Apple v Samsung: Judge Koh Denies Samsung’s Requested Claim Construction on 239 patent claim 15

Apple Inc. v. Samsung Electronics Co., Ltd. et al Doc. 1532

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

United States District Court

For the Northern District of California

SAN JOSE DIVISION

APPLE, INC., a California corporation, ) Case No.: 12-CV-00630-LHK
)
Plaintiff and Counterdefendant, ) ORDER CONSTRUING ’239 PATENT
) CLAIM 15
v. )
)

SAMSUNG ELECTRONICS CO., LTD., a )
Korean corporation; SAMSUNG )
ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG )
TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,)
)
Defendants and Counterclaimants. )
)

Samsung has requested that the Court construe an additional limitation in claim 15 of the

’239 patent: “means for transmission of said captured video over a cellular frequency.” Samsung

also requests permission to amend its infringement contentions to include theories for means-plus
function equivalents and the doctrine of equivalents for claim 15. The parties have submitted

briefs and expert declarations in support of their respective positions. The Court has reviewed the

parties’ submissions and, in the interest of resolving any potential dispute prior to trial (cf. O2

Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008)), now

construes the limitation at issue.

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I. BACKGROUND
On April 10, 2013, the Court issued its Order Construing Disputed Claim Terms, following
a claim construction hearing and full briefing from the parties. ECF No. 447 (“Order”). At the
time, Samsung asserted claims 1 and 15 of the ’239 patent. Among the disputed terms, the Court
construed certain means-plus-function limitations in claim 1 of the ’239 patent, but the parties did
not request construction of any terms in claim 15 of the ’239 patent. See Order at 64; Joint Claim
Construction Statement at 9-40 (ECF No. 300-1). Since the Court issued its Order, the parties have
filed multiple rounds of motions seeking to exclude opposing expert opinions based on the Court’s
existing claim construction rulings. See ECF Nos. 878-4, 877-4, 1202-3. Those disputes were
resolved well before the March 5, 2014 pretrial conference. See ECF Nos. 1127, 1301.

On February 4, 2014, the parties filed case-narrowing statements pursuant to the Court’s
case management orders, limiting their asserted patent claims to five claims per side. Samsung
elected claims 1 and 15 of the ’239 patent among its five claims. See Samsung’s Feb. 4, 2014 Case
Narrowing Statement at 2 (ECF No. 1236). However, at the March 5, 2014 pretrial conference,
Samsung sua sponte indicated that it might voluntarily withdraw some asserted claims for trial and
would do so by March 7. See ECF No. 1411 at 6:14-24.

On March 7, 2014, the parties sua sponte filed a stipulation in which Samsung agreed to
withdraw several asserted patent claims, including claim 1 of the ’239 patent, leaving claim 15 as
the only asserted claim of the ’239 patent. See ECF No. 1419. On March 13, 2014, Samsung filed
an “administrative motion” for additional claim construction of “means for transmission of said
captured video over a cellular frequency” as recited in claim 15, requesting briefing and a hearing
prior to trial, which will begin on March 31, 2014. See ECF No. 1461. Apple responded by
contending that additional claim construction was not necessary in light of the Court’s construction
of claim 1, but requesting permission for a summary judgment motion and hearing regarding
noninfringement of claim 15 should the Court construe the terms at issue. See ECF No. 1465. The
parties agree that claim 15 presents a means-plus-function limitation and concur on the claimed
function, but disagree about the scope of the corresponding structure. The parties also disagree

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about whether Samsung previously waived its ability to assert equivalents (either means-plusfunction
or under the doctrine of equivalents) for claim 15.

The Court allowed the parties to submit short briefs regarding claim construction and
Samsung’s ability to amend its infringement contentions, but denied Apple’s request for another
round of summary judgment briefing on the eve of trial. See ECF No. 1470. Samsung filed its
brief on March 19, 2014. See ECF No. 1484 (“Samsung Br.”). Apple filed a response on March
21, 2014. See ECF No. 1491 (“Apple Br.”).

