Elan Microelectronics Corporation v. Apple, Inc.

Filing 431

Declaration of NATHAN GREENBLATT in Support of 430 MOTION for Summary Judgment OF INDEFINITENESS OF CLAIMS 24, 26 AND 30 OF U.S. PATENT NO. 5,825,352 filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J)(Related document(s) 430 ) (Greenblatt, Nathan) (Filed on 9/14/2011)

Exhibit A

Case5:09-cv-01531-RS Document84-1

Filed05/07/10 Page1 of 12

Exhibit A - US Patent No. 5,825,352
Agreed Constructions
Claim Term, Phrase, or Clause
“scanning the touch sensor”
(claims 1, 18)

“means for scanning the touch sensor”
(claim 18)

Agreed Construction
“measuring the values generated by a touch sensor to
detect operative coupling and determining the
corresponding positions at which measurements are
made”
This limitation is governed by 35 U.S.C. § 112(6).
The recited function is scanning the touch sensor.

Support
Judge Breyer’s April 7, 2007
Order, Case No. 06-1839 CRB,
at 12:22-24
Claim 18; Fig. 2; 5:28-55; 5:3440; 5:60-65; 6:14-26; 7:1-6;
14:3-6

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.
Disputed Constructions
Claim Term,
Phrase, or
Clause
“identify a first
maxima in a
signal
corresponding to
a first finger”
(claims 1, 18)

Apple’s
Proposed
Construction
“identify a first
peak value in a
finger profile
taken on an axis
obtained from
scanning the
touch sensor”

Intrinsic
Evidence
Claim 1; Claim
18; Fig. 3; Fig.
4; Fig. 5; Fig.
7B; Fig. 7C;
4:56-57; 4:5859; 5:23-35;
5:44-55; 5:6065; 6:14-26;
6:26-35; 7:40-

Extrinsic
Evidence

Elan’s
Proposed
Construction
Apple may
“identify a first
provide expert
peak value in a
testimony
finger profile
regarding how
obtained from
one skilled in the scanning the
art would have
touch sensor”
read and
understood the
disputed claim

Intrinsic
Evidence

Extrinsic
Evidence

Figs. 3,4, 5 & 6,
2:42-55; 4:1216; 6:27-38;
7:34-38; 9:2855; 10:66-11:23;
“Synaptics
Touch Pad”
Brochure

Judge Breyer’s
April 7, 2007
Order, Case No.
06-1839 CRB, at
15:1-2.
Apple first
identified its
construction for

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

Apple’s
Proposed
Construction

Intrinsic
Evidence
48; 8:55-56;
11:11-15; 11:4955; 14:3-7;
14:39-41; 16:3639; 352 FH
0083-84, 891

“identify a
minima
following the
1

“identify the
lowest value in
the finger profile

Claim 1; Claim
18; Fig. 3; Fig.
4; Fig. 5; Fig.

Extrinsic
Evidence

Filed05/07/10 Page2 of 12

Elan’s
Proposed
Construction

Intrinsic
Evidence

terms.2

Extrinsic
Evidence
this previously
agreed- upon
term on Feb. 5,
2010. Elan will
identify
additional
extrinsic
evidence as
necessary.

Apple may
provide expert
testimony

“identify the
lowest value in
the finger profile

Figs. 3,4, 5 & 6,
2:42-55; 4:1216; 6:27-38;

Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed
claim terms.
Judge Breyer’s
April 7, 2007
Order, Case No.

Citations in this format are citations to the production numbers stamped on Apple’s produced versions of the certified file histories of the patents-in-suit.

2

As is natural in the claim construction process, both sides’ claim construction positions have evolved through the meet and confer. Subsequent to the
meet and confer, the parties have changed claim construction positions and Elan has identified additional evidence relating to disputed terms. The parties reserve
all rights to respond to the other’s positions on the disputed terms and cited evidence.

2

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause
first maxima”
(claims 1, 18)

Apple’s
Proposed
Construction
taken on said
axis that occurs
after the first
peak value, and
before another
peak value is
identified”

Intrinsic
Evidence
7B; Fig. 7C;
4:56-57; 4:5859; 5:23-35;
5:44-55; 5:6065; 6:14-26;
6:26-35; 7:4048; 8:55-56;
11:11-15; 11:4955; 14:3-7;
14:39-41; 16:3639; 352 FH
0083-84, 89

Filed05/07/10 Page3 of 12

Extrinsic
Evidence

Elan’s
Proposed
Construction
regarding how
that occurs after
one skilled in the the first peak
art would have
value”
read and
understood the
disputed claim
terms.

Intrinsic
Evidence

Extrinsic
Evidence

7:34-38; 9:2855; 10:66-11:23;
“Synaptics
Touch Pad”
Brochure; 15:5516:2

06-1839 CRB, at
15:1-2.
Apple first
identified its
construction for
this previously
agreed- upon
term on Feb. 5,
2010. Elan will
identify
additional
extrinsic
evidence as
necessary.
Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed
claim terms.

