Elan Microelectronics Corporation v. Apple, Inc.

Filing 375

Declaration of Derek C. Walter In Support of Apple Inc.'s Motion for Partial Summary Judgment of Non-Infringement of Elan's '352 Patent by Apple's Current Products filed byApple, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 3, # 3 Exhibit 14)(Greenblatt, Nathan) (Filed on 8/4/2011)

EXHIBIT 3

CONTAINS CONFIDENTIAL BUSINESS INFORMATION
UNITED STATES INTERNATIONAL T R A D E COMMISSION
Washington, D.C.

In the Matter of
CERTAIN ELECTRONIC DEVICES WITH
M U L T I - T O U C H E N A B L E D TOUCHPADS
A N D TOUCHSCREENS

Inv. No. 337-TA-714

Order No. 17: Relating to Claim Construction
B y notice dated April 23, 2010, the Commission instituted an investigation, pursuant to
subsection (b) of section 337 of the Tariff Act of 1930, as amended, to determine (a) whether
there is a violation of subsection (a)(1)(B) of section 337 in the importation into the United
States, the sale for importation, or the sale within the United States after importation of certain
electronic devices with multi-touch enabled touchpads or touchscreens that infringe one or more
of certain claims of U.S. Patent No. 5,825,352, ('352 patent) and whether an industry in the
United States exists as required by subsection (a)(2) of section 337. The complaint was filed on
behalf of Elan Microelectronics Corporation of Taiwan (Elan). Apple Inc. (Apple) was named in
the notice of investigation as respondent.
Order No. 3, which issued on May 21, 2010, set a target date of August 29, 2011 and an
evidentiary hearing for February 17,18, 22, and 23, 2011.
A Markman hearing was conducted on August 18 and 19, 2010 with all parties
participating. Per Agreement by all parties, post hearing submissions and reply submissions

1

were filed on September 3 and 10, respectively. The matter is now ready for an order.

Claim construction involves the search for the ordinary and customary meaning of a
claim term to a person of ordinary skill in the art at the application filing date of the patent in
issue and begins with the language of the claims themselves. Phillips v. A W H Corp.. 415 F.3d
1303, 1312 (Fed. Cir. 2005) (en banc) (the claims are of primary importance in defining the
invention); Interactive Gift Express, Inc. v. CompuServe, Inc., 256 F.3d 1353,1331 (Fed. Cir.
2001.) Thus, unless compelled otherwise, a court should give a claim term the full range of its
ordinary meaning as understood by a person of ordinary skill in the art. Innova/Pure Water, Inc.
v. Safari Water Filtration Svs.. Inc.. 381 F.3d 1111,1118 (Fed. Cir. 2004); Phillips, 415 F.3d at
1324 (affirming the Innova approach.) Additionally, "other claims of the patent in question, both
asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a
claim term." Phillips, 415 F.3d at 1314 (citations omitted.) "Because claim terms are normally
used consistently throughout the patent, the usage of a term in one claim can often illuminate the
meaning of the same term in other claims." Id.
The meaning of claims may also be informed by the specification of the patent in issue,
the prosecution history of said patent, and extrinsic evidence. Id. at 1314-19. Though not
preferred over intrinsic evidence, id. at 1317:
extrinsic evidence in the form of expert testimony can be useful to
a court for a variety of purposes, such as to provide background on
the technology . . . , to explain how an invention works, to ensure
that the court's understanding of the technical aspects of the patent
is consistent with that of a person of ordinary skill in the art, or to

1

On October 20,2010, in Inv. No. 337-TA-703 the Commission issued a notice that a
June 22, 2010 initial determination involving claim construction is an order rather than an initial
determination.
2

establish that a particular term in the patent or prior art has a
particular meaning in the pertinent field.
Id at 1318.
Extrinsic evidence however cannot be used "to vary or contradict the clear meaning" of
claim terms dictated by the intrinsic record. Apex Inc. v. Raritan Computer. Inc.. 325 F.3d 1364,
1371 (Fed. Cir. 2003.) Thus expert testimony cannot be at odds with the "claim construction
mandated by the claims themselves, the written description, and the prosecution history, in other
words, with the written record of the patent." Phillips. 415 F.3d at 1318 (citations omitted.)
In Conoco Inc. v. Energy & Envtl. Int'l 460 F.3d 1349, 1362 (Fed. Cir. 2006), the
question was whether a "stable" suspension of polymer required sufficient stability to remain
suspended when stored for a long period of time, or just stability at the time the suspension was
introduced into a pipeline. The Court determined from the intrinsic evidence that the appropriate
frame of reference was stability at the time the suspension was introduced into the pipeline. The
Court confirmed its interpretation against the extrinsic evidence, which indicated that all
suspensions eventually separate, and found that the appropriate time frame for assessing stability
was at the time the suspension was introduced into the pipeline.
In Tap Pharm. Produc. Inc. v. Owl Pharms.. L.L.C.. 419 F.3d 1346 (Fed. Cir. 2005), in
issue were claims to a composition "comprising a copolymer . . . of lactic acid and . . . of
glycolic acid." The question was whether the claims were limited to compositions resulting from
a polymerization of lactic acid and glycolic acid, or whether the claims also covered the polymer
resulting from cyclic precursors that transformed into lactic acid and glycolic acid during
polymerization. The district court, which the Federal Circuit upheld, relied on treatises that

3

recognize that copolymers of lactic acid and glycolic acid can be made either by direct
polymerization or by ring opening, and on expert testimony that a person of ordinary skill in the
art would use the terms "lactic acid" and "glycolic acid" interchangeably with their cyclic
analogs. Id, at 1349-50. In Mass. Inst, of Tech. v. Abacus Software. 462 F.3d 1344, (Fed. Cir.
2006) (Mass. Inst, of Tech.) there were claims to a "scanner," where the term "scanner" was not
defined in the specification, which simply contained one illustrative embodiment having a
moving scanner head. In issue was whether a digital camera qualified as a "scanner." The
majority opinion of the Federal Circuit, in affirming the district court, stated:
The district court... concluded that the "scanner" in claim 1(a)
must involve placing the "'color' original' . . . on or in close
proximity to the scanner." Here again the specification does not
explicitly or implicitly define "scanner" as including a "close
proximity" requirement. Although the single disclosed scanner in
the specification includes this limitation, we do not confine the
claim to the disclosed embodiments. Phillips. 415 F.3d at 1323.
The pertinent dictionaries also offer no assistance.
Under such circumstances, we must determine what meaning the
term had in the relevant art at the time the patent issued by looking
to other sources. This follows from our obligation to give the
words of a claim "their ordinary and customary meaning, [which]
. . . is the meaning that the [words] would have to a person of
ordinary skill in the art in question at the time of the invention, fe.,
as of the effective filing date of the patent application. "Phillips.
415 F.3d at 1312-13 (internal quotation marks and citations
omitted) . . . ; see also Markman v. Westview Instruments. Inc.. 52
F.3d 967, 986 (Fed. Cir. 1995) (en banc), a f f d, 517 U.S. 370, 116
S. Ct. 1384, 134 L. Ed. 2d 577 (1996) (In construing claims, the
courts focus on "what one of ordinary skill in the art at the time of
the invention would have understood the term to mean."); Chisum
on Patents § 18.03[2][g] (2003 ed.). In determining the meaning of
a term within the pertinent art, it is appropriate to determine the
mode of operation of the device at the time the patent application
was filed. [Footnote omitted]

4

Here, the district court (relying on the '919 specification, expert
testimony, and technical references) concluded that in 1982 a
person of ordinary skill in the art would have known of two general
types of scanners, drum scanners and flatbed scanners. Both these
scanners require close proximity between the color original and the
scanner. We see no basis for disturbing this conclusion and agree
that the term scanner should be defined by what was known in the
art at the time. Plaintiffs argue that in 1982 cameras were scanners
that did not require close proximity, but as we noted above, a
camera that lacks the relative movement limitation is not a scanner.
We conclude that the term scanner in 1982 should be construed to
include a requirement of close proximity.
Id. at 1352-53 (emphasis added). As seen from the foregoing, the extrinsic evidence was
consistent with the patentee's own description of the invention. Thus the extrinsic evidence
tracked what the patentee had disclosed in the specification as being a scanner.
In Ortho-McNeil Pharm. Inc. v. Caraco Pharm. Labs Ltd., 476 F.3d 1321 (Fed. Cir.
2007), the Federal Circuit, in affirming the district court on claim construction considered the
intrinsic and extrinsic evidence which consisted of expert testimony and found no error in the
district court's construction of the term "about 1:5" to mean "about 1:5, which includes a ratio up
to and including 1:7.1"
I.

The ' 3 52 Patent In Issue
The '352 patent titled "Multiple Fingers Contact Sensing Method For Emulating Mouse

Buttons and Mouse Operations On A Touch Sensor Pad" resulted from Application No. 608,116
that was filed on February 28,1996 and issued as U.S. Patent No. 5,825,352 ('352 patent). (JX2

1 .) Said application was a continuation of abandoned Application No. 582,768 filed January 4,
1996. The named inventors on the '352 patent are Stephen J. Bisset and Bernard Kasser. (JX-1).

2

• See Appendix A for Table of Abbreviations.
5

The assignee on the '352 patent is Logitech, Inc. (JX-1.) On October 13, 2008 the '352 patent
was assigned to complainant which was recorded on October 28, 2008. (Complaint Ex. 5 at 82728.)
II.

The Claims In Issue
3

Claims 1,14 and 18 of the '352 patent, which are the claims in issue, read:
1. A method for detecting the operative coupling of multiple fingers to a touch
sensor involving the steps of
scanning the touch sensor to (a) identify a first maxima in a signal
corresponding to a first finger, (b) identify a minima following the
first maxima, (c) identify a second maxima in a signal
corresponding to a second finger following said minima, and
providing an indication of the simultaneous presence of two fingers
in response to identification of said first and second maxima.
14. The method of claim 1 further comprising the step of:
selecting an appropriate control function based on a combination of
a number of fingers detected, an amount of time said fingers are
detected, and any movement of said fingers.
18. A touch sensor for detecting the operative coupling of multiple fingers
comprising:
means for scanning the touch sensor to (a) identify a first maxima
in a signal corresponding to a first finger, (b) identify a minima
following the first maxima, and (c) identify a second maxima in a
signal corresponding to a second finger following said minima, and

3

On October 28, 2010 the Commission issued a notice not to review an initial
determination relating to Motion Nos. 714-4 and 714-7 for summary determination and finding
each of claims 19, 24 and 30 of the '352 patent invalid. On October 28, 2010 also the
Commission issued a notice which determined that Order No. 16 is an order rather than an initial
determination. In Order No. 16, the administrative law judge found that complainant Elan is
barred by collateral estoppel from arguing a different claim construction for asserted claims 1 and
18 than that found by a district court judge.
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means for providing an indication of the simultaneous presence of
two fingers in response to identification of said first and second
maxima.
(JX-1 at 16:14-18:46.)
m.

Claim Terms In Issue
1.

Claims 1 and 18
a.

b.

"identify" (C Post at 13; R Post at 21; S Post at 3.)

c.
2.

"identify a first maxima in a signal corresponding to a first finger,"
"identify a minima following the first maxima," and "identify a second
maxima in a signal corresponding to a second finger following said
minima" (C Post at 8; R Post at 3; S Post at 2.)

"in response to" (C Post at 16; R Post at 23; S Supporting at 12.)

Claim 18
a.

b.

3.

"means for scanning the touch sensor to (a) identify a first maxima in a
signal corresponding to a first finger, (b) identify a minima following the
first maxima, and (c) identify a second maxima in a signal corresponding
to a second finger following said minima" (R Supporting at 3; S Post at 4.)
"means for providing an indication of the simultaneous presence of two
fingers in response to identification of said first and second maxima" (C
Post at 19; R Post at 30; S Post at 6.)

Claim 14
a.

TV.

"control function" (C Post at 14; R Post at 24; S Post at 4.)

Experts
Each of complainant Elan's expert Robert Dezmelyk and respondent Apple's expert

Ravin Balakrishnan was qualified as an expert in the field of computer user input devices. (Tr. at
370-71.)

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V.

Skill Level Of One Of Ordinary Skill In The Art For The '352 Patent
Complainant Elan's expert, Dezmelyk, opined that one of ordinary skill would have had a

bachelor's degree in electrical engineering or computer science or a similar technical degree,
including course work in circuit design, and about three years of job experience with input
devices. (Tr. at 183-184.) Respondent Apple's expert, Balakrishnan, opined that one of ordinary
skill would have had education equivalent to a bachelor's degree in computer science, electrical
engineering or mathematics and three to five years of job experience in signal processing and/or
touch-sensitive input devices. (Tr. at 492-93.) Respondent Apple's expert, Balakrishnan, opined
that the key difference between these opinions was that respondent required only experience in
"signal processing or human-computer interaction" whereas complainant required specific
training in touch-sensitive input devices. (Tr. at 497-98.)
The administrative law judge finds that the skill level of one of ordinary skill in the art for
the '352 patent is education equivalent to a bachelor's degree in computer science, electrical
engineering, or a similar technical degree, and three years of experience in touch-sensitive input
devices.

8

VI.

Claim Terms

1.

"identify a first maxima in a signal corresponding to a first finger," "identify a
minima following the first maxima," and'"identify a second maxima in a signal
corresponding to a second finger following said minima" (Claims 1 and 18)

Claim Teim
identify a first
maxima in a
signal
corresponding
to a first finger

identify a
minima
following the
first maxima

identify a
second maxima
in a signal
corresponding
to a second
finger following
said minima

Respondent's
C onstruction

St i l l > « ii l M i u u n m

( .'iMrikii'in

"Identify a first peak
value in a finger profile
taken on a straight line
obtained from scanning
the touch sensor."

"Identify a first peak
value in a finger profile
taken on a straight line
obtained from scanning
the touch sensor."

"Identify a first peak
value in a finger profile
taken on a straight line
obtained from scanning
the touch sensor."

"Identify the lowest
value in the finger
profile taken on a
straight line that occurs
after the first peak
value."

"Identify the lowest
value in the finger
profile taken on said
straight line that occurs
after the first peak
value, and before
another peak value is
identified."

"Identify the lowest
value in the finger
profile taken on said
straight line that occurs
after the first peak
value, and before
another peak value is
identified."

"Identify a second peak
value in the finger
profile taken on a
straight line following
the minima."

"After identifying the
lowest value in the
finger profile taken on
said straight line,
identify a second peak
value in the finger
profile taken on said
straight line."

"After identifying the
lowest value in the
finger profile taken on
said straight line,
identify a second peak
value in the finger
profile taken on said
straight line."

Complainant's

(C Post at 9; R Post at 11; S Post at 2.)
Complainant, in support of its construction, argued that "there is no requirement that the
steps of identifying the first maxima, the minima and the second maxima occur in that order." (C
Post at 9.) It is argued that claims are not normally construed to require an order (Id. at 10), and
there is no clear language in the claims nor clear statement in the specification that imposes such

9

an order (Id. at 9). Complainant also argued that the term "following" carries meaning only in
the spatial sense, and not the temporal sense. (C Supporting at 13.)
Respondent, in support of its construction, argued that the claim language imposes a
temporal requirement by referring back to "first maxima" and the "said minima" within steps (b)
and (c), respectively. (R Post at 15.) Respondent also argued that every embodiment in the
specification "shows the identification of first a maximum, then a minimum, and then another
maximum in that order." (Id.) Respondent agreed with complainant that the claims include a
spatial requirement. (R Supporting at 24.)
The staff, in support of respondent Apple's proposed construction, argued that the plain
language of the claim requires that the steps be performed sequentially in time. (S Supporting at
10.)
The private parties agree that the test in Interactive Gift Express, Inc. v. Compuserve Inc.,
256 F.3d 1323, (Fed. Cir. 2001) (Interactive Gift) applies. (C Post at 10; R Supporting at 32-33.)
Interactive Gift says that a temporal order is only to be imposed when required by either the
"logic or grammar" of the claims or by the language of the specification. (See Taltech Ltd. v.
Esquel Apparel. Inc.. 279 Fed. Appx. 974, 978 (Fed. Cir. 2008) see also interactive Gift. 256
F.3d at 1342-43.)
Claims 1 and 18 cite a method and means, respectively, of:
scanning the touch sensor to (a) identify a first maxima in a signal
corresponding to a first finger, (b) identify a minima following the
first maxima, (c) identify a second maxima in a signal
corresponding to a second finger following said minima
(JX-1 at 16:16-20, 17:30-34.) The plain language of element (a), supra, requires identification of

10

a first maxima, and the plain language of element (b), supra, requires identification of a minima
following the first maxima. Moreover because element (b) calls for "the first maxima" it refers
back to the same "first maxima" identified in element (a). (Balakrishnan, Tr. at 503:9-15.) Thus
the grammar carries logical meaning only i f "the first maxima" has already been identified.
Further, element (c), supra, requires identification of a "second maxima" which is "following
said minima." The plain language of the "said minima" of element (c) refers back to the minima
that was previously identified in element (b). (Balakrishnan, Tr. at 503:16-21.) Therefore the
administrative law judge finds that the language of the claim requires one to identify a first
maxima before identifying a minima following said first maxima, and to identify said minima
before identifying a second maxima following said minima. (See Balakrishnan. Tr. at 515:1324.) Hence he finds that one of ordinary skill in the art would understand the language of claims
1 and 18 to require that elements (a), (b), and (c) be performed in sequential order.
Referring to the specification of the '352 patent, the specification teaches:
In general, the function of the Xcompute and Ycompute processes
is simply to evaluate the current measurements by calculating the
centroid of the finger measurement, and by detecting whether a
second finger is touching the pad.
(JX-1 at 7:43-47, emphasis added.) Figure 6 of the '352 Patent is a flow diagram for Xcompute.
(JX-1 at 8:46-48.) Also, "[t]he algorithm for Xcompute starts at step 200, followed by
initialization of variables at step 205." (JX-1 at 9:18-19.) The specification further describes the
process of identifying a maximum, a minimum, and a maximum using the terms "peak" and
"valley." (See, e.g. JX-1 at 9:53, 57.) The private parties and the staff have agreed that these
terms are equivalent to "maximum" and "minimum." (Tr. at 88:19-90:18.) In addition, this

11

identification process occurs in an "algorithm or snippet of code" (Balakrishnan, Tr. at 505:9)
which will "march through [the] finger profile" (Balakrishnan, Tr. at 504:14-15) in a sequence
(Balakrishnan, Tr. at 506:3-4.) Also the specification describes this process as follows:
The XLoop continues at step 225, where one of a series of
sub loops is selected depending on the value of Xstate. Since
Xstate is initially set to Peakl, the first subloop entered is the
Peakl subloop, beginning at step 230. At step 230 the value of
X(N) is compared to the value of X(N-1) and, i f X(N) is greater
than or equal to the value of X(N-1), the first peak has not yet been
reached...
At some value of N the value of X(N) is less than the value of
X(N-1), at which point the check at step 230 yields a NO. At this
point, the peak has been found and at step 232 the value of Xpeakl
is set to XCN-l) and the value of Xstate is set to V a l l e y . . .
(JX-1 at 9:39-45, 51-55, emphasis added.) X(N) and X(N-1) refer to values of finger-induced
sensor conductor capacitance on the touch sensor. (JX-1 at 8:56-60.) The values from X ( l ) to
X(Xcon) correspond to the first and last conductors. (JX-1 at 9:24-29.) The parties have agreed
that said values refer to those in a "finger profile taken on a straight line." (C Post at 8; R Post at
12; S Post at 2.) Thus the specification teaches that the algorithm will identify the first peak by
incrementally stepping across the finger profile while analyzing each capacitance value until it
encounters a value smaller than the preceding one. The algorithm then labels said preceding
value as Xpeakl to identify it as a peak. The algorithm then begins to search for a valley. The
specification continues:
At step 255 a X(N) is compared to X(N-1). If X(N-1) is not greater
than or equal to X(N), the valley has not yet been found, causing a
further jump to step 235 and a repeat with an incrementally higher
N . If a second finger is touching the pad then eventually the value
of X(N-1) will be greater than or equal to the value of X(N), such
that the valley is detected. At this point, at step 262, the value of

12

Xvalley is set to XflSf-1) and Xstate is set to Peak2 . . .
On the next cycle . . . [a]t step 270 the state of Xstate is compared
to Peak2, and a Y E S result will occur. This results in a compare
between XQST) and XfN-1) at step 275, to look for a second peak.
(JX-1 at 9:65-10:5, emphasis added.) The algorithm continues its step-by-step analysis until it
finds a point larger than the previous point. At that point step 262 is performed, which identifies
a valley and prepares to begin to look for a second peak. Step 262 occurs after the first peak
value has been identified in step 232. Further, step 262 also occurs before another peak value has
been identified because it prepares to look for the second peak by setting Xstate to Peak2. Doing
so results in the algorithm moving to step 275 on the next cycle in order to look for a second
peak. Both complainant Elan's expert Dezmelyk and respondent Apple's expert Balakrishnan
testified that the sequence of identifying the first maxima, then the minima following the first
max is the only sequence disclosed in the '352 patent. (Tr. at 479:8-16, 504:4-9.) Thus the
admimstrative law judge finds that one of ordinary skill in the art would understand that the
specification requires the claimed invention to identify a first peak, then to identify a minima
following the first peak, and then to identify a second peak following said minima.
Based on the foregoing, the administrative law judge finds (1) that the disputed claim
term "identify a first maxima in a signal corresponding to a first finger" means identify a first
peak value in a finger profile taken on a straight line obtained from scanning the touch sensor, (2)
that the disputed claim term "identify a minima following the first maxima" means identify the
lowest value in the finger profile taken on said straight line that occurs after the first peak value,
and before another peak value is identified, and (3) that the disputed claim term "identify a
second maxima in a signal corresponding to a second finger following said minima" means after

13

identifying the lowest value in the finger profile taken on said straight line, identify a second
peak value in the finger profile taken on said straight line. The administrative law judge also
finds that claims 1 and 18 include a temporal requirement to identify the first maxima, then later
in time identify the minima following the first maxima, and still later in time identify the second
maxima following said minima.
Complainant Elan's expert was asked how could a person of ordinary skill in the art (1)
identify "a minima following the first maxima" without first identifying said first maxima, and
(2) identify "a second maxima following said minima," without first identifying said first
maxima and said minima? (Dezmelyk, Tr. at 449:19-450:2.) In response he testified that one
could first identify all of the maxima, and then identify a minima in between them. (Tr. at
450:19-451:10.) However the claim language requires identifying a second maxima which
follows the "minima following the first maxima." Therefore i f one first identified all of the
maxima in the finger profile, one would not have identified a "second maxima... following said
minima" as required by claim 18 because one does not yet know the location of the said minima.
Thus, to determine which of the maxima in the finger profile is the claimed "second maxima . . .
following said minima" one must first identify the said minima.
Complainant Elan's post-hearing brief contains unsupported statements regarding the
testimony of respondent Apple's expert. For instance, complainant asserted:
Dr. Balakrishnan testified that, as a matter of grammar and logic,
the claims may be satisfied without performing the steps in the
order recited in the claims.
(C Post at 11.) Complainant also asserted:
Dr. Balakrishnan effectively admitted that the claim language

14

would be understood by one of ordinary skill in the art to
encompass methods where the steps are not performed in the
recited order.

(C Post at 9-10.) Complainant further argued:
Dr. Balakrishnan also admitted that a method that first identified
two maxima in that matrix of data, and then identified the
intervening minima, would meet the requirements of the claim as
written.
(C Post at 11.) In making these statements, complainant failed to cite to any portion of the record
to support this alleged testimony. The administrative law judge has not been able to find any
support for said statements in the record. Respondent Apple said that these statements were
"grossly inaccurate," and cited the following testimony in support:
Q.

Dr. Balakrishnan, I would like to simply pick up with the
extended hypothetical that Mr. DeBruine asked you about
making an assumption that there were two local maxima,
and then after those were found, then a line was drawn
between those maxima and then after that, a minima was
found. Do you have that in mind?

A.

Yes, I do.

Q.

Does that hypothetical have anything to do with the claimed
inventions in claim 1 and 18 of the '352 patent?

A.

No.

(R Reply at 13; Tr. at 541:11-23.) Complainant is reminded of Commission Rule 210.4(c)(3):
By presenting to the presiding administrative law judge or the
Commission (whether by signing, filing, submitting, or later
advocating) a pleading, written motion, or other paper, an attorney
or unrepresented party or proposed party is certifying that to the
best of the person's knowledge, information, and belief, formed
after an inquiry reasonable under the circumstances—

15

(3) The allegations and other factual contentions have evidentiary
support.
Complainant Elan also argued that the issue presented in this investigation is similar to
the issue in Kemin Foods v. Pigmentos Vegetales del Centro. 301 F. Supp. 2d 970, 993 (S.D.
Iowa, 2004.) (Kemin) where the court held that steps (a) and (b) of the claimed process could be
performed in either order. The claim at issue in Kemin contained step (a) calling for preparation
of a homogenous liquid by combining two ingredients and step (b) calling for addition of a third
ingredient "with said homogenous liquid." (U.S. Patent No. 5,648,564 at 8:65-9:11.) The court
found that while step (b) referenced the mixture produced by combining the two ingredients of
step (a), these two steps were interchangeable with no significant difference in the end result.
(Kemin, 301 F. Supp. at 993.) However, in this investigation the administrative law judge has
found, supra, that the claimed process cannot be executed by changing the order of the steps.
Complainant Elan further argued that 3M Innovative Properties Co. v. Avery Dennison
Corp.. 350 F.3d 1365,1371 (Fed. Cir. 2003) (3M) requires that the terms "first" and "said" to
refer to repetitions of the same claim element does not indicate restriction to a particular order.
(C Post at 10.) However complainant has misstated the 3M case. Regarding claim language the
court in 3 M said:
In the context of claim 1, the use of the terms "first... pattern" and
"second ... pattern" is equivalent to a reference to "pattern A " and
"pattern B," and should not in and of itself impose a serial or
temporal limitation onto claim 1.
(3M, 350 F. 3d at 1371.) Thus 3_M does not prevent the administrative law judge from relying on
claim language that refers back to prior completed steps. Further in 3M the court found that
"nothing in the intrinsic evidence of the patent requires . . . a limitation of sequential creation"

16

but rather that the specification clearly defined the disputed term in a manner "devoid of
sequential limitation." (IcL at 1372) However in this investigation the administrative law judge
has found, supra, that all the evidence in the specification supports a temporal order requirement.
Finally, the 3_M court relied in part on a broadening amendment during prosecution, which has
not been found here. (Id.)
Complainant Elan also argued that the order of the steps are not important. (C Supporting
at 14.) Complainant relied on a statement in the specification that "sensors can be scanned
sequentially or concurrently, depending on the hardware implementation." (Id., citing JX-1 at
7:36-37. However the surrounding text in the specification states:
Referring still to FIG. 5, the cyclical process begins at step 400,
and continues at step 410 by scanning the conductor sensors. The
sensors may be scanned sequentially or concurrently, depending on
the hardware implementation. The scan process measures the
values of finger-induced capacitance for each of the conductors,
and stores the values in R A M at step 420. The cycle process
continues by performing the Xcompute loop of FIG. 6 discussed
hereinafter, and also the Ycompute loop analogous to FIG. 6, at
step 430 and 440, respectively.
(JX-1 at 7:34-43, emphasis added.) Thus the scan process occurs in steps 410 and 420 and
includes scanning the conductor sensors and measuring and storing the values of capacitance. In
contrast identification of maxima and minima is part of the Xcompute and Ycompute loops,
which occur in steps 430 and 440, respectively.
Complainant Elan, in arguing that the order of the steps are not important, also relied on
the following in the specification:
[T]he X and Y compute processes may be performed sequentially
in either order or concurrently.