II. LEGAL STANDARDS
As before, the Court construes patent claims as a matter of law based on the relevant
intrinsic and extrinsic evidence. See Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.,
No. 2012-1014 (Fed. Cir. Feb. 21, 2014) (en banc); Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc); see also Order at 2. Claim construction of means-plus-function limitations
pursuant to 35 U.S.C. § 112(f) requires identifying the claimed function and the corresponding
structure for performing that function in the patent’s disclosure. See Noah Sys., Inc. v. Intuit Inc.,
675 F.3d 1302, 1311 (Fed. Cir. 2012); see also Order at 47.

“Amendment of the Infringement Contentions or the Invalidity Contentions may be made
only by order of the Court upon a timely showing of good cause.” Patent L.R. 3-6. This Court’s
rules have required the parties to give “early notice of their infringement and invalidity
contentions, and to proceed with diligence in amending those contentions when new information
comes to light in the course of discovery.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467
F.3d 1355, 1365-66 (Fed. Cir. 2006). Accordingly, determining whether “good cause” justifies
amendment of contentions in a particular situation depends on the amending party’s diligence and
the degree of prejudice to other parties. See Order Re: Samsung’s and Apple’s Mots. for Leave at
2-4 (ECF No. 636) (collecting cases). “Only if the moving party is able to show diligence may the
court consider the prejudice to the non-moving party.” Genentech, Inc. v. Trs. of the Univ. of Pa.,
No. 10-CV-02037, 2011 U.S. Dist. LEXIS 108127, at *4 (N.D. Cal. Sept. 16, 2011).

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III. DISCUSSION
A. Claim Construction
The only limitation at issue is “means for transmission of said captured video over a
cellular frequency,” recited in ’239 patent claim 15. Both claim 1, which the Court previously
construed, and claim 15 are reproduced below for reference.

Claim 1
1. An apparatus for transmission of data,
comprising:
Claim 15
15. An apparatus for transmission of data,
comprising:
a mobile remote unit including:
a.) means for capturing, digitizing, and
compressing at least one composite signal;
b.) means for storing said composite signal;
c.) means for transmitting said composite
signal;
a computer including a video capture module to
capture and compress video in real time;
means for transmission of said captured
video over a cellular frequency.
a host unit including:
a.) means for receiving at least one
composite signal transmitted by the remote
unit;
a playback unit including:
a.) means for exchanging data with said host
unit;
b.) means for storing the composite signal
received by the host unit;
c.) means for decompressing said composite
signal.

Samsung and Apple agree that the contested phrase (bolded above) is a means-plus-function
limitation under § 112(f), and that the claimed function is “transmission of said captured video over
a cellular frequency.” See Samsung Br. at 1; Apple Br. at 1. However, the parties identify
different sets of corresponding structure:

Claim Language Samsung’s Proposed Apple’s Proposed Construction
Construction
“means for transmission
of said captured video
over a cellular
frequency”
structure: “one or more modems
connected to one or more cellular
telephones or cellular radio
transmitters”
structure: “one or more modems
connected to one or more cellular
telephones, and software
performing a software sequence of
initializing one or more
communications ports on the
remote unit, obtaining the stored
data file, and transmitting the
stored data file”

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Samsung Br. at 1. Both constructions include the structure of “one or more modems connected to
one or more cellular telephones,” but otherwise diverge. There are two primary points of
disagreement: (1) whether the claimed structure also includes “cellular radio transmitters”
(Samsung’s proposal), and (2) whether software of any kind is claimed (Apple’s proposal).

The parties’ prior dispute regarding claim 1 of the ’239 patent provides some context for
this claim construction. Previously, the Court construed the similar limitation in claim 1 of “means
for transmitting said composite signal” to mean “one or more modems connected to one or more
cellular telephones, telephone lines, and/or radio transmitters, and software performing a software
sequence of initializing one or more communications ports on the remote unit, obtaining the stored
data file, and transmitting the stored data file.” Order at 55-64. Thus, the Court has already
determined that certain types of hardware and software from the specification correspond to
“means for transmitting” a signal. Id.

