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1 September 2013PatentsYoshitaka Sonoda

Lessons in claim construction from Apple v Samsung

The plaintiff Apple holds a patent (Japanese patent no. 4204977) entitled ‘Intelligent Synchronization Operation for Media Player,’ claiming the following.

A method for synchronising media contents of a media player with a host computer, said method comprising:

•  Detecting connection of the media player to the host computer;

•  The media player storing player media information;

•  The host computer storing host media information;

•  The player media information and the host media information comprising, for each media item, which is one content capable of being played by the media player, at least a title, artist name and quality characteristics as attributes of the media item;

•  The quality characteristics including at least one of bit rate, sample rate, equalisation setting, volume adjustment and total time; and

•  (A) Comparing the player media information with the host media information to determine whether they match or do not match, and if they do not match, synchronising the media contents so that they match.

The defendant imports and sells a product corresponding to a media player. The media player determines whether or not player media information and host media information match by comparing their file sizes. The plaintiff sued for damages on the grounds that the defendant’s actions constitute contributory infringement of the patent.

Issues

Regarding feature (A), the plaintiff asserted that determining whether or not player media information and host media information match by comparing the ‘file sizes’ contained therein is covered by the patent in question. The defendant responded that the patented method requires the media information to include at least the title, artist name and quality characteristics, and the media contents are synchronised if any one of them is different.

The plaintiff argued that (1) the specification describes that not all the media information needs to be compared to determine whether synchronisation is necessary, and further, that (2) when considering that the media information to be compared is limited to title and artist name in one of the independent claims, the media information to be compared in other independent claims not including this limitation should be interpreted as possibly including other media information.

"As long as the recitations of the claims are clear, the invention must be construed on the basis of the claim recitation alone, even if the specification contains contradictory descriptions."

The plaintiff also pointed out that file size is connected to bit rate and total time, and therefore can be considered to be media information. In response, the defendant argued that media information is information that is specific to media such as audio, video or images, so that common file information that is included in general data files such as word processor or spreadsheet files cannot be considered to be media information.

Ruling

The present invention addresses the problems of reliability and slowness of processing in synchronisation methods based on comparison of information such as file names and dates of update used in common files such as conventional data files.

It aims to provide efficient and intelligent synchronisation by overcoming such problems especially for media files, by focusing on ‘media information’ such as attributes including title and artist name, or quality characteristics such as bit rate, sample rate and total time instead of the kind of file information that is contained in common files, and synchronising media items based on comparisons of such ‘media information’.

Therefore, the expressions ‘media’ and ‘media item’ in the present invention refer to content that can be played on a media player such as music, video or images, and ‘media information’ refers to attributes or characteristics of such media and media items, among which at least the title, artist name and quality characteristics must be included.

On the other hand, ‘file size’, like file name and file update date, is generally associated with common files such as word processor and spreadsheet files, and it cannot be considered to be information that is specific to media items such as music files, so it does not constitute ‘media information’.

Furthermore, the meaning of ‘media information’ cannot be considered to be generally established even in view of the evidence submitted by the plaintiff. Even if the expression ‘media information’ were used in one of the references and ‘size’ were included as a species thereof, that is not sufficient to conclude that this is commonly accepted in the art.

Since both ‘the player media information’ and ‘the host media information’ in the claims use the definite article, they must be interpreted to be based on antecedent recitations, and therefore to include ‘at least a title, artist name and quality characteristics as attributes of the media item’.

The specification describes that as long as specific media attributes match, the media items can be considered to be the same (and therefore will not be synchronised) even if they differ in other attributes or characteristics and are not exact copies. However, as described above, the ‘media information’ clearly must include the title, artist name and quality characteristics, and all of these must be compared according to the claim language, so the claim must not be construed in the absence of this feature.

The plaintiff argued that when considering that the ‘media information’ to be compared is limited to ‘title and artist name’ in one of the independent claims, the ‘media information’ to be compared in other independent claims not including this limitation should be interpreted as possibly including ‘media information’ other than ‘title and artist name’. However, this argument is unpersuasive, because it is possible to make the interpretation that all the ‘media information’ must be compared in the claims that do not recite specific ‘media information’.

Typical techniques

This ruling by the IP High Court exemplifies some typical claim construction techniques that are commonly used in Japanese courts seeing infringement cases.

When construing claims, it is first considered whether or not the language can be clearly understood by those skilled in the art. If the language is not clear, the meaning is construed in accordance with the description in the specification. While the meaning of the expression ‘media information’ was at issue in the present case, the expression was construed not only based on the claim recitation, but also in terms of its purpose in view of its relationship to the problem addressed by the present invention described in the specification, with reference to the entire description.

As long as the recitations of the claims are clear, the invention must be construed on the basis of the claim recitation alone, even if the specification contains contradictory descriptions. In this case, although the specification describes that media can be determined to match as long as specific media attributes match, the court found that the claims could be read as requiring that all ‘media information’ match.

Furthermore, the reasoning process wherein the construction of one claim is used to construe another claim was not allowed, at least in the present case.

In other words, the fact that one independent claim clearly recited ‘comparison of title and artist name’ was ruled to be inadequate to derive the suggestion that other independent claims not including such a recitation could compare ‘media information’ other than the ‘title and artist name’.

This interpretation by the IP High Court carries the possibility of denying the interpretation that the scope of an independent claim must always be broader than the scope of a dependent claim dependent on that independent claim, which has been established by claim construction techniques in the US.

Yoshitaka Sonoda is a partner at Sonoda & Kabayashi. He can be contacted at: ysonoda@patents.jp

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