards
Inte rnet sites
module."
heuristiQ; arc
towards Internet
are given higher priority.
nrc
prio rity.
In
In the second
!iCcond general category of global heurist
heuristics,
ics, lbc
the
input can be provided 10
to most or all of Ihe
the plug-in
user
use r input
mooultS in p.t~lIe
modules
parallel,l . and
Dnd tht
the results that art
are returned
re turned from
then 1>rocesscd
procc..'lSCd in accordance
&C\.'Ord31X'C with a given
each one arc th<;n
heuristic.
heuriNic. For example,
cumple. as described pre,iously.
pre\'iousl y. one heuris~u ris
to sclcclthc
select the lirst
IIrsI result lbal
that is returned.
re turned. T
In
o
tic might function 10
another
ano the r hcuristic.u
heuristic. a frequency
frcqucocy of occurrence
oc(:urrence approach can be
informalion whicb
which is identiidenli
employed, wherein an item of inforn1atioo
fied by a.1. plurality of modules
module::. is .sek:cted
selected in favor of one
Olle
i:; identified by only
onl)' one module. In yet
yel another
anolher
which is
cmhodimcm, Ihe
resulL~ [rom
from lbe
the various modules can be
embodiment,
the result::.
wcight .'d in accordance
an'(lrdance with
wi lh various criteria.
crileria, such as thdr
!ltdr
weighted
relalionshill
conte,.;) in which lhe
rclation<~hip to the context
tbe user input WIS
was
received.
recci~d .
The gglobal
lobnl heuristic which is employed by the informainform~
tion rc
rClri.::v.tl
trievnl mannger
manager 18
11'1 migh
miglllt al">o
also determine the amount
of information to Ix:
be pn:sent..:d
pre.so::nted to the user. Ideally.
Ideally, the
conlideol'C
various
vario us plug-in
plug. in modules, through Lhc
the usc
use of confidence
faCIOrs
factors calculated
ca lculat~.:d for each item
item of information, wou
would
ld
identify
kJenti!"y a single item of
or information
infonlllllion tbat
that best fits
jits the user's
input,
and only tha
item is presented
case,
input,and
thaIt iltm
prescnteu to the user. In Ibis
thilicase.
the item
item can be
hc automutica
ftutolllatica lly
l! y opened or launched as
ali well.
Various charactcristit.'S
utHi/.td in determining
detcmlining tbe
the
characteristics c:m
can be utiliZt:d
conllck:nce factors. For
ror example,
eumple, if a user input multiple
confidence
words
wo
rds as nn
an information
infomJation descriptor. and an exact
CXll.ct match to
input was found by a~ plug-in
the input
plugin module.
module, tbe
the confidence
oonlidence
level
being 100
b 'el could be indicated
indicatcd as
~... bein,
100 percent.
IlCtl'C nl. On
00 the other
hand. if only half
hllif of 1J1c
the wor<k.
words were found in an item ooff
band,
information,
infOf"lIlltion, the cooJidence
confidence level
IC\'el would be less,
less. thereby
theu:by
indicating
indica ting tbat
Ihat this might not be lbe
tht item of information
inform:uion
sought.
.!\OUght.
In practice, however,
howe\'Cr. it is not
nol likely
likel y that only one candidate will provide a good
good match,
match. particularly if tbc
the. user
usoer inpuls
inputs
cakulation of a confidence
conlidc:m:i:
a broad term. J\i:con\ingly.
Accordingly, the calculation
tach item of information allows the
tbe
factor associated with each
inform3tion retrieval
relrieval manager to select aI relatively limited
information
user, e.g.
top live candidates
number of choices
numlx:r
chokes to the user.
t.g. the lOp
ca ndidates
nccording ton
ao.'COfding
to II predetermined minimum confidence
oonfick:nl'l: leveL
level. If
Ihc..o;e
these choice.<;
chokes do not include
inclUde lbe
tbe parlkulaf
particular item of intereSl,
interest,
user can further reline the input infom13tion.
information.
the u~r
Further in this regard,
re,hrd. lbe
the information
inform ution retrieval
rctrieval system
results
lts unci
und display
displ ay thcm
them to the user in real tim~:
time
can obtain resu
as the input
iupU! is being cntored.
entered. In Lhis
this embodiment,
embodiment. each
:;s
10
"
IS
tS
20
20
:!.
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A605
Case: 15-1171
Document: 40
Page: 380
Filed: 03/06/2015
US 6,847,959 Bl
B1
7
converted speech phoneme is provided to

[0 the
keystroke or cQnvctlcd
app
ropria te plug-in modules as it is recciv.::d
received by the manager
man ager
appropriate
18.
Forr instance, if the user
lIscrdcsi
desires
rcs 10
to look
loo k at prior
priorla"
tax retu.rn
return
18. Fo
information, each of the leuers
[ellers T',
"T', "A" and "X" are
arc
provided to the modu
modul<!s
les as they
Ih!.:y an: typed. As soon as the
letter
leuer 'T"
"T' is entered,
cnlCrcd. sets of
o[ matching
mall.:hing items of informalion
information
are rClUmcd
returned by the
Ihe modules,
moduks. and the top five candidates are
arc
displayed.
displayed. Entry
EOlry of the teller
lener ''A"
"A~ causes !be
the list
list (0
to Ix:
be
0 the candidates
candida te s which match the
lhe
updated according 1to
rs "TA".
~TA". After the letter "X"
X~ is
is typed, the
sequence of leUe
lellers
displayed
dL~Jllaycd list
!ist might contain the
lhe five most recen
rca::n t lax
tax retlLrns
returns
that were filed
HIed by the
lhe user. IIf[the
Ihe desi
desired
red retu
relUm
rn is not in the
List, the user can
ue by en
tering
cao contin
continue
ente
ri ng the year of !be
Ihe desired
list,
rClUrn,
other identifying infonnation,
infonmtion, until such time as
return, or ot!u.:r
!be
the item of interest is displayed.
It will be apprecia
appreciated
ted thntthis
that this ernbodimeDl,
embodiment, in which the
displayed items are dynam
d ynamically
ically updated in realtime,
real time, is best
suited for the retrieval Of
infom1ation, where
of locally Stored
stored infonnation,
communication rates
ra tes arc relatively fast. For access io
to
remotcly sstored
tored informa
tion, it rna)
be more appropria
te to
remotely
infonnation,
ma) b.:
appropriate
wait untilthc
until the uscr
user presses a space key oorr an '" Enter"
Enter"' key
the
before supplying the input to the modules 22, so that !be
retrievall is carried out
retrieva
OU t on the basis
ba~is of whole words or
(:omplete
complete phrases.
Accordiogly,
the presen
presentt invention
invcntio n provides swift access
acccss
Accord
ingly, tbe
1to
0 information
informa tion or a list
li'it of informallon
information that is rela
related
ted to
various descriptors
descripl0rs input by a user. Using the heuristic
analysis
analy~is combined with user input,
inpu t, the present invention
itlVcmion is
able to present
prese nt to a user a manageable amount of information
infornlat ion
'Inus, the advantages of a search
searc h
candida tes for selection. Thus,
engine
e ngine can be exploited,
exp lo ited. and information
information candidates can be
retrieved in a reasonable amount
mnount of time.
providing
providi
ng at least one
ORe candida
ca ndi date
te item of infom1ation
infommtion (rom
from
said modules; and
displaying
representa
d~splaying a represen
tation
tion of said caRdidate
cand idate item of
information.
information .
'fbe method of claim 11 wherein
whereiR said information
infonnation
2 . Tbe
ideniiller
identifier is inpu
inputt via an application
application program having a text
input window.
33.. The
'Ille method of claim
clain1 11 wherein said iinfonnation
nformation
identilier
ident
ifier is input
inpu.t in by means of a dialog
d ialog box
bo x displayed on
a user interface.
information
4. The
'fbe method of claim 11 wherein said infonnation
identifier
idcntifier is voca
vocally
lly entered by a user.
1nc method of claim 1I wherein said information
5. The
ideniillcr is one of a letter,
identifier
leuer, a word,
word. or a phrase.
6. The method of claim
cl;tim 1I wherein
whe rein said information
tially provided to said modules until one
identifier is sequen
sequentially
of said modu
modules
les provides a ca
candidate
nd idat e item of info
infonnation.
m1ation.
7. The
'1111:: me
mcthod
thod of claim
clainl 6 wherein said modules are
arc ranked
in an order
urder of priority,
priority, and said informat
information
ion iden
identifier
tifi er is
sequentially provided to said modules in accordance with
said ra
llki ng.
ranking.
8. The
Ine method of claim 7 further
funh .. r including
including the SIeps
steps of
determining
con text
lor the input of the ioiormation
deter mining aII cont
ext for
infomlation
ident
ifier, and varyi
ng said ranking in accordance with the
identifier,
varying
determined
deter min ed context.
con text.
o f claim LI wherein one of
o f said heuristics
9. The
1bc method of
locates items of informa
infonna tion
ti on on
oo the basis of oames
names of files.
10.
10. The
'Ibe o1ethocl
method of claim 9\I wherein ano
anoth
ther
er ooff said
heuristics locates items of information on the basis of
con tents of files.
contents
11.
\I wherein
wberein another
anot her of said
I I. The
'Ine method of claim 9
heuristics locates items of information
information on the basis
hasis of most
accessed items.
recen
tly aeco.:sscd
recently
items.
12 . The
'Ibe method of claim 1I w
herein one of said heuristics
12.
wherein
loca
tes items of inrormatioll
locates
iotormation that are
arc stored
s tored locally
loc&lly on the
computer
com puter system.
l13.
3. The
'Ine method of cclaim
laim 12
12 wherein
whe rein said one
ooc heuristic
also locates items of information
infornlat ion tbat
that are stored on a
local-area network to which the compu ter system is connected.
14.
12 wherein another of said
14 . 1l1e
1be method of claim 12
heuristics locates items of information that are stored on
remote computer systems.
15.
111e method of claim 14
l4 wherein said other heuristic
15. 'The
locates
locatc.~ Internet
Inh!rn<.:1 web pages.
16.
16. Tbe
'Ille method of claim 14 wherein said other heuristic
beuristic
locates items of information that
tha t are
arc stored on
oo a wide-area
network.
17.
17. The
'ille method of claim 1I wherein
w herein said information
infonnatiOIl
identifier is provided in parallel to said modules, and further
including the step of selecting candidate items of informainfonnation provided by said modules for display in accordance
wi
tb a global b..:uristic.
with
heuristic.
18. The
111e method of claiml
18.
claim I wherein each
eacb candida
candid ate
te item of
information bas
has an associated conlldence
confidence level.
leveL
19.
19. A method for locating info
information
rmation f:rom
from a plurality of
locations in a computer system, com
comprising
prising the
tbe steps
Sleps of:
inpuuing an information
infonnation identifier;
inpulling
providing said information
inl'orma tion iden
tifier to a plurality
plura lity of
idel11ifier
heuristics
heuristies to locate information i.n
in a plu.ra
plurality
lily of locations which incl
include
the Internet and local storage
ude lbe
tncdia;
media;
determining
detennining at least one candidate item of
o f information
infonnation
based upon the plurali
ty of heuristics; and
plu rality
A particular advantage
advan tage to the use of plug-in modules
modulc.'i to
implement th..:
L'> the fact thai
the various retrieval heuristics is
thJt it
readily
rea
dily lends itself to expansion
expam;ion a.nd
and adaptability to the
user
's environment. For
user's
For instance, tbe
the computer's operating
system may contain a few plug-in modules tha
Syslem
thatt operate
according to tbe
the most popular heuristics. Other plug-in
modules may be developed by various entities to operate
information which they supply. Thus,
'fbus,
according to types of information
if a search engine is designed for usc
use on the Interne
Internett to
l{) locate
tocate
particular types of web pages, a plug-in module can
call also be
designed to access that search eng
engine
ine and return results
resu lts to
the information retrieval manager.
mallager. As otber
other techniques are
developed for locating
locating information,
in ronnation, !bey
they can also be embodied in appropriate plug-in
pJug~in modules, to thereby enhance the
us.:r's
user's ability
abi.lity to obtain
obtDin rel..:va
relevant
nt items
iteOls of in
inte
terest.
rest.
It wi
willll be appreciated by those of ordinary sls kill
d ll in the an
art
!bat
that the present invention can be
IX! embodied in otber
other specific
specilk
forms
(rom th
for ms withou
withoutt departing from
thee spirit or essential
esse nti al characteristics
tcristics tbcrcof.
thereof. TI1e
'Inc presen
presenlly
tly disclosed
disc losed embocUmcnts
embodiments are
therefore considered in all respects
therdore
rcspcelS tO
to be illustrative and not
uot
restrictive. Tbe
restrictive.
'Ille scope of the invention is indica
indicated
ted by the
appended claims rather than
th an ihe
the foregoing description, and
aU
all changes tha
thatt come within tbe
the meaning and range of
equivalence
equivalen(;e thereof are in
intended
tended to be embraced therein.
clai med is:
What is claimed
L.
1. 1\
J\ method
method for locating
locating informa
information
tion in a computer
system,
comprising
prising tbe
the steps
s teps of:
sySlem, com
inpul1 illg an information
inputting
identifier;
providing said information identifier
identifier to a plurality of
pJug~in
plug-io modu
modules
les eacb
each using a different
dilferem heuristic
beuristic to
infornlationn which matcbes
matches said identifier;
locate informatio
55
"to
15
tS
20
z-,
25
30
JO
35
.l'i
40
40
45
45
so
50
55
55
60
60
65
A606
Case: 15-1171
Document: 40
Page: 381
Filed: 03/06/2015
US 6,847,959 Bl
B1
10
displaying a represen
tation o(
representation
of said candidate
candidate:: item of
information.
informal ion.
19, wherein the information
20. The method of claim L9,
identifier is applied separatel)'
separately to
10 each beuristic.
heuristic.
21.
19 wherein the plurality of
21. The
'Ibc method of claim l9
arc ranked in an order
heuristics are
ordn of priority and wherein the
informalion
infonnalion identifier
idcnlilicr is sequentially provided
provi<lcd in accoroanC(:
accordance
wilh Lbe
the ranking.
wilb
22. The method of claim 19
pl urality
19 wherein one
onc of the plurality
of heuristics [ocall.:s
locates items of information on the
tbe basis or
of
names of files.
mcs.
23. The method of claim 22 wherein anolber
another of Lbc
the
heuristics locates
locales items of information on the basis of
contents of tiles.
Iiles.
24. A
computer readable medium for localing
Acompulcr
from a plurality of locations containing
l'Onlainiog program instructions
to:
1
0:
receive an information ideutiiler;
identifier;
provide said information identifier
idemificr to a plurality of hcuheuristics
rislks 10
10 locate informa
informatioo
tiorl in the plurality
plunlity of locations
which include the Internet
Intemet and local
local storage media;
determine at least
least one candidate item
item of information
information
based upon the plurality of heuristics; and
tation of said candidate item o[
display a represen
representation
of inforinformation.
.ompu ler readable medium of cl<rim
!:I3im 24, wherein
wherein
25. The (computer
the illformatiOIl
information identifier
idelltifier is applied separately to each
heuristic.
computer readable medium of claim 24 wherein
26. The ("amputer
lhe
are ranked in an order of priority
the plurality of heuristics arc
and wherein Lbe
the information
infoml3tion identifier is sequentially provided in accordance with the ranking.
ulik ing.
compuler readable medium
27. "The
The computer
medi11m of claim 24 wherein
one of Ihe
the plurality of heuristics
heuristic.<; locates items
itemsof
of information
iflformation
tbe basis of names
les.
on the
flames of fifiles.
TI1e computer readable medium
medium of claim
claim 24 wherein
28. The
another of the
tbe heuristics locates items
items of information on
Oil Lbe
the
basis of contents of frles.
files.
29. An apparatus
appa ratus that locates information
information from
froill a plurality
of locations within a computer
t"Omputer system,
syslCm, comprising:
("Omprising:
3n information
infornJaiion identifier:
idemifier;
means
means for inpuuing
inpulling an
means for providing said information
inform.llion identifier
idenlifier to a plurality of heuristics to 1locale
(X:ate information
informatioll in the plurality
of locations which comprise the Internet and local
storage
slOrage media;
means for de
delermining
termining at
at least one candidate item of
information based upon Lbe
the plurality
plural ity of heuristics; and
means for
o( said candidate
for displaying a representation of
item of information.
30. The apparatus of claim 29,
29. wherein the information
identifier is applied separa.tcly
separately to
10 each heuristic.
hcuristic.
31. 11]e
'llie apparatus
JPllaralUs of clainl
claim 29 whcrcin
wherein the
tbc plurality of
heuristics arc ranked
raokcd in
ill an order of priority and wherein the
accordance
is sequentially
sequcntially provided in
i1l3ccordance
identiHer is
with the ranking.
32. The
wherein one of the plurality
100 apparatus of claim 29 whaein
of heuristics locates items of information
informJtion on the basis of
oames
names of files.
33. The appara
apparatus
tus of claim
cla im 29 wherein anot
another
her of the
Ihc
heuristics locales
locates items of information on the basis of
contcots
conte nts of !iJcs.
fi les.
34. A me
thod for displaying informatioo
method
information in a computer
computcr
system,
system. comprising
(umprising the steps of:
inpuuing an information identiiler;

inputting
identificr;
selectively providing the
Ihe information identifier to a pluhcurb;tics ill
in accordance with a global
rality of heuristics
heuristic, wherein the information identifier is
is matched
to information based upon the plurality of heuristics;
rct"Civing at least one candidate item of information based
rc-eciving
upon the information provided to the heuristics
heuristics in
accordance with the global heuristic; and
displaying a representation of the candidate items of
displayillg
information.
claim
im 34 wherein the global heuristic
35. The method of cla
rlctcrn1ines
order in which rhe.
'lr.r .... rmin~_" ~n
.n ordcr
rh .... informn
informa rinn
rion idcnrilicr
i,II'nli'ier is
i"
provided to the heuristics.
36. The method of claim 35 wherein the order is a ranking
of the plurality of heuristics according to a context in which
the information was input.
information is
is
337.
7. 111e
The method of claim 34 wherein the infomlation
wbich comprise at least
located over a plurality of locations which
two of the following:
following: local storage media.
media, a LAN storage
volume, a wide area oetwork
Ilctwork and an Internet network.
netwQrk.
38. An apparatus
apparallls for displaying information in a computer
system, comprising:
means for
identifie r;
ror inputting
inpulling an information identifier;
means for selectively providing tbe
the information ideoli1ler
identifier
to a plurality of heuristics in accordance
accordallce with a global
beuristic,
heuristic. wbercin
whcrein the information
idemifier is matched
bascd upon the
thc plurality of heuristics;
to information based
means for receiving
receiviog at
at least
least one candidate
~'andidate item
ite1l1 of information based upon the information
information provided to the
heuristics in accordance
a~"Cordancr.: wilh
with the globa
globall heuristic;
heuriSlic; and
means for displaying a representation of tile
the candidate
c3ndidatt'
i(ellls of information.
items
39. The
llie apparatus of claim 38 wherein
whereio the global heuristic
determines
determilles an order in which the information identifier
idelitiJier is
40. 11\C
The apparatus of claim 39 wherei.n
whercill the
Ihe order is a
ranking of the plurality of heuristics according to a context
in which the information
infomlation was input.
41.
41 . Tbe
The apparan.rs
appant tus of claim 38 wherein the information is
wbich comprise
("Omprise at least
least
located over a plurality
pluralit y of locations which
(wo
lWO or
of the
Ihc following: local
tocal StOrage
s(orage media, a LAN
I..AN Storage
~Iorage
volume, a wide area network and an 1nt.ernet
Internet network.
Iletwork.
42
1\ me
method
thod for displaying information
information in a computer
42.. A
system,
system. comprising
compri sing the steps of:
inputting
inpulling an information
identiHer;
providing the information identifier to a plura
lity of
plurality
plug-in
plug-in modules in accordance with a global heuristic,
informatiOIl identifier
identifier is matched 10
wherein the information
to information by the plug-in modules based upon the pluraljty
plurality
of heuri-;tics;
heurL-;tics;
receiving at
.cast one candidate item of information
al lleast
informa tion based
bascd
10 the
lhe heuristics in
upon the information provided to
accordance with the global heuristic; and
the candjdate
candidate items of
displaying a representation of tbe
information.
ioformation.
43. The
'111C method of claim
daim 42 wherein Lbe
the global heuristic
beuristic
determi
nes an order in
tion identifier
in which the
Ihe informa
information
identitier is
determines
44. The method
me(hod of clainl
claim 43 wherein the order is a ranking
of the plurality of heuristics according to a context
conte xt in whicb
which
the information
informalion was input.
45. 'llie
The method of claim 42 wherein the information is
of locations which comprise
(umprise at least
located over a plurality o[
55
10
10
15
"
20
10
~;
2.'i
30
.l'i
35
40
40
45
45
so
50
55
55
60
60
65
65
A607
Case: 15-1171
Document: 40
Page: 382
Filed: 03/06/2015
US 6,847,959 BI
11
12
two of [he followil1g: local storage media, a LAN Siorage

volume, a wide area network and an Inlem.:t network.
46.1\0 apparatus for displaying infomlation in a (:Olllpulcr
means for displaying a representation of the candidate

items of information.
47. 'The method of claim 46 wherein the global heuristic
determines an order in which the information identifier is
system, (''Omprising:
5 provided to the heuristics.
means for inputting an information idcotilicrj
48. The method of claim 47 where in the onkr is a ranking
means for providing the infonnuion idc::nlifier \0 a pluof the plurality of heuristics according. to a context in which
rality of plug-in modules in accordance with a global
the information was input.
hcurislic, wherein the information identifier is matched
49. The method of claim 46 wherein the information is
\0 inform31ion by the plug-in modules based upon a 10 located over a plurality of locations which comprise atleasl
plurality of heuristics;
two of thl.: following: local storage media, a t AN storage
means for receiving 31 lea~l Olle candidme item of inforvolume. a wide area network and an Internet network.
maltOn based upon [he information provided \0 the
heuristics in accordance with Ihe global heuristic; and
A608
Case: 15-1171
(12)
(54 )
1111
(to) Patcnt No.:
Freedman
(45)
AS YNC UI~ONOUS
IH TA
illventor:
Gordon J.
(US )
~'n't'<lm :l n ,
PnioAlto, CA
Assignee: Apph.' Inc., Cupertino. CA (US)
Nuticc;
US 7,761 ,414 B2
na te of Palent:
].200.668
7.263.55 1
7.4 01.104
7.4 54,462
AMONGST m : \ ' ICES
(73)
Filed: 03/06/2015

S \,NC H~ON IZATION
(75)

1111111111111
B2
l32
B2
B2
Jul. 20, 2010
412007 Mal. el al .
8/2007 lklfiol"<' el "I7:2008 Shah~lal.
1112008 Iklfio,eetal.
(Continued)
S ubjt."Ct to ,IllY disclaimer, Ihe (crm oflhis
FOREIGN PATENT DOCUMENTS
patent is extended or adjusted under 35

USc. I 54(b) by 49 &lys.
wo
WO'()3 '073292
912003
(21 ) AppJ. No.: 111650,624

(22)
Jail. 7, 2007
Filed:
(Continued)
Prior )'ubiicatio n l)ata
(65)
US 200810 168291 AI
(51)
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OTHER PUBLICATIONS
Jul. 10.2008
Ori Shak-v et ai, ~Pred i ct;'c Log-Synchroniz3Iion" ,\CM SIGOI'S

Operating Systems Review. vol. 40.1 ue4. Ocl. 2006. pp.1US - 315,~
[m.CI.
GIJ6F 7/00
(2006.01 )
G06F J 7/00
(2006.01 )
U.S. C!. ' _H _" _' _ ..... _.......... _..... _.. _... _.. _.. _.... 707/610
Fidd of C lass ificatio n Selln:h
NOlle
Sec application file for complete search history.
(Continued)
Pn'lI/ary Examiner- l!yl.:ll T. Lc
(74) Allorney. Agcn/, or Firm- Blakely, Sokoloff. Taylor &
lafman LLP
RefHellc{'!; C Ul'"d
(56)
(57)
ABS TRACT
U ,So PATENT DOCUMENTS

S."74,2~S
6,023.708
6,034,621
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6,269.405
6.295.541
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6.4 30.576
6,564,261
6.571.245
f~2
6.7()8,221
6.7)(9,258
6,985.912
6,99(1,5 IJ
7,096.867
7.100,039
7.188, 193
HI
Bl
Bl
Bl
BI
BI
HI
BI
B2
B2
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HI
10/1999
212000
312000
112001
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6"""
~ 200;
Cha..,. h
Mendez et at.
K"urman
Dctlcf
Dureller et aL
Bodnru- cl al .
Huang el aL
Gale.cl al.
Gudjonsson et al,
Huang "I al.
Mend ez et al.
Zak. Jr. ct al .
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Iklfio/'C et al.
Smith ~I a l.
Fisher et aL
Cn.1.in el aI
Systems. method. and computer rt'ad~ble media ror synchronizaliotl Illsks and tlon-S),ltchronizatio tl tasks being exeCUTed
concurrently. In olle exemplary embodiment, a meThod
includes exectlling at lws\ one tlser-leve] non-synchronization processing Ibread and l"Xecllting ot1cas\ one syncbronizmion processing thre..1d concurremly with the executing of
the m least o ne IIs('r-levd non-synchronization processing
thread. Tht: at It:~st Otlt: uscr-k...cI tlon-synchmniwtiotl processing thread may includt: operations to access a first database which is synchronized by Ihe at lwst one synchronization processing thread dtlring n synchronizotion operation
between the first dntobnse on a first processing system and 0
sC('ond database on 0 scrond dat.1 processing system.
,.... 7r:1)1227
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JOINT TRIAL EXIllBIT NO. 7
UnitM Stares Districl Court
Nonhnn District of California
No.1 2-CV-00630-UfK(PSG)
Applfl Inc. v. Somsung E1Qa.

Dal~
Admit!nl:
By:
A609
Case: 15-1171
Document: 40
Page: 384
Filed: 03/06/2015
US 7,761,414 8 2
Page 2
U.S. PATENT DOCUMENTS
7.458.09 1 81
II 2008
7.580.946 U2
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712002
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2003 012630 1 A L
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2004 0054139 AI
2004 0093342 A I
2004 0139178 A I
AI
AI
2004 01869 16 AI
200410224638 AI
2004 022573 I AI
2004 022579 1 AI
20050]25459 AI
2004 0 148375
2004 0 181580
200501 47130 A I
20050268307 ,\ 1
20060005191 Al200600 158 18 Al

200600592Q7 AI
20060101082 A I
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2006 0264206
20070022 155
2007 0075965
200710 1 18570
2007102 71 3 17
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AI
AI
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AI
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friend CI aI .
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OTHER PUBLICATIONS
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9
42007
5.1 2007
11 /2007
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u:may~1
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1006
1/2008
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A610
Case: 15-1171
u.s. Patent
Document: 40
Ju l. 20, 20 10
Page: 385
Filed: 03/06/2015
US 7,76 1,414 B2
Sheet I of28
10
_____ 12
Host Computer
/14
16
Synchronization
Software
18
Contacts
Dalabase
22
Calendar
Dalabase
Handheld
Computer
Handheld
Contacts
DB
20
Handheld
Calendar DB
24
Dock
FIG. 1
-26
(Prior Art)
A611
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 386
Filed: 03/06/2015
US 7,76 1,414 B2
Sheet 2 of28
48
"
Cache
(Oplional)
45
47,
(50
(49
Processing
Syslem
(e.g., ).lP)
Nonvolalile
Memory
Memory
(51 "-
..
<"
Display
Controller
And
Display
110 Devices
(e.g., Network
Inlerface;
Cursor Control;
Keyboard, etc.)
52../
'-- 53
Dock
(Optional)
Wireless
Transceiver(s)
(e.g., Bluelooth
or WiFi or IR)
(Optional)
'--55
54, /
FIG,2
A612
Case: 15-1171
U.S. Patent
Document: 40
Jul. 20. 2010
Page: 387
Filed: 03/06/2015
US 7,76 1,414 82
Shee! 3 0128
63'"\
60
Memory
62,
Audio 1/0
Wireless
(e.g., RF)
Transceiver(s)
(e.g., WiFi;
IR; Bluetooth;
Wireless
Cellular
Telephony)
Processing
System
(e.g., ~P)
'"'-' 61
L....
Input
Device(s)
(65
Display
Controller
And
Display
Device
L 67
Oiller
1/0
(Oplional)
66,../
FIG.3
A613
A614
Conlacts
Application
Program
1 '-1;><
FIG.4
Other
Application
Programs
; -\..1:'0
Other
Store
DBs
~ \..117
Device
Link
I
I
-I
Sync Client
LJ
Calendar
Application
Program
Contacts
Application
Program
Sync Services
Data Class
DCH
Handler
For
(DCH)
Contacts
For Calendar
Data
Class
Data Class
137./
1357
-107
Host
(e.g., Desktop Computer)
Other
Application
Programs
"-
141
'-139
DCH
For
Other
Data
Classes
"-
111
, 1 03
.-.
".
0:1
""
-I
.-1
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~
~
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...
;-
'"-=
Page: 388
Calendar
Application
Program
119
Contacts
Store
DB
1 -":::-115
Other
Data
Sources
,
I
109
. --
~ 105
Document: 40
1"
Calendar
Store
DB
-":::-113
Conlacts
Data
Source
Calendar
Data
Source
Sync Agent
I
7
Device
(e.g., Handheld Computer)
101 "'
Case: 15-1171
Filed: 03/06/2015
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Filed: 03/06/2015
US 7,761,414 B2
Sheet 5 of28
, 177
:~ Time
Device
181 -
Page: 389
Host
r-:.e--
Ready ----+1-1
I
I
Connection and ___ 179

aulhentication on
(may be 2way authentication
using selfsigned certs)
JooI.e--- Sync data class A __ 183

(or next data class .. .)
185 --.. OK, sync -------<-"11
data class A
I
Send version number - 187
189 ~Send version number
I
of DCH for dala class A
of data source for
data class A
I.
Send next host anchor ___ 191
193 _ Send next device anchor ___ I
and previous device anchor
and previous host anchor
and sync type
and sync type
:..I.e-_ Get changes if fast sync;~ 195
197 '--Send changes
_:
get all records if full (slow) sync
___r.---;
(or all records)
Acknowledge ~ 199
I.
201--.. Isave next devicel_

l!nchor at deviceT
J_ _
Save next device

anchor at host and
commil to changes or
all records
203
205 ~ Send "ready to _ _----<_..

pull" message
....- - - Send changes (or all ~ 207
209 - Acknowledge _ _ _.;.
records)
211 -
Send record ID - -__
map
"'I.>---Send commit to device ~ 213
21 5~ lsavenexthosl }anchor and save

store
217 -
I
I
I
Acknowledge ---~.:
I
I
Commit pulled ~~
records and save next
-[
host anchor
219
rL!e.g., when done

Disconnect
l
with all data classesU
FIG.5
A615
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 390
US 7,76 1,414 B2
Sheet 6 of28
r'251
.....,
Connecled?
<
Filed: 03/06/2015
Nexl dala ciass?

~
No
Exil
253
None
Left
'"
,255
Disconnect
and exil
No <fan device sync data class?
! Yes
261,
V-- 257
Gel version number of

data source for current
dala class
Alert
user to
updale
t
No
Do versions match
(or are olherwise
compalible)?
259
! Yes
263
Gel anchors and sync Iype
t
265
Start sync session
+
Negoliale sync mode
Yes
273,
Tell device
10 clear
ali records
269
Has reset mode

been selected?
! No
,.-- 271
Has fasl sync mode

been selecled?
~ Yes
Go To
682
V-- 267
Go To
68 1
No
275
Ask device
for all
records
+
( GO To
683
FIG, 6A
A616
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 391
Filed: 03/06/2015
US 7,76 1,414 B2
Sheet 70f28
Ask device for changes

in current data class
-277
\ 68-3 )
+
Process records and send
-279
acknowledge to device
68-2 )
Save next device anchor

at host
-281
~
Ask sync services to
prepare to "pull"
-283
{287
285
Send all
No
records to
Has fast sync mode
device from
been selected? /
host
~ Yes
Send changes to device
~289
from host for current data
class and receive acknowledge
__ 291
Receive and save record

ID map from device
r-- 293
Can device commit

to changes?
No
~ Yes
Device confirms it committed
Cancel and
return to
next data class
295
t
Commit pulled records (ID map) ,-297
and save next host anchor
Go To NEXT data class
299
FIG.6B
A617
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 392
Filed: 03/06/2015
US 7,76 1,414 B2
Sheet 8 of28
301
Wait for connection

Connected
303
Tell host that device is ready
t
Wait for request to sync data
ctass or disconnect
No
<
.>
Found data source?
! Yes
I..- 305
307
Negotiate version (e.g., version I-- 309

of DCH for current data class)
Yes /
31 5~
Mark
all records
in data
class as
cleared
Get anchors and negotiate

sync mode
e-311
313
"-
Has reset mode been

selected?
, 3 19
+No
,317
No
Has fast sync mode been
selected?
./
Yes
321
Send all
records
from
device
Send changes in current data

class from device
Save next device anchor at

device and clear history
I-- 323
!
( Go To
7B-1
FIG.7A
A618
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 393
Filed: 03/06/2015
US 7,76 1,414 B2
Sheet 9 of28
( 781 )
t
Send ready to "pull"
message to host
I--- 325
+
Has fast sync mode
327
No
(329
been selected?
Yes
Receive changes from host
for current data class
and send acknowledge
Create remapping for added

records and send IDs
to host
Receive
all records
in data
class from
host
I--- 331
I---- 333
(335
Can device commit to ChangeS?) No
(337
Roll
back
Yes
Save next host anchor and
commit transaction (e.g., save I--- 339
store) and send message to
host that device has committed
v- 341
Go to NEXT data class
FIG . 7B
A619
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 394
Filed: 03/06/2015
US 7,76 1,414 B2
Sheet 10 of28
___ 401
Begin synchronizing
,---40 5
,-403
Next data class?
None
Left
~ Yes
tnitialize DCH on host and send DCH
version number for current data class to
device (alternatively, send data source
version number to host)
End sync
and
disconnect
___ 407
~
Initialize Data Source (DS) on device and ___ 409
compare DS version number on device to
DCH version number on host
~
Decide howlwhether to sync and/or
alert user to update/upgrade one or
more DS and/or DCH on their
device and/or host
___ 411
~
If decided to sync, perform synchronizing
for current data class
___ 413
~
Complete sync (e.g., save anchors) for
current data class
___ 415
FIG.8A
A620
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 395
Filed: 03/06/2015
US 7,76 1,4 14 B2
Sheet II of 28
___ 425
Begin synchronizing
(42 9
(427
Next data class?
None
Left
End sync
and
disocnnect
Yes
Initialize DCH for current data class on
host and send DCH version number to
device; initialize Data Source (DS) for
current data class on device and send
DS version number to host
___ 431
t
DO
NOT
sync
Higher version number software ocmponent

decides how/whether to sync for current
data class (and/or whether to alert user to ___ 433
update/upgrade a software ocmponent on
their device andlor host)
t
Pe~orm
sync for current data class
___ 435
t
Complete sync (e.g., save anchor) for
current data class
___ 437
FIG,8B
A621
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 396
Filed: 03/06/2015
Sheet 12 of 28
US 7,761,414 B2
Contacts Data Ctass Structured

Data Format
First
Name
Last
Name
Address
City
State
Country
Email
Phone
Cell Phone
Fax
Group
FIG. 9A
Calendar Data Ctass Structured
Data Format
Subject _ _ _ _ _ _ _ _ _ __
Location _ _ _ _ _ _ _ _ _ __
Start Date _ _ __
Time _ _ __
End
Date _ _ __
Time _ _ __
Reminder _ _ _ _ _ _ _ _ _ __
tnvite _ _ _ _ _ _ _ _ _ _ __
Notes
FIG. 98
A622
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 397
Filed: 03/06/2015
US 7,761,414 B2
Sheet 13 of 28
, 450
,,-- 454
452' '------.
Application
(e.g., Backup, Configure)
457
459
Sync Client I Sync Agent
- 456
--------------------------------Stream Handler Interface With Authentication
- - 458
And Cryptography
-
Device link Connection
Stream Handlers
USB
I
462
Bluetooth
TCP
- 463
- 465
461
Stream libraries To Implement Stream Handlers
FIG. 10
A623
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 398
Filed: 03/06/2015
Sheet 14 of 28
US 7,761,414 B2
Establish connection (e.g., discover device

and pick connection interface; priority of
picking may be USB, then WiFi, then
Bluetooth in one embodiment)
Authenticate device to host and host

to device (optional in some embodiments)
501
After authentication, cause launching of

sync agent and sync client
Maintain connection during synchronizing

of structured data
Disconnect
503
505
507
509
FIG. 11
A624
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 399
Filed: 03/06/2015
US 7,761,414 B2
Sheet 15 of 28
525~
~527
\
Device
Host
.-------------,
,
,,
,
Device 10
Mapped To:
r - - - - - - - - - --,
I
Device's Private I
,
Key For That
:
Il _ _ _ _ _
Host
_ _ _ _ _ _ ,I
r - - - - - -:- - - --,
I
Host's Private
I
533-4'-"--I
,
I
529 '-l.....-r
II
,,
I:
~
I:
I
545
.... - - - - - - - - - - -
Device's
Certificate
Used For That
:
:
,,: ~ - - - - ~~!.. - - --:

,
I
I
r-----------
Host's
:
541 ,-,.-..-!--<-~,Certificate
:
: Il _ _For
The
I
__
_ _ Device
_____ >
,,
,,
,
I
I
Host to
Mapped To:
-----------:
Host's Certificate :
~ , Authonty Certificate :
537 '-L--->-~
I I
For The Device I
, : (Used In Self Signed :
: I
Authentication)
I
I .. -----------1
Key For The

Device
-,'r-J-
535
_
.......
, --0--.1/531
I
I
1 ______ - - - - - ,
- - - De~i~"7s- - --:
:
Certificate
--rr'__-,-_547
:
For The
I I
~ ____ ~~s~ ____ : :
r----------Host's
:
,,
,,
,
I
I
Certificate
-r-J..,
I
For The Device
I I
1 ______ - - - - - , I
543
,
,,
,
------------
Host's Certificate : I
I Authority Certificate I ,
I
I
For The Device I ~-.L-- 539
: (Used In Self Signed : :
I
Authentication)
0._---______ ,:
1
--------------
FIG. 12
A625
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 400
Filed: 03/06/2015
Sheet 16 of 28
Execute non-synchronization threads!

processes on device and on host
US 7,76 1,414 B2
f.-- 575
~
Begin execution of synchronization
software on device and on host while
continuing execution of non-synchronization
threads/processes on the device and the host
r<
f--- 577
13A.l )
Synchronization software component

(e.g., Sync Agent 109) attempts to acquire
a lock (e.g., through flock) on store
for a data class
f.-- 579
580\
No
Yes
Lock acquired?
581,
Notify
application
Lock acquired
(591
Begin synchronizing
and wail
for currently processed

data class
Not acquired
583,
(593
Cancel
synchronizing
of data
class and
If user attempts to change

store for the data class
while synchronizing, present
an alert
go to next
class
FIG. 13A
A626
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 401
Filed: 03/06/2015
US 7,761,414 B2
Sheet 17 of 28
1381
(595
Finish synchronizing for currently
processed class and release
locks on dalabase stores
(597
599,
( Go To 13A-1)
/
'\.
Nexl dala class?
(600
None
Left
End
FIG. 138
A627
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 402
Filed: 03/06/2015
US 7,761,414 B2
Sheet 18 of 28
I' 625
Bookmarks Menu
627
Bookmarks Bar
629
{
Folders
631
F~d."rABC ...
632
Folder XYZ
633
FIG. 14A
I' 637
Bookmarks Bar
669 -
- Other Bookmarks
638
639
Bookmark 123...
Bookmark KLM...
640
642
641
667 -
670 - - - ( :
Bookmarks Bar
Folders
1'665
FOld."r ABC ...
Folder MNO...
FIG. 14D
643
FIG.14B
656
~~:~rs)
1" 651
Bookmarks Menu
652
Bookmarks Bar
Bookmark 123 ...
Bookmark QRS ...
653
639
654
657
t- Folders
FOld."r FGH ...
Folder 246 ...
658
FIG. 14C
A628
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 403
Filed: 03/06/2015
US 7,761,414 B2
Sheet 19 of 28
1 625A
Bookmar'<s Menu
627 A
Bookmarks Bar
629A
Folder...
631A ~ - Folders
:
{
Folder. ..
Top Level Folder
675
FIG.15A
Bookmarks Bar
Bookmark 123...
Bookmark KLM...
638A
639
640
Bookmarks Bar
667A
Other Bookmarks
669A
Folder...
:.
( Menu
)
: Folders
670A --J-.-~ _ Top Level
{
Folder...
Folder,
Bookmarks Menu - --Ik 676
"
641A ~ - Folders
----F-IG-.-15-B-..1
FIG. 150'''--- 677
1' .651A
Bookmarks Menu
Bookmar'<s Bar
Bookmark 123...
Bookmark QRS ...
{
656A
- Folders
652A
653A
639
654
Fo~er
Folder...
FIG. 15C
A629
692
A630
FIG.16A
Canonical Format
(Intermediate Format)
694
Folder...
..............
FOI.der...
Bookmarks Menu
Folders
693
FOlde~
)
A Device's Web Browser
Bookmark Structure
Folder
667A
-----+- 669A
>1=-+(:..:~i~~~~~el
Olher Bookmarks
I" Bookmarks Bar
1' 665A
.-..
'"<>
...
".
0:1
""
.--...
.....
..,'"
c:
00
~
~
'"
'"
'"
...
...
Page: 404
A Host's Web Browser

Bookmark Structure
691
Bookmarks Men~
Bookmarks Bar
Top Level
Folders:
{ Folder...
Folder...
Bookmarks Bar
Bookmark 123...
Bookmark KLM...
1' 690
Document: 40
676
641A
639
640
638A
637A
::0
...
;-
'"-=
Case: 15-1171
Filed: 03/06/2015
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 405
Filed: 03/06/2015
Sheet 21 of 28
Map at least one bookmark from at least one

web browser on a host to at least one of
an intermediate format or a device format
for bookmarks
US 7,761,414 B2
Map at least one bookmark from at least

one web browser on a device to at least one
of an intermediate format or a host's
format for bookmarks
Synchronize bookmarks on a device with

bookmarks on the host; the device's bookmark
format may be different than the host's
format and the intermediate format
701
703
705
FIG. 168
A631
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 406
Filed: 03/06/2015
Sheet 22 of 28
Map first bookmarks in a first format

for a first web browser on a host
into an intermediate format (e .g., a
canonical format)
US 7,76 1,414 B2
~ 715
Map second bookmarks in a second format

for a second web browser on the host
into the intermediate format
Synchronizing the first bookmarks and the

seccnd bookmarks with third bookmarks on
a device which is coupled to the host
during the synchronizing
717
I-
719
FIG.16C
A632
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 407
Filed: 03/06/2015
US 7,761 ,414 B2
Sheet 23 of 28
725
Select ONLY one option:
727 .............
1tJ
Synchronize device's bookmarks to

host's bookmarks and host's
bookmarks to device's bookmarks
(two way synchronization)
Synchronize from device's bookmarks
10 host's bookmarks ONLY
(one way synchronization)
FIG, 16 D
731 '-- 0
Synchronize from host's bookmarks

10 device's bookmarks ONLY
735
Select ONLY one option:
737 ____ D Synchronize bookmarks for all web

browsers on both device and host
739~ 1i1 Synchronize bookmarks on device with

bookmarks of selected web browsers
on host
741 '-- ~ Internet Explorer
742 ___ Firefox
FIG,16E
743 __ Safari
744 __
Other
750
Select folders to synchronize
FIG,16F
limit synchronization of bookmarks

to selected bookmark folders on
host's web browser 10 be
synchronized with bookmarks of device
A633
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 408
Filed: 03/06/2015
Sheet 24 of 28
US 7,761,414 B2
Receive set up of email (or other

electronic message system) account
information on device (for account "A")
Receive set up of email (or other

electronic message system) account
information on host (for account "8")
783
Establish connection of device to host
Synchronize email account (accou nt "8")

established on host as a new email
account on the device (optionally do
not synchronize email account set up
on device)
781
785
787
FIG. 17
A634
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 409
Filed: 03/06/2015
US 7,76 1,414 B2
Sheet 25 of 28
Device
Host
Email
Account A
Setup
Infonna:ion
Email
Account B
Setup
Information
791
Sync
795
. I
Email
Account B
Setup
Informa:ion
790
793
FIG. 18
A635
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 2010
Page: 410
Filed: 03/06/2015
Sheet 26 of 28
US 7,761,414 B2
Store note with embedded "to do" on host

(or device)
811
Update "to do" database on host

(or device)
813
Synchronize note database on device

(or host) and update "to do" database
on device (or host)
815
FIG. 19
A636
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 411
Sheet 27 of 28
Filed: 03/06/2015
US 7,76 1,414 B2
Receive content of note (e.g., a free

form text document)
825
Receive selection of command to

create a "to do" item from at least a
portion of the content of the note
(the selection may occur before
receiving the content)
827
Add "to do" item to a "to do"

database
829
Optional ly, present a new "to do"

item in a "to do" window or other
user interface item
831
FIG. 20
A637
Case: 15-1171
u.s. Patent
Document: 40
Jul. 20, 20 10
Page: 412
Filed: 03/06/2015
US 7,76 1,414 B2
Sheet 28 of 28
Establish connection to synchronize
"--' 841
notes between device and host
Determine if a synchronization filter

for notes has been set (either by a
system, such as a default, or by a
user)
"--' 843
(845
Yes
For each note in either

device or host, does the
note satisfy the filter?
84 7\
No
(84 9
Do not synchronize
the note (or
synchronize only
portions, such as
text only, of the
note)
Synchronize
the note
FIG, 21
A638
Case: 15-1171
Document: 40
Page: 413
Filed: 03/06/2015
US 7,76 1,41 4 B2
2
ASYNClIRO~OU S
I)A'I:"
S YNC IJI~ON IZ ATION AMONGST UEVICES
cates with private key/publ ic key cryptography. Cenain exiSIing sYS!('lliS allow for limited syncitronizlllion of emails
between a hosl and a h.1ndheld computer. but Ihere is no
FIELD OF THE INVENTION
synchroni1.3tion of chang('s in email account setup informa5 tion. Cenain systems also allow for the synchronization of
'l1lC various embodiments dl'Scribcd herein relate to sysbookmarks for web browsing betw('en a host and;1 handheld
tems and methods for synchronizing dma between IWO or
com pUler. '[besc sYStemS allow for Ihe synchronization of a
morc dal;l processing systems such as a desktop computer
set of bookmarks having the same format in both the handheld
system rind a h..1ndhcld computer syilcm.
:tnd the host. Certain synchroni1A1tion systems are described
lIlKier the name "SyncML" and further informmion about
BACKGROUND OF THE INVENTION
thesc sySlems can be found at www.openmobilc.1lliancc.o'll,
mKi
at www.opcnlllohi[ealliance.org/techlaffi[imesisynellil /
Modern d.. \1. processing systems. such as a gelleral purpose
spncmlindex.html.
computer, a handheld computer. a cellular telephone. media
"
players, CIC. have OC'CII n:duc<.xi in size 10 the poinlllwllhcy 15