17

(JX-1 at 11:6-10; C Supporting at 14.) Varying the order of the execution of the X and Y
compute processes, however, is not inconsistent with the claim construction put forth by
respondent Apple and the staff. As found supra, the Xcompute loop in Figure 6-1 contains all
the steps to analyze a finger profile to identify a first maxima, then a minima following the first
maxima, and then a second maxima following said minima. Therefore choosing to execute the
Xcompute loop after the Ycompute loop will not change the order in which the maxima and
minima are identified. This passage means that the identification of these maxima and minima
"can be done either for the X axis first, followed by the Y axis, or the other way around, or both
of those could be done at the same time." (Balakrishnan, Tr. at 509:14-17.)
2.

"control function" (Claims 1 and 18)

( inml.Miui i'* ( I ' n - t i i i L t . u i i

Ii*. pn u L l i i ' * I i i M i l l L . l D i i

Stairs Construction

A function in response to
contact with the touchpad
other than or in addition to
movement of the cursor

Function that would normally
be provided by the actuation
of buttons or switches on a
mouse

Function that would normally
be provided by the actuation
of buttons or switches on a
mouse

(C Post at 14; R Post at 24; S Post at 4.)
Complainant Elan did not submit a claim construction for "control function" in its motion
for summary determination on claim construction. (Tr. at 679:5-15.) Complainant argued that
respondent Apple's proposed construction is unduly narrow (C Post Reply at 10) and that
"control function" is not limited to those functions associated with a computer mouse (C
Opposing at 36).
Respondent Apple, in support of its construction, argued that the claim language,

18

specification, and prosecution history show that "control function" should be construed in terms
of functions normally provided by a traditional mouse. (R Supporting at 44.) Respondent Apple
further argues that complainant Elan's position would claim any function that does more than
just move the cursor. (Id.)
The staff, in support of respondent Apple's proposed construction, argued that because
the title of the patent is "Multiple Fingers Contact Sensing Method for Emulating Mouse Buttons
and Mouse Operations on a Touch Screen Pad" therefore the invention is limited to emulating
mouse buttons. (JX-1; S Supporting at 13.) The staff argued that this conclusion is further
supported because the language pertaining to a computer mouse was added during prosecution to
clarify the purpose of the invention. (S Supporting at 13.) Finally, the staff argued that the
specification supports its construction by defining "the present invention" as one finger
controlling movement of the cursor, and the second finger as controlling functions equivalent to a
mouse button or switch. (Id.)
The term "control function" is found in claims 14 and 19, which depend on claim 1 and
claim 18, respectively. (JX-1 at 17.) Claims 14 and 19 recite a method and a means, respectively
(JX-1 at 17:10-15, 38-42.) Rewritten in independent form claim 14 reads:
A method for
detecting the operative coupling of multiple fingers to a touch
sensor involving the steps of scanning the touch sensor to (a)
identify a first maxima in a signal corresponding to a first finger,
(b) identify a minima following the first maxima, (c) identify a
second maxima in a signal corresponding to a second finger
following said minima,
and providing an indication of the simultaneous presence of two
fingers in response to identification of said first and second
maxima...
[and] selecting an appropriate control function based on a
19

combination of a number of fingers detected, an amount of time
said fingers are detected, and any movement of said fingers.
(JX-1 at 16-17 (emphasis added).) The claim language defines "control function" only by stating
the criteria used to select said function. Thus, as claims 14 and 19 depend on claims 1 and 18,
respectively, the selection of a control function must be done after "detecting the operative
coupling of multiple fingers to a touch sensor." (JX-1 at 14-15.) Claims 14 and 19 have no
dependent claims that further define a control function. Other claims that are dependent on
claims 1 and 18 mention types of functions. Claims 3,11 and 25 recite a "drag" function. (JX-1
at 16:27-29, 61-63,18:17-21.) Claims 2,12 and 26 recite a "click" function. (JX-1 at 16:24-26,
64-67,18:21-24.) Claims 13 and 27 recite a "cursor" function. (JX-1 at 17:6-7, 18:31-32.)
These functions are examples of control functions that one could perform with a mouse. (JX-1 at
1:48-56 ("click and drag function" can be done with a mouse), 62-65 (cursor movement and
clicks can be done with a mouse.) Based on the claim language the administrative law judge
therefore finds that one of ordinary skill in the art would understand the claim term "control
function" to include conventional mouse functions. However, the administrative law judge finds
nothing in the claim language that would include or exclude additional functions.
The specification also supports including conventional mouse functions as examples of a
"control function." The '352 patent frequently describes the invention in terms of
"conventional" mouse functions:
For clarity of explanation, the present invention can be
described in most of its applications by establishing one finger as
controlling movement of the cursor, and the second finger as
controlling functions equivalent to a mouse button or switch. In
this context, one finger may be considered the "point" finger, while
the other is the "click" finger. Various conventional functions may

20

then be defined accordingly.
(JX-1 at 2:56-62 (emphasis added).)
As noted previously, the second or additional fingers are
typically involved to provide "button" or control functions, similar
to actuation of the buttons or switches on a mouse.
(JX-1 at 6:50-53.) Thus the term "control function" may include functions normally provided by
buttons or switches on a mouse. However by the use of the terms "most of its applications" and
"typically" the patent contemplates functions other than mouse button functions. Other portions
of the specification also describe conventional mouse functions within the operation of the
invention, but without indicating whether other functions might also be included:
Combinations of the first, second, and perhaps additional
fingers can then enable numerous conventional functions to be
performed based on the mapping of a variety of sequences of taps
or finger, movements to a set of conventional pointing device
functions, where the pointing device could be a touchpad. mouse,
trackball, joystick, or stylus, for example.
(JX-1 at 11:56-11:65 (emphasis added).)
Similarly, tapping with both fingers at the same time may
be defined as an alternate, shorthand method for a double tap (such
as may be defined for the middle button in a Logitech mouse) or
may be defined as a special function, similar to the "right button"
functions of a mouse.
(JX-1 at 3:26-31 (emphasis added).)
A still further object of the present invention is to provide a
method for effecting on a touchpad, through the use of multiple
finger contacts, a plurality of conventional mouse button functions.
(JX-1 at 4:36-39.)
The specification teaches that the '352 invention can also perform "additional" or

21

"enhanced" functions:
In addition to the foregoing functions, which can be
performed (albeit awkwardly and less intuitively) with
conventional touch pads, there are additional functions that can be
performed with two fingers and which can have substantial analogs
to the use of a mouse or even go beyond conventional mouse
functions.
(JX-1 at 3:16-21 (emphasis added).)
Yet another object of the present invention is to provide a
method and apparatus for effecting on a touchpad, through the use
of multiple finger contacts, a plurality of enhanced functions.
(JX-1 at 4:40-43 (emphasis• added).) In addition to these general statements regarding non-mouse
functions, the specification also provides particular examples of such additional functions:
For example, detection and location of two fingers will
permit the touchpad to report to a host system the distance between
the two fingers. This can be used, for example, in paint or other
programs to determine line width or other spacing functions, or any
other "variable value" function.
(JX-1 at 3:21-26 (emphasis added).)
Another function which may be implemented with two
finger detection is "drag lock."
(JX-1 at 3:37-38.)
Also included within the present invention is the detection
and location of more than two fingers, with accompanying
functional definitions permitting such multiple contacts to indicate
pointing device or other control operations, such as musical
keyboards.
(JX-1 at 4:12-16.)
Thus the specification affirms that other functions are included within the scope of the
invention in addition to conventional mouse functions. Therefore the administrative law judge

22

finds that the specification would disclose to one of ordinary skill in the art that the claim term
"control function" includes both conventional mouse functions and other non-mouse functions.
Claims 14 and 19 issued from claims 34 and 36 in the prosecution history. (See JX-2 at
471.) On December 5, 1997 the Examiner rejected these claims as obvious in view of U.S.
Patent No. 5,495,077 by Miller et al. (Miller). (JX-2 at 478.) The Examiner stated that mouse
functions such as pointing device, drag, select ink function, removal and replacement of maxima
and reaching the edge are common, and that Miller's apparatus can be used as a mouse (column
2, lines 1-10) therefore such functions would be obvious. (JX-2 at 478.) On April 6,1998 and in
response to this office action the patentee did not cancel or amend the claims, but argued that
"[fjhe present invention uniquely utilizes the detection of two maxima to determine if two fingers
are present on the touchpad. (JX-2 at 533.) A telephone conference between the patentee and the
Examiner occurred on May 6, 1998 (JX-2 at 649) after which claims 34 and 36 were allowed and
renumbered to claims 14 and 19 (JX-2 at 652). The administrative law judge finds nothing in
this process which would limit the claim term "control function" to functions normally
performed by a mouse.
Based on the foregoing, the administrative law judge finds that one of ordinary skill in the
art would understand the claim term "control function" to mean any function executed in
response to the operative coupling of multiple fingers on a touch sensor.
Respondent Apple and the staff argued that the prosecution history shows that the claim
term "control function" is limited to functions normally performed by buttons on a mouse. (R
Supporting at 44, S Supporting at 13.) Respondent Apple and the staff, in support of this
argument, reference the change in title of the '352 Patent during prosecution. (R Supporting at