1. “Cellular Radio Transmitters”
Samsung, citing expert opinion, argues that the claimed structure must include “cellular
telephones or cellular radio transmitters” because a person of ordinary skill would have understood
that a cellular radio transmitter performs the transmission in a cellular telephone. Samsung Br. at
1; Decl. of Prof. Dan Schonfeld (ECF No. 1484-1, “Schonfeld Decl.”) ¶ 3. Samsung also argues
that the doctrine of claim differentiation favors its definition. Claim 16 depends from claim 15 and
recites “a cellular telephone.”

Claim 15 Claim 16
15. An apparatus for transmission of data,
comprising:
a computer including a video capture module to
capture and compress video in real time;
means for transmission of said captured
video over a cellular frequency.
16. The apparatus of claim 15 wherein the
means for transmission of said captured video
over a cellular frequency includes;
at least two interfaces operating in conjunction
with said computer;
a cellular telephone connected to each said
interface.

Generally, a dependent claim is construed to be narrower and distinct from its corresponding
independent claim. See InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d 1318, 132425
(Fed. Cir. 2012). According to Samsung, claim 15’s structure cannot be limited to cellular

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telephones because claim 16 also recites “a cellular telephone,” and claim differentiation requires
that the two claims be distinguishable. See Samsung Br. at 2.

Samsung’s positions are unpersuasive. First, the intrinsic evidence does not support
Samsung’s proposal. As Apple points out, the phrase “cellular radio transmitter” appears nowhere
in the entire patent. Also, if Samsung is correct that a cellular telephone necessarily comprises a
cellular radio transmitter, then Samsung’s proposed language of “cellular telephones or cellular
radio transmitters” is superfluous. Therefore, it would be incorrect to read the structure of “cellular
radio transmitters” into claim 15, for § 112(f) does not “permit incorporation of structure from the
written description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v.
Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999).

Nor do principles of claim differentiation require Samsung’s construction. Claim 16
specifies additional limitations not found in claim 15: “at least two interfaces” and “a cellular
telephone connected to each interface” (emphasis added). These extra limitations differentiate
claim 16 from claim 15, and also require that a cellular telephone be connected to each interface,
which adds an additional restriction on cellular telephones that does not exist in claim 15.
Furthermore, this Court previously observed that “the presence of a dependent claim reciting a
structure does not override the requirements of § 112, ¶ 6.” Order at 48 (citing Laitram Corp. v.
Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)). Here, as explained above, the specification
provides no basis for reading “cellular radio transmitters” into the claimed structure.

Samsung’s unexplained delay also undermines its arguments—Samsung waited until less
than three weeks before trial and more than a year after claim construction briefing and the hearing
to take this new position. Indeed, Samsung did not propose “cellular radio transmitters” in its
construction of the similar “means for transmitting” limitation in claim 1. See Samsung’s Opening
Claim Construction Br. at 22 (ECF No. 335); see generally Feb. 21, 2013 Tr. of Proceedings (ECF
No. 429). Samsung’s late efforts to construe claim 15 appear to be a last-ditch attempt to seek
reconsideration of the Court’s construction of claim 1, which Samsung no longer asserts.

As to extrinsic evidence, the parties provide only brief expert declarations. These opinions
are conclusory and provide little guidance. Samsung’s expert opines that a person of ordinary skill

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would know that a cellular radio transmitter “is the actual hardware enabling transmission of
information” in a cellular telephone, but provides little support for this position. Schonfeld Decl.
¶ 3. As explained above, even if all cellular telephones have cellular radio transmitters, then
Samsung’s proposed construction is superfluous. Apple’s expert repeats portions of the
specification, noting for example the absence of “cellular radio transmitter” in the specification.
See Decl. of James Storer, Ph.D. (ECF No. 1491-2, “Storer Decl.”) ¶¶ 10-11. In short, neither
side’s expert provides a dispositive opinion that alters the conclusion supported by the
specification—that “cellular radio transmitters” is not part of the required structure for transmission
of signals.

