Elan Microelectronics Corporation v. Apple, Inc.

Filing 430

MOTION for Summary Judgment OF INDEFINITENESS OF CLAIMS 24, 26 AND 30 OF U.S. PATENT NO. 5,825,352 filed by Apple, Inc.. Motion Hearing set for 10/20/2011 01:30 PM in Courtroom 3, 17th Floor, San Francisco before Hon. Richard Seeborg. Responses due by 9/29/2011. Replies due by 10/6/2011. (Greenblatt, Nathan) (Filed on 9/14/2011)

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MATTHEW D. POWERS (Bar No. 104795)
[e-mail]
TENSEGRITY LAW GROUP LLP
201 Redwood Shores Parkway, Suite 401
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
JARED BOBROW (Bar No. 133712)
[e-mail]
SONAL N. MEHTA (Bar No. 222086)
[e-mail]
DEREK C. WALTER (Bar. No. 246322)
[e-mail]
NATHAN GREENBLATT (Bar No. 262279)
[e-mail]
WEIL, GOTSHAL & MANGES LLP
Silicon Valley Office
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant and Counterclaim Plaintiff
Apple Inc.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ELAN MICROELECTRONICS
CORPORATION,

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Plaintiff and Counterclaim
Defendant,

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Case No. C-09-01531 RS (PSG)
APPLE INC.’S MOTION FOR
SUMMARY JUDGMENT OF
INDEFINITENESS OF CLAIMS 24, 26,
AND 30 OF U.S. PATENT NO. 5,825,352

v.
APPLE INC.,
Defendant and Counterclaim
Plaintiff.

DATE:
TIME:
JUDGE:
CTRM:

October 20, 2011
1:30 p.m.
Hon. Richard Seeborg
3, 17th Floor

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APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

CASE NO. C-09-01531 RS (PSG)

TABLE OF CONTENTS

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Page

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I.

INTRODUCTION .............................................................................................................. 1

II.

CLAIMS 24, 26 AND 30 OF THE ’352 PATENT ARE INDEFINITE ............................ 3

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A.

The Specification Fails To Disclose Corresponding Structure For Claim 24......... 4

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B.

The Specification Fails To Disclose Corresponding Structure For Claim 26......... 7

C.

The Specification Fails To Disclose Corresponding Structure For Claim 30......... 9

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III.

CONCLUSION ................................................................................................................. 11

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APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

TABLE OF AUTHORITIES

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Page(s)

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CASES

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Aristocrat Techs., v. Int’l Game Tech.,
521 F.3d 1328 (Fed. Cir. 2008)......................................................................................... 2, 3, 8

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Blackboard, Inc. v. Desire2Learn, Inc.,
574 F.3d 1371 (Fed. Cir. 2009)......................................................................................... 3, 6, 8

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Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc.,
355 Fed. Appx. 389 (Fed. Cir. Dec. 4, 2009) (Exh. D).................................................... passim
Finisar Corp. v. DirecTV Group, Inc.,
523 F.3d 1323 (Fed. Cir. 2008)............................................................................................. 3, 4
Medical Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205 (Fed. Cir. 2003)................................................................................................. 3
Minerva Indus., Inc. v. Motorola, Inc.,
2010 WL 446502 (E.D. Tex. Feb. 3, 2010) (Exh. E)................................................................ 3
Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359 (Fed. Cir. 2008)................................................................................................. 3
Praxair, Inc. v. ATMI, Inc.,
543 F.3d 1306 (Fed. Cir. 2008)................................................................................................. 3
STATUTES

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35 U.S.C. § 112 ...................................................................................................................... passim
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OTHER AUTHORITIES
ITC Indefiniteness Order (Exh. B)......................................................................................... passim

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APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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NOTICE OF MOTION

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TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

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PLEASE TAKE NOTICE THAT, subject to the Court’s approval of the parties’

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stipulation on scheduling (Dkt. No. 425), on October 20, 2011 at 1:30 p.m. Defendant Apple Inc.

