Elan Microelectronics Corporation v. Apple, Inc.

Filing 348

REPLY (re 212 MOTION for Partial Summary Judgment of Infringement of U.S. Patent 5,875,352 [Public Version] MOTION for Partial Summary Judgment of Infringement of U.S. Patent 5,875,352 [Public Version] ) / Elan's Response to Apple's Surreply re Motion for Partial Summary Judgment filed byElan Microelectronics Corporation. (DeBruine, Sean) (Filed on 7/21/2011)

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YITAI HU (SBN 248085)
[e-mail]
SEAN P. DEBRUINE (SBN 168071)
[e-mail]
ELIZABETH H. RADER (SBN 184963)
[e-mail]
JANE HAN BU (SBN 240081)
[e-mail]
JENNIFER LIU (SBN 268990)
[e-mail]
PALANI P. RATHINASAMY (SBN 269852)
[e-mail]
ALSTON & BIRD LLP
275 Middlefield Road, Suite 150
Menlo Park, CA 94025-4008
Telephone:
650-838-2000
Facsimile:
650-838-2001
Attorneys for Plaintiff and Counterdefendant
ELAN MICROELECTRONICS
CORPORATION

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ELAN MICROELECTRONICS
CORPORATION,
Plaintiff and Counterdefendant,

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ELAN’S RESPONSE TO APPLE’S
SURREPLY RE MOTION FOR PARTIAL
SUMMARY JUDGMENT

Defendant and Counterplaintiff.

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Case No. 09-cv-01531 RS (PSG)

DATE: August 4, 2011
TIME: 1:30 p.m.
CTRM: 3
JUDGE: Hon. Richard Seeborg

v.
APPLE, INC.,

AND RELATED COUNTERCLAIMS

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ELAN’S RESPONSE TO APPLE’S SURREPLY RE MOTION FOR
PARTIAL SUMMARY JUDGMENT

Case No. 09-cv-01531 RS (PSG)

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I.

INTRODUCTION
The Court reluctantly granted Apple leave to file its Surreply, expressing skepticism that

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any additional briefing would be helpful to the determination of Elan’s motion for partial

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summary judgment. July 11, 2011 Order [Dkt. No. 337] The Court’s skepticism was well

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founded. Apple’s Surreply does little more than restate the arguments raised in its Opposition

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[Dkt. No. 278]. For the reasons set forth in Elan’s Reply Brief [Dkt. No. 303], Elan’s motion

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should therefore be granted. However, embedded within those redundant arguments are a number

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of admissions and misstatements that Elan is compelled to address. Keeping in mind the Court’s

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admonition, Elan will provide only brief comments on, and corrections to, Apple’s assertions in its

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Surreply.1

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II.

ARGUMENT

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A.

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Apple Still Fails to Justify its Attempted New Claim Construction for the
“Identify” Elements

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In its Opposition Apple sought to add significant new limitations on the claim term

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“identify” despite the fact that this term, and the order of the steps in which it appears, was among

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the most hotly disputed issues during the Court’s Markman process. Opp’n at 3; Elan Reply at 6-

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7. Claims 1 and 18 both require the steps “(a) identify a first maxima in a signal corresponding to

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a first finger; (b) identify a minima following the first maxima; and (c) identify a second maxima

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in a signal corresponding to a second finger following said minima.” Apple now contends that the

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new limitations are not meant to limit in the meaning of the term “identify” but rather as part of

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the order in which the identification steps take place. Surreply at 5. Apparently, Apple’s

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argument now is that the term “scanning” – the meaning of which was agreed to by the parties, in

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some combination with the order of the “identify” steps, creates some new limitation. Id. Apple

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provides no further explanation of this argument. Id. The time for Apple to have presented any

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such argument has long passed. In addition, as set out in Elan’s Reply, the only requirement of

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these steps is to “identify” the maxima and minima. If Apple’s attempt to recast the claims as

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requiring that the maxima and minima be “searched for” is not based on the actual claim term, it is

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Elan reserves the right to address other points raised by Apple at the hearing on this matter.

ELAN’S RESPONSE TO APPLE’S SURREPLY RE MOTION FOR
PARTIAL SUMMARY JUDGMENT

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Case No. 09-cv-01531 RS (PSG)

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clearly improper and must be rejected.
B.

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Apple’s Products Identify the Maxima and Minima “in a finger profile …
obtained from scanning the touch sensor.”

Apple now appears to admit that one of ordinary skill in the art would understand and

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expect that the initial measured capacitance values would be baselined, filtered and smoothed as

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part of the process of creating the “finger profile.” Surreply at 3-4. That must be so, because the

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patent clearly discloses these “extensive pre-processing steps” as part of the disclosed invention.