SUMMARY OF T HE DESCRIPTION
can often be readily carril'<i around by a uscr. Furthcnnorc.
these devices arc powerful enough Ih.11 Ihey can provide

substalllial computing power 10 allow a uscr to maintain contact infOllnalion. maintain calendar infonnalion. provide
cmail funclionnlily. and ev('n provide w('b browsing. Th('S('
dcvi('('s also may include support for a task or a To Do list or
database and other sourc('S of d.1ta for a user. An example of
a small handheld computer is the Palm Troo, and oth('r
exampk'S of handheld computers ir.::lude those which run a
Windows CE operating system.
'I1tese h.1JKiheld computers typically allow a uscr to synchronize their data between th(' handheld computer and
another computer. such as a user's desktop computer. such
that both computers maintain the s.1111e set of infonn.1tion.
snch as the same calendar for the user. thereby allowing the
uscr to vi('\\.' their calendar on either the dcsktop computer or
the hmldheld computer. The synchronization is typically performed by coupling together the host computer with a handheld computer through a mechanical and electrical conn<.'Ction provided by a dock. FIG. 1 sho\\s an example in the prior
art of a handheld computcr being coupled mechanically and
electrically to a host computer through the dock 26. The
syst('m 10 includ('s th(' host eompUler 12 and th(' h(lndhc1d
computer 14 . Synchronization software 16. running on th('
hos\. perlorms til(' synchronization between the rcsp<.'ctive
databases. such as the contaels d.1taoose 18 which is synchronized with the handheld contacts dmabase 20. Furthemtorc.
the synchroniZ<llion software 16 synchronizes Ihe calcnd.1r
database 22 011 the host computer with the halldheld's calendar database 24. SynchrOlli1;llioll soflware 16 all the host
computer can synchronize each of the databas('S separately
through Ihe usc of"collduits." TIle synehronizaliOJl sollware
16 op<.'ns and maintains a d:tla connection link through a
conduit. and ('ach conduit must implem('nt all the software
needed 10 make and maintain the link in ord('r to synchronize
a particular cL1 labase. The handheld compuler merely acts as
a siorage device by vending ils StOrdge memory. such as a
hard drive or a flash memory. to the host computer which.
through the synchronization software 16. opens each database to p('rform thc synchroniZ<L1ion. There is olien no active
agent on the handheld computer 14 which participatl.'S in the
synehroni;wtion process; it! Othef words. the synchronizmion
software 16 on the host compuler 12 performs Ihe synchroniZ<llion op<!Tlltions for both sets of databases on both devices.
When there is a synchroni1..1Iion agent on Ihe handheld compUler, it does not have the f.lcilities and:ITChit<.'Cture described
in Ihisdisclosure. including. forcxample. prov iding a plug-in
model on bolh Ihc handheld and the host for dilTerenl dala
class('S. mtd docs not allow applicmions on the h.:lndhcld
com piller to run concurrently with the synchronization proccss. and various other features dcscriboo herein. 'ntere is no
usc of authentic.1! ion and encrypt ion using sci f-signed cenifi-
20
2S
30
35
40
45
50
55
00
65
This description relates to syslems. methods and computer

reacL1ble medi:l which allow fo r synchroni1.ation tasks and
non-synehroni7;!tion tasks to be executed concurrently. In
one embodim('llt, a method includ('s executing OIl least one
non-synchroni1;!tion processing thread. such as at least one
uscr-Ievel non.synchronization proc('Ssinl!, lhrC:ld, and
executing at least one synchroni1A11ion proc<.'Ssing Ihread concurrently with th(' executing ofth(, at least on(' non-synchroni1;!tion processing thread. 'nte eX<.'Cution of al leaSI onc
non-synchronization proc('ssinl!, thread may include op('rations 10 access a first cL11abase which is synchronb;1XI by the.
m I('asl on(' synchronizmioJI processing thread during .1 synchronizmion opeTlltion between the first database on a first
data proc('ssing syst('m and .1 second d.1t:lbase on a s('Conrl
data processing sYStem.
[n al least certain embodiments. a method as describlXl
herein allows a user to operate both a hosl :llId a device while
the IWO systems are p<.'rfonlling synchroni1;!tion op<.'rdtions.
Helle(,. for('xalllpic. a uscr may manipulateor\'iew a cakndar
while a synchronization operat ion. which synchronizes stmctured dma from. for ('xmllpk. the calcndaror other dmabaS('s
such as a contact database. is being p<''Iforllll.'<I.
[n at least cen:lin embodiments. the at least one synchroniZ<)tion procl.'Ssing Ihrc.1d may be provid<.'<1 by a synchroni1A
1tion software component which is conligured to cause
retrieval and slorage of structured cL1ta from a firs! store and
wherein the at leasl one uscr-levcl lIoll-synchronization proccssing thread is prov ided by a uSI.'r application which providl.'S a user imerf..1ce to allow a user to accl.'Ss mKi <.'<Iit tbe
s\J1lcturcd data in th(' first slor('. TIlcse different threads may
be in different address spaces. In .11 least certnin embodiments. Ihe synchroni1A
1tioll ilOftware componenl acquires a
lock on the first store in order 10 prevent Ihe user application
trom affecting the firsl slore while a synchroni7..alion process
is occurring. In.1l kast certain ellibodim('nts. til(' synchroni7.ation software component aUellipts to acquire Ihe lock. and
if it fails to do so. the synchronizmion software compon('nt
sends a message to the user application to obtain the lock on
the ftrst stOf('. The lock. in c('nain (,Illbodiments, llIay be the
FLOCK Unix command. O
llie synchroni1;!tion ilOftware COIllponellt may cancel synehroni7;!tion lor at least one data class
if the u,;cr npplic<llion fails to releasc the lock on the first slore
after a pcriod oftinl(' subsequent to sending of th(' m('Ss.1ge.
Otlll'r systems and methods are nlso dcscribcd. and computer readable media. which contain cxeeutable inSlnlCliollS
to C:lllse a computer to op<.'ra\(' as described h('rein. are also
d<.'SCribcd.
A639
Case: 15-1171
Document: 40
Page: 414
Filed: 03/06/2015
US 7,76 1,41 4 B2
BRIEF DESCRIPTION OF TI-IE DRAWINGS
FIG. 19 is a flow ch.1rt which illustrates one method fo r

synchron i7ing notes wltichmay includeemlK:dded To Do's in
TIIC present invention is illustmICd by way of example and
at IC<lst ecrtain ('mbodimcnts described herein.
nOllimilalion in the figures of the accompanying dmwings in
FIG. 20 is a now chart illuslmting an embodiment of <I
which like references indicate similar c1cmcl11s.
5 method forcreming a To Do wi lhin a nOle 10 create an embedFIG. I shows ill block diagram fonn an example of a prior
ded To Do.
m1 synchroni~wlion system.
FIG. 2 1 shows an example of a lIlethod for lIsing a filler to
decide wheth('r or not a note is to be sy nchronized.
FIG. 2 shows an L'Xamplcof a data processing system. such
us a host COlllptllt'T.
DETAILED DESCRIPTION
FIG. 3 shows an cxamplcofa data procl:ssing system. such 10
as a hundhc1d compui('{ or other type of d'lta processing
Variolls embodiments and aspects oflhe inventions will bc
system.
described with reference to dctails discllssed below. ,md thc
1'10. 4 shuws <Ill C1WIllplc uf" s..>flw<If"C ,m.;hil..."lurc fUf
accompnnying d rawings will i!1ustrale th(' various embodiimplcmcllIing sYllchronj7111ion bctwC('ll. for example. u
15 mellts. '111e following description and drawings;lre illustradL'Vicc and a host.
tive o f lhe invention and are not to beconstntedas limiting the
FIG. 5 is a flow chan showing events in lime bC\Wl'Cll U
invention. Numerous spl.'Cific details are deseribt-d to provide
dev icc :md a hOSi according \0 one example of a syncbroni<I through und('rst.1nding of various embodiments of the
"",'Ilion process.
prcscnt invention. However. in certain instanccs. well-known
FIGS. 6A and 63 afC flow chans which ilhlSlrate a syn20 orcouventional details are not d('scribed in order to provide a
chronization proc('SS on. for e)tample. a host.
concisediscussioll of embodiments of the present il}V('ntions.
FIGS. 7.'\ and 7 B are flow charts illustrating a synchroniThe pro;.-sellt invention C:III rebte to an appamtlls lor (X'rz;ltion process on_ for example, a device.
forming one o r more of thc op('mlions described herein. '111is
F[GS. 8 A and 8 11 are now chnns llIuslmling the usc of
apparatus 1n.1Y be slX'Cially constructed for the required purversion identifiers accord ing 10 at least certain embodimcnts
H poscs. Of it Illay comprise a genemJ purpose computer selecof the inventions.
tively activatt-d or reconfigured by ;t t'Omputer prog.ram stored
FIGS. 9A and 913 illustrate two C)(amples of data formats
in IhecOlllpliter. Such a computer program may be stored in a
for two dilTerent typl.'S of data dasses: in particular. FIG. 9A
machine (e.g. computer) readable stor.tge medinm. such as.
shows a data fornlat for a contacts data class which contains
but is 1l0t1imiK-d to. any type of disk including noppy disks.
slnlCtured d'l\a, and F[G. 913 shows a data fonnat for a calen30 optical disks. CD-ROMs. and magnetie-optical disks. readdar data class.
only memories (ROMs). random access m('morics (RAMs).
FIG. 10 shows an ex.1mple of a software arehiteclllre h,1V'
ems.1ble prog.ranunable ROMs (EI'ROMs). (')ee lrica1ly crasing multiple layers as described herei n.
able progmmmable ROMs (EE PROMs), magn('tic oroptical
FIG. 11 is a now chart illustratillg an embodimelll of a
cards. or any type of media slIit:lble for storing electronic
method which may be perfomuxl with the software a rehil<.'C35 instntctions. and C:lch coupled to a bus.
ture shown in FIG. 10.
A machine-read.1ble mt-dium illl;:ludes any mechanism fo r
F[G. 12 illustmtcs the result or a two-way aUlhentication
storing o r tmnsmilting infonnation in a form re:ldable by a
process which may be used in at lcast cerwin embodim('nts
machille (e.g .. a compu tcr). Forexamplc. a machine-{C'adable
do;.-seribed h('rein.
medium includl.'S read only llK'mory (" ROM"); random
FIGS. 13A and I3 B are n()\\.charts which illustrate one
method in which synchronil. ation and non-synchronil.3tion 40 acco;.-ss memory ("RAM"): magnetic disk storage ml.-dia: optical stomge mooia; flash memory devices; electrical. optical.
opcr.ttions 1ll.1Y be perfonJll.-d concurrently by one or both of
acoustical o r other foml of propagal!.-d signals (e.g .. carrier
a host :lIld a d('vice during a synchronil.3tion process.
wavt'S. infrarl.-d sil/.nals. dijl;.ital sijl;.nals. etc.): etc.
FIGS. 14A. 1411. 14C. and 140 illustrate various possible
Prior to describing the various dillcrent embodiments in
formats for bookmarks for dillcren1tylX'S of web browscrs.
FIGS. 15A. 1513. 15C. and lS I) illustmte a modified book- 45 connCl;tion with synchroni7..ation archi t<'Cturt'S. systems.
mark stl1.lcture which occurs aner synchronil. mion through.
methods and computer readable media. a briefdiscussion will
be provided in connection with Ihc data procl.'Ssing SYSt(,llIS
in at least one embociillleill. an int('rillediate or canonical
which may be p:1I1 o r the synchroniz<1tiou proc('ss. "n le t('ml
fOfmat for:1 bookmark daw stmclllJ"e.
"host" and the t('nn "device" arc intended 10 re fergetleral ly to
F[G. ]6A shows an example of mapping relationships
between a w('b browser on a hosl and a web browser on a 50 data processing systems r.ttherthan spt"Cifical1y to a particular
form faclor for the host versus a foml factor for the dt-vicc.
devie(', wherein this mapping relationship also shows the
F[GS. 2 and 3 show examples o f two dilTcrent dat<l processing
mapping between the data stnlCtnre of the bookmarks on the
sySI('ms. where Ihe syskm shown in FIG. 2 may b(' referred 10
hosl and lhe devicc {C'lati\'e 10 a n inlcnllediale fonnat.
as a host whi](' the system shown in FIG. 3 may be r('ferred to
FIG. 1613 is a now chart i!lustmtiug a method according to
55 as a device. although the system shown in FIG. 2 may be
one embodimcnt described hcrein.
relCrrcd to as a d('viec whilc thc system shown in FIG ..1 may
FIG. 16C is a flow chart illuSlrming another embodiment
relating to tlte synchronization of bookm:lrks.
be referrl.-d to as a hos\.
FIG. 2 shows one ('xample of a computcr systcm which is
F[GS. 160. 16E. and 161' provide ('xamples of uscr interlaces for allowing pr('ference sellings with respect to the
a forlll ofa dala processing systelil. NOle that while FIG. 2
synchronization of bookmarks betwcen two data procl.'Ssing 00 illustrates various components ofa compu ter systcm. it is not
intcndt-d to represent any particlilararehitt"Cture or m;:uUlerof
systems. such as between a device and a host.
int(,fConnccting the componclits :IS suc h details arc not gcrFIG. 17 is a /low chart illustrat in~ a method for synchroni7.3t ion of email accowlt or other cloc tronic message accolUlt
m:me to the prt'Sent inventions. It will nlso beappR-"Ci~ted lhat
personal digital assistants ( PD.o\s). cdlu lar lelephones, media
SCtup infonnmion.
FIG. 18 shows a memory of a dt'Vice and a mcmory of a 65 pJayefl> (e.g. an iPod), dt'Vices which combiue aspt'Cts or
host which sloreemail account SCtup infonnation as shown in
functions of th('Se dev ic('s (a 1Ill.-dia player combined with a
the figure,
POA and a cellular telcphone in onc device), network COIll-
A640
Case: 15-1171
Document: 40
Page: 415
Filed: 03/06/2015
US 7,76 1,41 4 B2
pulers. an embedded processing device within another

dt"V icc, and other dala processing systems which h.we fC\\'cr
the data processing system shown in FIG, 3. or to another data

processing systelll which resemblt-s the system shown in FIG.
2. 11le dock 54 may be similar to n dock in the prior art. sllch
as the dock 26. sllch thm it provides both a mechanical (lJ\d
electrical conncction between one daw processing system
and another data processing system to allow a synchronization process to be pcrfOrtlll'<i between the two systems. In
other embodiments, the wireless transceivers 55 may provide
an ek-ctrical cOIUlt-ction between the two systems for the
purpose of 3 synchronization process without providing a
mcchatucnl COntlC(:tiOll between the two systems.
FIG. J slKJWS an example of another dnta processing system which may sYllchrunil'..c data with utlter d"t" prucc:;siu)!,
systems. such as the systcm shown in F[G. 2 or a system
which is similar to that shown in FIG. 3. '111e datu proct'Ssing
system 60 shown in F[G. 3 includes a processing system.
which may be oneor more microprocessors, orwhich may be
a system on a chip in tegrated circui t. and the system also
includes memory 63 for storing data and programs forexecution by thc processing system. The system 60 also includes an
audio inputiou tpUl subsystem 64 which may inelude a microplKJne and a speaker for. for exnmple. playing back music or
providing telephone funct ionali ty Ihrough the speaker and
microphone. A display controller und display dev ice 65 provide a visua l user interface for the user; this digital interlhce
nt:ty include a graphicaluscr interf;tce wh ich is similar to that
slKJwn on a Macin tosh computcr whcn running OS X operating system software. The system 60 also includt'S one or
more wireless transceivers. such as n \ViFi transceiver. an
infmfL-d transceiver. 11 Bluetooth transceiver. and/ora wireless
celluhlrtelcphony transceiver. It will be appreciated that addi
tion.11 components, not shown. limy ;tlso be p;:trt of the system
60 in certain embodiments, and in certai n embodiments fewer
components than shown in FIG. J may also be used in a data
pnx'Cssing system. 'lbe rutt:t processing systcm 60 also
includes one or more input dcvices 66 which are provided to
allow a user to provide input to the system. Thesc input
devices mny be a keypad or a keyboard or a touch panel or a
multi-touch P.1tlel. 'Inc datil processing system 60 also
includes an optional input/output device 67 which may be a
connector for a dock. such as the dock 54 shown in FIG. 2. It
will be appfl:-c iated thm one or more buses. not shown. may be
ust'<lto intcrconnt-ctthc various eomponents;ls is wdlknown
intheart. l be d.1ta processing system shown in FIG. 3 may be
a handheld compu teror a personal digita l assistant (PDA), or
a cellular telephone with I'DA-like functionality. or a hand
heldcompU\l'rwhich includes a ccllulartelepholle, or a medi(l
player. such as an ipod. or devices which combine (ISpt'CtS or
lunctions of these devices, such as a media player combined
with a I'DA and a cellular telephone in one d!-'Vice. In other
embodimcnts. the data processing system 60 may be 3 nctwork computer or <In cmbedded processing dcvice within
another dcvice. or other types of dma processing syslems
which have f!-'W('-r componcnts or perhaps more compotlt'niS
than thm shown in FIG. J .
At least certain emboditnems of the inventions may be part
of a digital media player. sllch as a port"ble music and/or
video media playcr, which m.1y include a mt-dia processing
system to present thc mtxii a, a storage dev ice to store the
mt'<lia and may further include a radio frequent)' (RF) tr,IJlScciver (c.g., an RF transceiver for a cellular teit"hone)
cou pled wi th an antenna system and the media processing
system. In certain t'lnbodiments. media ston.'<i on a remote
slorage device mny he transmil1ed to Ille media player
through the RF transcdver. 'n}e nllxiia may be. for example.
Olle or more of music or other audio, still pictures, or motion
pictures.
components orpcrhnps more oomporlCllls may also be used to
implement one or more embodimeots oflhc present inven
tions and may be one or more oflhc<ll.:l processing systems 5

described herein. '111e computer syslC1l1 shoWJl in FIG. 2 may.
for example. bell Macinloshcompll1Cf fromApp]cCompulcr.
Inc. or a computer which runs the Windows operating software from Microsoft Corpowlion.
As shown in FIG. 2, the cQmpulcr syslcm 45 indu dL'$ a bus 10
5 1 which is coupled 10 one or more microprocessors which
form a processing system 47 . The bus 5 1 is also coupled to
IIlcmury 4 9 "lid In" nUll -vulatile mClILury 50. whidr tlm)' be
a magnetic Iwrd drive in certain embodiments. or nash

memory in other embodiments. 'Ibc bus is also coupkd to a
display controller and disphly 52 and one or ntore inplll/
output (I/O) d!-'Vices 53. Further, the bus is eouplr..'<i to an
optional dock 54 and to one or more wi reless transceivers 55,
which may be a Bluetooth transceivcror a WiFi traJlsceiveror
nil infrared transceiver. It will beappl1:'(:inted thm the wireless
transceivers 55 arc option.11 as shown in FlG. 2. 'l1lC processing system 47 nmy optionally be coupled to optional cache
4R. The processing system 47 mny includeoneor more microproct'Ssors, sllch as a microprocessor from [ntel or 113M. "[be
bus 5 1 intcrconnects these various components together in a
maJUler which is known in the art. Typically, the input/output
dt.... iccs 53 arc coupled to the syst<'m through inputloutput
controllcrs. lbe memory 49 may be implemented as dynamic
RAM (DRAM) which provides filst acress to data but
requires power continually in order 10 refresh or maintain the
data in the memory. 'Ibe nonvolatile memory 50 may be a
magnetic hard drive or other nOil-volatile memory which
retains d.1ta even after power is removt'<i from the system.
Whilc FIG. 2 shows tha t the non-volatik mcmory 50 is a local
dev it'C coupled dil1:'(:lly to the r!-'St of the componen ts in the
dat a processing system, it will bc apprecia ted thnt other
embodimellls may utilize n non-volatile memory which is
remote from a system. such as a network storage deviec.
which is coupled to thc data processing system through a
network interface. such as a modem or an Ethenlet interfnce.
'l1le bus 51 , as is well known in the art, may include one or
more buses connected to each other through various bridges.
controllcrs. and/or adapters as is known in the art. In one
embodiment. the 110 controller 53 may include a USB
acL1ptcr for controlling USB peripherals and an lEEE-139 4
controller for IEEE-1394 compliant periphcrals.
It will be (lpparent from this description that aspccts orthe
inventions m"y beembodit-d. at least in pMt, in software. That
is. the techniques may be carried out in a computer system or
other rulta processing system in response to its processor or
processing system executing sequences of instnlctions contaitled in a memory, such as memory 49 or non-volatile
memory 50 or the memory 63 shown in FIG. 3. In various
embodiments. hardwired circuitry may be used in eombit!.1tion with the software instructions to implement the present
inventiOIlS. Thus. Ihe techniques nrc not limited to any specific combinmion of hnrdware circuitry and software nor to
any par1icul;lr source forthe instructions CXt'Cuted by the data
proct'Ssing system. In addition. throughouttlus description.
various functions and operations arc described as being perfonlled by or caused by softwarc cod.:: to simpli fy description.
However, those skilled in the art will recognize that what is
meant by such expressions is that the functions result from
execution of tIle codc by a processi ng system.
"111e doc k 54 and/or the wireless transceiveJ'll 55 provide a
physical ill1erfncc for coupling the data processing system
shown in FIG. 2 to ;ttKJther data proc!--ssing system. sitch as
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A641
Case: 15-1171
Document: 40
Page: 416
Filed: 03/06/2015
US 7,76 1,414 B2
7
TIle portable lllL>dia player may include a llu:dia sC'k'Ction
dL"V icc, such as aclick wheel input dcviccon an iPod!lor iPod

Nano media player from Apple Computer, Inc. of Cupertino. Calif., a tOllch screen inpm device, pushbutton device.
movable pointing input device or other input device, The 5

media 5cll.'Clioo device Illay be uS(.>d to sclt'C\ the media Slo[\:d
on the storage dev ice and/or the rcmOle storage device. The
poffilb[c media player may. in al least certain embodiments,
include a display device which is cOllpk>d 10 the Jll(:dia procl.'Ssing system 10 display !ilk'S or olhL'r indicator.>
media
being selected through the input device and being prcscnted.
ei ther through a spL'akcr o r earphonc(s). or On the display
uwi<.:e. or un bUlh displ<IY d ..:vicc ami a s(lC<lkcr lIr caf'
phonc(s). Examples of a portable media player are described
in published US. patent applicalion numbers 2003/0095096
and 200410224638, both ofwhieh:u'C incorporoh.:d herein by
reference.
In certain embodiments. the data pl1)Cessing system 60
may be implementt--d in a small foml factor which J"CSCmbles
a handheld compu1Cr having a tablet-like input device which
may be a multi-touch input panel device which is intcgroted
with a liquid crystal display. Examples of such devices arc
provided in U.S. palent application Ser. No. 111586.862. filed
Oct. 24, 2006, and entitlt'(] "AlJrOMATE D RESPONSE TO
AND SENSING OF USER AcrlV[TY IN PORTABLE
DEVICES:' which is assigned to the same <lssign(:c as the
instant application. 111is foregoing application is hcreby
incorporated herein by reference.
In the following descript ion. various sollwareeomponents
which arc nsed for both synchroni7;ltion and non-synchronizati on processing operations are described. [t will be understood that in atlcast certain embodiments, these various sollware components may be stored in the memory 49 and/or
memory 50 shown in FIG. 2 for one type of data processing
system. and in the case of a system such as thM shown in F[G.
3. these various diffcrent software components may be stol\:d
in the memory 6.l which may include volatile memory as well
as nOll-volatile memory. such as flash memory or a magnetic
hard drive.
FIG. 4 shows an example of an embodiment of a particular
software archill'cture for a synchroni 7.3tion system between
oneor moredala processing systems. such as a device. which
may be a h:mdheld computer. and a host. which may be a
dt'Sktop or a laptop computcr. '[bis software architecture may
be USt-d to imple-ment one or more of thc various embodiments described hcrein. such as thc methods shown in F IGS.
5. 6A. 613. 7A. and 713. and FIGS. 8A and 813. This synchronization system may be used to synchronize stnLcturcd d.11H.
such a. d.1!a in a contacts or address databa se. Diffcrent data
ty pically ll.1ve dillcrent struCIlU"<.-'S or fonnals which spt'Cify
how the data is organized and formallcd. '!bescare rcferred to
ns dnta classes, and FIGS. 9A and 913 providc examples of two
diffel"l'nl .tnlctured data format. for two differcnt data
claSSt'S. In p..1rticular, l' IG. 9.'\ .hows a data fommt for a
contacts data class. and FIG. 913 shows a format for a cal('nd.1r
data class fornlat. TIlC synchroni7.3 tion systcm shown in F[G.
4 may be USt'(] 10 synchronize calendar data betweel1 two
dillcrent calendar stores on the two dificrent systems and to
also synchronize contact (\:tta betwt'Cn the two contact stores
on the two systems as will be describL'(] further below.
"nlC software arch itecture shown in F[G. 4 inclndes n plnmlity ofsoftwnre components on tl;e dt'Vice side 10 1 and a
plLiITIlity of software components on the host side 103. 'Ibere
is. in addition. devicc link software 107 which in effect
bridges the connt'Ction betw<.-'Cn the two software components
which arc sep.1rot('d by the lil1e lOS which I"l'presents the
physical scpar.ltiol1 between thedcvicemtd the hos\. It will be
or
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appn.>ciated that the softwarc componcnts on each sidc arc

stored in respective memory on each dat.1 proc<.-'Ssing system.
The devicc includcs one o r more uscr application prolY'llllS
which are USt'(] to acc('ss and ('dit stntclILred data il1 a particular data class. FIG. 4 shows ('xamples of thrcc such user
application progr:mts. In particular, calend.1rapplication program 125 is used to access al1d edit calendar d.1tn in the
calendar store database 11 9. SimilHrly. the contacts application prolY'ltil is USt..(! by a user to a\:ccss and edit cont:IClS or
nddress book infonuatiOIl sto rt'(] in the contacts store database 121. Similarly. the OIher application programs 129.
which may include a nOll'S application progrom. widget progr..lJns fur pr<.."S\:llting widgets. a web bruw:;\:r having bookmarks. an ('mail program which includes cmail acCOUnl selUp
information. a To Do list program. 1lJld possibly other programs which have struclllred d.1ta. a rc represented by the
other application progr:uns 129 which have "ccess to and
provide the nbility to edit information in othcr stored databa$(.'S 123 . 1besc uscr application programs. such as applicatioll programs 125 and 127, are separate from thc synchroni7;l1ion soHware componems which arc rcsponsible fo r
synchron izing stroctured data in each of the dillcrent classes.
These software components are shown in F[G. 4 ~LS data
sources 113. 11 5. 1lJld 11 7. In particular, the calendar data
sonrce 113 is responsible for causing the retrievHI and storage
o f the stntcturt'(] data from its particular data class, which is
the calendar data class. duritlg a synchroni7.3tion process.
Similarly, the contacts data source 11 5 is n.'Sponsible for
causing the retrieval and storoge of stnLCtured data in the
contacts stored d.1tabase 121 . which may represent the USl.'rs
address book or other contact infomlation d.1tabase. Simi
lady, other data somet'S. such as othcr dat;1 sources 11 7, are
responsible for causi ng the retri<.-'Val and storage of structured
data from other strucIUn.-d data stort'S. "illis may include databast'S for notes, emails, bookmarks, and/or To Do lists and
other databases or stores o f data. "ilIC data sources may also
pcrfonn other functions, such as fOnlHLl1ing thed.1t.1 either for
storoge on the devicc or for tronsmission to thc host. transmilling and/or receiving version idcntifiers with rcs]X'Ct to
each data source relative to each d.1ta class handler for a
particulnr datil class, sending device and host anchors as
described ht"]"ein in order to ellsure that synchronization
opcro ti ons arc perfonned as atomic transactions to ensure that
the synchronization is ei ther complcted or not. allowing the
system to roll back to a prior state if it is not com pleted (in
order to cnsure that synchronization can be performed even if
the connection is intemlpted ). l'unher. the d.1W sourccs may
also remap unique identification values for records 011 the
devic(' to records on the host so that the devicc can maintain
a unique record rcgardk'Ss ofn rt'Cord ID (identifier) prov idt'(]
by a host. Each data source iscouplt-d through software based
messages to a sync agent software component 109 which is
responsible for. at least in part. maintaining a d.1ta connection
betwccn the device and the host through a device link software stack 107. an example of which is shown in FIG. 10 and
describt-d Iwrcin. '!be sync agent 109 provides services.
through software based messages. such as calls or APls (Ap plicntion Progrmn Interfnce). to various data sources. In at
least one embodiment, the sync ngent 109 may implement or
handle or determine the order of sync hroniz..1tion ofthc various datil classes by s]X'Cifying dirt'Ctly or indirectly the order.
Fo r cxmnple, the syne agent 109 may determine and specify
that the calendar data class is synchronizt-d /irst and then the
comacts daw class is synchronized n('xt and thcn thc To Do
list data clnss is synchron ized next. etc. 'I1te sync ngent 109. in
another embodiment. may receive the order through one or
more conun;mds o r nK'Ssages from the sync client and. in
A642
Case: 15-1171
Document: 40
Page: 417
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10
turn. may implement Ih31 o rder by sending mc~sagcs 10 the

dat a sources in thaI order. The syncagcnl l 09 also.dens a d:lla
source jfn link fails when synchroniwtion is occurring. and it
client II I operates. at least in part. to maintain an authenticated connection bctw(.'Cn the host and device in at least
eenain embodimerl1S. MOn:'Qver. the SYllC client. in one
embodiment, may sen d device and host anchors as described
herein. atxi may cause the !k1vingofne)Ct device and llC)Ct host
allChors in rt'Sponse to a successful synchronization for a
particular d.1ta class as d!;'scrilx:d further herein. In one
embod iment. the sync client will dt'lermine the synchron ir..ation mode as described further below and will also invoke the
Corrttt data class rumdler for a particulard..1ta class to manage
the handling of data during the synchronizmion scssion for
thm data class. such asdetennining the entity types which are
lu be sym;hrunilJ.."<.i rur Ih,ll dat<l .. lass. lnHlsfunning l\."lUrUs tu
alxi from tit!;' device. determining the order to pull changes
from the sync server (sync services) based on entity type. and
to perform filtering on records pulled from the sync server
(sync scrvices). 111e sync client I I 1 is coupled to a data class
handler for each d..1ta class which is supporttxi by the host. In
the example shown in FIG. 4. there is a data class handler fo r
the Calend..1r daw class 135. and a dma class hand!!;'r for a
eomacts d..1ta class 13 7. as well as d..1ta class handlers fo r one
o r more other data classes 1.l9. Each of these c!:l\:, class
handlers is dedicmed to providing synchronization services
during a synchroniZ:ltion procl.'Ss for a pat1icular data class.
For e)Camplc, when synchronizing 1:..11endar d..1ta. lhe dat;1
class handler will fonn;rt calencl.1r d:rt.1 obtained from a calendardata store 14J A so that snch data may be tr.msmilled to
the dt'Vice for storngeon the 1:..11encl.1r store 119 . Similarly. the
dat(l class handler may forlll.1l data received from the device
so tha I it may be stored ina databaseon the hos\. Forexmnple.
thedma class Ik1ndler may perform. inm least r:x:rtain embodi
ments. reforlll<llling o perations on c!:lt<l roceived from the
device 101. In at least ceft.1in embodiments. the dma class
handlers for each d<rt<r class may perfonn one or more functions for tlw! p..1rticular data class. For example, thed..1ta cl:lss
handlcr may cause the retrieval and storngeofstructul\.-c! dat<r
from the store tor lhat data class. FurthcmlOre. tit!;' (L1ta class
handler Jllay fommt data for thc device. alxi may filter stOlCtured data when synchronizing dala. 'ntis filtering muy be
based upon a group. such as a personal group o r business
group for a contacts dlta store or Illay be b.1s(''<i on s ize, such
as fora notes d..1ta store as dt"SCribr:.xi further below. MOn:'Qver.
a dat;1 class Ik1nd1cr may scnd its version identifier to its
eorJ1.)sponding data SOUJ1.)e for a particular dat(l typc on the
dt'Vice a nd ma y n:ceive an identifier of the version of the c!:lta
souree for that particular d..1ta class. Moreover. a data cluss
handler Illay create a new filtcr based on ncw n.'COrds sent to
the device or received from the devicc or perform open'tions
with respect to modifying filtcrs. such as a filter based on
group or size or other p..1rnnJeters, as a result of the synchronirlltion process. and SyncClient wil! s..wc the modified filteTS. Mon.'Over. SyncClient may cause thes..wingof remapped
identifiers o btainl.'<i from thedeviee for n.'COrds on the device
as dt'Scribed IlCrein. [t wil! be understood tlk1t a dlta class
handler for a panicu)arclass wHltypical1y b!;'executing atthc
same time as a data souree of the S.1me class on the dt'Vicc.
These two software components. together with a sync agent
o n the device :uxi the sync client on the host. foml :Ictive
Hgents on both dala processing systems which arc active in
ext'Cuting software components as part of the synchronization
process. [n one embodiment. the data class h;rndlers may not
directly cause the storage and rctrieva Io f structured data frolll
d(lt a ston.'S on the hos\. They tr.msmit mess..1ges to the sync
clicnt III which in turn requests til!;' sync scrvices 14 1 which
m.1Y in turn directly or indirectly cause retrieval and stom!!,e
from the cal!;'tKiar stored database 143A ortheconwe!s stored
database 145A or other storlxi datah"sl.'S 147A. In another
will tell Ihc (\.113 source 10 roll back 10 a prior synchroni~.mion

if the link fails before synchronizmion is completed.
SIn!C
Further. the sync agent may ask a d;lla source 10 cOJllmit

changes if the synchroniwlion has bccn slIccessful. which
c au ses Ihcdala so urce \0 wrile Ihcdata loa particular slore for
the parliculardma class.
lliC software architccture of FIG. 4 provides abslmcliollS
that allow plugging in of many dine-rent data classes: including "after market" plug-ins by third party ~lIppJiCrs in at least
ccrmin cll1bodiIllCIll~. In "ill'!,:!. Ihis ;I/chilccwrc crc;!lCS iI
"sync client" which is split imo two pie<:cs (one on the host in
the foml o f synch client II I and one on thedt'Vice in the foml
of sync agent 109 ) and uses a sync servcr. in the fonn of sync
services 14 1, which operntes with ooth the synch client III
~nd thc sync agent 109. The device. In an embodiment in this
3rchitt:cturc. dOL'S not internct dirt:ctly w ith the syne server
(e.g. sync services 141 ) but inste,1d cxclUtnges mess..1ges with
the sync client I I I which interacts (t hrough software based
messages) with the sync server. In o lle embodiment. the Sync
Server manages storing, comparing (mingling), and differeJlCing data from various clients (applicat ions. other serveTS.
31xi Sync Client for a dt'Vicc). The Sync Client. in one
e mbodiment. man~ges the connection (with authentic<rtion
and crypt ography) to the device. transferring and modifying
data between the device and the computer. 3S well as handling
sync <rnchoTS, control
to <rrbitrate between the sync
server and the dt'Viee. checking versioning of data elasst'S.
alxi providing ~ plug-in model to optimize and organir.c han
dling of di ITerent data classes (DataClassHaJxileTS). TIle Sync
Client, in one embodiment. also doc'S all the filtering (only
syncing cont;lcts in specific groups. or events in sp(:ciflc calend.1TS. events within a date rnnge. a subst'i of mail :Iccounts.
and notes or note altaehments wi th a sir.!.' threshold). In one
embodiment. SyncAgent IUt s a plug-in model for Dma
Sourees. and rons as a sepanne process from applic(ltions on
the device which manage/display the data. bUl can interact
with them in parallel (with locking. oreoncurrcm ar:x:ess). :lIId
notifies the applications when data ch.1nges.
'I1te device link software component 107 includes a plurality of softw<rre components. such as the l<ryers of software
components shown in FIG. 10. <rnd the device link 107 m<rint<rins. in <rt Icast one embodiment, illl authenticated connection link betwr:x:n the device and the hos\. thereby allowing
the passing of commands and data between the two data
processing systems during the syndtronir...1Iion process. In
addition. as shown in F[G. 10. the device link software components 107 also provide for, in m least certain embodiments.
the connection to be uscd for additional applicntions to transfer other infomlation back and forth betwt"Cn the device and
the host including. but not limited to. a backup application or
a configuration application nnd d iagnostic tools. Further
details with respect to the devic!;' link 107 are provided below
in connection w ith FIGS. 10. II. and 12. [n m least certain
embodiments, at least a portion of the device link software
stack may reside on both the device and the host menlory. In
preferred embodiments, a portion of the dev ice link software
stack resides .md exccutt'S on both the d(.'Vice and the hos\.
device link software cOnlporlcnt 107 prov ides for a
communication link betw(."Cn the sync agent 109 cxecutingon
the device 101 and the sync client I II ext'Cuting on the host
10J . The devicc link 107 passes software based mess..1ges.
such as calls and responses to calls. betwt'Cn software components as wei! as the SlnlClUred d..1ta prepared in a format for
synchron ization in at least cert;rin embodiments. The sync
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Case: 15-1171
Document: 40
Page: 418
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12
embodiment. Sync Client ddvcs the saving and retrieval process. and gets dma from sync services. and calls out to funcTABLE B-cominlled
tions in Ihe Data Class handler. 111 Sync Client asks the data
Sync Agenl
class IHUldlcr whm entity Iypes \0 synchronizc w ilh sync
services. When it gels records il risks the dala cklss lumdlcr 10 5 Launch en denWldoo Sync Ctient con connce! 10 <hicc 10 synchroniu
Cleo.nty MIIdt. conDtClion 10.. 0' cancel I"C<[UCSI from Comp,uor(ooot)
trllilsfonn them forthcdcvicc ( note that thcdma class handh:{
.id.
HMdt< c""cc l nolifJ<3lion On dc,.. i"" . ide (i .<. from u!<er inlerr"",. en the
might rc!lim the smile record uJllmllsfollm:d in many cases).
<k... i) '0 $lOp sy""hroni7.ing ar user l"C<!1,eS\
The Sync Client wires the Dat;\ Class Handler directly \0 the
Sync Server (sync services) fo r purposes of filtering. so 1ha1 10
the sync server din.'Clly asks the OalaClassl [andlcr wh(.1hcr
TABLEC
or nollo filter a record, and then the Sync C lient asks t/lc Dma
Class Handler (oolh (IOcr il has finished pushing records from
S)"IlC CJiern
the device and a fter il ik1S pulled records from sync serv ices
for the device). nle D~ta CI:lss Handler is 'responsive;" it 15 Ma"'8'>COnn",lion 10 Sync S ....er (sy"" "",,icesl On <;omplncr (hOSl),
and SyncAgcnl on de,icc.
responds to requests from the Sync Client (and in the case of
Ma",!!,,-conlrol t1ov. $We ""chi"" for synchrnniwion op<llI.lio" On
computer (hoSl) ,ide
filtering. the Sync Server). and it is the Sync C lient that is thc
Manage Compuler and Device Sy"" Anchors on computer (bosl) sid.
active agency responsible for controlling the sync opemtion
Inlerfaceto DeviccLink fer cOIlDce!ioD taye' en computer(host) (..hich
on the host side.
20 . 1"" docs the Illlllcnlication Md clypl"8"'Phy)
S~ up the conttt 0..111. CI ... H""di"r ""d IMd fillering inforrruJion fot 4
&" .. n Ihra CI..s
as ~ calen<ilr application progr~m 143. ~ contacts application
Inrerfl.ceto Sync S<,,.. (.ync """'.. ,ces) .......... gt" oyoc Iype (WI. oj",,.
tc1) Md synchrnniwion opera!ion with Sync S",,"Cr (sync "",,,ices)
progmm 145. and o ther applie;uion programs 147 wh ich arc
~I ch""S" from Sync s<,,.,. (sync "",,,i=) 10 .. nd 10 Oe\ice
lIscd by a user to access and cdit corresponding data cla~ses 2S Tell Sync Sen.. , aboul mrupp-ed /"CeQ"\ idemiflcn from Sync Cti,,"!
(D.... Source)
having struetun.-d <ilta stored in a corresponding stored d1tacte.'Ully MIIdl< co""",",ion tonor canc<:J ""Iuest r",,"device 'ido
base. slIch as a calendar stored database 143A. The a rchit(.'CHand]< canc~lllOlificatien CD compUle' (host).ide (Le. from a uscr
ture shown in FIG. 4 shows the data , tares on the hos l side as
interr"", Mth< computer (hoS\ 10 stop synchronizing at uscr 1"<qIles!
TIIC hos t may also include user application programs. such
being coupled din.'Ctly to the application progmm: it will be

appreciated that there is typically a file Il\anagenK'nt systelll 30
on a host dm~ processing system which Illanages eaclt d:llabase ;Uld which n.'Ceiv(.'S calls or OtillT requests from software
components sueh as the applicmion programs 143 or 14 5 or
other components. such as data class h.1ndkrs o r the sync
services 14 1 in order 10 atl"ect reading and writing of data 10 a 35
parlicular stort-d <iltabasc.
lllC following tables sct Oll t the Junctions of each of the
following software components shown in FIG. 4: (I ) a data
SOllrce compon('111 ; (2) sync agent t"<llllpont,lt; (3) sync client
component; and (4) <ilta class Iwndkr componcn1.
TABLE A
Opc-ndata JOurce (d3lalw.c er mes usro Ie ho"",, &ta)

Provide ..... ion. d~"""ine ifc.'Ul sync ifSyn~CticoI (Oal3. Cl1..n MIIdtcr)
' "Cl"lI ion il;sn1:lller
Manag< COlllpul<r (hO$l) Md [)t.. icc SyncAnoho .. on devicc $id<.
d<1<""in< if 1JI fas! e r . 1",, syno
CooN i""le willi applic'lioROlI.ing dar.1 from ,lv".oorce
Ct~.v all <Isla i(being reS<"I
Send ch"llgedl""" 'Mt<1ed.....,rds 10 Sync Ct.~nI
CooN i""l. wilh applic3lion(.) for its rl3l~ d_ 10 keep u"ck of w hich
.....,rtls h.,"C ch",'ged oince l.uI. .ynchrnniwion (CIwIg<" lIiSlory)
Process &lid Conomil data from SyDC Cli~1tt side
Rm,"-p record i<knrif"l"lI for n...... m:ords from ~)"DC Clienl side
TABLEB
SyncAgt"nl
M3.113.g< connection from 1lI< <levi 10 1lI< Sy", Ctienl on computer side
M3.113.I;< controlilow'swe rmclIi"" ferSYDCluoniwion op<J"3Iien on
d",ice side
Inlerface 10 De'ic~Link for ocnDtClien layer en d .... ice ( ..hich at", d{ICS
tho aulhen!i"a!J'}fl o.nd cl)"pIOgrsphy)
S... up 1lI<.con"C<:! 0..1.1 Sourc. for" gi,en Ihu CI.!$
Pr<,,"idep~ infraslnJ<;tUrC for synchrnni-...rion
TABLE D
Data Ctass H""dicr
Pro,ido Wl"lIion. do:\onnine ifcan synchrnn'..., ifSyncAgonl (l)al ~ Source)

' "Cl"lIion i. smalle' (otde,)
Spi/)" "hich &ta types !O I)'''''hron,z~
Pn)\"ide Fittering on all /"CeQnls
Spi/)" "hich orde, 10 pull diffel"CnI reconl Iypes from S)1IC Sen.. , (SYDC
sc,,ices) (10 mm d""icc .,d~ pr<><:C$$,nll of added clwlgcd records
mOre dlicictd)
40 T"""fo"" records
flQJI1 one fo","1 10 anolller fon,,31) pulled {rom
Sy/IC Se,,ic.. on cornpulcr (Sync Se,,.,) 10 be srol 10 thed",,.., (10
optimize u-aROf.r o.nd " wk for <levicc)
Tran.fonn /"CeQ"" (c .g. from one fOrm3l 10 oooth..,. fom'31) from
de--ice (Sync Agcro.lD...s S""""') to be ",,,hod ,"to SyncS.rvic ... (to
optimIze t""",fer ""d " wk for "",ice)
.g.
" ---------------------------------FIG. 5 shows a flow chari indicming v~rious actions and

opcrnlions which oceur on the host and the dcvice ov(,r tillle
during a typical synchroniwtion process according to at least
50 one embodimcnt. Ibe vertical line down the center scparntes
the host operations a nd act ions from the dt'Vice's operntions
and actions and also rcpr(.'"Scnt~ the progress of time d uring a
synchroniwtion operation. lbc hosl 177 Illay begin the synchronization by connccting to Ihe dwice and authenticating
55 with the device in opcration 179. This Illay be a two-way
authentication using :;elf-signed cen ificates and a sclj:assigned ccrliftcate authority from the host. An example of a
colk'Ction o f ccnilicatcs which may be used in connection
with a two-way anthentication is shown in FIG. 12. 'nlis
00 :mthentication Illay be cncrypted with public kt'YJprivate key
cryptography so that the security level is reJatively high. Illis
will allow a mobile handheld device to be secun.'ly anthenticated through a WiFi wireless connt'Ction or a l3luetooth
wireless connection without risk of the device being exposed
65 to othcr hosts. thereby revealing potcntially private andJor
conftdential d:lta on the device or its hos1. In response to the
connection oper.tt ion 179. the dt"Vicc 175 n.'Sponds w ith a
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ready signal 18 1. TIK'll in operation 183 . the host indicates

that it W;II\IS to bl:gin a synchronization operation for dnla
class A (or the nexi data dnss) as shown in operation 183.
Typically. syncillu njJ'..<Ilioll is pcrfornll-d tor one daw class at
a lime by 011(' dm .. source and one dma class handler on the 5
dcvicc and the host, respectively. al least in those embodi

ments which use the software archilcc1Urc of FIG. 4. In
response 10 the signal in opcr.llion 183, Ihe device responds
with ill} acknowkdgcmclll inopcr.tl ion 185 indicating 1hal it
is capab1cofpcrfonning a synchronization opcmtion 011 dala 10
class .'\ b<x:ollsc it has the nOCCSs.1ry software componcl\1s.