The parties appear to agree that claim 15’s structure also excludes conventional telephone
lines and radio transmitters, which are structures that the Court included in its construction of the
similar limitation of “means for transmitting said composite signal” in claim 1. The Court
construed that limitation in claim 1 to encompass “one or more modems connected to one or more
cellular telephones, telephone lines, and/or radio transmitters.” In doing so, the Court observed
that claim 1 does not restrict the type of frequency used for transmitting a signal, and the ’239
patent’s specification also discloses the use of land lines and radio transmissions, in addition to
cellular telephones. Order at 57-59; see also ’239 Patent col.2 ll.29-31 (“A further object is to
provide an apparatus that will transmit audio/video files for immediate broadcast over radio
frequencies, cellular telephone frequencies, or land telephone lines.”). By contrast, claim 15 limits
“means for transmission” to “over a cellular frequency.” Accordingly, neither party contends that
claim 15’s structure comprises conventional telephone lines and radio transmitters.

In light of the foregoing, the hardware structure corresponding to “means for transmission
of said captured video over a cellular frequency” is properly construed as “one or more modems
connected to one or more cellular telephones.”

2. Software as Part of the Corresponding Structure
Samsung argues that claim 15’s structure should not be restricted to software of any kind
because software is not necessary for transmission of captured video. Samsung Br. 3. Although
the Court construed claim 1’s “means for transmitting” to require software (Order at 64), Samsung

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points out that claim 1 includes the terms “remote unit” and “host unit,” and the specification
discusses transmission software only in the context of communication between a “remote unit” and
“host unit.” E.g., ’239 Patent col.8 ll.23-25 (“Transfer software sequence B enables the remote
unit to communicate with the host unit to transmit a stored data file using the system hardware.”).
Samsung contends that claim 15 is different because it “does not require transmitting from a
remote unit to a host unit,” and therefore does not require software. Samsung Br. 3.

Apple proposes that claim 15 be construed to require “software performing a software
sequence of initializing one or more communications ports on the remote unit, obtaining the stored
data file, and transmitting the stored data file.” Apple asserts that the ’239 patent states that
software is necessary for any transmission, and that the “computer” of claim 15 corresponds to the
“remote unit” in the specification, such that the specification’s discussion of transmission software
applies equally to claim 15. See Apple Br. at 2.

The Court agrees that claim 15’s means-plus-function structure requires software for the
same reasons that applied to claim 1. As explained above, the Court previously determined that
claim 1’s “means for transmitting” must include software because the specification teaches that a
software sequence is necessary for transmitting a signal in the context of the invention. See Order
at 61-63. Under the preferred embodiment, the ’239 patent discloses that software is required for
transmission: “Transfer software sequence B enables the remote unit to communicate” and
“contains all of the instructions necessary” for communication. ’239 Patent col.8 ll.23-30
(emphases added); see also id. col.8 l.45 – col.10 l.2 (discussing “Transfer Software Sequence B”),
col.2 l.24 – col.3 l.14 (“Summary of the Invention”; “a computer program sequence . . . sends
[data] to one or more computer interfaces which transmit the data file”). Samsung is correct that
claim 15 does not recite a “remote unit” or “host unit,” which appear in both claim 1 and the
specification. However, Samsung fails to demonstrate that this difference shows that software is
unnecessary for “transmission” as recited in claim 15, or that the specification supplies any other
structure for performing an alternate type of transmission that does not involve a “remote unit” and
“host unit.” Indeed, the term “transmission” implies communication from one unit to another, and
the specification explains that software is necessary to enable such communication. E.g., id. col.8

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ll.25-30. Samsung also suggests that “transmitting” (claim 1) and “transmission” (claim 15)
require different constructions (ECF No. 1461 at 3), but fails to explain why “transmitting”
involves software while “transmission” does not. See, e.g., AIA Eng’g Ltd. v. Magotteaux Int’l S/A,
657 F.3d 1264, 1275 (Fed. Cir. 2011) (construing “homogeneous solid solution” and
“homogeneous ceramic composite” as “synonymous”).

Samsung next argues in the alternative that, if claim 15’s structure is construed to include
software, the software “should be restricted solely to software to perform the claimed function,”
which “does not include initializing a communications port or obtaining the stored data file.”
Samsung Br. at 4. Accordingly, Samsung proposes the alternative construction of “software that
transmits the file.” Id. Apple counters that the same software sequence for “initializing” and
“obtaining” in claim 1 is also necessary for “transmission” in claim 15. See Apple Br. at 1. Apple
also argues that claim 15’s software requires a sequence for “obtaining the stored data file” because
the “captured video” recited in claim 15 must be a stored data file. Id. at 1-3. Apple points out that
the ’239 patent applicants relied on creation of a data file to distinguish prior art. Id.

The Court agrees in part with Apple. Samsung provides no persuasive reasons why the
software sequence that the Court identified for claim 1 is not also required for claim 15. The Court
previously explained in detail why the software sequence in claim 1 is necessary, not optional, for
transmitting a signal. See Order at 61-62 (“[T]he other steps performed by software sequence B—
initializing communication ports, obtaining the stored data file, and transmitting the stored data
file—all appear to be necessary for any transmission . . . .”). Specifically, the written description
lists five software algorithms in “transfer software sequence B”: “[1] initialize the communications
ports on the remote, [2] obtain a cellular connection with each cellular telephone to the host unit,

[3] obtain the stored data file, [4] initiate file splitting sequence C, and [5] transmit the split data
file.” ’239 Patent col.8 ll.25-30. However, not all five algorithms are necessary for transmission—
the step of “file splitting” need not occur, or may occur prior to transmission. E.g., id. col.3 ll.2223
(“In an alternate embodiment, a basic one, the signal is not divided before it is transmitted.”);
see Order at 62. Moreover, claim 17 depends from claim 15 and includes “means for splitting the
captured video into pieces for transmission,” which further confirms that claim 15 does not require
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software for initiating file splitting. By contrast, the steps of initializing the communications ports
and obtaining the data for transmission are required for the transmission process. See id. at 62-63.

However, as explained above, claim 15 is limited to transmission “over a cellular
frequency,” while claim 1 is not. For claim 1, the Court previously concluded that the
specification’s algorithm to “obtain a cellular connection with each cellular telephone to the host
unit” (’239 Patent col.8 ll.27-28) was not necessary structure because claim 1 encompasses
transmitting over telephone lines and radio transmitters, not just cellular telephones:

[T]he transmission may take place using a radio transmitter instead of a traditional
phone or cell phone. Thus, the software algorithm of “obtain[ing] a cellular
connection with each cellular telephone” relates only to a particular embodiment of
the invention using cell phones, and is not necessary for the embodiments using a
radio transmitter.

Order at 63. Here, because claim 15 is limited to cellular frequencies, this software algorithm for
obtaining a cellular connection would be necessary for transmission “over a cellular frequency.”
Therefore, the Court construes claim 15 to include this software algorithm.

The Court further disagrees with Apple’s proposed construction because it includes terms
from claim 1 that do not appear in claim 15. Apple proposes “software performing a software
sequence of initializing one or more communications ports on the remote unit, obtaining the stored
data file, and transmitting the stored data file” (emphases added). However, neither “remote unit”
nor “stored data file” (or “storing”) appears in claim 15:

Claim 1 Claim 15
1. An apparatus for transmission of data,
comprising:
a mobile remote unit including:
a.) means for capturing, digitizing, and
compressing at least one composite signal;
b.) means for storing said composite signal;
c.) means for transmitting said composite
signal;
15. An apparatus for transmission of data,
comprising:
a computer including a video capture module to
capture and compress video in real time;
means for transmission of said captured video
over a cellular frequency.

Therefore, claim 15 provides no antecedent basis for either “the remote unit” or “the stored data
file.” See Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 782 (Fed. Cir. 2010)
(rejecting claim construction that ignored antecedent basis).

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Where claim 1 states that the “means for transmitting” is included in a “mobile remote
unit,” claim 15 recites that the “means for transmission” are included in “[a]n apparatus for
transmission of data.” Therefore, the “one or more communications ports” in Apple’s proposed
construction must refer to ports in the claimed apparatus for transmission.

Claim 1 also includes “means for storing said composite signal,” which does not appear in
claim 15. Instead, claim 15 recites a computer with a video capture module “to capture and
compress video,” with means for transmission of “said captured video.” Accordingly, the
information that is obtained and transmitted in claim 15 must be “said captured video.”

Apple posits that “[t]he disclosed structure for ‘captured video’ is a stored data file.” Apple
Br. at 2. Apple’s argument is that the ’239 patent applicants stated during prosecution that their
invention requires a stored data file because they distinguished a prior art reference on that basis:
“Thus, Gattis does not disclose the creation of a data file as required by Applicants’ claims.” ECF
No. 1491-3 (Feb. 2, 1996 amendment, SAMNDCA630-00832606). However, the excerpted
prosecution history also shows that the applicants were discussing then-pending claims 1 and 12,
and claim 12 specifically recited “a data file.” Id. (SAMNDCA630-00832605). There is no
indication that the applicants were addressing claim 15 as issued or the term “said captured video.”
Accordingly, the Court rejects Apple’s prosecution history argument.

For the reasons above, the Court provides the following construction of the software
structure: “software performing a software sequence of initializing one or more
communications ports on said apparatus, obtaining a cellular connection, obtaining said
captured video, and transmitting said captured video.”

B. Amendment of Samsung’s Infringement Contentions for Claim 15
In its motion requesting construction of claim 15, Samsung sought permission to argue
infringement under the doctrine of equivalents, if the Court did not adopt Samsung’s proposed
construction. See Samsung’s Admin. Mot. for Limited Additional Claim Construction at 4 n.1
(ECF No. 1461). In its claim construction brief, Samsung further clarifies that it wants to amend
its infringement contentions to assert equivalents under § 112(f) in addition to the doctrine of
equivalents. See Samsung Br. at 5. Apple responds that Samsung waived its right to amend when

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Samsung previously withdrew equivalents contentions for claim 15 and failed to seek additional
claim construction until the eve of trial. See Apple Br. at 4-5.

Based on the parties’ litigation conduct regarding infringement contentions (discussed
below), the Court concludes that Samsung had not preserved the right to assert equivalents (for
means-plus-function structure or the doctrine of equivalents) prior to its present request for
additional claim construction. The parties have repeatedly litigated the proper scope of Samsung’s
infringement contentions, and Samsung failed to assert its equivalents theories for claim 15 until
now, after sua sponte dropping claim 1 voluntarily from the case.

After the Court issued its claim construction Order, the parties moved for leave to amend
their respective infringement contentions. On June 26, 2013, Judge Grewal granted and denied in
part Samsung’s request to assert equivalents for the ’239 patent. See ECF No. 636. Judge Grewal
rejected Samsung’s general attempt to include the doctrine of equivalents for all asserted patents
and § 112(f) equivalents for all means-plus-function limitations not yet construed, finding that
Samsung did not have “good cause to add DOE and Section 112(f) equivalents theories” at that
time. Id. at 5, 8. Samsung concedes that it lost its attempt to assert equivalents for claim 15:
“Judge Grewal denied Samsung’s amendments for claim 15 because Samsung’s request was
‘premature.’” Samsung Br. at 5 & n.3. However, Judge Grewal advised: “If and when Samsung
faces an adverse construction, it may seek leave to amend in light of that adverse construction.”
ECF No. 636 at 8.

Meanwhile, Judge Grewal partially granted Samsung’s specific request to assert both
§ 112(f) equivalents and the doctrine of equivalents for the “means for transmitting” limitation in
claim 1 of the ’239 patent because “the claim construction order provides good cause for the
proposed amendments,” but did not permit Samsung to include the vague phrase “and/or other
processes.” Id. at 17-18. Samsung specifically identified this limitation and presented arguments
as to why it should be allowed to adjust its contentions in response to the Court’s claim
construction. Id.

On November 5, 2013, both parties filed motions to strike certain infringement contentions.
ECF Nos. 877-4, 878-4. On December 13, 2013, the parties submitted a joint chart of issues

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disputed in their motions to strike, noting that Apple’s motion targeted Samsung’s equivalents

arguments for claim 15. ECF No. 1056 at 3, 4. The chart also included the following agreement

on equivalents theories in light of Judge Grewal’s June 26, 2013 Order:
Both Apple and Samsung agree to withdraw all doctrine of equivalents and
structural equivalents arguments under Section 112(f) in their respective expert
reports that are subject of the parties’ pending motions to strike. For clarity, Apple’s
motion to strike did not include and this agreement does not extend to the “means
for capturing” and “means for transmitting” limitations that were subject to Judge
Grewal’s June 26, 2013 order. (Dkt. No. 636.) Subject to the resolution of Apple’s
pending Daubert motion, Samsung can argue both doctrine of equivalents and
structural equivalents under Section 112(f) for these terms. This agreement does not
preclude the parties from seeking leave to amend their infringement contentions to
include doctrine of equivalents or structural equivalents arguments under Section
112(f) if the Court construes terms adverse to a party in the future.

Id. at 3 n.4. Therefore, Samsung expressly withdrew all equivalents contentions—including those

for claim 15—other than the same two specific limitations in claim 1 of the ’239 patent permitted

by Judge Grewal’s June 26, 2013 Order.

While the June 26, 2013 Order and the parties’ agreement allowed the parties to seek leave

to amend contentions in response to later claim constructions, Samsung has failed to demonstrate

that it exercised the necessary diligence to do so. To obtain leave to amend, the moving party must

“proceed with diligence in amending those contentions.” O2 Micro, 467 F.3d at 1365-66; Patent

L.R. 3-6. Here, Samsung has asserted claim 15 since before claim construction (see ECF No. 383
at 2-3 (Feb. 18, 2013)), but never requested construction of any terms until March 13, 2014—after
rulings on summary judgment, Daubert, and in limine motions; almost a year after the claim
construction Order; and less than three weeks before trial. Between Judge Grewal’s June 26, 2013
Order and Samsung’s March 13, 2014 motion for additional claim construction, Samsung did not
seek claim construction for claim 15 or leave to assert equivalents theories. See, e.g., Acer, Inc. v.
Tech. Props. Ltd., No. 5:08-CV-877, 2010 U.S. Dist. LEXIS 142472, at *17 (N.D. Cal. Sept. 10,
2010) (denying leave to amend infringement contentions; “Because TPL has not demonstrated
diligence, ‘the inquiry should end.’” (citation omitted)). Nor does Samsung identify any new
evidence that would justify this late request. The fact that Samsung sua sponte voluntarily
withdrew claim 1 of the ’239 patent does not permit Samsung to wholly revisit claim construction
and pose new infringement theories.
13
Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT CLAIM 15
United
States
District Court

For
the
Northern
District
of
California

Furthermore, Samsung’s belated tactics would now unfairly prejudice Apple and tax the
resources of the Court. Jury selection will begin on Monday, March 31, 2014. Instead of
narrowing the issues for trial, Samsung now seeks to expand them by introducing new
infringement theories. Samsung contends that Apple faces no prejudice because both parties’
experts already opined on equivalents for claim 15. See Samsung Br. at 5 n.3. However, Apple
responds that it would “need to re-consider its exhibit list, and submit new jury instructions,” and
that it relied on Samsung’s withdrawal of its equivalents contentions for claim 15. Apple Br. at 5
& n.7. Samsung would almost certainly seek to revise its own proposed exhibits and jury
instructions in response to any changes that Apple makes. Moreover, the Court has already ruled
on summary judgment, Daubert motions, and motions in limine. With opening statements only
days away, the Court will not entertain new rounds of motions for leave to amend infringement
contentions, witness and exhibit lists, and jury instructions based on theories that Samsung could
have raised long ago.

For the foregoing reasons, Samsung’s request for leave to amend its infringement
contentions to include equivalents theories for claim 15 is DENIED.

IV. CONCLUSION
In summary, and for the reasons stated herein, the Court construes the relevant limitation of
’239 patent claim 15 as follows:

Patent Disputed Term Court’s Construction
5,579,239 “means for transmission of said capture
video over a cellular frequency”
“one or more modems connected to one
or more cellular telephones, and
software performing a software
sequence of initializing one or more
communications ports on said
apparatus, obtaining a cellular
connection, obtaining said captured
video, and transmitting said captured
video.”

IT IS SO ORDERED.

Dated: March 28, 2014
LUCY H. KOH
_________________________________
United States District Judge

14
Case No.: 12-CV-00630-LHK
ORDER CONSTRUING ’239 PATENT CLAIM 15