Jack B. Blumenfeld, Esquire, Rodger D. Smith II, Esquire, and Jeremy A. Tigan, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Plaintiff. Of Counsel: Steven M. Bauer, Esquire, Justin J. Daniels, Esquire, Safraz W. Ishmael, Esquire, Kenneth Rubenstein, Esquire, Anthony C. Coles, Esquire, and Alan Federbush, Esquire of Proskauer Rose LLP.
Richard K. Herrmann, Esquire, Mary B. Matterer, Esquire, and Kenneth L. Dorsney, Esquire of Morris James LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel: Ruffin B. Cordell, Esquire, and Frank E. Sherkenbach, Esquire of Fish & Richardson P.C., and George A. Riley, Esquire, and Luann L. Simmons, Esquire of O'Melveny & Myers LLP.
SUE ROBINSON, District Judge.
Plaintiff MobileMedia Ideas, LLC ("MobileMedia") filed this patent infringement suit against Apple Inc. ("Apple") on March 31, 2010, alleging in its amended complaint infringement of sixteen patents, including U.S. Patent No. RE 39, 231 ("the '231 patent"). (D.I. 1; D.I. 8) Apple raised affirmative defenses of, inter alia, non-infringement, invalidity, unenforceability, failure to state a claim, "waiver, laches and/or estoppel, " prosecution history estoppel, and lack of standing. (D.1. 10 at ¶¶ 114-23) Apple also asserted counterclaims for declaratory judgment of non-infringement. ( Id. at ¶¶ 124-208)
On November 8, 2012, the court issued a memorandum opinion and order construing several disputed claim limitations and resolving the parties' motions for summary judgment of infringement and invalidity of the remaining patents-at-issue. (D.I. 461; D.I. 462) In relevant part, the court found non-infringement of the '231 patent. The court also found that a question of fact precluded any summary judgment finding regarding validity of claims 2, 3, 4, and 12 ("the asserted claims") of the '231 patent. Currently before the court is MobileMedia's motion for reargument regarding the '231 patent. (D.I. 469)
A. The Parties
MobileMedia is a Delaware LLC with its principal place of business in Chevy Chase, Maryland. (D.I. 8 at ¶ 1) It obtained the patents-in-suit in January 2012 from Nokia Capital, Inc. and Sony Corporation of America pursuant to two Patent Purchase Agreements. (D. I. 228, ex. D; ex. G) Apple Inc. is a California corporation with its principal place of business in Cupertino, California. (D.I. 10 at ¶ 2) It designs, manufactures, markets, and sells the accused products. ( Id. )
B. The '231 Patent
The '231 patent, titled "Communication Terminal Equipment and Call Incoming Control Method, " reissued on August 8, 2006. An ex parte reexamination resulted in a reexamination certificate that issued April 3, 2012. The reexamination certificate cancelled claims 1, 11, 13-16, and 18-23, determined claims 2-4, 8, 12, and 17 to be patentable as amended, and added new claims 24-29. MobileMedia has alleged that Apple's iPhone 3G, iPhone 3GS, iPhone 4 products infringe the asserted claims of the '231 patent. (D.I. 8)
The '231 patent aims "to provide a communication terminal equipment which is superior in selecting and handling properties for users...." ('231 patent, col. 1:43-46) Conventionally, a "call incoming on a telephone is informed by means of an alert sound, " but the alert sound "does not stop ringing before a user effects [a] next operation." (/d., col. 1:17-20) A user who cannot respond to an incoming call has only the option to forcibly disconnect the incoming call, turn off the telephone, or allow the alert sound to continue ringing. ( Id., col. 1:20-25) The first two options, forcibly disconnecting the incoming call or turning off the telephone, may give the person on the call origination side an "unpleasant feeling because [he or she] can notice that the circuit was broken off intentionally" or may give the person the impression that the telephone network has failed. (/d., col. 1:26-30, 39-42) Moreover, a user who turns off the power may forget to turn the power back on and miss subsequent incoming calls. ( Id., col. 1:37-39) On the other hand, the third option, allowing the alert sound to continue ringing, may disturb the user or other persons in the surrounding environment. ( Id., col. 1:3-33)
In light of these problems, the invention discloses a telephone in which an alert sound muting or volume reducing function is allotted to a key. ( Id., col. 2:2-5, 4:40-42, 5:12-17) When the telephone receives an incoming call, the user can use a predetermined operation, such as depressing a key for a short time, to prompt the "alert on/off controller" to stop generation of the alert sound. ( Id. ...