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(“Apple”) will and hereby does respectfully move for summary judgment that claims 24, 26, and

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30 of Plaintiff Elan Microelectronics Corp.’s (“Elan”) U.S. Patent No. 5,825,352 (“the ’352

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patent”) are indefinite. The motion is based on the points and authorities herein, the exhibits to

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the Declaration of Nathan A. Greenblatt submitted concurrently herewith, evidence and argument

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to be presented at the hearing, and all matters of which the Court may take judicial notice.

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I.

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INTRODUCTION

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Elan asserts fourteen claims of the ’352 patent against Apple in this case, including

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means-plus-function claims 24, 26, and 30.

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corresponding structure of certain hardware elements and “software, firmware, or hardware

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performing the claimed function,” without identify any algorithm in the specification for carrying

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out the claimed functions.

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constructions for claims 24, 26, and 30 that the Court previously rejected as “plainly inadequate”

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for claim 19. Compare Exh. A [1st Am. JCCS, Exh. A] at 9-12 (proposing as corresponding

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structure for claims 24, 26, and 30 “Analog multiplexor 45: Capacitance measuring circuit 70: A

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to D convertor 80, Microcontroller 60 and/or software, firmware or hardware performing the

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claimed function.”)1 with D.I. 183 [Claims Construction Order] at 14, 16 (rejecting the identical

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construction for claim 19 as “plainly inadequate” because “Elan is effectively attempting to use

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the means-plus-function format to encompass any and all algorithms anyone might devise for

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performing that function” and finding claim 19 indefinite as a result).2 Not only is simply reciting

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For each of these claims, Elan proposes a

In so doing, Elan proposes exactly the same legally-flawed

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All exhibit citations are to the Declaration of Nathan A. Greenblatt in Support of Apple’s
Inc.’s Motion For Summary Judgment Of Indefiniteness Of Claims 24, 26, And 30 Of U.S. Patent
No. 5,825,352. Emphasis added and citations omitted, unless otherwise noted.

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While the November 1, 2010 Claims Construction Order stated that “claim 18 of the ’352
patent is indefinite because there is no structure adequately disclosed in the specification to
perform the claimed functions,” D.I. 183 [Claims Construction Order] at 16, the Court entered a
APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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“firmware, software or hardware” impermissible, but adding a restatement of the required

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function adds nothing by way of a disclosure of the corresponding structure to one of ordinary

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skill in the art. Therefore, regardless of what the ’352 patent specification discloses, Elan’s

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constructions must be rejected as facially inadequate to satisfy Section 112 ¶ 6.

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The only remaining question is whether, setting aside Elan’s proposed constructions, the

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patent specification discloses sufficient structure to render claims 24, 26, and 30 definite. The

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ITC previously considered this question for claims 24 and 30.3 After prehearing briefing, live

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expert testimony, post-hearing briefing, and a petition for review, the ITC concluded that “the

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’352 patent fails to disclose any structure for performing the described function of claim[s] [24,

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and 30] as required by 35 U.S.C. § 112 ¶ 6, and hence, that said claim[s] [are] indefinite and thus

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invalid.” Exh. B [ITC Indefiniteness Order] at 13, 15; see also Exh. C [ITC Final Initial

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Determination] at 2. This result was not surprising, considering that Elan’s expert squarely

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admitted that the ’352 specification does not disclose an algorithm for either claim 24 or claim

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30. To wit, Elan’s expert took the legally-erroneous position that the patent “does not need to”

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disclose an algorithm, because one of ordinary skill in the art would be capable of programming a

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computer to perform the recited function. Elan took the same position for claim 26 before it

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dropped the claim. However, the Court has already rejected this argument as “conflating the

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requirement of enablement with definiteness.” See Claims Construction Order at 16 (citing

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Aristocrat, 521 F.3d at 1336 (“Enablement of a device requires only the disclosure of sufficient

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information so that a person of ordinary skill in the art could make and use the device. A section

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112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of

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the claim to the particular structure disclosed, together with equivalents.”)). A legally-erroneous

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reliance on the knowledge of one of ordinary skill cannot cure a lack of disclosure in the patent

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specification. Accordingly, the Court should find claims 24, 26, and 30 indefinite as a matter of

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law.