slIchasa data source fO f thcdata classA. If thcdcviccdQ{.'S not
Ill'IXSS"ry sul1wmc <.:umpuncnls \0 pcrlurm the syn
chroniz.1tion. it will indicate that synchroniwtion cnnnot proceed. [n this ma nner. at least in certain embodiments. the
deviccand the host perfoml nutomatic check ing. withoul user
intervention. fo r Ihe support 10 sy nchronize one or more dulu
c1nSSL'S. lbis nu tomatic checking of support for each duta
class may be performL'd sep;lrdlc1y for all data classes or
selecled data classes on both the dcvic(' and Ihe host. [n at
least certa in embodiments. the device and/or host may decide.
based on dynamic condilions and stales. not 10 synchronize a
data class at a particular time. For ('~alllple. if nn application
which uses a database having data in Ihe data class is actively
using the database. then Ihe dt:vice and/or host may not synchronize Ihal data class in the currenl synchroniwtion proCL'SS. In response to the acknowlt'dgcmenl from operation 18S
of Ihe device. Ihe host in operation 187. sends its version
number for the pnrticulnr data class lwnd[er for data class A.
[n response. the device. in operation 189. sends its version
number for its data source for data class A. In Ihis way. coch
of the device and the host receive both version numbers and
can perform a comp<lrison to detenn ine which software componcntto use to decide whether and how to synchronize the
stmcturcd d11a in data class A. TypicalJy, the higher version
number indicates the later version oflhe software componcnt.
Typically. it is preferred to use Ihe [aler soliware component
to decide whether and how to synchronh:e tor a particular data
class. [n al1e01<1tlv(' ('mbodimenls, it may be possible to us('
the corlier soliwnre component. "nle advantage of using th('
l;ller software compon('nl is Ihat it has knowlt'dge of prior
formats. gen('rally. and h('nce will understand how to d~l
with prior fonna ls as well as supporting nL'WCT fornlals. In at
leasl one embodiment. ifthedata source is n later version thun
thc data class handler. Ihen the dcviee w ill decide how to
handle Ihe synchroniwtion if it can be perionned. On the
other 141nd, ill '0.11 lcust certain embodinK"IliS. if the data class
handler on Ihe host is the laler version oflhe softwar(' COIliPOtK"nt in this comparison, tll('n the host may decide how to
perfoml the synchronization for the particular d.1ta class.
Further infonnntion in eonnL-clion with Ihis comparison of
version numbers is provid<:d in conjunction with ~ discussion
of FIGS. 8 A and 8 13 below.
Aftcropemtion IS9 . the host. in operdtion 191 . sends a next
hosl anchor and the p!"('vious device anchorto the device. "[be
device. in operntion 19 3. sends its next device anchor and the
previous host anchor. Th('Se anchors arc USl'd. as is known in
the arl. to attempt to make Ihe sYI:chrollization operations
essentially atomic transactions such lhat a synchronil''':llion is
eithercompleled or not and e;teh of the host and thedL~ice can
recognize th;11 a prior synchroniwtion is incomplele and
hence the data was rolled back 10 its prior slale without
lrt.1king changes which would have OCCUITL'd if a particular
s),lIchronizMion session hnd been complcted. In ('ach or
operations 191 and 193. the host i!nd the dl"Vic(' respl-ctivcly
may a lso lransmit to the other system a synchroniZ:l\ion Iype.
which indicates n p;lrlicu[ar type of synchroniwt ion which
h<lvC the
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the sending system thinks il nceds to perform in the current

synchron ization operation. '[bere are typ ically at leasl tlrn.-c
dillcren t types of synchroniwtion operations: (1) a complete
synchron iz.1tion. which typically occurs Ihe firsl time Ihal a
host and a devic(' are synchronized; (2) n chnnges synchronil'. <ltiOIl, which m('rdy synchronizes thechangcs thai occum::d
sincc Ih(' lasl synchronil'A1 Iion: and (3) a rcsel operation in
which d;t1n on one or more syslem is reset to a default o r
f:lctory selling. whic h typically means all user data is erased
or rcmovl'd from Ihesystem which has bL'Cn rCSl1. The Iypeof
synchronization requ('sted by each device is consid('red in a
synchronization type negotiation. Typicnlly. both sysll-ms
will send the S<1l1le syncltruni"-,lIiun Iype (e.g. <1 clmngl""S type).
but ill some instanccs. one system may request a complet(' or
slow sy nchroniZ<ltion while another will rcqul'St n chang('s
(fas t) synchronization. and in such instance. in at I('ast one
embodiment. Ihe two systems will lK"gotinte to select the
"worst"" synchronil'A1 tion opemtion in the sense of lime. Since
the eomplele synchronil'~1tion takes longer thlln n changes
synchronization. in mosl cas('S. th('compJcte synchronil'. Mion
(a "slow" synchronization) will be sek-cwd over a fast synchronil'..ation (a "changes" synchronization). The negotiation
of the Iype of synchronil'.H1ion is pcrformed with knowledge
o f th(' status of the anchors. As is known in Ihe art. a comparison of the anchors will revc.11 whelher the prior synchronil'A1tion was completed or not. [f it was interrupted, then the
previous host anchor from thedevicewiH not match Ihe host's
version of ils previous host anchor. Similarly. if Ihe prior
synchronization was intemlpted or otherwise incomplcte. Ihe
previous device anchor from the host will not malch Ihe
previous devic(' anchor allhe device when the COmP.1riSOn is
perfonned at the dl-vice. 'l1lC fact tl411 there is i! mismatch
reveals a problem with Ihe prior synchroniwtion which will
cause either the host o r Ihe device 10 request a complete (slow)
synchroniZ:llion lype.Ananchor may bea va[uewhich is usro
by one o r both systems in a synchroni1...1tion process to determine Ih(' state of synchroniz.1lion of the systems. Typic.11Iy.
the f;1ct that anchors match indicates thnt the iast synchroniz.1tion was successfully compleled.
Afterlh(' synchroniwlion type has been negotiated. Ihen in
oper:llion 19S a synchronizalion begins by the host rcqu('Sling
either the clwngl'S ifit is n f.1st sync or all n.--cords ifi l is a full
orcomplele sync. Then in operation 197. the dL'Vicc sends the
clwnges, or all n.-cords depending on the Iype of synchronil'A1tion. to thc host. 'Ille host ae knowkdges in 199 Ihe tmnsmission transac tions resulting from o peration 197. "[bese
acknowledgemenlS may be perfonned at one or lllOrc levels.
including al a p.1cket level or a record lev('!. etc. A fUlal
acknow ledgement from Ihe host will cause the device. in
operalion 20 I. to S<lVC its next device anchor at the dl'Vice. As
is known in the art. at the end ofa successful synchronil'A1tion.
all "next" anchors. such 3S;t next device anchor which has
been saved. will become a prcv iousdeviee anchor tor usc in a
luture synchroniZ:ltion. In at least one embodiment. tllC sync
agcnt m:tintains for each class the previous host anc hor as
well as the previous device nnehor and will creale the next
devic(' a nchor for a pa rt icular d.1ta class during a synchroni
l'A1tion operation. Simil:lrly. in at lenst one embodiment. the
sync c1ienl will mainlain for each cbss a previous host anchor
und u pn.'Vious dl-vicc anchor and may crC<lte the next host
:mchor for usc in the proc('Sscs shown in FIGS. S. 6A. 60. 7A.
und 7B.lllCdeviee may acknowledgellfteropermion 20 1 that
it has savl'd its nexldeviceanchor in operution 20 1 wh ich will
cause the hosl in opemtion 203 to savc Ihe n('xt device anchor
at Ihe hosl and to commit to a data store Ihe c141nges o r all
records for lhe panicuiardata class. l bismny occur by b.1Ving
the d;lIi! class h;Uldler for a particular class n:qucst sync ser-
A645
Case: 15-1171
Document: 40
Page: 420
Filed: 03/06/2015
US 7,76 1,41 4 B2
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ViCL'S 14 1. or in Olher embodiments. a Jile syste'Jl\ software

component. \0 make ch.1ngcs [0 the database or slore for the
these methods. Operation 25 1 of FIG. 6A involves determining whether or not the dl'Vice and the host have been connO:X;led by the device Jink set of software components. such as
the device [ink \07. '111is connlXtion determination ttlay be
perfomted by the sync client 111 . Thcn in operation 253, it is
detenllined whether th('rc are any furtherd.1ta classl'S that still
require synchronizmion for a current synchronil..1tion session. If none are left, then tbe d(''IIice and the host may be
disconnected. 'Iben in opcrJtion 255, it isdetemlilll-d whether
tbe device can synchronil.c the p;1r1icnlar d:lta class. nlis is
similar to the atnomatic chlXking of suppon for a panicul.:tr
d~ta class tl41t was described in eonnl'Ction with opemtion
185 uf FlO. 5. If the Ucvi<.:c <.:annut syndmmi/.c " pa n il'ul .. r
data class. thcn synchronizmion for that data class is cancc1cd, reverting back to operation 253. Synchronization for a
data class llIay not be supponed ifthedevicc docs not include
a particlI[ard<l1<1 source to support synehroni7.3tionofthedata
eI.1SS. Also. synchroni:mtion for the data class might bl.'
refused by the device if the data source cannot obtain
resources that it needs to synchronize that data class (e.g. ns
described hcrein. the application nsing the data in the data
class may refuse to yield to requests to synchroni7 the data
class), lfit is supponcd., then in operation 257. the sync elient
obtains the version number of the data source for the current
data class being synchronized. lbis version number is comparl'() to the version number of the data class handler on the
host to detenninc wbether they tlmtch or are otherwise eompatib[e. 'Ibis version checking has been described elsewhere
alxi is funher iIlustrlLted in FIGS. SA and 813. If the versions
do not match and are not otherwise eomp.1tible. then a user
interlilCe in opera tion 26 1 may be presented to the user to
indicate the 11l'<-'() o r dl'Sir<lbility to up<i1te or upgr'Jde one or
more software components in order to allow synchroniz:.,tion
to be perfonned. If the versions match o r arc otherwise compatible, then in operation 263 , the anchors and synchronization type arc obt.1inoo from the device. This in at least one
embodiment results in operation 19.1 shown in FIG,S. '[bcn in
operu tion 265. the synchronization op('ration is started. and in
opera tion 267, the synchroniwtion mode (e,g. one of comp[ete, or changes only, or reset) is negotiated, If reset mode is
negotiated in oper:ltion 267, then this is dell'Ctl'() in oper'Jtion
269 which cauS(.'S processing to brunch to operation 273
which tells the device to clear nil rl'COrds. If reset mode has
not been selo:x; ted. then the processing sek'Cts between either
fast synehronil,.ation mode as deternlinoo in opemtion 27 1 o r
fulUcomp[ete synchroni7,.ation moOC. resulting in operation
275.
In operation 277, the host asks thedevice forchanges in the
current data set if the synchroni7..1tion is a fast synchroniw
tion. '!bc ll.'COrds arc procesS(.'() in operation 279 at tIl(.' host
and oneor more acknowledgement may be sent to the dwice.
The processing of the records in operation 279 may be performed by thedata class handler fo r the current data clnss. and
this processing may include "mutation" ofn.'Cords and other
el41ngeS to put thc struetured d.1ta into the prop('r format for
storage in the data store for lhecum'llt data class. Then, inone
embodiment in operation 28 1. the host saves the next device
anchor, and in oper<ltion 283 it asks sync services. such as the
sync services component 14 1, to prl'Pafe to pull. which
involv<-'S transmilling changes o r alll\.'Cords to lhe device as
the sl'Cond part of synchronizntion from the host's side. 'Ibe
form of synchroni7.:Jtion is detennined in operalion 285. If it
is <I Ii,st synchronization. then operation 289 follows. In one
embodilllent, ifit is a slow (complete) synchronization (e.g. a
reset synchroniz.1tion), then operation 287 follows. OIl(.' or
more acknow loogmenls are received from the device: the host
n};IY also receive with these acknowledgments from the
Slnlclllrcd data of the panicular dota closs being synchronized. 111CI1 in opcn.(ion 205. the device indicates lhal il is
rendy 10 pulL '111is indic1l1cs 10 the hO;llh':l\ thcdcvicc is (c3dy 5
\0 accept either clk1ngcs or all records depending on Ihe
synchronilJdion Iype which was n~oliatcd. [n response. the

host in operation 207 sends changes or all rl"Cords, depending
on the syncruonir..alion Iype. and the dt".'icc acknowJt-dgcs
(opcmtion 21 1) these da\.1 transmissions from opcrnlion 207
at one or llIorc levels ofgronlliarity as indicuwd above. Then.
in one embodiment. in op<'rnlioll 2 1 1. the device sends a map
",hil:h inuil'alCS the ""hlliunship bClw ..'cn idcmilicrs (ID) fur
each l\.'Cord maintained althe host rclntive to a cOlTCsponding
[0 maintained at the dl'Vice for the .amc Tl'Cord: in an altcrnative cmbodiment. the dcvice may indicnte the map information when it acknowledges the reco rds received froJll the
host computer mther thall as a separate mei;Sagl.' in the protQeol. It will be appreciated that in altenmtive imp[cmentations, the same idemifier may be used, but at least in ccnain
embodiments, it may be desirable to have a distinct and separate 10 maintained by the device lor each record which may
be dilferent than an II) maimained for that SlIme rlXordon the
host, [-Icnce. a Jllap or a rc[ationship between thc corresponding Il)s may be maintained. [n this case, the map iscreatcd by
the dcviceand transminl'() to the hosl.ln responsc to receiving
the l\.'eQrd II) map, the host provisionally stOf\.'S the map
indicming the relationships between a device [I) for a record
and the host [0 for the 5.1me record. After alll\.'Cords Imve
bl'Cn sent to the device , and acknowledgl'() from the device
(and the J"CCQrd mappings have been provisionally stored on
the host), the hosttr:lIIsmits <I commit rl"qul'SttO the device in
operation 21 3 which will c<luse the device to save either the
changcs or all records. depending on thc synChronization
type. from thecUfrent synchroniZation session to its data store
for thc current data class. A[so. in operation 215. the device
will save the ne)(t host anchor. Thcn in operation 2 17. the
deviec responds with an acknowloogcment signal which will
cause the host in operation 219 tocommitthe pul[cd rlXords
alxito save the ne)(t host anchor. The commilling of pulled
records also commits the provisionally Stored map indicllting
the rclmionship between a dl'llicc 10 for a record ;Jnd the host
II) for the same fI.'COrd.
nu~ mc\hod shown in FIG. 5 is repeated for each data class
which is to be synchronized. Whcn nil data classes have been
synchronized, then the host and the device can diseonnlXi.
It will bcappn..'Ciatcd tl41tthe method shown in F[G. 5 may
be impJcmenK-d difTerently in altern.1tive embodimems; lor
e)(ampJc. ccnain opera tions may be omitted and the order of
those opcmtions may be difTerenl. Fore)(ampJc, the tl".msmission of the vl'r;;ion numbers may be omitted or the tmtlSmissian of the [0 map may be omittl'(). FurthemlOre, in an ;thernative embodiment. the order of opera tions may be altered
such tbm the dev ice pul[s clmnges oral[ n.'Cords from the host
first b('fore sending its changes or all records to the host.
Funhennore, the connlXtion may ~ initiatoo by the device
ratll('rth~nthe host and thedevice may perfom} certain operations th;ttthe host performs in the method shown in FIG. 5.
FIGS. 6A and 613 show a flow chart which illustl".Jtes one
embodiment of the operations performed by software components on a hosl. such liS the sync client software component
~s wcll as a data class hatxilcr for a particula r data class being
synchronized in a synchronil..1tion session. 'l1iC discussion of
FIGS. 6A, 613. 7A. and 713 will assume tl411 the software
archiK'Cturc shown in FIG, 4 is uS(.'() in the particular l~llbodi
ment beingdeseribcd for these methods. It will beappreciated
that alternative software architectur~'S n};l}' also be used with
to
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Case: 15-1171
Document: 40
Page: 421
Filed: 03/06/2015
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dL'\Iicca record [0 map which shows the relationship between

the device II) for a n:coru a nd the corresponding host []) Jor
Ihnl record. This II) m<Jp is saved a\ the hOSI by the data class
in an application (e.g. Contacts or Calcndar application). the

applic<ltion Hates these ch:mges in <I Change [li5tory which
can be consulted by thc SyncAgem's Data Source ifit can do
a "fast sync", 11te Data Souree gets the chnnge history (list of
clk1nges since last synchronization) so it knows what records
wcre ch:ltIg,,-d (and can only send over the changl..-d records
instead of all records- in a "filst sync"). and after the syn
chroni:wtion (or when doinga reset or510w sync) it cle<1rs the
c!wIIge hislory (the lisl of changes), so the <lpplic<ltion can
then start building a new list ofch<lngl..>S lor the next synchro
ni:t.ation. Note that t!lI.'re may be a history cursor used to
coordinate between theapplic.1tion and the data souree. sothe
<.h.la soun;e will unly \:kr hi~tury up tu the puim it us"xi
during the synchronization. and the application can add nl..,\\'
entrit:s to the history after that, but those history entril'S after
the point used during synchroni:t...ation will not erroncollsly be
c!e<1red by the Dat<l Souree <lfler synchronization. Change
History may be maintained by Contacts. Calendars. and
Notes applications in m [cast one embodiment. Processing
proceeds from operation 323 to opera tion 325 in which the
device sends a message thm it is rcady to pu ll data from the
host. The synchronization mode is detenninl..-d in opel1ltion
327 , [fa slow/full synchroni:t.ation is to be performed. then all
rI..'Cords in operati on 329 are J\.'<:civl'<i from the host. On the
other hand. if a f<1st synchroni:t...ation is to be perfomled, then
ch:lIlges from the bost arc rI..'CCived for the current data class
and the device sends back one o r more acknowledgmcnts to
the host confirming receipt ofthedat;1. Dneor moreacknow[
edgCllt('lllS may also be tl1lnsmil1ed from thedcvicc tothe host
lor the records received in opcrntion 329. TIlen in operntion
33.'. the devicl.' creates a remapping for added rcoords and
sends dl..'Vice idcntifiers for those rI..'COrds to Ihe hosl. 'J11is
renwpping is typically perfo mled by the da ta source for the
current data class and is transmill,,><i to the data cl<lsS handler
on the host for the current data class, which causes the SOlving
of thc mapping betwccn host IDs for a panicular rL'<:ord and
device IDs for the s:un(' record. llten in operation 335. thc
sync client on the host asks thc sync agent on the device
whether the device can commit to theclwng('S. [f not, the d:l1a
SOll1\:e C.1UseS a rollback 10 th(' prior version of the stroclllred
d;1t;1 by not S<lVing the changes from the current synchroniza.
tion session :md. nfler opemtion 337. processing procl'<.><is to
the next d.1ta class. which in one embodiment may mean that
processing returns back to opennion 305. If the device can
commit to the c hanges. then operation .139 is performed in
which the device sav('s the next host anchor alld commits thc
tl1lnsaction by saving thechangesor~llI records to its store for
the current data class and sends:1 mcss:!ge to the host that the
devicl.' has commined,
F [OS. SA and S13 wi! [ now be rcfer!\..">d to in connection with
embodiments which utilize version identifiers for the datH
souree <1nd the data host handler in detennining whether and
how to synchroni:r.e for a particular d.1ta class the stmctured
data on both the host and the device. After a sync agent on a
device and a sync client on a host have begun synchroni:r.ing,
as in operation 401. the method o r F[O. SA dCK'rmincs
whether there is anOlher dat a class that needs to be synchro.
ni:r.ed and identifies that <1.1t<1 class.As noted elsl..'Wherc. either
the sync agent or the sync client may be responsible for
selccting the ordcrofsynchroni'l-<JtionHmong the V<1rious data
classes. If there arc no d:lta classes leflto synchroni:r.e. then
the synchroni:t..1tion session is I.'nded and till.' device and host
arc disconnected [or purposes of synchronization in opera tion
405 , Ir there arc additional d.1ta class('s to be synchroni:r.ed.
then processing procl'Ccls to operation 407 in which the next
data class begins synchroni:t.at ion by init ia lizing the data class
handler on the host for the sek'Ctcd data class and sends that
handler for the current data cla:;s. '111cn in operation 293. the
host sends a mCSs.1gc \0 the device asking whether it ('311 5
cOlllmillo the changes. If not, then synchronization is canceled. lcaving the device anchors us Ihey were previously.
which indicates an incomplete synchroni7;llion when the next
synchroniZ:tlion process b(:gins. If the device can l.'Onfiml
cornmilnu."nl. it will do $0 in opcmlion 295, which includes
receiving a m('ssagc from thedcvicctlwt il can commit to the
cl1.1ngcs o rll]j recordS.,'\1 Ihis point. inopcrnlion 297, the host
cummits lhe pullt.:d rl'l,:urus by ~Ivillg the ID IlL"P i1 H..'\.:t'iv,,-d
from the device and Sowing the 11!.'xt host anchor, In one
embodiment, saving of the ID mnp (recording remnpping) is
perfoml('(1 only if the commit sucn'is mId the host commits
the pulled records nnd saves the next host nnchor. '111Cn the
host proceeds to the next data class by r('Verting back to
operation 253 in F IG. 61\. It will be apprecinted that in alter..
native embodiments. som(' of the operations nwy be omitted
or additional o perations may be pedomwd and the sequence
of operations may be changed relative to that shown in FIGS.
6A and 6B.
FIGS. 7A and 70 illustrate .1 method which mny be per
fon ned by a device in atlenst certain embodiments to perfoml
synchronil'ation :tt thc dt:vice. ThiS synchronization may
employ the software architecture sl:own in FIG. 4 and may
also follow the method shown in FIG. 5 for the device portion
of FIG. 5. In operation 30 I . thed('vicc waits for a connection
which may be a win.><i connection or a wireless connection.
Once it is connected in operntion .lOl it tells the host that the
dev ice is rC'.1dy for synchroniz.1tion.lbis operation 303 may
be pt.-rformed by the sync agent sofiwnre component of F[G.
4. "[ben in oper..ltion 305. the dt:vice waits for [I r,,-quest to
synchroni:t.c data in a particular d:lta class or disconnect. Ifin
opemtion 307 it is found that it does not have a da ta source for
a particular data class. then synchroni:t.mion forthat data class
will not be p('rformed and operation 307 reverts back 10
oper..ltion 305 for the next data class. Opemtion 307 repre
sents one way in which th(' device supports automatic check
ing of support for a panicul:ir data class ns described ('[se
where in this disclosure. If a data souree for the data class is
found. then a negotiation o f version occurs in operation 309.
TIlis negotimion of the version may occur between the data
source on the device and the data class handler on the host as
described elsewhere and as shown in FIOS. SA and S13. Aftcr
the version has been negotiated in operation 309. thc device
obt:,ins :ulchors from the host and Ixlsed o n those anchors. as
describ('d herein. determincs the sY1lchroni:t.ation1ll0dc (e.g,
full/slow, f;1stlclwIIges o llly, or reset). 'fbI.' operations after
operation 3 11 Scll'Ct one o f the mo(iL-s and proceSl; the data
<1ccordingly.lf reset mode has been sel.:cted, then in operation
315 all rL'<:ords arc marked as clearlxi. It will be understood
that in a t least certain embQdimems. the data is not clearLxl
immediately or deleted immediately but I1lther is marked to
be clcarL">d. [f fast synchroni7..1tion isdetermilll><i to have been
selocll'd ill opel1ltion 3 17. then processing proct....-ds to opera
tion 321 in which changes are sent for the current data cbss
from thc dl'llice to the host. [f slow synchroniz.1tion has lx.'Cn
se]('<:tl><i. then processing procl..'<.><is from operation 3 17 to
operation 3 19 in which all rI..'<.'Ords arc sent from the device.
A.fter sending all records or sending changl.'S on ly from the
dl..-vice or m<1rking the rL"Cords to be cll.'ar,,-d. operation 323
savl.'S thl.' next device anchor at the device and cl('llrs history at
the devicc. Clear history refers to ~le change hi story man
aged. in at least one embodiment. by thc application on the
dl..'V ice and the Data Sonree. As ch.1llges arc made by the nser
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Case: 15-1171
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data da~s h.1ndlcr vcr.;ion Iltullbcr for the curren! dnla class to
the device. Ahcnlalivcly. Ihe dala source on the device may
send its version numbcrto the hosl. Jil opcr31ion 409. the dnta
processing rel'crts back to operation 427 . In some embodiments. the system (host or device) with Ihe higher version
may usc the vcrsion infonnation from the o ther system in
order to take any action nec('SSary to synchronize data to :md
from the syswm with the old version, For example. the "old
system" might use a dilTercnt nmlle for some properties, lind
the system with the itigiterversion can know this and tmnslate
the name back and forth. The older system might represent
some propcrtiesdiITerently. and ifthcy can be trnnslated ba(;k
:md forth the sysll'm with thc highcr version can do Ihat
translation coming and going.
Anothcr aspect of at [mst ccrtain embodiments described
herein rchues tu a rmnlHer ill whidl ;r sufiw<lrc layer fur
creating and mainwining a d1ta connection for one or more
services may be used for each of those scrvices and may
provide an interface to one or more stre:Ull handlers which
implement tmnsport protocols to scnd stnlcturoo d.1ta. files
and other data through a physical interlace. suc h as a wired
USB interface or a BluL100th wirck-ss interface o r othl'rwiccless inwrfaces, such as a WiFi interfac(' or a wirekss cellulM
te1cphone interface. 1be same layer may also provide fo r
encrypwd authentication. and this authentication mlly be a
two-way authcntication which establishes an au tlwnticated
COtUll'Ction throughout the transmission back and forth
betWl'Cll:l device and a host through thc device link connl'Ction layer. '[be software architl'Cture shown in FIG. 4 shows a
device link 107 which may be implemented in the manllcr
shown in FIG. 10 which iliustrntl'S a software architecture in
which layers of softwar{' int"rface with ('lIch oth('r through
tnessag('s orcalls al the interface bl1wccn the software layers.
The software arehiteclllre 450 is shown as having four layers
which include <I device link connl'Ction layer 457, a stre"'.Im
handler layer 459. and stfl'atn libraries layer 465 as well:.s an
upper layer for onc or more applications or servicl'S. such as
a backup application or service or a configur'.It ion application
or !>Crvicc or synchroni7.ation services provided by thc sync
clicnt software compon('1lI and the sync agent software COntponent de!>Cribcd herein. The sync client :Iud sync ag('nt sollware components 454 provide lhe synchronization functions
and op"ra li ons dcscriboo wilh respect to FIGS. 4-813. '[be
application softW:lf" component 452 may b" a b~ckup application which backs updma. includingdma which has not been
synchronized. or a[ternatively a configurntioll application or
one or more other types of applications which need to make a
connection in a secure and aulhentic.11l>d manncr through tbe
device link colUlection layer 457. The stream handler layer
459 ineludes one or more stream 1l.1nd[c~. In the particula r
embodiment shown in FIG. 10. there is a USI3 stream handler
461 and a l3Iuetooth strcam handler 462 and a Tel' str(,:lm
handler 463. 111esc diITerent strc.1m handl"rs implement the
communication protocols :md h:mdJc Ih" stream over the
diIT"ccnt interface rcprl"SCnted by USB or l3Iuetooth o r Tel'
(which lllay be :I \viFi or other wireless interface which
utilizl'S Tep/Ip). ,(bc stream library layer 465 is cal[ed upon
by the strcam IwndJcr to transmit and receive data through thc
panicu[ar protocol representoo by the strcam handler. For
example, the USI3 stream hllndler may mak(' calls to a (Xlrticular group of strcamlibrnries in orucrto transmit data over
a USI3 interface. Similarly, the l31uetooth stream handler 462
may makc calls to one or more libraries in the libraries layer
465 in order to transmit and receive data through a w ireless
B[uetooth illierface. The device [ink connec tion layer 457
provides a unified inledhce to all the stream h..1udlers in the
stream handl('rs layer 459 by 1ll.1king calls to the appropriate
stream handler basLxI upon the cu rrently USl'<i physiclll interface to COIUlcct the device to the host. The device link cont1L'C tion layer 457 includl'S both connection functionality and
source initializ<.'S itselfon Ihedcviccandcomp:lfCs its IIcr.;ion

num1>cron thcdcvicclothcdma cklss h.1ndlcr version number 5
on the hosl. '!lIen in opcwtion 411 , based on the comparison
of the version numbers, it is decided how and whether
\0
synchronizc and whclhcror not nn alcrtIK:<'xls to be presented

\0 the user \0 upd;t(C or upgrndc one or morc dala source
software components or data class handlC'{ components on the 10
user's device and/or bosl. In the method of FIG. 8A. it is

assulll<.>d Ihat Olle system or th e Qthcrsystcm makes a decision
i.ll upcrmiull 411 b" ....oU upon Ille Sl'l of vcrsiull identifiers
which is t:ilh('ron the device or the host but not both. FIG. 813
n:presents an ait('rnMive implem('ntntion in which both systems have both version numbers and Clln perfonn the comparison ~nd ~rrive at the sallie decision. If a decision was
made to synchronize in Op"r:Jtion 411 . then in op"rn ti on 413
the sync hronbjng is pcrfomlcd for the current data class. and
FIGS. 5 . 6A. 613. 7A. and 713 provide e)(amples of how synchroni7~'ltion can be performed for a CUrITnt data class. After
synchronization is complewd. other operations are per
formoo. such as saving anchors for the eUITCnt data elllss in
opemtion 4 15. and the process of FIG. 8A reverts back to
opCTation 403 which has been dcscribL-xi pccvionsly. It will be
appreciated that alternative embodiments of F IG. 8 A may
iuvolve feweroper.ltionsor mOfl'opemtions and may alter the
sequence ofthosc opcrntions in a manner which is dif1crent
th an that shown in FIG. 8A .
F[G. 813 shows an embodiment which ntilizes wrsion idcutifiers for each dm.a souree softwllre component on a device
and for each d.1t~ class handler software component on the
host. III this embodiment, both the IlOst and the device w ill
receive both version numbers and perfOnll the comparison
~nd then decide how and wl1l1her to synchronize for the
current data class. After the ~ync agenl on Ihe device and the
sync client on Ihe hosl have oc-gun synchronizing in op"rntion
425. it is delcnllined in op(,r:Jtion 427 whellwr t!wre are any
dat ll classes that nl'{'d to be synchronized and to select the next
data class for synchroni7 'ltion. One or both of the sync agent
~nd the sync client may pcrfoml this function in operation
427. If there are no further data classes to synchronize. then.
in operation 429. synchronizat ion is ended and the dl'Vice and
host may bedisconnected under software control. If there is a
nextd.1ta class to synchronize, then. in opemtion 431. the data
class 1l.1ndler fortheculTCntdataclasson the host is initialized
and it causes its vers ion nUlllberto bcsent to thedcvice.A data
souree software component lor the samecuITCnt dma class on
the device is also initialized and its Iwsionnumb('ris scm to
the host. "[lIC hosl and the device each compare the two
vendOIl numbers and dl'Cide. based upon Ihe higher version
number. how and whether to synchronize for the curccnt d<lta
dass. [fit is decided to 110t synchronize for the CU/TCm data
class. one or both systems may display or otherwise present
an al(' rt to the user sugg('sting th .. user to upd.'lte andlor
upgrade a software componell1 or ~eveml software compon('l\1s on at lellst one ofth('ir device and the hos\. [n this case.
synchronization for the current data class will not occur and
procl'Ssing rl'Verts back to operation 427. If. on the other
hand. thc higher version number SO ftware component decides
lh~t it is compatible with a lower version number software
component on the other system. theD sync hronii'A1tion can be
pcrformed. Also. if the vers ion numl)(:rs match. thl'1I syncbronizmion can also be perfonlled, In op!:'nttion 435. synchroniZiltion is perfonlled and then in openttion 437 synchroni 7..alioll is completl-xi by. for example. Sowing anchors and
processing other datll for the current data class and then
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llntlK-uticalion and/or encrypt ion fUJK'liOlia lity n:prcs~'nkxl by
nous behavior for all stream handlers (tfllnsports) dOing]/O

between thc device and host , so the transport just has to
read/write synchronously, and DcviceLink 457 manages the
thread control to make it appear as aSYrJchronous to the ,'ppJi cation. so the application never blocks readirJg and wri tingthe application (such as Sync Client on the host or SyneAgerJt
on Ihe device) is notified ofirJcoming d1ta (arJd olher related
things. such as connection/disconnection) vi.1 caJJb.1cks.
DcviccLillk 457 docs all the authoriz.1 tion at the top of the
stream (tfllnsport) layer. so all tnlnsport types which may be
plugged in get authenticmion and encryption without needing
to imple!\lerJt anything special. In OrJe embodi!\lent. Device
Link 457 may Iwve file lntnslcr f'lr.:ilities built ditl..-r.:tly iUlo
DcviceLink's protocol. This may be used for backup, and
other lools (arJd can be USl-d in future applications basl-d on
device link 457). lbe prolocol o f DcviceLink 457 may
irJcludc a function todo efficienltr.msferof a file irJ pieces, so
thm a file docs nol have 10 be read completely in memory at
one time. Further. DcviceLink 457 may provide Unix style
"stat" irJfornUttion (by itself, or with the file), such as the size
of the file and the lastmodilkod date. so the applications can
keep tfllck of the file's state to tel! ifit needs to copy il or not
(this may be useful for incremental backups). Once connected
via DwiceLillk 457, an application earJ use the protocol to
n:.-qllcst infof[)};ltion abollt a file. and to rL"qut"Stthc file itself.
The flIe is sent in chunks to avoid reading a huge file into
memory all al once (on bolh sides). DcviecLink 457 may
provide some default behavior when the file is n:.-qucsted to
just get the file and send it (so Ihe application doesn't rJced to
respond to the eallb.."lek for the request and take explicit
action). although the applicatiorJ can respond if it WalliS to do
custom ll<lndling (and usc its own code ifil wants). Similarly.
when R'CCiving pit'Ct'S of a file. a default callback handles
simply writing the file to disk. but Ihat may be overridden in
some embodiments. Ix:viceLillk 457 may provide a wbite
Jist" of which files (or di rectories) can be requested. and
which files or directories can be written into, so the two sides
can comrol access. Other file copying solutions on the device
may also exist independerJtly of DcviceLink 457; for
example. a media player (e.g. iTurJes) mny provide file copying 1:1cilities: howt-ver. DcviceLink 457 provides cOrJsidcrable inffllstnleture (:Iuthentieation. asynchronous interface.
pari of the existing DeviccLink protocol fo r case of usc by an
appJic.11ion). and has more func tionality then a simple file
copy API (illllis the while lists. and default handling which
can be overridden. and chunks the files).
.'\n example of.."l sequence of opcratio ns which involve the
use of device link connection layer 457 will now be provided.
[n one embodiment. a synchronization initiator (for example.
eithcrSyneAgerJt 109 on Ihedeviee orSync C lient Ili on the
host) will be launched (e.g. by the user or by the system. such
:IS by a Bonjour discovery procL'SS). 'Ibe initiator will then try
to connecl to the other side. The initialOr. through DeviceLink
conneclion la)"er 457. wiIll"SIablish a basic (unalllhenticall-d)
connection, which causes the launching oftbe other application (e.g. if Sync Cliem 111 initimes the process then basic
connection maycallsclhe launchirJgofSyncAgerJt I 090rJ the
dl'Vice: conversely. if Sync Agent 109 initiates the process
then b<lsiecolllil'Ction may cause the l1tunchingofSync C lient
109 on the host). At this point. the fk~iceLink connL'i::tion
layer 45 7 anempts to perform a two-way authcrJtication process, described further herein; if that process succe(.-ds, then
an authenticated connection betwcerJ the host and the device
has been crcnted and the synchronii'..1tion initiator gets a callback from the DeviceLillk cOIlllt'i::tion layer 457thatthe connection was made and tbe connectee applicmion (tlwi was
bunched by the basic connt'i::tion) gets a notification that an
the sublaycrs 456 and 458. respectively. "[be sublaycr 456 is

fi.'Sponsiblc for selecting the particuL1T physk:al interface and
establishing 11 connection through the interface by a uthcnti \0 the device tlnd the 5
devicc to the host, and at the same lime by invoking a p..1rticular slrcmn handler for the selected interface which in turn
iuvokl.:s the appropriate stream librJri<.'S to creale packets or
olher data structures for transmission over the physical interface. "1l1cdcvicc link connection layl.'f 457 may be responsive to
cminS, as described below. the host
10 either 11 user inpullo synchroni7..c or back up orconfigurc a

device. or may be responsive to an autommicdisCQvcryofthc
uwi<.:e Ihruu~h a tt..dUlUlugy sudl .. ~ Bonjour frum Apple
CompUlcr, Inc, For example, docking a device in a dock
which is coupled 10 Ihe hosl may causc Bonjour 10 recognize
Ihm a device has b(,'en docked 10 a hosl and Ihm Ihe user may
desire 10 synchroni'l.c Ihe device, 'Ibis may causc a dispby of
a uscr inlerlaee asking Ihe user if Ihc device should be synchronized, or altcnmlivdy, Ihe device may be aUlomatically
synchronized as a result of placing il in the dock. This will
then cause the sync agent and sync client 10 hcgin a synchronization process as describl-d hercinand 10 also make calls 10
the device link conneclion hlyer in order to tfllnsmi t dma
betwl'Cn Ihe host and the dl'Vice. Calls made by the sync client
or the sync agent in the process of synchroni'l.ation (or calls
made by an applic;ltion such as a backup application 45 2)
rl,.'Sult in the device link connL'Ction layer 457 making software baS(,'d calls or sending other types of messages 10 the
Slream handlers laycr 459. which in tum call particular libraries inlhe stream libraries layer 465. With an architecl\lrc such
as Ihal shown in FIG. 10. the synchroniz.1tion software com
ponents. such as the sync client and the sync ;Igent compo)ICnIS. arc isolated from Ihe Siream handlers. [bus. a sync
agcnt sollware component and a sync client software component do oot need to implenK,ll such handlers. Further. Ihe
device connection layer provides a uniform interface which
authenlicales the device 10 the hosl across Ihree differcnt
physical intcrfaccs and many diffefl'nt stre;lm handlers; this
isolmes the synchroniz.1tion software components as well as
the olher application components from the authentication
software. Hence. iI developer of a synchroniZ:ltion client or a
synchroni'lJtlion agent or a data source for a data class or a
data class h.1ndler for iI d11a class do rJot need to recreate code
(e.g. software program) to implement stream handlers or to
implement authent ication or encryplion or to implemcnt software to creme the connection betwccn a device arJd a host.
Funhennore. by int<'gfllting thc authenticatiorJ and the
encryption layer with thedcvicceonnection layer. all services
which usc the device cOlUK'Ction layer. such as the synchronization seJVices or the application services 452 (e.g. backup
~ppl ieations. configure applications. diagnostic appl icat ions.
etc.), obtai rJ the berJcfit 0 f autom.1lic. two-wily alttherJliciit ion.
in al least certain embodiments. as a result of making calls to
thc device link connection layer 457 which in tum causes
authe1l1icmion and/or encryption to arJY one of the possible
physical interfaces and their cotfl'sponding stlL'llm ll.1ndlers.
'!1IC use of the authenticatiorJ a rJd encryption layer 458 at a
luyer of abslraction between the lransport and the protocol
(stream handler) layers makes the architecture useable by
more llllinjust synchroni7Jllion.
In one embodiment. the architt'dure shown in FIG. 10
provides a nnmbc r of useful features. DcviceLink 457 lIlay
handle all authentication and encryption automatically for thc
~pplicmion (the applicmion tllay merely have to indicate
where 10 find the cenifieatl'S USt-d by the St.'Curity code).
FUr1her. the DeviceLink connection ~uthenticates both the
dt'V icc and the host. Dl'ViceLink 457 may provide asynchro-
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incoming conn('Clion was made; for example. if authentication is successlill and if Sync Client lll was Ihe initiator, then
Sync Client 111 will receiye Ihe callback and Sync Agent 109
is the conncc\cc application. Ifml1hcll1icalion f'lils, the initia
save its private klj'. The host may perform a similar operation
to create a private key Oflhe host and a corresponding public
key o f the host. lbe hosl may also create a certificate for iI
self-created certificate authority and may further create a
public key/private key pair for the certificate all1hority. Each
o f lhe device and lhe host nmy ilK'lude an identifier which
m:ly be a unique identifier for each SYSt(,lll. and each of these
identifiers may be tranSmil1ed to the otlK'r sitk: (device 1D
transmined to host and host 10 tmnSmilled todevicc)Hnd Ihis
identifier is mapped to the saved privale key of a particular
system. In the example shown in FIG. 12. the savlxl private
key of the device 529 for ilS hOSl is mappc<l to the host's JD
which is providlxl by lhe hosl. Similarly. the device' s JD 535
for that devire is mapped 10 the private k('y of the host 5.~ I .
'111e host llIay cre(l\(' a certificate and sign it with a certificille
Hllthorily usi ng the host's public key. o ptionally with additiOll.1J inforlll(ltion. Ibe host Jllay ;lIsa cre(lte a device certificate and sign it with the certificate autho rity certificate and
then may transmitthes(,certificates (537. 541 . and 545) to the
device. These certifica tes call be used in kllOwn techniques.
such as a Sl"Cure socketl(lyer handshake, to provide transport
laycr sectlril), ~lnd to provide a two-way atl1hel11icmion
betWl'Cn the device and the hos1. '11lis (llithentic.1tion tIl.1y be
tlli1ill1aintxl during lhe entire Cotllll"Ction. which llIay include
H synchrolli7..1tion o peration and othc::r operJtions lItili7ing
this authentic(ltlxl connection. In one embodiment, as shown
in FIG. 12. the device haSH mapping betwl'Cn a hOst identifier
and the following: Device privat(' key used for th.1t hosl.
device certificate used for thai host. host c('rtifieate. host
certificate authorilY certifie(lte (USl'd in lhe sclf+signl'd
autlll'lI1icmion). S imilarly. the host Ims a mapping from a
device 10 to th(' following: Host priv(ltc kl'Y USl'd for the
dl'Vic(', host certificate used forthat device. dl'Vicecertificate.
host certificate authority certificate used with that device. '[be
device has a sepHrate device private key for any hosl it eommunic.1tcs with (t he private klj' maps to the device certificate
used with tlull host. and the device has one device certificate
per host). and there is a similar arrangement on the host side.
as there is a separate private key hosl certific.1te pair per
devic('.
tor rcc(,jvcs a cOlU1cclion f."lilcd callback and there is no con- 5

ncc\ion, and the oonn(.'Ctcc willnom13lly exil aflcrsomc lime
inlCrvaL
FIG. 11 illustrn\cs an alternative e>;amplcofthc operations
of a d(.'Vicc link COllfll:clion bycr 457. [n opcrJlion 50 1. a
connection is established. This may be performed by discov-
ering the device. For c)(.(Imple. Bonjour may be used 10 disCOV('f the device, either when connected through a wirdcss
<.:unul'\.:liull ur <I wired <.:unnl'l'tiuu tu 11K: hus!. 111C Ocvj<.:c lillk
connection lay('{ may then dccidc which intcrfacc to IIS(,. and
there may b(' a priority associatl'd with ("Jch of those interfares based upon spl'Cd, security, ~lIld convenicncc. For
example, USB may be the highest priority conn(:ction interface followed by WiFi and fmally l3luetooth. in atleaSI certain
embodiments. After an interface has bt:ell sckcted. then in
op(,rlltion 503 the dcvicc link connl'Ction lay('r p('rforms
authentication belwcen Ihe host and thc device. In aI Icru;t
c('rtain (,Illbodiments. this ~luthentication is two-way. Illeaning that ('1lch of the device (lnd the host ]X'rfonll aUlheHlication
opeT'Jtions with c('rtific(ltes created upon initialization. FIG.
12 shows an example of the collection of certificHtt:s that the
devire and host m.1Y have after initi;iliz..1tion of both in a
mallJl('r described herein. [n certain (,!lIbodiments. authentication molY be optional. Aftcr authentication is performed.
th('n in operation 505 Ill(' devicc connl'Ction layer or oth('r
software may calise the lawlching of a sync client and sync
agent in order \0 hcgin synchronization. While synchroni7..3tion is occurring. the device link connection layer maintains
the conmx:tion. which may be maintained as an mnhentieated
connection. during the synchroniz..11l0n process of structu l'<:d
data in o pcr:ltion 507. In altemative embodiments, the
method of FIG. 11 may be used with non-synchronization
services. such as the bad;up application or configure application 452. In this case. the connection may be mai!Uain~xl.
and it may be an authentica!l'd cOlUlection during thosc services. After synchronizmion or oth('r services (lre complete.
the device link corult'Ction ](lyer may disconnl'Ctthe d...'Vice
from th(' host in software. l'Ven though the devire lllay still be
in the dock of lhe host. [n other wods. the softw(lrc connl'Clion is torn down as a result of ending the synchroni7. ation
procl"SS or o ther process which invoked the dl'Vice link connection layer 457 .
FIG. 12 shows an exampleof data st ructures tuaintained at
both a device and a host after pcrfonning (In initia1i;wlion of
an aU1h('ntication system which provides two-way authentication between the device and the hosl. TIK' aUth('nlication is
encrypted with public kcy/priV'Jte hy cryptography. thereby
providing a hish level of security to allow a dl'Vice to be
synchrollizcd 10 a host Ihrough a ..... ireless interlnce while
maintaining sulficient St."Curity so thm the usc-rean be assurlxl
that olhcr hosts will nOl be able 10 obtain acc('ss to data on
eilher the device bl'ing sYll('hronizro or the hosl. MOJ"COver.
this two-way (lulhentication may"" used for file tr:msf('TS
betwcen the dev ice and the host and for other scrvicl"S (e.g.
diagnostic servicl'S) which utilize the atulK'ntieaced COllJll'Ction. In order to provide a<icqllale SCt:urity, thedevire may be
required to be t'OJIJ}(:ctcd by a wired interface initially ;md the
user may be asked , by the display of Ihe device. to enter a
vHlue. such (lS a large number o r other character string. into
the host. Alternatively. the value may be displayed on th('
display of the host and the usc::r lll(lY be J\.'quired to enter tlmt
value or clk1mCter string into the device. Following this opemtion. the dt'V ire may create iI private and public kl)' pHir and
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FIGS. 13A and 13B relate to an aspect ofat least certain

embodiments describl-d herein. "Ibis aspect involvl'S the ability for one or both of the device and the hosl to have bolh
non-synchronil'..3tion processes and synchroniCliion processes occuning collCl.lrremly in lhat they are both being
executed by one or more processing systems. BOlh sets of
processes or thrc(lds m(lY be in dificr('nt address SP.1Ces. '11lis
allows a userofa device to operote lhe device while it is being
synchroni zed, and similarly allows a uscr of the host to o pcrHte the host while the host is synchronizing with tbe dwire.
For exampl('. ifbolh the dl'Vice and the hostll.1ve thesc capabili ties. tll('ll a user on Ihe device may be viewing a calendar
program which displays a calen<i.1r of the user showing eYl.'niS
and possibly To Do hems for lhe uscr while at the S(lmc time
a synehroniz..1 tion service is synchronizing the calendar data
on the device with ealend(lr data onlh(' host. 'Iltis synchroni l'A1tion may be implemented using the software architecture
shown in FIG. 4 and may further usc the methods shown in
FIGS. 5-713. Similarly. tlK' uscr may use an (lpplicalion program on the host to access (lnd cditthe calendardala or other
structured data fo r other applications while at the same time
the host is pcrfOITlling synChronization opera tions on stmclUred data in on(' or more slores of stmetured data. The synchronization process may be implelllentlxl on the host using
thearchitOC1Ure shown in FIG. 4 and using lh(' methods shown
in FIGS. 5-7B. which J\;Ive been describlxl abov('.
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TIle non-synchroni1..1Iion threaw or procCSSL'S may be
uscr-kvcl or non-user-level threads or proccsses which arc

not synchroni7...11ion tasks. TIl(' syl:chroni7.alion threads or
processes arc synchroniwlion 11lsks pcrfomwd by one or

more synchronizmion software components such as Sync 5
Agent 109 or Sync Client 111 or olher synchroniZ:llion software components. The concurrent e~cculion orthe non-synchronil'.alion threads or prtlC<.'Sscs and the synchroni7.alion
tlrrc:lds or procCSSl'S may occur on one or bolh ortlle device
alx! the host. Operation 575 in FIG. I3 A shows Ihal nollsynchroniwtion thrc.1ds or processes may be p('rformcd on
both the device and the host. In opcrolion 577. execution of
synchrulliwliull SUflWllfC b"'1!.i ll~ un. in (his embodiment. bulh
the device and the host while cxecution ofnon-synchron ization threadsorpro;;esses continues on both thedevicc and the
hos1. In operation 579_ a sYJlchronimtion soflware componenl. such:ls the Sync Agent 109. allempts to acquire a lock
on:l store for:l d:lt.1 cl:lsS which is to be synchronized. Sync
Agent 109 in one embodiment rrmy do this by inVOking the
Unix FLOCK c.1llto lock the file containing. fore)(ample. the
bookmarks to be synchronized. Also in one embodime1ll. jf:l
synchronization soflwarc component accesses an SQlite
database. ifmay not need to acquire a lock as the datab.1se
may handle this function itself. In one embodiment, Contacts.
C ilendars and Notes may be ston.-d iu databas..'S which handle
their own lock ing at a lower level. Also in one embodiment,
Sync Client may not allempt to acquire any locks. Ifthc lock
is acquiri."(]. as deterrninL'd then the synchroni7;ltion component. in operation 58 1_ may notify the application using the data class tlmt
the synchronization componcnt requests the lock and the
synchronizlItion component waits for 1I response. 111e application m:ly receive a response indicating the lock is acquired.
in which case processing proceeds to operation 591 ; olherwise. if the lock is not acquired after thc notific:ltion, thc
processing proceeds to o~ration 583 in which synchronizing
ofthecllrn'l1I data class iscanccled and operation 579 lollows
if further data classes nced to be synchronized (olherwise the
process ends). I f. while synchronizing is being performed_ the
uscr allemplS to change the store for the dat.1 clllSS being
synchronized, the system (e.g. eithcr the device or the host )
may present. in operation 593. an ~Iert to the uscr that the
system cannot :lecept changes until sync hroni 7jng is conlpkted. After synchroni7;ltion for the current d.1t.1 class is
compl"ted. in operation 595. the lock is releused and proc"s~
ing proceeds 10 Ihe ne)(t daw class.lroue still n-'I1l:lins to be
synchronized, or synchronization is finished.
It will be appreciated that in lIitetn1tive ('mbo<lil11cnts. only
one of the host and th" d(."Vice may support concurrent operation of non-synchronization proces>cs and synchronil.atiotl
processcs.
AnOlher aspect of at le<lst certain embodiments described
herein relate to methods and systems for synchronizing bookmarks or favorites on one or both o f the dcvic" and the hosl
when synchronizing SU\lclllred data. The bookmarks of"ariOilS web browsers on each of the device lind the host mlly be
collccted together and stOrL-d in an inteffiledi<lte or callonical
topology which is used to synchronize the bookmarks ;tnd
collections of bookmarks on at least two web brow!iCrs, one
beillg on the device and one being on the host. In certllin
e mbodiments, there may be multiple web browsers opemting
oru!;(."(] by a user on the host and one web browser uscdon the
devicc. TIle il11ermediate topology collects thc variOliS bookmarks from the dilTerent web browsers. aggrL'g111cs those into
the ca nonical topology. and then uses tlwt topology to sy nchronize the bookm;trk stntClllrL'S for c.:tch o f lhe web brows-
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ers on such a system. In addit ion. the synchronizing may a lso

include converting between one 101111at (e.g. a URL d;lla type
to:lllOther format (e.g, a string representing Ihe URL) forcach
o f the one o r more bookmarks in each web browser.
-111e synchroni7.ation of bookmarks on dilTerent browsers
may require a medtanism 10 L'OnVert or otherw ise o:k-'al wilh
the dilTerence in the fonnat of the hiemrchy of bookmarks.
Fo r example, dilTcrent web browsers hllve different dat;t
stnlctufCs for maintaining" hierarchy of 1I collcctionofbookmllrks. Each of these data stmc tures may be considcred a
topology. FIGS. 14A. 1411 14C , and 14D provide ('xamples
o fthosediffcrel1llopologies. The('xanlpleshown in FIG. 14.'\
l1l;ty Ix: lite lupulugy urlhe "eb browser knuwn ..s S .. r.. ri frum
Applc Computer, Inc . of Cup('nino. while the topo logy
sllOwn in FIG. 148 may be the topology ofintemct Explorer
from Microsofl Corporntion, .. nd the topology shown in FIG.
14C mlly be the lopology ofFirefox. and the topology shown
in FIG. 14D may be the topology of a web browscr on a
device, such as a handheld computC!" with wireless cellular
telepllOn(' capabilitiC'S or ot!wr wirelC'Ss imerf.'lCes, sllch as
\viFi. which may be used to access the lntentel and browse
the Inwme1. The topologies shown in F IGS. 14.'\. 14 13. 14C.
alld 14D reprC'Sel11 the topology prior to sYllchroni7A
1tion
among the web browsers. 'nle lopology 625 includl.-'S 1I bookmarks menu 627 and a bookmarks bar 629 as well as one o r
more folders 63 1 which may be lIrl"Jnged in a hiernrt:hy
including folders 632 and 633. TIle topology 637 in FIG. 1413
docs not include a bookmarks menu but docs include:l booktTh1rkS bar 638. Another diff(,fCllce betwccn Ihe topo logy 637
:ilK! the topology 625 is tile c)(istence of bookmarks at a lOp
level in the topology. such as the bookmarks 639 and 640. In
the topology 625, there is no support for bookmarks :.ttthe top
level; in other words. the bookmarks must be w ithin a folder
o r in the boo kmarks menu o r in the boo kmnrks bar. In contrast, Ihe topology of 637 su pports bookm:trks at the top IL-vcl,
such as the boo kmarks 639 and 640. 'Ibe topology 637 also
incluo:k-'s a collection of on(' or more fold('rs which may be
arrangl"-d in a hiemrchy. such as fold('rs 64 1 and fold('rs 642
:ilK! 643 . '111e topology 65 1 is similar to the topology 625
except that bookmarks at the top level. such as bookmarks
639 ;uK! 654, mily be included in the topology 651 but they are
not incluocd or allowed in the topology 625. 1bc topo logy
65 1 includes a bookmarks menu 652.;1 bookmarks bar 653.
bookmarks at th e lop IL-vd. sllch as bookmarks 639 and 654 .
:ilK! a colk-ction of folders containing bookmarks. such as
folders 656 and 657 and 658.
FIGS. 15.'-\ . 158. 15C and 15D show how the booknHlrk
topologies appear alicra synchronizmion between the collec
tions of bookmarks for the diff"rel11 web browsers. '!be d('s'
ignation "A" as bLocn ndded to each reference numemlto
indicate that it is the same ek-ment except aner synchronization_ For ex;unpk-. the bookm;trks menu 627A is the same as
the bookmarks menu 627 e)(cept that it may include additiomtl bookmarks as a resul t of the synchroni1.ationoperntion.
It can be SC(,11 lhat synchroni7. mion has caused the addition of
:I top level folder6 75 w hich may contain lOp level bookmarks
from other topologies_ slich ns the bookmarks 639 lind 640
and 654 . I-icnce. the synchroni7A1tion procl.-'Ss hll s added
11110ther folder to the stnlCtufC 625A 10 (lCL'Onunodate bookmarks lor top level bookmarks in other wcb browsers. Similarly, the topo logy 637 A has now included. after synchroni7A1tion. a bookmarks menu 676 which incorporates the
bookmarks found in the boo kmarks menu 627 and 652 from
the other tWO web browscrs. The booklTh1rks d.1ta stroc111re
shown in FIG. 15D has ococn modifk-d to include a top level
folo:k-'r 677 in order to accommodate bookmarks lit the top
k-vcl from o ther web browsers, lienee. in the example shown
A651
Case: 15-1171
Document: 40
Page: 426
Filed: 03/06/2015
US 7,76 1,414 B2
27
28
in FIGS. I SA. 1513. 15C. and lS D, a synchroni:r..alion proc<.">;s

