Elan Microelectronics Corporation v. Apple, Inc.

Filing 225

Declaration of Derek Walter In Support of Apple Inc.'s Motion to Compel (1) Discovery Relating to US Sales; (2) Documents Improperly Withheld on the Basis of Privilege; and (3) Inventor Depositions filed byApple, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 3, # 3 Exhibit 5, # 4 Exhibit 6, # 5 Exhibit 7, # 6 Exhibit 9, # 7 Exhibit 10, # 8 Exhibit 15, # 9 Exhibit 22, # 10 Exhibit 24, # 11 Exhibit 28, # 12 Exhibit 29, # 13 Exhibit 30, # 14 Exhibit 31, # 15 Exhibit 32, # 16 Exhibit 33, # 17 Exhibit 36)(Greenblatt, Nathan) (Filed on 5/31/2011)

EXHIBIT 9

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Yitai Hu (SBN 248085) ([e-mail])
Sean P. DeBruine (SBN 168071) ([e-mail])
S.H. Michael Kim (SBN 203491) ([e-mail])
C. Augustine Rakow (SBN 254585) ([e-mail])
ALSTON + BIRD LLP
Two Palo Alto Square
3000 EI Camino Real, Suite 400
Palo Alto, California 94306
Telephone:
650-838-2000
Facsimile:
650-838-2001

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T. Hunter Jefferson (admitted pro hac vice) ([e-mail])
ALSTON + BIRD LLP
One Atlantic Center
1201 West Peachtree Street
Atlanta, GA 30309-3424
Telephone:
404-881-7333
Facsimile:
404-253-8863

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Attorneys for Plaintiff
ELAN MICROELECTRONICS CORPORATION

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

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Plaintiff,
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v.
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APPLE, INC.,
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Defendant.
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ELAN MICROELECTRONICS
CORPORATION,

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

ELAN MICROELECTRONICS
CORPORATION'S SUPPLEMENTAL
DISCLOSURE OF ASSERTED CLAIMS
AND INFRINGEMENT CONTENTIONS

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AND RELATED COUNTERCLAIMS
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ELAN'S SUPPLEMENTAL DISCLOSURE OF
ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS

Case No. 5:09-cv-OI531-RS

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Plaintiff Elan Microelectronics Corporation ("Elan") submits its Amended Disclosure of

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Asserted Claims and Infringement Contentions regarding infringement of Elan's U.S. Patent No.

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5,825,352 ("the '352 patent") and U.S. Patent No. 7,274,353 ("the '353 patent") (collectively "Elan's

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patents") in accordance with Patent Local Rule 3-1, the Joint Case Management Statement and Order

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and the agreement of the parties. Discovery is ongoing in this matter between Elan and the Defendant

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Apple, Inc. ("Apple"), and, therefore, Elan reserves its right to amend its disclosure of asserted claims

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and infringement contentions.

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I.

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THE CLAIMS ASSERTED TO BE INFRINGED

Pursuant to Patent L. R. 3-1 (a), Elan presently asserts that Apple has been and is now infringing

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Elan's '352 and '353 patents. Specifically, Elan believes that Apple has been or is now infringing at

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least claims 1-2,4,7,10,12,14,16,18-19,21,24,26, and 30 of the '352 patent ("asserted claims of

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'352 patent") under 35 U.S.C. §§271(a) and (b) and claims 1,3-4,6-7,9-10, and 12 of the '353 patent

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("asserted claims of the '353 patent") under 35 U.S.C. §§271(a). Discovery is ongoing between Elan

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and Apple and other claims may be found to infringe Elan's patents. Accordingly, Elan reserves its

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right to assert additional claims of Elan's patents upon completion of discovery in this matter.

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II.

THE ACCUSED INSTRUMENTALITIES

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Pursuant to Patent L. R. 3-1(b), Elan asserts that certain of Apple's MacBook, MacBook Pro,

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MacBook Air, iBook G4, PowerBook G4, iPhone, iPod touch, and Magic Mouse products or product

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families directly or indirectly infringe some or all of the asserted claims of the '352 patent. Those

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families of Apple's products that Elan contends to infringe the asserted claims of the '352 patent

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include at least the MacBook series or family, including but not limited to the MacBook, MacBook

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Air, and MacBook Pro, the iBook G4 (Mid 2005) series, and at least the PowerBook G4 series or

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family released after February 2005, the iPhone series or family, including but not limited to iPhone,

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iPhone 3G, and iPhone 3GS products, the iPod touch series or family, and the Magic Mouse series or

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family.

