decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books

Gear

Groklaw Gear

Click here to send an email to the editor of this weblog.


You won't find me on Facebook


Donate

Donate Paypal


No Legal Advice

The information on Groklaw is not intended to constitute legal advice. While Mark is a lawyer and he has asked other lawyers and law students to contribute articles, all of these articles are offered to help educate, not to provide specific legal advice. They are not your lawyers.

Here's Groklaw's comments policy.


What's New

STORIES
No new stories

COMMENTS last 48 hrs
No new comments


Sponsors

Hosting:
hosted by ibiblio

On servers donated to ibiblio by AMD.

Webmaster
Report from the Apple v. Samsung II Markman Hearing - Judge Koh Tells Them to Slim the Case Down ~pj Updated
Monday, February 25 2013 @ 05:52 AM EST

The Markman hearing in Apple v. Samsung II was Friday, the 21st. And now we are really entering the darkest part of the patent woods. It doesn't get any more exasperatingly detailed than at a Markman hearing. But as usual with legal matters, the more you force yourself to examine the details, the more you get out of it and the more enjoyable it eventually becomes.

At the hearing, the presiding judge, the Hon. Lucy Koh, told the parties they have to narrow their cases against each other to 25 patent claims against 25 products, with more narrowing to come. And she asked if it would be wise to just table this case until the Federal Circuit rules on a pending appeal. Samsung told the judge it will, in fact, be offering a motion to do exactly that, but Apple piped up that it will oppose that motion.

I'm happy to tell you we had a volunteer in the courtroom again, the same Debra B. who told us about the February 14th hearing where the parties explained the technology of their various claims to her, and once again, we get more details about this hearing than we got from the media reports alone. For example, it's clear that Judge Koh has learned from the first Apple v. Samsung trial:

Koh suggested that she would not follow the pattern of the Apple-Samsung case held last summer with the parties’ superabundance of motions, filings, and efforts to expand the scope of the case. “This is going to be a streamlined case,” she said. "As this case … is currently framed, I'm refusing it to go on. I am willing to let it simmer for five years.”
That's a relief. Before I show you her full report, it might be good to explain a little bit about what a Markman hearing is and why it matters.

The parties have been filing claim construction materials since December, and there is a lot of it, so that should tell you how important it all is. I explained once before what a Markman hearing is, when Oracle and Google filed their joint claim construction statement. Here, the parties filed separately. They just have a lot of trouble agreeing on anything, anything at all. And so many exhibits. One filing alone cost over $22, just for the one filing, and there have been many more filings than that one. So when PACER says that their rates are low, that is only true if you aren't really following a case in detail. But without the documents, I think it would be hard to follow along with what was said at the hearing.

A Markman hearing is a pretrial hearing in a U.S. District Court during which a judge examines evidence on the appropriate meanings of relevant key words used in patent claims. It is referencing Markman v. Westerview Instruments, Inc., 517 U.S. 370 (1996). It was a case that centered on what a word in a patent meant, the word "inventory", and the question was who gets to figure out the meaning of the words in a patent, the judge or a jury? The US Supreme Court said that job was for the judge:

The two elements of a simple patent case, construing the patent and determining whether infringement occurred, were characterized by the former patent practitioner, Justice Curtis. [n.11] "The first is a question of law, to be determined by the court, construing the letters patent, and the description of the invention and specification of claim annexed to them. The second is a question of fact, to be submitted to a jury." Winans v. Denmead, 15 How., at 338; see Winans v. New York & Erie R. Co., 21 How., at 100; Hogg v. Emerson, supra, at 484; cf. Parker v. Hulme, supra, at 1140....

Where history and precedent provide no clear answers, functional considerations also play their part in the choice between judge and jury to define terms of art. We said in Miller v. Fenton, 474 U.S. 104, 114 (1985), that when an issue "falls somewhere between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of the sound administration of justice, one judicial actor is better positioned than another to decide the issue in question." So it turns out here, for judges, not juries, are the better suited to find the acquired meaning of patent terms.

The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis. Patent construction in particular "is a special occupation, requiring, like all others, special training and practice. The judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury; and he is, therefore, more likely to be right, in performing such a duty, than a jury can be expected to be." Parker v. Hulme, 18 F. Cas., at 1140. Such was the understanding nearly a century and a half ago, and there is no reason to weigh the respective strengths of judge and jury differently in relation to the modern claim; quite the contrary, for "the claims of patents have become highly technical in many respects as the result of special doctrines relating to the proper form and scope of claims that have been developed by the courts and the Patent Office." Woodward, Definiteness and Particularity in Patent Claims, 46 Mich. L. Rev. 755, 765 (1948)....

The decisionmaker vested with the task of construing the patent is in the better position to ascertain whether an expert's proposed definition fully comports with the specification and claims and so will preserve the patent's internal coherence. We accordingly think there is sufficient reason to treat construction of terms of art like many other responsibilities that we cede to a judge in the normal course of trial, notwithstanding its evidentiary underpinnings.

So, both sides make known to the judge the meaning they give to words in the patent, but then the judge decides. And that is what happened on February 21.