method. two di!lcrcnt web browsers having two di!lcfCnt
among multiple web browsers has resulted in the addition of
topologies o n the host arc synchronized with a web browser
bookmarks and folders and other dma stnlclufCS 10 the differon thc device. In at !('ast cert ain embodiments. the device's
Cllllopologics in order \0 synchronize the booknwrks among
topology for its web browS('r may be difTerc1l1thnn the first
the dincrcnt web browsers. This synchronil'.<llion was able \0 5 topology and dilfcrcntthan the second topology and thc interOCCUft"VClllhough lhe topologics forlhe bookmark SlnlCturcs
mediate topology.
of the difTercnt web browsers are diffeTCnt. "IlIC synchroniz.
In.1lI embodiment. the system may pcrfOrtllthis synchroing which occum.'<I is a form of synchronization which docs
nization automatically without user intef'Jction and without
not delete a bookmark in one web browser ifil is not pn:sclll
I"(.'questi ng any input from a user. While this may reduce the
in another. "lliis synchroni:r.alion may be implemented to complexi ty rcquin..-d to configure such a system. it may be
through an inlCmtcdime topology. such as 11 canonical topoldesir.lble to pl\.'Sl'nt one o r more user interlaces which allow
ogy. An ex.1mple of such a topology is shown in F IG . 16.-\
n user to S('t preference sel1ings or other sel1ings which indi .lIull)!, with a lupulugy lor a hust's web browser buukmilrk
emc how the synchronizmioll of bookmarks is to be p<'rSlroclUrc and a device's wcb browser bookmnrk stnlClUre. /\
fonlll-d among two or more web browserll.l1te user interface
mapping relalionship is also shown betwecn the canonical 15 725 shown in FIG. 16Dnllows n uS('rtoselect one option from
topology and ench of the other two topologies 637/\ and
thrL'C possible options b)' seiL'cting one of the thfl'C check
665/\. A mapping rciationship is shown by a line w ith an
boxes 727. 729. and 731 . The chL'Ck nlHrk shown in the check
arrow:tt ench end. For example. booknmrl.:s in Ihe bookmark
box 727 indicatt:.'S that a user has sclt:.'Cted the first option
bar 638A arc mapped to bookm.'lrks in the bookmarl.: ba r 692
which sYllchronj".cs the device's boo kmarks to the hosl's
in th('cnnonicnltopology. Simil:lrly,!Op [('vci bookmarl.:s 639 20 bookmarl.:s and the host's bookmarks to thc device's bookand 640 are mapped to the top level folck>r 69.1 in the eanonitrt.1rl.:S: this is considered a two-way synchroni,wtion. lbe
cal topology. Similnrly. folders and bookmarks w ithin those
olher two options arc one-way only synchroniZlltions. In parfolders 64I A arc mapped to folders 694 in the canonical
ticular. if the user had seit:.'Cted check box 729. then s)'l\chro,
topology 690.l3ookmarks in the bookmark menu 691 of the
ni"A1tion would bc perfOrtlled onl), to synchronize from the
canonical topology are mappL-d to other bookmarl.:s 669A. 2S dev ice's bookmarks to the host's bookmarl.:s. If the user had
This mapping relationship allows conversion during synchroselected cht:.'Ck box 731 . then synehroni1.ation would be perni".ation from one set of bookmarks on a device or a hos t to
lormed from the hosl's bookmarl.:s to the ck>vice's bookmarks
another set of bookmarks in anotl:cr web browser on the
only.
device or the host.
F IG. 16E illustratcs alKllher user interface which allows n
FIGS. 1613 and 16C illustra te two methods lor synehroni7.- 30
user to select all web browsers for synehron i".ation or only
ing bookmarks. Opcrntion 70 I of FIG. 16 [3 maps mlenst one
selected ones of the web browsers. If the lIser selects the
booknwrl.: from at least one web browser on:1 host to atle.1St
check
box 737. then synchroni"..ltiou is performed for all web
one of an interm ...-diate topo logy o r a device topology for
browsers on both Ihe device and the hos\. 111e in1L'lfacc 735
bookmarks. For ex.lmple. the tOp level bookmarks 639 and
640 m.1Y be mapped to the intemlediate topology 690 or 35 shows that the user has selected the second option by sck'Cting IhechL'Ck box 7.19. In this C'ISC. the system will synchrodirectly Irt.lpped to the device topology 665.'\ . In opemtion
nizc bookmnrks with booknmrl.:s of selected web browsers on
70.1, mlenst one bookmark from ml~nst one web browser on
the host. and the user has selt:.'Ct ...-d buttons 741 and 74.1 but has
the dcvice is mnpped to at lenst one of nn int('nncdiate topolnot selected buttons 74 1 and 744 . Hence, bookmarks mainogy or the host's topology for bookm:,rks. An exnmpleofthis
tained by Fircfox and bookmarks maintain...-d by Safari on the
mapping mny be the mnpping which occurs in bookmnrks 40
host will be s),nclU'Oni7.ed with booknwrks on the device as n
added to the lOp level folder in the topology 665A. whic h in
result of these selections in the uscr interface 735. 'l1iC selecturn are mapped to the top level bookmarks in the topology
tion of thc bUllon 744 w ill cause an application browscr
637/\. The nl<lpping. inoper.:ltion 701 and 703. may be implewindow to appear 10 display applications on the host to allow
mented by a table or other data structure which shows the
the
user to pick seleclt:.-d applications from the list to include
association between the diflcrent topologies such that syn- 45
in the set of web browsers to be ~ynchroni".cd on the host.
chroni"J,tion may be perfonn('d in operntion 705. In thnt
The us('rintcrface750 shown in FIG. 161' nllows the Ilserto
oper.:ltion. bookntarks nre synehroni7.ed on a deviec wil h
limit synchroni7.:ttion to sck'Cted folders. "Ibis option has not
bookmarl.:s on the host. As [KIted in op('ration 70S. the
been selected as can be seen by the absence o f ,I check mllrk
device's bookmnrk topology may bedifTerent from the host's
topology, and difTercntthan the intcmll-diate topology as is 50 in the check box 75 1. If the user docs selec t cht'Ck box 75 1,
then one or more browser windows may be caused to appear
slKlwn in 1'10. 16A.
to a!l()l.\ a uscr to browse through windows containing lists of
'niC method of FIG. 16C assun:es that an inteJlllediate
various bookmarl.:s and bookmarl.: folden. and bookmarl.:
topology is used and that there is a mapping betwC('n eneh of
bars on a syStelll. It will be appreciated that each of these user
the web browsers and the intenn(.'{/iate topology. It will be
und('rstood thnt at least in certnin ('mbodiments, the host or 55 interf:lCcs may be used individually or in combination to
nllow a uscr 10 co nt rol how bookmnrks arc synchronized in at
the device lllay maintain a complete daw Slntcture of all
least certain embodimen ts describl-d herein.
bookmarl.:s in the intennedh,t(' topolog)' which can then be
FIG. 17 relates to another as]X'Ct of alleast ceria in embodiust-d to upd1te the bookm'lrl.: stnlcture of each web browser.
ments described herein. 'I1tis aspl'Ct relates to the synchroniIn opera tion 715. first booknmrks in a lirsttopology for a first
web browser on a host arc mapped 10 an intermediate topol- 00 "..1tion of setup information for one or more elcctronic mcssage system <lccounts, such as an email account or an instant
ogy which may be maintained on the host or the device. In
opcrntion 717, second bookmarks in a second topology for n
messaging account. This synehroni".ation may be performl'()
second web browser on the host are also mapp(.'d into the
in a one-way din..'Ction Ii-om the host to the dt:.-vice r.llher than
intermediate topology. Th('n in opcrntion 719. the first bookin both directions. MOTCOver. in at least certain embodimCiUS,
marl.:s and the st'COnd booknlarl.:s on the host arc synclU'O- 65 modifications made to a n accOlmt setup inform.1tion on the
nizl-d with third bookmarks on a device which is coupled to
host ma), not be reflected on a previously set up account
which has been established and is existing on the device.
the host during the synchronizing period. In this particular
A652
Case: 15-1171
Document: 40
Page: 427
Filed: 03/06/2015
US 7,76 1,4 14 6 2
29
30
The flow chart of FIG. 17 provides one example of now

account infonn.11ion may be synchroni1-'!d. FIG. 18 shows a
memory structure orlhe device and a memory stnx.:lUrc of the

host wilh respect to ('mail account setup infomlalion. The
mcthodofFIG. 17 maybcgin inopCfalion 78 1 inwhichadata
processing system receives setup iDfonnalion for an cm.1il
account (or for other types of electronic message systems).
lbis infonn.1lion is n.'ccivoo o n the device and may be for an
aCCQI,UlI ~A."Thc selUp infomlalion 791 may be an example.
in FIG. 18, o f such setup information. In opcr.ltion 783. the
hosl may rocl';\,C infom411ion to ~I up an email account
\\ hich lIlay bcuccounl "13" and is shown as setu p infomlalion
1 9.5 In 1'10. HI. SyU<.:hruni ...... lion 111"1 Ul;~ur allcr ..:sl<lblishiug
It connection bctWt't."I1 the dev ice and the host as in o!",rolion
785. During the synehroni7..ation oper""Jtion 787. account B.
which wns eSlablishl.-d on Ihe host. mlly be synchroni7.cd as a
rH..'W account on the (k.'vice. The synchroni7A11ion rn.1y be a
one-way synchroni711lion in al1cast one elllbodiment: this is
rt'PfCSenK-d by Ihearrow 790 shown in FIG. 18. In Ihis C.1:>C.
Ihe email account which was sct up on lhe d('Vice is not
synchroni7..l-d back 10 the host. In Ihis em bodiment. lhedevice
e nds up hav ing a sUlx'rset of the emai l aecoull1s.1bis may be
desir-tble in Cll:>CS Whl'f"C lhe user pwfers grc:ner privacy on
Ihe device than Ihe hos1. for example.
It will be apprccintl-d Ihat in altenl.1tive embodimellls. Ihe
dircc tion ofsynt"hronizalion may be reversed such lhat il is
from the device 10 Ihe host and nol from Ihc hosllo thcdc\'ice.
In this case. any accounl selupon the dcvicewill be syochroniz...>d Dnd established on lhe host. bul not vice versa.
FIGS. 19. 20. and 21 relate 10 another IlSpccl of at leaSI
certain embodiments described ben.";n. 'Ibis aspect relates to
how not ...'S may be synchronill-d. In ot least certain "'"11l.bodiments. a note. whieh is typically a lext f",'Cfoml document.
may contain other infonnalion. su,h as image data. audio
data. movie d:na. luld even To Do items. 'Ibe 10 Do items may
be emoc'(\(k-d within Ihe note and may be created as part o f
creal ing the note. Whcllthc note is synchronized. Ihe To Do
item is also synchronized in a separate To Do dawbasc in al
least ceJ1ain embodimcnts. Funherinfonnmion in connection
wilh nOles lwving l.'llIbedded To Do ilems may be found in
co-pl.'nding U.S. palent applic:llion Ser. No. 11 /499.009. filed
on Aug. 4. 2006. tlnd entilled "Mclhods and Systems for
Mllllllging '[0 Do Items or Not ...'S or Electronic Messn."es:"
Ihis nppliclllion is hereby incorpomlL-d herein by ",'fcrence.
FIG. 19 shows one excmplary method for ~ynchroni"l;ing a
nOle wh ich conlains oneor more embedded 10 Do's on either
a host o r II device. '[be nOle ilsclf may be lrealed as one data
class. whi le the To Do item w ill be lrealed as. in nlieasl cellain
embodimenls, anOlhe-r d11l1class. [fthe archilcctureof FIG. 4
is utilized. lhen a ponion of Ihe nOle is synchroni7.A.-d for Ihe
d.1tn souree and the da tll c!:Jss hand ler for the note store while
another ponion o f the note is synchroni7.cd wilh another data
s tore and anolherdata class handkr for the To Do dala class.
Inan altemati\eembodimenl. the note ..... ith an embedded To
Do m.1)' be synchronized to merely one database or store
mlher tlt.1n IWO Ihroug.h theuseofonlyone pairofa dala store
and n dala class handler. In opcrotion 811 . Ihe note with an
embedded To Do is SIOrt-d on a host or a device. 'Ibis will
cause the updating of a To Do database on the hoSI (or lhe
d ....... ice) in opermion 813. Wh ..., 1 s)llchronization ()Ct;Urs in
operation 81 5, Ihe nOle d.1tab3se on the oc'Vice is syochronized and Ihe To Do d.1labase on Ihe device is also syrx:hronized. Iflhc nOle was stOI\.-d on the device in oper""Jlion 8 11 .
Ihenlhe nOle d:tlllb:tseOn the host is syrx:hronized and the To
Do datab.1~eon Ihe host is synchron.iR-d in opemlion 815. In
this rlliUlncr. different parts orlhe nole are synchroniz...-d to
two diOcrent d.11:! stores.
10
15
20
25
}O
40
45
SO
55
60
65
FIG. 20 provides nn example of how an embedded note

may be created. In opcmtioo 825. a system. such as a device
or a host. l\.'CCiws contelll oflhe note. This COnlelll may be a
frccform text document but may also include image data. such
as a picture or other gr""Jphics. 1bcn in operalion 827. the
system fCCeiVes a sclc<:tion of a eomnt.1rid to crcale a '10 Do
i"",11 from at kast a portion o f Ihe contelll of the oote. 1bis
selection lIlayoccur. in ecrt.1in embodiments. before fCCeivinglhecomem. TIlen inoper""J tion 829. .1 '10 Do item is added
10 a '10 Do d:ltUb.1SC. 'Ibis nl'W 10 Do item may optionally be
prt'SCnted 10 Ihe user in II To 1)0 window o r other user interfllce
ilem.
FIG. 2 1 shows lin example of how a nOle or olher type of
slnrclured datn m(IY be synehroni7.cd or no! depending on a
filter. In the etlSeol'll note. the fiiter may be lhe sizeofthe note
to prevenlthe systems from anem pl ing 10 sy nchronize n very
large note which cont ains eilher a 101 oflext or image dnln. In
opera tion 84 1. " cOlu ....'Ction is ...'Stablished to synchronize
notes on II oc'Vice 10 nOles o n II host. [n operation 843. il is
detenlli ned if a sYllchroni;wtion filtcr for nOles has been SCI.
either by Ihe syslem . such as a defau lt. o r by Ihe user. As
synchronizalion is perfonmxl. operalion 845 is also performed for each nolewhich is to be synchronized between the
host mid Ihe (\L'Vice. 'Illis opcr3l ion involves delen nining
whetheror nolthc note sal isfies the filtl.... lnom: embodiment.
the filtcr may be a maximum si?.c of the 1I0te. If Ihe IIOte
exCCl.'<.Is Ihenlliximum Si7.c.then it will IIOt be synchronized or
only tex t ponions will be synchronized. This is shown in
opermion 849. lr the nole docs satisfY !he filter. lhen it is
synchroni/..l-d DS shown in opcrntion 847. This is repeated for
each nole ..... hich is 10 be synchronized. In anolher embodiment. r""Jther thnn not s)'nchronizing lnrger notes at all. a
melhod may synchronize texl andfor o titer small portions of
soch hilger no ....'S mid include nn indicator or marker in the
synchrollized copy (which h1ls tK.'Cn reduced in size by the
removal o f the image or olh ...... d.1ta) lhat a ponion of the
origin.11 note (e.g. the image datn portion) has IIOt been
included in the synchronill-d copy. In this way. synchroniwtion of at leas t a ponion oflargcr notes can slill be perfOnlled
while filtering out. in thc synchroni7.alion process itself. Ihe
larger puns oflhe oole.
Anolher asp ...'Ct o f .. I lenst certilin embodiments re lale to
trnnsfOn nations 0 f dat a as p:trt oft he synchroni7.at ion process
betwl'ClI Ihe hosll.Ind the device. ExamplL'S of these trnnslormations include: convcrtingda tll types such as a URL toa text
string (e.g., in syochronizing boo kmarks) oreonvening d.11e
fOnlmts forcalendHcvents orconveningconlacl im..1ges. etc.
In each case. the device alld the hosl may use .1 different
fOfll41t: forexnmple. Ihe dl'Vice may use .1 first date formal for
calcnd.1reVCnISalid the hosl may use a second dale format for
calcnd.1r",,,,ents. In one embodiment. the !)ata Class Handler
for 11 data class on the hosllIlay perfonllthe IrnJlsformations
for that dala class for both the hosl and the device as noled in
Tnble D. In otl1l.'rcmbodiments. the Data Soureeon Ihedevke
fora data class and the Data Class I ialid ll;'ron the hosl for that
data class lI\lIy shan: the tasks of lr""Jnsfonlling between formats for thai d1ta class.
FUJ1her inronl\3tion will now he provMk-d wilh rcspcctto
lransfonllation o f im.1ge fonnats. For l'Xarnple. the device
may support eontacl images (e.g. for 11 con tacts or address
book application on the device) having a richer (e.g. more
varied) fOnllat Ihan conlact inmgcs (for contacls or addn.'Ss
book appliealion o n Ihe host) on the host. Furthcr. lhedevice
nmy ston: pre ... iou~ly clipped versions of an image and previously scnk-d versions of images for a eontacl so it can
displ ay them quickly.
A653
Case: 15-1171
Document: 40
Page: 428
Filed: 03/06/2015
US 7,761,414 B2
32
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On the host. (here may be just onc srrml1 image for :I
contact's picture. "111is irnagcC<lll be f.1irly large if SCI via API
(Application Progmm Interface) from another npplicalion.
but ifcreawd in a contacts or address application on ~l hos\. il
may be small. and ifil iscrcatcd from an origin ... ! image thai 5
is larger, Ihal original inmgc is lost. In conlr-lst. on lhe device.

in one embodiment. the original image which was lISed \0
creale a conlnel image may be maintaim:d in its entirety. For
example, a uscr C'1ll pick images from a photo or camero
application and apply them as 11 contact's image-these can
be any size. so the user may choo~ the visible area or the
image to IISC. and Ihm visible nrc..1 is. ifncccssary. iiCalcd (e.g.
s\:;dcu duwn) su i1 fils un the S<.:r<.....:n 111<: dcvi<:c Ill"Y sture II
clip rocwngle which thc user chooses (though somc user
interf<lCe) to choose the portion ofll13t image to bedisplayed.
11\C device may also store clipped and scaled images for a
roclangu11lr-sized and squ;lrc-sized image. The roctangu11lr
image may be Ihe size of lhe !;CrL'Cn. and lll.1y be shown on an
incoming call. 'nlc square imagc may be shown scaled down
even smaller as p.'lrt of the contac!. and used in situations
whcre thl'rc is only some orthe !;CrL~n (a square area) which
is available to display Ihe image. In one embodimelll. when
the user chooses the clip recwngle. thc user intcrface shows
how Ihe rect:mgular and square images will look. If the user
wants 10 rcgenemle whalthe dL-vice displays. the user will. in
this embodiment. sti111l<lVe Ihe original image, so the IIserClin
go back to the original image and choose ano thl'r clip rL'Ctangle, and regenerate Ihe sawd images in rectangular and
square sizes and shapes.
Synchroni7.:Jtion of contacts/address book. al least in one
embodiment. includes synchronizing the imagl.'S in the con
t<lcls/<lddress book <IIld this include:. synchronizing the clip
rect;\Ilgle as well as the original in:lIge. 'l1lC synchronizing
proCL'SS may also h.we to rL'generale Ihe opti mi zed images in
certain caSl.-'S, slich as if Ihe lIscr changes the image in their
Address l300k on Ihc host. or iflhe llSer gets an image from a
device and synchronizes it to another dcvice (e.g .. the user
gets an image from a device with on~ sized sCrL'Clland wants
to sYllchroni7.e it to a device with a difTerently sized screen).
11\C Daw C11lss Handlcr may. in one embodiment. clip/scale
new/ch:lllgcd imagl'S when synchroni zing them onto the
device because that may be faster thml having the device do it
(and Ihe dwice may also be memory constrainL-d. Because
there might be more than one dcvicc synchroni7jng the same
conlact images, and those dl.vices could llowe dillhenl sized
displays. in onc embodimelll, sep~rate clip recwngles arc
saved for each unique device display size, so an image can be
clipped difTerently on one device with a dillcretll si7.e than
another device. TIlC Data Class Handlcr in one embodimcnt
manage:. kceping track ofthedillcrclit rt'C1<mgles (since eaeh
device will only know abou lthe OllC reclangle Ihal matches its
scrccn size). l'orexample. if a d(.-vicehas 320x480 screen. and
a contact image is originally 1024x800. thc sYllChronization
procl.'Ss Slores optimized images for the enlire scft.'Cn (320x
480) and a squ;lre 320)(320 representation as well. 'Ille user
can pick the clip ft.'Ctangle Olll Of lhc original imagc which is
then !;C:,led down to 320)(480 (and the device cuts out a
32Ox320 part), and Ihis is synchronizl-d 10 the host . [f the
image changes on the host, the synchronization proeL'Ss
(Ihrough the ]).11.1 C lass I [andler, for example) rt'Computes
the 320)(480 and 320)(320 images for the dl'Vice. If a new
image is synchronized 10 a dcvice wilh a ditTercnt size, if the
origin.1I image is still la rge cnongll 10 con'r Ihe sereen. the
synchronizMion proc('ss, in onc embodiment. will find the
c('nlerofthe image in tllC clip area for one ofthccxisting clip
rectangles (for the other si7.e device screen). and expand!
conlraClthe clip rl'Ctangle accordingly 10 filthe difTerent size
to
15
20
25
30
35
40
45
50
55
00
65
(e.g. larg('r size) SCr\.'Cn. If the new device 1l<IS a snmllcr

scrccn. the synchronizing process may mercly scale Ihe
imagc down to that si7.<'.
Another as[X.'Ct of at least cel1ain embodiments relate to
framcv.'orksand archite<:turc fo r synchronizing widgets. Gene!"a11y, widgets are user interface clements thm include informMion and one or more tools thM l('tth(' us('r pcrfonn tasks
:md!or provide access to infonn.llion. Widgets can pcrfonll a
variety of tasks. ineluding. for example, communicating with
a remOle server or olher source ofdata 10 provide infonnalion
to a user (e.g .. weMher report: stock prices: sunrise/sunset
times: curfCnl phase o f Ihe moon: currcnl cxchangc rales:
ctc.). providing commonly needed functionality (e.g .. a cal
culator: a calendar: a clock: C1C.), or acting as an infonlHltion
reposito!)' (e.g., a no tebook). Widg(.'1s can be displayed and
aCCL'Ssed Ihrough [Ill environment referred to as a "unified
interest layer," "dashboard layer;"'dashbo<U"d environment,"'
or "d<lshboard:' Widgcls and dashbo..1rds arc described in
co-pending U.S. patenl applica tion Ser. No. 10/877,968,
entitled "Unified [nterest Layer for User Interlacc." filed on
Jun. 25. 200t which palenl application is incorpomled herein
by refcrence in its cntirety.
Widgets on a device may be synchronized. using any one of
the embodimcnts descrilx-d herein. with widgets on a host or
:U1other device. The sy nchronization may be one-way (from
device to host or another device only or from host or another
device to dl-vice only) or two-way. In the case of two-way
synchronizations, both systcms will nonnally end up with a
common!;C1 of widgets. assuming both systems can support
the full. common SCI of wid gels.
Widgets may be treated, at least in certain embodiments, as
another dMa class and may be sy nchronized using the architl'ClufC shown in FIG. 4 and d(.'SCrib,:d throughout this disclosure.ln one embodiment, a Dala SoufCe forwidgcts may exist
all:! device:l.lld a ])~ta Class l-I:mdler forw idgcts may exist on
a host. Theexl.'Culablc software which implements tllC widget
(n.'lY not bc synchronized bm theconfiguralion scl1ings forthe
widget may be synchroni7.ed between a device and 11 host or
between a device and anothcr device. E.'lch widgct on a system may have configu{;l1ion sellings and these sellings may
be ston.-d as OtlC filc for a particular type of widgct. For
example, a wC<1lher widgel may l101VC sellings which specify
thre\) ci1ies (e.s. SoUl Fr.mcisco, Los Angeles, "nd Washing
ton. D.C)and those sellings arestOrL'(] as one fileor ft.'Cord fo r
purposes or synchronizmion.
[n the tOfl.'I!,oing specification. the invcntion Ims bl.'Cn
de:.cribed with reference to specific exemphl!)' embodimems
thereof. It will bc evidcn t1hat various modifications may be
made thereto without dep11l1ing from the broader spirit and
scopeoflhe invenlionas set forth in the fol1owingcl;(ims. '[be
specificalion and drnwings are, accordingly, to be n.'grded in
an illustrative !;Cnsc mther than a restrictive !;Cnse.
Wlloll is claimed is:
I . A machillC implcmented mcthod comprising:
executing at lellst one uscr-levclllOn.synchroniz.1Iioll pro
cessing thrC<1d. whcrcin the at lC<1st one user-level nonsynchroni7.:Jtion processing Ihread is provided by a user
application which providl.'S a user interface to allow a
user to aCCl'SS and edit slructurL'-d dala in a first slore
associated with a (l~t databasc: and
executing at leaSI one synchronization processing thn.ad
concurremly with th(' exc<:u ting ofthc at lC<1st one userlevel non-synchron ization processing tlucad. wherein
the at least one synchronization processing thread is
provided by a synchroni7..<Jtion software component
A654
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Document: 40
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US 7,76 1,41 4 B2
34
33
which is configured 10 synchronize the structured dala
from Ihe first database with Ihe structured dnla from ;\
second dalab.'lsc.
2. "111e melhodas in claim I. wherein the lirst database is in

on a first dm3 processing system. and whcl1.'in the at least one 5
user-level non-synchronizmion processing thread includes
opcr.llions 10 access the lirst dmabase which is synchronized
by theal le'ISI one synchronization processing lhr<''3d wilh the
Sl'COnd d.1lalmse on a second dJla processing systeill.
3. "[be method ,IS in claim 2 wherein the first dala process- 10
ing systelll is a host and Ihe socond daHl processing system is

n h:Uldhcld device.
4. "1l1e method as in claim I wherein the synchroniwtion
software component acquires a lock on the fitst slore.
5. "111e method ns in claim 4 wherein the lock isa FLOCK 15

Unix command.
6. "[be method as in claim 4 wherein the synchronization
sofiwarc componcnt relea$(.'S the lock afier synchroniz.1!ion
for a tirst dma class is completed.
7.1be mcthodas in claim 6 wherein the fin;t and the second
data processing systems Me synchronized in a p(X"r-to-pccr
manner.
S. The method as in claim I wherein the synchronization
software component aUemplS to aquire a lock on the first
store, and if it fails, the synchroni;wtion sofiware component
sends a mt'SSHge to the nscr Hpplication to obtain the lock on
the first store.
9. '1l1e method as in claim 8 wherein the synchronization
software component cancels synchroni7. mion for m least one
data class if the userappliemion fails to release thc lock on the
first store,
10. The method as in claim I wherein the synchronization
software component is configured to synchronize structured
dat <l ofa first data class and OIher synchronization sofiware
components are configured to synchronize structurtxi data of
other corresponding data classes.
II . A eompmer readable storage medinm containing
cX(X"lI!abJe program irlS!nlctions which wllt;'n excclUed cause
a data proc<'ssing system to pcrfonn a method comprising:
ext'Cluing m least one user-level rlOn-synchronization processing thrt:ad, wherein the at least one user-lcvcinonsynchron i 7~1tion processing thread is providtxi by a user
application which providL'S a user interface to allow a
user to ;recess and edit stnlc!Un:.xi data in ;r first store
associa!Lxi wi th a first database: and
cxcclUing m l<'ast on<' synchroni7.mion proc<'ss ing thread
concurrently wilh the <,xccutinjl, of the atll.'ast one userlevel non-synchroni7..ation processing thread. wherein
the at Ic-dst one synchroni7..1tion proct'"Ssing thre;ld is
provided by a synchronization software componl.'nt
which is configured to synchronize the structured data
from the fltSt database with th\: stmcturcd data from a
second database.
12 . lbe stomge medium as in c1.1im II wherein the first
database is in on a first data processing system. and wherein
the m least one user-lt'Vc1 non-synchroni7..<ltion processing
thre:ld includc-s opcmtions to access the first database which
is synchronized by the at least one synchronization proccssing thread with the st'COnd dmabase on a st'Cond data processing system_
13 . The stomge medium as in claim 12 wherein the first
dat a procL'Ssing system is a host and the SL'Cond data processing systcm is a handheld device.
14. The stomge medium as in claim J 1 wherein the synchroni:Wlion sotiware component acquires a lock on the frrst
store.
20
2S
30
35
.,
45
50
55
00
65
15. 'l1lC stordge medium as in claim 14 wherein the lock is

a FLOCK Unix command.
16.111e storage medinm as in claim 14 wherein the synchroniz.1Iion softwar<' component rele-dot'S the lock after synchroniz.'l\ion for a fin;! d.1la class is compktro.
17. '111e storage mtxiium as in claim 16 wherein the frrst and
the socond data processing systems Me synchronized in a
pL'Cr-tO- lx."er manner.
18. 'I1te storage medium ..s in claim II wherein the synchroni7;ltion software compon<'nt allempts to acquire a lock
on the firs t slore, and if it fails, the synchroni7..1tion software
component sends a message to the uscr applicat ion to obtain
(he luck un Ihe frnl Slure.
19. -l1le slomge medium as in claim 18 wherein the synchronization software component cancels synchroni7..<ltion
tor m kast one data class if the user application fails to release
the lock on the first store.
20. TIle stomge medium as in claim II wherein the synchroni7,,'ltion software component is confignred 10 synchronize structured data of a first daw class and olher synchroni7;J!ion wftware componelllS arc configured to synchronize
stnrctured d.'l!a of other cotTl.'"Sponding data classes.
21 . A dala processing syslcm comprising:
means forexL'Cllting at least one lIser-level non-synchroni7,,1tion processing thread that includes means for accessing structured data in a first store associattxi with a first
database: and
means for exccuting atlcast one synchroni7..1tion processing thread concurren!ly with the exccutingoflhe at least
one user-level non-synchronization processing thread
that incluck-s means for synchronizing the struclUrcd
d;lta from the first dmabase with the struc!Urtxi d.1ta from
a S<.'COnd dmabase,
22 . '[be system as in claim 21 wherdnthe first database is
in on a first data processing system. and wherein at least one
uscr-levcl non-synchronization processing thread includes
operations to access the first database which is synchronized
by the at least one synchronization processing thread with the
socond datab.1sc on a st'Cond data processing system.
23 . A machine implemented melhod comprising:
ext'Cuting at lCilst one non-syncltroni7..1tion processing
thread wherein the at least one non-synchroniz.1tion
processing thrc;rd is provided by a user application
which provick-s a user interfhee to altow a user to access
and edit stnrctnrro data in a first store associated with a
firsl datab.1se: and
exccu ting lH teast one synchronization proc~'Ssing thread
concurrently with the cxt'Cliting oftlte at least one nOIl synchronization processing thrend. wh<'rein the at kasl
one synchronization processing thread is provided by a
synchroni7..ation software componl'nl which i~ configured synchronize the stmcturcd data from the first datab.1se with the structured d.1ta frolll a socond d,1labase.
24. The method [IS in claim 23 wherein the first databusc is
in on a firsl data processing system. and wherein the at kast
one non-SYllchroni7..ation processing thread incJlIdc-s opemtions to [ICCCSS the first database which is synchron ized by the
;(tl(:;lst one synchroniz.1tion processing thre;ld with the second datahase on n second data processing systcm.
25. lbe mc!hod us in claim 24 wherein the first data procL'Ssing system is a host and the st'OOnd data processing systelll is a handheld device.
26.1be method as in claim 23 wherein the synchroni7..ation
software compone!l\ acquires a lock on the first store,
27. A compUlcr readable stomge mroiulll containing
exccutable program instructions which when execllwd cause
;r data process ing system to perfornl a method comprising:
A655
Case: 15-1171
Document: 40
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US 7,76 1,41 4 B2
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35
executing a\ !cast one non-synchroni71ltion procClising
thread, wherein the al least one non-synchronization
processing thread is provided by a uscr application
30. 'n le Storage nJl.:dium ns in claim 27 wherei n the syn

chronil'~1tion software component acquires a lock on the first
Slore.
which provides a uscr imerfacc 10 allow a llser \0 aCCl-'Ss

and edit smlcmrcd dma in (l first Slore associated with a 5
finn cL11:lbasc; mid

cxcclUing at leasl one synchroni7~1lion processing thread
concurrently with the cx(''CulinJ!, oftbe allcas\ one useflevel non-synchroni7~1Iion proccssing thread, wherein
the a t least olle synchroni7.1IIi()n proct.'Ssing th read is 10
provided by a synchroni71ltion software component
which is configured synchrolli,.c the SiOlCiUrL'<i dma the
31 . A dma processing system comprising:

mealls for executing at least one non.synchronil';ltion processing thre;ld th:lt includes
means for acc(."Ssi ng stmctured data in n first store associated with a fiISt dntabnse: :llId
means for eXLt;uting at least one synchronil'''ltion processing thrend concu rrently with the eXL'Clltingofthe at least
one non'synchronil';ltioll processing thread that
includes mcnlls for synchroni.dng the struCtured dntn
from the first datnoosc with the structured d.1UI from n
SL"<:ond d.;lt abasc.
finsl Il;lwbm;c wilh the s\nlclurcu lima from" SI....;UIlI.I

dowbasc.
28. lbc slornge medium as in claim 27 wherein the first 15
database is in 011 a first dma processing system. and wherein
32 . lbe system as in claim 31 wherdn the first database is
the at least one non.synchronil'A1tion proc(."Ssing thread
in on a first d1ta processing system. and wherein at least one
includes opera tions to access the fi~t database which is syn
non-synchronil';ltion processing thread includes opemtions
chronized by the at lcast one synchronil';ltion processing
thread with the second database on a second dma processing 20 to access the first dataoose which is synchronil'~ by the at
kas! one synchroni:wtion processing thread with 11K' second
syswm.
d1tabasc on a second d1ta processing system.
29. lbc storage medium as in claim 28 wherein the fi~t
data processing system is n host nnd the second dmn process
ing system is a handheld device.
A656
Case: 15-1171
Document: 40
Page: 431
Filed: 03/06/2015
UNITED STAT ES PATENT AND TRADEM A RK OFFICE
CERTIFICATE OF CORRECTION
PATENT NO.
APPLICATION NO.
: 7,761 ,414 82
Page I of I
: 111650624
DATED
: Juiy20, 2010
INVENTOR(S)
: Gordon J. Freedman
II is certified that error appears in the above identified patent and thai said Letters Patent is hereby corrected as shown below:
In column 2, line 14, delete "spncmlindex. html ." and insert -- syncmlindex. hlml. --, therefor.
Ln colunm 6, line 48, delete "ipod," and insert -- iPod, --, therefor.
In column 33, line 4, ill claim 2, after "claim I" delete "," ,
In column 34, Jines 51 -52, in claim 23, delete "configured synchronize" and insert
. configured to synchronize _., therefor.
In column 35, line 12, in claim 27, delete "configured synchron ize" and insert -- configured to
synchron ize _A, therefor.
Signed and Sealed this

Twenty-second Day of Nove mber, 20 11
David J. Kappos
f)ir~ClOr
A657
oflhe UnilcJ SI<J/es PM"" , anJ Trade",,,,"k Office
Case: 15-1171
(12)
(54 )

1111111111111
Filed: 03/06/2015
1111
(tOl Paf cnt No.:
C haudhri ef al.
(45)
UNU)CK ING A IlEVln : R" .. J:RFORMING
US 8,046,721 B2
n ate of Pa lent:
*OCI. 25, 20ll
(56)
GESTURES ON AN UNLOCK 1i\'L \ GE

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5,465,084
5.559,961
5,677.710
5,821,933
5.907.327
6.151.208
6,160.555
6. 192.478
6.249.606
Inventors: hn ran Cha udhrl. San Fnlllcisco. CA

(US); Bas O rding. S;.m Fr.mcisco, CA
(US): Freddy .'\11 (>11 ,\ nzu rM , San
Francisco, CA (US): Marcel Va n Os.

San Francisco. CA (US): St('ph(, 11 O .
Le m ay, San Francisco, CA (US): Scott
t' orshlll, Mountain Vic-w. CA (US);
Grtg Christi.>, &Ul Jose, CA (US)
(73)
(
A
A
A
III
~I
11 / 1995
9/ 1996
10/ 1997
1011998
91999
1112000
1212000
21200)
61200)
Cotlrell .................... 340/825.31

monder ................... 395/1)(8001
ThompsooRoh,lich ..... 3451173
Kdi<:rcl a1. .................. 34 51348
O!:,llfaetal . ....... ........... 3451319
Bartlett ....... ....... ........... )61/683
Kanl!.,t aI . .................... ) 451358
Elledge.
............. 7131202
Kiraly et aI ........ ........... 3821195
(Con1inu(.'1l)
..\ ssignee: t\ pple [nc., Cupertino, C\ (US)
Notice:
A
A
A
FOREIGN PATENT [)()CUMENTS
EP
Subje(\ 10 any disclaimer. the term Oflhi,
I 284 450 A2
212003
(Coll1illu(.'1l)
patent is extended or adjusted under 35

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(21 )
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Filed:
(65)
Primary Examiner - Boris Pesin

Ass;sfam Examiller -
,hm. 2, 2009
Pri or )'lIblicatio n Data

US 2009/0241072 Al
(57)
ARSTllACT
A deviee wilb a louchsensitive display may be unlocked vb
S(.'P. 24. 2009
,(.'SlIlres performed on the touch sel~~itive display. The d~ict'

is unlocked if contact with Ihe display corresponds 10 a pre
defined gesture lor lllllocking thedcv ice. The device displays
onc Of more unlock imagcs with respcelto which the pre
defined gesture is 10 be pcrfomled in order to unlock the
device. The performance of the prcddincd ~(.'Sture with
respcet to the unlock in1.1,e may include moving the unlock
iJn;lge 10 a pK-dcfin(.'(1 location ,lI1d!or movin); the unloc]..:
in1.1);e along a predefined path. lbe device may also d isplay
vislwl cues o f the predetined gesture 011 Ihe touch sereen to
remind a user of the gesture.
Rel ated U.S. Ap pl kallon Data

(63 )
Cont inuation of application No. 11/322.549, filed on

I:A"C. 23. 2005. now Pm. No. 7,657.849.
(51 )
I nL CI.
G06F YO))
(2006.0 1)
U.S. Cl. ......
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715/154.
(52)
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Andres E Gutierrez
(74) Allornoy, Agent. or Firm - Morgan . Lew is & Ao c]..:ius

LLI>
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Soc appJicrnion file for complete search history.
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400
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15 C laims. 15 D r aw ing Sheets
Touch Screen 408
;=
"''\=~
,
Movement
502 . /
".". I
IButton 4 1Q I
504
JOINT TRIAL E XIflBIT NO. 10

United Sta~ Di5IJiCI COWl
North=> District ofCalifomia
No.12-CV(l()(j30-UIK{psG)
Applfl Inc. ... Samslmg ElflCS.
Date Admitted:
A658
Case: 15-1171
Document: 40
Page: 433
Filed: 03/06/2015
US 8,046,721 82
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WeSlernL"Ul CI aI ........... 3451173
Banle!!
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Andrcw<.1 al. ...... ....... .. 3451728
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Naray>.naswami
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GoJXIlakrishnan CI al.
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Tokkoacn
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345174J
3451797
Brown el .11.
7 131202
t-lizoguchi <.1 .11.
Ja~'ger .
7 131202
Tokkoaen ..................... )451741
Tokkoaen
7 131200
Jansen
7 131202
Schneider
7 1) /202
Manl}1a.
7131202
Mora'"l:Sik
7 15/821
Robcrlson ~1 .11.
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Marv;1 el .11.
3451156
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OffICe Aclion daled !,,,b. 4. 2009. rccciv<.-d in rhe German palenl
applicalion which COrT"spon<ls 10 U. S. Appl. No. 111322.549.
"lIla l Umce A(I,on dalOO Mar. !J. !()(W. for relal~'\1 U. S. Appl. No.
111322.549.
omce AClion d.,led Mar. 25. 2009. ll.'Ceivcd in Ihe European JXllCn l
applicalion which corresponds 10 U.S. Appl. No. 1]/322 .549.
OffICe Aclion elakxl 0. . 31. 2007 for rdated U.s. Appl. No.
Il fJ22.5S0.
OffICe Action d.'l~-d Apr. 21. 2008 for relaled U.S. Appl . No.
I lfJ22.5S0.
No t;ce o f Allowance dat",J Scp. 19. 2008. for rd:ued U.s. Appl. No.
1]1322.550 .
OfflCc Action d.lled Feb. 5. 20 10. reccived in Chin~'SCAplllicalion for
Invenlion No. 200680052770.4. whichcorrespondsl0 U. S.A ppl . No.
1]1322.549.
OffICe ACTion <tatoo Feb. 9. 2010. ll."'Ceived in Gcn n."Ul l"IIlcnl Appliclllion No. II 2006003 515.0S3. which correspond s 10 U.S. Appl.
No. J 11322.549.
OffICe AClion dmed Mar. 5. 2010. R'Ceiv",\ in Korean Pmen. Appliclllion No. 10-2008-7018109. which corresponds 10 U.S. Appl. No.
I I1J22.549.
E."lcndcd European Scarch Rcporr ,L,lcd Feb. 7. 2011. =eivcd in
Eu ropean PMenl Applicalion No. 10 194 359.5. whic h corresponds 10
U.S. Appl. No. 111322.S49.
Plaisanl el all .. '"Touchscreen Toggk Design:' I' rocel'llings o r lhe
Conference on Uuman FaCTOrs in Compuling SysICmS. Addison
Wcsl~'Y. US. May 3. 1992.2 pages .
NOlieeofAllowanee.bl<.-d Aug. 10. 2009. =eiv~xl in U.S. Appl. No.
11fJ22. S49.
w..
A659
Case: 15-1171
Document: 40
Page: 434
Filed: 03/06/2015
US 8,046,721 82
Page 3
QmccAction dalctiApr. 22. 2011. r~",civ~d in Japanc~ Patcn! Appl'~ation No . 2008547675. which corresponds (0 U.S. Appl. No .
l lf3 22.549.
Baudisch.I'.. "['hosphor: E:,<plainingTransitions in the User interface
Using Afterglow Effects:" 2006. 10 pages.
Notice of AJlc)'wancc d.'l~'(l Jun . 3, 2010. r<."Cciwd in U .S. Appl. No .