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January 25, 2011 Order Amending Claims Construction Order that clarified that the Court found
claim 19 indefinite. D.I. 188 [Order Amending Claims Construction Order] at 1.
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Elan withdrew claim 26 from the ITC investigation two days before the Markman
Hearing.

APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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II.

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CLAIMS 24, 26 AND 30 OF THE ’352 PATENT ARE INDEFINITE

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Indefiniteness is a question of law. Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed.

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Cir. 2008). For means-plus-function claims, the scope of these claims must be “defined by the

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structure disclosed in the specification plus any equivalents of that structure; in the absence of

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structure disclosed in the specifications to perform those functions,” the claim is invalid for

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indefiniteness. Aristocrat Techs., v. Int’l Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008). The

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purpose of limiting the scope of means-plus-functions claims to the structure disclosed in the

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specification “is to avoid pure functional claiming,” wherein the claim captures all possible

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methods of performing the recited function “unbounded by any reference to structure in the

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specification.” Id. at 1333 (quoting Medical Instrumentation & Diagnostics Corp. v. Elekta AB,

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344 F.3d 1205, 1211 (Fed. Cir. 2003)).

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For computer-implemented inventions, the Federal Circuit “has consistently required that

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the structure disclosed in the specification be more than simply a general purpose computer or

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microprocessor.” Id.; see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41

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(Fed. Cir. 2008) (“Simply reciting ‘software’ without providing some detail about the means to

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accomplish the function is not enough.”); Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359,

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1367 (Fed. Cir. 2008); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383-85 (Fed. Cir.

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2009). Rather, for computer-implemented inventions, the specification must disclose the specific

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algorithm or algorithms that are used to perform the claimed function. See Encyclopaedia

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Britannica, Inc. v. Alpine Elecs., Inc., 355 Fed. Appx. 389, 393-94 (Fed. Cir. Dec. 4, 2009) (Exh.

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D) (citing Aristocrat, 521 F.3d at 1333). If the patent specification fails to disclose a specific

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algorithm, the claim is indefinite. Aristocrat, 521 F.3d at 1331. That is true “regardless of [the]

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simplicity” of the algorithm. Encyclopaedia Britannica, 355 Fed. Appx. at 395; see also Minerva

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Indus., Inc. v. Motorola, Inc., 2010 WL 446502, at *15 (E.D. Tex. Feb. 3, 2010) (Exh. E) (“[T]he

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purported algorithm ‘begin recording’ is just a restatement of the claimed function ‘recording.’

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Because the specification does not provide a sufficient algorithm to describe recording, this

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means-plus function term lacks a corresponding structure and is indefinite.”). If, on the other
APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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hand, the patent specification discloses a specific algorithm, then “the corresponding structure for

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such claims is the algorithm disclosed in the specification.” Encyclopaedia Britannica, 355 Fed.

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Appx. at 393. In no case is a claim construction permitted that merely recites “software” as the

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structure. Finisar, 523 F.3d at 1340-41.

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As set forth below, Elan has not identified—and the specification does not disclose—the

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specific algorithms disclosed for carrying out the claimed functions of claims 24, 26 and 30.

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Neither a generic reference to “software, firmware, or hardware performing the claimed function”

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nor the opinion of Elan’s expert can cure the inadequacy of the patent’s disclosure.

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A.

The Specification Fails To Disclose Corresponding Structure For Claim 24

Claim Term

Apple’s Construction

Elan’s Construction

“means for detecting a
distance between said
first and said second
maxima”

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 detecting a
distance between said first and second
maxima.

