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. 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.
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.
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.” 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.
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.
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.
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:
ORDER GRANTING SAMSUNG’S UNOPPOSED MOTION FOR ISSUANCE OF COMMISSION TO CONSULAR OFFICER TO TAKE DEPOSITION IN JAPAN PURSUANT TO ARTICLE 17 OF THE UNITED STATES – JAPAN CONSULAR CONVENTION
TO ANY CONSUL OR VICE CONSUL OF THE UNITED STATES,
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:
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