Obviously, it matters a lot what a judge decides. What I've never been able to figure out is why they don't make the inventor explain the key words himself, so we don't have to go through this exercise in all the patent cases. Why don't they make them fill out a form when applying for a patent, as in "When I say 'inventory' I mean books, papers, blah, blah, but not T shirts." Or whatever. In this hearing, for example, they were arguing about Samsung's ’757 patent, Multimedia synchronization method and device, and they were trying to figure out whether or not the invention should be limited to a fixed or rigid place. They argued about that at the February 14 tutorial session too, about whether “zone-specific” referred to a specific and fixed room or not. Samsung says it didn't, because the specification mentions a yacht as a possible location for the invention, and one drawing showed LAN, WAN, central storage devices, and zone-specific storage interface devices. But the judge and Apple said the patent was confusing.

I mean, couldn't the inventor have specified that when he applied? "When I say 'zone-specific', I mean not a fixed place but any appropriate place, such as, but not limited to, yachts, LANs, WANs, central storage devices, etc." Why do we have to guess what an inventor was thinking instead? There would still be some disputes, I'm confident, because litigators litigate, but maybe we could at least narrow things down.

I'm with Judge Koh on that goal, for sure. But then, I hate patent law. I think it has no clothes, but nobody dares to tell the king.

The list of patents in this case makes me laugh, frankly. It's laugh or cry. But then, I'm not a patent lawyer. They probably eat this up and can't wait to do it again. Litigators are not like you and me. They *like* to argue, and the more complex the better. It's like playing chess. Some people love it, and they'll sit for hours and days practically without eating, working through strategies. Others get a headache after a half hour of chess and leave to get a hamburger or decide they need to go home and take a nap.

Inventors don't fill out such forms, so it is up to the judge, who first looks to intrinsic evidence of what a key word means, within the patent document itself, and then looks to extrinsic evidence, like prior art, correspondence between the patent applicant and the USPTO during the patent proceess, and even looks at dictionaries. You will see all of those types of evidence in the exhibits filed by the parties. Of course the materials are provided to her by the parties, each side trying to get the judge to agree with that side's interpretation. The jury isn't involved in this at all.

Here, then, is Debra B's report, and after it, I'll provide you with all the filings the parties have been bombarding the court with on claim construction, trying to get her to see things their way, so you can more fully understand what they are arguing about:

Apple v. Samsung II – Markman Hearing – February 21, 2013

The Markman hearing of Apple v. Samsung II held on February 21, 2013 started where the technology tutorial a week earlier had left off.

U.S. District Judge Lucy H. Koh, in San Jose, California, asked questions regarding Apple’s and Samsung’s proposed claim constructions in her process of construing the patent claims at issue in this litigation.

The Setting

The hearing took place in the same courtroom as the jury trial last August. The court–associated people included the judge, her clerk, the court reporter, and three people I assume were law externs or maybe clerks, because they were sitting in jury seats. The law firm attorneys and paralegals numbering roughly fifteen on each side filled the several rows of tables adorned with computers and monitors in front of the court bar. The audience included in-house legal counsel and employees of the parties, two or three media types, and a few other unidentified observers. And me.

The law firms that represented the parties in the August trial are representing the parties in this case, with one additional firm. Quinn Emanuel Urquhart & Sullivan, LLP is representing Samsung. Apple is represented by Morrison & Foerster, LLP, Wilmer Cutler Pickering Hale and Dorr, LLP, and the additional firm of Gibson, Dunn & Crutcher, LLP.

The hearing was held from roughly 10:30 a.m. to 3:30 p.m. with a forty-minute lunch.

Hearing Preliminaries

Last week, Judge Koh had asked the companies to consider whether the case should be put on hold until after the appeals court rules on the first lawsuit. This week, Samsung attorney Kevin Johnson indicated that Samsung would be filing a motion to suspend the lawsuit. Apple lawyer Josh Krevitt said Apple would oppose Samsung's request. Judge Koh said she would consider Samsung's motion when it is filed.

If the case does proceed, Judge Koh is insisting that each side’s case must be limited to 25 patent claims and 25 accused products. “We’ll keep narrowing and narrowing,” she said. “You’ve already been litigating this thing for a year. You must know something about what’s your best case.”

"Just take your best shots," Koh said. "I don't want a lot of sausage filler."

Koh suggested that she would not follow the pattern of the Apple-Samsung case held last summer with the parties’ superabundance of motions, filings, and efforts to expand the scope of the case. “This is going to be a streamlined case,” she said. "As this case … is currently framed, I'm refusing it to go on. I am willing to let it simmer for five years.”

[To date the number of filings in this case is piling up at just shy of 400. This compares to Apple v. Samsung I with 2200+ filings, not counting a multitude of document attachments and exhibits.]

The Markman Hearing

Apple is asserting the following US patents:

  • 5,946,647, System and method for performing an action on a structure in computer-generated data;

  • 6,847,959, Universal interface for retrieval of information in a computer system;

  • 8,046,721, Unlocking a device by performing gestures on an unlock image;

  • 8,074,172, Method, system, and graphical user interface for providing word recommendations;

  • 8,014,760, Missed telephone call management for a portable multifunction device;

  • 5,666,502, Graphical user interface using historical lists with field classes;

  • 7,761,414, Asynchronous data synchronization amongst devices; and

  • 8,086,604, Universal interface for retrieval of information in a computer system.

