Apple Inc. v. Samsung Electronics Co. Ltd. et al, No. 5:2011cv01846 - Document 1156 (N.D. Cal. 2012)
Court Description: ORDER Granting in Part and Denying in Part Apple's Motion for Partial Summary Judgment. Signed by Judge Lucy H. Koh on 6/29/2012. (lhklc2, COURT STAFF) (Filed on 6/29/2012)
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Apple Inc. v. Samsung Electronics Co. Ltd. et al Doc. 1156 1 2 3 4 5 6 7 8 9 United States District Court For the Northern District of California 10 11 12 13 14 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION APPLE, INC., a California corporation, ) ) Plaintiff and Counterdefendant, ) 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 and Counterclaimants. ) ) Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART APPLE’S MOTION FOR PARTIAL SUMMARY JUDGMENT Plaintiff Apple, Inc. (“Apple”) filed a motion for summary judgment against Defendants 15 and Counterclaimants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and 16 Samsung Telecommunications America, LLC (collectively “Samsung”) on May 17, 2012 (“MSJ”). 17 Samsung filed its opposition on May 31, 2012 (“Opp’n”). Apple filed its reply on June 7, 2012 18 (“Reply”). The Court held a hearing on June 21, 2012. The pretrial conference in this matter is set 19 for July 18, 2012; the trial will begin on July 30, 2012. Because the parties require a ruling on this 20 motion on an expedited basis, the Court will keep its analysis brief. 21 The parties are familiar with the factual and procedural background of this case, and the 22 Court will not repeat it in detail here. In sum, at the center of the parties’ dispute in this lawsuit are 23 Samsung’s cellular telephones and tablet computers. Apple alleges that Samsung’s products 24 infringe on Apple’s utility and design patents as well as Apple’s trademark and trade dress. 25 Samsung’s motion for summary judgment on Apple’s affirmative claims is addressed in a separate 26 order. In response to Apple filing suit against Samsung, Samsung filed counterclaims against 27 Apple alleging that Apple’s products infringe Samsung’s utility patents. Additional facts are 28 discussed below, as necessary, in the Court’s analysis. 1 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT Dockets.Justia.com 1 In order to prepare this case for trial on July 30, 2012, the parties stipulated to dismiss many of the claims originally asserted in the complaint, counterclaims, and counterclaims in reply. 3 Apple moves for summary judgment on four of Samsung’s claims covering 3 patents. Apple 4 moves for summary judgment on the following claims: (1) noninfringement of claims 25 and 26 of 5 United States Patent No. 7,362,867 (“the ’867 Patent”); (2) invalidity of claims 10 and 12 of 6 United States Patent No. 7,456,893 (“the ’893 Patent”); and (3) invalidity of claim 1 of United 7 States Patent No. 7,577,460 (“the ’460 Patent”). After hearing oral argument on the matter, and 8 reviewing the briefing by the parties, the evidence offered in support of the briefing, and the 9 relevant case law, the Court GRANTS in part and DENIES in part Apple’s motion for summary 10 United States District Court For the Northern District of California 2 judgment. Each of Apple’s arguments challenging Samsung’s claims is addressed in turn below. 11 I. 12 LEGAL STANDARD Under Federal Rule of Civil Procedure 56(a), “the court shall grant summary judgment if 13 the movant shows that there is no genuine dispute as to any material fact and the movant is entitled 14 to judgment as a matter of law.” Material facts are those that may affect the outcome of the case. 15 See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is 16 “genuine” if the evidence is such that “a reasonable jury could return a verdict for the nonmoving 17 party.” See id. “[I]n ruling on a motion for summary judgment, the judge must view the evidence 18 presented through the prism of the substantive evidentiary burden.” Id. at 254. The question is 19 “whether a jury could reasonably find either that the [moving party] proved his case by the quality 20 and quantity of evidence required by the governing law or that he did not.” Id. “[A]ll justifiable 21 inferences must be drawn in [the nonmovant’s] favor.” See United Steelworkers of Am. v. Phelps 22 Dodge Corp., 865 F.2d 1539, 1542 (9th Cir. 1989) (en banc) (citing Liberty Lobby, 477 U.S. at 23 255). 24 The moving party bears the initial responsibility for informing the district court of the basis 25 for its motion and identifying those portions of the pleadings, depositions, interrogatory answers, 26 admissions and affidavits, if any, that it contends demonstrate the absence of a genuine issue of 27 material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party opposing a properly 28 supported motion for summary judgment “may not rest upon the mere allegations or denials of 2 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 [that] party’s pleading, but . . . must set forth specific facts showing that there is a genuine issue for 2 trial.” See Fed. R. Civ. P. 56(e); see also Liberty Lobby, 477 U.S. at 250. The opposing party need 3 not show the issue will be resolved conclusively in its favor. See Liberty Lobby, 477 U.S. at 248– 4 49. All that is necessary is submission of sufficient evidence to create a material factual dispute, 5 thereby requiring a jury or judge to resolve the parties’ differing versions at trial. See id. 6 7 8 II. DISCUSSION A. Non-Infringement of the ’867 Patent The ’867 Patent, entitled “Apparatus and Method for Generating Scrambling Code in UMTS Mobile Communications System” was filed on July 7, 2000, and issued on April 22, 2008. 