121345.584 .
TllUIslalion Qfo"rman Nullity Action Complaint against EP Pal"ni I
%4 022 (DE No . 60 2006 012 876.2), lik-d [)C;: . 15.2010,37 pages.
ciled by examiner
A660
Case: 15-1171
u.s. Patent
Document: 40
Oct. 25, 20 II
Memory 102
Page: 435
Operating System
..1"132
Commun ication Module

ContacVMotion Module
Graphics Module
..1"134
User Interface State Module
..1"142
130
Power
System
..1"144
V'
..1"152
..1"146
Application(s)
110--'"'
r 108
11~
Memory
Controller
11~
11
10t
..1"1 50
Lock Module
Unlock Module
'l.
Device 100
..1"138
..1"140
IOptical Intensity Module
10t
US 8,046,72 1 B2
Sheet I of 15
Figure I
Filed: 03/06/2015
Peripherals
Interface
110- '
1 1~
CPU
RF Circuitry
112
Extem al Port
148
Audio
Circuitry
11 4
Spe aker
11 6
==D.
--Q
MjC~phone
110--'"'
118
I/Q ~utH;~:r:t~m 12Q
TouCh-Screen
Controller 122
110--'"'
Touch Screen
126
Other Input
Controller(s) 124
110--'"'
Other Input'
Control Devices
128
A661
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 436
Filed: 03/06/2015
US 8,046,721 B2
Sheet 2 of 15
200 ~
I
I
I
I
I
I
Device set to user
202
"-
\
Contact the louch
sensitive display
I
I
I
manner, prevent
device from
performing predefined
set of actions
204
"-
,I
206
interface lock state by

any predefined
Display visual cue(s)
of unlock action (e.g. ,

gesture)
2~
Detect contact with

touch sensitive
display
210
Yes
Does contact
correspond to
unlock gesture?
212
No
"Ma intain device in
user interface lock
slate
Figure 2
214
"Transition device to
user interface unlock
slate
A662
Case: 15-1171
u.s. Patent
3~6
Document: 40
Ocl. 25, 20 II
Contact the touch

sensitive display
I
I
I
I
I
I
I
I
I
I
Page: 437
Filed: 03/06/2015
US 8,046,72 1 B2
Sheet 3 of 15
3~
3~
Device set to user

interface lock slate by
any predefined
manner, prevent
device from
set of actions
Display unlock image

and visual cue(s) of
unlock action using the
image (e.g., gesture,
moving image to
location, moving
image along path)
308
\.
Detect contact with

touch sensitive display
310
Yes
3~
Figure 3
Does contact
correspond to unlock
gesture using the
image?
No
Maintain device in
user interface lock
stale
3~
Transition device to
user interface unlock
state
A663
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 438
Sheet 4 of 15
Filed: 03/06/2015
US 8,046,721 B2
Device
400
'-
Touch Screen 408
SJt
Figure 4A
)
406
\:404
402
M.e!JJ.!
ButtQn 41Q
Touch Screen 408
Device
400
'-
j
406
..-
402
Figure 4B
\ . 404
M.e!JJ.!
B!.!ttQn 41Q
A664
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Device
Page: 439
Filed: 03/06/2015
US 8,046,72 1 B2
Sheet 5 of 15
T ouch Screen 408
400
"-
Figure SA
~402
)
.~
<
\ . 404
502
~
B~ttQn
Device
41 Q
T ouch Screen 408
400
"-
~402
404 ,
Figure 58
o , ~s-:"'
~
6~!tQn
41 Q
A665
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 440
Sheet 6 of 15
Filed: 03/06/2015
US 8,046,72 1 B2
Touch Screen 408

Device
400
'-
~02
404 \
Figure SC
5oc,-r
Movement
504
~
MMI.!
BullQO 11Q
TQy~h S~r~Sln 4Q~
Devic e
400
'-
('i
( A~P ) (~ ) ( ~p )
(~p) (A~P) (~)
(1P)
F igure SD
CTIGVGD
9
10
11
12
:-
MMI.!
ByttQn
41Q
A666
Case: 15-1171
u.s. Patent
Document: 40
OCI. 25, 20 II
Page: 441
Sheet 7 of 15
Filed: 03/06/2015
US 8,046,721 B2
600~
6 02
"-
6 04
"-
While an electronic device is in a first userinterface state , detect progress towards

satisfaction of a user input condition needed to
transition to a second user-interface state
While the device is in the first user-interface

state, indicate progress towards satisfaction of
the condition by transitioning an optical intensity
of one or more user interface objects associated
with the second user-interface state
6 06
"-
Transition the device to the second userinterface state if the condition is satisfied
Figure 6
A667
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
TQ!,!Ch
Page: 442
Sheet 8 of 15
Filed: 03/06/2015
US 8,046,721 B2
scree:n 714
Incom ing call from:
John Doe
mobile
Device
706)
700
Figure 7A
'-
~~702
r:
)
704 )
Touch screen 714

Incoming call from :
Device
700
John Doe
mobile
Figure 78
'----r~)
Movement
712
A668
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 443
Filed: 03/06/2015
US 8,046,72 1 B2
Sheet 9 of 15
Touch screen 714
Device
700
Incoming ca ll from:
John Doe
mobile
Figure 7C
'-
"' ~~
Movement
712
702
Touch screen 714
Dev ice
700
Incom ing call from :

John Doe
mobile
'-
Figure 70
708
A669
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 444
Filed: 03/06/2015
Sheet 10 of 15
US 8,046,721 B2
Figure 8A
0%
Completion
1 0%
Completion
1 0%
Completion
1 0%
Figure 88
0%
.~
00
2c
Figure 8C
li
o
0%
A670
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Filed: 03/06/2015
US 8,046,721 B2
Sheet II of 15
900 ~
I
I
I
I
I
I
Contact the touch
sensitive display
Page: 445
Device set to user

interface lock state by
any predefined manner,
prevent device from
902
set of actions
904
Display 2 (or more)
unlock images and
visual cue(s) of manner
of transition ing to active
state using the images
908
Detect contact with
touch sens itive display
910
Does contact
,_..:Y..::e"s( correspond to unlock
gesture using an
image?
Figure 9
912
No
Maintain device in user
interface lock state
1-_-'
914
Transition device to
active sta te
corresponding to the
image used (e.g ., first
image -> first active
state, second image ->
second active slale, ... )
A671
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 446
Filed: 03/06/2015
US 8,046,721 B2
Sheet 12 of 15
006
Device
1000
012
100
004
1010
Touch Screen 1014
Figure 10
A672
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 447
Sheet 13 of 15
Filed: 03/06/2015
US 8,046,72 1 B2
Touch Screen 1014
~I-)--..--~)
100';;
C1 004
Device
1000
'-
C1 010
Figure J1 A
1 02
TQ !J~h ~~r!ilen
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1000
'-
1Q14
9
..'-!6
1008
100
C1 004
J,.-....
2 )
~ 01 0
Figure 11 B
Movement
1104
110
A673
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 448
Sheet 14 of 15
Filed: 03/06/2015
US 8,046,721 B2
Touch Screen 1014
I-)"---~)
100
Device
1000
'-
lOD
1004
Figure 11C
101
Movement
~102
1104~
Touch Screen 1014

New text message!
Read message?
Device
Figure 110
1000
'-
A674
Case: 15-1171
u.s. Patent
Document: 40
Ocl. 25, 20 II
Page: 449
US 8,046,721 B2
Sheet 15 of 15
Touch Screen 1014
Filed: 03/06/2015
1002
'r------\
1004
Device
1000
'------y 102
2f - - - - r - - '
'-
Figure lIE
101
100
Movement
1104 ~
Music Player
Device
1000
Song A
'-
Artist X
I 2 : 05 14 : 21 I
~@@@
Figure llF
1108
Touch Screen 1014
A675
Case: 15-1171
Document: 40
Page: 450
Filed: 03/06/2015
US 8,046,72 1 62
2
SUMMARY
UNLOCKING A DEVICE U\' PERFORM ING

GESTURt;S ON AN UNU>CK 1i\L-\ G
RELATED :\PPLICATIONS
5
"11lis application is a conti nuation o f U.S. p.1\Cnl applicalion Scr. No. 11/322.5 49. filed Dec. 23. 2005. now U.S. )':11.
No. 7.657.849 which applic~ltion is incorporal<:d by reference
hen'in in its entirety.
"Ib is application is rclall'(\ \0 U.S. patent application ScI'. to
No. 111322.550. tilled " Ind ication of Progress Towards Sa1isfaction of a User Input Condition." filed Dec. 23. 2005.
whIch apphcallon IS lllCorporatl'd by relcrcnce heI'Cm In LIS
entiret y.
tj
TECIINICAL FIELD
"Ille discloSL"() cmb<xlimcll\s rciltle gCllc mlly 10 USCI' inter
lflees thaI employ touchsensi tive displays. and more particularly. \0 tho:> unlocking 0 f USCI' inll'rfaccs on po nablc dcctrQnic
:!(l
d l'VlcCS.
BACKGROUND
Touch-sensitive displays (a lso known as "'touch screens" o r
" touchscreens") arc wcll known in the art. Touch screens arc
used in many dectronic d..--v iccs 10 display graphics and text.
and to provide a user inH.'Tface through which a user m(IY
intcmct with thed(:viccs. A touch screen detect s and responds
to contaci on thc touch SCI\:Cll. A device llIay display one o r
more soft keys, menus. andotherust...-illtcrfaceobjects ollthc
to uch screcn. A user m:1y interact with the d..-vicc by cont:1cting thc touch serel..1 at loc.1tions corresponding 10 the userinterfacc objects w ith \\ bicb she Wi5hcs to intcract.
'Iouch screens arc becoming IllOr~ popular for usc as dis
plays and as user input dl'\'ices o n portable devices. suc h as
mobile telepho nes and personal digital assistants (PDAs).
One problcm associated with us ing tCluch sereens on portablc
dev ices is the un intcntional activat ion or deactivation offunetions due 10 unintcntionnl contnct with the touch screen. ' 11IUS,
portnble deviccs. touch scn.'Cn s on such devices. andlor npp lications running o n such deviccs may be locklx! upon satisfaction of prtx!cHnt'<i lock conditio ns. such ns upon entering
(In active call. after a pn.'<Ictcmlin~x! time of idleness hil s
elapsed o r upon nUltIu alloc king by (I user.
Devices wi tb touc h scn.'CrlS andlor applications ronningon
such devices may be un locked by (Ill)' of several well-kllown
unlocking procedures. such as pressing a predefined set of
bullons (simullancously o r sequcntially) or entering a code o r
password. lbese unlock procedUI\5. however. ha\'e drawbacks. The bU llon combinations may be hard to perform.
Crea ting, memori;>j ng. and recalling passwords. codes. and
the like can be q uite burdcnsomc. These drawbacks may
reduce the case of usc of the unlocking process and. as a
consequcnce. thc cas\! of usc of the device in gcncraL
Accordi ngly. thllre is a nt...x! for more efliden!. userfricndly procedures for uil lock in:; such dcvict'S, touch
screens, and/or :lpplications. More lIencrally, there is a IK...-d
for II10re eflkieill. user-friendly procedures for trnnsitioning
such devkes, touc h sc n.'Cns. and/orapplicmions betw(:(.'!l user
interface states (e.g . from a user interfacc Slatc for a firsl
app lication to a user ink...face sllIte for a SCCQnd application.
between user inlcrfacc states in tbe S1l1l\C a ppl kation. or
ht'1ween locked and unlocked states). In addition. there is a
nt'Cd for scnsory ft'Cdbac k 10 the USt... regard ing progress
towards satisfaclion o f a uscr input condition that is rcquin.-d
for thc trnus ition to occu r.
25
30
15
4Q
45
SO
~,
60
In some cmbodiments. a method o f controlling an cll,(;tronic devicc with a lo uch-scnsitive di splay includes: detecting conlact with the tOll ch-sc nsitivc di splay while the device
is in a user-interface lock state: moving an image corresponding to a user- intcrface Imlockslaleofthcdevice in accordancc
with the contact: tr.msitioning thc device to the user-interface
unl ock slatc if the dctt'Clt-d COnl(1C1 co rresponds to a predefined gesture: and mainlaining the dt.... ke in the user-interfae<.' lock Slale ifth\! do:tCCIt'<i contact docs IIOt com:spond to
thc pn.'(]efined geslUre.
In some embodiments, a method of controlli ng a dt'Vice
with a touch-sensitive disphl)' includcs: dis playing an image
0 11 the tOllC h-sensitivc di sphly while the dt.... ice is in a userinterf:lCc lock state; detecting contact with thc touch-sensitivc
display; trans itioning the dcvicc to a user-intcrface un loc k
SWtc if the deleclt-d contact cOIT~'SPOllds to moving the image
to:l predefined location 011 th\! touch-sensitive display: and
mainUtining the device in the user-intcrface lock state if the
dClcclt-d cont:lct docs 'lOt corrcspond to moving the image to
the predcfined loc:ltion.
In some embodiments, a method of cOf1trolling a devke
with a to uch-sellsiti\'c di splay includes: displaying an image
0 11 thc touc h-scnsilivc di spl:ly while the dt.... ice is in :l userinterfacc lock state: detecting contact w it h the touch-scIIsiti\'e
display: and trJnsition ing thc device to a user-interf.1ce
unlock statc ifthedetcctlx!contact corresponds to llIoving the
image on the touch-scnsi tivc displny <lct'Ording to a predefincd path on thc touch-sensitivc display: :lI\d maintaining
thc device in the uscr-intcrf:lCe lock statc if the dclt'Ctt'<i
cont:lct docs not cOITf.'Spond to moving the imagc according to
the pn.-defincd pa th.
In some elllbodiments. a method o f controlli ng a device
with a touc h-scnsith'c displuy includes: disp laying fir.;t and
sccond images on the touch-scnsiti\'cdisplay while thcdcvkc
is in a uscr-interface lock state; dt'lt"Cting contact with Ihc
touch-sensi ti \'e display: transit io ning thc device to :l fir.;t
activc St.1tc corresponding to the I1 rst in'mge if the detected
con tnci corresponds to a prcdcfint'<i gesture with respect to
thc fir.;1 inlllge: and tr..U1sitioning the d!"'Vice to a sccondactive
~lnt c dis,incl from the 11,.,., !Ictive SI ~1C iflhc detccICd cnnl act
corresponds to a pn.-dcfin!"-d gesture with rl'Spl"Ctto Ihe second
i1Th1gC.
'llie aforementionoo methods may be pcrfonncd by a por
lablll elec tronic dl"Vice having a touc h- sensitive display with
a graphical user interface (GU I), one o r more processor.;.
memory and one or more modules, programs or selS o f
instructions stored in the menlO!), fo r pcrfomling these methods. In some embodiments. Ihc ponable elcctlt:mic devicc
provides a plurnlity of fUJlclions. including wirelcss conununicmion.
hls!mctions for pcrfonlling thc afOn."l1('l1tioncd metbods
may be includoo in a computcr program product cOllHgun.-d
for exccution by one or more processors. In somc cmbodimcnts, the executable compu tcr progrnm product includes a
com puter readable stor.lge mt-dium (c.g., onc o r more mag
net ic disk storage devices. fi.1Sh mcmory dev ices. or other
non-volatilc solid sta tc mt~lIory d~.... iccs) and an cxccutablc
computer program nK"Chani sm e11lht'(]dcd thcn:i n.
BRIEF DESCRIPTION OF TIlE DRAWINGS

65
For a beller understanding of lhc aforcmcntiont"<i cmbodiment s of the invcntion as well as ;K1ditional <.... nbodimc11ls
thcn.'()f. reference should be made to the Descript ion of
A676
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Embodiments below. in conjunction with the following drawlngs in which like reference numerals refer 10 corresponding
pans throughoUi the flgufCS.
sofiware or n combirultion of both hardwarc and softwarc.

including one o r more sign.11 proct"Ssing andlor application
specific integrated circuits,
'I1te memory 102 may include high spe<.'<1 random access
memory and may also illclude non-volatile memory. such as
one o r more magnetic disk storage devices, l1ash memory
devices. or other Ilon-volatile solid state memory devic .."S, In
some embodiments, the memory 102 may further include
stomge rcmotely located from the onc or more proct"Ssors
I 06. for instancc network allHchl'il ~torage accessed vi a the
RF circuitry 11 2 or e)(lemal pon 148 and a communicmions
network (not shown) such as the Intentc\, intr.lnet(s). LocHI
Area Nei"urks (LANs), Wide LlX:;1I Atu, Nel"urks
(WLANs). Storage Area Networks (SANs) and the like. or
nny suitable combination the!l.'Of. Access 10 the memory 102
by other components of the device 100. such ns the CPU 106
and the peripherals interface 1011, may be controlled by the
memory controller 104 .
'Ille pcripher.lls interface 1011 coup les the input and outpul
peripherals oCthe device to the CPU 106 and the memory 102 .
The one or morc processors 106 mn various software programs andlor SCtS ofinstnlctions stored in the memory 102 to
perf01111 various functions for the device 100 and to process
data.
In somc embodiments. thc periphemls interface 108. the
CPU 106. nnd the memory controller 104 may be implemented on a single chip. such as a chip II I. In some othe r
embodiments. thcy may be implemented on scp.1ratc chi ps.
'!lIe RF (rn dio frequency) circuitry 11 2 =ivcs and sends
eledromagnetic waves. The RF eireuitry 11 2 converts electrical signals to/ from electrotmlgnetic waves and communi
catt"S with communications networks ;md other communications devices via the ekctromagllClic waves.lbe RF c ircuitry
11 2 may include well-known circuitry for pcrlonning these
functions, including but not limited to an ~ntenna system, an
RF tmnscciver. o ne o r more amplifiers. a tuner. one or more
oscillators. a digital signal processor. ;1 COOEC chipset, a
subscribcr idcntity mOOule(SIM)card. melllOry. and so forth.
The RF circuitry 11 2 may communicate with the net\\lorks,
such as the Internet. also relerred to as the World Wide Web
(WW W), an Intr;met andlor:1 wireless nctwork, stich as a
cellular telephone network, a wireless local area network
(LAN) andlor a metropolitan area network (MAN). and other
dL'Viees by wireless comillunication. '!llC wireless cOJlllllunication may usc any of a plurality of communic.1 tions standards. prolocols and teclmologies. including but nOI limited
to Global System for Mobile Communications (GS M).
Enh.1nced Data GSM EnvirotUllCnt (EDG E). wideband code
division multiple access (W-COMA). code division multiple
access (COMA). time division multiple access (I'DMA ),
Bluetooth. Wircless Fidelity (Wi-Fi ) (c.g .. IEEE 802.lIa.
IEEE 802.llb, IEEE 802. l lg andlor IEEE 802.1 In). voice
ove rintelllet Protocol (VoIP). Wi-MAX.a protocol !Or email.
instant messaging. andlor Short Message Servicc (SMS. o r
any o tllCr suita ble comJllunication protocol. including comIllllHic.1tion protocols not yet developed as of the filing dale of
this doculllent.
'nle audio circuitry 11 4. the speaker 11 6. and the microphone 11 8 providc;ut audio interface between a uscr :lIld the
dt'Vice 100. TIle :mdio circuitry 11 4 receives audio data from
the peripherals intcrt:1ce 108. converts thc audio data to an
elC!:lrical signal. and tmnsmits lhe electrical signal to the
speaker 11 6. TI1C spea ker converts the clcctrica! signal to
hUItl.1n-audible sound waves. TIle audio circuitry 11 4 also
receivL"S clL'Ctrical signals convel1t'<i by thc microphone 11 6
from sound waves. '!ll(' audio cireuitry 11 4 convel1s the elec
trical signal to audio data and tr.lnsm its the ~udio d1ta to thc
FIG. 1 is a block dingrnm illuSlr3ling n ponablc elcctronic

devie",. according 10 some embodilllents of the invention.
FIG. 2 is a now diagnull iIlusmuing a process for transi tioning a device 10 a user-interlace unlock stale. according 10
some embodiments orlhe invention.
FIG. 3 is a flow di.lgram illuslmling a process lor transitioning a device 10 a uscr-imcrlac(' unlock stUle. according \0
some embodiments orthe invention.
FIGS. 4.'\-48 illustrmc lhc aUI display of 11 device in a
user-interface lock
Sl~l1C .
to
according \0 sollie embodiments of
the invention.
FIGS. SASO il1uslrulc the QUI display of a device al
15
various points oflhe perfonnallce ohn unlock action gL"Sturc.

~ccoroing to some embodiments of the invention.
FIG. 6 is a tlowdiagram illustrating a process for indicating
progress lowaros S<ltisfaction of a uscr input condition 20
according to some cmbodiments of the invention.
FIGS. 7A7D ilIustrUle theGU I display ofa device that is
transitioning the o ptical intensity of uscr-interfaee objccts,
according to some embodiments of the invention.
FIGS. 8A-8C ~rc gr:lphs illustrating opt ical intensity as a 2S
function of the completion of the uscr input condition,
according to some embodimcnts of the invention.
FIG. 9 is a now diagrnm illustrating a process lor tr;illsitioning a device to a uscr interface active slme. according to
30
some embodiments of the invell1ion.
FIG. 10 illustrates the GU I of a device in a userinterfacc
lock st~te that disp];IYS a plumlity of unlock images, according to some embodiments of the invcntion.
FIGS. II A- I I F il lustrate the GUI display of a dt'Vice at
various points in the p<'rfollllanceofan unlock action gestufC. 35
according to some embodiments of the invention.
OESCRIIYfJON OF EMBODI MENTS
Reference will now be madc in detail to embodiments.
e)(amples of which arc illustwlt'<l in lhe accom panying drowings. In the following detailed description, numerous specific
det ails arcsct forth in order to provid~ ~ thorou~h underst;mding of the present invention. HoweVl:'r. it will be appmcnllO
one of ordinary skill in the ~rtthatthe present invent ion may
be practiced without tlK'sc specific dewils. In other instances.
well-known methods. procedures. components. and circuits
have not been described in dewil so as ootto unnecessarily
obscure aspl'(:ts of the embodiments.
FtG. I illustmlt"S a portable ekctronic devit'C, according to
some embodiments of the invention. The device I 00 includes
a memory 102, a memory controller 104. one or more pron'Ssing units (CPU's) 106. a peripherals interlace 108. RIO
circuitry 112. audio circuitry 11 4. a spea ker 11 6. a microphone 11 8. an input/output (I/O) subsystem 120. a touch
SCfCCn 126. otherinplllorcomrol devices 128. and :mexternal
pon 1411 . Thesc components conUllllnicate over the one or
more communication busL':> or signal lines 110. 'Ill(' device
100 can be any ponable electronic dL'Vice. including but not
limi ted to;1 handhcld computer. a tablet computer. a mobile
phone. a media player. a person:11 dig ital assistant ePDA). or
the like. including a combination of two o r more of these
itcms. It should be ~ppn."Ciatt'il that thc die'Vice 100 is only one
e)(ample of a pol1able electronic device 100. and lhm the
dL'V icc 100 may have more or f..'wer components than shown,
or a di lTerem configurmion of components. '111e various com
ponents shown in FIG. I nl<ly be implcmentl'<l in hardware,
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pcriphcmls interface 108 for proccs.ing. Audio dnl.1 nmy bc

may be rctricvtxl from and/or lransmiucd 10 thc memory 102
and/or thc RF circuitry 11 2 by the peripherals interface lOS.
[n somccmbodirncnts, the :Iudio circuitry 114 also includes a
touchpad may be a touch-sensitive surface that is separate

from the touch screen 126 or an cxtension of the touchsensitive surface fomled by lite touch scrt.'Cn 12 6.
'111e device 100 also includes a power system 13 0 for pow_
ering the various componen1s. lbe power system iJO may
include a powcr management system, one or more power
sourees (e.g .. baileI)'. altenJating cUlTent (AC, a recharging
system. a power t:1iluredetl'Ction circuit. a powerconvertero r
inverter. a power st<1tus indicator (e.g., a light-emitting diode
(LED) and any other componl'n ts assoc iatl'<i with the generution. mnnagement and distribtHion of power in portable
dev ices.
In sume embodiments, the sunware l"OmpuJICJl\S include
an operuting system 132. a communication module (or set of
instructions) 134. a contact/motion module (or sct ofinstntctions) 138. a graphics module (or set ofinslnlctions) 140. a
user inten.1ce stMe module (o r sct of instruct ions) 144. and
Olle o r more applications (or SCi of instnlctions) 146 .
'111e operating system 132 (e.g .. Darwin. RTXC. LJNUX.
UN IX. OS X. WINDOWS. or an embedded opera ting system
stich as VxWOrKs) includes various oofiware components
and/or drivers for controlling and malwging general system
tasks (e _g .. memory manageme!l1. storage device colUro1.
power managemellt. etc.) and facilit<1tes conullunication
betwl'Cn various hardware and software components.
'111e communication module 134 f,1cilitates commlln ication with other dL'Viccs ovcr one or morc extem.1l ports 148
<1nd also includes variolls software componen ts for handling
data received by the RF circuitry 112 and/or the extemal port
148. Theexkrnal pon 148 (c.g.. Uniwrsal Serial Bus (USB).
F IRE WIRE. ClC.) is adapted for coupling directly to other
devices or indirectly over <1 network (e.g .. the Intemel. wireless LAN, ele.).
'Ibe contact/motion module 138 deJt'(;ts contact w ith the
touch screen 126, in conjunction with the touch-screen controller 122 . The contact/motion modllie 138 includes \'arious
software components for perfonning various operations
rda ted 10 dCleetion of contact with Ihe touch screen 122. snch
<1S determining if contact has OCCUlTlU. detennining if there is
movement of the contact and tracking the movement ncross
the tOllch SCfl'Cn, and dctemlini ng if the contact has been
broken (i.e .. if the contact has ceased). Determining movement of the point of contact may include detennining sp(.-cd
(magnitude). velocily (magnilUdc and direclion). and/or an
acceleration (including magni tude andlor direction) of thc
point of contact. In some embodiments, tile contact/motion
module 126 and the touch screen controller 122 also dctects
cont<1ct on the touchp<!d.
111e graphics module 140 includes various known software
eomponents for rendering a nd displaying gmpliics on the
touch screcn 126. Note th.1 t the term "gr.lphics includes any
objl'Ct that c an be disp layLu to ,I user, including without
limi tation tcx\. web ])<1ges. icons (such as uscr-interulce
objecls including soft keys). digital images. vid('Os. a nimations and the like.
In some embodiments. lhe gr.lphics Jllodule 140 includes
an optic:ll intensity module 142. The optical intensity module
142 controls the optical intensityof graphical objccts. such <1S
uscr-interface objects, displaYlu on the touch screen 126.
Controlling the optical intensity may include i ncr~"llsing o r
dt'"Creasing the optic<11 intensity of a graphical objcct. In some
embodiments. the increase o r decrease may follow predefinlu
functions.
'1110 uscr interfhce sta te module 144 controls the us~'T interf<1ce state of the device 100 . nle user interface state module
144 may include a loc k modu le 150 and an un lock module
152 . '111e lock module detl'Cts satisfilction of any of one or
h~dsci jack
(nol shown). The hcad~ljack provides un imcr- 5
fnee between thc lllu.lio circuitry 114 and removable audio
input/outpUt pcriphcrnls, such as output-only hcndphoncs or n

hCildscl with both OUlput (headphone foroncor both cars)and
input (microphone).
"[liC 110 subsystem 120 provide, the interface between
input/output pcriphcrols 0111hc device 100. such as the touch
screen 126 and o ther input/control devices 118. and the
pcriphcn.ls inlcrfm;c 108. "111<'! 1/0 subsystem 120 includes iI
touch-scrccncomrollcr 122 andanl' or llIore inpUl controllers
124 for other input or control dev ices. '1l1C one or more input
controllers 124 reeeive/scnd eleellical s ignals from/to other
input or control devices 128. The other input/co ntrol dt"V iccs
128 Jllay include physical bUl10ns (c.g .. push buttons. rocker
bul1ons. elc.). dials. slider switches. sticks. ,md so forth.
TIIC touch screen 126 provides both an output imerfhce and
an input imerfaee between the device and a user. The touchscreen controller 122 receives/sends electrical signals front/
to the touch screen 126. 1be tOllch scr(,("ll 126 displays vislIlIl
OUlputtO the uscr. l1le visual output may include text. graphics. video. and any combin.11ion thereo f. Some or all of the
visual output nwy correspond to user-interface objt'Cts, further details of which are described be low.
'111e touch screen 126 also accepts input from Ihe user
based on haptic andlor tactilc comact. The touch sc rlX'n 126
forms n touch-sensitive surfacc th.11 accepts llser inpu t. The
touch screen 126 and the to uch scrlX'n controller 122 (along
with ,my associated modules and/or cts ofinstnlctions in the
memory 102) dell'Cts contact (a nd aoy movement or brea k of
the contact) on tile touch scrt'Cn 126 and converts thedell'Cted
contact into inter.lction with uscr-interf<1ce objl'Cts, such as
one or more soli keys. that are displayed on the touch screen.
[n an exemplary embodiment. a point of contact betwccn the
touch screen 126 and the user colTcspouds to one or more
digits of tIle user. The touch SCfi..'Cn 126 may use LCD (liquid
crystal display) technology. or LPD (1iglll emilling polymer
display) tcchnology. although other display technologies may
be used in other embodiments. 'llle touch screen 126 and
touch SCfl'Cn controller 122 may detlXtcontact and any movement or break thereornsing any of a pluru1ity of touch sensitivity t cchnologie~. including but not limited to cap..1citive.
resistive. infrurcd, and surfnce acoustic wave technologies. as
well as other proximity sensor arrays or other clements tor
detennining one or more points o f contact with the touch
scr('("n 126. The touch-sensitive display nwy be analogous to
the Illulti-touch sensitive tablets described in the lilllowing
U.S. Pal. No. 6.323.846 (We~tenn3n et al. ). U.S. Pal. No.
6,570,557 (Westennan et <11. ), andlor U.S , Pat. No. 6,677,932
(Westcfllwn). andlor U.S. Patent Publicmion 20021
00 15024A I. each of which is hereby incorpor.ltcd by reference. However. the touch screen 126 displays vist"'11 output
from Ihe Jllmablc device. whcreas touch sensitive tablets do
not provide viswLl outpUI. TIle touch screen 126 Illay have a
rl'Solutioil inexccss of I 00 dp i. In anellemplary embodiment,
the touch screen 126 may have a resolution of approximately
168dpi. Thcuser may make contact with the touch sc["(.'Cn 126
using any suitable object or appCf.dnge. such as a stylus,
finger. and so forth,
In some embodiments. in addition to the touch SCrt.'Cn. the
device 100 may includca louchpad (oot shown) for activating
or deactivating particula r functions. In some embodiments.
the tOllchpnd is a touch-sensitive aren of the device thm,
unlike the touch sc["(.'Cn, docs not display v isual o utput. 'lbe
to
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more conditions 10 transition the dl.vicc 100 to ~ IIscr-inleris prc'/ented from pcrfomlinga predefined sct ofoperations in
racc lock Slale and \0 transition [he device 100 \0 the lock
response to the user input. 'Ille prt..'dcfinl-d set of operations
slalC. The unlock module detects salisfhclion orany of one or
may include navigation between USl'f" interfaces and activamore conditions \0 transition the device \0 a user-interface
tion o r deactivation ofa predefined set of fullctions. The lock
unlock state and \0 transition the device 100 \0 the unlock 5 s\.,1.\e may be used to prcv('Jl\ unintentiolk11 o r unauthorized
use of the device 100 or activation or deactivation of functions
stale. FUrlhcr dcwils rt-g:trding the user inlcrfucc states arc
on the dev ice 100. When thedeviee 100 is in the lockstate. the
described below.
-I1IC one or more applic:llions n oc:m include any applid<.-vice 100 may be said to be locked. In some embodiments,
the device 100 in the lock state may respond to a limited set of
cations installed on the device 100. including witham limitation.:l browser. address book. contacllist. email. instant mcs- !O user inputs. including input that cOiTCSponds to an aHemptto
saging. word processing. keyboard emulation, widgels.
transi tion Ihe device 100 to the userintcrface unlock state or
input Ihat corresponds to pov.ering Ihe device 100 01T. In
JAV.'\-cJ\llblcd applications. encryption. digital rights mallagcmcl11. voice recognition. voice replication. location delCfother words. the locked device 10 0 responds to user input
mination cap.1bility (such as Ihat provided by the glob-'ll posicorresponding to atlempts to trallsition the device 100 to the
tioning system (GPS)). a music phy<.'I' (which plays back 15 uscr- interface unlock st.1teorpowering thedl'Vice 100 01T. but
rocord<.'lI music stored in one or more files. such as MP3 or
docs not respond to user input corresponding to aHempts to
navigate between user interfaces. [t should be appreciated
A.AC files). etc.
In oome embodiments. the device 100 may include the
th:lt even if the device 100 ignoresn uscr input. thedcvice 100
functionalityof an MP3 player. such:ls an iPod (trademark of
may still provide sensory ft'(.-db.1ck (such as v isual. audio. or
Apple Compuler. Inc.). TIlc device 100 may. thercforc. 20 vibra tion feedback) to the uscr upon deteetion oflhe inpUI to
indicate tlmt the input will be ignon.>d.
include a 36-pin COIllK'i:torthat is compatible with IheiPed. In
In embodiment, where the device 100 includes the touch
some embodiments. the device 100 may include one or more
oplional optical sensors (not shown). such as CMOS or CC D
sereen 126, while the dl'Viee 100 is locked. a predefilll'll set of
image senoors. for usc in imaging applications.
operations. such as navigation between user int<.-rfaces. is
In some embodiments. the d<.-vicc 100 is .1 device where 2S prevented from being perfomll-d in response to cont.let on the
touch screen 126 when the device 100 is lockl-d. In other
operation of a predefined set of functions on the device is
words, whentheconl:lct is beillg ignored by the lockeddcvice
performed exclusively through the touch screl'n 126 and. if
included on the device 100. the touchpad. By using the touch
100. the toueh screen m<ly be s<lid to be locked. A locked
devic(' 100, however. llIay still respond 10 (I limitl>d class of
SCn:'('n and touchpad as the primary input/control device lor
oper-ltion of the device 100. the number of physical input! 30 COlllaCI on the touch screen 126. '111e limited class includes
comrol devices (such as push bUI101lS, dials. and the like) on
contact tlwl is del ermined by Ihe device 100 10 correspond 10
:IJI aHempt to transition the device 100 10 the us('(-inteffilee
the device 100 may be reduced. III one embodiment, the
devke 100 includes the touch screen 12 6. the touchpad. a
unlock state.
push but\on for powering the device on/olT and locking the
[n the user-intcrf'lce unloc k state (herein.1fter the "unlock
dev ice. a volunle adjUSlment rockcr button and a slider switch 35 st.1.te"). the dC\'ice 100 is in its nonnal opera ting state. detecting and rl"Sponding to user input corresponding to inK-ruction
for toggling ringer proliles. 111e push bullon may be used [0
wilh the lIser interface. A device 100 thm is in the unlock state
wrn the power on/olT on the device by depressing the bunon
lIlay be described as an unlocked device 100. An unlocked
and hold ing the bUllon in the deprcs$(.>d slate for a predefined
time interval. or may be used to lock thedevice by depressing
device 100 del<.'i:ts and responds to user input for navigating
the bunon and reicasing the bunon before the prt..>defined time 40 between user interf.1CeS. emry of data and activation or deactivation of functions. In embodiments where the d<.-vice 100
interval has elapsed. In an altemativ(, embodiment. the device
100 also may acc<."t verbal input for activation or deactivaincludes the touch screen 126. the unlocked device 100
tion ohnme fill'letinn~ thm"gh the micmphnne 11 M.
detocI~ ~nrl re~f>Ond~ tn cnn t~cl cnrn.'Sl'onrling tn n:lVi l!.~tinn
111(' pn.>defined set of func tions that are performed exclubetween uscr interfaces. entry of data and activation or deacsively through the touch screen and the touchpad include 45 tivation of functions through the tOllch scrl'Cn 126.
navigation between user interfaces. In some embodiments.
Unlocking a Device via Gestures
the touehpad. when touch<.-d by the user. navigates the device
100 toa main. home, or root menu from any user il1terface tlk1.t
FIG. 2 is a flow diagram il!ustr-lting a process 200 for
may be displayed on the device 100. In sueh embodiments,
the touehpad may be rcl't..'m.'d to as a "menu bUllon." In some 50 transi tioning a dev ice to a user-inteffilee unlock state, according to some embodiments of the invention. As used herein.
other embodiments, [he menn button may be a physical push
trrutsitioning from one state to another refers to the process of
button or other physical input/conll\J1 device instead of a
going from one stale 10 allOlher. The process may be. as
touchpad.
perceived by the user, instantan<.'Ous. near-instantancous.
55 gradual or at any suit.1.ble rate. 'Ille progression of the process
User Interface States
may be controlled mnomatically by the device. such as Ihe
'nledevice 10 0 may Iwvea pluralityofuser illlerfaee states.
device 100 (FIG. I). illdependentofthe user. once the process
is activated; or it may be eontrolll'll by the user. While the
A user interf..1ce state is a state in which the d ..-vice 100
r<.'Sponds in a predefilll-d manner to user input. In some
PI'Ol'Css flow 200 described below includes a number of
embodiments, the plurality of user interlhce stMes includes a 00 opera tions that a ppear to occur in a sp(:cific order. it should be
user-interface lock state and a uscr-interf<lCe unlock state. In
apparent that these processes Jllay include more or fl-wer
operations. which maybccxccut..-d serially or in parallel (e.g ..
some embodiments, the plumlity of user imerface states
includ<.'S st<ltes for a plurality of applications.
using parallel processors or a multi-threading environment).
A device is settothe lock st(l\e(202). Thcdevice maybe set
In the user-interface lock state (hereinafter the "lock
state"), tlte devke 100 is powert..>d on and operational but 65 (that is. tmllsit ion completely to the lock scale froill any other
ignores mas\. if not al1. user input. 'nlat is. the device 100
state) to the locked state upon satisfaction of any o f one or
more lock conditions. TIle lock conditions may ineludecvents
t<lke. no action in r<."Sponse to user input and/orthedl-vice 100
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such as the elapsing of a prcdcfim:-d lime of inactivity. entry

into an active c;dl. or powering on the device. The lock COIlditions may also include user intervention. !lanK']Y th e uS('r
while maintaining continuous contact with the touch scr(!Cn.

.lIId the del(.'Cted conlaCt is the horizontalmovcment with the
continu ous contact. thcn the dcviee transitions to the unlock
state.
[n somc embodiments. th!;' device begins th!;' proc!;'ss of
transilion.ing to the unlock state upon delection of any contact
on the touch screen and aborts the transition as soon as the
dL"Vice dctennines th.1t the contac t docs not correspond to an
unlock action or is a lililcdfabort(.-d unlock action. For
example. if the unlock action is a predL'fined gcsture. the
device may begin Ihc process of transitioning to thc unlock
Slnte as soon as it dc1<.'Cts Ihe initial contact of the gesture and
cuntinucs Ihe prulL"Ssiull uf the Ir,lIlsiliun ilS the 8eslure is
pcrfonned. If th!;' user aborts the gesture before it is completcd, thedevicc abons the transition lind r!;'mains in the lock
stnte. If thc g!;'sllIre is completed the device completes the
transition to the unlock Stille and becomes unlocked. As
another example. if the unlock action is a horizontal movement of the point of contacl across thc lauch SCrl'"Cn while
mailllaining continuolls COlllact with the touch screen. and the
uscr taps Ihe touch scn:.'"Cn once. the device begins the process
o f the stme tmnsition as soon as it do;.>tects the lap but also
aborts the procel>S soon aftcr becausc it rcali;res that the tap is
JUSt a lap and docs not correspolKi to the unlock action.
While thed(..... ice is unlocked. thetk:vice may display on the
touch SCrl-cn user-inlerf.1ce objects corresponding to one or
more functions of the device andlor information that may be
of interest to the user. 'llIe uscr-interface objccts are obj(.'Cts
th.1t makeup the us!;'r interfaceofthedevice and lIIay include.
withOlltlimitation. text, ilTmges. icons. soft key s (o r "virtual
buttons"). pull-down nwnus. radio bUllons. check boxel>.
selectable lists. and so forth. '[be displayed uSer-inlerf.1ce
objects lIlay indudenon-intemctiveobj(!Cts tltat convey inform.1tion or contribule to the look and fL'C1 of the user interface.
interactive obj(.'Cts with which lite uscr lIlay interact. or any
combination thcn:.'Of. '[be user may inleract with the userinterf."lCe objects by lIlaking contact with the touch screcn at
one or llIore touch scr(!Cll locations corrcspolKiing to the
imemctive obj(.'Cts wilh which site wishel> to internce. '[be
device detects the contact and responds to the det(!Cted contact by perfontling the oper:l ti on(s) corresponding to the
intcrxtion with the interactive object(s).
While the device is lockL'<I. the uscr may still make contact
on the touch screen. However. the locked device is preVl.'[l\ed
from perfonning a pn..'<Ielincd set of actions in fL'Sponseto:my
det(!Cled contact IUl1i1thc device is unlocked. The prevented
predefined set of action may includc nnvigaling between use r
interfilCl'S and elltry of data by the uscr.
Whilc the device is locked. the device may display one or
1Il0re visual cues of the unlock action. :1S describ(.-d above. In
some embodiments. the dcvice nmy also display. along with
the vis mil cues, an unlock image. 'nle unlock image is a
graphical. intcractive user-intcrface obj<.'Ct with which the
uscrinteracts in ordert o unlock the device. [not her words. the
unl ock action is perfomled with rcspectto the unlock imnge.
[n SOllie cmbodiments. performing Ihe unloc k action with
respect to the illlage includes dragging th!;' unlock image in a
pn:.'{\cfined m'UlIIer, which moves Ihe unlock image across the
touch SCrl'Cn. [n some embodiments, if the unlock aclion is
nOt completed Ihe aUI display can show reverse progress
towards the locked state by grndually retunling the unlock
image to its position in the locked sta te
[n somc embexliments. in addition to visual fL-cdb.1Ck. the
electronic device supplies non-visual reedback to indicate
progress towards compl!;'tion of tlte unlock action. In some
embodiments, in addition 10 visual fo;xxlback. the electronic
device supp!i(.'S non-v isuill feedback to indicate completion
lockins the device by a predefined user input. In some

embodiments, the user may be allowed to specify the events 5
lhal serve as lock conditions. For example, the lIser may

configure the device
\0
lrunsilion to the lock SlalC upon the
elapsing of;\ pn::dcfin(.'<ilimc of imlclivilY bUI not upon powering on lhc device.
In rome embodiments, the locked device displays on the 10
louch screen one or more visual cues of an unlock action IIU1I

th e user may p('rfonn 10 unlock the device (204). The visual
C11C(S) provide hilllS ur n.:mindcrli u fthe unlock <ll'liulllU Ihe
user, TIle visual cues llIay be tcxwal, grophical or any combination therl'Qf. In somc embodiments, the visual cues arc
displayed upon pimiculnrevcnts occurring while the device is
locked. 'Ibe p.1rticularevents that trigger display of the visual
cues may include an incoming call. incoming mel>sage. or
some other event that may require the user's allention. In
some !;'mbodimcnts, the visual cues may also be displayed
upon p..1rticular user inpuIS. such as Ihe uscr interacting with
the menu button. the uscr making COnlact with the locked
touch screen and/or the uS<'r int!;'racting with any ot!wr inpull
control devicc. '111e locked devic!;'. when not displaying the
visual CUL'S. may power down Ihe touch scn..'Cn (whichhclps 10
conservc power) ordisplay olher objL'Cts on Ihe touch screen.
such as a SC/"ren Silver or information that mny beofintercst to
the u,;cr (c.g .. ballcry charge remaining. date alKi time. nctwork strength. etc.).
111e unlock nction includes contact with the touch SCl"Cl.."11.
[n som!;' embodiments. the unlock action is a predefined gel>ture perfonned on the touch scrL'C!I. As used herein. a gesture
is a 1II0tion of the obj(.'ClIlIppendage nmking eOnlaet with the
touch screen. For example. the predefined gcsture lIIay
include a conlilCt of the touch screen on Ihe left edgc (to
initiali7.(' the gel>ture). a hori7..ontal movement of the point of
contact to the opposite !;'dge while maintaining continuous
contnct wi th thelOuch screen. nnd a br\'Hkingofthccontact at
the opposi t!;' (.'<Ige (to complete thc g(.'SllIre).
While the tOllch screen is locked. the user may initime
contact with the touch scr(!Cn, i.e.. touch the touch scn:.-!;'n
(206). For conveni!;'llCe of explanation. conwct on the touch
scr(!Cn in thc process 200 and in other embodiments describ(.'<1
b!;'low will be described as perfonlll.'<I by the uscr using at
leaSI one hand using one or more lingers. However. it should
be appr(!Cimed thm the contact may be made using any suitnble obj<.'Ct or appendage. such as ~ styl us. fingcr. etc. '[be
contact m(IY include one or more taps on the touch screen.
maintaining continuous contact with the touch scn:.-cn. mov!;'ment of the point of contact while mainlaining continuous
conlac\. a breaking of the contact. or any combi rmti on Iherl'Of.
'niC d(."Viee dcK>ctS the contact on Ihe touch scr(.'Cn (208). If
Ihc contact docs not COJTCspond to an mtemptto perJorlllthe
unlock action. or if the Contact corresponds to a failL'<I or
aboned mlcmpt by the uscr to perform the unlock action
(2 1O- no). thcn the dev ice remains locked (2 12). For
example. ifth!;, unlock action is a horizontalmovcment of the
point of contil ct across the touch SCfL'Cn while maintilining
continuous contact with Ihe touch scr(''CJI. ,U1d the detected
contact is a scri(.'S ofrnndom taps on the touch screen. then the
device will remain locked becanse ~le contact docs not corr<.'Spond to the unlock aeliOIl.
If the contact corresponds to a successful perfonnance of
the unlock action, i.e.. the user perfonned the unlock action
succ(.'Ssful!y (2 I O- y(''S). th!;' d(.'Vice transitions to the \Ullock
sillte (214). For example. if the unlock aClion is a horizontal
movement of the point of contilct across the touch screen
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of the unlock action. The addi tional fccdb.1Ck may include

audible feedback (e.g .. sound(s or physical feedback (e.g.,
vibration(s)).
FIG. 3 is a flow diagram illustrating a process 300 for
corners and back. As rmother example. the unlock Ilction may

includedmgging the unlock image from one edge of the touch
screen to the opposite edge in a linearp.lth.ll le emphasis here
is on the path along which the unlock imag(' (and the fing('r)
mov('s.llecauscofthe('mplwsis on the pmh. the final location
to which the unlock image is to be moved mny be defined
broadly. For exam ple. the unlock action may be to drug the
unlock inl~ge from its initial loc.11ion. nlong the predefined
path. to any spot w ithin a predefined rl'gion on the touch
screen. 'l11e pn.o.defined path may include one or more stmight
lines or line'S wi lh twis ls and tulllS.
'1l1C user nlakes contact with the touch SCrl'Cll (306). simila r
tll the upcr.. tiun 206 (1'10. 2). nle device detl"-'t~ the cumaet
with the touch screcn (3 08). simibrtotheoperution 208 (FIG .
1). If the contact docs not correspond to successful performnnce of the unlock action with respcclto the image (3 \ 0no), thedl'Vice remains locklo.d.lfthecontactdoes correspond
to suece'Ssful perfonmmc('ofthe unlock action wilh resp'-'Ct to
the image (31 O- ycs). the device is unlocked (314).
F IGS. 4.'\-4B illustrate the GU] dispby o f a device in a
uscr-interface lock state. according to some embodimems of
the invention. In FIG. 4A. device 400 includes a lOuch screen
408 and a menu bUllon 410. The device 400 is locked and the
touch scrl'Cn 408 is d isplaying an un lock image 402 and
visll.ll cues. 111C visu;t! cues shown include ~ channel 404
indicating the path of the gl'Sturclmovenlent along which the
unl ock image 401 is to be dmg&ed, similar to a groove along
which a slider switch moves; and one or morc (l ITOWS 406
indicating the direction of the gesturd move!1lem. 111e ('nd of
thechanncl 404 (in F IGS. 4.'\-413 and 5A-5 D. the "elKi" ofthe
ch.11\Jll'1 is till' right end) also serves asa predefined location to
which the unlock im:lge 401 is to be drugglo.d. '111e un lock
image 402 ImlY also include an arrow to further remind the
uscr the dircc tion of the gest ure/movement. As dl'Scribed
<tbow, the visual cues and the unlock image may be displayed
by the device 400 upon an event that may require the uscr's
nllention (e.g .. incoming call or message) or upon uS<'r int('rv('ntion (e.g., the uscrpressing the menu bn llOI1 4 10 while the
device is locked).
In some embodiments. the arrows 406 and theU/row on the
unloc k im<tge 401 may be ~nimatl'<i. For example. the <U'row
on the unlock im<tge 402 Illay appciIf and disnppear in a
pulse-l ike m~nner and the arrows 406 m.1y eman~te from one
e nd oflhe channcl 406 i1] sync wilh the pulsing oflhe arrow
on the unlock image 401. As shown in FIG. 413. the arrow 406
mny move ~tlong the chalUlci 404 and disnppear when it
!\loves 10 lhe end oflhe channel 404.
The visual Clles illustrnted in FIGS. 4A nnd 413 remind the
user that the unlock nction is n predefined g('sture that
includes a horiJ'.Onlal movement of the finger (and thus moving the point of contacl) along the ch~nne l 404. from the
beginning of the ch.mncl 404. where till' unlock image is
ini tially located. 10 the end of the ch.ume! 404. [t shoul d be
appn."Cimcd. howl~er. trun the visua l cues shown in F IGS .
4A -4 13 ar(' m('rcly exemplary and that morc or fewer visual
cues. o r alternative visual cues may be used. The contelll of
the visual cues mny be based on the particulars of the un lock
action.
FIGS. 5A- 5 D illustrnte the GUI display of a device at
various points of the pcrfonnance of an unlock action gesture,
according to someembociiments of the invention. [n FIG. SA.
the us('r. represented by the hand and finger 502 (not dmwJl to
scale). begins the unlock action by touching the touch SCrl'Cn
408 of device 400 with Ill'r finger 502. In some embodlmell1s.
the touch scrl'Cn 408 is initially in sk-cp mode and/or (]ark.
nnd the screen 408 displays the unlock image 402 when
tow.:hlo.d. '111e user touches the touch scrl'Cn 408 <I t the location
Irunsilioninga device 10 a uscr-imcrfacc unlock sUIte using an 5

unlock image, according \0 some embodiments oflhe invenlion. The process 3 00 is similar \0 ~lC process 200 (FIG. 2)
wilh Ihcnddilion of an unlock imagclh.1l is displayed w ilh the
ViSII.11 cut'S. 'nlC un lock action in the process 300 is pcrformL'<i
wilh respcct 10 the unlock image. i.c., the unlock action to
includes interaction with the unlock image. While the process

flow 3 00 dcscribl'<i below includes a number of operations
Ihal "PPC,II tu u""ur in a s(X.'l:ifll: unler. il shuuld be llpp<lfcnl
Ihm th('sc processes ca n include more or fewer operations.
which can be executed serially or in parnllel (e.g., using
panlilel processors or ~I muhi~thrcading environment).
'nIC devicc is locked upon satisfaction of a lock condition
(3 02 ). similar to the operation 202 (FIG. 2). An unlock image
mKi visual cues of the unlock (lction using the unlock image
arc displayed (3 04). 111e operntion 304 is the same as the
opl'f1ltion 104 (FIG. 1). except that in the operation 304 an
unlock image is displayed in additi on to the visual clles.
As described above, the unlock oction includes im('roction
with the unlock image. In some embodiments, the unlock
action includes the uscr performing a prooefim.o.d gesture with
resJX.'<:tto the un lock im(lge. In some embodiments. the gl'St\lrc includes dragging the unlock image to a location on the
touch SCfCCn thOit ml'1!ts one or more prcdcfinlo.d unlock criteria. [n other words. the user makes contact with the touch
screen at a location corn.'Sponding to the unlock image and
Ih('n perfonns the predefined gestul\' while maimaining conlimlOus contact with the touch screen. dr.tgging the image to
the locOitionthat llK'CIS the predefUll'([ unlock erit('ri(l. In some
embodiments. the unlock (lclion is completed by breaking the
contact with the touch SCfCCn (thus rcle(lsing the unlock
image) upon completion of the prcO::fined gesture.
A loc~ltion meeting one or more predefined unlock crit('ria
is simply a location on Ihe touch sc~n lhat is predefined as
a location 10 which the unlock image is to be drag&ed in order
to unlock the device. The location(s)may bedefined narrowly
or broadly :tnd may be oneor more particular locations on the
touch screen. one or more regions on the touch scn:en. or any
combination thereof. For exam ple. the location may be
defim.o.d as a panicu lar marked location. areas at each of the
four comers of the touch scrl'Cll. or a quadmnt of the touch
screen. ('tc.
In some embodiments. the imeroction includes dragging
the unlock imnge to n predefilled location on the touch screen.
For exnmple. the unlock action may include dragging the
unlock imag(' from one comer of the touch screen to another
corner of the touch screen. As another eXample. the unloc k
~ction m.ly include dragging the unlock im~ge from one l"<lge
of the louch :>efCen to the opposite edge. Theemphasis here is
on Ihe fina l dl"Stinmion of the unlock image (and of the finger)
. Thus. the uS('r can drag th(' unlock image from lIS initial
location along any dcsirlo.d pmh. As long as Ihe unlock image
reaches the prcdcfinlo.d location and is released at thm loca
tion. the device is unlocked. It should be :lppreei.11ed that the
predefined loc..ltion may be. <1S described above, defined narrowly or bro~dly and may be one or more particular locations
on the touch scrt:en. one or more regions on the touch screen.
or any eombinmion thereof.
In some other embodiments. the unlock action includes
dragging the unlock image nlong a preddined path. For
example. the unlock action m.1Y include dragging the unlock
image clocl.;wise along the pcrimeter oftlw touch screen (the
path being the perimeter of the touch screen). from oneofthe
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corresponding 10 the unlock image 402. which is located

be in accordance with thc unlock gestu rc. such as thc timc it
initially allhe len cnd orlhe channel 404. The oon1;1I;;1, either
ta kes the uscr to perfonll the gesture.
overlapping wilh Ihe unlock image 40 2 or in proximity 10 the
Indic3tion of Progress Towards Satisr.lclion of a User
unlock image 402. is detected by the device 400 and is deterInplU Condition
mined to be an anempllo unlock the touch screen. based on 5
the facllhat the user 502 is illlCrllCling wilh [he unlock image
402.
In FIG. 513, Ihe user is in the proc(."Ss of performing Ihe

gL"Slurc by moving her finger, which is in continuous contact
with the lonch SCfC('ll 40S. in the direction of movelllent 504 .
The unlock image 402 is dmggcd along the channel 404 as a
10
result of the gcslllre. 111c channc! 404 reminds the user Ibm
the unlock gesture is a horizonwl mOlion. In some embodi
ments. the clwnncl 404 indicates the predefined location (in
FIGS. SA-SD. the right end o f the clwnncl) to which the user
drngs the unlock image 402 to complete the unlock action
and/or the pr<:defined path along which the user dr;lgS the
unlock image 401 to compkte the LUllock actiOn.
In F[G. Sc. the user has dragged the unlock imagc 402 to
the right end of thc channel 404. Once Ihc user relellSes thc
unlock inmge 402 31 the right end of the clwnnel 404. the
unlock action is compkte. Upon completion of the un lock
gesturc. thc device unlocks and displays on the touch sereen
408 user-interface objccts associated with normal opcr;ltion
of the device 400. FIG. SO illustralt'S an example of userinterfllCe objccts that m.1y be displayed when the device 400
is unl ocked. In F[G. SD. Ihe device 400 displays a menu 506.
The menu 506 includes interactive user-interfacc objects corresponding 10 various applicalions or operations. A user may
intemct with the user-inICrface objt'Cts to activate an application or perform an operation. It should be appreciated. however. that the device 400. upon being unlocked, may display
additional or alternative uscr-interloce objt'Cts.
In some embodiments. the unlock image 402 may also be
used to indicate failure of pcrlornlance of the unlock action.
For example. if the user brc3ks Ihe cont3Ct with the louch
SCn:'Cn before the unlock inmge reaches the right cnd of the
channel 404. the unlock action has tailed. 'l1lCdevice 400 may
display the unlock im;lge 402 returning to its initial position
on the left end ofthech3nnel 40-t 3110wing thellst'J"to anempt
the unlock action again. if shc so choost'S. In some embodiments. thedevice !1,ocs back to skcp Il"no gcsture is applied in
a prt--determined period of time.
In some ('mbodilllenls. the user llJ.ly unlock the d~'Vice 400
by contacting th(' touch screen 408 and moving the point of
contact horizonwlly 310ng a fmction of the ch3llllel 404, i.(' ..
the user nred not move all the way to the right end of the
ch.1111lel. In some cmbcxliments. tl:e user may unlock the
device 400 by nwking contact anywhere on the touch screen
408 ~nd moving the point of CQntact horizontally a~ if he or
she were following the channel 404.
In SOnl("- embodiments. the lock/unlock featufC may apply
to specific 3pplic3lions tlwt arc ('xecuting on th(' device 400 3S
opposed 10 the dev ic(' 400 as a whol ... [n some ('mbcxlilll('n1s.
an unlock gl'SlIlre transitions from olle application to 3noth('r.
for example. from a telephone application toa music pla)"eror
vice versa. '111(' lock/unlock featufC may include a hold or
pause feature. [n some embodiments. a~ the user transitions
from a first application and to a so;ond applic3tion. 3 user
interface for the s~'"Cond lIpplic.1tion may fllde in (i.e .. increase
in intensity) and a user inl('rtae(' fUrihe first application m3Y
f3de OUI (i.e .. dt'Crcase in intensilY). 'Ibe fade in and r.ldc out
may occur smoothly over a prc-del('rmined time ill1('rval.
SllCh as 0.2 s. I s or 2 s.111e pre-detennined time interval may
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FIG. 6 is a flow dbgram illuslrating a process 600 for