Samsung is also asserting eight patents:
  • 7,756,087, Method and apparatus for performing non-scheduled transmission in a mobile communication system for supporting an enhanced uplink data channel;

  • 7,551,596, Method and apparatus for signaling control information of uplink packet data service in mobile communication system;

  • 7,672,470, Audio/video device having a volume control function for an external audio reproduction unit by using volume control buttons of a remote controller and volume control method therefor;

  • 7,577,757, Multimedia synchronization method and device;

  • 7,232,058, Data displaying apparatus and method;

  • 6,292,179, Software keyboard system using trace of stylus on a touch screen and method for recognizing key code using the same; 6,226,449, Apparatus for recording and reproducing digital image and speech; and

  • 5,579,239, Remote video transmission system.

The Markman hearing, however, covered disputed terms in Apple’s ‘502, ‘647, ‘414 and ‘760 patents and Samsung’s ‘087, ‘757, and ‘239 patents.

Below are a few notes about the issues with and specific words from the seven patents discussed in the hearing.

Note that as the hearing progressed, the Hon. Judge Koh became increasingly impatient with the attorneys interpreting what language in the patents meant. At one point she said, “I don’t want any representation of what it says. I want a column and a line number [of the patent at issue].”

Apple’s ’502 patent - Graphical user interface using historical lists with field classes:

The terms “history list” and “field class” were at issue. Judge Koh asked, “What is the point of having a class, if not sharing?” Apple said the purpose of the invention was flexibility and that the sharing between computer applications was optional.

This week Samsung came up with a new argument about what the “category of information associated with the field” was. “This is a sandbag,” Koh suggested. The attorney reluctantly admitted after direct court questioning that the argument had not been presented in any of Samsung’s filings or to Apple, and was only contemplated the previous day at 4 p.m. [Oops.]

The exasperated judge said, “I want just column number and line number [in the patent]…. Nope, I am going to read it….” [The judge read out short passages of patents here and later on in the hearing when attorneys gave their chapter-and-verse evidence from the patents.]

For the ‘502 claims and claims discussed later, Judge Koh took down column and page-number citations presented by the parties for her further review.

The judge said she would review the citations as well as some inventor testimony before giving her ruling on the '502 term of “field classes.” Her tentative thinking is that “history list” is a “list of previously used entries.”

Apple’s ’647 patent - System and method for performing an action on a structure in computer-generated data:
The discussion focused first on claim scope. Judge Koh said that claims are presumed to be different in scope, yet the Federal Circuit says that this does not mean that every limitation must be the same, but that at least one of them must be different.

Samsung presented two distinctions that are found in Claims 3 and 10 but not in Claim 1: “application programming interface” [API] and “running concurrently.” Samsung suggested that the use of API in Claims 3 and 10 and not in Claim 1 further supports its position that the API is separate from the computer program.

Apple countered that Samsung is trying to limit the claim construction of Claim 1 unduly to one embodiment when there is not reference of the limitation of the API, even though Claims 3 and 10 are narrower with the use of the API.

Samsung argued that to follow Apple’s construction is to read out the processor entirely. The claim differentiation doctrine does not apply to Claims 3 and 10. Here the API is separate from the program, just like a client and server that Judge Posner in Apple, Inc. v. Motorola, Inc. (N.D. Ill. 2012) concluded were separate.

Again, Samsung and Apple agree -- except on the claim-construction language of “separate from a client” phrase. Last week, Judge Koh was thinking that the action of the processor does not have to be separate from the client. She did not give a hint of her opinion at this hearing.

Apple’s ’414 patent - Asynchronous data synchronization amongst devices:
The discussion is back to single- and dual-core processors and whether cell phones had dual-core processors when the patent application was filed in 2007. The judge suggested the Samsung attorney was sandbagging again because last week he had argued that the patent was not directed toward cell phones and this week he was referencing an LG cellphone patent, which had not been presented to the court before. Presumably, the patent disclosed something about two-way simultaneous multithreading (SMT). The judge agreed that column 24 of the patent was the strongest evidence that “concurrently” means “at the same time.”

Apple would like the claim to be construed as having interleaving threads during a same period.

Koh suggested that Samsung’s intrinsic evidence of the words “at the same time” should be weighed more heavily than Apple’s extrinsic evidence of dictionary definitions and what a PHOSITA would have understood in 2007.

Apple’s ’760 patent - Missed telephone call management for a portable multifunction device:
Judge Koh said she needed the most help with the ‘760 and ‘757 patents. The two parties were unsuccessful in coming to an agreement on ‘760 language, despite the judge’s urging last week. They presented two new claim constructions, which the judge found more confusing than their previous constructions.

A little prosecution history for ‘760: The patent examiner sent a notice of allowance [NOA] to Apple. However, Apple then filed a request for continued examination [RCE], which meant that the examiner did a new patent search. A new prior-art reference was found and so before another NOA was sent, the examiner made an amendment to the claim language.

Apple suggested reasons for the patent examiner’s amendment. Samsung countered that one should not speculate on the reasons for the amendment. Instead, one should look to what the examiner wrote about the amendment, pointing to the amended language of “completely substituting display of the list of interactive items.” The examiner referenced “completely substituting” … “as defined in the specification.”

Samsung’s ’087 patent - Performing non-scheduled transmission in a mobile communication system (FRAND patent that is part of the 3GPP standard):
Koh said Apple stated last week that non-scheduled N and K control the data rate. She asked for Samsung’s input.

Samsung said that Apple was reading in a wrong negative limitation and with just N and K variables, the UE can still determine the data rate.

A number of abbreviations for terms used in the claims were thrown around including user equipment (UE), enhanced uplink dedicated channel (E-DCH), variable K for transmission time intervales (TTIs), non-scheduled transmission period of variable N, radio network controller (RNC).