23

46; S Supporting at 13.) The '352 Patent was originally entitled "Multi-Contact Sensing Method
and Apparatus." (JX-2 at 7.) In an office action dated April 18,1997, the examiner stated:
The title of the invention is not descriptive. A new title is required
that is clearly indicative of the invention to which the claims are
directed. A n example of a more descriptive title would be " A
Multiple Fingers Contact Sensing Method for Emulating Mouse
Buttons and Mouse Operations on a Display Touch Sensor Pad."
(JX-2 at 50.) In response the patentee amended the title to " A Multiple Fingers Contact Sensing
Method for Emulating Mouse Buttons and Mouse Operations on a Touch Sensor Pad." (JX-2 at
467.) The administrative law judge finds that the change of title supports including mouse
functions as examples of a "control function" but it does not support excluding other functions.
Respondent Apple also argued that the following portion of the prosecution history shows
that the term "control function" is limited to mouse functions. (R Supporting at 46.)
The steps of claim 23 relating to using the first finger for cursive
movement and a second finger for a control function is discussed,
for example, on page 8, lines 31-38.
(JX-2 at 474 (emphasis added).) The portion of the specification that the patentee referred to
reads:
To operate effectively, the present invention must detect and
distinguish the presence of a single finger, and the presence of
multiple fingers. As noted previously, the second or additional
fingers are typically involved to provide 'button' or control
functions, similar to actuation of the buttons or switches on a
mouse. Although the following example describes in detail the use
of only two fingers, one for cursor control and a second as a button,
the teachings herein are believed sufficient to permit those skilled
in the art to construct apparatus using multiple fingers for
additional buttons.
(JX-2 at 14:31-38; JX-1 at 6:48-58.) The administrative law judge finds that by using the terms

24

"for example" and "typically" the patentee demonstrates that mouse button functions are one
common example of a "control function" without excluding other embodiments.
Complainant Elan has proposed that "control function" excludes cursor movement. (C
Post at 14.) The prosecution history, however, shows that the patentee understood the claim term
to include both mouse button functions and cursor movement. Claims 20 and 23 of the
application claimed in part:
20. A method for detecting the operative coupling and decoupling
of multiple fingers to a touch sensor to perform cursor movement
or control functions involving the steps of detecting the operative
coupling of at least two objects such as two fingers to a sensor . . .
and reporting to a host signals for causing cursor movement or
control functions as a result of the evaluation. (JX-2 at 29
(emphasis added).)
23. A method for detecting the operative coupling and decoupling
of multiple fingers to a touch sensor to perform cursor movement
or control functions involving the steps of detecting operating
coupling of a first group of objects with a sensor . . . detecting the
operative coupling of a second group of objects with a sensor,
wherein the number of objects in the second group is different
from the number of objects in the first group . . . and reporting to a
host signals for causing cursor movement or control functions . . . "
(JX-2 at 29-30 (emphasis added).) On April 18,1997 the examiner rejected these claims as
indefinite for using the word "or." (JX-2 at 49-50.) The patentee.responded by deleting the
phrase "cursor movement or" from claims 20 and 23, and adding claim 24 for "[fjhe method of
claim 20 wherein said control function comprises a cursor movement." (JX-2 at 468-69.) The
patentee remarked:
In particular, claim 20 specifies a control function, which could be
a cursor movement, click, etc. Claim 24 further specifies the
control function is in a particular embodiment a cursor movement.

25

(JX-2 at 473-74 (emphasis added).) Thus the patentee understood "control function" to include
cursor movement as a particular embodiment.
On December 5,1997 the examiner rejected claims 20 and 24 as being anticipated by
U.S. Patent No. 4,914,624 (Dunthom). (JX-2 at 479.) Specifically, the examiner stated that
Dunthorn shows the control function comprises a cursor movement. (JX-2 at 479, Dunthorn at
2:28-47.) In response, the patentee cancelled these claims. (JX-2 at 536, 649.)
Respondent Apple argued that the claim construction proposed by Complainant Elan is
inappropriately overbroad, and provides no actual guidance to those of skill in the art as to the
scope of the term "control function." (R Post Reply at 25.) However this argument, if true,
would affect claim validity under the written description and enablement requirements but is not
properly addressed during claim construction. As the Federal Circuit has stated:
While we have acknowledged the maxim that claims should be
construed to preserve their validity, we have not applied that
principle broadly, and we have certainly not endorsed a regime in
which validity analysis is a regular component of claim
construction. Instead, we have limited the maxim to cases in
which "the court concludes, after applying all the available tools of
claim construction, that the claim is still ambiguous."
(Phillips v. A W H Corp.. 415 F.3d 1303 (Fed. Cir. 2005).) The administrative law judge finds
that in regards to the claim term "control function," no additional clarity can be gained by
construing the claim in an attempt to preserve validity.

26

3. "in response to" (Claims 1 and 18)
Complainant's Construction

Respondent's Construction

Staffs Construction

plain meaning

"after and in reaction to"

"after and in reaction to"

(C Post at 16; R Post at 23; S Supporting at 12.)
Complainant Elan, in support of its proposed construction, argued that "response" is a
common English word and that the phrase needs no construction. (C Post at 16.) Complainant
further argued that "the identification of two maxima is a factor considered in the process of
providing the indication of two fingers" but not the only factor. (C Opposing at 35.)
Complainant also argued that respondent Apple's construction, by requiring the response to
occur immediately after identification with no intervening steps, would not cover the preferred
embodiment. (Id.)
Respondent Apple, in support of its proposed construction, argued that it is the
recognition of the two maxima which determines that two fingers are present. (R Supporting at
42.) Respondent Apple further argued that complainant Elan's construction is intended to allow
"indication" to occur based on something other than the identification of two maxima. (R
Supporting at 42.)
The staff, in support of Apple's proposed construction, argued that it is consistent with a
dictionary definition for "response" as "a reply or answer." (S Supporting at 12.) The staff
further argued that other definitions for "response" or "respond" connote a subsequent action in
reaction to a previous action. (S Supporting at 12.)
' The parties' dispute therefore has two aspects. First, the parties dispute whether the

27

"indication of the simultaneous presence of two fingers" must occur immediately after
"identification of said first and second maxima" or i f it could also occur after additional steps are
executed. (JX-1 at 16:21-23.) Second, the parties dispute whether said identification must be the
only factor used in triggering said indication, or i f additional factors may also be considered.
Claims 1 and 18 cite a method and means, respectively, of:
scanning the touch sensor to (a) identify a first maxima in a signal
corresponding to a first finger, (b) identify a minima following the
first maxima, (c) identify a second maxima in a signal
corresponding to a second finger following said minima, and
providing an indication of the simultaneous presence of two fingers
in response to identification of said first and second maxima.
(JX-1 at 16:15-23 (emphasis added).) The claim language instructs to first scan the touch sensor
to identify a first and second maxima; then, in response to identification of said first and second
maxima, to provide an indication of the simultaneous presence of two fingers. While the claim
language states that the "indication" is in response to the "identification" and is listed as the next
step, the claim does not affirmatively exclude intermediate steps between the "identification" and
"indication" steps.
Thus, the administrative law judge finds that one of ordinary skill in the art would
understand from the claim language that the claim term "in response to" means that the
indication step must occur after the identification step, and that the indication step must occur
because of the "identification of said first and second maxima." The administrative law judge
further finds that the claim language does not indicate whether any other events may occur
between the identification and indication steps.
Figures 9-1 and 9-2 demonstrate the process of identification and indication. (JX-1 at Fig.

28

9-1, 9-2.) The first peak has been found after step 230 yields a " N O " response, "and at step 232
the value of Xpeakl is set." (JX-1 at 9:52-54.) Similarly, after step 275 yields a "NO" response,
step 278 sets the value of Xpeak2. (JX-1 at 10:19-21.) As found, supra, setting the value of
Xpeakl and Xpeak2 is the "identify" step for those respective maxima. Multiple steps then
occur before the indication step, including cycling through the measurements until N equals
Xcon at step 235 (JX-1 at 10:26-30), comparing Xpeakl and Xpeak2 to the threshold value at
step 290 (JX-1 at 10:46-51), setting the value of Xabsolute in step 295 (JX-1 at 10:47-49), and
comparing the difference of the peaks and the valley in step 305 (JX-1 at 10:52-65). Indication
of the presence of two fingers does not occur until step 980. "If the result at step 305 is a Yes,
then a determination is made that two fingers are in contact with the sensor and the variable
Xfinger is set to two at step 980." (JX-1 at 15:26-29.) Thus the embodiments of Figure 6 and
Figure 9 show indication of the presence of two fingers occurring after intermediate steps.
Further, while these embodiments provide said indication in response to the detection of the first
and second maxima, the indication will not occur if the height of these maxima does not exceed
the threshold tests of steps 290 and 305. (JX-1 at Figure 6, Figure 9; Tr. at 582-83.)
Respondent Apple's expert, Balakrishnan, testified that because the indication depends in
part on threshold tests, Claims 1 and 18 do not cover the embodiments of Figures 6 and 9. (Tr. at
582-83.) However, this argument is incompatible with the claim language. Claims 8 and 22,
depending on claims 1 and 18, respectively, add the additional step of "comparing a distance
between said first maxima and said second maxima to a predefined threshold." Claims 17 and
31, likewise depending on claims 1 and 18, respectively, add the additional step of requiring the
first and second maxima to be higher than a first threshold, and requiring the said minima to be

29

less than a second threshold. Thus, because these claims cover the threshold comparisons
outlined in Figures 6 and 9, such comparisons must be covered by claims 1 and 18 on which
claims 8,17, 22, and 31 depend.
Based on the foregoing, the administrative law judge finds that one of ordinary skill in the
art would understand that the claim term "in response to" means "after and in reaction to,"
meaning that the indication of the presence of two fingers must occur at some time after the
identification of the claimed first and second maxima, and that said indication must occur in
reaction to at least the identification of the claimed first and second maxima.
During prosecution, the patentee submitted an amendment submitted on April 6,1998. In
that amendment the patentee distinguished the patent from U.S. Patent No. 5,495,077 by Miller
et al. (Miller):

.
The present invention uniquely utilizes the detection of two
maxima to determine if two fingers are present on the touchpad.
Nowhere does Miller suggest analyzing profile information to
obtain this result, or to use the result to provide an indication of
two fingers.

