Elan Microelectronics Corporation v. Apple, Inc.

Filing 111

Supplemental Declaration of Sean P. DeBruine in Support of Elan Microelectronics Corporation's Opposition to Apple Inc.'s Opening Claim Construction Brief re 109 filed by Elan Microelectronics Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G) (DeBruine, Sean) (Filed on 6/3/2010) Modified on 6/4/2010 (bw, COURT STAFF).

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Yitai Hu (SBN 248085) ([e-mail]) Sean P. DeBruine (SBN 168071) ([e-mail]) Elizabeth H. Rader (SBN 184963) ([e-mail]) ALSTON & BIRD LLP Two Palo Alto Square 3000 El Camino Real, Suite 400 Palo Alto, California 94306 Telephone: [phone] Facsimile: 650-838-2001 T. Hunter Jefferson (admitted pro hac vice) ([e-mail]) ALSTON & BIRD LLP One Atlantic Center 1201 West Peachtree Street Atlanta, Georgia 30309-3424 Telephone: [phone] Facsimile: 404-881-7777 Attorneys for Plaintiff and Counterdefendant ELAN MICROELECTRONICS CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION ELAN MICROELECTRONICS CORPORATION, Plaintiff and Counterdefendant, v. APPLE, INC., Defendant and Counterclaimant. Case No. 09-cv-01531 RS SUPPLEMENTAL DECLARATION OF SEAN P. DEBRUINE IN SUPPORT OF ELAN MICROELECTRONICS CORPORATION'S OPPOSITION TO APPLE INC.'S OPENING CLAIM CONSTRUCTION BRIEF DATE: TIME: JUDGE: CTRM: June 23, 2010 1:30 p.m. Richard Seeborg 3, 17th Floor

AND RELATED COUNTERCLAIMS

SUPPLEMENTAL DECL. OF SEAN P. DEBRUINE ISO ELAN'S OPPOSITION TO APPLE, INC.'S OPENING CLAIM CONSTRUCTION BRIEF

Case No. 5:09-cv-01531-RS

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

I, Sean P. DeBruine, declare as follows: 1. I am a partner in the law firm of Alston & Bird LLP, counsel to Plaintiff Elan

Corporation ("Elan") in this action. I was also counsel for Elan's predecessor, Elantech Devices Corp. ("Elantech") in Elantech Devices Corp. v. Synaptics, Inc. case no. C06-01839 CRB ("the Synaptics case" or "Synaptics"). I have personal knowledge of the following facts, except as otherwise stated. If called to testify, I could and would testify competently to the matters stated herein. 2. The claim construction proposed by Elantech in the Synaptics case included the

disputed claim language. The parties did not contest that aspect during claim construction or summary judgment. However, the parties did contest Synaptics' proposal that the term "scanning the touch sensor" require that the scan proceed "in scan order." In opposition to that position, Elan raised claim construction arguments consistent with those presented here, namely that the term "following" in the claim limitation "identify a minima following the first maxima" refers only to a conceptual relationship, and does not impose any order on how the method is carried out. See Elantech's Reply Claim Construction Brief at 5 (Exhibit L to my May 7, 2010 Declaration), Dkt. No. 88-12 at 5:5-18. Elantech prevailed on that argument, and no order was imposed in the "scanning the touch sensor" limitation. 3. Throughout the argument on the parties' motions for summary judgment, and

Elan's motion for preliminary injunction, the order of the "identify" steps was not at issue. While certain of the Synaptics' products were found to meet the limitations as construed by the court, there was no dispute or discussion on this point. As such, Elantech would have prevailed, the extent it did, if it had secured the claim construction it advocates here. 4. I was involved in a series of discussions and email exchanges with counsel for

Apple regarding the parties' claim construction positions. Those discussions involved some thirty disputed claim terms or phrases from five different patents. Very shortly before the deadline for filing the parties' Joint Claim Construction Statement, Apple proposed an entirely new construction of the terms "identify a first maxima . . . ," "identify a minima...," and "identify a second maxima ..." appearing in claim 1 of Elan's '352 patent. When Apple provided a revised
SUPPLEMENTAL DECL. OF SEAN P. DEBRUINE ISO ELAN'S OPPOSITION TO APPLE, INC.'S OPENING CLAIM CONSTRUCTION BRIEF

1

Case No. 09-cv-01531 RS

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

draft of the chart setting forth the parties' positions on the '352 patent claims for the Joint Claim Construction Statement, there was no reference to a requirement that the step of "identify[ing] a minima following the first maxima" be performed after the identification of the first maxima. It was not until March 31, 2010 that Apple raised this aspect of its proposed construction, characterizing the omission as a typographical error. Attached hereto as Exhibit A is a true and correct copy of an email I received from Sonal Mehta, counsel for Apple, on March 31, 2010. That email also makes reference to other changes Apple proposed to make to its construction of other claim terms. As Apple notes, I responded to Ms. Mehta on April 8, 2010 indicating that Elan did not agree to include this limitation in its proposed construction. 5. Attached hereto as Exhibit B is a true and correct copy of Elantech's Notice of

Motion and Motion for Partial Summary Judgment of Infringement, filed on November 20, 2007 in the Synaptics case. 6. Attached hereto as Exhibit C is a true and correct copy of Elantech's Reply

Memorandum in Support of Its Motion for Partial Summary Judgment of the '352 Patent, filed on December 28, 2007 in the Synaptics case. 7. Attached hereto as Exhibit D is a true and correct copy of the patent application

filed on November 25, 2003 from the certified file history of U.S. Patent No. 7,495,659 B2 (Bates No. APEL1572-1621) 8. Attached hereto as Exhibit E is a true and correct copy of the April 12, 2007

Amendment After Final Action Under 37 C.F.R. 1.116, from the certified file history of the '659 patent. I note that either the patent office misfiled the pages of this document, or the pages were taken out of order in the reproduction process when produced by Apple. In Exhibit C, we place the document in its original order, such that the Bates numbers are non-sequential. APEL 28362849. 9. Attached hereto as Exhibit F is a true and correct copy of the Court's October 6,

2008 Order on Stipulation to Extend Fact Discovery Cutoff Date and Remaining Deadline, filed in the Synaptics case.

SUPPLEMENTAL DECL. OF SEAN P. DEBRUINE ISO ELAN'S OPPOSITION TO APPLE, INC.'S OPENING CLAIM CONSTRUCTION BRIEF

2

Case No. 09-cv-01531 RS

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

10.

Attached hereto as Exhibit G is a true and correct copy of the Court's November 12,

2008 Stipulated Order Dismissing Action with Prejudice, filed in the Synaptics case. I swear under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on June 2, 2010, at Palo Alto, California.

/s/ Sean P. DeBruine Sean P. DeBruine
LEGAL02/31948926v1

SUPPLEMENTAL DECL. OF SEAN P. DEBRUINE ISO ELAN'S OPPOSITION TO APPLE, INC.'S OPENING CLAIM CONSTRUCTION BRIEF

3

Case No. 09-cv-01531 RS