After several volleys between parties, Judge Koh wanted just evidence (i.e. column and line numbers from patents).

Samsung's ’757 patent - Multimedia synchronization method and device:
Parties followed up on their disagreement about whether the invention should be limited to a fixed or rigid place.

Samsung’s proposed language: “device that resides in viewing and/or listening area”; Samsung’s proposed alternative language: “device that resides in a location for multimedia playback.”

Apple proposed language: “device that resides in a room or similar location” [Hmm. Does “room or similar location” include a “yacht,” – one of the locations mentioned in the specification?]

Last week Judge Koh had suggested “resides” might be a workable term for the claim construction.

Samsung’s ’239 patent - Remote video transmission system:
Apple is arguing that software is required for the invention to be effective. Samsung disagrees.

Samsung points to Claims 5 and 6 because they use “video devices,” which is broader language than “video card.”

In patent prosecution, “telemetric frequencies” received a 112 rejection [35 U.S.C. section 112], which was later withdrawn. Samsung argues the structure is “any frequency that data can be transmitted.” Judge Koh said she is hesitant about that language.

Another issue is whether the structure in Claim 11 require a modem. The claim says "the remote unit includes a transmitter connected to each computer interface such that each tranmitter transmits at a different frequency."

Apple asserts that the language “computer interface” is claiming pure function and has indefiniteness problems. Apple would like to limit the construction to require a modem.

Samsung argues that “computer interfaces such as a modem” is structure. Other interfaces exist besides modems so Apple’s language is too restrictive.

What Happens Next?

Once the judge decides on the claim construction, the court is requiring Apple and Samsung to narrow their cases to a maximum of 25 claims and 25 devices for each side. Further, parties are required to continue narrowing at what the judge refers to as “three subsequent inflexion points.” The inflection points are:

1) before expert discovery,

2) before summary judgment, and

3) after summary judgment

Fact discovery ends on July 8, 2013.
I know you join me in thanking her for doing this for us. When this goes to trial, someday, we will be able to track just how much the judge's final ruling molds the trial. The judge will issue her order on all these word issues, and when she does, we'll post it.

Meanwhile, here are all the filings from the docket on claim construction, leaving out all the other filings except for the parties' response to the court's order that they pare things down:

333 - Filed & Entered: 12/21/2012 CLAIM CONSTRUCTION STATEMENT Apple Inc.'s Opening Claim Construction Brief Pursuant to Patent Local Rule 4-5 filed by Apple Inc.(a California corporation). (Attachments: # (1) Declaration of Jennifer Rho In Support of Apple Inc.'s Opening Claim Construction Brief, # (2) Exhibit A, # (3) Exhibit B, # (4) Exhibit C, # (5) Exhibit D, # (6) Exhibit E, # (7) Exhibit F, # (8) Exhibit G, # (9) Exhibit H, # (10) Exhibit I, # (11) Exhibit J, # (12) Exhibit K, # (13) Exhibit L, # (14) Exhibit M, # (15) Exhibit N)(Lyon, Hervey) (Filed on 12/21/2012)

334 - Filed & Entered: 12/21/2012
Partial Opposition (re [306] MOTION for Leave to Amend its Disclosure of Asserted Claims and and Infringement Contentions ) filed by Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Declaration of Todd Briggs In Support of Samsung's Opposition to Apple's Second Motion to Amend, # (2) Exhibit A to the Declaration of Todd Briggs, # (3) Exhibit B to the Declaration of Todd Briggs, # (4) Exhibit C to the Declaration of Todd Briggs, # (5) Exhibit D to the Declaration of Todd Briggs, # (6) Exhibit E to the Declaration of Todd Briggs, # (7) Exhibit F to the Declaration of Todd Briggs)(Maroulis, Victoria) (Filed on 12/21/2012) Modified text on 1/3/2013 (dhmS, COURT STAFF).

335 - Filed & Entered: 12/21/2012
CLAIM CONSTRUCTION STATEMENT Samsung's Opening Claim Construction Brief filed by Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Briggs Declaration, # (2) Ex. A, # (3) Ex. B, # (4) Ex. C, # (5) Ex. D, # (6) Ex. E, # (7) Ex. F, # (8) Ex. G, # (9) Ex. H, # (10) Ex. I)(Maroulis, Victoria) (Filed on 12/21/2012)

...

350 - Filed & Entered: 01/25/2013
RESPONSE to re [335] Claim Construction Statement, Apple Inc.'s Responsive Claim Construction Brief Pursuant to Patent Local Rule 4-5 by Apple Inc.(a California corporation). (Attachments: # (1) Declaration of Peter J. Kolovos, # (2) Exhibit 1, # (3) Exhibit 2, # (4) Exhibit 3, # (5) Exhibit 4, # (6) Exhibit 5, # (7) Exhibit 6)(Selwyn, Mark) (Filed on 1/25/2013)

...

352 - Filed & Entered: 01/25/2013
RESPONSE to re [333] Claim Construction Statement,, Samsung's Responsive Claim Constructive Brief by Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Declaration of Victoria Maroulis, # (2) Exhibit 1, # (3) Exhibit 2, # (4) Exhibit 3, # (5) Exhibit 4, # (6) Exhibit 5, # (7) Exhibit 6, # (8) Exhibit 7, # (9) Exhibit 8, # (10) Exhibit 9, # (11) Exhibit 10, # (12) Exhibit 11, # (13) Exhibit 12, # (14) Exhibit 13, # (15) Exhibit 14, # (16) Exhibit 15, # (17) Exhibit 16, # (18) Exhibit 17, # (19) Exhibit 18, # (20) Exhibit 19, # (21) Exhibit 20)(Maroulis, Victoria) (Filed on 1/25/2013)

...

356 Filed & Entered: 02/07/2013
AMENDED OPENING CLAIM CONSTRUCTION BRIEF filed by Apple Inc.(a California corporation). (Lyon, Hervey) (Filed on 2/7/2013) Modified text on 2/8/2013 (dhmS, COURT STAFF).

...

362 - Filed & Entered: 02/08/2013
Reply Claim Construction Brief filed by Apple Inc.(a California corporation). (Attachments: # (1) Declaration of Jennifer Rho, # (2) Exhibit 1, # (3) Exhibit 2, # (4) Exhibit 3, # (5) Exhibit 4, # (6) Exhibit 5, # (7) Exhibit 6)(Lyon, Hervey) (Filed on 2/8/2013) Modified text on 2/11/2013 (dhmS, COURT STAFF).

363 Filed & Entered: 02/08/2013
Reply Claim Construction Brief filed by Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., Samsung Telecommunications America, LLC. (Attachments: # (1) Declaration of Todd Briggs in Support of Samsung's Reply Claim Construction Brief, # (2) Exhibit J to the Declaration of Todd Briggs)(Maroulis, Victoria) (Filed on 2/8/2013) Modified text on 2/11/2013 (dhmS, COURT STAFF).

...

377 - Filed: 02/14/2013
Entered: 02/15/2013
Minute Entry: Tutorial Hearing held on 2/14/2013 before Judge Lucy H. Koh (Date Filed: 2/14/2013). Claims Construction Hearing as previously set for 2/21/2013. (Court Reporter Lee-Anne Shortridge.) (ecg, COURT STAFF) (Date Filed: 2/14/2013)

...

379 Filed & Entered: 02/15/2013
Statement Samsung's Identification of Asserted Claims and Accused Products by Samsung Electronics Co., Ltd.(a Korean corporation). (Maroulis, Victoria) (Filed on 2/15/2013)

...

381 - Filed & Entered: 02/15/2013
NOTICE by Apple Inc.(a California corporation) Apple Inc.'s List of Accused Samsung Products and Asserted Patents (Attachments: # (1) Exhibit A)(Lyon, Hervey) (Filed on 2/15/2013)

...

383 Filed & Entered: 02/18/2013 Statement Docket Text: Statement re [379] Statement Samsung's Corrected Identification of Asserted Claims and Accused Products by Samsung Electronics Co., Ltd.(a Korean corporation). (Maroulis, Victoria) (Filed on 2/18/2013)

...

389 - Filed & Entered: 02/19/2013
Statement Joint Submission Regarding Claim Construction by Apple Inc.(a California corporation). (Selwyn, Mark) (Filed on 2/19/2013)

As you can see, it's ridiculous. So you can understand why the judge is insisting on slimming this case down. If you recall, Judge Alsup did the same thing in the Oracle v. Google patent phase of that litigation, and it worked out well. He was even more strict about it than Judge Koh, if you remember his instructions at the end of his tentative claim construction order in that case:
CONCLUSION

The constructions set forth above will apply in this dispute. The Court will reserve the authority, on its own motion, to modify these constructions if further evidence warrants such a modification. Additionally, by NOON ON MAY 6, 2011, each side may file a five-page critique (double-spaced, 12-point Times New Roman font, no footnotes, and no attachments) limited to points of critical concern. This is an opportunity for the parties to focus solely on their most cogent critique, not to rehash every point made in the briefs and at the hearing. No replies, please.

I love the "No replies please." Litigators never stop, unless you stop them. The 25 claims/25 products goal in this case is apparently just the beginning. Judge Koh saw how confused the jury became in Apple v. Samsung, the first case, and she complained more than once about all the motions being filed, but they never stopped, and she is determined to change the story in this case. It wouldn't surprise me at all if she granted Samsung's motion to table this until the pending appeal is ruled on by the Federal Circuit.

But we're trying to understand Markman hearings, so if you read the final claim construction briefs for each side, and maybe any exhibits that look interesting to you as you read the briefs, where they'll be described and you'll get the exhibit number or letter, you'll see how these things go. For example, you will see that Samsung offers a page from a dictionary, as well as a ruling from Apple v. Motorola, and some materials from depositions. I didn't get the exhibits that are the patents at issue, because you have them in Debra's list already.

Enjoy.

Update: If this isn't Exhibit A that litigators have to be stopped or they just keep going and going and going, someone just sent me this hilarious news that in Australia, Apple and Samsung have raised so many claims, they've assigned two judges to hear the case, a first for this Australian federal court:

According to in-court reports from The Australian Financial Review, the two-judge system was required due to the sheer volume of patents in suit, with Apple alone asserting 19 properties on 120 infringement claims. The Cupertino, Calif., company is targeting nine Samsung smartphones and two tablets, while the Korean tech giant is leveraging seven wireless patents in counterclaims against the iPhone and iPad.

Apple counsel Stephen Burley said Monday's hearing was "the first time in the history of the Federal Court" that two judges presided over an initial case. Justice Annabelle Bennett, who has been part of the proceedings since the case began in 2011, is being joined by Justice David Yates in an attempt to sift through the mire of complex patents and filings.

See? Also, I got an email from a member asking about the '414 patent, whether they were arguing that "at the same time" meant from the standpoint of the user/POSHITA or that of the CPU. I, of course, had no clue, so I asked Debra about it, and here's what she adds:
Like he suggests for U.S. Patent No. 7,761,414, Apple argued that "at the same time," is from the perspective of the user/PHOSITA. Therefore, the interleaving of the threads required on a single-core processor is seamless to the user. The user is mentioned in column 24, lines 52-64 of the patent. Apple also asserted that architecture is not germane here.

Additionally, in the technology tutorial, Apple cited to an article in PC Magazine from December 2010. The article presumably shows that the inventor/PHOSITA would not have been contemplating a dual-core processor in a cell phone at the time of the invention (2007), so interleaving threads would have been necessary. I suspect (after an Internet search) that the article is this one, "LG Announces Optimus 2X, World's First Dual-Core Phone."

My understanding of Samsung's argument is that "at the same time" is from the perspective of the processer. Dual-core processors existed in 2007 (albeit maybe not in phones), and "concurrently" should mean simultaneous or "at the same" with no interleaving.

Note that the attorneys sometimes referred to evidence in cryptic terms, which the judge and attorneys understood, but this court observer had a harder time catching.


  


Report from the Apple v. Samsung II Markman Hearing - Judge Koh Tells Them to Slim the Case Down ~pj Updated | 152 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections
Authored by: Kilz on Monday, February 25 2013 @ 07:17 AM EST
Please mention the mistake in the title of your post.

[ Reply to This | # ]

Off Topic
Authored by: Kilz on Monday, February 25 2013 @ 07:20 AM EST
For all posts that are not on topic. Please make all links
clickable.

[ Reply to This | # ]

Newspicks
Authored by: Kilz on Monday, February 25 2013 @ 07:21 AM EST
Please mention the news stoy's name in the title of the top
post. A link back to the story may be helpful for when it
falls off the Home page.

[ Reply to This | # ]

Comes
Authored by: Kilz on Monday, February 25 2013 @ 07:26 AM EST
Please leave all transcriptions of Comes exhibits here for PJ. Please post the html in Plain Old Text mode so she may easily copy it.

Please see the Comes Tracking Page to find and claim PDF files that still need to be transcribed.

[ Reply to This | # ]

"Judge Koh saw how confused the jury became in Apple v. Samsung, the first case, ..."
Authored by: Anonymous on Monday, February 25 2013 @ 08:09 AM EST
She really should have stopped the whole mess at that point.

[ Reply to This | # ]

What I've never been able to figure out...
Authored by: jesse on Monday, February 25 2013 @ 08:25 AM EST
It is likely they don't ask the inventor what was meant because the inventor
didn't write the patent.

A lawyer does.

An inventor would use the "normal" language of the art/field of the
patent. Not the legalese used by patents.

[ Reply to This | # ]

Here is a good one :-)
Authored by: Anonymous on Monday, February 25 2013 @ 08:28 AM EST
"Others get a headache after a half hour of chess and leave to get a hamburger......" Recipe

[ Reply to This | # ]

Thanks, Debra!
Authored by: lnuss on Monday, February 25 2013 @ 08:55 AM EST
An excellent job, and truly appreciated.

---
Larry N.

[ Reply to This | # ]

Trying to determine definitions
Authored by: tknarr on Monday, February 25 2013 @ 10:39 AM EST

What I don't understand is why the inventor defining the words isn't already required? The patent's supposed to say what's being patented, and how can it say that if you don't know what the words it's using mean? If I were a judge, I'd rule that any patent that required a Markman hearing was prima facie invalid due to ambiguousness, the patent doesn't say what it's a patent on therefore it can't be valid. Put the burden on the filer to say what they're trying to patent right in the patent and be done with it. That's what patent law currently requires, isn't it?

[ Reply to This | # ]

'647 System and method for performing an action on a structure in computer-generated data
Authored by: OpenSourceFTW on Monday, February 25 2013 @ 11:54 AM EST
Say what?

That would appear to cover pretty much any software more complex than
"Hello World."

Disgusting.

[ Reply to This | # ]

Why they don't make the inventor explain the key words himself
Authored by: macliam on Monday, February 25 2013 @ 11:56 AM EST

PJ wrote:

Obviously, it matters a lot what a judge decides. What I've never been able to figure out is why they don't make the inventor explain the key words himself, so we don't have to go through this exercise in all the patent cases. Why don't they make them fill out a form when applying for a patent, as in "When I say 'inventory' I mean books, papers, blah, blah, but not T shirts."

IANAL. However in reading around the 101 patent eligibility cases, I found on the web the Petitioner's brief in In Re Benson (CCPA) (i.e., the case that was appealed to the Supreme Court in Gottschalk v. Benson. This brief contains the documents from the prosecution of the patent at the Patent Office. This sheds a fair amount of light on the process.

In patent law, "The name of the game is the claim" (Judge Giles S. Rich).

The applicant submits a document containing diagrams, a description outlining the usefulness of the invention, the state of the prior art, a description of the principles of the invention, and one or more embodiments of the invention. This completes the patent specification. Then follows the list of claims. If the patent issues, the claims are in effect the title deeds defining the extent of the monopoly that has been granted to the patentee. What happens afterwards is a "game of words" focussed on the claims. The patent examiner will check that the claims are drawn to eligible subject matter under Section 101 of the statute. The examiner also verifies that the claims are not "indefinite", and that the specification describes a process, manufacture, machine or composition of matter that matches the claims with sufficient detail and clarity that a PHOSITA (person having ordinary skill in the art) can carry out or make the invention.