(JX-2 at 536.) Respondent Apple relies on this and similar passages from the prosecution history
to argue that the invention was distinguished from the prior art in using only the detection of the
two maxima to determine if two fingers are present. (R Supporting at 43.) While the patentee
does distinguish the invention because it uses the detection of two maxima, the patentee does not
do so to the exclusion of any other considerations. Miller did not use the detection of two
maxima to provide an indication of the presence of multiple fingers. Instead, Miller used "the
rapid movement of the centroid as a second finger is placed down on the touchpad and
subsequently lifted." (JX-2 at 536.)

30

Respondent Apple also relies on the specification to show that only recognition of the
claimed maxima indicates the presence of two fingers on the touchpad. The cited portion states:
In particular, the circuitry, software or firmware of the touchpad
circuitry, such as that shown in FIG. 2, detects a first maxima 85
indicative of a first finger in operative proximity to the touchpad
30, followed by a minima 90 indicative of a space between the
fingers, and further followed by another maxima 95 indicative of a
second finger operatively coupled to the touchpad 30.
(JX-1 at 6:29-35.) This passage teaches that the device detects a first maxima, followed by a
minima, and further followed by another maxima. The passage does not, however, teach how the
invention provides an indication of the presence of two fingers nor specify what is factored into
providing such an indication.
4. "identify" (Claims 1 and 18)
Complainant's Construction
"Establish the identity of;
ascertain the origin, nature
or definitive structure o f

Respondent's Construction

Staffs Construction

"recognize a value to be"

"to ascertain the
origin, nature or definitive
characteristics o f

(C Post at 13; R Post at 21; S Supporting at 11.)
Complainant Elan argued that the claim term "identify" does not need construction, but
that inasmuch as there is a need then a dictionary definition should be used. (C Post at 13.)
Complainant Elan also argued that identification requires establishing the position at which the
maximum or minimum occurs, but does not require any further analysis of the value. (C Post at
13.) Complainant Elan further argued that respondent Apple's construction could require that the
value be written into memory. (C Supporting at 16.)
Respondent Apple, in support of its construction, argues that the claim term requires

31

recognition that a value is a maximum or a minimum, rather than only seeing the maximum or
minimum value. (R Supporting at 39 (emphasis in original).) Respondent Apple further argued
that prior art devices were able to see maxima and minima, and the present invention was
distinguished as analyzing that information to detect the two maxima. (R Supporting at 40.)
Respondent Apple also stated that it is not taking the position that the claims require writing data
to memory. (R Opposing at 22.)
The staff, in support of its construction, argued that its definition is consistent with the
plain meaning and with Apple's proposed construction. (S Supporting at 11.) The staff also
argued that the claim term requires that the maxima, the minima, and the second maxima be
definitively recognized as existing as defined values as compared to just being a collection of raw
data from which one might extract a value. (S Supporting at 11.)
Claims 1 and 18 cite a method and means, respectively, of:
scanning the touch sensor to (a) identify a first maxima in a signal
corresponding to a first finger, (b) identify a minima following the
first maxima, (c) identify a second maxima in a signal
corresponding to a second finger following said minima, and
providing an indication of the simultaneous presence of two fingers
in response to identification of said first and second maxima.
(JX-1 at 16:15-23 (emphasis added).) The disputed claim term "identify" is used separately for
each identification: the first maxima, the minima following the first maxima, and the second
maxima following said minima. The identification of each maximum and minimum also occurs
within the signal. The administrative law judge finds that one of ordinary skill in the art would
understand from the claim language that the claim term "identify" requires reading the touch
sensor signal and analyzing the data within that signal to recognize the data points corresponding

32

to the claimed maxima and minima.
The specification also confirms that "identify" requires analysis of the signal from the
touch sensor. The specification describes the process through which the invention cycles through
the finger profile to identify the claimed maxima and minima. The process begins searching for
the first maxima:
At some value of N the value of X(N) is less than the value of
X(N-1), at which point the check at step 230 yields a NO. At this
point, the peak has been found and at step 232 the value of Xpeakl
is set to X ( N -1) and the value of Xstate is set to Valley.
(JX-1 at 9:51-55.) Thus identification of the first maxima occurs through a logic comparison
between the maxima and the neighboring points on the profile and designating the position as the
point at which the maximum occurs. Similar comparisons and designations occur to identify the
minima following the first maxima (JX-1 at 10:1-5) and the second maxima following said
minima (JX-1 at 10:9-25). The administrative law judge finds that one of ordinary skill in the art
would understand from the specification that the claim term "identify" requires analysis of the
touch sensor signal and designation of the location of the claimed maxima and minima.
During prosecution the patentee distinguished the '352 invention from the prior art based
on the analysis of profile information to detect two maxima. In an office action dated December
5,1997 the examiner rejected claims 1, 3-13, and 26-34 as obvious in view of U.S. Patent No.
5,648,642 by Miller et al. (Miller). (JX-2 at 477) The examiner stated that the Miller apparatus
can detect and report i f one or more points are being touched and can save and display the sensor
information for every node in the apparatus. (JX-2 at 478.) In response, the patentee stated:
Miller nowhere suggests detecting two fingers, and rather the
Examiner is citing Miller as showing that it would generate the

33

profile of two fingers i f they were applied to Miller, since a value
is obtained for each line. Claims 1 and 35 have been amended to
further clarify the distinction of the invention from Miller. The
present invention uniquely utilizes the detection of two maxima to
determine if two fingers are present on the touchpad. Nowhere
does Miller suggest analyzing profile information to obtain this
result, or to use the result to provide an indication of two fingers.
(JX-2 at 535-36 (emphasis added).) Thus the administrative law judge finds that one of ordinary
skill in the art would understand that identification requires analysis of the profile information to
detect the claimed maxima and minima.
Based on the foregoing, the administrative law judge finds that one of ordinary skill in the
art would understand the claim term "identify" to mean "recognize a value to be," which requires
both analysis of the touch sensor signal and designation of the location of the claimed maxima
and minima.
5. "means for scanning the touch sensor to (a) identify a first maxima in a signal corresponding
to a first finger, (b) identify a minima following the first maxima, and (c) identify a second
maxima in a signal corresponding to a second finger following said minima" (Claim 18)
Respondent's Construction

Staffs Constiuction

This limitation is governed by 35 U.S.C.
§112(6).

This limitation is governed by 35 U.S.C. § 112(6).

The recited function is scanning the
touch sensor.
The corresponding structure is an analog
multiplexer, a circuit to measure
changes in capacitance of sensor
conductors, an analog to digital
converter, a microcontroller, and
equivalents thereof.
(agreed by the parties)

The recited function is scanning the touch sensor to
(a) identify a first maxima in a signal
corresponding to a first finger, (b) identify a
minima following the first maxima, and (c) identify
a second maxima in a signal corresponding to a
second finger following said minima.
The corresponding structure is an analog
multiplexer, a circuit to measure changes in
capacitance of sensor conductors, an analog to
digital converter, a microcontroller, and Fig. 5
(items, 400-440) and Fig. 6-1 (items 200-278)

34

(R Supporting at 3; S Supporting at 14.)
Complainant Elan does not appear to address this claim term in its briefs.
Respondent Apple proposed a construction and stated in its motion for summary
determination that respondent and complainant are in agreement regarding said construction. (R
Motion at 3.) However, in response to the staffs proposed construction, respondent Apple stated
that the staffs proposed clarification of the recited function is "well taken" and that it "does not
disagree" with the additional structural elements proposed by the staff.
The staff, in support of its construction, argued that the function proposed by the private
parties is incomplete because the claimed function includes both scanning and identification of
the claimed maxima and minima. (S Supporting at 13-14.) The staff further argued that because
the function includes identification steps, the structure must also include an algorithm that
accomplishes the claimed identification function. (S Supporting at 14.)
Claim 18 of the '352 patent reads:
18. A touch sensor for detecting the operative coupling of multiple
fingers comprising:
means for scanning the touch sensor to (a) identify a first maxima
in a signal corresponding to a first finger, (b) identify a minima
following the first maxima, and (c) identify a second maxima in a
signal corresponding to a second finger following said minima, and
means for providing an indication of the simultaneous presence of
two fingers in response to identification of said first and second
maxima.
(JX-1 at 17:28-37.) Claim 18 recites two separate means: a means for scanning the touch sensor
to identify the claimed maxima and minima, and a means for providing an indication of the
simultaneous presence of two fingers in response to said identification. The administrative law
judge therefore finds that one of ordinary skill in the art would understand from the claim