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Elan further asserts that Apple's iPhone and iPod touch products or product families directly or

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infringe the asserted claims of the '353 patent. Those families of Apple products that Elan contends to

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infringe the asserted claims include at least the iPhone series or family, including but not limited to the
ELAN'S SUPPLEMENTAL DISCLOSURE OF
ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS

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Case No. 5:09-cv-OI53I-RS

1 iPhone, iPhone 3G, and iPhone 3GS products, and the iPod touch series or family. Discovery is
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ongoing between Elan and Apple and other instrumentalities may be identified to infringe the Elan

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patents. Accordingly, Elan reserves its right to assert additional claims of the Elan's patents upon

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completion of discovery in this matter.

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INFRINGEMENT CHARTS

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Pursuant to Patent L. R. 3-1(c)-(e), Exhibits A-G set forth where in each of the accused

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products each element of the asserted claims is found. Elan believes that each element of each asserted

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apparatus claim is found within each of the Apple accused products in the touchpad or touch screen

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devices alone or in combination with the products' associated hardware and instructions, including

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software, firmware, and/or device drivers. Elan contends that each element of each asserted claim is

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literally present or at a minimum present under the doctrine of equivalents in each ofthe Apple accused

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products. Apple has directly infringed the asserted method claims through its own use of the accused

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products to perform all of the steps of the claimed methods. The end users of the accused products in

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the United States directly infringe by using the accused product to perform all of the steps of the

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claimed methods. Apple has and continues to induce that direct infringement of the asserted method

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claims by providing the accused products that are especially adapted and designed to practice the

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claimed methods, and by instructing end users to use the accused Apple products to perform the

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claimed methods through, inter alia, product documentation, help screens and/or files, and sales and

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marketing material provided to the users. Apple has aided and abetted the users' direct infringement

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with the intention that the users of its products will perform those patented methods and infringe the

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asserted claims.

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Discovery is ongoing between Elan and Apple and accordingly Elan reserves the right to amend

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or otherwise modify its identification if further relevant information is revealed or circumstances

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change.

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IV.

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PRIORTY DATE OF ELAN'S PATENTS

Pursuant to Patent L. R. 3-1(e), the asserted inventions claimed in the '352 patent are entitled to

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a priority date of at least January 4, 1996, when U.S. Patent Application No. 582,768 was filed and

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submitted to the U.S. Patent and Trademark Office. The asserted inventions claimed in the '353 Patent
ELAN'S SUPPLEMENTAL DISCLOSURE OF
ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS

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

are entitled to a priority date of at least April 2, 2003, when application Taiwan Patent Application No.
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92205217 U was filed to the Taiwan Intellectual Property Office.

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V.

ELAN'S ASSERTED PRACTICE OF THE CLAIMED INVENTIONS
Pursuant to Patent 1. R. 3-1(g), Elan contends that at least Elan's KTP3, KTP5, KTP6, and

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SmartPad touchpad products practice at least claims 18-21,24 and 28 of the '352 patent. When

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incorporated into computer systems and used as intended, end users in the United States practice at

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least method claims 1, 2, 6 and 7. Elan, at this time, does not intend to rely on the assertion that any of

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its products practice the asserted claims of the' 353 patent. Elan is still conducting its investigation

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into its disclosures pursuant to Patent 1.R. 3-1(g), and reserves the right to modify, amend, and/or

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supplement the disclosures contained herein.

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VI.

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APPLE'S WILLFUL INFRINGEMENT
Pursuant to Pat. 1. R. 3-1(h), Elan alleges that Apple's infringement of the '352 patent has been

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and continues to be willful. Apple was put on actual notice in August 2006 that its touchpad products

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infringed the '352 patent. Despite knowing of the objectively high risk that it was infringing the

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patent, Apple continued its infringing acts and, in fact, greatly expanded the number of products

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practicing the patent claims. On information and belief, Apple continued its infringing acts willfully or

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in reckless disregard of Elan's patent rights.

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VII.

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ACCOMPANYING DOCUMENTS PRODUCTION
Pursuant to Patent 1. R. Rule 3-2, Elan has produced and will continue to produce documents

with its disclosure of asserted claims and infringement contentions.

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Respectfully Submitted,

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ALSTON + BIRD LLP

Dated: December 11, 2009

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Attorneys for Plaintiff
ELAN MICROELECTRONICS CORPORATION

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ELAN'S SUPPLEMENTAL DISCLOSURE OF
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Case No. 5:09-cv-OI531-RS