Elan Microelectronics Corporation v. Apple, Inc.

Filing 104

Declaration of Nathan Greenblatt in Support of Apple's Responsive Claim Construction Brief re 103 filed by Apple, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J) (Powers, Matthew) (Filed on 6/2/2010) Modified on 6/4/2010 (bw, COURT STAFF).

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EXHIBIT C 1 2 3 4 5 6 7 8 9 10 corporation existing under the laws of FILED HAP, 1 3 2008 RICHARD W. WIEKING CLERK, U.S, DISTRICT OOURT NORTHERN DISTRICT OF CALIFORNIA .IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA ELANTECH DEVICES CORP., a Plaintiff, SYNAPTICS, INC., a Delaware co.rporation; and AVERATEC, INC., a California corporation, Defendants. Elantech Devices Corp. ("Elantech") filed suit against Synaptics, Inc. ("Synaptics") for infringement of U.S. Patent No. 5,825,352 ("the '352 patent"). Synaptics counterclaimed No. C 06-01839 CRB MEMORANDUM AND ORDER FILED UNDER SEAL Tafwan, R.O.C., 19 20 21 22 23 24 25 26 27 28 for infringement of U.S. Patents No. 5,880,411 ("the '411 patent"), No. 5,943,052 ("the '052 patent"), No. 5,543,592 ('~he '592 patent"), and No. 6,380,931 ("the '931 patent"). Now pending before the Court are Elantech's motion for partial summary judgment and Elantech's motion for preliminary injunction. Elantech argues that Synaptics's touchpad products implementing Type 2 Code infringe Claim 18 of the '352 patent as a matter of law. Elantech's motion for preliminary injunction seeks to enjoin Synaptics from infringing the '352 patent byimporting, making, using, selling, or offering to sell its touchpad products implementing Type 2 Code. A 50 ELN038522 ! !. 2 3 BACKGROUND A. Procedural History The Court previously construed eight terms from the asserted patents as selected by 4 the parties, including four terms from Elantech's '352 patent, See generally Claim Construction Order, April 6, 2007. 6 After the Claim Construction Order issued, Synaptics moved for summary judgment of noninfringement of the '3:52 patent. Elantech cross-moved for summary judgment of infringement. In its October 26, 2007 Memorandum and Order Re: Summary Judgment 9 Motions ("October 26 Order"), the Court granted Synaptics's motion for partial summary lO judgment of noninfringement for those devices implementing Type 1 Code, but denied II Synaptics's motion as to devices implementing Type 2 Code. The Court also denied 12 Elantech's motion for summary judgment of infringement for all Accused Touchpads on the 13 ground that Accused Touchpads that implement Type 1 Code do not infringe claim 18 of the 14 '352 patent. The Court explained: "The Court would grant summary judgment of infringement for Accused Touchpads implementing Type 2 Code and having enabled finger 16 counting functionality, but Elantech did not move for partial summary judgment; instead, its 17 motion seeks judgmenton all Accused Touchpads without distinction." October 26 Order at 15:21-24. Elantech accordingly has now moved for summary judgment of infringement for 19 Accused Touchpads implementing Type 2 Code. 2O 21 B. The '352 Palent The '352 patent, entitled "Multiple Fingers Contact Sensing Method for Emulating 22 Mouse Buttons and Mouse Operation on a Touch Sensor Pad," discloses methods and 23 apparatus for recognizing the presence of multiple fingers on a touchpad and emulating various mouse functions. Claim 18 is an independent claim which discloses "a touch sensor for detecting the Operative coupling of multiple fingers." The claim recites two elements, a 26 "means for scanning the touch sensor to (a) identify a first maxima in a signal corresponding 2~ to a first finger, (b) identify a minima following the first maxima, and identify a second 28 maxima in a signal corresponding to a second finger following said minima" and a "means A 51 ELN038523 for providing an indication of the simultaneous presence of two fingers in response to 2 identification of said first and second maxima." MOTION FOR PARTIAL SUMMARY JUDGMENT OF INFRINGEMENT 3 II. In its motion for partial summary judgment, Elantech asks that judgment be entered 4 1 5 confirming that Synaptics's touchpads using Type 2 Code with multiple finger detection 6 enabled infringe claim 18 of its '352 patent. 