If the examiner is satisfied that the claims are of the prescribed form, that the applicant is in possession of the invention, and has described the invention with sufficient clarity, then there will be a search for prior art. As I understand it, this is not simply a search for an invention that matches that of the applicant. The test is made claim by claim, and involves determining whether the claim reads directly on prior art, or whether the examiner can make out a case for obviousness of an invention matching the claims, in view of the prior art (sections 102 and 103). If the examiner can find prior art that is consistent with the claim, then the claim will be rejected, irrespective of whether or not the invention in the prior art resembles or has the same purpose as the applicant's "invention".

But the applicant will be granted a certain number of opportunities to amend the claims, to ensure that they claim patentable subject matter, read on her own invention, and do not read on any invention in (or are otherwise "obvious" from) the prior art. After years of patent prosecution, the patent application may be finally rejected, or it may issue, but with claims that may well differ substantially from those in the initial application. But (it would seem from looking at the history of the patent prosecution in Benson), the applicant can neither amend the specification itself nor add claims for new subject matter.

For example, in the case of the Benson application, the examiner found at one stage that the amended claims read on a device for converting analog signals to digital bits very different in structure and purpose from Benson's re-entrant shift register device. The claims were therefore rejected.

Thus the claims that finally issue may well differ substantially from anything that the inventor or her patent attorney might have written. And, in attempts to invalidate the patent, and in litigation, as we have seen (e.g., Oracle v. Google) the proceedings will be a duel of wits between lawyers for the patent owner and the alleged infringer, where the owner seeks to interpret the claims broadly enough to prove that they have been infringed, and the alleged infringer will attempt either to have the claims construed narrowly enough to ensure that they have not been infringed by litigant, or else broadly enough to read on some prior art reference that would invalidate the patent. Given the importance of the exact words of the patent claims in the litigation, the aim of the Markman hearing (as I understand it) is to get the meanings of the words tied down before serious motion practice, and long before the matter is put to a jury.

As I have stated before, IANAL, I have never submitted a patent, or been involved in any way with patents. The above is based entirely on my own reading undertaken to try to understand the background behind the pending cases at SCOTUS, CAFC etc. It is thus far from authoritative.

[ Reply to This | # ]

Twenty five claims, twentyfive products?
Authored by: Anonymous on Monday, February 25 2013 @ 02:55 PM EST
She's learning, but a slow learner. I'd give Alsup 2 grades above her,
and he whacked Oracle-Google down from 132 claims to three,
and from 120 prior art defences to eight.

Prediction: another wrung jury. [Juries are never wrong,
but if the Hogan jury hadn't been wrong it would have been hung.]

[ Reply to This | # ]

Report from the Apple v. Samsung II Markman Hearing - Judge Koh Tells Them to Slim the Case Down ~pj
Authored by: Anonymous on Monday, February 25 2013 @ 03:02 PM EST
It is a reflection of that old saw, "What the meaning of "is"
is..."! :rolleyes: I'm just glad that I have a great
attorney, and we fully engage in quid-pro-quo - I fix his
computer problems, and he fixes my legal ones! So far, it has
pretty much worked out to be a wash, time and material wise.

[ Reply to This | # ]

Roman Times had the 12 Tables, but not 12 point
Authored by: tz on Monday, February 25 2013 @ 04:31 PM EST
<i>each side may file a five-page critique (double-spaced, 12-point Times
New Roman font, no footnotes, and no attachments)</i>

Oops, she didn't specify that they couldn't play with the justification and the
kerning. Or abbreviation.

[ Reply to This | # ]

Concurrent is not simultaneous
Authored by: Anonymous on Monday, February 25 2013 @ 06:38 PM EST
Often programmers want to distinguish things that happen exactly at the same time from things that may happen at almost the same time. Decades ago, I found out about the convention that "simultaneous" means at exactly the same time (e.g. an instruction from one CPU or one core of a CPU may execute simultaneously with an instruction from another CPU or another core of the same CPU) and "concurrent" for two time intervals that overlap (e.g. a loop in one thread may run concurrently with the same or another loop in another thread, regardless of whether any instructions are simultaneous. Of course, no instructions of two threads are simultaneous if there's only one single-core CPU.).
I don't know how widespread this convention is.

[ Reply to This | # ]

No point asking the inventor
Authored by: globularity on Monday, February 25 2013 @ 08:43 PM EST
The inventor would be unable to explain the meaning of the words in a patent as
issued aside from the issue of language, they had little or no role in the
actual process of issuing the patent.
The examiner is the only person with first hand knowledge of why the patent was
issued and what the words mean. The inventor may have described something that
was not eligible for a patent and the examiner subsequently misinterpreted the
patent application to be for something that was eligible for a patent.

It should not be up to the patent system to modify the meaning of the patent
post grant as the current arrangement will do if there is any miscommunication
between the inventor and the examiner.

Hauling the examiners before the court to explain what they thought the words
meant would solve the problem and may discourage them from issuing so many
patents. Of course it is unlikely the examiner would recall a patent issued many
years ago but the inventors memory of a precess that they had little role in is
unlikely to be any better.



---
Windows vista, a marriage between operating system and trojan horse.

[ Reply to This | # ]

Method acting; you need to get into the zone
Authored by: Ian Al on Tuesday, February 26 2013 @ 02:31 AM EST
7,577,757, Multimedia synchronization method and device:
Systems, methods and computer readable media for synchronization tasks and non-synchronization tasks being executed concurrently.
TITLE 35 > PART II > CHAPTER 10 > Sec. 101. - Inventions patentable:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
35 USC § 100 - Definitions:
(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
So, what is the 7,577,757 patent; a machine or a method?

From the report:
Samsung’s proposed language: “device that resides in viewing and/or listening area”...

Apple proposed language: “device that resides in a room or similar location”
35 USC §101 makes it clear that this invention is neither a new machine nor an improvement of an existing machine, because a specific machine is not claimed. The invention can only be (from 35 USC § 100) a new use of a known machine. In this case, the machine claimed is actually a 'system': a collection of interworking machines. The design of the machines in the system is irrelevant to the invention. There is no need to give examples of software that could make the machines work.

According to §100, a method invention is a method used by people and Bilski confirms that a method must have significant post process activity: the method must be a novel way of achieving something useful. How can the invention claim as part of its inventive concept, where the method is used.

Each machine and interworking method in the system employed by the method is defined only in outline. Specific machines are not claimed. The patent has to be invalid because the invention claimed is the use of the system and the absolute location of the machines in the system are not claimed. The relative location of the machines (together or apart, on land or in a yacht) cannot be an element of an inventive concept in a use of a system.

The manufacture, distribution, selling, making available as a service or use of the machines that can form the system cannot infringe on the patented use of the system. For instance, the provision of one of the machine components (e.g. the multimedia server) as a service cannot infringe on the protected use.

There is no significant post-process (aka, 'method') activity. The synchronisation of multimedia is a perceived effect and not a useful process or method. The multimedia is not defined. The synchronisation of indefinite multimedia to achieve a perceived effect is an abstract idea. The invention is judicially excluded from being statutory subject matter.

---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

[ Reply to This | # ]

'a maximum of 25 claims'
Authored by: Ian Al on Tuesday, February 26 2013 @ 02:45 AM EST
Judge Alsup did a great job of streamlining his case. He still leaves me with
distinct misgivings.

A patent is entitled to protect just one invention (according to the USPTO). All
of the claims are required to define the invention and the invention cannot be
complete if any claims are ignored.

How can a case be limited to just some of the claims in a patent?

---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

[ Reply to This | # ]

"Zone" a term of art
Authored by: BitOBear on Tuesday, February 26 2013 @ 06:42 PM EST
One of the things that gets my goat when reading this sort of thing is that the
law folks don't even know they "aren't even wrong" when they examine
this stuff.

Zone, for instance, is a term of art in networking. It has no geographical
(physically spatial) meaning at all. For instance every computer with a public
IP address can be named in one zone (the in-addr.arpa zone that turns ip
addresses into numbers) and it may have names in other zones for turning names
into numbers.

Meanwhile, a non-trivial routed internet facility may have a "DMZ"
("De-militarized zone") and a public and a private zone.

A system may be a border between two or more zones (e.g. a router) and most
computers have a fully private (localhost zone) even if they aren't a router at
all.

In terms of the art, as applied by the software and writings, the word
"zone" can be replaced by "formal semantic grouping" in all
uses.

For instance, in DNS you the phrase "zone of authority" is the
"formal semantic grouping of authority".

When I use my company's VPN software to connect my laptop into the
"internal" network, I move it into that "zone" even though
my laptop is typically three time-zones physically removed from my corporation.

So why don't the lawyers and such actually consult the people who assigned the
term-of-art meanings of these words instead of arguing it out amongst
themselves?

[ Reply to This | # ]

Report from the Apple v. Samsung II Markman Hearing - Judge Koh Tells Them to Slim the Case Down ~pj Updated
Authored by: macliam on Wednesday, February 27 2013 @ 05:42 PM EST

Apple 5946647 Patent

This patent was litigated in the App le v. Motorola lawsuit dismissed with prejudice by Judge Richard Posner last June. There is a lot in Posner's opionion (including reasons why neither party was entitled to injunctive relief). He also said that, with his claim construction, Motorola should have little difficulty inventing around this patent.

Apple 6847959 patent

I note that claim 1 reads as follows:

1. A method for locating information in a computer system, comprising the steps of:

  • inputting an information identifier;
  • providing said information identifier to a plurality of plug-in modules each using a different heuristic to locate information which matches said identifier;
  • providing at least one candidate item of information from said modules; and
  • displaying a representation of said candidate item of information.

Note the words "plurality of plug-in modules each using a different heuristic". The Court of Appeal for the Federal Circuit in its < i>Apple II opinion has already offered its opinion to Judge Koh as to how such words should be construed. The CAFC suggested (pp. 12-18) that Apple had little likelihood of success with regard to the 8086604 patent, in which claim 6 referred to

a plurality of modules ... wherein each heuristic module ... employs a different heuristic algorithm

The inventors of the '959 patent were the same as for the '604 patents, subject matter looks similar, and presumably the same patent lawyer prosecuted both patents.

The CAFC pointed out ("in the interest of judicial economy") that no two modules can have the same heuristic algorithm.

Look at the wording of Claim 1 of the 6847959 module! No wonder Apple wanted the the CAFC to reconsider this part of the Apple II opinion en banc!

[ Reply to This | # ]

Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )