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Samsung Granted Leave to Depose Toshiyuki Masui in Japan Re Prior Art ~pj Updated
Friday, April 12 2013 @ 11:12 AM EDT

Samsung has been given leave [PDF] in Apple v. Samsung II to depose Toshiyuki Masui [PDF] in Japan regarding prior art. Specifically, it's about POBox software, which it believes is relevant prior art.

Here is a paper [PDF] on POBox by Professor Masui, "An Efficient Text Input Method for Pen-based Computers", published in Proceedings of the ACM Conference on Human Factors in Computing Systems (CHI’98) (April 1998). Here's another, "An Efficient Text Input Method for Handheld and Ubiquitous Computers" the following year [PDF]. Professor Masui was approached and expressed willingness to attend the deposition. The deposition is set for June 11 in Tokyo, in the US embassy there. The Declaration [PDF] attached to the motion asking for leave to depose Professor Masui explains how it all happened:

2. I first spoke with Professor Masui on or about February 5, 2013. I explained that we were interested in Professor Masui’s work on the POBox software, which is relevant prior art in this litigation. On or about the morning of February 6, my colleague John McKee and I spoke to Professor Masui about POBox. During this call, Professor Masui expressed willingness to gather and provide information about POBox. Several days later, on or about February 12, 2013, Professor Masui verbally confirmed to me that he would be willing to sit for a deposition in this matter.

3. Over the last few months, I have spoken with Professor Masui several additional times. Professor Masui has declined to travel to the United States for a deposition, but has stated that he would be willing to appear for a deposition in Tokyo, Japan. On or about March 20, Professor Masui confirmed to me that he was available June 11 in Tokyo, and would be willing to sit for a deposition on that date. Samsung thereafter reserved space at the U.S. Embassy in Tokyo for Professor Masui’s deposition.

Attached are the rules for such depositions, Exhibit 1, The United States – Japan Consular Convention, and Exhibit 2, the State Department's guidelines for conducting depositions in Japan.

Also the judge, the Hon. Lucy Koh, has filed her order [PDF] construing disputed patent claim terms. It's full of the usual infuriating spaghetti language about terms that describe elements of patents that in my view should never have issued in the first place. Don't read on if you don't want to know about one specific. But there is a link to Professor Masui's work.

For example, regarding Apple's '502 patent, the parties disputed what the meaning of the words "history list" meant. The patent, believe it or not, is on a system that allows “[t]he user [to] input[] data for a field of [a] form by selecting an item from the displayed historical list which corresponds to the particular field.” Duh. Then it lets the user select an entry in the list rather than to re-type the data into the field. As the judge writes, and with a straight face:

As the ’502 Patent explains, this improved data entry technique is particularly useful for small, hand-held computer devices, such as computerized personal organizers and tablets, where input errors during data entry are common.
A patent on that. I am speechless. Apple could get millions in damages for this? Are they kidding?

Anyway, the parties know what a history list is, so what's the dispute? The judge explains:

Rather, the parties’ principle dispute centers around whether a history list can be shared between different applications, as Apple contends, see Apple Br. at 4-5, or whether a history list must be shared between different applications, as Samsung contends, see Samsung’s Resp. Claim Constr. Br (“Samsung Resp.”), ECF No. 352, at 5. As discussed below, the Court is not persuaded by Samsung’s proposed construction as it is not supported by the claim language and reads out an embodiment. Therefore, the Court construes “history list” as simply “a list of previously used entries.”

a. Claim Language/Specification

The Court agrees with Apple that the term “history list” should be construed to mean “a list of previously used entries,” as this construction captures the plain meaning of the term as expressed in the claim language and is further supported by the specification.

The language of independent Claims 8, 11, 16, and 26, as well as the context in which the term “history list” appears, makes it clear that a “history list” is comprised of a list of previously used entries. See ’502 Patent, col. 18:7-25 (“updating the history list in accordance with the [user selected] item . . . .”) (Claim 11) (emphasis added); see generally Phillips, 415 F.3d at 1313 (noting that the words of the claims themselves are the objective starting point for claim interpretation). For example, Claim 11 describes that, when a user selects an item to fill in a field, the “history list” is updated to reflect that selection. See ’502 Patent, col. 18:7-25. Thus, the claim language itself makes clear that, at a minimum, a “history list” is a list of entries selected previously by the user.

The specification of the ’502 Patent also supports construing the term “history list” to mean “a list of previously used entries.” As stated in the specification, “[t]he history list is a list of data values most recently and/or most frequently used for the associated field.” Id. at col. 10:3-5. Other portions of the specification also refer consistently to the “history list” as comprising entries used “recently” or “frequently.” See id. at col. 2:30-33 (stating that the invention provides “the historical list of the most recently and/or frequently used data values . . . .”); id. at col. 2:66-col. 3:1 (“Preferably, the history list for each of the field classes is a menu list of most recently and frequently used data values for the field classes.”). In order to list data used “recently” or “frequently,” a user must have entered data in the same field previously. Thus, the specification clearly contemplates that a “history list” is “a list of previously used entries.”

Samsung does not contend that there is a meaningful difference between defining “history list” as “a list of choices based on historical information,” which is the first part of Samsung’s proposed construction, and Apple’s proposed construction, “a list of previously used entries.” See Tr. at 20:6-22. Rather, Samsung contends that the construction of “history list” should also include a limitation that the information included in the history list is “shared between different applications.” Samsung Resp. at 4-5.

The Court is not persuaded that the intrinsic evidence supports Samsung’s proposed construction. First, the claims themselves do not discuss the concept of sharing data between multiple applications. While Samsung contends that the term “field class” itself inherently requires sharing across different applications, there is no support for this contention within the words of the claims themselves.

Second, nothing in the specification requires sharing data between different applications. While Samsung does identify portions of the specification which indicate that the invention may share information between different applications, see Samsung Resp. at 4 (citing the ’502 Patent at col. 2:35-37), other portions of the specification make clear that the historical information does not have to be shared between applications, it is merely an option. See, e.g., ’502 Patent Abstract (“The historical [sic] can also be shared between different applications . . .”) (emphasis added); id. at col. 4:20-23 (“The historical list can also be shared between different applications that execute on the computer system . . . .”) (emphasis added).

Further, although Samsung cites to several embodiments of the invention that involve sharing data between different applications, the specification also includes embodiments that do not share any information between applications. For instance, in support of its contention that a “history list” must be shared between applications, Samsung points to Figures 13A and 13B, which illustrate the use of the invention disclosed in the ’502 Patent sharing historical entries between a fax program and a phone messaging program. However, the specification of the ’502 Patent also includes other simpler embodiments of the invention, such as Figure 4, which do not mention or include multiple applications. See id. at col. 9:40-col. 10:14; id. at FIG. 4. As noted by the Federal Circuit, a patentee is not to be limited to the embodiments depicted in the drawings, as these are often merely exemplary applications of the claimed technology. See, e.g., Prima Tek II, L.L.C., 318 F.3d at 1148 (“[T]he mere fact that the patent drawings depict a particular embodiment of the patent does not operate to limit the claims to that specific configuration.”). Moreover, limiting the claim to the embodiments described in Figures 13A and 13B, which include multiple applications, would impermissibly exclude the simpler embodiment disclosed in the description of Figure 4. See Vitronics, 90 F.3d at 1583 (holding that excluding a preferred embodiment is “rarely, if ever, correct.”).1

Finally, the Court is not persuaded by Samsung’s claim that the construction should be limited to the so-called novel part of the “invention” described in the specification. See Samsung Resp. at 4-5; see also id. at 6 (citing Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011), for the proposition that, “[i]n reviewing the intrinsic record to construe the claims, [courts] strive to capture the scope of the actual invention, rather than . . . allow the claim language to become divorced from what the specification conveys is the invention.”). According to Samsung, the actual “‘invention’ is the patent’s allegedly key improvement over the prior art,” which Samsung construes as the sharing of history information across different applications. Samsung Resp. at 5. In support of this position, Samsung relies heavily on Figures 13A and 13B, which “illustrat[e] usage of the invention across different programming applications.” ’502 Patent, at col. 16:23-24. However, unlike in Retractable Technologies, Inc., the specification of the ’502 Patent does not expressly limit the claims to Figure 13A and 13B, the sharing embodiments. In fact, the specification also describes a simpler embodiment depicted in Figure 4 as “the invention.” See id. at col. 9:40-41 (“FIG. 4 is a basic block diagram of list processing 164 associated with a basic embodiment of the invention.”) (emphasis added). Yet, as already discussed, nothing in the description of Figure 4 requires that a “history list” be shared between the proffered applications. Id. at col. 9:40-64. Thus, while some of the embodiments of the invention described in the ’502 Patent involve sharing a “history list” between multiple applications, the specification does not support limiting the claims to only these embodiments.

Therefore, the Court is not persuaded that the claims or the specification support Samsung’s proposed construction. Rather, the Court finds that Apple’s proposed construction is more plausible.

1 Samsung also argued during the claim construction hearing that the algorithm in Figure 4 required sharing between multiple applications. See Tr. at 14:1-10. As described above, the Court disagrees with Samsung that either Figure 4 or the accompanying description requires sharing between applications.

It probably is, more plausible that is. I can't tell, because as I try to read this, my brain is saying over and over, "They issued a patent on *this*? Picking from a list?" That's not even the end of the judge's analysis. It goes on and on, and there are other disputes after this one is put to bed, but I can't stand it. If you can, the PDF is available to you.

Parties have to pay their lawyers to have this debate. And it matters a lot. I'm sure you can see why it might matter to Samsung that the limitation it proposed be adopted, as it would narrow the patent, maybe enough that Samsung wouldn't be able to be accused of infringing, if it is.

I don't know who is right about that, but I know there ought to be a better USPTO procedure that solves these debates by insisting on specificity from the application itself, instead of having to hold these elaborate, paid discussions later in courts.

And as usual, I am totally mystified that anyone chooses voluntarily to be a patent lawyer. I'd understand if you had to pick straws, and you had to be a patent lawyer for the rest of your miserable life if you drew the shortest straw. I'd be zoning out all the time, or laughing bitterly at my own jokes under my breath in some dark corner of the courtroom during these elaborate discussions over minutia regarding such obvious functionality that no one should be allowed to patent in any fair system of law. If I didn't understand that the smartphone patent wars are really about attacking Android, and attacking openness, and if I didn't care so much about FOSS surviving, I couldn't even report on it. But I do care.

A patent on choosing from a list. A list. That's not even going into the fact that software is mathematics and shouldn't be patented at all, not being patentable subject matter.

Of course, patent lawyers can't do that, laugh to themselves or zone out, as there are millions at stake potentially on the construction of each stupid word. That's the part that is so incredible. Rather, they probably do both sometimes, but they are supposed to be paying attention with their whole heart and whole mind every minute.

Where do they find juries willing to take this seriously?

The same place they find judges and patent lawyers, I suppose. I shouldn't judge. I enjoy contract law. Most people find it incredibly boring and annoying, but I like figuring out how to protect a client by planning well in advance. I've been seen reading dusty tomes on contract drafting for hours on end, just for fun. So to each his own, I guess.

What matters is that POBox, the software Professor Masui invented long ago, was about choosing words from a list of items on handhelds.

Ta da.

So does this mean that all the debates about what "history list" does or doesn't mean may be for naught? Yes. It's very possible. That's why Samsung wants to do the deposition.

[Update: There is an earlier paper, "A Simple Approach to Adaptive Text Editors", [PDF] by Mr. Masui, dated in 1994. It's in Japanese but the title and abstract are in English:

Summary. We propose a simple adaptive predictive interface for text editing tasks. A text editor can predict the next user input from various information available, such as the user’s repetitive operations, a dictionary of frequently-used words, preveously-input text strings, etc. Using a text editor with such a predictive feature, a user can ask the system to predict his next operation and select the appropriate one from the candidates shown by the system. If the system can also keep track of the user’s selections and know the user’s preferences, it can gradually adapt itself to the user and show more appropriate candidates next time. We implemented five prediction schemes on GNU Emacs, and also implemented one simple adaptation scheme for ordering the prediction schemes. Empirical results show that adaptive predictive interface shows higher usability than non-adaptive interface.
- End update.]

Here's the text of the Magistrate Judge Paul Grewal's order granting the deposition in Japan:



United States Embassy Tokyo, Minato, Tokyo, Japan Upon the unopposed motion of Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) and pursuant to Article 17 of the United States-Japan Consular Convention,

It is hereby ordered that the deposition on notice of the following witness be taken at the United States Embassy in Tokyo, Japan:

Toshiyuki Masui
Said deposition shall commence on or about June 11, 2013, 8:30 a.m. and terminate on or about June 11, 2013, 4:00 p.m.

Counsel for Defendants who may participate in the deposition are Rebecca Bers, Todd Briggs, Amy Candido, Clark Craddock, Patrick Curran, Jacob Danziger, Marissa Ducca, David Elsberg, Eric Emanuel, Richard Erwine, Michael Fazio, Anastasia Fernands, Scott Florance, Ryan Goldstein, Ron Hagiz, Nathan Hamstra, Jordan Jaffe, Kevin Johnson, James Judah, Peter Klivans, Valerie Lozano, Victoria Maroulis, John McKee, Jared Newton, Sean Pak, William Price, John Quinn, Kevin Smith, Amar Thakur, Charles Verhoeven, Matthew Warren, Scott Watson, and Lance Yang; counsel for Plaintiff who may participate in the deposition are H. Mark Lyon, Mark Reiter, Brian Buroker, Jason Lo, Rodney Stone, Frederick Chung, Michael Valek, Sarah Simmons, Jennifer Rho, Robert Vincent, Joshua Furman, Paul Torchia, Tom Anderson, Heath A. Brooks, Anna Bonny Chauvet, Adele Frankel, Peter J. Kolovos, Andrew Liao, Richard W. O’Neill, Mark D. Selwyn, Olga Tobin, and Josh Krevitt.

The proceedings will be reported and videotaped by American Realtime Court Reporters. In addition, the proceedings may be observed, translated, and otherwise attended by Japanese nationals/residents as may be designated by a party subject to the restrictions of the Protective Order.

Please cause the testimony of said witness to be reduced to writing and the depositions signed by said witnesses and annex said deposition testimony to your commission and close the same under your seal and make return thereof to this Court with all convenient speed.

DATED: April _4__, 2013


Samsung Granted Leave to Depose Toshiyuki Masui in Japan Re Prior Art ~pj Updated | 265 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Here
Authored by: feldegast on Friday, April 12 2013 @ 11:14 AM EDT
So they can be fixed

My posts are ©2004-2013 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

Off Topic
Authored by: feldegast on Friday, April 12 2013 @ 11:15 AM EDT
Please make links clickable

My posts are ©2004-2013 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

News Pics
Authored by: feldegast on Friday, April 12 2013 @ 11:16 AM EDT
Please make links clickable

My posts are ©2004-2013 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

Comes Transcribing
Authored by: feldegast on Friday, April 12 2013 @ 11:17 AM EDT
Thank you for your support

My posts are ©2004-2013 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

A list populated by user entries
Authored by: Anonymous on Friday, April 12 2013 @ 11:39 AM EDT

Bartender: Will it be the usual sir!

Customer: Yea!

Bartender: One Shirley Temple coming up!

Sadly: it's the same lawyers and Law that allows arguments on the difference between "must" and "can" that allows this absurdity.


[ Reply to This | # ]

I'm not mystified why people choose to be Patent Lawyers
Authored by: Anonymous on Friday, April 12 2013 @ 11:43 AM EDT

Bucks! Big, big bucks!

And if there are penalties on the books for such things as attempting to apply for a patent on math - they're not enforced. Or if they are enforced, the patent owner (not the Lawyer) pays the penalty (such as having the patent invalidated).

No penalties to the Lawyers themselves.

The perfect career:

    Golden chests keep coming with absolutely no drawback!


[ Reply to This | # ]

Samsung Granted Leave to Depose Toshiyuki Masui in Japan Re Prior Art ~pj
Authored by: JamesK on Friday, April 12 2013 @ 11:52 AM EDT
"The Court agrees with Apple that the term “history list” should be
construed to mean “a list of previously used entries,” as this construction
captures the plain meaning of the term as expressed in the claim language and is
further supported by the specification."

I have used browsers for many years. One thing that browsers do is maintain a
history, so that when you start to type in something, one or more similar
previous items are available for selection. How is this any different, now that
it's performed on an iPad or iPhone? What about the command line interfaces
that maintain a history? They've been around for decades. If I'm in a console
session on my computer, I simply hit the up arrow key to go through previous

The following program contains immature subject matter.
Viewer discretion is advised.

[ Reply to This | # ]

Electronic thesaurus with access history list
Authored by: Anonymous on Friday, April 12 2013 @ 01:20 PM EDT
Electronic thesaurus with access history list does not patent what Apple's patent does, but it describes a version of history list that arguably makes Apple's idea obvious. Priority date: Jan 5, 1989.

The original word entered by the user for which synonyms and related words are sought is put into a history list. The user can select any of the synonyms or any of the words from the core meaning presented, or can independently enter any desired word and add those entered words to the history list. In this fashion, the user can build up a history list which can be reviewed by the user and any word in the history list re-accessed, so that the user can track through the history list and explore any desired complex arrangement of concepts, ideas, and relationships.

[ Reply to This | # ]

Whybe a patent attorney
Authored by: PolR on Friday, April 12 2013 @ 01:23 PM EDT
It seems to have make the list of the 10 most overpaid jobs at 170K. Patently'O protests they have their number wrong. Patently'O says the median salary is around 130K.

[ Reply to This | # ]

The USPTO is incompetent
Authored by: Anonymous on Friday, April 12 2013 @ 02:01 PM EDT

Software is just one example. There are thousands of others. Biotech, mechanical, chemical, process, business, they are 99.99% Bovine Excrement (trying to be polite).

I did an evaluation a while back, using public data from the USPTO website, and Wikipedia. It appears that the average patent earns $100.00 for its owner.


On average. This assumes that I got my math right. I posted this information in IPWatchDog expecting them to take it apart, and show me where I was wrong, because the numbers just coudn't be right.

No one did (and I did post the details of how I came to my conclusion - if you want to search for it I always post on IPWatchDog under my writing name, Wayne Borean).

I don't have the worksheet handy at this moment, was de-cluttering my writing computer, but I know which of five external drives it is backed up to, and will email it to PJ. She can do what she'd like with it. Personally I'd really like to have someone else take a run at my numbers, because there's got to be something wrong. Either that or the USPTO is one of the biggest scams in existence.


[ Reply to This | # ]

BASH shell history list
Authored by: Nick_UK on Saturday, April 13 2013 @ 03:23 AM EDT
The *nix BASH shell (and the other shells, I expect) have had a history list for

e.g. suppose I typed a long command yesterday, and can only remember part of it,
like 'grep'.

All I need do is (in a terminal) hit 'ctrl+r' and start typing the word g-r-e ;
that will take me to the last entry in my shell history containing that
'search'. If it is not the right 'line' in the history just hit 'ctrl+r' again
and it will select the next... and the next until you find the line again. Then
just hit 'enter' to run it again.


[ Reply to This | # ]

Recent Documents
Authored by: Ian Al on Saturday, April 13 2013 @ 03:58 AM EDT
Programs usually keep a history of the text entered in the file name field of
the Open Document requester form.

The File Menu often displays that list at the end of the menu or in a Recent
Documents sub-menu.

Modern OSs (not Microsoft Windows) include a history panel of recent document
file name texts in the Open Document requester form. Entries in this history
list can be clicked and entered into the file name field of the form.

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

[ Reply to This | # ]

History List Prior Art
Authored by: HappyDude on Saturday, April 13 2013 @ 10:36 AM EDT

Is there something about the patent that makes it different than all the prior art listed in these replies?

It almost seems like "On a portable device being held in the left hand ..." and "On a portable device being held in the right hand ...” and "On a portable device being held in both hands while operating machinery ...” would constitute 3 new patents in the eyes of the m0r0ns in the USPTO.

What I find incredible is that these highly paid attorneys feel it's necessary to depose someone in Japan about prior art. Shouldn't they have some inkling about that which they are arguing? They couldn't come up with all the prior art listed in these comments on their own? Really?

And the Hon Judge Koh and her staff couldn't find prior art with very simple Google searches or a phone calls to folks who do have clues? Really?

This is our legal system!? Wrap this up with the other 2 branches of our government and I guess we could refer to it as "USA, Inc.

PJ and Everyone - I don't know how you all manage to maintain such honorable composure, but I commend you. This whole mess makes my blood boil.


[ Reply to This | # ]

Samsung Granted Leave to Depose Toshiyuki Masui in Japan Re Prior Art ~pj Updated
Authored by: tknarr on Saturday, April 13 2013 @ 04:13 PM EDT

I look at the patent and the priority date, 1995, seems to pre-date history lists in things like browsers. But I remember combo boxes back in Windows 3.1, and possibly earlier. Those seem to have the same basic elements: items you enter are remembered and appear in the pull-down for the box, and you can select those items to fill in the box without typing. I wonder how far back the idea goes?

[ Reply to This | # ]

The first Apple v. Samsung trial - Velvin Hogan etc.
Authored by: macliam on Saturday, April 13 2013 @ 05:49 PM EDT

This point may be somewhat off-topic, but might be considered tangentially relevant. I had contemplated making a post that was more on-topic, but, in thinking about how to substantiate the more leading points, I hit on the idea of consulting the jury instructions in previous patent trials covered by Groklaw. I was searching for Judge Alsup's instructions, but ended up downloading and reading Judge Koh's jury instructions. And reading those instructions brought me back to the notorious interviews given by the jury foreman, Velvin Hogan.

I emphasize that I am not a lawyer, and that any assertions about patent law made below should be treated as the conclusions of an inexpert layman, and treated with appropriate skepticism. I aim to add some links to more authoritative sources. But, since I am not planning to write here a full legal brief, I hope that I may be excused providing complete chapter and verse for all that points I make below.

I will summarize briefly what I strongly suspect. Judge Koh's jury instructions include a lengthy instruction, Final Jury Instruction No. 27 - Infringement under the Doctrine of Equivalents. Judging by my own reading of materials (statutes, judgements, briefs, blogs etc.) related to patent law, I understand that the Doctrine of Equivalents is a fine detail of patent law that is occasionally applicable, but that nevertheless is not the fundamental or sole requirement that should be applied to determine whether or not a patent claim is infringed, or is invalidated by prior art. Nevertheless Velvin Hogan, in his interviews, gives me the strong suspicion that he (and presumably the rest of the jury) based their whole approach to invalidation by prior art (if not infringement) on this doctrine, assuming that it was the basic and sole criterion that they were required to apply when considering patent claims for infringement or invalidity.

First some references to earlier Groklaw articles. The final jury instructions in Apple v. Samsung were linked to and discussed in this Groklaw article. Also the Groklaw article on the jury foreman's Aha moment, which contains snippets from Velvin Hogan's interview with the BBC (including the particular snippet relevant for this discussion)

Rather than attempt to give a hazy and uninformed explanation of what the Doctrine of Equivalents is all about, I will refer to the Wikipedia article on the Doctrine of Equivalents, and to some articles on the PatentlyO blog: 2012 Trends: New Life in the Doctrine of Equivalents, a guest post by Donald S. Chisum (who is the author of a multi-volume reference work Chisum on Patents); Doctrine of Equivalents at the Federal Circuit; Rader: Reviving the Doctrine of Equivalents. A superficial reading of those articles should suffice to substantiate the point that the Doctrine of Equivalents is not the fundamental requirement that determines whether or not a patent claim is invalid or infringed.

One final link. Velvin Hogan mentioned that his Aha moment happened in the context of Samsung's '460 patent. That patent seems to be US Patent 7,577,460. I won't quote the patent here, to avoid ‘pollution’. I have taken a look at Claim 1. I do not see there any special language (such as “means plus function” language) that might require consideration of equivalents of embodiments disclosed in the specification under § 112(f) of the Statute. The claim language seems standard.

Although not giving an ‘explanation’, I will now attempt to give an example of what (to the best of my knowledge) might constitute infringement of a patent claim under the Doctrine of Equivalents. (Reminder: IANAL.) Suppose a patent claim were to include a claim element that was described in language making reference to a “class file written in the Java programming language”. Now if the corresponding element in the alleged infringing system were written in the C♯ programming language, there could be no literal infringement. But if the class file written in C♯ could readily be translated into infringing code written in Java, then there might be infringement under the Doctrine of Equivalents. Thus the Doctrine of Equivalents (as I understand it, and I am certainly not an authority) ensures that small technical deviations from the exact wording of the claim may not be sufficient to guarantee non-infringement if the underlying concept is the same.

After all those preliminaries, back to Velvin Hogan. The following is a snippet from his BBC interview:

BBC: There were two issues, looking at Apple's case: Whether Samsung had infringed their patents and whether the patents were valid. Why weren't you convinced by Samsung's arguments that some of the patents that Apple had put forward shouldn't be allowed to stand? There has been a lot made in the media and elsewhere that Apple wasn't the first with some of the ideas that they had patented.

Hogan: To try to make it as easy as possible - I have addressed this in other interviews that I have had - what it amounts to is there has been a big fuss since the deliberation that prior art was not considered. Prior art was considered.

When we had to determine the validity of Apple's patent against the charges of Samsung's with the prior art examples, what we had to do - to make it clear - is that not only did we have to validate, if you will, the Apple patent, but in looking at the prior art we had stipulations in the law that tested both sides and if the test wasn't passed then it was clear either the patent was valid or it wasn't.

Prior art didn't mean that the prior art wasn't valid. It was valid. But the stipulation under the law is for the prior art to be sufficient to negate or invalidate the Apple patents in this case, it had to be sufficiently similar or, more importantly, it had to be interchangeable.

And in example after example, when we put it to the test, the older prior art was just that. Not that there's anything [wrong] with older prior art - but the key was that the hardware was different, the software was an entirely different methodology, and the more modern software could not be loaded onto the older example and be run without error.

And vice versa of that was also true. So the point being, at the 40,000 foot-level, even though the outcome of the two seemed similar, the internal methodology of how you got there was entirely different.

One could not be exchanged for the other. And that is the thing that most people at large do not understand about the legal system. And as a result of that you have heard a lot of hype in the media about did we turn our back on prior art? No.

Did it mean prior art could not have been used to compete against anything any other company had done? No, I'm not saying that.

I'm saying both could have existed independently of each other and been used. The thing you have to remember is that the prior art that belonged to Samsung, or belonged to somebody else that they had the ability of using, they had not used for quite some time.

And the methodology that they had implemented was just right up against the line of infringement and went beyond it in most cases. And not all cases.

Not everything that Apple accused of Samsung was correct and we made those stipulations as we filled out the form, and well, you know how it played out.

My point is that there were substantially difference between the prior art and the new method, but the key was you could not replace one for the other.

BBC: There had been a lot of speculation that although Apple might get damages, Samsung might get damages as well. Why did Samsung's case fail?

Hogan: Whenever we considered the prior art and we looked at those patents, and specifically the claims that were involved, and the claim limitations that were involved, we had the instruction from the judge who had given us the stipulation of the precedent in the law that for the prior art in this case to negate or invalidate the patent on Apple's side - that was being involved in the allegation from Samsung that the patent was invalid because of the prior art - we had to establish that number one, the two methods were substantially similar; that the outcome was the same, in other words the functionality was the same, that would be at the 40,000-foot level. But what was key to us, and it was a very important piece, is that the stipulation in the law, they had to be interchangeable.

And so consequently, when we looked at the source code - I was able to read source code - I showed the jurors that the two methods in software were not the same, nor could they be interchangeable because the hardware that was involved between the old processor and the new processor - you couldn't load the new software methodology in the old system and expect that it was going to work, and the converse of that was true.

BBC: And we're talking about Samsung's patent claim about combining a mobile phone with email [and a camera]?

Hogan: Exactly, in fact that is the one issue that we left on Wednesday night, the first day of deliberation, that had hung us up. And I, being the foreman, said because we had ran over and the US marshals had already told us that we could not work past six o'clock, and we were approaching six o'clock.

Now let us consider the text of Judge Koh's Final Jury Instruction No. 27


If you decide that an accused Samsung product does not literally infringe an asserted Apple utility patent claim, you must then decide whether that product infringes the asserted claim under what is called the “doctrine of equivalents.” If you decide that an accused Apple product or method does not literally infringe claim 1 of Samsung’s ’460 patent, you must then decide whether that product or method infringes the asserted claim under what is called the “doctrine of equivalents.”

Under the doctrine of equivalents, the product or method can infringe an asserted utility patent claim if it includes parts or software instructions that are identical or equivalent to the requirements of the claim. If the product or method lacks a part or software instructions that is identical or equivalent to even one requirement of the asserted utility patent claim, the product or method cannot infringe the claim under the doctrine of equivalents. Thus, in making your decision under the doctrine of equivalents, you must look at each individual requirement of the asserted utility patent claim and decide whether the product or method has either a part or software instructions that are identical or equivalent to that individual claim requirement.

A product part or software instructions are equivalent to a requirement of an asserted claim if a person of ordinary skill in the field would think that the differences between the part or software instructions and the requirement were not substantial as of the time of the alleged infringement.

Changes in technique or improvements made possible by technology developed after the utility patent application is filed may still be equivalent for the purposes of the doctrine of equivalents if it still meets the other requirements of the doctrine of equivalents set forth in this instruction.

One way to decide whether any difference between a requirement of an asserted claim and a product part or software instructions are not substantial is to consider whether, as of the time of the alleged infringement, the part or software instructions performed substantially the same function, in substantially the same way, to achieve substantially the same result as the requirement in the patent claim.

In deciding whether any difference between a claim requirement and the product or method is not substantial, you may consider whether, at the time of the alleged infringement, persons of ordinary skill in the field would have known of the interchangeability of the part or software instructions with the claimed requirement. The known interchangeability between the claim requirement and the part or software instructions of the product or method is not necessary to find infringement under the doctrine of equivalents. However, known interchangeability may support a conclusion that the difference between the part or software instructions and the claim requirement is not substantial. The fact that a part or software instructions of the product or method performs the same function as the claim requirement is not, by itself, sufficient to show known interchangeability.

Now, note the following key sentence in Velvin Hogan's BBC interview:

But what was key to us, and it was a very important piece, is that the stipulation in the law, they had to be interchangeable.

And then look back to Judge Koh's jury instruction no. 27, and note the repeated use of the word ‘interchangeability’.

Now a text search on the final jury instructions shows that this particular jury instruction is the only instruction that contains the word ‘interchangeability’. Moreover the word ‘interchangeable’ seems to occur only in instruction no. 78 on Monopolization - Relevant Market. These are the only instances in the document of words beginning with the string ‘interchang’. Thus it seems clear to me, beyond reasonable doubt, that Velvin Hogan's understanding of the law on patent infringement and invalidity was based on instruction 27 concerning the Doctrine of Equivalents.

Based on my layman's understanding of patent law, it seems to me that the law that the jury should have applied is to be found elsewhere in the jury instructions. Judge Koh would have held a Markman hearing whose purpose would be to address issues in dispute regarding the interpretation of the language of the claim. She would have made rulings, based on legal principles set out in considerable detail in Federal Circuit case law, to establish how the disputed claim language should be construed. Her constructions are to be found in Jury Instruction No. 22 - Interpretation of Claims. Judge Koh makes it clear that the jury must follow her claim constructions:

I have interpreted the meaning of some of the language in the utility patent claims involved in this case. You must accept those interpretations as correct. My interpretation of the language should not be taken as an indication that I have a view regarding the issues of infringement and invalidity. The decisions regarding infringement and invalidity are yours to make.

In relation to one of the patents, she states the following:

The term “edge of the electronic document” has its plain and ordinary meaning. An edge of an electronic document is not limited to an external edge and may be internal.

This is in fact a significant ruling that favours Samsung.

I suggest (with the usual disclaimers, IANAL etc.) that Final Jury Instruction No. 24 instructs the jury about how to determine infringement of utility patents. Also (to the best of my knowledge), the comparison needed to determine whether prior art invalidates a patent claim is the same: the prior art invalidates if it would have infringed were it not prior art.


A patent’s claims define what is covered by the patent. A product or method directly infringes a patent if it is covered by at least one claim of the patent.

Deciding whether a claim has been directly infringed is a two-step process. The first step is to decide the meaning of the patent claim. I have already made this decision, and I have already instructed you as to the meaning of the asserted patent claims. The second step is to decide whether Samsung and/or Apple has made, used, sold, offered for sale, or imported within the United States a product or method covered by any of the asserted claims of the other side’s utility patents. If Samsung or Apple has done so, it infringes. You, the jury, make this decision.

With one exception, you must consider each of the asserted claims of the patents individually, and decide whether the accused Samsung and/or Apple products or methods infringe that claim. The one exception to considering claims individually concerns dependent claims. A dependent claim includes all of the requirements of a particular independent claim, plus additional requirements of its own. As a result, if you find that an independent claim is not infringed, you must also find that its dependent claims are not infringed. On the other hand, if you find that an independent claim has been infringed, you must still separately decide whether the additional requirements of its dependent claims have also been infringed.

You have heard evidence about both side’s commercial products. However, in deciding the issue of utility patent infringement you may not compare the Samsung and Apple commercial products to each other. Rather, you must compare the accused Samsung products to the claims of the Apple utility patents, and the accused Apple products or methods to the claims of the Samsung utility patents.

Whether or not Samsung or Apple knew its products or methods infringed or even knew of the other side’s patents does not matter in determining direct infringement.

There are two ways in which a patent claim may be directly infringed. A claim may be “literally” infringed, or it may be infringed under the “doctrine of equivalents.” The following instructions will provide more detail on these two types of direct infringement.

In other words, the jury had to take the words of the claim, intepreted in accordance with instruction no. 22, and determine whether the claim language reads on the alleged infringing or invalidating device or method. In Velvin Hogan's language, they had to do the comparison “at the 40,000-foot level, unless there were some particular reason for invoking the Doctrine of Equivalents (e.g., because lawyers for one of the parties had presented a Theory of Infringement that involved that particular doctrine).

The above conclusions are those that I draw, based on my own admittedly incomplete knowledge.

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Some quick comments on Judge Koh's order construing disputed terms.
Authored by: macliam on Saturday, April 13 2013 @ 07:56 PM EDT

Some quick remarks on Judge Koh's order construing disputed terms.

I am not a lawyer, or expert on patent law. But if one follows patent blogs, and reads Federal Circuit opinions, it becomes clear that claim construction is a critical element of any patent litigation. I suggest that these decisions are important to the parties, but one would not find out why unless and until the claims came to trial and the parties set out their theories of infringement and/or invalidity.

It may be worth noting the score card. Apple won on all five disputed terms in Apple patents. Samsung won on one disputed term in its patents, and in the remaining three cases (including two “means plus function” claims requiring construction under the rules of §112(f)), Judge Koh provided her own construction distinct from those proposed by both Samsung and Apple.

It seems that claim construction is currently a hot topic at Federal Circuit level. Judge Koh cites a Federal Circuit case, Phillips v. AWH Corp. (also available in PDF from the F ederal Circuit website (03-1269). In that case, Circuit Judge Bryson sets out in 14 pages (section II of the opinion for the court) detailed instructions as to how judges are to construct claim language, taking into account language in the claims themselves, the accompanying specification, prosecution history, dictionaries and expert evidence. A further 10 pages (section III) set out how the instructions related to those set out in earlier Federal Circuit cases.

They could have chosen more uplifting subject matter. The disputed claims were for prefabricated units for penitentiary walls incorporating steel baffles, and the dispute centred on whether the claims read on baffles at right angles to the wall, or whether the baffles had to be at an acute angle to the wall to infringe the claim. The outcome of the dispute determined whether or not there was infringement.

The judgement also contains a blistering dissent from Circuit Judge Mayer (joined by Circuit Judge Newman). Anyone questioning the necessity for the Markman hearings, rulings on disputed claim language etc. might note that they are not alone. At one point, Mayer writes as follows:

What we have wrought, instead, is the substitution of a black box, as it so pejoratively has been said of the jury, with the black hole of this court. Out of this void we emit “legal” pronouncements by way of “interpretive necromancy”; these rulings resemble reality, if at all, only by chance. Regardless, and with a blind eye to the consequences, we continue to struggle under this irrational and reckless regime, trying every alternative—dictionaries first, dictionaries second, newer dictionaries, etc., etc., etc.

Again today we vainly attempt to establish standards by which this court will interpret claims. But after proposing no fewer than seven questions, receiving more than thirty amici curiae briefs, and whipping the bar into a frenzy of expectation, we say nothing new, but merely restate what has become the practice over the last ten years—that we will decide cases according to whatever mode or method results in the outcome we desire, or at least allows us a seemingly plausible way out of the case.

The dissent concludes as follows:

Eloquent words can mask much mischief. The court’s opinion today is akin to rearranging the deck chairs on the Titanic—the orchestra is playing as if nothing is amiss, but the ship is still heading for Davey Jones’ locker.

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prior art? - Xerox PARC Interlisp - DWIM - Do What I Mean 1966
Authored by: tce on Sunday, April 14 2013 @ 01:27 AM EDT


DWIM ("Do What I Mean") computer systems attempt to anticipate what
users intend to do, correcting trivial errors automatically rather than blindly
executing users' explicit but incorrect input. The term was coined by Warren
Teitelman in his DWIM package for BBN Lisp, part of his PILOT system, some time
before 1966.[1][2][3]

Teitelman's DWIM package "correct[ed] errors automatically or with minor
user intervention"[2], similarly to a spell checker for natural language.

Teitelman and his Xerox PARC colleague Larry Masinter later described the
philosophy of DWIM in the Interlisp programming environment (the successor of
BBN Lisp):

Although most users think of DWIM as a single identifiable package, it embodies
a pervasive philosophy of user interface design: at the user interface level,
system facilities should make reasonable interpretations when given unrecognized
input. ...the style of interface used throughout Interlisp allows the user to
omit various parameters and have these default to reasonable values...
DWIM is an embodiment of the idea that the user is interacting with an agent who
attempts to interpret the user's request from contextual information. Since we
want the user to feel that he is conversing with the system, he should not be
stopped and forced to correct himself or give additional information in
situations where the correction or information is obvious.[4]


1 Warren Teitelman, "PILOT: A Step towards Man-Computer Symbiosis",
M.I.T. Ph.D. Dissertation, Project MAC MAC-TR-32, September 1966. DTIC AD0638446
PDF, p. 51

2 a b Warren Teitelman, "Toward a programming laboratory", in J.N.
Buxton and B. Randell, Software Engineering Techniques, April 1970, a report on
a conference sponsored by the NATO Science Committee, Rome, Italy, 27-31 October
1969, p. 108ff.

3 Donald E. Walker, Lewis M. Norton (Eds.): Proceedings of the 1st International
Joint Conference on Artificial Intelligence, Washington, DC, p 715, May 1969.

4 Warren Teitelman, Larry Masinter, "The Interlisp Programming
Environment", Computer (IEEE) 14:4:25-33, April 1981.
doi:10.1109/C-M.1981.220410 pdf

5 Guy L. Steele Jr., Richard P. Gabriel, "The Evolution of Lisp", in
History of programming languages---II, 1996, ISBN 0-201-89502-1
doi:10.1145/234286.1057818, p. 16. pdf

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Why not depose Shin Nishibori too?
Authored by: IMANAL_TOO on Sunday, April 14 2013 @ 07:38 AM EDT
"Shin Nishibori, the designer Apple hired from Sony to create a Sony-inspired iPhone prototype, no longer works for Apple and Nishibori’s lawyer wrote in a letter to the court yesterday that his client has no plans to testify in the upcoming trial."
See also PJs comments.

Shin Nishibori may still be relevant I guess. And, it seems to be possible to depose people in Japan.



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Command history in 1978 csh(ell)
Authored by: knarf on Sunday, April 14 2013 @ 06:15 PM EDT
According to the Oracle of Truth command history was added to the C shell in 1978 by Bill Joy.

This somewhat pre-dates the fruitPhone if I'm not mistaken?

[ "Omnis enim res, quae dando non deficit, dum habetur
et non datur, nondum habetur, quomodo habenda est." ]

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Why bother with Prior Art?
Authored by: ukjaybrat on Monday, April 15 2013 @ 10:36 AM EDT
How did this even pass the non-obviousness test? This is
absolutely ridiculous.


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