7 8 A. Legal Standard for Summary Judgment Summary judgment is appropriate when there is no genuine issue as to any material 9 fact and the moving party is entitled to judgment as a matter of law. Summary judgment is 10 improper "if the evidence is such that a reasonable jury could return a verdict for the 11 normaoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). An issue is 12 "genuine" only if there is sufficient evidence for a reasonable fact finder to find for the 13 non-moving party. See id. at 248-49. A fact is "material" if the fact may affect the outcome 14 of the case. See id. at 248. "On summary judgment, the evidence must be viewed in the light 15 most favorable to the party opposing the motion, with doubts resolved in favor of the 16 nonmovant." Crown Operations Intemation.al, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 17 (Fed. Cir. 2002) (citations omitted). 18 19 B. Act of Infringement in the United States 35 U.S.C. 271(a) states that "whoever without authority makes, uses, offers to sell, 20 or sells any patented invention, within the United States or imports into the United States any 21 patented invention during the term of the patent therefor, infringes the patent." In general, 22 sales made outside the United States do not constitute patent infringement. See Microsoft 23 Corp, v. AT&T Corp., 127 S. Ct. 1746, 1750(2007). Synaptics argues that Elantech has presented no evidence of sales of infringing 25 product in the United States. The Court is not persuaded. In order to demonstrate that 26 Synaptics's touchpads could infringe, Elantech engineers purchased computers with 27 Synaptics's touchpads in the United States. October 26 Order at 10:19-22; Declaration of 28 Teng-Yen Wu in Support of Eiantech's Motion for Summary Judgment of Infringement, 3. 24 A 52 ELN038524 1 Such evidence supports an inference of sales of the infringing product in the United States. 2 Synaptics does not offer any evidence to dispute that inference. In light of this undisputed 3 evidence, Elantech has met its burden of establishing an act of infringement within the 4 United States. 5 C. Synaptics Products Implementing Type 2 Code Literally Infringe Claim 18 1. Legal Standard for Literal Infringement 6 7 To determine infringement, the asserted claim must be compared to the allegedly 8 infringing method or device. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 9 (Fed. Cir. 1995). To establish literal infringement, every claim limitation, or claim element, I0 must be found in the accused subject matter. Wamer-Jenkinson Co. v. Hilton Davis 11 Chemica!..Co., 520 U.S. 17, 29, 40 (1997). Thus, establishing that the accused method or 12 device does not satisfy one claim limitation would support a finding of noninfringemento ld__.~. 13 The patentee must prove infringement by a preponderance of the evidence. Bayer AG v. 14 Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). 15 Determining infringement is a two-step process involving: 1) construing the patent 16 claims and 2) determining whether infringement occurred. Markman v. Westview 17 Instruments, Inc., 517 U.S. 370, 384 (1996). 18 19 2. Means-Plus-Function Claims Require Comparison of Structures 35 U.S.C. 112, 6 permits "means-plus-function" claims, which allow an element in 20 a claim with a combination of elements to be expressed as a "means" that performs a recited 21 function rather than be expressed as a specific structure. However, the statute also limits 22 how the "means" may be interpreted, In order to prevent the claim from reading on an 23 unlimited number of structures, the claim must be interpreted in accordance with the statute: 24 "such claim shall be construed to cover the corresponding structure, material, or acts 25 described in the specification andequivalents thereof." 35 U.S.C. 112, 6. If the written 26 description of the patent fails to disclose the "corresponding structure" for the means recited 27 in the claim, the claim will be found invalid for failure "to particularly print out and 28 distinctly claim the invention." In re Donaldson Co., Inc., 16 F.3d 1189, ! 195 (Fed. Cir. A 53 ELN038525 ! 1994). 2 In order to find literal infringement, the structure disclosed in the written description 3 must be identical or equwalent to an identified structure in the accused device. JVW Enters. 4 v. Interact Accessories, Inc., 424 F.3d 1324, 1333 (Fed. Cir. 2005). Restated, a "structure in the accused device must perform the claimed function in substantially the same way to 6 achieve substantially the same result as the structure in the written description." Id. (quoting 7 Odetics, Inc.v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Ted. Cir. 1999)). 8 Claim 18 of the '352 patent involves two elements written in means-plus-function 9 form. The first element is a "means for scanning the touch sensor... ," while the second 10 element is a "means for providing an indication of the simultaneous presence of two fingers 11 in response to identification of said first and second maxima." (Emphasis added). 12 Synaptics argues that structures corresponding to the "means for providing an 13 indication" have not been identified in either the written description of the patent or in the 14 accused device. 15 Elantech has satisfactorily identified a structure in the written description that 16 performs the function of"providing an indication." The written description of the '352 17 patent discloses the microcontroller 60 which governs the operation of the touchpad. '352 18 patent at 5:32-25. 19 Elantech has also satisfactorily identified a structure in the accused device which 20 serves as a "means for providing an indication." As the Court previously concluded, the 21 execution of the OneAxis routine "satisfies the 'providing an indication' claim limitation." 22 October 26 Order at 11:12-15. Therefore, Elantech has satisfactorily identified the structures 23 in both the written description of the '352 patent and in the accused device that correspond to 24 both means-plus-function elements of claim 18, defeating Synaptics's indefiniteness 25 argument. 26 27 3. Claim Construction Claim 18 of the '352 patent claims "a touch sensor for detecting the operative 28 coupling of multiple fingers" with two means-plus-function elements. The first element, A 54 ELN038526 1 "means for scanning" has three sub limitations (a)-, which were construed to mean (a) 2 "identify a first peak value in a finger profile obtained fi'om scanning the touch sensor," (b) 3 "identify the lowest value in the finger profile that occurs after the first peak value, and 4 before another peak value is identified," and "after identifying the lowest value in the finger profile, identify a second peak value in the finger profile." Claim Construction Order at 15:1-7. 7 The second element, "means for providing an indication of the simultaneous presence 8 of two fingers," was not construed in the Claim Construction Order but was defined in the 9 October 26 Order at 6:18-7:28. The Court determined that the claim requires an "affirmative 10 step to provide an indication of multiple fingers," but "does not require that the 'indication' 11 of two fingers be returned to the host." Id__.~ at 7:26-28. 4. Comparison of Structures for Infringement 13 Synaptics's touchpads implementing Type 2 Code infringe claim 18 of Elantech's limitations at issue are the "means for scanning" element, including its sublimitations 14 '352 patent only if the accused devices include each limitation of the claim. The claim 16 requiring identification of maxima and minima, and the "means for providing an indication" 17 element. 18 "Means for Scanning" 19 The Court previously denied Synaptics's motion for summary judgment of 2O noninfringement for touchpads that implement Type 2 Code because each limitation of the 21 "means for scanning" element is found within the "bitpattem" or "bit vector" algorithm used 22 in the buildPe .~.kBitsPattern routine. October 26 Order at 14:5-15:14. Specifically, "a' 01' 23 pattern' in this vector identifies the presence of a maximum and a' 10' pattern identifies the 24 presence of a minimum." Id._.. at 14:12-13. 25 Synaptics's assertion that Type 2 Code does not perform a necessary "analysis', of the bit array to identify the presence of a minima has previously been considered and refuted by 27 the Court. Id._= at 14:22-25 (holding that the "asserted claims do not require an 'analysis' or 28 'indication' of the minima or lowest value; the claims only require that the minima or lowest A 55 ELN038527 1 value is 'identified,' and Type 2 Code identifies a minimum or lowest value at the' 10' 2 transitions"). 3 Synapties also argues that Type 2 Code does not identify the location of the minima 4 nor identify specific minima and therefore cannot infringe. This argument is based on 5 additional claim limitations that the Court previously considered and rejected. The Court 6 declined to read into the term "minima" any additional position information. Claim 7 Construction Order at 14:1-23. This argument must again be rejected. 8 In summary, Eiantech has established as a matter of law that the sublimitations of the 9 "means for scanning" element are met by Synaptics's touchpads implementing Type 2 Code. 10 "Means for Providing an Indication" 11 The "means for providing an indication" element requires an "affirmative step to 12 provide an indication of multiple fingers," but "does not require that the 'indication' of two 13 fingers be returned to the host.'.' October 26 Order at 7:26-28. As discussed su_p.p_.~, Elantech 14 has satisfied its burden of identifying corresponding structures in the written description and 15 in the accused device for ~dais means-plus-function element. 16 As there is no genuine issue as to any material fact that each element of claim 18 of 17 the '352 patent is found within Synaptics's touchpads implementing Type 2 Code, Elantech's 18 motion for partial summary judgment of infringement for these devices is granted. .19 III. 20 MOTION FOR PRELIMINARY INJUNCTION Elantech seeks to enjoin Synaptics from infringing the '352 patent by importing, Preliminary injunctions are "issued to protect the patent owner's rights during the time 21 making, using, selling, or offering to sell its touchpads implementing Type 2 Code. 22 23 of the law suit." 7-20 Donald S. Chisum, Chisum on Patents 20.04 (2007). District courts 24 have discretion under 35 U.S.C. 283 to grant or deny preliminary injunctions. 25 Amazon.corn, Inc. v. Barnesandnoble.com, 239 F.3d 1343, 1350 (Fed. Cir. 2001). In 26 deciding whether to grant a preliminary injunction, district courts should consider the same 27 equitable factors that apply in other areas of the law. Abbott Labs. v. Andrx 28 Pharmaceuticals, Inc., 452 F.3d 1331," 1334 (Fed. Cir. 2006). The moving party must A 56 ELN038528 1 2 3 4 5 6 7 8 9 10 establish its right to a preliminary injunction in light of these four factors: "(I) a ~'easonable likelihood of success on the merits; (2) irreparable harm if the injunction is not granted; (3) a balance of hardships tipping in its favor; and (4) the injunction's favorable impact on the public interest." Amazon.com, 239 F.3d at 1350 (~ Reebok International. Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1555 fled. Cir. 1994)). Ofthese four factors, the first two are the most important; a movant cannot be granted a preliminary injunction without findings by the district court that the movant carried its burden in establishing a reasonable likelihood of success on the merits and irreparable harm. Reebok International, 32 F.3d at 1556 (~ ..H.ybfitech, Inc. v. Abbott Lobs., 849 F.2d 1446, 1451, 1456 (Fed. Cir. 1988)). A. Likelihood of Success 19 20 21 22 23 24 25 The first equitable factor, a reasonable likelihood of success, requires a showing of validity and infringement. Id__~. at 1555 ~ Hybfitech, 849 F.2d at 1451). An accused infringer may successfully challenge a motion for preliminary injunction by raising a "substantial question" concerning validity, enforceability, or infringement. Abbott Labs., 452 F.3d at 1335 n.2. However, no "substantial question" is raised if the patent holder can show that the proffered defense "lacks substantial merit." Id_.~. 1. Validity In the context of a preliminary injunction motion, "[t]he showing of a substantial question as to invalidity.., requires less proof than the clear and convincing showing necessary to establish invalidity itself." ld__~. On the other hand, "a patentee need not establish the validity of a patent beyond question'"but must "present a clear case supporting the validity of the patent in suit." Id. Synaptics challenges the validity of the '352 patent on the grounds of indefiniteness and obviousness. a. Indefiniteness 26 Synaptics's fast attempt to raise a "substantial question" of validity challenges claim 27 18 of the '352 patent on the grounds of indefiniteness. This argument is essentially identical 28 to the previous issue involving infringement of means-plus-function claims. As the Court A 57 ELN038529 ! discussed, neither means-plus-function element of the claim is fatally indefinite because 2 sufficient structures have been identified in both the written description and in the accused 3 device. Se._ge su_.qp~ . 4-5. 4 5 b, Obviousness Next, Synaptics seeks to raise a "substantial question" of validity on the grounds of 6 obviousness. The Court's analysis of obviousness begins with 35 U.S.C. 103(a), which 7 forbids the issuance of a patent when "the differences between the subject matter sought to 8 be patented and the prior art are such that the subject matter as a whole would have been 9~ obvious at the time the invention was made to a person having ordinary skill in the art to 10 which said subject matter pertains." In an invalidity challenge against an issued patent, the ll Court begins its analysis with 35 U.S.C. 282, which states that "an issued patent is 12 presumed valid." KSR International Co. v, Teleflex Inc., 127 S. Ct. 1727, 1737 (2007). 13 However, even issued patents may be challenged for obviousness using the framework 14 described in John Deere, which describes the relevant factors of: (1) the scope and content of 15 the prior art, (2) the differences between the prior art and the claims at issue, and (3) the level 16 of skill in the pertinent art. Id._.~. at 1729-30 (citing ..Graham v. John Deere Co. of Kansas C~ty, 17 383 U.S. 1, 17-18 (1966)). 18 In KSR International, the Supreme Court further elucidated the analysis necessary to 19 determine "whether a patent claiming th~ combination of elements of prior art is obvious." 20 KSR International, 127 S. Ct. at 1740. The Court recognized that "a patent composed of 21 several elements is not proved obvious merely by demonstrating that each of its elements 22 was, independently, known in the prior art." Id. at 1741. Nonetheless, a "combination of 23 familiar elements according to known methods is likely to be obvious when it does no more 24 than yield predictable results." ld..=, at 1739. The Court rejected the Federal Circuit's TSM 25 (teaching-suggestion-motivation) test in favor of"an expansive and flexible approach," 26 holding: "[i]n determining whether the subject matter of a patent claim is obvious, neither the 27 particular motivation nor the avowed purpose of the patentee controls. What matters is the 28 objective reach of the claim. If the claim extends to what is obvious, it is invalid under A 58 ELN038530 I 103." ld._~, at 1739, 1741-42. Therefore, a court should look at the "interrelated teachings of 2 multiple patents; the effects of demands known to the design community or present in the 3 marketplace and the background knowledge possessed by a person having ordinary skill in 4 the art, all in order to determine whether there was an apparent reason to combine the known 5 elements in the fashion claimed by the patent at issue." Id.__~. at 1740-41. However, "this 6 analysis should be made explicit;" "mere conclusory statements" are insufficient to support ? the legal conclusion of obviousness, instead "there must be some articulated reasoning with 8 some rational underpinning." ld, at 1741 (eia__i.i.i.i.i.i.i~g In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 9 lO~ II 2006)). Synaptics argues that claim 18 of the '352 patent is obvious because pdor art discloses each element of the claim, specifically "touch sensors detecting multiple fingers, .... se of u 12 maxima values," "identifying a minima," and "providing an indication of the simultaneous 13 presence of two fingers." Synaptics relies on two patents as prior art: U.S.. Patent No. 14 7,109,978 B2, assigned to Synaptics ("the '978 patent")and U.S. Patent No. 4,686,332,. 15 assigned to IBM ("the '332 patent"). 16 Synaptics's obviousness challenge does not raise a "substantial question" on several can be considered prior art, and whether they were considered by the Examiner. Elantech's 17 independent grounds. First, this Court must determine whether Synaptics's proferred patents 19 '352 patent dates back to its February 28, 1996 filing date. Synaptics asserts that the '978 20 patent, though filed on March 26, 2004, obtains the benefit of an earlier priority date under 21 35 U.S.C. 120 because it is part of a series ofcontinuation and continuation-in-part 22 applications dating back to U.S. Patent No. 5,543,591, filed on October 7, 1994. '978 patent 23 at 1:5-22. However, claims in a continuing application or series of continuing applications 24 must be fully supported by the disclosure of the parent application in order to be entitled to 25 the filing date of the parent. See Lockwood v, American Airlines, Inc., 107 F.3d 1565, 1572 26 (Fed. Cir. 1997). Therefore, to the extent that the claims of '978 patent are not supported by 27 the disclosure of the '591 patent, they would not be entitled to the earlier filing date and 28 cannot be considered prior an against the '352 patent. Alternatively, the claims of the '978 10 A 59 ELN038531 1 patent that are supported by the disclosure of the '591 patent and obtain the benefit of the 2 earlier filing date receive the same analysis as the '332 patent: both the '591 and '332 patents are referenced as prior art in the '352 patent and have been considered by the Examiner. '352 patent at [56]. Synaptics faces a heavier burden in establishing invalidity using these patents: "[w]hen no prior art other than that which was considered by the PTO examiner is 6 relied on by the attacker, he has the added burden of overcoming the deference that is due to 7 a qualified government agency presumed to have done its job ..... Polaroid Corp. v. " Eastman Kodak Co., 789 F.2d 1556, 1560 (Fed. Cir. 1986) (citing American.Hoist & Derrick 9 Co. v. Sowa & Sons, Inc.,, 725 F.2d 1350, 1359 (Fed. Cir. 1984)). 10 il In its attempt to overcome the Examiner's determination of nonobviousness, Synaptics argues both that the Examiner "may not have fully realized the significance of the 12 disclosures" of the '591 patent and that prior art was "mischaractedzed ... in an attempt to 13 overcome rejections during prosecution." After considering Synaptics's arguments, this 14 Court concludes that Synaptics has not overcome the heavy burden of overcoming the 15 deference due to the Examiner; Synapties does not sufficiently explain exactly how the 16 Examiner erred in issuing the patent. Thus, Synaptics's obviousness challenge in reliance of 17 previously considered prior art does not have the "substantial merit" necessary to defeat 18 Elantech's preliminary injunction motion. 19 Second, Synapties fails to cite prior art that involves "identifying a minima." 20 Synaptics states that both the '978 patent and '332 patent disclose devices that generate data 21 from which it is possible to determine both the location and value of a minima. However, 22 Synapties fails to specifically identify where in these patents the minima is identified; 23 instead, Synaptics merely concludes that "this data is sufficient to enable both.the location 24 and the value of a minima following the first maxima to be determined." 25 Lastly, even if"identifying a minima" an~ every other element of the claim was 26 disclosed (separately) by prior art, Synaptics also fails to provide "articulated reasoning with 27 some rational underpinning" from which the Court could determine that it was obvious to 28 combine each of these elements in a single invention. Instead, Synaptics merely points to I1 A 60 ELN038532 1 each individual element of the claim and argues that each element is individually obvious in 2 light of prior art. Thus Synaptics's proffered obviousness defense lacks substantial merit by 3 failing to present an adequate rationale by which a person of ordinary skill in the art would 4 combine the elements that are allegedly present in the prior art to form claim 18. See KSR 5 Internatio..n..a.!, 127 S. Ct. at 1741. 6 8 patent. 9 10 In summary, Synaptics's obviousness defense fails to raise a substantial question of 7 invalidity. Elantech has presented a clear case supporting the validity of claim 18 of the '352 3, Infringement In addition to validity, Elantech also must demonstrate that there is no substantial 11 question as to whether Synaptics has infringed claim 18. Because the Court grants 12 Elantech's motion for partial summary judgment of infringement of claim 18 of the '352 13 patent, Elantech has sufficiently shown a likelihood of success for its preliminary injunction 14 motion. 15 B. Irreparable Harm The second equitable factor in a motion for preliminary injunction is a showing of 16 17 irreparable harm if the injunction does not issue. This factor is closely related to the first 18 factor in patent infringement suits: '~a strong showing of likelihood of success on the merits 19 coupled with continuing infringement raises a presumption of irreparable harm to the 20 patentee." Reebok International, 32 F.3d at 1556; see Abbott Labs., 452 F.3d at 1347. This 21 presumption in patent infringement suits arises because "the principal value of a patent is its 22 statutory right to exeiude," therefore, "the nature of the patent grant weighs against holding 23 that monetary damages will always suffice to make the patentee whole.". Reebo._.._.~k 24 International, 32 F.3d at 1557 (~ Hybril~ech, 849 F.2d at 1457).. 25 However, the presumption of irreparable harm is rebuttable: an alleged infringer may 26 disprove irreparable harm by producing evidence that the patentee would not be harmed if 27 the preliminary injunction does not issue. Id..__, In certain cases, a period of delay prior to 28 seeking a preliminary injunction in a patent infringement suit "may be so significant, in the 12 A 61 ELN038533 I district court's discretion, as to preclude a determination of irreparable harm." Hybritech, 2 849 F.2d at 1457. But "a showing of delay does not preclude, as a matter of law, a 3 determination of irreparable harm," instead "a period of delay is but one circumstance that 4 the district court must consider in the context of the totality of the circumstances." ld._,. The 5 Federal Circuit has also stated that "[a]bsent a good explanation,... 17 months is a 6 substantial period of delay that militates against the issuance of a preliminary injunction by 7 demonstrating that there is no apparent urgency to the request for injunctive relief." Hi_igh 8 Tech Medical Instrumentation, Inc. v. N.e..w Image Indus., Inc., 49 F.3d 1551, 1557 (Fed. Cir. 9 1995). 10 The presumption of irreparable harm may also be rebutted by showing that money 11 damages are an adequate remedy ifa preliminary injunction is not granted. In the context of 12 patent infringement cases, "the nature of the patent grant.., weighs against holding that 13 monetary damages will always suffice to make the patentee whole, for the principal value of 14 a patent is its statutory right to exclude." H.H. Robertson Co. v. United Steel Deck, Inc., 820 15 F.2d 384, 390 (Fed. Cir. 1987), overruled on other grounds by Markman v. Westview 16 Instruments, Inc., 52 F.3d 967, 977 (Fed. Cir. 1995). "This presumption derives in part from 17 the finite term of the patent grant, for patent expiration is not suspended during litigation, and 18 the passage of time can work irremediable harm." Id_~. Preliminary injunctions are thus 19 warranted to deny potential infringers the "opportunity to practice an invention during the 20' notoriously lengthy course of patent litigation." ld__:. However, "there is no presumption that 21 money damages will be inadequate in connection with a motion for an injunction pendente 22 lite." Nutrition 21 v. U.S., 930 F.2d 867, 872 (Fed. Cir. 1991). Instead, "[s]ome evidence 23 and reasoned analysis for that inadequacy should be proffered," such as the few remaining 24 years of patent life. ld._~. (~ H.H. Robertson, 820 F,2d at 390). 25 Lastly, even if a finding of irreparable harm is not rebutted, district courts are not 26 automatically required to grant injunction relief; instead "the decision whether to grant or 27 deny injunction relief rests within the equitable discretion of the district courts," to be 28 "exercised consistent with traditional principles of equity." eBay. Inc. v. MercExchange, 13 A 62 ELN038534 1 L.L.C., 126 S.Ct. 1837, 1841 (2006). 2 Elantech is entitled to a presumption of irreparable harm because it has made a strong 3 showing of likelihood of success: indeed, the Court concludes that Elantech has proven 4 infringement as a matter of law and Synaptics has failed to raise a substantial question of 5 validity. See Reebok., 32 F.3d at 1556-57. Synaptics attempts to rebut this presumption on 6 two grounds: that Elantech has unreasonably delayed in filing its preliminary injunction 7 motion, and that money damages would be adequate. The Court findSthat in the circumstances of this case, neither argument rebuts the presumption. 9 First, Synaptics correctly asserts that delay is "one factor to be considered by a district I0 court in its analysis of irreparable harm." Nutrition 21., 930 F.2d at 871. Synaptics points to 11 a 21-month delay since the lawsuit was filed on March 10, 2006 in order to prove that 12 Elantech has not been irreparably harmed. However, according to Synaptics, "the parties 13 have periodically engaged in settlement discussions over the past two years." Syn. Opp. at 2. 14 Settlement discussions have been recognized as a "good explanation" for the delay in seeking 15 a preliminary injunction.. See High Tech Medical Instrumention, 49 F.3d at 1557; _see also 16 Russell William, Ltd. v. ABC Display and Supply, Inc., No. 88-CV-265, 1989 WL 23947, at 17 *2 (E.D.N.Y. 1989) ("In certain instances, courts have excused delays where the parties were 18 attempting to negotiate a settlement, [or] where the defendant has led the plaintiffto believe 19 that it would cease the infringing conduct."). Moreover, Synaptics is unable to cite any case 20 in which a preliminary injunction has been denied after summary judgment has entered 21 against the party challenging the p~eliminary injunctive relief. 22 ... Synaptics also overemphasizes the statement in Nutrition 21 that there is no 23 presumption that money damages will be inadequate. In Nut.rition 21, the Federal Circuit 24 explained that normally as long as "[s]ome evidence and reasoned analysis for that 25 inadequacy... [is] proffered," a district court may grant a preliminary injunction, but in that 26 case the appellate court overturned the injunction because "an adequate supporting record" 27 had not been made. Nutrition 21,930 F.2d at 871. Elantech's patent will expire in 2016, 20 28 years from its filing date. The '352 patent grant has less than half of its term remaining. 14 A 63 ELN038535 ! This Court also anticipates continuing and protracted litigation; final judgment, and thus 2 permanent injunctive relief, cannot be entered until the Court resolves Synaptics's 3 counterclaims against Elantech. Delaying an injunction until the litigation is concluded 4 .would irreparably harm Elantech by depriving Elantech of part of its patent grant. In addition, because Elantech and Synaptics both sell touchpads, Elantech's lost market share 6 may be difficult to calculate and compensate with money damages. Finally, at oral argument, 7 Synaptics claimed that it is no longer manufacturing touchpads with Type 2 Code so there is 8 no need for an injunction. The short answer is that there is no evidence in the record to 9 support Synpatics's statement. lO !! Considering the totality of the circumstances, the Court trmds that Elantech will suffer irreparable harm if the preliminary injunction does not issue. D. Balance of Hardships The Court finds that the balance of hardships favors Elantech; indeed Synaptics does 12 13 14 not even address this factor. Synaptics, as the larger company with multiple touchpad 15 products, would not be forced Out of business or even out of the touchpad market if the 16 preliminary injunction is granted. But if the preliminary injunction is not granted Elantech's patent could lose its value o~;er the course of litigation. Therefore the balance of hardships 18 favors Elantech. 19 20 E. Public Interest As stated in Abbott Labs., the "public is best served by enforcing patents that are 21 likely valid and infringed." Abbott Labs., 452 F.3d at 1348. Given Elantech's likelihood of 22 success on the merits of validity and infringement, this factor tips in Elantech's favor. 23 Synaptics presents no argument on its behalf as to this factor. 24 In summary, considering each of the equitable factors for a preliminary injunction, the success and irreparable harm. Therefore the Court acts within its discretion and grants 27 Elantech's motion for preliminary injunction enjoining the continuing infringement of its 28 '352 patent by Synaptics's touchpads implementing Type 2 Code. 25 Court finds that on balance the factors favor Elantech, especially in its proof of likelihood of A 64 ELN038536 ! VI. CONCLUSION 2 Elantcch's motion for partial summary judgment Of infringement of claim 18 of the '352 Patent by Synaptie's touchpads implementing Type 2 Code is GRANTED. Elanteeh's for preliminary injunction to enjoin Synapties from infringing the '352 patent by making, using, selling, or offering to sell its touchpad products implementing ~'pe 2 Code is also GRANTED. IT IS SO ORDERED. March I_~_~, 2008 4 5 6 7 8 9 I0 II 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CHARLES R. BREYER UNITED STATES DISTRICT JUDGE 16 A 65 ELN038537

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