Friday, July 20, 2012

Judge Koh rejects Samsung's additional claim construction proposals ten days before trial

The build-up to the Apple v. Samsung trial scheduled to start in ten days from today hasn't gone too well for the Korean electronics maker as far as pre-trial decisions by Judge Lucy Koh on different motions and issues are concerned. Judge Koh just entered a supplemental claim construction order. Samsung requested it, but the outcome completely favors Apple.

Samsung had asked the court to interpret two disputed terms: one each from the "overscroll bounce" '381 patent (yesterday I attended a Munich trial over that patent) and the "tap to zoom and navigate" '163 patent.

Apple asserts claim 19 of the "overscroll bounce" (or "rubber-banding") patent. Samsung asked for construction of the term "electronic document" and proposed to define the term as "content having a defined set of boundaries that can be visually represented on a screen". Apple argued that no construction is necessary (the plain and ordinary meaning of the term would do) but thought that it might be helpful to the jury to explain that an "electronic document" for the purposes of this patent is "a document stored in a digital format; for example, an 'electronic document' could be a web page, a digital image, a word processing, spreadsheet or presentation document, or a list of items in a digital format".

The examples on Apple's list aren't arbitrary: they are found in dependent claims 6 through 8. And Apple pointed to dictionary definitions that support its claim that an electronic document is "stored in a digital format". All of this persuaded Judge Koh to construe the term as "a document stored in a digital format. An 'electronic document' includes, but is not limited to, a web page; a digital image; a word processing, spreadsheet or presentation document; or a list of items in a digital format". This is essentially Apple's definition.

The claim construction order notes that what Apple wants "electronic document" to mean "may fit within Samsung's proposed construction", but on the bottom line, Judge Koh didn't consider Samsung's proposal to be useful to the jury. The undefined term "boundary" makes Samsung's definition harder to understand (she rejected the term in a previous claim construction order relating to this patent), and the lack of clarity resulting from the words "can be" in front of "visually represented on a screen" wasn't to Judge Koh's liking either. She felt that this would "not guide the jury in determining whether something is an electronic document". That makes sense to me, and it's consistent with Samsung's proposed jury instructions that serve to obfuscate, not clarify, the issues.

Samsung furthermore proposed to define the term "structured electronic document" from the '163 patent as "an electronic document that includes at least one visual structural element". Apple's proposal was the plain and ordinary meaning of the term, or if the court wanted to provide any further explanation, Apple suggested "an ‘electronic document,’ as previously defined, that is formatted to differentiate particular blocks or boxes of content in the document from one another," with the clarification that "a 'structured electronic document' could be, for example, a web page, an HTML or XML document, or a document in which the blocks or boxes of content are defined by a style sheet language."

The parties agreed that the interpretation of "electronic document" as used in the '381 patent would also be key to understanding the '163 patent. One of the applications was filed in September 2007, the other in December 2007, and one of the inventors of the '163 patent, Bas Ording (who may appear at the upcoming trial as a witness), is the sole inventor of the '381 patent. So the claim construction issue here is to determine the effect of the addition of the word "structured", which must result in a narrower term.

Samsung's use of the word "structural" in an explanation of a term that begins with "structured" appeared unhelpful to Judge Koh, and it obviously is a circular definition.

Judge Koh ultimately concluded that no construction is necessary (and "no construction necessary" was one of Apple's two alternative proposals) in order to help the jury understand the '163 patent. Instead, this claim construction dispute is all about "whether the prior art reference LaunchTile discloses a 'structured electronic document' and thus anticipates the '163 Patent". I mentioned LaunchTile (and provided links to a video and a document) in my report on yesterday's Munich trial. It's interesting to see that Samsung uses LaunchTile as prior art against not only the '381 but also the '163 patent. Whether the LaunchTile prior art reference will take down one or both of those patents remains to be seen -- at least for the '381 patent I doubt it (as did Judge Koh in a preliminary injunction order). But Judge Koh decided not to let Samsung use claim construction to pave the way for invalidation of the '163 patent based on LaunchTile.

Anything can happen in a jury trial, but the way the court interprets the patents has a lot of impact on the parties' chances. Samsung already lost the main claim construction battle in this same lawsuit in April. Now its request for additional claim construction hasn't succeeded either. With respect to the '381 patent, it's even resulted in a significant improvement in Apple's favor.

Samsung also didn't prevail on any of its 12 summary judgment requests, while Apple prevailed on one of its three summary judgment requests.

I've said it before that whatever happens at the upcoming trial, Samsung won't be forced out of the market, but a very significant breakthrough for Apple's intellectual property enforcement is increasingly likely.

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