indicating progress towards satisfaction of a uscr input condition ,lCcording to some embodiments of the invention.
While the proc~"Ss flow 600 described below inclueit's a number of op('rations th31 appe3r to occur in a specific order. it
shou ld be apparent t141t thesc processes can include Illore or
fc"eropcrmiolls. whi<.:h<':'111 bo.: ell",",-,UI ...>u seri.lllyur in pllwllcl
('.g., using parallel processors or a mulli-lhreadillg environm(,llt).
While an electronic dt'Vice is in a first uscr-int('rtilc(' state.
progress is detecll-d (602) towards satisfaction of a user input
condition nred ...'<i to tmnsitiontoa second uscr-in terface statc.
[n someembodilllents. the tirstuser-interfhcc stateis forn first
application and the second user-interface stale is for 3 second
applic.llion. In some ('mbcxlime!ilS. the first us('r-intcrface
Slate is a lock stale and the second user-int('rtace stnte is 3n
unlock state.
While thew ic(, is in the first user-int('rfllce stnte, progress
is indicated (604) towards s3tisfaction of the condition by
transitioning an optic;il intensity of one or more user interface
objects associ(lted with the s<.'Cond user-interface state. The
ch.1nge in optical intensity of the nser-interface objt'Cts provides a us('r with sensory feedback of the progress in transitioning between user interface states.
In some ('mbodiments. in addi tion to ViSlkl1 fC(.-db.lck. the
device su pplies non-visual feedb:lck to indicate progress
tow3fds Slltisfaction of the user inpUi condition . 'Ibe additional ft"Cdback may include audibl e fecdlxlck (e.g .. sound( s
or physical fccdback (e.g., vibrntion(s.
The device transi tions (606) to the st'Cond user-interface
S131e if Ill(' condition is smisfied. In some ('mbodiments, ill
addition to visual feedb3ck. the dcvice ~upplks lion-visual
feedback to indicate satisfaction of the us('r input condition.
The ooditiona! leedback m3Y include audible feedback (e.g ..
sound(s)) or physiclll feedback (e.g., vibration(s)).
'I1te optical intensity of a user-interf3ce object. as used
herein. is the objt"Ct"s dt~rcc of visua l m.1teriali7..ation. '[be
optical intensity may be m~'asured along a scale between a
pn.>dclint-d minimum and a preddined maximum. In some
embodimellls. the optic.11 intcnsity may b(' measured along a
logarithmic seal('. III SOllle('mbodinlCnts, the optical intensity
may be perceived by users as a tmnsp.lrency efleet (o r 13ck
thereat) 3pplied to the uscr-intcrlace object. In some embodiments. the minimum optical int(,llSity means that the objcct is
not displayed at all (i.e .. the objt"Ct is not perceptible to the
uscr). and the maximum optical intensity means that the
object is displayed withou t any transparency cffect (i.e.. the
objcct hascomplclcly nlaterializt-d visually and is perceptible
to the user). In some othcr embodiments. the optical imensity
may be the visua l dHTercmiation between the user-intertllce
object and tIl(' background. baslu on color. hue. color s;.tumtion. brightnl.'Ss. contrnst. transparency. and any combination
thcn.'Qf.
[n some embodiments. the optic.11 intensity of the uscrinterface objccts to be displ<l)"ed in the SL'Cond user-interfllce
state is incrcas<.-d smoothly. Smoothly may include a tmnsition timc that is grea ter tlmn a pre-defined threshold. fo r
example, 0.2 s. I s or 2 s. The raIC of th!;' transition of the
optical intensilY may be any predefined nlle.
In som!;' ('mbodiments. th(' indic:ltion of progress tow3rdS
complct ion of the user input condition is a function o f the
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U$Cf'S satisfaction of the condition. Fo r example. for a transition to an unlock stale, the indication of progress towards
completion is a function of Ihe user's performance of an
unlock action. For a linear fUllClion, the indicMion ofprogrcss
is 100;" oomplclcwhcn the unlock action is I OO;"colllplcIC: the 5
indication of progress is 50% complete when the unlock

action is 50% complete. and so forth. lip to 100010 completion
of the unlock action. OIl which point the transition \0 Ihe
unlock stale occurs. Corr<:spondingJy. for a linc.1T function.
the transition orthe optical imcllsily from an initial \'lllllc to a
final value is 10% complc1c when the unlock action is 10%
comph:\('; the transition is 50010 eoulplc!c wh('n Ihe unlock
action is 50% complete. and so forth. lip to 100'/0 completion
of the unlock action, nt which pointlhe optical intensity is nt
ils final value. [n some embodiments. the user may perceive
the optical intensi ty transition :tS a fading in of the userinterf<lCe objects as the lmlock action is perfonned. It should
be appredntL>d that the function need not be linear and a[ter-native functions may bc used. funhcr dctails of w hich arc
dL'Scribed below. in I\-'[ation to FIGS. 8A-Sc'
If the user input condition includes a predefined gesture
then the indication of progress orthe gestnrc lll<ly be defined
in temlS of how much o f the gesllIrc is complet(.'d and how
mllch of the gesture is reJlUlining. For example. if the gesture
includes moving the rUlgcr from oncl>dge ofthc screen to thc
opposite edge ho ri zont:llly. then the indic<l tion of progrl"sS
may be defined in tenns orthe diSUlnce betwccn thetwoedg('s
because the d ist<lnce renmining objectively measures how
much furthcr the user has to move h~r finger to complete thc
geslllre.
If the user input condition includes dragging an imagc 10 a
predefined location, then the indi(':ltion of progress m.1Y be
defined in tenn$ of the distance between the initial location of
the image and the predefined klCiition to which the image is \0
be dragged in order to complete the input condi tion.
If thc uscr input condition inch:des dragging an imagc
along a preddined path. then the indication of progress may
be defined in tenns o f the length oflhe predefined p.1th.
FIGS. 7A-7D illustrate theGU I display ofa device 1hat is
lransitioning the optical intensity of user-interface objects
concurrent with a transition from a first user interf.-lce stilte to
a second u:>cr interlace state. accordi ng to some embodiments
of the invention. In FlG. 7.'\. the device 700 is locked and has
received an incoming calL nle devicc 700 is displaying a
prompt 706 to the u:>cr. informing the user of the incoming
c<llL on the touch screen 7 14. Thedc\'ice is also displaying the
unlock image 702 and channel 704 so that the user can unlock
the dl"Vice 700 in order to accL'Pt or ~line the incoming call.
The user begins the unlock action by making contact on the
touch SCrl'CU with hcr Hngcr 7 10 on thc unlock image 702.
In FIG. 713. Ihe u:>cr is iu the process of dragging theunloc k
image 702 along the channel 704 in the direction of movement 7 12. As the user drogs the unlock image. a SCI ofvinual
bUllons 708 appears and inc reases in optical intensity. lbe
vinual bUllons 708 aTe shown with dJtwd outlilK'S to indicate
thatthcy are not yet at their fin<ll optic;)1 intensity k'Vels.lbe
virtual bUllons 70S are associ:lIc<1 with the prompt 706; the
vinual bullons shown in FIG. 713-7 Dallow the user to decline
or acccptthe incoming call. Howevcr. the u:>cr cannot inter:lct
with the vinual bullons 70S IInti[thc device is unlocked and
the virtua l billions have rC<lched thcir final o ptical intensity. In
FIG. 7C , the user drags thc unlock imagc 702 further along
the channel 704 in the dirl'Ction ofmovcment 712 . nlC virtual
bUllons 708 havc incrcased funher inoptical intcnsity relative
10 thc ir optical intensi ty in FIG. 7B, ;tS illnstr:tll-d by their
to
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difTcTl.'nt sty[e of dOlled outlines. 'lbe increases in optical

intensity indicatc to the user progress towards com pletion of
the unlock act ion.
[n FIG. 7D. the lIscrcompk1es the unlock action by d mgging the unlock image 10 the right end of the channcl 704 and
releasing the unlock image 702. Thedcvice 700 transitions to
the unlock state. 'lbe unlock image 702 and thc channel 704
disappt'<1r from the display and the virtual bnllons 708 are at
their final optical intensity lL"Vcls. ilS il[ustralL-d by their solid
outlines. At this point the IIscr may intcract with thc virtual
bullons 708 and accept or dL'Cline the incoming ca[1.
..\s described above in relat ion to FIGS. SA-SD. if the
unlock action fails because the user releases the unlock image
prenmlllre[y. thc unlock imagc may retum to its initial location.ln some embodiments. theoptic;11 intensity of the virtual
bUllons 708 OT other user-interface objects thai were increas,
ing in optical intcnsity as the unlock action was perfomled
lll;)Y. concurrcnt with the retunl o f the unlock illlllge to its
initial location. have their optical intensity decreased
smoothly, back to their initial [evcls.
F[GS. SA-8e are graphs illllstrating optical intcnsity as a
function of the completion of the user input condi tion.
according to somc cmbodimentsoftheinvcntion. [n FIG. SA.
the optical intensity is:1 linellr function of the complction of
thc user inplII condition. At 0% complction. Ihe optical inten
sity is at an initial villuc (in Ihis case, the initi;)1 va lue is 0 ). As
the t'OJllpletion percent:tgc incrcasL'S. Ihe optical intcnsity
increascs linearly with the completion percentagc, IInti[ it
rc<lchcs the final value at 100% completion.
In F[G. S8 , the optic;l! intcnsily is a non linear funC lion of
the com pletion of the user input condition. At 0% completion.
the optiC<lI intcnsi ty is at an ini lial value (in this Co.1se. the
initial value isO).As the completion percentage inc rl'<1scs. the
o ptical intcnsity incTC<lscs gradually aI first. but the increase
becomes stL'Cpcr as the completion percentage increases,
until it reaches the rmal value a1 100% com pletion.
[n F[G. 8C . the optical int('nsity isanothcr non linear function of Ihe complction of the user input condition. At 0%
compleliOIl_ the optical intcnsity is at an ini tial value (in this
case. the initial value is 0). As the completion perccntage
incrc;lses. the optie;ll intensi ty increases steeply at first. bIH
the increase oc'OOmes more grad ual ;tS the completion percent.1 ge increases. until it rcachL'S the fin;t1 value at 100'%
comple1ion. In ~Ille emhod;men l ~, the 01'1;(:;,1 i n tcn~ity m:.y
increasc according to a logarithmic :>cale.
[n some cmbodiments, the optical intensity may reach its
final value prior 10 100% completion orlhc lIser input condition (e.g .. at90%comp[etion).
User Interface Active Sllltcs Corresponding to Events
or Applications
FIG. 9 is :t tIow diagram ill ustra ting a proccss 900 for

transi tioning a device to a u:>cr interfhce active state corresponding to one ofa plurd1ity ofwlloc k ima ges. according to
55 some embodiments of the invcntion. In some embodiments.
the dL"Vice may have one o r more active applications OIlming
when the device becomes locked. Additiona lly. while lockl-d.
the device molY continue to receive events, such as incoming
calls, lllesS;1gL'"S. voiccmail notifications, and so forth. lbe
00 dL"V ice may display multip[e unlock images on the touch
screen. each unlock image corresponding to an active app lication or incomingevelli. [,('rforming the unlock action using
one of the mUlti ple unlock images unlocks the device and
displays the application andlor event corresponding to the
65 unlock image. 'l1IC user interface active state. as USl-d herein.
mcans thm the device is un locked and 11 corresponding ;.pplication or L'Vcnt is d isplayed on thc touch SCrl'Cn to the uscr.
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17
While the process now 9 00 described below includes 11 numFIG. 10 illustrates the GUI of a device 1000 in a userinterf.1Ce lock state th;11 displays a p!ur;llity of unlock im;lges,
ber of operations thai appear 10 occur in 11 sp(.'Ciflc order, it
aocording to some ~'mbodiments orthe inYo.'ntion.ln FIG. 10.
should be apparent thai these processes can include morc or
the touch sen."Cn 1014 o f the device 1000 is locked. A first
fcwcropcrmions. which can be executed serially or in parallcl
(e.g., using p.1rnlkl processors or a mul ti-th reading environ- 5 unlock im.:lge 1002 is displayed with corresponding visll.:lI
cues, such as the first cilluUlel 1004 and ;Irrow 1006.A slXond
mcnt).
unlock im.:lge 1008 is displayed with corresponding vislwl
-l1le dL"Vicc is locked upon satisfaction ora pn::dcfUll-d lock
cues. such as the SIXOnd channel 10 I 0 and arrow 10 12. "[ne
condition (902 ). "I1IC device JlIay have aClive applications
touch sc reen 10 14 illay display additional unlock images and
running when it is lockt,,() and the active applications may
vistl.11 CUl'S. "Inc !irst unlock image 1002 corresponds to a first
continue running while the device is locked. Additionally.
running applicmion or received event. TIle second unlock
while the d(:vicc is locked, the device may n:ccivc events.
in1.1ge 1008 corresponds to a slXond mIming app1icMion o r
such as incoming calls. messages. and voiccnI[lil notifican..-..;ci\"~"lII.."Vclll. '111e fin;t "no .....:un<.l unlock im"seSllJtU vis u.. 1
tions.
elles arc similart o thcunlock image and visual cues described
11\C device displays a plumlity of unlock images. each 15 above. in relation to FIGS. 4A and 413. 'l1le arrows 1006 and
dispJayl-d unlock image corresponding 10 an active applica10 12 m;lY be animat('d to move from one end of the chmlllels
ti on mnning or an event n.'Ceived while the dev ice is locked
1004 andlor 10 10 to the other end, in order to indicate the
(904 ). [n some embodiments. the dlvice also displays visual
proper direction of the pfL-defined gesture o r movement orthe
c ues of the unlock action with respect to e~ch unlock image.
unlock im~ge.
111e device may display ~dditional unlock images (um visual 20
F IGS. 111-\- 111' illustrate th(' GU I display of 0 device at
cues as additional events are n.."Cei\c.:j. The user makes eomaet
various points in the perfOllllancc of an unlock action gesture
with the touch screcn (9 06). "Ine d,vice dell"Cts the contact
correspoJming to one of a plurality of unlock imag('s, accord ing to some embodiments of the invention. In FIG. I IA. the
gl'Sture (908). [fthe detectcd COtl t;l C! gesture does not correuser makes con tact with the touch screen \014 using her
spond to successful perfonnance of the unlock action with
respect to ;my one of thc displayed unlock im;lges (e.g .. 2S finger 11 02 (not shown to scale). at the location corresponding to the SI.."COnd unlock image 1008. '[be user perJamls the
because the contnct is not an allempt to perform the unlock
unl ock action gesture by moving the point of contact. drag~ction orthc un[ockaction faikdlwas abo rkd)(910- no), the
ging
the second unlock image 100g. F[G, l i B shows a Slk1pdevice rcmains locked (912). If the dctected contact gesture
sho t of the device 1000 during the telmency of the un lock
dO<.'S correspond to succl'Ssful perlormance of the unlock
acti on with respect to one o f the displayed unlock images )0 action. The SlXond unlock image 100g is moved along in the
cll.1J1Jlel 10 l O in tIle direction of mowment 1104.
(910- Yl"5), the touch screen is unlocked and the mnning
FlG. II C shows the SI..-COlm unlock image 100g mO\'l..'d to
application or event corresponding 10 the one of the unlock
the elm o f the channel 10 10, where the unlock action w ith
images is displaYl>don the touch screen (914). In other words,
respL"Ct to the SI.."COnd unlock image 1008 will be completed
the device transitions to a Ilr.;t active state corresponding to 35 once the user breaks the contact (and rcle;lsl..'S the second
the fir.;t im;lge if the detecll>d contact corresponds to (I preunlock image 1008). [n someembodimcnts. the unl ock action
definl--d gesture with respl'Ct to the fir.;t image: the device
iscompletcdwhelltheunlock image 1008 is moved tothe('nd
transitions toa second activestatedistinct from the fir.;t active
of the chann('1 10 I O. with or without the user breaking const~te and corresponding to the SIXOnd im~ge if th e dctcctcd
t.:lCt. and the second unlock image 1008 disappears. As shown
contact corresponds to a predefined gesture with resJX'Ct to 40 in FIG. l i D. upon completion o f the unlock action with
the sl'Cond image; and so on.
resJX."Ctlo the ~crond unlock image I OOg, the dl..-vice displays
"[11e dl'Vice becomes unlocked and makes the l"Qrrespond,
on the touch screen the user~interfaceobjects 1106 associated
ing event or application v isible to the u;;cr. active. or nmning
with the app lication o r l-vent corresponding to the second
unlock image 1008. In F IG. II D. the event corresponding to
in the for<'lifOund. ~s opposed to nlllning in the background.
upon pertonmmce of the unlock action with reSpL"Ct to the 45 the second unlock image is an incoming text ml..'SS<lge l..'Vent
panicular unlock image. "Inc us('r-interf:1ce .:lctive state
alm.:l prompt for the uS('r to read it.
includes the n\llning application or incoming l..'Vent corn..'The user. inslead of perfonning the unlock action with
sponding 10 the p.:lnicular unlock inmge with whi('h the user
resJX"Ct to the sl..'Cond unlock im.:lge 1108, m(lY inS1<'lld periJU('rllcted bdng displayed prominently on the touch screen.
larm the unlock action gesture with respect to tile first unlock
in addition 10 the dl'Vice being unkx:ked. 'lnus, unlocking 50 im<1ge 1002 . In FIG. lI E. the user docs so .:lnd performs the
using a first unlock image (if multip[e unlock images arc
unloc k action w ith reSJX."Ct to the first unlock image 1002 by
dragging the first unlock im;lge, in the din.'Ction 11 04 , to the
displayl-d) trllnsitions the <i<:vice to a first user-interface active
state. in which the device is unloded ~nd the ~pplicatiolll
right end of the channel 1004 . Uponeomp[ction of the unlock
action. the dl..",ice 1000 displ ays the user-i nterface objl"C\S
event corresponding to the first unlock image is displayed
promilwnt!y. Unlocking using a second imoge trousitions the 55 1108 ossociat~'(! with the application or eWl\1 corresponding
device to a slXond user-interface aetlv(' state. in which the
to the fir.;t unlock image 1002. In FIG. II F, the application
device is unlocked and the appl icat iOIIlI.."'ent corresponding to
correspoJming to the first unlock image is a music pl.:lycr
the second unlock image is d isplayed prominently.
applicalion.
In some embodiments, the transition to a user interulce
In oome embodiments, the device may prioritize which
unlock images to display. 1ne device may display a subset of 00 Hctive st..1te. as described in FIGS. 9 ;Uld I IA- II E. may a[so
include a concurrent transition in the o ptical intensity of
the carrl'Sponding unlock images 011 the touch scrl"Cn at one
time. TIle device may decide which sllbset todisplay based on
user-interface objects. similar to thaI described a bove in fL'laone o r more pn..'<Icfint--d criteria. Forcxomple. the device may
tion to FIGS. 6 . 7A-7D. ~nd 8 A-Be. Concurren t with the
display only unlock imoges corresponding to the most recent
transi tion to a user interface ac tive state. the user-interf:1ce
events and/or runn ing opplicmions. As another example, the 65 objl'Cts associall>d. with the application or event corrl..'Sponding to the unlock image with which the user int('racted to
device may d isplay only unlock iDl.:lges corresponding to
incoming I..-vents.
unloc k the dl.'\'ice incn.-ase in intensity. For I..-xample. the
"
A684
Case: 15-1171
Document: 40
Page: 459
Filed: 03/06/2015
US 8,046,72 1 B2
20
19
optical intensity orlhe user-interface objccts 11 06 associated

detccIL'd contact whilc continuous contact with the
wilh the Icxlmcssagc prompt in FIG. 11 0 may be increased
touch-sensitive displny is maintained. whcn:in thc
smoothly. as a fUllctionoflhc progress lowardscomplclion of
unlock image is a grllphical. intcractive user-intcrf..1ce
object with which ~ uscr intcrJcts in order to unlock the
the unlock action with rcsJX.'C\ to tbe second unlock image
device: and
1008. As ,lIlother example. the optical in1<:nsity of Ihe user- 5
interface objccts 1108 associalcd with JlIusic pbyer applica.
to unlock the hand-held clectronic dt"Vice if thc un lock
tion in FlG. I I F may be increased smoolhly, as a fUllction of
imllge is movro from thc first prcdcfinro location on the
touch scrt"Cn to a pfL'<iefincd unlock n:-gion on the tonchthe progress towards completion of the un lock action wilh
r(."Sp.:cIIO Ihe first unlock image 1002.
sensitive dispby.
' [liC fon:goingdcscriplioll. for purpose of cxplrmalion. has 10
8 The dcviccofclaim 7. furthcrcomprising instnlctions to
bc.:::n described willi reference 10 spcdfic embodiments. HowdisphlY visual cues to conUllunicate a direction of movement
eve r. Ihe illustrntivc discussions above a rc not intended 10 be
of the unlock image required to unlock the device.
clllwlIslivc ur lu limi, Ihe invcllliull tu lhe pf\..-.:isc furms dis9. The ueviee ufelaim H. wherein lhe vi~ual cues cumprise
te)([.
closed. Many modifications nnd variations are possibll;' in
vk-w of lhc above leachings. 'l1IC I;'mbodimcnls wI;'re chosl;'n 15
10. Thc device of claim 8, wherein said visual eucs comprise an arrow indicating a gcneml direction of movement.
nnd dcscribro in ordl;'r to best explain thc prillCiplcs of the
I I . A port:lble elt-ctronic devicc. comprising:
invenlion nnd ils pra<:lic<l1 <lpplications, 10 thereby enable
OIhcrs skilled in thc <lrt 10 best utitire thc invcntion and varimeans for displaying an unlock imagc at a lirst prcdefinro
ous embodiments wilh various modifications as arc suilL'd to
location on the touch-sensitive display while the device
the pank-ular use conlcmplatro.
is in a uscr-interface lock state;
What is claimed is:
means for detccting contact with the touch-scnsitive disI . A mcthod of unlocking a hand-held clectronic device.
play; and
thc device ineluding a touch-sensitive display, thl;' Illethod
me~ns for continuously moving the unlock image on the
comprising:
touch-seru;itive display in response to dctt'Cting the condctectinga contact with thc touch-scnsitivcdisplay at a first
t~CI in accordance with movement of the contact while
pn.'dcfinro location corresponding to an unlock image;
continuous cont.1ct with the touch screen is nmintained.
continuously Illoving the unlock imagc on Ihe touch-senwherein the unlock image is a graphical. internctive
sitivc display in accordancc with movcmcnt ofthc conIIser-imerface objcct with which a uscr illterncts in order
tnct whilc continuous eOnlact with the touch sereen is 30
to unlock the device; and
llIailllained, whl;'rein thc unlock imatrS is a grnphkal.
me:UIS for trnnsi tioning the device to a user-interface
interactivc user-interface objt'Ct with which a user intcrunlock state if the moving the unlock image on thc
acts in order to unlock the devicc: and
touch-sensitive display results in movement of the
unlocking the hand-held electronic dC"llicc if thc moving
unlock image from the first predefined location to a
thc unlock imagc on the touchsensi tivc display results 35
prtxicfinro unlock region on the touch-sensitive display.
in movemcnt of thc unlock image from the first pre12 . .'\ computer rcadab le stomgc mroium storing one or
ddinro location to a pre<k-fincd unlock n:-gion on thc
more programs. the one or more programs comprising
touch-scru;itive display.
instroctions. which when c)(ecutcd by a pon.'1ble elcctronic
2. 1bc method of claim I . wherein tllC moving comp ri ses
device with a touch-scnsitivedisplay. causc the portable eit"Cmo\'cnK'nt along any dcsired path.
40
tronic device to pcrtorm a mcthod comprising:
3. 'Jbc method of claim I . wherein the moving comprises
detcclinga contact with thc touch-scnsitivedisplny <It <I first
movcmcnt along a prt'<icfined channel from the flJ"St prepredcfined location corresponding to an unlock image;
defined location to thc predcfinro unlock n:-gion.
continuously moving the unlock int<lge on the touch-scn4. TIIC mcthod of clnim I. funlll..T comprising displaying
shive display in accordance with movemcnt ofthc convisu.11 cut'S to comillunicate a direction of movemcnt of the
tact while continuous contact with Ihe touch scn.'Cn is
unlock image required to unlock the device.
maintainro. wherein thc unlock intngc is a graphicnl.
5.11lcmcthodofclaim 4. wherein tllC visual CUL'S comprisc
intemctivc user-intcrface object with which a user intcrtcxt.
acts in order to unlock the device: and
6. 'lbe method of claim 4. wherein said visual CUL'S comunlocking the Iwnd-held electronic device if the moving
prise an arrow indicating a general difL'Ction of movemcnt.
the unlock imagc on the touch-sensitive display results
7. A portable electronic dt"Vice. comprising:
in movement of thc unlock image from the first prea touch-sensitivc display:
defined 10cMion to a predefined unlock region on the
memory;
tonch-scru;itive display.
one o r more processors; and
13. The mcthod of claim I . wherein the unlock image is a
oncor more modu les stored in the memory and configured
55 single image.
for execlllion by the one o r more proccssors. the one or
14. The device of claim 7. wherein the lUllock image is a
more modulcs including instnlCtions;
single imagc.
to (\ctt"C1a conl~ct with the touch-scnsitivedisplay at ~ first
15. 'I1te compnter readable stornge Illt'<iium of ci:lim 12.
predefinro location corresponding to an un lock image:
wherein the unlock imagc is a single im:lge.
to continuously move the unlock image on the touch-sensitive display in accordance with movcment of the
"
A685
Case: 15-1171
( 12)
(54)
Page: 460
IIIII ~IIII
I IIIIIIII
Document: 40
(10)
Kocicnda d al.
(-I5 )
MET II O I>, SYSTEM, AI..;"!) G I{AI>LlI C AL USER
6.469.7!Z
J)I
6.S~n.)4S
JJ2
III
IJ2
III
112
B2
PIIDVfI)l :SG WOR n
6.1 ]4.221
6.795.059
6.1)3.905
RECO)' L\'l ~~ N J)AT I ONS

(75)
(13)
(.)
Inventors: K~ n ne lh Koci ... ndll . Sunn),vale, CA

(US): Ih ~ Ord ing . SDll Fronci:K;o. CA
(US)
Assigncc; Appk
Notice:
In ~ ..
6.857.800
7.038,659
App!. No.: 111620,642
(22)
Fi led:
Cupcrlino, CA (US)
i ll t.
71998
.................. 115/200.
71 5/230.231, 255. 261. 263, 263. 271
Sec application fi le for cornplE'le search hi story.
One :Upccl o Ctile invenlion involvcs a method that includes:

in iI first ;'rf!a of the tQltch screen , displayinS " Cl, r ICl\t c h.~ r
acter .tnng b<i tlg input by 11 user with the keyboard: in It
second are,Lorlhc touch SC(\,'CIl. displaying the current char
acter string or <I port ion tllCl'L'O f and a sugg... ~tcd rCpl:K:('~I}Cnt
for the ctlrr~'1L character stri ng; rt."laci ng Ihe CUITCLtI charitcter s tring in the !irst ~ rca wi lh tllcsnueslcd replacemen t ifl hc
us.:r oCl ivat~':S a dc lirn itcr key 0 11 thc keyboard: rcp loting th"
current cha mckT Siring in Ille lirst nrea with IOC su ggcsled
rcplaccmC1lt if the uscr perform s n first gesture o n the sug
g~.,;t~d rcp l"c~mcnl di~pl"yl'\J in the .......;\)nd arc,,: "nd k~~ping
th e current char.octer stnng in Ihe i1rsl atCll ; f the uscr ],!erfomlS
n soxond B""turcon the curr<'nt chnrnclCr string orlhc pcrtion
tllcl'I.'Of displayed in tlt e second area.
(56)
6 .040.112~ A
HI
Bt
Bt
6.307.548 BL
I'ATENT IX>CUMl:NTS
411994 IVcbcrel aI ............... 364 '4 19.1
4/ 1998
Scl k~r
3451146
51 1998 Vargas .................. J64n09.12
Ik~I""Tl ~t.1.
. '""" ...... ) 45/354
Mill~ r 1."1
al. _ .......... 365189.0 t

Madaw~ C1 al.
....... 3451173
612000 ll eikkinen (t , 1. ............ 455 S75

11200 1 Nowias d aJ. .............. 345116S
11200 1 Mooft ~ .1.
....... 3451173
"200 1 llo<:brn.~
............... )~ 5I 168
101200 1 l'I iltchcmClaL
........ J 4StJ52
38
---::--
..
ABSTRACT
(:57)
<l (C I ~s~lficaIJ on S~ lIrch
411999
312000
M u!}!"ul, I....w ]s & Bv,;kiu:;
1.1.P
,,' Ietd
6.073.036
6.169.538
6.259.436
6.27 I.1n5
10/2004 ("~Cl ~j
14 V I7l
2/200 S Zh:mgct :>l , _.
..... * 400 '473
512006 R.jkow;ki .................. _ 3451156
Primary Examiner - Stephen! long

As<iu,,"1 Kramin",. - Gregory J Vmrghn
(2006.01)
1011998
J 4517 ~
a n -lEI{ j'UULlCATIONS
J Ill. 10. 20011
(58 )
.. _
......... _ 345/ 173
(Conti nu~'d)
U.s. C t . ........ 7 151263: 7 151255: 7 151261: 7 151268:

7 15/27]
u.s.
. ........ " 345 1&
Officc Action dstei1 Nov_ 20. 2009. r<-eci",,,l io U.s. .\I'P1. '10 .
I I GlO.M I (rdat"'l).
(52)
~.S96.)2t
712003 lIi nhbcrg ...

312{)()ol Chnstle ~~ al.
912004 End"
(7 4) AI/utili:)'. Ag!"lII. ur Fir", -
5.105.205 A
5.736.974 A
~.148.s!2 A
5.8 18.451 ;\
20 11
(Continued )
Ct.
(ilIW Ilill
6~
1012002 Ki.. "", d a l................ _ )451837
W09833 111
I'rlor Pu b lication I)a ta

US 2008/01 683661\1
Dec.
FORE]GN I'ATENT lX>CUMENTS
wo
.r.ln . S, 2007
(65)
US 8,074,172 82
(Conti nued)
Subject to a ny disclaimer. the tcrm Ofl his

p"lcnt is extL~ldcd or odjmtcd under 35
U .S.C. JS-\(b) by 124'.1 ditYs.
(21 )
(5 \ )
Pat ent No.:

Dat c or Pa tent :
Il'oTERF'AO:
I:OI~
Filed: 03/06/2015
C I "i m ~.
14 1>rIlWi llg
S hc~t,
It... . .
"\-.. J.
..X-'
.. . , . .. ,, .
...
. . .. .
",
,"
,

8
... ,
- --
JOINT TRIAL EXlDBIT NO. 13

Uniid State; District Court
Nonhnn District of California
No_ 12-CV-00630UIK (psG)

ApplB Inc.
Date Admi~d:
A686
l'.
Samrung ElBa.
By:
APLNDC630-000 191 4273
Case: 15-1171
Document: 40
Page: 461
Filed: 03/06/2015
US 8,074,172 8 2
Page 2
7.057.607
7.194,699
7.'143.316
7.477.240
7.508.324
U.S. PATENT IX>CUMENTS

132
612006 Ma}'Qraz d:ll. ............. 3451173
62
312007 Thomson C1 ~l. ............. 715f8n
132
10/1008 Lim
"" 34 1/22
112009 YanagiSilwa .................. 3 451173
132
132
) / 2009 S ur"qui ........................... 34 1122
7.526.738 132
7.679.534 132
7,(,83.886 3 2
7.712.053 B2
7.725,838
200210085031
200210 140679
200210191029
132
AI
Al
AI-
200310090467 A I
2003/0149978
200310193481
2(03/01977)6
2004/0070567
2004 '0135774
200410160419
AI
AI"
AI
AI
Al
Al
2004/0178994 Al
2004/0183833 Al
412009
3120 10
3120 10
5120 10
512010
712002
1012002
1212002
512003
812003
10/2003
10/2003
412004
712004
812004
9/2004
9/ 2004
2004'0196256 AI" 1012004

2005/0024341 ,\[ "
200510190970 Al
2005102 16331 AI
200510278647 A I
2006/0152496 AI "
2006.10206454 A I
2006/0246955 A I
2006 '0265648
200610274051
200710040813
200110061754
200710061272
200710130128
200710152978
200810059876
2009,0327977
AI
AI"
AI
Al
AI
Al
Al
AI
AI
212005
9/ 2005
912005
1212005
7/2006
9/ 2006
1112006
1112006
1212006
212007
) / 2007
) /2007
612007
7/2007
3/ 2008
1212009
Ording ct al. ................. 7151862

Kayctat. ..
.. ,,,.341 122
Willey ..... .................... 3451169
Bradford ci al.
715/864
Williruns ...................... 7151816
Lea"ill ct at.
345'765
Wen ..
..345/ 168
Gillespie ~'1 al. .............. 345/810
HoM el al. .................... ) 45/ 168
Plotnick .
725139
$Qkolsky
345/ 173
Murphy ........................ 345n80
t ongeel aI .
345/ 156
La Monica .................... 3451174
l'a<lgil1
) 45/ 173
Kairls. Jr.
3 45/ 173
Chua ............................. )451773
Wobbrock Cl nl. ............ 3451156
Gi llespie ~1 al. .............. )45f173
Griffin ......................... 3821209
Ahrens ct al. .................. 705111
Leavill el at.
7151765
Knaven ......................... )451172
l'orslal1 eI al.
707/3
Nirhamo <.1 al. ............ 455 566
Rain;slO el aI .
7151534
Longeel at. .................. 345/ 173
Kushler el at.
3451173
Ardhanari d al ............. 7 15'816
I'lynl ~1 al. ....................... 707/)
Garg el aI ........................ 707/3
Kocienda ct al. ............. )451173
Hanller el at. ................ 715/257
Bachfischerel al. ......... 7 15/863
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Applicalion l'CTIUS2007/088871. ,n.,ik...1 May 8. 2008.
Jmernalional S'::llfch Repon and Wrillen Opinion for lnlern:llional
Applkalion PCf/ US20071088873. 1n.1iled May 8. 2008.
omce Action daloo Apr, 10.2009. for U.S . AppJ. No. llf549.624.
Office Act ion dak...1 May 22. 2009. fo r U.S. App!. No. 11I459.6J5.
Office Acl ion dal<"d May 28. 2009. for U.S. App!. No.1 Jl459.606.
Office Act ion dmed Jul. 22. 2009, fo r U.S App!. No. 111549.624.
Final Office AClion (\.oiled Jun . 25. 20 10. n..'C~ivcd in U.S. Appl. No.
11/620.641
Omce Ael ion dillc<1 May 26. 20 10. r~'Ceived in European Applicalion
No. 07 869 922.0 .....hid corresponds 10 U.S. Appl. No. 1 1f620.64 I .
Officc ACl ion dal~-cl May 26. 20 10. received in Europcan Applicalion
No. 07 869 923.8. whkh corresponds to U.S. App!. No . 111620.642.
NOIiec o f Allowance timed Jun. J. 2010. recdvc<1 in U.S. Appl. No.
111549.624.
l'in.al omce AClion (b led Feb. 1. 2010. reccived in U.s. Appl . No.
11/ 549.624
Office Aclion dal..,dApr. J. 2010. r~'Ceivc<1 inAustralian Palent Applicalion No. 2007342164. which co""sponds to U.s. App!. No.
111620.641 .
Office Ael ;on dalcd Nov. 25. 2010. r.xcivcd in Chinese l'alcnl Applicalion No, 200780052020.1. which corresponds 10 U.S. Appl. No.
111620.64 I.
Office AClion dmed Th...-c. 7, 2010. received in European l'alCnl Applicalion No, 07 869 922.0. which corresponds 10 U.S. Appl. No.
11/620.641 .
cited by examiner
A687
APLNDC630-0001914274
Case: 15-1171
u.s. Patent
Document: 40
Dec. 6, 2011
Page: 462
Filed: 03/06/2015
US 8,074,172 82
Sheet I of 14
Memory ill
'\
V '22
V'24
V '25
'26
V
V 128 3
V 130 '2
V '3'
Operating System
Communication Module
Display Module
Contact/Motion Modu le
Graph ics Mociu le
Appl ications
Keyboa rd Modu le
V 133
V ' 36
Word Recommendations
Module
Dictionary
103
"-
Power
137
System
Optical
Sensor
V '48
Ex:ternal ,.;-1 35
Port
]'
'" 103
lr-116
1 04 ../
12 0---"
Controller
.,'03
1 18 ---"
1~3
Peripherals
Interface
RF C ircuitry
'~
1~03
Processor
46
,.;- 108
Speak er 142
Audio
Circuitry
FLl-
kJ
Mlcrophone 144
103
110 S ubsystem
106 .../
Touch Screen
Controller
Other Input
Controller(s)
~1 34
132 ~
1""'1 03
~103
Touch Sensitive
112.../
Display System
../ 114
Other Input
Control Devices
FIG, 1
A688
APLNDC630-000 1914275
JOINT TRIAL EXHIBIT NO, 13, Page 3 of 24
Case: 15-1171
u.s. Patent
Document: 40
Dec. 6. 2011
Page: 463
Sheet 2 of 14
Filed: 03/06/2015
US 8,074,172 B2
Portable Electronic Device

200
000
210~
GG0008G880LDuJD
008008888008
000800GLJLJ(D(
G0(
Shift
Space
)( Backspace )
menu
FIG. 2
A689
APLNDC630-0001914276
Case: 15-1171
u.s. Patent
Document: 40
Page: 464
Filed: 03/06/2015
Sheet 3 of 14
Dec. 6. 2011
US 8,074,172 B2
300
\..
Display a current character string in a f irst area
02
04
~
Display in a second area: the current character
string or a portion thereof, and a suggested
replacement for the current character string
Activate a key associated with a

delimiter (e.g ., space, certain
punctual ion marks)
Perform gesture on the current
character string or porti on thereof

in the second a rea
User
"
Perform gesture on the
suggested replacement in
the second area
Replace the current character

string in the first area with the
suggested replacement
310
308
Keep the current character
string in the first area
FIG. 3
A690
APLNDC630-0001914277
Case: 15-1171
u.s. Patent
Document: 40
Page: 465
Filed: 03/06/2015
US 8,074,172 B2
Sheet 4 of 14
Dec. 6. 2011
=
200
~
-I---
ouo
12 :35 PM
Take the
218 -
l/
I[JJ
208
~ 220
2ll
ill
210~
GG008808GSUJIJD
000000008008
0008GGGLJO(D(
GG(
Space
menu
Shift
)( Backspace )
FIG.4A
A691
APLNDC630-0001914278
Case: 15-1171
u.s. Patent
Document: 40
Dec. 6, 20 11
Page: 466
Filed: 03/06/2015
US 8,074,172 82
Sh eet 5 of 14
F
Portable Electronic De vice
200
~
~ !----,
ee o
12 :35 PM
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218 -
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"
GG00S808G0CDmm
000080888008
00G8088CJOQJ(
J(
0 0(
Space
menu
Shift
BaCkspace )
FIG, 4B
A692
APLNDC630-000 191 4279
Case: 15-1171
u.s. Patent
Document: 40
Page: 467
Filed: 03/06/2015
US 8,074,172 B2
Sheet 6 of 14
Dec. 6. 2011
r=
200
~
'-
ee ooo
12:35 PM
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218 -
/'
.:l>
ill
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\220
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ill
210~
GG0G(j8G800(D(D(D
000008808008
00G8GGGLJl)Q)(
)
G0(
Space
menu
Shift
Backspace
FIG.4C
A693
APLNDC630-0001914280
Case: 15-1171
u.s. Patent
Document: 40
Page: 468
Filed: 03/06/2015
US 8,074,172 B2
Sheet 7 of 14
Dec. 6. 2011
p
200
~
'-~
12 :35 PM
000
.:l>
2Q8.
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218 - /'222
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000008008008
00G8GG8(J(J(D(
,-,
80
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I)
228
227/
( Backspace )
'-'
Shift
menu
FIG.4D
A694
APLNDC630-0001914281
Case: 15-1171
u.s. Patent
Document: 40
Page: 469
Filed: 03/06/2015
US 8,074,172 B2
Sheet 8 of 14
Dec. 6. 2011
p
Portable Electronic Oevice ~
200
'--~
12 :35 PM
000
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218 -
.:Jo
208
~220
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ru
ill
210~
GG00S8GOG0CDCDLD
000000008008
00G8GG0uLJ(D(
G0(
Space
menu
Sh ift
)( Backspace )
FIG.4E
A695
APLNDC630-0001914282
Case: 15-1171
u.s. Patent
Document: 40
Page: 470
Filed: 03/06/2015
US 8,074,172 B2
Sheet 9 of 14
Dec. 6. 2011
=
200
~
-~
12:35 PM
000
.::J>
2ll
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218 -
~ 222
\220
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,
I
I ~ car
226
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cal
~ C~~~::'I ~ candle I
210--..,
ill
ca e ~
218
GG0088GCJG0CDffim
000000008008
0008GGGOLJQ)(
G0(
Space
menu
Shift
Backspace
FIG. 4F
A696
APLNDC630-0001914283
Case: 15-1171
u.s. Patent
Document: 40
Page: 471
Filed: 03/06/2015
US 8,074,172 B2
Sheet 10 of 14
Dec. 6. 2011
=
200
~
~I----,
12:35 PM
000
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218 -
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I
\220
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000000008008
00G800GCJLJCD(
G0(
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FIG.4G
A697
APLNDC630-0001914284
Case: 15-1171
u.s. Patent
Document: 40
Page: 472
Filed: 03/06/2015
US 8,074,172 B2
Sheet II of 14
Dec. 6. 2011
=
----..
200
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12 :35 PM
000
I fel ~ diseonncted
218 . - / 222)
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226
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800008888008
00G80GGLJLJGJ(
G0(
Space
menu
Shift
)( Backspace )
FIG. 4H
A698
APLNDC630-0001914285
Case: 15-1171
u.s. Patent
Document: 40
Page: 473
Filed: 03/06/2015
US 8,074,172 B2
Sheet 12 of 14
Dec. 6. 20 11
=
200
~
-~
12:35 PM
000
I felq disconncted
218
l--/
22 2)
.::J>
2Qa
II
\
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2 1 0~
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800000008008
00GOGGGLJLJW(
80
Shjft
disconnected
( Backspace )
~"
"
227'-/.
menu
- - 240
FIG . 41
A699
APLNDC630-0001914286
Case: 15-1171
u.s. Patent
Document: 40
Page: 474
Filed: 03/06/2015
US 8,074,172 B2
Sheet 13 of 14
Dec. 6. 2011
p
Portable Electronic Device ~
200
'-~
COO
12:35 PM
.:Jt
229
;ru
,-,,' I
,
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, l
218 -
228}
~220
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ill
210~
GG00(j8G8G0GJOJD
000008008008
00GOGG80LJCD(
00(
Space
menu
Shift
)( Backspace )
FIG. SA
A700
APLNDC630-0001914287
Case: 15-1171
u.s. Patent
Document: 40
Dec. 6, 20 11
Page: 475
Filed: 03/06/2015
US 8,074,172 82
S heet 14 of 14
F
200
12:35 PM
(,00
.::l>
ll!l!
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2 18 -
V230 \220
214
ill
210~
GG0G88G8G0CDCDCD
800000808008
00G8GGGuuQ)(
00(
Space
m enu
Shift
)( Backspace )
FIG, 58
A701
APLNDC630-000 191 4288
Case: 15-1171
Document: 40
Page: 476
Filed: 03/06/2015
US 8,074, 172 B2
2
ME:TIIOI), SYSn :t\1, ANI> CRA PIIICAL. USE n
I ~TERFACE FOlt I'ROVIJ)I NG WOIW
RECOMMENDATIONS
RELATED APPUCATIONS
"Ibis .. pplic~!ion is related to U.S. palent ;lpplic<llion Ser.
No. 11 /620.641. filed Jan. 5. 2007. entitled "Method and
System for Providing Word Rccommcndllions for Text
[nrU1." the disclosure of which is hereby incorporated by
reference herein.
11}
TECI-IN ICAL FIELD