35

language that the claimed function includes both scanning the touch sensor and identifying the
claimed maxima and minima within the signal.
The specification gives the corresponding structure for these scanning and identifying
functions. Figure 2 of the '352 patent shows a diagram of the electronics in a touchpad. (JX-1 at
Fig. 2, 5:21-22.) The '352 patent describes this figure as follows:
A touchpad matrix 30 is composed of a plurality of rows 35 and
columns 40 of wires or traces arranged in a conventional manner
. . . The rows and columns are connected to an analog multiplexor
45 through a plurality of X (row) direction conductors 50 and a
plurality of Y (column) direction conductors 55, one conductor for
each row and each column. Under the control of a microcontroller
60, the analog multiplexor 45 selects which traces of the matrix 30
will be sampled, and the output of those traces is then provided to a
capacitance measuring circuit 70 . . .
The output of the capacitance measuring circuit is then provided to
an analog to digital converter 80, which operates as described in
either of the above-referenced patent applications to convert the
capacitance values from the circuit 70 into a digital representation.
The analog to digital converter 80 then supplies the signals to the
microcontroller 60, which operates to form, among other things, a
finger profile for one or more fingers, X - Y cursor data, and control
signals. Depending on the operation being performed at the
particular time, the output of microcontroller 60 is then supplied to
an interface to a PC or other device, such as a PS/2 interface, an
RS-232 interface, or an Apple Desktop Bus (ADB).
(JX-1 at 5:23-55 (references omitted).) The patent thus teaches that the analog multiplexor 45,
the microcontroller 60, the capacitance measuring circuit 70, and the analog to digital converter
80 are all involved in scanning the touch sensor. (Tr. at 261:10-262:2.)
The identification of the claimed maxima and minima is not detailed in Figure 2. The
specification states:
In an exemplary embodiment, the operation of the system of FIG. 2

36

is controlled in either firmware, software or hardware. Shown in
FIG. 5 is a flow diagram showing the general operation of such
software or firmware which is capable of detecting multiple
fingers, and which uses the algorithm of FIG. 6. discussed
hereinafter.
(JX-1 at 7:1-6.) Thus the operation of the system can physically occur in firmware, software or
hardware. But they each must operate using the flow diagrams in Figure 5 and Figure 6, as
specified. The specification outlines the steps included in the scanning and identification
processes:
Referring still to FIG. 5, the cyclical process begins at step 400.
and continues at step 410 by scanning the conductor sensors . . .
The cycle process continues by performing the Xcompute loop of
FIG. 6 discussed hereinafter, and also the Ycompute loop
analogous to FIG. 6, at step 430 and 440, respectively, hi general,
the function of the Xcompute and Ycompute processes is simply to
evaluate the current measurements by calculating the centroid of
the finger measurement, and by detecting whether a second finger
is touching the pad-which determines the button state.
(JX-1 at 7:34-48.) Thus the specification provides that steps 400 and 410 of Figure 5 are
involved in scanning the conductor sensors. The Xcompute and Ycompute processes, executed
at steps 430 and 440, respectively, are involved in detecting whether a second finger is touching
the pad. As found, supra, the claim term "identify" requires analysis of the touch sensor signal
and designation of the location of the claimed maxima and minima. This occurs in Figure 6-1,
and likewise in Figure 9-1. (Tr. at 528:6-529:9.) Complainant Elan's expert, Dezmelyk, testified
that only step 220, which performs a sum to calculate the centroid, can be omitted in the process
of identifying the maxima and minima. (Tr. at 277:11-278:2.) Figures 6-1 and 9-1 are identical,
as Figures 6 and 9 are identical up through step 290. (JX-1 at 15:15-16, Fig. 6 and 9; Tr. at
529:17-24.)

37

Based on the foregoing, the administrative law judge finds that one of ordinary skill in the
art would understand that the claim term "means for scanning the touch sensor to (a) identify a
first maxima in a signal corresponding to a first finger, (b) identify a mimma following the first
maxima, and (c) identify a second maxima in a signal corresponding to a second finger following
said minima" is written in means-plus-function format, and that the recited function is scanning
the touch sensor to (a) identify a first maxima in a signal corresponding to a first finger, (b)
identify a minima following the first maxima, and (c) identify a second maxima in a signal
corresponding to a second finger following said minima. The administrative law judge further
finds that the corresponding structure is an analog multiplexer, a circuit to measure changes in
capacitance of sensor conductors, an analog to digital converter, a microcontroller, and Fig. 5
(items, 400-440) and Fig. 6-1 or Fig. 9-1 (items 200-278).

38

6. "means for providing an indication of the simultaneous presence of two fingers in response to
identification of said first and second maxima" (Claim 18)
Complainant's Construction

Respondent's Construction

Staffs Construction

This limitation is governed
by 35 U.S.C. § 112(6).

This limitation is governed by
35 U.S.C. § 112(6).

This limitation is governed
by 35 U.S.C. § 112(6).

The recited function is
providing an indication of
the simultaneous presence of
two fingers in response to
identification of said first
and second maxima.

The recited function is
providing an indication of the
simultaneous presence of two
fingers in response to
identification of said first and
second maxima.

The recited function is
providing an indication of
the simultaneous presence
of two fingers in response
to identification of said first
and second maxima.

The corresponding structure
is firmware or software that
provides data indicating the
presence of two fingers in
response to the identification
of two maxima and
equivalents thereof. .

The corresponding structure is
the algorithm found in Fig. 8-1,
which sets a finger value equal
to two after determining i f a
scan in either the X direction or
the Y direction has detected
two fingers.

The correct corresponding
structure is a
microcontroller
programmed as shown
in Fig. 5 (items 450-540) or
as shown in Fig. 8-1 (item
850) to Fig. 8-2 (915).

(C Post at 19; R Post at 30; S Supporting at 15.)
Complainant Elan, in support of its construction, argued that the claimed functions can be
implemented locally on the microcontroller 60 via firmware, or in hardware or software running
on the host. (C Post at 20.) Complainant Elan also argued that "Figures 5, 6, 8 and 9 show
several different ways in which an indication of the presence of two fingers can be performed by
firmware, software or hardware." (Id.) Complainant Elan further argued that the constructions
proposed by Apple and the Staff are improperly narrow. (Id.)
Respondent Apple, in support of its construction, argued that only steps 850 and 860 of
Fig. 8-1, where the Finger variable is set to two, can provide an indication of the presence of two
fingers. (R Post at 30.) Respondent Apple further argued that the bulk of Figures 8-1 and 8-2

39

pertain to preliminary steps such as collecting data and identifying maxima, and that Figures 5, 6,
and 9 are incompatible with Apple's proposed construction for "in response to." (R Post at 3031.)
The staff, in support of its construction, argued that it is consistent with the patent's
disclosure of how to accomplish the claimed invention. (S Supporting at 15.) The staff further
argued that complainant Elan's proposed construction does not include an algorithm as required
for computer-based structures. (S Supporting at 16.) The staff also argued that respondent
Apple's proposed construction is under-inclusive. (S Post at 6.)
The parties have agreed that the recited function is providing an indication of the
simultaneous presence of two fingers in response to identification of said first and second
maxima. (C Post at 19; R Post at 30; S Supporting at 15.) Therefore the dispute is limited to the
corresponding structure.
At the outset, the administrative law judge finds that complainant Elan's proposed
construction is improper as a matter of law because it does not contain an algorithm. With
respect to means-plus-function claim terms related to computer-implemented inventions, the
Federal Circuit requires that the disclosed structure "be more than simply a general purpose
computer or microprocessor." Aristocrat Techs. Austl. Pry Ltd. v. frit'l Game
Tech.. 521 F.3d 1328, 1333 (Fed. Cir. 2008). The required disclosure must include a specific
algorithm as a necessary part of the disclosed structure to avoid purely functional claims that
allow for any device that performs said function. See, e.g.. W M S Gaming, Inc. v. Int'l Game
Tech.. 184 F.3d 1339, 1349 (Fed. Cir. 1999); Aristocrat Techs.. 521 F.3d at 1337; Finisar Corp.
v. DirecTV Group. Inc.. 523 F.3d 1323, 1340-1341 (Fed. Cir. 2008) ("Simply reciting 'software'

40

without providing some detail about the means to accomplish the function is not enough");
Blackboard. Inc. v. Desire2Learn. Inc., 574 F.3d 1371,1384 (Fed. Cir. 2009) ("when a computer
is referenced as support for a function in a means-plus-function claim, there must be some
explanation of how the computer performs the claimed function.")
Claim 18 of the '352 patent reads:
18. A touch sensor for detecting the operative coupling of multiple
fingers comprising:
means for scanning the touch sensor to (a) identify a first maxima
in a signal corresponding to a first finger, (b) identify a minima
following the first maxima, and (c) identify a second maxima in a
signal corresponding to a second finger following said minima, and
means for providing an indication of the simultaneous presence of
two fingers in response to identification of said first and second
maxima.
(JX-1 at 17:28-37.) Claim 18 recites two separate means: a means for scanning the touch sensor
and identifying the claimed maxima and minima, and a means for providing an indication of the
simultaneous presence of two fingers in response to said identification. Thus the administrative
law judge finds that one of ordinary skill in the art would understand from the claims that the
means for providing an indication does not include the steps required for identification of the
claimed maxima and minima.
With respect to the disputed claim term "in response to" the administrative law judge
found, supra, that the process of providing an indication of the simultaneous presence of two
fingers does not begin until some time after the identification of said first and second maxima.
Further, the administrative law judge has also found, supra, that the corresponding structure for
scanning the touch sensor to identify the claimed maxima and minima includes items 400-440 of