“identify a
second maxima

“after identifying Claim 1; Claim
the lowest value 18; Fig. 3; Fig.

Apple may
provide expert
3

“identify a
second peak

Figs. 3,4, 5 & 6,
2:42-55; 4:12-

Judge Breyer’s
April 7, 2007

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause
in a signal
corresponding to
a second finger
following said
minima”
(claims 1, 18)

Apple’s
Proposed
Construction
in the finger
profile taken on
said axis,
identify a second
peak value in the
finger profile
taken on said
axis”

Intrinsic
Evidence
4; Fig. 5; Fig.
7B; Fig. 7C;
4:56-57; 4:5859; 5:23-35;
5:44-55; 5:6065; 6:14-26;
6:26-35; 7:4048; 8:55-56;
11:11-15; 11:4955; 14:3-7;
14:39-41; 16:3639; 352 FH
0083-84, 89

Filed05/07/10 Page4 of 12

Extrinsic
Evidence

Elan’s
Proposed
Construction
testimony
value in the
regarding how
finger profile
one skilled in the following the
art would have
minima”
read and
understood the
disputed claim
terms.

Intrinsic
Evidence

Extrinsic
Evidence

16; 6:27-38;
7:34-38; 9:2855; 10:66-11:23;
“Synaptics
Touch Pad”
Brochure; 9:6010:8

Order, Case No.
06-1839 CRB, at
15:5-7.
Apple first
identified its
construction for
this previously
agreed upon
term on Feb. 5,
2010. Elan will
identify
additional
extrinsic
evidence as
necessary.
Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed
claim terms.

“identify”
(claims 1, 18)

“recognize a
value to be”

Claim 1; Claim
18; Fig. 6-1; Fig.

APEL001846163;
4

Plain meaning

Col. 6-9; Col. 6
30-35

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

Apple’s
Proposed
Construction

Intrinsic
Evidence
6-2; Fig. 9-1;
Fig. 9-2; 1:3740; 7:3-6; 8:4650; 8:52-9:15;
9:12-14; 9:1811:15; 12:12-14;
13:64-65; 15:6416:5

“in response to”
(claims 1, 18)

“after and in
reaction to”

Claim 1; Claim
18; Fig. 9-1; Fig.
9-2; 6:26-47;
7:54-56; 8:529:15; 14:3-27;
15:26-31; 16:2426; 16:27-29;
16:30-32; 16:3335; 16:44-56;
16:60-63; 16:6467; 17:1-9;
17:27-37; 18:113; 18:17-20;
18:21-25; 18:2533; 352 FH
0103-04;

Extrinsic
Evidence

Filed05/07/10 Page5 of 12

Elan’s
Proposed
Construction

APEL001847173;
APEL001847476;
Apple may
provide expert
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms.
APEL0018461Plain meaning
62, 64; Apple
may provide
expert testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms.

5

Intrinsic
Evidence

Col. 2:56-3:1

Extrinsic
Evidence

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

Apple’s
Proposed
Construction

“pointing device
click function”
(claim 2)

“function that
would normally
result from a
mouse button
click”

“a ‘select’
function”
(claim 4)

“a selection of
an item”

“control
function”
(claims 14, 19)

“function that
would normally
be provided by
the actuation of
the buttons or
switches on a

Intrinsic
Evidence
ELN001993-97
Claim 2; 1:4147; 1:60-2:14;
2:56-3:15; 4:611; 4:30-39; 5:919; 6:50-58; 7:825; 7:43-48;
7:51-8:21;
11:16-23; 11:2435; 11:56-12:4;
12:58-67; 13:812; 13:23-31;
13:32-36; 15:5559; Patent Title
Claim 4; Figs.
7B-7E; 11:1623; 11:56-12:4;
13:8-22

Claim 14; Claim
19; 1:41-2:6;
2:56-3:15; 4:3039; 6:50-53;
8:46-50; 12:1420; 352 FH 7;

Filed05/07/10 Page6 of 12

Extrinsic
Evidence

Elan’s
Proposed
Construction

Intrinsic
Evidence

US Patent No.
Plain meaning
5,757,368;
Apple may
provide expert
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms.

Col. 1:41-47;
Col. 1:60-2:6;
Col. 2:56-3:15;
Col. 11:5512:10.

Apple may
provide expert
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms.
Apple may
provide expert
testimony
regarding how
one skilled in the
art would have

Plain meaning

Col. 13:1-12

A function in
response to
contact with the
touchpad, other
than or in
addition to

Col. 2:38-41;
Col. 2:56-4:17;
Col 11:15-35;
Col. 11:55:1213; Figs. 7A-7F
and associated

Extrinsic
Evidence

6

Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms.

Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

“means for
providing an
indication”
(claim 18)

Apple’s
Proposed
Construction
mouse”

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.

Intrinsic
Evidence
352FH 50;
352FH 467;

Claim 18; 7:2633; 14:13-17;
9:18-11:23

Filed05/07/10 Page7 of 12

Extrinsic
Evidence
read and
understood the
disputed claim
terms and
corresponding
structure.
Apple may
provide expert
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms and
corresponding
structure.

Elan’s
Proposed
Construction
cursor
movement.

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.
The
corresponding
structure is
Analog
multiplexor 45:
Capacitance
measuring
circuit 70: A to
D convertor 80,
Microcontroller
60 and/or
software,

The
corresponding
structure is the
algorithm found
in Fig. 8-1,
which sets a
Finger value
equal to two
7

Intrinsic
Evidence
text.

Extrinsic
Evidence
art would have
read and
understood the
function and
corresponding
structure.
Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
function and
corresponding
structure.

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

Apple’s
Proposed
Construction
after determining
if a scan in either
the X direction
or the Y
direction has
detected two
fingers.
This limitation is
governed by 35
U.S.C. § 112(6).

“means for
selecting an
appropriate
control function”
(claim 19)
The recited
function is
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.

Because the
specification
does not disclose
a corresponding

Intrinsic
Evidence

Filed05/07/10 Page8 of 12

Extrinsic
Evidence

Elan’s
Proposed
Construction
firmware or
hardware
performing the
claimed
function.

Apple may
provide expert
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms, and/or
whether one of
ordinary skill
would have
understood the
specification to
disclose
structure
corresponding to
the claimed
function.

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

8

The recited
function is
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.
The
corresponding
structure is
Analog

Intrinsic
Evidence

Figs. 7, 8 and 9
and associated
text at 12:1416:5

Extrinsic
Evidence

Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
function and
corresponding
structure.

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

Apple’s
Proposed
Construction
structure, this
limitation is
indefinite.

“means for
detecting a
distance between
said first and
second maxima”
(claim 24)

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

Intrinsic
Evidence

Filed05/07/10 Page9 of 12

Extrinsic
Evidence

Apple may
provide expert
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms, and/or
whether one of
ordinary skill
would have
understood the
specification to
disclose
structure
9

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

Intrinsic
Evidence

Extrinsic
Evidence

Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
function and
corresponding
structure.

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

“means for
providing a click
function in
response to the
removal and
reappearance of
said second
maxima within a
predetermined
period of time”
(claim 26)

Apple’s
Proposed
Construction
indefinite.

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.
Because the
specification
does not disclose

Intrinsic
Evidence

Filed05/07/10 Page10 of 12

Extrinsic
Evidence
corresponding to
the claimed
function.

Apple may
provide expert
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms, and/or
whether one of
ordinary skill
would have
understood the
specification to
disclose
structure
corresponding to
the claimed
10

Elan’s
Proposed
Construction
measuring
circuit 70: A to
D convertor 80,
Microcontroller
60 and/or
software,
firmware or
hardware
performing the
claimed
function.
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
corresponding
structure is

Intrinsic
Evidence

Extrinsic
Evidence

Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
function and
corresponding
structure.

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

“means for
calculating first
and second
centroids
corresponding to
said first and
second fingers”
(claim 30)

Apple’s
Proposed
Construction
a corresponding
structure, this
limitation is
indefinite.

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.
Because the
specification
does not disclose

Intrinsic
Evidence

Filed05/07/10 Page11 of 12

Extrinsic
Evidence
function.

Apple may
provide expert
testimony
regarding how
one skilled in the
art would have
read and
understood the
disputed claim
terms, and/or
whether one of
ordinary skill
would have
understood the
specification to
disclose
11

Elan’s
Proposed
Construction
Analog
multiplexor 45:
Capacitance
measuring
circuit 70: A to
D convertor 80,
Microcontroller
60 and/or
software,
firmware or
hardware
performing the
claimed
function.
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.
Analog
multiplexor 45:
Capacitance

Intrinsic
Evidence

Extrinsic
Evidence

Mr. Dezmelyk is
expected to
provide
testimony
regarding how
one skilled in the
art would have
read and
understood the
function and
corresponding
structure.

Case5:09-cv-01531-RS Document84-1

Claim Term,
Phrase, or
Clause

Apple’s
Proposed
Construction
a corresponding
structure, this
limitation is
indefinite.

Intrinsic
Evidence

Filed05/07/10 Page12 of 12

Extrinsic
Evidence
structure
corresponding to
the claimed
function.

12

Elan’s
Proposed
Construction
measuring
circuit 70: A to
D convertor 80,
Microcontroller
60 and/or
software,
firmware or
hardware
performing the
claimed
function.

Intrinsic
Evidence

Extrinsic
Evidence