"lbc disclosed embodiments relate gcncmlly 10 text input
on portable ck'Clronic devices. and more p~lI'icul arly, \0 a
method, system. and graphical user inlcr!~lcC for providing
word l'Ci;ommcndalions on a portable electronic device.
15
BACKGROUND
20
[n recent years. the [unclional capabilities of portable elec-
Ironic dL"V iccs have increased dramatically. Current dL-Viccs

enable oommunic;dion by voice. tex\, ;Illd still or moving
images. Communication by tex!. such as by email or short 25
message service (SMS). has proven to be quite popubr.
However. the sizeorthesc portable communication devices
also restric ts the size or the text input device. such as a
physical or virtual keyboard. in thc portablc device. With a
size-restricted keyboard. dcsigners arc ollen rorced to make 30
the keys smaller or overload the kL)'s. Doth may lead to typing
mistakes and thus more backtracking to corrcctthe m istakes.
'nlis makes the process of inpu ll ing text on the devices inerficieilt and reduces user satisl:1 ction with such portable
35
dLvices.
Accordingly. there is a need ro r lllore emcient w;IYS or
cntering text into portablc d<.'Vices.
SUMMARY
40
'lbc abovc deficicncics and other problems assoc iated with
uscr interraces for portable dev iccs arc reduced or eliminated
by the disclosed device thm includes a text input interraec that
provides wo rd recommendations.
Accord ing to some embodiments. ;1 computer-implemented method may be pcrfomlcd at a portable elec tronic
device with a keyboard and a tOllch screen display. nlC
method includes: in a first area or the touch screen d isplay,
displaying a cu rrent clmmcter string being input by a uscr
with the keyboard; in a second arca ofthc touch screen dis
play, displaying the curren! character string or a portion
thereor and a suggested replacement chamcter string for the
current character str ing: replacing the current character string
in the first area with the SUggestl-d replaccment char-Jcter
string if the user activatcs a key on the keyboard aSS(M; iated
with a delimiter: replacing thc current eharncter string in the
first area with the suggested replacement character string ir
theuscr pcrforms a first gesture on the suggested replacemetll
charnctcr string displayed in the second area; and keep ing the
current character string in the fi rst area irthe user performs a
second gL'Sture on the currell t character string or the portion
thereor displayed in the second area.
According to some embodiments. a grnphical user interface on a portable ek'Ctronic device with a keyboard and a
touch screen display includes a first area orthe touch screen
display tlmt displays a CU1TC1l1 charncter string being input by
a user with the keyboard. and [} second area o f the touch
45
50
55
60
65
sCf(.'Cn display that displays the current character string or 11

portion thereor and a SUggL'Stoo replacement cl1.1rac ter string
forthe current clwrn<:tcr string. nlecurrent charactcrstring in
the first area is repl<lced with the suggested replacement clwructer SIring if the user activatL'S a kl')' on the keyboard associated wi th a delimiter. The current clwrncter string in the first
area is replaced with the suggested replacement character
string irthe uscr performs u gesture on the SUggestL-d repluccment character string in the second urea. The current char;tCter string in the first area is kept if the user perrorms a gesture
on the current character string or the portion then.'Or displaylxi
in the second arL-J.
According to SOIlle embodiments, a ponable electronic
device includes a touch scrcen displ[}y, one or more processors. memory. and iii program. 'lbe program is ston.-d in the
memory and conflgured to be executed by the aile or more
processors. 'Ibe program incl udes: instnlctions ror displaying. in a first area of the touch screen display, a current
character string being inpu t by a user with the keyboard:
instructions ror displuying, in a second i1rea of the touch
sef(.'Cn display. the Cllrrent charac ter string :md ;1 suggested
replaccment clwTllcler string for the current character string:
instructions ror rep lacing the current charncter stri ng in the
first area with the suggested replacement character string ir
the user activates a key on the keyboard associated with a
delimiter. instnlctions for replacing the current character
string in the first area with the suggested replacement charHcter string ir the user perrorms a first gesture on the suggL'Sted rep lacemellt clwrncter string displayed in the second
area; and instnlctiolls for keeping the current character string
in the first area if the user perlo rllls a sccond gL'StUrc on the
current chiltacter string or the portion thef(.'Or displ ay<."(1 in the
second area.
According to some embodiments, 01 computer-program
product includes 01 computer reildable stomge mlxiium i1nd a
computcr prognull mechanism embedded therein. The eOlllputer program ml'Ch:lJlism incl udes instructions. which when
eXl'CUtl'<l by a porta ble ek'Ctronic del/icc with H touc h sctcCn
display. cause the device to: in a firs t area orlhe louch screen
display. display a current characto;'r string being input by a
uscr wi th the keyboard: in:1 second area of the touch sctcCn
d isplay. dis play the current character string or 11 portion
thereo r and a suggested replacement o;'harnctcr stting (or the
current cha racter string; repbce the current ch;lmcterstring in
the first arC'J with the suggested rL-placement charJcto;'r string
ir the user activates a key on the keyboard aS5Oo;'i1lted with a
delimiter: replace the current ch1Lrncter string in the fi rst area
with the suggestL-d rep lacement charncter string ir the user
perfOnllS a first gesture on the ~Llgg<.'StL-d replllcement character stting displayed in tho;' second area; and kL'ep the current
character string in the first area irthe user perrorms a second
gL'Sture on the cLlrrom character string or tho port ion thel\.'Or
displayed in the second area.
Acrording to some embodiments, a portable electronic
device wi th a touch SC rL'Cn display includes: means ror displaying a current character string bcing input by a user with
the keyboard in a first are:1 of tile touch scn:.'Cn display: means
ror displayi ng the current charnctcrstring or a portiolltllereor
and 11 suggested replncemem Crntrneter string lor the current
char-Icter string in a sL'Cond area ortho;' touch screen display:
means ror replacing the current chnmcter string in the lirst
area with tlle suggested replacement charncler string if the
user activates a key Oil the key board associated wi th a delim iter; me;lnS lor repl:lcing the current cl1.1racter string in the
first area with the su ggested replacement character string ir
the uscr perfonlls a first gesture on the suggested replacement
chamctC'r string disp laYL-d in the sccond area: and mea ns for
A702
APLNDC630-0001914289
Case: 15-1171
Document: 40
Page: 477
Filed: 03/06/2015
US 8,074, 172 B2
keeping !he current Ch[ltaCICr siring in Ihe first area If the user
'Ibe various applications th<1t m<1y he ext-cutt-d on the

device may usc at least one common physical user-interface
device. such as the touch screen. In embodiments tha. include
H touch screen, one or Jllore functions of the touch screen as
wel! as corresponding infonna tion displ<lyed on the device
may be adjus ted and/or varied from one applic<llion to the
next <lndlor within a respective application. [n this way. a
common physical architL'CIure (such as the touch screen) of
the device n1.1y support the varie.y of applications wi th user
interfaces th.1t arc intuilive and transp.1rent to a user.
lbe user interf<lc('$ may includl' one or more keyboard
embodiments displaYL-d on a touch screen. "[be key board
embodiments may include sta ndard (QWERTy) andlor nonslandanl configurations of symbols on the displayed icons of
the keyboard. The keyboard embodiments may include a
reduced number orleans (or sol! keys) relative to ,he number
of k<.')'s in existing physical kt')'boards, such as that fOf a
typew riter. 11,is may make it easicr for uscrs to selcct olle or
more icons in the keybo.1rd. and thus. one or more corresponding symbols. '!11C kL,),bCKU"(I embodiments may beadaptive. For exanlple. dj~pbyed icons may he nuxIified in aCCOfdance w ith user actions. such as selecting one or more icons
andlor one or morc corresponding symbols. One or 1lI0rc
<lpplications on the port.lbledevice may utilize common and/
or different keyboard embodiments. Thus. the keyboard
embodiment used may be tailored to <II least SOllie of the
applications. In some embodiments. one or more keyboard
embodiments Illay be tailo["(.-d to H respl-ctive user. For
example, based on a wonl usage history (lexicogmphy, slang.
individua l usage) ofthe respt-clive user. Someofthe keyboard
embodiments may be adjusted to reduce a probability of a
user error when selecting one or more icons. and thus one or
morc symbols, whe n IIsing the keyboard embodiments.
Attention is now directed to an embodiment of a portable
conullllnic:ltionsdcvicc. FIG. l isa blockdiagmm illustmting
an embodiment ofa device 100, such as a portable electronic
dt"Vice hav ing a lauch-sensitive display 11 2. '111e touch-sensitive display 11 2 is sometimes called <1 "touch screen" fOf
cOllvenience.TIle device 100 may include a memory controller 120. one or more data processors. image processors andlor
central processing units 11 8 and a peripher<lls interface 116 .
111e memory controller 120, the one or more processors 11 8
andlor the peripher:. ls interface 1 I 6 may be separnte compo
nents or Illay be intcgr.llt-d. such as in one or more inIL-gratt-d
circuits 104. 'Ibe various components in the device 100 illay
be coupled by one or morc communicntioll buses or signul
lines 103.
lr the device 110 includes pictuTC taking capabilities. the
peripherals interface 11 6 may be coupled to an optical sensor
148. such as a CMOS or CCD in1.1ge sensor. 11te peri pherals
intert:"'lCe 116 is also coupled to RF circuitry 108: audio circuitry 11 0: andlor an input/ou tput (liD) subsystem 106. 111e
uudio circuitry 110 may be cou pled to u speuker 142 and u
micro-phone 144. '111e device 100 may support voice recognition andlor voice replication. The RF circuitry 108 may be
coupled to onc or nlorc antcnnas 146 and llIay allow COlnmunicntion with one or more addi tional devict'S. t"Omputers and/
or servers lIsing a wireless !1CtwOrk. The device 100 may
support a variety of communiclllions protocols. including
code div ision multiple access (CDMA), Global System for
Mobile Communications (GSM), Enlwnced Data GSM Environment (EDGE). Wi-Fi (such as IEEE 802.lla. IEEE
802.1 lb. IEEE 802.1 Ig undlor IEEE 802.11 n). B1uetooth.
Wi-MAX. a protocol for email. instant messaging. andlor a
short mess.1ge service (SMS). or any other suitable COmllll1'
nicntion protocol. including communiclllion protocols not yet
developed as of the filing rl.1te of this document. In an cxem-
performs a second gcslllrc on the current character sIring or

the portion theroof disploycd in the second .. rca.
BRIEF DESCRIPTION OF THE DRAWINGS
For a beucr understanding or lhe aforementioned embodiments of the invention :IS well as additional embodiments
Ihcf"C()f. reference should be made 10 the Description of
Embodimen ts below, in conjunc tion wilh Ihe following draw. 10
ings in which like reference numerals refer 10 corn:sponding
parts throughout the figurl.'S .
FIG. I is 11 block diagram iJlustrnling a portable elcctronic
device in accordance with sonte embodiments.
FIG. 2 iIluslralL'S a portable ck'Clronic device having a 15
louch SCrL'Cll and a soft keyboard in accordance with some
embodiments.
FlG.3 is a flow diagrnm illus trating a process forproviding
word nx:ommendmions in accordance with some embodi20
ments.
FIGS. 4A-4I illustrate a lIser interface for providing word
recommendlltions in accord."'lncc with some embodiments.
FIGS. SA-SB illustrate a user interface for showing originally entered text in llccordance with some embodiments.
25
DESCRIPTION OF EMBOD[MENTS
Reference will now be made in detail to embodiments.
examples o f which are illustrated in the accompany ing drawings. In the folJowingdetailed description. numerous specific
de\(lils are set forth inordcr to providen thorough understanding of the preselll invention _ 1-Iowever. it will be apparent to
one of ordinary skill in the art that Ihe present invention may
be practiced without these specific details. In other instances.
wcll-know n methods, procedur<.'S. components, circuits, and
lIetworks havc not been described in detail so as no' to unnccessarily obscure aSpL'Cts of the embodimenls.
Embodiments of user interf.leeS and associMed processes
for using a ponable ele<:lronic device are described. In some
embodimeills. the device is a ponable cOmmUnicMions
device such as a mobile tciephone. '!1IC user interf:lce may
include a click whcel in addi tion to a touch sc["(.'Cn. A click
whccl is a physical userimerf:lCe device tlk1t may provide
navig;.ltion commands based on an angular displacement of
the wheel or a point of contact with the wheel by .1 user of the
device. A click wheel may also be used to provide a user
command corresponding 10 selection of one or more items.
for example. when the user o f the dt"\' ice preSSt"S down on at
least a portion of the wht'Cl or the center of ,he whL'CI. For
simplicity. in the discussion th.1t follows, a portableclcctronic
dL"Vice (e.g.. a cellular telephone tlmt may also contai n other
functions. sllCh as text messaging. PDA and/or music player
functions) that includes a touch screen is used as an exelllplary embodilllent. [I should be understood. however. thllt the
\Iscr illterfaces and associated processes lIlay be (lppJied to
other dcvices. such as personal digital assistants (PD.'\ s).
person:11 compulers and laptops, which may include one Of
iliOn:: other physical user-interlace devices. such as a click
whccl. a kcyboard. a mouse andlor a joystick.
'Ibe dt-vice m<1y support a varielY of applications. such as
one or more tclephone applicalions, <I text messaging application. a word processing <lpplication. an em<lil application. a
web browsing applic<llion. mId a music player. The music
player m<1y he compatible with oneor more file formalS, such
<IS MP3 and/or Me. In <In exempl<lry embodiment. the device
includes an iPod music player (iPod tr<ldem.lrk of Apple
Computer. Inc.).
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plary embodiment. (he device 100 may be, ;11 least in part, a
mobile phone (e.g.. a cellular telephone).
'The liD subsystem 106 may include a louch screen controller 132 andlor other input conlrollcr(s) 134. "111C louchscreen controller 132 is COUpIL'() toa louch-sensitive screen or
touch sensitive display system 112. The IOllch SCIl.'{'t1 112 and
louchscrccllcomrollcr l J2maydclcctcoruaclandanymovcment or break then:of using any of a plumlity oftollch sensitivity h.:chnologies now known or lall-r devclopt'Cl. including
blll not limited to cap..1citivc. res istive, infrnred. and surface
acouslic wave It'Chnologies. as well as olher proximity scnsor
arraysorotherc1ementsfordetenniningoneormorepointsof
contacl wilh thetoueh-sensitivescrt'Cn 1.12.A touehsensitive
display in some embodiments o f the dispklY system 112 may
be an.1logous to the t1mlti-Iouch sen:,;itive tnblets dt'Scribed in
tlw following U.S. Pal. Nos. 6.323.846 (Westerman el aLl.
6,570,557 (Westenllan et al. ), and/or6,677,932 (Weslemmn).
and/or U.S. Patent Public:llion 200210015024.'\ 1. C<lch of
which is hereby incorporotcd by reference. Howevcr. a touch
scn_'Cn in the display system 11 2 displays visuol output from
the portoble device 100, whereas touch sensit ive t.1blets do
not provide visuol output. The touch-sensilive screen 112
may have a resolution in excess o f 100 dpi. In an exempl3ry
(,mbodimenl. the touch-scnsitive screen 11 2 has a resolution
of3pproxim3!ely 168 dpi. "be other inplll controller(s) 134
may be cou pled to OIher input/comrol devices 114, such os
one or more bullons. In sollle altenlate embodiments. input
controller(s) 134 may be conp1t.>d 10 any (or none) o f the
lollowing: a keyboard. infrared pon. USB pon. and/or a
pointer device such lIS a mOllse. The one or more bUllons (not
shown) may include an \lp/dQwn bultoll for volume control of
the spC<lker 142 and/or lhe microphone 144. '!lte olle or more
bunons (not shown) may include a push bulton. A quick press
ofthe push bunon (nol shown) may disengage a lock of the
touch SCI\.'Cn 11 2. A longer press o f the push button (not
shown) may turn power to the device 100 011 or otT. 'fbe user
llIay be able tocustomizc a functionality of one or more of the
bunons. '111e touch screen J 12 may be USt'Cl to implemenl
virtual or soU bultons and/or one or more kt..'Yboards.
A touch-sensitive display in some embodiments of the
display system 112 may be as described in the following
applications: ( I) U.s. patent application Ser. No. 11 /381 ,313.
"Multipaim TOliCh Surface Comroller." filed on May 2. 2006:
(2) U.S. palent application Ser. No. 101840.862. "Multipoint
Touchscreen:' fik'Cl on M;IY 6. 2004: (3) U.S. p..1tenl ;lpplic<ltion Ser. No. 101903.964. "Gesmrt'S For TOllch Sensitive
lnpm Devices." filed 011 JuL 30. 2004; (4) U.S. p..1tent appli.
cation Ser. No. 111048.264. Gestuf(."$ For Touch Sensitive
Input Devicl'S." fik-d on Jan. 31. 2005: (5) U.S. patent [Ipplication Ser. No. 11 /038,590. "Mode-Bosed Graphical User
Intcrf<lCcs For '[ouch Sl'nsitivc Input [k"ices:' filed on Jan.
18.2005: (6) U.S. p<ltcnt application Ser. No. 111228.758.
"Virtual InpUi Device Placement On A Touch Screen User
Interf<lCc:' filed on Sep. 16.2005; (7) U.S. patent application
Ser. No. I 11228.700, "Operation Of A Computer With A
Touch Screen [llIerlitce," filed on Scpo 16.2005: (8) U.S.
patent application Ser. No. 111228,737, "Activating Vintwl
KcysOfA Touch-Screen Virtual KcyboHd." filed on Scpo 16.
2005: and (9) U.S. patent :lpplicalion Ser, No. 111367.749.
"Multi-Function<11 Hand-Ileld Device:' filt-d on Mar. 3. 2006.
All ofthesc ap plications arc incorporatt'Cl by reference herein.
[n some embodiments. the device 100 may include circuitry for su ppaning 0 location detennining copobility. such
as that provided by the Global Positi oning System (GPS). In
some embodiments. the device 100 tlloy be used to play back
recorded music. such as one or more files , such as MP3 files
or AAC files. In some embodiments. the devicc 100 may
include the functionality of an MP3 p[<lYCT. such as an iPod

(trndcmark orAp ple Computer, Inc.). In some embodiments,
the device 100 may include a multi-pin (e.g .. 30-pin) conncclor Ih;l\ is compatible with the iPod.
"Ibcdcvicc 100 aLso includes a pQwer system IJ7 for powCrillg the various componcllIs. The power system 137 may
include a power Ilwnagcment system. one or more power
sources (e.g .. ballery. :llternating currem (AC)). a n:charging
system. a powcr f:lil uredetectiOllcircuit. a powercouvcrteror
inverler. a power stams indicmor (e.g .. a lighl-emilling diode
(LED and any ot her components associated wilh the genemtion. management and distribution of power in portable
devices. The device 100 may also include one or more external ports 135 for cOlUlt'Cting the device 100 to other devices.
The mcmory cont roller 120 may bc couplt>d to memory
102, which may incl nde one or Illore types of computer reltdable medium. Memory 102 may include high-spci..'Cl rnndom
occess memory ondlor non-vo latile mcmory, such as one or
more moglleti c disk storoge devices. olle or more optical
storage devices. and/or flash meillory. Memory 102 moy store
:Ill operating system 122. such as Darwin, RTXC. Ll NUX.
UNlX. OS X. WINDOWS. or an embedded operating system
such as VxWorks. The operalins system 122 m3Y include
procedures (or scts ofinstmctions) lor h;lJldling h<lsic system
services and for pcrlonning hardworc dependent tasks
Memo!), 102 may a lso store communicmion proccdurt'S (or
sets of instructions) in a communication module 124. 'Ibe
communication proc,--dures may be uSt-d for communicating
with one or more additional devices. one or more com plllers
and/or one or more servers. 1be memory 102 may include a
display module (o r a set ofi nstructions) 125. a contact/motion
rnodule(ora set ofinstructions) 126 to detemline one orlllore
points o f cont;tct andlor their movement, and a graphics module (or a set of instructions) 128. The graphics module 128
may support widgets, lhat is. modules or applications with
embedded graphics. 1be widgets may be implemented using
Jav;lScript. HTML, Adobe Flash. or other suitable computer
program Ianguagt'S :Illd 1t'chnologies.
The memo!), 102 may also include one or more ap plications 130. Examples ofapplicalions thm moy be stored in
llIellIory 102 include telephone applications. ellIail ap plications, text messaging or instant mess..1ging applications.
memo pad applicalions. address books orcontactlisls. colen
dars. piclure taking ;md m;magement applic;lIions. and music
playing and IImn.agement applications. '111e applications 130
may include 0 web browser (not shown) for rendering pages
written in the Hypertext Markup L.1llguage (HT ML), Wire
less Markup Language (WML). or other langua ges suitable
lor composing web pages or othcr online contcnt.
Also included in the memory I 02 are a kl'Yboard module
(or a sct of instmctions) 13 1. a word rt'COmmcndaliollS module (o r a Sci of instructions) I3J. and a dictionary 136. 111e
kl'Ybo.1rd module 13 1 opermes one or more soft keyboards.
Thc word r,-'Commendations module 133 determines word
completion or repl<lccmcntl\."'COllllllCnd"ltions tortex t cntcred
by the user. '!lle dictionary 136 includes <I list of words in a
1:lllguage. frolll which word rt'CollImendations arc dr.lwn. In
some embodimellIs. the dictionary also includes usage frequency rankings associmed with the words in lhe dicliOlULry.
Each of the above identified modules and appliclttions ,-"Orrespond to a sct of instmctions for perfonlling one or more
functions described obove. These modules (i.e.. sets of
instructions) need not be implemented a~ separate sollwore
programs. procedures or modules. 'Ibe various modules and
sub-modules mo)' be re<lmlnged and/or combined. Memory
102 may include addilional modules and/or sub-modules, or
fcv.'er moduks andlor sub-modules. Memory 102, therefore.
11)
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may include a subset or a supersct of Ihe above identified

modules a ndlor sub-modu!c:.-s. Va rious functions orlhe device
100 moy be impl(,lIIcntl'CI in hardware andlor in software.
includins in one or morc signal processing andlor <lpplic;'Ilion
sJK:cific inK'g.r<llt"<l circuits.
A11emian is now directed towards embodiments o f user
interfaces and associmcd processes lhm may be implemented
on the device 100 . FIG. 2 is a schematic di.lgram illustr'dling
an l'mbodimcnl of a uscr interface lor a portable electronic
device 200. The device 200 includes a touch screen 208 . [n
the input device and delimited from the rest of the s(:quenceof
characters enter''(j by the uscr by dclimitcrs. such as
whitesp.1ces. line breaks, and punctuation.
'Ille current character string (or a portion thereof) and one
or more suggested replacements for the current character
suing is displayed ill a second area (for example. a word
selection :lrea 2 16) of the touch screen (304). 1be second area
may he loc<lted between the first aren and the keyboard. The
one or morc sugg''SIL-d replacements. which may be words.
numbers. or combinations thereof. arc selccted from a dictio
nary 136 for displ<lY by the device in accordnncc with predefined procedures. An example of n procLxlure for selecting
SUggL'St,-d replacements fordisplay isdescrilx:d in U.S. patent
applic:llion Ser. No. 111620.641 , which is hereby incorporntl.-d by rctcrencc as bnekgraund information. 111e user may
take aile of a plural ily of actions with resp''Ct to the current
charncter string and the suggeslL-d replacement displayed in
the second area. If the user <lction is activation of,l key on the
keyboord associated with a dclimiter (J06- Ac tivate n
k'j' ... ), thc current character string in the first arc.1 o f the
touch scrt-'Cn is rcpbc,'(j with the suggested rL'Placement
(j08). The delimiter nssociated with the activated key may be
appended to the end oflhe suggested replacement in the first
area. For example. if the activated key is assoc iated with a
conUlJa. a corrulla is appended to the suggested replacement
(which rephtces the currem charncter string) in lhe first area.
In some embodiments. delimiters include spaces. line breaks
(sometimes c:rlled line returns). and terminal punctuation (for
example, commas. periods. exclamation paims, question
marks. and semicolons). In other embodiment. del imiters
may incl ude a subset of the delimitcrs listed above. and may
optionally include additional delimiters as well.
I r the user action is pcrfommnee of a first gesture on the
suggested replacement in the second area of the touch screen
(306~Perfonll gesture on the suggested repbcement ... ),
thecurreut clwrncter string in thc first area of the touch screen
is replaced with the suggestlxl replacemeL1t (308). In some
embodiments, a whitcspace is appendl-d to the end of the
suggested replacement in the first area. In some embodiments. the first gcsl\lrc includes one or more taps on the
suggestl-d replacement in the second :trea.
I fthc user nction is perfomla nce of a second gest ure on the
current character string in the second area (306- Perronn
gl'Sture on the currcnt character string.. ). the current
char<lcter string is m'lint;tined in the first <lfC<I (3\ 0). In some
embodiments, a wbitespacc is appended to the end of the
currem charucter string in the first area. In some embodi ments. the second gesture indudl.'S one or more t<lpS on the
current chamcter string in the Sl.'Cond nren.
In some embodiments. the dev ice displays a plurnlity of
suggl'Sted replacements in the word sek'Ction <Jrea. In these
embodiments. the us,-"r m<ly select the d<.'Sirl.xI replacement by
pcrlomlinga gesture on the des ir<.-d replaccment. Howevcr, if
the user "ctivaK's a key associated with the del imiter. a
rep!accmerJ\ is sekcled from amongst Ihe plurality in accordnnce with one or more dcfaull rules. For examplc, a default
nrle may be that the highest rn nked suggested rcpl:rcemeL1t is
selected.
In some embodinwnts. if the current character string in the
first ;rrca was replaced with the sugg''SIl-d replacement. the
user may review the current charncter string that wns
replaced. HIe user may perform a third gesture on the suggested replacement in the first area. After the third gesl\lrc is
perlonlled. the (origin;tl) current character string is displayed
in the first area for a predetemlined amount of time. In some
embodimcnts. the third gesture includt-'S one or more taps on
the suggesllxl replacement in the first nrea. Furthcr details
some embodiments. the louch screen Jll,IY display one or

more Imys. A tray is a defined It:g ian or area within a grnphi.
caluscr interface. One lray may includca usercntry inlerface,
such as a virtual or soft keyboard 2 10 Ihal includt-'S a plurality
oficon~. TIle icons may include one or more symbols. In this
embodiment. as well as Olhers described bclow. a user may
select one or more of the icons. and thus. one or more o f the
corresponding symbols. by nwking conWc t or tOllching the
keyboard 2 1O. for example. wi th one or mar.: fillgers 212 (1101
drawn to scale in the figure). The conl.:tct may correspond to
theoneor more icons. In sOllleembodiments. ~lectionof one
or more icons occurs when the uscr breaks comact wil h thc
one or marc icons, In some embodimems. the contact may
include a gt-'Sturc. such as one or more taps, one or more
swipes (e.g . from left to right. right to leli. upward and/or
downward) and/or a rolling ofa finger (e.g .. from right to left.
Icftto right. upward and/or downward) that has made contact
with thc device 200. [n some embodiments. inadverten t conwct with an icon may not select a corresponding sy mbol . For
example. a swipe gesture that sweeps over an icon ma y not
sclect a corresponding symbol if the gesture corrl.'Sponding to
selection is;\ tap gesture.
Alternatively. in some other embodiments, the keyboard
may be 11 physical keyboard that includt-'S a set of push buttons, a keypad, or the like. HlC physical kl.j'board is not a part
of the touch screen display. 11le physical kl.j'board includes
keys that correspond to the plurality of icons dt-'Scribcdabove.
A user may select one or more of the icons by pushing the
corresponding keys on the physicltl keyboard.
'Ille device 200 may include a displny tray 2 14. which is
displayed on the touch scr<:cn 208. 1be dispby tray 214 may
display one or more ofth, characters and/or symbols that arc
selected by the user. The device 200 may also include oneor
more physic;!1 bullons. such as the cle<lr, hold and menu
bullons shown in FIG. 2. 'Ibe menu bunon m<ly be used to
rwvigme 10 any application in a set of applications that may be
executed on the device 200. Alternativcly. in some embodiments. the clear. hold. and/or menu bullOn$ are implemented
as son k<.,)'s in n GUI in touch screen 208.
Allention is now dinctl.xI 10 FIG. 3, which illustrates a fiow
dingmmofa process flow 300 for providing word fC1:ommendations in nccordnnce with some embodiments. As lext is
enten.xI by a uscroll a device. onc or more candidate character
sequenc<."S (suggested R'Piacements) may be provid,'(j in
responsc to the entered text. Thc uscr may sckct a candidatc
ch,mlctcr sL'quence to furt}ler extend or to completc the
entered text.
A current dwrncter ~tring is displayed in n first area of a
touch screen of a portable devicc (302). In some embodiments, the current character string (which is a word, number.
symbol. or a combination thereof) is at le.lst a portion of a
sequence o f charncters entered inl0 the device by a user_The
uscr inputs a sequence of characters into the ponable device
via ;m inpu t dt-",ice, such as a keyboard 210. and the device
receives and display~ the input on the touch screen. In some
embodiments. the current character string is tlte endmost
sequence of non-whitespacc characters input by the uscr vin
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regarding rcviC'Wing the replaced current character sIrin g is

described below in relation to FIGS. SA-5U.
A11emian is now dil\,'Clcd \0 FIGS. 4.'-\-4 1. which iIluslrate
repbcement. nle current ch:ITacter sequence 222 is replaced

with the sclected suggcsted replacement. As an example. in
FIG. 4F. suggested rep[acemcnts for the current charactcr
string "cae" include "car," "cat; ' "cabinet," and "candle:' If
the user taps on the suggcsK'<I rl'Placement "cabinet." as indicmed by the contact arcn 228 in the word selection area 2 ] 6.
the current ehnractcr string "cae" is replaced in the displny
tray 2 14 with the Scll'Cted replacem~'nt "cabinet." as shown in
FIG. 4G. [fthe uscr hits a key on the keyboard 210 that is
associated with a delimiler. the current ciJ.1racter string 222 in
the display tray 214 may be rcplaced by the suggesK'(]
replacement 224 in the word selection arca 216 that is highl'St
mnkl'<l (e.g., "car" in FIG. 4F). In some embodiments. the
SUggl'Stoo rcp[llccments 224 arc display<.'<1 in ranking order
(ascending or descending. depending on the p.1nicular
embodimelll and/or user preferences) in lhe wo rd scle<:tion
area 216. so that the user may identily which suggesKxI
rcpbcement is the highest ranked.
In someembodimcnts. if the current chantcterstring 222 is
longer than a prl'<lefUl<.-d length (based on the number of
c1mr.lcters). the duplic:lte 226 of the cllrrent Char-lcter string
222 in the word selec tion area 216 mOlY show a subset ort he
characters in the current ch.1racter string 222 . For ex.1mple.
the duplicate 226 may show the first six characters of the
current char:lcter string 222. as shown in FIG . 41-1. /\s another
example. the duplic.mo;> 226 may show the first Ihrcc and the
last thrl'C characters of the current char'lcter string 222 .
As shown in FIG. 41 . in some cmbodiments. the highl'St
ranked suggested replacement 240 is displayed within the
space b.1r 227. If the user performs a predefined gesture on or
ncar the touch sen.-cn display (e.g.. taps or touches the space
bar 227). the current character string 222 is rep[aced by the
replacement string 240 shown in the space bar 227, and the
display of the space bar 227 is then returned to its normal or
dcf:iult status (e.g., blank, orwith the word "space" displac<.x1
in the SP.1ee bar (sec FIG. 411)). I! is noted that the spnce bnr
227 corresponds to a delimiter( i.e., a space). In some of these
embodiments, only the highest r:mkl" user. If the user performs n seeond
gesture with respect to the touch scr<.'Cn display. such as
tapping any kl)' of tile kl)'board other than the sp:lce bar 227,
the current charncter string 222 in retained.
'Ibe embodiments of the invention. :IS de!;Cribct:l above.
provides an intuitive way to inKY.ltc explicit word seit'Ction
(viOl suggested word replncemetlls in the second area).
implicit word se[e<:tion (e.g .. via the spnee baror otherdclimiter keys). and explicit nOlHelL'Ction of suggcsted word
replacements (via k~'Cping the current word. e.g .. lor words
with unusual spellings).
Insomeembodimems. Ihedl.... ice 200 may allow the user to
review strings rcplael"<i by uscrselectl'<l suggested replace.
ments. Anention is now dire<:tl"<i to FIGS. 5A-5R which
il[ustrate .1 user interl~ce for revil'Wing the originally entered
slrings that were replncl'<l by suggested rl'PlncelllentS. A user
lllay po;-rfonll a gesture over a word 229 in the entered te)lt 218 .
For exanlple, the uscr may tap the word 229 on the touch
screell with a finger 2 12. as indicated by the contact area 228
in the display tray 214. If the word 229 (FI G . 5/\) was 11
repbcement for some originally entered text. the originally
entered text 230 Jll.IY be displayed (F IG. 513). Aiterllntely. the
originall y entered text IIIny be displnyed if the user's finger
hoversovertheword 229 forat least a threshold periodoftime
(e.g .. 0.5 seconds. 1.0 second. or a va[ue between 0.35 and
1.25 seconds). [n some embodiments. the originnlly entered
text 230 is displayed in place o f tile word 229 for n predeter.
min(-d amount of time. such as 2 seconds . .'\ ficr the time has
:1 user interface for providing word I'\!COmmcndalions in

accordance with some embodiments. In a portable electronic
device 200. lext 218 entered by the user via n keyboard 21 0 or
olher input ma y be displayed in a first area. e.g. display tray
2 14 . .'\ CUNaror inscrtion marker 220 may be di~playt.'d in the
display tray 214 10 indicate the insertion position of the next
emcred charnel cr.
"lbe lext 218 mHY include one o r more st rings st:paralcd by
one o r more delimiters. such as spaces and punctuation. The
end-most siring in lhe text 218 may be highlighted as the
current character string 222 (FIG. 40). The current chamctcr
string 222 lIlay bea completcor incomplete word. The device
200 may display one or more suggested replaccJ1lems 224
(for exa mple. "car" in FIG. 4D; "car:' "cat;' cabinet." and
"Clllldic" in FIG. 4F) in a se<:ond area, e.g. word sele<:tion area
216. /\ duplicate 226 of the current charaeto;>r sIring 222 may
also be displayed in the word sck'Ction area 216. In some
embodimen ts. the suggesh:.-d f(:placement(s) and the current
eharactcr string duplicate 226 are displayed on opposite sides
of Ihe word sehxtion aro;-a 216. For example. Ihe suggested
replacemen t(s) may be displayed in the [eft side of the word
scle<:tion area 2] 6 and the current character string duplicate
226 may be displayed in the right side of the word scle<:tion
area 2 16.
lhe uscr may pl'rfOnll Hgcsture (such as a tap on the touch
screen) on o;>ither the duplicate 226 of the current character
string 222 or the suggested rcplacemen! 224. If the user taps
on the duplicatc 226 of the current character string 222 in the
word sek'Cti on area 2 16 with a finger 2 12. as indicallxl by the
finger contact area 228 in FIG. 4 13. the current character string
222 is left as is in the display troy 214. I fthe user taps on the
suggcsted rcplaccment 224 in the word sekction area 2]6
with a finger 2 12. as indicato..--d by the fingercontaet llrea 228
in FIG. 4D, the current character string 222 is replacl'<l in tho;>
display tmy 2] 4 by tho;> suggested replacement 224 (FI G. 4E).
As an example, the currelll chamcter string 222 "<:'1e" is
highlighted. as shown in FIG. 4 13. If tho;> user wI's tho;>duplicme
226 of tho;> current character string 222 in the word sell-etion
are'l 216. the current char.lc ter stri ng "cac" is completed and
be<:omes pan of the text 218 for which the device 200 is nO!
prov iding suggl>sted replacements. as shown in FIG. 4C. In
some embodiments. a space is added to the end of the com
p[eted current character string. as shown in FIG. 4C. In some
embodimen ts. the completed C\lrrent character stri ng ("cae"
in FIG. 4C) is addl'(] to the dic tionary 136. If the user taps
instead the suggestl'<i replacement 224 "car" in the word
se[e<:tion area 2 16 (FIG. 4 0). the current character string,
"cae" is replaced in the display tray 214 with the suggesK'<I
rl'PIHcement "car." as shown in FIG. 4E. In some embodi
ments. a space is added to the end of the rcplaced current
cimmcter string in the display tray 214. as shown in FIG. 4E.
Returning to FIG. 4 D. if the user hits (as indicllted by the
finger conlact area 228 on the space bar 227) 01 key on the
keyboard 210 that is associated with a delimiter. such as a
space bar 227. the curro;>nt chnracto;>r string 222 in the display
tray 2 14 is replnced by tho;> suggested repbcement 224. nnd
the delimiter associated with the key tlmt W:IS hit by the uscr
is appended to the end of the suggest<.'<1 rep[accment in the
display tmy 214.
In some embodiments. the device 200 may display a plurarity of suggested replacements 224 for a current character
sequence 222 in the word sc[e<: tion area 216. as shown in FIG.
4F. A uscr may perfonn a geslUre (e.g .. a tap) on one of the
plumlity o f suggcsted replm::cments to scle<:t that suggested
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12
elapsed. the word 229 is displayt"() b<lck in ils pl:1CC unless an
4. The method of claim 2, wherein the kl'Y on the keyboard

associatl'<i with <I delimiter is a space bar k(:y.
5. The mcthod of claim 2. wherein the delimiter is 'Iny of a
plurality o f predefined delimiters symbols.
6. Ibe method of claim 2, wherein the kl-yboard is a soft
keyboard that is pan of the touch screen display.
7. The method of claim 2, wherein the keyboard is a physi cal keybo:lrd that is not a part of the touch scrl'Cn display.
8. The method of claim 2, wherein the character stri ngs arc
words, numbers, or a combination thereof:
9. The method 01" claim 2. further comprising:
in the second arc..1 nf the touch screen display. di spla ying an
altemative suggested replacement character string for
the cu rrent clmracter string: and
replacing the current charncter string in Ihc first area with
the altC{!41live suggesled replac~'mcnt charncter string if
the user performs a prl'<lefined gesture on the altem.ltive
suggested replaccmcnt charncter string in Ihe sC(:ond
area.
10. lbe method o f c!:tim 2, further comprising adding the
current character string to <I dictionary in the d..-vice iflhe user
pcrfOnllS the sC(:ond gesture on the current charnctcr string
displayed in the sC(:ond area.
II. The method of claim 2. wherein the first gl"Sture
includes one or more taps on the suggcsted replacement cl41raCIer strin g displayed in the second area.
12 . Ibe method of claim 2. wherein the second gesture
includes one or more t<lpS on the current character string
displayed in the second area.
I). nle method of claim 2. further comprising. after
replacing the currenl charac tcr string in the first area with the
suggested replacclllelll character string. displaying the current character string in place of the sllggested n.placcment
clmmcter sIring in t he first area if the user pcrfomls a third
gl'Sture on the suggcsted replacement character string in the
first area.
14 . 'lbe method of claim 13, wherein the third gl'Sture
comprises a tap gesture or a hover gesillre.
15. TIle method of claim 2. wherein. in the second area of
the touch sere!;'n display. the suggested replacement character
string and the current character string arc on oppositc sidcs of
thc second area.
J6.111e method of claim 2. wherein. in the second area of
thc touch screen displ<lY, the suggested rep!:tcetllent character
string is on the left side of the second arl";} <lnd the current
character string is 011 the right side of the second area.
17. The method of claim 2. whercin the second area is
betwl'Cn lhe first area and th!;' kl-yboard.
18. A graphic<ll uscr intcrface on a portable electronic
device with a keyboard mid a touch SCfl'Cn display, comprising:
a first area of the touch screen display that displays a
current character string being input by a user with the
keyboard: and
a second ar"C.1 of the louch screen display sejXITlltc from the
lirst area that displays the CUln'nt ch.1rnctcr strins or a
portion ther..'Of and a suggcsted fl-phtcemen! character
string for the ClllTcnt character string:
wherein:
the current ch<lractcr string in the first area is replaced with
the suggcsted replacement charactcr string if the uscr
activates a key on the keyboard associated with a delimiter:
the current ch<lracter string in the first area is replaced with
the suggested replacemcnt character string if the uscr
pcrfonlll; a gesture on the suggested replacement character string in the second area: and
undo gl'SIUTC (e.g., a trip on tllC originallcxl) is pcrfonllcd. in

which case the originally entered text 230 is durably restored.
In sOlllcothcrcmbodimcnls, Ihcorigin<111y entered text 230 is
displayed in a balloon gr.lphic or Ihe like extending from the
word 229.
lllC fOR.-going description. for purpose of cxplallalion. has
bL'Cndt'S(;ribcd Wilh rclcrcncc tOSpt!'Cific embodiments. I lowever. Ihe ill ustrative discussions above arc not intended to be
exhnuslivc or 10 limillhc inven ti on \0 Ihe precise forms dis- 10
closed. Many lllodific3tions and varimions arc possible in
vicw of the above leachings. The embodiments were chosen
and described in order
\0
best explain Ihe principles of the
invention and ils practical applications, to thereby enable

OIhers skilled in the art to best utilize the invention and vari- 15
OilS elllbodimems with various modifications as arc suited to
the particular usc contcmplated.
What is claimed is:
I. A method, comprising:
'It'l porlablc electronic dL.'"Vice with a tOllch scn:.'Cn display:
in a first area of the tOllch screen display. displaying a
current clllll1lcter string being input by a user with the
kcybo.1rd:
in a second are3 of the touch screen display that is
betwcenthe first area and the keyboard. displaying the
current ch.a rncter string or a portion thereof and a
suggesl<.'<i rcplacement character string for the current
character string on opposite sides of the second area:
replacing the currell\ cl1.1tacter string in the first area
with the suggested replacement cl41mcter string if the
user activates a space bar key all the kl'Ybo:lrd:
replacing the current character string in the first area
with the suggested replacement clllIracter string if the
user performs a first gesture on the suggesl<.'<i replacement cll(Irncter string di splayed in thc s,'eond area:
and
keeping the current character string in the first area and
adding a space if the userperformsa second geslUre in
the second area on the current character string or the
portion thereof displayed in the second are'l.
2. A method, comprising:
at a portable electronic device with a touch screen display:
in a first arc<l of the touch screcn display. displaying a
current cl41r"dcter string being input by <I user witb the
keybo.1rd:
in a second area of the touch screen display separate
from the first area. di splaying the current Chnr'dcter
string or a portion tJlereof and a suggestl'<l replacemcnt character string for the current clllIracter string;
replacing the current chamck'r string in Ihe first area
with the sUggcstl'() replacement ch.arac ter stri ng if the
user activmes a key on the keyboard associated with a
delimiter;
rcphlcing the current charncter string in the first area
with Ihe sugsested replacement cl41mcler stri us if the
user performs a first gesture on the suggeslt'<l replacement clwrncter Siring di splayed in the second area:
and
ket.-ping the current clmracterstring in the first m"Ca if the
user pcrfonlls a second gesture in the second arc..1 on
the current character string or the portiollthereofdisplayed in the second area.
) . The method ofcl<lim 2. includingaddinga space after the
current character string if the user pcrfonns the second gesture on the current characler siring or the ponion thereof
displayc<l in the second area.
25
30
35
40
45
50
55
60
65
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thc currcntcllliraclcrslring in thc first area is kepI ifthc user
pcrfamls a gesture in thc second <lre:1 on the current
clwrac!Cr siring or the portion tlK'n.'of displayed in the
second area.
a 10llch scrrell display:
onc or morc processor.>:
memory: and
one or more progwms. wherein the one or more programs
arc stored in the memory and configured 10 be exccuted 11}
by the onc or more processors. one or more programs
including:
inslruclions lor displayin&, in a first arC<l of the louch
screen display. <1 Clirrent character sIring being input by 15
a user wilh the keyboard:
inslruclions for displaying. in a s(.'Cond area ortbc louch
screen dispby sepamte from thc first area. the current

clwrac!Cr sIring and a suggested rcplaccllll'Jlt character
sIring for the current character string:
instructions for replacing the current Char.:lcter st ring in the
firs t area with the suggested replnccment character
string if the user activ:l tcs a key on the k,,-ybomd associated with a delimiter:
instructions for replacing the current character sIring in the
first area with the suggested replacement character
string if the user performs a first gcstureon the suggested
replacement character string displayed in the second
area: and
instructions for keL'Ping the current character stri ng in the
first area if the user pCrfOnllS a second gesture in the
second area on the current character string orthe portion
thereof displayed in the second area,
20. A computer read:lble storage medium storing one or
more programs. the one or more programs comprising
instnlctions. which when executed by a portable elec tronic
device with a touch screen display cause the portable cI,,'C(con.ic device to:
in a first area of the touch screen display. display a current
Cru.iracter string being in pul by a uscrwith the keyboard:
in <I sC\;ond area of the touch SCR:en displ:IY sep<lrate from
the first :Irea. display the currelll c1k1rocter stri ng or a
portion thereof <Iud a s ugg,,-sted replacement ch<lrac ler
string for the current character st rin g:
replace the current character string in the first area with the
sugges ted repl:iccment character string if the uscr actiV<ltcs a key on the keybO<lrd associal<:d with <I de limiter:
replace the current character string in the first area with the
sugges ted replacement ch.1racter st ring if the uscr performs a first gesture on the suggcsted n'pl<lCClllent character string displayed in the second area: and
keep the current c1k1racter sIring in the first area if the user
perfonns <I Sl.'Cond gesture in the SL"Cond are<l on the
currelll charocter string or the portion thereof di splayed
in the second area.
2 1. A computer re<ld<lblc storage m<:d ium storing one or
more programs. the one o r more programs comprising
instructions. w hich when executed by a portable electronic
dL-vice with a display and a keyboard. C<lUSC the port<lble
electronic device to perform a method comprising:
receiving a plurolity of user inputs of characters through
the keyboard. and displ<lying on the displ<lY a current
character string as input by the user;
display ing a suggested replacement charocter string for the
CUITCnt character string:
25
30
35
40
50
55
60
while both the current ch<lfacter string ;Illd the suggested

replacement string are displayed. receiving a further
uscr inplll through a punclUation mark key of the key
board; and
in response to the further uscr input. replacing the CUITCnt
character string with the suggested replacement charac
ter string. and ~ppending a punctuation mark at the end
o f the replacement character string. the punctuation
ma rk corresponding to the punctuation mark k"J'
through which the further user input was received.
22 . 'Ibe computer rl-.Jd.ablc storage mL-dium of claim 2 1.
whcrein the punctuation mark key corr,,'Sponds to a punctuation mark: selected fIOm the group consisting t'Ssentially of a
comma, a period, :111 exclamation point, a question mark, and
a semicolon.
23. The compUler r~'adable stornge II\L-dium of claim 21 .
wherein the display is:J touch screen display. and wherein the
k<..-ybo.1rd is a virtual keybo:lrd displayed on the touch se(l..'('11
display.
24 . 'Ibe computer rcad.able storage medium of claim 23.
wherein the virtual keyboard compriscs a dispby that simultancous!y dis plays ~ first plura!ity of virtual keys each associated with:l respective leller o f the alphabet. and a second
plurality of virtual punctu<ltion m:lrk keys each corresponding to a respective punclUation marl.;.
25. l be computer readable storage medium of claim 24.
wherL-In the plurnlity of virtua l punctuation mark keys comprises II first vi rtmil punctuation mark k,,-y corrt-sponding to a
comma and a second virtual punctuation mark key corresponding to:t period.
26. 'Ibe computer readable storage mL-dium of claim 1 1.
wherein d ispl<lying a sugges\L'd rcplacell1C1ll c1l.1racter string
for the current character string comprises displaying a single
suggestc<l repilicement charocter string.
27. A portable ck'Ctronic device, comprising:
one or more processors:
a touch screen display: and
compUler readab le memory comprising instmctions that.
when execu ted by the one or more processors. perfonn
o perations comprising'
receiving a plumlity of user inputs of ch.aracters through
the keybo<lrd. and displaying <I current character
SIring as input by the user.
displ<lying a suggested replacement char-Icter strin g for
the current char-Icter string:
while both the current character string and the suggested
repbcement string <ll"e displayed. receiving <I further
uscr input tll rough <I punctu<ltion mnrk key of the
keyboard. :md
in rt'Sponse to the further user inpUl, replacing the current c1mractcr string with the suggested reploccment
charact('rstring, and appending a punctuation mark at
the end of the replacement character string. the punctuation mark corresponding to the punctuation mark:
key through which the further user input W:IS l\.'Ccived.
28. A portable electronic device. comprising:
one or more processors;
a display:
a keyboard: and
computer readab le memory com prising instmctions thaI.
when executed by the one or more processors. perfonn
o perations comprising:
receiving a plurality of user inputs of c1k1rocters through
the k"-yboard. <lnd displaying on the display a current
character string as inp\ll by the lIser.
di splaying on tile display a suggested replacement char
nCler string lor the curl\.'ut chnr'.Jctcr string. aud
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receiving a further lIser input of a single IOllch. wherein

the portable cil'Clronic device is (;onfigurcd 10 receive
the funh('r single lIser input 10 p('rfOnll a sck'C\cd
character sIring flmction of <I p[ur.llity of possible

character sIring functions d(.l'cnding on where the
further single lIser input is received, the plurality of
possible characler siring functions comprisi ng.
replacing the currenl character sIring with the suggested
replacement character string in response 10 a single
user input at 11 first localion.
replacing the current character string with the suggested
repl acement character string in combination with a
first punctuation mark in response 10 a single user
input a\ a second location. the sl'Cond location being <I
first punctuation mark key on the kcyborlrd <::orresponding to the first pun<::tuation mark.
repla<::ing the <::urrent character string with the suggested
replocement <::haro<::tcr sIring in combination with a
second pun<::tllation mark in response to 0 single user
inpu t at ;1 third localion, the third localion being a
s<.'Cond punctuation mark key on the k<.-yboard corresponding to Ihe second pun<::tuation mark. and
a<::<::epting the <::urrent <::haro<::ter string in response to a
single uscr input at a fourth location.
29. TIte portable electronic device or claim 28. whcrein the
display iso touch screen display. lind wherein the keyboard is
a virtual kcyboard displayed on the touch screen display.
]0. 'Ille portableclcctronic devi<::e of claim 29. wherein the
virtual keyboard comprises a display that simultaneously dis
plays a first plurality of virtual keys each associated with a
r<''l>pccti~'e letter of the alphabet. and :1 second plurality of
virtual punclllation mark keys each corr<.'Sponding to a
respective punctulltion mark.
3 1. 'nle portllbleciectronic device of claim 30. wherein the
first punctuation mark key is a virtual punctuation Illark key
corresponding to the first punctuation mark. and thc second
pUllctuation mark key is a virtual punctuation Illark key corr<.'Sponding to the second punctuation mark.
32 . A ponable elcctronic device, comprising:
one o r more processors:
:1 touch scrccn display: and
computer readable memory com prising instructions that,
when e)(ecllled by the one or more processors. perfonn
operations comprising.
rcceiv ing a plurality ofuscr inputs of characters through a
virtuol keyboard that si muhoncously displays a first plu
rality of virtual keys each associated with a respective
sin gle letter of the alphabet, and a second plumlity of
virtual punctuation mark keys each corresponding to a
respective punctuation mark.
display ing on the tou<::h screen display a <::urrell1 charact<'r
string as input by the user.
display ing on the display a suggested replacement character string for the eurrellt character string,
in response to a first uscr input lit a firstlocatioll , rcpl:lcing
the <::urrent charocter SIring with the suggested replaeeIllent character string.
in response to a second uscr input at a virtual punctuation
mork key corresponding to 11 first punctuation nl.'lrk.
replacing the CUITCnt character string with the suggested
replacement char-Icter string in combination with the
first punctu:l\ion mark. and
15
20
25
30
35
40
45
50
55
60
in /"Cllponsc to a third uscr input lit a third location_ accepting the current character st ring.
33. A complller reodable storage medium storing one or
more programs, the one or more programs comprising
instructions, which when e)(ecut<.x1 by a portable ek'Ctronic
device wilh a touch SCfCCn di sploy. calise the portable electronic dev ice to perlorrn a method comprising:
r<.'Ceiv ing a plumlity of user chamcter inputs througll the
toUdl SCrl.'"Cn display o f the portable electronic d<''Vice.
wherein the user charncter inputs arc received through a
virtual keyboa rd displayed on thc toud) scrcell. wherein
the virtual keyboard ~imultaJJ(.'"Ously displays a first plurality of virtua I keys each associated with a respective
single leller of the alphabet. and a s<.'Cond plurality of
virtual punctuation mark keys:
displaying on the touch display a current ehanlcterslringas
input by a uscr:
while displaying the current charocter Siring. also displaying a suggested reploccment character SIring for the
current char;lcter string. wherein ;Itthe time a suggested
replacemcnt chamctcr string is displ:lyed. the portable
electronic device is able to receive a plurality of possible
user single touch inputs thm will result in selecti on of the
sugges ted replacement chamcter string. and wherein
5.'lid plurality or possible user single loueh inputs
indudes actuation of oneofthe plurality of virtual pUIlCtuation mark keys:
nxciv ing a single touch uscr sek'Ction input through one ot"
the plurality of the viml.'l l punctuation mark key: and
in respo nse to the single touch user selection input. r<''Placing the current chamcter set with the suggested replacement charactCf sct and adding at the end ofsaidchameter
sct a punctnation mark corresponding to the virtual
punctuation nl.1rk key through which the input was
rcceiv<.'(].
34 . The COmpU1C.r readable storage ml.->dium of claim H.
wherein the plul"Jlity of possible single touch user inputs that
will result in selection of the sugg<.'Sted replacement character
SIring includes inputs lhm are not associated wilh a vinual
punclUotion mark key.
35. 'Ibe computer readable stor-Ige medium of claim 34.
wherein the plurality of possible si ngle touch user inputs that
arc nOi associated with a vinual punet\lation mark key and
that will result in selection o f the sugges\<.'(] rt:placement
char-Icter string comprises a single touch input througll the
space bar of the vimlal keyboard.
36. l be eomplller readable stornge medium of claim 34.
wherein the plurality ofpossibk- single touch user inputs that
are not aJ)sociak>d with a virtual punctuation mark key and
that will result in selection o f the suggested replacement
dmmcterstring comprises a single tou<::h input at the 1(K;.1tion
of the display<.>d SUg&eSk'li r<''P laccment chara<::ter sel.
37. llte <.'Omplllcr readable storage ml.->dium of claim 33,
wherl.-':in the plurJlity of virtual punctuation mark keys comprises virtual punctUlltion mark keys respectively associated
with a comma and a period.
38. 'Ibe computer readablc stomge medium of claim 37.
wherein lhe plurolity of virtual punctuation mork keys further
comprises virtual punctuation mork keys rcspe<::1ivcJy associ;Ited with an exdamation point and a semicolon.
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111111 ~IIIIIIIIIIIIIIIIIII
1111111111
11111 11111 111111III 11111 IIU
Case: 15-1171
USOO5579239A
[19)
Freeman et al.
[54]
REMOTE VIDEO TRA NSM1SSION SYSTEM
[76]
Inventors: Mitchael C. Freeman, 14318 E. 11th
[11]
Patent Number:
[451
Date of Patent:
FrtellUin, 563 S. 87th East Ave ., Tulsa,

Okln. 74112; Chad Boss, 14131 E. 12th
St., Tulsa, Okla. 74108; Mi chael H.
neman , R.R. I, Box 315-A, Liberty
Mounds, Okla. 74047
OTIIER PUBLICATIONS
Rosenthal ct aI., "Planelllry Dall!. Distribulion System", Dec.
2, 1993.
McConnell, "TV, Phone Home; GTE Mobilncl Service is
Delivering Compressed Video over Cellular Channels" .
May 2. 1994.
.
Communication~ Daily, "Odctics DcmonstmIcd Fas
Trans2000 Digital ~Ilular Transmitter Capable of Sending
Compressed Digital Vide(! over Cellular Link". Sep. 13,
Feb. 16, 1994
[22]
Filed:
Int. C1,o ...