41

Fig. 5 or Fig. 8, and all of Fig. 6-1 or Fig. 9-1 (items 200-278 ). Thus the administrative law
judge will look to steps that occur after Fig. 6-1 or Fig. 9-1 to determine the corresponding
structure of the means for providing an indication of the simultaneous presence of two fingers.
Immediately after Fig. 9-1 is executed, the algorithm will continue in Fig. 9-2. Step 295
is used to generate coordinates for the centroid, and therefore is unnecessary to perform the
claimed function. (JX-1 at 10:46-49; Tr. at 278:8-11.) Steps 305 performs a threshold
comparison to avoid artifacts by determining i f a legitimate valley and two legitimate peaks have
been detected. (JX-1 at 10:52-65.) However this threshold comparison step is embodied in
dependent claim 31, therefore steps 305-315 are not necessary to accomplish the invention of
claim 18. (JX-1 at 18:46-49.) Step 980 deter
Continuing to Figure 8, the specification explains:immediately after performing the
Xcompute and Ycompute loops, at step 850 the algorithm checks whether either of those loops
has detected two fingers. (JX-1 at Figure 8.) If the answer is yes, then step 860 sets a variable
"Finger" to the value of 2, thus providing an indication of the simultaneous presence of two
fingers. (JX-1 at Figure 1; Tr. at 191:11-18.) Thus steps
In FIG. 8, the process begins in a manner identical to FIG. 5,
starting at step 400 and followed by scanning the conductors and
storing the results of the scan in memory at step 405, followed by
Xcompute and Ycompute at steps 430 and 440, respectively. For
this embodiment, Xcompute is shown in FIG. 9, and Ycompute is
identical to Xcompute. At step 850. a determination is made
whether two fingers are in contact with the touchpad by evaluating
both Xcompute and Ycompute. If neither Xcompute nor Ycompute
indicate the presence of two fingers, the answer is NO and the
process drops to step 855. However, i f either the Xcompute routine
or the Ycompute routine indicates the presence of two fingers, the
answer at step 850 is Y E S and the process moves to step 860.
where the value of the variable FINGER is set to 2.

42

(JX-1 at 14:1-17 (emphasis added).) The specification shows that step 850 of Figure 8 considers
the results of both Xcompute and Ycompute to determine whether two fingers are in contact with
the touchpad. If they are in contact then an indication is provided at step 860 of Figure 8.
Based on the foregoing, the administrative law judge finds that one of ordinary skill in the
art would understand that the claim term "means for providing an indication of the simultaneous
presence of two fingers in response to identification of said first and second maxima" is a meansplus-function claim, that the corresponding function is providing an indication of the
simultaneous presence of two fingers, and the corresponding structure is step 860 of Figure 8
where the value of the "Finger" variable is set to equal two.
Complainant argued that a structure of only step 860 of Figure 8 would be too narrow
because step 860 relies on step 980 of Figure 9-2, which is also an indication of the presence of
two fingers. (C Opposing at 37.) However, i f step 980 within the Xcompute loop of Figure 9
were sufficient alone to determine the simultaneous presence of two fingers, then the algorithm
would skip the Ycompute loop as well as steps 850-870 where a determination of the number of
fingers is made. (JX-1 at 14:8-27.) Further, when asked how the claimed invention selects an
appropriate control function based, among other things, on the number of fingers detected,
Complainant Elan's expert, Dezmelyk, testified:
There are a number of tests here that we will look at the first one.
It says, do we have ~ what is the number of fingers?
And I will highlight the tests. The 5 tests are at 850, 855, and the
setting of the variable called "finger," it happens at one of the four
blocks, 870, 860, or 865.
And there is a set of tests here based on how many fingers we saw
in each of the profiles that tell us whether we have zero fingers,

43

one finger or two fingers present.
(Tr. at 288:1-11 (emphasis added).) Therefore because the indication of the simultaneous
presence of two fingers requires analyzing both profiles, step 980 of Figure 9-2 does not
accomplish the claimed function. For the same reason, step 310 of Figure 6-2, which sets
Xbutton equal to "Down" i f the Xcompute loop finds two peaks, does not accomplish the
claimed function.
The staff argued that items 450-540 of Figure 5 are part of the corresponding structure. (S
Supporting at 15.) However these steps do not provide an indication of the simultaneous
presence of two fingers, rather they provide an indication of a change in the number of fingers:
In the exemplary embodiment, only a change in the button state is
reported. As a result, at step 450 the value of Button is set to No
Change. . .
The process continues by comparing the current and previous
button States of the X and Y conductors. First, at step 460, the
state of Xbutton is checked to see i f it is Down and the State of
XbuttonPrevious is checked to see i f it is Up. If both compares are
true, then the variable Button is set to Down at Step 465. In
addition, at Step 470, the State of Ybutton is checked to see if it is
Down and the State of YbuttonPrevious is checked to see i f it is
Up. If both compares are true, the variable Button is also set to
Down.
Alternatively, as determined at step 480, if the state of Xbutton is
Up and the state of XbuttonPrevious is Down, or, as checked at
step 490, the state of Ybutton is up and YbuttonPrevious is Down,
then the variable Button is set to Up at step 495.
(JX-1 at 7:49-8:3.) Thus, as said portion of the specification indicates, while the button state is
indicative of the presence of two fingers, the specification teaches that Figure 5 reports only a
change in the button state. Moreover, i f the button state has not changed, the variable Button will

44

remain at "No Change" and the reporting step at 540 will not be executed.
Complainant Elan's expert, Dezmelyk, is in agreement with JX-1 at 7:49-8:3. Hence he
testified:
So, in this case, in 460, the question is, is Xbutton down and the
previous Xbutton was up? Arid that means there has been a change
in the number of fingers that were present on the touchpad.
Because we set Xbutton based on whether we had two or one
finger in contact.
So here, in the case, where Xbutton was ~ we had Xbutton down,
meaning we had two fingers, and last time before that, it was up,
we're going to say, set button equal to down.
. . . We will set the change in position to zero and we will report
the button.
And report means we will send information out of the device to the
computer we're connected to that says a button got pressed. That's
the meaning of this step of reporting a button.
(Tr. at 247:18-248:4, 248:11-17.) Thus the administrative law judge finds that step 460 indicates
only a change in the number of fingers present on the touchpad, which is later used to report that
a button got pressed.
This order will be made public unless a bracketed confidential version is received no later
than the close of business on November 26, 2010.

Paul J. Lucketr/
Chief Administrative Law Judge
Issued: November 9, 2010

45

APPENDIX A

ABBREVIATIONS
C Supporting

Complainant's Brief in Support of Motion for Summary Determination

C Opposing

Complainant's Response to Respondent's and Staffs Motions For
Summary Determination

CPost

Complainant's Post-Hearing Brief

C Post Reply

Complainant's Response to Respondent's and Staffs Post-Hearing Briefs

JX

Joint Exhibit

R Supporting

Respondent's Brief in Support of Motion for Summary Determination

R Opposing

Respondent's Response to Complainant's and Staffs Motions For
Summary Determination

RPost

Respondent's Post-Hearing Brief

R Post Reply

Respondent's Response to Complainant's and Staffs Post-Hearing Briefs

S Supporting

Staffs Brief in Support of Motion for Summary Determination

SPost

Staffs Post-Hearing Brief

S Post Reply

Staffs Response to Complainant's and Respondent's Post-Hearing Briefs

Tr.

Transcript of Markman Hearing

CERTAIN ELECTRONIC DEVICES WITH MULTI-TOUCH
ENABLED TOUCHPADS AND TOUCHSCREENS

337-TA-714

CONFIDENTIAL CERTIFICATE OF SERVICE
I, Marilyn R. Abbott, hereby certify that the attached Order has been served by hand upon the
Commission Investigative Attorney, Kevin G. Baer, Esq., and the following parties as indicated,
on

November 9, 2010

U.S. International Trade Commission
500 E Street, SW
Washington, D C 20436

On Behalf of Complainant Elan Microelectronics
Corporation:
Paul F. Brinkman, Esq.
ALSTON & BIRD L L P
The Atlantic Building
950 F Street, N W
Washington, D C 20004
P-202-756-3404
F-202-756-3333

na Hand Delivery
' V i a Overnight Mail
( ) V i a First Class Mail
( ) Other:

Respondent Apple Inc.:
Mark G. Davis, Esq.
WEIL, GOTSHAL & IVIANGES LLP
1300 Eye Street, NW, Su ite900
Washington, D C 20005
P-202-682-7000
F-202-857-0940

na Hand Delivery
( \ / V i a Overnight Mail
( ) V i a First Class Mail
( ) Other: