24
May
By Eric Schweibenz
On May 17, 2011, ALJ Theodore R. Essex issued the public version of Order No. 6 (dated April 22, 2011) in Certain Mobile Devices, Associated Software, and Components Thereof (Inv. No. 337-TA-744).  In the Order, ALJ Essex construed various claim terms in connection with the asserted U.S. Patent Nos. 5,579,517 (the ‘517 patent), 5,758,352 (the ‘352 patent), 6,578,054 (the ‘054 patent), 6,370,566 (the ‘566 patent), 6,621,746 (the ‘746 patent), 6,826,762 (the ‘762 patent), 7,644,376 (the ‘376 patent), 6,909,910 (the ‘910 patent), and 5,564,133 (the ‘133 patent).

By way of background, the Complainant in this investigation is Microsoft Corp. (“Microsoft”) and the Respondents are Motorola, Inc. and Motorola Mobility, Inc. (collectively, “Motorola”). According to the Order, ALJ Essex conducted a Markman hearing on March 7-8, 2011.

The ‘517 and ‘352 Patents

The parties disputed the meaning of three claim terms from the ‘517 and ‘352 patents: “short filename,” “long filename for the file,” and “location of the file.”

Microsoft alleged that “short filename” should be given its plain meaning or alternatively as “a filename that has at most the number of characters to which short filenames are limited, e.g., 11 in short filename directory entry or down level operating systems and applications.” Motorola argued that instead it should be interpreted as “a permissible filename that has a limit of characters that is less than the limit for the long filename.”  In the Order, ALJ Essex adopted Microsoft’s alternative construction, finding that the specification and claim language supported such a construction.

With regard to the phrase “long filename for the file,” Microsoft asserted that this phrase should be construed as “some or all of the name of a file with more characters than the maximum permitted for a short filename, e.g. by down level operating systems such as MS-DOS or applications written to run on that operating system.”  Motorola disagreed, arguing that the phrase should be construed as “a filename having more characters than its associated short filename.”  The ALJ sided with Microsoft, finding that its construction was supported by the specification and the claims.

As to the phrase “location of the file,” Microsoft argued that this phrase should be construed as “a pointer to the beginning of the data contained in the file.”  Motorola proposed that it be construed as “the information that specifies where all parts of the file are located.”  ALJ Essex agreed with Microsoft as to this term, relying on the specification and finding that Motorola’s proposed construction would exclude the preferred embodiment.

The ‘054 Patent

Four claim terms from the ‘054 patent were disputed by the parties: “while the client is on-line with the server,” “placing the client in an off-line condition with respect to the server,” “the synchronization being performed at least in part by transmitting to the server the copy or the resource stored at the client, and the resource state information,” and “the resource.”

Microsoft asserted that the phrase “while the client is on-line with the server” should be given its plain meaning.  Alternatively, Microsoft offered that it should be construed as “while the client is able to communicate with the server.”  Motorola, instead, asked that it be construed as “while the client is communicating with the server.”  ALJ Essex found that the specification provided a clear definition of “on-line,” and agreed with Motorola’s construction.

As to the phrase “placing the client in an off-line condition with respect to the server,” Microsoft similarly argued that it should be given its plain meaning, or alternatively be construed as “the client is unable to communicate with the server.”  Motorola opposed this definition, asking the ALJ to construe the phrase as “placing in [sic] the client in a state such that it is not communicating with the server.”  The ALJ found an express definition of “off-line” in the specification and accordingly construed the phrase as “placing the client in a state in which it is not immediately capable of actively communicating with a server.”

Next, with regard to the phrase “the synchronization being performed at least in part by transmitting to the server the copy or the resource stored at the client, and the resource state information,” Microsoft argued for plain meaning.  Motorola argued that the phrase be interpreted as “the synchronization of resources by the server being performed at least in part by transmitting to the server the copy or the resource stored at the client, and the resource state information.”  The ALJ agreed with Microsoft, giving the phrase its plain and ordinary meaning.

Finally, as to “the resource,” Microsoft, relying on a definition given in another U.S. patent application, argued that this term means “data, data objects, databases, folders, systems, programs, etc. that may be stored at the client.”  Motorola disagreed, asking the ALJ to construe the term as “a data object, such as a word processing document, email message, or spreadsheet.” ALJ Essex agreed with Microsoft and determined that the ‘054 patentees did not use the term in a manner consistent with only a single meaning.

The ‘746 Patent

The parties disagreed as to three terms from the ‘746 patent: “erase operation,” “physical sector,” and “block.”

As to “erase operation,” Microsoft argued that it should be given its plain meaning or alternatively interpreted as “erasing or clearing.”  Motorola asserted that the term should be interpreted as “setting all the bits of one or more blocks to logical 1.”  ALJ Essex found the term should be given its plain and ordinary meaning.

Microsoft alleged that the phrase “physical sector” should also be given its plain meaning, or alternatively be construed as “a portion of a block.”  Motorola asked that the term instead be interpreted as “the unit of memory on which read and write operations are performed.”  The ALJ found that the claim language supported Microsoft’s alternative definition, “a portion of a block.”

With regard to the term “block,” Microsoft asked the court to give it its plain meaning or construe it as “contiguous data on a data storage device.”  Motorola opposed Microsoft’s definition, asserting that the term should mean “the unit of memory on which the erase operation is performed, comprising a plurality of sectors.”  ALJ Essex found neither proposed definition appropriate.  Based on the claims and the specification, the ALJ interpreted the term as “contiguous units of memory organized into a larger collective unit.”

