Elan Microelectronics Corporation v. Apple, Inc.

Filing 351

Declaration of Palani P. Rathinasamy in Support of 350 MOTION Leave to Amend Infringement Contentions Pursuant to Pat. L.R. 3-6 / Unopposed Motion for Leave to Amend Infringement Contentions Pursuant to Pat. L.R. 3-6 filed byElan Microelectronics Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Related document(s) 350 ) (DeBruine, Sean) (Filed on 7/22/2011)

EXHIBIT C

1
2
3
4
5
6
7
8
9
10
11

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

12
13

UNITED STATES DISTRICT COURT

14

NORTHERN DISTRICT OF CALIFORNIA

15

SAN FRANCISCO DIVISION

16
17

ELAN MICROELECTRONICS
CORPORATION,

18
19
20
21
22

Plaintiff,
v.
APPLE, INC.,

Case No. 09-cv-01531 RS (PSG)
ELAN MICROELECTRONICS
CORPORATION’S AMENDED
DISCLOSURE OF ASSERTED CLAIMS
AND INFRINGEMENT CONTENTIONS

Defendant.
AND RELATED COUNTERCLAIMS

23
24
25
26
27
28
ELAN’S AMENDED DISCLOSURE OFASSERTED CLAIMS AND
INFRINGEMENT CONTENTIONS

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

1

Plaintiff Elan Microelectronics Corporation (“Elan”) submits its Amended Disclosure of

2

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

3

5,825,352 (“the ’352 patent”) and U.S. Patent No. 7,274,353 (“the ’353 patent”) (collectively

4

“Elan’s patents”) in accordance with Patent Local Rule 3-1, the Joint Case Management Statement

5

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

6

the Defendant Apple, Inc. (“Apple”), and, therefore, Elan reserves its right to amend its disclosure

7

of asserted claims and infringement contentions.

8

I.

THE CLAIMS ASSERTED TO BE INFRINGED
Pursuant to Patent L. R. 3-1(a), Elan presently asserts that Apple has been and is now

9
10

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

11

infringing at least claims 1-2, 4, 6, 7, 10, 12, 14, 16, 18, 21, 24, 26, and 30 of the ’352 patent

12

(“asserted claims of ’352 patent”) under 35 U.S.C. §§271(a) and (b) and claims 1, 3-4, 6-7, 9-10,

13

and 12 of the ’353 patent (“asserted claims of the ’353 patent”) under 35 U.S.C. §§271(a).

14

Discovery is ongoing between Elan and Apple and other claims may be found to infringe Elan’s

15

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

16

completion of discovery in this matter.

17

II.

18

THE ACCUSED INSTRUMENTALITIES
Pursuant to Patent L. R. 3-1(b), Elan asserts that certain families of Apple’s products

19

infringe the asserted claims of the ’352 patent, including at least the MacBook series or family,

20

including but not limited to the MacBook, MacBook Air, and MacBook Pro, the iBook G4 (Mid

21

2005) series, and at least the PowerBook G4 series or family released after February 2005

22

(collectively “the accused laptops”), the iPhone series or family, including but not limited to

23

iPhone, iPhone 3G, iPhone 3GS, and iPhone 4 products, the iPod touch series or family, including

24

but not limited to the iPad and iPad 2 products, (collectively the “iOS products”), the Magic

25

Mouse series or family and the Magic Trackpad series or family.

26

Elan further asserts that Apple’s iOS products directly or infringe the asserted claims of the

27

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

28

include at least the iPhone series or family, including but not limited to the iPhone, iPhone 3G,
ELAN’S AMENDED DISCLOSURE OFASSERTED CLAIMS AND
INFRINGEMENT CONTENTIONS

1

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

1

iPhone 3GS, and iPhone 4 products, the iPod touch series or family, and the iPad series or family

2

including but not limited to iPad and iPad 2 products. Discovery is ongoing between Elan and

3

Apple and other instrumentalities may be identified to infringe the Elan patents. Accordingly,

4

Elan reserves its right to assert additional claims of the Elan’s patents upon completion of

5

discovery in this matter.

6

III.

INFRINGEMENT CHARTS

7

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

8

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

9

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

10

touch screen devices alone or in combination with the products’ associated hardware and

11

instructions, including software, firmware, and/or device drivers. Elan contends that each element

12

of each asserted claim is literally present or at a minimum present under the doctrine of

13

equivalents in each of the Apple accused products. Apple has directly infringed the asserted

14

method claims through its own use of the accused products to perform all of the steps of the

15

claimed methods. The end users of the accused products in the United States directly infringe by

16

using the accused product to perform all of the steps of the claimed methods. Apple has and

17

continues to induce that direct infringement of the asserted method claims by providing the

18

accused products that are especially adapted and designed to practice the claimed methods, and by

19

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

20

inter alia, product documentation, help screens and/or files, and sales and marketing material

21

provided to the users. Apple has aided and abetted the users’ direct infringement with the

22

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

23

asserted claims.
Discovery is ongoing between Elan and Apple and accordingly Elan reserves the right to

24
25

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

26

circumstances change.

27

IV.

28

PRIORITY DATE OF ELAN’S PATENTS
Pursuant to Patent L. R. 3-1(e), the asserted inventions claimed in the ’352 patent are

ELAN’S AMENDED DISCLOSURE OFASSERTED CLAIMS AND
INFRINGEMENT CONTENTIONS

2

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

1

entitled to a priority date of at least January 4, 1996, when U.S. Patent Application No. 582,768

2

was filed and submitted to the U.S. Patent and Trademark Office. The asserted inventions claimed

3

in the ’353 Patent are entitled to a priority date of at least April 2, 2003, when application Taiwan

4

Patent Application No. 92205217 U was filed to the Taiwan Intellectual Property Office.

5

V.

ELAN’S ASSERTED PRACTICE OF THE CLAIMED INVENTIONS

6

Pursuant to Patent L. R. 3-1(g), Elan contends that all of Elan’s touch-sensing products

7

including its SmartPad touchpad products practice at least claims 18-21, 24 and 28 of the ’352

8

patent. When incorporated into computer systems and used as intended, end users in the United

9

States practice at least method claims 1, 2, 6 and 7. Elan, at this time, does not intend to rely on

10

the assertion that any of its products practice the asserted claims of the ’353 patent. Elan is still

11

conducting its investigation into its disclosures pursuant to Patent L.R. 3-1(g), and reserves the

12

right to modify, amend, and/or supplement the disclosures contained herein.

13

VI.

APPLE’S WILLFUL INFRINGEMENT

14

Pursuant to Pat. L. R. 3-1(h), Elan alleges that Apple’s infringement of the ’352 patent has

15

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

16

products infringed the ’352 patent. Despite knowing of the objectively high risk that it was

17

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

18

of products practicing the patent claims. On information and belief, Apple continued its infringing

19

acts willfully or in reckless disregard of Elan’s patent rights.

20

VII.

21

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

22

documents with its disclosure of asserted claims and infringement contentions.

23

DATED: July 22, 2011

24

Respectfully submitted,
ALSTON & BIRD LLP

25
By:

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

26
27
LEGAL02/32640599v3

28
ELAN’S AMENDED DISCLOSURE OFASSERTED CLAIMS AND
INFRINGEMENT CONTENTIONS

3

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