IP Law Daily Apple’s iPhones could have infringed method for controlling call alert sound
Tuesday, April 12, 2016

Apple’s iPhones could have infringed method for controlling call alert sound

By Thomas Long, J.D.

Patent holder MobileMedia Ideas, LLC, can go forward with claims that Apple’s iPhones infringed a patent for a method of stopping or reducing the sound made to alert a phone’s user to an incoming call, without notifying the caller, the federal district court in Wilmington, Delaware, has decided. Apple failed to persuade the court that it was entitled to summary judgment of patent invalidity and noninfringement (MobileMedia Ideas, LLC v. Apple Inc., April 11, 2016, Robinson, S.).


MobileMedia’s U.S. Patent No. RE 39,231 (“the ’231 patent”), titled “Communication Terminal Equipment and Call Incoming Control Method,” disclosed a communication device, such as a mobile phone, that permitted a user to stop a ringtone alert for an incoming call without notifying the caller. In one embodiment, a user could press the phone’s power key for some amount of time in order to stop the ringtone sound without ending the call (“stop alert sound”). In another embodiment, pressing the phone’s power key reduced the volume of the ringtone sound (“reduce volume of alert sound”).

Infringement Allegations

MobileMedia contended that Apple’s iPhone 3G, iPhone 3GS, and iPhone 4 infringe claims 2-4 and 12 of the ’231 patent. The district court granted Apple's motion for summary judgment of noninfringement, finding that under its construction of the claim term “to change a volume of the generated alert sound,” the accused iPhones did not practice the limitation of “said control means controls said alert sound generator to change a volume of the generated sound.” The Federal Circuit held that the district court’s claim construction was erroneous and vacated the judgment of noninfringement. According to the Federal Circuit, consistent with the specification, “controlling the alert sound generator to change a volume of the generated alert sound” by the “control means” encompassed both stopping and reducing the volume of the alert sound as recited in dependent claims 2 and 3, respectively. On remand, Apple moved for summary judgment of invalidity and noninfringement of the ’231 patent.

Invalidity for Indefiniteness

Apple contended that three claims terms were invalid for indefiniteness under 35 U.S.C. §112, ¶6: (1) “an alert sound generator for generating an alert sound when the call is received from the remote caller”; (2) “control means for controlling said alert sound generator”; and (3) “RF signal processing means for transmitting and/or receiving radio waves.” The court rejected Apple’s contentions with respect to all three claim terms.

“An alert sound generator for generating an alert sound when the call is received from the remote caller.” The specification described figure 2 of the patent as “a block diagram showing an example of the inner circuit of the communication terminal equipment according to the present invention.” Figure 2 disclosed a box labeled “Alert Sound Generator 13”; the specification explained that “alert sound generator” was used to make a sound when an incoming call was detected. The term “generator” was not found elsewhere in the specification. The parties disputed whether the “alert sound generator” was sufficient structure, as described. In the court’s view, expert testimony indicated that a person of skill in the relevant art would understand that the limitation would involve “the speaker and the signal that needs to be generated in order to provide that transducer with the ability to create that particular sound.” Consistent with the expert’s opinion, the court concluded that those of skill in the art would recognize the structure in the specification and associate it with the corresponding functions of the claim.

“Control means for controlling said alert sound generator.” The specification stated that the invention’s inner circuit is constituted by a CPU that controlled other parts of the inner circuit. The CPU detected an incoming call and performed control to turn on an alert on/off controller to make an alert sound generator generate an alert sound. The specification also described how the CPU controlled the device to stop the alert sound.

Apple argued that the specification failed to disclose an algorithm or that the specification’s disclosures were insufficient. The court disagreed, finding that the specification disclosed the process by which the corresponding structure performed the given function.

“RF signal processing means for transmitting and/or receiving radio waves.” The specification disclosed a box labeled “RF signal processing” in figure 2. In the court’s view, the specification adequately described the function and the structure for performing the function. A skilled artisan would understand that the “RF signal processing” language referred to RF signal processing circuitry, the court said.


Apple argued that MobileMedia failed to identify specific structures in the infringing products that meet the “alert sound generator” and “control means” limitations. However, MobileMedia’s expert opined that, if the claim limitations were construed as means-plus-function limitations, “the iPhone Products meet [the alert sound generator] element as construed by Apple. … [T]hey include a generator that generates the alert sound when a call is received from a remote caller, that includes a receiver and a speaker.” The iPhone Products “meet [the control means] element as construed by Apple because they include a processor executing the software cited above that performs the function of controlling the alert sound generator in the iPhone Products.” The fact that Apple (through attorney argument only) considered the expert’s disclosures to be insufficient did not provide the court with a record on which to enter judgment of noninfringement. Accordingly, Apple failed to meet its burden of persuasion, and the court denied the motion for summary judgment.

The case is No. 1:10-cv-00258-SLR.

Attorneys: Jack B. Blumenfeld, Rodger D. Smith II, and Jeremy A. Tigan (Morris, Nichols, Arsht & Tunnell LLP) for MobileMedia Ideas, LLC. Richard K. Herrmann and Mary B. Matterer (Morris James LLP) for Apple Inc.

Companies: MobileMedia Ideas, LLC; Apple Inc.

MainStory: TopStory Patent DelawareNews

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