The recited function is detecting a distance
between said first and second maxima.

Because the specification does not
disclose a corresponding structure, this
limitation is indefinite

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The corresponding structure is Analog
multiplexor 45, Capacitance measuring
circuit 70, A to D convertor 80,
Microcontroller 60, and/or software,
firmware, or hardware performing the
claimed function.

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The recited function for claim 24 is detecting a distance between said first and second

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maxima. The ’352 patent fails to set forth even a rudimentary algorithm for doing this. Exh. B

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[ITC Indefiniteness Order] at 10-13. In the ITC, Elan argued that “column 3, lines 21-26 and

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column 6, lines 59-67 in the ’352 patent are examples of disclosure of the function and structure”

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for claim 24. Id. at 11. Elan further argued that “basic or well-known steps need not be disclosed

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once it has been determined that an algorithm is disclosed in the specification.” Id. As explained

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below, the portions of the specification cited by Elan disclose, at most, (1) the possibility of

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determining the distance between a first and second maxima and (2) some reasons for needing to

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do so. Moreover, Elan’s argument that “well-known steps need not be disclosed” conflates the

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enablement requirement with the required Section 112 ¶ 6 disclosure, as this Court and the ITC

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have already concluded.
APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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At the ITC Markman hearing, Elan’s expert testified as to his understanding of the
“textbook” definition of an algorithm:

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Oh, absolutely. I don’t think there is any way that – an algorithm is a series of
steps or a description of the series of steps you would take to perform a
computation. And perhaps the textbook style of an algorithm is to set forth the
steps and the tests you make to decide which steps to perform. This is an exact
representation of an algorithm.

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Exh. F [ITC Markman Tr.] at 242:10-19. The ’352 patent simply does not provide anything

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approaching a description of a “series of steps” for computing the distance between two maxima.

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Instead, the specification merely explains that “detection and location of two fingers will permit

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the touchpad to report to a host system the distance between the two fingers. This can be used,

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for example, in paint or other programs . . .” Exh. G [’352 Patent] at 3:21-26. Though alluding to

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the possibility of determining a distance between two fingers, this is nonetheless not a disclosure

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of an algorithm for actually doing so. Similarly, the patent explains that it is desirable to detect

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the distance between peaks to “avoid artifacts,” to “limit the maximum distance between the

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fingers,” and to “ensure that movement of a second or additional button finger is not mistaken for

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movement of the first or other button finger.” See id. at 6:59-67, 8:41-45. However, mere

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reasons for needing to detect the distance between two peaks still do not remotely reflect an

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algorithm for carrying out this task. As the ITC concluded, these portions of the specification

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merely “describe functions and do not disclose any algorithms for performing said functions.”

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Exh. B [ITC Indefiniteness Order] at 12. Therefore, the ’352 specification fails to set forth even a

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rudimentary algorithm for performing the recited function of claim 24.

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Unable to point to an algorithm in the specification itself, at the ITC Markman hearing

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Elan’s expert instead relied upon the knowledge of one skilled in the art, and devised his own

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algorithm. See id. at 12 (“Elan also argued that the well-known step of calculating distance via

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subtraction need not appear in the specification.”). Briefly, Elan’s expert testified that you could

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determine the distance between two centroids by, first, identifying the “N” values of the trace

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elements corresponding to the maxima and then, based on the locations of these “N” values,

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computing the distance between the two centroids. See Exh. F [ITC Markman Tr.] at 342:15-

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344:1. However, in describing this algorithm, Mr. Dezmelyk failed to cite anywhere in the
APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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specification where it was disclosed. And, on cross-examination, Mr. Dezmelyk conceded that

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such an algorithm was not actually disclosed in the ’352 patent, purportedly because it “doesn’t

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need to be”:

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Q.
In fact, it is your opinion, isn’t it, that there is no algorithm disclosed in
the ’352 patent for calculating the distance between two maxima, and you have
to rely upon the knowledge of one skilled in the art to provide that information?
Isn’t that your testimony.
A.