10 United States District Court For the Northern District of California 9 The ’867 Patent is directed to an electronic system and method for generating “primary scrambling 11 codes” used to distinguish base stations transmitting in a mobile communication network. See ‘867 12 Patent Abstract; 1:48-52. Without such a differentiating mechanism, cellular communications 13 systems would be unable to function due to the high density of cellular base stations and mobile 14 devices transmitting and receiving data within a given area. See Expert Report of Richard Wesel 15 (“Wesel Report”) ¶ 29-32. 16 The ’867 system relies on a particular class of mathematical sequences, known as Gold 17 sequences, to serve as the primary scrambling codes. ’867 Patent 16:6-9. These Gold sequences 18 are derived from other mathematical sequences known as m-sequences. Id. In particular, a Gold 19 sequence is formed by summing a shifted version of one m-sequence with another m-sequence. Id. 20 The number of times that the first m-sequence is shifted uniquely specifies the resulting Gold 21 sequence (up to the number of elements in the sequence), allowing for generation of multiple Gold 22 sequences by varying the number of shifts applied to the first m-sequence. Id. 23 Samsung accuses Apple’s iPhones and iPads that include baseband processors of infringing 24 claims 25 and 26 of the ’867 Patent because these phones generate Gold codes in the manner 25 described by the asserted claims. Wesel Report ¶ 55-69. The accused devices do not, however, 26 directly apply those Gold codes to the data in the scrambling process. See Opp’n at 5. Independent 27 claim 25 of the ’867 Patent recites: 28 3 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 2 3 4 5 An apparatus for generating scrambling codes in mobile communication system having a scrambling code generator, comprising: a first m-sequence generator to generate a first m-sequence; a second m-sequence generator to generate a second m-sequence; and at least one adder for generating a ((K-1)*M+K)th Gold code as a Kth primary scrambling code by adding a (((K-1)*M+K)-1)-times shifted first m-sequence and the second m-sequence, wherein K is a natural number and M is a total number of secondary scrambling codes per one primary scrambling code. 6 ’867 Patent, 15:65-16:12. Dependent claim 26 (which depends from claim 25) of the ’867 7 Patent recites: 8 9 United States District Court For the Northern District of California 10 The apparatus of claim 25, wherein the secondary scrambling codes of the Kth primary scrambling codes are the ((K-1)*M+K+1)th through (K*M+K)th Gold codes. ’867 Patent, 16:13-15. 11 Apple moves for summary judgment of non-infringement of the ’867 Patent. Summary 12 judgment of non-infringement is a two-step analysis. “First, the claims of the patent must be 13 construed to determine their scope. Second, a determination must be made as to whether the 14 properly construed claims read on the accused device.” Pitney Bowes, Inc. v. Hewlett-Packard 15 Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (internal citation omitted). “[S]ummary judgment of 16 non-infringement can only be granted if, after viewing the alleged facts in the light most favorable 17 to the non-movant, there is no genuine issue whether the accused device is encompassed by the 18 claims.” Id. at 1304. 19 1. Claim Construction 20 The center of the parties’ dispute is the third limitation of claims 25 and 26. Claims 25 and 21 26 each require “at least one adder for generating a ((K-1)*M+K)th Gold code as a Kth primary 22 scrambling code by adding a (((K-1)*M+K-1)-times shifted first m-sequence and the second m23 sequence.” ’867 Patent 16:5-8. Although the parties have not asked for claim construction, it is 24 clear that they disagree as to the meaning of the phrase “a ((K-1)*M+K)th Gold code as a Kth 25 primary scrambling code,” and in particular the meaning of the term “scrambling code.” See Mot. 26 at 10-11; Opp’n at 2-3. Samsung argues that “scrambling code” should be defined as any code 27 “generated by adding a first m-sequence and a second m-sequence.” Opp’n at 3. Accordingly, 28 4 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 Samsung reads the disputed claim as applying to a “Gold code generated by adding a first m- 2 sequence and a second m-sequence,” which includes the accused products. Apple, however, 3 argues that “scrambling code” should be defined as “a code that is actually used to scramble data.” 4 See Reply at 1. Under Apple’s construction, the claim term requires that the Gold code must be 5 used to scramble data. Based on Apple’s proposed construction, Apple argues that the accused 6 products do not infringe because the Gold codes in the accused devices do not scramble data. In 7 light of this dispute, this Court will now construe the disputed term. See Network Commerce, Inc. 8 v. Microsoft, 422 F.3d 1353, 1363-64 (Fed. Cir. 2005) (“There is no requirement that the district 9 court construe the claims at any particular time.”). United States District Court For the Northern District of California 10 11 a. Claim Language In this case, the plain meaning of the claim language, as well as the supporting intrinsic and 12 extrinsic evidence, support Apple’s construction. First, the claim language is inconsistent with 13 Samsung’s construction. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en 14 banc) (“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to 15 which the patentee is entitled the right to exclude.’”) (internal quotations and citations omitted). 16 The plain language of the claim supports Apple’s position. By reciting that the apparatus generates 17 “a . . . Gold code as a . . . primary scrambling code,” the plain language suggests the gold code that 18 is generated must actually be a primary scrambling code. The plain language also suggests that a 19 gold code is a different concept from a primary scrambling code. 20 In contrast, applying Samsung’s proposed definition creates an awkward and circular 21 construction. Inserting Samsung’s construction into the disputed language, the term reads “at least 22 one adder for generating a . . . Gold code as a . . . primary code generated by adding a first m- 23 sequence and a second m-sequence by adding a . . . shifted first m-sequence and the second m- 24 sequence.” Not only would such a construction render the latter part of the claim redundant, but it 25 would also give no effect to the word “primary.” Similarly, under Samsung’s construction, claim 26 26 would read: “The apparatus of claim 25, wherein the secondary codes generated by adding a 27 first m-sequence and a second m-sequence of the Kth primary codes generated by adding a first m- 28 sequence and a second m-sequence are the ((K+1)*M+K+1)th through (K*M+K)th Gold codes.” 5 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 This claim is even more nonsensical, as the labels “secondary” and “primary” are rendered 2 meaningless in the abstract context of codes generated in the specified manner. Apple’s 3 construction, by contrast, is both non-redundant and consistent with the notion of primary and 4 secondary scrambling codes serving different roles in data transmission. 5 6 b. Specification Looking to the specification, the Court is further persuaded by Apple’s construction. See Phillips, 415 F.3d at 1315 (explaining that the specification is “‘always highly relevant’” and 8 “‘[u]sually [] dispositive; it is the single best guide to the meaning of a disputed term.’”). While 9 Samsung cites the patent specification in support of its proposed construction, the relevant 10 United States District Court For the Northern District of California 7 language consistently undermines Samsung’s position. Most notably, the description of the 11 preferred embodiment recites: “[a] gold code used herein as a scrambling code is generated 12 through binary adding of two distinct m-sequences.” ’867 Patent 6:23-24 (emphasis added). This 13 language in the specification supports Apple’s construction because it establishes that gold codes 14 may be used as scrambling codes, but are not necessarily always scrambling codes. 15 Similarly, the patent’s description of the UMTS technology, in the Background of the 16 Invention section of the specification, states that “each unique scrambling code used for spreading 17 (scrambling) downlink channel signals of each base stations [sic] is referred to as ‘primary 18 scrambling code.’” ’867 Patent 1:52-54 (emphasis added). This language in the specification cuts 19 against Samsung’s construction because it describes a scrambling code based on what it does 20 (spreading downlink data), not how it is formed. 21 Moreover, the ’867 Patent explicitly states in the specification that “[i]t should be noted that 22 for the purpose of illustration, the term ‘scrambling code’ is interchangeable with the term ‘gold 23 code’ or ‘gold sequence.’” ’867 Patent 2:13-16 (emphasis added). In other words, because the 24 ’867 Patent requires that Gold codes be used as scrambling codes, the two can be used 25 interchangeably for the purposes of the preferred embodiment. 26 c. Prosecution History 27 There is additional support for Apple’s construction in the prosecution history of the ’867 28 Patent. Phillips, 415 F.3d at 1317 (internal citations omitted) (the prosecution history “can often 6 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 inform the meaning of the claim language by demonstrating how the inventor understood the 2 invention and whether the inventor limited the invention in the course of prosecution, making the 3 claim scope narrower than it otherwise would be”). 4 For example, in one response to an office action with respect to pending claim 59 (which 5 became issued claim 25), the applicant made several remarks regarding the relationship between 6 the gold code and the primary scrambling code. For example, in a response dated April 28, 2006, 7 the applicant explained that “[i]n this context . . . a Gold code used herein as a scrambling code is 8 generated through binary adding of two distinct m-sequences.” Selwyn Ex. 18 at 15 (emphasis 9 added). Similarly, the applicant explained on December 11, 2006, that “[c]onventionally, it is United States District Court For the Northern District of California 10 well-known that Gold codes do not have fixed order. To use these Gold codes as 11 primary/secondary scrambling codes, it is necessary to clearly indicate to each base station a 12 primary scrambling code and corresponding secondary scrambling codes.” Selwyn Ex. 19 at 16 13 (emphasis added). These statements demonstrate that the gold codes are to be used as primary and 14 secondary scrambling codes in the disputed terms. 