....................... H04L S/OO
U.s. a ....... "."."....... 364/514 C ; 45513.1; 455133. 1;
348/14; 379/90; 386/46; 3~6/1()9
Fidd or Seareh
................. _.364/514; 34512;
(S8)
(List continued on next page.)
Appl. No.: 198,130
{51}
[52)
1994.
Brochure Microcom BridgeIRoutcr
319190
ates
................
G=" _.-
.........
A rcmOie video tram mission system for digitizing and

compressing an audio/visual signal, transmitting that signal
over lo w band width lines. such as land telephone lines,
cellular tclephone lines, or radio frequencies . decompressing
the digiti!cd data and converting it to an audiolvisual signal
for broadeast. Components of this system include: A remote
unil, a host unit. and a playback unit. The remote unit is
(;apable of digiti1.ing and (;omprcS'ling th~ audio/visual sig nal as well as transmitting the comprcss.ed, digitized dala .
Dala may ~ dividcd and scot to multiple poIU for outpUl.
Dall!. may also be edited prior \0 transmi ssion. The bast unit
is automated to reo;cive dala lransmillcd from the remote unit
and reassemble the dala ifi! has been divided . The playback
unit stores and automatically catalogs tmnsmittcd data files .
The player unit also decompresses the digiti~cd data files
and converts lllem \0 an audio/visual signal which may tben
be broadcast. The audio/visual signal can either ~ NTSC.
PAL. or Y/C video .
........................... ...... .........

_.
......... ....... ........
-.-----
...
-""
....,,.,,,
~--
ABSTRACI'
[57]
3701118
l1l1iS.6
11&'.'1.6
2.302.8."12 1Il1942 G oddard ... ....... _..

............ 2~0J6
2J16,m 11l19~1 Hill
178/44
2.&81,427 4/1959 H uber ............................... , .. "31200
3.969,040 711976 Gharavi ................
........ 358/136
1791l5.SS R
4,311.1177 Jl1982 KM" ........
~.337.483
611982 Guill"u ..................
....... 358/!l4
4.637.035 111987
......................
.... 37518
35&1136
4.663.660 511987 Fedele Cl aI .
,
"
.................... 37518
4.734.920 31l9S8 BeU.
4,811.407 311989 Blokkcr. Jr. Cl aI.
........ 38211
4,82S.286 411989 Graves
358/143
4,862.456 &/1989 Giorgio ... ... _------.-.--3701l!8
4. 864,567 9/1989 Giorgio
....... ....... .... 370ll!B
4,963,995 1011990 t..>,
........... 35813J5
5.016,100 5/1991 Cill.a el:d. .................. ....... 35iVl3J
5MS,133 IOJI991 DuncanSO!l el al.
........... 375138
5.062.136 IOJI991 Calli. et 0.1 .
....................... 3&0118
... 310184
5.065.396 1111991 CLilctlano ct aI.
37511
...................... .......
5.127.021 611992
..._....
5,130.792 1fl992 Tindell 01 aI. ........
......... 3581133
5.148,272 9!l992 Acampo", 01 al.
"""
Introducing the
Primary fuaminer-Ellis n. Ramirez

Assistant Etaminu -Pauick 1. Assouad
Altomey. Agell/. or Finn-CataJano, Zingcrman & Associ
References Cited
H1175 411993 Giorgio ........

...
2.09.5,360 1011937
1.203,7."18 611940 W""" .....
Thl
WANmiserT>t /Idvamage Scpo 1993.
348115.14; 3581311 , 335; 455/3.1. 33.1;

[56)
Nov. 26, 1996
5.235,680 811993 Bijnag(e .................................. 3951161

. ..... ....... . 358/85
5.241.347 911993 Lil\e1lll ct al .
.'i.253,27.'i 1011993 Yun el al. ..................... ....... 37,'i1l22
5,262,875 1111993 Mincer Cl Ill.
.......... 358/335
St., Thlsa, Okla. 74108: Richard C.
[ 21]
5,579,239
34 Claims, 2 Drawing Sh Cflts
,
/'
[~I
I
/
JOINT TRIAL EXHIBIT NO. 25
UnitN Stat~ DistriCI Court

Northern Dislrici of California
No. 12-CV-0063 Q..LHK (psG)
Apple ["c. y. Samsu"g E lees.
Dale Admitted:
H1ghly Confidential - Attorneys' Eyes Only
By:
SAMNDCA630-04260564
A710
Case: 15-1171
Document: 40
Page: 485
Filed: 03/06/2015
5,579,239
Page 2

5,272,529
5,293,378
5,355,167
5,355,450
5,361,278
1211993
311994
1011994
1011994
1111994
Frederiksen ............................. 3581133

Shimizu ................................. 370/94.1
Juri .......................................... 348/405
Gannon et aI .......................... 395/162
Vaupel et aI ............................ 3751122
5,365,272 1111994 Siracusa .................................. 348/426

5,375,068 1211994 Palmer et aI ........................... 364/514
5,390,239 211995 Morris et aI. ............................. 379/93
5,428,671
611995 Dykes et aI. .............................. 379/93
5,440,336 811995 Bubro et aI ............................... 348113
5,482,043
111996 Zulauf ................................ 128/660.04
5,495,284 211996 Katz .......................................... 348/15
Highly Confidential - Attorneys' Eyes Only
A711
SAMNDCA630-04260565
Case: 15-1171
U.S. Patent
Document: 40
Page: 486
Filed: 03/06/2015
5,579,239
Sheet 1 of 2
Nov. 26, 1996
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SAMNDCA630-04260566
A712
Case: 15-1171
Document: 40
U.S. Patent
Page: 487
22
22
TRANSfBI
VIEW
VIEW
VIEW
ITWlSfER
VIEW
ITRANSFEI
22
I- 22
YEW ]TRANSfER
3 2-
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VIEW
5,579,239
Sheet 2 or 2
Nov. 26, 1996
22 -
Filed: 03/06/2015
ITFWISFER
VIEW ITlWlSFEA
CAPTURE
-VIEW ITRANSfER
CONFIG.
,----- -
28
AUDIO ON/OFF
EXIT
-----
I- 30
I-
Fig. 2
38
/------N~~i1~~:::=::::_-----.-:::I'Ol:;l 40
rBBBBB BBBBBBI -+ I NUMBEROFPHONES & r , / L
42 - + -CAPTURELENGTH
46 -+-~
FRAMES/SEC
50
IBBI-+ I
IBBI-+ I
REMOTH
CALJ.LTTERS
188 r- H4
IBB8Bf---1--42
AUDIO IS OFF
CHANGE DIR
OK
CANCEL
Fig. 3
SAMNDCA63 0 -04260567
A713
Case: 15-1171
Document: 40
Page: 488
Filed: 03/06/2015
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teams into remote locations for reports transmitted via

cellular telephone. Cellular technology provides the ability
BACKGROUND OF THE INVENTION
to access a location and immediately report information
back to the station. This use of cellular telephones transmits
l. Field of the Invention
5 voice messages only and excludes video transmission altoThis invention relates to capturing a video signal at one
gether. Cellular technology has also been used to transmit
location and transmitting that signal to another location over
data such as facsimile and computer file transmissions from
telephone lines, cellular, radio and other telemetric frequenone location to another. Cellular telephones have been quick
cies.
to transmit data received from a facsimile machine or
Advances in the information highway promotes the 10 computer having a modem to a second fax machine or
United States as a world leader in the computer, video and
computer. Cellular combined with computer technology has
broadcast industries. This invention adds to that information
never been used, however, to transmit a broadcast quality
highway.
video signal.
Transmission of a real time video signal from a remote
A need, therefore, exists in the art for a highly portable,
location to a base location is conventionally done by one of 15 cost-effective method and apparatus for capturing and transtwo methods: Microwave or satellite. Equipment associated
mission of broadcast quality video from a remote location to
with these methods is extremely expensive and has signifia base location. A need also exists for a capture and
cant limitations. The large amount of equipment necessary
transmission apparatus over cellular, land lines, or radio or
for satellite technology for remote transmission requires that
other frequencies. Additionally, with the current FCC limithe equipment be installed in trucks having an integral 20 tations regarding cellular transmissions from airborne craft
satellite dish. The signal is received from the video camera,
an additional need is evidenced for video over the radio or
beamed to the satellite, and then beamed to the base location
other telemetric frequencies.
for broadcast. The enormous amount of equipment and the
sophisticated technology required makes satellite transmisSUMMARY OF THE INVENTION
sion extremely expensive and impractical for many appli- 25
It is the purpose of the present invention to provide a
cations. Satellite transmission does, however, send real time
method and means for capturing full-color, full-motion
broadcast quality signals. The costs associated with satellite
audio/video signals, digitizing and compressing the signals
transmission are justifiable for large events such as sporting
into a digitized data file, and transmitting the signals over
events where transmission could be made from a single
location over a sustained period of time. It is not practical, 30 telephone lines, cellular, radio and other telemetric frequenhowever, for coverage such as news coverage where short
cies.
segments from many different locations are necessary. An
A second object includes splitting the digitized, comexample would be in covering a natural disaster. Speed in
pressed, audio/video signal prior to transmission in order to
obtaining and broadcasting video footage is a competitive
reduce transmission time.
requirement in news gathering situations.
35
A further object is to provide an apparatus that will
The required set up time and inaccessibility of the satellite
transmit audio/video files for immediate broadcast over
truck are significant additional limitations to satellite type
radio frequencies, cellular telephone frequencies, or land
transmission.
telephone lines.
Microwave transmission technology overcomes some of
An apparatus to accomplish this purpose includes a
the limitations of satellite technology but has several addi- 40 remote unit, a host unit, and a player or a basic embodiment
tional limitations of its own. Microwave transmission sysineludes a remote and a combined host/player unit. This
tems are less expensive and require less equipment. With a
apparatus provides the capability of digitizing and commicrowave system, a video signal is obtained and transmitpressing a signal which is then transmitted over low band
ted from the remote location at microwave frequencies from
width lines.
a vehicle mounted transmitting antenna to a base antenna for 45
The remote unit includes means for digitizing and combroadcast.
pressing a video signal, storage of the digitized and comDifficulties have been encountered using this technology
pressed data file, and transmission of this data file over
in aligning the antenna on the vehicle with the base antenna.
telephone lines, cellular, radio and other telemetric freObstructions between the transmitting antenna and the base 50 queney. The remote unit may also split the data file prior to
antenna may also prevent passage of the signal. Setup
transmission for multiple simultaneous transmissions in
limitations also inhibit the use of microwave transmission
order to reduce transmission time. The host unit is autosystems in obtaining short segments of video at one location,
mated to receive the transmitted data file, reeombine it if it
transmission of that signal, moving to another location,
has been split, and store the recombined data file to the
transmission, movement, etc. Transmission is also limited to 55 playback unit. The playback unit stores and automatically
accessibility of the vehicle to the location of the subject
catalogs transmitted data files. Thc playback unit also
matter.
decompresses the digitized data file and converts it to an
The limitations of satellite and microwave technology
audio/visual signal for broadcast.
have forced video broadcasters to devise altemative means
In one preferred embodiment, an audio/visual signal is
of transmission, which may include: Setting up a remote 60 input into the remote unit from a video camera at a remote
microwave or satellite transmission post and transporting
location. The remote unit is a combination portable personal
segments on video tape to it from multiple remote locations.
computer having one or more computer interfaces and a
More often, broadcasters capture video segments on tape
corresponding number of cellular telephones. Computer
and then manually transport those tapes back to the station
software loaded on a hard disk drive in the remote unit
as quiekly as possible for broadcast.
65 instructs it to capture the input signal to a video eapture card
within the remote unit. The video capture card takcs the
With the establishment and advancements in cellular
audio/visual signal, digitizes it into a computer data file, and
technology, television broadcasters have begun sending
REMOTE VIDEO TRANSMISSION SYSTEM
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compresses that data file. Once digitized and compressed,

the data file is captured in the computer's memory by a
capture module on the video capture card. A software
sequence then instructs the computer central processing unit
to store the captured data file on the computer's hard disk
drive. After the video file has been captured, it may be edited
as desired prior to transmission to the host unit.
Once stored, a computer program sequence removes the
digitized data from the hard drive, breaks the data file, and
sends it to one or more computer interfaces which transmit
the data file, using a corresponding number of cellular
telephones, to the host unit. The data file is split and
organized so as to reduce the amount of time of transmission
of the data file.
A software sequence installed on the remote unit automatically catalogs data files stored in the system hard drive.
These files are cataloged visually on a computer monitor for
easy visual recognition. A single frame of video from each
stored data file is displayed on the monitor in a catalog array
to allow the operator the ability to quickly identify the file
and select a file for retrieval or transmission to the host unit
as required.
In an alternate embodiment, a basic one, the signal is not
divided before it is transmitted. In this alternate embodiment, only a single interface and a single cellular phone are
necessary.
The host unit is a desktop personal computer with
installed communications software and one or more computer interfaces connected to a corresponding number of
telephone lines. The interfaces are set to receive transmitted
data files from the remote unit.
If the data files have been split for transmission, a
software program recombines the split file back to its
original single data file. A computer monitor is connected to
the host unit for viewing of the stored data files at the host
unit. A software program also copies this recombined data
file to a network hard disk drive of the playback unit. The
host unit and the playback unit are interfaced to allow
transfer of data files. The computer to computer interface
between the host unit and the playback unit is a computer
network in the preferred embodiment, however, any known
port to port connection could be substituted.
Thc playback unit is the interface between captured video
and the master control which outputs the signal. Once the
recombined data file has been stored on the networked hard
disk drive of the playback unit, the data file may then either
remain stored for later use or retrieved for broadcast.
Stored data files may be edited at the host location as
desired.
For broadcast, a video card located in the playback unit
retrieves the stored data file, decompresses the file, and
converts the digitized data to VGA. The video card in the
playback unit is similar to the video card in the remote unit
with the exception that the card in the playback unit does not
have a capture module.
Once the data file has been decompressed and converted
to digital, a converter card converts the VGA signal to the
desired signal for broadcast (NTSC, PAL, Y/C video, etc.)
Hardware playback of the signal or output of the signal is to
a monitor or VCR for storage on conventional video tape or
immediate broadcast.
Other features and advantages of the invention will
become apparent in view of the drawings and following
detailed description.
FIG. 2 is the control screen of the remote unit.

FlG. 3 is the configuration screen of the remote unit.
BRIEF DESCRIPTION OF THE DRAWINGS
DETAILED DESCRIPTION OF THE

PREFERRED EMBODLMENT
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35
40
45
50
55
60
65
FIG. 1 depicts the components and the sequence of the

process of the present invention.
The drawings represent the present invention wherein

FlG. 1 depicts the remote unit 2, wherein the input signal is
captured, compressed, digitized, and transmitted to a host
unit 3 which receives the transmitted video signal and stores
it to playback unit 4 where it can be output to a monitor or
edited for playback or broadcast. In the preferred embodiment, the data file is split by the remote unit 2 prior to
transmission to the host unit 3. The host unit 3 recombines
the split data file and stores it to playback unit 4 via a
computer network.
In the preferred embodiment, remote unit 2 is a portable
personal computer having a 486DX-2/66 motherboard,
lO-inch plasma display, 210 MB notebook hard disk drive,
MS DOS Vet. 6.2 operating system, Microsoft WindowsT~
Ver. 3.1, Microsoft Video for Windows, Procom Plus for
Windows, trackball bus mouse, high speed serial ports, I
MB Windows accelerator video card, video capture card
with capture module, audio capture card, SVGA to NTSC
converter, SVGA video adapter. The remote unit also has up
to [our computer interfaces such as modems, each connected
to a cellular telephone.
A signal is input into remote unit 2 from any device
having the capacity to output a video signal 1, such as a
video camera, video cassette recorder/player, laser disc
player, etc. The video signal received by the remote unit can
be of any generally known format, such as NTSC, PAL, and
Y/C video (or S video). The remote unit 2 is designed to be
portable so that it can be transported and used in areas which
are inaccessible or unsuited for a conventional desktop
personal computer. It is understood, however, that remote
unit 2 could be a desktop computer or have variations in its
internal configuration.
The video signal input into the remote unit is received by
a video card having a capture module therein. Such a card
is available commercially from InteIllBM. A computer software program such as "VIDEO FOR WINDOWS" available
from MicroSoft operates with the video card and capture
module to capture, digitize, and compress the video signal
into a data file. Other software packages are commercially
available for use in operating environments other than
windows and may be substituted for "VIDEO FOR WINDOWS."
A software sequence, discussed below, instructs "VIDEO
FOR WINDOWS" what parameters to capture the file under.
A permanent capture file is stored on the hard disk of the
remote unit and is called up into the remote unit' s RAM
where an input video signal is captured. This permanent
capture file has a 10 Mb default, however, in the event a
larger file is created, the capture file will expand to the
requisite size.
The capture card in the remote unit uses BIT-MAP
technology to capture and display motion of the video fil e.
BIT-MAP technology is suitable in order to maximize transmission speed.
As it is being captured in the capture file, the input signal
is being digitized and compressed. The digitized and compressed data file is then named and captured in the compUler's random access memory (RAM) for transmission to the
host unit. The "VIDEO FOR WINDOWS" software package
allows for editing of a data file once captured. In this way,
A715
SAMNDCA630-04260569
Case: 15-1171
Document: 40
Page: 490
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editing can be accomplished at the remote location prior to

transmission of the file. The digitized, compressed, and
captured file is displayed visually on the monitor.
As stated above, the video file is captured according to
system parameters selected on the remote unit for each data
file. The capture software sequence A includes the following
steps:
CAPTURE SOFrWARE SEQUENCE A
10
1. A video palette file is copied to "MICROSOFf

WINDOWSTM" clipboard. This video palette file is a created
data file stored on the hard disk of the remote. This video
palette file is created with "VIDEO FOR WINDOWS" by
loading a video clip and extracting the color palette from that
clip.
2. The second step is that the control screen is painted on
the monitor of the remote without pictures. FIG. 2 depicts
this control screen 20 with boxes, collectively 22, shown
without pictures therein.
3. Bit map files are obtained and displayed into boxes 22
of screen 20. A different bit map file will be displayed in
each box 22 on screen 20. Bit map files are created by
"VIDEO FOR WINDOWS" by retrieving the first frame of
video from the captured video file, supplying the color from
the stored palette file, and displaying this image in one of the
boxes 22. These video files are displayed (or catalogued) on
control screen 20 to allow quick identification and selection
of a file for retrieval or transmission. The remote unit is
capable of storing and displaying up to eight (8) bit map
files. When the ninth file is captured, the software will
automatically overwrite the oldest captured data file and
display this new file on control screen 20.
4. The software sequence then reads the configuration
files created as a result of user selection of capture and
storage parameters. These parameters are input form a set of
selection buttons found on control screen 20 of FIG. 2.
5. The user selects whether the video signal will be
captured either with or without audio. "SELECTION" button 28 on control screen 20 of FIG. 2 requests the choice of
capture and storage of audio. The selection buttons on screen
20 are activated using any conventional. means such as the
computer keyboard, mouse, or similar pointing device. An
audio capture card installed in the remote unit captures the
audio of an input signal. Capture with audio makes the data
file longer since the audio signal must also be digitized,
compressed, and stored in the remote unit's hard disk. It is
evident that the longer the data file, the longer the time
required for transmission of the entire data file from the
remote unit to the host unit. It is often desirable to transmit
video files only without audio in situations where a broadcast station wants to provide video footage of a situation
quickly. It is desirable for broadcast stations to provide such
video coverage as quickly as possible after a newsworthy
event has taken place, such as an accident or natural disaster.
In these situations, it is desirable to broadcast the video
footage of the incident in a remote location. Audio coverage
can be made by a reporter on location in another fashion,
such as over a cellular telephone.
6. The software sequence reads the configuration files
created as a result of user selection of capture and storage
parameters. These parameters are input from a "SELECTION" button 30 marked "CONFIGURE" found on screen
20 of FIG. 2. Selection of the "CONFIGURE" selection
button 30 calls up a configuration file from the remote hard
disk: The configuration file opens a "Window" bringing up
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6S
a screen showing the capture configuration options. FIG. 3

depicts the configuration screen 36 which appears as a result
of selecting the configuration "SELECTION" button 30 of
FIG. 2. It is not necessary to input a set of configuration
parameters each time a video signal is captured since the
system stores the previous set of configuration parameters
which were selected for the previous capture sequence.
The configuration parameters are discussed below.
7. Once the configuration parameters are selected, the
video card in the remote unit captures the input video signal
to its memory. Capture includes digitizing the input video
signal to form a binary data file and then compressing that
file. The file is compressed in order to conserve memory
space and reduce transmission time. The remote unit then
stores the digitized and compressed video signal as a data
file with a .cap extension on the hard disk. The capture
sequence is initiated by activation of the "CAPTURE"
selection button 32.
8. "EXIT' selection button 34 allows the user to exit the
capture software sequence to a DOS prompt. The capture
software sequence may be exited prior to powering off the
remote unit after a video sequence is captured, transmitted,
viewed, or edited.
9. After the video sequence is captured, it may be viewed,
edited, or transferred to the host unit. Each bit map file box
22 has a "VIEW" selection button 24 and a ''TRANSFER''
selection button 26. Upon selection of "VIEW" button 24, a
captured video data file may be retrieved from the remote
hard disk and the video sequence run. The video sequence is
displayed in its respective bit map file box 22.
"VIDEO FOR WINDOWS" provides the system the
capability for editing a captured data file on the remote unit
before it is transmitted to a host unit. As the file is being
viewed, sequences may be deleted or edited together as
desired.
Selection of "TRANSFER" button 26 initiates the transfer
software sequence B and file splitting software sequence C,
discussed below. The captured, digitized and compressed
data file is then automatically transmitted to the host unit.
FIG. 3 depicts the configuration screen. Selection of the
"CONFIGURE" button 30 of the capture screen 20, FIG. 2,
calls up a stored configuration file. This configuration file
displays the configuration screen 36 of FIG. 3.
Referring to FIG. 3, the default directory request 38
allows for a choice of host name. Default directory listing 38
is a listing of all the host locations to which a data file may
be transmitted. Choosing a host name in default directory 38
accesses the transmission .parameters for that host name
entered and stored in a transfer file, discussed below.
Phone parameter 40 allows for selection of the number of
cellular telephones to be used to transmit the captured data
file from the remote unit to the host unit. The greater the
number of cellular telephones used to transmit, the lesser the
transmission time. It is often desirable to transmit a video
file as quickly as possible, especially in broadcast news
situations where the goal is to broadcast video clips of
developing news features as soon as possible. Although
there is no theoretical limit to the number of cellular
telephones which may be installed in the remote unit upon
combination of additional processors, it has been found that
between two and four are sufficient for most applications.
Capture length parameter 42 allows for selection of the
length of the video sequence to be captured. Generally, video
sequences will be between five (5) and one hundred twenty
(120) seconds in length.
The video card is capable of capturing an input video
signal at a selected number of frames per second. Frames per
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second parameter 46 allows for this selection on configuration screen 36. The number of frames per second in which
the video card will capture a video sequence generally
ranges between one (I) and thirty (30) frames/second. As the
number of frames per second in which the file is captured
increases, the resultant captured file will approach full
motion when it is viewed upon playback. It follows that the
greater number of frames captured per second, the larger the
data file will be upon capture, which will require a longer
transmission time. It is the option of the user to select the
desired number of frames per second, understanding that
video quality may be sacrificed for transmission speed. In
situations where the video subject is stationary, or moving
slowly, this sacrifice in video quality may not be present.
In situations where multiple remote units transmit back to
a single host unit, it is desirable to identify the remote unit
from which transmission is commenced. This naming convention is advantageous to ensure the stored file on the host
unit will not be overwritten by an identically named video
file of different content. Remote # parameter 44 allows for
selection of a remote unit number between 00 and 99. Upon
capture, a data file is created and named with an identification of the remote unit number.
The call letter selection parameter 48 allows for input of
the call letters of the host broadcast station to which the
captured file will be transmitted. Any four (4) characters
may be entered as the station call letters. When the capture
file is created, it will be named with the input call letters in
addition to the remote number as discussed above. The
captured file will have a file extension .cap. Input of the call
letters is desirable when a remote unit transmits to several
host units located at different broadcast stations having
different call letters.
Audio capture parameter 50 identified whether capture of
audio has been selected on capture software sequence A,
FIGURE 2. Audio capture parameter 50 will either display
"AUDIO IS ON" or "AUDIO IS OFF," depending upon the
previous selection.
Selection buttons 52, 54, and 56 of capture configuration
screen 36 are selection buttons commonly found using the
"MICROSOFTWINDOWSTM" environment. "CANCEL"
selection button 52 instructs the remote unit to disregard any
changes made on the configuration screen 36 and abort back
to the control screen 20, FIG. 2. When "CANCEL" button
52 is selectcd, the remote unit will default back to the
previously stored parameters.
If changes are made to the capture configuration screen
36, those changes can be stored as a configuration file on the
disk drive. Selection button 54, marked "OK" instructs the
remote unit to write over the previously saved configuration
file. This new set of parameters will then become the default
parameters until further changes are made using configuration screen 36.
The "CHANGE DlR" selection button 56 allows changes
to be made to the dialing directories in the transfer software
sequence B discussed below. Selection of the "CHANGE
DIR" button 56 calls up the stored dialing directory file
which allows changes to be made to the dialing directory
used with the transfer software sequence C.
Upon selection, a program file is retrieved from the
transfer software sequence B stored on the hard disk drive.
This program file paints a dialog directory screen on the
monitor of the remote unit to allow changes to be made to
the dialing directory. If no changes are necessary, the transfer software sequence will use the previously stored information. The dialing directory screen is similar to dialing
directory screens used with communications software pack-
ages commercially available with the exception that this

dialing directory includes dialing information for each transmission line in the remote unit. In the preferred embodiment,
there are four modems and four cellular telephones installed.
Hence, there will be dialing directory information for each
cellular telephone.
The dialing directory information stored in transfer software sequence B, and displayed in the dialing directory
screen, lists the first and last name and telephone number of
10 the receiving host unit. When the correct dialing directory
information is input, it may be saved into the transfer file and
the dialing directory screen exited.
Once the dialing directory information is stored and the
dialing directory screen exited, capture screen 20 of FIG. 2
15 is again displayed on the monitor. The remote unit is now
ready to transmit the newly captured video sequence to the
host unit. Transmission of a data file is accomplished by
selecting the "TRANSFER" button 26 in the bit map file box
22 containing the first frame of video of the file to be
20 transmitted. Selection of "TRANSFER" button 26 initiates
the transfer software sequence B and the file splitting
software sequence C.
Transfer software sequence B enables the remote unit to
communicate with the host unit to transmit a stored data file
25 using the system hardware. Transfer software sequence B
contains all of the instructions necessary to initialize the
communications ports on the remote, obtain a cellular connection with each cellular telephone to the host unit, obtain
the stored data file, initiate file splitting sequence C, and
30 transmit the split data file. The remote unit uses the run time
module of a communications software package, such as
Procom Plus for WINDOWSTM which is loaded onto the
remote. Communications software packages such as Pro com
Plus for WlNDOWSTM are available commercially.
Upon selection of the transfer button 26 of FIG. 2, thc
35
configuration file is read containing the configuration parameters selected above. This includes the dialing directory
information. Transfer software sequence B is then called for
each communications port to which the data file will be
40 transmitted. Each modem interfaces through a different
communications port. In the preferred embodiment, transfer
software sequence B will be called four times.
45
TRANSFER SOFTWARE SEQUENCE B
L The first program called for a communications port

(COM!) controls the transfer process. COMl also controls
the monitor display notifying the operator of the throughput,
size of the file, and the percentage complete.
50
2. Each of the other communications ports communicates
with COM! in the Windows environment, using dynamic
data exchange (DDE). DDE is known in the industry and
allows multiple applications to share information.
3. COM! calls file splitting software sequence C, dis55
cussed below, and initiates the splitting of the data file. The
data file is split into 10K pieces, or files. Each 10K file is
created with a DOS archive bit set affixed to the file. As each
10K file of the data file is created, it is stored having a
60 sequential file name extension from 001-999.
4. The modems intcrfacing each communication port
execute the dialing directory file discussed above and obtain
a connection with the telephone line on the host unit. The
program automatically sends the cellular strings from each
65 communications port to initialize the modems on the host
unit. All other settings such as baud rate, protocol, and
miscellaneous AT commands, are prcset in the remote and
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10
host unit. The transmission system operates using a Z

modem-based protocol.
5. Each communications port executes a dialing directory
(DIR) command to locate a file containing an archived bit
set. Once a file is located, it is retrieved, the archived bit set
removed, and the 10K file transmitted from that line. It is not
necessary for the stored files to be transmitted in sequential
order since the host unit will recombine the file using the
numbering system discussed above. If an error occurs during
transmission, the program puts the archived bit set back on
the file so that the 10K file can be transmitted from another
line. Once transmission of a 10K file is complete, the file is
saved on the hard disc, and another having an archived bit
set is received and transmitted.
6. The 10K file files containing archived bit sets are
retrieved, transmitted, and stored until all have been sent.
When a communications port finds no more files having
archived bit sets, it hangs up automatically.
7. If a cellular line loses communications with the host
unit or if interference prohibits accurate transmission of a
file, the line will drop out, and the remaining files will be
transmitted from the remaining ports.
8. All of the transmitted, restored, 10K files are recombined into a complete data file.
Files may be transmitted using telephone lines, cellular,
radio and other telemetric frequencies. In the preferred
embodiment, cellular telephones are integrated with the
remote unit to allow transmission of files from areas which
are inaccessible to standard telephone lines. It may be
desirable, in certain specialized applications, to transmit
from a single remote location or locations where standard
telephone lines are accessible. The remote unit may still be
portable as long as a telephone jack is available for transmission. In that event, the cellular telephones are omitted
from the remote, and the modems connected to standard
telephone jacks, using standard telephone connectors and
wiring.
In areas which are inaccessible to standard telephone lines
and outside cellular telephone "cell," files can be transmitted
using radio frequencies. In order to accomplish this, the
cellular telephones in the remote are replaced with radio
transmitters. Corresponding radio receivers are then
installed in the host unit to receive the signal transmitted
from the remote. Each transmitter operates using a different
frequency so as to keep each signal segregated.
Transmission of the data file is accomplished automatically by the remote unit once transfer button 26 of FIG. 2 is
selected. This allows the operator freedom to pursue other
video clips for subsequent transfer and submission during
the transmission process. In this manner, the invention
provides rapid access and broadcasts the video segments
from locations generally inaccessible and cost prohibitive
much faster than conventional methods.
In situations where news teams arc sent out in a vehicle
to obtain video segments, an inverter could bc installed in
the vehicle to convert DC from its battery to AC to be used
by the remote unit. In addition, five DB gain antennas could
be mounted on the vehicle to improve transmission quality
of the cellular signal. An antenna would be mounted on the
vehicle for each cellular telephone in the remote unit. A
video signal could then be captured at one remote location,
transfer button 26 selected, and the remote unit transported
in the vehicle to a different location while it is transmitting
the file.
In order to decrease transmission time of the data file, it
may be split into 10K files and transmitted over multiple
land telephone lines, cellular telephones, or radio frequencies.

FILE SPLITTING SOFTWARE C
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1. After transfer button 26 of FIG. 2 is selected, COMI

opens the main data file and begins splitting that file into
10K files.
2. A DOS archive bit set is fixed to each 10K file. This
archive bit set allows the transfer software sequence B to
determine whether a file on the directory is a file to be
transmitted. It also enables it to determine whether a file has
already been transmitted. As each file is retrieved, the DOS
archive bit set is removed prior to transmission. Transmission is complete when there are no files left on the directory
containing a DOS archive bit set. Each cellular line on the
remote will hang up automatically.
3. After all of the 10K file files have been transmitted and
each phone line has hung up, COMI begins piecing the 10K
files back together. This is accomplished by sequential
read-write operation. A master data file is opened, and then
the files are counted between 001-999 (or until all files are
used) and pieced together in their sequential order. Twenty
K (20K) pieces are read, the file is created, and then written
until the entire data file has been combined.
The host unit 3 of FIG. 1 is automated to receive a data
file transmitted from remote unit 2. Host unit 3 is a personal
computer having a 486DX-2166 motherboard, 210 Mb hard
disk drive, monitor, high speed serial ports, 1 MB Windows
accelerator video card, MS DOS Ver. 6.2 operating system,
trackball bus mouse, Microsoft Windows Ver. 3.1, Novell Netware Lite, 16 Bit Ethernet card, and a 1.44 MB
floppy drive. Host unit 3 also has up to four (4) modems
connected to up to four (4) separate telephone lines to
receive a signal transmitted from each cellular telephone of
the remote. It is not necessary to install cellular telephones
in host unit 3 unless it will be transported from location to
location. In the general application, however, host unit 3 will
be installed at a single location and wired to one to four
telephone lines.
The number of modems in host unit 3 corresponds to the
number of modems used in the remote unit 2. If radio
transmitters are used in remote unit 2 instead of telephones,
radio receivers would be installed in host unit 3 so that there
is a corresponding radio receiver for each radio transmitter.
Each radio recei ver in host unit 3 is set to the same frequency
as the radio transmitter in remote unit 2 from which it will
receive transmitted data files.
The four modems in host unit 3 receive the data file
transmitted by the four cellular telephones in remote unit 2
in 10K files. Host unit 3 recombines the split data file and
copies it to a network hard disk drive for access by playback
unit 4. The hard disk drive on host unit 3 stores only
software necessary to run the functions of host unit 3. Data
files received from remote unit 2 are stored on hard disk
dri ve of playback unit 4. Host unit 3 and playback unit 4 are
networked together. A pier-to-pier network, such as "Novell
Lite'' by Novell is particularly suitable for this purpose.
When host unit 3 is turned on, it automatically runs host boot
software sequence D.
HOST BOOT SOFTWARE SEQUENCE D
1. Host unit 3 looks for the server device on the network.

65
Playback unit 4 is addressed as the network server.
2. Host unit 3 logs onto the network as host.
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3. Drive letter E: is mapped as "play here." Drive E: is a

6.2 operating system, Microsoft Windows, Microsoft
Video for Windows, Novell Netware LiteT~\ trackball bus
RAM drive in which data files are stored for immediate
mouse, video decompression card, audio decompression
playback and viewed on an NTSC monitor or output to the
card, VGA video to l\iTSC scan converter, and 16 bit
master control.
ethernet card. Playback unit 4 is automated so that upon
4. Drive letter F: is mapped as "save here." This is the
boot, it logs into the network, accesses its multi-tasking
subdirectory on the hard disk drive of playback unit 4 to
environment such as Windows, and is ready to retrieve
which host unit 3 stores data files received from remote unit
and play stored data files.
2.
5. Host unit 3 loads Windows or another suitable
10
PLAYBACK BOOT SOFTWARE SEQUENCE F
operating environment.
6. File reception software sequence E is initiated. File
1. Playback unit 4 initializes network, with playback unit
reception software sequence E allows host unit 3 to wait for
4 being the server.
and receive incoming data files automatically.
2. Playback unit 4 logs into the network as player.
One host unit can support as many as thirty (30) remote 15
3.
Drive letter E: is mapped as "Play Here." Drive E: is a
units. The host unit can only receive a transmitted data file
RAM drive in which data files are stored for immediate
from one remote unit at any given time, however.
playback, viewed on an NTSC monitor, or output to the
File reception software sequence E is essentially the same
station's master control.
as transfer software sequence B. File reception software
4. Driver letter F: is mapped as "Save Here." Thi s is the
sequence S automates each telephone line end modem of 20
subdirectory on the hard disk drive of playback unit 4
host unit 3 to obtain communication with each cellular
wherein which host unit 3 stores data files received from
telephone of remote unit 2 and receive the transmitted data
remote unit 2.
file in 10K files and recombine the data file for storage on the
5. Playback unit 4 executes WINDOWSTM or similar
hard disk drive of playback unit 4.
25 suitable multi-tasking environment such as OS/2 from IBM,
UNIX, or Novcll.
FILE RECEPTION SOFTWARE SEQUENCE E
6. WlNDOWSTM is automated to bring up the file man1. The first program called by host boot software sequence
ager. Once the recombined data file has been stored on a
o for a communications port "COMl" controls the file
network hard disk drive of playback unit 4, the data file may
reception process on host unit 3. "COMl" also controls the 30 either remain stored for later use, edited, or retrieved for
monitor display notifying the operator of the throughput,
output to the master control. It may be advantageous to have
size of the file, and percentage complete.
numerous host units networked with a single playback unit
2. Each of the other communications ports communicates
so that numerous data files can be received from numerous
with "COMl" in the WlNDOWSTM environment, using
remote units simultaneously. Alternatively, in a basic
dynamic data exchange (DOE). DOE is known in the 35 embodiment, host unit 3 and playback unit 4 could be
industry and allows mUltiple applications to share informaintegrated into a single host/playback unit.
tion.
Playback unit 4 has a video card installed in an expansion
3. The modem's interfacing with each communications
slot. This video card is similar as the video card installed in
port are all ready to receive the cellular string transmitted by
remote unit 2 with the exception that the capture module is
each cellular telephone in remote unit 2. Upon receipt of the 40 not necessary. When a data file is retrieved by playback unit
cellular strings, the modem is ready to receive transmitted
4 for output to the master control, the video card decomdata. All other settings such as baud rate, protocol, and
presses the file and converts the digitized data to VGA.
miscellaneous AT commands are preset in the host unit in
If a data file received by host unit 3 is for immediate
order to automate the file receiving process.
playback, it is "stored" in the E: drive. The E: drive is a drive
4. As each CO.\1 port on remote unit 2 completes transfer 45 for temporary storage of the data file for immediate playback
of the data file in 10K files, the line will immediately drop
or output to the master control.
out until all four lines have hung up.
If the data file received by host unit 3 is for later playback
5. Host unit 3 then recombines the 10K files into a
or output, it is saved in the F: drive for later retrieval. The
complete data file using a sequential read/write operation. A 50 F: drive is a subdirectory of the hard disk drive of playback
master data file is opened in the E: subdirectory on the hard
unit 4 for storage of data files.
disk dri ve of the playback unit. The 10K files are then
Once decompressed and converted to VGA, a scan conassembled according to their file extension created by
verter card installed in playback unit 4 converts the VGA
remote unit 2 when the data file was split. The 10K files are
signal to the desired broadcast signal. Although "NTSC" is
assembled sequentially between 001 and 999. Twenty kilo- 55 the most common broadcast signal, the signal could also be
byte (20K) pieces are read and then written until the entire
converted to "PAL," "Y/C video," or other broadcast signal
data file has been recombined and stored on the network
as required. This "NTSC" signal output from the scan
hard drive of playback unit 4.
converter card can be viewed on an "NTSC" monitor for
6. Host unit 3 then executes line 1 of this file reception
immediate playback for broadcast, or stored on video tape or
software sequence E and COM! awaits connection with 60 .other conventional means for later use.
remote unit 2 to receive another transmitted data file.
While the invention has been described with a certain
Playback unit 4 of FIG. 1 is the interface between
degree of particularity, it is manifest that many changes may
captured video and the station master control which outputs
be made in the details of construction without departing
the signal. In the preferred embodiment, playback unit 4 is
from the spirit and scope of this disclosure. It is understood
a personal computer with a 486DX-2166 motherboard, 210 65 that the invention is not limited to the embodiment set forth
Mb hard disk drive, 1.44MB floppy drive, high speed serial
herein for purposes of exemplification, but is to be limited
ports, 1 MB Windows accelerator video card, MS DOS Ver.
only by the scope of the attached claim or claims, including
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the full range of equivalency to which each element thereof
is entitled.
What is claimed is:
a.) means for capturing, digitizing, and compressing at
least one composite signal;
a.) means for receiving at least one composite signal
transmitted by the remote unit;
b.) means for storing the composite signal received by
the host unit;
2. An apparatus according to claim 1 wherein the host unit
and the playback unit are combined in a single computer.
3. An apparatus according to claim 1 wherein the composite signal is transmitted over telephone lines, cellular,
radio or other telemetric frequencies.
4. An apparatus according to claim 3 further including
means for splitting and organizing the digitized, compressed
audio and/or video signal prior to transmission.
5. An apparatus according to claim 1 wherein the means
for capturing, digitizing, and compressing said composite
signal includes a video capture device installed in said
remote unit to capture said composite signal in real time.
for capturing, compressing and digitizing said Composite
signal includes an audio capture device installed in said
remote unit.
for transmitting the composite signal includes: at least one
interface installed in conjunction with said remote unit; a
cellular telephone connected to each said interface.
8. An apparatus according to claim 1 wherein said means
for decompressing said video signal includes a decompression board in said playback unit.
9. An apparatus for transmission of data from a remote
location to a host location, comprising:
a remote unit capable of receiving a composite signal;
said remote unit being a computer, including:
a.) a video capture module to capture, digitize and,
compress said composite signal into a data file;
b.) at least two computer interfaces;
c.) means for splitting said data file into pieces;
d.) means for tagging said pieces in sequential order;
e.) means for storing said data file;
f.) means for transmitting said sequentially tagged
pieces through said interfaces;
a host unit;
said host unit being a computer, including:
a.) at least two computer interfaces for receiving said
sequentially tagged pieces transmitted from said
remote unit wherein said interfaces being connected
correspondingly with said interfaces in said remote
unit;
b.) means for recombining the sequentially tagged
pieces into their original order to form a second data
file;
a playback unit;
said playback unit being a personal computer, including:
b.) means for storing the second data file received by
the host unit;
10
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55
60
65
c.) means for decompressing said second data file;

d.) means for converting said second data file to a
broadcast signal.
10. An apparatus according to claim 9 wherein the remote
unit includes a cellular telephone connected to each computer interface.
unit includes a transmitter connected to each computer
interface such that each transmitter transmits at a different
frequency.
12. An apparatus according to claim 1 including means for
converting said composite signal to a VGA signal.
means for converting said VGA signal to a broadcast signal.
14. An apparatus according to claim 13 wherein said
means for converting said VGA signal to a broadcast signal
includes a scan converter card.
a computer including a video capture module to capture
and compress video in real time;
means for transmission of said captured video over a
cellular frequency.
16. The apparatus of claim 15 wherein the means for
transmission of said captured video over a cellular frequency
includes;
at least two interfaces operating in conjunction with said
computer;
a cellular telephone connected to each said interface.
17. The apparatus of claim 16 further including means for
splitting the captured video into pieces for transmission
through said interfaces.
converting said composite signal to a broadcast signal.
19. The apparatus of claim 9 wherein said remote unit is
mobile.
20. The apparatus of claim 9 wherein said video capture
module on said video card captures, digitizes and compresses said composite signal in real time.
unit includes a telephone line connected to each computer
interface.
interfaces are capable of simultaneous transmission.
converting said composite signal to a VGA signal.
means for converting said VGA signal to a broadcast signal.
converting said composite signal to a broadcast signal.
26. An apparatus for transmission of data from a remote
location to a host location, comprising:
a remote unit, including:
a.) a video capture device to capture and digitize said
composite signal into a data file;
b.) at least two computer interfaces;
c.) mcans for splitting said data file into picces;
d.) means for tagging said pieces in sequential order;
f.) means for transmitting said tagged pieces through
said interfaces wherein said interfaces are capable of
simultaneous transmission;
a host unit, including:
a.) at least two computer interfaces for receiving said
tagged pieces transmitted from said remote unit
wherein said interfaces are capable of simultaneous
data reception;
b.) means for recombining the tagged pieces into their
original sequential order.
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27. The apparatus of claim 26 wherein the composite

signal is transmitted over telephone lines, cellular, radio or
other telemetric frequencies.
28. The apparatus of claim 26 wherein the data file is
compressed prior to transmission by the remote unit.
29. An apparatus according to claim 26 including means
for converting said composite signal to a VGA signal.
means for converting said VGA signal to a broadcast signal .
31. An apparatus according to claim 26 including means
for converting said composite signal to a broadcast signal.
32. An apparatus according to claim 26 wherein the

tagged pieces are transmitted from said remote unit to said
host unit over telephone lines, cellular, radio or other telemetric frequencies .
remote unit is mobile.
remote unit captures and digitizes the composite signal in
real time.
10
A721
* * * * *
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Case: 15-1171
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PROOF OF SERVICE
The undersigned hereby certifies that on March 6, 2015, I caused the
foregoing CORRECTED NONCONFIDENTIAL BRIEF FOR DEFENDANTSAPPELLANTS to be electronically with the Clerk of the Court for the United
States Court of Appeals for the Federal Circuit by using the appellate CM/ECF
system. Service will be accomplished by the CM/ECF system.
/s/ Kathleen M. Sullivan__________
Case: 15-1171
Document: 40
Page: 497
Filed: 03/06/2015
CERTIFICATE OF COMPLIANCE
Counsel for Defendants-Appellants hereby certifies that:
1. The brief complies with the type-volume limitation of Rule 28.1(e)(2)(A)
because exclusive of the exempted portions it contains 13,920 words as counted by
the word processing program used to prepare the brief; and
2. The brief complies with the typeface requirements of Federal Rule of
Appellate Procedure 32(a)(5) and the type-style requirements of Federal Rule of
Appellate Procedure 32(a)(6) because it has been prepared using Microsoft Office
Word 2007 in a proportionately spaced typeface: Times New Roman, font size 14.
/s/ Kathleen M. Sullivan

15-03-06 Samsung Opening Brief (Fed. Cir.)

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15-03-06 Samsung Opening Brief (Fed. Cir.)

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Case: 15-1171

Appeal Nos. 15-1171, -1195

United States Court of Appeals

CORRECTED NON-CONFIDENTIAL BRIEF

The full name of every party or amicus represented by me is:

Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.

is not the real party in interest) represented by me is:

percent or more of the stock of the party or amicus curiae represented by me

Matthew S. Warren; Scott L. Watson; Cleland B. Welton II; Alan L. Whitehurst;

The Patents At Issue .............................................................................. 3

Apples 647 Patent (Quick Links) ......................................... 3

Apples 721 Patent (Slide To Unlock) ................................... 6

Apples 172 Patent (Text Correction) .................................... 7

Apples 959 Patent (Unified Search) ..................................... 7

Apples 414 Patent (Sync) ..................................................... 7

Samsungs 239 Patent ................................................................ 8

The Jury Verdict ....................................................................................8

The District Courts Orders On Post-Trial Motions ............................. 9

SUMMARY OF ARGUMENT ...............................................................................10

THE DISTRICT COURT ERRED IN DENYING SAMSUNGS

Under This Courts Claim Construction, No Reasonable Jury

Under This Courts Claim Construction, No Reasonable Jury

Samsung Is Entitled To JMOL As To The 721 Patent Because

Samsung Is Entitled To JMOL As To The 172 Patent ......................38

THE DISTRICT COURT ERRED IN DENYING SAMSUNGS

The District Court Erred In Its Construction Of The

Claim 18 Is Invalid As Obvious ...............................................39

Samsung Is Entitled To JMOL As To The 959 Patent Because

The Term Heuristic Renders Claim 25 Invalid As

Claim 25 Is Invalid As Anticipated By WAIS Prior Art .......... 47

Samsung Is Entitled To JMOL As To The 414 Patent Because

THE DISTRICT COURT ERRED IN GRANTING APPLE

The District Court Lacked Jurisdiction To Order Ongoing

Apple Waived Any Claim To Ongoing Royalties ..............................52

The District Court Erred By Failing To Consider The HTC

THE DISTRICT COURTS ERRONEOUS CLAIM

The District Court Incorrectly Construed The Term Means For

The District Court Erred By Including Software

The District Court Erred By Failing To Include Cellular

Samsung Is Entitled To A New Trial To Remedy The District

IF THE COURT ORDERS A NEW TRIAL ON APPLES

Apples Conjoint Survey Evidence And Damages Calculations

Evidence Of Apples Real-World Licenses And Valuations Of

Apples Evidence Of Lost Profits For An Incorrect Blackout

CONFIDENTIAL MATERIAL OMITTED

The materials omitted from pages A136.3-36.5 of the

Addendum contain confidential information relating to Apples calculation of

Cybor Corp. v. FAS Techs., Inc.,

LaserDynamics, Inc. v. Quanta Computer, Inc.,

Teva Pharm. U.S.A., Inc. v. Sandoz, Inc.,

STATEMENT OF RELATED CASES

Whether the district court erred in granting Apples motion for

ongoing royalties where (a) Apples interlocutory appeal of the denial of

Whether the district court erred in its claim construction of Samsungs

Whether, if this Court orders a new trial on Apples patents, it should

The Patents At Issue

Apples 647 Patent (Quick Links)

Asserted claim 9 of U.S. Patent No. 5,946,647 (647 patent) is directed to

message), links actions to those structures, provides a pop-up menu allowing a

9. The system recited in claim 1, wherein the user interface enables

address the infringement and invalidity allegations under this Courts

Apples 721 Patent (Slide To Unlock)

U.S. Patent No. 8,046,721 (721 patent) is directed to a device with a

Apples 172 Patent (Text Correction)