The ‘762 Patent

Three terms of the ‘762 patent were disputed by the parties: “without knowledge of the telephony radio or cellular network,” “proxy layer”/ “proxy,” and “driver layer”/ “radio driver.”

As to the phrase “without knowledge of the telephony radio or cellular network,” Microsoft asked that it be given its plain meaning, or be construed as “independent of a particular radio or a particular network.” Motorola asked the ALJ to construe the phrase as “with no knowledge of the underlying radio structure of the cellular telephone and with no knowledge of the cellular network in use.”  The ALJ agreed with Microsoft, giving the phrase its plain and ordinary meaning.

Microsoft argued that both “proxy layer” and “proxy” should be given their plain and ordinary meanings, “software that acts as an intermediary,” and “an intermediary.”  Motorola instead asserted that both terms should be construed as “all telephony function located just below the application modules that communicate with the driver layer.”  The ALJ adopted Microsoft’s proposed constructions.

With regard to the terms “driver layer” and “radio driver,” Microsoft asked for plain and ordinary meanings, or alternatively “software that communicates with hardware,” and “software that communicates with a radio.”  Motorola alleged that both terms should be construed as “all telephony functions located just below the proxy layer that communicate with the radio hardware.”  ALJ Essex sided with Microsoft, giving the terms their plain and ordinary meaning, “software that communicates with hardware,” and “software that communicates with a radio.”

The ‘376 Patent

Three claim terms were disputed by the parties with respect to the ‘376 patent: “data store,” “notification broker,” and “determine.”

Microsoft asked that “data store” be given its plain meaning or be construed as “something that stores data.”  Motorola asked that this same term be construed as “a central registry for storing state properties and a notification list.”  The ALJ agreed with Microsoft’s construction and determined that the plain and ordinary meaning of the term was “something that stores data.”

As to “notification broker,” Microsoft also asked for plain meaning or alternatively a construction of “software that manages notifications.”  Motorola disagreed and asserted that the term means “an underlying driver responsible for adding, updating, and removing data from a data store.”  With regard to this term, ALJ Essex adopted Motorola’s definition, finding it was supported by the specification.

Microsoft alleged that the ALJ should construe the term “determine” according to its plain meaning or as “identify or receive notice of.”  In opposition, Motorola asked that ALJ Essex instead interpret it as “perform an operation to make a decision.”  The ALJ found that the term should be given its plain and ordinary meaning.

The ‘910 Patent

The claims of the ‘910 patent contained two disputed terms: “contact card” and “replacing the existing contact card in the contact database with the updated contact card”/ “an existing contact card is replaced with the updated contact card.”

Microsoft argued that “contact card” should have its plain meaning, or alternatively should be interpreted as “information related to a contact.”  Motorola alleged that the term means “a structure with data fields that can contain data related to a contact.”  Relying on the disclosure of the specification and the claims, the ALJ adopted Motorola’s definition.

As to the phrases “replacing the existing contact card in the contact database with the updated contact card” and “an existing contact card is replaced with the updated contact card,” Microsoft asserted that these terms should be given their plain meanings, or “saving updated information in the contact database for an existing contact card” and “changing information in a contact card,” respectively.  Instead, Motorola asked that both be construed as “deleting the existing contact card in the contact database and substituting the updated contact card.”  The ALJ found neither proposed construction satisfactory and determined that the plain language of the phrases were sufficiently clear.

The ‘133 Patent

Four claim terms were disputed as to the ‘133 patent: “a menu selection relating to a class of objects to which the selected computer resource belongs”/ “a menu selection related to the class of objects to which the selected object belongs,” “a menu selection associated with a container in which the selected computer resource belongs”/ “a menu selection that is associated with the container in which the selected object belongs,” “label,” and “file system object menu selection corresponding to a file system object.”

Microsoft alleged that the phrases “a menu selection relating to a class of objects to which the selected computer resource belongs” and “a menu selection, related to the class of objects to which the selected object belongs,” should be given their plain meanings.  Alternatively, Microsoft asserted that “menu selection” means “a choice of option in a menu” and that “a class of objects to which the selected resource belongs” means “a category of objects that includes selected computer resource.”  Motorola asked that the terms be interpreted as “a menu selection connected to a selected object’s class.”  The ALJ disagreed with both parties proposed constructions and construed the phrases as “a choice or option in a menu based upon or determined by the class of objects to which the selected computer resource belongs.”

As to the phrases “a menu selection associated with a container in which the selected computer resource belongs”and “a menu selection that is associated with the container in which the selected object belongs,” Microsoft asked for plain meaning.  As an alternative, Microsoft asked that “menus selection” be interpreted as “a choice or option in a menu” and “container” be interpreted as “environment that includes one or more items.”  Motorola construed both disputed phrases as “a menu selection provided by the container in which the selected object is located.” ALJ Essex disagreed with both parties and construed the disputed phrases as “a choice or option in a menu based upon or determined by the environment or context in which the selected computer resource resides.”

With regard to the term “label,” Microsoft asserted it should be given its plain meaning or be interpreted as “an identifier.”  Motorola argued that “label” should mean “a set of characters entered by a user in a document for which context menus are generated.”  Based on the prosecution history, the ALJ agreed with Motorola and adopted its construction.

Finally, as to the phrase “file system object menu selection corresponding to a file system object,” Microsoft alleged it should be given its plain meaning or be construed as “a menu selection corresponding to a file system object.”  Motorola instead argued that it should be construed as “menu selection representing a file system object.”  In the Order, ALJ Essex determined that the specification supported Motorola’s definition, and he adopted it.
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