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See, e.g., 352 Patent at 5:60-6:1, 10:66-11:5; Reply at 3-5; Dezmelyk Reply Decl., ¶¶ 7-16. Elan

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submitted extensive evidence that all of the “pre-processing” steps employed by Apple were

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commonly used in the art at the time. Dezmelyk Reply Decl., at ¶¶ 17-24. Elan also demonstrated

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that Apple’s expert has previously opined that these same steps are within the scope of the patent

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claims. Reply at 4, n.1. Apple’s Surreply ignores this evidence. Rather than address the merits,

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Apple simply repeats its expert’s utterly unsupported claim that the data is somehow “changed.”

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Whether or not it is “changed,” it is beyond dispute that the resulting data make up “a finger

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profile obtained from scanning the touch sensor.” Apple’s argument that there is a factual dispute

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is therefore unsupported. Apple casts the dispute as whether the changes are “significant” enough

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to avoid infringement. Surreply at 4. That is incorrect. Elan has shown that the Apple products

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identify the first maxima, the minima and the second maxima “in a finger profile taken on a

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straight line obtained from scanning the touch sensor” as required by the claims.

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C.

The Accused Products Provide an Indication of the Simultaneous Presence of
Two Fingers as Required by the Claims.

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The issue of whether the accused products “provide an indication of the simultaneous

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presence of two fingers” may also be resolved as a matter of law based upon the proper claim

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construction. Apple contends that the claims preclude any processing steps between the simple

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count of the number of maxima in the finger profile and the required “indication.” Apple

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concedes that this construction would omit the algorithm in the preferred embodiment. Surreply at

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7 (“Elan nowhere suggests that one of ordinary skill in the art would understand [ steps 290 and

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305 in the preferred embodiment] to be covered by the claim.”) Apple makes no attempt to
ELAN’S RESPONSE TO APPLE’S SURREPLY RE MOTION FOR
PARTIAL SUMMARY JUDGMENT

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Case No. 09-cv-01531 RS (PSG)

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support the extraordinary position that this preferred embodiment somehow falls outside the claim

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scope. Id. Apple makes no serious attempt to address the doctrine of claim differentiation,

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arguing only that claim 15 is somehow ambiguous if not indefinite. Id. It is neither. Claim 15

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specifically limits the method of claim 1 to the condition where the “indication” is not provided

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unless the distance between the maxima is tested and determined to be within 5 centimeters. 352

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Patent at 17:15-20. Apple does not even address Elan’s showing that, as a matter of law, claim 1

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must be broad enough to encompass this dependent claim. Thus, the patent makes absolutely clear

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that “additional processing steps” may be performed after the maxima are identified to ensure that

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two fingers are actually on the touchpad.

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Apple’s entire claim construction argument rests on a single statement in the prosecution

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history. In particular, in response to an obviousness rejection, the applicant stated that the “present

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invention uniquely utilizes the detection of two maxima to determine if two fingers are present on

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the touchpad.” Balakrishnan Reply Decl., Ex. 5 at 536. In context it is clear that this statement

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broadly distinguishes the method disclosed and claimed from the prior art. As is clear from the

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context of the entire document, the applicant meant to differentiate the method of identifying

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maxima from the prior art methods which relied on detecting sudden movements of the centroid

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that occur when a second finger contacts the touch sensor. Id. This sentence is therefore far from

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the clear and unmistakable disavowal of claim scope that would be necessary to overcome the

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plain meaning of the claims as demonstrated by the figures, the written description and the other

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claims of the patent. Omega Eng’g v. Raytek Corp., 334 F.3d 1314, 1324-1326 (Fed. Cir. 2003).

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Thus, under the proper claim construction, the fact that Apple’s products perform certain

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tests to ensure that the finger count it returns reflects actual finger contact is immaterial to the

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question of infringement. Apple does not dispute that the “indication” returned as the final finger

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count is the same “raw” values created from a simple count of the identified maxima. Surreply at

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7; see Elan Reply at 10. The tests Apple points to merely confirm that there are actually two

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fingers on the touchpad. Thus, if further examination of the capacitance data indicates that there

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actually are no fingers on the touchpad, this finger count is not used. Reply at 11; Dezmelyk

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Reply Decl., ¶¶ 52-60. However, where there are actually two fingers on the touchpad, the
ELAN’S RESPONSE TO APPLE’S SURREPLY RE MOTION FOR
PARTIAL SUMMARY JUDGMENT

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Case No. 09-cv-01531 RS (PSG)

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indication provided is in direct response to the identification of two maxima. Id.
Apple’s Surreply essentially concedes that tests to determine that a processing error has

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occurred do not prevent infringement. Apple had argued that certain error conditions under which

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all of the scanned data would be disregarded as unreliable, such that no processing of the number

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of fingers or finger locations would occur, somehow meant that the Accused Products would not

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provide the required identification when those products were functioning properly. In its Surreply,

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Apple relegates this point to an unsupported footnote. Surreply at 4, n. 4. The determination that

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one particular finger profile is not based on valid data cannot negate the operation of the products

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under normal conditions when they are detecting and responding properly to actual finger contact

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and not, for example, electrostatic shocks. By failing to provide any argument on this point,

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Apple effectively concedes that its arguments concerning these error conditions are not relevant.

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D.

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Citing DSU Med. Corp. v. JMS Co Ltd., 471 F.3d 1293 (Fed. Cir. 2006) Apple claims that

Elan Has Shown Indirect Infringement of the Method Claims.

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Elan has not established that Apple intended the users of its products to practice the claimed

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methods. Surreply at 9. That case is inapposite. In DSU there was evidence to support a jury

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verdict that DSU did not intend for its products to be used to infringe the patent. What Apple fails

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to disclose is that the evidence in DSU was an opinion obtained from a qualified independent

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patent counsel that there was no infringement. DSU Medical Corp, 471 F.3d at 1307. There is no

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such evidence here. All Apple can point to is a conclusory letter written by an Apple employee.2

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Opp’n at 17. In light of Apple’s knowledge of the patent, a direct allegation of infringement and

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the clear showing that the products fall within the claims, Apple has no evidence sufficient to

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support a jury verdict that it did not intend to cause its customers to practice the asserted method

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claims. However, even if there were facts sufficient to raise a triable issue regarding customers

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use of the Accused Products, this point would not preclude the Court from entering judgment that

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use of the Accused Products causes the practice of the asserted method claims, or that Apple’s

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own employee’s use of the products constitutes direct infringement of the method claims and that

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It is interesting to note that the letter Apple relies on alleges no infringement based on the
Synaptics claim construction, while Apple’s Opposition to Elan’s motion relies on claim
construction positions never raised in that earlier litigation.
ELAN’S RESPONSE TO APPLE’S SURREPLY RE MOTION FOR
PARTIAL SUMMARY JUDGMENT

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Case No. 09-cv-01531 RS (PSG)

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Apple’s sale of products meeting apparatus claims 18 et seq. constitutes direct infringement.

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E.

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Finally, Apple does not show any genuine issue of material fact that would preclude a

The Accused Products Infringe the Means-Plus-Function Claims

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finding that its products directly infringe claims 18 and 30. With regard to claim 18, Apple simply

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restates the arguments in its Opposition. Surreply at 10:4-11. For the reasons set forth in Elan’s

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Reply, Apple’s evidence is insufficient to support a finding of no infringement. Apple’s products

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perform the relevant functions of identifying the maxima and minima and providing an indication

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of the simultaneous presence of two fingers in the same or equivalent way as disclosed in the

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patent. Reply at 14. The portions of Dr. Balakrishnan’s declaration Apple relies upon do not

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directly address nor rebut this evidence. As such, infringement of claim 18 is established. As for

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claim 30, Apple simply points to the decision of the ITC administrative law judge finding that

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claim 30 is indefinite. Surreply at 11. Apple did not raise any such argument in its Opposition,

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and in fact fails to do so here. Decisions of the ITC are not binding on this Court. Texas

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Instruments v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996). Since Apple

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has not argued indefiniteness as a defense to this motion, and has put forward no argument to

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support such a defense in its Surreply, it should be disregarded.

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III.

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CONCLUSION
For all of the reasons set forth in Elan’s Motion, Reply and this Response to Apple’s

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Surreply, there are no factual disputes concerning the operation of the accused Apple products.

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Rejecting Apple’s belated and incorrect claim construction, those products infringe as a matter of

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law and Apple has intentionally induced its customers to use those products in an infringing

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manner. Elan’s motion should be granted in its entirety.

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DATED: July 21, 2011

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Respectfully submitted,
ALSTON & BIRD LLP

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By:

/s/ Sean P. DeBruine
Sean P. DeBruine
Attorneys for Plaintiff
ELAN MICROELECTRONICS CORPORATION

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LEGAL02/32756043v1

ELAN’S RESPONSE TO APPLE’S SURREPLY RE MOTION FOR
PARTIAL SUMMARY JUDGMENT

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Case No. 09-cv-01531 RS (PSG)