15 16 d. Extrinsic Evidence Finally, the parties cite to the 3GPP standard as extrinsic evidence regarding what a person 17 of ordinary skill in the art would have understood the disputed terms at the time of the invention. 18 Phillips, 415 F.3d at 1312-13 (en banc) (the court’s duty is to determine “the meaning that the 19 term[s] would have to a person of ordinary skill in the art in question at the time of the invention”); 20 see also Opp’n at 5. It does not appear, however, that the 3GPP standard is properly extrinsic 21 evidence as the patent was filed in 2000, and the 3GPP attached as evidence was published in 22 2004. Selwyn Decl. Ex. 6 at 2. 23 Even if the standard were properly extrinsic evidence, it would not change the Court’s 24 construction of the disputed term. The 3GPP standards differentiate between two mathematical 25 sequences, z n (i ) and Sdl,n (i), labeling the first a Gold code, and the second a “complex scrambling 26 code.” Indeed, the standards explain that the “complex scrambling code” is mathematically 27 derived from the Gold code, first by transforming the binary Gold code (a {0,1} valued sequence) 28 into a {-1, 1} valued sequence, and next by adding that {-1, 1} valued sequence to an imaginary, 7 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 shifted version of itself. Because the 3GPP standards make clear that the scrambling code, 2 is a complex sum of two transformed Gold codes, rather than a sum of a first m-sequence and a 3 second m-sequence, they cannot support Samsung’s construction.1 4 , Finally, it should be noted that none of the intrinsic evidence helps to solve a significant 5 problem with Samsung’s construction: its failure to address the use of “primary” and “secondary” 6 as adjectives to describe “scrambling code.” That is, even if Samsung’s construction for 7 “scrambling code” was adopted, Samsung does not propose any meaningful way to distinguish 8 between “primary scrambling codes” and “secondary scrambling codes.” Indeed, while Samsung’s 9 argument touches on “binary scrambling codes,” “real scrambling codes,” and “complex United States District Court For the Northern District of California 10 scrambling codes,” it fails to explain how to distinguish primary codes from secondary ones. 11 Opp’n at 5. The ‘867 Patent does address “primary” and “secondary” scrambling codes, but it 12 describes a “primary scrambling code” as “the . . . unique scrambling code used for spreading 13 (scrambling) downlink channel signals” and the “secondary scrambling code” as code that is “used 14 for scrambling downlink data channels in case that an orthogonal codes [sic] is not available using 15 the primary scrambling code.” ’867 Patent 1:52-58. Accordingly, the term “a ((K-1)*M+K)th Gold code as a Kth primary scrambling code” is 16 17 construed as meaning “a ((K-1)*M+K)th Gold code as a Kth primary code used to spread (scramble) 18 data.” 19 2. Infringement 20 Samsung does not allege that the accused products use Gold codes as “scrambling codes” 21 within the meaning of the term construed above. Rather, Samsung’s opposition to Apple’s motion 22 for summary judgment on infringement of the ’867 patent rested almost solely on the disputed 23 meaning of “scrambling codes.” 24 25 1 26 27 28 Samsung argues that the use of the adjective “complex” to describe as a “scrambling code” implies that z n (i ) must be a non-complex scrambling code. This argument ignores the fact that there are at least three other mathematic sequences located in the relevant portion of the 3GPP standards, all of which, based on this logic, should be labeled as “scrambling codes.” Two of these other sequences, however, are m-sequences, which cannot be “scrambling codes” according to Samsung’s definition. 8 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 Specifically, there is no dispute that the accused Apple products use chips that practice the 2 3GPP standard. See Opp’n at 5-6; MSJ at 5. There is also no dispute regarding the specification of 3 the 3GPP standard. As explained above, the 3GPP standards differentiate between mathematical 4 sequences, z n (i ) and Sdl,n (i). The first sequence, z n (i ) , is a gold code sequence. The gold code 5 sequences are binary sequences, which are used to generate real valued sequences, zn. Finally, the 6 “complex scrambling code sequence,” Sdl,n (i), is generated. See 3GPP Specification at 23; Selwyn 7 Decl. Ex. 6. Samsung’s expert, Dr. Wesel, argues that the 3GPP standard incorporates the disputed 8 claims. Specifically, Dr. Wesel testified that the gold code in the 3GPP standard is used for 9 spreading under Apple’s construction “because it’s used to make the ultimate spreading code.” United States District Court For the Northern District of California 10 Wesel Dep. at 165-166; Selwyn Decl. Ex. 5. However, Samsung’s argument of non-infringement 11 under Apple’s construction is not persuasive. It is undisputed that the gold codes generated 12 pursuant to the 3GPP standard do not, themselves, act as a primary scrambling code as is required 13 under the proper construction. Instead, the gold codes must be converted and transformed to 14 another sequence that acts as a scrambling code. See 3GPP Specification at 23; Selwyn Decl. Ex. 15 6. 16 Because it is undisputed that Apple’s accused products do not use Gold codes as scrambling 17 codes, the accused products do not, as a matter of law, infringe claims 25 and 26 of the ’867 Patent. 18 Accordingly, Apple’s motion for summary judgment of non-infringement of the ’867 Patent is 19 GRANTED. 20 21 B. Invalidity of the ’893 Patent Apple moves for summary judgment on the ’893 Patent arguing that independent claim 10 22 and dependent claim 12, which depends from claim 10, are invalid as indefinite. MSJ at 12. Claim 23 10, recites: 24 25 26 27 28 A digital image processing apparatus comprising: an optical system for receiving a light reflected from a subject; a photoelectric conversion module in optical communication with the optical system for converting the light to image data; a recording medium for storing the image data in an image file; a display screen for displaying the image data; and a controller connected with the photoelectric conversion module, the recording medium and the display screen, the controller being operative in a photographing mode to process the image data for storage in the recording medium and, in a stored-image display 9 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 2 3 4 5 mode, being operative to control the display screen for displaying a single image relative to the image data, wherein upon a user performing a mode-switching operation defined by switching from the stored-image display mode to the photographing mode and back to the storedimage display mode the controller causes the display screen to first display a single image file that was most recently displayed before the mode-switching operation, the single image file being different from a most-recently stored image file, and the single image file being first displayed irrespective of a duration that the camera was used in the photographing mode during the mode-switching operation. ’893 Patent 10:20-47 (emphasis added). 6 The ’893 Patent enjoys the presumption of validity pursuant to 35 U.S.C. § 282, absent 7 clear and convincing evidence to the contrary. Apple argues that claims 10 and 12 of the ‘893 8 Patent are invalid as indefinite because they are hybrid method and apparatus claims under IPXL 9 Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005). MSJ at 13. Under 35 United States District Court For the Northern District of California 10 U.S.C. § 112, ¶ 2, patent claims must “particularly point[] out and distinctly claim[] the subject 11 matter which the applicant regards as his invention.” The purpose of this requirement is to “ensure 12 that the claims delineate the scope of the invention using language that adequately notifies the 13 public of the patentee’s right to exclude.” Haemonetics Corp. v. Baxter Healthcare Corp., 607 14 F.3d 776, 783 (Fed. Cir. 2010) (quotation marks omitted). 15 Apple’s argument that claims 10 and 12 are indefinite hybrid claims arise from the Federal 16 Circuit decision in IPXL. In IPXL, the Federal Circuit found that a single claim that recited both an 17 apparatus and a method for using that apparatus was invalid as indefinite. The claim read: 18 19 20 The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters. 21 IPXL, 430 F.3d at 1384 (emphasis in original). The claim was found invalid because, by referring 22 to both the system itself and the user’s use of the system, it was unclear whether infringement 23 occurred “when one creates a system that allows the user to change the predicted transaction 24 information or accept the displayed transaction” or “when the user actually uses the input means to 25 change transaction information or uses the input means to accept a displayed transaction.” Id. As 26 a result, a person of ordinary skill in the art could not reasonably determine the scope of the patent, 27 and therefore could not know when she infringed on it. 28 10 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 However, IPXL does not invalidate every claim that includes language describing both an 2 apparatus and functional requirements of that apparatus. In Microprocessor Enhancement Corp. v. 3 Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008), the Federal Circuit emphasized that 4 “apparatus claims are not necessarily indefinite for using functional language.” It further clarified 5 that “[t]he conclusion of IPXL Holdings was based on the lack of clarity as to when the mixed 6 subject matter claim would be infringed.” Id. at 1374. Where there is “no similar ambiguity” in 7 the claims at issue a finding of invalidity is improper. Id. at 1375. Thus, the task for district courts 8 is to distinguish between claims that ambiguously appear to claim both an apparatus and a method 9 for using the apparatus, and claims that simply use functional language to describe the apparatus United States District Court For the Northern District of California 10 and “offer sufficient notice to potential defendants as to the actions which would constitute 11 infringement.” Eolas Technologies, Inc. v. Adobe Systems, Inc., 810 F. Supp. 2d 795, 812 (E.D. 12 Tex. 2011); Freedom Wireless, Inc. v. Alltell Corp., No. 2:06cv504 (TJW–CE), 2008 WL 4647270, 13 at *14 (E.D. Tex. Oct. 17, 2008). 14 15 16 17 18 19 20 For example, in Yodlee, Inc. v. CashEdge, Inc., the following claim language was alleged to be an invalid hybrid claim: A computer-readable storage device storing instructions that upon execution cause a processor to automatically access personal information associated with an end user, wherein the personal information is stored on a personal information provider by performing the steps comprising of: … (b) upon activation of the presented link, downloading an application to the client computer, wherein the downloaded application upon execution on the client computer performs the steps of …. Yodlee, Inc. v. CashEdge, Inc., No. C 05-01550 SI, 2006 WL 3456610 at *4 (N.D. Ca. Nov. 29, 21 2006) (emphasis added). Because paragraph (b) referred to “activation” by a user, defendant 22 CashEdge argued that the claim appeared to include user activation as part of the patent, and 23 therefore made it unclear whether infringement occurred simply upon creation of a system that 24 enabled such activation, upon the user actually completing that activation, or both. Id. The court 25 disagreed, finding that the claim “does not seek to patent activation of the link; it seeks only to 26 patent a device which performs certain functions if and when the link is activated.” Id. Thus, it 27 was sufficiently clear that “[i]nfringement occurs when a device that has the capability of 28 11 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 performing the steps described under paragraph (b) is manufactured and sold. Whether a user 2 actually activates the link presented by the infringing device is of absolutely no import.” Id. Thus, 3 the disputed claims were not invalid hybrid claims under the IPXL rule. 4 The disputed claims here, which require “wherein upon a user performing a mode- 5 switching operation,” use functional language to describe the capabilities of the claimed apparatus 6 when the user performs a mode-switching operation. Much like Yodlee, it does not imply that the 7 user’s performance of that operation is the infringing conduct; indeed, whether the user actually 8 performs the operation is irrelevant. Instead, it claims only a device that is capable of responding 9 to the specified user action in the specified way. Creation of such a device would constitute United States District Court For the Northern District of California 10 infringement, regardless of whether the user ultimately takes that particular action. In response, Apple argues2 that In re Katz Interactive Call Processing Patent Litigation, 11 12 639 F.3d 1303 (Fed. Cir. 2011), supports its construction of the disputed term. The pertinent 13 language of the claim in Katz read: “interface means for providing automated voice messages 14 relating to said specific format to certain of said individual callers, wherein said certain of said 15 individual callers digitally enter data.” Id. at 1318 (emphasis added). The disputed claim term in 16 Katz, however, is more ambiguous than the disputed claim language in claims 10 and 12 of the 17 ’893 Patent. Specifically, the claim term in Katz required that the claimed “interface means” 18 included the step of callers digitally entering data. By doing so, the term ambiguously mixed 19 method and apparatus claims. Unlike the claim term here, the claim term in Katz did not describe 20 the functionality of the claimed system – that is, it did not suggest merely that the interface means 21 must be able to respond in a certain way if the callers digitally enter data. See id. (“Like the 22 language used in the claim at issue in IPXL (‘wherein ... the user uses’), the language used in 23 Katz’s claims (‘wherein ... callers digitally enter data’ and ‘wherein . . . callers provide . . . data’) is 24 directed to user actions, not system capabilities.”) 25 26 27 28 2 Apple also argues that Samsung’s expert agrees that “apparatus claim 10 requires user action to practice the claim.” Reply at 4. However, the deposition testimony is ambiguous on this point. Dr. Yang analogizes the claim terms to a “switch” in which the apparatus responds to a user input. This analogy more closely comports with an apparatus claim with functional limitations. See Yang Dep. 80:1 – 80:21, Selwyn Decl. Ex. 12. 12 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 In sum, claims 10 and 12 establish functional capabilities of apparatus claims, and do not 2 impermissibly create hybrid method and apparatus claims. Therefore, Apple’s motion for 3 summary judgment on invalidity of the ’893 Patent is DENIED. 4 5 C. Invalidity of the ’460 Patent Apple moves for summary judgment on the ’460 Patent, arguing that asserted claim 1 is 6 indefinite pursuant to 35 U.S.C. § 112, ¶ 2 (2006). The ’460 Patent, entitled “Portable Composite 7 Communication Terminal for Transmitting/Receiving and Images, and Operation Method and 8 Communication System Thereof,” is directed toward a method for transmitting e-mails, with and 9 without embedded images, from mobile phones with built-in cameras (popularly known in modern United States District Court For the Northern District of California 10 11 parlance as “camera phones”). In particular, the ’460 Patent discloses a mobile device with two “sub-modes” of e-mail 12 transmission, one that includes the most recently captured photograph in the body of an e-mail in 13 addition to text and the other that allows only for purely textual e-mails. At the time of the 14 invention disclosed in the ’460 Patent, there were no devices that could capture digital images and 15 transmit them to other devices. ’460 Patent, 1:34-36. The system disclosed in the ’460 Patent 16 selects between the two e-mail sub-modes based on how the phone was being used immediately 17 prior to the user’s request to send an e-mail. If the phone was being used as a normal portable 18 phone when the user requests e-mail transmission, the device enters the first (non-image) e-mail 19 sub-mode. If the phone was being used to display pictures, however, the device enters the second 20 e-mail sub-mode. At the time of invention, the system described in the ’460 Patent was the only 21 one that allowed for transmission of e-mails from mobile devices in both sub-modes. Declaration 22 of Sam Stake (“Stake Decl.”), Ex. 9 at APLNDC-WH-A 0000014122. 23 24 25 26 27 Samsung accuses Apple’s mobile devices running iOS 4 or iOS 5 of infringing claim 1 of the ’460 Patent, which recites: A data transmitting method for a portable composite communication terminal which functions as both a portable phone and a camera, comprising the steps of: entering a first E-mail transmission sub-mode upon user request for E-mail transmission while operating in a portable phone mode, the first –e-mail transmission sub-mode performing a portable phone function; 28 13 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT entering a second E-mail transmission sub-mode upon user request for Email transmission while operating in a display sub-mode, the second Email transmission sub-mode displaying an image most recently captured in a camera mode; sequentially displaying other images stored in a memory through the use of scroll keys; transmitting the address of the other party and a message received through a user interface in the first E-mail transmission sub-mode; and transmitting the address of the other party and the message received through the user interface and the image displayed on the display as an E-mail in the second E-mail transmission sub-mode. 1 2 3 4 5 6 7 8 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 ’460 Patent, 14:24-44. In order to be valid, a patent claim must “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. Whether a claim satisfies the so-called “definiteness” requirement of Section 112, ¶ 2 is a matter of law and is therefore appropriately decided at summary judgment. See, e.g., Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996). Section 112, ¶ 2 is intended “to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Haermonetics Corp. v. Baxter Healthcare Corp, 607 F.3d 776, 783 (Fed. Cir. 2010). For a claim to be “definite,” it must “provide a discernible boundary between what is claimed and what is not,” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1365 (Fed. Cir. 2011). Accordingly, definiteness does not require that claim terms have an obvious facial meaning, but only that “those terms can be given any reasonable meaning.” Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). Thus, to prove that a patent is indefinite, one must show that the claim terms are “insolubly ambiguous,” Haliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008), that is, that “one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the claim language, the specification, the prosecution history, and the knowledge in the relevant art.” Wellman, 642 F.3d at 1366 (citations and quotation marks omitted). Because patents are presumptively valid, 35 U.S.C. § 282, the party asserting indefiniteness bears the burden of proof and must demonstrate invalidity by clear and convincing evidence. Young v. Lumenis, Inc., 492 28 14 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 F.3d 1336, 1345 (Fed. Cir. 2007) (citing AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1238- 2 39 (Fed. Cir. 2003)). 3 Apple argues that claim 1 of the ’460 patent is insolubly ambiguous because it would be unclear to a person of ordinary skill in the art whether the claimed method is practiced by: (1) 5 sending two separate e-mails from two separate e-mail sub-modes; (2) sending a single e-mail from 6 the first e-mail sub-mode if the e-mail does not contain an image and a single e-mail from the 7 second e-mail sub-mode if it does contain an image; or (3) sending a single e-mail from the second 8 e-mail sub-mode only, where the non-image portions of the e-mail are transmitted from the first 9 sub-mode to the second. MSJ at 16. Furthermore, Apple argues, the patent specification only adds 10 United States District Court For the Northern District of California 4 confusion rather than clarity, as it only describes a single “E-mail transmission sub-mode,” not two 11 as disclosed in the claim, and that the prosecution history is similarly unhelpful. See MSJ at 17-18; 12 Selwyn Decl., Ex. 22 ¶ 338. 13 The Court is not persuaded by Apple’s arguments. First, the supposed ambiguity that 14 Apple points out in the ’460 Patent is more analogous to the kind of ambiguity that is routinely 15 resolved by claim construction than the kind that requires wholesale invalidation of a patent. 16 Rather than demonstrating the existence of infinite potential interpretations of a supposedly 17 ambiguous claim term, Apple has enumerated a small, finite number of constructions on which 18 reasonable minds might disagree. See Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 19 1217-18 (Fed. Cir. 1991) (holding a claim term specifying “at least about 160,000 I.U.” to be 20 indefinite). This is not enough to meet the high standard necessary to show indefiniteness. See 21 Exxon Research and Engineering Co. v. U.S. 265 F.3d 1371, 1375 (Fed. Cir. 2001). 22 Moreover, claim 1, read in light of the specification and prosecution history, only meets the 23 construction offered by Samsung. Samsung argues that claim 1 establishes three functionalities: 24 sending an e-mail transmission from a first e-mail submode; sending an e-mail transmission with 25 an image from a second e-mail sub-mode; and sequentially displaying other images with a scroll 26 key. Opp’n at 13-15. First, the plain language of the text establishes that in order for all five steps 27 enumerated in claim 1 to be satisfied, it is clear that both the first and second E-mail sub-modes 28 must be used to send an e-mail. ’460 Patent 14:38-44. Obviously, this could be accomplished 15 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 through the transmission of two e-mails, one from each sub-mode, as Apple recognizes in its first 2 proposed implementation. MSJ at 16. Samsung also agrees that such functionality would satisfy 3 the limitations of claim 1. Opp’n at 14. 4 The ’460 Patent specification further supports Samsung’s interpretation of the claim language as requiring the transmission of two e-mails, one from each sub-mode. For example, 6 Figures 6 and 8 in the ’460 Patent specification show a mode and a sub-mode: a play sub-mode and 7 a portable phone mode. Each mode and sub-mode has a corresponding e-mail transmission sub- 8 mode. See ’460 Patent Figs. 6 & 8. Moreover, the specification describes the two e-mail 9 transmission sub-modes described in the figures. ’460 Patent at 11:62-12:3; 12:30-41. Apple 10 United States District Court For the Northern District of California 5 argues that, in referring to only a single sub-mode rather than two sub-modes, the specification 11 only “serves to compound the ambiguity of claim 1.” MSJ at 17. For example, Apple cites 12 language in the specification stating that “[u]pon request for E-mail transmission . . . the portable 13 phone controller . . . enters an E-mail transmission sub-mode.” ‘460 Patent 9:42-44 & Fig. 6 14 (emphasis added). Apple reads this specification to mean, contrary to the claim language, that the 15 phone only contains one email sub-mode, not two. A person of ordinary skill in the art, by 16 contrast, would read the relevant phrase to mean that the phone only enters one email sub-mode, 17 not that there only exists one email sub-mode. 18 The prosecution history further supports Samsung’s interpretation that there are three 19 functions contained in claim 1.3 Several parts of the prosecution history show that the examiner 20 and the applicant both understood that claim 1 was directed to sending separate e-mails through 21 two distinct sub-modes. For example, the examiner rejected claim 20 (which was similar to claim 22 1 that issued) because the claimed invention was obvious in light of prior art that disclosed: 23 [A]n audio-visual e-mail system having a first E-mail transmission mode for transmitting a text-only email message and a second E-mail transmission sub-mode upon user request for E-mail transmission, wherein the second E-mail sub-mode displays an image captured by a digital camera and transmits the address of the other party and the message received through the user interface and the image display on the display. 24 25 26 27 28 3 The Court gives little weight to named inventor testimony. Bell & Howell DMP Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997). Therefore, the Court does not address Apple’s additional arguments regarding the testimony of the ’460 Patent inventors. 16 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT 1 Stake Decl. Ex. 5 at 9; Opp’n at 16. Thus, the prosecution history suggests that the claim 2 contemplates e-mail transmissions from each sub-mode. 3 The Court adopts Samsung’s construction of claim 1, which is also the first alternative 4 proposed by Apple. The first construction adopted by the Court excludes the other two proposed 5 constructions, and therefore the Court need not consider the two alternative constructions proposed 6 by Apple. Because definiteness only requires a showing that the claim terms may be given a 7 “reasonable meaning,” Apple has also successfully demonstrated the definiteness of the ’460 8 Patent. Accordingly, the Court DENIES Apple’s motion for summary judgment with regards to 9 the indefiniteness of the ’460 Patent. United States District Court For the Northern District of California 10 11 III. CONCLUSION Apple’s motion for partial summary judgment is granted in part and denied in part. Apple’s 12 motion for summary judgment on non-infringement of the ’867 Patent is GRANTED. Apple’s 13 motion for summary judgment on invalidity of the ’893 Patent and the ’460 Patent is DENIED. 14 IT IS SO ORDERED. 15 16 Dated: June 29, 2012 _________________________________ LUCY H. KOH United States District Judge 17 18 19 20 21 22 23 24 25 26 27 28 17 Case No.: 11-CV-01846-LHK ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT
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