Well, it is also true – that is also my testimony.

Q.
So you agree it is not actually disclosed; you have to rely upon one skilled
in the art would know?
A.
That they would know how to subtract between the two locations where
the peaks are, yes.
Q.

And that that’s not disclosed in the patent?

A.

It doesn’t need to be.

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Id. at 361:2-19; see also id. at 341:8-13 (Elan’s expert admitting that the patent does not even

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have a single relevant box in a flow chart: “Q. Now, does the patent have a box like this that says

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compute distance between centroids? A. No. Q. In one of the flow charts? A. No.”); id. at

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356:2-14 (Elan’s expert confirms on cross-examination that Figure 5 of the ’352 patent discloses

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only “distance between movement of fingers” and not “the distance between a first and second

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maxima”).

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As the Court has already held, such reliance on the knowledge of one skilled in the art is

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insufficient to fulfill Section 112 ¶ 6, regardless of how simple the disclosed function may be to

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those of skill in the art. See Claims Construction Order at 16 (stating that “Elan is conflating the

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requirement of enablement with definiteness.”). The Federal Circuit has unambiguously held that

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“[a] patentee cannot avoid providing specificity as to structure simply because someone of

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ordinary skill in the art would be able to devise a means to perform the claimed function.”

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Blackboard, 574 F.3d at 1385. Because Elan points only to the knowledge of one skilled in the

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art and not to a disclosure in the specification of an appropriate algorithm, it has failed to identify

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corresponding structure for claim 24. See Encyclopaedia Britannica, 355 Fed. Appx. at 395

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(“Indeed, it is well settled that the specification must disclose the algorithm that transformed the
APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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general purpose microprocessor to a ‘special purpose computer programmed to perform the

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disclosed algorithm,’ regardless of its simplicity.”) (citation and internal quotations omitted); see

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also Exh. B [ITC Indefiniteness Order] at 12 (“However, the Federal Circuit made clear in

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Encyclopaedia Britannica, discussed supra, that regardless of the simplicity of the algorithm

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involved, the specification must “explicitly disclose” an algorithm for performing the claimed

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function.”). Accordingly, claim 24 is indefinite.

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B.

The Specification Fails To Disclose Corresponding Structure For Claim 26

Claim Term

Apple’s Construction

Elan’s Construction

“means for providing a
click function in response
to the removal and
reappearance
of
said
second maxima within a
predetermined period of
time”

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 a click
function in response to the removal and
reappearance of said second maxima
within a predetermined period of time.

The recited function is providing a click
function in response to the removal and
reappearance of said second maxima
within a predetermined period of time.

Because the specification does not
disclose a corresponding structure, this
limitation is indefinite

The corresponding structure is Analog
multiplexor 45, Capacitance measuring
circuit 70, A to D convertor 80,
Microcontroller 60, and/or software,
firmware, or hardware performing the
claimed function.

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The ’352 patent fails to disclose any corresponding structure for performing the function

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of “providing a click function in response to the removal and reappearance of said second

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maxima within a predetermined period of time.” The claimed function requires that the click

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function be provided in response to the removal and reappearance of a second maxima “within a

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predetermined period of time.” Thus, structure corresponding to this function must include some

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sort of algorithmic steps or methods for determining the amount of time between touchpad events.

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However, as noted above, the patent includes no such disclosure for determining the elapsed time.

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Elan acknowledged as much during the earlier Markman hearing in this case, where, in

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attempting to address this issue in the context of claim 19, Elan resorted strictly to the knowledge

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of one skilled in the art and disclosures in certain extrinsic evidence. Specifically, Elan was

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unable to identify any disclosure pertaining to determining the amount of time the fingers are in

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contact with the touchpad, nor was it able to identify any other disclosure pertaining to an
APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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algorithm for monitoring the amount of time between touchpad events. Instead, Elan simply

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asserted that this is something that would be within the knowledge of one skilled in the art and

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pointed to disclosures related to this issue in references that are completely extrinsic to the ’352

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patent, such as prior art computing devices and patent applications. See, e.g., June 23, 2010 CC

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Hearing Tr. at 76:19-77:25. In fact, Elan’s expert squarely admitted in deposition that the patent

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discloses no algorithm for performing claim 26. See Exh. H [Aug. 17, 2010 Dezmelyk Dep.] at

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175:3-176:3 (“[Q.] [I]s there any algorithm that considers whether removal and replacement of

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the maxima happens at a predetermined time as a factor in deciding whether to provide a click

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function? [A.] No. But . . . the practitioners would know how to do that.”). However, as noted

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above, this sort of reliance on the knowledge of one skilled in the art cannot substitute for a

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genuine disclosure of corresponding structure. See, e.g., Blackboard, 574 F.3d at 1385.

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In the ITC, Elan likewise failed to identify any disclosure in the ’352 patent of an

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algorithm for providing a click function in response to the removal and reappearance of said

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second maxima within a predetermined period of time. Instead, Elan asserted that the ’352 patent

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“discusses the utility of using the second finger to invoke a ‘click’ function . . . .” Exh. I [Elan’s

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Opening ITC Memorandum] at 24. However, the “utility” of carrying out a function is, of course,

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not the same thing as a disclosure of an algorithm for carrying out the function. In addition, Elan

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resorted to a discussion of the extrinsic evidence, asserting that “the prior art is replete with

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examples of touchpads in which the length of times between contacts is used to emulate a button

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click.” Id. Perhaps this is so, but this says nothing whatsoever about the critical question of

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whether the ’352 patent itself includes a disclosure of an algorithm for carrying out the claimed

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function. See Aristocrat, 521 F.3d at 1336 (explaining the difference between an enabling

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disclosure and a disclosure that satisfies Section 112 ¶ 6 and noting “the pertinent question in this

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case is whether Aristocrat’s patent discloses structure that is used to perform the claimed

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function.”). Finally, Elan cited to the material at 11:24-28 in the ‘352 patent, which, far from

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being a disclosure of an algorithm, is a single sentence asserting that various control functions

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have been implemented in the prior art. Utterly failing to identify anything in the ’352 patent that

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constitutes the disclosure of an algorithm for carrying out the function of this claim element, Elan
APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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essentially acknowledged that Claim 26 is indefinite, and, two days before the ITC Markman

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hearing, unceremoniously dropped the claim from those proceedings. See also Exh. J [Staff’s

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ITC CC Memorandum] at 21 (“Elan’s argument simply confirms that the specification is devoid

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of corresponding structure.”). Claim 26 is indefinite.

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C.

The Specification Fails To Disclose Corresponding Structure For Claim 30

Claim Term

Apple’s Construction

Elan’s Construction

“means for calculating
first and second centroids
corresponding to said first
and second fingers”

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 calculating first
and second centroids corresponding to
said first and second fingers.

The function is calculating first and
second centroids corresponding to the
first and second fingers.

Because the specification does not
disclose a corresponding structure, this
limitation is indefinite

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The corresponding structure is Analog
multiplexor 45, Capacitance measuring
circuit 70, A to D convertor 80,
Microcontroller 60, and/or software,
firmware, or hardware performing the
claimed function.

