04
Feb
By Alex Gasser
On January 28, 2011, ALJ Charles E. Bullock issued Order 29 construing the terms of the asserted claims of the patents-in-suit in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-721).

By way of background, the Complainant in this investigation is HTC Corp. of Taiwan (“HTC”).  HTC is alleging a violation of Section 337 in the importation into the U.S. and sale of certain portable electronic devices and related software that infringe certain claims of U.S. Patent Nos. 6,999,800 (“the ‘800 patent”), 7,716,505 (“the ‘505 patent”), 5,541,988 (“the ‘988 patent”) and 6,320,957 (“the ‘957 patent”) by Respondent Apple, Inc. (“Apple”).  A Markman hearing was held on October 25-26, 2010.

The ‘800 Patent

The ‘800 patent is titled “Method For Power Management Of A Smart Phone.”  Claims 1-4, 6, 10, 11, 14 and 15 are asserted against Apple.

The first disputed term was “smart phone,” which appears in claim 1.  Apple argued that the term should be construed to include a definition of “a power system.”  HTC and the Commission Investigative Staff (“OUII”) disagreed, contending that the “smart phone” as a device should not be confused with the power management technique(s) that it may implement.  ALJ Bullock agreed with HTC and the OUII, construing “smart phone” to mean “a device that includes a combination of a mobile phone subsystem and a PDA subsystem.”

The second disputed term was “mobile phone system,” which appears in claim 1.  HTC defined this term broadly to include any device that “establishes communications,” but at the same time limited the communications to “voice calls.”  Apple and the OUII had similar proposed constructions, although Apple’s definition was limited to a “cellular network.”  ALJ Bullock largely agreed with the OUII, and construed “mobile phone system” to mean “a smart phone subsystem that is used to make outgoing calls and to receive incoming calls.”

The third disputed term was “PDA system,” which appears in claims 1, 6, 11 and 15.  ALJ Bullock rejected HTC’s definition because it included the term “notifications,” which improperly inferred that only the PDA system can generate “notifications, and because HTC’s use of the term “user applications” was overly broad.  ALJ Bullock construed “PDA system” to mean “a smart phone subsystem that accesses, stores, and organizes information,” which is closer to Apple’s and the OUII’s proposed constructions.

The fourth disputed term was “standby mode,” which appears in claims 1, 4, 11 and 14.  ALJ Bullock rejected Apple’s argument that this term was indefinite, and instead agreed mainly with the OUII that “standby mode” is “an operational mode in which the network has been located and connected to but communication with a remote network has not been established.”

The fifth disputed term was “sleep mode,” which appears in claims 1-3 and 6.  ALJ Bullock similarly rejected Apple’s argument that this term is indefinite, agreeing mostly with the OUII that “sleep mode” is “an operational mode in which the amount of power supplied to the subsystem is less than any mode except for off mode.”

The sixth disputed term was “idle,” which appears in claim 1.  ALJ Bullock rejected HTC’s proposed construction as based in large part on a preferred embodiment, and chose instead to adopt Apple’s and the OUII’s definition of  “idle,” which is “unused or not in use.”

The seventh disputed term was “off mode,” which appears in claims 1, 11, 14 and 15.  Again, ALJ Bullock rejected Apple’s argument that this term was indefinite, and instead agreed largely with the OUII that “off mode” is “an operational mode in which the least amount of power is supplied to the subsystem compared to any other operational mode (e.g., normal, sleep, connection, or standby).”

The eighth disputed terms were “switching the mobile phone system to off mode when the detected amount is less than a first threshold” and “switching the PDA system to off mode when the detected amount is less than a second threshold,” which appear in claim 1.  HTC and Apple agreed that the OUII’s proposed constructions were acceptable provided that the first and second thresholds are set separately.  Accordingly, ALJ Bullock followed the OUII’s definitions and construed these phrases to mean, respectively, “switching the mobile phone system to off mode when the detected amount of power in the power source is less than a first value” and “switching the PDA system to off mode when the detected amount of power in the power source is less than a second value;” provided, however, “that the values of the first and second thresholds may be the same or different, and must be separately set.”

The last disputed term for the ‘800 patent was “searching for network service while the mobile phone system remains in sleep mode for a third period of time,” which appears in claim 3.  ALJ Bullock again rejected Apple’s argument that this term is indefinite, adopting HTC’s and the OUII’s proposed construction for this term, which is “searching for network service at the same time that the mobile phone system remains in sleep mode for a period of time.”

The ‘505 Patent

The ‘505 patent is entitled “Power Control Methods For A Portable Electronic Device.”  Claims 1 and 2 are asserted against Apple.

The first disputed term was “volatile memory,” which appears in claims 1 and 2.  ALJ Bullock rejected Apple’s argument that the construction of this term should state that the volatile memory “temporarily” stores data, and instead agreed more with HTC that “volatile memory” means “storage media that requires power to retain data.”

The second disputed term was “non-volatile memory,” which appears in claims 1 and 2.  The central issue was whether this term encompasses hard disks – HTC and the OUII asserted that it does not, whereas Apple argued that any disclaimer of hard disks in the prosecution history of a parent application does not apply to the claims of the ‘505 patent.  ALJ Bullock agreed with HTC and the OUII, construing “non-volatile memory” to mean “storage media that retains data in the absence of power, excluding hard disks.”

The third disputed term was “storing data from the volatile memory into the non-volatile memory and stopping supplying power to the volatile memory when the remaining power of the battery is less than a predetermined amount,” which appears in claim 1.  ALJ Bullock agreed with Apple and the OUII that this term refers to a cause-and-effect relationship between measuring the power of the battery and the data storing and power stopping actions, and construed this term to mean “in response to determining that the remaining power of the battery is less than a predetermined amount: (i) transferring data from the volatile memory into the non-volatile memory; and (ii) stopping supplying power to the volatile memory.”

The fourth disputed term was “maintaining only sufficient power to restore the device,” which appears in claim 1.  ALJ Bullock rejected Apple’s argument that this term was indefinite, as well as HTC’s and the OUII’s position that “only sufficient” means merely “enough.”  ALJ Bullock thus construed this phrase to mean “maintaining no more power than that sufficient to allow determination of whether: (1) the remaining power of the battery exceeds an amount required for a normal device operation; and (2) a specific input signal has been received by the portable electronic device.”

The fifth disputed term was “determining whether the remaining power of the battery exceeds an amount required for a normal device operation,” which appears in claim 1.  The issue here centered on “a normal device operation” – HTC argued that this language refers to one or more operations performed by the device, while Apple and the OUII asserted that the claimed determination must relate to the normal operation of the device as a whole.  ALJ Bullock agreed with HTC, construing this term as “determining whether the remaining power of the battery is greater than an amount required for performing one or more normal device operations.”

The sixth disputed claim term was “when the remaining power of the battery exceed [sic] the amount, supplying power to the volatile memory and accessing data from the non-volatile memory to initiate the normal device operation,” which appears in claim 1.   Again, ALJ Bullock construed “when” as “in response to,” and construed “the amount” and “the normal device operation” in a manner consistent with the disputed phrases described above.  In addition, ALJ Bullock agreed with HTC over Apple and the OUII that the data accessed from the non-volatile memory in this claim step need not be the same data that was stored in the non-volatile memory in an earlier claim step.  Thus, ALJ Bullock defined this term to mean “in response to determining that the remaining power of the battery is greater than the amount required for performing one or more normal device operations: (i) supplying power to the volatile memory; and (ii) accessing data from the non-volatile memory to allow the device to begin performing the one or more normal device operations.”

The seventh disputed term was “supplying power to the volatile memory upon receiving the specific input signal and accessing data from the non-volatile memory to initiate the normal device operation after initialization,” which appears in claim 1.  HTC argued that “initiate” means “to begin performing” and that “initialization” means “setting starting values that are used for the device’s configuration,” citing dictionary definitions.  The OUII agreed with the dictionary definitions proposed by HTC.  Apple contended that this term was indefinite.  ALJ Bullock mostly agreed with HTC, construing this term to mean “upon receipt of a predefined input signal, supplying power to the volatile memory and accessing data from the non-volatile memory to allow the device to perform one or more normal device operations after setting the device to a state in which it will work normally.”

The ‘988 and ‘957 Patents

The ‘988 patent is entitled “Telephone Dialler [sic] With A Personalized Page Organization Of Telephone Directory Memory.”  Claims 1 and 10 are asserted against Apple.  The ‘957 patent is entitled “Telephone Dialler [sic] With Easy Access Memory.”  Claims 8, 9, 39 and 42-44 are asserted against Apple.

The first disputed term was “keypad,” which appears in claims 1 and 10 of the ‘988 patent and claim 8 of the ‘957 patent.  ALJ Bullock found HTC’s and Apple’s (and to a lesser extent the OUII’s) constructions of this term problematic – Apple’s definition did not encompass “non-standard” buttons and was improperly limited to “push buttons,” while HTC’s construction was too broad, encompassing any keypad whatsoever.  Accordingly, ALJ Bullock construed “keypad” to mean a “data input device in which the keys are arranged in a manner similar to the numbers on a standard pushbutton telephone.”

The second disputed term was “page,” which appears in claim 1 of the ‘988 patent and claim 8 of the ‘957 patent.  The main issue here was whether a “page” is information (as HTC and the OUII argued) or a section of memory (as Apple asserted).  ALJ Bullock concluded that a “page” is indicia or information, and adopted HTC’s definition of this term, which is “a collection of information from a telephone directory.”

The third disputed term was “to scan indicia or said selected page on said display,” which appears in claim 1 of the ‘988 patent.  After reviewing the arguments and intrinsic evidence, ALJ Bullock agreed with Apple and the OUII that the telephone directories are displayed one at a time and only when the slider is moved to a new location.  Thus, ALJ Bullock adopted Apple’s and the OUII’s construction of this term, which is “to look through the telephone directory entries that are stored in the selected page that is displayed.”

The fourth disputed term was “to control the scanning of indicia [sic] of said selected page on said electronic display device,” which appears in claim 8 of the ‘957 patent.  The arguments related to this term mirrored those for the preceding disputed term.  ALJ Bullock again agreed with Apple’s and the OUII’s definition, construing this term as “to control the display of the telephone directory entries that are stored in the selected page.”

The fifth disputed term was “manually operable scanning device,” which appears in claim 1 of the ‘988 patent.  ALJ Bullock found the OUII’s arguments (as well as Apple’s arguments pertaining to its “alternative” construction) persuasive, and construed this term to mean “a sliding or rotary-type control used to choose information on a particular page.”

The sixth disputed term was “manually operable scanning control device,” which appears in claim 8 of the ‘957 patent.  This term is almost identical to the preceding disputed term in the ‘988 patent, except for the addition of the word “control.”  ALJ Bullock thus construed this and the preceding phrase in a consistent manner, defining “manually operable scanning control device” as “a sliding or rotary-type control used to look through information on a chosen page.”

The seventh disputed term was “page selection device,” which appears in claims 1 and 10 of the ‘988 patent and claims 8 and 9 of the ‘957 patent.  ALJ Bullock found that the OUII’s construction best comports with the intrinsic evidence, and construed this term to mean “a push button or other discrete part used to select a page.”

The eighth disputed term was “page and inside page address selector devices,” which appears in claim 10 of the ‘988 patent.  ALJ Bullock agreed with Apple and the OUII that this term is a combination of the terms “page selection device” and “manually operable scanning device,” which were previously construed.  Accordingly, ALJ Bullock defined this term as “a push button or other physical part used to select a page and a sliding or rotary-type control used to choose information on a particular page.”

The ninth disputed term was “manually operable selector,” which appears in claim 1 of the ‘988 patent and claim 8 of the ‘957 patent.  ALJ Bullock rejected HTC’s and Apple’s constructions as unduly narrow because they limited this term to the disclosed embodiment of a “push button.”  Thus, ALJ Bullock agreed with the OUII, construing this term to mean “a part moveable by hand used [to select].”

The tenth disputed term was “electronic, alphanumeric display,” which appears in claim 39 of the ‘957 patent.  The question here was whether the claimed display must be “dedicated” to displaying alphanumeric characters (as Apple and the OUII asserted), or merely capable of displaying such characters (as HTC asserted).  ALJ Bullock agreed with Apple and the OUII that the display must be “dedicated,” and defined this term as “a device dedicated to displaying alphanumeric characters.”

The eleventh disputed term was “telephone directory memory i/o buffer,” which appears in claim 39 of the ‘957 patent.  The issue regarding this term was whether it referred to a memory location that is dedicated and sized to store a single telephone entry, as Apple asserted.  ALJ Bullock concluded that this term was no so limited, believing HTC’s and the OUII’s constructions to be faithful to the plain language of the claim.  However, ALJ Bullock found that HTC’s definition repeated language already recited in the claim, and thus adopted the OUII’s construction, which is “a data storage device for temporarily storing data comprising an entry in a telephone directory.”

The final disputed term was “telephone directory memory,” which appears in claim 39 of the ‘957 patent.  The dispute likewise centered on whether the telephone directory memory is dedicated memory space.  ALJ Bullock again disagreed with Apple, finding this term not so limited.  Since HTC’s and the OUII’s constructions bore immaterial differences with each other, and since neither party objected to the OUII’s definition, ALJ Bullock adopted the latter, which is “a data storage device for storing a telephone directory.”
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