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The ’352 patent also fails to disclose any algorithm for “calculating first and second

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centroids corresponding to said first and second fingers.” In fact, purportedly for the purpose of

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“clarity,” the ’352 patent specifically omits a description of an algorithm for performing this

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function:

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In accordance with the present invention, two approaches may be used in
calculating centroid values. In a first implementation, only a single centroid
value is calculated for the combination of one or more fingers. In this
arrangement, it will be apparent that, when a second finger contacts the touchpad,
the centroid ‘jumps’ laterally approximately to the midpoint of the two fingers. In
a second implementation, a centroid value may be calculated for each maxima,
yielding multiple centroid values when multiple fingers interact with the pad. For
purposes of clarity, the following description will be limited to the first
implementation.
See Exh. G [’352 Patent] at 10:31-45 (emphasis added). Explicitly limiting the disclosure to the
description of an algorithm for calculating “only a single centroid value,” the ’352 patent all but
acknowledges that there is no disclosure of an algorithm for calculating two centroids. In these
circumstances, claim 30 must be held indefinite.
At the ITC Markman hearing, Elan’s expert appeared to take the position that

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APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

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CASE NO. C-09-01531 RS (PSG)

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corresponding structure for this means-plus-function element actually includes Figs. 6-2 and 9-2.

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Exh. F [ITC Markman Tr.] at 350:7-17. Strangely, although Mr. Dezmelyk took this position, he

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acknowledged that these figures did not actually disclose calculating two centroids, but instead

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“calculating centroid across all of the number of fingers that are present.” Id. As to the actual

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calculation of two separate centroids, Mr. Dezmelyk failed to cite any portion of the specification

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that disclosed this process or that provided this alleged definition. He ultimately conceded on

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cross-examination that the patent did not disclose how to compute a first and second centroid:

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9

Q.
All right. And you then cited to column 10, lines 31 to 51, for the
proposition that the patent says you can calculate the centroids for two fingers.
Do you recall that?

10

A.

That’s correct.

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Q.

But at that column 10, line 31 to 51, it does not say how to do so, does it?

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A.

It does not because it does not need to.

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Q.
In fact, nowhere in the ’352 patent is there a disclosure of how to
compute the centroids, first and second centroids corresponding to the first and
second fingers. You are relying upon the knowledge of skill in the art to supply
that information, aren’t you?

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15
16

A.
Because, yes, because a person of skill in the art already knows what
that means when they say that.

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Id. at 362:15-363:7. Thus, rather than rely on the disclosure of the ’352 patent itself, Mr.

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Dezmelyk again ultimately relied only on the knowledge of one skilled in the art. See also id. at

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117:8-118:6 (Apple explains that Mr. Dezmelyk conceded in his district court deposition that

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there was no disclosed algorithm for calculating the centroid for each of the two fingers as

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opposed to one centroid “[b]ecause the design people would have known exactly how to do that”

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and because “[y]ou don’t need to disclose that at the time”). However, as the Court has already

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concluded, this sort of reliance on the knowledge of one skilled in the art is insufficient,

24

regardless of how simple the disclosed function is. See Claims Construction Order at 16 (stating

25

that “Elan is conflating the requirement of enablement with definiteness.”); see also Exh. B [ITC

26

Indefiniteness Order] at 12 (“However, the Federal Circuit made clear in Encyclopaedia

27

Britannica, discussed supra, that regardless of the simplicity of the algorithm involved, the

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specification must “explicitly disclose” an algorithm for performing the claimed function.”).
APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

10

CASE NO. C-09-01531 RS (PSG)

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Thus, there is no corresponding structure for claim 30 and the Court should rule accordingly.

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III.

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CONCLUSION

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For the above reasons, summary judgment should be granted that claims 24, 26 and 30 of
Elan’s ’352 patent are indefinite.

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Dated: September 14, 2011

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TENSEGRITY LAW GROUP LLP
WEIL, GOTSHAL & MANGES LLP

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By:

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/s/ Jared Bobrow
Jared Bobrow
Attorneys for Defendant and
Counterclaim Plaintiff Apple Inc.

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APPLE INC.’S MOTION FOR SUMMARY
JUDGMENT OF INDEFINITENESS

11

CASE NO. C-09-01531 RS (PSG)